The Intellectual Property Office of Singapore (IPOS) has recently introduced some amendments to the Singapore Patents Act and Rules that took effect from 1 October 2021. The amendments mainly focus on enhancing the Dispute Resolution Processes of Singapore's patents regime, as summarised below.
Pre-Grant Third Party Observation
The IPOS introduced a new pre-grant third party observation process that allows third parties to formally submit observations regarding the patentability of a patent application at any time between the publication of the application and the issuance of the relevant examination report.
Prior to the introduction of this process, there was no formal mechanism to submit third party observations and the Examiner was not obliged to consider the observations even if they were made. Following the formalisation of the process, the Examiner is now obliged to consider the third party observations, if any, during the examination of the application.
The third party observations can include any written state of the art information and any prior art documents that may be relevant for assessing the patentability of the patent application. The third party is not required to pay an official fee when submitting the third party observations. If the Examiner finds that a third party observation affects the assessment of the patentability of the patent application, the Examiner will issue a Written Opinion and the applicant may formally respond to the Written Opinion. Notably, a third party submitting the observation does not become a party to any proceedings of the patent application.
The rules require the Registrar to give the applicant written notice of any third party observations received. The third party observations that are considered for examination will also be published in the Patents Open Dossier. Accordingly, third party observations may be submitted via a registered patent agent in Singapore to maintain the confidentiality of the third party's identity.
Interestingly, while the new provisions generally allow observations "on whether an invention is a patentable invention", if the application is undergoing supplementary examination, the amended examination guidelines state that the Examiner is only obliged to consider observations which are based on one or more of the grounds for supplementary examination. In other words, in such a case, observations on novelty and inventive step would not be considered.
The IPOS re-introduced a post-grant re-examination process to allow any person (including the patentee) to request for re-examination of a granted patent any time after the grant of the patent, provided that there are no other proceedings in which the validity of the patent may be put in issue, whether in court or before the Registrar. Prior to the re-introduction of this process, post-grant examination was not available in recent iterations of the Patents Act.
The request for re-examination must state the reasons supporting the non-validity of the granted patent and be accompanied with relevant prior art documents where applicable. The patentee will be notified if there is a request for re-examination of the patent. Documents relevant to the re-examination process will also be published in the Patents Open Dossier. Accordingly, the request for post-grant re-examination may be submitted via a registered patent agent in Singapore to maintain the confidentiality of the requestor's identity.
If the Examiner finds that the alleged ground(s) for re-examination is made out, the Examiner will issue a Written Opinion and the patentee may formally respond to the Written Opinion by filing written submissions and/or amendments of the patent specification. The patentee may also request interview with the Examiner after receiving the Written Opinion. The requestor seeking re-examination does not become a party to the re-examination process, unless the requestor is the patentee, and would only be notified when a re-examination report is issued.
Interestingly, the new provisions require the Registrar to make an order for revoking the patent if the re-examination report contains one or more unresolved objections that have been raised in the Written Opinion. In other words, a third party can challenge the validity of the patent through the post-grant re-examination process without initiating revocation proceedings. Further, if the patent was granted under the supplementary examination route, the grounds for re-examination are not limited to only the grounds which were considered during the supplementary examination before patent issuance. Instead, in such a case, re-examination can be requested on the grounds for substantive examination, for example, the invention lacks novelty and/or inventive step light of prior art references.
On the other hand, the patentee can make use of post-grant re-examination to strengthen the patent by requesting post-grant amendments and re-examination, for example, in light of newly-discovered prior art. The patentee may also request a certificate of contested validity if the patent is subject to a re-examination request by a third party and found to be wholly or partially valid.
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