We reported in our previous update of 22 August 2016 that, with effect from 1 January 2020, patent applicants in Singapore will not be able to rely on the grant or the allowance of a foreign corresponding application (via the Supplementary Examination process) when seeking the grant of a Singapore patent.
According to the Intellectual Property Office of Singapore (IPOS) the removal of supplementary examination is to enable a more consistent approach for examination of patent applications. This is to ensure that all Singapore granted patents meet the Singapore patentability requirements, thereby resulting in higher quality patents being granted (lower likelihood of invalid patents).
What is the Supplementary Examination Process?
The Supplementary Examination process allows patent applicants in Singapore to rely on the grant or allowance of a foreign corresponding application when seeking grant of a Singapore patent. A request for Supplementary Examination must be filed before 54 months from the earliest priority date (as opposed to filing a request for Substantive Examination before 36 months from the earliest priority date).
During Supplementary Examination, the Examiner will examine the application to ensure that:
- Each claim is supported by the specification,
- Each claim is related to a claim in a foreign corresponding application that has been examined to be novel, inventive and industrially applicable,
- Each claim does not relate to unpatentable subject matter,
- There is no double patenting, and
- There is no added matter.
The Examiner may issue a Written Opinion to raise objections based on the above grounds.
Pros and Cons of Supplementary Examination
We discuss below some of the pros and cons of Supplementary Examination (which is still available until 1 January 2020).
- Supplementary Examination is generally relatively inexpensive, as no official fee is payable.
- Supplementary Examination is typically quick and straightforward because the Examiner would rely on the Substantive Examination conducted in a foreign jurisdiction and examine the application for compliance based only on the above limited grounds.
- The claims in Singapore will be consistent with the allowed/granted claims of a foreign jurisdiction.
- There is a low likelihood of having to deal with a Written Opinion(s).
- The costs for applicants can be delayed to 54 months from the earliest priority date under Supplementary Examination as compared to 36 months for requesting Substantive Examination.
- There are issues during Supplementary Examination arising from differences in patent laws in a respective foreign jurisdiction (see below under "Different laws in foreign jurisdictions").
- There are also a number of potential issues that may arise during Supplementary Examination, particularly with regards to pharmaceutical and life sciences patent applications (see below under “Medical use claims”).
- The application is not substantively examined in accordance with Singapore Law, leading to a degree of uncertainty in relation to the validity of the patent when granted.
- If no corresponding application is granted/issued in a foreign jurisdiction by the 54 month deadline, there is no other option but to file a divisional application to keep the application pending, thus incurring additional costs.
Different laws in foreign jurisdictions
During Supplementary Examination, the Examiner only examines the application based on the limited grounds stated above and there is no substantive examination for patentability requirements such as novelty and inventive step. The Examiner also does not examine the application for unity, clarity and sufficiency. If the laws of a foreign jurisdiction are different from those of Singapore, a Singapore application that proceeds to grant under Supplementary Examination may not comply with Singapore law under the grounds that have not been substantively examined (e.g. novelty, inventive step, unity, clarity or sufficiency).
Medical use claims
Claims directed to methods of treatment of a human or animal body by surgery or therapy are not patentable under Singapore law (unlike in the USA or Australia). An issue may therefore arise when an applicant seeks to rely on, for example, a granted US patent in the case where all the claims are directed to methods of treatment and there are no claims in the first or second medical use format that is allowable in Singapore). Even though it is possible to make voluntary amendments to the method of treatment claims to convert them to allowable first or second medical use format claims, the amended claims will not be considered during Supplementary Examination to be related to the method of treatment claims examined in the US application.
In Singapore, it is also important to note that claims in the purpose limited product format (also known as EPC2000 format) are construed as first medical use claims and will not be considered novel if the compound per se had been used in any prior medical method. An issue may therefore arise if an applicant seeks to rely on, for example, a granted EP patent with claims directed to the second medical use of a known compound, drafted in the purpose limited product format. Even though it is possible to make voluntary amendments to convert the EP purpose limited product claims to a corresponding Swiss-style second medical use format, the amended claims will not be considered to be related to the purpose limited product claims examined in the EP Supplementary Examination process.
The anticipated impact of removing Supplementary Examination in Singapore
In the preceding paragraphs, we have attempted to provide a balanced perspective regarding Supplementary Examination. We believe that even though the removal of Supplementary Examination leads to the loss of a straightforward and cost effective option for obtaining a patent in Singapore, the situation in Singapore from 1 January 2020 onwards will result in greater certainty for patent applicants. Although the change in procedure may result in an increase in the cost of patent prosecution in Singapore we expect this to be more than outweighed by the benefit to patentees associated with a higher degree of certainty in relation to validity of Singapore patents that will result from a more thorough examination process.