Second Reading Speech by Second Minister for Law, Mr Edwin Tong, on the Intellectual Property (Amendment) Bill 2021

Mr Speaker,

1 I beg to move, “That the Bill be now read a Second time.

Introduction

2 Sir, it is a truism today that economic growth is increasingly driven by innovation, and the intangible assets (“IA”) and intellectual property (“IP”) that innovation itself generates.

a. Today’s businesses compete with, and differentiate themselves from their competitors through innovation. Those who innovate, and make good use of their IA and IP have prospered and grown. In fact, 90% of the value of the S&P 500 companies today lies in their IA.

b. Today, IA accounts for more than half of the global value of assets. This is significant, as it means that intangible assets are worth more than physical assets. In other words, ideas and innovations are more valuable than the physical assets that they animate.

3 We recognised this, and announced the Singapore IP Strategy 2030 in April 2020. This is to:

a. strengthen Singapore’s position as a global IA and IP hub,

b. attract and grow innovative enterprises using IA and IP, and

c. develop good jobs and valuable skills in IA and IP.

4 As our businesses generate more IA and IP, the IP registration operations of our IP office become increasingly important.

a. An efficient and business-friendly IP office makes it easier for our companies to protect their IA and IP, and enhance their value proposition.

b. Singapore has been consistently recognised for our IP regime. The World Economic Forum ranks us 1st in Asia and 2nd globally for IP protection.

c. The Intellectual Property Office of Singapore (IPOS) is constantly striving to improve its services.

d. Last year, it was recognised as the 3rd most innovative IP office in the world.

e. In our region, over 80% of all requests under the ASEAN Patent Examination Co-operation programme rely on IPOS reports – which is to say, applicants rely on the speed and quality of our patent examination work to speed up their corresponding applications in other ASEAN countries.

5 But the world does not stand still, and neither can we. IPOS regularly reviews its operations and processes to be more efficient and more importantly, to be business-friendly. This Bill is the result and product of such a review.

6 And based on the responses we received to our public consultation exercises, our stakeholders are generally supportive of the changes we have tabled today.

Overview of amendments

7 Today’s Intellectual Property (Amendment) Bill makes changes to many of the IP statutes:

a. Specifically, the Patents Act, the Trade Marks Act, the Registered Designs Act, the Plant Varieties Protection Act, and the Geographical Indications Act 2014.

8 These changes will result in improvements across three broad categories:

a. First, to ensure enhanced business-friendliness;

b. Second, on operational efficiency; and

c. Third, to enhance legislative and procedural clarity.

9 Let me now take Members through the changes in this Bill.

Improving business-friendliness

10 To improve IPOS’ business-friendliness, the Bill introduces four major changes to improve the experience for applicants seeking to register their IP with IPOS.

11 The first change will streamline the administrative process for international patent applications which are not in English.

a. The Patents Act currently ties certain rights of a patent-holder to the date when the patent application is published – for instance, when determining damages for infringement.

b. However, for the 15% or so of the international patent applications that enter Singapore which are not in English, these rights are only conferred if IPOS publishes the English translation of the applications upon payment of a fee.

c. Clause 15 removes the requirement for a fee. Instead, as part of its routine process, IPOS will see to the publication of the English translation received from the applicant.

d. This will reduce time, effort and cost for applicants.

12 Next, we will permit partial acceptance for national trade mark applications.

a. This is already a common practice in other major jurisdictions.

b. And IPOS already has this practice for international trade mark applications.

c. Currently, for national trade mark applications, applicants may apply to protect a trade mark across multiple types of goods and services. If a trade mark examiner has objections to the application in respect of only some of the goods or services listed by the applicant, these objections may hold up the entire application.

d. Clauses 43, 44, 46, 47, 52 and 53 of the Bill will amend the Trade Marks Act to allow IPOS to partially accept an application, allowing the trade mark to be registered for those goods and services for which there were no objections in such cases.

e. We expect that the change to permit partial acceptance for national applications will benefit up to about 13% of these domestic applications (approximately 2,100 applications annually), saving applicants time, effort, and costs.

13 Thirdly, clause 51(b) changes the post-deadline relief measure for trade mark applications.

a. Under the Trade Marks Act and Rules, trade mark applications are treated as withdrawn if certain deadlines are missed.

b. In the six months after the deadline, applicants can request reinstatement of their applications.

c. This six-month window affects third parties who wish to apply for marks that are identical or similar to the applicant’s,

(i) as they need to wait for the six-month period to lapse to have greater clarity about the outcome of their own application, and

(ii) so in that period face uncertainty as to how to proceed in the meantime.

d. To address this situation, applicants will henceforth have two months to request for the continued processing of their lapsed applications, instead of six months to request for reinstatement. Continued processing preserves the application and, should the applicant wish to continue with his application, expedites the processing of the application compared to the current approach of seeking reinstatement.

e. The shortened period after the missed deadline would incentivise applicants to quickly put their application in order.

f. The shortened period will also reduce uncertainty for third parties who wish to apply for identical or similar marks.

g. The US and New Zealand similarly provide for a period of two months for applicants to file such a request.

h. These changes will not affect the majority of applicants who actively monitor applicable deadlines and act in a timely manner.

14 The final change in this category introduces an opposition mechanism to facilitate the correction of errors in IP applications or registrations, where the correction may affect the interests of third parties.

a. This change pertains to the Geographical Indications Act 2014, the Plant Varieties Protection Act, the Registered Designs Act, and the Trade Marks Act.

b. Examples of corrections that can affect third party rights include those relating to the particulars of the applicant or rights-holder, or that affect the priority details of an application or registration.

c. IPOS receives about 40 such requests for corrections per year on average.

d. The Bill will amend the relevant Acts to give IPOS the discretion to publish requests for corrections, so that third parties are made aware of such correction requests, and can assess whether they wish to oppose the corrections.

e. Resolving such disputes between the applicant or rights-holder and third parties before accepting the corrections enhances the certainty of the information on the Registers.

Improving operational efficiency

15 Members will recall I mentioned changes across three broad categories. The second category of changes seeks to improve operational efficiency.

a. Let me highlight four key amendments to IPOS’ internal processes.

16 To begin with, we will improve the patent examination process.

a. At present, if a patent examiner assesses that a patent application does not satisfy one or more of the requirements to be eligible for the grant of a patent, he or she must issue a written opinion setting out the objections.

b. Clause 10 changes this so that if an examiner’s objections can be overcome with minor amendments to the specification of the patent application, examiners can simply invite applicants to make those amendments within a shorter period of time.

17 This will obviate the need to issue a written opinion, thereby reducing turnaround and processing times for part of the 5,000 substantive examination requests that IPOS expects to receive annually.

18 We will also streamline the patent examination review process to remove unnecessary work.

a. Currently, once a patent examiner has issued a report objecting to the grant of a patent, the applicant can request that the examiner’s report be reviewed by filing written submissions and/or amendments to overcome the objections.

b. Another examiner will then review both the original report and the applicant’s responses.

c. However, if the applicant files amendments to overcome all unresolved objections mentioned in the original report, that report is no longer relevant.

d. Clause 11 of the Bill therefore changes this so that if the applicant files such amendments, the original report need not be reviewed and the reviewing examiner can focus on the proposed amendments. This is more direct and goes straight to the point.

e. This will save time and effort for up to 800 patent applications per year.

19 Next, clauses 22 and 23 introduce a new cooperative mode of examination for applications for the protection of new plant varieties.

a. At present, during the course of examination, IPOS may appoint external experts to conduct the relevant tests and examination or rely on existing examination reports issued by foreign examiners from approved countries.

b. However, the International Convention for the Protection of New Varieties of Plants, of which Singapore is a party, also allows for examiners to rely on relevant tests conducted and submitted by the breeder or another person, organisation, or entity acceptable to IPOS.

c. We will therefore introduce this option to provide applicants with more flexibility, and to reduce turnaround and processing time for such applications.

20 The last change in this category lays the groundwork for future improvements to operational efficiency by shifting technical and operational provisions from primary to subsidiary legislation.

a. Such provisions are common throughout several of our IP statutes – for example, the Plant Varieties Protection Act goes into detail on related information that IPOS must regularly publish, while the Patents Act goes into detail on the amount of time a patent grantee has to renew their patent after expiry.

b. Moving such technical and operational provisions to subsidiary legislation will allow IPOS to adjust and adapt to changing needs more quickly and more nimbly, since amendments to subsidiary legislation can be made more speedily.

Improving legislative and procedural clarity

21 The third broad category of changes that the Bill seeks to introduce are those that seek to clarify the law, and to smoothen IPOS’ administration of the IP prosecution process. There are three such changes in the Bill today. Let me take members through.

22 First, clause 17 of the Bill seeks to improve the public’s access to patent documents.

a. IPOS had launched the Patents Open Dossier in 2017 to provide easier access to a wider range of patent documents.

b. This allows other inventors and the public to better understand inventions for which patent protection is sought or had been granted in Singapore.

c. The change introduced in clause 17 clarifies IPOS’ ability to make such documents available to the public, even in the absence of any request for the documents.

23 Next, clause 7 amends the Patents Act to empower the Registrar to issue practice directions on the manner of the filing of patent application, in addition to the manner prescribed in subsidiary legislation.

24 Moving forward, IPOS intends to amend the rules made under the Patents Act to require sequence listings to be filed with patent applications, where applicable. The amendment in clause 7 would allow the Registrar to issue practice directions setting out the format in which these sequence listings are to be filed.

a. Sequence listings are listings of nucleotide and/or amino acid sequences, which provide additional detail in patent applications – for instance, in biomedical or biotechnological inventions.

b. Such details can be useful for examiners and subsequent searchers alike.

c. The law currently has no requirement for patent applications to include such sequence listings, even when they might be relevant.

d. Imposing this requirement in the rules and practice directions will strengthen the completeness of patent disclosures and make patent searches easier, more thorough, both for patent examiners and the public.

25 Third, clause 41 will provide clarity on the period that an expired trade mark will continue to be regarded as an “earlier trade mark”.

a. Expired trade marks are currently regarded as earlier trade marks for a year after their expiry and also remain eligible for renewal or restoration during that period.

b. Such expired trade marks continue to retain priority, potentially preventing the registration of other similar marks.

c. However, trade mark proprietors may have more than a year to renew or restore their expired marks in certain circumstances –

(i) for instance, when IPOS granted an extension of time as part of its COVID-19 relief measures.

d. The law is currently unclear as to whether such marks, which are still eligible for restoration or renewal after a year, will still continue to be regarded as “earlier trade marks”.

e. Clause 41 will therefore amend the Trade Marks Act to clarify that expired trade marks will be considered “earlier trade marks” for as long as they remain eligible for renewal or restoration.

f. This will ensure that trade mark proprietors who are entitled to renew or restore their marks continue to enjoy the benefits of their registrations against later applications.

Administrative changes

26 Now that I covered the three main categories of amendments in the Bill, let me add that clause 55 also makes an administrative change to the Intellectual Property Office of Singapore Act to provide that any revenue from legislated financial penalties –

a. namely, any fines or composition fines paid to IPOS – will go to the Consolidated Fund.

b. This change will bring IPOS’ management of such monies in accordance with best practices across the rest of the Government.

Conclusion

27 Mr Speaker Sir, Members will see that the Bill contains many different amendments across a variety of different IP-related statutes.

a. These reflect the continued and ongoing efforts of MinLaw and IPOS to review, to refresh and update, and improve the IP registration process in Singapore.

b. This will support our businesses as they move towards the greater use of IA and IP both locally and globally.

28 If passed, we intend to implement the majority of the Bill by May 2022.

a. The new cooperative mode of examination for plant variety protection applications, on the other hand, will be implemented later, after IPOS has finalised the procedural details.

29 With that, Mr Speaker, I beg to move.