On 8 July 2019, the Intellectual Property (Dispute Resolution) Bill introduced enhance IP dispute resolution procedures in Singapore. The changes proposed include the consolidation of IP disputes with the High Court, fast track options, arbitration for disputes and specific issues pertaining to patent litigation.

Consolidation of IP Disputes in the Singapore High Court.
Under the pre-July 2019 framework, the High Court, State Courts, and Intellectual Property Office of Singapore (“IPOS”) share jurisdiction over various IP-related proceedings, relative to the type of proceedings or the value of the claim.

Under a proposed specialised litigation track, the High Court has exclusive or at least concurrent jurisdiction over most IP-related disputes. The High Court would be the only body to handle all issues involving infringement of IP, actions in passing off, and declarations of non-infringement.

The Bill provides that the High Court shall have exclusive jurisdiction over all civil IP disputes except:

(i)Where the sole claim involves a revocation or invalidation of a registered IP- this can be heard either by the High Court or IPOS; and
(ii) Trade secrets, breach of confidence claims involving damages below and up to SGD 250,000 will be heard by the State Courts. Claims above this amount will be heard by the High Court.

The Bill allows IPOS increased flexibility to refer disputes to the High Court and gives the High Court concurrent jurisdiction, together with IPOS, over patent revocation as a “standalone” action. This was affirmed in the recent Court of Appeal case Sunseap Group Pte Ltd and Others v Sun Electric Pte Ltd [2019] SGCA 4, wherein it was held that the High Court did 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.

Fast Track Options
There will also be a “fast-track” option for parties that do not have the means to bring full High Court suit, involving less complex IP disputes in issue. The “fast track” option will feature a cap on the damages claimed and strict deadline periods.

Appeals
The Bill clarifies that decisions issued by IPOS may be appealed to the High Court without leave. However, 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.

Clarification that IP disputes can be arbitrated

The Bill amends the Arbitration Act and International Arbitration Act to clarify the arbitrability of IP disputes in Singapore, regardless of whether the IP issues are central to or only incidental in the arbitration. The objective is 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.

The Bill provides greater clarity and certainty that IP disputes can be arbitrated in Singapore, and that the arbitral award has an effect only on the parties to the arbitration and not on the world at large. 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.

Formalise third party observations on patent applications, introduce post-grant patent re-examination.

When a patent application has been published, third parties can formally provide additional information to IPOS to help it decide if an invention should be patented. 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.

A person may request for a patent to be re-examined, with accompanying reasons and documents. If the Registrar finds that an alleged ground is made out and not resolved by the proprietor of the patent, the patent may be revoked. With these changes, parties may be spared the need to commence separate patent revocation proceedings before IPOS or the High Court, potentially saving on costs.

The grounds for re-examination will be limited and IPOS’ examiners will have the discretion not to grant requests that are deemed an abuse of process, vexatious or frivolous in nature.

Overall Intended Impact
The Bill will simplify and streamline the IP Dispute Resolution System in Singapore. The specialised track for litigation of IP disputes with simplified processes should save costs for all parties. Businesses and individuals seeking to enforce their IP rights can consider the new routes and processes offered by the Bill which may suit their needs and budgets better.

Please contact us at hslegal@hslegal.com.sg if you require further information.