On 14 February 2014, legislative changes to the Singapore Patents Act and Patent Rules came into force and will now apply to any applications filed in Singapore after 14 February 2014. The changes bring the Singapore patent system more closely in line with patent office practices in other major jurisdictions, such as the Europe, USA, Japan and Australia and are intended to strengthen Singapore's patent system and assist in positioning Singapore as an Intellectual Property (IP) hub in Asia.
The key changes to the Singapore patent system are as follows:
- a shift from a 'self-assessment' to a 'positive grant' patent system;
- liberalisation of the patent agent regime allowing foreign patent agents to register in Singapore and undertake offshore patent agency work; and
- integration and streamlining of the IT systems and procedures of the different Registries at the Intellectual Property Office of Singapore (IPOS).
Perhaps of greatest importance to Australian investors and businesses with an interest in obtaining patent rights in Singapore is the move away from a "self-assessment system" to a "positive grant system", and the impact that this will have on examination practice and the robustness of any patents issued.
Under the previous Singaporean "self-assessment system", the decision as to whether or not a patent application proceeded to grant rested with the applicant and it was the responsibility of the applicant to ensure that any claims issued were valid. This meant that patent applications could proceed to grant irrespective of whether the application satisfied patentability requirements following substantive examination by IPOS, provided that the formal filing requirements were met and that the appropriate fees paid. Notwithstanding this, any patents issued under the "self-assessment system" were, and may still be, vulnerable to third party attack.
Under the new "positive grant system", standard patent applications will be examined by IPOS with the decision to grant a patent residing with the Registrar only after an application has been thoroughly searched, examined and is deemed to satisfy the patentability requirements.
Examination procedure under "positive grant system"
The main examination routes available under the previous regime have been essentially retained under the "positive grant system", with the exception that there is no "slow" or "fast" track prosecution available under the new regime. Accordingly, examination of Singapore patent applications may now occur by conventional substantive examination through IPOS, or supplementary examination.
For Singapore national phase applications undergoing conventional substantive examination through IPOS, a request for examination must be filed within 36 months of the earliest priority date of the application. Upon receiving a request for examination, IPOS will perform searches of the prior art and conduct substantive examination in respect of each of the claims of the application to determine patentability.
During examination, the examiner will issue a first written opinion, setting a deadline of 5 months within which to file a response to address any objections. A further written opinion may issue at the examiner's discretion following consideration of the initial response, setting a further period of 5 months within which the applicant may file a response.
An Examination Report will issue 18 months after the date of the first written opinion, indicating that the claims are either: 1) deemed to be in condition for allowance, in which case a Notice of Eligibility will be issued with the Examination Report, or 2) rejected in which case a Notice of Intention to Refuse the application will be issued with the Examination Report as a precursor to a Notice of Refusal.
In the event of an adverse Examination Report and issuance of a Notice of Intention to Refuse an application, the applicant may request a review of the adverse report by a different examiner provided that a request is filed within two months of receiving the Notice of Intention to Refuse the application. At this time, the applicant may provide written submissions and/or enter amendments to the claims to address any outstanding objections.
IPOS will then review the submissions and the Registrar will subsequently issue an Examination Review Report together with (i) a Notice of Eligibility, or (ii) a Notice of Refusal, as the case may be. Provided that a Notice of Eligibility is issued, the applicant will have two months within which to request grant and pay the grant fee. If, on the other hand, a Notice of Refusal is issued, the applicant may file a divisional application to maintain their right to the subject matter of the refused application provided that this occurs within two months of receipt of the Notice of Refusal, at which time the application will be irrevocably refused.
Supplementary examination (which is akin to modified examination under the "self-assessment system") is also available for applicants wishing to rely on: (i) a PCT application with a clear International Preliminary Report on Patentability (IPRP), or (ii) a corresponding patent application which has proceeded to acceptance/allowance or grant in a jurisdiction recognised by IPOS i.e., Australia, Canada, the European Patent Office (only if filed in English), PCT, Japan, New Zealand, Republic of Korea, the United Kingdom or the United States of America.
For Singapore national phase applications undergoing Supplementary examination through IPOS, a request for examination must be filed within 54 months of the priority date of the application, after which time IPOS will conduct substantive examination to ensure the application conforms to Singaporean patent practice. While there is no express requirement to conform the claims of the Singapore application to those allowed in the corresponding application, the Singapore claims proceeding to grant must be "related" to those of the corresponding allowed claims relied upon, and must conform to Singaporean law.
In the event that the examiner raises any objection(s), a Notice of Intention to Refuse the Application will be issued outlining the nature of the objection(s), after which time the applicant will be provided an opportunity to resolve the objection(s).
Once IPOS is satisfied that the claims conform to Singaporean patent laws, the Registrar will issue a Notice of Eligibility setting a deadline of two months within which to request grant and pay the requisite grant fee.
In many respects, the shift to a "positive grant system" brings the Singapore patent system more closely in line with patent office practices in other major jurisdictions, such as the Europe, USA, Japan and Australia, and should be viewed as a positive step towards strengthening Singapore's patent system and subsequent patent rights which issue from IPOS.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.