We’ve recently heard from the Intellectual Property Office of Singapore that it plans to close off the foreign route for Singapore patent applications and to abolish supplementary examination.
Under the proposals, it will no longer be possible to request supplementary examination to rely on the grant of a foreign corresponding application for Singapore applications filed on or after 1 January 2017 .
Only applications that have been examined for novelty and non-obviousness under Singapore patent law will be allowed to grant as patents in Singapore.
It is possible under the current Patents Act and Rules for an applicant to rely on the grant or the allowance of a foreign corresponding application for the grant of a Singapore patent.
An applicant who has a granted patent (or an application prosecuted substantially to grant) in Australia, Canada (English), the European Patent Office (English), Japan, New Zealand, Republic of Korea, the United Kingdom or the United States of America may request supplementary examination on a corresponding Singapore application related by priority to that foreign case.
There are a number of issues with obtaining Singapore patents relying on foreign grants and also potential problems with requesting supplementary examination.
We have been advising our clients generally against obtaining patents in Singapore relying on foreign grants since we were established in 2007. We are pleased to see that IPOS has taken note of these issues and has decided to change the law.
Issues with Supplementary Examination and Reliance on Foreign Grants
One of the problems with supplementary examination is that substantive examination of the Singapore application is effectively conducted under foreign patent law, not Singapore patent law.
The laws of that foreign jurisdiction may be different from those of Singapore, and in some cases, very different. An extreme example is United States patent law, which has a number of notable differences from Singapore patent law (subject matter eligibility, grace period, added subject matter, first to invent for applications filed before the America Invents Act, etc).
The Singapore patent that grants at the end of the supplementary examination process may well comply with the patentability requirements of another jurisdiction, but may claim subject matter that is not patentable under Singapore law.
The Patents Act 1994 came into force in 1995 and the modern Singapore patent system is 20 years old this year. During this time, we have had “self-assessment” for 19 years and “positive grant” since 2014. Yet it is still possible to get a Singapore patent on the back of a patent application that has not been examined for patentability under Singapore patent law.
How many patents have been granted during this time (and which are still in force) that are invalid under Singapore patent law? Does it benefit industry to have so many potentially invalid patents out there? To what extent does this uncertainty hinder innovation and investment in the country?
The answers to these questions are not clear, but what is clear is that the current situation has been a matter of concern to the authorities for some time.
Removal of Foreign Route
In the announcement sent by email to patent practitioners, IPOS states that:
We have shared our concerns about unmeritorious patents entering our patent system via the foreign route and the need to enhance the quality by ensuring all Singapore granted patents fully meet the patentability requirements
…we are of the view that closing the foreign route will indeed strengthen our patent regime.
IPOS plans to close off the foreign route by removing the ability for applicants to rely on foreign patent grants to obtain Singapore patents after 2017.
These changes bring the country in line with the major patent offices in the rest of the world, which only allow patents to be granted which fulfil the patentability requirements set out in their own laws.
Please note that the changes discussed below are only proposals announced by IPOS. No bill has been laid before Parliament and the implementation details are unclear.
The date of 1 January 2017 is only the working date announced by IPOS and this date may change. The substance of the changes are however likely to be implemented in some form or another, whether on the proposed implementation date or after.
We will post updates on this blog as the details of the changes become clearer.
Mixed Route Still Available
We understand from IPOS that it does not plan to remove the mixed route.
It will therefore still be possible to request examination relying on the search results of a foreign application or an International Search Report for national phase applications.
Date of Implementation and Filings Affected
The proposed changes will affect patent applications filed on or after 1 January 2017.
For PCT national phases, the relevant date is the date of filing of the International application (not the date of national phase entry in Singapore).
Divisional applications which are lodged at IPOS on or after 1 January 2017 will also be affected by the proposed changes.
Increase in Supplementary Examination Fee
The First Schedule of the Singapore Patent Rules establishes a fee for requesting supplementary examination on Patents Form 12A. Currently, the fee is “nil”.
IPOS has announced that it plans to introduce a fee for supplementary examination fee of S$400, for requests for supplementary examination filed on or after 1 January 2017.
As supplementary examination is not available for Singapore patent applications filed on or after 1 January 2017, this proposed change will only affect applications filed on or after 14 February 2014 and before 1 January 2017.
IPOS has also announced that the planned S$400 supplementary examination fee will be increased gradually over the years. The aim is to deter supplementary examination and to promote local examination.
Summary of Proposed Changes
Changes in Availability of Prosecution Routes
Applications filed before 14 February 2014
- foreign, mixed or local route available
- possible to pay grant fee in face of negative Examination Report
Applications filed on or after 14 February 2014
- foreign, mixed or local route available
- “positive grant”
- supplementary examination required if relying on foreign route
- fee of S$400 for supplementary examination requests filed on or after 1 January 2017
Applications filed on or after 1 January 2017 (planned)
- foreign route no longer available
- not possible to request supplementary examination
- local route available
- mixed route available
“Foreign route” means relying on grant of foreign corresponding application (supplementary examination required for applications filed on or after 14 February 2014).
“Mixed route” means requesting examination based on search report of foreign corresponding application or International Search Report.
“Local route” means requesting search and examination without reference to any foreign application.
Changes in Supplementary Examination Fee
Supplementary examination requests filed before 1 January 2017
- no fee
Supplementary examination requests filed on or after 1 January 2017 (planned)
- S$400, increasing annually
If you have any questions on the proposed changes or want to know more about prosecution strategy in Singapore, please get in touch with us.