AMENDMENTS TO THE SINGAPORE PATENTS ACT AND RULES

Transcription

1 AMENDMENTS TO THE SINGAPORE PATENTS ACT AND RULES Entry into Force: 14 February 2014

2 INTRODUCTION Amendments to the Singapore Patents Act and Rules are due to come into force on 14 February The amendments will affect all Singapore patent applications lodged in Singapore on or after this date. For example, the new law will apply to: any Singapore national phase application which enters the national phase in Singapore on or after the 14 February 2014 regardless of the international filing date; any Singapore patent application filed in Singapore on or after the 14 February 2014; and, any Singapore divisional patent application filed in Singapore on or after the 14 February 2014 even if entitled to an earlier filing date by virtue of its parent application. The amendments include some significant changes to both the requirements and procedures for obtaining a Singapore patent. The most significant of these changes is that the current self-assessment system will change to a positive-grant system. This change and some other significant changes are explained in further detail in the below table. After the table, the positive-grant procedure is explained in even more detail. If you have any questions on any of the following information or if you have any specific questions relating to any particular Singapore patent application, please do not hesitate to let us know. COMPARATIVE TABLE CURRENT LAW NEW LAW Self-assessment system A Singapore application is granted regardless of whether its claims are patentable. Grant is obtained based on final Substantive Examination results (clear or unclear) of either: (i) (ii) the Singapore application in question; or a corresponding foreign or international patent/application. Positive-grant system Only a Singapore application directed to patentable claims is granted. Grant is obtained only if a Notice of Eligibility is issued. If relying on local Substantive Examination results of the Singapore application in question, a Notice of Eligibility will be issued only if the final results are clear. If relying on foreign final examination results of a corresponding foreign or international patent/application, a new Supplementary Examination will be performed. A Notice of Eligibility will be issued only if the foreign final examination results are deemed to be acceptable during Supplementary Examination. Further details of the new Supplementary Examination procedure are included below. An appeal or Examination Review is available if either the final local examination results are unclear or the final foreign examination results are deemed unacceptable during Supplementary Examination. Further details on this new Examination Review procedure are included below.

3 CURRENT LAW NEW LAW Two-track prosecution system To give an applicant the opportunity to extend multiple deadlines relating to a single application at the same time, the current system provides a default fast track and an optional slow track (wherein multiple deadlines are extended by 18 months vs. the fast track). Single track prosecution system Only a single track will be available, i.e. deadlines will be extendible on only an individual basis. Long timeline for voluntary amendments Voluntary amendments can be made at any time before grant. However, where local Search, Substantive Examination or Search & Substantive Examination is requested, voluntary amendments are not permitted after the relevant request is filed and before the relevant report is issued. Short timeline for voluntary amendments Voluntary amendments can only be made before requesting Substantive or Supplementary Examination. However, where local Search is requested, voluntary amendments are not permitted after the search request is filed and before the search report issues. After requesting Substantive or Supplementary Examination, further amendments can only be made in response to an objection from an examiner. Strict extension of time provisions As-of-right extensions of time of up to 3 months are available for certain deadlines. Further discretionary extensions are available with adequate reasons. Discretionary extensions of time are available for some other deadlines. Relaxed extension of time provisions As-of-right extensions of time of up to 6 months are available for certain deadlines. Further discretionary extensions may be available. These certain deadlines include the deadlines for: requesting supplementary search, and requesting an Examination Review. As-of-right extensions of time of up to 18 months are available for certain other deadlines. Further discretionary extensions may be available. These certain other deadlines include the deadlines for: national phase entry, paying the grant fee, and requesting Search, Search & Substantive Examination, Substantive Examination and Supplementary Examination. Discretionary extensions of time are available for some other deadlines. Post-grant search & examination After grant of a patent, a patentee may request search & examination, for example, to determine the effect of newly discovered prior art. No post-grant search & examination A patentee will no longer be able to re-open examination after grant. Accordingly, the effect of newly discovered prior art may only be considered during, for example, post-grant invalidity proceedings.

4 CURRENT LAW NEW LAW Long timeline & strict provisions for restoration Restoration of a lapsed patent must be initiated within 30 months from the date on which the lapsed patent ceased to have effect. The criterion for restoration is reasonable care. Short timeline & relaxed provisions for restoration Restoration of a lapsed patent must be initiated within 18 months from the date on which the lapsed patent ceased to have effect. The criterion for restoration is unintentional (a prima facie lower threshold than reasonable care ). Relaxed surrendering provisions A patentee may surrender his patent by request. The request will be published so that interested third parties may oppose. Surrender will be completed if no opposition is filed. Strict surrendering provisions A patentee may surrender his patent only after certifying that each person having a right in the patent: 1) has been given at least 3 months notice of the surrender, and 2) is not affected or, if affected, has no objection to the surrender. THE POSITIVE-GRANT PROCEDURE IN MORE DETAIL Under the new law, grant of a Singapore patent application is possible only if a Notice of Eligibility is issued. The Notice of Eligibility is issued only if the claims of the application are patentable. The Notice of Eligibility may be obtained via Substantive Examination or Supplementary Examination. In both cases, the Notice of Eligibility is issued if the Examiner has no outstanding objections to the application. However, if the Examiner has one or more outstanding objections, a Notice of Intention to Refuse will be issued. The Applicant would then have the option of either requesting an Examination Review or allowing the application to be finally refused. The following describes the procedures for Substantive Examination, Supplementary Examination and Examination Review. - Substantive Examination Under the new law, it will be possible to obtain a Singapore patent on the basis of local Substantive Examination performed by or for the Intellectual Property Office of Singapore. An application can only proceed to grant if the Examiner deems the application to be in a suitable state for grant. Importantly, to be in a suitable state for grant, each claim in the application must be novel, inventive and industrially applicable. Local Substantive Examination may be requested for the Singapore application at any time before 36 months from the priority date or, if priority is not claimed, the filing date (e.g. international filing date, divisional lodgement date or national filing date). Substantive Examination must be performed based on a Search Report. The Search Report may be one issued by Singapore under a local Search procedure initiated at any time before 13 months from the priority date or filing date, whichever applies. Alternatively, it is possible to rely on a Search Report issued for a corresponding foreign application (see section below on Supplementary

5 Examination for further details of which applications qualify). Alternatively, it is possible to request combined Search and Substantive Examination at any time before the above-mentioned 36 month deadline. During Substantive Examination, the Examiner will check among other things that: (i) each claim in the application is novel, inventive and industrially applicable; (ii) the description, claims and drawings are clear; (iii) the claims are supported by the description; (iv) the application does not contain any added-matter; (v) the claims relate to an invention which has been searched; (vi) the claims do not relate to matter which is excluded from patentability; and, (vi) there is no double patenting issue with existing Singapore patents/applications. If the Examiner has any objection to the application, he will issue one or more Written Opinions detailing each objection. A response must be filed to each Written Opinion within the non-extendible deadline of 5 months from the date of the Written Opinion. The Substantive Examination process must come to an end a maximum of 18 months from the date of the first Written Opinion. The end of the Substantive Examination procedure is marked with the issuance of a Substantive Examination Report. If the Substantive Examination Report is clear (i.e. contains no objections), a Notice of Eligibility will accompany the clear Substantive Examination Report. In this case, the grant fee must be paid within two months after the date of the Notice of Eligibility in order for the application to proceed to grant. On the other hand, if the Substantive Examination Report is unclear (i.e. contains one or more objections), a Notice of Intention to Refuse will accompany the unclear Substantive Examination Report. The Applicant would then have the option of either requesting an Examination Review (see below) or allowing the application to be finally refused. Divisional applications may be filed up until the final date of refusal. Please see Annex A for a flow diagram of the Substantive Examination process. - Supplementary Examination Under the new law, it will be possible to obtain a Singapore patent on the basis of foreign final examination results issued in respect of a corresponding foreign national or international patent application. To proceed in this manner, it will be necessary to request Supplementary Examination of those foreign final examination results. During Supplementary Examination, the Intellectual Property Office of Singapore will examine the foreign final examination results to determine if they meet Singapore requirements. It will only be possible to proceed to grant if it is determined during Supplementary Examination that the foreign final examination results meet Singapore requirements. The deadline for requesting Supplementary Examination is 54 months from the Singapore application s priority date or, if priority is not claimed, its filing date (e.g. international filing date, divisional lodgement date or national filing date). At the time of requesting Supplementary Examination it is necessary to submit: (i) (ii) a copy of either the corresponding foreign patent or the final examination results of the corresponding foreign application with a copy of the allowed claims referred to in the results; and, a table setting out how each claim in the Singapore application is related to a claim identified in (i) as being novel, inventive and industrially applicable. A suitable corresponding patent/application is a patent/application which is linked to the Singapore application in question by way of a priority claim and was filed in any one of the following jurisdictions: Australia, Canada (filed in English only), Japan, the United Kingdom, the United States of America, the European Patent Office (filed in English only), South Korea and a PCT application. Additionally, in the absence of a priority claim and where the Singapore application in question is a national phase application, a suitable corresponding patent/application is a national or regional phase patent/application which is derived from the same PCT application as the Singapore national phase application in question and is filed in any one of the following jurisdictions: Australia, Canada (filed in English only), Japan, the United Kingdom, the United States of America, the European Patent Office (filed in English only) and South Korea.

6 During Supplementary Examination, the Intellectual Property Office of Singapore will review the foreign final examination results to confirm among other things that: (i) each Singapore claim is supported by the description; (ii) each Singapore claim is related to a foreign claim which has been examined to be novel, inventive and industrially applicable; (iii) each Singapore claim does not relate to matter which is excluded from patentability; (iv) there is no double patenting issue with any existing Singapore patents/applications; and, (v) the Singapore application does not contain any added matter. If the Examiner has any objection to the application, he will issue a single Written Opinion detailing each objection. A response must be filed to the Written Opinion within the non-extendible deadline of 3 months from the date of the Written Opinion. The Supplementary Examination process must come to an end a maximum of 6 months from the date of the Written Opinion. The end of the Supplementary Examination procedure is marked with the issuance of a Supplementary Examination Report. If the Supplementary Examination Report is clear (i.e. contains no objections), a Notice of Eligibility will accompany the clear Supplementary Examination Report. In this case, the grant fee must be paid within two months after the date of the Notice of Eligibility in order for the application to proceed to grant. On the other hand, if the Supplementary Examination Report is unclear (i.e. contains one or more objections), a Notice of Intention to Refuse will accompany the unclear Supplementary Examination Report. The Applicant would then have the option of either requesting an Examination Review (see below) or allowing the application to be finally refused. Divisional applications may be filed up until the final date of refusal. Please see Annex B for a flow diagram of the Supplementary Examination process. - Examination Review If the result of Substantive Examination is the issuance of an unclear Substantive Examination Report or if the result of Supplementary Examination is the issuance of an unclear Supplementary Examination Report, it is possible to request for an Examination Review. The Examination Review is a type of written Appeal procedure during which a second Examiner will review the application documents to determine whether they agree or disagree with the unclear Substantive/Supplementary Examination Report issued by the first Examiner. The request for a Review must be accompanied by written submissions to overcome the unresolved objections in the unclear Substantive/Supplementary Examination Report. The written submissions should include arguments and/or amendments. The Examination Review must be requested within two months after the date of the Notice of Intention to Refuse which accompanied the unclear Substantive/Supplementary Examination Report. Upon completion of the Examination Review, an Examination Review Report will be issued setting out the second Examiner s opinion on the unclear Substantive/Supplementary Examination Report in view of the written submissions. If the second Examiner believes that there are no unresolved objections, the Examination Review Report will be accompanied by a Notice of Eligibility. In this case, the grant fee must be paid within two months after the date of the Notice of Eligibility in order for the application to proceed to grant. On the other hand, if the second Examiner believes that one or more unresolved objections remain, the Examination Review Report will be accompanied by a Notice of Refusal. In this case, refusal of the application will take effect two months after the date of the Notice of Refusal. Divisional applications may be filed up until the final date of refusal. The Examination Review procedure can be seen in both Annexes A and B.

7 SINGAPORE NATIONAL PHASE PROSECUTION TIPS As mentioned above, a Singapore national phase application filed on or after 14 February 2014 will be subject to the new law. Essentially, the Applicant will be faced with the option of either requesting Substantive Examination or Supplementary Examination. Where Substantive Examination is chosen, the Applicant will also have to decide whether to request combined Search and Substantive Examination or Substantive Examination based on a Search Report issued in respect of a foreign corresponding application. The following recommends which procedure to choose depending on the content of the International Preliminary Report on Patentability (IPRP) issued for the international application on which the Singapore national phase application is based. If the IPRP indicate that all claims have been searched and are valid over the prior art, we recommend that the Applicant requests Supplementary Examination based on the IPRP to try to proceed to grant. This should avoid the cost of Substantive Examination in Singapore. If the IPRP indicates that all claims have been searched but that some claims are invalid over the prior art, we recommend requesting Substantive Examination based on the International Search Report (ISR). This should avoid the cost of requesting Search in Singapore. If the IPRP indicates that all claims have not been searched, we recommend requesting combined Search and Substantive Examination. This should provide further opportunity for having all claims searched and examined. This document is provided for information purposes only and does not constitute legal advice. Please do not hesitate to let us know if you have any questions on any of the above information or if you have any specific questions relating to any particular Singapore patent application. Contact Us Kristian Robinson Andrew Mears Director Senior Associate Head of Patents Patent Department E: kristian.robinson@spurson.com E: andrew.mears@spruson.com

8 ANNEX A FILING Combined Search and Substantive Examination Substantive Examination based on local/foreign Search Report Request Substantive Examination by 36 mths from priority/filing date No objections resolved 1 or more Written Opinions unresolved 18 mths Clear Sub. Exam. Report Unclear Sub. Exam. Report Notice of Intention to Refuse 2 mths Examination Review resolved Examination Review Report unresolved Notice of Eligibility Notice of Refusal 2 mths 2 mths Pay Grant Fee Application Refused

9 ANNEX B FILING Supplementary exam Request supplementary examination by 54 mths from priority/filing date No objections resolved Clear Supp. Exam. Report Single Written Opinion unresolved Unclear Supp. Exam. Report 6 mths Notice of Intention to Refuse Examination Review 2 mths resolved Examination Review Report unresolved Notice of Eligibility Notice of Refusal 2 mths 2 mths Pay Grant Fee Application Refused