A Summary of the Intellectual Property (Amendment) Bill
(Written by: Priti Kaur Saini)
With the recent passing of the Intellectual Property (Amendment) Bill, proposed changes to various Intellectual Property (“IP”) statutes are now expected to come into effect in May 2022. The refinements under the Bill cover the following three objectives:
- to render IP registration more business-friendly
- to boost operational efficiencies in the processing of IP registration procedures
- to enhance clarity in the IP legislation and procedures
Set out below is a summary of the upcoming key changes:
To render IP registration more business-friendly
Change #1 – Dispensing with the need to pay a fee to publish the translation of a non-English patent application
Currently, the Patents Act confers certain rights of a patent-holder based on the publication date of the patent application. Unfortunately, in respect of non-English international patent applications that enter into Singapore phase, such rights are only conferred if the patent-holders pay a fee for the Intellectual Property Office of Singapore (IPOS) to publish the English translation of the applications.
As a result of the Bill, IPOS will publish the English translations received from applicants without requiring any fee payment, thus saving applicants costs, effort and time.
Change #2 – Permitting partial acceptance of national trade mark applications
Currently, applicants of national trade mark applications may apply to protect their marks in relation to multiple items of goods/services. If an objection to an application is raised by an IPOS examiner in relation to only some of the items of goods/services claimed, the whole application may end up being delayed.
Under the Bill, IPOS will be able to partially accept an application, thereby allowing for registration of the mark in respect of those goods/services for which no objections were raised.
Change #3 – Shortening of the post-deadline reinstatement “grace period” for trade mark applications
Trade mark applications are officially deemed withdrawn if certain deadlines are missed. Currently, applicants can file a request for reinstatement of their lapsed applications within a six-month “grace period” after the deadline. Under the Bill, the “grace period” will be shortened to two months., to promote prompt remedial action from applicants.
Change #4 – Introduction of an opposition procedure to facilitate the correction of errors in IP applications/registrations, where the correction may affect third parties’ interests
Unlike the current position, IPOS will have the discretion to publish correction requests so that third parties are made aware of the same and can assess whether they wish to oppose the corrections. This will also improve the integrity of information on the Registers.
To boost operational efficiencies in the processing of IP registration procedures
Change #5 – Streamlining of patent examination process
Currently, if a patent examiner is of the view that a patent application does not satisfy one or more of the requirements for patent grant, a written opinion citing the objections must be issued.
The Bill dispenses with written opinions if the objections can be overcome with minor amendments, thus reducing turnaround and processing time.
Change #6 – More focussed review process for patent examination
The Bill aims to save effort and time spent in reviewing patent applications, by ensuring that the reviewing examiner of a patent application only focuses on the applicant’s latest proposed amendments instead of reviewing the original report with the applicant’s responses, in the case where the applicant files amendments to overcome all outstanding objections cited in the original report.
Change #7 – Introduction of a new cooperative mode of examination for new plant variety applications
Presently, when examining applications for protection of plant varieties, external experts may be appointed by IPOS to conduct relevant tests and examination, or IPOS may rely on existing examination reports issued by approved foreign-country examiners. As a party of the International Convention for the Protection of New Varieties of Plants, Singapore may allow for examiners to rely on relevant tests conducted and submitted by the breeder or another person, organisation, or entity acceptable to IPOS, and the Bill opens the door to this additional option.
Change #8 – Moving technical and operational provisions from primary to subsidiary legislation
The Bill paves the way for future operational efficiency enhancements by shifting technical and operational provisions from primary to subsidiary legislation, thereby enabling IPOS to adapt to dynamic commercial needs more swiftly and smoothly, given that amendments to subsidiary legislation can be done at a quicker pace.
To enhance clarity in the IP legislation and procedures
Change #9 – Clarity as to the availability to the public of patent documents via IPOS
This legislative change will clarify that IPOS is in fact able to make patent documents available to the public to better facilitate a better understanding of the prior art, even in the absence of any request for such documents.
Change #10 – Mandating the Registrar to issue practice directions on the manner of filing patent applications, in addition to the manner prescribed in the current legislation
Presently, the law has no requirement for sequence listings to be included in patent applications, even when they may be relevant. Under this legislative change, in addition to the prescribed manner of sequence listings to be filed with patent applications, the Registrar will also issue practice directions setting out the format in which these sequence listings are to be filed.
Change #11 – Clarity as to the period that an expired trade mark will still be considered an “earlier trade mark”
The Bill clarifies that expired trade marks will still be considered “earlier trade marks”, provided they remain eligible for renewal or restoration.