Singapore swings

28th Apr 2020

Following big policy changes in 2019, the time is right to look at IP developments in this fast-evolving country.

Singapore flag edited

For the intellectual property field in Singapore, 2019 was an exciting year, with new policies to promote Singapore as an IP hub and legislative reforms leading the charge in opening up new areas of opportunity.

For example, as part of Singapore’s co-ordinated endeavour to support artificial intelligence (AI) as an emerging field, the Intellectual Property Office of Singapore (IPOS) has introduced an Accelerated Initiative for an Artificial Intelligence (AI2) programme, which became effective on 26th April 2019.

This programme speeds up the file-to-grant process for AI-related patent applications from the usual two to three years to just six months, which makes Singapore’s patent granting for AI-related applications the fastest in the world.

To be eligible for AI2 application fast-tracking, an applicant has to meet the following prerequisites:

  • The patent application was first filed in Singapore;
  • The patent application relates to AI;
  • The Request for Grant of Patent (Patent Form 1) and Request for Search and Examination (Patent Form 11) were filed on the same day;
  • The patent application contains no more than 20 claims; and
  • A supporting document labelled “Fast Track document”, stating that the patent application is an AI invention, is furnished during the submission of the Request for Search and Examination (Patent Form 11).

Under the AI2 programme, Alibaba Group Holding, one of China’s biggest e-commerce companies, has obtained its AI patent in Singapore in just three months, which is a world record.

GI Registry

Last year also saw the implementation of the Singapore Register of Geographical Indications (the GI Registry), which commenced operations on 1st April 2019. The GI Registry is one of the obligations under the EU-Singapore Free Trade Agreement (the EUSFTA), aimed at enhancing the protection of intellectual property in Singapore.

Before its establishment, GIs were protected only in narrow and specific circumstances where a GI related to wines or spirits or was used in a manner which misleads the public or constitutes unfair competition.

GIs may now be registered in relation to a broad range of goods, including agricultural products and foodstuffs. These registered GIs are protected from any unauthorised use in respect of the category of goods for which they are registered, where the goods in question do not originate from the place indicated by the GI. This applies whether or not:

  • The true origin of the subject goods is used together with the registered GI;
  • The registered GI is used by way of translation; or
  • The registered GI is used alongside words such as “type” or “style” (eg “Champagne-style wine”).

Remedies that may be awarded in respect of the infringement of GIs include an injunction to restrain the infringing act, damages or an account of profits. Moreover, the Singapore court may order the infringer to deliver infringing goods or other material bearing the GI to the plaintiff.

A new but yet to be implemented feature of registered GIs is the availability of border enforcement measures, including procedures through which an interested party may request Singapore’s customs authority to: (i) seize goods suspected of infringing a registered GI which is to be exported or imported; and (ii) obtain and provide to interested parties information in respect of the seized goods necessary to commence action for infringement of GIs. These measures are expected to come into force within three years of the entry into force of the EUSFTA (November 2022).

Registration procedure

Applicants registering a new GI will have to indicate the categories of agricultural products/foodstuff that the GI will apply to, and the quality, reputation or other characteristic attributable to that place. The proposed GI will then be examined by a Registrar of the GI Registry for compliance with the applicable statutory requirements and will thereafter be published for the purposes of opposition proceedings before proceeding to registration.

Nearly 200 prospective GIs have been singled out for application for registration (subject to the applicable procedures and statutory requirements) in the GI Registry under the EUSFTA. Of these, 138 GIs had been registered by the EU at the time of writing.

Dispute resolution reform

The Intellectual Property (Dispute Resolution) Act 2019 (the IPDR Act) was passed by the Parliament of Singapore on 5th August 2019 following public consultations.

The IPDR Act will be implemented in phases, with some portions in force already and the rest coming into effect at a later date.

The IPDR Act provides for amendments to Singapore’s Arbitration Act (the AA) and the International Arbitration Act (the IAA) to clarify that IP disputes can be arbitrated in Singapore. These amendments came into effect on 21st November 2019.

In line with the private nature of arbitration, the AA and the IAA further provide that the resulting arbitral award binds only the parties to the arbitration and not third parties. In particular, an arbitral award does not affect the rights or liabilities of third-party licensees and third-party holders of security interests of the IP right in dispute.

The IPDR Act seeks to simplify the hearing of civil IP disputes by granting the Singapore High Court exclusive jurisdiction over the following matters: (i) infringement of registered (patents, trade marks, registered designs and registered GIs) and non-registered (copyright and unregistered GIs) IP rights; (ii) passing off; and (iii) declarations of non-infringement of patents.

The relevant amendments pertaining to the consolidation of civil IP proceedings for patent infringement, copyright infringement and passing off in the High Court will come into force on a date to be notified. At present, proceedings for patent infringement may be heard by the IPOS, while those for copyright infringement and passing off may be heard in the State Courts. The High Court remains the exclusive forum for infringement proceedings involving registered trade marks and registered designs.

It may not feature in the IPDR Act, but it is likely that the consolidation of civil IP disputes in the High Court will be implemented in tandem with a fast-track IP litigation pathway, which was last mooted in a public consultation in October 2018 by the Singapore Ministry of Law.

The patent grant process

The IPDR Act introduces two new procedures in the patent grant process. Both of these procedures are yet to be implemented and will come into force at a later date.

  1. The Third-Party Observation Procedure. A new s32 of the Patents Act formalises the common practice of third parties making informal submissions to the Registrar on the patentability of an invention in a patent application after it has been published. Any person may, after the publication of a patent application, make observations in writing to the Registrar on whether the invention in the said application is patentable. The observations must be received by the Registrar before the examination report, the search and examination report or the supplementary examination report is issued.
  2. The Post-Grant Patent Re-examination Procedure. The IPDR Act proposes a new s38A of the Patents Act to provide for a process by which a person may file an ex parte request for the post-grant re-examination of the specification of a patent. The patent will be revoked if the re-examination report shows that there is at least one unresolved objection for which the patent proprietor failed to give a satisfactory response.

Although the grounds for re-examination are similar to those found in s80(1) of the Patents Act (for revocation), the post-grant re-examination procedure allows an opportunity to challenge a patent through re-examination by an Examiner. This can result in the saving of costs due to the ex parte nature of the procedure.

Examination routes curbed

Prior to 1st January 2020, an applicant was permitted to choose any one of the following search and examination options in order to pursue protection for their patent application1 in Singapore:

  • Request for Search Report within 13 months of the priority date (or the filing date if there is no priority claim), followed by a Request for Examination within 36 months of the priority date (or the filing date if there is no priority claim); or
  • Request for a combined Search and Examination Report within 36 months of the priority date (or the filing date if there is no priority claim); or
  • Request for Examination Report within 36 months of the priority date (or the filing date if there is no priority claim); or
  • Request for Supplementary Examination Report within 54 months of the priority date (or the filing date if there is no priority claim).

However, as of 1st January 20202, the Request for Supplementary Examination Report (the “supplementary examination route”) is no longer available for the following Singapore patent applications:

  • Patent Cooperation Treaty (PCT) applications entering the national phase in Singapore, with an international filing date of 1st January 2020 onwards;
  • Direct national applications filed on or after 1st January 2020; and
  • New applications3, including divisional applications where the actual filing date is on or after 1st January 2020.

Singapore patent applications affected by the closure of the supplementary examination route are now limited to the options of local search and examination and local examination based on a foreign search result, or the other three search and examination options above.

This closure is in line with IPOS’ plans to progressively improve the quality of Singapore’s granted patents. This will ensure consistency in the patentability assessment of all Singapore patent applications. 

1 Direct national applications. The first option is not applicable to PCT applications entering the national phase in Singapore.
2 Section 29(11A) and Rule 43(4) of the Singapore Patents Act and Patents Rules.

3 New applications are mentioned in s20(3), 26(11) or 47(4) of the Singapore Patents Act.

 

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