The Big Shift Singapore s Move To A Positive Grant System Kicks In From 14 February 2014

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1 The Big Shift Singapore s Move To A Positive Grant System Kicks In From 14 February 2014 Background The patent laws of Singapore were amended on 10 July 2012 to transform the patent registration regime from a self-assessment to a positive grant patent system ( the Amended Patents Act ). The Amended Patents Act is expected to come into force from 14 February 2014 onwards. Under the Amended Patents Act, only patent applications which have fully positive examination results can proceed to grant. By fully positive, the claimed subject matter of the pending patent application must meet the patentability criteria of novelty, inventiveness and industrial applicability as set out under section 13 of Patents Act currently in force. The objective of the move to a positive grant system is to raise the overall quality of patents granted in Singapore, and to align Singapore s patent prosecution regime with that of established regimes like the European Patent Office, the US, UK and Japan. It is believed that an increase in the quality of patents granted in Singapore will further strengthen business and investor confidence in Singapore s IP regime, and enhance Singapore s reputation as a leading IP hub in Asia. In this client update, we will highlight the key changes that will come about as a result of the Amended Patents Act, and the change in the patent prosecutorial procedures that will be applicable from 14 February 2014 onwards. Single Prosecution Track The first major change is that the existing dual-track system comprising a default fast track and an optional slow track will no longer be available under the Amended Patents Act. Under the fast track and slow track system, an applicant had the option of completing the prosecution of a patent application within 42 months and 60 months from the filing or priority date respectively, as the case may be. With the removal of the dual-track system, the feature of a block extension, which served to switch a patent application from the fast track to the slow track, has also been abolished. 1 Rajah & Tann LLP

2 In place of the dual-track prosecution system is a single prosecution track. We have provided in the ANNEX hereto a visual representation highlighting the key timelines that will apply to a Singapore patent application from 14 February 2014 onwards. We will now briefly discuss those key timelines that have been highlighted in the ANNEX. Key Prosecution Timelines With the removal of the dual-track system, the timeline for filing a request for a search report remains at 13 months from the filing date or priority date, as the case may be. Subsequently, the timeline for filing a request for a combined search & examination report or a request for an examination report based on an earlier search report or search results of a corresponding application, corresponding international application or related national phase application, is prior to the expiry of 36 months from the filing date or priority date, as the case may be. Where a written opinion is issued following from a request for a combined search & examination or a request for an examination report, applicants continue to have 5 months from the date of the written opinion to respond accordingly. The Amended Patents Act retains the option of allowing an applicant to rely on the final search and examination results of a corresponding application, a corresponding international application or a related national phase application as a basis for obtaining a patent in Singapore. The applicant may do so by filing certain prescribed documents with the Registry in respect of a corresponding application, a corresponding international application or a related national phase application. The prescribed documents include the final search and examination results, a certified copy of the patent granted or an international preliminary report on patentability (if applicable), as well as a table setting out how each claim in the pending patent application is related to at least one claim in the corresponding application, corresponding international application or related national phase application. Where an applicant intends to rely on a corresponding application, corresponding international application or related national phase application, the applicant has to file a request for supplementary examination report before the expiry of 54 months from the filing date or priority date, as the case may be. The above mentioned prescribed documents must be filed with the request for supplementary examination in order for the said request to be considered as having been validly filed. In the event that the examiner raises any objections in the course of conducting the supplementary examination, and issues a written opinion to that effect, the applicant will have 3 months from the date of the written opinion to respond. 2 Rajah & Tann LLP

3 Once a search & examination report, examination report or supplementary examination report (as the case may be) is made available via any of the above mentioned prosecution routes, the Registry will issue either a Notice of Eligibility to Proceed to the Grant of a Patent or a Notice of Intention to Refuse. A Notice of Intention to Refuse will be issued where the examination report discloses one or more unresolved objections. Due to the broad wording of section 29A(3) of the Amended Patents Act, it appears that the Registry may refuse to grant a patent even where the unresolved objections are only formal in nature. If the applicant were to receive a Notice of Eligibility to Proceed to the Grant of a Patent, the applicant may file a Request for Grant of Patent within 2 months from the date of the notice in order to receive the Certificate of Grant of Patent. However if the applicant were to receive a Notice of Intention to Refuse, the application shall be considered to have been refused after the expiry of 2 months from the date of the notice unless the applicant files a request for a review of the examination report within 2 months of the date of the Notice of Intention to Refuse. Review of Examination Report When filing a request for a review of the examination report, the applicant may amend the specification of the patent application to overcome any unresolved objections present in the search & examination report, examination report or supplementary examination report. Thereafter, the examiner will prepare a further examination report. The further examination report will be prepared vis-à-vis (i) the examination report that was reviewed, and (ii) the applicant s amendments (if any). The examiner is also required to provide reasons to support any decision set out in the further examination report. Based on the decision of the examiner in the further examination report, the Registrar will either send a Notice of Eligibility to Proceed to the Grant of a Patent or a Notice of Refusal to the applicant. The refusal to grant a patent application will take effect 2 months from the date of the Notice of Refusal. Application of the Amended Patents Act The Amended Patents Act will apply to all patent applications filed from 14 February 2014 as well as to national phase applications commenced from the effective date. 3 Rajah & Tann LLP

4 ANNEX 4 Rajah & Tann LLP

5 Contacts Lau Kok Keng Partner D (65) F (65) kok.keng.lau@rajahtann.com Wendy Low Partner D (65) F (65) wendy.low@rajahtann.com Jevon Louis Patent Attorney/Associate D (65) F (65) jevon.louis@rajahtann.com Please feel free to also contact the Knowledge and Risk Management Group at eoasis@rajahtann.com Rajah & Tann LLP is the largest law firm in Singapore and Southeast Asia, with regional offices in China, Lao PDR, Vietnam, Thailand and Myanmar, as well as associate and affiliate offices in Malaysia, Cambodia, Indonesia and the Middle East. Our Asian network also includes regional desks focused on Japan and South Asia. As the Singapore member firm of the Lex Mundi Network, we are able to offer access to excellent legal expertise in more than 100 countries. Rajah & Tann LLP is firmly committed to the provision of high quality legal services. It places strong emphasis on promptness, accessibility and reliability in dealing with clients. At the same time, the firm strives towards a practical yet creative approach in dealing with business and commercial problems. The contents of this Update are owned by Rajah & Tann LLP and subject to copyright protection under the laws of Singapore and, through international treaties, other countries. No part of this Update may be reproduced, licensed, sold, published, transmitted, modified, adapted, publicly displayed, broadcast (including storage in any medium by electronic means whether or not transiently for any purpose save as permitted herein) without the prior written permission of Rajah & Tann LLP. Please note also that whilst the information in this Update is correct to the best of our knowledge and belief at the time of writing, it is only intended to provide a general guide to the subject matter and should not be treated as a substitute for specific professional advice for any particular course of action as such information may not suit your specific business and operational requirements. It is to your advantage to seek legal advice for your specific situation. In this regard, you may call the lawyer you normally deal with in Rajah & Tann LLP or the Knowledge & Risk Management Group at eoasis@rajahtann.com. 5 Rajah & Tann LLP