In August 2019, the Singapore Government introduced the Second Reading of a new law, the Intellectual Property (IP) Dispute Resolution Bill, making major changes to the landscape for IP disputes in Singapore across all areas of IP.
The Singapore Government introduced this proposed law with a view to ensuring that IP dispute resolution remains cost effective and to remove the uncertainties in the existing framework over the appropriate forum of some types of IP disputes.
The proposed law also introduces new procedures before the Patent Office. Going forward it will be possible to file third party observations before a patent is granted and request re-examination of granted patents instead of revocation.
The new law also clarifies that IP disputes may be resolved by arbitration including proceedings involving the validity of IP rights. Such proceedings will only bind the parties to the arbitration proceedings and cannot therefore affect the registration of the IP right vis a vis third parties. The benefit of this change is that parties involved in arbitration will not have to conduct separate court proceedings to determine the IP issues.
Key Changes at a glance
- Almost all IP disputes can now be heard in the Singapore High Court irrespective of the size of the claim. As such the Singapore High Court will be the forum for all IP disputes involving copyright, trade marks, patents and passing off;
- Further, even for proceedings involving revocation and invalidation of IP rights, the High Court will now have jurisdiction. This includes patent revocation proceedings, previously heard only by the Patent Office;
- Appeals from a decision of the IP Office to the High Court will only be appealable to the Court of Appeal with the leave of the court across all forms of IP rights;
- Third party observations will be introduced into the patent prosecution process. A third party will be able to submit observations on the patentability of the invention which the Examiner can use during the search and examination process;
- A third party can submit a request for re-examination of a granted patent. This will be an ex parte proceeding. If the Examiner finds grounds for revocation, she will contact the patent proprietor and thereafter the patent may be revoked by the Patent Office;
- IP disputes of all kinds, including validity and revocation can be the subject of arbitration proceedings in Singapore but will only be effective as between the parties to the arbitration; and
- IP arbitration awards cannot affect the status of IP rights on the various IP Registers and even if the award invalidates an IP right, it will remain on the Register.
Intellectual Property cases before the Singapore High Court will be heard by IP judges who have expertise in dealing with IP matters, especially technical patent proceedings. The IP Office of Singapore will also have discretion to refer disputes before it to the High Court instead.
These proposed changes provide clarity on the scope of jurisdiction of the Singapore courts in relation to various forms of IP disputes. They also make the dispute resolution regime more consistent across the various types of IP rights, making litigation easier for parties. The much welcomed clarifications on the impact of arbitration awards on IP rights ensures that parties will be able to proceed to arbitrate disputes involving IP rights with greater certainty.
This article was written by Sheena Jacob, Partner and Head of IP and Technology at JurisAsia LLC.