New Dimensions Of IP Laws In Singapore

22nd August, 2022 - 12:36 pm Categories: Signapore 0 Comments

By introducing ‘The Intellectual Property (Amendment) Bill, 2022’ in the Parliament Singapore is determined to make improvements in existing laws. This bill was tabled for second reading in January 2022 and came into force in May 2022. The recent amendment aims to change the existing laws relating to Geographical Indications, Patent Act, Plant Variety Protection Act, Designs and Trademarks Act.

SCOPE OF AMENDMENT IN THREE CATEGORIES:

1. To strengthen and amplify the procedural and legislative coherence:

This includes clarification of IPOS’s ability to provide for better and easy access of patent documents to public which can be viewed only on written request, giving power to the Registrar for issuance of practice directions for sequence listing matters, clarification related to ‘earlier trademark’ and so.

2. To improve and expand business comity:

This Bill aims at incorporating partial acceptance of national trademark applications, removal of publication of translation fees, amending post deadline reliefs for trademarks and inducting opposition mechanism for rectification of errors.

3. Substantial operational efficiency:

Under this scheme the Bill will reduce the turnaround processing time for patent applications, shift the technical and operational provisions from primary to subsidiary legislations, introduce new cooperative method of applications of Plant Varieties and will streamline the patent examination review process.

KEY AMENDMENTS:

1. STREAMLINING NON-ENGLISH INTERNATIONAL PATENT APPLICATIONS

The administrative process in relation to non-English international patents has sought to be smoothened. Earlier, while determining the damages for infringement, the previous Patents Act, tied the rights of the patent-holder to the date of publication from the date when the Intellectual Property Office of Singapore (IPOS) translated the non-English patent application to English and then publish it. Now, changing the requirement of fee and this admin hurdle, IPOS will consider the date of publication from when the English translation is received from the applicant. This will reduce the cost of applicants and will also save their time.

2. ACCEPTING NATIONAL TRADEMARK APPLICATIONS PARTIALLY

An applicant is allowed to file for trademark registration under multiple goods and services, but if the application is rejected for one it was earlier rejected in entirety. After this bill, even if the criterions for some goods and services is not met, IPOS will consider the application for the rest, making the application to be accepted partially.

3. EASING THE POST-DEADLINE MEASURES FOR TM APPLICATIONS

Earlier, when the trademark application deadline was missed by any applicant, it was considered to be as withdrawn. Only after passing of six months after that deadline was the applicant allowed to reinstate the application. Now, as a new reform, the applicant will not have to wait for six months since this time period has been reduced to two months to initiate afresh the process and preserve the application. Reducing this timeline will expedite the whole trademark application process.

4. ALLOWING THIRD PARTY OPPOSITION

With this change, third parties are allowed to file for opposition to amend for any corrections of errors made in the applications or the registration of the concerned IP. This amendment specifically focuses on GIs, Plant Variety Protection, Designs and Trademarks. Interested parties will be sent an alert for them to see if they want to challenge such opposition or not.

5. SMOOTHENING THE PATENT EXAMINATION REVIEW PROCESS

At present if the patent examiner supplies the objection report to the grant of patent, a written submission is to be filed by the applicant for reviewing that objection report. But, if the applicant files for amendment to tame the objections that will be reviewed by now another examiner making two reports to be examined. This lengthy process has been streamlined in case the applicant files for amendment, the first two reports will not be examined only the application with amendment will be considered.

6. ACCESS TO PATENT DOCUMENTS

The bill makes an attempt to provide for patent documents to public easily and without a request. Earlier, to attain any patent related document a request was submitted with IPOS only then the specific document was released.

7. POWER TO REGISTRAR TO SUPPLY THE MANNER APROPOS PRACTICE LISTING

Usually, the way sequence listing was done in patent applications, was not provided under the law, even while considering biotechnical and biomedical inventions. With this bill, this has been changed with giving the power to the registrar to issue practice directions in the prescribed format, making the patent searches more practicable and convenient from all dimensions.

8. CONSIDERING EXPIRED TRADEMARKS AS ‘EARLIER TRADEMARK’

Unless specifically provided or under the situations so established the trademarks older than a year were termed as ‘earlier trademark’ but law did not lay any clarification for the same. But now, the bill explicitly clarifies the eligibility of expired trademarks as ‘earlier trademarks’ till the time they can be renewed or restored.

9. ADVANCED PROCEDURE OF EXAMINATION FOR PLANT VARIETY APPLICATIONS

After the Bill, reports of relevant tests conducted by breeders or other reliable person, or organization will be accepted by IPOS. Initially, in case of foreign applications only the reports by foreign examiners of approved countries were accepted.

CONCLUSION:

IP system in Singapore develops and supports new technologies, innovations especially keeping in mind the increased awareness of masses towards subjects like climate change, environment, IP protection, business expansions and so on. The current bill gives a clear picture to investors and those seeking IP protection in the country. The bill aims to benefit emerging technologies and businesses, but those with short technology life cycles can gain more out of it.

Author: Upasna Rana LLM (IIT Kharagpur), Co-Author: Abhijeet Deshmukh Associate Partner and Advocate – Litigation, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com. or at Khurana & Khurana, Advocates and IP Attorney.