Partial implementation of Singapore’s Intellectual Property (Dispute Resolution) Act

Partial implementation of Singapore’s Intellectual Property (Dispute Resolution) Act

Partial implementation of Singapore’s Intellectual Property (Dispute Resolution) Act

Singapore’s Intellectual Property (Dispute Resolution) Act 2019 and Intellectual Property (Border Enforcement) Act 2018 were partially implemented on 21 November 2019.

In this first part of our two-part update, we summarise the changes to Singapore’s Intellectual Property (IP) dispute resolution system which were implemented on 21 November 2019, as well as the forthcoming amendments. Please click here for part two to read about changes to Singapore’s IP border enforcement landscape.  

21 November 2019 Amendments – arbitrability and appeals

On 21 November 2019, the Arbitration Act and International Arbitration Act were amended to confirm the arbitrability of IP disputes in Singapore, regardless of whether the IP issues are central to or only incidental in the arbitration.

Further, the position on appeals has been consolidated across all types of IP rights in Singapore. Decisions issued by the Intellectual Property Office of Singapore (IPOS) may be appealed to the High Court without leave, but leave is required to appeal a decision by the High Court to the Court of Appeal.

Pending Amendments – certificates of contested validity, patent re-examination and revocation

Presently, certificates of contested validity are available for patent proprietors who have successfully defended the validity of their patents before the High Court or IPOS’ registrar. However, such certificates can only be awarded by the High Court to registered proprietors of trade marks, geographical indications and registered designs. Moving forward, registered proprietors of patents, trade marks, geographical indications and registered designs alike would be able to obtain certificates of contested validity from the High Court or IPOS’ registrar as the case may be.

Forthcoming amendments to the Patents Act will also introduce formal procedures for submission of pre- and post-grant observations, as well as post-grant re-examination proceedings. Further, the Patents Act will be amended to give both the High Court and IPOS’ Registrar jurisdiction over applications for patent revocation.

To discuss these amendments further, please contact Thomas Griffiths at TGriffiths@davies.com.sg.