IPOS Clarifies Registered Designs Practice, but where is the Legal Basis?

Date: 2020-01-21
Author: Desmond Tan

The Intellectual Property Office of Singapore (IPOS) has recently issued a follow-up circular providing some clarification to a previous circular that they issued pertaining to a more robust formalities assessment for registered design applications in Singapore. A careful review of the statement of novelty and the figures accompanying the applications is desirable when filing design applications in Singapore to avoid receiving a negative formalities report, and potentially, refusal of the application.

Background

On 29 November 2019, IPOS issued circular no 4/2019 which provides further details in relation to more robust checks that have been implemented since the issuance of an earlier circular dated 5 April 2019. Please refer to my commentary on the earlier circular.

The latest circular is brief but the following passage in the circular raises some concerns:

“To improve applicants’ understanding of the Registrar’s objection in these cases, the Registrar will include in every objection letter, an example of 1 or more designs which, in the Registrar’s opinion, suggest that the subject matter of the application is the same as such design(s) or differs from such design(s) only in immaterial details or in features that are variants commonly used in the trade.”

A reading of the aforementioned passage indicates that an objection letter will potentially be providing prior art, whereby in the past, applicants would only have to address formality issues. Such a situation should not be permissible under the Registered Designs Act (RDA).

What are the relevant legal provisions in the RDA?

The relevant provisions in the RDA are Sections 17(2) and 19.

Section 17(2) of the RDA states that:

The Registrar may refuse an application for registration of a design if, on the face of the application, the design is not new or is not registrable for any other reason.

Section 19 of the RDA states 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 —

(a)          the registrability of the design;

(b)          whether the applicant is entitled to any right of priority claimed in the application; or

(c)           whether the design is properly represented in the application.

The latest circular issued by IPOS refers specifically to Section 17(2) of the RDA, and the section appears to be a contradiction of Section 19, which states that the Registrar shall not be required to consider the registrability of the design when determining whether to accept an application for registration of a design. From a practitioner’s perspective, Section 17(2) was primarily used as a bar for formality issues and not substantive issues until IPOS changed their practice sometime in 2018, which was formalised in the April 2019 circular.

Furthermore, there are currently no provisions in the RDA relating to substantive examination of applications, so for the Registrar to rely on Section 17(2) to provide prior art based on “the face of the application” appears to be an inappropriate way to process applications at their end. Be that as it may, this has the effect of creating a higher bar to registration which applicants will now have to navigate with the assistance of their attorneys/agents to obtain commercially valuable design rights.  

What should applicants expect now?

It is clear that IPOS is now assessing design applications more strictly. As a result, greater care should be applied in relation to the consistency and the accuracy of the novelty statement and the figures submitted for each application. It is likely that greater scrutiny by IPOS will lead to a situation whereby applicants can no longer expect “rubber-stamping” of their design applications. Thus, it would appear that applicants will be better served by engaging an attorney/agent at the outset to minimise the possibility of having to seek assistance to rectify substantive issues raised by IPOS, as some of these may not be rectifiable even with some specialist knowledge for preparing and filing design applications.

In addition, it is likely that the more stringent approach adopted by IPOS is a pre-cursor to amendments in the RDA to include provisions pertaining to full blown substantive examination of applications, in line with the long term objective of IPOS to be the hub of quality IP filings in the South East Asian region.

Conclusion

IPOS’s increasingly robust formality assessment process for design applications represents a significant step in their ongoing initiative  to elevate the status of registered designs in Singapore, with a view to better defining their scope and enforceability, and improving the quality of the Register. Applicants will be best served by keeping track of these developments and engaging regularly with their attorneys/agents to assist them in preparing, filing and prosecuting design applications in this more challenging environment.

Desmond Tan heads up the Singapore office of FPA Patent Attorneys, a firm with attorneys who are recognised for their expertise in international design rights. Please feel free to contact him at desmond.tan@fpapatents.com.sg if you would like more information pertaining to the latest notification, or other recent or proposed changes in the Registered Designs legislation.