Following big policy changes in 2019, the time is right to look at IP developments in this fast-evolving country.
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 coordinated endeavor 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 26 April 2019. This programme speeds up the file-to-grant process for AI-related patent applications from the usual 2 to 3 years to only 6 months, which makes Singapore’s patent granting for AI-related patent applications the fastest in the world.
To be eligible for the AI2 programme, an applicant has to meet the following pre-requisites:
- The patent application was first filed in Singapore;
- The patent application is related 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 to be furnished during the submission of the Request for Search and Examination (Patent Form 11).
Under this 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.
Last year saw the implementation of the Singapore Register of Geographical Indications (the “GI Registry”), which commenced operations on 1 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 unauthorized 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” (e.g. “champagne-style wine”).
Remedies which 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 by 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 3 years of the entry into force of the EUSFTA (i.e. in November 2022).
Applicants for the registration of a new GI will have to indicate the categories of agricultural products / foodstuff that the GI is to apply to, and the quality, reputation of 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 have been registered by the European Union at the time of writing.
Dispute Resolution Reform
The Intellectual Property (Dispute Resolution) Act 2019 (the “IPDR Act”) was passed in Parliament on 5 August 2019 following public consultations in July 2017 and August 2018. The IPDR Act will be implemented in phases, with some portions coming into force on 21 November 2019 and the rest coming into effect at a later date.
The IPDR Act provides for amendments to Singapore’s Arbitration Act (the “AA”) and 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 of the following matters: (i) infringement of registered (i.e. patents, trade marks, registered designs, registered geographical indications) and non-registered (i.e. copyright and unregistered geographical indications) 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 in the IPOS while those for copyright infringement and passing off may be heard in the State Courts. The High Court is and was the exclusive forum for infringement proceedings involving registered trademarks and registered designs.
It may not feature in the IPDR Act, it is likely that the consolidation of civil IP disputes in the High Court may be implemented in tandem with a ‘fast-track’ IP litigation track which was last mooted in a public consultation in October 2018 by the 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.
- The Third-Party Observation Procedure. A new s32 of the Patents Act formalizes 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 a patentable invention. The observations must be received by the Registrar before the examination report, search and examination report, or the supplementary examination report is issued.
- Post-Grant Patent Re-examination Procedure. The IPDR Act proposed 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 savings of costs due to the ex parte nature of the procedure.
Examination Routes Curbed
Prior to 1 January 2020, an applicant was permitted to choose any one of the following search and examination options in order to pursue protection for his patent application in Singapore:
- Request for Search Report within 13 months from the priority date or filing date if there is no priority claim, which is to be followed by a Request for Examination within 36 months from the priority date or filing date if there is no priority claim; or
- Request for combined Search and Examination Report within 36 months from the priority date or filing date if there is no priority claim; or
- Request for Examination Report within 36 months from the priority date or filing date if there is no priority claim; or
- Request for Supplementary Examination Report within 54 months from the priority date or filing date if there is no priority claim.
However, from 1 January 2020, the Request for Supplementary Examination Report under option 4 or the “supplementary examination route” is no longer available for the following Singapore patent applications:
- Patent Cooperation Treaty (PCT) applications entering national phase in Singapore having an international filing date of 1 January 2020 onwards;
- Direct national applications filed on or after 1 January 2020; and
- New applications including divisional applications where the actual filing date is on or after 1 January 2020.
Singapore patent applications affected by the closure are now limited to the options of local search and examination and local examination based on a foreign search result, or to the other three search and examination options above.
The closure is in line with IPOS’ plan to progressively improve the quality of Singapore granted patents. This will ensure consistency in the patentability assessment of all Singapore patent applications.
 Direct national applications; 1st option is not applicable to PCT applications entering national phase in Singapore.
 Section 29(11A) and Rule 43(4) of the Singapore Patents Act and Rules.
 New applications mentioned in Section 20(3), 26(11) or 47(4)) of the Singapore Patents Act.
Author: Denise Mirandah
This article was first published in the May 2020 issue of the CITMA Review, the journal of the Chartered Institute of Trademark Attorneys (CITMA).