On January 12, 2022, amendments to the Intellectual Property Bill, which came into force in May 2022, were passed in Parliament. The bill amends the existing Patent Law, Trademark Law, Registered Designs Law, Geographical Indications Law of 2014, and Plant Variety Protection Law to improve business friendliness, operational efficiency, and clarity of law and procedure.
We would like to summarise the main changes below:
1. Cancellation of the filing of the form and payment of the fee for the international application in English:
When applying for national transition based on an international application filed and posted in a language other than English, applicants no longer need to submit a form and pay a separate posting fee for an English translation submitted at the time of national transition. It will save applicants time, cost and effort.
2. Removal of the obligation to provide certain established documents in the course of patent proceedings:
Suppose the Intellectual Property Office of Singapore (IPOS) has international search and English International Search Report (ISR) authority. In that case, applicants will no longer be required to provide an ISR when applying for an ISR-based examination report to transit to a national level in Singapore.
3. New requirement for the submission of a sequence listing:
If a patent application discloses a sequence, the patent specification must include the sequence listing as a separate part of the description. The sequence listing must be filed under the current World Intellectual Property Organisation Standard (IPOS recommends that applicants use WIPO Sequence to prepare sequence listings). It is important to note that any sequence listing not contained in the specification as of the application's filing date does not form part of the application description.
4. New procedure for making minor amendments during in-depth examination:
During the litigation of a patent application, if the examiner believes that minor amendments to the description of a patent could result in a court order, such as an amendment to remove incorrect dependencies of a claim that is the only outstanding issue, the examiner may issue a notice inviting the applicant to file such changes. Applicants may submit information on minor amendments within two months or not, in which case, the examiner may issue a written opinion following a current generally accepted practice.
5. Optimisation of the examination verification process:
If an examiner files an Unclear Examination Report (UER), applicants can request a review of the UER, present arguments, and request amendments to address the objections. Another examiner will recheck the UER and arguments and/or announce amendments. Starting in May 2022, if the Request for Review includes amendments to resolve any unresolved UER objections, the Examiner shall only focus on the amended application, and the original UER is no longer up to date.
1. New mechanism for partial acceptance of state-level trademark applications:
Unlike the current situation, where an application may be considered withdrawn or rejected due to objections to certain declared goods/services, the new partial acceptance mechanism allows goods/services declared for which there were no objections to being registered. In contrast, only undesirable goods/services will be considered withdrawn or rejected. This amendment will expedite the processing of applications for which only partial objections have been raised and will help applicants save time and money.
2. "Continuing processing" of trademark applications that are considered withdrawn:
Currently, an applicant can apply to restore the status of a trademark application within six months after it is considered withdrawn. The new “continuing processing” measure reduces the filing time from six months to two for such invalid applications. In addition, it gives more reassurance to third parties pending registration of trademarks identical or similar to those of the applicant.
3. Clarification of the period during which an expired trademark is considered a "trademark registered at an earlier date":
The meaning of the term "trademark registered at an earlier date" will be clarified to include expired trademarks that are still eligible for renewal or restoration, even in particular circumstances, such as due to relief measures related to COVID-19.
1. Clarification of legislation regarding item sets and intangible products:
The term "items or intangible products" will cover "sets of items and intangible products".
2. Updating the procedure for submitting statements of disclaimer:
The applicant will be able to voluntarily waive rights to some aspects of the sample by submitting a visual and/or textual disclaimer that is clearly and logically presented and/or described. The declaration of disclaimer, once accepted, will be entered into the register.
3. Reducing the period of restoration of rights:
Applicants may request reinstatement of a design application after the date on which the application is considered withdrawn. The recovery period will be reduced from six to two months to balance the interests of third parties.
1. Extension of the term for the provision of seed material for examination:
The mandatory requirement to provide seed material of a candidate variety at the time of prosecution will be removed, and such material will be provided upon request. The examiner may also, at his discretion, extend the deadline for submission of such materials.
2. New cooperative examination mode:
Currently, during the examination, IPOS may appoint external experts to conduct the relevant examination or rely on existing examination reports issued by foreign experts from the list of approved countries. However, from May 2022, the system will be more flexible, allowing judges to rely on the Distinctive, Uniform, Stable (DUS) test conducted and submitted by the breeder. As a result, it will give applicants more freedom of action and reduce the process and processing time of the application.
1. New mechanism for publishing corrections to file oppositions involving patents, trademarks, registered industrial designs, geographical indications and plant variety protection:
Registrar may, at its sole discretion, publish a proposed correction of errors that may affect the interests of third parties such as errors related to the applicant's/owner's name or priority information. Any person can file a notice of objection to the proposed correction within two months.
2. Mandatory priority application number affecting trademarks and registered industrial designs:
Applicants claiming priority for their trademark or design applications will be required to provide the number of each such application within three months of the trademark application's filing date or within three months of the date on which the request from the registrar for a design is received.3. IPOS digital hub:
The IPOS Digital Hub, launched on May 4, 2022, uses the latest technology to improve user experience during the IP registration process. With the launch of the IPOS Digital Hub, there will be several changes to the procedures regarding forms to facilitate transactions and registration and updates regarding official fees.
These changes speed up and simplify the IP registration process and are a positive development for individuals and companies wishing to register their IP assets in Singapore. The Intellectual Property Act 2022 (Amended) aims to strengthen Singapore's position as an international IP hub and support innovators and businesses that use IP to grow locally and globally.
If you need additional information on Singapore's intellectual property issues, please contact our company's specialists. We are waiting for your requests!
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