Pharmaceutical IP and competition law in Singapore: overview

A Q&A guide to pharmaceutical IP and competition law in Singapore.

The Q&A gives a high level overview of key issues including patents, trade marks, competition law, patent licensing, generic entry, abuse of dominance and parallel imports.

For information on pharmaceutical pricing and state funding, manufacturing, marketing, clinical trials, advertising, labelling, and product recall and liability, visit Medicinal product regulation and product liability in Singapore: overview.

The Q&A is part of the global guide to Life Sciences law. For a full list of jurisdictional Q&As visit www.practicallaw.com/lifesciences-guide.

Contents

Patents

1. What are the legal conditions to obtain a patent and which legislation applies? Which products, substances and processes can be protected by patents and what types cannot be patent protected?

Conditions and legislation

The patents regime in Singapore, including but not limited to the registration, grant, revocation and infringement of patents, is governed by the Patents Act (Chapter 221) and its subsidiary legislation, including the Patents Rules.

To obtain a patent for an invention, the invention must (section 13, Patents Act):

  • Be new.

  • Involve an inventive step.

  • Be capable of industrial application.

An invention is considered new when it does not form part of the state of the art (section 14(1), Patents Act). It involves an inventive step when it is not obvious to a person skilled in the art (section 15, Patents Act). It is capable of industrial application if it can be made or used in any kind of industry (section 16(1), Patents Act).

Scope of protection

Generally, patent protection lasts for 20 years from the date of the filing of the patent (section 36(1), Patents Act), subject to payment of renewal fees annually. There are certain limited circumstances prescribed under section 36A of the Patents Act, where a patent term may be extended.

Since patent protection is territorial in nature, if a patent is filed in Singapore only, protection is limited to Singapore.

Certain types of inventions are not patentable in Singapore. For example, a method of treatment of the human or animal body by surgery, therapy or of diagnosis practised on the human or animal body is not patentable, as it is not considered to be capable of industrial application (section 16(2), Patents Act). An invention, the publication or exploitation of which would be generally expected to encourage offensive, immoral or anti-social behaviour, is also non-patentable (section 13(3), Patents Act).

 
2. How is a patent obtained?

Application and guidance

An application for a patent must be made to the Registry of Patents at the Intellectual Property Office of Singapore (IPOS). The IPOS website (www.ipos.gov.sg) provides guidance on the application procedure, prescribed forms and fees.

Process and timing

The Patents Act was recently amended to implement a shift from a self-assessment system to a positive grant system, where only patent applications which have fully positive examination results (that is, they fully meet patentability criteria of novelty, inventiveness and industrial application) can be granted. These amendments came into effect on 14 February 2014.

Under this new regime, certain filing checks and a preliminary examination (where the application is checked for compliance with all formal requirements) are first conducted on a patent application when it is filed (section 28, Patents Act). If the preliminary examination is successful, the Registrar then sends a notification to the patent applicant (section 28(11), Patents Act).

The patent applicant is then required to file a request in the prescribed form for a search and examination report within 36 months from the filing date or priority date, whichever is earlier (section 29, Patents Act read with rule 43, Patents Rules).

The patent application thereby progresses to the search and examination process. After the search and examination report is issued, the Patent Registry will either issue a notice of eligibility to proceed to the grant of a patent or a notice of intention to refuse the application for a patent, based on the objections (or lack of them) disclosed in the examination report (section 29A, Patents Act):

  • In the former case, if the applicant wishes to proceed with obtaining a grant for the patent, the applicant can file a request for grant of the patent within two months from the date of issue of the notice (section 30, Patents Act read with rule 47, Patents Rules). The Registrar will then grant the patent by issuing to the patent proprietor a certificate of grant and publishing a notice of grant in the journal (section 35, Patents Act).

  • In the latter case, the applicant can file a request for a review of the examination report within two months from the date of issue of the notice (section 29B, Patents Act read with rule 46A, Patents Rules).

 
3. How long does patent protection typically last? Can monopoly rights be extended by other means?

Duration and renewal

Patent protection typically lasts for 20 years beginning from the date of filing of the patent application, subject to the payment of annual renewal fees (section 36, Patents Act). These must be paid from the end of the fourth year from the date of filing, and continue every year thereafter until the patent expires (Rule 51, Patents Rules).

Extending protection

The patent proprietor can apply for the Registrar of Patents to extend the patent term on any of the following grounds (section 36A, Patents Act):

  • There was an unreasonable delay by the Registrar of Patents in granting the patent.

  • The patent was granted on the basis of any prescribed documents relating to a corresponding application, and there was an unreasonable delay in the issue of the corresponding patent.

  • The subject of the patent includes an active ingredient of a pharmaceutical product, and there was an unreasonable curtailment of the opportunity to exploit the patent because of the need to obtain marketing approval for the first pharmaceutical product using that substance as an active ingredient, and the patent term had not been previously extended on this ground.

 
4. How can a patent be revoked?

The Registrar of Patents can order a patent to be revoked on application by any person on any of the following grounds: (section 80, Patents Act):

  • The invention is not patentable.

  • The patent was granted to a person who was not entitled to it.

  • The patent specification does not disclose the invention clearly and completely enough to be performed by a person skilled in the art.

  • The matter disclosed in the specification extends beyond that disclosed in the patent application.

  • An amendment or correction has been made to the patent specification or application, and the amendment should not have been allowed.

  • The patent was obtained fraudulently, on any misrepresentation, or on any non-disclosure or inaccurate disclosure of prescribed material information.

  • The patent is one of multiple patents for the same invention which have the same priority date, filed by the same party or the successor in title to that party.

 
5. How is a patent infringed? How is a claim for patent infringement made and what remedies are available?

Conditions for infringement

A patent is infringed when a person does any of the following acts in Singapore in relation to the invention, without the proprietor's consent (section 66(1), Patents Act):

  • Where an invention is a product, when a person makes, disposes of, offers to dispose of, uses or imports the product or keeps it for disposal or otherwise.

  • Where an invention is a process, where a person uses the process or offers it for use in Singapore when he knows, or it is obvious to a reasonable person in the circumstances, that such use without the proprietor's consent would infringe the patent.

  • Where an invention is a process, where a person disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process, or keeps any such product whether for disposal or otherwise.

There are certain defences to infringement (section 66(2), Patents Act). The more relevant examples are as follows, when an act:

  • Is done privately and for non-commercial purposes.

  • Is done for experimental purposes relating to the subject-matter of the invention.

  • Consists of the extemporaneous preparation of a medicine for an individual in accordance with a prescription by a registered medical or dental practitioner, or consists of dealing with a medicine so prepared.

  • Is done in relation to the subject-matter of the patent to support an application for marketing approval for a pharmaceutical product, provided anything used to support the application is not made, used or sold in Singapore, or exported outside Singapore.

  • Consists of the import, disposal or offer to dispose of a patented pharmaceutical product for use by or on a specific patient in Singapore, if certain conditions are met.

Claim and remedies

A patent proprietor can bring civil proceedings for infringement in the Singapore High Court in respect of any act alleged to infringe its patent. Various remedies are available, such as (section 67, Patents Act):

  • An injunction (including interim injunction).

  • A court order for the infringer to deliver up or destroy infringing products.

  • Damages or an account of profits (damages and account of profits are mutually-exclusive remedies; the court will not award both for the same act of infringement (section 67(2), Patents Act)).

  • A declaration that the patent is valid and was infringed by the infringing party.

 
6. Are there non-patent barriers to competition to protect medicinal products?

If an applicant has provided information relating to the safety and efficacy of a medicinal product to the HSA in support of a product licence application, and the product licence is granted, the HSA cannot, for five years, grant a product licence to another person on the basis of the grant of the earlier licence for the same or a similar medicinal product, unless the holder of the earlier licence has consented (section 19D, Medicines Act).

There is additional protection for confidential supporting information provided in an application for an innovative medicinal product to the HSA (section 19A, Medicines Act). An innovative medicinal product application refers to a substance that is an ingredient in the manufacture or preparation of the medicinal product to which the application relates, which has not been referred to in this way in any previous application. Some exceptions to this protection are set out in section 19B of the Medicines Act.

 

Trade marks

7. What are the legal conditions to obtain a trade mark and which legislation applies? What cannot be registered as a trade mark and can a medicinal brand be registered as a trade mark?

Conditions and legislation

The registration, cancellation, revocation, invalidation and infringement of trade marks in Singapore are governed by the Trade Marks Act (Chapter 332) and its subsidiary legislation, including the Trade Marks Rules.

For a trade mark to be registered under the Trade Marks Act, the mark must be (section 2(1), Trade Marks Act):

  • A sign (as defined in section 2(1), Trade Marks Act).

  • Capable of being represented graphically.

  • Distinctive (that is, capable of distinguishing goods or services dealt with or provided in the course of trade).

The owner of unregistered marks can rely on common law causes of action such as the tort of passing off to protect his mark against unauthorised use. Alternatively, if the mark is well-known within the meaning of section 55(3) of the Trade Marks Act, the owner of the mark is entitled to restrain by injunction the unauthorised use of the mark in Singapore, even if the mark has not been registered in Singapore.

Scope of protection

A trade mark will be registered for a period of ten years from the date of registration. At the request of the proprietor, the mark may be renewed for further periods of ten years (section 18, Trade Marks Act).

Since trade mark protection is territorial in nature, if a trade mark is registered in Singapore only, protection is limited to Singapore.

Medicinal brands can generally be registered as trade marks, provided they meet the general legal requirements of registrability.

Certain signs cannot be registered as a trade mark (sections 7 and 8, Trade Marks Act). For example, signs that:

  • Do not satisfy the legal criteria (see above, Conditions and legislation) from the nature of the goods themselves.

  • Are contrary to public policy or morality.

 
8. How is a trade mark registered?

Application and guidance

An application to register a trade mark is made to the Registry of Trade Marks at the IPOS. The IPOS website (www.ipos.gov.sg) provides guidance on the application procedure, prescribed forms and fees.

Trade mark registration is determined by the goods and/or services to which it relates. Singapore applies the International Classification of Goods and Services, which divides goods and services into 45 classes. An application for trade mark registration must therefore list the classes of goods or services in relation to which the applicant seeks to register the trade mark (section 5, Trade Marks Act).

Process and timing

The following process applies for trade mark registration:

  • The trade mark application is filed in the manner prescribed in section 5 of the Trade Marks Act, together with the prescribed fees. If the applicant has filed an earlier claim for the same mark in another Paris Convention country or a World Trade Organisation member country, and wishes to claim priority from that mark, the application in Singapore should be filed within six months from the date of first filing (sections 10 and 11, Trade Marks Act).

  • The IPOS checks the application for completeness and adherence to the minimum filing requirements, about 15 days after the filing of the application.

  • If the minimum filing requirements are met, the application undergoes examination to ensure that the application satisfies the requirements for registration (section 12, Trade Marks Act).

  • If the requirements for registration are not satisfied, the IPOS will issue an examination report providing its grounds for refusal. The applicant is given a deadline of four months (which may be extended on lodging the requisite form and upon payment of fees) to respond to the examination report.

  • If the examination is successful, the IPOS accepts and publishes the application (section 13(1), Trade Marks Act).

  • Any interested party can oppose the registration of the trade mark within two months of publication (section 13(2), Trade Marks Act read with rule 29(1), Trade Marks Rules).

  • If the mark is not opposed or if opposition proceedings are withdrawn or decided in favour of the applicant, the IPOS will register the trade mark and issue to the applicant a certificate of registration (section 15, Trade Marks Act).

  • Registration takes effect from the date of filing of the application (section 15(2), Trade Marks Act).

If the examination of the mark is successful and the registration of the mark is not opposed, the registration process is estimated to take about four to six months. If not, the entire registration process is estimated to take about six to 18 months.

 
9. How long does trade mark protection typically last?

Trade mark registration typically lasts for ten years from the date of registration (section 18(1) Trade Marks Act). This can be renewed for further periods of ten years at the proprietor's request, no later than six months after the date of expiry of the registration, on payment of the prescribed fees (section 19, Trade Marks Act).

 
10. How can a trade mark be revoked?

Any person can apply to the Registrar of Trade Marks or the Singapore High Court to revoke a trade mark (section 22(5), Trade Marks Act). If there are pending court proceedings concerning the trade mark, the application for revocation should be made to the court. The Registrar of Trade Marks can at any stage of the proceedings also refer an application to the court.

The registration of a trade mark can be revoked on any of the following grounds (section 22(1), Trade Marks Act):

  • The mark has not been put to genuine use in the course of trade in Singapore within five years after completion of the registration procedure, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use.

  • Such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use.

  • It has become the common name in the trade for the product or service for which it is registered, because of the proprietor's acts or inactivity.

  • In consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

If a trade mark is revoked, the rights of the proprietor are deemed to cease from the date of the application for revocation, or any earlier date on which the Registrar of Trade Marks or a court is satisfied that the grounds for revocation existed (section 22(7), Trade Marks Act).

The registration of a trade mark can also be declared invalid under section 23 of the Trade Marks Act on grounds that the mark was registered in breach of the grounds for refusal of registration in section 7 of the Trade Marks Act.

 
11. How is a trade mark infringed? How is a claim for trade mark infringement made and what remedies are available?

Conditions

A trade mark is infringed when a person, without the proprietor's consent, uses the trade mark in the course of trade (section 27, Trade Marks Act):

  • Where the sign is identical to the trade mark and used in relation to goods or services which are identical to those for which the trade mark is registered, a person infringes a registered trade mark.

  • Where the sign is identical to the trade mark and used in relation to goods or services which are similar to those for which it is registered; or where a sign is similar to the trade mark and used in relation to goods or services which are identical or similar to those for which it is registered, there must be a likelihood of confusion on the part of the public for infringement to occur..

There is additional protection of well-known trade marks, regardless of whether they have been registered in Singapore or whether the proprietor carries on business or has goodwill in Singapore (section 55, Trade Marks Act). Trade marks which are well-known to the public at large in Singapore can also be infringed if such use would cause dilution of the distinctive character of the trade mark, or take unfair advantage of the distinctive character of the mark (section 55(3)(b) and 55(4)(b), Trade Marks Act).

Claim and remedies

A trade mark proprietor can bring civil proceedings for trade mark infringement in the Singapore High Court. The proprietor can seek one or more of the following relief (section 31, Trade Marks Act):

  • An injunction (including interim injunction).

  • Damages.

  • Account of profits.

  • Statutory damages, where a counterfeit trade mark is used.

The remedies of damages, account of profits and statutory damages for use of a counterfeit trade mark, are mutually exclusive (section 31(4), Trade Marks Act).

 
12. Outline the regulatory powers and enforcement action against counterfeiting in the pharmaceutical sector.

A health product is counterfeit if it is presented in such a manner as to resemble or pass off as a registered health product when in fact it is not, or it is presented with any false information as to its manufacturer or origin (section 2(2)(b), Health Products Act).

The principal regulatory agency tackling the problem of counterfeiting in the pharmaceutical sector in Singapore is the HSA.

First, all pharmaceutical products must be granted a licence by the HSA before they are allowed to be marketed and sold in Singapore. This better enables the HSA to detect counterfeit, adulterated and/or illegal pharmaceutical products at the first instance. It is an offence under the Health Products Act to manufacture, import, or supply a counterfeit health product in Singapore.

In addition, the HSA continually monitors the safety, integrity and quality of pharmaceutical products, acting on its own independent surveillance reports as well as in response to complaints from the public.

If products are found to be counterfeit, the HSA has the power to prosecute offenders and seize the counterfeit products under various legislation, such as the Health Products Act and the Medicines Act.

For information on pharmaceutical pricing and state funding, manufacturing, marketing, clinical trials, advertising, labelling, and product recall and liability, see Medicinal product regulation and product liability in Singapore: overview ( www.practicallaw.com/1-525-9055) .

 

IP and competition law issues

13. Briefly outline the competition law framework in your jurisdiction and how it impacts on the pharmaceutical sector. In particular, the competition authorities and their regulatory powers, key legislation, whether pharmaceutical investigations are common, key recent activity and case law.

Competition law issues that arise in the pharmaceutical sector are subject to the provisions of Singapore's Competition Act (Chapter 50B). The Competition Commission of Singapore (CCS) is the authority responsible for enforcing the Competition Act. The Competition Act prohibits, among other things:

  • Agreements between undertakings, decisions by associations of undertakings or concerted practices which have as their object or effect the prevention, restriction or distortion of competition within Singapore (Section 34 Prohibition).

  • Undertakings from engaging in conduct which amounts to an abuse of a dominant position in any market in Singapore (Section 47 Prohibition).

  • Mergers that have resulted, or may result, in a substantial lessening of competition within any market in Singapore for any goods or services (Section 54 Prohibition).

The Section 34 Prohibition and the Section 47 Prohibition came into force on 1 January 2006 while the Section 54 Prohibition came into force on 1 July 2007.

If the CCS has reasonable grounds for suspecting that any of the above prohibitions have been breached, it can conduct an investigation into the matter. In the course of the investigation, the CCS has the power, among others, to require the production of relevant documents or information, to conduct interviews with individuals to obtain relevant information, to take copies or extracts of documents, and to enter any premises (with and without a warrant).

If an undertaking is found to have infringed the Competition Act intentionally or negligently, the CCS can impose a financial penalty of up to 10% of the undertaking's annual turnover in Singapore for each year of infringement for such period, up to a maximum of three years. It can also issue directions to modify behaviours, cease behaviours and/or require any other necessary activity to bring the infringement to an end. Once the CCS has issued an infringement decision and the appeal process has been exhausted, any other parties who suffered any loss or damage directly arising from an infringement of the Sections 34, 47 or 54 Prohibitions can bring a civil claim against the infringing undertaking to seek damages and compensation.

Agreements entered into after 23 February 1995 but before 1 December 2008 are also subject to the Patents Act (Chapter 221). The Patents Act contains competition provisions in respect of certain restrictive conditions that apply to certain types of agreements involving patented inventions. In particular, it voids anti-competitive/unreasonable tying conditions or terms of a contract that require the licensee of a patented invention or the acquirer of a patented product to acquire something else in addition to the patented product/patented invention, or prohibit the licensee/acquirer from procuring or using other products from any other person apart from the licensor (section 51, Patents Act).

To date, there have been no reported infringement decisions involving pharmaceutical companies in relation to the Section 34 Prohibition or the Section 47 Prohibition.

In 2009, the Singapore Medical Association (SMA) made a formal application for a decision to the CCS on whether the issue of a set of guidelines on fees (GOF) would infringe the Section 34 prohibition. The GOF recommended ranges of professional fees for an array of services (such as consultation services, professional services, operations and anaesthesia services) provided by doctors in private practice in Singapore. In 2010, the CCS formally advised the SMA that the GOF would infringe the Section 34 Prohibition, stating that "[i]n general, price recommendations by trade or professional associations are harmful to competition because they create focal points for prices to converge, restrict independent pricing decisions and signal to market players what their competitors are likely to charge".

In relation to merger control, the CCS has cleared five merger notifications involving pharmaceutical/medical companies. Specifically, the notifications are:

  • GSK Trading Services Limited's acquisition of distribution and marketing rights in Singapore from UCB Singapore Pte Ltd (2009).

  • Novartis AG's acquisition of shares in Alcon Inc (2010).

  • Fresenius Medical Care Beteiligungsgesellschaft mbH and Fresenius Medical Care AG & Co. KGaA's acquisition of Asia Renal Care, Limited (2010).

  • Proposed Acquisition by Johnson and Johnson of Synthes, Inc (2012).

  • Asia Renal Care (SEA) Pte Ltd's acquisition of shares in Orthe Group (2012).

In March 2015, the CCS announced that it was issuing a provisional decision to block Parkway Holdings Ltd's proposed acquisition of RadLink-Asia Pte Limited. According to the CCS, in respect of the supply of radiopharmaceuticals, post-merger, Parkway would become the only commercial supplier of radiopharmaceuticals in Singapore. In respect of the provision of radiology and imaging services, the CCS noted that post-merger, the merged entity would have a very substantial market share, the merger companies were each other's closest competitors, entry barriers are moderate to high and the bargaining power of customers is weak. The CCS also found that a substantial lessening of competition would likely arise from the vertical integration of the merger parties' operations, as the merged entity would be able to restrict competition in the market for radiology and imaging services by controlling the supply, prices and/or range of radiopharmaceuticals available to its downstream competitors. The CCS, therefore, provisionally concluded that the proposed acquisition would infringe the Section 54 prohibition. The merger has subsequently been abandoned.

 
14. Briefly outline the competition issues that can arise on the licensing of technology and patents in a pharmaceutical context

The CCS Guidelines on the Treatment of Intellectual Property Rights provide some guidance on competitive issues that can arise in relation to the licensing of technology and patents in a pharmaceutical context:

  • Grantbacks. A grantback arrangement involves the licensee agreeing to assign to the licensor all rights over any improvements that the licensee may have made to the licensed technology. Such grantback arrangement may have pro-competitive effects, for example, if it increases the licensor's incentive to license or promotes the dissemination of the licensees' improvements. However, anti-competitive concerns may also arise if the grantback arrangement has the effect of significantly reducing the licensee's incentive to conduct research and development.

  • Technology pools. Technology pools are arrangements involving at least two parties who get together to create a pool of technology which they cross-license as a package to each other and other third parties. Such arrangements are generally pro-competitive if the technologies involved in the pool are essential and complementary to each other. However, if the pool is largely made up of technologies that are solely or predominantly substitutable with each other, the pooling of the technologies may constitute an anti-competitive agreement in breach of the Section 34 Prohibition. Further, in assessing if anti-competitive effects arise, CCS would also consider the risk of foreclosing alternative technologies that are not part of the pool.

  • Refusal to supply a licence. While an intellectual property right owner generally has the right to decide who to license its technology to, in certain circumstances, a refusal to license by a dominant licensor may give rise to anti-competitive effects in breach of the Section 47 Prohibition, for instance, if the dominant licensor refuses to license access to technology that constitutes an essential facility. A facility will be viewed as essential only if there are no potential substitutes (through duplication or otherwise), and if the facility is indispensable to the exercise of the activity in question.

  • Tying. If the dominant licensor, as a condition of granting a licence, requires licensees to buy additional products unrelated to the technology being licensed, this may result in anti-competitive effects in breach of the Section 47 Prohibition. However, it is open to the dominant licensor to objectively justify his conduct by showing, for example, that the purchase of the additional products are necessary for the satisfactory exploitation of the licensed technology.

 
15. Are there competition issues associated with the generic entry of pharmaceuticals in your jurisdiction?

To date, there have been no reported CCS decisions relating to competition issues associated with the generic entry of pharmaceuticals into Singapore. However, the CCS has recognised the potential anti-competitive effects of "pay-for-delay" arrangements, and has conducted public seminars, including a seminar together with IPOS, discussing the concerns that may arise when a patent holding company enters into settlement agreements, or otherwise pays generic drug manufacturing companies to delay the market entry of these generic drugs.

 
16. Have abuse of dominance issues arisen in the pharmaceutical sector in your jurisdiction?

To date, there have been no reported CCS decisions relating to an abuse of dominance in the pharmaceutical sector.

 
17. Have parallel imports of pharmaceuticals raised IP and competition law issues in your jurisdiction?

To date, there have been no reported CCS decisions relating to the parallel import of pharmaceuticals into Singapore.

 
18. Does a patent or trade mark licence and payment of royalties under it to a foreign licensor have to be approved or accepted by a government or regulatory body? How is such a licence made enforceable?

There are no express provisions requiring patent or trade mark licence agreements and payment of royalties under them to a foreign licensor to be approved or accepted by IPOS.

However, it is advisable for any transaction affecting the rights in a patent or registered trade mark (including a licence and assignment agreement) to be registered as soon as possible after its execution. This is for two reasons:

  • First, an entry of a transaction, instrument or event on the register is prima facie evidence of the same if there is a dispute as to who owns the rights to the patent or trade mark (section 101, Trade Marks Act; section 45, Patents Act):

    • in the case of patents, registration allows the person who had acquired patent rights under the registered transaction to be entitled as against any other person who claims to have acquired a right by virtue of an earlier transaction which is incompatible with the right granted under the later registered transaction, provided that at the time of the later transaction, the earlier transaction was not registered, and the person claiming under the later transaction did not know of the earlier transaction (section 43, Patents Act); and

    • in the case of trade marks, a similar rule is present in relation to certain transactions (for example, assignment of a registered trade mark), but this rule does not apply to a grant of a licence (sections 39(3) and 39(5), Trade Marks Act).

  • Second, an entry of a transaction, instrument or event in the register affects the right of the proprietor or licensee to claim certain remedies for infringement:

    • in the case of patents, a patent proprietor or licensee will not be awarded damages or an account of profits in respect of a patent infringement action occurring before a registrable transaction is registered, unless the transaction was registered within six months of its occurrence; or the court or the IPOS Registrar is satisfied that it was not practicable to register the transaction before the end of the six-month requirement, and it was registered as soon as practicable thereafter (section 75, Patents Act); and

    • in the case of trade marks, there is also a similar restriction to claim damages, account of profits or statutory damages for infringement occurring before the registration of certain transactions (for example, an assignment), but this restriction does not apply to a grant of a licence (sections 39(4) and 39(5), Trade Marks Act).

For information on pharmaceutical pricing and state funding, manufacturing, marketing, clinical trials, advertising, labelling, and product recall and liability, visit Medicinal product regulation and product liability in Singapore: overview ( www.practicallaw.com/1-525-9055) .

 

Contributor profiles

Tony Yeo, Director

Drew & Napier LLC

T +65 6531 2512
F +65 6535 4906
E tony.yeo@drewnapier.com
W www.drewnapier.com

Professional qualifications. LLB (Hons), National University of Singapore; Admitted to the Singapore Bar 1992

Areas of practice. Administrative and public law; commercial litigation; healthcare and life sciences; intellectual property.

Recent transactions

  • Successfully representing a client in a suit in the Singapore High Court and appeal before the Singapore Court of Appeal concerning disputes over defamation and shareholdings in an Indonesian listed company.
  • Acting as lead counsel representing a Singapore statutory board in a suit involving unauthorised use of its well-known trade mark.
  • Acting as lead counsel in a patent infringement action involving an invention relating to drugs for breast cancer treatments. Representing the patent proprietor, Aventis Pharma S.A., and Sanofi-Aventis Singapore Pte Ltd, subsidiaries of the Sanofi-Aventis Group.
  • Acting as lead counsel for Novartis AG and its subsidiary Novartis (Singapore) Pte Ltd in a patent infringement action over a pharmaceutical invention for gastrointestinal stromal tumour treatment.

Languages. English

Professional associations/memberships

  • President, International Association for the Protection of Intellectual Property, Singapore Group.
  • Honorary legal counsel, ORBA (Orchard Road Business Association).
  • Honorary legal counsel, Singapore Advertisers Association (in May 2012).
  • Examinations Committee at the Intellectual Property Office of Singapore.
  • Asian Patent Attorneys Association.
  • International Trademark Association.
  • Law Society's Inquiry Panel and Disciplinary Tribunal.

Publications

  • Singapore chapter of Global Pharmacovigilance Laws & Regulations: The Essential Reference, published by the Food & Drug Law Institute.
  • Legislating medical devices in Singapore, in Financier Worldwide: Biotechnology & Life Sciences e-Book 2010.

Lim Chong Kin, Director

Drew & Napier LLC

T +65 6531 4110
F +65 6535 4864
E chongkin.lim@drewnapier.com
W www.drewnapier.com

Professional qualifications. LLB (Hons), National University of Singapore 1995;

Admitted to the Singapore Bar 1996; LLM, National University of Singapore 1997, Admitted to the Roll of Solicitors of the Supreme Court of England and Wales.

Areas of practice. Competition/antitrust and regulatory law; telecommunications, media and technology law; corporate commercial law

Recent transactions

  • Assisting Pacnet in its joint notification with Telstra to IDA in respect of the acquisition of Pacnet by Telstra.
  • Assisted Airbus and Singapore International Airlines in obtaining a merger clearance decision from the Competition Commission of Singapore (CCS) in respect of their joint venture to establish a flight training facility in Singapore.
  • Lead a team appointed by CCS as part of a consortium to assist the CCS with its review of the Block Exemption Order for Liner Shipping Agreements in Singapore.
  • Represented a large international MNC in the financial services sector in respect of an ongoing cartel investigation by the CCS.
  • Represented a large international bearing manufacturer and distributor in respect of a cartel investigation by the CCS.
  • Successfully assisted Visa in obtaining competition law clearance from the CCS for Visa's Multilateral Interchange Fee system.
  • Successfully represented and advised All Nippon Airways, Continental and United Airlines in their notification for decision to CCS in relation to their joint venture agreement.
  • Successfully filed and obtained merger approval from the CCS for Seagate's proposed acquisition of Samsung's hard disk drive business.

Languages. English

Professional associations/memberships

  • Member of the Law Society of Singapore.
  • Member of the Singapore Academy of Law.
  • Member of the Law Society of England and Wales.
  • Member of the Pacific Telecommunications Council.
  • Associate member of the American Bar Association.

Publications. Including:

  • Bull, Lim and Whish, Competition Law and Policy in Singapore (Academy Publishing, 2009).
  • Hwang and Yeo, Law Relating to Specific Contracts in Singapore, (Thomson Reuters, Sweet & Maxwell, 2008), Chapter 5.
  • All Things Not Being Equal, Asian MENA Counsel Vol 9 Issue 7 2011.
  • Singapore Chapter of the American Bar Association International Antitrust Law.
  • Committee Year-in-Review 2009 and 2010.
  • Counting on Competition, Asian Counsel Vol 7 Issue 9 November 2009 – In Antitrust we trust?
  • Lim and Ng, Your Country Guide to ASEAN Competition Law (Drew & Napier LLC, 1st edition 2008; 2nd edition 2010; 3rd edition 2012) .
  • Singapore Chapter on Merger Control 2011, The European Lawyer Reference Series - Jurisdictional Comparisons (The European Lawyer) .
  • Merger Notifications in Singapore: Information Requirements, International Antitrust Committee: The Newsletter, Summer 2013.
  • Lim and Ng, The International Encyclopaedia of Laws, Competition Law - Singapore (Kluwer Law International, 2013).

Benjamin Gaw, Director

Drew & Napier LLC

T +65 6531 2393
F +65 6535 4906
E benjamin.gaw@drewnapier.com
W www.drewnapier.com

Professional qualifications. LLB (Hons), National University of Singapore (2002);

Admitted to the Singapore Bar 2003; Specialist Diploma in Molecular Biotechnology, Ngee Ann Polytechnic 2007; Admitted to the Roll of Solicitors of the Supreme Court of England and Wales 2009

Areas of practice. Administrative and public law; banking and finance; corporate restructuring; corporate/M&A; employment; healthcare and life sciences; information technology; intellectual property.

Recent transactions

  • Advised a healthcare institution on medical laws and regulations compliance.
  • Advised a pharmaceutical company on various matters of medical confidentiality and data protection.
  • Acted for a liquefied natural gas terminal operator in its procurement of software systems and hardware for all of its business operations.
  • Advised the Singapore subsidiaries of a German speciality chemicals company in its worldwide amalgamation process, arising from its acquisition of an international catalysts manufacturer.
  • Advised and assisted a NYSE-listed asset management related company, in its acquisition of a global relocation and real estate brokerage, and worldwide reorganisation exercise.

Languages. English

Professional associations/memberships

  • Singapore Academy of Law's Committee on Legal Education and Studies.
  • Law Society of Singapore.
  • Singapore Academy of Law.

Publications

  • Singapore chapter of Global Pharmacovigilance Laws & Regulations: The Essential Reference, published by the Food & Drug Law Institute.
  • Legislating medical devices in Singapore, in Financier Worldwide: Biotechnology & Life Sciences e-Book 2010.
  • Employment Contracts – Safeguard Your Intellectual Property Rights, Singapore Biotech Guide 2007/2008.
  • Legislating the Fruits of Biotechnology: Suggestions for Regulating Bio-engineered Food, Singapore Law Review.

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