I was recently invited to give a webinar to the Chartered Institute of Patent Attorneys on the topic of “Understanding SPCs in Different Countries”.
The plan was to undertake a survey of the patent laws in various South East Asian Countries, including ASEAN, focussing on whether it is possible to obtain extensions of the term of a patent covering a pharmaceutical or biologic, where there had been a delay in obtaining regulatory approval.
The question the webinar would answer is: are Supplementary Protection Certificates (SPCs) and Patent Term Extensions (PTEs) available in Brunei, Cambodia, East Timor, Indonesia, Laos, Malaysia, Myanmar, Philippines, Singapore, Thailand or Vietnam?
What is a Patent Term Extension or a Supplementary Protection Certificate?
A patent term extension (PTE) or a supplementary protection certificate (SPC) extends the term of protection of a patent beyond its original expiry.
This extension of the patent term compensates the patentee for time lost during the regulatory approval process, particularly in industries like pharmaceuticals and biotechnology, where lengthy testing and approval periods can significantly reduce the effective patent life. PTE aims to restore part of the exclusivity period, allowing patent holders to maximise their commercial returns on their innovations. The specific provisions and eligibility criteria for obtaining a patent term extension vary by jurisdiction.
Singapore
The Singapore Patents Act contains provisions for extension of the term of protection of a patent to take into account delays in obtaining marketing approval for pharmaceutical products in Singapore.
Cambodia, Indonesia, Laos, Malaysia, Philippines, Thailand and Vietnam
Supplementary Protection Certificates and Patent Term Extensions are not available in Cambodia, Indonesia, Laos, Malaysia, Philippines, Thailand or Vietnam.
Interestingly, in Vietnam, there is a mechanism for compensating patent owners for regulatory delays in that any maintenance fees payable for keeping the patent alive during the term of delay are waived. The term of the patent is unchanged, however.
East Timor
There is no patent system in place at the moment in East Timor.
Brunei
The Bruneian Patents Act contains provisions for patent term extensions for delays in regulatory approval, similar to those available in Singapore.
Acknowledgements
We are grateful to our ASEAN and South East Asian friends at CCW Partnership (Brunei), Abacus IP (Cambodia), Tilleke & Gibbins (Indonesia), Raja, Darryl & Loh (Malaysia), Cruz Marcelo & Tenefrancia (Philippines), Tilleke & Gibbins (Thailand) and Kenfox IP (Vietnam and Laos) for their assistance in compiling this information.
As you may recall from this blog, IPOS issued a number of announcements of days that are to be treated as “excluded days” under the various intellectual property Acts.
IPOS initially declared a period of excluded days at the end of April and begining of May 2022 in conjunction with the launch of a new electronic filing system. This was to take into account any possible disruption during the transition between the retirement of the old IP2SG electronic filing system and the launch of “IPOS Digital Hub”, the next generation electronic online system.
Unfortunately, the disruption has been more extensive than anticipated. IPOS has acknowledged that “some users are facing issues with certain transactions”.
Given this, IPOS has declared a number of further periods of excluded days for business before the office.
This post attempts to summarise the current situation with regard to excluded days before IPOS in the first half of 2022.
The Intellectual Property Office of Singapore (IPOS) announced today that it is delaying the launch of IPOS Digital Hub and the implementation of the previously announced official fee increases.
Summary
IP2SG will be switched off on 25 May 2022 at 2359 hours Singapore time. The new electronic filing platform IPOS Digital Hub will start operating on 2 June 2022 at 1200 hrs Singapore time.
We expect that the period between 26 May 2022 and 5 June 2022 will be excluded days and any deadlines falling within this period may be met by Monday 6 June 2022.
The increases in official fees charged by IPOS for its services will take effect only on 26 May 2022.
UPDATED 28 April 2022: IPOS has announced a delay in the proposed launch of IPOS Digital Hub to 2 June 2022 (details below). New excluded days will be announced. Despite the delayed launch, the excluded days declared by IPOS and discussed in this post are not affected.
The Intellectual Property Office of Singapore has announced the launch of a new electronic filing system for patents, trade marks and designs, called IPOS Digital Hub.
On 29 April 2022, IPOS will retire its existing e-filing system (IP2SG), which has been in use since February 2014. The plan is for IPOS Digital Hub to go live on 4 May 2022.
On 25 May 2022, IPOS will retire its existing e-filing system (IP2SG), which has been in use since February 2014. The plan is for IPOS Digital Hub to go live on 2 June 2022 at 1200 hrs Singapore Time.
IPOS Digital Hub will then become the default electronic online system (EOS) for patent, trade mark and registered design filings in Singapore.
In order to implement these changes, IPOS has issued a Practice Direction setting out a number of excluded days.
TL;DR In combination with an intervening weekend and a couple of public holidays in Singapore falling within this period, the entire period from 29 April 2022 to 8 May 2022 is excluded for the purposes of transacting business with IPOS.
How to File a Patent Application in Singapore
This guide tells you what you need to file a “domestic” or Singapore convention application, i.e., a patent filing initiated with IPOS in its own capacity. If desired, the Singapore patent application may claim convention priority under the Paris Convention.