Due to the changes in the Singapore Patents Act, there is a requirement for examined claims for applications having a filing date on or after July 1 2004, at the time of paying the grant fee. In particular, it is required that each claim in an application is related to at least one claim that has been examined and referred to in an examination report relied upon. Under section 2(4)(a) of the Singapore Patents Act, the definition of one claim being related to another claim is if the two claims are identical or (A) each limitation in the second claim is identical to a limitation in the first claim or (B) differs from a limitation in the first claim only in expression but not in content.

Based on a cautious interpretation of the latter provision, for an application that has undergone local examination and has a local examination report established, the examined claims can no longer be amended if the applicant still wishes to proceed to grant based on that local examination report. In other words, it can be construed that even adding a limitation by way of amendment to narrow the scope of an examined claim may very well depart from provision (B) mentioned above. Because the definition of "related" claims includes that one claim can be related to more than one claim, as stated in section 2(4)(b) of the Singapore Patents Act, it is believed that the only exception would be to combine examined claims so that the new claim is related to, for example, two of the examined claims.

On the other hand, there are provisions that allow the applicant to rely on corresponding granted patents or examination reports of corresponding applications to proceed to grant. Under these provisions, the applicant is allowed to amend the claims provided that these claims are conformed to examined claims referred to in a corresponding granted patent or examination report relied upon.

A practical question arises on what would be a preferred course of action for an applicant if new prior art has been uncovered, after the local examination report has been established, for example during prosecution of corresponding applications. New prior art may necessitate amendment of the Singapore examined claims to exclude the prior art.

Typically, the applicant can file a divisional application and request for examination for that divisional application based on a foreign search report, to introduce the new prior art uncovered in that foreign search report. However, it will be appreciated that this option comes with the additional cost of filing the divisional application. Further, this option would typically lengthen the time needed for the applicant to obtain a Singapore patent due to the examination process.

Alternatively, the applicant can file the divisional application and wait for corresponding granted patents or examination reports of corresponding applications to proceed to grant. The claims of the divisional application would then be conformed to those of the corresponding granted patent or examination report relied upon. This in itself can bring a disadvantage to the applicant. Conforming the claims may mean that the claims are unnecessarily limited as bound by different laws or examination criteria. For example, if a US patent is used for reliance, it will be appreciated that assessing inventive step in the US can be quite different from how inventive step is assessed locally, since the Singapore context tends to follow UK and EPO precedents rather than US cases. In addition, these options incur the additional costs associated with the filing of a divisional application.

As an alternative to the typical practice of filing a divisional application, applicants may instead consider to still pay the grant fee based on the local examination report. The claims cannot be amended at this stage, as discussed above. The applicant would then monitor for the grant of the Singapore application and thereafter proceed to request for post-grant search and examination provided for under Section 38(A) of the Singapore Patents Act.

Under this strategy, the applicants would avail themselves of one of the two grounds specifically provided under section 38(A), namely that the examiner of the application did not consider all relevant prior art before preparing the examination report. Thus, the applicant (now patentee) would be allowed to enter the new prior art for patentability considerations, as specifically provided for under Section 38(A)(3)(b). It is the opportunity to specifically introduce prior art into the post-grant examination procedure, which makes this an attractive and perhaps recommended option.

One advantage of using this post-grant search and examination recommendation is that the patentee would already have a granted patent in possession. This can prove useful in commercial settings such as marking products or services. Furthermore, requesting post-grant search and examination would ensure that the claims when amended are examined in accordance to local laws and therefore avoid unnecessary limitations, which could be introduced by relying on foreign examination results. Indeed, the patentee can choose to present only arguments together with the prior art, which would strengthen the (unamended) granted claims if a positive post-grant examination report issues as a result. It is also to be noted that post-grant examination cannot itself result in revocation of the patent. In other words, while the post grant examination report becomes of record, it does not affect the right to file an infringement suit based on the patent. In addition, the patentee would have cost savings over filing a new divisional application.

In view of the above analysis, the post-grant search and examination option can provide at least another option and thus improved flexibility to applicants who need to deal with newly uncovered prior art in the context of the requirement for examined claims in Singapore, and may indeed be the preferred option in a number of circumstances, helping applicants to manage their patent portfolio more effectively.

Michael Koch and Hubert Giam

Ella Cheong Spruson & Ferguson (Singapore) Pte Ltd
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Singapore 189721
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