Intellectual Property of Singapore (IPOS) in its constant endeavor to grow the IP regime and provide an effective legal framework to the local design industries of Singapore has taken a significant step forward as the Registered Designs (Amendment) Act 2017 (“Act”) and its corresponding subsidiary legislation amendments comes into force from October 30, 2017 12. Key features of the amendment are as follows:
Expanding the scope of Registered Design:
This amendment allows the broadening of scope of the designs that can be registered. In simpler words, an applicant can protect more types of features for their designs. This includes the design features related to a non-physical product and also includes the feature of colors and handicrafts. A new category which has been introduced into the ‘Registered Designs Act’ is a Non-Physical product which can be a virtual of projected design. A “non-physical product” is anything which
- doesn’t have a physical shape or feel;
- is a projection of a design on a surface or into a medium (including air); and
- has an intrinsic utility.
A virtual keyboard can be an example of a non-physical product which does not have a physical shape/form and is projected by light onto a surface, and which has an intrinsic utility function to type characters in the same way as a physical computer.
Changing the default ownership position of commissioned designs:
Prior to the amendment, when the designers were commissioned to create a design, the commissioning party was considered to be the owner of the rights in the design, not the creator/ designer. According to the amendment, Section 4 of the Registered Designs Act gives the ownership rights to the designer/ creator by default unless the parties have contracted otherwise.
Extension of Grace Period:
Inclusion of a new section 8A in the Act allows to broaden the circumstances where the designs are disclosed by the designers and to lengthen the grace period for designers to get their designs registered in cases where the designs were disclosed to the public prior to date of filing the registration application. The grace period has been extended from 6 months to 12 months. In other words, the designer can still file a design application for his/her design within 12 months of any disclosure made by him/her for the same design. This new Section 8A shall apply in cases where the disclosure was made on or after the date of commencement of the legislative changes (i.e. 30 October 2017).
Allowing multiple designs to be filed in a single application:
The amendment allows the applicants to file a single application for multiple designs. This must be done at the time of filing the application for registration of their designs on ‘Form D3’. A maximum of 50 designs can be filed within a single application.
Further for providing convenience in filing applications, the amendment includes a new Section 16 A which states that for correcting any non-compliance or to comply with either or both of the formal requirements of Section 11 (2) (c) and 11 (4) (a), subject to the permission of the Registrar, a new application can be filed by the applicant for registration of the design. An additional benefit is granted to the applicant i.e. the new application filed by the applicant shall be treated as filed on the date of filing of the previous application for registration of design.
A per the released Circular No. 6/2017 3, the corresponding subsidiary legislation amendments to the Registered Designs (Amendment) Act 2017 can be found in the Registered Designs (Amendment No. 2) Rules 2017, the Registered Designs (International Registration) (Amendment) Rules 2017 and the Copyright (Amendment) Regulations 2017.
The above amendments as already mentioned allows greater ownership rights for the local designers and to get protection for more type of features for their designs.
The updated legislative amendments in relation to the changes above will be made available on the IPOS website (https://www.ipos.gov.sg/resources/ip-legislation) 4 after it is published in the Government Gazette.