Search and Examination procedures in Singapore were amended in accordance with the changes in the Singapore Patents Act in relation to patent applications with filing dates after 1 July 2004. For PCT National Phase entry applications into Singapore, the effective filing date is the international filing date. Therefore, the majority of PCT National Phase entry applications now fall under the new law.
With regard to a PCT application having an international filing date after 1 July 2004, the Search and Examination options available to the Singapore National Phase entry application (either Chapter I or II) are as follows:
- request combined search and examination;
- request examination based on a Search Report received on any corresponding international or national application;
- file prescribed information of any corresponding national application, such as a copy of a patent granted from the corresponding national application; and
- file prescribed information of a corresponding PCT application, setting out the final results of the search and examination as to substance, such as a copy of the International Preliminary Report on Patentability (IPRP) under Chapter I or II.
The deadline for requesting examination for Options 1 and 2 is 21 months from the priority date of the PCT application while the deadline for Options 3 and 4 is 42 months from the priority date of the PCT application.
For a Singapore National Phase entry application with an international filing date after 1 July 2004, the applicant may simply select Option 4 above in view of cost considerations and submit the International Preliminary Report on Patentability (IPRP) issued during the international phase.
However, if there are any outstanding patentability issues in the IPRP which affect the validity of the patent, it may be in the interest of the applicant to have the Singapore application examined locally to address the outstanding issues. This may result in greater enforceability of the granted patent.
The changes to the Singapore Patents Act for application filed after 1 July 2004 permit applicants to lodge a block extension application to extend the various examination and prosecution deadlines by 18 months. This block extension is especially useful and provides flexibility for the handling of a Singapore National Phase entry application. For example, after requesting a block extension under the new law the deadline to request for search and examination based on the above Options 1 and 2 would be 39 months from the priority date of the PCT application rather than 21 months.
Furthermore, the new Singapore Patents Act allows applicants to defer their decision on whether or not to request a block extension until 39 months from the priority date. This allows applicants ample time to decide whether or not the Singapore application should be locally examined before grant. The block extension also delays the deadline for paying the grant fee for the Singapore application from 42 months to 60 months from the priority date of the PCT application.
The flexibility and user-friendliness of the search and examination procedures under the new law is even more apparent when contrasted against the search and examination procedures for applications filed before 1 July 2004.
For applications filed before 1 July 2004, a Singapore National Phase entry application (under Chapter I) had up to 32 months from its priority date to request for local examination based on its International Search Report (ISR). Notwithstanding the relatively short period of 2 months to file the examination request (assuming that the Singapore National Phase was entered by the 30-month deadline), the applicant could only request for an automatic extension of up to 3 months, if the ISR was not issued by the 32-month deadline. Any further extension was at the discretion of the Singapore Registry of Patents, and at significantly increased cost.
In view of the relatively limited options under the old regime, the amended search and examination options under the new Singapore law provide more options and improved flexibility for applicants to handle their patent applications and portfolios more effectively.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.