New Legislation on Court Procedures for Intellectual Property Disputes in Singapore

To realize Singapore’s aim of becoming Asia’s global IP hub, the government decided it was critical to increase access to the IP dispute resolution system in order to establish Singapore as a preferred venue for resolving disputes.

With this goal in mind, the Ministry of Law formed a committee in 2015 to evaluate Singapore’s IP Dispute Resolution Framework, and in 2018, it held a public consultation to debate suggested reforms aimed at improving access to our courts for IP issues. Following this, the new Supreme Court of Judicature (Intellectual Property) Rules 2022 (“new Rules”) is expected to come into force on 1 April 2022.

One of the review’s proposals was to establish a fast track method enabling parties to resolve disputes more quickly and cost-effectively, particularly for individuals and small businesses. The optional “fast track” for IP litigation will be implemented once the new Rules come into force, under “Simplified Process for Certain Intellectual Property Claims”. Cost caps, recoverable damages caps, early active case management, and trial length caps are just a few of the significant aspects. These features are designed for lower-value disputes and/or when parties want their case settled quickly.

Key features

Cap on value of claim: According to Section 4 of the proposed new Rules, claims are eligible for the fast track if the monetary remedy does not exceed $500,000 or all parties agree to proceed via the fast track. Alternatively, the claimant may also elect to go under the fast track under Section 5. The court will consider the following factors in Section 4(c) to assess whether the case is appropriate for the fast track: whether a party can only afford to bring or defend a claim under the fast track, the complexity of the issues, whether the estimated length of trial is likely to exceed two days.

Stage costs: The fast track includes stage expenses in Section 9 of the new Rules, where the maximum amount of party-and-party costs and disbursements recoverable for each stage of the action will be established and regulated. This is subject to a $50,000 total maximum. To encourage early resolution of disputes, stage expenses are front-loaded, with the proportion of costs recovered at each stage decreasing as the case advances. A schedule of the stage costs is provided in Section 9(9) of the new Rules.

Cap on length of trial: The trial will be limited to two hearing days if you choose the fast-track option. If the court determines that the trial cannot be finished in two days, as stipulated in Section 8(6), the court may order the matter to be withdrawn off the fast track.

Active management at case conference: Section 8 of the revised Rules gives the court discretion on critical issues in order for the case to go forward quickly. At a single case conference, the court will give directions on a variety of issues, including identifying and narrowing the main factual and legal issues in dispute, identifying the most similar prior art for patent disputes, evidence that may be given, number of affidavits and witnesses, timelines, date and duration of hearing, and time for each witness to be examined.

Streamlined procedural rules: The new rules combine the IP-related Rules of Court into a single piece of legislation. The procedural regulations under the Geographical Indications Act, Patents Act, Registered Designs Act, and Trade Marks Act are covered in Parts 3 to 6 of the new Rules. The application of the Rules of Court is subject to the new Rules’ requirements, which include the manner of bringing an action and the appellate process.

The revised guidelines also harmonize related provisions across other IP rights. The requirement to notify the Registrar of the Singapore Intellectual Property Office of certain IP actions in the Supreme Court is one example. Sections 30, 48, 62, 74 of the new Rules impose notification obligations on the party commencing proceedings, defendant that withdraws its defence or counterclaim, and party that files a notice of appeal.

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