Public Consultation on Proposed Designs-Related Legislative Amendments
From 11 November 2016 to 11 December 2016, the Intellectual Property Office of Singapore ("IPOS") is seeking feedback from the public on the proposed designs-related legislative amendments. The Singapore Ministry of Law ("MinLaw") and the IPOS had conducted an earlier public consultation on the proposed changes to the registered designs regime. The conclusions of this review were set out in a review report which was published on 16 March earlier this year.
The current public consultation covers the proposed legislative amendments which are expected to be made to the Registered Designs Act (Cap. 266) ("RDA"), its subsidiary legislation and the Copyright and Registered Designs legislation on the interface between copyright and registered designs to implement the proposals published in the review report. The proposed legislative changes are:
(a) Broadening the scope of design protection via amendments to the definition of "design" and the definition of "article" and the inclusion of a new category of "non-physical products into the RDA, and amendment to the exclusions to the definition of "design". It is proposed that the new definition of "design" in the RDA will be expanded to include things which are "articles" as well as things which are "non-physical products" to accord design protection to virtual or projected designs. With the proposed amendments, "colours" can also be specified as one of the features of a design. The exclusions to the definition of "design", namely, the functional, must match, and must fit exclusions are to be amended to apply to both "articles" as well as "non-physical products" and to not be limited just to "features of shape and configuration".
(b) Treating the designer as owner of a design created under commission. It is proposed that Section 4 of the RDA be amended to have the designer of a commissioned design be treated as the owner of the design by default rather than the person who is commissioning the design.
(c) Broadening the grace period for disclosure of the design that have been made prior to filing of the design application. It is proposed that Section 8 of the RDA be amended to increase the length of the grace period for pre-filing disclosures from the current 6 months to 12 months and to remove the requirement that disclosures can only be made at select international exhibitions.
(d) Simplification of the "applied industrially" interface between copyright and registered designs, and clarifying the interface between copyright and registered designs given the new category of non-physical products. It is proposed that Registered Design Rules and Copyright Regulations be amended to have parallel provisions to take non-physical products into account, namely, to amend the "50 article" quantitative threshold to a "50 item" quantitative threshold and to deal with the issue of articles manufactured in lengths or pieces which do not fall within the definition of handmade articles. It is also being proposed that Section 7(3) of the RDA be amended to exclude from registration non-physical products of primarily literary or artistic work.
(e) Allow filing of multiple designs within a single application and division of design applications. Currently, only designs which relate to the same class and sub-class of articles as classified in accordance with the Third Schedule of the Registered Design Rules may be the subject of the same application for registration. It is proposed that the RDA be amended to allow for multiple designs in the same Locarno classification to be filed in one application.
(f) Reaffirm that dynamic designs can be registered. The flexibility in the new definition of "design" does not restrict the feature of shape, configuration, colours, pattern or ornament that are applied to only static features nor does it specify how these features are to be applied to an article or to a non-physical product. It is therefore possible for such features to be dynamic in nature.
The full details on the proposed amendments to the Registered Designs Act (Cap. 266), its subsidiary legislation and the Copyright and Registered Designs legislation on the interface between copyright and registered designs can be found in the Public Consultation Paper on the Proposed Amendments to the Designs-Related Legislation here.