Intellectual Property (Dispute Resolution) Bill

In this Part, unless the context otherwise requires, “intellectual property right” or “IPR” means —

a patent;

a trade mark;

a geographical indication;

a registered design;

a copyright;

a right in a protected layout‑design of an integrated circuit;

a grant of protection in respect of a plant variety;

a right in confidential information, trade secret or know‑how;

a right to protect goodwill by way of passing off or similar action against unfair competition; or

any other intellectual property right of whatever nature.(2) In this Part, a reference to an IPR includes an application for the registration of an IPR if the IPR is protectable by registration.(3) In this Part, “IPR dispute” includes —

a dispute over the enforceability, infringement, subsistence, validity, ownership, scope, duration or any other aspect of an IPR;

a dispute over a transaction in respect of an IPR; and

a dispute over any compensation payable for an IPR.(4) In this section, “registration”, in relation to an IPR, includes the grant of the IPR.IPR disputes may be arbitrated52B.—

The subject‑matter of an IPR dispute is capable of settlement by arbitration as between the parties to the IPR dispute.(2) Subsection (1) applies whether the IPR dispute is the main issue or an incidental issue in the arbitration.(3) An IPR dispute is not incapable of settlement by arbitration only because a law of Singapore or elsewhere —

gives jurisdiction to decide the IPR dispute to a specified entity; and

does not mention possible settlement of the IPR dispute by arbitration.(4) In subsection (3), “specified entity” means any of the following entities under the law of Singapore or elsewhere:

a court;

a tribunal;

a person holding an administrative or executive office;

any other entity.Effect of award involving IPR52C.—

This section applies if an award deciding an IPR dispute is made in arbitral proceedings.(2) The fact that a person is a third‑party licensee or third‑party holder of a security interest in respect of the IPR does not of itself make the person a person claiming through or under a party to the arbitral proceedings for the purposes of section 44(1).(3) However, subsection (2) does not affect any right or liability between a third‑party licensee or third‑party holder of a security interest and a party to the arbitral proceedings whether —

arising in contract; or

arising by operation of law.(4) In this section —“third‑party holder of a security interest”, in relation to an IPR in dispute in arbitral proceedings, means a person who —

is a holder of a security interest in respect of the IPR granted by a party to the arbitral proceedings; but(b)is not a party to the arbitral proceedings;“third‑party licensee”, in relation to an IPR in dispute in arbitral proceedings, means a person who —

is a licensee (whether or not an exclusive licensee) of the IPR under a licence granted by a party to the arbitral proceedings; but(b)is not a party to the arbitral proceedings.Setting aside award involving IPR52D.—

For the purposes of section 48(1)(b)(i), the subject‑matter of a dispute is not incapable of settlement by arbitration under this Act only because the subject‑matter relates to an IPR dispute.(2) For the purposes of section 48(1)(b)(ii), an award is not contrary to public policy only because the subject‑matter in respect of which the award is made relates to an IPR dispute.Judgments entered in terms of award involving IPR52E.—

This section applies if —

an award deciding an IPR dispute is made in arbitral proceedings; and

a judgment in terms of the award is entered under section 46.(2) Section 44(1) applies in relation to the judgment as if the reference in that section to an award made by an arbitral tribunal pursuant to an arbitration agreement were a reference to the judgment.(3) In this section, “award” includes a declaratory award.Validity of patent may be put in issue in arbitral proceedings52F. Section 82(2) of the Patents Act (Cap. 221) does not prevent a party from putting the validity of a patent in issue in arbitral proceedings.”.

by inserting, immediately after the word “action” in section 119(1), the words “in the Court”;

by deleting the word “court” wherever it appears in the following provisions and substituting in each case the word “Court”:Sections 119(2), (2A), (4) and (5), 120(1) and (2), 120A(1), (2), (3), (6) and (7), 124, 126, 127 and 130(1A), (1B) and (2);

by deleting the word “court” wherever it appears in the following provisions and substituting in each case the word “Court”:Sections 140C(a), 140H(3)(b), 140I(2), (4) and (7) and 140IA(1) and (2);

by deleting the words “A court” in section 140I(5) and substituting the words “The Court”;

by deleting the words “a court” in sections 140K(1) and 140L(1) and substituting in each case the words “the Court”;

by deleting the word “court” in section 140LA(3)(b)(ii) and (iii)(B), (4) and (5) and substituting in each case the word “Court”;

by deleting the word “court” wherever it appears in the following provisions and substituting in each case the word “Court”:Sections 140LB(2)(b), 140LG(2)(b) and 140LI(1) and (2);

by deleting the words “a court” in section 140LL(1) and substituting the words “the Court”;

by deleting the words “High Court” wherever they appear in sections 169(1), (2), (3), (4), (5) and (6) and the section heading and 175(2)(b) and (c) and substituting in each case the word “Court”;

by inserting, immediately after the word “action” in section 192(1), the words “in the Court”;

by deleting the words “a court” in section 192(2) and substituting the words “the Court”; (l)by deleting the words “the court” in section 192(2) and substituting the words “the Court”;

by deleting the words “High Court” in the definition of “flagrantly infringing online location” in section 193A(1) and substituting the word “Court”;

by deleting the word “court” wherever it appears in the following provisions and substituting in each case the word “Court”:Sections 193B(1), 193C(1), 193D(1) and (6), 193DB(1), (2) and (3) and the section heading and 193DC;

by deleting the words “High Court” wherever they appear in sections 193DDA(1), (2) and (3), 193DDB(3) and 193DDC(1) and (2) and substituting in each case the word “Court”;

by inserting, immediately after the words “bring an action” in section 200(1), the words “in the Court”; (q)by deleting the word “court” in section 200(1) and substituting the word “Court”;

by deleting the words “High Court” in the definition of “flagrantly infringing online location” in section 246(1) and substituting the word “Court”;

by deleting the word “court” wherever it appears in the following provisions and substituting in each case the word “Court”: Sections 252A(1), 252B(1), 252C(1) and (6), 252CB(1), (2) and (3) and the section heading and 252CC;

by deleting the words “High Court” wherever they appear in sections 252CDA(1), (2) and (3), 252CDB(3) and 252CDC(1) and (2) and substituting in each case the word “Court”;

by inserting, immediately after the word “action” in section 253(1), the words “in the Court”;

by deleting the word “court” wherever it appears in sections 253(2), (2A), (3), (3A), (4) and (5) and 254(1), (2), (3), (6) and (7) and substituting in each case the word “Court”;

by inserting, immediately after the word “brought” in section 260(2), (3) and (4), the words “in the Court”;

by deleting the word “court” wherever it appears in section 261(1), (2), (4) and (5) and the section heading and substituting in each case the word “Court”; (y)by inserting, immediately after the word “brought” in section 261C(2), the words “in the Court”; and

by deleting the word “court” wherever it appears in section 261F(1), (2) and (4) and the section heading and substituting in each case the word “Court”.

by inserting, immediately before the words “the Court” wherever they appear in subsection (1), the words “the Registrar or”; and

by deleting subsection (2) and substituting the following subsection:“(2) Where a certificate is given under subsection (1) and in subsequent proceedings before the Registrar or the Court —

the validity of the registration is again questioned; and

the registrant obtains a final order or judgment in the registrant’s favour relying on the validity of the registration as found in the earlier proceedings,the registrant is entitled to be indemnified as to the registrant’s costs as between solicitor and client in the subsequent proceedings unless the Registrar or the Court directs otherwise.”.

In this Part, unless the context otherwise requires, “intellectual property right” or “IPR” means —

a patent;

a trade mark;

a geographical indication;

a registered design;

a copyright;

a right in a protected layout‑design of an integrated circuit;

a grant of protection in respect of a plant variety;

a right in confidential information, trade secret or know‑how;

a right to protect goodwill by way of passing off or similar action against unfair competition; or

any other intellectual property right of whatever nature.(2) In this Part, a reference to an IPR is a reference to such an IPR whether or not the IPR is registered, or subsists, in Singapore.(3) In this Part, a reference to an IPR includes an application for the registration of an IPR if the IPR is protectable by registration.(4) In this Part, “IPR dispute” includes —

a dispute over the enforceability, infringement, subsistence, validity, ownership, scope, duration or any other aspect of an IPR;

a dispute over a transaction in respect of an IPR; and

a dispute over any compensation payable for an IPR.(5) In this section, “registration”, in relation to an IPR, includes the grant of the IPR.IPR disputes may be arbitrated26B.—

The subject‑matter of an IPR dispute is capable of settlement by arbitration as between the parties to the IPR dispute.(2) Subsection (1) applies whether the IPR dispute is the main issue or an incidental issue in the arbitration.(3) An IPR dispute is not incapable of settlement by arbitration only because a law of Singapore or elsewhere —

gives jurisdiction to decide the IPR dispute to a specified entity; and

does not mention possible settlement of the IPR dispute by arbitration.(4) In subsection (3), “specified entity” means any of the following entities under the law of Singapore or elsewhere:

a court;

a tribunal;

a person holding an administrative or executive office;

any other entity.Effect of award involving IPR26C.—

This section applies if an award deciding an IPR dispute is made in arbitral proceedings.(2) The fact that a person is a third‑party licensee or third‑party holder of a security interest in respect of the IPR does not of itself make the person a person claiming through or under a party to the arbitral proceedings for the purposes of section 19B(1).(3) However, subsection (2) does not affect any right or liability between a third‑party licensee or third‑party holder of a security interest and a party to the arbitral proceedings whether —

arising in contract; or

arising by operation of law.(4) In this section —“third‑party holder of a security interest”, in relation to an IPR in dispute in arbitral proceedings, means a person who —

is a holder of a security interest in respect of the IPR granted by a party to the arbitral proceedings; but(b)is not a party to the arbitral proceedings;“third‑party licensee”, in relation to an IPR in dispute in arbitral proceedings, means a person who —

is a licensee (whether or not an exclusive licensee) of the IPR under a licence granted by a party to the arbitral proceedings; but(b)is not a party to the arbitral proceedings.Recourse against award involving IPR26D.—

For the purposes of Article 34(2)(b)(i) of the Model Law, the subject‑matter of a dispute is not incapable of settlement by arbitration under the law of Singapore only because the subject‑matter relates to an IPR dispute.(2) For the purposes of Article 34(2)(b)(ii) of the Model Law, an award is not in conflict with the public policy of Singapore only because the subject‑matter in respect of which the award is made relates to an IPR dispute.Recognition and enforcement of award involving IPR26E.—

For the purposes of section 31(4)(a), the subject‑matter of the difference between the parties to a foreign award is not incapable of settlement by arbitration under the law of Singapore only because the subject‑matter relates to an IPR dispute.(2) For the purposes of section 31(4)(b), it is not contrary to the public policy of Singapore to enforce an award only because the award is in respect of a subject‑matter that relates to an IPR dispute.Judgments entered in terms of award involving IPR26F.—

This section applies if —

an award (whether made in or outside Singapore) deciding an IPR dispute is made in arbitral proceedings; and

a judgment in terms of the award is entered under section 19 or 29.(2) Sections 19B(1) and 29(2) apply in relation to the judgment as if —

the reference in section 19B(1) to an award made by an arbitral tribunal pursuant to an arbitration agreement were a reference to the judgment; and

the reference in section 29(2) to a foreign award were a reference to the judgment.(3) In this section, “award” includes a declaratory award.Validity of patent may be put in issue in arbitral proceedings26G. Section 82(2) of the Patents Act (Cap. 221) does not prevent a party from putting the validity of a patent in issue in arbitral proceedings.”.

by inserting, immediately before the word “alone” in subsection (1)(a), the word “either”;

by deleting the word “whether” in subsection (6) and substituting the word “either”; and

by deleting the words “involves matters which would more properly be determined” in subsection (7) and substituting the words “involves a matter which would be more conveniently dealt with”.

Where an application for a patent has been published, any other person may make observations in writing to the Registrar on the question whether the invention is a patentable invention, stating reasons for the observations, and the Registrar must, subject to subsection (2), consider the observations in accordance with the rules.(2) The observations must be received by the Registrar before the Registrar sends to the applicant in the application for the patent —

a copy of an examination report under section 29(4);

a copy of a search and examination report under section 29(5); or

a copy of a supplementary examination report under section 29(6).(3) A person does not become a party to any proceedings under this Act before the Registrar by reason only that the person makes observations under this section.”.

Any person may, at any time after a patent is granted, file a request for the Registrar to conduct a re‑examination of the specification of a patent for an invention on any of the following grounds:

the invention is not a patentable invention;

the specification does not disclose the invention clearly and completely for it to be performed by a person skilled in the art;

the matter disclosed in the specification extends beyond that disclosed —

in the application for the patent, as filed; or

where the patent was granted on a new application filed under section 20(3) or 47(4) or section 116(6) of the Patents Act (Cap. 221, 1995 Ed.), or in accordance with section 26(11), in —

the earlier application made under this Act;

the application made under the United Kingdom Patents Act 1977; or

the application under the European Patent Convention designating the United Kingdom filed at the European Patent Office,as the case may be, from which the filing date and the right of priority has been derived, as filed;

an amendment has been made to the specification of the patent under section 38(1), 81 or 83 which —

results in the specification disclosing any additional matter; or

extends the protection conferred by the patent;

an amendment has been made to the specification of the application for the patent under section 31 which results in the specification disclosing any matter extending beyond that disclosed in the application as filed;

a correction has been made to the specification of the patent or of the application for the patent under section 107 which should not have been allowed;

the patent is one of 2 or more patents for the same invention having the same priority date and filed by the same party or the party’s successor in title.(2) Every request under subsection (1) must be —

filed in the prescribed manner;

accompanied by the prescribed fee; and

accompanied, at the time the request is filed, by —

reasons to substantiate the ground specified in the request; and

any document that the person considers to be relevant for the purposes of the re‑examination.(3) The Registrar may reject any request that fails to comply with any requirement in subsection (2).(4) The Registrar must not grant a request under subsection (1) if the Registrar is of the view that the request is frivolous, vexatious or an abuse of the process.(5) No request under subsection (1) may be filed where there are pending before the court or the Registrar any proceedings in which the validity of the patent may be put in issue.(6) Where proceedings before the court or the Registrar, in which the validity of the patent may be put in issue, are filed after a request under subsection (1) is made, the Registrar may make such order or give such direction as the Registrar thinks fit concerning the request.(7) Where the Registrar grants a request under subsection (1), the Registrar must cause the specification of the patent to be re‑examined by an Examiner so as to determine whether the ground specified in the request is made out.(8) If it appears to the Examiner during the re‑examination of the specification of the patent that —

the ground specified in the request; or

based on any document submitted under subsection (2)(c)(ii), any other ground mentioned in subsection (1),is made out, the Examiner must give the proprietor of the patent a written opinion to that effect, and the Registrar must, upon receiving the written opinion, send the proprietor a copy of the written opinion.(9) The proprietor of the patent must respond to the written opinion in the prescribed manner and within the prescribed period.(10) Upon receiving the re‑examination report prepared by the Examiner, the Registrar must send to the proprietor of the patent a copy of the report.(11) Where the re‑examination report issued under this section contains one or more unresolved objections (being an objection mentioned in the written opinion), the Registrar must make an order revoking the patent.(12) An order under subsection (11) may be —

an order for the unconditional revocation of the patent; or

where one of the grounds mentioned in subsection (1) has been established, but only so as to invalidate the patent to a limited extent, an order that the patent should be revoked unless within a specified time the specification is amended under section 83 to the satisfaction of the Registrar.(13) A decision of the Registrar or on appeal from the Registrar does not estop any party to any civil proceedings in which infringement of a patent is in issue from alleging invalidity of the patent on any of the grounds mentioned in subsection (1), whether or not any of the issues involved were decided in the decision.(14) A decision of the Registrar to revoke a patent under this section has effect from the date of the grant of the patent.(15) A person does not become a party to any proceedings under this Act before the Registrar by reason only that the person files a request under subsection (1), unless the person is the proprietor of the patent.”.

by deleting the word “whether” in subsection (4) and substituting the word “either”;

by inserting, immediately after the word “entitled” in subsection (5)(b), the words “(either alone or with other persons, as the case may be)”;

by deleting the words “more properly be determined” in subsection (8) and substituting the words “be more conveniently dealt with”; and

by deleting subsection (9) and substituting the following subsection:“(9) The court must not determine a question whether a patent was granted to a person not entitled to be granted the patent —

in the exercise of any such declaratory jurisdiction in an action for a declaration; or

in the exercise of jurisdiction pursuant to a reference under this section,if the action or the reference (as the case may be) was commenced or made after the end of the period of 2 years beginning with the date of the grant of the patent, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or, as the case may be, of the transfer of the patent to the person that the person was not entitled (either alone or with other persons, as the case may be) to the patent.”.

by deleting subsections (3), (4) and (5) and substituting the following subsection:“(3) In this Act, unless the context otherwise requires, any reference to a plaintiff includes a reference to the proprietor of the patent.”; and

by deleting the words “or the Registrar” in subsection (6).

by deleting the words “or the Registrar may, if it or he” in subsection (3) and substituting the words “may, if the court”;

by deleting the words “, in proceedings before the court,” in subsections (3) and (4); and

by deleting the words “or the Registrar” wherever they appear in subsection (4).

by deleting the words “or the Registrar” wherever they appear in subsections (1), (2) and (3); and

by deleting the words “its or his” in subsection (3) and substituting the words “the court’s”.

by deleting the words “or before the Registrar” in subsection (1);

by deleting the words “or the Registrar” wherever they appear in subsection (4); and

by deleting the words “it or he” wherever they appear in subsection (4) and substituting in each case the words “the court”.

by deleting the words “or the Registrar” in subsection (1); and

by deleting subsection (2).

by inserting, immediately before the words “the Registrar” in subsection (1), the words “the court or”;

by inserting, immediately after the word “entitled” in subsection (1)(b), the words “(either alone or with other persons)”;

by inserting, immediately before the words “the Registrar” in subsection (2), the words “the court or”;

by inserting, immediately before the word “Registrar” wherever it appears in subsection (3), the words “court or the”;

by inserting, immediately after the word “entitled” in subsection (4)(b), the words “(either alone or with other persons, as the case may be)”;

by deleting the word “Registrar” in subsection (5)(b) and substituting the words “court or the Registrar, as the case may be”;

by inserting, immediately before the words “the Registrar” in subsection (8), the words “the court or”;

by inserting, immediately after the word “application” in subsection (9), the words “to the Registrar”; and

by inserting, immediately after subsection (10), the following subsection:“(11) Where an application is made to the Registrar under this section, the Registrar may at any stage of the proceedings refer the application to the court.”.

by inserting, immediately before paragraph (a) of subsection (1), the following paragraph:“(aa)in a request for re‑examination of the specification of a patent under section 38A;”;

by inserting, immediately after the word “before” in subsection (1)(d), the words “the court or”;

by inserting, immediately after the word “entitled” in subsection (4)(b), the words “(either alone or with other persons, as the case may be)”;

by inserting, immediately after the word “entitled” in subsection (6), the words “(either alone or with other persons)”; and

by deleting the words “67(3), 76, 78 or” in subsection (7).

by inserting, immediately after paragraph (c) of subsection (1), the following paragraphs:“(ca)a decision under section 38A(4) not to grant a request for re‑examination;

by deleting the words “67, 80, 81 or 83” in subsection (3)(a) and substituting the words “80, 81 or 83, or was a decision to revoke a patent given under section 38A”.

by deleting subsection (1) and substituting the following subsection:“(1) The Registrar or any person authorised in writing by the Registrar may compound any offence under this Act that is prescribed as a compoundable offence by collecting from a person reasonably suspected of having committed the offence a sum not exceeding the lower of the following:

one half of the amount of the maximum fine that is prescribed for the offence;

$5,000.”; and

by deleting subsection (4) and substituting the following subsection:“(4) All sums collected under this section must be paid into the Consolidated Fund.”.

by deleting subsection (1) and substituting the following subsection:“(1) The Registrar or any person authorised in writing by the Registrar may compound any offence under this Act that is prescribed as a compoundable offence by collecting from a person reasonably suspected of having committed the offence a sum not exceeding the lower of the following:

one half of the amount of the maximum fine that is prescribed for the offence;

$5,000.”; and

by deleting subsection (3) and substituting the following subsection:“(3) All sums collected under this section must be paid into the Consolidated Fund.”.

the validity of the registration is again questioned; and

the registered owner obtains a final order or judgment in the registered owner’s favour relying on the validity of the registration as found in the earlier proceedings,the registered owner is entitled to the registered owner’s costs as between solicitor and client unless the Registrar or the Court directs otherwise.”.

by deleting subsection (1) and substituting the following subsection:“(1) The Registrar or any person authorised in writing by the Registrar may compound any offence under this Act that is prescribed as a compoundable offence by collecting from a person reasonably suspected of having committed the offence a sum not exceeding the lower of the following:

one half of the amount of the maximum fine that is prescribed for the offence;

$5,000.”; and

by deleting subsection (4) and substituting the following subsection:“(4) All sums collected under this section must be paid into the Consolidated Fund.”.

the validity of the registration is again questioned; and

the proprietor obtains a final order or judgment in the proprietor’s favour relying on the validity of the registration as found in the earlier proceedings,the proprietor is entitled to the proprietor’s costs as between solicitor and client unless the Registrar or the Court directs otherwise.”.

by deleting subsection (1) and substituting the following subsection:“(1) The Registrar or any person authorised in writing by the Registrar may compound any offence under this Act that is prescribed as a compoundable offence by collecting from a person reasonably suspected of having committed the offence a sum not exceeding the lower of the following:

one half of the amount of the maximum fine that is prescribed for the offence;

$5,000.”; and

by deleting subsection (4) and substituting the following subsection:“(4) All sums collected under this section must be paid into the Consolidated Fund.”.