INTELLECTUAL PROPERTY (DISPUTE RESOLUTION) ACT 2019
No. 23 of 2019.
An Act to amend the Arbitration Act (Chapter 10 of the 2002 Revised Edition) and the International Arbitration Act (Chapter 143A of the 2002 Revised Edition) to clarify that intellectual property disputes may be arbitrated, and to make amendments to the Copyright Act (Chapter 63 of the 2006 Revised Edition), the Geographical Indications Act 2014 (Act 19 of 2014), the Patents Act (Chapter 221 of the 2005 Revised Edition), the Plant Varieties Protection Act (Chapter 232A of the 2006 Revised Edition), the Registered Designs Act (Chapter 266 of the 2005 Revised Edition), the State Courts Act (Chapter 321 of the 2007 Revised Edition) and the Trade Marks Act (Chapter 332 of the 2005 Revised Edition), relating to intellectual property dispute resolution and certain other related matters and the composition of offences.
Be it enacted by the President with the advice and consent of the Parliament of Singapore, as follows:
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Short title and commencement
1. This Act is the Intellectual Property (Dispute Resolution) Act 2019 and comes into operation on a date that the Minister appoints by notification in the Gazette.
PART 1
AMENDMENTS TO ARBITRATION ACT
New Part IXA
2. The Arbitration Act (Cap. 10) is amended by inserting, immediately after section 52, the following Part:
“PART IXA
ARBITRATIONS RELATING TO INTELLECTUAL PROPERTY RIGHTS
Interpretation of this Part
52A.—(1) In this Part, unless the context otherwise requires, “intellectual property right” or “IPR” means —
(a) a patent;
(b) a trade mark;
(c) a geographical indication;
(d) a registered design;
(e) a copyright;
(f) a right in a protected layout-design of an integrated circuit;
(g) a grant of protection in respect of a plant variety;
(h) a right in confidential information, trade secret or know-how;
(i) a right to protect goodwill by way of passing off or similar action against unfair competition; or
(j) any other intellectual property right of whatever nature.
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(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) a dispute over the enforceability, infringement, subsistence, validity, ownership, scope, duration or any other aspect of an IPR;
(b) a dispute over a transaction in respect of an IPR; and
(c) 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 arbitrated
52B.—(1) 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 —
(a) gives jurisdiction to decide the IPR dispute to a specified entity; and
(b) 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) a court;
(b) a tribunal;
(c) a person holding an administrative or executive office;
(d) any other entity.
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Effect of award involving IPR
52C.—(1) 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 —
(a) arising in contract; or
(b) 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 —
(a) 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 —
(a) 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 IPR
52D.—(1) 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.
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(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 IPR
52E.—(1) This section applies if —
(a) an award deciding an IPR dispute is made in arbitral proceedings; and
(b) 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 proceedings
52F. 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.”.
PART 2
AMENDMENTS TO COPYRIGHT ACT
Amendment of section 7
3. Section 7(1) of the Copyright Act (Cap. 63) is amended by inserting, immediately after the definition of “Copyright Tribunal” or “Tribunal”, the following definition:
“ “Court” means the High Court;”.
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Miscellaneous amendments
4. The Copyright Act is amended —
(a) by inserting, immediately after the word “action” in section 119(1), the words “in the Court”;
(b) 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);
(c) 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);
(d) by deleting the words “A court” in section 140I(5) and substituting the words “The Court”;
(e) by deleting the words “a court” in sections 140K(1) and 140L(1) and substituting in each case the words “the Court”;
(f) 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”;
(g) 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);
(h) by deleting the words “a court” in section 140LL(1) and substituting the words “the Court”;
(i) by deleting the words “High Court” wherever they appear in sections 169(1), (2), (3), (4), (5) and (6) and the section
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heading and 175(2)(b) and (c) and substituting in each case the word “Court”;
(j) by inserting, immediately after the word “action” in section 192(1), the words “in the Court”;
(k) 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”;
(m) by deleting the words “High Court” in the definition of “flagrantly infringing online location” in section 193A(1) and substituting the word “Court”;
(n) 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;
(o) 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”;
(p) 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”;
(r) by deleting the words “High Court” in the definition of “flagrantly infringing online location” in section 246(1) and substituting the word “Court”;
(s) 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;
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(t) 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”;
(u) by inserting, immediately after the word “action” in section 253(1), the words “in the Court”;
(v) 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”;
(w) by inserting, immediately after the word “brought” in section 260(2), (3) and (4), the words “in the Court”;
(x) 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
(z) 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”.
PART 3
AMENDMENTS TO GEOGRAPHICAL INDICATIONS ACT 2014
Amendment of section 32
5. Section 32 of the Geographical Indications Act 2014 (Act 19 of 2014) is amended by inserting, immediately after subsection (2), the following subsection:
“(3) An appeal does not lie to the Court of Appeal from a decision of the Court on appeal from a decision of the Registrar for any matter under this Act or the rules made under this Act unless leave to appeal is given by the Court or the Court of Appeal.”.
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Amendment of section 76
6. Section 76 of the Geographical Indications Act 2014 is amended —
(a) by inserting, immediately before the words “the Court” wherever they appear in subsection (1), the words “the Registrar or”; and
(b) 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 —
(a) the validity of the registration is again questioned; and
(b) 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.”.
Amendment of section 81
7. Section 81(1) of the Geographical Indications Act 2014 is amended by deleting “$2,000” in paragraph (b) and substituting “$5,000”.
PART 4
AMENDMENTS TO INTERNATIONAL ARBITRATION ACT
New Part IIA
8. The International Arbitration Act (Cap. 143A) is amended by inserting, immediately after section 26, the following Part:
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“PART IIA
ARBITRATIONS RELATING TO INTELLECTUAL PROPERTY RIGHTS
Interpretation of this Part
26A.—(1) In this Part, unless the context otherwise requires, “intellectual property right” or “IPR” means —
(a) a patent;
(b) a trade mark;
(c) a geographical indication;
(d) a registered design;
(e) a copyright;
(f) a right in a protected layout-design of an integrated circuit;
(g) a grant of protection in respect of a plant variety;
(h) a right in confidential information, trade secret or know-how;
(i) a right to protect goodwill by way of passing off or similar action against unfair competition; or
(j) 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) a dispute over the enforceability, infringement, subsistence, validity, ownership, scope, duration or any other aspect of an IPR;
(b) a dispute over a transaction in respect of an IPR; and
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(c) 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 arbitrated
26B.—(1) 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 —
(a) gives jurisdiction to decide the IPR dispute to a specified entity; and
(b) 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) a court;
(b) a tribunal;
(c) a person holding an administrative or executive office;
(d) any other entity.
Effect of award involving IPR
26C.—(1) 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
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security interest and a party to the arbitral proceedings whether —
(a) arising in contract; or
(b) 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 —
(a) 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 —
(a) 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 IPR
26D.—(1) 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 IPR
26E.—(1) 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
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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 IPR
26F.—(1) This section applies if —
(a) an award (whether made in or outside Singapore) deciding an IPR dispute is made in arbitral proceedings; and
(b) 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 —
(a) 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
(b) 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 proceedings
26G. 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.”.
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PART 5
AMENDMENTS TO PATENTS ACT
Amendment of section 20
9. Section 20 of the Patents Act (Cap. 221) is amended —
(a) by inserting, immediately before the word “alone” in subsection (1)(a), the word “either”;
(b) by deleting the word “whether” in subsection (6) and substituting the word “either”; and
(c) 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”.
New section 32
10. The Patents Act is amended by inserting, immediately after section 31, the following section:
“Observations by third party on patentability
32.—(1) 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) a copy of an examination report under section 29(4);
(b) a copy of a search and examination report under section 29(5); or
(c) a copy of a supplementary examination report under section 29(6).
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(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.”.
New section 38A
11. The Patents Act is amended by inserting, immediately after section 38, the following section:
“Re-examination after grant
38A.—(1) 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:
(a) the invention is not a patentable invention;
(b) the specification does not disclose the invention clearly and completely for it to be performed by a person skilled in the art;
(c) the matter disclosed in the specification extends beyond that disclosed —
(i) in the application for the patent, as filed; or
(ii) 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 —
(A) the earlier application made under this Act;
(B) the application made under the United Kingdom Patents Act 1977; or
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(C) 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;
(d) an amendment has been made to the specification of the patent under section 38(1), 81 or 83 which —
(i) results in the specification disclosing any additional matter; or
(ii) extends the protection conferred by the patent;
(e) 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;
(f) 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;
(g) 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 —
(a) filed in the prescribed manner;
(b) accompanied by the prescribed fee; and
(c) accompanied, at the time the request is filed, by —
(i) reasons to substantiate the ground specified in the request; and
(ii) any document that the person considers to be relevant for the purposes of the re-examination.
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(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 —
(a) the ground specified in the request; or
(b) 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.
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(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 —
(a) an order for the unconditional revocation of the patent; or
(b) 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.”.
Amendment of section 47
12. Section 47 of the Patents Act is amended —
(a) by deleting the word “whether” in subsection (4) and substituting the word “either”;
(b) by inserting, immediately after the word “entitled” in subsection (5)(b), the words “(either alone or with other persons, as the case may be)”;
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(c) by deleting the words “more properly be determined” in subsection (8) and substituting the words “be more conveniently dealt with”; and
(d) 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 —
(a) in the exercise of any such declaratory jurisdiction in an action for a declaration; or
(b) 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.”.
Amendment of section 67
13. Section 67 of the Patents Act is amended —
(a) 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
(b) by deleting the words “or the Registrar” in subsection (6).
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Amendment of section 69
14. Section 69 of the Patents Act is amended —
(a) by deleting the words “or the Registrar may, if it or he” in subsection (3) and substituting the words “may, if the court”;
(b) by deleting the words “, in proceedings before the court,” in subsections (3) and (4); and
(c) by deleting the words “or the Registrar” wherever they appear in subsection (4).
Amendment of section 70
15. Section 70 of the Patents Act is amended —
(a) by deleting the words “or the Registrar” wherever they appear in subsections (1), (2) and (3); and
(b) by deleting the words “its or his” in subsection (3) and substituting the words “the court’s”.
Amendment of section 72
16. Section 72(2) of the Patents Act is amended by deleting the words “or the Registrar for infringement of the patent or” and substituting the words “for infringement of the patent or before the court or the Registrar”.
Amendment of sections 74 and 75
17. Sections 74(2) and 75 of the Patents Act are amended by deleting the words “or the Registrar” wherever they appear.
Amendment of section 76
18. Section 76 of the Patents Act is amended —
(a) by deleting the words “or before the Registrar” in subsection (1);
(b) by deleting the words “or the Registrar” wherever they appear in subsection (4); and
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(c) by deleting the words “it or he” wherever they appear in subsection (4) and substituting in each case the words “the court”.
Amendment of section 78
19. Section 78 of the Patents Act is amended —
(a) by deleting the words “or the Registrar” in subsection (1); and
(b) by deleting subsection (2).
Amendment of section 80
20. Section 80 of the Patents Act is amended —
(a) by inserting, immediately before the words “the Registrar” in subsection (1), the words “the court or”;
(b) by inserting, immediately after the word “entitled” in subsection (1)(b), the words “(either alone or with other persons)”;
(c) by inserting, immediately before the words “the Registrar” in subsection (2), the words “the court or”;
(d) by inserting, immediately before the word “Registrar” wherever it appears in subsection (3), the words “court or the”;
(e) by inserting, immediately after the word “entitled” in subsection (4)(b), the words “(either alone or with other persons, as the case may be)”;
(f) by deleting the word “Registrar” in subsection (5)(b) and substituting the words “court or the Registrar, as the case may be”;
(g) by inserting, immediately before the words “the Registrar” in subsection (8), the words “the court or”;
(h) by inserting, immediately after the word “application” in subsection (9), the words “to the Registrar”; and
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(i) 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.”.
Amendment of section 81
21. Section 81 of the Patents Act is amended by inserting, immediately after the word “patents” in the section heading, the words “on own initiative”.
Amendment of section 82
22. Section 82 of the Patents Act is amended —
(a) 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;”;
(b) by inserting, immediately after the word “before” in subsection (1)(d), the words “the court or”;
(c) by inserting, immediately after the word “entitled” in subsection (4)(b), the words “(either alone or with other persons, as the case may be)”;
(d) by inserting, immediately after the word “entitled” in subsection (6), the words “(either alone or with other persons)”; and
(e) by deleting the words “67(3), 76, 78 or” in subsection (7).
Amendment of section 83
23. Section 83 of the Patents Act is amended by inserting, immediately after the word “proceedings” in the section heading, the word “, etc.”.
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Amendment of section 90
24. Section 90 of the Patents Act is amended —
(a) 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;
(cb) a decision under section 38A not to revoke a patent;”; and
(b) 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”.
Amendment of section 103
25. Section 103 of the Patents Act is amended —
(a) 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:
(a) one half of the amount of the maximum fine that is prescribed for the offence;
(b) $5,000.”; and
(b) by deleting subsection (4) and substituting the following subsection:
“(4) All sums collected under this section must be paid into the Consolidated Fund.”.
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PART 6
AMENDMENTS TO PLANT VARIETIES PROTECTION ACT
Amendment of section 48
26. Section 48 of the Plant Varieties Protection Act (Cap. 232A) is amended by inserting, immediately after subsection (2), the following subsection:
“(3) An appeal does not lie to the Court of Appeal from a decision of the Court on appeal from a decision of the Registrar for any matter under this Act unless leave to appeal is given by the Court or the Court of Appeal.”.
Amendment of section 52
27. Section 52 of the Plant Varieties Protection Act is amended —
(a) 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:
(a) one half of the amount of the maximum fine that is prescribed for the offence;
(b) $5,000.”; and
(b) by deleting subsection (3) and substituting the following subsection:
“(3) All sums collected under this section must be paid into the Consolidated Fund.”.
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PART 7
AMENDMENTS TO REGISTERED DESIGNS ACT
Amendment of section 43
28. Section 43 of the Registered Designs Act (Cap. 266) is amended by deleting subsections (1) and (2) and substituting the following subsections:
“(1) If in any proceedings before the Registrar or the Court the validity of the registration of a design is contested, and the Registrar or the Court finds that the registration of the design is valid, the Registrar or the Court may certify the finding and the fact that the validity of the registration was so contested.
(2) Where a certificate is given under subsection (1) and in subsequent proceedings for infringement of the design or for revocation of the registration of the design before the Registrar or the Court —
(a) the validity of the registration is again questioned; and
(b) 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.”.
Amendment of section 62
29. Section 62 of the Registered Designs Act is amended by inserting, immediately after subsection (2), the following subsection:
“(2A) An appeal does not lie to the Court of Appeal from a decision of the Court on appeal from a decision or order of the Registrar under this Act unless leave to appeal is given by the Court or the Court of Appeal.”.
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Amendment of section 68
30. Section 68 of the Registered Designs Act is amended —
(a) 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:
(a) one half of the amount of the maximum fine that is prescribed for the offence;
(b) $5,000.”; and
(b) by deleting subsection (4) and substituting the following subsection:
“(4) All sums collected under this section must be paid into the Consolidated Fund.”.
PART 8
AMENDMENTS TO STATE COURTS ACT
Amendment of section 19
31. Section 19(3) of the State Courts Act (Cap. 321) is amended by deleting the word “and” at the end of paragraph (c), and by inserting immediately thereafter the following paragraph:
“(ca) any jurisdiction to hear and try an action in passing off; and”.
Amendment of section 52
32. Section 52(1A) of the State Courts Act is amended by inserting, immediately after paragraph (a), the following paragraph:
“(aa) the action is in passing off;”.
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PART 9
AMENDMENTS TO TRADE MARKS ACT
Amendment of section 75
33. Section 75 of the Trade Marks Act (Cap. 332) is amended by inserting, immediately after subsection (3), the following subsection:
“(4) An appeal does not lie to the Court of Appeal from a decision of the Court on appeal from a decision of the Registrar for any matter under this Act or the rules made under this Act unless leave to appeal is given by the Court or the Court of Appeal.”.
Amendment of section 102
34. Section 102 of the Trade Marks Act is amended by deleting subsections (1) and (2) and substituting the following subsections:
“(1) If in any proceedings before the Registrar or the Court the validity of the registration of a trade mark to any extent is contested and it is found by the Registrar or the Court that the registration of the trade mark is wholly or partially valid, the Registrar or the Court may give a certificate to that effect and the fact that the validity of the registration was so contested.
(2) Where a certificate is given under subsection (1) and in subsequent proceedings before the Registrar or the Court —
(a) the validity of the registration is again questioned; and
(b) 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.”.
Amendment of section 105A
35. Section 105A of the Trade Marks Act is amended —
(a) by deleting subsection (1) and substituting the following subsection:
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“(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:
(a) one half of the amount of the maximum fine that is prescribed for the offence;
(b) $5,000.”; and
(b) by deleting subsection (4) and substituting the following subsection:
“(4) All sums collected under this section must be paid into the Consolidated Fund.”.
PART 10
SAVING AND TRANSITIONAL PROVISIONS
Transitional provisions relating to amendments to Arbitration Act
36.—(1) Section 2 applies to arbitral proceedings to which the Arbitration Act applies that are commenced on or after the date of commencement of that section, but the parties may in writing agree that that section applies to arbitral proceedings commenced before that date.
(2) Despite subsection (1), where the arbitral proceedings were commenced before the date of commencement of section 2, the law governing the arbitration agreement and the arbitration is the law which would have applied if that section had not been enacted.
(3) For the purposes of subsections (1) and (2), arbitral proceedings are taken as having commenced on the date of the receipt by the respondent of a request for the dispute to be referred to arbitration or, where the parties have agreed in writing that any other date is to be taken as the date of commencement of the arbitral proceedings, then on that date.
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Saving and transitional provisions relating to amendments to Copyright Act
37.—(1) Despite section 4(a) and (b), sections 119, 120, 120A, 124, 126 and 127 of the Copyright Act as in force immediately before the date of commencement of section 4(a) and (b) continue to apply to or in relation to any action for infringement of copyright brought under section 119 of that Act before that date.
(2) Despite section 4(b), section 130 of the Copyright Act as in force immediately before the date of commencement of section 4(b) continues to apply to or in relation to any action brought under Part V of that Act before that date.
(3) Despite section 4(c) and (d), sections 140H(3) and 140I of the Copyright Act as in force immediately before the date of commencement of section 4(c) and (d) continue to apply to or in relation to any action for infringement of copyright instituted before that date.
(4) Despite section 4(c), section 140IA of the Copyright Act as in force immediately before the date of commencement of section 4(c) continues to apply to or in relation to any application made before that date to a court for an order of compensation under section 140IA of that Act.
(5) Despite section 4(e), section 140K(1) of the Copyright Act as in force immediately before the date of commencement of section 4(e) continues to apply to or in relation to any action for infringement of copyright brought before that date in respect of seized copies of copyright material.
(6) Despite section 4(e), section 140L of the Copyright Act as in force immediately before the date of commencement of section 4(e) continues to apply to or in relation to any expenses incurred in relation to any action taken in accordance with an order of court, if the order arose from an action for infringement of copyright brought or instituted before that date.
(7) Despite section 4(f), section 140LA of the Copyright Act as in force immediately before the date of commencement of section 4(f)
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continues to apply to or in relation to any action for infringement of copyright instituted before that date in respect of detained copies.
(8) Despite section 4(g), section 140LG of the Copyright Act as in force immediately before the date of commencement of section 4(g) continues to apply to or in relation to any action for infringement of copyright instituted before that date in respect of seized copies.
(9) Despite section 4(g), section 140LI of the Copyright Act as in force immediately before the date of commencement of section 4(g) continues to apply to or in relation to any application made before that date for an order of compensation under section 140LI of that Act.
(10) Despite section 4(h), section 140LL of the Copyright Act as in force immediately before the date of commencement of section 4(h) continues to apply to or in relation to any expenses incurred in relation to any action taken in accordance with an order of court, if the order arose from an action for infringement of copyright instituted before that date in respect of seized copies.
(11) Despite section 4(j), (k) and (l), section 192 of the Copyright Act as in force immediately before the date of commencement of section 4(j), (k) and (l) continues to apply to or in relation to any action brought before that date for a breach of duty under Part IX of that Act.
(12) Despite section 4(n), sections 193B, 193C, 193D, 193DB and 193DC of the Copyright Act as in force immediately before the date of commencement of section 4(n) continue to apply to or in relation to any action brought before that date against a network service provider for infringement of copyright.
(13) Despite section 4(p) and (q), section 200 of the Copyright Act as in force immediately before the date of commencement of section 4(p) and (q) continues to apply to or in relation to any action brought before that date for an unjustifiable threat of legal proceedings in respect of an infringement of copyright.
(14) Despite section 4(s), sections 252A, 252B, 252C, 252CB and 252CC of the Copyright Act as in force immediately before the date of commencement of section 4(s) continue to apply to or in relation to
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any action brought before that date against a network service provider for an unauthorised use of a performance.
(15) Despite section 4(u) and (v), sections 253 and 254 of the Copyright Act as in force immediately before the date of commencement of section 4(u) and (v) continue to apply to or in relation to any action for an unauthorised use of a performance brought before that date.
(16) Despite section 4(w) and (x), sections 260 and 261 of the Copyright Act as in force immediately before the date of commencement of section 4(w) and (x) continue to apply to or in relation to any action under section 260(2), (3) or (4) of that Act brought before that date.
(17) Despite section 4(y) and (z), sections 261C(2) and 261F of the Copyright Act as in force immediately before the date of commencement of section 4(y) and (z) continue to apply to or in relation to any action brought before that date for a contravention of section 261C(1) of that Act.
Saving and transitional provisions relating to amendments to Geographical Indications Act 2014
38.—(1) Section 5 does not apply to or in relation to any decision of the Registrar of Geographical Indications arising from an application, opposition, request for qualification or other proceeding made or filed before the date of commencement of that section.
(2) Section 6 does not apply to or in relation to any proceedings commenced before the date of commencement of that section before the Registrar of Geographical Indications.
(3) Despite section 7, section 81 of the Geographical Indications Act 2014 as in force immediately before the date of commencement of section 7 continues to apply to or in relation to any offence under that Act committed before that date.
Transitional provisions relating to amendments to International Arbitration Act
39.—(1) Section 8 applies to arbitral proceedings to which the International Arbitration Act applies that are commenced on or after
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the date of commencement of that section, but the parties may in writing agree that that section applies to arbitral proceedings commenced before that date.
(2) Despite subsection (1), where the arbitral proceedings were commenced before the date of commencement of section 8, the law governing the arbitration agreement and the arbitration is the law which would have applied if that section had not been enacted.
(3) For the purposes of subsections (1) and (2), arbitral proceedings are to be taken as having commenced on the date of the receipt by the respondent of a request for the dispute to be referred to arbitration or, where the parties have agreed in writing that any other date is to be taken as the date of commencement of the arbitral proceedings, then on that date.
Saving and transitional provisions relating to amendments to Patents Act
40.—(1) Despite section 9(c), section 20(7) of the Patents Act as in force immediately before the date of commencement of section 9(c) continues to apply to or in relation to any reference of a question made under section 20(1) of that Act before that date.
(2) Section 10 applies to any application for a patent that has been published, whether published before, on or after the date of commencement of that section.
(3) Section 11 applies to any patent, whether granted before, on or after the date of commencement of that section.
(4) Despite section 12(c), section 47(8) of the Patents Act as in force immediately before the date of commencement of section 12(c) continues to apply to or in relation to any reference of a question made under section 47(1) of that Act before that date.
(5) Section 12(d) does not apply to any proceedings of the High Court pursuant to a reference made under section 47(1) of the Patents Act before the date of commencement of section 12(d).
(6) Despite section 13, section 67 of the Patents Act as in force immediately before the date of commencement of section 13
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continues to apply to or in relation to any reference made under section 67(3) of that Act before that date.
(7) Despite section 14, section 69 read with section 67(4)(a) of the Patents Act as in force immediately before the date of commencement of section 14 continues to apply to or in relation to any reference made under section 67(3) of that Act before that date.
(8) Despite section 15, section 70 read with section 67(4)(a) of the Patents Act as in force immediately before the date of commencement of section 15 continues to apply to or in relation to any reference made under section 67(3) of that Act before that date.
(9) Despite section 16, section 72(2) read with section 67(4)(a) of the Patents Act as in force immediately before the date of commencement of section 16 continues to apply to or in relation to any reference made under section 67(3) of that Act before that date.
(10) Despite section 17, sections 74(2) and 75 read with section 67(4)(a) of the Patents Act as in force immediately before the date of commencement of section 17 continue to apply to or in relation to any reference made under section 67(3) of that Act before that date.
(11) Despite section 18, section 76 read with section 67(4)(a) of the Patents Act as in force immediately before the date of commencement of section 18 continues to apply to or in relation to any reference under section 67(3) of that Act made by an applicant for a patent before that date.
(12) Despite section 19(a), section 78 of the Patents Act as in force immediately before the date of commencement of section 19(a) continues to apply to any proceedings before the Registrar for a declaration of non-infringement commenced under section 78 of that Act before that date.
(13) Despite section 19(b), section 78(2) of the Patents Act as in force immediately before the date of commencement of section 19(b) continues to apply to any declaration made by the Registrar under section 78(1) of that Act —
(a) before that date; or
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(b) in any proceedings mentioned in subsection (12).
(14) Section 20(i) does not apply to any application for revocation of a patent made under section 80(1) of the Patents Act before the date of commencement of section 20(i).
(15) Despite section 24(b), section 90(3) of the Patents Act as in force immediately before the date of commencement of section 24(b) continues to apply to or in relation to any reference made under section 67(3) of that Act before that date.
(16) Despite section 25(a), section 103(1) of the Patents Act as in force immediately before the date of commencement of section 25(a) continues to apply to or in relation to any offence under that Act committed before that date.
Transitional provisions relating to amendments to Plant Varieties Protection Act
41.—(1) Section 26 does not apply to or in relation to any decision of the Registrar of Plant Varieties arising from an application or other proceeding made or filed before the date of commencement of that section.
(2) Despite section 27(a), section 52(1) of the Plant Varieties Protection Act as in force immediately before the date of commencement of section 27(a) continues to apply to or in relation to any offence under that Act committed before that date.
Saving and transitional provisions relating to amendments to Registered Designs Act
42.—(1) Section 28 does not apply to or in relation to any proceedings commenced before the date of commencement of that section before the Registrar of Designs.
(2) Section 29 does not apply to or in relation to any decision or order of the Registrar of Designs arising from an application or other proceeding made or filed before the date of commencement of that section.
(3) Despite section 30(a), section 68(1) of the Registered Designs Act as in force immediately before the date of commencement of
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section 30(a) continues to apply to or in relation to any offence under that Act committed before that date.
Saving and transitional provisions relating to amendments to State Courts Act
43.—(1) Section 31 does not apply to or in relation to any action in passing off for which a writ of summons or other originating process or counterclaim was filed in the District Court before the date of commencement of that section.
(2) Section 32 does not apply to or in relation to any action in passing off for which a writ of summons or other originating process or counterclaim was filed in the Magistrate’s Court before the date of commencement of that section.
Saving and transitional provisions relating to amendments to Trade Marks Act
44.—(1) Section 33 does not apply to or in relation to any decision of the Registrar of Trade Marks arising from an application, opposition or other proceeding made or filed before the date of commencement of that section.
(2) Section 34 does not apply to or in relation to any proceedings commenced before the date of commencement of that section before the Registrar of Trade Marks.
(3) Despite section 35(a), section 105A(1) of the Trade Marks Act as in force immediately before the date of commencement of section 35(a) continues to apply to or in relation to any offence under that Act committed before that date.
Additional saving and transitional provisions
45. For a period of 2 years after the date of commencement of any provision of this Act, the Minister may, by regulations, prescribe such additional provisions of a saving or transitional nature consequent on the enactment of that provision as the Minister may consider necessary or expedient.
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