Singapore’s Intellectual Property (Amendment) Act 2022 (Act) became law on 8 February 2022. The Act is the end result of a review by the Intellectual Property Office of Singapore (IPOS) to make the nation’s intellectual property laws more business-friendly, to improve IPOS’s operational efficiency and to improve legislative and procedural clarity. The review and the Act are aligned with Singapore’s broader strategy to strengthen its position as a global IP hub.

The Act amends the Patents Act 1994 (Patents Act), the Trade Marks Act 1998 (TM Act), the Registered Designs Act 2000 (RD Act), the Plant Varieties Protection Act 2004 (PVP Act) and the Geographical Indications Act 2014 (GI Act). The majority of the Act is expected to become effective in May 2022.

Amendments to Improve Business-Friendliness

The Act intends to improve the experience of applicants registering their IP with IPOS in four ways.

• The Act eliminates the fee applicants must currently pay to publish international patent applications that are not in English. About 15% of international patent applications entering Singapore are not in English.
• The Act will permit partial acceptance of trade mark applications, i.e., acceptance of an application for some classes of goods and services even if the examiner has objections with respect to other classes. This change will align IPOS’s practice for national applications with its practice for international applications and is expected to benefit about 13% of national applications.
• Currently, if certain deadlines are missed in a trade mark application, the application is treated as withdrawn subject to a six-month period to apply for reinstatement. Other parties wishing to register the same or a similar mark must wait until the six-month period expires. The Act replaces the six-month reinstatement process with a two-month period to request continued processing of the application.
• The correction of errors in applications or registrations under the TM Act, the RD Act, the PVP Act and the GI Act may affect the rights or interests of third parties. The Act gives IPOS the discretion to publish correction requests so that third parties can decide whether to oppose them. The objective is to improve the reliability and certainty of the information in the registers published under those acts.

Amendment to Improve Operational Efficiency

The Act intends to improve IPOS’s operational efficiency in four ways.

• The Act changes the patent examination process to authorise examiners to invite applicants to make minor amendments to overcome objections rather than requiring examiners to issue written opinions that set out objections.
• The Act also changes the patent examination process to streamline the review process such that an examiner only needs to review an applicant’s responses to overcome an examiner’s objection, instead of reviewing both the applicant’s original report and responses.
• The Act amends the examination process for the protection of plant varieties to permit IPOS to accept tests conducted by the breeder or a third party acceptable to IPOS, in addition to experts retained by IPOS and reports issued by foreign examiners as provided for currently. This amendment is consistent with the International Convention for the Protection of New Varieties of Plants, of which Singapore is a party.
• The Act allows IPOS to act more nimbly by moving certain technical and operational provisions from primary legislation to subsidiary legislation.

Improving Legislative and Procedural Clarity

The Act amends the Patents Act to clarify IPOS’s authority to make a wide range of patent documents available to the public.

In a change initially aimed at biomedical and biotechnology patents, the Act amends the Patents Act to permit IPOS to issue practice directions for filing patent applications that supplement the directions already in subsidiary legislation. This change will enable IPOS to require sequence listings — listings of nucleotide and/or amino acid sequences — to be filed with patent applications.

The Act clarifies that expired marks under the TM Act will be considered “earlier trade marks” while they remain eligible for renewal or restoration. This change will preserve the rights of the owners of expired marks against later applicants if they renew or restore their registrations.

Key Takeaway

The Act makes incremental but important changes to Singapore’s IP laws that will be welcomed by owners of all types of intellectual property.

For More Information

OrionW regularly advises clients on intellectual property matters.  For more information about Singapore’s IP laws, or if you have questions about this article, please contact us at info@orionw.com.

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