Cantab IP

Cantab IP Recognised Again in IAM Patent 1000

Tue, 16 Jun 2026 16:32:51 +0800

Cantab IP has been ranked Bronze for Singapore patent prosecution in the 2026 edition of the IAM Patent 1000, while Dr Chong-Yee Khoo has been ranked Silver in the individuals: prosecution category.

This continues last year’s recognition for both the firm and Dr Khoo.

IAM’s commentary reads:

A boutique with heavyweight credentials, Cantab IP “consistently provides timely and effective advice for securing meaningful patent coverage thanks to its very commercially-minded approach”. Spearheaded by Chong-Yee Khoo, the outfit punches well above its weight, drawing on vast legal know-how and an impressive command of complex technologies to deliver precise and cost-effective protection.

IAM also refers to Dr Khoo’s combination of PhD-level scientific training and extensive legal experience, and his work on inventive step, added matter and claim strategy in technically demanding cases.

We are very pleased by the continued recognition by IAM. It is particularly significant for a small specialist firm like ours. There are many IP firms operating in the Singapore patent prosecution market, including much larger firms with more resources at their disposal. We would like to think that Cantab IP’s inclusion in the IAM Patent 1000 reflects our ability to blend local knowledge with a wider international outlook and experience, helping clients and foreign associates navigate the Singapore patent system.

The IAM Patent 1000 is published annually and identifies patent professionals and firms in key jurisdictions around the world. According to IAM, the guide is compiled following an extensive research process involving interviews with attorneys, patent attorneys and in-house counsel.

We are grateful to our clients, foreign associates and colleagues who provided feedback to IAM’s researchers, and offer our congratulations to everyone else who made the list.

IPOS Announces Changes to PPH Procedures for Singapore Patent Applications

Fri, 12 Jun 2026 19:31:21 +0800

The Intellectual Property Office of Singapore (IPOS) has issued Patents Registry Circular No. 2/2026, announcing a couple of new measures which it hopes will encourage use of the Patent Prosecution Highway (PPH) by Singapore patent applicants.

What is the Patent Prosecution Highway?

The Patent Prosecution Highway is an international worksharing programme which allows applicants to request accelerated examination in Singapore by relying on positive examination results from a participating overseas intellectual property office. Singapore has a global network of more than 30 PPH partners, including the IP offices of China, Japan, Korea, the United States and the European Patent Office.

What New Measures has IPOS Announced?

First, IPOS will endeavour to issue the first office action within 6 months from the date of the PPH request. This applies to PPH requests filed on or after 1 July 2026. It’s important to understand that IPOS has only stated that they will “endeavour” to issue a first office action within 6 months, so this a target and not a promise.

Second, for a limited period, the official fee for search and examination requests will be reduced by 30%, where a PPH request is filed together with the search or examination request. This applies only to requests filed between 3 August 2026 and 31 December 2027.

Currently, applicants already benefit from a 30% official fee discount, but this has to be requested as a refund after the fees have already been paid. The current arrangement applies to requests filed before 3 August 2026. The new arrangement will give the same benefit for newer requests, but with a simplified payment process.

Why Has IPOS Announced These Changes?

IPOS is clear that it wants to encourage more use of PPH by applicants. The new upfront fee reduction and the 6-month first office action target will undoubtedly make the PPH route more attractive for some applicants.

The announcement should also be seen against the current background of patent examination in Singapore. In recent years, many applicants and practitioners have experienced significantly longer waiting times for first office actions in regular examination. Encouraging greater use of PPH is therefore consistent with an attempt to move suitable cases through examination more efficiently.

How Else Can Applications Be Accelerated?

In the circular, IPOS reminds of other patent acceleration options available, including the ASEAN Patent Examination Co-operation (ASPEC), Collaborative Search and Examination programmes with Viet Nam and Indonesia and re-registration programmes with Cambodia and Laos.

However, as we previously reported, the SG Patents Fast programme is currently under review, with acceptance of new acceleration requests suspended from 4 January 2026 until further notice.

Cantab IP’s View

The changes are generally welcome for applications for which PPH is suitable and low risk. In those cases, the revised process should make the PPH route more straightforward and attractive.

However, there are a number of specific situations for which PPH will be entirely unsuitable and where the Singapore claims should not simply follow the claims allowed overseas. In such cases, regular examination may give the applicant more flexibility and result in a stronger and more defensible patent.

As is often the case, the outcome preferred by the IP office for administrative efficiency will not always be the same as the outcome that best serves applicants.

Cantab IP can advise on whether PPH is suitable for a particular Singapore patent application. Please get in touch if you have any questions.

Speaking on Automation for IP Firms at the FICPI Open Forum 2026

Thu, 28 May 2026 10:30:40 +0800

I will be attending the FICPI 23rd Open Forum in Budapest from 16 to 18 September 2026.

The FICPI Open Forum brings together independent IP attorneys from around the world to discuss developments in intellectual property law and practice, with a particular focus on practical issues affecting IP firms and attorney practice.

I will also be speaking in the IP Practice Management Stream on 18 September 2026, in a session entitled “Automate or stagnate: how to transform your legal practice step by step”.

My talk will focus on practical automation in a small IP practice. In particular, I will discuss how automation can help reduce repeated manual work, improve consistency, shorten turnaround times and reduce operational risk. I will also touch on how automation can be introduced gradually, using scripts, templates, database-driven workflows and better use of existing systems, rather than by trying to redesign an entire practice at once.

This is a subject that has shaped the way we work at Cantab IP from the beginning. For a small firm, automation is not simply a question of convenience. It is an important part of maintaining quality, responsiveness and control without building unnecessary administrative layers.

I look forward to meeting clients, associates and colleagues in Budapest, and to exchanging views on how IP practices can adapt sensibly to new technology while preserving professional judgement and service quality.

Please get in touch if you would like to arrange a meeting during the FICPI Open Forum.

AI Patents in Singapore: IPOS Consultation on Emotional Perception

Wed, 27 May 2026 22:02:23 +0800

IPOS has issued a public consultation on the relevance of the decision of the UK Supreme Court in Emotional Perception AI Limited v Comptroller General of Patents, Designs and Trade Marks [2026] UKSC 3 to Singapore patent practice.

The consultation is significant for AI patents in Singapore because it may affect how IPOS examines computer-implemented inventions, artificial neural networks and claims involving software, data processing and mathematical methods.

The Emotional Perception case is significant because it concerns artificial neural networks, computer-implemented inventions and the boundary between patentable technology and abstract subject matter. It is also noteworthy as the UK Supreme Court rejected the long-standing UK Aerotel approach to excluded subject matter.

UK Supreme Court decisions are however not binding on the Singapore Courts. Such judgements may be persuasive, but only to the extent that the reasoning fits Singapore law. Furthermore, Singapore no longer has a statutory list of exclusions corresponding to Section 1(2) of the UK Patents Act 1977 or Article 52(2) EPC, which were discussed at length in the case.

However, we consider that Emotional Perception raises issues that are directly relevant to how AI and computer-implemented inventions are examined in Singapore.

Key Points

IPOS is considering whether Emotional Perception is relevant to Singapore patent practice.

The UK Supreme Court rejected the Aerotel “actual contribution” approach, but the decision is not binding in Singapore.

Singapore no longer has the UK/EPC-style statutory list of excluded subject matter (FAQ: Singapore patentable subject matter and exclusions), although IPOS examination practice still uses an Aerotel-derived analysis.

Cantab IP’s position is that IPOS should review that approach for AI and computer-implemented inventions.

Current Singapore Approach to Computer-Implemented Inventions

Section 13(1) of the Patents Act 1994 states that a patentable invention must be new, involve an inventive step and be capable of industrial application.

Unlike the UK Patents Act and the EPC, however, the current Singapore Patents Act does not contain a statutory list of excluded subject matter such as mathematical methods, business methods, presentations of information or programs for computers “as such”. These were previously set out in Section 13(2) of the Singapore Patents Act, but the Act was partially repealed on 1 January 1996 to remove that provision.

In practice, however, IPOS continues to refuse patent protection for such subject matter. Chapter 8 of the Examination Guidelines for Patent Applications at IPOS explains how this is currently handled in examination practice:

Paragraph 8.3 says that, if there remains an issue that the claims may relate to subject matter which is not an “invention”, the Examiner should undertake a separate analysis of the claimed subject matter. In that analysis, the Examiner should look at substance rather than form, identify the “actual contribution” made by the claimed subject matter and consider the problem to be solved, how the claimed subject matter works and what its advantages are.
Paragraph 8.4 then identifies this “actual contribution” inquiry as the second step of the Aerotel/Macrossan test. It quotes the well-known formulation asking what the inventor has “really added to human knowledge”.
Paragraph 8.5 says that an objection should be raised if the actual contribution lies solely in subject matter that is not an “invention”.

For AI-related inventions, IPOS has published the Supplemental Guidance for the Examination of AI-related Patent Applications. That guidance supplements the main Examination Guidelines and gives hypothetical examples of AI-related claims. IPOS states that AI-related applications are examined case by case, and that the claims must still satisfy the other requirements for patentability.

The Supplemental Guidance recognises that AI applications are found in many fields of technology. It gives examples ranging from collision avoidance, fraud detection and traffic prediction to drug discovery. It also recognises that patent protection may be sought for many aspects of AI-related inventions, including training datasets, machine learning methods and AI-specific hardware such as processors and memory chips.

The Supplemental Guidance however also advises an “actual contribution” approach (Section B(i), paragraphs 4 to 10).

Thus, even though Singapore no longer sets out excluded subject matter by statute, unlike Section 1(2) UKPA or Article 52(2) EPC, the IPOS Examination Guidelines and Supplemental Guidance still use an Aerotel-derived contribution analysis when deciding whether a claim defines an invention. The significance of Emotional Perception is that the UK Supreme Court has now rejected that very approach in the jurisdiction from which it came.

The question is therefore whether Singapore examination practice should continue to rely on an Aerotel-derived contribution analysis, particularly for AI and computer-implemented inventions?

What was Emotional Perception About?

The patent application in Emotional Perception concerned a system using an artificial neural network, or ANN, to recommend media files. The invention sought to identify files that were similar in a way that reflected human perception. The UK Supreme Court described the invention as using an ANN to replicate similarities and differences that a person might subjectively perceive between different files, by reference to objectively measurable physical properties of those files.

In simple terms, the invention was about better recommendations. However, the case was not just about recommendation systems. It also raised wider questions about whether an ANN is a program for a computer, whether the claim was excluded from patentability under UK law and how the UK should assess computer-implemented inventions.

The UK Supreme Court held that an ANN is a program for a computer. It reasoned that, whatever the form of the machine on which the ANN is implemented, the ANN constitutes, in essence, a set of instructions to manipulate data in a particular way to produce a desired result.

The Court also clearly rejected the Aerotel approach. It held that the UK should adopt the EPO’s “any hardware” approach to Article 52 EPC. Under that approach, the presence of hardware is enough to pass the initial threshold. The analysis then moves on to identifying which features contribute to the technical character of the invention and when assessing inventive step.

The Intermediate Step

The UK Supreme Court accepted that the “any hardware” threshold is low. Where a claim involves a computer or other technical hardware, that may be enough to pass the initial threshold. But that cannot be the end of the analysis. Otherwise, an abstract idea could be made patentable merely by reciting conventional computer implementation.

The Court therefore emphasised the application of an intermediate step. Before assessing novelty and inventive step, the examiner or Court must identify which features of the claim contribute to the technical character of the invention as a whole.

This should not simply be an exercise of labelling each feature as technical or non-technical in isolation. The reason is that a feature that looks non-technical on its own may contribute to the technical character of the invention if it interacts with technical features. Conversely, a hardware feature should not count merely because it is hardware, if it does not contribute to the technical character of the invention.

We consider that such an approach is useful for Singapore practice. Thus, the question should not be whether an invention can be reduced to a computer program, a mathematical method or a recommendation scheme when described at a high level. A better question might be to ask what the invention achieves in the real world, how it achieves that result using technical means and which features contribute to the technical character of the invention as a whole.

What is IPOS Asking in its Consultation?

IPOS has launched a feedback exercise asking for views on the relevance of Emotional Perception to Singapore patent practice. The consultation asks whether the decision is relevant to the development of Singapore patent practice, whether it brings greater clarity on patentable subject matter and its relationship with inventive step and what practical issues or challenges may arise for applicants and practitioners.

IPOS appears to be asking these questions because its current AI guidance uses an Aerotel-derived “actual contribution” approach. The UK Supreme Court has now rejected Aerotel for UK law. While that does not automatically change Singapore law, it does raise a fair question: should Singapore continue to use a contribution-based approach that was developed for a statutory exclusion framework that Singapore does not have?

In our view, IPOS is right to ask the question. AI inventions often involve a mixture of hardware, software, data, mathematical processing and real-world effects. A threshold test that asks too early what the inventor has “contributed” may strip away the technical implementation and treat the claim as nothing more than an abstract idea, mathematical method or computer program. That creates a risk of rejecting claims that may otherwise protect genuine technical innovation.

Cantab IP’s Response to the Consultation

Cantab IP has sent in its response to the consultation.

Our position is that Emotional Perception is relevant to Singapore, but only as persuasive authority. As the UK Supreme Court has no direct jurisdiction in Singapore, IPOS should therefore not adopt the decision mechanically. The reasoning must be considered in light of Singapore’s own Patents Act and Rules.

We have also emphasised that Singapore does not have the UK/EPC statutory list of excluded subject matter. Much of the UK judgment concerns the interpretation of Article 52 EPC and the UK statutory exclusions. As Singapore does not have the same statutory framework, Emotional Perception should not be treated as if it simply imports UK or EPO law into Singapore.

That said, we consider that the decision exposes a genuine problem with the Aerotel-derived “actual contribution” inquiry. Asking what the inventor has contributed before deciding whether the claim defines an invention risks mixing separate requirements of patentability. It may in an extreme case import considerations of novelty and inventive step into the threshold inquiry.

We have suggested that IPOS should review the current Supplemental Guidance for the Examination of AI-related Patent Applications. In particular, IPOS should reconsider whether the “actual contribution” step remains appropriate for Singapore practice.

A Better Singapore Framework

Our proposed approach is straightforward.

First, construe the claim.

Second, ask whether the claim is directed to a technical invention, having regard to the claim as a whole and the presence of technical means.

Third, identify the technical character of the invention as a whole.

Fourth, determine which claim features contribute to that technical character, including through interaction with other features.

Fifth, assess novelty and inventive step by reference to the features that make such a contribution.

This keeps the requirements of patentability separate. It also avoids importing a UK/EPC statutory exclusion framework into Singapore law. At the same time, it preserves a proper filter against claims where the hardware is incidental and the actual subject matter is non-technical.

Artificial Neural Networks

Our response also addresses the treatment of artificial neural networks.

The UK Supreme Court held that an ANN is a program for a computer. However, we do not think IPOS should adopt that reasoning uncritically for Singapore practice.

A conventional computer program is ordinarily understood as a sequence of executable instructions. A trained ANN, however, is technically different. Its behaviour may depend on network architecture, weights, biases, learned parameters, component values or physical configuration. Those features may determine how the system behaves, but they are not necessarily executable instructions in the ordinary sense of the term.

This issue is most clearly seen in analogue implementations. An analogue ANN or analogue computing circuit may have no CPU executing code. Its behaviour may arise from circuit topology, component values and physical signal flow. In that context, asking where the “program” resides is not simply a semantic question. It exposes a genuine technical problem with treating all information-processing systems as if they were conventional computers executing conventional programs.

Our view is that treating circuit configuration, component values, weights or biases as a “program” risks replacing technical analysis with an abstract legal classification. We consider that the better approach for Singapore practice is to examine the technical means used and the technical effect achieved, rather than to decide patentability by applying a broad legal label such as “computer program”.

The same caution applies to mathematical methods. ANNs plainly use mathematics, particularly during training and in the adjustment of weights and biases. But applied mathematics should not be treated as non-patentable merely because mathematical operations are involved. We consider that the proper inquiry is whether the mathematics is claimed in the abstract, or whether it forms part of a technical system which achieves a technical effect.

Practical Points for Applicants

AI patent applications should not rely on broad statements that the invention uses AI or improves recommendations. The specification should explain the technical problem, the technical means used to address that problem, the relevant feature interactions and the real-world technical effect achieved.

For ANN inventions, applicants should carefully explain the technical architecture, the role of training where relevant, the role of weights, biases, parameters or embeddings, the data being processed, the mechanism by which the output is produced and how those features interact to produce the claimed technical effect. In any event, it is good practice to draft patent specifications with sufficient technical detail and fallback positions.

That will be important whatever approach IPOS ultimately adopts. The stronger the technical explanation in the specification, the easier it will be to show that the claim is directed to a technical invention and that the relevant features contribute to the technical character of the invention.

Conclusion

While Emotional Perception does not change Singapore law, it is still a hugely significant case.

In particular, it gives IPOS a useful opportunity to reconsider whether the current Aerotel-derived “actual contribution” framework remains appropriate for Singapore, particularly for AI and computer-implemented inventions. In our view, Singapore should move toward a framework that asks whether the claim, considered as a whole, is directed to a technical invention, then identifies which features contribute to the technical character of that invention before novelty and inventive step are assessed.

That approach would better reflect Singapore’s statutory framework. It would also reduce the risk of artificial distinctions between software, digital hardware and analogue implementations, while preserving proper scrutiny of AI inventions under novelty and inventive step.

Further Discussion

This consultation is likely to shape how AI and computer-implemented inventions are examined in Singapore. The issues are not limited to artificial neural networks. They may also affect inventions involving machine learning, data processing, simulation, optimisation, recommendation systems, digital signal processing and software-implemented control systems.

Please feel free to get in touch if you would like to discuss any of these issues in more detail, or if you would like to review how the current IPOS approach may affect a particular AI or computer-implemented invention.

Contact Cantab IP

BIO International Convention 2026: Meeting Biotechnology and Life Sciences Contacts in San Diego

Sat, 23 May 2026 19:47:23 +0800

I will be attending BIO International Convention 2026 in San Diego from 22 to 25 June 2026.

BIO is one of the main international meetings for the biotechnology, pharmaceutical and life sciences sectors. It brings together companies, research institutions, investors, professional advisers and service providers from around the world.

I will be in San Diego to meet clients, overseas associates and other contacts working in biotechnology, pharmaceuticals and the wider life sciences sector. I would also be pleased to meet companies, research organisations and professional firms that would like to discuss patent protection, international filing strategy or intellectual property support in Singapore and South East Asia.

If you will also be attending BIO International Convention 2026 and would like to arrange a meeting in San Diego, please get in touch.

Singapore Patent Attorney Attending APAA 2026 in Hong Kong

Thu, 21 May 2026 22:36:35 +0800

I will be attending the Asian Patent Attorneys Association (APAA) 2026 meeting in Hong Kong from 29 November to 2 December 2026.

APAA is one of the main gatherings for intellectual property professionals in the Asia-Pacific region, bringing together patent attorneys, trade mark attorneys, in-house counsel and other IP professionals from across Asia, Australia, New Zealand and further afield. It provides a useful opportunity to exchange knowledge, discuss developments in IP practice and maintain professional relationships across jurisdictions.

The 2026 meeting will be held at the Hopewell Hotel in Wan Chai, Hong Kong. The programme includes committee meetings, academic sessions, roundtables, networking meetings and social events, providing a useful opportunity to discuss developments in patents, trade marks, designs, enforcement and wider IP practice across the region.

Hong Kong is an important centre for international IP work and a natural meeting point for practitioners with interests across China, South East Asia and the wider Asia-Pacific region. I look forward to reconnecting with existing contacts, meeting new colleagues and discussing Singapore patent matters, Singapore trade mark matters and wider ASEAN and South East Asian intellectual property matters.

Please get in touch if you would like to arrange a meeting during APAA 2026.

Patent Amendments in Singapore: Avoiding Added and Unsearched Subject Matter

Fri, 27 Feb 2026 08:50:38 +0800

It is quite common, and sometimes crucial, for applicants to amend the claims in their patent applications during examination in Singapore. However, in Singapore amendments carry particular risks that can catch out even experienced practitioners.

Two issues arise repeatedly in practice. The first is added subject matter, where an amendment introduces a something that was not clearly disclosed in the application as filed. The second is unsearched subject matter, where the amended claims define an inventive concept that falls outside the scope of the search relied upon for examination. Either problem could derail prosecution, and in some cases can place a granted patent at risk.

Understanding these potential issues at an early stage is critical for applicants and their advisers.

If you are unfamiliar with the wider Singapore prosecution framework, you may find it helpful to first review our overview of the Singapore patent system here:
Singapore patent prosecution overview

Choosing the Right Examination Route

Every Singapore patent application must be both searched and examined before it may be granted. The request for examination must be filed by 36 months from the earliest priority date (or the filing date, where no priority has been claimed).

There are two primary routes for patent examination in Singapore. The main difference between the two routes is the source of the search report on which the Singapore patent examiner conducts his or her examination.

The first route is combined search and examination, where IPOS conducts both the patent search and the substantive examination of the patent application. This is the more robust route because the claims examined will always correspond directly to the claims searched. It is particularly suitable where amendments are likely or where the scope of the invention may evolve during prosecution.

The second route is to request examination relying on an existing search report. The existing search report could be the search report of a foreign corresponding application, or more commonly the International Search Report if the Singapore application is the Singapore national phase of an International Patent Application (PCT). This route can reduce cost and avoid duplication of work, but it should be used only where the subject matter of the claims intended to be pursued in Singapore is clearly covered by the existing search report.

Added Subject Matter

An amendment is only allowable in Singapore if the amended subject matter is directly and unambiguously derivable from the application as filed.

The test for added subject matter in Singapore is not whether the skilled person could arrive at the amended feature, but whether the application actually discloses it. Such a disclosure may be set out explicitly in the specification, or implied by it, but the specification must clearly and unambiguously disclose the subject matter of the amendment in question. Ideally, we should be able to point to some literal disclosure of the exact words or phrases we wish to use in the amendment, although this is not strictly necessary.

In Singapore, the standard for assessing added subject matter is reasonably strict, and is closely aligned with that applied by the United Kingdom Intellectual Property Office and the European Patent Office. The standard tends to be stricter than that applied under other jurisdictions such as the United States of America, where there is greater freedom to reshape claims after filing.

Risks of Intermediate Generalisation

During prosecution, it may be necessary to amend the claims to a narrower feature if a claim with a broad feature is not considered to be novel or inventive. However, if that narrower feature is not disclosed in the application, the amendment will introduce added subject matter and will not be allowed.

In the worst case scenario, a specification as filed might only use a broad term and disclose just a single example. If it turns out during prosecution that the claim using the broad term is not new or inventive, the applicant will need to narrow the claim to restore patentability. However, if the specification as filed does not disclose any features that may be used in an amendment to an acceptable narrower version, the only safe amendment is to limit the claim to the exact narrow feature in the example. That can leave the applicant with a claim that is technically valid but which may have very little commercial value.

As an example, a claim as filed might include the feature a “flexible element”, with the description only disclosing a specific example using a “rubber member”. In this case, it may not be possible during examination to amend the claim to recite an intermediate feature of an “elastomeric element”, for example, unless this is specifically disclosed in the specification as filed. Even though rubber is an elastomer (and a person skilled in the art would understand that to be so), that specific broader class has not been disclosed in the specification, and such an amendment would be considered as having added subject matter under Singapore practice.

Consequences of Added Subject Matter

The consequences of added subject matter being introduced during examination are potentially serious.

Under Singapore patent law, a patent may be revoked by application of a third party. One of the grounds for revocation is that the application has been amended so that it includes added subject matter. As Singapore patent law requires that any amendment to a granted patent not to broaden the protection afforded by the patent, it might not be possible to amend the patent post-grant to remove an undisclosed added feature, if doing so would broaden the patent. At the same time, the presence of the added feature makes it vulnerable to revocation on added subject matter. The patentee may then be caught in a trap or squeeze.

For these reasons, it is important for applicants and their advisors to be aware of the rules regarding added subject matter in Singapore, and to take care not to introduce by amendment any such added subject matter.

Unsearched Subject Matter in Practice

In Singapore, the Examiner is only required to examine subject matter that has been searched. If an amended claim defines an inventive concept that was not previously searched, the Examiner is not obliged to examine the claim (Section 29(7) and Rule 46(1)(e)). The only recourse at this stage is to file a divisional examination to restart the application process. Not only is this troublesome, it may be expensive and delay grant of a patent.

The issue of unsearched subject matter arises more often than many applicants expect.

One common example arises from an objection of lack of unity of invention during the International Stage. In such a case, if the International Searching Authority (ISA) searched only a first invention and left further inventions unsearched, any later attempt to amend the claims to one of those unsearched inventions may result in unsearched subject matter.

Unsearched subject matter can also arise where a feature that defined the inventive concept at the time of search is removed during amendment. In such a case, the Examiner may raise an objection that the “claims […]result in an inventive concept that was not reasonably apparent at the time of the initial search”. Here, although the original claims were searched, the amendment results in a new inventive concept which the Examiner regards as not having been searched. This issue is particularly relevant in the biotechnology and life sciences areas.

A further trap arises where the United States Patent and Trade Mark Office (USPTO) acts as International Searching Authority (ISA). Under USPTO practice as ISA, any multiple dependent claims that depend from other multiple dependent claims are not searched (PCT Rule 6.4(a), MPEP § 1843.03). When such claims are later pursued in the Singapore national phase, the Examiner may object that the scope of the claims contains subject matter that falls out of the scope of the search report. This is despite the fact that under Singapore patent law and practice, it is perfectly acceptable to pursue multiple dependent claims that depend on other claims which are themselves multiply dependent.

The situations set out above fall into two broad categories. In “whole-claim cases”, the invention now being pursued was never searched at all and a new search is usually required, often via a divisional. In “part-of-claim” cases, the invention was searched but the applicant amended the claims and by doing so changed the inventive concept. Such cases may sometimes be resolved by reverting the amendments so that the search report covers the subject matter of the claims.

Practical Guidance for Foreign Applicants

The most effective way to avoid both added and unsearched subject matter problems is to draft with structured fallback positions. The specification of the patent application should be drafted to disclose cascading levels of generality so that meaningful intermediate positions are available if the main claim fails. Dependent claims should be drafted to contain distinctive technical features that may be relied on for novelty or inventive step during examination. Doing so takes care and effort (and some thinking), but this effort will be rewarded if these dependent claims are able to provide useful fallback positions during examination.

When choosing the examination route, you should only request examination relying on an existing search report only where the subject matter of the claims as presented for examination falls clearly within the scope of the search report relied on. If a lack of unity of invention objection has been raised, or if substantial amendments have been made or are likely during prosecution, then the alternative of requesting combined search and examination is usually safer.

During prosecution, when seeking to amend the claims, applicants and their advisers should ensure that each amendment is clearly disclosed in the specification as filed. If the Examiner raises an objection citing unsearched subject matter, the applicant will need to make a strategic decision as to whether to revert the amendment or to file a divisional to obtain a new search for the claimed invention.

Final Thoughts

Singapore’s approach to added subject matter and unsearched subject matter reflects its emphasis on legal certainty and examination grounded in properly searched prior art. The standards applied will feel familiar to practitioners with UK and European experience, but may be a surprise to those more accustomed to US-style amendment practice. With careful drafting, thoughtful examination strategy and disciplined amendment practice, the risks can be managed and strong, enforceable patent protection can be secured.

Please feel free to get in touch if you would like to discuss Singapore prosecution strategy for a specific case.

Contact Cantab IP

PPH After Requesting Examination in Singapore: Proceed With Caution

Fri, 13 Feb 2026 19:27:30 +0800

TL;DR: Thinking of using PPH in Singapore after filing a request for examination? Think again.

With the patent system in Singapore currently experiencing a significant backlog in examination, it is understandable that applicants want to obtain grant as quickly as possible. Singapore’s Patent Prosecution Highway can be an effective way to accelerate examination.

IPOS currently offers an apparently attractive procedure that, in our view, carries real legal risk. Applicants and advisers should consider that risk carefully before relying on it.

This post explains the issue in practical terms and suggests how to avoid the problem.

The Patent Prosecution Highway

The Patent Prosecution Highway (PPH) allows an applicant to request accelerated examination in Singapore based on claims that have already been allowed in a corresponding foreign application, typically at a major office such as the European Patent Office (EPO), Japanese Patent Office (JPO) or the United States Patent and Trademark Office (USPTO).

Once the Singapore claims are amended to correspond to the allowed or granted claims in the foreign application and PPH is requested, IPOS will fast track examination of the Singapore application. This can significantly shorten the time to grant.

There is an important constraint: the Singapore claims as presented for examination must match the allowed or granted foreign claims. If they do not, they must be amended to do so, before the PPH can begin.

The Timing Problem

Under Singapore patent law, voluntary amendments are generally not allowed once a request for examination has been filed. The only exception is if they are made in response to a Written Opinion.

This means that once you file a request for examination in Singapore, you are no longer free to amend the claims of your own volition. At the same time, the PPH requires that your Singapore claims already correspond to the foreign allowed or granted claims.

In practical terms, this means that the Singapore claims must be amended to correspond to the foreign claims at the latest by the time the request for examination is filed.

A Bit of History

When IPOS first adopted the PPH, the patent system in Singapore was widely regarded as one of the most efficient in the world. A first Written Opinion could often be expected within three to six months of requesting examination, and grant could follow quite quickly thereafter. In that environment, the additional procedural steps required for PPH were not always commercially compelling. Many applicants were content to proceed under the normal examination timelines.

The position today is starkly different. Examination timelines have lengthened significantly at IPOS and there is a big backlog of examination at that office. It is not uncommon for a first Written Opinion to issue up to two years after a request for examination is filed. In some cases, there may even be a prolonged administrative delay before the file is even sent to the examining division. Time to grant has slipped significantly.

Unsurprisingly, this has increased interest in the Patent Prosecution Highway as a means of accelerating patent prosecution in Singapore. The difficulty arises where an applicant filed a request for examination months or years ago, at a time when acceleration did not seem necessary. A granted or allowed corresponding foreign application may now be available, making PPH commercially attractive. However, under the Act and Rules, it is already too late to amend the Singapore claims in order to request PPH.

PPH After Requesting Examination

In an effort to address this, IPOS introduced an administrative process in October 2023. Under this process:

You have an application for which you have already requested examination.
If you later decide you want to seek PPH, you email IPOS to say so.
If examination has not yet started, IPOS issues an Invitation to Amend.
You amend your claims to match the foreign allowed claims and request PPH in response to the Invitation to Amend.

This process avoids having to withdraw and refile the examination request, and in some cases avoids paying extension fees. At first glance, this process looks efficient and attractive. The question is whether it is legally secure.

Why We Believe There Is Significant Risk

Restrictions on Voluntary Amendments After Requesting Examination

The availability, timing and restrictions on voluntary amendments are set out in the Patents Act and Rules. The Act and Rules generally do not allow voluntary amendments after a request for examination is filed. The only way you can do so after examination has been requested is by way of a response to a Written Opinion issued during examination.

Under the new IPOS “PPH after examination request” process, however, IPOS invites you to amend the claims after a request for examination has been filed, but before examination has started. That is precisely the period during which voluntary amendments are prohibited under the Act and Rules.

This is crucial because it raises a real question about whether those amendments have a firm legal basis. The fact that IPOS has invited an amendment does not, in our view, make valid what would otherwise be a prohibited voluntary amendment.

The Nature and Purpose of an Invitation to Amend

Invitations to Amend were introduced in 2022 to allow Examiners to deal quickly with minor defects identified during substantive examination. These include correcting claim dependencies and resolving minor formal issues.

This is not merely our view. IPOS has described the procedure in these terms in its communications, and the Second Minister for Law explained in Parliament that the change was intended to allow Examiners to invite minor amendments that would overcome objections, without issuing a full Written Opinion and requiring a formal response.

Invitations to Amend are therefore not intended as a general channel for applicants to make amendments for administrative convenience.

It is also less than clear that the law actually allows voluntary amendments to be filed in response to an Invitation to Amend. Rule 49(3)(b) and (c) read together with Rule 46(3)(b) of the Singapore Patents Rules expressly provide that the applicant may voluntarily amend the specification as part of a response to a Written Opinion. There is no corresponding provision in the part of the Rules dealing with Invitations to Amend (Rule 46AA).

The absence of any explicit statutory wording permitting voluntary amendments in response to an Invitation to Amend is highly significant, in our view. Yet, in our view, this is precisely what is happening within the IPOS “PPH After Requesting Examination” procedure.

Claim Alignment is a Voluntary Amendment

The Singapore Patent Act and Rules recognise two categories of amendment during examination:

amendments made in response to an objection raised by the Examiner, typically in response to a Written Opinion; and
voluntary amendments made at the applicant’s own initiative.

Where an applicant seeks to replace the claims originally offered for examination with a different set of claims corresponding to a foreign allowed or granted application, for example to pursue accelerated examination under the Patent Prosecution Highway, that change can only fall within the category of voluntary amendment. It is plainly not an amendment made in response to an objection raised by the Examiner.

It is therefore important to be clear about what the IPOS procedure seeks to achieve. In effect, it seeks to permit an applicant to substitute the set of claims submitted for examination with a potentially wholly different set of claims after a request for examination has already been filed.

In substance, this amounts to permitting voluntary amendments to the specification after the filing of the examination request, which is prohibited by the Act and Rules. Again, just because IPOS allows it does not mean that it is compliant with the Patents Act and Rules.

What Is the Real Risk?

The risk is not just procedural inconvenience, but rather to the validity of the eventual patent. This is because Singapore law allows a patent to be revoked if an amendment was made that “should not have been allowed” (Section 80(1)(e)).

If a third party later challenges the patent, it could argue that:

the amendment to the claims to match the foreign claims was voluntary and not permitted under the Act and Rules
the Invitation to Amend should not have been issued in those circumstances
it is not possible under the Act and Rules to file voluntary amendments in response to an Invitation to Amend
the amendment therefore “should not have been allowed”

Even if such a challenge is not guaranteed to succeed, the existence of a credible argument creates litigation exposure. That risk may complicate enforcement, affect licensing negotiations, reduce commercial certainty and increase due diligence risk in transactions.

For some portfolios, especially high value patents, that may be an significant concern.

These concerns are not purely academic. The Association of Singapore Patent Attorneys (ASPA) has written to IPOS to raise the same issues and to seek clarification on the statutory basis for this procedure. We are awaiting IPOS’ response.

Until IPOS provides that clarification, applicants and advisers should avoid relying on the IPOS “PPH after requesting examination” route if they want to minimise risks to the validity of their patents.

Importance for Commercial Decision Making

When patent applicants seek to accelerate the prosecution of their applications, the focus is often on speed. That is understandable. However, in our view, acceleration should not come at the cost of risking the validity of a patent. A patent granted quickly but carrying an avoidable procedural vulnerability may ultimately be less valuable than a patent granted slightly later but procedurally robust.

If there is any real doubt about whether an amendment was lawfully permitted, that doubt will surface during enforcement or revocation proceedings. Opponents routinely scrutinise file histories when considering litigation, and a visible procedural irregularity is an obvious target.

What Should Applicants Do Instead?

The safest approach is straightforward: if you intend to rely on the PPH, make that decision before filing your request for examination.

In practical terms:

review the foreign prosecution position early
decide whether you are likely to rely on foreign allowed claims
amend the Singapore claims before filing the examination request
request PPH at the same time you request examination

This avoids the need for any post examination request amendment and keeps you comfortably within the amendment provisions of the Pateents Act and Rules.

If examination has already been requested and PPH has not been sought, you need to carefully consider what to do. Withdrawing and refiling the examination request would be procedurally cleaner than relying on the IPOS “PPH after requesting examination” route, but might not be possible in some cases, or involve considerable expense. The correct strategy will depend on the importance of the application and the commercial context, and we would be pleased to provide further advice and guidance (including on other ways of potentially accelerating examination at IPOS).

Our View

The policy objective behind the current IPOS practice is understandable. Reducing backlog and improving turnaround times benefits the system. However, where a procedural shortcut raises doubt about the statutory basis for amendments, applicants should proceed with caution. Speed is valuable, but legal certainty matters more when the patent may need to withstand challenge.

Update 11 March 2026

IPOS has now responded to the letter from ASPA. It states that it considers that the current practice is consistent with the Patents Act and Rules. In IPOS’ view, examination begins when the Examiner reviews the PPH request, so an Invitation to Amend issued at that stage is issued “during examination” within the meaning of Section 29(7A).

IPOS also takes the position that Invitations to Amend are not limited to minor amendments and that amendments made in response to them are examiner-invited rather than voluntary. IPOS’ view is that they do not contravene the prohibition in Rule 49(3) on voluntary amendments after requesting examination. IPOS has indicated that it will update its guidance to clarify this interpretation.

IPOS Suspends SG Patents Fast and SG Trade Marks Fast Acceleration Requests

Mon, 05 Jan 2026 08:00:00 +0800

In Circular No. 1/2026 (Registry of Patents) and Circular No. 02/2026 (Registry of Trade Marks), both dated 4 January 2026, IPOS announced that, with effect from 4 January 2026, it has suspended the acceptance of new acceleration requests under the SG Patents Fast and SG Trade Marks Fast programmes until further notice.

IPOS also states that requests received before 4 January 2026 that meet the qualifying requirements will continue to be processed under the accelerated timelines.

The circulars do not set out the reasons for the suspension beyond stating that IPOS is reviewing the programmes. Given that the programmes were launched only on 20 May 2025 and are less than 8 months old, IPOS may be taking the opportunity to refine the schemes based on its experience with requests filed so far. It may be that applicants have been discouraged by the high official fees for the programmes and have not signed up in the numbers expected. On the other hand, it could be that the programmes are so wildly popular with applicants that the office has been overwhelmed by requests. At present, IPOS has not published statistics on the number of requests filed, so it is not possible to draw firm conclusions.

We will keep an eye out for further guidance from IPOS and will post an update as soon as more information is published, including any changes to eligibility, fees and expected timelines once the review concludes.

How to Choose a Patent Agent, Patent Attorney or IP Lawyer in Singapore

Thu, 23 Oct 2025 08:26:28 +0800

Choosing the right patent agent, patent attorney or IP lawyer in Singapore is a crucial step in protecting your invention.

Under Section 105 of the Patents Act 1994, only individuals who are registered patent agents holding a current practising certificate may carry on business, practise or act as patent agents in Singapore.

This means that only registered Singapore patent agents may draft patent specifications, prepare, file and prosecute patent applications, advise on patentability, ownership, validity and infringement and represent clients before the Intellectual Property Office of Singapore (IPOS) in matters relating to patents.

While some IP consultants, intellectual property lawyers or patent lawyers in Singapore advise on IP strategy, contracts or litigation, they are not automatically entitled to perform these specialised patent-agency functions unless they are also registered Singapore patent agents. Engaging a registered patent agent ensures that your representative is properly qualified and legally authorised to handle every aspect of patent prosecution before IPOS.

Why Work with a Registered Singapore Patent Agent?

Engaging a registered Singapore patent agent offers important legal and professional safeguards. Registered agents must comply with the Code of Conduct for Patent Agents under the Patents (Patent Agents) Rules 2001, meet IPOS’s ethical and competency standards and hold professional indemnity insurance as a condition of their practising certificates.

Communications with registered patent agents are protected by legal professional privilege under Section 95 of the Patents Act 1994, giving clients the same confidentiality as solicitor–client advice. By contrast, advice from unregistered advisers or overseas patent lawyers who are not on the Singapore register may not be privileged and could be disclosable in local proceedings.

Only registered patent agents are authorised to act before IPOS. This statutory framework ensures that your patent work is handled by a qualified, accountable and insured professional.

Two Categories of Patent Agents in Singapore

Under the Patents (Patent Agents) Rules 2001, there are two categories of patent agents on the IPOS Register of Patent Agents.

The first comprises technically qualified patent agents, who must meet the requirements of Rule 6(2). They hold a degree in science or engineering, complete an approved IP qualification, complete at least twelve months of supervised practical experience and pass the Patent Agents Qualifying Examination (PAQE). The PAQE is demanding, with pass rates of around 22–25% across its four papers, ensuring consistently high standards of competence in both law and technology.

The second category consists of grandfathered patent agents admitted under transitional provisions that applied between 2 January and 2 October 2002. They were allowed to join the register based on prior practice without meeting the new examination requirements. Although these provisions expired long ago, a signicant number of grandfathered agents remain on the register.

Why the Distinction Matters: Patent Agents Versus Patent Lawyers

The distinction between technically qualified and grandfathered patent agents is more than historical.

A technically qualified patent agent combines scientific or engineering training with specialist legal knowledge. This enables them to understand inventions, identify inventive concepts and draft precise patent specifications that can withstand examination. They can engage directly with inventors and R & D teams, anticipate examiner objections and craft claims that offer strong and commercially relevant protection.

By contrast, a grandfathered agent or IP lawyer without a technical background may understand patent law but rely on others to explain the underlying technology. They will typically not be able to draft patent specifications and may need to outsource the work to technically qualified patent agents. This can make it harder to capture the nuances of an invention and can lead to claims that are either too narrow to be useful or too broad to be defensible. In technology-driven fields such as biotechnology, pharmaceuticals, electronics or software, technical understanding is critical for effective patent drafting and prosecution.

If you are unsure of an agent’s qualifications, check the IPOS Register of Patent Agents. Those registered from 2003 onwards are generally technically qualified by examination, while those from 2002 or earlier were typically admitted under the transitional rules. You may also ask directly about their degrees and industry or research experience.

Choosing Between a Patent Agent and an IP Lawyer

When seeking professional help, it is important to understand that a patent lawyer or intellectual property lawyer may advise on IP strategy, contracts or litigation, but only a registered patent agent can perform the activities reserved under Section 105 of the Patents Act 1994. These include drafting patent specifications, preparing, filing and prosecuting patent applications, advising on patentability, ownership, infringement and validity and representing clients before IPOS in connection with patent proceedings.

A registered patent agent can therefore perform many of the same functions as an IP lawyer but is uniquely qualified to undertake these statutory activities and manage the entire lifecycle of a patent. For businesses developing new technologies, instructing a technically qualified Singapore-registered patent agent ensures that advice is accurate, privileged and compliant with Singapore law.

Before engaging an agent or lawyer, ask about their qualifications. Confirm whether they are technically qualified, what degrees they hold and what experience they have in your field. A competent professional will readily explain their credentials.

The Cantab IP Difference

All the patent attorneys at Cantab IP are both technically and legally qualified. Each holds a degree in science or engineering, with one qualified to PhD level, is a registered Singapore patent agent and maintains a current practising certificate with full professional indemnity insurance. Communications with Cantab IP’s patent attorneys are therefore protected by legal professional privilege under Section 95 of the Patents Act 1994.

This combination of scientific education, professional accreditation, statutory privilege and insurance protection ensures that clients receive informed, confidential and reliable advice at every stage of the patent process. From invention disclosure to patent grant, Cantab IP’s attorneys provide clear, effective representation before IPOS and overseas patent offices, backed by Singapore’s legal and regulatory safeguards.

For more information about our patent services, visit Cantab IP’s Patents page or consult the IPOS Register of Patent Agents.

Summary

Selecting the right patent agent, patent attorney or IP lawyer in Singapore is essential for securing reliable patent protection. Only registered Singapore patent agents are authorised to act before IPOS and to provide advice protected by legal professional privilege under Singapore law. Within the register, technically qualified patent agents offer the highest assurance of technical understanding, drafting skill and compliance with professional standards.

Working with a technically qualified, registered and insured patent attorney such as those at Cantab IP ensures that your inventions are handled by professionals who combine scientific training with legal expertise and deliver advice that is confidential, accurate and commercially focused.