PATENTS (AMENDMENT) BILL

Order for Second Reading read.

The Parliamentary Secretary to the Minister for Law (Assoc. Prof. Ho Peng Kee): Mr Speaker, Sir, I beg to move, "That the Bill be now read a Second time."

Sir, the main purpose of these amendments to the Patents Act 1994 is to bring the Act into conformity with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

When the House enacted the Patents Act 1994 last year, some representators in Select Committee mentioned that a few provisions in the Act were not consistent with TRIPS. At the third reading of the Patents Bill in October 1994, the Minister for Law informed the House that as TRIPS provisions impacted not just on Patents legislation but other areas as well, Government would undertake a comprehensive review of our various Intellectual Property Rights laws to bring them in line with our obligations under TRIPS.

Subsequently, an Inter-Ministry Committee comprising representatives from the relevant Ministries and agencies involved with TRIPS was formed to review our intellectual property rights legislation.

As part of this review, the Committee considered the Patents legislation in the light of recent developments in other jurisdictions with particular regard to the following:

(1) Whether the compulsory licensing provisions, especially in the area of food, medicine and medical devices were too broad;

(2) Whether the provisions on government use were too broad; and

(3) Our policy to allow parallel imports.

The Committee has recommended certain amendments to the existing provisions of the Act. The proposed amendments seek to repeal sections 55 to 60 of the Act and re-enact section 55 in its place. The existing provisions relate to compulsory licensing, ie, the application, grounds, issue and review of any grant. The new section 55 clarifies the situations where a grant of a compulsory licence for a patented invention may be made. The purpose of a licence is to ensure that the patentee's interest in obtaining an appropriate return on his investment is balanced with the need to maintain safeguards against the misuse of a monopoly right provided by the patent.

The amendment provides that any person interested may apply to the court for the grant of a licence under the patent at any time after the expiration of 3 years from the date of grant or 4 years from the date of filing of the patent application, whichever is the later. The grounds for doing so are that a market for the patented invention is not being supplied or is not supplied on reasonable terms. An application for a compulsory licence is made to the Court instead of the Registrar of Trade Marks and Patents. This amendment would provide the rightholder with sufficient time to work the invention before a compulsory licence can be granted. This is also the legislative practice in Australia and New Zealand. These amendments are made to conform to Article 31 of TRIPS.

Sir, amendments have also been made to government use of patented inventions. These will be effected by repealing sections 61, 62 and 65 of the Act and enacting new sections 61, 65 and 65A, 65B and 65C. Consequential amendments are also made to sections 63 and 64. The new sections provide that any government department or authorised person may use any patented invention for the service of the government without the consent of the patentee in the following three circumstances --

(1) in situations of national emergency;

(2) other circumstances of extreme urgency; or

(3) in cases of public non-commercial use.

Apart from the above exceptions, government use is subject to the requirements of making reasonable efforts to obtain the consent of the patentee on reasonable commercial terms and failing to do so within a reasonable period of time. These amendments are made to conform to Article 31 of TRIPS.

Sir, other amendments in the Bill include the deletion of section 13(2) of the Act. Section 13(2) is a short and non-exhaustive listing of subjects which are considered non-patentable, eg, a discovery or mathematical model. The deletion of section 13(2) is intended to conform to Article 27(3) of TRIPS which does not provide for such a listing. Consequential amendments are also made to section 13(5) and section 30(3)(b).

Sir, this deletion will not limit our flexibility in rejecting any subject matter which is non-patentable under section 13(1). The existing provisions are sufficient to enable Singapore to keep up with advances and changes in science and technology.

Finally, section 67(1) on the powers of the court in infringement proceedings is amended to empower the court to forfeit and destroy any material and implement (ie, instrument), the predominant use of which has been in the creation of the infringing product. This amendment is made to conform to Article 46 of TRIPS.

The Government has decided that no amendments to the existing provisions on parallel imports are necessary as these provisions are not inconsistent with TRIPS.

In the process of drafting these amendments, we have taken into account the views of interested organisations such as the Singapore Association of Pharmaceutical Industries, who were consulted. They were generally in favour of the amendments.

Sir, I beg to move.

Question put, and agreed to.

Bill accordingly read a Second time and committed to a Committee of the whole House.

The House immediately resolved itself into a Committee on the Bill. - [Assoc. Prof. Ho Peng Kee].

Bill considered in Committee; reported without amendment; read a Third time and passed.