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Singapore Enhances IP Protection

Issued: April 30 2014

Since April 1, 2014, companies and entrepreneurs have been able to enjoy cheaper and faster options to settle IP disputes in Singapore.

To enhance the suite of IP services in Singapore, the Intellectual Property Office of Singapore (IPOS) is collaborating with the World Intellectual Property Organization Arbitration and Mediation Centre (WIPO AMC) to offer a new option for patent disputes filed at a national IP office.

“The WIPO-administered expert determination option for matters of a technical or scientific nature in patent proceedings before IPOS makes sense,” says Joyce Tan, managing partner at Joyce A Tan & Partners in Singapore. “It is pragmatic and reflects an innovative approach to proceedings intended to determine the existence of innovation.”

Patent disputes such as inventorship or entitlement disputes, or patent revocations, often involve complex technical or scientific issues. This new option will allow disputing parties to submit such issues to an expert of their choice to make an assessment instead of having the Registrar of Patents adjudicate all relevant issues in dispute in patent proceedings.

“It provides faster and cheaper access to dispute resolution in the area of patents which traditionally has been costly and time consuming,” says Chiew Yu Sarn, a partner at Yusarn Audrey in Singapore. “The flexibility of choosing the issues for expert determination, including for the purpose of negotiations, is particularly useful, as this can allow parties to resolve disputes earlier in legal proceedings.”

As part of this collaboration, WIPO AMC will assist with the appointment of a suitable expert, if required, after consultation with the disputing parties. The expert will be chosen from WIPO AMC’s global panel of experts who have specialized knowledge relevant to IP issues in a broad range of technical and scientific areas. Some examples of fields from which experts could be called upon are IT, telecoms, pharmacy, engineering and life sciences.

Expert determination is generally confidential and binding. This option is also very flexible as the parties involved can choose the issues for expert determination. Alternatively, the parties could also agree on non-binding expert determination to guide their negotiations or even rely on the content of the expert determination as evidence for their case at IPOS, if parties cannot resolve the dispute themselves.

Parties enjoy special rates if they opt for expert determination under the auspices of WIPO AMC. The administration fee is reduced to S$500 (US$395) and the indicative expert’s rates for 20 to 25 hours of preparation and expert determination per case is S$5,500 (US$4,350). Hence, parties could see a satisfactory resolution of their dispute at around S$6,000 (US$4,750) in terms of fees towards the expert and WIPO AMC. Parties should also enjoy substantial time savings as expert determination takes only 60, 90 or 120 days (as chosen by parties) from beginning to end, as compared to full blown patent proceedings which usually take upwards of a year to conclude.

“Costs for experts and administrative fees are pegged at a relatively affordable rate, and clearly set out. This will enhance the value of IP, as businesses and inventors with patents can more easily deal with each other,” Chiew says.