sheila@mclaughlinip.com

Sheila is a qualified UK and EU trade mark attorney and Special Counsel with the firm, with over 20 years’ professional experience in the EU, MENA and Southeast Asian regions.

Sheila began her legal career in London, UK, in 2005 with one of the top IP firms in the city and went on to complete her specialisation as a UK and EU trade mark attorney in 2009. She later moved into an in-house role, managing the heritage brands of a leading UK sports and fashion entity. Having gained extensive experience in the UK and EU markets, Sheila was invited to return to private practice at an IP consultancy in Dubai where she advised Fortune 500 clients across the MENA region on trade mark protection, prosecution and enforcement. She joined McLaughlin IP in 2016 as Special Counsel and lends her global expertise to our clients in Singapore on all aspects of trade mark law and practice, both locally and around the world.

Sheila has a Biology degree from Imperial College London (UK) and a post-graduate diploma in Law, in addition to her trade mark specialisation.

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blayne@mclaughlinip.com

Blayne is a Singapore Registered Patent Attorney and Special Counsel with the firm. He is also qualified to practice as a Trans-Tasman patent attorney (Australia and New Zealand) and as a New Zealand lawyer.

Blayne has over 26 years of experience as a patent attorney and lawyer, specialising in software, AI/ML, electronics, and mechanical patents. He has a strong track record drafting and litigating patents in this area, in Singapore, New Zealand, Australia, and around the world.

He has been internationally recognised as a leading practitioner by Managing IP, IAM Magazine and Asia IP in patent prosecution, copyright law and IP litigation. The quotes from clients and competitors include that Blayne is “enthusiastically endorsed for his electronics know-how”, is a “tremendous practitioner of patent law” and an “Asia IP Expert”.

Blayne has an electrical and electronic engineering degree from the University of Canterbury and a law degree from the University of Auckland. Blayne is also a senior member of the IEEE, and a member of the NZ Law society.

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(For a downloadable version of this note, click here.)

Introduction

On 16 May 2016 the Intellectual Property Office of Singapore (IPOS) issued a revised version of the Examination Guidelines for Patent Applications at IPOS (the “Guidelines”), available here. The Guidelines include a revised Chapter 8 on Patentable Subject Matter and Industrial Applicability.

Background

The modern Singapore Patents Act came into force only in the mid-1990s. It has always been heavily influenced by the UK Patents Act 1977. At the time of its introduction, this version of the Singapore Act included a list of statutory exclusions from patentability:

(a) a discovery, scientific theory or mathematical method;

(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;

(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; or

(d) the presentation of information.

This was subject to the usual qualifier, that the exclusions related only to the extent that a patent/application related to these things “as such”. These exclusions corresponded with exclusions still present to this day in UK legal code. Not long afterwards, the relevant sub-section of the Singapore Act specifying these exclusions was repealed (i.e. it was deleted/removed from the Singapore Act). From that time, it seemed to be the case in practice that anything and everything was “patent eligible” in Singapore. IPOS is now seeking to change this.

The new position

In summary, in the revised Guidelines, IPOS identifies developments in these areas (a) – (d) as being, from now on, not considered “inventions”. That is, IPOS is taking the position that these subject matter areas are again not “patent eligible”. IPOS states that the new Chapter 8 applies to national applications (or any divisional application derived from these) with a filing date on or after 16 May 2016, and to any international applications entering the national phase in Singapore (or any divisional applications derived from these) on or after that date.

Further context

The revised version of the Guidelines has been a long time coming. A public consultation process was initiated, and a lively debate between IPOS and the Singapore patent attorney profession ensued.  The main reason for the debate is that there is a school of thought the current legal code in force in Singapore does not support IPOS’s new position. As noted above, these exclusions were repealed from Singapore law around 20 years ago. They have not been reintroduced into the Singapore Act, and we are not aware of any plan for them to be reintroduced.

IPOS specifically identifies the “actual contribution” test (from the UK decision in Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7) as being relevant in assessing whether an invention is patent eligible. It is worth noting the Aerotel/Macrossan decision is one in a very long line of decisions –spanning decades – from the UK based on exclusions no longer present in Singapore law. Aerotel/Macrossan related to challenges the invention of that patent was excluded from patentability under the business method and computer program exclusions, neither of which are in the current Singapore legal code.

Practical effect

It is very early days and, at this stage, the full impact this is going to have is difficult to predict. The new Chapter 8 does not give an enormous amount of guidance on what is a complex and controversial subject. Despite this, one section in particular may turn out to be helpful, at least in the area of computer-implemented inventions.

Our initial thinking is that if it can be demonstrated technical features of an invention operate together to “address a specific problem” (citing from section 8.7 of the new Guidelines) then the invention is arguably patent eligible. Interestingly, this section 8.7 does not specify that the problem being solved must be a technical problem, a requirement in other jurisdictions when assessing such matters. However, and as always, each case will have to be considered on its own merits.

If – or more likely when – IPOS begins issuing rejections under these new guidelines, it will not be a great surprise if patent applicants start appealing these rejections to the Court.

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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meowli@mclaughlinip.com

Meow Li is a senior IP secretary/paralegal. She has previous experience with specialist Singapore patent and IP law firms.

Meow Li handles all aspects of patent/secretary/paralegal duties, including our e-filing work of application and prosecution documents, and general client relations.

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eric@mclaughlinip.com

Eric is a Chartered UK Patent Attorney and Special Counsel with the firm. He is also on the register of Singapore Patent Attorneys and a registered Malaysian patent agent.

Eric entered the patent attorney profession in 2008, and has been working in the field since, in both private practice and in-house roles. Prior to the current role at the firm, Eric was previously with the firm for a number of years before joining an IP firm in the Australasian region.

Eric obtained his doctorate from the Optoelectronics Research Centre at University of Southampton, UK, after completion of his Bachelor’s degree in Electronic Engineering with Optoelectronics from University College London, UK. He then went on to carry out post-doctoral research in optoelectronics at the Department of Physics and Astronomy, University College London and the London Centre for Nanotechnology, and in Nanotechnology at the International Innovation Centre (IIC), Kyoto University, Japan.

Eric practices as a patent attorney across a broad spectrum of technologies in the ICT/electronics and mechanical engineering fields, but given his academic background, he has particular interest and expertise in optoelectronics and related technologies, including materials science, semiconductors, display devices and laser technology.

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michael@mclaughlinip.com

Michael is a Registered Singapore Patent Attorney (Registered Singapore Patent Agent). He is qualified by professional examination to represent clients before the Intellectual Property Office of Singapore (IPOS). Michael has practised in the field since 2000. Before moving to Singapore in 2005 and becoming a Singapore Patent Attorney shortly afterwards, he trained in London, widely considered a world centre of excellence in the field. Michael qualified as a Chartered Patent Attorney in the UK and a European Patent Attorney while with a leading London firm.

His technical background is Electronic and Electronic Engineering. He has an honours degree from the University of Strathclyde in Glasgow. After graduation, Michael practised as an Electrical Design Engineer for more than eight years before becoming a patent attorney. Michael’s practice extends across a broad range of technologies in ICT and engineering.

Michael is a guest lecturer on patent law and practice at the National University of Singapore. He has memberships with a number professional associations, and previously sat on the Executive Committee of the Association of Singapore Patent Agents. Michael has also been a member of the IPOS Examination Committee for the Singapore Patent Agents Qualifying Examination. In doing this, he was involved in setting and marking examination papers.

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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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nadia@mclaughlinip.com

Nadia is a senior IP secretary/paralegal. She has previous experience with a specialist Singapore patent prosecution and IP law firms.

Nadia handles all aspects of patent secretary/paralegal duties, including our e-filing work of application and prosecution documents, and general client relations.

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diana@mclaughlinip.com

Diana is our Office Manager, covering a broad range of duties in the office including Records and Accounts Management. Diana has a University Diploma in International Trade (with English) from the Tianjin Foreign Studies University in China. Diana has working experience in China and the UK in the Food & Beverage and Tourism & Leisure industries. She also has professional qualifications from the Chartered Institute of Marketing in the UK.

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michael@mclaughlinip.com

I am Singapore Registered Patent Attorney (Singapore Registered Patent Agent) with more than 25 years’ experience. I help clients identify and protect their intellectual property (patents, trademarks, and designs). My approach is highly customised to each client’s needs, not a one-size-fits-all service. Strategic, thoughtful protection is central to my work; off-the-shelf IP advice can be a costly mistake, often only discovered when it’s too late to fix.

As a Singapore Registered Patent Attorney, I am qualified by professional examination to act before the Intellectual Property Office of Singapore (IPOS). Originally from the UK, I am also a British Chartered Patent Attorney (CPA) and a qualified European Patent Attorney (EPA).

I hold an honours degree in Electrical and Electronic Engineering from the University of Strathclyde, and began my career as an engineer before training as a patent attorney in London — widely recognised as a global centre of excellence in the profession. I qualified as a CPA and EPA in 2005 while with a leading London firm.

With around 25 years of experience in IP, I advise across a broad range of technologies, particularly in software/ICT, electrical and electronic engineering, and mechanical engineering and devices. I have experience with a wide spectrum of clients — from individuals and SMEs to universities, government R&D institutes, and global tech giants. For example, I played a key role in developing patent strategy for a major Southeast Asian tech company as it scaled up its patent portfolio during a transformative growth phase.

I am consistently ranked among the leading patent practitioners in Singapore. I have been listed in IAM Patent 1000 — including their top tier — and recognised as an IAM Global Leader for patent prosecution. I have also been named an IP Star by Managing Intellectual Property every year since 2014, and a Leading Individual and “Most Highly Regarded” Patent Attorney in Singapore by Who’s Who Legal.

Beyond client work, I also speak on IP topics and was previously a guest lecturer in patent law and practice at the National University of Singapore.

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