Compulsory licensing in Singapore

Compulsory licensing is not defined in Singapore legislation.

• Patents Act (Cap. 221);
• Layout-Designs of Integrated Circuits Act (Cap. 159A) (“LDICA”);
• Plant Varieties Protection Act (Cap. 232A) (“PVPA”);
• Registered Designs Act (Cap. 266) (“RDA”);
• Copyright Act (Cap. 63).

The statutory provisions relating to compulsory licensing in Singapore do not contain specific requirements/restrictions for the types of products or technologies which compulsory licensing may apply to.

There are currently no reported cases applying the statutory provisions relating to compulsory licensing in Singapore.

Patents Act

Under section 55(1) of the Patents Act, “any interested person” may apply to the court for a compulsory licence under a patent.

LDICA

Under section 27(1) of the LDICA, any person may apply to the court for a compulsory licence in relation to a protected layout-design.

PVPA

Under 34(1) of the PVPA, any person may apply to the court for a compulsory licence to exploit a protected variety in Singapore.

There are no restrictions on foreigners or foreign companies in relation to applying for a compulsory licence under the Patents Act, LDICA and PVPA.

Patents Act

• Under section 55(1) of the Patents Act, the court may grant a licence under a patent on the ground that the grant of licence is necessary to remedy an anti-competitive practice. Section 55(2) provides an example of such “anti-competitive practice”, namely where there is a market for the patented invention in Singapore, and that market is not being supplied or is not being supplied on reasonable terms, and the proprietor has no reason for failing to supply this market (whether directly or through a licence).
• Section 56(1) of the Patents Act allows the Singapore government and any party authorised in writing by the Singapore government to do anything in relation to a patented invention for (a) public non-commercial purpose; or (b) during a national emergency or other circumstances of extreme urgency without these acts amounting to an infringement of the patent. Section 56(1)(a) further provides that the Singapore government may import any relevant health product, and do anything in relation to any relevant imported health product for or during a national emergency or other circumstances of extreme urgency, provided that the government first notifies the Council for TRIPS of its intention.

LDICA

• Under section 27(1) of the LDICA, the court may grant a licence in relation to a protected layout-design upon the ground that the grant of the licence is necessary to remedy an anti-competitive practice.
• Section 23 of the LDICA allows the Singapore government and any party authorised in writing by the Singapore government to do anything in relation to a protected layout-design if the act is done for a public non-commercial purpose, including acts done (a) for the defence or national security of Singapore; or (b) to assist in the exercise of powers and the implementation of civil defence measures during a state of emergency or state of civil defence emergency under the Civil Defence Act.

PVPA

Under section 34(2) of the PVPA, the court may grant a compulsory licence to exploit a protected variety in Singapore on the ground that the grant of a compulsory licence is in the public interest. Sections 34(5) and 34(6) further provide that a compulsory licence will only be granted to a person who (a) is able to demonstrate to the court that he will be able to exploit the protected variety in a manner acceptable to the court, and (b) has first taken all reasonable steps to obtain authorisation from the grantee on reasonable commercial terms and conditions and has failed to obtain such authorisation within a reasonable period of time.

RDA

Section 45 of the RDA allows the Singapore government and any party authorised in writing by the Singapore government to use any registered design for the services of the Singapore government, including use:

1. to avoid prejudice to the security or defence of Singapore;
2. for public non-commercial use;
3. to assist in the exercise of powers and the implementation of civil defence measures during a state of emergency or state of civil defence emergency under the Civil Defence Act;
4. for the supply to the government of any country or territory outside Singapore, in pursuance of any agreement or arrangement between the Singapore government and the government of that country, with articles, non-physical products, or devices for projecting non-physical products, required (i) for the defence of that country; or (ii) for the defence of any other country whose government is party to any agreement or arrangement with the Singapore government in respect to defence matters; or
5. for the supply to the United Nations, or to the government of any country belonging to that organisation, with articles, non-physical products, or devices for projecting non-physical products, required for any armed forces operating in pursuance of a resolution of that organisation or any organ of that organisation.

Copyright Act

Compulsory licences are provided for in the Copyright Act as statutory licences, including statutory licences that permit:

1. an educational institution to reproduce multiple copies of copyright works for educational purposes (section 52, 52A and 53);
2. an institution assisting disabled readers in reproducing copyrighted works in more accessible formats (section 54);
3. the making of records or adaptations of a musical work, subject to a duty to pay 5% royalty and conditions (sections 56 and 57); and
4. the use of copyright materials for the service of the Singapore government on agreed terms or as specified by the Copyright Tribunal (section 198).

Please see the response to question 5 above.

Furthermore, there is no requirement under the statutory provisions relating to compulsory licensing in Singapore for a certain minimum number of years to elapse after the relevant intellectual property right has been granted before it may be subjected to compulsory licensing.

There are no express limits on the number of compulsory licensees in the statutory provisions relating to compulsory licensing in Singapore.

Patents Act

• A compulsory licence granted under section 55 is:
  1. non-exclusive, and
  2. non-assignable, except where the assignment is in connection with the goodwill of the business in which the patented invention is used (section 55(4)).
• The right to use a patented invention pursuant to section 56 is:
  1. non-exclusive,
  2. non-assignable, except where the assignment is in connection with the goodwill of the business in which the patented invention is used, and
  3. limited to the supply of the patented invention, predominantly in Singapore (section 60(1)).
• The right under section 56 to use a relevant health product, which is imported under section 56(1A), does not include a right to export the relevant health product (section 60(1A)).

LDICA

• A compulsory licence granted under section 27 is non-exclusive and non-assignable (section 28(1)(a)).
• The right to do an action in relation to a protected layout-design under section 23:
  • is non-exclusive,
  • is non-assignable,
  • does not permit the sale of the layout-design, or an integrated circuit in which the layout-design is incorporated to the public, and
  • is limited to the performing of the act predominantly in Singapore (section 24(1)).

PVPA

A compulsory licence granted under section 34 may only be assigned together with the business activity in connection with which the protected variety is exploited or is intended to be exploited (section 34(8)).

Copyright Act

The scope of the statutory licences under the Copyright Act are set out in the respective provisions for each statutory licence (see the response to question 55 above for the relevant provisions).

The High Court of Singapore has the authority to grant compulsory licences, which are applied for under section 55 of the Patents Act, section 27 of the LDICA and section 34 of the PVPA.

There are no specific procedures set out in the Patents Act, LDICA and PVPA for an application to a court for the grant of a compulsory licence. The general rules of procedure found in the Rules of Court and Supreme Court Practice Directions would apply.

The application for a court order for the grant of a compulsory licence is made by way of summons and supported by an affidavit, which contains information/evidence relating to the grounds relied upon for the grant of the compulsory licence.

The time required to obtain a court order for the grant of a compulsory licence would depend on factors such as how soon the application can be heard by the court and the complexity of the matter.

The statutory provisions relating to compulsory licensing in Singapore do not provide the court with such power to grant a compulsory licence without a hearing.

Yes, it is possible to terminate compulsory licences. There are express provisions in the Patents Act, LDICA and PVPA relating to the termination of a compulsory licence.

A compulsory licence in relation to a patented invention, protected layout-design or protected plant variety may, on the application of any interested party, be terminated by the court where the court is satisfied that the ground upon which the licence was granted has ceased to exist (section 55(5) of the Patents Act, section 34(9) of the PVPA and section 29 of the LDICA).

In addition, the right to government use of a patented invention may, on the application of any interested party, be terminated by the court where the court is satisfied that the circumstances that gave rise to the right to government use have ceased to exist and are unlikely to recur (section 60(2) of the Patents Act).

There are no specific requirements in the Patents Act, LDICA and PVPA, which relate to the treatment of products made under a compulsory licence upon the termination of the compulsory licence.

Yes, but the statutory provisions relating to compulsory licensing generally refer to the payment of remuneration rather than royalties.

The statutory provisions relating to the determination of the amount of remuneration to be paid to right holders are as follows:

Patents Act

• Section 55(6) of the Patents Act provides that a licensee who is granted a compulsory licence under section 55 shall pay such remuneration to the patentee as may be agreed, or as may be determined by a method agreed between the licensee and the patentee or, in default of agreement, as is determined by the court on the application of either party. Where an application is made to court under section 55(6), the powers of the court will be exercised with a view to enable the inventor or other person beneficially entitled to a patent to receive reasonable remuneration reflecting the economic value of the licence.
• Similarly, where an act is done under section 56, section 62(1) requires the Singapore government to provide remuneration at a sum to be agreed, or as may be determined by a method agreed between the Singapore government and the patentee reflecting the economic value of the patented invention. If the parties are unable to come to an agreement, the court will determine the remuneration under section 58.
• Section 62(2) clarifies that no remuneration will be payable to the patentee for the importation of health products under section 56(1A) if he has already received or will receive any other remuneration in respect to the relevant health product.

LDICA

• Where the court makes an order for the grant of a compulsory licence under section 27 of the LDICA, section 27(3) provides that the court shall specify in the order such remuneration to be paid by the licensee to the owner of the protected layout-design as the court considers reasonable.
• For an act carried out under section 23, section 26 requires the Singapore government to provide remuneration at a sum to be agreed, or as may be determined by a method agreed between the Singapore government and the owner of the protected layout-design or, in default of agreement, as is determined by the court on the application of either party.

PVPA

Where the court makes an order for the grant of a compulsory licence under section 34 of the PVPA, section 34(4) provides that the court shall set out in the order the equitable remuneration, which the licensee shall pay to the grantee.

RDA

Section 46(2) of the RDA provides that government use of registered designs under section 45 shall be made on such terms (which may include terms relating to remuneration) as agreed between the Singapore government and registered owners or, in default of such agreements, as may be determined by the court.

Copyright Act

The provisions in the Copyright Act relating to statutory licences generally provide that equitable remuneration must be paid to the copyright owner if the copyright owner makes a request, in writing, for payment for the making of copies. The amount of remuneration may be agreed upon between the parties or, in default of the agreement, the remuneration may be determined by a Copyright Tribunal (see sections 52(11), 52(11C), 52(15), 54A(7) and 198(5) of the Copyright Act). Section 57 of the Copyright Act provides that the making of records or adaptations of a musical work under section 56 is subject to a duty to pay royalty equivalent to 5% of the retail selling price of the record.

In general, a party who is not satisfied with a decision made by the High Court of Singapore in relation to compulsory licensing may appeal to the Singapore Court of Appeal to set aside or vary the decision.

There is no such requirement under the statutory provisions relating to compulsory licensing in Singapore.

There are no express confidentiality obligations for compulsory licensees in the statutory provisions relating to compulsory licensing in Singapore.

It may be possible for compulsory licensees in Singapore to export their products under certain compulsory licences, but only under limited circumstances.

Where a compulsory licensee is permitted to export products, there are generally limitations on the export of such products. The relevant provisions relating to exportation are as follows:

Patents Act

• There are no express restrictions against the export of products produced under a compulsory licence granted under section 55 of the Patents Act. However, a licence will only be granted under section 55 if it is necessary to remedy an anti-competitive practice.
• The right under section 56 of the Patents Act may extend to the export of products, but this right is limited to use of a patented invention for public non-commercial purposes or for a national emergency or other circumstances of extreme urgency. In addition, the right under section 56 to use a relevant health product, which is imported under section 56(1A), does not include a right to export the relevant health product (section 60(1A) of Patents Act).

LDICA

• There are no express restrictions against exportation in section 27 of the LDICA. However, a licence will only be granted under section 27 if it is necessary to remedy an anti-competitive practice.
• The right under section 23 of the LDICA is unlikely to include the right to export. Section 24(d) expressly states that the right under section 23 does not permit the sale of the layout-design or an integrated circuit (in which the layout-design is incorporated) to the public. Furthermore, section 24(e) also states that the right under section 23 is limited to performing the act predominantly in Singapore.

PVPA

There are no express restrictions against exportation in section 34 of the PVPA. However, a licence will only be granted under section 34 if the court is satisfied that this would be in the public interest.

RDA

The right under section 45 of the RDA may extend to the export of products, but this right is limited to use of a registered design to avoid prejudice to the security or defence of Singapore, or to assist in the exercise of powers and the implementation of civil defence measures during a state of emergency or state of civil defence emergency, or for public non-commercial use.

Copyright Act

The copying of certain work for the purpose of export may be possible under statutory licences set out in the Copyright Act, subject to conditions. For instance, section 54(5) permits the making, on a non-profit basis, of an accessible format copy in a physical form of a work for use by a person with a reading disability for the purpose of export, provided that the various conditions set out in section 54(6) are met.

There are currently no reported cases of compulsory licensing being used in previous health emergencies or in the present COVID-19 pandemic in Singapore.

It may be possible for a third party to invoke section 55 of the Patents Act (which enables the court to grant a compulsory licence under a patent to remedy an anti-competitive practice) to facilitate the treatment of patients infected by COVID-19. A possible situation could arise when a patent proprietor does not have sufficient quantities to supply treatment for COVID-19 in Singapore. However, such a licence can be terminated once the grounds upon which the licence was granted has ceased to exist and is unlikely to recur (section 55(5) of the Patents Act).

Section 56 to 62 of the Patents Act could also enable the Singapore government and any party authorised in writing by the Singapore government to facilitate the use of patentable treatments for COVID-19 patients, given that the COVID-19 pandemic is likely to qualify as a situation of national emergency or a circumstance of extreme urgency. If a patented vaccine becomes available overseas, section 56(1A) allows the Singapore government or a party authorised by the Singapore government to import and use such treatment on COVID-19 patients, provided that notification has been given to the Council for TRIPS.

None.

There are express restrictions on the assignment of compulsory licences in the Patents Act, LDICA and PVPA.

Patents Act

A compulsory licence granted under section 55 and the right to use a patented invention under section 56 are both non-assignable, except where the assignment is in connection with the goodwill of the business in which the patented invention is used (sections 55(4)(b) and 60(1)(b)).

LDICA

A compulsory licence granted under section 27 and the right to do an action in relation to a protected layout-design under section 23 are both non-assignable (sections 28(1)(a) and 24(1)(a)).

PVPA

A compulsory licence granted under section 34 may only be assigned together with the business activity in connection with which the protected variety is exploited or is intended to be exploited (section 34(8)).

Yes, but only in relation to the use of patented inventions, registered designs and copyright materials for the services of the Singapore government.

The relevant provisions are as follows:

Patents Act

If the patented product is used for the services of the Singapore government, provisions in any licences, assignments or agreement shall be of no effect to the extent that the provisions restrict or regulate the working of the invention (section 57(1) of the Patents Act).

RDA

In relation to any use of a registered design for the services of the Singapore government, provisions in any licence, assignment or agreement made between the registered owner and a third party shall be of no effect to the extent that the provisions restrict or regulate the use of the design or any model, document or information relating to it, or provide for the making of payments in respect to, or calculated by reference to, such use (section 47 of the RDA).

Copyright Act

Where copyright material is used for service of the Singapore government, an agreement or licence fixing the terms upon which a person other than the government may perform acts included in a copyright is inoperative with respect to the performance of those acts, unless the agreement or licence has been approved by the Minister (section 198(6) of the Copyright Act).

There is no such special labelling requirement in the statutory provisions relating to compulsory licensing in Singapore.

There is no such special distribution channel requirement in the statutory provisions relating to compulsory licensing in Singapore.

There are no express price requirements in the statutory provisions relating to compulsory licensing in Singapore.