December 1, 2013
In July 2012, Singapore's Parliament passed the Patents (Amendment) Bill to modify Singapore's self-assessing patent system (i.e. a system that grants a patent even if the invention does not satisfy patentability requirements such as novelty, inventive step and industrial applicability) to a positive grant examination system (i.e. a system that grants a patent only if there is a substantive examination report showing that the invention is novel, inventive and capable of industrial application). Singapore's positive grant examination system will take effect after amendments to the Singapore Patent Rules are passed.
After the amendment, an applicant who wants to rely on the final results of search and examination of a corresponding foreign application, corresponding international application or related national phase application for the grant of a Singapore patent application, may do so by making a request for supplementary examination. IPOS will issue a notification of intention to refuse the application to the applicant if the applicant is unable to overcome negative final results of supplementary examination.
The latest draft amendments to the Singapore Patent Rules ("draft rules") were released by the Intellectual Property Office of Singapore (IPOS) for consultation with local practitioners on 9 October 2013. It also helps to provide advance notice of the impending changes so as to give all parties more time to prepare for the impending legislative changes. However, it should be noted that the draft rules are still subject to changes.
Some of the notable changes embodied in the draft rules relate to search and examination. These are as follows:
- The prescribed period to file a request for combined search and examination or request for examination based on a foreign search result will be changed from the current 21 months to 36 months (extendable by up to 18 months as of right from the expiry of the 36 months prescribed period) from the relevant date. The relevant date refers to the priority date that is the earliest date of patent application for the invention, filing date of the application if there is no priority date, or initiation date in the case of a Singapore divisional patent application.
- The prescribed period to file a request for a supplementary examination report to rely on the final results will be 54 months (extendable by up to 18 months as of right from the expiry of the 54 months prescribed period) from the relevant date.
- The prescribed period for responding to a Written Opinion of an examiner on the patentability of the application in respect of a supplementary examination report will be 3 months (non-extendable) from the date of the Registrar's letter notifying the issuance of the Written Opinion. The 5 months timeline (non-extendable) for responding to a Written Opinion of an examiner in respect of a combined search and examination report or an examination report remains unchanged.
- The prescribed period to file a request for an examination review will be 2 months (extendable by up to 6 months as of right from the expiry of the 2 months prescribed period) after the date of the Registrar's letter notifying the intention to refuse the application or issuance of a final examination report, a final search and examination report, or a final supplementary examination report.
The change to a positive grant examination system is to be welcomed as it means that patents issued by Singapore authorities would henceforth be of high quality. The changes to the timelines concerning search and examination would give applicants more flexibility.