In a reform to the intellectual property (IP) dispute resolution landscape in Singapore, the Intellectual Property (Dispute Resolution) Act 2019 (“the Act”) came into operation on 12 November 2019 with aims of strengthening the patent protection framework and reinforcing Singapore’s profile as a hub for international arbitration. The legislative changes brought about by the Act include consolidation of IP proceedings, arbitration of IP disputes, fast-track options for IP litigation, and revision of patent third-party observations and patent post-grant re-examination.
I. Consolidation of Civil IP proceedings at the Singapore High Court
Previously, the Intellectual Property Office of Singapore (IPOS), the State Courts and the High Court shared jurisdiction over IP disputes, with the forum determined by the nature of the IP right, the remedy sought and the value of the claim. Notably, the High Court only had exclusive jurisdiction over disputes that relate to registrable IP rights.
The Act simplifies the existing process by granting the High Court exclusive jurisdiction over all IP infringement disputes. These include civil infringement of the registrable IP rights of patents, trade marks and designs as well as infringement of the non-registrable copyright and passing-off actions for trade marks, irrespective of the sum in dispute. Where formerly, the High Court and IPOS shared jurisdiction to make a declaration of non-infringement of patents, now power is vested solely in the High Court for the same. The Act also allows the High Court to have concurrent jurisdiction with IPOS to hear post-grant revocations and invalidation for patents, trade marks, registered designs and plant variety cancellation.
In addition to consolidating IP proceedings in the first instance at trial, the position on appeal has also been consolidated with implementation of the Act. Across all IP rights in Singapore, decisions issued by IPOS are appealable to the High Court without leave. Leave to appeal however would be required to appeal a High Court ruling to the appellate court.
II. Clarifies that IP Disputes can be Arbitrated in Singapore
New provisions have been added to the Arbitration Act and the International Arbitration Act to expressly state that IP disputes can be arbitrated in Singapore. An arbitral award would be effective only between parties to the arbitration and not binding to the world at large. Consequently, a finding by an arbitral tribunal may not be relied upon by third parties to advance their position in separate proceedings or to argue against infringement.
III. Amendments on Pre-Grant Observations and Post-Grant Re-examination
Previously, after a patent application has been published but before grant, third-party observations relating to the patentability of the invention could be informally submitted to the Registrar of Patents. The Act presently introduces formal procedures for submissions of such pre-grant observations.
Further, to ensure that patents granted by IPOS are more robust and able to withstand scrutiny, post-grant re-examination proceedings are now available on limited grounds. Balancing the rights of patent proprietors and the interests of the public, the post-grant re-examination option offers third parties a cheaper alternative to applying for revocation, while at the same time according IPOS the discretion not to grant requests that are frivolous or without merit.
IV. Fast-Track Option for IP Litigation
Another significant change to the IP dispute resolution framework is the introduction of a specialised track for litigating IP disputes. This fast-track option is intended for litigants who may not have the resources to commence a High Court suit or for whom it may not be viable to bear out the full duration of the suit. Parties can look forward to truncated proceedings and cost savings features when the track is enacted in due course.
Overall, the Act simplifies the processes for owners to enforce their IP rights and at the same time, provides cost-effective avenues for third parties to mount challenges. Patent owners would be assured of the strength and validity of their patent rights that have been subjected to scrutiny. The Act also serves to complement Singapore’s position as a choice venue for international commercial arbitration.
This article was first published in Managing IP on 17th March 2020.