30 July 2019
On 8 July 2019, the Intellectual Property (Dispute Resolution) Bill (“Bill”) was introduced for first reading in Parliament. The Bill seeks to introduce the following key changes to enhance the intellectual property (“IP”) dispute resolution system in Singapore:
- Consolidate most civil IP disputes in the Singapore High Court: Presently, IP disputes may be heard before the High Court, State Courts or the Intellectual Property Office of Singapore (“IPOS”), depending on the nature of the IP right, the type of proceeding or the value of the claim.
The Bill will simplify the process of IP dispute resolution by granting the Singapore High Court exclusive jurisdiction over infringements of all forms of IP, actions in passing off and declarations of non-infringement. A specialised track for litigation of IP disputes with simplified processes and cost saving features will also be set up in the High Court.
Parties can also look forward to the further development of local IP jurisprudence through High Court judgments.
- Formalise third party observations process for patent applications and introduce new post-grant patent re-examination process: To ensure that only deserving inventions are granted patent protection, the Bill will formalise a process to allow third parties to provide additional information to IPOS to aid the patent search and examination process before a patent is granted. To ensure that only deserving inventions continue to enjoy patent protection, the Bill will allow a third party to request that a patent be re-examined post grant, with accompanying reasons and documents. With these changes, parties may be spared the need to launch separate patent revocation proceedings before IPOS or the High Court, potentially saving on the costs associated with such proceedings.
- Clarify that IP disputes can be arbitrated in Singapore: The Bill will amend the Arbitration Act and International Arbitration Act to clarify the arbitrability of IP disputes in Singapore and to provide certainty that IP disputes can be arbitrated in Singapore. The new provisions will clarify that the arbitral award affects only the parties to the arbitration (in personam) and not against the world at large (in rem).
The Bill also includes other ancillary amendments such as allowing IPOS greater flexibility to refer disputes to the High Court and giving the High Court concurrent jurisdiction, together with IPOS, over patent revocation as a “standalone” action.
The Bill follows two public consultations which the Ministry of Law (“MinLaw”) conducted in October 2018 and March 2019. By way of background, MinLaw appointed a committee in 2015 to review and make recommendations on the IP dispute resolution system in Singapore (“IPDR Committee”). Separately, the Chief Justice established the Civil Justice Commission in 2015 and MinLaw established the Civil Justice Review Committee in 2016 to reform the civil justice system (collectively, “Civil Justice Reforms”). The proposed reforms are based on both the IPDR Committee’s recommendations and the broader Civil Justice Reforms’ recommendations.
Allen & Gledhill Partner and Head of Intellectual Property Practice Dr Stanley Lai, SC was a member of the IPDR Committee.
The Bill presages significant changes to the IP dispute resolution landscape in Singapore. With the consolidation of most civil IP disputes in the High Court, the Bill streamlines the avenues and simplifies the procedures for IP right owners, creators and inventors testing the strength and scope of their IP rights. The specialised track for litigation of IP disputes with simplified processes should save costs for all parties to civil IP disputes. Coupled with the clarification that IP disputes are arbitrable to an extent, the Bill further enhances Singapore as an international hub for IP dispute resolution.
Finally, the introduction of third party observations and third party initiated post grant re-examination provides a potentially cheaper alternative to revocation proceedings, further strengthening the quality of the patents existing on the patents register as well as providing more clarity to patent owners on the strength and scope of their patent rights which have been subjected to such scrutiny.