What you need to know about patents and trademarks in Singaporean pharma. Prepared in association with Drew & Napier LLC, this is an extract from The Pharma Legal Handbook: Singapore, available to purchase here for USD 99.
58. What are the basic requirements to obtain patent and trademark protection?
The relevant applications must be filed with the Intellectual Property Office of Singapore (IPOS) in order to obtain protection for patents in Singapore.
It is not compulsory to register a trade mark in Singapore. An individual, firm or company, who owns a trade mark and uses it in connection with his goods or services, acquires common law rights in that mark by virtue of the use and reputation of the mark. For instance, the proprietor can rely on the tort of passing off at common law to protect his mark against unauthorised use. Trade mark registration can be obtained by filing the relevant applications with the IPOS. Registration of a trade mark under the Trade Marks Act grants the owner a statutory monopoly of the trade mark in Singapore.
59. What agencies or bodies regulate patents and trademarks?
The Intellectual Property Office of Singapore (IPOS) administers the patents and trade marks regime in Singapore.
60. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?
Generally, a patentable invention is one that is new (i.e., the invention does not form part of the state of the art), involves an inventive step (i.e., the invention is not obvious to a person skilled in the art), and is capable of industrial application (i.e., the invention can be made or used in any kind of industry, including agriculture).
However, certain types of inventions cannot be patented. For instance: (i) inventions which, if published or exploited, would generally be expected to encourage offensive, immoral or anti-social behaviour; and (ii) methods of treatment of the human or animal body by surgery, therapy or diagnosis practised on the human or animal body, on the basis that they are not regarded as capable of industrial application.
In order to register a trade mark, it: (i) has to be a sign that is capable of graphical representation; (ii) must be distinctive; (iii) must not conflict with an earlier trade mark; and (iv) must be used in the course of trade, or there must be a bona fide intention that the mark should be so used.
However, certain signs cannot be registered as trademarks. For instance: (i) signs which are contrary to public policy or to morality; and (ii) signs which are of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).
61. How can patents and trademarks be revoked?
Section 80 of the Patents Act (Chapter 221) sets out an exhaustive list of grounds on which the Registrar of Patents may, on the application of any person, order a patent to be revoked:
- the invention is not patentable;
- the patent was granted to a person who was not entitled to be granted that patent;
- the patent specification does not disclose the invention clearly and completely for it to be performed by a person skilled in the art;
- the matter disclosed in the patent specification extends beyond that disclosed in the patent application;
- an amendment or correction has been made to the patent specification or application, and such amendment or correction should not have been allowed;
- the patent was obtained fraudulently, on any misrepresentation, or on any non-disclosure or inaccurate disclosure of prescribed material information; or
- the patent is one of two or more patents for the same invention which have the same priority date, and filed by the same party or the successor in title to that party.
Pursuant to section 22 of the Trade Marks Act, the Registrar of Patents or the Singapore High Court may, on the application of any person, order the registration of a trade mark to be revoked on any of the following grounds:
- the mark has not been put to genuine use in the course of trade in Singapore within five years from the date of completion of the registration procedure, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
- such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;
- the mark has become the common name in the trade for the product or service for which it is registered, as a result of the proprietor’s acts or inactivity; or
- the mark is liable to mislead the public, in particular as to the nature, quality or geographical origin of those goods or services, as a result of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered.
62. Are foreign patents and trademarks recognized and under what circumstances?
A person intending to register a patent in Singapore who has a corresponding application filed earlier in a Paris Convention country or a World Trade Organisation member country (other than Singapore) may claim priority over that patent from the first-filed application, if the Singapore application is filed within 12 months from the date of the first filing. There are limited circumstances under which an applicant may be able to apply to restore a declaration of priority of an earlier relevant application even though they had failed to file a subsequent patent application within 12 months from the date of the earlier application, e.g. where the failure to file within the 12-month period was unintentional, or occurred in spite of due care required by the circumstances having been taken.
A person intending to register a trade mark in Singapore who has a corresponding application filed earlier in a Paris Convention country or a World Trade Organisation member country (other than Singapore) may claim priority from the first-filed application, if the Singapore application is filed within 6 months from the date of the first filing. When a priority is claimed, the filing date in Singapore dates back to the date of the first filing.
63. Are there any non-patent/trademark barriers to competition to protect medicines or devices?
Where an applicant has provided to the HSA information relating to the safety or efficacy of a therapeutic product in support of an application for product registration, and the HSA has registered that therapeutic product, the HSA may not, for 5 years after the date of that earlier registration, register a similar therapeutic product on the application of another person on the basis of the earlier registration, unless the registrant of the earlier registration has so consented.
In respect of innovative therapeutic product applications, there is additional protection for confidential supporting information, subject to certain exceptions. An innovative therapeutic product application is an application to register a therapeutic product that refers to a substance that is an ingredient in the manufacture or preparation of the therapeutic product to which the application relates, and that has not, before that application is received by the HSA, been referred to as an ingredient in the manufacture or preparation of any other therapeutic product in any previous application.
There is no equivalent protection in respect of medical devices.
64. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?
See Question 60 above.
65. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?
It is not mandatory to record a trade mark or patent license with the IPOS, or for the terms of the license agreement to be approved or accepted by the IPOS.
There are, however, benefits to registering transactions, instruments or events affecting the rights in respect of patents or registered trademarks, such as licence agreements and assignment agreements, upon their execution. Where a dispute relating to such rights arises, the registration would serve as prima facie evidence of the parties’ rights. Further, the entry of a transaction, instrument or event in the IPOS’s register(s) affects the right of the proprietor or licensee to claim certain remedies for infringement.
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