Changes To Singapore’s Patent Practice.
31 August 2012
Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property
The Singapore Parliament has recently passed the Patents (Amendment) Bill that aims to fundamentally change Singapore’s patent practice. These changes, likely to come into effect later this year, aim to solidify Singapore’s IP regime, expand its IP capabilities and help develop Singapore to be an Asian IP hub. This article summarises the main changes.
Move from a “self-assessment” patent system to a new “positive grant” patent system
The most significant amendment involves the replacement of the current “self-assessment” system with a new “positive grant” system. Under the current’s “self-assessment”, a patent applicant is under no obligation to amend his application at any stage, even in the face of an adverse examiner’s opinion and/or report. A Singapore patent shall issue once the formal requirements are met and upon the completion of one of the search and examination procedures chosen for the application. Therefore, the establishment of an adverse examination report will not prevent an application from proceeding to grant.
Under the new “positive grant” system, all patent applications must satisfy the patentability criteria of novelty, inventive step and industrial applicability in order to proceed to grant. It is Parliament’s intention to raise the quality of Singapore-granted patents and to enhance Singapore’s standing in the IP industry. This should also bring the country’s IP regime at par with that of other established patent offices such as the UK Intellectual Property Office, United States Patent and Trademark Office, Japan Patent Office and the European Patent Office.
The switch to a “positive grant” patent system has been heralded by both Singapore’s patent practitioners and lawmakers as long overdue. Given that Singapore’s own patent system started in 1995, it has come a long way in providing a more robust and substantive patent regime. Singapore’s IP regime has consistently been ranked among the best in the world – ranked top 5 by the World Economic Forum, and top 10 by the Institute for Management Development. Based on Parliamentary reports, Singapore is Asia’s most innovative country according to the Global Innovation Index 2012, which was complied by the INSEAD Business School in collaboration with the World Intellectual Property Organisation. With such ambitious plans to becoming a dynamic Asian IP hub, Singapore now feels it timely to move to such a “positive grant” system. The move aims to give increased assurance to companies and investors of the quality of Singapore-granted patents.
In supporting the move to a “positive grant” system, the Patents (Amendment) Bill incorporates two main changes to the search and examination provisions of the Patents Act.
1. A new supplementary examination process for patent applications that rely on a positive foreign search and examination report; and
2. A new process for review of non-positive examination reports, search and examination reports, and supplementary examination reports, to provide patent applicants with the opportunity to address outstanding objections raised by the examiner in these reports.
The two changes, together with the other changes relating to search and examination of Singapore patent applications, are discussed below.
Supplementary examination
In Singapore, a patent application may proceed to grant on the basis of two main search and examination routes, namely the “local” route (requesting search and examination at the Intellectual Property Office of Singapore (IPOS)) or the “overseas” route (relying on the grant of a corresponding application in lieu of filing the request for search and examination at IPOS). Such corresponding applications recognized by IPOS must be filed in Australia, Canada, the European Patent Office (only if filed in English), PCT, Japan, New Zealand, Republic of Korea, the United Kingdom or the United States of America.
With the new changes, a Singapore patent applicant can still rely on a corresponding application for grant of its Singapore patent. However, patent applicants who rely on this “overseas” route will now have to request for “supplementary examination”. In the supplementary examination, an examiner will examine the patent application to determine whether the application conforms to Singapore’s patent practice, i.e. he will probably only focus on Singapore formal requirements. An example would be whether the application contains any claims that are directed towards a method of medical treatment, which are not allowable in Singapore. Also, the examiner will check the application to determine whether the grant of the Singapore patent will result in double patenting. The examiner will raise any objections or deficiencies in the application in the form of a written opinion, which the applicant is then given an opportunity to respond.
While there is no explicit requirement to conform the claims of the Singapore application to those allowed in the corresponding application, the Singapore claims proceeding to grant must be “related” to those of the corresponding allowed claims relied upon.
According to the Singapore Patents Act (“Act”), a claim is related to another claim if (a) the two claims are identical; or (b) each limitation in the second claim is identical to a limitation in the first claim, or differs from a limitation in the first claim only in expression but not in content. This definition of “related claims” was introduced in 2004. As there have been no case law to date to turn to for guidance, there has been debate over the application of this definition in the Act. Given its challenges, most patent practitioners would agree that the Singapore claim may be re-worded provided there is no change in the content of any of the limitations. In order to err on the side of caution, most applicants simply conform the Singapore claims to those allowed in the corresponding patent relied upon for grant.
Unfortunately, when drafting the latest amendments, the lawmakers have not taken the opportunity to clarify this definition of “related claims”. However, in what appears to be an attempt in addressing this “related claim” issue, IPOS will now require a claim correspondence table to be submitted at the time of requesting supplementary examination. Such a claim correspondence table should indicate how the Singapore claims correspond or relate to the corresponding allowed claims. This means that IPOS is now making thorough checks to ensure that the related claim criteria are met.
Review of non-positive examination reports
In the event where a patent applicant receives an adverse or negative examination report, a Notice of Intention to Refuse will be issued. This Notice of Intention to Refuse is a precursor to a Notice of Refusal. Upon receipt of a Notice of Intention to Refuse, applicants can ask for a review of the negative examination report. A new examiner will then consider the negative examination report and issue an examination review report, which may be positive or negative. The Registrar will then proceed to issue a Notice of Eligibility or a Notice of Refusal as the case may be. Applicants can then request for the issuance of grant certificate upon receipt of this Notice of Eligibility.
Other changes relating to search and examination
Currently, applicants who request search and examination at IPOS have their applications sent to the Austrian Patent Office, the Danish Patent and Trademark Office or the Hungarian Intellectual Property Office. With the aim of creating a more thriving and vibrant patents environment, IPOS is now starting to build up a new team of in-house patent examiners. This move is also intended to provide more jobs within Singapore’s patent services sector.
In addition to the above changes, the provision for requesting post-grant search and examination has now been removed.
Liberalization of the patent agent sector
The second key change involves the liberalization of the patent agent sector in Singapore, thereby increasing expertise to better meet the growing demand for patent services.
It was reported in Parliament that Asian countries represent the highest growth in Patent Cooperation Treaty (PCT) applications filed. Thus, Singapore is faced with both an opportunity and challenge to develop as a one-stop shop in Asia for procuring and implementing patent services. With Singapore moving towards a more robust patent environment, Parliament has identified the lack of an indigenous talent pool for patent services to be the missing link.
Hence, with the new changes, foreign qualified patent agents may be registered at the IPOS on the basis of their foreign qualifications. These IPOS-registered foreign qualified agents and foreign firms can undertake offshore patent work in Singapore as long as at least one partner or director is a foreign-qualified IPOS registered agent.
Singapore will now allow:
(a). the registration of foreign-qualified patent agents at IPOS, without the need to meet local qualification requirements;
(b). IPOS-registered foreign-qualified patent agents to undertake offshore patent agency work in Singapore; and
(c). foreign patent firms to undertake offshore patent agency work in Singapore as long as at least one partner or director is an IPOS-registered foreign-qualified patent agent.
The scope of offshore patent work that foreign-qualified agents can do will be restricted to the following areas:
(a). applying for or obtaining patents anywhere except IPOS;
(b). preparing patent specifications for filing applications, including PCT international applications, outside Singapore; and
(c) providing expert advice on patent laws of other countries.
The drafting and filing of applications with IPOS which requires knowledge of Singapore Patent law, will continue to be only open to registered Singapore patent agents, advocates and solicitors with practicing certificates.
There will be conditions for the registration of foreign-qualified patent agents. These include:
(a). proof of qualification and proficiency to act before a foreign patent office;
(b). Singapore residency;
(c). professional insurance; and
(d). compliance with a code of conduct.
In addition, the new legislation also replaces the term “patent agent” with “patent attorney” to recognize the high standing of the profession.
The aim of allowing the registration of foreign patent agents is to capitalize on cross-border talent pools to transform the local patent profession into a more vibrant and international one. With the liberalization of the patent agent sector, Singapore hopes to attract more patent firms with international expertise and to build a larger pool of patent agents who are capable of providing expert advice on patent laws and practices across various jurisdictions.
For further information, please contact:
Edmund Kok, ATMD Bird & Bird
