In Circular No. 1/2019 published on 5 April 2019 and a follow up Circular No. 4/2019 published on 29 November 2019, the Intellectual Property Office in Singapore (IPOS) indicated that they have heightened their check on the declaration of novelty in registered design applications.
A registered design application that is not new or does not meet the registration criteria may be refused. Whilst this is provided for under Section 17(2) of the Registered Designs Act the section has seldom been invoked by the Registrar in the past. To provide clarity on the objection(s), the Registrar will include at least one example, in support of the Registrar’s opinion, citing how the subject matter of the application is the same as the example(s) or differs from the example(s) only in immaterial details or in features that are variants commonly used in the trade.
This is a shift in the position taken by IPOS in 2016 following a comprehensive review of the registered designs regime, when it was decided that substantive examination procedures for design applications would not be implemented, so as to maintain a quick registration process and significantly lower the cost of registration for the applicant. Registered design applications prior to the release of the 2 Circulars were checked for compliance with formalities only.
With this latest guidance, new design applications in Singapore will now be subject to some form of substantive examination. It remains to be seen how stringent and extensive the Registrars will be in implementing the heightened checks.
A heightened check on the novelty of the design application may be welcomed by most applicants as they might not have the resources and means to perform self-assessment checks prior to applying for design protection.
With the Registrar now performing this heightened check at no additional cost, registered designs granted under this new scheme are bolstered against challenges and oppositions. This should provide greater confidence to registered design owners when exploiting their rights for commercial gains and enforcement actions in suspected infringement cases. In addition, non-registrable designs can be nipped in the bud, saving the proprietors and companies resources and effort in maintaining their intellectual property portfolio.
The process for responding to a deficiency notice remains unchanged. When a deficiency notice is received, the applicant will have 3 months from the date of notice to file a response. If the applicant does not agree with the deficiencies raised, he should reply to the Registrar in writing with his arguments. If the Registrar accepts his submission, the application will proceed to registration. Otherwise, it would be refused. The applicant may also request for the due date to response to the notice be deferred by up to 4 instances.
The request for extension has to be submitted prior to the expiry of the due date to respond to the deficiency notice and official fee are payable for the third and forth requests. If there is no response filed by the expiry date of the notice, the application shall be treated as withdrawn. It is worth noting that a withdrawn application may still be reinstated if a request along with a response to the deficiencies is filed within 6 months from the date that the application is treated as withdrawn. Official fees are payable when responding to the Registrar. In essence, the applicant has some flexibility when responding to a deficiency notice which can possibly be exploited to suit their prosecuting strategies.
A heightened check of the declaration of novelty by the Singapore Registrar appears to be a positive progression towards improving the quality of Singapore design applications. This mirrors the recent development of the Singapore patent regime from a self-assessment system to a positive grant system which has gained recognition in the region, if not globally. This latest development will no doubt enhance Singapore’s position as a global IP Hub in Asia and eventually bring about greater benefits to all stakeholders.
A version of this article was first published in the membership journal of the Chartered Institute of Patent Attorneys – see more at http://www.cipa.org.uk/.