The Intellectual Property Office of Singapore (‘IPOS’) recently issued a circular announcing various updates to the Patents Formalities Manual (‘Manual’) pertaining to practices and processes. New programmes that have been recently introduced in patents have also been incorporated herein.
WIPO Standard ST.26 for sequence listing
In IPOS Digital Hub Practice Direction No. 2 of 2023 issued in November 2023, requires that any application for a patent with a date of filing on or after 1 July 2022, the sequence listing of the application must comply with the WIPO standard ST.26. The sequence listing must be presented as a separate part of the description of the application and in a manner compliant with the Practice Direction. This requirement has now been incorporated in the Manual.
Indication of drawing in abstract
If drawings are filed in an application, it is a requirement to indicate a specific figure or ‘no figure’ in the abstract. A Formalities Examination Adverse Report may be issued for non-compliance with this requirement.
Indication of the basis from the application as filed for amendments of specification
When making amendments or corrections to a specification, reasons and evidence in support of the amendments should be submitted. Furthermore, IPOS recommends indicating the basis for amendments to a specification with references to particular sections of the application as filed.
Clarification on the requirement for submission of a copy of non-patent literature during request for examination relying on an ISR issued by IPOS
IPOS has clarified that when filing a request for examination via Patents Form 12, a copy of any non-patent literature cited in the final search results or the international search report (‘ISR’), where IPOS is the international search authority that established the ISR, has to be submitted when requesting examination. Non-patent literature is not provided by IPOS during the international phase.
PPH pilot programme with the Saudi Authority for Intellectual Property (‘SAIP’)
IPOS has updated the Manual to include the new patent prosecution highway (‘PPH’) pilot programme with SAIP. The PPH programme commenced on 12 September 2023 for a period of two years.
Revision on procedures for requesting PPH after the submission of search and/or examination requests.
IPOS has now revised its procedures for requesting PPH after Patents Form 11 (Request for Search and Examination Report) or Patents Form 12 (Request for an Examination Report) is filed, but for which examination has not begun.
Applicants should make the request in writing to PT_acceleration@ipos.gov.sg, including the title ‘PPH acceleration requested’ in the subject header. The content of the email should include applicant’s intention to request PPH for the specified Singapore application number, the corresponding application number which the applicant wishes to rely on for the PPH request, and whether any amendments are required to conform the claims of the Singapore application to the allowable claims of the corresponding application.
If the request is allowed, the IPOS examiner will issue an invitation to amend, and applicants can respond to the invitation to amend within two months using Patents Form 13A. The response should include the necessary amendments together with the relevant PPH documents.
If no amendment is required, IPOS will invite the applicant to submit the relevant PPH documents.
Collaborative search and examination (‘CS&E’) pilot programme with the National Office of Intellectual Property of Vietnam (‘NOIP’)
IPOS has updated the Manual to include the CS&E pilot programme between IPOS and NOIP. This programme is a first in ASEAN, wherein applicants/inventors will enjoy benefits of the combined expertise of both patent offices for prior art search and examination results, and which should also expediate the process for obtaining granted patents in both countries.
The CS&E programme runs from 1 March 2023 to 28 February 2025, and the number of CS&E requests will be capped at 20 requests per year, with a further cap of two requests per month, and a restriction of two requests per entity per month.
Generally, applicants will have the first Office Action accelerated, wherein the CS&E report will be issued within ten months from the date of receipt of the request for CS&E.
To qualify for this programme, an application must be filed in Singapore or Vietnam, and should be a first filing with no priority claim and must not be a divisional application. Applications should also contain no more than 20 claims, with three or fewer independent claims.
Mode of submission for Composition of Offence
In the updated Manual, a person residing in Singapore may submit a request for composition of an offence via IPOS Digital Hub. Payment for the offence for the alleged offender should also be made via IPOS Digital Hub’s payment platform. Payment should be made within two months from the date of issue of the letter.
Revision on refund policy for withdrawn search and/or examination requests
If an applicant discovers a duplicate submission of patents forms with fees, the applicant can write in via eCommunications to request a withdrawal of the duplicate request, and submit a request for a refund for the fees. For fees paid on filing a request for search and/or examination, a refund will only be allowed if the examiner has not started the examination. All requests for refunds will be considered on a case-by-case basis, and IPOS will notify the applicant on the outcome of the refund.
Conclusion
The updated Manual aligns the revised procedures with the new programmes and features of the electronic filing platform; provides clarity and streamlines workflow for enhanced efficiency in patent practice in Singapore.
A version of this article was first published in the membership journal of the Chartered Institute of Patent Attorneys – see more at http://www.cipa.org.uk/.