Singapore: Understanding change

The Patents (Amendment) Act 2004 sets out significant changes to formal aspects of patent prosecution as well as the approach to patents post-grant. The changes are the result of a review of certain aspects of Singaporean patent practice since the Patent Acts came into force in 1995 and Singapore's commitments under the US-Singapore free-trade agreement (USSFTA). The Act is accompanied by the Patents (Amendment) Rules 2004.

Some of the more important changes only apply to applications with a filing date on or after the Patents ((Amendment) Act came into effect July 1 2004)). They do not apply to PCT national phase applications in Singapore where the PCT filing date is earlier than July 1 2004, nor do they apply to divisional applications whose parent applications have a date of filing earlier than July 1 2004.

Such provisions are marked with an asterisk (*).

Changes to pre-grant procedures

Priority documents

Priority documents of any sort are no longer required, unless specifically requested by the Singapore Patent Office (IPOS). For existing cases, this only applies when the priority document did not fall due before July 1 2004.

Search, examination and grant request*

There are generally two procedural paths available, a default fast track and an optional slow track. If the slow track is desired, an application to invoke that track must be filed no later than 39 months from the earliest declared priority date. Where local examination is conducted, the examiners will now also be examining for added subject matter.

When grant is requested, the IPOS can now refuse grant if there is an outstanding unity objection or if any claim to be granted is not related to at least one examined claim in the local examination report, the International Preliminary Report on Patentability (IPRP), the final examination report on the Corresponding Application or the granted patent that is being relied on to support grant. A claim to be granted is related to an examined claim if the two are the same or every limitation in the examined claim is in the claim to be granted.

There are various avenues for search and examination procedures, options A, B, C and D, as follows:

• option A - local search followed by a separate local examination;

• option B - local search and examination conducted together;

• option C - the search requirements are met by an acceptable search carried out elsewhere, followed by a separate local examination;

• option D - all search and examination requirements are met by acceptable examination carried out elsewhere.

Where the Singapore application is a national phase entry application of a PCT application (whether Ch.I or Ch.II):

• the International Search Report (ISR) meets the search requirements for option C;

• the IPRP (whether Ch.I or Ch.II) meets all the search and examination requirements for option D.

Where there is one or more corresponding applications elsewhere:

• the search report from one of the corresponding applications meets the search requirements for option C; and

• the final search and examination results or a patent granted on one of the corresponding applications meets all the search and examination requirements for option D.

For this purpose, a corresponding application is an international (PCT) application or an application filed in or in respect of a prescribed patent office (being the patent offices of: Australia, Canada [only for Canadian applications filed in the English language], Japan, New Zealand, the UK, the US and the European Patent Office [only for European Patent Applications filed in the English language]) and which is linked to the Singapore application by a priority claim.

With these changes, there is no longer a specific requirement that the Singapore application and the corresponding application should be filed in respect of the same subject matter. Further, it is no longer necessary at any point to provide details of all corresponding applications.

The relevant deadlines for the requirements of options A to D are as follows: (above)

Changes to post-grant procedures

Patent term extensions

The changes introduce, for the first time, the possibility of an extension of the patent term beyond 20 years from the filing date. Such extensions will only be allowable if (a) there has been an unreasonable delay by the IPOS in granting the patent; (b) the patent was granted on the basis of final examination or grant of a corresponding application, there was an unreasonable delay in the issue of the corresponding patent and there was a term extension for that corresponding patent on the basis of that delay; or (c) the patent includes a substance which is an active ingredient of a pharmaceutical product and obtaining marketing approval for the product (this product being the first one to obtain marking approval which uses this substance as an active ingredient) causes an unreasonable curtailment of the opportunity to exploit the patent.

The maximum term of extension granted under the (b) and (c) is five years.

Post-grant search and examination

A new right has also been introduced, allowing the patentee or third parties to request search and examination of a granted patent. Such a request can be made on the basis that at least one of the claims in the granted patent is not related to an examined claim or the examiner did not consider all the relevant prior art when examining the application.

The IPOS can refuse to grant requests for post-grant search and examination if it takes the view that the request is frivolous, vexatious or an abuse of the process.

If the request is allowed, the patent is searched and examined afresh (and the examination is not limited to the grounds on which the request is made). The search and examination cannot lead directly to revocation or to the patentee being required to make any amendments. The results are more for third-party information and would appear on the file in the IPOS.

Patent infringement

There are additional exclusions from what constitutes infringement of a patent:

• a Bolar provision - there is no infringement if what is being done is being used to support an application for marketing approval for a pharmaceutical product, as long as what is being done is only for the purposes of meeting the requirements for the marketing approval;

• there is no infringement in respect of a pharmaceutical product if it is being used for a specific patient, with approval from the Health Sciences Authority in respect of that specific patient, and the product is produced by the patentee or its licensee.

Further, while Singapore allows parallel imports, with certain restrictions, the changes introduce an additional restriction that parallel importation will not be allowed for a pharmaceutical product if the product has not previously been sold or distributed in Singapore by or with the consent of the patentee; if the import of the product would result in the product being distributed in breach of a contract between the patentee and a licensed distributor for outside Singapore; and if the importer knows that the importation would result in such a breach of contract.

Restrictions on relief for infringement

To encourage patentees to ensure that the granted claims are indeed related to the claims that were examined, the court may refuse any and all relief where a claim which the patentee alleges is infringed is not related to any examined claim in the local examination report, the IPRP, the final examination report on the Corresponding Application or the granted patent that was relied on to support grant.

Changes to the grounds for revocation

It is no longer a specific ground for revocation if the patent was granted on the basis of examination of a corresponding application but the patentee failed to provide the IPOS with details of all corresponding applications.

There are, however, some new grounds for revocation, although these may just be seen as clarifying the existing situation. A patent can now be revoked on the basis that a correction was made that should not have been allowed; the patent is one of two or more patents for the double-patenting of the same invention, having the same priority date and filed by the same party or his successor in title; the patent was obtained fraudulently or on any misrepresentation; or where the patent was obtained on the basis of examination or grant of a corresponding application, there was any non-disclosure or inaccurate disclosure of material information relating to the examination or grant of the corresponding application.

Additional reforms

Compulsory licences

There are changes to the requirements relating to the grant of compulsory licences. There is now no minimum term limit before a compulsory licence can be requested, and a compulsory licence will only be allowed on the basis that the grant of the licence is necessary to remedy an anti-competitive practice. For instance, if there is a market for the patented invention in Singapore, and that market is not being supplied or is not being supplied on reasonable terms and the patentee has no valid reason for failing to supply the market on reasonable terms.

Government use

There are greater restrictions on what the Singapore government is allowed to do in respect of a patented invention without infringing the patent. There is no infringement for anything done by the government (or a party it authorizes) in relation to a patented product for a public non-commercial purpose or for or during a national emergency or other circumstances of extreme urgency.

The government (or a party it authorizes) is obliged to inform the patentee when this occurs.

Exclusive licensees

Where an exclusive licensee institutes infringement proceedings, the patentee no longer needs to be made a party to the proceedings.

Contact details

Ella Cheong Spruson & Ferguson (Singapore) Pte Ltd

152 Beach Road

#30-00 Gateway East

Singapore 189721

Tel: +65 6333 7200

Fax: +65 6333 7222

Email: mail@ecsf-asia.com

Website: www.ecsf-asia.com

Kristian Robinson

Kristian Robinson is a registered patent attorney in Australia and is a senior associate in the chemical and life science group of Ella Cheong Spruson & Ferguson. Prior to Singapore, he worked in Australia and the UK.