Singapore: IPOS releases revised examination guidelines
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Singapore: IPOS releases revised examination guidelines

On October 30 2017, the Intellectual Property Office of Singapore (IPOS) published its revised Examination Guidelines, following legislative changes made to the Singapore Patents Act. The key amendments to the Guidelines include the expansion of the grace period provision, the ability to switch between substantive and supplementary examination, a clarification of the term "discoveries" in regard to patent eligibility and the rejection of post-grant amendment claims which are "obviously invalid".

The Singapore patent application filing grace period provision had been expanded with the addition of Sections 14(4)(e), 14(5A) – (5C) in the Patents Act (Chapter 221). The amended provisions of the Patents Act now allow an applicant to request an examiner to disregard prior disclosures of an invention made within a year before the filing date, if the public disclosure was made by the inventor or by a person who obtained the matter directly or indirectly from the inventor.

Notably, this expanded provision does not cover the publication of an earlier patent application filed towards the subject-matter of the invention, unless the earlier patent application was:

  • filed without the consent of the inventor, or

  • was published in error when it should not have been published, or

  • was published prematurely under the laws of the country in which the earlier patent application was filed.

Where the publication is premature, it shall be treated as being disclosed to the public only on the date when publication ought to have occurred.

If the pre-filing disclosure was made in a printed publication whose authors are identical to the named inventors, the disclosure would be regarded automatically as being disclosed by the inventors for the purpose of Section 14(4)(e). However, if the printed publication names more authors than the inventors, then the Examination Guidelines address review of evidence in the form of a statutory declaration or an affidavit by the Examiner which should be filed when requesting examination. The Examiner must determine if the evidence sets out a prima facie case that the earlier disclosure was indeed made by the inventor or by a person who obtained the matter directly or indirectly from the inventor.

Sections 29(10) and (11) are newly added into the Patents Act, which allow an applicant to switch between a substantive examination route or a supplementary examination route, provided that:

a) The earlier request for substantive or supplementary examination (as the case may be) is withdrawn;

b) A substantive examination report or a supplementary examination report (as the case may be) has not yet issued; and

c) The prescribed period for making a request for substantive examination report or a supplementary examination report (as the case may be) has not yet expired.

The Examination Guidelines set out the Examiner's review of the three requirements in order to allow or disallow the switching between the two examination routes.

The exclusion of discoveries from being taken as eligible for patent finds basis in the Court of Appeal decision, Merck & Co v Pharmaforte Singapore Pte [2000] SGCA 39. The revised Examination Guidelines now further clarify the meaning of the term "discoveries". In particular, based on the significantly expanded Section 8 of the Guidelines, IPOS has clarified that materials or microorganisms that pre-existed in nature would not be patent eligible whether or not these materials or microorganisms are purified or isolated. If a new use was found for these pre-existing materials or microorganisms, the use may be claimed. If modifications were made to these materials or microorganisms which adapted them for a specific use, then both the modified material and its specific use may be claimed.

Under current Singapore practice, it is not permissible for a post-grant amendment to broaden the scope of protection or to introduce additional matter going beyond the application as filed. A recent Singapore Court of Appeal decision, Warner-Lambert v Novartis [2017] SGCA 45, addressed the issue of whether a post-grant amendment to re-write claims drawn towards a method of treatment into a corresponding Swiss-style format claim would disclose additional matter or otherwise broaden its scope of protection. On appeal, the Court disallowed the post-grant amendments, noting that it would be artificial to even consider whether the proposed amendments extended the scope of protection where there was no protection to begin with.

Following the decision, the revised Guidelines (at Section 7) now state that when assessing post-grant amendments, the examiner should categorically reject an amendment to claims which are obviously invalid, without needing to consider whether the proposed amendment would add matter or extend the scope of protection. Regrettably, there seems to be no further indication as to what might be considered an "obviously invalid" claim. It would seem that this section of the revised Guidelines is aimed at patents granted to methods of therapy, diagnosis or surgery.

The revised Examination Guidelines were effective immediately from publication on October 30 2017.

Collopy_Dan

Edwin Dai

Daniel Collopy


Spruson & Ferguson (Asia) Pte Ltd152 Beach Road#37-05/06 Gateway EastSingapore 189721Tel: +65 6333 7200Fax: +65 6333 7222mail.asia@spruson.comwww.spruson.com

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article