Intellectual property Amendment Bill 2022(Singapore)

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

  • · 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.
  • · Applicants will no longer need to provide the ISR (International Search Report) English when making a request for an examination report based on the ISR for the national phase entry application in Singapore.
  • · 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) according to Intellectual property office of Singapore (IPOS).
  • · 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.
  • · 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 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

  • · In contrast to the prevailing situation where an entire application maybe treated as withdrawn or refused due to objections to certain claimed goods/services, the new partial acceptance mechanism allows claimed goods/services which have not been objected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.
  • · 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.
  • · 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

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

  • 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.

  • 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)

 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.

  • 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.

  • 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..

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