Key changes proposed under Singapore’s Intellectual Property (Dispute Resolution) Bill

Key changes proposed under Singapore’s Intellectual Property (Dispute Resolution) Bill

Key changes proposed under Singapore’s Intellectual Property (Dispute Resolution) Bill

The Intellectual Property (Dispute Resolution) Bill (the “Bill”) was first read in Parliament on 8 July, 2019. Significant changes to the intellectual property (“IP”) dispute resolution regime have been proposed and will potentially affect all right holders’ enforcement and protection strategies.

The proposed amendments are summarised below.

 

Harmonisation of procedures for different types of IP

i)     Consolidation of IP Proceedings with High Court

Under the current framework, the High Court, State Courts, and Intellectual Property Office of Singapore (“IPOS”) share jurisdiction over various IP-related proceedings. To determine the appropriate forum for commencing a claim, a rights holder would need to navigate between multiple factors, including the nature of the IP right, the type of remedy sought, and the value of the claim.

To simplify the IP dispute resolution system and build upon the IP expertise already established in the High Court, the High Court will have exclusive or at least concurrent jurisdiction over most IP-related disputes. However, it has been noted that issues relating to trade secrets and breaches of confidence regularly feature in a range of more general disputes (such as disputes over alleged breaches of employment agreements), and may still be heard by the State Courts. 

ii)     Fast Track

A “fast track option” (“Fast Track”) will also be introduced to cater for parties that do not have the resources available for a full High Court suit. The Fast Track will feature caps on the damages recoverable and more rigorous case management. Accordingly, the Fast Track may also accommodate parties in less complex IP disputes, for example where both parties are in agreement on liability for infringement but not on the damages. Further details on the Fast Track will be formulated in connection with the ongoing review of the Rules of Court.

iii)     Appeals

The Bill clarifies that decisions issued by the Intellectual Property of Singapore (“IPOS”) may be appealed to the High Court without leave, but no further appeal from the High Court to the Court of Appeal will be available unless either court grants leave. This is currently the position set out under the Patents Act, and will be extended to all other IP rights.

iv)      Certificates of contested validity

The Bill seeks to extend the availability of certificates of contested validity to all types of IP. From the perspective of a rights holder, certificates of contested validity can be useful for deterring repeated challenges to the validity of the rights owned.

Presently, certificates of contested validity are only available for registered proprietors of patents or registered designs who have successfully defended the validity of the respective right owned before a court of Singapore. If further invalidation proceedings are commenced and the registered proprietor again obtains judgment in favour of validity, holding a certificate of contested validity entitles the proprietor to recover costs on a more favourable solicitor-and-client basis.

v)     Arbitration for IP disputes

The Bill also proposes amendments to the Arbitration Act and International Arbitration Act to confirm the arbitrability of IP disputes in Singapore, regardless of whether the IP issues are central to or only incidental in the arbitration. This will complement various other schemes to enhance Singapore’s profile as a venue for international commercial arbitration.

Parties considering arbitration should note that an arbitral award is only binding between parties to the arbitration, and not against third parties. The Bill also clarifies that simply being a licensee of IP that is the subject matter of arbitral proceedings does not (in itself) make such licensee a party to the arbitration.

 

Patent-specific provisions

i)     Declarations of non-infringement

Under the current iteration of the Patents Act, an allegedly infringing party may be able to seek a declaration of non-infringement of a patent before either IPOS or the High Court. In line with the consolidation of IP proceedings with the High Court, the Bill proposes that moving forward, only the High Court will have the jurisdiction to make a declaration of non-infringement of a patent.

ii)     Applications for patent revocation

As recently affirmed by the Court of Appeal in Sunseap Group Pte Ltd and Others v Sun Electric Pte Ltd [2019] SGCA 4, the High Court does not have jurisdiction to revoke a patent unless its validity has been challenged by way of counterclaim in infringement proceedings. A defendant seeking revocation as an independent action would have to file a separate application before IPOS.

Under the proposed amendments, the High Court and IPOS will share jurisdiction over applications for patent revocation. IPOS may also elect to refer applications for patent revocation to the High Court.

iii)     Pre-grant Observations and Post-grant Re-examination

Presently, pre-grant observations on the subject matter of a patent application may be informally submitted by third parties in writing to the Registrar of Patents. The Bill seeks to introduce formal procedures for submission of both pre-grant and post-grant observations, as well as post-grant re-examination proceedings.

The availability of post-grant re-examination potentially offers third parties a more cost-efficient alternative to applying for revocation. Further, to balance the interests of the patentee against third parties, the grounds for re-examination will be limited and IPOS’ examiners will have the discretion not to grant requests that are deemed frivolous, vexatious or amounting to an abuse of process.

 

To discuss these changes further, please do not hesitate to contact any member of the Davies Collison Cave team in Singapore. 

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