Singapore: Key IP statutes changes – Intellectual Property (Amendment) Act 2022

On 12 January 2022, the Intellectual Property (Amendment) Bill was passed in Parliament and is expected to come into effect in May 2022. The bill introduces amendments to the current Patents Act, Trade Marks Act, Registered Designs Act, Geographical Indications Act 2014, and Plant Varieties Protection Act, with an aim to increase business friendliness, improve operational efficiency and enhance legislative and procedural clarity. We summarise the key changes below:

Patents

1. Removing form and fees for publication of international application in English:

For a national phase entry application based on an international application that was filed and published in a language other than English, applicants will no longer need to file a form and pay a separate fee to request for publication of the English translation submitted at the time of national phase entry. This will save applicants time, cost and effort.

2. Removing the obligation to furnish certain prescribed documents during patent prosecution:

Where the Intellectual Property Office of Singapore (IPOS) is the International Searching Authority that establishes an English International Search Report (ISR), applicants will no longer need to provide the ISR when making a request for an examination report based on the ISR for the national phase entry application in Singapore.

3. A new requirement for submission of sequence listing:

Where a patent application discloses a sequence, the patent description must include a sequence listing as a separate part of the description. The sequence listing shall be filed in accordance with the prevailing World Intellectual Property Organization (WIPO) Standard (IPOS recommends applicants to use WIPO Sequence to prepare sequence listings). Importantly, any sequence listing not contained in the description on the date of filing does not form part of the description of the application.

4. A new process for minor amendments during substantive examination:

During prosecution of a patent application, if the Examiner is of the view that minor amendments to the patent specification may lead to allowance, for example, an amendment to address wrong claim dependencies that are the only outstanding issue, the Examiner may issue a notice inviting the applicant to make those amendments. Applicants may file the minor amendments within two months, or choose not to, in which case the Examiner may issue a written opinion according to current standard practice.

5. Streamlining the examination review process:

Currently, if the Examiner issues an Unclear Examination Report (UER), applicants may request for a review of the UER and provide arguments and claim amendments to overcome the objections therein. Another Examiner will review the UER and the arguments and/or claim amendments. With effect from May 2022, if the request for a review includes amendments to overcome all the unresolved objections in the UER, the Examiner only needs to focus on the amended application and the original UER is no longer relevant.

Trademarks

1. A new partial acceptance mechanism for national trademark applications:

In contrast to the prevailing situation where an entire application may be treated as withdrawn or refused due to objections to certain claimed goods/services, the new partial acceptance mechanism allows claimed goods/services which have not been objected to proceed to registration, while only those objectionable goods/services will be treated as withdrawn or refused. This amendment will expedite the progress of applications that only face partial objections and help applicants save time and cost.

2. “Continued processing” for trademark applications that are treated as withdrawn:

Currently, the applicant may apply to reinstate a trademark application within six months after it becomes treated as withdrawn. The new “continued processing” measure shortens the six months to two months for such lapsed applications. This provides more certainty to third parties waiting to register marks that are identical or similar to the applicant’s.

3. Clarifying on the period that an expired mark is regarded as an “earlier trademark”:

The meaning of “earlier trademark” will be clarified to include expired marks that remain eligible for renewal or restoration, even in special circumstances, for example, the COVID-19 relief measures.

Registered designs

1. Clarifying legislation in respect of sets of articles and non-physical products:

The term “articles or non-physical products” will cover “sets of articles and non-physical products”.

2. Updating practice for filing of disclaimers:

An applicant will be able to voluntarily disclaim rights in relation to specified feature(s) of a design, by filing a visual and/or text disclaimer that is clearly and consistently represented and/or described. The disclaimer following acceptance would be entered in the Register.

3. Reducing period for reinstatement:

Applicants can request for reinstatement of a design application after the date the application is treated as withdrawn. The reinstatement period will be reduced from six to two months to balance the interests of third parties.

Plant variety protection

1. Extending period to furnish propagating material for examination:

The mandatory requirement to furnish propagating material of the candidate variety during prosecution will be removed and submission of such material will be subjected to request. The Examiner may also discretionally extend the period of submission for such material.

2. New cooperative mode of examination:

Currently during examination, IPOS may appoint external experts to conduct the relevant examination or rely on existing examination reports issued by foreign examiners from approved countries. From May 2022, examiners will have more flexibility to rely on the Distinct, Uniform, Stable (DUS) test conducted and submitted by the breeder. This will provide applicants with more flexibility, and reduce turnaround and processing time.

Cross-Intellectual Property (IP)

1. A new mechanism to publish a correction for opposition purposes – affecting Patents, Trademarks, Registered Designs, Geographical Indications, and Plant Varieties Protection:

The registrar will have the discretion to publish a proposed correction of errors that may affect the interest of third parties, such as errors relating to the name of applicant/proprietor, or priority details. Any person can file a notice of opposition against the proposed correction within two months.

2. Mandating priority application number – affecting Trademarks and Registered Designs:

Applicants who claim priority in their applications for trademark or design will have to provide the application number of each priority application, within three months after the trademark application date, or within three months after the date of the Registrar’s request in respect of design.

3. IPOS Digital Hub:

To be launched on 4 May 2022, IPOS Digital Hub harnesses the latest technologies to enhance user experience in the IP registration process. In tandem with the launch of IPOS Digital Hub, there will be a set of process changes in relation to forms to make transacting and filing easier, as well as official fee updates.

Takeaways

The upcoming changes allow for a more streamlined and smoother IP registration process and are a positive development for individuals and businesses looking to register their IP assets in Singapore. The Intellectual Property (Amendment) Act 2022 goes towards strengthening Singapore’s position as a global IP hub and supporting innovators and businesses as they use IP to grow locally and globally.

JurisAsia LLC’s IP team has extensive experience in patent drafting and prosecution, strategic advisory and litigation support. Dr. Vivian Wei Cheng, Patent Attorney of JurisAsia LLC, is pleased to discuss these key IP statute changes and what they could mean for your business.

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Vivian is a qualified Singapore patent attorney specialized in areas such as life science and biotechnology, consumer care, food and retail, chemical and healthcare.

Posted by Vivian Wei Cheng

Vivian is a qualified Singapore patent attorney specialized in areas such as life science and biotechnology, consumer care, food and retail, chemical and healthcare.