The changes to the Patents Act and Rules that came into force on April 1 2007 have given a number of advantages to local and overseas applicants in relation to including/correcting priority claims or correcting missing parts of the specification. Furthermore, the changes have made it possible to obtain a filing date with minimum documents.

These changes are in addition to the changes relating to the extension, correction or late declaration of priority claims that are possible for international applications filed in Singapore, which are governed by the PCT Regulations.

1) Paris Convention applications filed in Singapore on or after April 1 2007

In situations where a Paris Convention application that is to be filed or has already been filed in Singapore should have a declared priority date (where there was none declared previously), or when a declared priority date is to be brought forward to an earlier date or to correct a mistake in the earlier declared priority date to a different date wherein in all the situations the earliest priority date has exceeded the convention priority of 12 months, it is possible to change the priority claims either at the time of filing the application or after filing the application by submitting the following within 14 months of the earliest priority date:

1. a request to the registrar in a prescribed form indicating the applicant's intention to declare a priority date (where there was none declared previously), or a declared priority date of the application is to be brought forward to an earlier date or to correct a mistake in the earlier declared priority date to a different date;

2. payment of a prescribed fee;

3. in the request mentioned in item 1), the applicant should also indicate that the failure to file the application in suit before the convention priority of 12 months occurred:

   i) in spite of due care required by the circumstances having been taken; or (ii) was unintentional; and

4. evidence (a statutory declaration or affidavit setting out the grounds, for instance) to convince the registrar that the failure to file the application in suit within the convention priority period of 12 months occurred:

   iii) in spite of due care required by the circumstances having been taken; or (iv) was unintentional.

If the registrar is not satisfied with the submissions under items 3) and 4) which seek to prove that the error occurred in spite of due care required by the circumstances having been taken or was unintentional, a written notice will be issued giving a two-month due date to satisfy the registrar. In the event that the applicant is able to satisfy the registrar, the registrar will notify the applicant about the grant of the request. Otherwise, the applicant's request will be refused.

To clarify, the above documents are filed in addition to the documents normally needed for filing a request for grant, such as prescribed forms (form for filing a patent application, form of authorisation of patent agent), relevant documents (copy of the specification, for instance), and the fee applicable for filing the application.

In addition to the above, the following conditions must be satisfied:

1. no request to publish the application early; or

2. any such request has been withdrawn.

For PCT national phase applications filed in Singapore, the above provisions also apply. However, requirements under items 1) to 4) must be completed within one month of entering the national phase in Singapore.

For example, the above provision will be useful when the convention deadline of 12 months has lapsed and no application was filed in Singapore in spite of due care, or was done unintentionally. The provision will also be useful when a priority claim of an earlier filed application was erroneously not included at the time of instructing to file a Paris Convention application in Singapore or the priority date itself was wrong, as well as when the period between the earliest declared priority date and the original date of filing the Singapore application is beyond the convention priority of 12 months. Such potentially serious errors can now be overcome in Singapore by filing the relevant documents, as per items 1) to 4), within 14 months of the earliest declared priority date.

In situations where a Paris Convention application that has already been filed in Singapore should have a declared priority date (where there was none declared previously), or when a declared priority date is to be brought forward to an earlier date, or to correct a mistake in the earlier declared priority date, does not exceed the convention priority of 12 months, it is possible to change the priority claims after filing the application by submitting the following within 16 months of the earliest priority date:

1. a request to the registrar in a prescribed form indicating the applicant's intention to declare a priority date (where there was none declared previously), or a declared priority date of the application is to be brought forward to an earlier date or to correct a mistake in the earlier declared priority date to a different date; and

2. payment of a prescribed fee for the request in item 1).

However, before filing the above request, the following conditions must be satisfied:

1. no request was made to publish the application early; or

2. any such request has been withdrawn.

For example, the above provision will be useful when a priority claim to an earlier filed application was erroneously not included at the time of instructing to file a Paris Convention application in Singapore and the period between the earliest declared priority date and the original date of filing the Singapore application is within the convention priority of 12 months. Such potentially serious errors can now be overcome in Singapore by filing the relevant documents, as per items 1) and 2), within 16 months of the earliest declared priority date.

The filing date for an application for a patent accorded in Singapore is the earliest date on which the documents filed with the registry satisfy the following:

1. an indication that a patent is sought;

2. an indication of the applicant; and

3. a) where no priority is claimed, something that appears to be a description of the invention; or

   b) where a priority is declared:

   i) an indication that a priority is claimed;

   ii) date of filing and country of filing of the priority application; and

   iii) a statement that the description of the invention for which a patent is sought is incorporated in the priority application and is completely contained in the priority application as filed.

In the case of item 3) a), the registrar issues a notification giving two months to comply with the formalities needed to obtain the filing date. The filing date will be retained if all the formal documents for normal filing, including a full specification, are filed.

In the case of item 3) b), the filing date can be retained if the following documents are filed within three months of filing the application:

3. a description of the invention;

4. a certified copy of the priority application and, where relevant, its English translation or, in case a copy of the priority application is already available, a relevant form to obtain a certified copy of the same and, where relevant, its English translation; and

5. a written notice in a prescribed form indicating that the description of the invention for which a patent is sought is incorporated in the priority application and is completely contained in the priority application as filed.

For example, when no priority is claimed, it possible to initiate filing in Singapore by indicating to the registry that a patent application is sought, the name of the applicant and something that appears to be the description (this can be in a language other than English). The filing date can be retained if the formalities needed for normal filing (including an English specification) are completed within two months of the date of receiving a notice from the registrar.

In situations where a priority is to be claimed and a copy of the specification in English is not received or the received copy is incomplete for filing in Singapore before the convention priority of 12 months, it is possible to initiate filing by declaring the earlier priority claim, furnishing the date and country of the priority claim without filing a copy of the specification. The filing date can be retained if the formalities under c), d) and e) are completed within three months of the initial filing date.

The above provisions are more relevant for first filed Singapore Paris Convention applications and/or a Paris Convention application filed within the 12-month priority period. For national phase applications filed under PCT Chapter I/II in Singapore, it may be more practical to use the as-of right extension of three months than to seek the above provisions.

In the past, for applications filed in Singapore, one could file amendments to correct any missing part of an original specification any time before paying the grant fee. However, the registrar would re-date the filing date to the actual filing date of the missing parts of the specification.

Under the new rules, for applications filed on or after April 1 2007, the date of filing the missing parts can be backdated to the original filing date of the application provided the applicant had declared a priority date on the date of filing. Within three months of the date of filing the application in Singapore, the applicant files the following:

1. a written request to the registrar in a prescribed form indicating that the missing part(s) are incorporated in the application by reference to, and are completely contained in, the earlier application, as filed;

2. prescribed information, such as the filing date, the application number and the country of filing for the earlier application; and

3. a certified copy of the earlier application and, where relevant, its English translation or, in case the certified copy and its English translation are already available to the registry, a relevant form to obtain certified copies of the earlier application and, where relevant, its English translation.

The above provisions will be useful, for example, when an application claiming priority from an earlier filed application has already been filed in Singapore and the applicant comes to know that the specification that was filed in Singapore has missing parts (missing drawings, for example). It is possible to overcome this in Singapore by filing the relevant documents, as per items 1) to 3), within three months of filing the application in Singapore, provided they were included in the priority application.

The above provisions are more relevant for first filed Singapore Paris Convention applications and/or a Paris Convention application filed within the 12-month priority period. For national phase applications filed under PCT Chapter I/II in Singapore, it may be more practical to use the as-of right extension of three months than to seek the above provisions.

In light of the above changes to the Singapore Patents Acts and Rules, for applications with a filing date on or after April 1 2007, it is possible to rectify priority claims where, in spite of due care, there were unintentional errors, such as the lapsing of a convention deadline or a correction to priority claims. Provisions are now also available to rectify missing parts of a specification where the missing parts were present in a priority application.

Furthermore, for applications with a filing date on or after April 1 2007, it is possible to initiate filing in Singapore by filing a non-English description or even without filing the actual description at all.

These changes are beneficial to both foreign and local clients wishing to protect their inventions in Singapore.

Michael Koch

Michael is a director of the firm and a principal of our associated Australian firm, Spruson & Ferguson. Michael is based permanently in Singapore, where he is head of the Electrical and Mechanical group. Michael has considerable technical expertise in the fields of semiconductor technology, photonics, electronics, telecommunications, computer systems, business processes and systems and applied physics. He is an experienced patent attorney specialising in drafting and prosecuting patent applications internationally, including in south east Asia, the US, Europe, Australasia and China. Michael has acted on behalf of many corporate and research institution clients in the creation and management of international patent portfolios. He also has considerable experience in patent litigation actions in the Singapore High Court and in patent revocation practice before the Intellectual Property Office of Singapore. Michael earned a Bachelor's and an MSc at the Technische Universität München before going on to be awarded a PhD for his study on semiconductor devices at the University of New South Wales, Sydney. He was also awarded a Masters in Industrial Property from the University of Technology, Sydney.

R N Gnanapragasam

Sam is an associate of the firm from the Electrical and Mechanical group. He is also a registered Singapore patent agent and an associate member in the Association of Singapore Patent Agents. He specialises in electronics patents. He has more than 10 years of experience in the electronics industry, having worked as a Technical Support Engineer in the consumer electronics division of a leading European multinational corporation. He has also worked as a product engineer in the area of electronic product engineering, manufacturing and product development.