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

 

Introduction

The revisions to the Patents Act (“Revised Act”) will come into effect on 14 February 2014. The key changes to patent law in Singapore are discussed in this article.

A Shift To A Positive Grant System

The changes in the Revised Act 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 select one of the following search and/or examination procedures, namely:

(i) local search and/or examination through the Intellectual Property Office of Singapore (“IPOS”),
(ii) reliance on a corresponding national patent application,
(iii) reliance on a corresponding international application, or
(iv) reliance on the International Preliminary Report on Patentability (“IPRP”) for ex-PCT national phase applications.

Under the current self-assessment system, a patent may be granted even if the search and examination results in (i), (iii) and (iv) indicate that the patent application does not meet the requirements for patentability, namely, novelty, inventive step and industrial applicability.

The current system in place is called a “self-assessment” system for the reason that it is the applicant and not IPOS that is responsible for ensuring that novelty, inventive step and industrial applicability are present in the granted patent.

This self-assessment system was introduced in Singapore in 1995 as a means of encouraging patent registration.

The changes in the Revised Act, will bring Singapore in line with international standards by establishing a positive grant system.

New Positive Grant System

Under the new positive grant system, only patent applications which have fully positive examination reports (ie reports meeting all of the requirements under the Patents Act (“Patentability Criteria”)) will be granted.

Request For Local Search And/Or Examination

Where local search and/or examination is requested under procedure (i) above, IPOS will proceed to issue a notice of eligibility to proceed to grant a patent if the examination report does not contain any unresolved objections and the patent application satisfies the Patentability Criteria.

Where there are unresolved objection(s) and the patent application fails to satisfy the Patentability Criteria in the examination report issued in procedure (i) above, IPOS will issue the applicant a notice of intention to refuse the application for a patent.

Reliance On A Corresponding Application, A Corresponding International Application Or The IPRP For Ex-PCT National Phase Applications

Under the new positive grant system, an applicant who wishes to proceed with procedures (ii), (iii) or (iv) above, must file a request for supplementary examination.

During supplementary examination, the Registrar will need to be satisfied that the final results of the search and examination of the Corresponding Application, Corresponding International Application or the IPRP in procedures (ii), (iii) or (iv), respectively, meet the Patentability Criteria before IPOS issues a notice of eligibility and the patent is granted.

 

Similarly, where there are unresolved objection(s) and the patent application fails to satisfy the Patentability Criteria, IPOS will issue the applicant a notice of intention to refuse the application for a patent.

Prior to the changes in the Revised Act, there was no system of issuing notices of eligibility or notices of intention to refuse a patent application.

Request For Review Of Examination Report¹

Where IPOS 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, IPOS 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.

 

Currently, applicants have a choice between two sets of timelines (ie Fast Track (Default) or Slow Track) for completion of search and/or examination procedures.

Under the Revised Act, only one set of timelines will apply.

For non-convention and convention applications, where local search and/or examination is requested, the request should be made within 36 months from the earliest declared priority date or the Singapore filing date where no priority has been claimed (“Relevant Date”). For divisional applications, the Relevant Date is the actual filing date of the divisional application.

 

The Exceptions Are:

(i) where the search and examination requests are made separately – the request for search is made within 13 months of the Relevant Date, and the request for examination is made within 36 months from the Relevant Date; and
(ii) where reliance is placed on a Corresponding Application or Corresponding International Application – the request for a supplementary examination report is made within 54 months from the Relevant Date.

For ex-PCT national phase applications, similarly, where local search and/or examination is requested, the request for local search and/or examination should be made within 36 months from the Relevant Date.

The exceptions are:

(i) where reliance is placed on a Corresponding Application or Corresponding International Application – the request for a supplementary examination report is made within 54 months from the Relevant Date; and
(ii) where a notice of intention is filed to place reliance on the IPRP – the request for a supplementary examination report is made within 54 months from the Relevant Date.

The deadline to file the request for review of the Examination Report is two months from the date of the notice of intention to refuse the application for a patent.

The new positive grant system and the aforesaid set of timelines for the search and examination process will apply to:

(a) divisional applications, convention applications and non-convention applications filed on or after the date of commencement of the Revised Act, ie 14 February 2014; and
(b) PCT Singapore National Phase applications with a date of entry on or after the date of commencement of the Revised Act, ie 14 February 2014.

 

Comments

The revisions in the Patents Act 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.

As the new positive grant system imposes stricter standards for patents to be granted, there will consequently be greater business confidence in the quality of patents granted in Singapore.

 

End Notes:

 

1 For the purposes of this article, “Examination Report” refers to both the examination report issued under the aforesaid procedure (i) and the supplementary examination report issued under the aforesaid procedures (ii), (iii) and (iv).

 

 

 

For further information, please contact:

 

Dedar Singh Gill, Director, Drew & Napier
[email protected]

Cecelia Girvin, Drew & Napier
[email protected]

Gerald Koh, Director, Drew & Napier
[email protected]

 

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