Traditionally, the Australian Patent Office carries out the majority of substantive examinations of Singapore patent applications on behalf of the Singapore Patent Office. Lately, however, the European-based patent offices of Austria, Denmark and Hungary are increasingly carrying out substantive examinations of Singapore patent applications.
Under Australian law, there is no strict requirement to acknowledge the closest prior art, and therefore it is perhaps not surprising that Australian examiners almost never raise any objections if the background art is not acknowledged. However, the European-based patent offices, being so closely familiar with European Patent Convention (EPC) practice, often raise objections in written opinions if the background art is not acknowledged in the specification. In fact, there are instances where the examiner objects to an application on the basis that the specification does not discuss new prior art that has been found by the examiner.
The European position (for example, decision (T 2321/08) by the EPO Board of Appeal) appears to be that applicants are not required to acknowledge the background art at the time of filing but nonetheless are required and allowed to do so at a later stage, as long as there is no added subject matter.
In Singapore, the relevant provision, Rule 19(5)(b) of the Singapore Patents Act, states that "The description shall...indicate the background art which, as far as it is known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention". It is worth noting that Rule 19(5)(b) is essentially identical to Rule 42(1)(b) EPC 2000, which was referred to in T 2321/08. However, there is a difference – Rule 19(5)(b) is found under the section "Application for grant of patent". In contrast, Rule 42(1)(b) EPC 2000 is found under Part III, Chapter II of the Provisions governing the application, separate from the preceding provisions under Part III, Chapter I – Filing of the European patent application.
Therefore, it is uncertain if the Singapore Patent Office will adopt the EPC's position, or whether in the Singapore Patent Rules context, the requirement to acknowledge prior art, if any, may instead be limited to the time of filing. To add to the uncertainty, the phrases "as far as it is known" and "regarded as useful" seem to suggest that some form of discretion is in any event available to the applicant in deciding whether to do so.
This question remains unanswered as it has not been subjected to judicial consideration in the courts, to the author's knowledge. At least for now, from practical experience in prosecuting Singapore patent applications through the European-based offices, examiners usually retract their objections to the lack of acknowledgement of prior art , or acknowledgement of new prior art, if applicants provide suitable arguments. However, the authors nevertheless recommend that applicants should, to the best of their knowledge, acknowledge the background art at the time of filing, while adopting a case-by-case approach when addressing objections from the European-based examiners during substantive examination under Singapore law.
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| Chad (ChangHoon) Lee and SungJin Chun |
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