Singapore to follow HK in confirming arbitrability of IP disputes

On 11 March 2019, Singapore’s Ministry of Law issued a consultation paper on a draft Bill which will, among others, clarify the arbitrability of intellectual property disputes in Singapore through amendment of its two Arbitration Acts.

The move follows in the footsteps of Hong Kong, which implemented similar measures, effective from 01 January 2018, through amendments to its own Arbitration Ordinance. The draft Singapore Bill largely mirrors, and is closely modelled after, the changes to the Hong Kong Arbitration Ordinance.

More specifically, the key elements of the proposed legislative changes in Singapore, so far as they relate to arbitration, are as follows:

• Clarification that IP disputes are arbitrable, whether as a main or ancillary issue in the dispute. Notably, the draft Bill provides a non-exhaustive list for the scope of “intellectual property right” and “IPR dispute”, thus offering flexibility to encompass different kinds of IP rights in various jurisdictions, and to cater for new kinds of IP rights and disputes which may arise in future.
• Confirmation that it is not contrary to public policy in Singapore to enforce an arbitral award relating to a dispute on IP rights.
• Clarification that the effect that arbitration awards will only be binding on the parties to the arbitration dispute (in personam), and not against the whole world or third-party licensees.
• Provision for the parties to have the flexibility to determine the remedies or relief that may be awarded by the arbitral tribunal, with two alternative wordings proposed in relation to changes to the International Arbitration Act.

We expect the draft Singapore Bill will pass through the consultation process without significant changes. This is a welcome development in Singapore: the enactment of the Bill will provide greater certainty to global businesses which are often involved in IP-related disputes and enhance the attractiveness of Singapore as an arbitration seat for such disputes.

To put this development into context, IP-related disputes have long been targeted by the local arbitration institutions in Hong Kong and Singapore, as demonstrated by the fact that both the HKIAC and SIAC have dedicated panels of arbitrators for IP disputes to provide greater comfort to arbitration users in relation to the arbitration process. This latest move in Singapore and the earlier amendments to the arbitration law in Hong Kong further facilitate the use of arbitration in IP disputes in the regions.

For further information, you can view the Ministry of Law’s consultation paper here.