Patent law changes in Singapore 2014

As you may know, Singapore aims to become a “Global IP Hub in Asia” with the objective of building a high-quality patent system. Changes to the patent legislation – the Singapore Patents Act and Patents Rules – have been coming for quite some time, and these will finally come into force in early 2014.

TEN THINGS YOU NEED TO KNOW ABOUT THE CHANGES

These are discussed in more detail below, but in summary:

1. The new law will come into force on 14 February 2014.
2. It will no longer be possible to obtain a patent for an invention which is deemed not to be patentable.
3. There will no longer be any “fast” and “slow” prosecution tracks.
4. The existing prosecution routes of (conventional) substantive examination and “modified” examination are being retained.
5. If following modified examination, the deadline for filing the relevant papers relating to this has been brought forward by six months.
6. For the modified examination route, a new supplementary examination procedure is being brought in.
7. It will still be possible to switch between substantive examination and modified examination prosecution routes.
8. Extensions of time of up to 18 months will become available as of right for some actions.
9. New procedures are being introduced where either a type of notice of allowance or a notice of refusal will be issued when the normal prosecution is complete.
10. There will be a new type of written appeal procedure.

Of course, please feel free to contact us with any specific questions you may have.

MORE DETAILED COMMENTS

Are you sitting comfortably? We hope so. Perhaps you might like to make a cup of coffee first.

1. Date the law comes into effect

The Intellectual Property Office of Singapore (IPOS) announced on 6 December 2013 that the legislative changes will finally come into force on 14 February 2014. The new law will apply to any patent applications filed on or after that day. For ex-PCT applications, the new law will apply to any national phase applications initiated on or after that day even if the filing date of the PCT application is before that day. For divisional applications, the new law will apply for divisional applications lodged with IPOS on or after that day.

2. Move to a “positive grant” system

It will no longer be possible to obtain a patent for an invention which is not patentable. Strange as it may seem, it is currently possible to pay the grant fee on an application where there are outstanding objections from the examination – including where the examiner considered the invention lacked novelty or inventive step – and the patent will issue in due course. Now, it is necessary for the application to comply with all aspects of Singapore law, including the requirements of novelty and inventive step. IPOS is calling this a move to a “positive grant” system.

3. No more “fast” and “slow” prosecution tracks

Currently, Singapore allows for fast and slow prosecution tracks. The fast track is the default position where the application has to be in condition for allowance at 42 months from the earliest declared priority date. Currently it is possible to extend that to 60 months from priority, putting the application on the “slow track”. Under the fast track the deadline for requesting examination was 21 months from priority, extendable to 39 months from priority on the slow track. Now we have a single deadline of 36 months from priority for requesting substantive examination.

There is no fixed period by which the application must be in condition for allowance, regardless of the prosecution route being followed, although as you might expect there are other deadlines to meet (see point 5 below in particular).

4. Retention of existing main prosecution routes

The two main current previous prosecution routes – conventional substantive examination through IPOS and “modified” examination – will be retained. It is perhaps expected that more and more applications which are to be subjected to substantive examination will be examined by IPOS’s new Examining Unit – with examiners here in Singapore for the first time – rather than being outsourced to the current examining authorities (Austrian, Danish and Hungarian patent offices). And early indications are that examinations being conducted here in Singapore will be of better than average standard.

It will still be possible for patent applicants to follow modified examination where the application in Singapore proceeds to grant on the basis of acceptance in a “corresponding” jurisdiction and even, where applicable/appropriate, on the basis of the IPRP. There is no change to the corresponding countries; these remain as: Australia, Canada (for applications filed in English), Japan, New Zealand, Republic of Korea, the United Kingdom, the United States of America and the European Patent Office (for applications filed in English).

5. Deadline relating to modified examination brought forward

Although there is no fixed deadline for acceptance, if following modified examination, the deadline for presenting the relevant papers for acceptance has been brought forward by six months in comparison to the deadline for acceptance under the current slow track; the new deadline is 54 months from priority.

6. New supplementary examination procedure

If following modified examination, it will be necessary to request what is called a supplementary examination of the application by this 54-month deadline. IPOS will conduct an examination for, amongst other things: whether the claims are supported by the description; whether the claims of the Singapore application are of the same or narrower scope than the claims in the corresponding application; there is no double patenting; and that the claims of the Singapore application do not impermissibly add matter, when considered under Singapore practice. A number of these were previously matters of self-assessment, with responsibility for compliance lying with applicants and their representatives. The check for the claims being supported by the description is a new requirement at this stage (although it is to be noted that lack of support per se is still not a ground for revocation of a patent Singapore). Other, new formalities requirements are also being introduced.

7. Switching between prosecution routes

Occasionally, we find applicants wish to switch from one prosecution route to the other. It will still be possible to switch from the substantive to modified examination routes (and vice versa), but it would appear that the windows of time in which this may be done have been shortened.

8. Relaxed provisions relating to extensions of time

For some missed deadlines, extensions of time will become available as of right up to 18 months. Thus, for example, the deadline for entering the national phase of an international application in Singapore is extendable up to a maximum of 48 months from the earliest declared priority date, from the normal deadline of 30 months, upon payment of extension fees. The official extension fee for each month will be kept at SGD 200 per month (plus surcharges).

9. New notices of allowance or refusal

After all of the requirements of Singapore patent law have been satisfied – whether under substantive or modified examination – IPOS will issue a type of notice of allowance, and the applicant will have a fixed period of two months in which to attend to the final formalities, including payment of the grant fee.

If the applicant fails to resolve any objections, and the requirements of Singapore patent law are deemed not to have been satisfied – whether under substantive or modified examination – IPOS will issue a Notice of Intention to Refuse the Application.

10.  New written appeal procedure

In a new type of written appeal procedure, the applicant can request a review where a Notice of Intention to Refuse the Application has been issued. It would appear that this will effectively be a limited reopening of the prosecution, as the applicant will be able to make written submissions and/or amendments with the request for review.

We understand the second examination will be undertaken by a different examiner. If the outstanding objections are overcome, a notice of allowance will be issued. If the objections are not overcome, a notice of refusal will be issued, with the refusal of the application taking effect two months from the date of issuance of the notice of refusal.

Divisional applications may be filed in this two-month period.

SUMMARY AND DISCLAIMER

In many respects, the changes are in line with Singapore’s intention to move to a high quality and robust patent system. The effect of this is, however, that some of the requirements patent applicants and their representatives must fulfil are of a higher standard. Anyone wishing not to have to fulfil these higher standards for any upcoming applications where filing in Singapore is under consideration, should give thought to having these applications filed before 14 February 2014.

This is provided for information only and does not constitute legal advice. Please contact us for detailed advice if you have any specific questions. We should be very happy to answer any questions that you may have.

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