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Singapore: The new positive-grant patent system




Singapore is moving to a positive-grant patent system with amendments to the Singapore Patents Act and Rules coming into force on February 14 2014. The amendments will affect all Singapore patent applications lodged in Singapore on or after this date.

Under the current self-assessment patent system, a Singapore patent may be obtained on the basis of foreign final examination results issued in respect of a corresponding foreign national or international patent application without further examination.

However, under the positive-grant system, the grant of a Singapore patent application can only be obtained if a notice of eligibility is received. The notice of eligibility is issued only if the application's claims were found to be patentable.

It remains possible to obtain a Singapore patent on the basis of final foreign examination results issued to a corresponding foreign national or international patent application. However, it will now be necessary to request supplementary examination of those foreign final examination results. During the supplementary examination procedure, the Intellectual Property Office of Singapore (IPOS) will examine the foreign final examination results to ascertain, among other things, that: (i) each Singapore claim is supported by the description; (ii) each Singapore claim is related to a foreign claim which has been examined to be novel, inventive and industrially applicable; (iii) each Singapore claim does not relate to matter which is excluded from patentability; (iv) there is no double patenting issue with any existing Singapore patents/applications; and, (v) the Singapore application does not contain any matter extending beyond the application as initially filed.

A notice of eligibility will be issued if these requirements were found to be met. However, if the examiner has any objection to the application, only one written opinion will be issued. Thereafter, the examiner will issue a supplementary examination report accompanied by a notice of eligibility (if there are no more objections) or a notice of intention to refuse (if there are objections remaining). The applicant would then have the option of either requesting an examination review or allowing the application to be finally refused.

We believe the amendments to the Singapore Patents Acts and Rules would go some way towards the establishment of a more robust patent regime in Singapore. In particular, under the old regime, applicants relying on the foreign grant route may have been subjected to certain pitfalls, such as double patenting issues and new matter. The new law, by introducing a supplementary examination step, addresses these potential pitfalls. One potentially interesting consequence of the supplementary examination step is that it may catalyse the IPOS to finally issue explicit guidelines as to what exactly constitutes double patenting.

It may also be heartening to note that a certain quirk of the current system has been addressed under the new law. Specifically, under the current system, foreign national phase applications that are derived from a PCT application without an earlier priority claim were not considered to be "corresponding applications". An awkward result of this practice is that the foreign grant route was not available to applicants who may have relied on the PCT as a first-filed application. Under the new law, parallel national phase applications of a first-filed PCT application can be relied upon under the foreign grant route.

The IP landscape in Singapore is certainly maturing and at a rapid pace. This would no doubt encourage more IP-originators and holders to seek patent protection here – a development which would be closely watched by patent practitioners.

Edwin Dai Christine Loke

Spruson & Ferguson (Asia) Pte Ltd

152 Beach Road
#37-05/06 Gateway East
Singapore 189721
Tel: +65 6333 7200
Fax: +65 6333 7222
mail.asia@spruson.com
www.spruson.com


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