Guide to the Singapore Patents Act Amendments

Guide to the Singapore Patents Act Amendments

Guide to the Singapore Patents Act Amendments

The Patents (Amendments) Act 2012, passed by Parliament in July 2012, amends Singapore’s Patents Act (Chapter 221). The provisions of the amended Singapore Patents Act came into force on 14 February 2014, together with amended Singapore Patent Rules.

Summary

Key changes introduced by the amended Patents Act and new Patent Rules:

Please get in touch with us if you have any questions on this guide or would like specific advice on patent prosecution strategy in the light of the changes to the law.

Legislation

Amending Legislation

Consolidated Versions

(available on the IPOS website)

Commencement and Applicability

Domestic Patent Applications

The new law applies to Singapore domestic applications filed on or after 14 February 2014, including divisional applications lodged on or after that date. It is the actual date the divisional application was lodged at IPOS that counts, not the date of filing of the parent application.

Please refer to our Singapore Patent Guide for details of the requirements for filing a Singapore patent application.

PCT Singapore National Phases

The new law applies to International Patent Applications designating Singapore and entering the Singapore national phase on or after 14 February 2014. The date of filing of the PCT application does not matter.

Existing Singapore Patent Applications

Singapore patent applications filed on or before 13 February 2014, as well as PCT applications which entered the Singapore national phase by that date, will be treated under the Singapore Patents Act in the form as it existed before amendment.

Impact and Recommendations

The new law raises the threshold and adds considerably more complexity to the process of getting a granted Singapore patent. The introduction of supplementary examination increases the costs, complexity and time needed to obtain a patent in Singapore.

We continue to recommend requesting examination of the Singapore application, because of its decoupling from the uncertainty of the timing of foreign prosecution, as well as its completeness in examination for compliance with Singapore law. We recommend against requesting supplementary examination of a Singapore patent application relying on the grant or allowance of a foreign corresponding application.

Fee Changes

There is a decrease generally in official fees under the new law, as there is no surcharge or GST on e-filings. There is also no longer a separate form and fee required for filing an authorisation.

Renewal fees for earlier years (5th to 7th) are reduced by about 17% but renewal fees for later years (14th year onwards) are increased by about 6-8%.

While there is no official fee for requesting supplementary examination, there is an increase generally in costs of relying on a foreign grant because of this additional procedure.

Positive Grant

In Singapore, a Written Opinion in Singapore practice is equivalent to an Office Action or Examination Report in other jurisdictions. The Examination Report, on the other hand, sets out the final results of examination in Singapore.

The new law abolishes the “self-assessment” system. An application subject to the new law has to comply with all the substantive patentability requirements before a patent can be granted on it. It is not possible to obtain grant if there are any unresolved objections to patentability. This puts Singapore patent law in line with major patent jurisdictions and there is now a (higher/actual) presumption of validity of granted Singapore patents.

IPOS polices these requirements through the issuance of a Notice of Refusal or a Notice for Eligibility for Grant and the use of a new supplementary examination process, which is mandatory where the Singapore application relies on the grant or allowance of a foreign corresponding application.

Under the old law, it was possible to obtain grant of a Singapore patent even in the face of outstanding objections to novelty or inventive step, e.g., with a negative Examination Report.

Removal of the Slow Track

Under the new law, the “slow track” is abolished in favour of a single track. There is no longer any provision for requesting a block extension of time.

Under the old law, it was possible to extend the default deadlines for requesting examination and paying the grant fee (“fast track”) with a “block extension of time”. This extended the examination deadline to 39 months from the earliest priority date and the grant fee deadline to 60 months from the earliest priority date (“slow track”).

Deadline for Requesting Examination


Under the new law, the deadline for requesting examination is 36 months from the earliest claimed priority date (or 36 months from the filing date if no priority is claimed). Note that this is only 6 months from the national phase entry deadline for ex-PCTs.

We recommend requesting examination for prosecution of Singapore patent applications. If a foreign corresponding application has been searched, or if the Singapore application is the national phase of a PCT application, the request for examination may rely on the international or foreign search report. As an alternative, a request for search may be filed by the same deadline as the deadline for requesting examination.

In examining the application, IPOS may issue one or more Written Opinions, each setting a non-extendible deadline of 5 months for response. The applicant may amend the specification and/or respond to any objections raised by the office. IPOS will then issue an Examination Report to conclude the examination procedure.

Depending on whether the Examination Report is positive or negative, IPOS will issue either a Notice for Eligibility for Grant or a Notice of Intention to Refuse. Examination Review is available if refusal is contemplated.

Under the old law, the deadline for requesting examination was 21 months from the earliest priority date (39 months under the “slow track”).

Supplementary Examination


If the Singapore application is to rely on the grant or allowance of a foreign corresponding application, it has to go through a new supplementary examination process.

Deadline for Requesting Supplementary Examination

The deadline for requesting supplementary examination is 54 months from the earliest priority date.

The request for supplementary examination needs to be accompanied by the “prescribed information” on the corresponding foreign application on which grant is to be relied. The “prescribed information” comprises a certificate of grant and a certified copy of the patent specification, or documents setting out the final results of search and examination (e.g., a notice of allowance) and a copy of the claims allowed, together with verified English translations if needed.

The new law requires a claim correspondence table to be filed. This sets out, for each claim in the Singapore application, how it is related to one or more claims in the foreign corresponding application, as allowed for grant. The Singapore claim must be of the same scope, or narrower, than that of the corresponding foreign claim.

Under supplementary examination, IPOS examines the Singapore application for compliance with the following:

If these requirements do not appear to be met, IPOS may issue a single Written Opinion, to which a response and/or amendments is possible with a unextendible term of 3 months.

After supplementary examination of the application, IPOS will issue a Supplementary Examination Report. Depending on whether the Supplementary Examination Report is positive or negative, IPOS will issue either a Notice for Eligibility for Grant or a Notice of Intention to Refuse. Examination Review is available if refusal is contemplated.

Conclusion of Examination and Grant Procedure

Issuance of Examination Report / Supplementary Examination Report

IPOS issues an Examination Report at the conclusion of the examination process (or where Supplementary examination was requested, a Supplementary Examination Report).

The state of the Examination Report or the Supplementary Examination Report determines whether the applicant may proceed to pay the grant fee.

Notice of Eligibility to Proceed to Grant

If the Examination Report or Supplementary Examination Report is positive, with no outstanding objections, IPOS issues a Notice for Eligibility for Grant (also known as a “Notice of Eligibility for Grant”). The applicant then has 2 months to pay the grant fee and to comply with the grant formalities.

Notice of Intention to Refuse

If the Examination Report or Supplementary Examination Report is negative and contains one or more unresolved patentability objections, IPOS issues a Notice of Intention to Refuse the application. The applicant has 2 months from the date of the Notice of Intention to Refuse to seek an Examination Review.

Examination Review

The deadline for filing a request for Examination Review is 2 months from the date of a Notice of Intention to Refuse. The applicant may file comments and claim amendments at the same time as requesting Examination Review, but has no further opportunity to amend the specification. No Written Opinions are issued during Examination Review.

IPOS then reviews the Examination Report or Supplementary Examination Report, together with any submissions or amendments, to establish an Examination Review Report.

As above, if the Examination Review Report is positive, IPOS issues a Notice for Eligibility for Grant, and the applicant may pay the grant fee and comply with the grant formalities within 2 months.

Notice of Refusal

If the Examination Report or Supplementary Examination Report is negative and no Examination Review is sought, IPOS issues a Notice of Refusal at the end of the 2 month period set by the Notice of Intention to Refuse. IPOS also issues a Notice of Refusal if an Examination Review was requested, but is not successful.

The refusal is only effective 2 months from the date of the Notice of Refusal; there is no “sudden death” and it is therefore possible to file a divisional application during this time.

Payment of Grant Fee

The applicant cannot proceed to pay the grant fee unless and until he receives a Notice for Eligibility for Grant.

The deadline for paying the grant fee is 2 months from the date of the Notice for Eligibility for Grant. Under the new law, the deadline for paying the grant fee becomes a floating deadline - there is no fixed time period by which the grant fee needs to be paid.

If the application has been amended during prosecution, the applicant is also required to file a consolidated copy of the specification incorporating all the amendments made so far on the application by the same deadline as for paying the grant fee.

Divisional Applications

Under Singapore law, a divisional application may be filed before the grant fee on the parent application is paid, and in any case while the parent case is alive.

A divisional application may therefore still be filed from an application which has been refused, within 2 months of the date of the Notice of Refusal. Otherwise, the new law generally does not affect divisional applications.

As in the old law, the deadlines for prosecuting divisional applications filed under the new law are calculated from the actual date the divisional application is lodged at IPOS, rather than the deemed priority date.

Post Grant Search and Examination

Post-grant search and examination is no longer available under the new law.

Restoration

The new law relaxes the standard for restoration of patents which have lapsed through failure to pay a renewal fee. Instead of showing “reasonable care”, the applicant needs to show that the lapse was “unintentional”.

The deadline for restoration is unchanged at 30 months from the date the patent ceases (i.e., the missed renewal deadline).

Corresponding Applications

It is possible to request examination relying on the search report of one of the following:

The Singapore application must claim priority from the foreign application, or vice versa, or both applications must claim common priority from another application, in order for the foreign application to be “related by priority” to the Singapore application.

Questions?

If you have any questions on this guide or would like specific advice on patent prosecution strategy in the light of the changes to the law, please get in touch with us.