The Singapore Patents Act has been amended by the Patents (Amendment) Act 2012; the new law comes into force on 14 February 2014.
The new law introduces a supplementary examination process, which is mandatory if the applicant wishes to rely on the grant of a foreign corresponding application for the grant of the Singapore patent.
Recently, as a result of a number of discussions with IPOS officials and IPOS examiners, it has become clear that there are number of potential issues with supplementary examination under the amended act.
These issues potentially affect all patent applications, with particular issues arising in the biotechnology, pharmaceutical and life science areas.
What is Supplementary Examination?
A request for supplementary examination must be filed by 54 months from the earliest claimed priority date.
Supplementary Examination allows the Intellectual Property Office of Singapore (IPOS) to examine the Singapore application for compliance with these requirements:
- relationship between the Singapore claims and those of the foreign application as allowed or granted (see claim correspondence table)
- related claims have been examined for novelty and inventive step and are allowed
- inventions for which the publication or exploitation would encourage offensive, immoral or anti-social behaviour
- non-patentable inventions, industrial applicability, methods of treatment of the human or animal body by surgery or therapy or methods of diagnosis
- double patenting and added subject matter
For more details of supplementary examination, please see our Singapore Intellectual Property Guide.
What is Claim Relatedness - Does Anyone Actually Know?
In order to benefit from the grant of the foreign application, the applicant must show that each of the claims in the Singapore application is related to a claim in the corresponding foreign patent.
The related claim needs to have been examined for novelty, inventive step and sufficiency, and to have passed this examination.
This is usually taken to mean that each of the claims as pending in the Singapore application at the time of grant must be identical in substance, or narrower than, a corresponding claim in the foreign application as granted.
Note that this interpretation has not been tested before the Courts, but it seems to be a reasonable reading of Section 2(4) of the Patents Act.
Are Second Medical Use Claims in Singapore “Related” to Methods of Medical Treatment Claims?
IPOS has indicated during a briefing session that a second medical use (Swiss-style) claim in a Singapore patent application will not be considered as being related to a method of treatment claim in a United States patent.
They have reached this conclusion by applying the definition of “related claims” in Section 2(4) of the Patents Act.
By this logic, a first medical use format claim in the Singapore application would also likely not be considered as being related to a US patent claim to a method of treatment.
Claims to methods of treatment of the human or animal body by surgery or therapy are not considered industrially applicable under Singapore patent law (and are therefore unpatentable).
Therefore, problems are likely to arise if an applicant seeks to rely on a granted US patent, where the claims are solely directed to methods of medical treatment and there are no claims in an allowable form in Singapore (i.e., first medical use or second medical use, as the case may be).
This issue is a particular concern for applicants seeking biotech patents, pharma patents or life sciences patents in Singapore.
Are EPO-style Second and Further Medical Use Claims “Related” to Second Medical Use Claims in Singapore?
Under Singapore patent practice, claims to second and further medical uses of known products may be claimed in the “Swiss-style”. Such claims take the form “Use of X in the preparation of a medicament for the treatment or prevention of Y”.
The Enlarged Board of Appeal of the European Patent Office, in Decision G02/08, ruled that Swiss-style claims are not allowed under the amendments to the European Patent Convention (EPC 2000). Under European Patent Law, therefore, claims to second and further medical uses of known products are required to take the form “X for use in a method of treatment of Y.”
We understand from discussions with IPOS Examiners is that their view is that Swiss style claims in a Singapore application will not be considered to be related to EPO-style further medical use format claims in a corresponding European patent.
Problems are therefore likely to arise if an applicant seeks to rely on a granted European patent claiming second or further medical uses of a known compound, where the claims are in EPO further medical use format and the Singapore application is required to claim the invention with “Swiss-style” claims.
Can an Applicant Amend the Claims to Cure Defects in Claim Relatedness During Supplementary Examination?
The most interesting outcome of our discussions with IPOS relates to the situation where an applicant has requested supplementary examination on a set of claims.
What happens when it turns out subsequently that one or more of the Singapore claims are not in fact related to the claims in the foreign corresponding application?
Does the applicant now have an opportunity to amend the claims to make them related to those in the foreign application, and to cure the original defect?
The answer appears to be “no”!
To understand why, we need to take a close look at the section of the Singapore patents act that deals with supplementary examination.
Section 29(1)(d) of the Singapore Patents Act, as Amended
Section 29(1)(d) of the amended Act sets out the requirement for filing a request for supplementary examination.
We’ve already discussed the unusual wording of this section in one of our earlier blog posts, but here are the relevant portions of Section 29(1)(d):
29.—(1) The applicant in an application for a patent (referred to in this subsection as the application in suit) shall comply with one of the following paragraphs within the period prescribed for that paragraph:
(d) file the prescribed documents and a request in the prescribed form for a supplementary examination report, where —
(i) the applicant relies on the final results of —
(A) any search and examination as to the substance of one corresponding application, corresponding international application or related national phase application; or
(B) any search and examination as to the substance of the application in suit during its international phase (if the application in suit is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3));
(ii) each claim in the application in suit is related to at least one claim in that corresponding application, corresponding international application or related national phase application, or in the application in suit during its international phase, as the case may be; and
(iii) according to those results, each claim in the application in suit appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility).
Sub-section (? sub-sub-section? sub-sub-sub-section?) (ii) and (iii) appear to state that, at the point in time when an applicant files a request for supplementary examination, the application must already comply with the things the supplementary examination is meant to examine, including the requirement for claim relation set out at (ii).
I remember being quite amazed - and amused - when I first realised what Section 29(1)(d) said. Here are my Tweets on the subject on 4 February 2013 (read the Tweets from the bottom up):
Please feel free to follow our Twitter account @CantabIP for other such nuggets of wisdom :)
It’s Not Possible to Overcome Non-Relatedness by Amendment During Supplementary Examination!
It is not clear whether the wording of Section 29(1)(d) was a drafting error on the part of the Parliamentary Draughtsman, or actually intended. In any case, IPOS appears to be taking the view that this is the will of Parliament and is applying the law as it reads.
In our recent discussions with IPOS, they have indicated that they consider this Section as meaning that requirement for claim relationship must be fulfilled when supplementary examination is requested.
Given this, if the claims do not already fulfil the “related claim” criteria, IPOS is currently taking the view that it is not possible for the claims to be subsequently amended so that they do. The most you can try to do is to argue that the claims are actually related.
Here is the text of a response from IPOS to this particular question:
Relatedness is a requirement for supplementary examination. Before requesting for (sic) supplementary examination, the applicant must satisfy himself that the relatedness requirement is met. The Registrar will cause the application to be subjected to a supplementary examination by an Examiner. If the Examiner has any objections on relatedness, the applicant may make submissions against objections on relatedness, but cannot make amendments to overcome objections about relatedness, because that would mean that the relatedness requirement was not met at the time the request for supplementary examination was filed.
Note that things are changing all the time, and the stated practice as set out above may change; I get the feeling that a number of practitioners are not happy with this interpretation of the law and are lobbying IPOS to change its practice.
As things stands currently, however, IPOS will not allow an applicant to amend the claims to overcome an objection to non-relatedness during supplementary examination.
Our general advice to our clients is that they should avoid supplementary examination and instead request local examination. They can do this by either requesting local search and examination or by relying on an International or foreign search report and requesting local examination.
Requesting local examination ensures that the Singapore application is fully examined under Singapore patent law.
As shown above, supplementary examination is problematic at best. These potential issues are avoided completely by local examination, as there is no foreign application to which claim relatedness needs to be examined.
Local examination also removes any risk arising from a Singapore patent being examined and effectively granted under a different set of laws, which may bear little relation to Singapore patent law.
Finally, local examination also allows decoupling from the uncertainty of the timing of foreign prosecution.
Please get in touch with us if you have any questions on the issues raised in this blogpost.