In August 2019, amendments were made to the Singapore Patents Act (Act) to allow for third party observations before grant and re-examination after grant. Changes have now been made to the Singapore Patent Rules to formalise the process and bring them in line with the amendments in the Act. These changes take effect on 1 October 2021.
Pre-grant Observation
After a patent application is published, third parties will be able to submit written observations to the Registrar on whether an invention is a patentable invention, with support for the observations. There is no prescribed timing for filing third party observations. However, these observations should be submitted before issuance of a Search and/or Examination Report or a Supplementary Examination Report.
Upon receipt of an observation by the Registrar, the applicant will be informed.
The Examiner is also obliged to take the observations into consideration when carrying out examination. If the observations are found to be relevant, objections will be raised in a Written Opinion to which the applicant can respond.
Post-grant Re-Examination
Third parties will be able to request re-examination of a patent on the grounds that:
- the invention is not a patentable invention;
- the specification lacks sufficiency of disclosure for it to be performed by a person skilled in the art;
- the specification discloses additional matter beyond that disclosed in the application as filed;
- an amendment has been made to the specification after grant which should not be allowable;
- an amendment has been made to the specification before grant which should not be allowable;
- a correction has been made to the specification which should not be allowable; and
- there is double patenting.
The request must be accompanied by a statement of reasons and any other relevant documents. If the re-examination request is accepted by the Registrar, the Examiner will re-examine the specification of the patent and issue a written opinion (if any). The applicant then has 3 months to respond. Failure to overcome all of the objections may lead to revocation of the patent.
The request for re-examination can be filed any time after grant of the patent, provided that there are no pending proceedings in which the validity of the patent may be put in issue.
Anonymity of Third Party
In both third party observations and re-examination, the anonymity of the third party can be maintained if these actions are performed through a registered patent agent.
Comment
The formalisation of third party observations and re-examination procedures is certainly a favourable move that makes the Singapore intellectual property landscape more transparent and robust.
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