The Intellectual Property (Dispute Resolution) Act 2019 (No. 23 of 2019) (New IP Act) became law on 29 August 2019.  The New IP Act aims to improve Singapore’s intellectual property (IP) dispute resolution system by:

1. Consolidating most civil IP disputes in the High Court;
2. Clarifying that IP disputes can be arbitrated in Singapore; and
3. Enhancing the patents regime by formalising third party observations on patent applications and introducing post-grant re-examinations.

Consolidation of Most Civil IP Proceedings in the High Court

Currently, jurisdiction to hear IP disputes rests with the High Court, the State Courts and the Intellectual Property Office of Singapore (IPOS) depending on the type of IP right and other factors.  The New IP Act grants the High Court original or exclusive jurisdiction to hear most civil IP disputes, including:

• all IP rights infringement matters, including infringements of non-registrable IP rights;
• all declarations of non-infringement of patents;
• all civil copyright disputes; and
• all passing-off actions.

Additionally, the High Court will have concurrent jurisdiction with IPOS on patent, trade mark and registered design revocations; trade mark invalidations and rectifications; and plant variety cancellations.

Arbitration of IP Disputes

The New IP Act amends the Arbitration Act and the International Arbitration Act to clarify that parties may settle intellectual property rights disputes by arbitration even if a law of Singapore or elsewhere gives jurisdiction to a specified forum and does not mention possible settlement by arbitration.  The amendments also provide that the validity of a patent may be arbitrated and that judgments to enforce arbitral awards affect only the parties (in personam) and not the whole world (in rem).

Amendments to the Patents Act

The New IP Act introduces two processes that aim to improve the quality of patents granted in Singapore.

Third-Party Observations

After a patent application has been published, any person may send observations on the patentability of the invention to the Registrar (i.e., IPOS).  The observations must be in writing and must be received by the Registrar before it sends the applicant a copy of the examination report, search examination report or supplementary examination report.  The Registrar is obliged to consider the observations according to its rules.

Patent Re-Examinations

After a patent has been granted, any person may file a request to re-examine the specification of the patent.  The request must be supported by reasons and relevant documentation.  The Registrar may reject a request if it does not comply with the requirements for filing the request; if the request is frivolous, vexatious, or an abuse of process; or if there are pending proceedings before the High Court or the Registrar on the validity of the same patent.  If a request is granted and the re-examination results in an objection in the request being made out, a report will be sent to the proprietor of the patent.  If the proprietor does not resolve the objection, the Registrar must issue an order to revoke the patent.

The New IP Act will become effective on the date specified by the Minister of Law in the Government Gazette.

Disclaimer: This article is for general information only and does not constitute legal advice.

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