E-briefing: Key Changes to Singapore IP Laws: The Intellectual Property (Amendment) Bill 2022

I. Introduction

1. A new Intellectual Property Bill (the “Bill”) was tabled in Parliament for Second Reading on 12 January 2022 and is expected to come into effect in May 2022. The Bill, being intended to amend the existing Geographical Indications Act 2014, Patents Act, Plant Varieties Protection Act, Registered Designs Act and Trade Marks Act, seeks to introduce improvements across three broad categories – to increase business friendliness, greater operational efficiency and enhance legislative and procedural clarity.

II. Key change #1: Administrative process streamlined for non-English International Patent Applications

2. The Patents Act currently ties certain rights of a patent-holder to the date when the patent application is published (e.g., when determining damages for infringement). However, for international patent applications that enter Singapore which are not in English, these rights are only conferred if IPOS publishes the English translation of the applications upon payment of a fee.

3. The Bill removes the requirement for a fee. Instead, as part of its routine process, IPOS will see to the publication of the English translation received from the applicant saving time and cost for applicants.

III. Key change #2: Partial acceptance of national trade mark applications

4. Currently, for national trade mark applications, applicants may apply to protect a trade mark across multiple types of goods and services. If a trade mark examiner has objections to the application in respect of only some of the goods or services listed by the applicant, these objections may hold up the entire application.

5. The Bill will amend the Trade Marks Act to allow IPOS to partially accept an application, allowing the trade mark to be registered for those goods and services for which there were no objections in such cases.

IV. Key change #3: Change in the post-deadline relief measure for trade mark applications

6. Initially, trade mark applications were treated as withdrawn if certain deadlines are missed. In the six months after the deadline, applicants can request reinstatement of their applications.

7. Under the Bill, applicants will henceforth have two months to request for the continued processing of their lapsed applications, instead of six months to request reinstatement. Continued processing preserves the application and, should the applicant wish to continue with his application, expedites the processing of the application.

V. Key change #4: Introduction of third party opposition for any correction of errors made in IP applications or registrations

8. This change pertains to the Geographical Indications Act 2014, the Plant Varieties Protection Act, the Registered Designs Act, and the Trade Marks Act. The Bill will amend the relevant Acts to give IPOS the discretion to publish requests for corrections (e.g., corrections that affect priority details of an application or registration etc.), so that third parties are made aware of such correction requests, and can assess whether they wish to oppose the corrections.

VI. Key change #5: Improved patent examination procedure to reduce processing time

9. Currently, if a patent examiner assesses that a patent application does not satisfy one or more of the requirements to be eligible for the grant of a patent, he or she must issue a written opinion setting out the objections.

10. Under the Bill, if an examiner’s objections can be overcome with minor amendments to the specification of the application, examiners can invite applicants to make those amendments under a shorter period, reducing turnaround and processing time.

VII. Key change #6: Streamline patent examination review process to remove unnecessary work

11. Currently, once a patent examiner has issued a report objecting to the grant of a patent, the applicant can request that the examiner’s report be reviewed by filing written submissions to overcome the objections before another examiner reviews both reports. However, if the applicant files amendments to overcome all unresolved objections mentioned in the original report, that report is no longer relevant.

12. The Bill changes this so that if the applicant files such amendments, the original report need not be reviewed, and the reviewing examiner can focus on the proposed amendments.

VIII. Key change #7: Introduction of a new cooperative mode of examination for plant variety applications

13. At present, during the course of the examination, IPOS may appoint external experts to conduct the relevant tests and examination or rely on existing examination reports issued by foreign examiners from approved countries.

14. The Bill allows for examiners to rely on relevant tests conducted and submitted by the breeder or another person, organisation, or entity acceptable to IPOS.

IX. Key change #8: Shifting technical and operational provisions from primary to subsidiary legislation

15. The Bill proposes to shift technical and operational provisions from primary to subsidiary legislation, which will allow IPOS to adjust and adapt to changing needs more quickly and more nimbly, since amendments to subsidiary legislation can be made more speedily.

X. Key change #9: Improvement of the public’s access to patent documents

16. The Bill clarifies IPOS’ ability to make patent documents available to the public, even in the absence of any request for the documents.

XI. Key change #10: Empowerment of the Registrar to issue practice directions on the manner of filing applications, in addition to the manner prescribed in subsidiary legislation

17. The law currently has no requirement for patent applications to include sequence listings (e.g., listings of nucleotide and amino acids), even when they might be relevant, especially in biomedical and biotechnological inventions.

18. The Bill allows to registrar to issue practice directions setting out the format in which these sequence listings are to be filed, making patent searches easier and more thorough for examiners and the public.

XII. Key change #11: Clarity that an expired trade mark is regarded as an “earlier trade mark”

19. Currently, it is only under several circumstances that an expired trade mark can be regarded an “earlier trade mark” for longer than a year (e.g., an extension of time as part of IPOS’s Covid-19 relief measures). However, such circumstances were not explicitly clarified.

20. Under the Bill, the Trade Marks Act will be amended to clarify that expired trade marks will be considered “earlier trade marks” for as long as they remain eligible for renewal or restoration.

XIII. Key change #12: Initiation of an administrative change to the IPOS Act

21. Under the Bill, any revenue from legislated financial penalties (e.g., fines and composition fines etc.) will go to the Consolidated Fund.

For a full reading of The Intellectual Property (Amendment) Bill, you may access this document here.

For further information, contact:

Esther Wee

Head of IP

Harry Elias Partnership LLP

estherwee@harryelias.com   

+65 6361 9350

Tan Weiyi

Partner

Harry Elias Partnership LLP

weiyitan@harryelias.com 

+65 6361 9376

Daniel Yap

Legal Associate

Harry Elias Partnership LLP

danielyap@harryelias.com

+65 6361 9862