The closure of the "foreign route" of patent examination, where substantive examination results from selected foreign patent offices are generally admitted, has been taking place in Singapore in stages since 1 January 2020. For direct national applications (e.g. first-filings, divisional or convention-type applications), the foreign route had already been closed from 1 January 2020. The next stage involves PCT national phase applications having a priority claim and an international filing date which was on or after 1 January 2020, that is, a 30-month filing deadline on or after 1 July 2021. Statistically, such PCT national phase applications are expected to form the bulk of all patent applications filed in Singapore. The last (and relatively small) group of applications to be affected by the closure are PCT national phase applications without a priority claim (i.e. based on PCT first-filings lodged on or after 1 January 2020).
With the closure of the foreign route, there are fewer examination options to choose from and one common set of deadlines, hence less confusion to foreign applicants and practitioners. On the other hand, decision needs to be made faster as to which one of the two main examination options, combined search and examination (i.e. the "local route") or examination based on a suitable foreign search report (i.e. the "mixed route"), would be most appropriate for a particular application. The examination request deadline, at 36 months from the priority date or first-filing date, as applicable, is relatively soon after national phase entry, the most common mode of filing in Singapore. While the local route can be elected in every case, it comes with a higher official fee, which is nearly USD500 more than the mixed route.
To make use of the PCT search results to the extent possible, some general recommendations based on the contents of the International Preliminary Report on Patentability (or Written Opinion of the International Searching Authority if a Demand was not filed) are provided below:
- If the International Preliminary Report on Patentability (IPRP) indicates that all claims have been searched and are valid over the prior art, the applicant may consider requesting examination based on the International Search Report (ISR).
- If the IPRP indicates that all claims have been searched but there are outstanding validity or clarity objections, and the references cited in the ISR include only English documents or have English equivalents, the applicant may consider requesting examination based on the ISR.
- If the IPRP indicates that all claims have been searched but there are outstanding validity or clarity objections, and the references cited in the ISR include non-English documents and do not have English equivalents, the applicant may consider requesting combined search and examination. This can pre-empt the possibility of being requested to prepare translation of such non-English documents by the Examiner.
- If the IPRP indicates that there are unity objections and all claims have been searched, the applicant may consider requesting examination based on the ISR. On the other hand, if the IPRP indicates that there are unity objections and some of the claims have not been searched, the applicant may consider requesting combined search and examination. In either case, prior to filing the request, appropriate amendments and/or arguments may be submitted to address the unity objections, and the claims should be reviewed to ensure that the subject matter of most interest is recited in the first group of claims. Should unity objections still be raised, the first group of claims will be examined and election of another group of claims is not possible.
- If the IPRP indicates that all claims have not been searched, the applicant may consider requesting combined search and examination. This should provide a further opportunity for having all claims searched and examined.
It should be noted that claims directed to methods of treatment of the human/animal body are considered patent-ineligible in Singapore. Such claims should be deleted or amended to first/second medical use claims, as appropriate, prior to proceeding with one of the above options.
To accelerate the examination process, the applicant can consider requesting PPH participation, if practicable, by leveraging on the extensive bilateral and multilateral PPH agreements that Singapore has with partner patent offices. For example, PCT-PPH can be used if the IPRP is favourable and the International Searching Authority is a participating office of the GPPH pilot program. Based on available statistics, Singapore applications proceeding under PPH on average have a pendency from PPH request to first office action of less than 6 months, a grant rate of over 90%, and a first action allowance rate between 60 and 70%.
Another feature of the substantive examination system in Singapore is a relatively compact prosecution timeline, whereby the examination process is to be concluded within 18 months from the date of the first office action. Practically, the applicant may not get more than two office actions before the Examiner completes examination process by establishing the examination report. While a review of a mixed/negative examination report (i.e. a re-examination) is available, significant additional fees are payable. To avoid incurring such additional costs and procedures, the applicant may consider the option of an Examiner interview if a second office action issues, before filing the response. The interview can be more productive if an agenda and any proposed amendments are provided to the Examiner for consideration beforehand.
In contrast to the later deadline and light touch associated with the foreign route, it is expected that prosecution of Singapore patent applications would require more a more hands-on approach going forward, to manage both timeline pressure and substantive issues. This, in turn, would require the Singapore patent attorney to be an expert not only in substantive aspects of Singapore patent law but also in the relevant technology. The Singapore patent attorney must also be prepared to provide a response strategy without the benefit of a prior examination result in a corresponding application.
With a technical depth provided by over 30 technically-qualified patent professionals and know-how accumulated over many years of directly handling substantive examination, our team at Spruson & Ferguson (Asia) is well-equipped to tackle any substantive examination issues that may arise.
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.