12 January, 2018
In Today’s blog post we are taking a closer look at the IP protection in Singapore’s healthcare and medical technologies sector that has been offering promising business opportunities for the European SMEs for a few years now. You will learn about what types of IP are connected to the healthcare industry and how you can best protect these types of IP in Singapore.
Underpinned by both raising disposable income and progressively aging population, Singapore offers various promising business opportunities to European SMEs engaged in healthcare and medical technologies sector, whose topnotch technology is increasingly sought after. Furthermore, Singapore’s healthcare expenditure is expected to grow about 10% by 2020 and the government is committed to offering better healthcare to its citizens as it has dedicated a budget of 2.64 billion EUR to developing the health and biomedical sciences sector in Singapore over the next 5 years.[1]
European SMEs who are engaged in developing medical diagnostics tools, especially in the areas of immunochemistry, point-of-care devices, and molecular diagnostics, or developing medical solutions catered towards functional ageing and fighting obesity-related and chronic diseases, can expect to find plenty of business opportunities in Singapore, as these areas are currently developing fastest in the country. Similarly, SMEs that are engaged in digital dentistry, can expect to find promising business opportunities, as there is rising interest in digital dentistry in Singapore.[2] As Singapore aspires to become Asia’s digital healthcare hub, European SMEs can also use Singapore as a gateway to other South-East Asian countries, whose demand for healthcare technologies is similar to Singapore.
Intellectual Property Rights are very relevant in the healthcare and medical sector as companies operating in the field heavily rely on technology, software, and brand reputation. Not only a way to help protect innovations and new products from competitors, IP assets can also be an important source of cash-flow through licensing deals or selling IP, as well as a significant pull-factor when attracting investors. European SMEs should, however, not forget to pay attention to protecting their IP and implement a strategy tailored to their needs. Well-managed IP is often a key factor for business success and neglecting these rights could be costly. Thus, a comprehensive IPR strategy is needed, when entering Singapore’s market, says Valentina Salmoiraghi, IP Business Advisor.
Use Patents for your Inventions
Medical and healthcare technologies industry is highly competitive and heavily dependent on research and development, thus SMEs in this sector, wishing to market new inventions in Singapore, should consider applying for patents because patent owners acquire, for a fixed period, the exclusive right to prevent others from using, commercializing or importing the patented inventions. Furthermore, patent rights are territorial, meaning that patents granted in Europe are not protected or recognized in Singapore.
In Singapore, it is possible to register standard invention patents which require an invention to satisfy the criteria of showing ‘novelty’, having an ‘inventive step’ and ‘industrial applicability’. Invention patents are valid for 20 years after the filing date and it usually takes from 1 to 4 years to obtain a patent. Utility Models registrations are not available in Singapore.
As medical and healthcare technologies industry is a fast developing industry, SMEs could benefit from Singapore’s Provisional Applications system, under which companies are allowed to submit a provisional applications with ‘not furnished’ claims section and then use 12 months to finalize the application. It is especially useful as Singapore functions under the first-to-file system, meaning that the first enterprise to file the patent application will generally be granted the patent.
In Singapore, it is recommended that inventors keep proper records of their research in thread bound record books, and date each record entry. This will be useful as evidence of the development of the invention should any dispute arise in the future. This is especially important for the medical and healthcare technologies sector as this sector is highly competitive.
Moreover, Singapore is a member of the Paris Convention and of the Patent Cooperation Treaty (PCT), which means that European SMEs can benefit from a ‘right of priority’ (i.e. the same filing date the original application made in the home country can be used in Singapore), if the same filing is made in Singapore within 12 months from the first filing in Europe. When using the PCT Route, the same filing must be made in Singapore within 30 months from the first filed application.
Protect your product design with registered industrial designs
Registered designs are increasingly used in the medical and healthcare technologies industry to protect the appearance of products. For example, in the case of medical devices, besides making a product distinctive, a product design can also make the use of a product easier and more comfortable and thus design plays a critical role when consumers are deciding between similar products. At the same time, it should be kept in mind that industrial designs protect the aesthetic aspects of products, but not their functionalities.
In practice, it is not uncommon for infringing companies to register the designs of others, and to use their registration to sell infringing products or even threaten action against the originator or its suppliers. While this kind of ‘pirate’ registration could be invalidated, dealing with such an action may consume considerable cost and time. Owning a registered design can be effective simply by deterring competitors from copying company’s products or parts of products.
To qualify for registration, designs must also be ‘novel’ at the time of the application. Therefore, SMEs should ensure that their design is not disclosed to others unless an application has been filed. Designs must also be industrially applicable to qualify for registration.
SMEs should keep in mind that registered designs also function under a ‘first-to-file’ system. This means that if someone files an application on the design first, any similar or identical registered design which European SMEs wish to obtain will be in danger of being revoked for lack of ‘novelty’. It is therefore advisable to make applications as early as possible. It costs approximately 150 EUR to file an application and the registration is valid for 15 years from the date of filing, subject to the payment of renewal fees every 5 years.
It is advisable to conduct searches prior to registering any designs in Singapore to avoid possible infringement of an earlier conflicting design. This search can be done via the free online database ‘ASEAN Designview’.
Singapore is also member of the Hague System, the international industrial designs registration system administered by the World Intellectual Property Organization (WIPO). SMEs can use the Hague System to file a single international application with the convenience of filing design protection in several countries simultaneously through one single application.
Copyright can protect a wide range of assets, from your software to your technical manuals
Software programmes are expressly protected by copyright in Singapore. However, it should be noted that copyright protects the expression of ideas, and not the ideas per se. In other words, copyright does not protect the ideas underlying the software that is often the source of commercial value – this is typically protected by patent, but copyright may provide protection against any unauthorised running, copying, modifying or distribution of the software.
As a matter of IP protection strategy for EU SMEs, it is advisable to include prominent copyright notices on the software sold to the end users. An example of a copyright notice may include the symbol © or “Copyright” followed by the year, the company name and the phrase ‘All rights reserved’. Such a notice should be affixed to the wrapping, disks and first page of the screen when the software programme is launched on a computer.
Moreover, many medical and healthcare technologies like electronic diagnostic devices are often operated with software and technical manuals. Both computer programs and printed material such as technical manuals are protectable as works of copyright.
In Singapore, works that qualify for copyright protection under the Copyright Act do not need to be registered in the country as copyright protection is conferred automatically to the author as soon as the creative work is expressed or fixed in a material form from which it is then capable of being reproduced. Copyright is protected for 70 years from the year in which the author died. In case of a copyright, it is wise to clearly determine the ownership, as without evidence to the contrary, the person or entity whose name appears on the work will be deemed the copyright owner of the work. This is especially important when technical manuals are developed by contractors.
Singapore, as well as EU countries, is also member of the Berne Convention which enforces a requirement that countries recognize copyrights held by the citizens of all other parties to the convention.
Furthermore, as for a layered and solid IP strategy, European SMEs who are in the process of obtaining a registered design in Singapore for their medical devices but wish to simultaneously start marketing their products, may take advantage of copyright protection to fight against possible infringements of their design.
However, it should be noted that where the design has been registered and copyright subsists in the corresponding design, there will only be protection under the Singaporean Registered Design Act. This is to prevent dual protection under both registered design and copyright regime. It is very important for SMEs to note that where the design is registrable, all steps should be taken to register it and maintain the valid registration. Otherwise, copyright protection and registered design protection are not available, to protect SMEs products.
Your Brand has value, protect it with trade mark
In medical and healthcare technologies sector, brand name and company name have a high value, as healthcare facilities and other customers place trust in brand names and company names. It could thus be very damaging to one’s reputation if someone would use a similar or an identical brand to provide substandard technologies, as it could directly translate into loss of clients’ confidence in the original technology provider. A comprehensive IP strategy should, therefore, also take into account brand protection.
Like patents and registered designs, trade mark registration also functions under the ‘first-to-file’ rule in Singapore and early applications for trade marks, ideally before the release of products into the market, is recommended. A trade mark does not generally have to be in use before it can be applied for or registered, although all applications for registration should be on the basis that there is existing use or a clear intention to use the mark in the course of trade. In some cases, trade mark registry office may require proof of use whilst examining the trade mark application.
Moreover, for those SMEs intending to distribute their products into the Singapore market, a pre-existing registration of their trade mark in Singapore could also block them from importing and selling their products into the market, therefore it is important to make searches to determine the availability of the mark in question and proceed with registrations promptly.
Although unregistered trade marks may still be protected under the common law tort of ‘passing off’ in Singapore, registration is highly recommended for a more straightforward and comprehensive protection. The law of ‘passing off’ essentially prevents other traders from unfairly benefiting from the goodwill that has been built up by a trader. Three factors need to be proved before a claim of passing off can succeed:
- That the original user of the mark has established goodwill for the trade mark within Singapore;
- That the defendant’s conduct has lead the public to believe that his goods or services are goods or services of the plaintiff (this is usually referred to as the Misrepresentation element); and
- As a result of the misrepresentation, the original user has suffered damage.
Since legal remedies available in such a case are more limited than if the mark had been registered, it is advisable for the European SMEs to register their trade mark in Singapore. Trade marks are registered with the Intellectual Property Office of Singapore (IPOS) and it usually takes 6 to 9 months to register a trade mark in Singapore if no opposition is presented.
Helika Jurgenson, China IPR SME-Helpdesk
