Established in 1887, Spruson & Ferguson is a leading intellectual property (IP) service provider in the Asia-Pacific region, with offices in Australia, China, Indonesia, Malaysia, Philippines, Singapore, and Thailand. They offer high-quality services to clients and are part of the IPH Limited group, which includes various professional service firms operating under different brands in multiple jurisdictions. Spruson & Ferguson is an incorporated entity owned by IPH Limited, with a strong presence in the industry.
Up until 1 January 2020, the Foreign Route was an available patent
prosecution option of a Singapore application having a local or
international filing date prior to 1 January 2020, or of a
Singapore divisional application filed prior to 1 January 2020. As
the deadline for electing the Foreign Route is 54 months from the
earliest priority date of a convention application or a PCT
national phase entry application, or 54 months from the actual date
of filing of a divisional application, there are therefore
applications that are currently pending that still have the Foreign
Route available as a prosecution option, at least up until 30 June
2024.
As discussed in a previous news update, there are various
challenges when employing the Foreign Route. One such challenge
commonly encountered in pharmaceutical and life science
applications concerns claims directed to methods of treatment
(MOT), which are excluded from patentability in Singapore(i.e.
point (5) in the previous news update). Although such MOT
claims may be amended to the Swiss-style second medical use format
to overcome the unpatentable subject matter issue, such an
amendment must also meet the "claim relatedness"
requirement of the Foreign Route (i.e. the first point (2) in the
previous news update). The following are some
guidelines clarifying when such MOT claims present in the foreign
application/patent used as a basis for grant under the Foreign
Route may be amended to the Swiss-style second medical use format
and still meet the "claim relatedness" requirement, and
when such amendment is not possible:
Claims of foreign
application/patent
Can the foreign application / patent be used as basis
under the Foreign Route?
Notes
Scenario 1
When all of the claims in the foreign
application/patent (e.g. Australia or United States of America) are
MOT claims
No
The MOT claims are unpatentable subject matter.
The MOT claims cannot be amended to their Swiss-style second
medical use equivalents, which are construed as "purpose
limited process" claims that define a method of preparing a
pharmaceutical which is intended for a particular treatment, and
are not considered to be related to the MOT claims which include
treatment steps.
Therefore, the "claim relatedness" requirement would
not be met.
Scenario 2
When all of the claims in the foreign
application/patent (e.g. EP) are "purpose limited
product" claims, including:
(i) "compound X for use as a medicament"
(ii) "compound X for use in therapy"
(iii) "compound X for use in the treatment of disease
Y"
No
The claims in the foreign application/patent (e.g. the EP
application/patent) were examined (and allowed/granted) as second
medical use claims - where the claims are only anticipated when the
use of compound X for the specific purpose of treating disease Y is
disclosed in the prior art.In contrast, the identical claims in the
Singapore application are construed differently as first medical
use claims during examination - where the claims are anticipated by
any prior medical use of compound X.
Therefore, employing the Foreign Route based on claims of such
a foreign application/patent is not allowed, regardless of whether
compound X is novel or not.
The claims also cannot be amended to the Swiss-style second
medical use equivalents which are construed as "purpose
limited process" claims, and would not be considered related
to the "purpose limited product" claims.
Therefore, the "claim relatedness" requirement would
not be met.
Scenario 3
When a claim to a compound X per se is present, in
addition to MOT claims (e.g. from corresponding AU/US
application/patent) or "purpose limited product" claims
(e.g. from corresponding EP application/patent)
Yes
The MOT claims or "purpose limited product" claims
directed to compound X may be amended to their Swiss-style second
medical use equivalents because the amended claims would be
considered to be "related" to the compound X per
se claim.
Therefore, the "claim relatedness" requirement would
be met.
However, the Swiss-style claims must nevertheless also fulfil
the requirements of "added matter" (i.e. point (7) of the
previous news update) and support (i.e. the
first point (1) of the previous news update), since both are
grounds for examination under the Foreign Route.
In view of the above, if an Applicant intends to employ the
Foreign Route, it is important to ensure that the foreign
application/patent it intends to use for the Foreign Route has a
compound per se claim and/or claims already in the
Swiss-style second medical use format present. Otherwise, if the
claims of the foreign application/patent fall into Scenario
1 or Scenario 2 above, then it would not be possible
to use that foreign application/patent for the Foreign Route in
Singapore.
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.
