Before 23 February 1995, patent protection in Singapore was obtained by way of re-registration of a UK patent grant. Any party desiring protection in Singapore had to first secure a UK grant, which could arise out of:
- a national application at the UK Patent Office;
- a regional application at the European Patent Office; or
- an international application under the Patent Co-operation Treaty ("PCT") which subsequently proceeded via the UK national phase or the European regional phase.
With effect from 23 February 1995, Singapore implemented a new independent patent system, which allows for:
- national filings in Singapore, with or without priority date claims from earlier applications filed in Paris Convention countries;
- filing of PCT international applications in Singapore; and
- national phase entry of PCT applications designating Singapore. It is also possible to elect Singapore under Chapter II of the PCT.
There were transitional provisions allowing:
- up to 23 February 1997, the re-registration process to be chosen provided the UK grant was issued between 23 February 1992 and 23 February 1996 (both dates inclusive); and
- up to 23 February 1996, the filing of an application in Singapore on the basis of an earlier filed:
(b)a European application designating GB,
(c)a PCT application designating EP(GB), or
(d)a PCT application designating GB,
which was pending on 23 February 1995. This Singapore application would be accorded a filing date and a right of priority which had been accorded in the UK.
In general, an invention is patentable if it is new, involves an inventive step and is capable of industrial application.
However, an invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body will not be taken to be capable of industrial application. But this does not prevent a product consisting of a substance or composition being treated as capable of industrial application merely because it is invented for use in any such method.
Further, in the case of an invention consisting of a substance or composition for use in a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body, the fact that the substance or composition forms part of the state of the art does not prevent the invention from being taken to be new if the use of the substance or composition in any such method does not form part of the state of the art.
PURSUING A NATIONAL PATENT APPLICATION TOWARDS GRANT
After the filing of a Singapore national application, the application will be subject to an examination for compliance with formal requirements. Where an application complies with all the formal requirements, the applicant may proceed by various routes to secure the grant of the patent:
(1)SEARCH FOLLOWED BY EXAMINATION.
Within 16 months from the earliest declared priority date (or from the filing date if there is no declared priority date), file a Request for a Search Report. Thereafter, within 22 months from the earliest declared priority date (or from the filing date if there is no declared priority date), file a Request for an Examination Report.
(2)COMBINED SEARCH AND EXAMINATION.
Within 22 months from the earliest declared priority date (or from the filing date if there is no declared priority date), file a Request for Search and Examination Report.
(3)PRESCRIBED DETAILS AND PRESCRIBED INFORMATION.
Within 16 months from the earliest declared priority date (or from the filing date if there is no declared priority date), file the "prescribed details" of all "corresponding applications" filed with the patent offices of USA, Canada, Australia, New Zealand, UK, the EPO (applications in English only) or PCT applications which did not designate Singapore. Thereafter, within 22 months from the earliest declared priority date (or from the filing date if there is no declared priority date), file the "prescribed information" of one of the "corresponding applications". The "prescribed information" is either a certified copy of the patent grant or other documents, to the satisfaction of the Registrar, setting out the final results of the search and examination as to substance; and the IPC symbol(s) which have been or which in the opinion of the applicant should be allocated to the application. If any of the documents are not in English, verified English translations should accompany.
If the "prescribed information" is not available, the applicant can file a Request for an Examination Report, which must be accompanied by certain required documents relating to one of the "corresponding applications".
The "prescribed details-prescribed information" option benefits the applicant in that where the Request for a Search Report is not filed, the official fee is not required. Further, if the Request for an Examination Report is subsequently not filed, the official fee is also not required.
It should also be noted that "corresponding application" is particularly defined in the Patents Act. The applicant should pay particular attention to its definition. Further, a failure to furnish the "prescribed details" of all the "corresponding applications" leaves a patent grant open to revocation by a third party. An applicant should therefore exercise extreme care when proceeding by this route to grant.
In deciding whether to proceed by way of the "prescribed details-prescribed information" route, the applicant should give due consideration to the rather complex procedures, the possibility of revocation in the case of failure to provide the "prescribed details" of all the "corresponding applications" and whether the "corresponding applications" are proceeding fast enough for the deadlines to be met.
The routes available for an application filed under the transitional provisions are generally similar, but with some modifications.
SEARCH AND EXAMINATION OF A PATENT APPLICATION
With respect to the search and substantive examination of patent applications, the prescribed "Examiners" under the Singapore Patents Rules are the Australian Patent Office and the Austrian Patent Office.
The "minimum documentation" prescribed for search and examination of a Singapore application are:
(a)patents issued by or registered in Singapore,
(b)patent applications published in Singapore,
(c)patents issued by or patent applications published in Australia, France, the former Reichspatentamt of Germany and the Federal Republic of Germany, Japan (excluding those where no abstracts in the English language are available), Switzerland (in French and German languages only), the UK and the USA, and
(d)published PCT applications
if issued or published at a date not more than 50 years before the declared priority date (or from the filing date if there is no declared priority date).
A Written Opinion may be issued by the Examiner, to which the applicant may respond with written arguments and/or amendments to the application. This may be followed by a further Written Opinion to which the applicant may again respond with written arguments and/or amendments.
After the examination of the application has been completed, the Examiner will issue the Search and Examination Report or the Examination Report. In any event, the said Report will be issued by 39 months from the earliest declared priority date (or from the filing date if there is no declared priority date).
PURSUING A NATIONAL PHASE PCT APPLICATION TOWARDS GRANT
To obtain patent protection in Singapore, an applicant may have chosen to proceed by filing an international (PCT) application designating Singapore among other territories. The PCT application would have to be pursued in accordance with the PCT Regulations until the National Phase of the application begins. The deadline to enter National Phase in Singapore is 20 months or 30 months from the declared priority date (or from the filing date if there is no declared priority date), depending on whether Singapore was elected for purposes of International Preliminary Examination under Chapter II of the PCT at the appropriate time.
The grant fee is to be paid within 42 months from the declared priority date (or from the filing date if there is no declared priority date). The Registrar will issue a patent grant where the application complies with all the formal requirements, the grant fee is paid and one of the following has been received by the Registrar:
(a)the Search and Examination Report,
(b)the document(s) setting out the final results of the search and examination as to substance of a corresponding application (where this document is furnished as the "prescribed information"), or
(c)the International Preliminary Examination Report (where Singapore was elected under Chapter II of the PCT).
An unusual feature of the Singapore patent system is that a grant may be issued regardless of whether the above documents (a) to (c) are favourable. The applicant should therefore ensure that the application is worded (and amended if necessary) to give proper protection. It would be up to aggrieved parties to take up revocation proceedings to attack the validity of a patent grant.
TERM OF A PATENT GRANT
A patent granted in Singapore takes effect on the date on which notice of its grant is published in the Patents Journal and, subject to the payment of renewal fees, continues in force for 20 years from the date of filing of the application.
Patents are renewable annually as from the expiration of the 4th year from the filing date. However, renewal fees (including any renewal fees due in respect of preceding years) are payable only after the patent has been granted.
For patents issued from applications under the transitional provisions, the renewal procedures are similar to that in the preceding paragraph, save that the renewal date is calculated from the UK filing date as the Singapore application is accorded the UK filing date.
For patents issued under the re-registration process, the renewal date is calculated from the UK filing date. Such patents are renewable annually as from the expiration of the 4th year from the UK filing date and after the date of issue of the Singapore Certificate of Registration, without the requirement to pay renewal fees in respect of preceding years.
There is a 6-month grace period after the expiry date during which a patent may be renewed subject to payment of a late fee. A patent which has ceased to have effect by reason of failure to pay renewal fee may be restored at the Registrar's discretion provided the application for restoration is filed within 30 months from the expiry date.
RIGHTS CONFERRED BY A PATENT GRANT
A patent grant confers upon the proprietor the right to the exclusive use of the patent. This right may be infringed by one who, without his consent, makes, disposes of, offers to dispose of, uses or imports the product which is the subject of the patent, or uses the patented process or offers it for use in Singapore (with knowledge or imputed knowledge of infringement), or disposes of, offers to dispose of, uses or imports any product which is obtained directly by means of the patented process. However, private and non-commercial uses and uses for experimental purposes do not constitute infringements of patent rights. In the case of an infringement, the proprietor may seek remedies in the form of interim or perpetual injunctions, damages or account of profits, delivery up or destruction of the infringing products or article in which that product is inextricably comprised and costs of the action. The proprietor may also seek a Court Order for the delivery up or destruction of any material or implement the predominant use of which has been in the creation of the infringing product.
Because damages or an account of profits will not be ordered in the case where the infringer was, at the date of the infringement, not aware and had no means of supposing that the patent existed, it would be prudent to indicate clearly that the product or process is subject to valid patent protection, with the patent number accompanying such indication.
This article is intended to provide an overview of and a general guide to the subject matter. It should NOT be treated as legal advice. Specific legal advice should be sought regarding each particular case on its own facts.