In the Singapore patent system, there are a number of search and examination options available to proceed to grant. One option is to request examination based on a search report of a corresponding application. Alternatively, applicants may rely on the final results of a search and examination as to substance of a corresponding application. The concept of a corresponding application is therefore important in pursuing these search and examination options.
Section 2 of the Singapore Patents Act defines the meaning of a corresponding application:
- "corresponding application" in relation to an application for a patent (referred to in this definition as the application in suit), means an application for protection filed, or treated as filed, with any prescribed patent office that:
- (a) forms the basis for a priority claim under section 17 in the application in suit; or
- (b) is subject to a priority claim based on:
- the application in suit; or
- an application which is also the basis for a priority claim under section 17 in the application in suit.
In short, the above provision indicates that to qualify as a corresponding application under the Singapore Patents Act, the "corresponding application" in question must be linked to the Singapore application by at least a priority claim. Furthermore, a strict interpretation of a priority claim in this context means that the priority claim must fall in at least one of the following categories:
- A priority claim has been filed for the corresponding application in question, claiming priority to the Singapore application;
- A priority claim has been filed for the Singapore application, claiming priority to the corresponding application in question; or
- A priority claim has been filed for both the corresponding application in question and the Singapore application, claiming priority to a third common application.
In other words, based on the above, a national phase US patent application based on an international application filed under the Patent Cooperation Treaty (PCT) which does not claim priority from any previous application, does not qualify as a corresponding application of the national phase Singapore patent application, albeit both national phase applications are derived from the same PCT application. In order to proceed under any of the search and examination options which rely on the search report, final results of the search and examination as to substance or grant of a corresponding application, care must be taken to ensure that at least one of the above mentioned situations for priority claims is satisfied.
Moreover, for the purposes of defining a corresponding application, Rule 41 also provides that an application may qualify as a corresponding application only if that application is filed in any of the following patent offices:
- (a) those of Australia, Canada (in respect of applications for a Canadian patent filed in the English language), Japan, New Zealand, Republic of Korea (for applications filed on or after June 2 2006), the United Kingdom and the United States of America; and
- (b) the European Patent Office (in respect of applications for a European patent filed in the English language).
When determining which search and examination option to undertake in Singapore, it is imperative to assess whether a corresponding application exists which satisfies both the priority claim requirement as well as the country and English language filing requirements as discussed above. As the deadlines for the search and examination options in Singapore differ from option to option, early assessment of the existence of a corresponding application which meets the above-mentioned criteria can narrow down the possible search and examination options that are validly available. This will help to avoid the drawbacks of committing to a particular option (such as allowing the other search and examination deadlines to lapse), which may ultimately turn out to be invalid if the above criteria regarding a corresponding application is not met.
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| Joseph Krupa and Lim Teck Yeow |
Ella Cheong Spruson & Ferguson (Singapore) Pte Ltd
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Singapore 189721
Tel: +65 6333 7200
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