Asia IP

Since April 1, 2014, companies and entrepreneurs can now enjoy cheaper and faster options to settle IP disputes.

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 Center (WIPO AMC) to offer a new option for patent disputes filed at a national IP office.

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 the relevant issues in dispute in patent proceedings.

As part of this collaboration, WIPO AMC would 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 panel of experts from across the world, who have specialised 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 contents of the expert determination as evidence for their case at IPOS, if parties cannot resolve the dispute between 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 opted by parties) from beginning to end, as compared to full blown patent proceedings which usually take upwards of a year to conclude.

In a separate development, to allow some of the best legal minds in the field of IP in Singapore to contribute towards the development of Singapore’s IP legal landscape, IPOS also appointed four IP adjudicators on April 1. Comprising academics and legal service officers with expertise in a range of IP law topics such as patents and trademarks, these newly appointed adjudicators will preside over IP disputes at IPOS. This will augment the existing specialist tribunal at IPOS, and grow Singapore’s capabilities in the area of IP dispute resolution.