Exhaustion Of Intellectual Property Rights In Singapore

• Published date: 22 November 2021
• Subject Matter: Intellectual Property, Patent, Trademark
• Law Firm: Gowling WLG
• Author: Gowling WLG

In Singapore, the question of whether an intellectual property right (such as a registered trademark or a patent) can be enforced by way of an infringement action against the sale of genuine goods placed on the market in another country and then parallel imported into Singapore, is governed by an area of law called 'exhaustion'.

Singapore's exhaustion defences are provided for in the legislation governing patent and trademark law. Both are international in nature. For patents, the general international exhaustion defence is subject to certain limitations in respect of pharmaceuticals. Where the limitations apply, Singapore's approach to exhaustion of patents is national in nature.

For more detail on the law regarding exhaustion in Singapore, in respect of patents and trademarks, please read on...

Patents

For patents, the Singapore Patents Act¹, section 66, contains the legislative provisions defining the exhaustion defence. The general defence is provided in section 66(2); in respect of pharmaceuticals it is subject to the limitations provided in subsections (3) to (5A).

The general defence is provided in section 66(2), which states:

"An act which, apart from this subsection, would constitute an infringement of a patent for an invention shall not be so if -...

... (g) subject to subsections (3) and (5A), it consists of the import, use or disposal of, or the offer to dispose of, any patented product or any product obtained by means of a patented process or to which a patented process has been applied, which is produced by or with the consent (conditional or otherwise) of the proprietor of the patent or any person licensed by him, and for this purpose "patent" includes a patent granted in any country outside Singapore in respect of the same or substantially the same invention as that for which a patent is granted under this Act and "patented product", "patented process" and "licensed" shall be construed accordingly;"

The defence applies to dealings in respect of, and use of, an imported patented product or a product obtained by means of a patented process. However, the defence does not apply to the use of a patented process in Singapore. The defence applies even if the proprietor of the patent in Singapore is different from the proprietor of the patent in the country of manufacture, for example because the original owner of the patents in both Singapore and the country of manufacture subsequently sold its rights in the latter patent.

For the purpose of...