Update: we have posted a new blog post discussing the issues surrounding supplementary examination.
The Singapore Patents Act as amended introduces a supplementary examination procedure. If an applicant wishes to rely on the prosecution to grant of a foreign corresponding application, there is now a requirement for supplementary examination to be requested.
The purpose of the supplementary examination is to establish whether there is claim correspondence between the Singapore application and the foreign corresponding application. Supplementary examination also ensures that the corresponding claims in the foreign application have been examined for novelty, inventive step and industrial applicability.
Section 29(1)(d) of the Singapore Patents Act as amended however reads:
29.—(1) The applicant in an application for a patent (referred to in this subsection as the application in suit) shall comply with one of the following paragraphs within the period prescribed for that paragraph:
(d) file the prescribed documents and a request in the prescribed form for a supplementary examination report, where —
(i) the applicant relies on the final results of —
(A) any search and examination as to the substance of one corresponding application, corresponding international application or related national phase application; or
(B) any search and examination as to the substance of the application in suit during its international phase (if the application in suit is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3));
(ii) each claim in the application in suit is related to at least one claim in that corresponding application, corresponding international application or related national phase application, or in the application in suit during its international phase, as the case may be; and
(iii) according to those results, each claim in the application in suit appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and 5 industrial applicability (or utility).
Read that carefully - especially (ii) and (iii) and note the “and” that links (i), (ii) and (iii).
(i) is pretty clear - you have to request supplementary examination if you are relying on the prosecution to grant of a corresponding foreign application. (ii) and (iii) are rather more strange.
The legislation, as it stands, appears to say that, where you are relying on the grant of a corresponding foreign application, you need to file a request for supplementary examination - but only where you have already complied with the things the supplementary examination is meant to examine!
Surely this can’t be right? We have pointed this out to officials at IPOS and are eagerly awaiting their response!