PATENTS (AMENDMENT) BILL

Order for Second Reading read. 1.05 pm

The Minister for Law (Prof. S. Jayakumar): Mr Speaker, Sir, I beg to move, "That the Bill be now read a Second time."

Sir, this Bill seeks to modify provisions in the Patents Act concerning the regulation of patent agents and to introduce a number of minor amendments to streamline patent administration and strengthen the patent legal framework.

First, I would touch on the modifications of patent agents provisions.

Sir, clause 14 seeks to amend sections 104 and 105 of the Patents Act to improve the provisions governing the regulation of patent agents.

Let me explain, Sir, that when the Patents Act was brought into force in 1995, we delayed the entry into force of sections 104 and 105, in so far as they relate to patent agents. The reason for that was that we wanted to allow time for fledgling patent regime to mature before starting our own patent agent profession. More than five years have now passed since Singapore first had our own indigenous patent regime. I think the time is now right to start our own patent agent profession.

However, sections 104 and 105 will have to be modified before bringing them into operation. We seek to modify those provisions after the corresponding provisions in the UK patents law. They place no restrictions on the categories of persons who can provide patent agent services. They merely prohibit persons who are not registered patent agents from describing themselves as patent agents.

That situation, Sir, is peculiar to the United Kingdom. All the other major jurisdictions we have studied, for example, the United States, Australia, France, Japan, Germany, and the European Patent Office have a more rigorous regulatory regime. They all require a person to attain certain minimum qualifications before he is allowed to practise as a patent agent. We believe that Singapore should adopt a more rigorous system of regulation in order to promote our drive to be a regional dynamic intellectual property hub. We should be mindful that a single high-profile mistake, made by an unqualified patent agent whom we have allowed to practise here, could easily damage Singapore's reputation as an IPR hub.

The revised sections 104 and 105 therefore provide that only registered patent agents and lawyers are allowed to provide patent agent services. This model was adopted in Australia. Individuals will only be allowed to be registered as patent agents if they meet the qualifying criteria set by the Intellectual Property Office of Singapore or benefit from the transitional provisions, all of which will be provided in the Rules. With this amendment, only registered patent agents will be allowed to hold themselves out as patent agents.

The qualifying criteria to be set by the Intellectual Property Office of Singapore will be similar to those in the United States, United Kingdom, Australia and Japan. First of all, applicants will have to attend a 16-week foundation course in intellectual property law conducted by the National University of Singapore Law Faculty and obtain a Graduate Certificate in IP Law.

Secondly, they will have to undergo a one-year internship programme under the supervision of a prescribed registered patent agent. The Asian Patent Attorneys Association, International Federation of Intellectual Property Attorneys (FICPI) and the Law Society of Singapore will assist in the securing of both overseas and local placements. The National Science and Technology Board will assist in co-funding the course fees and payment of an allowance to the applicants during internship (if the applicant is co-sponsored by a corporate body), through its Manpower Upgrading for Science and Technology (MUST) programme.

Thirdly, the applicants will have to pass a qualifying examination set by the Intellectual Property Office of Singapore. Provisions would be put in place to enable flexibility in meeting certain registration requirements such as waivers of certain components, courses, as are adopted in other countries.

As regards transitional arrangements for IP lawyers currently practising as patent agents, some lawyers today are already using the term "patent agent" to describe themselves. As such, provisions will be made in the rules to allow lawyers who currently have an active patent practice to register themselves as patent agents, without having to go through the qualifying examinations. This approach has been worked out in consultation with the Law Society of Singapore and the Asian Patent Attorneys Association (Singapore Chapter). But we have to be satisfied that they indeed have had an active patent practice.

As regards rights of audience, clause 13(a) of the Bill will amend section 94(1) to provide that only registered patent agents and lawyers may represent parties in proceedings before the Registrar of Patents.

Clause 13(c) will amend section 94(2) to provide that only lawyers may represent parties in an appeal from the Registrar to the High Court. The current section 94(2) would have allowed registered patent agents to appear in Court. But then this again is a provision adopted from the UK law. In the United Kingdom, this provision posed no difficulties as they have a specialised Patents Court. Our system is more in line with that of Australia, where there are no specialised patents courts, and thus no special rights of audience in the courts for patent agents. Let me stress that no accrued rights are affected by this change as there are as yet no registered patent agents in Singapore.

Let me touch on other minor amendments, Sir.

First, as regards the removal of dependency on a patent being in force in the United Kingdom, section 36(4) provides for rules that require the submissions of renewals of patents registered under the repealed Registration of United Kingdom Patents Act, to be accompanied by a statutory declaration that the patent remains in force or has not been revoked in the United Kingdom. We are removing this restriction as the renewal of a Singapore patent, in our view, should not be dependent on whether it is in force in the United Kingdom, and a proprietor should be free to maintain his Singapore patent. This is provided in clause 8(b).

Next, section 116(3) is a transitional provision that provides for the continued validity of patents previously registered under the repealed Registration of United Kingdom Patents Act, as long as the patent is not revoked in the United Kingdom. We are similarly removing this condition.

Finally, Sir, the Bill also includes amendments that will modify certain procedural requirements relating to applications and grants of patents, facilitate the implementation of an electronic patent register and the maintenance of information in an electronic environment, and dispense with the need to gazette new entrants to the Paris Convention and WTO as convention countries. It also extends the protection of visiting aircraft and ships from patent infringement proceedings to ships and aircraft from WTO countries, and will remove doubts concerning the Minister's rule-making powers.

Sir, I beg to move.

Question proposed.

Assoc. Prof. Chin Tet Yung (Sembawang): Mr Speaker, Sir, I rise to speak in support of this Bill, which is a further step in building the legal infrastructure necessary to sustain a knowledge-based economy.

This House debated the setting up of the Intellectual Property Office (IPOS) only in February. Now we are looking at another dimension of intellectual property, namely, patents. In particular, this Bill seeks to regulate further the patenting system in Singapore, which means the provision for a register of patent agents in Singapore. This is an important legal institution in an economy that places a premium on creativity and enterprise.

Sir, I would like to seek clarifications on a couple of matters relating to the registration of patent agents and their practice. First, if I read clause 14 correctly, no one, individual, partner or director, can refer to himself, the partnership or the company respectively as a patent agent or patent attorney unless the individual, partner or director is a registered patent agent. Can the Minister confirm that this is the position?

If so, would this mean that no lawyer or law firm can actually say that they are in the practice of patent law? Clause 14 contains a new section 105(4) which describes what the practice of a patent agent is. This seems to describe also what certain law firms currently are doing in their intellectual property departments. Can they continue to do so if they do not have a partner or director who is registered as a patent agent? This interpretation could cause immense problems for the well-established law firms, which usually employ foreign patent agents, to draft the technical parts of a patent application. Once the new provisions come into force, will these firms still be able to call themselves as being in the practice of patent law? If not, would this not be regarded as a drawback to developing a strong legal practice in patent law and indeed in intellectual property law?

On the other hand, I am also concerned that by employing just one registered patent agent as a partner or director, a law firm can then immediately advertise itself as being in patent law practice. I am sure that we do not want law firms who are not adequately equipped with intellectual property law expertise to elevate themselves into this lucrative but specialised practice of patent application. I agree with the Minister that a botched patent application can cause an inventor millions of dollars. Should we then not look very seriously at other criteria concerning this matter of who or what firm can be called properly patent law agents or patent law attorneys?

Secondly, I am also troubled by the fact that in February, when we debated the IPOS Bill, there was then a provision requiring intellectual property advisers to be registered. I raised the concern then that this might be over regulating and that the scope of that section was too wide. Here, I wonder whether we are also drawing the correct line in specifying that a firm with a registered patent agent as a partner can describe itself as being in the business of patent law but not otherwise. While I support the Bill in general, I hope that more attention would be paid to this issue. I also hope that some attempt be made to rationalise these provisions with the provision in the IPOS Act concerning intellectual property advisers. Otherwise we shall be requiring multiple registrations. For example, lawyers who want to be in patent law practice, they may have to register as intellectual property advisers, patent agents and, of course, advocates and solicitors. Is this really what we intend?

Sir, I hope the Minister would be prepared to look into the prospect of future amendments, if needed. And on that note, I support the Bill.

Prof. Jayakumar: Sir, I thank Prof. Chin for supporting the Bill. He has raised a few questions which I have to clarify.

Let me first explain the present situation and what the Bill seeks to do. Under the present situation, any lawyer and any law firm can advise on patent law and patent application process. Any lawyer and law firm, at the moment, can hold himself and the firm as a patent agent. What the amendment seeks to do is to restrict the instances of any lawyer or law firm holding themselves out as a registered patent agent. But we will not prevent a law firm or lawyer from continuing to be engaged in the practice of patent law. I will make that overall clarification first.

Now, I will turn to his specific question. First, he asked whether he has read clause 14 correctly, ie, no one, individual, partner or director, can refer to himself as a patent agent unless the individual is a registered patent agent or the firm has at least one partner or director as a registered patent agent. Indeed, that is so, and his reading of it is correct. But Prof. Chin is not correct when he goes on to extrapolate from this that this means that a law firm from now onwards will not be able to say that they are in the practice of patent law. This is incorrect, because lawyers and law firms can continue to be engaged in the practice of patent law. In fact, I would say that they will even be able to advertise the fact that they can advise on patent law. What they cannot do is to say that they are registered patent agents or firm of patent agents. Let me stress why this is important because we do not want the public to be confused and to be under the impression that partners in the firm have gone through this rigorous qualification process and have obtained the qualifications to become registered patent agents when they are not. This position that we have in this amending Bill has, in fact, been adopted from the model in Australia, and it has worked well there. I am told that it has not raised any problems concerning the legal profession there.

Prof. Chin, in a sense, in his comments, has expressed concern whether the provisions are too strict. And in the closing part of what he said expressed concern whether it would be too wide, that illustrates the problem which we have to attend to. In the present model, any lawyer can practise patent law. Any lawyer can hold himself out as a registered patent agent. Sections 104 and 105, which we are now seeking to amend, as they stand, would require a law firm or a company to have every one of the partners and every one of the directors to be a registered patent agent, which I think is too strict. So, what we are seeking to do is to say that at least one of the partners ought to be a registered patent agent. I think this is a reasonable balance because, in a law firm, you may have many other partners being conversant and competent in different areas. And, as I said, this practice has worked well in Australia and I think it ought to work well for our purposes.

Sir, Prof. Chin has expressed concern over the possibility of over regulation. I hope that, to some extent, I have allayed that concern because, partly, it stems from his interpretation of the provisions that it may prevent lawyers from engaging in the practice of patent law. But he also based his concern on the IPOS Bill when he said that there was a provision requiring intellectual property advisers to be registered. I think Prof. Chin might have misinterpreted the provisions in the IPOS Bill, because there is no provision which requires IP advisers to be registered. What he might be thinking about is the enabling provision in the IPOS Bill which at some time in the future, if and when the situation requires, would enable the statutory board to bring about a situation of registration. But there is, as such, no requirement now under the law for an IP adviser to be registered, and we explained in this House why the situations can arise where the enabling provision might have to be invoked. So his concern that there may be multiple registrations is, in fact, not the case.

Sir, I hope I have explained all the concerns of Prof. Chin and I am glad that he has noted that there can be serious consequences if persons who are not qualified to act as registered patent agents were to do so and in the course of doing so, commit a serious mistake.

Assoc. Prof. Chin Tet Yung: Sir, I thank the Minister for his clarifications. I would just like to confirm that even under the Bill, if passed and brought into force, a law firm can therefore still engage in the practice of patent law. But do I understand him to say that they could also advertise themselves as being in the practice of patent law, even if they do not have any partner registered as a patent agent?

Prof. Jayakumar: Sir, perhaps I should be a bit more circumspect in talking about law firms advertising, because that must be dealt with by the profession, as to the circumstances in which law firms can advertise and so on. But as far as this Bill is concerned, it does not prevent a lawyer or an advocate and solicitor from practising patent law. And perhaps if you look at the bottom of page 6 of the Bill, new section 105(1) says:

'An individual shall not carry on a business, practise or act as a patent agent unless he is a registered patent agent, or an advocate and solicitor, [this is the key point] .' Then you look at page 7, paragraph (4)(c) which says, "giving advice .. about the validity, or infringement, of patents." New section 105(1) deals with the situation of practising as a patent agent. New section 105(5) is a provision which deals with holding oneself out as a registered patent agent. It says: 'An individual shall not - (b) in the course of a business otherwise describe himself, hold himself out or permit himself to be described or held out as a "patent agent",' So it is an interplay of these different provisions that brought about the position that I have described in my answer to his question.

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. - [Prof. S. Jayakumar].

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