Under section 30 of the Singapore Patents Act, an application may proceed to grant based on the grant of or final results of the search and examination of a corresponding application. As defined in section 2 of the Singapore Patents Act, a corresponding application is, inter alia, an application that is subject to a priority claim based on an application which is also the basis for a priority claim for the Singapore application.
When relying on a corresponding, for example US application for grant in Singapore, the applicant should also ensure that the claims in the Singapore application are related to those as examined and allowed in the US application. Typically, an applicant would amend the claims of the Singapore application to conform to those as allowed in the US application, to satisfy this related claims requirement. However, amendments are subject to the additional requirement of not adding new matter, under section 84 of the Singapore Patents Act. This is particularly important as adding subject matter is a ground for revocation of a granted patent in Singapore.
US continuation-in-part (CIP) applications typically introduce and often times claim additional matter. In this regard, even if the US CIP application is a corresponding application which is subject to the same priority claim as the Singapore application, caution should be exercised if the US CIP application is to be relied upon for grant of the Singapore application. An applicant may, instead request for local examination, if there is a concern that the conforming amendments from other jurisdictions could constitute added matter. Should the deadlines to request local examination have lapsed, it would still be possible to file divisional applications to ensure local examination can be requested.
If, however, the reliance on the US CIP application is preferred by the applicant, a thorough review of any amended claims of the Singapore application to conform to those in the US CIP application should be conducted, such that the Singapore application is not amended to include new subject matter not originally disclosed in the Singapore application.
US CIP applications may, in addition to claiming priority to the same application as the Singapore application, also be subject to additional earlier priority claim(s). While there is no definition provided in the Singapore Patents Act and Rules for a priority claim, patents form 1 for the request for the grant of a patent in Singapore allows the applicant to declare a number of priority claims. As such, based on the definition of corresponding application in section 2, since the foreign application is subject to a priority claim which is also the basis for a priority claim for the Singapore application, the US CIP application should still qualify as a corresponding application.
For example, suppose a Singapore application claims priority to application X dated January 1 2008. A US CIP application claiming priority to application X, but also to an earlier application Y dated February 2 2007 would still be considered a corresponding application and may be relied upon for grant of the Singapore application. In such a scenario, there may be a concern that the examiner of the corresponding application may practically have examined the claims based on the earlier priority date, February 2 2007, even though the state of the art for the relevant invention should be based on the later priority date, January 1 2008. In this regard, the claims, even if found to be patentable by the examiner of the corresponding application, may not necessarily be similarly patentable in Singapore, considering the later priority date, January 1 2008, of the Singapore application.
Therefore, if there is a concern that the examination of the corresponding application may have been based on an incorrect priority date, the applicant may seek to request for local examination instead. Again, should the deadlines to request local examination have expired, it would still be possible to file divisional applications to ensure local examination can be requested.
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| Michael Koch |
Gary Chua |
Ella Cheong Spruson & Ferguson (Singapore) Pte Ltd
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Singapore 189721
Tel: +65 6333 7200
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