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Amendments To Singapore Patent Law

New/amended Patents Act/Rules are finally being implemented with effect from 14 February 2014.

 The Singapore Patents Amendments 2014 includes the following:

1.  Abolition of the Dual Track (Fast track/Slow track) patent prosecution options;
2.  Shifting the existing "self-assessment" patent system to new "positive grant" patent system;
3.  Introduction of Review procedures for unfavourable Examination Report; and
4.  Introducting a new supplementary examination process for patent applications that rely on a
     positive foreign search and examination report.
      

All patent applications filed after 14 February 2014  would be prosecuted under the new  regime. Patent
applications
filed before this date would continue to be prosecuted under the  old “ Dual Track System”. 
There is no option for existing patent applications to be switched to prosecution under the new regime.

1.    Abolition of the Dual Track (Fast track/Slow track)  patent prosecution options:

These prosecution options although introduced to  cater to give foreign applicants flexibility in going for grant
were often perceived as confusing  and  now have been withdrawn.

New Timelines:

With the new amendments, fast track and slow track prosecution procedures have been removed.  That is,
prosecution
of applications under the “positive grant system” will have only one single track and there is only
one prosecution track.

Please see  “ Flowchart of  Singapore Patent Prosecution effective 14 Feb 2014” attached.

A patent application would have 54 months from Filing  Date/Declared  Priority Date (whichever is earlier) to be
put in order for grant.

Extension of time (of up to 18 months)  is available to applicants, as of right,  to obtain grant upon reaching 
54th month from Filing Date/Declared Priority Date.  For extension of time beyond 72nd Month from Filing Date
/Declared Priority Date, applicants would have to apply to the Registrar, with grounds  for the extension.   

2.   Positive Grant Patent System:

Under the existing “self-assessment”, a patent applicant is under no obligation to amend his application at any
stage, even if the patentability of the invention is not favourable, meaning that when the applicant faces an
unfavourable examiner’s opinion and/or report, amendments are not needed for the application to be proceeded
to grant.  A Singapore patent shall be issued once the formal requirements are met and upon the completion of
one of the search and examination procedures (there are pluralities of examination routes for applicant to choose).
In other words, the establishment of an adverse examination report will not prevent an application from proceeding
to grant.

With the change to a “ Positive Grant System “,  the  “self-assessment” patent system will be replaced  with the
“ Positive Grant System “.  Under the  Positive Grant System, only patent applications which meets  patentability
criteria  can be granted.  Applications with claims that do not possess novelty, inventive step and industrial
applicability will no longer be able to proceed to grant.

This amendment to positive grant is to  bring Singapore  patent practice  in line with patent practice of most 
developed countries.  Obviously, this should also bring the country’s IP regime to parity with  other established
patent offices such as the UK Intellectual Property Office, United States Patent and Trademark Office, Japan
Patent Office and the European Patent Office.

The change is intended  to raise the quality of Singapore-granted patents and will enhance Singapore’s standing
in the IP industry.  The move of the change to a positive grant patent system shall reduce the granting of weak
patents  thus enhances the quality of the patents to be granted in Singapore.

In supporting the move to a “positive grant” system, fundamental changes have been  made to  the search and examination provisions of the Patents Act.

2.1  Search and Examination Procedures under new regime:

A  Singapore patent application will still have three possible routes to proceed to grant –  i.e.  local examination
route, foreign examination route and mixed routes.  For all routes, all claims  must be searched and examined
and the application be issued with  Notice of Eligibility before the application can proceed to grant.  The three
routes for grant are:

Option 1(a) -    Search followed by examination with the Intellectual Property Office of Singapore
(local examination route).

Option 1(b) -   Combined search and examination with the Intellectual Property Office of Singapore
(local examination route).

Option 1(c) -    Examination together with a copy of search report from corresponding applications
(mixed route).

Option 1(d)  -  Filing request for Supplementary Examination  relying on the final search and examination results
or grant of corresponding applications/corresponding  International Application/ Related National Phase Application
(foreign examination route).

Option 1(e) -   Filing request  for Supplementary Examination  relying on  favourable IPRP [International Preliminary
Report on Patentability - Chap I or Chap II] (foreign examination route).

Definition  of  “ Related National Phase Application “:

Under the new amendments, a foreign national phase application from a PCT application without  any priority claim
will be considered a Related National Phase Application of a Singapore national phase application. 

Please refer to  “ Flowchart of  Singapore Patent Prosecution effective 14 Feb 2014”.

2.2  Requirement  for  Grant:

Regardless of choice of route,  a positive Examination Report or positive Supplementary Examination  Report must
be established in order for the IPOS to issue a  Notice of Eligibility.  The applicant is required to comply with the requirements for a patent grant within 2 months upon issue of Notice of Eligibility.  This will be the final stage
in  the prosecution of the Singapore application.

2.3  Notice of Intention to Refuse:

Applications with objected claims or any other non-compliance matters   will be issued with a Notice of Intention
to Refuse.  At this stage, the applicant has a final option to proceed the application.  The Applicant may within
2 months from the date of the Notice of Intention to Refuse, to apply for a review of the unfavourable examination report.  In the event that no request for review is filed, IPOS will issue a Notice of Refusal for the application and
this will be the end of the prosecution of the Singapore application.

Notes :

     
a. 
The 2 months deadline can be extended to maximum of six (6)  months.
    
b.  Applicants can also consider filing a divisional application, instead.
    
c.  Notice of Refusal will be back dated to Notice of Intention to Refuse.

3.  Review Procedure for unfavourable Examination Report:

In the event that the Applicant is not satisfied with the Notice of Intention to Refuse, the Applicant can file
application for a  Review.  For this Review,  Applicants may  file written submissions and/or amendments to
overcome the objections raised in the unfavourable Examination Report.  The Official Fee for the  Review would
be S$1350 (US$1080).  If Applicant is not able to file request for Review within the deadline of two months,
it is possible to apply for an extension of time up to 6 months with payment of  extension fees.

For the Review,  a  different Examiner (from the Examiner  who handled the application)  will be appointed.
The unfavourable Examination Report, all  written submissions/arguments and the amendments (if any) will be
reviewed by the Examiner.  A Review Report will be issued stating the Examiner’s decision.  The Review Report
will be accompanied by a final  Notice of Eligibility or  a Notice of Refusal.  If a Notice  of Refusal  is issued,
the application cannot proceed further.  However, Applicants can also consider filing a divisional application then.
If a  Notice of Eligibility is issued, the applicant is required to comply with the requirements for a patent grant,
within 2 months of  such  Notice of Eligibility.

4   Supplementary Examination:

For the above routes – Option 1(d) and 1(e) - relying on the final search and examination results of corresponding applications or a corresponding international application or a  related national phase application or a  PCT application,
the Singapore application must now undergo  Supplementary Examination.   This would  ensure all claims are
patentable before proceeding for grant.  (Previously  there was no requirement for examination as it was a
“ Self assessment system “.)

The due date to request for a Supplementary Examination Report is 54 months from the Filing Date/Declared Priority Date.  Upon filing request for a Supplementary Examination Report, one Written Opinion may be issued. Applicant is required to respond within 3 months of which the due date is non-extendable.

4.1  Table of related claims:

The request for  supplementary examination  must be accompanied by a table showing how each claim in the
application is related to the allowed claim in the final results of the corresponding application, corresponding
international application or related national phase application, or IPRP.

4.2  Extension of time  to file Supplementary Examination:

If the results of  examination of  a  corresponding application or corresponding international application or related
national phase application  is not available by 54th Month from Filing Date/Declared Priority Date,  an extension
of  time (of up to 18 months)  is available to applicants, as of right.  For extension of time beyond 72nd Month
from Filing Date/Declared Priority Date, applicants would have to apply to the Registrar, with grounds  for the
extension.   

Conclusion

The changes are favourable to  foreign  applicants as it will enhance enforceability of a granted Singapore patent
with more certainty.  Therefore, foreign  applicants would be able to achieve better protection of  their patent
rights in Singapore.

We hope that you find our Patent Law Summary useful. 

If you have any queries, please do not hesitate to contact either:-

YF Chong ([email protected])  or Alex Tan ([email protected])

 

W. P. LAI & COMPANY
SINGAPORE & MALAYSIA

 

 

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