The Intellectual Property Review: Singapore

Forms of intellectual property protection

i Patents

In Singapore, protection may be obtained by way of patents but not utility models.

The Singapore Patents Act (SPA) does not explicitly exclude any subject matter from being eligible for patent protection. Legislation states that a patentable invention is one that is new, inventive, and capable of industrial application.2 The word 'invention' begs the question as to what is truly considered an invention, and this issue has yet to come before the Singapore courts.

ii Trademarks

Registered trademarks are protected under the Trade Marks Act, with co-existing rights under the common law action of passing off.

Unregistered trademarks may only be protected under the action of passing off.

iii Registered designs

Registered designs protect the external appearance of an article or non-physical product. A design may be registered if it is new.

The following cannot be registered as a design:

  1. computer programmes or layout-designs of integrated circuits;
  2. designs applied to certain articles such as wall plaques; medals and medallions; and printed matter primarily of a literary or artistic character;
  3. methods or principles of construction;
  4. designs that are solely functional; and
  5. designs that are dependent upon the appearance of another article or non-physical product, which is intended by the designer to form an integral part or enable the article or non-physical product to be connected to, or placed in, around or against, another article or non-physical product so that either article or non-physical product may perform its function.3

iv Copyrights

Copyright protection subsists in tangible forms of original works, without the need for registration. A copyright symbol is usually applied to give notice that copyright exists.

v Geographical indications

Geographical indications (GIs) have been valid for registration since 2019. Goods that qualify for GI protection are in the categories of wines; spirits; beers; cheese; meat and meat products; seafood; edible oils; non-edible oils; fruits; vegetables; spices and condiments; confectionery and baked goods; flowers and parts of flowers; and natural gum.4

vi Plant variety rights

To obtain plant variety protection, the plant variety must be new, distinct, uniform and stable. Protection may be sought for all genera and species of plants.

Recent developments

i Pre-grant third party observations

Provisions on third-party observations (TPOs) for patent applications took effect from 1 October 2021, thereby formalising a process allowing third parties to file observations on whether an invention that is the subject of a patent application is patentable – namely, new, inventive and capable of industrial application.

The TPO must be filed before the final substantive or supplementary examination report is sent to the patent applicant. There is no official fee for filing such observations. If the identity of the party submitting the TPO is to be kept confidential, the TPO may be submitted via a registered patent agent.

Should the patent examiner find the TPO to be relevant, a Written Opinion will be issued. Only TPOs that are considered in the course of examination are published on the Patents Open Dossier and form part of the official file.

Based on the wording of Section 32 of the SPA, it appears that TPOs are restricted to observations on issues of novelty, inventiveness and industrial application. Thus, observations made in respect of issues relating to added matter, lack of support and sufficiency, or double patenting, which are the other grounds for revoking a patent post-grant and for requesting post-grant re-examination, may not be submitted pre-grant as TPOs.

With regard to supplementary examination, the examiner is only entitled to examine the application based on limited grounds as set out in Rule 2A(3) of the Singapore Patent Rules (SPR), namely, support, claim relatedness, patentable subject matter, whether the invention relates to a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body, double patenting, and added matter. Notably, the examiner does not determine the patentability of the claims during supplementary examination since this is to be based on the examination report being relied upon, which forms the basis of supplementary examination. It therefore appears to be contradictory that TPOs are allowed to be made for applications undergoing supplementary examination.

The Intellectual Property Office of Singapore (IPOS) Examination Guidelines provide that only observations under one or more of the grounds for supplementary examination according to Rule 2A(3) may be raised by the examiner. This means the grounds listed in Rule 2A(3) of the SPR is an exhaustive list, which does not include examination of whether each and every claim subjected to supplementary examination is novel, inventive and capable of industrial application. The IPOS Examination Guidelines further state that TPOs received after a supplementary examination written opinion has been issued and that are deemed highly prejudicial to the application on the grounds for supplementary examination could result in the examiner issuing a negative supplementary examination report, because for supplementary examinations examiners are only permitted to issue a single written opinion. It therefore remains to be seen if, or how, this issue may be appealed to the courts. That said, the number of Singapore patent applications that are pending supplementary examination is low as patent applications with a filing date of on or after 1 January 2020 are no longer subject to the option of requesting supplementary examination, and must undergo substantive examination.

ii Designs for non-physical products and graphical user interfaces

IPOS issued a new set of guidelines in 2020 on the registration of designs applied to non-physical products. The guidelines confirm that designs that may relate to augmented reality, virtual reality or mixed reality can be protected as registered designs in Singapore. An example of a design that is protected as a non-physical product is a virtual keyboard that is projected onto a surface. For a design to be protected as a non-physical product in Singapore, the design must satisfy three criteria:

  1. the design should not have a tangible or physical form;
  2. the design must be produced by a projection onto a surface or into a medium; and
  3. the non-physical product must have an intrinsic utilitarian function that is not merely to portray the appearance of the thing or to convey information.

Graphical user interfaces (GUIs) are also protectable as registered designs in Singapore. To register a design for a GUI in Singapore, the article to which the design is applied, such as a display scree,n should be specified. It is notable that the third criterion for registrability of designs applied to non-physical products does not apply to designs for GUIs. A GUI that conveys information can be protected as a registered design when the article to which the design is applied is specified.

iii Post-grant re-examination

With effect from 1 October 2021, a request for re-examination after grant of a patent may be filed by any person, provided that there are no pending proceedings where the validity of the patent may be put in issue before the court or the registrar. These proceedings include re-examination after grant; defence in infringement or infringement of rights proceedings; groundless threats proceedings; proceedings for declaration as to non-infringement; revocation proceedings; and dispute against government use.5

The request must state the reason for re-examination based on one or more of the grounds as set out in Section 38A of the SPA, and any relevant prior art documents being relied upon must be furnished. The grounds for requesting re-examination are:

  1. the invention is not a patentable invention;
  2. insufficiency;
  3. added matter;
  4. amendment made post-grant that results in added matter or extends the protection conferred by the patent;
  5. pre-grant amendment made that results in added matter;
  6. correction made which should not have been allowed; and
  7. double patenting.

Further, Section 38A(4) of the SPA states that the registrar will not grant requests that are frivolous, vexatious or an abuse of the process. According to the IPOS Examination Guidelines, requests that may be considered frivolous, vexatious or an abuse of the process include re-submitting a request for re-examination on the same grounds that have previously been rejected by an examiner, or where the reasons submitted are substantially the same based on the same or equivalent prior art documents. A decision under Section 38A(4) of the SPA not to grant a request for re-examination cannot be appealed to the court.

The examiner is, however, empowered to raise objections on any of the other grounds set out in Section 38A of the SPA, even if these were not raised in the post-grant re-examination request.6 The patent proprietor has one opportunity to respond to the written opinion of the examiner to overcome the objections by submitting written submissions or amendments to the specification to address the objections within three months of the date of issue of the written opinion. Any amendments to the specification will first be advertised, and any person may oppose to the amendments within two months of the date of the advertisement, on the following grounds:

  1. the amendments disclose additional matter not found in the application as originally filed or extend the scope of protection conferred by the patent,7 or the invention is not sufficiently disclosed;
  2. there was unreasonable delay in seeking amendments;
  3. the proprietor sought to obtain an unfair advantage by way of the amendments; or
  4. the conduct of the proprietor discourages the amendment of the patent.8

If the amendments are opposed during the two-month opposition window, they will be reviewed by the examiner to determine whether or not the proposed amendments should be allowed.

A re-examination report will be issued once the examiner has considered the response to the written opinion. If objections remain outstanding, an order revoking the patent is issued,9 which may be unconditional or may result in a partial revocation of the patent.10

If an order revoking the patent is issued, this can be appealed to the court.

Obtaining protection

i Singapore law on various technical fields

Up until 1996, Section 13(2) of the SPA explicitly excluded certain subject matter (e.g., a business method, a computer program) from patent protection. This section has since been repealed with the intention of complying with Article 27(1) of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights.

Interestingly, IPOS uses repealed Section 13(2) as a guide when considering what subject matter constitutes non-patentable subject matter, and may refuse patent applications accordingly.11 To date, no appeal has been filed to the courts on the ground that there is no legal basis for refusing the patent application for containing non-patentable subject matter.

Pharmaceuticals (methods of treatment and diagnosis, medical use claims)

Methods of medical treatment and diagnosis performed on the human or animal body are deemed not industrially applicable, and therefore cannot be patented.

However, a composition or substance for use in such a method would be industrially applicable. Further, first and subsequent medical uses of a known compound are deemed to be new if the uses have not previously been disclosed. Therefore, if there is basis in the application as filed, method of treatment claims may be redrafted in the form of composition claims, first or subsequent medical uses, which are deemed patentable subject matter.

Second and subsequent medical uses may only be claimed in the form of Swiss-style second medical use claims. That said, the validity of Swiss-style second medical use claims has yet to be considered by the Singapore courts.

In Warner-Lambert Company LLC v. Novartis (Singapore) Pte Ltd [2017] SGCA 45, the Court of Appeal, in obiter dicta, opined that the provisions in the SPA recognise new uses of known substances as long as the new uses do not form part of the state of the art. The Court further stated that a purpose-limited product claim may therefore be sufficient to obtain protection for the new use, and that drafting Swiss-style second medical use claims may not be necessary. However, as the observations were made in obiter dicta, it remains to be seen if future judgments will adopt this interpretation and result in a change in practice at IPOS with regard to the form of second medical use claims.

Genetic material (isolated or purified material or microorganism)

An isolated or purified material or microorganism from nature is considered a discovery and therefore not an invention. However, IPOS will accept claims to a new use of the isolated or purified material or microorganism.

Computer-implemented inventions

While the Singapore Patents Act does not explicitly exclude subject matter such as mathematical methods and methods of doing business from patentability, such subject matter is considered not to be an invention in Singapore. Under Singapore examination practice, when a patent application for a computer-implemented invention is examined, the examiner will consider the extent to which technical features such as a computer or processor contribute to the invention defined in the claims. For a computer-implemented invention to be considered an invention and therefore patentable subject matter, there must be an interaction between the technical features and method steps to a material extent and a manner that addresses a specific problem. For example, a computer-implemented business method is considered patentable if there is an interaction between hardware features and method steps that addresses a specific problem such as providing a more secure environment. However, the implementation of a pure business method on a generic computer system is not considered patentable, as the actual contribution relates solely to the business method and the hardware is incidental to the business method. Simply including the words 'computer-implemented' or similar in a claim is not sufficient.

Artificial intelligence

Artificial intelligence and machine learning algorithms such as neural networks, support vector machines and decision trees are considered to be mathematical methods and are not considered to be inventions in Singapore. However, the application of machine learning to solve a specific problem may be considered an invention and therefore patentable subject matter in Singapore.

For a claim to an artificial intelligence method to be considered patentable in Singapore, the claim must be functionally limited to solving a specific problem. Generally, this can be achieved by specifying how the inputs and outputs from the artificial intelligence method relate to physical quantities connected to the specific problem. As mentioned in the section above, for a computer-implemented invention to be considered patentable in Singapore, the actual contribution of the claims must not relate solely to subject matter that is considered not to be an invention. This also applies to artificial intelligence and machine learning-related patent application. For example, the application of a machine learning method to a business-related problem would not be considered patentable if there are no technical considerations.

ii Ways to expedite prosecution in Singapore

Patent Prosecution Highway

IPOS is a participating office of the Global Patent Prosecution Highway pilot programme, and has bilateral Patent Prosecution Highway (PPH) pilot programmes with the National Institute of Industry Property Ministry of Economy of Brazil, the China National Intellectual Property, the Mexican Institute of Industrial Property and the European Patent Office.

Based on statistics obtained from the PPH portal, for PPH requests filed at IPOS, the grant rate is 100 per cent, the allowance rate at first action is about 50 per cent and the average pendency rate from the PPH request to the first office action is about 6.5 months.12 While the average pendency rate from the filing of the PPH request to the issuance of the first office action is similar to the pendency rate from requesting examination without PPH to the issuance of the first office action, there is improved allowance rate at first action for PPH requests, which may be enticing to patent applicants.

ASEAN Patent Examination Co-operation

The ASEAN Patent Examination Co-operation (ASPEC) is a regional patent work-sharing programme among nine participating ASEAN Member State (AMS) intellectual property (IP) offices: Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand and Vietnam. ASPEC works in a similar manner to the PPH programme.

There are two additional options under ASPEC:

  1. ASPEC AIM: a committed turnaround time of six months to receive the first office action if an ASPEC request is made for Industry 4.0 patent applications; and
  2. PCT-ASPEC: additional choice of relying on a Patent Cooperation Treaty report issued by an ASEAN International Searching Authority/International Preliminary Examining Authority (currently the IP offices of Singapore and the Philippines).

At present, written opinions (or non-final office actions) with at least one allowable claim are an acceptable form of search and examination result for ASPEC requests in all participating AMS IP Offices except for the IP Office of Thailand.13

In practice, IPOS has the fastest average turnaround time among the participating AMS IP offices, and thus, search and examination results from Singapore would generally be used for accelerating applications in the other offices.

Twelve months file-to-grant

It is possible to obtain a grant for a Singapore patent within 12 months of the date of filing the application, if all the following requirements are met:14

  1. the request for grant of patent and a request for search and examination report are filed on the same day using the online portal IP2SG;
  2. a fast-track supporting document is submitted, stating the reason or reasons for acceleration, and the technology field to which the application relates;
  3. there are no deficiencies in the formalities examination;
  4. the first action of the examiner during search and examination is a favourable search and examination report;
  5. payment of the grant fee is made within two months of the notice of eligibility for grant, and a request for early publication is filed on the same day as the payment of grant fee (for Singapore applications first filed at IPOS and yet to be published); and
  6. the patent applicant adheres to specific time limits for actions as prescribed by IPOS.

The above scheme does not extend to divisional applications.

The quick turnaround time may be attractive to some patent applicants, for instance when a patent grant is required to secure financing.

However, the requirement that the first office action be a favourable search and examination report means that, to obtain allowance at first instance, patent applicants would most likely have to perform their own patentability search and analysis, and draft their patent claims carefully to ensure that the claims are novel and inventive. In addition, because of double-patenting restrictions, it may not be possible to file a divisional application to try to obtain a broader scope of protection.

This requirement may also lead to some patent applicants unduly narrowing their scope of protection at the time of filing the patent application to obtain the quick grant. This may pose a challenge since it may then be easier to design around the patent.

The SG IP Fast Track

The SG IP Fast Track (SG IP FAST) is a pilot acceleration programme that is slated to end on 29 April 2022. Under SG IP FAST, patent applications that are first filed in Singapore can be granted in as little as six months, trademark applications can be registered in as little as three to six months, depending on complexity, and registered design applications can be registered in as little as one month.

At the time of writing, there have not been any updates stating whether this programme will be extended beyond 29 April 2022.

Enforcement of rights

i Possible venues for enforcement

In 2019, the Intellectual Property (Dispute Resolution) Act 2019 came into force and consolidated civil IP proceedings before the High Court to make it less confusing for IP rights holders to commence enforcement actions.

The table below provides details of possible venues for enforcement.

Type of IP infringementState courts civil suitHigh Court civil suitState courts criminal suitHigh Court criminal suit
PatentNoYesNoNo
TrademarkNoYesYesNo
Trademark passing off claimNoYesNoNo
Registered designNoYesNoNo
CopyrightNoYesYesNo

ii Requirements for jurisdiction and venue

When one or more parties in a dispute are not domiciled in Singapore, for a Singapore court to exercise its jurisdiction over a matter, there must be a connection between the defendant or the case with Singapore, such that the Singapore court is satisfied that it is the right forum to hear the dispute.

iii Obtaining relevant evidence of infringement and discovery

Prior to commencing action, pre-action discovery is permitted only in limited circumstances (i.e., pre-action discovery may be granted where the plaintiff requires discovery to enable a claim to be made). In other words, pre-action discovery will be granted for an applicant who is unable to plead a case as he or she does not yet know whether he or she has a viable claim against the opponents, and needs pre-action discovery to fill the voids or gaps in his or her knowledge.

Once an action has been commenced, discovery may be ordered by the court. Any party to the matter may be served with an order for discovery, which means the party has to make and serve on any other party a list of the documents that are or have been in his or her possession, custody or power (such documents being those on which the party relies or will rely) and documents that could adversely affect the party's own case, adversely affect the other party's case or support the other party's case.

iv Trial decision-maker

The High Court has a specialist IP court with four designated IP judges. Each of these four judges has extensive experience and depth of expertise in adjudicating IP cases. However, cases involving IP may also be heard by other non-specialist judges, especially if the cases concern commercial disputes or non-IP issues of law.

v Structure of the trial

A plaintiff in IP enforcement proceedings will commence action by filing a writ of summons, which must be served on the defendant. The plaintiff must also file a statement of claim. The defendant will file a defence in response, and any counterclaim against the plaintiff. Thereafter, discovery and the exchange of evidence by way of affidavits will follow. Once the submission of evidence is complete, a trial date is set. The court hearing will be where the matter will be substantively presented by the parties and examined by the presiding judge in court.

vi Infringement

The criteria for infringement in respect of the different types of IP (patents, trademarks, registered designs and copyright) is set out in the legislation governing the different types of IP. The burden of proof is on the plaintiff to prove its case on a balance of probabilities.

vii Defences

The defences to infringement are similarly spelled out in the relevant legislation for each type of IP rights.

viii Time to first-level decision

The period from when an action is commenced (i.e., the filing of the writ of summons) to the conclusion of the trial is usually around one and a half years.

ix Remedies

The plaintiff in an infringement action may ask the court to order an injunction, or ask for:

  1. damages or an account of profits;
  2. an order for delivery up or disposal of infringing articles;
  3. statutory damages; or
  4. a declaration as to a party's rights.

A plaintiff may also ask for interim remedies, such as interim injunctions, interim detention or preservation of property and interim payments.

x Appellate review

Decisions issued by IPOS in respect of any IP right in Singapore are appealable to the High Court without leave. For proceedings begun in or appealed to the High Court, an appeal may be filed with the Court of Appeal.

xi Alternatives to litigation

The most common methods of alternative dispute resolution are mediation and arbitration. The Singapore branch of the World Intellectual Property Organization's Arbitration and Mediation Centre offers alternative dispute resolution options to enable private parties to resolve their domestic or international IP disputes. The Singapore International Arbitration Centre also provides facilities for arbitration and has a specialised panel of IP arbitrators to hear IP disputes.

Trends and outlook

The Singapore Intellectual Property Strategy 2030 (the SIPS 2030) was announced on World IP Day on 26 April 2021. SIPS 2030 is a 10-year plan that aims to strengthen Singapore's position as a global intangible asset (IA) and IP hub, as well as to maintain the position of Singapore's top-ranked IP regime.

Various initiatives have since been rolled out to benefit businesses seeking protection of IA and IP in Singapore.

For example, IPOS is building a next-generation IP filing system that will be more intuitive to use, with predictive assistance and a user-friendly dashboard offering users analytical insights for better decision making when managing their IP portfolios. The new online platform is expected to be launched by mid-2022.

On the commercial front, Singapore intends to spearhead an international IA and IP valuation panel to establish IA and IP valuation guidelines with a focus on key asset classes, and will build a pool of IA and IP valuation professionals in Singapore. An IA and IP disclosure framework and guidelines will also be developed to help enterprises better communicate the value of their IA and IP.

Additionally, Singapore is committed to continue strengthening its IP dispute resolution capabilities by working with law schools and professional training providers to build a larger pool of technical experts, and by promoting Singapore's IP dispute resolution offerings globally.15

Footnotes

1 Candice Kwok, Jonas Lindsay and Upasana Patel are partners and Nikki Lai is an associate at Marks & Clerk.

2 Section 13(1).

3 Intellectual Property Office of Singapore, Designs: How to Register. https://www.ipos.gov.sg/about-ip/designs/how-to-register#step-1-check-registration-criteria-for-a-design. Retrieved 18 February 2022.

4 Intellectual Property Office of Singapore, Geographical Indications: How to Register. https://www.ipos.gov.sg/about-ip/geographical-indications/how-to-register. Retrieved 18 February 2022.

5 Section 82.

6 Section 38A(8).

7 Section 84(4).

8 [2015] SGHC 159; [2016] SGHC 106.

9 Section 38A(11).

10 Section 38A(12).

11 Examination Guidelines for Patent Applications at IPOS, ver: October 2021. Paragraphs 8.9 to 8.34.

12 PPH Portal: Statistics. https://www.jpo.go.jp/e/toppage/pph-portal/statistics.html. Retrieved 16 February 2022.

13 Intellectual Property Office of Singapore, Acceleration Programmes. https://www.ipos.gov.sg/about-ip/patents/how-to-register/acceleration-programmes. Retrieved 16 February 2022.

14 Intellectual Property Office of Singapore, Requirements for obtaining a patent grant under the 12 Months File-to-Grant Scheme. https://www.ipos.gov.sg/docs/default-source/protecting-your-ideas/patent/requirements-for-obtaining-a-patent-grant-within-12-months-(revised)-v2.pdf. Retrieved 16 February 2022.

15 Singapore Intellectual Property Strategy 2030 Media Release. Strategy to Boost Singapore's Position as a Global Intangible Assets & IP Hub Unveiled. https://www.ipos.gov.sg/docs/default-source/default-document-library/singapore-ip-strategy-2030-media-release.pdf. Retrieved 18 February 2022.

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