Jurisdiction - Singapore
Reports and Analysis
Singapore – Proposed Changes To The Patents Act.

26 June, 2012

 

Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

 

INTRODUCTION

 
The Patents (Amendment) Bill (“Bill”) was introduced in Parliament on 14 May 2012. Under the Bill, changes to patent law in Singapore have been proposed but have not yet been passed. The key changes are discussed in this article.
 
A SHIFT TO A POSITIVE GRANT SYSTEM
 
The proposed changes in the Bill would introduce a shift from the present self-assessment system to a positive grant system.
 
The current self-assessment system
 
Sections 28 to 34 of the Patents Act currently set out the procedure for the grant of a patent. Applicants may choose to apply for a patent and proceed by way of local, foreign or mixed search and examination routes.
 
The decision regarding which route to take will depend on whether or not the applicant has corresponding national patent applications submitted to overseas patent offices or corresponding international applications made through the Patent Cooperation Treaty (“PCT”) filing system (“Corresponding Applications”).
 
Under the current self-assessment system, a patent can be granted even when independent examination by the Intellectual Property Office of Singapore (“IPOS”) results in a finding of lack of novelty, inventive step and/or lack of industrial applicability.
 
The system in place is called a “self-assessment” system for the reason that it is the applicant and not the patent office that is responsible for ensuring that novelty, inventive step and industrial applicability are present.
 
This self-assessment system was introduced in Singapore in 1995 as a way to encourage patent registration.
 
Now that there is greater recognition for the need to register patents, IPOS is using this opportunity to bring Singapore in line with international standards by moving towards a positive grant system. 
 
A positive grant system
 
Under the new positive grant system, only patent applications which have fully positive examination reports ie meet all of the requirements under the Patents Act (“Patentability Criteria”) will be granted. Procedure for the grant of a patent Under the proposed section 29A of the Bill, an applicant will be eligible for a grant of a patent if any of the following do not contain any unresolved objections and satisfies the
 
Patentability Criteria:
 
(a) the examination report;
(b) search and examination report; or
(c) supplementary examination report (collectively, “Examination Report”)
 
Under such circumstances, the Registrar will issue the applicant a notice of eligibility to proceed to the grant of a patent.
 
Where there are unresolved objection(s) and the patent application fails to satisfy the Patentability Criteria, the Registrar shall issue the applicant a notice of intention to refuse the application for a patent.

 

There is currently no system of issuing notices of eligibility or notices of intention to refuse a patent application.
 
Review of Examination Report
 
Where the Registrar has issued a notice of intention to refuse the patent application, the applicant may apply for a review of the Examination Report by filing:
 
(a) the prescribed form for the request within the prescribed period; and 
(b) written submissions and/or amendments to overcome the unresolved objections in the Examination Report.
 
Upon completion of the review, the Registrar will issue:
 
(a) an examination review report; and
(b) either:
(i) a notice of eligibility to proceed to the grant of a patent; or
(ii) a notice of refusal of the application for a patent.
 
Supplementary examination report
 
Under the new positive grant system, applicants who wish to rely on a Corresponding Application instead of an independent examination by
IPOS, must additionally request for a supplementary examination report. 
 
The Registrar would need to be satisfied that the results of the final results of search and examination for the Corresponding Application meet the Patentability Criteria before the Registrar issues a notice of eligibility and the patent granted.
 
There is currently no requirement for a supplementary examination report.
 
TIMELINE FOR SEARCH AND EXAMINATION
 
Currently, applicants have a choice between two sets of timelines (ie Fast Track (Default) or Slow Track) to proceed on for a search and examination to be conducted.
 
Under the proposed amendments, only one set of timelines will apply to independent examination by IPOS or for filing Corresponding Applications.
 
The new set of timelines has not yet been determined but is likely to fall midway between the current fast track and slow track timelines.
 
The positive grant system and the new set of timelines for search and examination will apply to:
 
(a) direct national applications and divisional applications filed on or after the date of commencement of the relevant proposed provisions in the Patents Act; and
 (b) PCT Singapore National Phase applications with a date of entry on or after the date of commencement of the relevant proposed provisions in the Patents Act.
 
MEDICINAL PRODUCTS
 
The Singapore Health Sciences Authority plans to shift the regulation of pharmaceutical products for human use from the Singapore Medicines Act to the Singapore Health Products Act. Therefore, the Bill will introduce technical changes to the definition of pharmaceutical products which have been used in the Patents Act.
 
COMMENTS
 
The proposed changes in the Bill are part of IPOS’ efforts to strengthen Singapore’s patent regime and boost Singapore’s standing as a leading hub for intellectual property transactions in Asia.
 
In particular, the proposed positive grant system will impose stricter standards for patents to be granted and consequently raise greater business confidence in the quality of patents granted in Singapore.
 
REFERENCES
 
1. IPOS News Release dated 14 May 2012 “Proposed Amendments to the Patents
Act and other Intellectual Property Related Acts”
2. Patents (Amendment) Bill 2012
3. Intellectual Property (Miscellaneous Amendments) Bill 2012 
 
 

For further information, please contact:

 

Dedar Singh Gill, Director, Drew & Napier

dedar.singh@drewnapier.com

 

Cecelia GirvinDirector, Drew & Napier

cecelia.girvin@drewnapier.com

 

Gerald KohDirector, Drew & Napier

gerald.koh@drewnapier.com

 

 

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