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Amended Singapore Patent Law in a Nutshell

The Intellectual Property Office of Singapore (IPOS) has announced that the amendments to the Singapore Patents Act and Rules will come into force on 14 February 2014. This new system will affect all new Singapore patent applications, new Singapore national phase applications as well as new divisional applications filed on or after 14 February 2014.

The amendments will introduce several significant changes to both the requirements and procedures for obtaining a patent in Singapore, which include the change from a ‘self-assessment’ system to a ‘positive-grant’ system. Please find below a table highlighting the new changes to the system for your easy reference.

 

Current Patent System

New Patent System

1. Self-Assessment System

Patent may be granted even if the claimed invention does not meet the patentability requirements as long as the claims have been searched and examined before and there is no lack of unity objection.

The decision to proceed to grant and obtain a granted patent lies with the patentee.

1. Positive Grant System

Only applications that meet the patentability requirements can proceed to grant.

Applications that do not meet the patentability requirements will be refused.

The decision to allow patentees to proceed to grant and obtain a granted patent lies with the Examiner.

2. Two-Track Prosecution System

Patentee has the option to proceed via fast track (default) or slow track (with a request for block extension of time)

When the block extension is requested, relevant deadlines (i.e. to satisfy the examination requirements and to pay the grant fee) will be extended by 18 months.

Two deadlines for requesting search and examination i.e. 21 months and 39 months (with block extension) from priority date.

Two deadlines for satisfying examination requirements and paying the grant fee i.e. 42 months and 60 months (with block extension) from priority date.

2. Single Track Prosecution System

The option to request for a block extension of time is no longer available.

A simplified prosecution system whereby local Search and Examination deadline is fixed at 36 months from the priority date while the deadline to request for supplementary examination is at 54 months from the priority date.

Supplementary examination must be requested if the patentee wishes to rely on a corresponding granted/allowed patent or final examination results from the prescribed patent offices.

The Examiner will issue a Notice of Eligibility indicating the patentability requirements are satisfied and patentee may proceed to grant.

The Examiner will issue a Notice of Intention to Refuse indicating the patentability requirements are not satisfied and grant will be refused.

Patentee has the option to request for Examination Review to review the negative examination report or supplementary examination report within 2 months from the receipt of the Notice of Intention to Refuse.

Patentee can provide a written submission including arguments and/or amendments to overcome the unresolved objections.

If all the objections are resolved, a Notice of Eligibility will be issued. Otherwise, a Notice of Refusal will be issued and the application will be refused.

3. Voluntary Amendments

Voluntary amendments to the application can be made at any time before patent is granted.

Amendments are not allowed after search/examination is requested and before issuance of an office action.

3. Voluntary Amendments (Restricted)

Voluntary amendments are only allowed before requesting substantive or supplementary examination.

Further amendments can only be made in response to an office action from the Examiner.

4. Request for Extension of time (Short)

Patentee may request for a one-time extension of time for up to 3 months to extend certain deadlines.

A further discretionary extension may be requested with a valid reason.

4. Request for extension of time (Long)

Patentee may request for an extension of time for up to 6 months or 18 months to extend certain deadlines.

A further discretionary extension may be requested with a valid reason.

5. Post-Grant Search & Examination

Patentee may request for a post grant search and examination to consider new prior arts not previously considered in the search and examination report.

5. No Post-Grant Search and Examination

Post-grant search and examination procedure is no longer allowed after the patent is granted.

6. Patent Restoration (Strict)

A lapsed patent may be restored within 30 months from the date on which the patent ceased to have effect.

Patentee must provide valid reasons that meet the strict “reasonable care” standard.

6. Patent Restoration

A lapsed patent may be restored within 18 months from the date on which the patent ceased to have effect.

Patentee must provide valid reasons that meet the “unintentional” standard.

7. Surrendering of Patent

Patentee may surrender his patent by filing a request which will be published for third party opposition. The patent is deemed surrendered if no opposition if filed within the prescribed time period.

7. Surrendering of Patent

Patentee may only surrender his patent after certifying that each person having a right in the patent has been given at least 3 months’ notice of the surrender and has no objection to the surrender.

Positive grant system in more detail

Under the positive grant system, only applications that meet the patentability requirements can proceed to grant, i.e. only if a Notice of Eligibility is issued. The Notice of Eligibility is issued if the claims of the application are found to be novel, inventive and industrially applicable after ‘Substantive Examination’ or ‘Supplementary Examination’.

On the other hand, if applications do not meet the patentability requirements, a Notice of Intention to Refuse will be issued. The applicant would then have the option to request an ‘Examination Review’ or just allow the application to be finally refused.

‘Substantive Examination’ and ‘Supplementary Examination’ will be discussed further below:

Substantive Examination

The applicant may file a request for local substantive examination within 36 months from the filing date or priority date, whichever applies. The substantive examination is performed based on either (i) a local search report issued by Singapore (only if a request for search is filed within 13 months from the filing date or priority date); or (ii) a foreign search report issued for a corresponding foreign application. Alternatively, the applicant may request a combined search and examination within the 36-month deadline.

If the Examiner has objections on e.g. the patentability of the claims, clarity of the specification, support of the claims, additional matter, and/or double patenting, a Written Opinion will be issued detailing each objection. A response to the Written Opinion must be filed within 5 months from issuance of each Written Opinion. The substantive examination process must be completed within 18 months from the issuance date of the first Written Opinion.

Upon completion of the substantive examination process, the Examiner will issue a Substantive Examination Report along with a Notice of Eligibility or a Notice of Intention to Refuse. For the latter, the applicant would then have the option to file a request for an Examination Review or allow the application to be finally refused.

Supplementary Examination

Apart from the Substantive Examination option discussed above, the applicant may opt to obtain a Singapore patent on the basis of foreign examination results issued for a corresponding foreign application, by filing a request for Supplementary Examination within 54 months from the filing date or priority date, whichever applies. Required documents for filing the request include (i) a copy of either the corresponding foreign patent or the final examination results with allowed claims referred to in the results; and (ii) a table setting out how each Singapore claim is related to the allowed claims of corresponding application.

If the Examiner has objections on e.g. the support of the claims, additional matter, and/or double patenting, a Written Opinion will be issued detailing each objection. A response to the Written Opinion must be filed within 3 months from issuance of each Written Opinion. The supplementary examination process must be completed within 6 months from the issuance date of the first Written Opinion.

Upon completion of the supplementary examination process, the Examiner will issue a Supplementary Examination Report along with a Notice of Eligibility or a Notice of Intention to Refuse. For the latter, the applicant would then have the option to file a request for an Examination Review or allow the application to be finally refused.

We hope that the above information is helpful to you. Meanwhile, if you have any question on any of the above information, please do not hesitate to contact us.

 

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