IPOS will be introducing process and fee changes for patents, trademarks, registered designs and plant varieties protection, in line with the Intellectual Property (Amendment) Act 2022 that was approved by Parliament on 12 January 2022. The legislative amendments and official fee updates were slated to come into effect on 29 April 2022. However, in a recent announcement by IPOS, the implementation date of these changes has been postponed until 26 May 2022.
IPOS will also be introducing a new Intellectual Property (IP) filing system – IPOS Digital Hub, which will replace the existing e-services platform, IP2SG. The new IP filing system will be launched on 2 June 2022, instead of 4 May 2022 as originally announced.
We provide a summary of some of the key changes below. Updates to the official fees may be found here.
Publication of English translation
Applicants will no longer have to submit a form or pay the accompanying fee for publication of the English translation for international applications. IPOS will automatically publish the English translation within the prescribed period. This will apply to international applications that enter the Singapore national phase on or after 26 May 2022.
New process for minor amendments
During examination, the Examiner can issue an “invitation to amend” with a two month deadline, if the Examiner is of the view that minor amendments may allow the application to proceed to grant.
If the minor amendments do not resolve the identified problem or if the Applicant refuses to respond to the “invitation to amend”, the Examiner may issue a written opinion. The above process will apply to all patent applications for which substantive examination has not been completed by 26 May 2022.
New requirement for sequence listing Where an application for a patent discloses a sequence, a sequence listing will have to be submitted. The sequence listing has to be filed in accordance with the prevailing World Intellectual Property Organisation (“WIPO”) Standard. This applies to international applications that have a date of filing on or after 26 May 2022.
Examination of the first invention When it appears that an application relates to two or more inventions, but not part of a single inventive concept, an Examiner may restrict examination to the first invention specified in the claims. This merely formalizes what is already practised by Examiners on a routine basis. The change applies to requests for an examination report filed on or after 26 May 2022.
New Partial Acceptance Mechanism
There will be a new partial acceptance mechanism for national trade mark applications which will enable claimed goods/services which have not been objected to, to proceed to registration. This will apply to national trade mark applications filed on or after 26 May 2022.
New post-deadline relief measure of “continued processing”
Applicants will have two months after the application becomes Treated as Withdrawn to request for continued processing of their trademark application. During the period of continued processing, trade mark applications (or objectionable goods/services, in the case of partially objectionable applications) that are Treated as Withdrawn will continue to be cited by the Registrar against identical or similar marks with later filing dates or priority dates. This will apply to trade mark applications that become Treated as Withdrawn on or after 26 May 2022.
- Registered Designs
Sets of articles and non-physical products
The definitions of “article” and “non-physical product” under the current Registered Designs Act do not cover “sets of articles and non-physical products”. Registered design applications will be allowed to be made in respect of sets of articles and non-physical products. This will apply to all pending and new applications made in respect of sets of articles and non-physical products on or after 26 May 2022.
Filing of disclaimers
Applicants or registered owners will be allowed to voluntarily disclaim rights in relation to specified feature(s) conferred by a registered design. This will apply to any applications to register a design or registrations of a design for which a disclaimer is requested to be inserted on or after 26 May 2022.
Reducing Period for Reinstatement The period to request the reinstatement of an application, right or thing that becomes Treated as Withdrawn, or has been abrogated or ceased to be in force or to exist (as the case may be) will be reduced from six to two months. This will apply to an application, right or thing that becomes Treated as Withdrawn, or has been abrogated or ceased to be in force or to exist on or after 26 May 2022.
- Plant Variety Rights
Furnishing of information, documents or propagating material
It will no longer be mandatory to submit propagating material of the candidate variety to IPOS for examination. Submission of propagating material will only be required when requested by the Registrar or Examiner.
The Examiner will also have the discretion to extend the period for submission of requested information, document or propagating material for examination.
The above applies to applications for the grant of plant variety rights made on or after 26 May 2022.
Late payment of annual fee Proprietors will be able to make late payment of annual fees, six months from the anniversary of the date of grant of protection. This will apply to applications where the reminder notice for annual fee payment is sent on or after 26 May 2022.