I was invited to give a talk recently on patent term extensions in South East Asia.
The talk was presented at a webinar on 2 September 2024, hosted by the Chartered Institute of Patent Attorneys in the United Kingdom.
This blog post sets out a transcript of the talk.
Under Singapore Patent Law, the deadline for requesting examination of an application is 36 months from the earliest claimed priority date. If no priority has been claimed in the patent application, the examination deadline is 36 months from the date of filing of the patent application.
The Singapore Patents Act and Singapore Patents Rules contain provisions which allow for the deadline for requesting examination to be deferred. These are set out under Rule 108(4) of the Patents Rules.
Under Singapore patent law, an applicant may file a late request for examination of their patent application, up to 18 months from that deadline.
Such extensions are requested retrospectively and are granted as of right. The Intellectual Property Office of Singapore IPOS charges an official fee per month of the extension (see below for details of a pilot programme allowing extensions of time without charge).
An important point is that the request for extension of time must be made before the expiry of the 18 month period.
We’re excited to announce that Magdelene Ong has joined Cantab IP! 🎉
With over 20 years of experience in patent and registered design law and a proven track record of success, Magdelene brings a wealth of knowledge and expertise to our team. She has represented clients across the mechanical, high tech and chemical engineering industries and is well-versed in patent and design prosecution, litigation, and strategic IP management.
At Cantab IP, we’re committed to delivering exceptional intellectual property services, and Magdelene will be a key part of that mission. We’re thrilled to have her on board and look forward to the valuable contributions she will make to our clients and our firm.
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I was invited to give a talk recently on patent enablement and sufficiency in Singapore.
The talk was presented at a webinar on 22 July 2024, jointly hosted by the Association of Singapore Patent Attorneys (ASPA) and the Capital Intellectual Property Services Association (Beijing, China).
In my talk, I discussed the judgement of the Singapore Court of Appeal in IIa Technologies Pte Ltd v Element Six Technologies Ltd.
This blog post sets out a transcript of the talk presented to the audience of Singapore and Chinese patent and trade mark attorneys.
I was recently invited to give a webinar to the Chartered Institute of Patent Attorneys on the topic of “Understanding SPCs in Different Countries”.
The plan was to undertake a survey of the patent laws in various South East Asian Countries, including ASEAN, focussing on whether it is possible to obtain extensions of the term of a patent covering a pharmaceutical or biologic, where there had been a delay in obtaining regulatory approval.
The question the webinar would answer is: are Supplementary Protection Certificates (SPCs) and Patent Term Extensions (PTEs) available in Brunei, Cambodia, East Timor, Indonesia, Laos, Malaysia, Myanmar, Philippines, Singapore, Thailand or Vietnam?
A patent term extension (PTE) or a supplementary protection certificate (SPC) extends the term of protection of a patent beyond its original expiry.
This extension of the patent term compensates the patentee for time lost during the regulatory approval process, particularly in industries like pharmaceuticals and biotechnology, where lengthy testing and approval periods can significantly reduce the effective patent life. PTE aims to restore part of the exclusivity period, allowing patent holders to maximize their commercial returns on their innovations. The specific provisions and eligibility criteria for obtaining a patent term extension vary by jurisdiction.
The Singapore Patents Act contains provisions for extension of the term of protection of a patent to take into account delays in obtaining marketing approval for pharmaceutical products in Singapore.
Supplementary Protection Certificates and Patent Term Extensions are not available in Cambodia, Indonesia, Laos, Malaysia, Philippines, Thailand or Vietnam.
Interestingly, in Vietnam, there is a mechanism for compensating patent owners for regulatory delays in that any maintenance fees payable for keeping the patent alive during the term of delay are waived. The term of the patent is unchanged, however.
There is no patent system in place at the moment in East Timor.
The Bruneian Patents Act contains provisions for patent term extensions for delays in regulatory approval, similar to those available in Singapore.
We are grateful to our ASEAN and South East Asian friends at CCW Partnership (Brunei), Abacus IP (Cambodia), Tilleke & Gibbins (Indonesia), Raja, Darryl & Loh (Malaysia), Cruz Marcelo & Tenefrancia (Philippines), Tilleke & Gibbins (Thailand) and Kenfox IP (Vietnam and Laos) for their assistance in compiling this information.
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