IPOS consults on Intellectual Property (Amendment) Bill 2021 and corresponding amendments to respective IP legislation

29 July 2021

From 15 July 2021 to 5 August 2021, the Intellectual Property Office of Singapore (“IPOS”) is seeking feedback on the Intellectual Property (“IP”) (Amendment) Bill 2021 (“Bill”) and corresponding amendments to the respective IP subsidiary legislation.

The relevant IP legislation which will be amended are the Patents Act and Rules, the Trade Marks Act and Rules, the Trade Marks (International Registration) Rules, the Registered Designs Act and Rules, the Geographical Indications Act and Rules and the Plant Varieties Protection Act and Rules.

By way of background, from 17 August 2020 to 14 September 2020, IPOS conducted a public consultation on proposed changes to simplify and streamline IP processes, and to improve user experience with digital initiatives (“August 2020 Public Consultation”). For more, please read our article titled “IPOS conducts public consultation on proposed changes to simplify intellectual property processes and improve user experience with digital initiatives”.

Following the public consultation, suggestions received from stakeholders have been considered to further shape IPOS’ policies. IPOS would now like to introduce legislative changes to the various IP legislation, inter alia, to implement the intended policies, and invites feedback on the Bill and corresponding amendments to the respective IP subsidiary legislation (collectively, “Proposed Amendments”). The Proposed Amendments are set out in Annexes A and B of the consultation paper.

IPOS has made clear in the public consultation paper that it is currently not seeking views on the policy positions which were set out in the August 2020 Public Consultation or any refinements that have been made to those positions in the course of preparing the draft Bill, save where otherwise indicated. IPOS is also not seeking views on proposed amendments to the IP subsidiary legislation which are not related to the Bill. As the current public consultation is to seek feedback on the Proposed Amendments only, IPOS is not asking for comments to legislative amendments that are beyond the scope of the Proposed Amendments. IPOS also stated that the Proposed Amendments are drafts for the purposes of the public consultation, and are subject to change as they will continue to undergo the legislative drafting and vetting process after the consultation period.

Proposed changes 

Set out below is a summary of some of the main changes that IPOS is proposing for each IP regime.

Patents  

IPOS is proposing the following changes for the patents regime:

  • Introducing express provisions in respect of submission of sequence listing; 
  • Removing the obligation to furnish prescribed documents in certain prescribed circumstances during the patent prosecution process; 
  • Clarifying existing provisions;
  • Inviting amendment to an application in lieu of a written opinion; 
  • Refining the examination review process;
  • Removing the form and accompanying fee for publication of international patent application in English; and 
  • Providing express power for the Registrar to make documents for published patent applications available to the public.

 Trade marks 

For the trade marks regime, IPOS is proposing to (i) clarify the period that an expired mark is regarded as an earlier mark, (ii) introduce a partial refusal mechanism for national trade mark applications and (iii) implement “continued processing” for trade mark applications that are treated as withdrawn.

Registered designs  

Currently, an applicant or a proprietor may voluntarily indicate a disclaimer to restrict rights conferred to a registered design. The proposed amendments seek to remove any ambiguity as to the legal effect of such a disclaimer. The Registrar may issue Practice Directions to specify the requirements in relation to how disclaimer would be presented. A disclaimer in respect of a registered design shall be entered in the Register.

Another proposed change is to clarify that references to “articles and non-physical products” will cover “sets of articles and non-physical products”.

Plant varieties protection 

These are the changes proposed for the protection of plant varieties regime:

  • Amending the definition of “Examiner”; 
  • Extending the period to furnish information, document or propagating material for examination; 
  • Shifting of technical information from the Act to the Rules in respect of the Plant Varieties Protection Journal; 
  • Maintaining the term of grant of protection via late payment of annual fee and clarifying existing provision in relation to when annual fee is due; and 
  • Providing an option for breeder to conduct a Distinct, Uniform, Stable test and submit the results.

In addition to the proposed changes to each of the above-mentioned IP regime, there are also some cross-IP amendments.

Reference materials

The public consultation paper, Annex A and Annex B are available on the IPOS public consultation page on the IPOS website www.ipos.gov.sg.