Ministry of Law seeks public feedback on draft Bill for resolving intellectual property disputes

Currently, intellectual property (IP) disputes are heard in multiple forums such as the High Court, State Courts or Intellectual Property Office of Singapore, depending on the nature of the IP right, the type of proceeding or the value of the claim.
Currently, intellectual property (IP) disputes are heard in multiple forums such as the High Court, State Courts or Intellectual Property Office of Singapore, depending on the nature of the IP right, the type of proceeding or the value of the claim.PHOTO: ST FILE

SINGAPORE - The Ministry of Law is seeking public feedback on a draft Bill that will centralise the hearing of most civil intellectual property (IP) disputes in the High Court.

Currently, IP disputes are heard in multiple forums such as the High Court, State Courts or Intellectual Property Office of Singapore, depending on the nature of the IP right, the type of proceeding or the value of the claim.

The Bill will amend several IP Acts, as well as the State Courts Act, to grant the High Court exclusive jurisdiction over most civil IP disputes, such as breach of all forms of IP and passing off, which is to misrepresent that one's goods or services is linked to another that is likely to damage the other's business.

The public consultation for this draft Intellectual Property (Dispute Resolution) Bill will end on April 5.

In addition to simplifying the current system by hearing most IP disputes in the High Court, the Bill also makes several other improvements to the IP dispute resolution system in Singapore.

They include making it easier to ensure that only deserving inventions enjoy patent protection, thus enhancing Singapore's patent regime by increasing the quality of patents and making it more user-friendly.

The Bill will formalise the third-party observation process for patent applications.

Under this process, when a patent application has been published, and before an examination report is issued, the Registrar can consider observations submitted by third parties on the patentability of the invention contained in the application.

The Bill will also introduce a new post-grant patent re-examination process, where a person may request for a patent to be re-examined, supported by 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.

In addition the Bill also clarifies 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.

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, said the Law Ministry on Monday (March 11) in a press statement.

The draft Bill is rooted in the Intellectual Property Dispute Resolution Committee appointed by the Law Ministry in 2015 and tasked to review and make recommendations on the IP dispute resolution system in Singapore.

Based on both the committee's recommendations and the broader Civil Justice Reforms' recommendations, reforms to the IP dispute resolution system were proposed and a public consultation was held in October last year.

The current IP (Dispute Resolution) Bill was drafted after taking into account the feedback received, and is now presented to the public for feedback, the Law Ministry said.

Members of the public can view the public consultation paper details here.

All feedback should be titled "IP (Dispute Resolution) Bill Public Consultation Comments" and submitted by April 5, 2019, via post or e-mail to:

Intellectual Property Policy Division

Ministry of Law

100 High Street

#08-02 The Treasury

Singapore 179434

E-mail: MLAW_Consultation@mlaw.gov.sg