ARBITRATIONS RELATING TO INTELLECTUAL PROPERTY RIGHTS
Interpretation of this Part
26A.—(1) In this Part, unless the context otherwise requires, “intellectual property right” or “IPR” means —
(a)
a patent;
(b)
a trade mark;
(c)
a geographical indication;
(d)
a registered design;
(e)
a copyright;
(f)
a right in a protected layout-design of an integrated circuit;
(g)
a grant of protection in respect of a plant variety;
(h)
a right in confidential information, trade secret or know‑how;
(i)
a right to protect goodwill by way of passing off or similar action against unfair competition; or
(j)
any other intellectual property right of whatever nature.
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(2) In this Part, a reference to an IPR is a reference to such an IPR whether or not the IPR is registered, or subsists, in Singapore.
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(3) In this Part, a reference to an IPR includes an application for the registration of an IPR if the IPR is protectable by registration.
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(4) In this Part, “IPR dispute” includes —
(a)
a dispute over the enforceability, infringement, subsistence, validity, ownership, scope, duration or any other aspect of an IPR;
(b)
a dispute over a transaction in respect of an IPR; and
(c)
a dispute over any compensation payable for an IPR.
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(5) In this section, “registration”, in relation to an IPR, includes the grant of the IPR.
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IPR disputes may be arbitrated
26B.—(1) The subject matter of an IPR dispute is capable of settlement by arbitration as between the parties to the IPR dispute.
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(2) Subsection (1) applies whether the IPR dispute is the main issue or an incidental issue in the arbitration.
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(3) An IPR dispute is not incapable of settlement by arbitration only because a law of Singapore or elsewhere —
(a)
gives jurisdiction to decide the IPR dispute to a specified entity; and
(b)
does not mention possible settlement of the IPR dispute by arbitration.
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(4) In subsection (3), “specified entity” means any of the following entities under the law of Singapore or elsewhere:
(a)
a court;
(b)
a tribunal;
(c)
a person holding an administrative or executive office;
(d)
any other entity.
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Effect of award involving IPR
26C.—(1) This section applies if an award deciding an IPR dispute is made in arbitral proceedings.
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(2) The fact that a person is a third-party licensee or third‑party holder of a security interest in respect of the IPR does not of itself make the person a person claiming through or under a party to the arbitral proceedings for the purposes of section 19B(1).
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(3) However, subsection (2) does not affect any right or liability between a third‑party licensee or third‑party holder of a security interest and a party to the arbitral proceedings whether —
(a)
arising in contract; or
(b)
arising by operation of law.
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(4) In this section —
“third-party holder of a security interest”, in relation to an IPR in dispute in arbitral proceedings, means a person who —
(a)
is a holder of a security interest in respect of the IPR granted by a party to the arbitral proceedings; but
(b)
is not a party to the arbitral proceedings;
“third-party licensee”, in relation to an IPR in dispute in arbitral proceedings, means a person who —
(a)
is a licensee (whether or not an exclusive licensee) of the IPR under a licence granted by a party to the arbitral proceedings; but
(b)
is not a party to the arbitral proceedings.
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Recourse against award involving IPR
26D.—(1) For the purposes of Article 34(2)(b)(i) of the Model Law, the subject matter of a dispute is not incapable of settlement by arbitration under the law of Singapore only because the subject matter relates to an IPR dispute.
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(2) For the purposes of Article 34(2)(b)(ii) of the Model Law, an award is not in conflict with the public policy of Singapore only because the subject matter in respect of which the award is made relates to an IPR dispute.
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Recognition and enforcement of award involving IPR
26E.—(1) For the purposes of section 31(4)(a), the subject matter of the difference between the parties to a foreign award is not incapable of settlement by arbitration under the law of Singapore only because the subject matter relates to an IPR dispute.
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(2) For the purposes of section 31(4)(b), it is not contrary to the public policy of Singapore to enforce an award only because the award is in respect of a subject matter that relates to an IPR dispute.
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Judgments entered in terms of award involving IPR
26F.—(1) This section applies if —
(a)
an award (whether made in or outside Singapore) deciding an IPR dispute is made in arbitral proceedings; and
(b)
a judgment in terms of the award is entered under section 19 or 29.
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(2) Sections 19B(1) and 29(2) apply in relation to the judgment as if —
(a)
the reference in section 19B(1) to an award made by an arbitral tribunal pursuant to an arbitration agreement were a reference to the judgment; and
(b)
the reference in section 29(2) to a foreign award were a reference to the judgment.
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(3) In this section, “award” includes a declaratory award.
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Validity of patent may be put in issue in arbitral proceedings
26G. Section 82(2) of the Patents Act 1994 does not prevent a party from putting the validity of a patent in issue in arbitral proceedings.
