Patents (Amendment) Bill

Order for Second Reading read.

12.33 pm

The Senior Minister of State for Law (Ms Indranee Rajah): Mdm Speaker, I beg to move, "That the Bill be now read a Second time".

Innovation is crucial for our nation's continued economic growth. It allows our enterprises to create new products and services, and gives them a competitive edge over their rivals. Enterprises need to be able to effectively protect and commercialise their intellectual property (IP) to preserve their competitive edge. The Committee on the Future Economy (CFE) recognised this when it stated that a strong IP ecosystem is needed to support innovation and technology adoption.

The Patents (Amendment) Bill introduces several improvements to our patent system. These amendments allow our patent system to better support innovators.

Madam, the main features of the Bill are as follows.

First, we will broaden the grace period provision to better allow inventors to protect their inventions, while facilitating the spread of new ideas and technologies.

Second, we will close the foreign route to obtaining a patent in Singapore to improve the quality and consistency of granted patents.

Third, we will implement procedural amendments to allow applicants greater flexibility in the application process and to improve operational efficiency at the Intellectual Property Office of Singapore (IPOS).

Let me first touch on broadening the grace period provision for patent applications. To provide some background, let me briefly describe IPOS' patent search and examination process.

Before a patent is granted for an invention, it must be "new" and "inventive". An IPOS examiner searches publicly available information at the time of the patent application to understand the current state of technology. This is known as the "state of the art". The examiner then examines the invention in the patent application against the "state of the art" to determine whether the invention is, indeed, new and inventive. This is the standard practice for all patent offices around the world.

Under this system, if an inventor publicly discloses his invention before applying for a patent, this information will form part of the "state of the art". So, when he subsequently applies for a patent, the invention may not be assessed to be new or inventive.

The Patents Act contains a "grace period provision" that allows for limited circumstances under which the disclosure of an invention will not be considered part of the "state of the art". For example, if the invention is disclosed at one of the international exhibitions on a limited list, or is disclosed in the publication of a learned society, it will not be included in the "state of the art" if the application is filed within 12 months of the disclosure.

This grace period provision encourages knowledge sharing and promotes learning while preserving the inventor's commercial interests.

Clause 2 of the Patents (Amendment) Bill expands the situations covered by the grace period provision. Clause 2(b) will allow any disclosure of the invention originating from the inventor to be covered by the grace period provision. In other words, the grace period provision will not be limited to disclosures at specific international exhibitions or in a learned society publication.

This broadening of the grace period provision is in line with practices in the US, Australia, Japan and Korea. It updates our legislation so that our patents regime can be more consistent with modern realities and practices.

Advances in communication technology have connected people across the globe in ways not previously envisaged, and disclosures of technology occur in many situations not contemplated by the current Act. For example, inventors may need to reveal the invention to potential investors, or share it online to reach out to a larger community of experts. It should be emphasised that disclosing an invention before applying for a patent still carries risks. Not all jurisdictions have a similarly broad grace period provision. We would, therefore, strongly encourage inventors to always be judicious about disclosing their inventions before applying for a patent. IPOS will work with stakeholders and IP professionals to ensure that this message is conveyed clearly to patent applicants.

I now turn to the amendments in clause 3 of the present Bill relating to the closure of the foreign route to obtaining a patent in Singapore. This is another step in our quest to improve the quality of patents granted in Singapore.

In 2013, IPOS' in-house patent examination unit commenced operations, marking the first time Singapore had the capabilities to examine our patent applications. In February 2014, we tightened our patent system to only allow a patent to be granted if it meets the patentability requirements in our law.

However, at that point of time, we allowed patent applicants to rely on foreign examination reports for the same invention to enter our system. We are now proposing to close this route so that all patent applications are fully examined by our examiners against our standards of patentability. This will increase the quality of our granted patents and marks the further maturation of our patent system.

Let me explain how closing the foreign route improves the quality of patents granted in Singapore. Patent applications undergo search and examination before a patent is granted. There are currently three search and examination routes in Singapore:

First, under the "local route", the full search and examination is conducted by IPOS.

Second, under the "mixed route", applicants submit the search report issued by the foreign patent office for the same invention, and IPOS conducts only the examination.

Third, under the "foreign route", applicants submit the full search and examination report issued by a foreign patent office for the same invention, and IPOS conducts only a limited-scope Supplementary Examination.

The limited-scope Supplementary Examination does not cover the same grounds as a full examination. In particular, the invention is not assessed on the key requirements of being new and inventive. Thus, patents may be granted under the foreign route for inventions that would not have met the standards for patentability under the local or mixed route. This is because these foreign route patents were assessed to be new and inventive by a foreign patent office, whose standards may differ from Singapore's.

Clause 3(a) of the present Bill, therefore, closes the foreign route option. For patent applications filed on or after the prescribed date, they must go through either the local or mixed route. Patents will be granted only after full examination based on Singapore's laws and practices. This will, therefore, ensure the quality of Singapore granted patents and increase stakeholders' confidence in the validity of these patents.

This amendment aligns our patent system with that of major jurisdictions, such as the US, Japan and Europe, who do not provide for the foreign route mechanism and require all patent applications to be fully examined by their patent offices.

IPOS has been actively engaging the patent profession on the closure of the foreign route. With this change, local patent agents and IP lawyers will adjust their practice to take on higher value work as all the patent applications they handle will have to undergo full examination by IPOS.

The Patents (Amendment) Bill will also implement procedural improvements to the application process. Clause 3(c) will allow patent applications greater flexibility in switching between search and examination routes. This will make our patent application process more applicant-friendly.

Clause 3(d) will allow IPOS to treat an application as abandoned if the applicant does not, after receiving a search report, request for an examination report within the prescribed time frame. This will improve IPOS' operational efficiency. It will also facilitate the release of new ideas and technologies for the public's use if the patent applicant is no longer interested in obtaining protection.

The Bill implements a number of improvements to the patent application process. It is part of our efforts to better support the national innovation agenda by helping companies protect and sharpen their competitive edge, grow and create good jobs in Singapore. Mdm Speaker, I beg to move.

Question proposed.

12.43 pm

Mr Christopher de Souza (Holland-Bukit Timah): Mdm Speaker, innovation, entrepreneurship and new ideas are key ingredients in a vibrant economy. It is our duty to ensure the intellectual property surrounding these are firmly protected on our shores. The law on patents is a key jigsaw piece in the protection of these intellectual rights. I, therefore, rise in support of this Bill.

Singapore has come a long way in its Intellectual Property laws. From our early years as a nation, Singapore has strengthened our laws, such that they support our changing economy. Information, innovation and proprietary rights are key aspects of our present and future economy. Therefore, the safe protection of Intellectual Property is crucial.

Patents are particularly important. They allow innovations to be protected, and I should declare here my interest as a litigator whose practice includes, in part, IP litigation.

In terms of filing patents, Singapore has entered into important international treaties to establish and advance Singapore's status as an IP hub, such as the TRIPS Agreement, or the Agreement on Trade-Related Aspects of Intellectual Property Rights.

Singapore's strong laws protect and promote innovation and have attracted parties from other countries to register with us.

Since our early years, we have moved from re-registration of UK Patents to outsourcing the search and examination process to operationalising our very own office (IPOS International) to handle the search and examination process. The Patent Prosecution Highway allows fast and efficient search processes by collaboration with other countries, such as Japan, US, Australia, Germany, UK, Korea, China and Mexico. In fact, Singapore's search and examination reports may be delivered within 60 to 90 days. Singapore is also the first Supplementary International Search (SIS) Authority to carry out searches in Chinese.

Furthermore, IPOS International has become recognised by the World Intellectual Property Organisation as an International Searching Authority and International Preliminary Examining Authority (ISA/IPEA). These important and foundational steps were key to the promotion of Singapore as a safe and predictable IP Hub based on the rule of law. These steps have allowed us to enhance our IP regulatory framework even further. Hence, the amendments today that we debate.

This Bill broadly seeks to: (i) ensure the high standard of Singapore's patents by the closure of the foreign route; and (ii) broaden the grace period for the determination of novelty.

Firstly, clause 3 of the Bill marks the closure of the foreign route. Under that foreign route, Singapore relies on the search and examination report of other countries and does a supplementary examination. This second, all­foreign, route is based on the reliance on the final results of the search and examination report of a corresponding application, corresponding international application, or related national phase application. It works on the presumption that the reports are reliable and accurate. But, to ensure the quality of patents, it is better, if not much better, if we conduct the substantive evaluation ourselves.

Having said this, we should not underestimate the load. Instead, we should approach the task with a large amount of preparation. On this related issue, could the Minister kindly elaborate on what has been done to ensure that even with the closure of the foreign route, Singapore will continue to be an attractive place, and an attractive financial place to file patents. Would the Minister also confirm that we have reliable resources to meet any demand at cost effective prices?

A second amendment is to be found in clause 2 of this Bill. That clause seeks to broaden the grace period for the determination of novelty. This allows the inventor to disclose information without jeopardising his patent application. As a result, inventors may very well be able to attract investors or publish scientific papers without needing to wait for a patent. This gives innovation a safe space in which innovators can seek funding without compromising the protection of their inventions.

It has been reported that the revised IP Hub Masterplan that caters to entrepreneurship and innovation will be released in April. This is to be welcomed. Keeping abreast with the shifts in our economy is important, especially the protection of intellectual property. However, this cannot be done without a reliable regulatory framework in the form of IP laws.

This Bill is one such law. It will further consolidate Singapore's position as an IP Hub and, Mdm Speaker, I therefore support it.

12.50 pm

Mr Louis Ng Kok Kwang (Nee Soon): Mdm Speaker, Singapore has come a long way from being described as "the piracy capital of the world" in the 1980s, to having an Intellectual Property regime that is consistently ranked in international surveys as one of the best in the world.

I rise in support of these amendments which balances strengthening the IP rights regime which encourages investment in R&D and innovation, while recognising that excessive protection of products or services that are not truly novel can hinder innovation and entrepreneurship.

This Bill discontinues the supplementary examination route and requires at least the examination to be done in Singapore. This creates a more rigorous check on the quality of patents, and ensures that successful patents are truly deserving of legal protection.

I also welcome the new section 14(4)(e) which broadens the 12-month "grace period" exception to determining whether an invention is novel, as this takes into account business needs and practical realities.

First, it is entirely plausible for a would-be inventor to disclose details of his invention in reasonable circumstances outside the narrow exceptions listed in section 14(4) to (7). Previous case law has set a high standard that novelty would be ruined as long as even one member of the public has unrestricted use of the information. This is problematic especially where would-be inventors, in their excitement or by slip of tongue, informally discuss details of the invention with family members or close friends. The heavy penalty of unpatentability and the wastage of months or years of working worth large sums of money is unfair, and the law should be flexible enough to allow for such minor disclosures to be excused.

Second, the two narrow exceptions for prior disclosure, namely display at an international exhibition or by description in a paper read before a learned society, are unduly restrictive. It is conceivable that would-be inventors make disclosures that are entirely reasonable for their professions, especially in the scientific fields. For example, scientists often give journalistic interviews or write scientific journals on laboratory breakthroughs that they have discovered, even before commercialisation of a product from the said discovery. Such disclosures are commonplace in STEM academia, where articles in prestigious journals could determine the standing of a scientist in his community. To have no invention patentable from such a disclosure would unfairly impose a period of silence on the scientist, who may only publicly disclose his breakthrough until after the date of patent filing.

I wish to raise just one point for clarification. The new section 14(4)(e) refers to "disclosure of matter constituting an invention to the public" while existing sections 14(4)(a) to (d) merely refer to "disclosure". Can the Senior Minister of State clarify if there is any substantive difference in terms of what amounts to disclosure between the wording in section 14(4)(a) to (d), and that of 14(4)(e)? Do we retain the common law understanding that disclosure even to one person not under an obligation of confidence constitutes disclosure to the public?

Mdm Speaker, the amendments are welcomed changes, which create a patent landscape conducive for Singapore's transformation into an innovative economy. I look forward to more local innovators taking advantage of and flourishing under our robust intellectual property protection regime.

12.53 pm

Ms Indranee Rajah: Mdm Speaker, I thank the Members who have spoken, for their support of the Bill. Mr de Souza asked about initiatives to ensure that Singapore remains an attractive place to file patents. IPOS has arrangements with patent offices around the world to allow applicants to use a Singapore patent examination report to expedite applications in other jurisdictions.

First, there are the various Patent Prosecution Highways (PPHs) that Mr de Souza mentioned. These arrangements cover important markets like China, US, Europe, Japan, Korea and Australia. IPOS is also part of a similar arrangement in ASEAN, known as the ASEAN Patent Examination Co-operation (ASPEC) programme. All in, the PPHs and ASPEC cover more than 30 jurisdictions. IPOS also has an agreement with Cambodia to allow the re-registration of a Singapore patent in Cambodia. Hence, with a Singapore granted patent, a business can access a combined market of over 20 million people.

In February, IPOS also announced reductions in its patent search and examination fees. The fee for requesting a search and examination report will decrease by 25% with effect from 1 April. A further discount will be given when the applicant chooses to rely on the search report or preliminary examination report issued by IPOS as an International Searching Authority (ISA) and Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT). All these connections to larger markets outside Singapore are aimed at making Singapore an attractive place to file patents.

In addition, we are also positioning Singapore to capture patent work, even when applicants are looking to file patents in other jurisdictions, and not in Singapore. Being a PCT International Searching and Preliminary Examining Authority, IPOS is able to provide search and examination services to applicants who file in other jurisdictions via the PCT.

Besides Singapore, IPOS can do this PCT examination work for applicants from US, Japan, Mexico, Indonesia, Vietnam and Cambodia. Further, given the large Chinese market, IPOS' ability to search Chinese patent documents can be an additional attraction for these PCT applicants. Through these measures, IPOS hopes to attract patent work to Singapore, even in cases where an applicant might decide not to file in Singapore. This will create more work for IP professionals, such as patent agents.

Mr de Souza also asked whether we are adequately resourced to handle the increased workload from applicants switching to the local mixed routes: yes, we are. There are two aspects to this. First, MinLaw and IPOS will continue to ensure that there is a sufficient pipeline of skilled IP manpower to provide patent agent services. In this regard, IPOS and UniSIM have announced the launch of a Master in IP and Innovation Management this year. Graduates from the patent agent specialisation track of this programme can go on to take the Patent Agents Qualifying Examinations to become patent agents.

Second, IPOS' patent search and examination unit has more than 100 examiners with expertise across a wide range of technologies. The unit will be able to handle the anticipated increase in work.

From PCT statistics, IPOS is the top, out of 21 international authorities, in terms of timeliness to issue International Search Reports.

Mr Ng had a point for clarification regarding the new section 14(4)(e) inserted by clause 2(b) of the Bill. Sections 14(4)(a) to (e) each describes different circumstances of disclosure to the public that are to be disregarded during the determination of the "state of the art" which the examiner considers in assessing whether the invention is "new" and "inventive". Section 14(4)(e) is intended to extend the circumstances of disclosure that are to be disregarded beyond those stated in the current section 14(4)(a) to 14(4)(d). For all the grounds in section 14(4)(a) to (e), disclosure even to one person not under the obligation of confidentiality constitutes disclosure to the public. Mdm Speaker, I beg to move.

Question put, and agreed to.

Bill accordingly read a Second time and committed to a Committee of the whole House.

The House immediately resolved itself into a Committee on the Bill. – [Ms Indranee Rajah].

Bill considered in Committee; reported without amendment; read a Third time and passed.