IPSA’s recommendations on the Intellectual Property (Dispute Resolution) Bill

Recommendations by the NUS Law Intellectual Property Students’ Association (“IPSA“) on the Intellectual Property (Dispute Resolution) Bill (the “Bill“) were submitted by 6 IPSA members: our IPSA members Ong Yuan Zheng Lenon and Lim Sze Yuan, and our IPSA alumni members Jennifer Lim Wei Zhen, Samuel Lim, Joshua Kwan, and Marissa Chok. IPSA’s recommendations were highlighted during the second reading of the Bill in Parliament by Member of Parliament (“MP“) Louis Ng on 5 August 2019.

Background to the Bill

The Bill was tabled in Parliament on 8 July 2019, after an extensive public consultation. It introduces new reforms in 3 main areas:

(1) Granting the High Court exclusive jurisdiction over most civil intellectual property (“IP“) disputes, instead of the previous arrangement where IP disputes were heard in the High Court, State Courts and Intellectual Property Office of Singapore (“IPOS“). A “fast-track” in the High Court to efficiently handle less complex IP disputes is to be implemented in forthcoming subsidiary legislation.

(2) Formalising third party observations on pre-grant patent applications and introducing post-grant patent re-examination.

(3) Clarifying that IP disputes can be arbitrable. This aims to facilitate the use of arbitration in IP disputes, and strengthen Singapore’s position as a choice venue for the arbitration of international IP disputes.

IPSA’s recommendations

Drawing on approaches from jurisdictions across the world, and institutions like the World Intellectual Property Organisation (“WIPO“) and European Patent Office (“EPO“), IPSA’s recommendations involved specific suggestions to strengthen and clarify the proposed intellectual property regime under the Bill. Our points highlighted by MP Louis Ng include:

(A) Consolidation within High Court and the “Fast track” within the High Court for civil IP disputes:

1. Clarifying if the majority of civil IP disputes, given their technical nature, could conceivably meet the cap of two hearing days under the “fast track”.

2. Clarifying if the trial judge would have the power to order both interlocutory and final relief.

3. Clarifying if “fast track” decisions are appealable.

(B) Third-party observations for pre-grant patent applications:

1. Recommendation for third parties to enjoy anonymity in relation to patent applicants and the general public.

2. Recommendation to allow the content of third-party observations, and the applicant’s responses, to be available for public inspection.

3. Recommendation to charge only nominal costs for submission of observations.

4. Recommendation to publish explicit grounds for third parties to rely on when submitting observations on patentability.

(C) Arbitrability of civil IP disputes:

1. Clarifying whether civil IP disputes concerning matters of public policy, such as IP rights acquired in the course of employment, are arbitrable.

2. Clarifying whether patent validity and infringement disputes are arbitrable.

IPSA would like to thank MP Louis Ng for this opportunity to have the members’ views heard. IPSA would also like to thank our IPSA alumni members Jennifer Lim Wei Zhen, Samuel Lim, Joshua Kwan, and Marissa Chok, for helping IPSA members Ong Yuan Zheng Lenon and Lim Sze Yuan in drafting the written submissions.

The Official Report of the Parliamentary Debate and IPSA’s contributions for the second reading of the Bill can be viewed here.

IPSA’s full written submissions can be viewed here.

– IPSA Core Team

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