INTELLECTUAL PROPERTY LAW IN SINGAPORE: A GENERAL OVERVIEW1

• Author: NG SIEW KUAN
• Date: 01 December 1992
• Published date: 01 December 1992

I. INTRODUCTION

In this age of rapid scientific and technological progress, research and development has given rise to new technologies, particularly in the area of information technology, computers and biotechnology. The advent of these new technologies have resulted in increasing growth in the importance of a legal system for the protection of industrial property and intellectual property rights. In recent years, the problems of counterfeiting and piracy of technology, sometimes resulting from the transfer of technology between industrialised and developing countries, have resulted in intellectual property issues being tabled at international trade negotiations.2 This article will seek to provide a general overview of the protection of intellectual property rights in Singapore. A short discussion will be made on each of the main branches of intellectual property law, namely, the law of patents, copyright, registered designs, trade marks and trade names, passing-off and breach of confidence. A brief summary on computer software protection laws in Singapore will also be made. In order to gain a clearer perspective of the intellectual property system in Singapore, it may be appropriate to set out a short description of the Singapore legal system.

II. SINGAPORE LEGAL SYSTEM

The Singapore legal system, with its English colonial heritage, finds its foundation firmly planted in the English common law.3 Under the Second Charter of Justice of 1826, the laws of England as it existed on the 27th November 1826 was formally received into Singapore. This general reception was, however, subject to (i) local legislation; (ii) the religions, manners and customs of the inhabitants of Singapore; (iii) the suitability of its application to Singapore. As the Privy Council held in Yeap Cheah Neo v. Ong Cheong Neo:4“statutes relating to matters and exigencies peculiar

to the local condition of England, and which are not adapted to the circumstances of a particular Colony, do not become a part of its law, although the general law of England may be introduced into it.”5 It has generally been accepted that under the Second Charter of Justice of 1826, only pre—1826 English law6 was received into Singapore. It is, however, interesting to note that post-1826 English case-law continues to be received into Singapore, for example, in the law of passing-off.7 Post-1826 English statutes, on the other hand, have been excluded from the general reception provision and would not apply in Singapore unless:

1. (a) they were Imperial Acts which had been extended to the colony by the Imperial Parliament at Westminster. One such example would be the Imperial Copyright Act 19118 which came into force in Singapore on the 1st July 1912 and remained the statutory basis for copyright protection in Singapore until its repeal on the 10th April 1987 by the Singapore Copyright Act 1987;9 or

2. (b) there is a provision in the Singapore statute directing the Singapore courts to apply the English statutory provisions, for example, section 5 of the Civil Law Act10 or where there are “saving clauses” which allow English law to be received into Singapore in certain circumstances;11 or

3. (c) where the Singapore statute imports into Singapore the same rights and privileges conferred by the English statutes, for example, the

1. Registration of United Kingdom Patents Act12 and the United Kingdom Designs (Protection) Act13.

Thus, despite Singapore’s status as an independent republic since 1965, her laws are to a large extent intimately linked with those of the United Kingdom, particularly in the area of commercial law and the law of intellectual property. It is within this broad framework of the English common law that the Singapore intellectual property system subsists.

III. LAW OF PATENTS

The most important form of protection for scientific and technological inventions would lie in the patent branch of the intellectual property system. This is especially so since patent protection confers on the patentee a full monopoly for the exploitation of his invention. Singapore has no indigenous patent law and, at present, there is no “local route” for the registration of patents in Singapore. The only way to obtain patent protection in Singapore is under the Registration of United Kingdom Patents Act14 which provides a system for the re-registration of a United Kingdom patent in Singapore. Section 3 of the Registration of United Kingdom Patents Act provides that:

“Any person being a grantee of a patent in the United Kingdom or any person deriving his right from the grantee by assignment, transmission or other operation of law may apply to the Registrar of Patents within 3 years from the date of issue of the patent to have the patent registered in Singapore. Where any partial assignment or transmission has been made, all proper parties shall be joined in the application for registration: Provided that the Registrar of patents may in his discretion accept the application where it is shown to his satisfaction that for any reason the application could not be made within 3 years from the date of issue of the patent in the United Kingdom.”

This would, therefore, require an applicant who is seeking patent protection in Singapore to first obtain a United Kingdom patent. There are, at present, basically three main ways of acquiring a United Kingdom patent:

1. (a) by direct application to the British Patent Office for a United Kingdom patent under the Patents Act 1977 (U.K.); or

1. (b) by application to the European Patent Office in accordance with the provisions of the European Patent Convention of 1973 (E.P.C.) for a European Patent (U.K.);15 or

2. (c) by application under the Patent Co-operation Treaty of 1970 (P.C.T.) designating the United Kingdom as a country for which patent protection is sought. Under the P.C.T. the applicant may acquire national patents in any of the contracting states by making a single “international” application. However, in order to apply under the P.C.T. the applicant must be either a national or resident of a P.C.T. contracting state.16

Singapore is not at present a signatory to any Patent Treaty, A controversial problem which may arise is whether or not patents granted in the United Kingdom under the Patents Act 1977 (U.K.) and European patents (U.K.) granted under the European Patent Convention would be recognised by the Singapore registry and Courts. This problem arises due to the wording of section 2 of the Registration of United Kingdom Patents Act which defines “patent” to mean “letters patent for an invention”. Letters patent were granted under the Patents Act 1949 (U.K.). Under the Patents Act 1977 (U.K.), letters patent are no longer issued but instead certificates of registration are issued. The issue revolves around the interpretation of the term “patents” under the Registration of United Kingdom Patents Act. If a strict interpretation is adopted then patents issued under the Patents Act 1977 (U.K.) and the European patent (U.K.) would not be recognised for the purposes of re-registration under the Registration of United Kingdom Patents Act. This interpretation would result in a lacuna in the re-registration system. To avoid this, the Registry and the courts would have to interpret “patents” to include patents issued under the “successor” legislation to the Patents Act 1949 (U.K.). Thus, an applicant, who is not a national or resident of a P.C.T. contracting state, seeking patent protection in Singapore must apply to the Singapore Registry to reregister either a national (United Kingdom) patent or a European patent

(U.K.)17 in Singapore. This re-registration system in Singapore is basically a formality since the Registry does not conduct an examination into the substantive requirements for patentability, namely, that of novelty, inventive step and whether the invention is capable of industrial application.

Upon re-registration of the patent in Singapore, the patentee would acquire rights and privileges in Singapore similar in all respects to those conferred by the issue of the patent in the United Kingdom. Section 6 of the Registration of United Kingdom Patents Act provides as follows:

“Such certificate of registration shall confer on the applicant privileges and rights, subject to any privileges or rights acquired under any previous Act of Singapore relating to inventions, similar in all respects to those conferred by the issue of the patent in the United Kingdom.”18

The rights and privileges19 conferred by the issue of the patent in the United Kingdom are comprised in the Patents Act 1977 (U.K.). The exclusive rights which a patentee acquires in the case of a product patent are the right to make, dispose of, offer to dispose of, use or import the patented product or keep it whether for disposal or otherwise.20 In the case of a process patent, the patentee’s exclusive rights include not merely the right to use or offer for use the patented process in Singapore,21 but also

includes the exclusive right to dispose of, offer to dispose of, use or import any product obtained directly by means of the patented process.22

In this respects it should be noted that under section 9 of the Registration of United Kingdom Patents Act, the High Court of Singapore has power to:

“… declare that the exclusive privileges and rights conferred by [the] certificate of registration have not been acquired on any of the grounds mutatis mutandis upon which the United Kingdom patent might be revoked under the law for the time being in force in the United Kingdom.”

Any person who is aggrieved by the issue of a certificate of registration in Singapore can try to attack the acquisition of the “rights and privileges” thereunder by challenging the patentability of the invention upon the grounds set out in the Patents Act 1977 (U.K.).23

Since Singapore adopts a “piggy back” on the patent system in the United...