Public Consultation on Proposed Amendments to the Patents Act to Liberalise the Patent Agent Sector

16 MAR 2012

Public Consultation on Proposed Amendments to the Patents Act to Liberalise the Patent Agent Sector

Consultation Period:
16 Mar 2012 to 16 Apr 2012

Introduction

  1. Intellectual property (IP) is a vital component of the knowledge economy. According to the World Intellectual Property Organization, global patent filings have increased to around two million annually, up 45 per cent from 2000. East Asia has overtaken North America, and also Western Europe, in the number of Patent Cooperation Treaty international applications, used for the filing of patents in multiple jurisdictions. In Singapore, patent filings have increased by 20 per cent since 2001 to almost 10,000 in 2011.

  2. As mentioned by the Minister for Law during the recent Committee of Supply debate in Parliament on 6 March 2012, this is a window of opportunity to establish Singapore as an IP Hub to service the growth in demand for IP services, especially from the region.

Liberalise the Patent Agent Sector

  1. In particular, there are good opportunities for Singapore to be a key node in global patent agency work, such as the drafting and filing of patents for different jurisdictions.

  2. Currently, only (i) Singapore-registered patent agents with a patent agent practising certificate issued by the Intellectual Property Office of Singapore (IPOS); and (ii) advocates and solicitors with a legal practising certificate issued by the Singapore Supreme Court; are allowed to undertake patent agency work in Singapore (whether for filing in Singapore or other jurisdictions). In addition, a firm is allowed to carry on a business of and undertake patent agency work, only if at least one partner or director of the firm is either (i) or (ii). There are only about 100 Singapore-registered patent agents in practice today.

  3. The Ministry of Law (MinLaw) and IPOS seek to broaden and deepen patent agency capabilities in Singapore, to attract more of the regional demand for patent services to Singapore.

  4. To achieve this, MinLaw and IPOS are looking to better support the development of the local patent agent profession. These plans will be rolled out in the coming year. At the same time, we wish to attract world-class patent firms to set up in Singapore to service offshore markets.

  5. MinLaw proposes to amend the Patents Act to allow foreign-registered patent agents to undertake offshore patent agency work (for example, the drafting and filing of patents for other jurisdictions) in Singapore, without having to meet the local registration requirements (which include the completion of the Graduate Certificate in Intellectual Property Law, passing of four patent agent qualifying examination papers, as well as the completion of an internship in patent agency work) .

  6. Foreign-registered patent agents who wish to practise offshore patent agency work in Singapore will be required to register with IPOS. MinLaw and IPOS are currently reviewing the specific registration requirements, such as proof of foreign patent agent qualifications, professional insurance, and being subject to a Code of Conduct.

  7. Firms will be allowed to carry on a business of and undertake offshore patent agency work, as long as the firm has at least one partner or director who is a foreign-registered patent agent registered with IPOS as per paragraph 8 above. This may appeal to firms with a client base in Asia.

  8. Local patent agency work (that is, the drafting and filing of patents for Singapore, and providing advice on infringement relating to Singapore patent laws) will continue to, and can only, be undertaken by Singapore-registered patent agents with a patent agent practising certificate issued by IPOS; and advocates and solicitors with a legal practising certificate issued by the Singapore Supreme Court.

Provide formal recognition of the title of “patent attorney”

  1. Patent professionals are accorded different titles in different countries. The title “patent attorney” is widely used analogously to “patent agents” in several established jurisdictions like Australia and Europe.

  2. In response to feedback given by the local patent agent profession, MinLaw and IPOS are considering amending the legislation to make it clearer that individuals who meet the local registration requirements, or the proposed foreign registration requirements, can use the title of “patent attorney”, in addition to the title of “patent agent”.

  1. The public consultation brief and proposed draft legislative amendments to the Patents Act are in Annexes A and B.

Invitation for Feedback

  1. MinLaw invites interested parties to provide their feedback on the proposed draft legislative amendments. The consultation period is from 16 March to 12 April 2012. The public can view the consultation paper and draft legislative amendments at mlaw.gov.sg and www.reach.gov.sg/YourSay/EConsultationPaper.aspx. The feedback may be sent in electronic or hard copy form to:

Intellectual Property Policy Division
Ministry of Law
100 High Street
#08-02, The Treasury
Singapore 179434
Fax: 6332 8842
E-mail: MLAW_Consultation@mlaw.gov.sg

Last updated on 26 Sep 2013