Second Reading Speech by Senior Parliamentary Secretary for Education and Law, Ms Sim Ann, on the Patents (Amendment) Bill and the Intellectual Property (Miscellaneous Amendments) Bill

10 Jul 2012 Posted in Parliamentary speeches and responses

Patents (Amendment) Bill

Introduction

1. Mr Speaker, Sir, I beg to move, “That the Bills be now read a Second time”.

2. The Patents (Amendment) Bill is closely related to the next on our Order Paper, the Intellectual Property (Miscellaneous Amendment) Bill. Sir, may I therefore suggest, with your permission, that the debate on both Bills take place now. Members are welcome to raise questions or express their views on both Bills during this debate.

3. Intellectual property (IP) is a vital component of the global economy. The total number of patent applications filed globally has increased significantly. This increase is particularly marked in Asia. East Asia has now overtaken North America and Western Europe in the number of Patent Cooperation Treaty (PCT) international applications filed. The PCT is used for the filing of patent applications in multiple jurisdictions and its increasing use is indicative of the global nature of patent protection today.

4. Singapore has come some way in our development as an IP hub. Over the years, our IP legislative and enforcement frameworks have been considerably strengthened. Singapore’s high international rankings bear testament to our efforts. Since 2006, Singapore’s IP regime has been consistently ranked among the top five in the world by the World Economic Forum, and top 10 by the Institute for Management Development. In addition, according to the Global Innovation Index 2012, which was compiled by the INSEAD Business School in collaboration with the World Intellectual Property Organization (WIPO), Singapore is Asia’s most innovative country.

5. This has benefited our economy, in our ability to attract foreign investment to Singapore. For example, multi-national companies such as Rolls-Royce and Mead Johnson Nutrition have recently invested hundreds of millions of dollars to set up manufacturing and R&D facilities in Singapore. Our strong IP regime was cited as one of the key reasons for their significant investment in Singapore.

6. The growth of IP in Asia presents us with a window of opportunity to develop a greater role for Singapore as an Asian IP hub in the international IP landscape.

7. To that end, my Ministry has convened an IP Steering Committee to formulate an IP Hub Master Plan to guide our next phase of efforts. The Committee will recommend strategies along two key thrusts, namely (i) developing a vibrant marketplace to transact and commercialise IP and (ii) building world-class capabilities and infrastructure. The review would be completed by early next year.

8. The present Patents (Amendment) Bill and the Intellectual Property (Miscellaneous Amendments) Bill are aimed at further strengthening our IP regime, to better support Singapore’s development as an IP hub.

9. The proposed amendments serve three main purposes:
   1. Effect a move from the current ‘self-assessment’ patent system to a new ‘positive grant’ patent system;
   2. Liberalise the patent agent sector; and
   3. Streamline and harmonise the IP Registries processes at IPOS.

10. Let me explain the changes.

Change from a ‘self-assessment’ to a ‘positive grant’ patent system

11. Firstly, the Patents (Amendment) Bill amends the Patents Act to replace our current self-assessment patent system with a new positive grant patent system.

12. All applications for patents must undergo a search and examination process. Under our existing self-assessment patent system, patent applications need not, however, fully fulfil Singapore’s patentability criteria in order to be granted. This means that patents may be granted without a fully positive examination report.

13. This was a pragmatic approach recommended by WIPO when Singapore started its own patent system in 1995. Such a system allows inventors to decide whether they have made adequate adjustments to any objections raised by the examiners, or to disagree with the examiner’s assessment of their claims, before proceeding to seek a patent grant if they wish to. We had also decided then not to commit to the substantial investment which would have been required to build domestic patent search and examination capabilities.

14. Over the past five years, the proportion of Singapore patent grants based on fully positive examination reports has climbed to over 90 per cent. In 2011, 95 per cent of Singapore patent grants were based on a fully positive examination report. We feel it is now timely to make the move to the positive grant patent system.

15. Under the proposed positive grant patent system, only patent applications which fully meet patentability criteria can be granted.

16. The positive grant patent system will:
    1. Raise the overall quality of patents granted in Singapore;
    2. Align our patent system closer to that of established patent offices like the European Patent Office, Japan Patent Office, the UK Intellectual Property Office and the United States Patent and Trademark Office; and
    3. Strengthen business and investor confidence in our patent regime.

17. This is important because there are many valuable inventions generated in Singapore today. For example, a Singapore SME, Aurigin Technology, patented a soldering device used in semiconductor manufacturing. With its patent, the company successfully defended itself against an infringement claim by Hong-Kong based semiconductor manufacturing giant ASM Assembly Automation and even managed to successfully revoke the ASM patent. IPOS runs an IP Management for SMEs programme to guide companies in implementing a viable and cost-effective IP management strategy. To date, more than 250 SMEs have benefited from this programme.

18. The move to the positive grant patent system will minimise the occurrence of weak patents being granted in future, enhance the standing of Singapore granted patents, and give increased assurance to companies and investors of the quality of Singapore-granted patents. Because investors have increased assurance of the quality of Singapore-granted patent, local SMEs could find it easier to raise funds on the basis of their Singapore-granted patents to take their patented inventions to market.

19. Clause 6 repeals and re-enacts section 29, and inserts new sections 29A and 29B which provide for:
    1. A new supplementary examination process for patent applications that rely on a positive foreign search and examination report, to ensure that such patent applications also comply with Singapore’s requirements for patents; and
    2. A new process for the review of non-positive examination reports, search and examination reports, and supplementary examination reports, to provide patent applicants with the opportunity to address outstanding objections raised by the examiner in these reports.

20. The move to the positive grant patent system was strongly supported by practitioners and the industry during consultation.

Liberalise the patent agent sector

21. The second key change is aimed at growing a more international patent agent industry in Singapore, by liberalising our patent agent sector.

22. Patent protection is becoming increasingly globalised. Asian applicants are leading the way, and Asian companies are filing an increasing number of patent applications in multiple countries apart from their home country. With R&D expenditure growing in many Asian countries, we can expect even more patent applications to originate from this part of the world in the future.

23. As a result, we foresee that there will be increasing demand in Asia for the services of patent agents and firms with expertise in the patent laws of key markets like the US and Europe. Our aim, therefore, is to attract firms with such international patent expertise to Singapore. This will grow the range of patent capabilities found here, and enable Singapore to better service the growth in demand for such services in Asia. By positioning Singapore as the “go-to” place in Asia for procuring patent services, we aim to grow the overall market for patent services in Singapore. This will benefit all patent professionals in Singapore and create more jobs for Singaporeans.

24. The liberalisation of our patent agent sector will also expand the range of patent expertise across different technology fields in Singapore, to better meet our industry’s needs and support national R&D efforts . Today, Singapore-based inventors from the likes of A*STAR and the universities continue to have to look outside Singapore to procure patent services in certain technology fields.

25. Under the current patent agent regulatory regime, only registered Singapore patent agents with a practising certificate (PC) or Singapore advocates and solicitors with a PC can undertake patent agency work in Singapore. This is regardless of whether the patent agency work is performed under Singapore Patent law or the Patent law of other countries.

26. Clauses 21 to 24 amend the Patents Act to:
    1. Allow the registration of foreign-qualified patent agents. These foreign-qualified patent agents can be registered at IPOS on the merits of their foreign qualifications and experience, and need not meet local qualification requirements;
    2. Allow foreign-qualified patent agents who are registered at IPOS to undertake offshore patent agency work in Singapore; and
    3. Allow foreign patent firms to undertake offshore patent agency work in Singapore as long as at least one partner or director is a foreign-qualified patent agent registered at IPOS.

27. The scope of offshore patent agency work that registered foreign-qualified patent agents can undertake will be restricted to:
    1. Applying for or obtaining patents at any place other than IPOS;
    2. Preparing patent specifications for filing patent applications, including PCT international patent applications, outside Singapore; and
    3. Providing advice on other countries’ patent laws.

28. Local patent agency work for which knowledge in Singapore Patent law and procedures is required, for instance the drafting and filing of patent applications with IPOS will continue to be only open to registered Singapore patent agents, and Singapore advocates and solicitors with practising certificates.

29. There will be conditions for the registration of foreign-qualified patent agents. These will be specified in the amended Patents (Patent Agents) Rules. These conditions will include:
    1. Proof of qualification and proficiency to act before a foreign patent office;
    2. Singapore residency;
    3. Professional insurance; and
    4. Compliance with a code of conduct.

30. The continued growth of the local patent profession is also important. MinLaw, together with IPOS, are studying how to better support aspiring entrants to the profession. We are also working closely with EDB and IE Singapore to support local firms in growing their capacity to service offshore markets. Some of them already undertake offshore work today.

31. In response to industry feedback, legislation will also be amended to formally allow individuals who meet local or foreign patent agent registration requirements to use the title “patent attorney”, in addition to the title “patent agent”.

32. The title “patent attorney” is widely used analogously to “patent agents” in established jurisdictions like Australia and Europe.

33. This move recognises the high professional standing of the patent profession and has been strongly welcomed by our local practitioners.

Streamline and harmonise the IP Registries processes at IPOS

34. Sir, we are also amending the Patents Act, Plant Varieties Protection Act, Registered Designs Act and Trade Marks Act to support the streamlining and harmonisation of the processes of the Registry of Patents, Registry of Plant Varieties, Registry of Designs and Registry of Trade Marks at IPOS. These amendments are presented in both the Patents (Amendment) Bill and the IP (Miscellaneous Amendments) Bill.

35. The streamlining of the processes across the different Registries at IPOS will enable greater efficiencies, including cost-savings, which can be translated to users. A new integrated Registries IT system will be launched later this year. The new IT system will make it easier and more convenient for customers to execute transactions and access information related to the different types of IP.

Regulatory changes relating to the Medicines Act and Health Products Act

36. Clause 2(d) of the Patents (Amendment) Bill replaces the definitions of “marketing approval” and “medicinal product”, and introduces a new definition for “medicinal health product”, in section 2(1) of the Patents Act.

37. This is a consequential change resulting from the Health Sciences Authority’s impending transfer of the regulatory regime for pharmaceutical products for human use from the Medicines Act to the Health Products Act.

Conclusion

38. The remaining clauses make miscellaneous, consequential and ancillary amendments.

39. The passage of these Bills will underscore to the international community our commitment to strengthen our IP infrastructure and regime, and expand our IP capabilities, so as to develop Singapore as an Asian IP hub.

40. Sir, I beg to move.

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Intellectual Property (Miscellaneous Amendments) Bill

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

2. This Bill is closely related to the earlier the Patents (Amendment) Bill. In the debate we have just had, I have already explained the amendments proposed in both Bills, and members have already expressed their views. Therefore, Sir, I beg to move.

Amendments to the Patents Act and other IP related Acts passed in Parliament (0.05MB)

Last updated on 25 Nov 2012