New optional track for IP litigation from 1 April 2022, Supreme Court of Judicature (Intellectual Property) Rules 2022 gazetted
25 March 2022
The Supreme Court of Judicature (Intellectual Property) Rules 2022 (“Rules”) were gazetted on 21 March 2022 and will come into operation on 1 April 2022. The Rules will implement an optional track for intellectual property (“IP”) litigation and consolidate the Rules of Court relating to IP rights in a single piece of legislation. In addition, the Rules will implement obligations to notify the Registrar of Designs, Geographical Indications, Patents and Trade Marks under the Intellectual Property Office of Singapore of certain IP proceedings in the Supreme Court, and harmonise related provisions across the different IP rights.
Some key features of the optional track for IP litigation, reflected as “Simplified Process for Certain Intellectual Property Claims” (“Simplified Process”) in the Rules, are as follows:
- A claim is suitable for the Simplified Process where:
- the dispute involves an IP right, including disputes over copyright, trade marks, patents, passing off claims and confidential information / trade secrets;
- the monetary relief claimed in the action does not or is not likely to exceed S$500,000, or all parties agree to the application of the Simplified Process; and
- the case is otherwise suitable for the Simplified Process, having regard to (among other things) whether a party can only afford to bring / defend the claim under the Simplified Process and whether the estimated length of trial is likely to exceed two days.
- The claimant can elect for the Simplified Process to apply to its claim if it abandons any claim for monetary relief in excess of S$500,000. The court may also make an order for the Simplified Process to apply (either on its own motion or on a party’s application) if the court considers the claim suitable for the Simplified Process.
- For claims under the Simplified Process, the total costs recoverable are subject to an overall cap of S$50,000 for the trial of the claim, and an overall cap of S$25,000 for any bifurcated assessment as to the amount of monetary relief.
The introduction of the Simplified Process provides parties with a more affordable and expedited route to enforce their IP rights in Singapore, and lends greater predictability in terms of costs exposure in IP litigation.
Background
In 2015, the Ministry of Law (“MinLaw”) appointed a committee to review the IP dispute resolution system (“IPDR Committee”) in Singapore to enhance its accessibility, particularly for individuals and SMEs. One key recommendation from the review is to establish an optional track for IP litigation, which contains several features aimed at facilitating quicker and more cost-effective dispute resolution.
Our Partner and Head of Intellectual Property Practice Dr Stanley Lai, SC was a member of the IPDR Committee.
In October 2018, MinLaw conducted a public consultation on reforms to enhance access to the court system for IP disputes, including the implementation details of the optional track for IP litigation. For more about the public consultation, please read our article titled “MinLaw consults on proposed reforms to IP dispute resolution system”.
On 23 February 2022, MinLaw announced that the new optional track for IP litigation was expected to take effect on 1 April 2022 and made available a draft version of the new Rules to give stakeholders sufficient time to be familiar with, and prepare for, the new subsidiary legislation. This development was covered in our article titled “New Supreme Court of Judicature (Intellectual Property) Rules 2022 implementing optional track for IP litigation expected to be in force from 1 April 2022”.