New third party observations and post-grant patent re-examination processes from 1 October 2021
17 September 2021
Pursuant to the Intellectual Property (Dispute Resolution) Act 2019 (Commencement) Notification 2021, the provisions on the third party observations process for patent applications and the new post-grant patent re-examination process in the Intellectual Property (Dispute Resolution) Act 2019 (“Act”) will come into force on 1 October 2021.
Provisions that will be in force from 1 October
Pre and post-grant observations and re-examination
The Act introduces a process which allows third parties to provide additional information to the Intellectual Property Office of Singapore (“IPOS”) to aid the patent search and examination process before a patent is granted. The Act will also allow a person to request that a patent be re-examined after grant, with accompanying reasons and documents, in order to ensure that only deserving inventions continue to enjoy patent protection. Presently, the only available recourse to an opponent of a patent that has been granted is to seek formal revocation proceedings against the owner of the patent.
These additional processes allow views of patent validity to be presented at an earlier stage which may result in a correction of views by IPOS, without incurring additional cost and expense of formal revocation proceedings. Such interventions may also precipitate an amendment of claims by the patentee, which would also result in a more limited scope of protection for the invention in question. Overall these changes will introduce more certainty for third parties, legal advisers and patent professionals.
Certificate of contested validity for registered trade marks, registered designs and geographical indications
The other provisions in the Act which are also coming into force on 1 October 2021 relate to the provision of a certificate of validity of contested registration in relation to trade marks, registered designs and geographical indications.
Provisions that are still not in force
Provisions in the Act relating to the following are still not in force:
- Consolidating most civil IP disputes in the Singapore High Court: The Act will simplify the process of intellectual property (“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. Presently, IP disputes may be heard in 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.
In 2015, the Ministry of Law (“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 in the Act 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 Intellectual Property (Dispute Resolution) Bill was passed in Parliament on 5 August 2019 following two public consultations which MinLaw conducted in October 2018 and March 2019. The provisions amending the Arbitration Act and International Arbitration Act to clarify the arbitrability of IP disputes in Singapore, thereby providing certainty that IP disputes can be arbitrated in Singapore, came into force on 21 November 2019.
The following subsidiary legislation which are available on the Singapore Statutes Online website sso.agc.gov.sg have also been gazetted and will come into operation on 1 October 2021:
- Geographical Indications (Amendment) Rules 2021
- Patents (Amendment) Rules 2021
- Registered Designs (Amendment) Rules 2021
- Registered Designs (International Registration) (Amendment) Rules 2021
- Trade Marks (Amendment) Rules 2021
- Trade Marks (International Registration) (Amendment) Rules 2021
- Plant Varieties Protection (Amendment) Rules 2021