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Home > Legislation > Public Consultations > Past Public Consultations > FAQ for USSFTA Consultation
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FAQ for USSFTA Consultation
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(Past Public Consultation
2003/2004 USSFTA
Response – FAQs)
IP Chapter
Copyright (Extension, TPMs, RMI, ISPs)
Enforcement (Penalties, Statutory Damages, Border Measures)
Patents (Pharmaceuticals, General)
Plant Variety Protection
Trade Marks
Competition in the knowledge-based global economy focuses more on intellectual assets rather than physical assets. In fact, Singapore’s continued economic progress depends on fostering and protecting knowledge creation. A strong and globally relevant IP Chapter will help Singapore attract more high value-added set-ups to the country. This will lead to creation of new jobs and multiple economic benefits for all Singaporeans.
Stronger IP protection will benefit all organisations in Singapore.
A strong IP regime will encourage entrepreneurship, investment, job creation and growth in Singapore’s own technology, science and creative industries. Globally, there is growing awareness of the value of such assets. It is not uncommon to see IP being the subject of commercial and financial transactions. As Singapore progresses into a knowledge driven economy, where such transactions become more common, our local enterprises will have to be more IP-savvy in order not to lose out.
IPOS has formed an Industry Taskforce to help prepare the wider business community for IP law changes. The Taskforce members’ comments have been sought on the forthcoming changes and forms of assistance for our businesses are being worked out in consultation with the Taskforce members and industry players. As the regulatory changes are firmed up, IPOS and our partner agencies will also rollout education programmes and seminars to acquaint industry with the new regime.
All changes need to be in place by January 2005 latest. Some changes including the Patent amendments and the establishment of the system for Plant Variety protection have come into effect on 1 July 2004.
The provision on ODM is strictly speaking not an IP issue. Singapore will formalise its regime of regulating optical disc manufacturing activities through the imprint of Source Identification Code on optical discs unless specifically exempted by the rights owner. The change is that regulation will now be in the form of legislation rather than the present voluntary code of conduct. Under the new legislation, a cause of action could be taken against those who do not abide by these new regulations.
For literary, dramatic, musical and artistic works, the term of protection is now the “life of the author” plus 70 years. If the work is published after the death of the author, it lasts for 70 years after the date of the first publication. For sound recordings and films it is 70 years from the date of publication of the sound recording or film, and for performances it is 70 years from the date of the performance. With the extension, the owners of the aforementioned copyright works will be able to control the use of the works for an additional 20 years. The term of protection for broadcasts and cable programs, remains unchanged at 50 years from the publication of the broadcast or cable program, and for published editions of works at 25 years from the first publication.
All owners of copyright works and the supporting industry will benefit; such as the publishing industry, game hardware developers, etc.
The extension is applicable to works that are still protected by copyright. Copyright work that has expired will not be revived under the new amendments. Of course any new work created after 1July 2004, will enjoy the extended term of protection.
Singapore is only obliged to grant the extended term of protection to works originating from Singapore and from countries that grant the similar term of protection. For works originating from countries that grant a shorter term of protection, the term of protection will not be extended beyond that enjoyed in the country of origin.
The term of protection for works shall be determined by the law in Singapore, and where the term of protection for a work in the country of origin is longer than that of Singapore, it shall be taken to be not less than the term of protection granted in Singapore.
Where a work has fallen into the public domain by virtue of expiration of the copyright at any time or immediately before the operation of the amendment, copyright protection for that work in Singapore shall not be revived. This is in accordance with obligations under Art 18(2) of the Berne Convention.
Infringement occurs when one does something that only the copyright owner has the exclusive rights to do or when one engages in an unauthorised use. For example, if one were to reproduce any copyright materials without the prior permission of the copyright owner.
It is important to note that it is not necessary to have reproduced the entire copyright work before it is considered infringing. It is infringing as long as a substantial amount has been copied.
In a dispute, a substantial amount is not measured merely in terms of the quantity that has been copied. The Court also takes into account the nature of the portion that has been copied or reproduced. If the portion copied constitutes the primary part or essence of the copyright material, the Court may construe that a substantial amount has been copied. It is also an infringement to:
- import infringing copies for sale or distribution;
- distribute infringing copies for trade;
- distribute infringing copies to an extent that will prejudicially affect the owner of copyright; or
- falsely attributes the authorship of a work.
The civil remedies for the copyright owner or his exclusive licensee may include an injunction, an order for delivery up of infringing copies, and either damages, an account of profits or an award of statutory damages of not more than $10,000 for each work and a ceiling amount of $200,000 in total for each infringement action.
Where it is appropriate to do so, such as where the flagrancy of the infringement was shown, the Court may also order, as appropriate, additional damages.
An award of statutory damages is a remedy that the Court may order the infringing party to pay an amount without the need for the copyright owner to show his actual damages. This is subject to a ceiling amounts as stated above.
Factors in determining Statutory Damages
In determining the amount of statutory damages, the Court is to consider these factors:
- nature and purpose of the infringing act, including whether the infringing act was of a commercial nature or otherwise;
- flagrancy of infringement;
- if the act is done in bad faith;
- any loss suffered or likely to be suffered by the copyright owner;
- any benefit shown to have accrued to the defendant;
- conduct of both parties before and during proceedings;
- the need to deter similar instances of infringement; andall other relevant matters.
It is a criminal offence if a person;
- makes (or manufactures) infringing copies for sale;
- sells infringing copies for the purpose of trade; or
- possesses or imports infringing copies and it can be shown that the infringing copies are for the purposes of sale/trade or distribution for the purposes of trade.
In any of the instances above, it must be proven that the infringing party knows or ought reasonably to know that the copies were infringing copies at the relevant time.
The law provides that where a person is found to have more than 5 copies of any one work, it is presumed that the infringing copies were not for personal use.
The penalties for the above acts are:
- a S$10,000 fine per infringing copy, up to a total of S$100,000.00 per charge and/or
- imprisonment up to 5 years.
It is also a criminal offence to distribute infringing copies for the purposes of trade or for other purposes to an extent as to affect prejudicially the copyright owner. If guilty, the penalties are:
- a fine not exceeding S$50,000.00 and/or
- imprisonment up to 3 years.
The making or possession of an article designed for making infringing copies, e.g. machinery for manufacturing infringing copies is also an offence attracting the following penalties:
- a fine not exceeding S$20,000.00 for each such article and/or
- imprisonment up to 2 years.
Criminal Liability for Wilful Infringement
It is also a criminal offence if a person, wilfully infringes copyright either for the purpose of obtaining a commercial advantage or to a significant extent.
Commercial advantage means any direct advantage, benefit or financial gain for a business or trade. As for whether the infringement is to a significant extent, this is judged based on the volume, value of infringing copies and whether the infringement has a substantial prejudicial impact on the copyright owner and all other relevant matters.
The penalties for such wilful copyright infringement are as follows:
- 1st offence, a fine not exceeding $20,000 and/or imprisonment up to 6 months;
- 2nd or subsequent offence, a fine not exceeding of $50,000 and/or imprisonment up to 3 years.
Other acts that have civil and criminal liabilities include
- circumventing a technological measure; and
- falsely removing or altering the rights management information electronically attached to a work.
If a person were to avoid, bypass, remove, deactivate, descramble (where a copy is scrambled), decrypt (where the copy is encrypted) or otherwise impair an effective TM, such actions would be considered a circumvention of the TM.
If the person were to insert devices (for example mod-chips or decryption software) in his game console which bypass the console's access code to allow pirated games to be played - this could be considered an act of circumvention. Civil action could be taken against the person.
If a person were to make or sell such devices or circumvention software, this would attract criminal penalties. A person who renders a service to incorporate decryption software or insert devices to bypass technological measures would also be committing a criminal offence.
Yes, a person may infringe the TM without infringing the copyright of the work that the TM seeks to protect. But note that the TM must have been applied in exercise of the copyright i.e. that it was put in place to protect against copyright infringement and not for other purposes e.g. for market segmentation.
In such a case, it may be argued that the lock did not effectively control access or protect the work and therefore, the circumvention was not caught under the provision.
No. There is also an express provision in Section 261C(10) allowing for import or sale of devices whose sole purpose is to control market segmentation for access to films e.g. multi-coded DVD player.
Where the coding was not solely for market segmentation, the act of decoding would constitute an act of circumvention and may give rise to a civil course of action.
End-users requiring and having legitimate access to works will continue to do so. The measures are intended to provide a tool for rights owners to more effectively protect their works against illegitimate use. The amendments will not stop consumers from purchasing and using legitimate works and devices.
Based on the current state of technology, it is not possible to preserve fair use privileges and yet provide for protection against circumvention of technological measures. Thus, it becomes inevitable to favour protection for technological measures. It is for copyright owners to grant fair use rights to institutions on practical terms. It is not possible to ensure every fair use privilege is catered for in legislation. However, the legislation does seek to strike a balance by requiring a nexus between circumvention violation and copyright protection.
RMI gives assurance to consumers of source and helps maintain integrity of content.
Yes. For digital works, it is difficult to track such abuse and wrongful use; hence a stronger deterrent is needed. With technological advancements and the wider dissemination of works via the Internet, such measures assist rights holders to more effectively protect their works.
The provisions would cover any person who:
- Provides services relating to, or provides connections for, the transmission or routing of data (for transmission, routing or providing connections) or
- Provides or operates facilities for online services or network access (for system caching, storage and referral).
These changes will provide legal incentives for NSPs to cooperate with copyright owners in deterring unauthorised storage and transmission of infringing copyright materials. The provisions scope out a framework for both sides to work together, thereby ensuring a balanced and fair solution for all parties - NSPs, rights-holders and content owners.
There are penalties in place to safeguard against possible abuse of the system such as criminal penalties for false statements in notices.
Starting from 1 January 2005, it is a criminal offence if a person, wilfully infringes copyright either for the purpose of obtaining a commercial advantage or to a significant extent.
Commercial advantage means any direct advantage, benefit or financial gain for a business or trade. As for whether the infringement is to a significant extent, this is judged based on the volume, value of infringing copies and whether the infringement has a substantial prejudicial impact on the copyright owner and all other relevant matters.
The penalties for such wilful copyright infringement are as follows:
- 1st offence, a fine not exceeding $20,000 and/or imprisonment up to 6 months;
- 2nd or subsequent offence, a fine not exceeding of $50,000 and/or imprisonment up to 3 years.
We are trying to inculcate in Singaporeans a respect for IP. We want Singaporeans to support and buy only original products. Today, with the increasing value of intangible and intellectual assets, Singapore needs to be firm to ensure that rights to these assets are adequately protected. A number of countries already provide for criminal penalties against Corporate End User infringement, namely the US, Hong Kong, Japan, Malaysia, and Thailand.
Pirate or counterfeit goods operations are not legitimate businesses. They are underground criminal organisations. They do not pay tax, possibly do not pay their employees market wages, and therefore, do not contribute to the legitimate economy. People who are supporting such activities, are not supporting legitimate business. With stronger IP laws that bring criminal charges against those who infringe IP, we want to discourage companies from buying pirate goods, including music, film, software and clothing. Eventually, stronger IP protection help to uphold legitimate businesses and that will directly benefit our economy.
Any infringement of copyright may result in civil action taken by the copyright owners. The new provisions are intended to target one who does an infringing act that causes a lot of harm to the copyright owners, and this happens when either the infringement is to a significant extent or when the infringement is for the purpose of obtaining a commercial advantage.
In the former case, factors in determining if infringement has occurred to a significant extent include the volume and value of infringing articles, and whether the infringement has a substantial prejudicial impact on the owner of the copyright. In the latter case, an infringement would be considered as having been done for the purpose of obtaining a commercial advantage if the act was done to obtain a direct advantage, benefit or financial gain for a business or trade carried on by the person.
For (a) if the volume and value of infringing copies is significant and the unauthorised access is available to a large number of people, this could constitute a criminal offence even if the person did not gain any financial benefit from the arrangement nor infringed the materials for commercial reasons.
If the operation in (b) results in an exchange of infringing materials, the person running the website could be deemed as obtaining a commercial advantage and hence could attract criminal penalties.
Any infringement of copyright may result in civil action taken by the copyright owners. As to who would be liable for the criminal offence, if it was proved that the infringement was committed with the consent or connivance of the director, manager, secretary or those having similar capacity, these persons as well as the company would be considered guilty, liable to be proceeded against and punished accordingly.
It can be very difficult to show precisely how much monetary damage an IP infringement has caused. Even if the infringement is proven, the IP owner may not be able to find or show evidence of actual losses. Furthermore, he may actually spend more on litigating the case than what he recovers. Statutory damages give rights owners a viable alternative to requesting actual damages, and also acts as an effective deterrent against infringement.
Infringement will still have to be proved before damages will be awarded. The legislation will have provision for flexibility so that our courts can exercise judicial discretion to moderate the award taking into account also the following factors
- Nature and purpose of infringing act, including whether commercial or otherwise.
- Flagrancy of infringement
- Whether Defendant acted in bad faith
- Any loss suffered or likely to be suffered by Plaintiff by reason of infringement.
- Any benefit shown to have accrued to Defendant by reason of infringement.
- Conduct of Parties before and during proceedings
- Need to deter other similar infringements.
- All other relevant matters.
Infringement will still have to be proved before damages will be awarded. The legislation will have provision for flexibility so that our courts can exercise judicial discretion to moderate the award taking into account also the following factors
- the flagrancy of the infringement of the registered trade mark;
- any loss that the plaintiff has suffered or is likely to suffer by reason of the infringement;
- any benefit shown to have accrued to the defendant by reason of the infringement;
- the need to deter other similar instances of infringement; and
- all other relevant matters.
In general, infringing goods are counterfeit goods if the sign borne by the goods is identical with or so similar to the registered trade mark as to be calculated to deceive and is applied to the goods without the consent of the owner of the trade mark and to falsely represent the goods to be the genuine goods of the owner or his licensee. The distinction is necessary as certain remedies like statutory damages and ex officio border enforcement measures, amongst others, are available only where counterfeit goods are involved.
Currently these are no plans for a similar Orange Book system to be implemented in Singapore. It should be noted that the patent information in the US Orange Book is relevant only for the application for the marketing approval of a drug in the US. It is not conclusive in relation to whether any patents exist or whether any patents would be infringed. Therefore, it is advisable for a distributor to do a proper patent search and obtain professional advice on the issue of infringement.
The onus would be on the distributor to ensure that he does not infringe any patents. However, whether a distributor is prepared to rely on contractual indemnities or other contractual provisions from its supplier or manufacturer, it is a business risk issue for the distributor to consider. The distributor could also consider engaging the services of a professional to conduct a search and interpret the necessary documents.
At the moment there are no plans to allow for patent term extension resulting from delay in marketing approvals beyond pharmaceuticals for human use.
Once the drug company sells or authorises the sale of its product in Singapore, others can parallel import that drug into Singapore. However, prior to the drug company selling or authorising the sale of that product in Singapore, an importer can possibly infringe a patent if all the other conditions for infringement set out are met.
However, a third party may import, dispose of or offer to dispose of, a genuine patented pharmaceutical product needed for use by or on a specific patient in Singapore even if the patent holder has not brought the pharmaceutical product into Singapore.
This specified patient would be one that is identified by the HSA after recommendation by the patient's physician. The use of the drug must be by the individual patient himself. The entire process of bringing in the drug must eventually end with the use of that drug by that individual patient.
"Genuine" means that the product was produced by or with the consent (conditional or otherwise) of the patent holder or a licensee. The HSA must have granted specific approval for the importation of the product specifically for use by that patient.
To our knowledge, no request for compulsory licences has been made in Singapore.
Such delays could result in patent term extension, if the delay is caused by the patent office.
If an applicant opts to speed up the process, by paying for grant earlier, he would be able to do so. The decision to go fast or slow is up to the applicant. The Fast and Slow Tracks systems in brief, provide the maximum time periods to which applicants are to meet the necessary requirements before seeking for the issuance of the grant certificate. If the applicant had opted for the Slow Track, it means that he has more time in his hands, and he can decide to finalise the application processing early if he so wishes.
This cut-off date is the time when grant conditions are met by the applicant. This cut-off date was defined in the Rules before the amendments in July 2004 came into effect. The current amended Act serves to make these conditions clearer and expands on the conditions for grant. These conditions include payment of fee, filing of requisite documents, unity objections are overcome etc. The date would be the date of compliance with these conditions, not the date the Registrar determines officially that the conditions are met.
Say an applicant submits an application X, which covered 2 inventions A & B. If a unity of invention objection is raised, he can file a divisional application Y, so X & Y would cover only 1 (A or B) invention each. The applicant has to file an application for Y before all conditions for grant of X are fulfilled. So if he has already paid the grant fee but overlooked filing the divisional application, he can still do so because one of the conditions for grant is not met, ie there is an unresolved unity of invention objection.
IPOS recognises that there are differing standards of unity in various jurisdictions, and that there might be cases where there could be no unity objection in Singapore although there may exist a unity objection in another jurisdiction. The amendments to the Patents Act cater to this concern. Where the documents received by the Registrar disclose an unresolved unity of invention objection, the applicant can still make submissions to satisfy the Registrar that this objection has been resolved.
The formal requirements for grant were pre-existing before the amendments to the Patents regime on 1 July 2004. Non-compliance with formal requirements is not a ground for revocation. Applicants who wish to make voluntary amendments after paying the grant fee can withdraw the Patents Form 14 that was filed, amend the application, and file a fresh Patents Form 14. If the deadline to file Patents Form 14 has passed, the appropriate extension request must be filed.
The provisions have been revised to state clearly that it is the final report that IPOS will refer to. A claim could be examined, objected to, amended, then finally accepted or rejected. It is this final version of the claim in the Exam Report that is the relevant claim to be referred to.
The grant of a patent provides a monopoly to the owner, and thus any extension of the monopoly has to be carefully weighed and cannot be given lightly. Therefore, extensions will only be granted for unreasonable delays, which in general, would be:
- a delay of more than 4 years from filing to grant (excluding time attributable to the applicant), and/or
- a delay of more than 2 years from examination request to grant (excluding time attributable to the applicant).
Third parties have to provide sufficient grounds to support a request for post-grant search and examination. These grounds were put in place to reduce "nuisance requests" from being made. Through industry consultations, the general opinion was that these grounds were sufficient checks. There should not be a time limit for such requests as it is a means by which a third party can obtain more information on the patent.
The amendments improve the pre-existing system and seek to strike a balance between the interests of the patentees and the public. In the pre-existing system, patentees can sue on unexamined claims. The amendments allow them to continue to do so, but as the court now has the discretion to withhold relief, this factor should motivate patentees to have their claims examined before grant. By doing so, they would remove this discretion and need not face the possibility of having relief withheld from them. The result would be more relevant and accurate patent information available to the public.
Before the changes to the Patents regime came into effect, extending the protection conferred by a patent by an amendment which should not have been allowed was a ground for revocation. This has now been widened. An amendment or a correction to a patent or a patent application which should not have been allowed can be a ground for revocation.
No. The previous ground of furnishing information which in any material particular was false has been changed to the non-disclosure or inaccurate disclosure of any prescribed material information, whether or not the applicant knew or ought reasonably to have known of such information or the inaccuracy. However, it should be noted that the "prescribed material information" as set out in the Rules is a narrow class of information that the Registrar deems of sufficient importance to impose this duty on the applicant.
The UPOV Convention (Article 1(vi)), on which Singapore's Plant Varieties Protection Act 2004 is based, defines a plant variety as:
"a plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a breeder's right are fully met, can be
- defined by the expression of the characteristics resulting from a given genotype or combination of genotypes,
- distinguished from any other plant grouping by the expression of at least one of the said characteristics and
- considered as a unit with regard to its suitability for being propagated unchanged;"
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This clarifies that a variety must be recognisable by its characteristics, recognisably different from any other variety and remain unchanged through propagation.
Applications would have to be submitted to IPOS together with a completed technical questionnaire, a proposal for a denomination, representations/photographs/drawings of the variety if any, indication of any priority claim, and payment of fees. The technical questionnaire provides information for the testing authority (the Agri-Food & Veterinary Agency of Singapore - AVA) to conduct the examination of the variety.
IPOS will conduct an initial examination of the proposed denomination and novelty before the application is published together with the proposed denomination.
If there are no objections, the applicant may request that AVA conduct a technical examination (a test on the distinctiveness, uniformity and stability of the variety - the DUS test) or request for a corresponding report to be lodged. The corresponding report is a report of other tests conducted in authorised centres of UPOV countries and these may be accepted at the Registrar's discretion. AVA would apply a technical protocol under UPOV guidelines.
The decision of grant or rejection is then published upon completion of the test or acceptance of the corresponding report.
The list could be extended should there be a market and if the demand for a particular species warrants such protection.
If a grant of protection for a plant variety has been made in Singapore, protection is only extended to Singapore. If you are considering exploring the market in other territories of UPOV members, there will be a need to file applications in those territories. You should check if those territories have extended protection to the species you are interested in because not all territories of UPOV members have extended protection to every species.
As long as the variety fulfils the novelty criteria it may qualify for protection under the Plant Varieties Protection Act.
Generally this means that harvested or propagating material of the variety has not been sold or otherwise disposed of in Singapore for the purposes of exploitation for more than 1 year prior from the date of application.
In cases where the sale or disposal and exploitation is outside of Singapore, the plant variety fulfils the criteria of novelty if it has not been sold earlier than 6 years in the case of trees or vines, or earlier than 4 years in the case of other plant varieties.
The Act provides for opposition of the application.
When an application has been accepted, the application and the denomination would be published for 2 months in the PVP Journal. Third parties can oppose the application on the basis of novelty and/or the proposed denomination.
After grant, third parties may challenge the validity of the grant on various grounds including
- that the variety was not novel and distinct at the time of grant
- where the grant was given on the basis of prescribed information, the variety was not uniform or stable at the time of grant
- that the right was granted to a party not entitled to the grant, or
- that the registered denomination did not meet the required registration criteria.
No. A plant variety is considered new if it has not been sold or disposed of for more than 1 year prior from the date of application in Singapore or where the sale or disposal is outside of Singapore, more than 6 years in the case of trees or vines, or earlier than 4 years in the case of other plant varieties. Hence novelty, in the plant variety protection context, is defined in relation to commercialisation and not by the fact that the variety did not previously exist.
Under Singapore's current IP regime, a plant variety can be accorded both patent and the plant variety protection.
However, you should note that patentable inventions have to be novel - it must not have been published or be part of the prior art at the point of the patent application. This is different from the definition of novelty in the plant variety protection regime which defines novelty in relation to commercialisation.
Therefore an earlier published application for plant variety protection could destroy the novelty in respect of a later patent application, i.e. a novel plant variety might not be a patentable invention.
A number of factors may be considered in determining whether a mark is well known in Singapore such as:
- Degree of knowledge/recognition by the relevant sector of the public in Singapore
- Duration, extent and geographical area of the use or promotion of the mark
- Any registration/application for registration in any country
- Any successful enforcement of the mark in any country
- Any value associated with the mark
Generally, if a mark is well known to a relevant sector of the public in Singapore, it can be considered well known in Singapore. This "relevant sector" may include actual/potential customers of the goods/services, those involved in the distribution of goods/services or businesses dealing in the goods/services.
For protection against dilution and use which would take unfair advantage of a well known trade mark, the mark has to be well-known to the public at large. This is a higher standard and requires the mark to be not just well-known to the relevent consumers, distributers or dealers of the goods or services but also to the general public.
The scope of protection for well known marks was enhanced to give effect to the standards in the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by the Assembly of the Paris Union and WIPO, and hence the wording was adopted accordingly.
The meaning of the words "in an unfair manner" implies third-party use of a well known mark which is not contrary to honest commercial practice (e.g., possibly use of a well-known mark for review or news commentary) would not be considered as dilution. What could constitute use in an unfair manner includes use of a well known mark on similar products with obvious intent to ride on the reputation of the mark and without any other indication that it was used for other reasons.
Any provision referring to "licence" in the Act would also apply to exclusive licence.
These goods will be dealt with by the relevant agencies according to their practice.
The ex officio powers were provided primarily as border enforcement measures but we have also extended it to situations in which there is a greater need for urgency of action.
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Last updated on 28 Sep 2007 |
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