The Singapore Examination System and the PCT. Jim Greene-Kelly. There are four routes for examination of a Singapore patent application:

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1 Lloyd Wise Patents Designs Trade Marks London Hong Kong Singapore Manchester Beijing Lloyd Wise 59 Tras Street Singapore Telephone: (+65) Facsimile: (+65) Website: The Singapore Examination System and the PCT Jim Greene-Kelly This paper discusses the consequences for Singapore of changing the present system of examination under the PCT where a separate search and International Preliminary Examination are conducted to one where the search and examination are combined, with the examination just leading to a statement of patentability without an opportunity for dialogue. This will be looked at from two aspects, first, how this will affect the Singapore patent system and second, how this will affect users. Singapore is a small country of about three and a half million people. For countries of such a size, it is difficult to provide a full patent examination system in which applications are searched and examined locally since this would require substantial resources including the provision and training of a number of technially qualified people of which there is already a scarcity. Singapore gets round this problem by essentially relying on search and examination conducted elsewhere. There are four routes for examination of a Singapore patent application: 1) Filing a national patent application and relying on the prosecution of a prescribed corresponding foreign application with the search and/or examination results of that foreign application (for example a US application) being used for the Singapore case. 2) Filing a national patent application and requesting local search and examination. For local search and examination the Singapore Patents Registry does not provide this service in-house but contracts out the search and examination functions to the Austrian and Australian Patent Offices which perform a PCT-style search and examination of the application. Patent, Design and Trade Mark Attorneys Resident Partners: James P Greene-Kelly Timothy L. Watkin Angela Leong Francine Tan Office Manager: Jenny Low Non-Resident Partners: Paul A. Bowman Esmond A. Hitchcock Alice Findlay Mark D. Irons Sheila Wallace Robin M. Waldren Graeme Hall

2 3) PCT Chapter I. A PCT application entering the national phase via Chapter I is subject to local examination, relying on the international search, contracted out as noted above. 4) PCT Chapter II. A PCT application entering the national phase via Chapter II is not examined in Singapore. Instead the International Search and International Preliminary Examination take the place of any search and examination locally. Local examination is of a very similar format to PCT International Preliminary Examination. If there are any objections, a first and, if time, a second, written opinion issue after which an examination report is concluded. Even if objections still exist in the examination report, the applicant can still pay the grant fees and obtain a patent. The Singapore system is thus based on self-assessment and the examination report is only of advisory nature. It is up to the applicant to satisfy himself that the claims are patentable before the grant fees are paid. However, there is an obvious desirability in obtaining a positive examination report since such provides an independent adjudication of the patentability of the invention. The option of pursuing a patent application via the PCT Chapter II route through search and examination is roughly similar to pursuing a patent application using local search and examination. The only real difference between the two procedures is that in the PCT Chapter II procedure some objections cannot be resolved at the PCT international stage, for example disunity which needs to be resolved during the national phase by the filing of a divisonal application directed to any separate inventions which were not searched and examined in the international phase. Case law is also forming in Singapore that it is quite important for the applicant to ensure not only that the claims are patentable but also that the claims the applicant presents at grant are either the same or within the scope of the claims examined. There are not sufficient cases before the Court to provide definite guidance in this respect but the way things are going it appears, firstly, that inventions which have not been searched and examined, if retained in the application, may not be enforceable after grant and also, following Contour Optic Inc. v

3 Pearl s Optic Co. Ltd (unreported), if the applicant relied on a corresponding granted patent [route (1) above], the claim wording of the granted patent has to be followed so that the same or substantially the same invention is claimed. We do not yet know what the attitude of the courts will be to the litigation of a patent for which the claims have been examined and not found patentable. One possibility is that this may creat a prejudice, at least in the mind of the judge, so that the burden of proof may effectively become shifted to the patentee to show that the claims are patentable, thus affecting the strength of the patent. Thus, self-assessment does not mean that the applicants are free to claim any invention they choose after examination is concluded and the results of examination may still be important even though advisory in nature. If examination is curtailed under the PCT, this will result in PCT Chapter II applications not having the same degree of examination as applications examined via the other routes noted above. This will make the workings of the Singapore patent system as it currently exists impossible since a short form of examination of PCT Chapter II cases cannot equate to the dialogue-based examination of the other routes. This will lead to patents undergoing different standards of examination depending on the route taken which cannot be in the public interest nor in the interests of applicants, since the only chance of being able to make submissions for patentability will be lost for PCT CHII cases and this may, for the reasons stated above, have an effect on the strength of the patent. The only course of action available for Singapore to ensure a uniform standard of completeness of examination would be to require compulsory examination of applications entering the national phase via Chapter II. As it is, Chapter I PCT applications require examination in Singapore. To date Singapore has not amended its law to allow a 30 month Chapter I national phase entry. However, once Singapore does do this, there would appear no difficulty in Singapore requiring examination at the 30 month deadline for Chapter II national phase examination as well.

4 This would, however, be a retrograde and possibly unimplementable step. Reliance on a proper examination under the PCT Chapter II makes prosecution of the Singapore national phase relatively simple and inexpensive for the applicant. Compulsory local examination of Chapter II cases would substantially increase costs as would the workload of the foreign Patent Offices that Singapore uses for its local examination. Since it is difficult enough to find foreign Patent Offices with enough capacity to assist Singapore in this way, this will only become more difficult if not impossible if such capacity cannot be found. From my firm s practice, we see that most applications filed in Singapore these days from abroad are PCT Chapter II national phase entries. Chapter I is rarely used and normal convention applications are becoming rarer. Thus, the potential for increase in workload if a re-examination of all PCT Chapter II national phase entry needs to be conducted in Singapore is going to be substantial. Thus, removal of a proper examination of the application under PCT Chapter II will have serious consequences for Singapore. Although Singapore patent law may be able to be adapted to accommodate changes under the PCT, a briefer examination under PCT Chapter II cannot be acceptable to replace local examination in Singapore and there must be doubt that the increased number of local examination requests which will need to be processed can be met by foreign Patent Offices and if such cannot be met, the Singapore system as it currently stands will be unworkable. Now looking at matters from the user s point of view, my firm files quite a few PCT applications either as initial filings or claiming priority from Singapore applications. A substantial proportion of these are for individuals and SMEs. For these, the issuance of a conclusive International Preliminary Examination Report showing the claims to be patentable may be of great importance. It is often the case that such applicants are seeking backing for their projects and a clear IPER, which often requires dialogue to be obtained, in many cases provides the key to open the door for funding and for potential backers to take the invention seriously, since this will generally be the first independent view as to the patentability of the invention as claimed. Removal of this possibility as an early stage in the life of the invention, which the PCT, due to the strict time lines involved, provides will adversely affect the ability of such applicants to commercialise their inventions.

5 Singapore also has a scheme to fund part of the expense of patent applications. The fund is in two parts. The first part allowing a limited payment to be made after filing to defray some of the initial drafting costs and the second more substantial part payable once a clear examination report has been received in respect of an application. An International Preliminary Examination Report can be used for this second part allowing defraying of substantial costs at the national phase entry stage. Obviously, with no opportunity for dialogue during an International Preliminary Examination stage, the likelihood of a clear report issuing will be reduced as there will be no opportunity to persuade the examiner away from an initial view of unpatentability. This will in turn make funding of applications for Singaporean individuals and SMEs more difficult. Thus, the removal of dialogue would affect individuals and SMEs who rely much more on a positive IPER as an early independent indication of the patentability of the invention than larger companies. In summary, therefore, both from the point of view of the Singapore patent system as a whole and Singapore users of the patent system, the removal of dialogue in International Preliminary Examination will likely be detrimental. Perhaps a solution is to have a means for optionally allowing a dialogue with the examiner, upon payment of an additional fee, if the applicant is dissatisfied with the initial report. This will certainly assist individuals and SMEs. However, it is unlikely that this would particularly affect the problem that the Singapore patent system as a whole would face as the problem of the processing of a substantial number of additional examination requests would still exist, unless most applicants used the dialogue option, and if they did, the system would be effecting the same as it is now. Draftalk.doc