A framework for collaboration between the Intellectual Property Office of Singapore (IPOS) and WIPO has been established upon the signing of a Memorandum of Understanding (MOU) on September 28, 2011. Under the MOU, IPOS and the WIPO Arbitration and Mediation Center (WIPO Center) established a joint dispute resolution procedure to facilitate the resolution of patent disputes pending before IPOS through expert determination. The new expert determination option applies to all patent proceedings pending before IPOS with effect from April 1, 2014.
Disputes Pending before IPOS
Disputes in this area may be related, for example, to patent revocation proceedings pending before IPOS. IPOS offers a voluntary expert determination option to parties to resolve these disputes through expert determination under the WIPO Expert Determination Rules.
The WIPO Expert Determination option offered by IPOS may be especially advantageous for international parties seeking to resolve related disputes in multiple jurisdictions.
The WIPO Expert Determination option is available through the entire dispute resolution process before IPOS. More information on IPOS proceedings may be obtained here.
Using Expert Determination in IPOS Patent Proceedings
Areas of Expert Determination
- Application to revoke a patent
- Dispute as to entitlement or proprietorship of patent
- Dispute as to amendment of specification
- Application to oppose an amendment to the specification
- Application to declare that a proposed act would not constitute an infringement
Parties to Expert Determination
- Patent proprietors
- Applicants in patent proceedings before IPOS
WIPO ADR Services for IPOS
- Administration of Disputes Pending before IPOS
A WIPO Expert Determination commences with the submission to the WIPO Center Office in Singapore of an Agreement and Request for WIPO Expert Determination in IPOS Patent Proceedings completed and signed by the parties. Such Agreement and Request could also be communicated through IPOS when the parties return to IPOS their Response to Registrar Form if they so wish.
The WIPO Center will then contact the parties regarding the next steps of the procedure, the fees and the appointment of the expert. The parties are free to identify themselves a suitable candidate for such appointment. The WIPO Center is available to assist with the provision of a shortlist of qualified expert candidates.
In its role as administering institution, the WIPO Center maintains strict neutrality and independence.
- WIPO Panel of Neutrals for Disputes Pending before IPOS
Effective proceedings to a large extent depend on the quality of the mediator, arbitrator or expert. The WIPO Center maintains an open-ended Panel, including mediators, arbitrators and experts from Singapore with expertise in intellectual property rights, such as trademarks, patents and industrial designs. They can be appointed in WIPO cases by parties to disputes pending before IPOS but parties in WIPO cases are also free to select mediators, arbitrators or experts from outside the WIPO Panel.
- Procedural Guidance and Training
Expert Determination can only be undertaken with the agreement of both parties. In order to facilitate such agreement, parties may use the available Agreement and Request for WIPO Expert Determination in IPOS Patent Proceedings so that their dispute is dealt with through WIPO Expert Determination. In the Agreement and Request, parties can adapt the process to their needs by agreeing for example on the scope of the dispute, the time set aside for the expert determination, and the language to be used (such matters can also be agreed after the appointment of the expert).
The WIPO Center also organizes training and workshops on mediation, arbitration, expert determination and related topics. In particular, the collaboration framework between IPOS and WIPO includes the provision of specialized training in mediation, arbitration and expert determination of intellectual property disputes aimed at developing greater expertise for ADR in Singapore and the region.
Fees and Costs
A not-for-profit Schedule of Fees for administration fees and expert fees applies.
The WIPO Center's assistance to the parties to negotiate reasonable rates for the expert helps to contain the cost of this informal procedure.
- WIPO-IPOS Workshop on Expert Determination for IP and IT Disputes
Singapore, August 28, 2014
Arbitration and Mediation Center
Arbitration and Mediation Center
T +65 6225 2129
34, chemin des Colombettes