Under the Singapore Patents Act, one prosecution option that an applicant may select is to request examination based on a prescribed foreign search report, including the International Search Report (ISR) in the case of a national phase application (PCT).
For example, Section 29(2)(e)(i) of the Singapore Patents Act provides:
(e) where the application is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86 (3) –
(i) file –
(A) a copy of the international search report issued in respect of the application;
(B) where the international search report is not in English, an English translation of the international search report;
(C) a copy of each prescribed document and, where required by the rules, an English translation of the document if it is not in English; and
(D) a request in the prescribed form for an examination report, and pay the prescribed fee for an examination report.
Also, it is stated in Rule 42(2)(c) of the Singapore Patents Rules that:
(2) A request for an examination report under section 29(2)(c)(i), (d)(i) or (e)(i) shall not be treated as having been made unless the form required under paragraph (1) is accompanied by –
(c) in the case of a request for an examination report under section 29(2)(e)(i), a copy of the international search report in respect of the application referred to in section 29(2)(e)(i) together with a copy of each of the documents referred to in that international search report. [emphasis added]
Similar provisions apply to cases where the request for examination is based on a search report from a prescribed national/regional patent office, such as a European Search Report.
A request for examination based on a foreign search report is advantageous in that duplicate search efforts and search fees are avoided. Therefore, an examination report may be obtained more quickly and at a lower cost than for example, requesting combined search and examination. Based on statistics from the Intellectual Property Office of Singapore, 25% of the patent applications that proceeded to grant in 2008 utilised this option.
It has been noted that there are instances where the foreign search report cites a reference as Applicant's Admitted Prior Art (AAPA) and lists a particular section of the specification where such prior art is described, without further elaboration. In these cases, one would need to determine the relevant document(s) being referred to, for submission with the request.
If the AAPA refers to one or more patent documents and/or scientific papers, without them being explicitly listed in the relevant foreign search report, it may be arguably sufficient to submit a copy of said patent documents and/or scientific papers to meet the above requirements.
On the other hand if, for example, the AAPA refers to an existing machine or apparatus, the issue becomes somewhat less straight-forward. In such case the applicant should consider submitting relevant documentation relating to said machine/apparatus e.g. brochures, specification sheets, or documents submitted in the foreign application to meet the requirements, together with informal submissions to the effect that the AAPA is described therein.
If, however, no documentation can be found, it may mean that proceeding with the request for examination based on the foreign search report is not a viable option, as failure to comply with the requirements results in the request being treated as not having been made. In this regard, it should also be noted that there is no provision under Singapore patent law that requires the Registrar to inform the applicant of the deficiency of the request for examination. Thus, a notification of the deficiency may not be issued at all, or may be issued after the deadlines for alternative options have passed. As a safeguard, the applicant may in such cases consider using another suitable foreign search report (if available) or requesting combined search and examination, before the applicable deadline, noting that the AAPA is in any event part of the specification under examination.
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| Michael Koch and Le Hong Minh |
Ella Cheong Spruson & Ferguson (Singapore) Pte Ltd
152 Beach Road, #30-00 Gateway East
Singapore 189721
Tel: +65 6333 7200
Fax: +65 6333 7222
mail@ecsf-asia.com
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