On July 10, 2012, the Singapore Parliament passed the Patent (Amendment) Bill and the Intellectual Property (Miscellaneous Amendments) Bill geared towards strengthening and enhancing Singapore’s patent system in order to support the growing international patent capabilities, and developing Singapore as an Asian Intellectual Property hub.
The three main aims of the amendments of the Bill are a) to effect a shift from the current “self-assessment” patent system to a new and enhanced “positive grant” patent system; b) to liberalize the patent agent sector; and c) to streamline and harmonize the IP Registries IT system and procedures at the Intellectual Property Office of Singapore (IPOS).
“Self Assessment System” to “Positive Grant” Patent System
The “self-assessment” patent system was a practical approach recommended by WIPO when Singapore first started its own patent system in 1995 to encourage Applicants to register their patents in Singapore. To date, there are more than 44,322 Singapore patents granted by IPOS.
Under the current ”self-assessment” system, the procedure for grant of a patent in Singapore involves the Applicant filing a patent application at IPOS to request for patent grant in Singapore. The Applicant is required to decide on the routes of examination that he wishes to rely on to satisfy the search and examination requirements prior to grant.
Unlike in other jurisdictions, there are several search and examination options available depending on the needs of the Applicant. For example, the Applicant can i) rely on the established International Preliminary Report on Patentability (IPRP) or ii) rely on a prescribed corresponding granted patent; or iii) request for local examination based on established search report or iv) request for local search and examination. Based on the above established search and examination reports or the prescribed corresponding granted patent, the Applicant can proceed to request for grant by paying the grant fees. IPOS will subsequently issue the patent once it is satisfied that the formal requirements have been met and the application is in good order for grant.
The uniqueness of the “self-assessment” system lies in the fact that the Applicant is given the opportunity to decide whether they wish to proceed to get a patent granted. This means that the Applicant can request for and obtain a granted patent in Singapore even if the outcome of the examination is not favourable and the invention does not fulfil the patentability requirements of novelty, inventive step and industrial applicable. However, the onus is on the Applicant to ensure that his invention is valid and patentable prior to requesting for grant as the validity of the any patent can be subjected to challenge by third party in court. Nevertheless, official statistics indicated that for the past 5 years, more than 90% of the patents granted are based on positive examination report.
Under the new “positive grant” patent system, the decision to allow for patent grant now rest in the hand of the Patent Registrar and only patents which have been searched and examined and fully satisfy all the three patentability criteria of novelty, inventive step and industrial applicability will be allowed to proceed to grant. Under the new section 29A of the Act, the Registrar will issue the notice of eligibility informing Applicants that their patent application may proceed to grant only if the examination report, for the patent application does not contain unresolved objections on patentability.
However, if the Registrar believes that the examination report contains one or more unresolved objections, a notice of intention to refuse the application for patent will be issued to the Applicant. Under the new section 29B of the Act, the Applicant may apply for review of the examination report. Moreover, the Applicant may also use the opportunity to provide written submissions to overcome any unresolved objections and to amend the patent specification. Thereafter, the Examiner will issue an Examination Review Report based on the Examination report and the Applicant’s written submission and/or amendments. Finally, upon receipt of the Examination Review Report, the Registrar will then issue a notice of eligibility to proceed to the grant of a patent or a notice of refusal to grant a patent if the objections remains.
The shift to the “positive grant” patent system is a significant move forward for Singapore and is receiving strong support from both the IP practitioners and the industries. By aligning the Singapore patent system closer to that of more established patent offices like the European Patent Office, Japan Patent Office, the UK Intellectual Property Office and the United States Patent and Trademark Office, this new patent system will minimize weak patents and eventually raise the overall quality of patents granted in Singapore. This will strengthen international businesses and investors’ confidence in the quality of Singapore granted patents and Singapore patent system and encourage more inventions to be generated by different industries in Singapore.
Liberalization of Patent Agent Regime
Aside from shifting from “self-assessment” patent system to “positive grant” patent system, the Patent (Amendment) Bill also allows the registration of foreign-qualified patent agents to undertake offshore patent agency work in Singapore. However, the scope of offshore patent agency work that the registered foreign-qualified patent agents can undertake will be limited only to applying for or obtaining patents at any foreign patent offices other than IPOS; preparing patent specifications for filing patent applications, including PCT international patent applications, outside Singapore; and providing advice on other countries’ patent laws. This change will enable more international patent experts to set up their practice in Singapore and to provide Singapore with greater access to the range of international patent expertise to meet the growth in regional demand for professional patent services of international quality.
Integrated Registries IT System
The relevant sections of the Patent Act, Plant Varieties Protection Act, Registered Designs Act and Trade Marks Act have likewise been amended to support the streamlining and harmonization of the IT system and processes of the various Registries at IPOS. Such amendments will enable greater consistency, efficiencies and more cost-effectiveness when dealing between different Registries. The new integrated Registries IT system will make it easier and more convenient for customers to transact and access information related to the different types of IP online via IPOS IP portal.
In summary, the new amendments are a timely and a positive move for Singapore, which will help to enhance and strengthen Singapore’s patent system, and support the growth of international IP capabilities and establish Singapore as a world class, Asian IP hub in the near future.
This article was first published in Asia IP magazine, Vol. 4 Issue 7, August 2012, pp51-52.