INTELLECTUAL PROPERTY OFFICE OF SINGAPORE BILL

Order for Second Reading read.

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

Sir, in November last year, the Government announced plans to convert the Intellectual Property Office of Singapore into a statutory board with effect from 1st April this year. This Bill provides the legislative framework for the formation of this new statutory board.

The Government department, currently known as the Intellectual Property Office of Singapore (or IPOS for short) had its origins in 1937. In those days, its role was confined to the processing of applications for the registration of trade marks, renewals and restoration of trade mark registrations, adjudication of opposition and rectification proceedings for such registration, and re-registration of United Kingdom patents. Over the years, as the realm of intellectual property rights increasingly became more important, the Registry expanded its activities beyond its traditional regulatory functions to include policy development, law reform and promotional and facilitation activities. These initiatives include:

(1) creating indigenous regimes for the protection of intellectual property - such as the formation of an indigenous patent registration system in 1995 and the setting up of a new Designs Registry last year;

(2) introducing new regimes of Intellectual Property protection, for example, protection for layout-designs of integrated circuits, and geographical indications;

(3) advising on policy and legal issues relating to copyright protection, including amendments to Singapore's legislation to comply with the WTO Agreement on Trade Related Aspects of Intellectual Property Rights (or TRIPS), replacing the 1939 Trade Marks Act with a new Trade Marks Act in 1998 and the 1999 amendments to the Copyright Act to take into account recent developments in e-commerce and information technology;

(4) driving and coordinating public Intellectual Property education and awareness programmes; and

(5) collaborating with other agencies to develop software packages to improve access by businesses and users of Intellectual Property information.

Sir, with these new roles and responsibilities, the Registry of Trademarks and Patents was restructured as the Intellectual Property Office of Singapore in September 1999 and given oversight of the entire range of Intellectual Property laws. Now, one and a half years on, the conversion of IPOS into a statutory board is a logical step.

Sir, undoubtedly, Intellectual Property is a key resource in today's economy. It is also a critical factor in maintaining Singapore's competitiveness now and into the foreseeable future. A poignant illustration of this point is the steadily increasing number of patents being filed and granted in Singapore. In 1995, when the new Patents Act came into force, 2,410 patent applications were filed under the new Act and 1,750 patents were granted. Last year, 7,713 patent applications were filed and 5,086 patents were granted. In all, more than 20,000 patents were granted in Singapore between 1995 and the year 2000.

Sir, given the increasing significance of intellectual property rights, we must ensure that our intellectual property laws, policies and supporting framework continue to foster an environment which encourages innovation and creativity and effectively protects investments in innovation and intellectual labour. The conversion of IPOS into a statutory board will ensure that it is given the autonomy and resources to perform this task effectively, to match the efforts of other key intellectual property offices of the world, and the flexibility and nimbleness to ensure that our intellectual property infrastructure keeps pace with the rapidly changing conditions and with the speed at which innovation and creativity is moving.

Sir, IPOS will advise the Government on all areas of intellectual property policies, including copyright, integrated circuits and geographical indications, and carry out regulatory functions over intellectual property agents. Apart from carrying out its core functions, IPOS will also engage in promoting intellectual property and will embark on other support activities to support innovation, creativity and use of intellectual property.

Apart from educating and informing the public on intellectual property, IPOS, with its greater autonomy, can from time to time embark on the provision of other value-added services and products that may be required by intellectual property users. Such services and products can, for example, focus on the dissemination of technical information to facilitate research and development, emphasizing the importance of innovative products and services, and use of intellectual property as strategic and marketing tools to secure competitive advantage when entering markets.

Sir, Singapore has a highly regarded intellectual property regime which is one of the best in Asia. IPOS will establish and maintain an effective international network to ensure that Singapore continues to stay at the forefront of intellectual property developments.

Sir, let me now take the House through the main provisions of the Bill. Part II provides for the establishment, incorporation and constitution of IPOS as a statutory board. The new statutory board will consist of a Chairman, a Deputy Chairman and 8 to 20 other board members. Sir, in the selection of board members, we will draw on expertise from both the public and private sectors, and from the tertiary and scientific institutions as well as intellectual property practitioners.

Part III spells out the functions and powers of the new statutory board. The main functions are :

(a) to administer our intellectual property laws and the systems for the protection of intellectual property;

(b) to promote public awareness and effective use of intellectual property rights;

(c) to advise and make recommendations to the Government on matters related to intellectual property and to represent the Government internationally on matters relating to intellectual property; and

(d) to promote the development of the profession of intellectual property agents and intellectual property advisers in Singapore.

Part V of the Bill relates to financial matters. IPOS will be a self-funding statutory board and will fund its own services and activities. This would allow revenues obtained from intellectual property services and products carried out by IPOS to be channelled back to the benefit of the users of the system, with optimal use of resources that meets the users' needs and expectations.

Part VI of the Bill relates to transitional matters, such as the transfer of employees to the new statutory board on terms no less favourable than those the employees had enjoyed immediately prior to their transfer, and the transfer of assets and liabilities to the new statutory board.

Part VII of the Bill contains various miscellaneous provisions. IPOS officers will be vested with enforcement powers in order to allow them to enforce some departmental offences for the Acts under their administration. The offences are those under the Bill and the offences set out in the Third Schedule to the Bill, which are mainly regulatory offences under the Patents Act, Trade Marks Act and Registered Designs Act. IPOS officers will also be empowered to carry out prosecutions and the legal officers may appear in court for civil proceedings on behalf of IPOS or the Registrars.

Sir, the formation of IPOS as a new statutory board is another important step in establishing the infrastructure needed to ensure that Singapore is able to effectively develop intellectual property as a strategic resource to meet the challenges of the new economy.

Sir, I beg to move.

Question proposed.

Assoc. Prof. Chin Tet Yung (Sembawang): Mr Speaker, Sir, the Intellectual Property Office of Singapore Bill is the first to be read in this House in 2001. It is, in other words, the first Bill of the millennium, and fittingly so. It sets up one of the most important institutions that we must have in a knowledge-based economy, ie, an office to perform a number of important functions and duties related to intellectual property rights in Singapore.

Its functions and duties are many and varied. It has a regulatory function to administer the intellectual property regime in Singapore and register intellectual property advisers and patent agents. It has an educative function, to promote public awareness of IPRs, and provide training and scholarships for patent agents and other IP professionals. And it has an international function - to represent Government internationally on matters relating to IPRs and to provide advice and assistance to other countries as well.

Many of these tasks are difficult ones and my first comment is: is too much being expected from IPOS? Can it manage its many roles efficiently and fairly? It is a unique institution. I do not think that other countries have an institution taking on such wide and enormous responsibilities, at least not all under one roof. Would it be able to deliver on all its responsibilities? Not only that. It is neither a typical statutory body or a private company, but a public corporation able to invest its monies in such manner as it thinks fit, subject only to the Minister's approval. It has no duties, such as those imposed on private corporations registered under the Companies Act; it is not encumbered by the limitations of investments that are put on typical statutory bodies through the Trustees Investments Act; all in all, a very powerful animal, made more so perhaps by having protection from liability that goes beyond those provided for private companies. Is this new type of public corporation, armed with powers beyond the investment powers of statutory bodies and having less rigorous reporting responsibilities than private corporations, the sign of things to come? Who will ensure that the office would be acting prudently and wisely? I have referred to the powers of IPOS, which are as extensive as its duties are onerous.

Now I turn to one that can be particularly troublesome in its conception, in its scope and in its operation. This is the power contained in clause 7(1)(c), "to accredit or certify and regulate any person as an intellectual property agent or intellectual property adviser". Taken together with the definition of "intellectual property adviser", we find that the power given to IPOS may be extremely wide and could very well be unnecessary, and may even inhibit the development of the IT industry. An intellectual property adviser is defined as "Any person who, in the course of his profession or business, provides legal or other advice relating to any intellectual property". And the advice can extend to IPRs outside of Singapore.

Sir, in my view, this definition is far too wide. It is likely to be impossible for proper regulation or enforcement. It is also difficult to see what mischief this provision is aimed at. It is not difficult to see that the definition is really very wide. Many professionals in the IT field, for example, would be caught by it, not just lawyers practising IP law but, indeed, even a lawyer, who casually deals with a small IP issue as part of a bigger transaction, would be caught. A lawyer, who inserts an IP clause into a contract of employment, may similarly be caught. An employer, who tells his would-be employee that all IP rights would be assigned to him so long as the employee works for him, will be caught. A software engineer, who informs his team that any software developed by them would be the intellectual property of the firm, will be caught.

Sir, my point is that there is a myriad of situations where a person can be labelled an intellectual property adviser and who would therefore fall foul of the law if he were to provide any information or advice on intellectual property and he is not properly registered. Indeed, the information officers in IPOS themselves would be subject to the same regulations. Is this really the intention of the Bill?

I mention two especially problematic issues. First, such a wide provision means that all lawyers, who are all potentially IP advisers, would have to register again, in addition to being subject to regulation by the Law Society. Why? Is there some special concern, some interest to protect, that the Law Society, with its disciplinary powers, cannot take care of? Why require lawyers or, for that matter, engineers, accountants or doctors, who are all subject to their respective professional bodies, to a further registration process under IPOS? In fact, the intention to register such advisers may be detrimental to the IT business generally. It may also adversely affect foreign companies in the IT trade coming in, as their in-house advisers, be they legal advisers or engineers, would also have to be registered. And this may mean additional costs in setting up business and, more importantly, perhaps perpetuate an unhappy impression that Singapore is over-regulated. I do not think that this is a step in the right direction, especially when we are talking about creating a liberal creative environment for the IT industry to prosper. I accept that there is a need to register intellectual property agents who are defined differently in the Act. These are the agents who have to draft patent applications, trade marks or design applications, and for whom the responsibility of doing an accurate application is particularly important.

Sir, as I generally support the rest of the Bill, I would urge only that the part on regulating intellectual property advisers be removed. If this cannot be done at this stage, then I would urge the Minister to assure the House that the provision would not be put in force for the foreseeable future, at least until it is clearer why there is a need to register intellectual property advisers who are already regulated in their respective professions.

Under clause 8 of the Bill, the Minister can direct the Office as to the performance of its functions and powers. I would like to know whether the Minister would, in fact, direct IPOS that no such register for IP advisers be set up for the time being.

Mr Speaker, Sir, I remain fully supportive of the need to have IPOS as an integral part of the proper development of the economy in Singapore. IPOS will provide quality control in terms of the personnel involved in the IT industry, guide policy on the development of intellectual property rights in Singapore and beyond, and promote the image of Singapore as a place where intellectual property rights are protected and where creative people can prosper and reap the benefits of their creativity and hard work.

For these reasons, Sir, I support the Bill.

Assoc. Prof. Ho Peng Kee: Sir, let me thank GPC Chairman, Prof. Chin, for supporting the Bill. He has expressed some concerns which I will address one at a time.

Sir, first, let me clarify that IPOS is not in a unique situation. It is not a unique institution, because it has also similar counterparts elsewhere in other countries. For example, the UK Patents Office is responsible for the registration of patents, designs and trade marks, as well as for the development of IPR policy generally. Another example is Hong Kong. Hong Kong also has an IP office which has taken on the administration of the whole spectrum of IP rights and has also undertaken public awareness programmes. So we must also move as, in a sense, these are other centres which also want to create and develop a culture of IP. It is a competitive environment and Singapore must keep in step.

His next point is whether IPOS can handle the task. Sir, let me assure the GPC Chairman that IPOS is poised to take on its enhanced role. As I have mentioned in my speech, IPOS, over the last five years or so, has indeed been assuming more and more responsibilities. In a sense, it has been preparing itself for this new challenge. As I have said in my speech, for example, IPOS has taken on an active role in the development of new IPR policies and legislation. The new Trade Marks Act, an entirely new Act, is an example. The Copyright (Amendment) Act to deal with the advent of electronic commerce, the Geographical Indications Act, the Layout-Designs of Integrated Circuits Act, and the Registered Designs Act, all these are very clear examples. So it has been actively involved in helping the Ministry of Law to formulate policies and draft these new Acts.

IPOS has not just stayed within our shores, but it has also gone into joint ventures with other agencies at international, regional and national levels, to increase IPR awareness by organising workshops, seminars, exhibitions and training courses. Some of these agencies include WIPO, the World Intellectual Property Organisation, the Japan Patents Office, the European Patents Office, universities, National Science and Technology Board, Trade Development Board and PSB. IPOS, in addition, is one of the first few in the region to have joined the Madrid Protocol, which allows for the international registration of trade marks.

I have also mentioned some products and packages which IPOS has worked with industry to put together including computer searches and, indeed, even a new portal called the Surf IP, which offers a holistic, comprehensive and integrated search for information on IP. And I understand that this is the first portal of its kind in the world.

I want to thank Prof. Chin for pointing out that IPOS indeed has an enormous and difficult task ahead. This is precisely why IPOS needs to be given adequate resources and the flexibility to fulfil its new responsibilities. And this is precisely why we are converting IPOS into a statutory board to give it the flexibility to develop its resources and capabilities to meet these new challenges. So, indeed, IPOS would have to do more. I have outlined what it has done, and it has reached a certain stage. But Prof. Chin is absolutely right. In order for it to be able to carry out its functions effectively, it will do more. It will do more in terms of training its manpower, and gearing up its staff to meet new challenges ahead.

Let me just make one clarification. Prof. Chin says that IPOS is not a statutory board. It is a statutory board. If he were to look at previous Bills on statutory boards, the phrase "public corporation" found in the explanatory note is a standard phrase found in all such Bills. So it is a statutory board in the usual sense of the word.

The next point is about the investment powers. The clause that Prof. Chin has mentioned on investment powers in fact reflects the result of a recent review of statutory boards' investment powers. They should be given the freedom to maximise the investments of their own funds in order to respond effectively to changing investment markets and to allow them to invest in new forms of investment which are appropriate for its purpose. This clause is, in fact, a new standard clause adopted as a result of the review, and is not unique to IPOS. The same clause is found, in fact, in the other two statutory board Bills going for Second Reading today, ie, the Health Sciences Authority Bill and the Health Promotion Board Bill. But the point really is that having the flexibility of powers does not mean that it has full say without any safeguards. Safeguards are also important and, indeed, there are safeguards. For example, their investment power will be subject to control by the board members of the statutory board who come from a wide range of backgrounds. So these people would be culled from the private sector, public sector and academia who will decide on what investments to make. A further check would be that this investment power would be subject to the approval of the Minister. So, that is a key safeguard. Furthermore, there are the usual audit provisions, and IPOS has to submit an annual report to Parliament every year. As Members know, if necessary, and if Members so desire, further questions can also be asked in this House about IPOS, including its accounts and investments. This is something which private companies would not be subject to.

Let me now deal with Prof. Chin's main point. Prof. Chin has expressed concern about the wide powers of IPOS to regulate intellectual property advisers. Let me address his concern and put it in context. First, let me describe briefly the work that is being done now on the creation of a new patent agent profession. This will help put the issue in context. This move is needed to ensure that Singapore develops a sufficiently strong patent agent profession to provide support services to the industry in the area of intellectual property. This is in line with our vision of becoming a competitive and knowledge-based economy, capable of attracting innovators to create, and innovators and investors to register and trade their products and services with the assurance of a strong intellectual property infrastructure here.

The details of the proposal will be announced soon. But I can inform the House that, so far, 40 persons or so have already signed up for the NUS' IP Law Course. So it is a very keen activity. People want to come on-board and, in fact, the vast majority are non-lawyers, people with scientific background preparing themselves for qualification as patent agents under the new proposal. In formulating the proposals, IPOS consulted extensively with the Law Society of Singapore, the Singapore group of the Asian Patents Attorneys' Association, and the International Federation of Intellectual Property Attorneys. Apart from patent agents, let me say that there are no plans for IPOS to regulate any other intellectual property related professionals in the foreseeable future.

Sir, like all Acts of Parliament, this piece of legislation will be in our statute books for many years. We should therefore ensure that the Bill provides IPOS with the necessary mandate to promote the development of professions and to advise the Government on measures to be taken concerning these professions, not only to cater to present needs, but also to deal with future needs that cannot now be all foreseen. Why do I say this? I think this is especially important in an area as fast moving as intellectual property. These vast developments are now bringing us into largely uncharted waters whose tributaries may lead us to limitless and exciting discoveries in diverse areas such as cyber law, information technology law, bio-sciences, bio-technology and life sciences. Therefore, in crafting this law, we have taken a forward-looking and long-term approach to provide IPOS with the necessary mandate to promote the development of IP-related professions and to advise the Government accordingly as the state of these professions can affect the quality of our intellectual property infrastructure.

Prof. Chin may be right that the term "intellectual property adviser" is very wide, and is a term that is used to describe the full range of IP-related professions. The idea is to give IPOS the mandate to promote and develop these professions. I think that is the point, ie, not to be restrictive or to curtail, but to bring in the flexibility as and when the need may arise. We do not see that arising in the foreseeable future, to have a profession that will push the industry forward, like what we are doing for patent agents. There is certainly no intention in the immediate future to put in place a regulatory regime to indiscriminately cover all IP-related professions by one stroke of the pen. Any proposal to regulate any type of IP-related professionals will be tightly focused and carefully targeted at the relevant segment and would only be introduced for the good of the industry, not to its detriment. Like what I have described, the whole manner in which we have approached the formation of patent agents as a profession which involves not only lawyers - I think Prof. Chin's focus was on lawyers - but indeed when a new profession is created, other people would also benefit because they would have more work to do, they would be able to be involved in a new capacity in the development of IP in Singapore.

Let me assure Members of this House and the legal profession that should the need ever arise to consider regulating other types of intellectual property professionals, the Law Society and all other relevant parties would be consulted in the formation of any new regulatory mechanism, just as what we have done in formulating our proposals in the patent agent profession. I am sure that at that time, the concerns that have been raised by Prof. Chin in this House would be addressed. Sir, my officials have, in fact, also met with representatives of the Law Society to explain the rationale for these provisions and to assuage their concerns.

Assoc. Prof. Chin Tet Yung: Sir, I am heartened that the Minister of State has given the answers about not registering intellectual property advisers straightaway. But I would just like to ask for a clarification. Would the Minister of State not confirm that neither the UK Patent Office nor the Hong Kong equivalent actually has the width of powers that are now being conferred on IPOS? For example, there has never been any suggestion in either Hong Kong or the UK that there should be any attempt to control intellectual property advisers as distinct from patent agents.

Assoc. Prof. Ho Peng Kee: Sir, that could very well be so. But I think in the Singapore context, because we want to move ahead, we are in this hub, we are in this region where we have recognised IP as an important industry for development, we want to create an IPOS which should be given the powers, to push the frontiers. But, as I have assured Members of this House and the GPC Chairman, groundwork has been done and indeed I am sure the Ministry of Law and the new Director would ensure that the powers would be effectively carried out.

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.