TL;DR IPOS has now introduced a general acceleration programme for fast-tracking patent applications in Singapore

As some readers may be aware, we have recently been experiencing a significant backlog in examination of patent applications at the Intellectual Property Office of Singapore (IPOS).

In the good old days, we would typically expect an office action (whether a Written Opinion or more rarely a Notice of Intention to Grant) to issue within 3-6 months of requesting examination on a Singapore patent application. Nowadays, it is not unusual for a year or two to pass before IPOS even acknowledges that examination has been requested.

We and others in the profession, including the Association of Singapore Patent Attorneys (ASPA, where I sit on the executive committee) have discussed this issue at length with IPOS. The Singapore Patent Office, to its credit, has recently started recruiting and training patent examiners. It is clear, however, that it will be a few years before these trainee examiners can be considered fully fit to undertake the challenging jobs of examining patent applications in Singapore.

Meanwhile, IPOS has been looking at other ways to solve this problem.

The good news is that applicants pursuing patent applications in Singapore now have an opportunity to “fast track” their cases before IPOS. Thus, the recently announced revised “FAST” programme at IPOS now allows search and examination of patent applications to be accelerated.

The not so good news is the significant additional official fees that are required to get an application into the programme.

SG Patents Fast

SG Patents Fast is IPOS’ name for the patents part of the acceleration programme.

Under this scheme, applicants have the option of paying additional official fees for acceleration on top of the existing official fees for requesting search and examination. In return, applicants can expect office actions to issue sooner than they would otherwise.

There are two options available under this scheme:

  • SG Patents Fast 4: in which IPOS aims to issue the first office action within 4 months

  • SG Patents Fast 8: in which IPOS aims to issue the first office action within 8 months

The first office action may be a Notice of Intention to Grant, if there are no unresolved patentability issues remaining, or more typically a Written Opinion setting out the Examiner’s objections.

Note that the numbers refer to the target periods, rather than the speed - so that higher is not faster in this naming scheme!

SG Patents Fast 4

SG Patents Fast 4 is the “highest tier” of the acceleration programme, with a target time frame of four months. It is suitable for applications where examination has not yet been requested.

SG Patents Fast 4 provides the strongest “power up” available under any of the patent acceleration programmes introduced by IPOS.

The official fees for the “SG Patents Fast 4” option are as follow:

  • S$1,800 on requesting combined search and examination
  • S$1,200 on requesting examination relying on an existing search report

As set out above, IPOS aims to issue a first office action within four months of a successful application into this acceleration programme once these fees are paid (together with the official fees for requesting combined search and examination or for requesting examination relying on an existing search report).

SG Patents Fast 8

SG Patents Fast 8 is the “second tier” of the acceleration programme, with a target time frame of eight months.

Like SG Patents Fast 4, SG Patents Fast 8 is only suitable for applications where examination has not yet been requested. It provides a significant speed-up of the acceleration process, but not as fast as under SG Patents 4.

The official fees for the “SG Patents Fast 8” option are half those of “SG Patents Fast 4”, i.e.,:

  • S$900 on requesting combined search and examination
  • S$600 on requesting examination relying on an existing search report

In return, IPOS will aim to send a first office action within eight months of a successful application to enter this fast track.

Qualifying Criteria for Acceleration

What then makes a “successful application” for entry into these schemes?

The announcement by IPOS sets out a number of rules that determine whether an application qualifies to join the various patent acceleration programmes.

First, the application cannot be a divisional application. This is the case whether the patent application is a first generation divisional, or a subsequent generation divisional application. In other words, the only applications for which accleration is possible are convention applications (i.e., a patent application that is nationally filed, whether it claims priority or not) or a Singapore national phase of an International (PCT) application.

Second, the patent application cannot contain more than 20 claims. If a patent application contains more than 20 claims, then it will not be entered into SG Patents Fast (whether 4 or 8). It is of course possible to file a voluntary amendment prior to requesting examination to reduce the number of claims presented.

Third, IPOS reminds us that the request for acceleration must be made on the same official forms that are used for requesting combined search and examination or requesting examination relying on an existing search report. Helpfully, IPOS states that the the acceleration fee must also be paid!

Fourth, IPOS has set a cap of five acceleration requests “per entity” per month. While IPOS explains that the entity can be an individual or corporate, it is not clear whether the cap applies to an applicant or a patent attorney or firm of patent attorneys.

It would be sensible for a monthly cap to be imposed on an applicant, so that it or he or she cannot file more than five requests for acceleration within a single calendar month. It seems to us less sensible for a patent attorney firm, which may handle a large number of applications at IPOS, to fall under such a month cap.

The cap does not apply to requests for acceleration of subsequent office actions.

Conclusion

The availability of an acceleration option, available generally to patent applications, is welcome.

Readers should be aware of the otehr acceleration programmes available for Singapore patent applications, such as the ASEAN Patent Examination Cooperation programme (ASPEC), the Patent Prosecution Highway (PPH, inclduing Global PPH) and the Collaborative Search and Examination (CS&E) programme with Indonesian and Vietnamese patent offices.

On the other hand, some applicants wish to slow down the prosecution of a patent application, rather than speeding it up. It is possible to do this by extending the time limit for requesting examination of a Singapore patent application.

Please get in touch with us if you would like more information on the acceleration programmes, or if you have any questions on their impact.

← Back to Blog