In May last year, the Singapore Government appointed an IP Steering Committee to formulate an IP Hub Master Plan to guide Singapore's development as a global IP hub in Asia. After consultation with more than 200 professionals in the IP industry and over 100 local and foreign companies and organisations, the Committee submitted its recommendations in March this year, which were accepted by the Government, and the Master Plan was unveiled to the public on April 1 2013.
This article provides a summary of the Master Plan, and the slew of initiatives being rolled out by the various Government agencies to help Singapore on its journey.
Three strategic goals
The Master Plan outlines three strategic goals which Singapore will be working towards: to become a hub for (a) IP transactions and management; (b) quality IP filings; and (c) IP dispute resolution. It also outlines several initiatives which will be implemented to help achieve the above outcomes over the next ten years.
IP transactions and management
In recognition of the tremendous potential of IP assets once unlocked and better monetised, the Government intends to develop Singapore into a regional and global nexus for the trading, licensing and monetisation of IP. According to the World Bank data published for 2012, Singapore ranked second amongst Asian countries in terms of the payments and receipts for the use of intellectual property. The Government hopes to encourage further activity in this area by attracting top IP intermediaries and facilitating IP transactions through incentive schemes.
The Government will be looking to introduce and support IP financing options like IP-backed loans, IP securitisation and IP valuation services and attracting IP fund management activities to Singapore, to enhance the range of IP financing avenues and create spin-off demand in other sectors. Financing schemes may also be introduced, where the Government partially underwrites the value of IP as collateral in addition to encouraging investors and financial institutions to venture into this area.
To increase the transparency, quality and efficiency of different types of IP transactions, the following marketplace platforms are being contemplated:
- IP bulletin board, a central listing directory for the licensing, buying and selling of IP at the same time maintaining the necessary confidentiality required in IP transactions. This will help potential buyers to obtain additional information about related know-how and commercial potential of any technology.
- IP auctions of top-tier EU or US patents for Asian buyers and vice versa, which will help sellers reach out to more buyers. The data set of comparable transactions will also aid in the pricing and valuation of IP in the same technology field.
- IP exchange for trading IP-based instruments with publicly available information pertaining to the trading, volume and pricing.
- Digital copyright licensing exchange to enable users to access a unified database of information on specific forms of copyrighted works and easily obtain licences for relevant forms of copyrighted works in Singapore, and grow it over time to potentially support the licensing markets in the region.
The Government will also support and co-fund a diverse array of projects across the entire IP marketplace ecosystem, including setting up a Centre of Excellence for IP valuation to promote excellence in the research and practice of valuation so as to support IP transactions and encourage positive practices that will enhance the transparency of IP transactions.
|Illustration 1: IPOS statistics 2011-2012
|| Applications filed under Madrid Protocol||7,640
|| Total (Class)||34,928
|| Applications filed under Madrid Protocol||16,146
|| PCT applications entering National Phase||6,726
|Note: Local includes all applications with at least one local applicant|
Quality IP filings
The second strategic goal is to create a strong value proposition to attract IP filings by offering world-class services and strengthening international collaborations with other IP offices.
The latest statistics (as shown in illustration 1) published by the Intellectual Property Office of Singapore (IPOS) show that, in spite of the small size of the domestic market, there has been a growth in the trade marks, patents and registered designs filings by foreign applicants during 2011 and 2012.
While the existing IP registration system in Singapore is largely aligned with international practices and is supportive of the needs of IP owners, one area where it was lagging behind was the patent self-assessment system.
Under this system, the applicant can request for and obtain a granted patent in Singapore even if the outcome of an examination is not favourable and the invention does not fulfill the patentability requirements of novelty, inventive step and industrial applicability.
Significant headway was made when the Patents (Amendment) Act 2012 was passed last year, which moved the regime towards a positive grant system. Once the amendments come into force (projected to take place in the third quarter of 2013), only those patent applications which have received a positive search and examination report will proceed to grant in Singapore.
While statistics show that more than 90% of the patents granted in Singapore are in any event based on positive examination reports, the new system will align the practice with the prevailing practices in established patent offices such as the European Patent Office, and those in Japan and the UK. This will certainly improve the credibility of patents granted in Singapore. Another positive development has been implemented via the Intellectual Property (Miscellaneous Amendments) Act 2012, which will now permit the deferment of the publication of registered designs applications in Singapore. This addresses concerns of applicants who wish to secure registration but worry the design may be disclosed to the public before the planned commercial release of the product for which the design is being protected.
Alongside the legislative changes, IPOS has been providing structured training programmes to equip local patent examiners with a thorough understanding of patent law and specialised skills and on-the-job training mentored by experienced patent examiners. This is being done with a view to creating local search and examination (S&E) teams capable of producing quality and cost-efficient S&E services within publicised target timeframes, which should be equal to or better than that offered by the best in the world. Efforts are also being made to grow a larger pool of Singapore-qualified patent agents with the necessary expertise to cater to the needs of international companies, and attract more patent work to Singapore.
Apart from aligning the registration framework with those of international systems, IPOS has been consistently forging new international networks and collaborations with other IP offices to develop Singapore as a gateway to other markets.
In December 2012, the Japan Patent Office (JPO) was appointed as a competent International Search Authority (ISA) and International Preliminary Examination Authority (IPEA) under the Patent Co-operation Treaty, for international applications filed with the Singapore Registry of Patents. The inclusion of the JPO expands the current list of competent ISAs and IPEAs (namely the Australian Patent Office, the Austrian Patent Office, the European Patent Office and the Korean Intellectual Property Office), and provides applicants with an additional option. .
Early this year, IPOS also launched the Patent Prosecution Highway (PPH) pilot programme with the Korean Intellectual Property Office to facilitate the sharing of search and examination results. A similar PPH pilot programme is expected to take effect from September 2013 between Singapore and the People's Republic of China.
IPOS has also recently signed bilateral memorandums of understanding with the Mexican Institute of Industrial Property and Instituto Nacional Da Propriedade Industrial, to strengthen cooperation on IP matters such as developing mechanisms for expedited patent registrations, sharing of knowledge to assist industry partners such as SMEs to better manage their intellectual property, and pooling of best practices in raising public awareness of intellectual property.
IP dispute resolution
Given the international reputation for sound judgments and efficiency of the courts in Singapore, it already has a strong foundation to position itself as a choice location for IP dispute resolution. In the coming years, the Government will be stepping up efforts to increase international awareness of the IP court and judges to attract more litigation cases to Singapore. In addition, specialised IP case management systems will be adopted and more active appointments of assessors and amicus curiae will be encouraged to expeditiously manage complex IP cases.
Further, Singapore will also be promoting the use of alternative dispute resolution (ADR) routes, including arbitration, mediation and expert determination, to resolve IP related disputes, particularly contractual and licensing disputes. A panel of top international IP arbitrators in Singapore will be established to enhance the international profile of Singapore's IP ADR capabilities and attract more IP related ADR cases to Singapore. Greater publicity of Singapore's IP ADR capabilities will also be undertaken in close collaboration with the various ADR institutes in Singapore such as the World Intellectual Property Organisation Arbitration and Mediation Centre and Singapore International Arbitration Centre.
The Committee has further identified two initiatives which will play a crucial role in achieving the three strategic goals discussed above.
Ramping up manpower resources and capabilities
The Singapore Government will be investing $65 million in 2013 to build world-class IP manpower capabilities in strategic, market-relevant areas, who are knowledgeable about the IP environment and plugged into the network of Asian markets, and beyond. The investment is aimed at professionalising the IP ecosystem, and creating high value-added and well-paying jobs for Singapore. With increased demand, the current pool of some 2,000 IP professionals is expected to be doubled in the next eight to 10 years.
To achieve this, a comprehensive development framework known as the IP Competency Framework (IPCF) has been developed for standard setting, certification, qualification, and training of IP professionals, namely the pool of expertise for patent agents, IP lawyers, IP management directors, IP strategists, and IP valuation analysts. This is mirrored from established practices in the United States, and key European Countries such as the UK and Germany. Furthermore, IP Academy, a subsidiary of IPOS, has been positioned to be the principal adopter of the IPCF in all its training programmes to serve the market demands in Singapore, as well as those in the region.
This year, IPOS will also establish an IP certification unit to work with professional bodies such as the Association of Singapore Patent Agents, the Singapore Academy of Law, the Law Society and the Singapore Business Advisors and Consultants Council, to qualify training providers as well as ensure professional certifications of IP workers.
Conducive and progressive environment for IP activities
Singapore is already one of the top locations in the world for ease of doing business. The Government aims to exploit this to incentivise companies to site their IP portfolios and management teams in Singapore. To this end, a so-called IP Box or equivalent tax regime may be adopted, even for IP not created in Singapore, so as to enhance Singapore's tax environment for IP management activities. Tax deductions for IP activities across the value chain will also be implemented.
Singapore will seek to be the global nexus for discourse on IP trends and developments, especially those related to Asia, and how IP regimes, businesses and services need to evolve. To achieve this, the Government is looking to host and develop flagship international IP and innovation-related conferences in Singapore. Lastly, companies in Singapore will be encouraged to originate their own research to contribute actively to the global body of IP knowledge, and position itself as an IP thought leader.
A bridge between east and West
The Singapore Government clearly considers IP as a new growth area for Singapore and is on a mission to develop Singapore as an IP hub with a vibrant IP industry sector.
At present, many companies already see Singapore as a convenient bridge between markets in the East and West and also as a convenient gateway to the South-East Asian region. With this explicit focus on the IP industry, the next few years will provide many interesting opportunities for both local and international IP owners and IP practitioners as new and emerging initiatives to enhance protection, management and exploitation of IP resources are explored and rolled out by the Government.
Andy Leck is a principal, heading the IP practice and co-heading the dispute resolution practice of Baker & MacKenzie's Singapore office. He has over 20 years of experience in contentious and non-contentious IP matters, litigation and arbitration. Andy also advises on the commercial exploitation of IP rights (particularly in the franchise, pharmaceutical and media industries). His experience includes representing one of the world's leading cosmetic brands in a trade mark infringement and passing off action against a Singapore medical clinic for the use of its well-known trade mark before the High Court and the Court of Appeal (Clinique Laboratories v Clinique Suisse & Healthy Glow 2010).
Andy is recognised by the world's leading industry and legal publications, and is an appointed member of Singapore Copyright Tribunal. He is also on INTA's Board of Directors.
|Yew Kuin Cheah
Yew Kuin is a local principal in the IP practice group in the Singapore office of Baker & McKenzie. He specialises in contentious IP matters, and has experience in both civil and criminal litigation for copyright and trade mark infringement matters.
Yew Kuin also has experience in dealing with commercial agreements and advising on legal issues arising from the media industry, and has worked with major terrestrial television broadcasters, print and publishing companies, recording companies and various industry bodies from the film, music and software industries.
Yew Kuin is a member of the WIPO Mediation and Arbitration Centre's Film and Media Panel of Neutrals. He is also a lecturer at the Ngee Ann Polytechnic Film and Media School, where he teaches media law to aspiring film students.