Following a series of public consultation and discussions, the Intellectual Property Office of Singapore (IPOS) has confirmed that they will launch a formal procedure for the submission of “third party observations” under which members of the public will be able notify IPOS of information that might be of relevance to the patentability of an invention during the examination stage of a pending patent application. Further, IPOS has also launched a further scheme where members of the public may request for the re-examination of a patent that has already been granted.
Third party observations
The submission for the third party observations must be done through IPOS’ online platform at https://ip2sg.ipos.gov.sg/ (the IP2SG platform). Any interested party must log in through their CorpPass or SingPass (i.e., the standard digital identity for individuals/businesses respectively to access any Singapore government agency portal). The interested party will then be able to make their submission through the IP2SG platform accordingly. In their submission, the interested party may state any information that might be of relevance to the patentability of an invention (e.g. with regard to the novelty or inventive step of the invention). The submission is free of charge. In the event that the interested party wishes to remain anonymous, they may engage the services of a patent agent, who can perform this submission on their behalf.
Re-examination option for registered patents
Further, IPOS will introduce a re-examination option for patents that have already been granted. The patentee or any third party may submit a request for re-examination of a patent at any time after grant of the patent. However, this option is limited to instances where there are no other proceedings in which the validity of the patent is being challenged before the Registrar of Patents or the courts.
Such a re-examination procedure may be commenced by the patentee itself in the event that it would like to re-examine the validity of its own patent, or if it would like to amend its patent during the course of the re-examination procedure.
In the alternative, a third party, or a patent agent on his behalf, may also commence this re-examination procedure against a patent which has already been granted. As re-examination is an ex parte process, the third party filing the request or its agent will not be involved in the re-examination procedure after the re-examination request is filed. Instead, once the request is accepted by the Registrar, a senior examiner would be assigned to the matter to evaluate the objections and the patentee will be notified of such a re-examination request. Thereafter, the patentee will be invited to file a response to the re-examination request by way of making written submissions to the Registrar. The Registrar may also issue a written opinion to the patentee.
Finally, once all the submissions have been completed, a re-examination report is issued with further information on next steps that are required by the patentee, if any.
Previously, in the event that a patent is potentially invalid, the only option to remedy the same was to engage in a lengthy and expensive revocation process. It is anticipated that the amendments above would be a welcome change to patent proprietors and the general public alike.
By: Denise Mirandah & Ang Chuan Heng (Shawn)
This article was first published in the IP Analysts column of Asia IP.