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INTELLECTUAL PROPERTY (AMENDMENT) BILL 2021 PASSED IN PARLIAMENT ON 12 JANUARY 2022 (Singapore)

NO&T Asia Legal Review

*Please note that this newsletter is for informational purposes only and does not constitute legal advice. In addition, it is based on information as of its date of publication and does not reflect information after such date. In particular, please also note that preliminary reports in this newsletter may differ from current interpretations and practice depending on the nature of the report.

Introduction

At the first Parliament Sitting of 2022 on 12 January, the Intellectual Property (Amendment) Bill 2021 (the “Bill”) was passed after being read for the second time.

Among other things, the Bill seeks “to amend the Geographical Indications Act 2014, the Patents Act, the Plant Varieties Protection Act, the Registered Designs Act and the Trade Marks Act to facilitate certain changes to the process for registration of intellectual property rights, standardise certain provisions across these Acts…as well as to amend the Intellectual Property Office of Singapore Act for fines and composition sums to be paid into the Consolidated Fund.”※1

The Bill is part of the Singapore IP Strategy 2030, which in the context of intangible assets (“IA”) and intellectual property (“IP”), aims to:※2 strengthen Singapore’s position as a global hub, attract and grow innovative enterprises that use them, and develop good jobs and valuable skills in them. The Bill’s amendments can be categorised under intended improvements to: a) business-friendliness, b) operational efficiency and c) legislative and procedural clarity. These will be briefly elaborated upon in turn.

a) Business-friendliness

Four major changes were introduced to improve IP registration with the Intellectual Property Office of Singapore (“IPOS”).

First, in regards to international patent applications which are not in English, the requirement to pay a fee for IPOS to publish the English translation of the application will be removed. Instead, IPOS will publish the English translation received from the applicant as part of its routine process.

Second, partial acceptance for national trade mark applications will be permitted. Where a trade mark application is made across multiple types of goods and services and the trade mark examiner only has objections in respect of some of the goods and services, IPOS will be able to allow the trade mark to be registered for those goods and services where there were no objections.

Third, regarding the withdrawal of trade mark applications in the event of certain missed deadlines, applicants will have two months to request for the continued processing of their lapsed applications, instead of the current six months to request for reinstatement.

Fourth, the Bill introduces an opposition mechanism to facilitate the correction of errors in IP applications or registrations (such as, particulars of the applicant or rights-holder, or priority details of an application or registration) which may affect the interests of third parties. The Bill’s amendments will provide IPOS with the discretion to publish correction requests so that third parties can have notice of such requests and decide on whether or not to oppose them.

b) Operational Efficiency

In this regard, the Bill makes four key amendments to IPOS’ internal processes.

First, patent examiners will be allowed to invite applicants to make minor amendments to the specification of the patent applications in the event that examiners are satisfied that this is sufficient for overcoming the objections. This amendment reduces turnaround and processing time by obviating the current need for examiners to issue written opinions setting out their objections.

Second, if in relation to a patent examiner’s report objecting to the grant of a patent, the applicant files amendments to overcome all unresolved objections mentioned in the original report, then the reviewing examiner no longer needs to review the original report, he or she can focus directly on the proposed amendments.

Third, in relation to applications for the protection of new plant varieties, the Bill introduces a new cooperative mode of examination, which allows examiners to rely on relevant tests conducted and submitted by the breeder or another person, organisation, or entity acceptable to IPOS.

Fourth, the Bill will shift technical and operational provisions (such as the amount of time a patent grantee has to renew their patent after expiry – currently provided under the Patents Act)※3 from primary to subsidiary legislation. This will allow IPOS to be more nimble in adapting to changing needs.

c) Legislative and Procedural Clarity

The Bill makes three key changes to clarify the law and smoothen IPOS’ administration of the IP prosecution process.

First, the Bill seeks to improve the public’s access to patent documents by providing that “the Registrar may, on his or her own initiative, publish or communicate any information or documents relating to an application for a patent published in accordance with section 27 [of the Patents Act] or relating to any patent granted to such application, subject to any prescribed restriction.”※4

Second, the Bill will empower the Registrar to issue practice directions on the manner of filing of patent applications, in addition to the manner prescribed in subsidiary legislation. This would allow the Registrar to issue practice directions setting out the format for filing sequence listings (where applicable) with patent applications – this is in line with IPOS’ plans to amend the rules made under the Patents Act.

Third, the Bill clarifies that an expired trade mark will continue to be regarded as an “earlier trade mark” for as long as it remains eligible for renewal or restoration.

Conclusion

In the Bill’s Second Reading Speech, Second Minister for Law, Mr. Edwin Tong stated that the Government intends to implement the majority of the Bill by May 2022, with the new cooperative mode of examination for plant variety protection applications to be implemented later, after the IPOS has finalised the procedural details.

*1
Intellectual Property (Amendment Bill) 2021 (Bill No. 39/2021.)

*2
Second Reading Speech by Second Minister for Law, Mr Edwin Tong, on the Intellectual Property (Amendment) Bill 2021 on 12 January 2022 at [3]; Charting Our Future With IP Over The Next Decade Singapore IP Strategy 2030 [https://www.ipos.gov.sg/manage-ip/singapore-ip-strategy-2030 (accessed 16 February 2022)]

*3
Patents Act 1994 (2020 Rev ed) s 36

*4
Intellectual Property (Amendment Bill) 2021 (Bill No. 39/2021.) cl 17; Second Reading Speech by Second Minister for Law, Mr. Edwin Tong, on the Intellectual Property (Amendment) Bill 2021 on 12 January 2022 at [22]

This newsletter is given as general information for reference purposes only and therefore does not constitute our firm’s legal advice. Any opinion stated in this newsletter is a personal view of the author(s) and not our firm’s official view. For any specific matter or legal issue, please do not rely on this newsletter but make sure to consult a legal adviser. We would be delighted to answer your questions, if any.

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