The Intellectual Property Office of Singapore (IPOS) has announced heightened checks to be introduced for declarations of novelty in design applications. This change in practice is in line with Singapore's continuing improvement to the quality of its intellectual property (IP) systems, and advances its 10-year master plan to become a Global IP Hub in Asia.
How are designs examined in Singapore?
Singapore design applications are examined only for compliance with formal requirements. Substantive registrability is considered only during revocation proceedings. However, there is a general discretionary power that enables the Registrar to refuse an application if 'on the face of the application, the design is not new or is not registrable for any other reason.'1
What is the change in practice at IPOS?
Every application is required to include a statement describing the features of the design that the applicant considers to be new. IPOS announced on 5 April 2019 that it would start checking these more carefully. It appears that IPOS is concerned, due to the lack of substantive examination, that there may currently be designs on the Register that are manifestly invalid for lack of novelty.
IPOS has recently further clarified that when the Registrar exercises the discretionary power to refuse an application, the objection will be substantiated by providing an example of one or more prior designs which, in the Registrar's opinion, suggest that:
- the subject matter of the application is the same as such prior design(s); or
- differs from such prior design(s) only in immaterial details or in features that are variants commonly used in the trade.
Since a full novelty search is explicitly proscribed by other provisions2 of the Registered Designs Act, we assume the formalities examiner will instead be allowed to cite examples of identical or near-identical designs that he or she is aware were already in the public domain before the priority date.
What will happen if an earlier design is cited?
If an objection based on an earlier design is issued, the applicant will be given an opportunity to explain the novelty or identify the difference(s) between their design and allegedly similar designs to overcome the objection. Additionally, there is a 12-month grace period that allows self-disclosures of the design to be disregarded.
1 Registered Designs Act, s 17(2).
2 Section 19(a) provides that the Registrar, in determining whether to accept an application for registration of a design, shall not be required to consider or have regard to the registrability of the design.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.