29 November 2018

The Ministry of Law (“MinLaw”) consulted on proposed reforms to the intellectual property (“IP”) dispute resolution system from 26 October 2018 to 30 November 2018. The proposed reforms are aimed at enhancing access to the courts for IP disputes.

In 2015, MinLaw appointed a committee, comprising academics, IP practitioners, in-house counsel, members of the judiciary and government representatives, to review and make recommendations on the IP dispute resolution system in Singapore (“IPDR Committee”). Separately, the Chief Justice established the Civil Justice Commission (“CJC”) in 2015 and MinLaw established the Civil Justice Review Committee (“CJRC”) in 2016 to reform the civil justice system (collectively, “Civil Justice Reforms”). The proposed reforms to the IP dispute resolution system are based on both the IPDR Committee’s recommendations and the broader Civil Justice Reforms’ recommendations.

Our Partner and Head of Intellectual Property Practice Dr Stanley Lai, SC was a member of the IPDR Committee.

The proposed reforms to the IP dispute resolution system are set out below:

Consolidating civil IP proceedings in the High Court

MinLaw is proposing to consolidate the majority of civil IP proceedings in the High Court in order to simplify the process of IP dispute resolution. Currently, IP disputes are heard in the High Court, State Courts or 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 consolidation of cases in the High Court will also mean that they benefit from specialist IP experience on the High Court bench, which facilitates the development of IP jurisprudence.

Exclusive jurisdiction

The High Court will have exclusive jurisdiction over infringement of all forms of registrable or non-registrable IP, passing off and declarations of non-infringement of patents and registered designs.

Concurrent jurisdiction with State Courts

The High Court will continue to have concurrent jurisdiction with the State Courts over disputes relating to trade secrets and breaches of confidence depending on the value of the claim.

Concurrent jurisdiction with IPOS

The High Court will have concurrent jurisdiction with IPOS over post-grant revocation and invalidation of IP rights.

Establishing a “fast track” option for IP litigation

The introduction of a “fast track” option for IP litigation is targeted at lower value disputes or where parties prefer to further expedite the conduct of their case. This is ultimately aimed at increasing access to the High Court by less well-resourced parties. Proposed features include:

  • A clear limit of two hearing days for trial which can be extended by the trial judge in exceptional circumstances.
  • A cap of S$500,000 on the value of the claim but parties may waive the cap through mutual agreement.
  • Court to identify specific issues to be resolved in the substantive dispute at the first or an early Case Management Conference.
  • Staged-based cap on the party-and-party costs and disbursements awarded with an overall cap of S$50,000 on total costs.

At the point of commencing the action, the plaintiff will indicate whether he wishes the case to be placed on the “fast track”. If not, the case will be placed on the “default track” and proceed in the same manner as other types of civil disputes. Where parties are of the view that the “fast track” would be unsuitable, they can opt to have their case placed on the “default track”.

Practical impact

The proposed reforms will streamline civil IP proceedings, arguably making budgeting a more straightforward process. The “fast track” option injects flexibility into the process as well as provides financial certainty to the costs payable by a losing party.

The following materials are available on the MinLaw website www.mlaw.gov.sg:

 

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