Singapore: Patent Protection In Singapore

Last Updated: 3 June 1997
INTRODUCTION

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.

TRANSITIONAL PROVISIONS

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:

(a)UK application,
(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.

PATENTABLE INVENTIONS

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.

PATENT GRANT

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert
Email Address
Company Name
Password
Confirm Password
Mondaq Topics -- Select your Interests
Accounting and Audit
Anti-trust/Competition Law
Consumer Protection
Corporate/Commercial Law
Criminal Law
Employment and HR
Energy and Natural Resources
Environment
Family and Matrimonial
Finance and Banking
Food, Drugs, Healthcare, Life Sciences
Government, Public Sector
Immigration
Insolvency/Bankruptcy, Re-structuring
Insurance
Intellectual Property
International Law
Litigation, Mediation & Arbitration
Media, Telecoms, IT, Entertainment
Privacy
Real Estate and Construction
Strategy
Tax
Transport
Wealth Management
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.