Proposed changes to the Singapore patents regime to formalise pre-grant third party observations and to introduce post-grant re-examination were first discussed around 2017. These changes will now be introduced in the Patents Rules from 1 October 2021. What do these changes mean for third parties and patent applicants?
From 1 October 2021, third parties will be able to submit formal third-party observations (“TPOs”) in connection with the patentability of a pending patent application, and a request for re-examination can also be filed for a granted patent in Singapore.
Formalising the pre-grant TPOs process means that, if TPOs are filed, an Examiner will be obliged to review the TPOs during the search and/or examination or supplementary examination of a patent application and to indicate this in the Written Opinion, Search and/or Examination Report or Supplementary Examination Report, whichever is applicable. If the TPOs are found by the Examiner to be relevant to the patentability of the patent application and consequently, objections are raised in a Written Opinion, a patent applicant can formally respond to the Written Opinion in accordance with the prescribed procedures. TPOs may be filed at any time before the establishment of the Search and/or Examination Report or Supplementary Examination Report and will be published as part of the Patents Dossier. An applicant will also be notified if any TPOs are submitted for its patent application.
As for a post-grant re-examination request, a potential consequence of such a request is that this may result in the revocation of a patent. Any person, including the patent proprietor, can request a re-examination of a granted patent. This is an ex parte process, which means that, unless the request is filed by the proprietor, the person who submits the request cannot take part in the re-examination process. The request for re-examination must be accompanied by reasons as to why the patent is invalid as well as supporting prior art documents. If the Examiner agrees with the reasons for invalidity, the Examiner will issue a Written Opinion and the proprietor will be provided with an opportunity to respond. If the proprietor successfully overcomes the objections, the Examiner will issue a favourable re-examination Examination Report. If, however, the proprietor is not successful in overcoming the objections, the patent may be revoked by the Patents Registrar. A request for re-examination may be filed at any time after the grant of the patent and provided that there are no other proceedings in which the validity of the patent may be put in issue. Similar to TPOs, the request for re-examination, the Written Opinion (if issued) and the re-examination Examination Report will be published on the Patents Dossier.
It is also not necessary to disclose the identity of the party filing the TPOs and the re-examination request. Such submissions may be made by a registered Singapore patent agent.