29 August 2019
On 5 August 2019, the Intellectual Property (Dispute Resolution) Bill (“Bill”) was passed in Parliament. The Intellectual Property (Dispute Resolution) Act will be gazetted and come into force at a later date.
The Bill will introduce the following key changes to facilitate the effective resolution of intellectual property (“IP”) disputes in court and at the Intellectual Property Office of Singapore (“IPOS”), and to strengthen Singapore’s position as a choice venue for the arbitration of international IP disputes:
- Consolidates most civil IP disputes in the Singapore High Court: Presently, IP disputes may be heard before the High Court, State Courts or IPOS, depending on the nature of the IP right, the type of proceeding or the value of the claim.
The Bill will grant the Singapore High Court exclusive jurisdiction over:
1. civil infringement of copyright and all forms of registrable IP rights,
2. passing off actions, which are closely related to trade mark infringement,
3. declarations of non-infringement of patents and registered designs, and
4. breach of confidence actions where the amount exceeds S$250,000.
Parties can also look forward to the further development of local IP jurisprudence through High Court judgments. The High Court has a specialised bench of IP judges, with greater expertise and experience in IP matters.
The High Court will also have concurrent jurisdiction with the relevant Registrar over post-grant revocation and invalidation proceedings for patents, and not just trade marks, registered designs and geographical indications.
- Formalises third party observations process for patent applications and introduces 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. Currently, third party observations are already being filed, but informally. 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. Currently, the main means of challenging the validity of a patent at the Registry of Patents, after it has been granted, is through the patent revocation process under section 80 of the Patents Act.
The two new procedures under the Bill are intended to be low-cost, lower barriers of entry and provide easier avenues for third parties to bring to the Registrar’s attention information about the patentability of an invention. 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.
- Clarifies 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). Arbitral awards cannot affect the status of IP rights on the IP Registers. Decisions that affect the status of IP rights on the Registers can only be made by the courts or the relevant Registrars from the jurisdictions that issue those IP rights.
Specialised track for IP litigation
In the Second Reading Speech on the Bill, Senior Minister of State for Law, Mr Edwin Tong, mentioned that the Ministry of Law (“MinLaw”) and the Supreme Court are looking into the introduction of a specialised track for litigation of IP disputes with simplified processes and cost saving features which will be set up in the High Court. As this is outside the scope of the Bill, amendments will be done to civil procedure. The Minister also mentioned that more details about the time and cost-saving features of the “specialised track” will be shared in due course.
The Bill also includes other ancillary amendments such as allowing IPOS greater flexibility to refer disputes to the High Court and harmonising, across all the Acts relating to IP rights, the availability of the right to appeal against High Court decisions made on appeal from the relevant Registrar.
The Bill follows two public consultations which MinLaw conducted in October 2018 and March 2019. By way of background, in 2015, MinLaw appointed a committee 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.
- Intellectual Property (Dispute Resolution) Bill
- Second Reading Speech by Senior Minister of State for Law, Mr Edwin Tong on The Intellectual Property Dispute Resolution Bill