Legislation reforming patent examination in Singapore is expected to come into force later this year.
Singapore currently operates a “self-assessment” patent system. This means that the applicant can ask for a patent to be granted even if the search and examination indicates that the invention is not patentable. The Patents (Amendment) Act 2012, which was passed in July 2012, will replace this “self-assessment” system with a “positive grant” system. Examiners will refuse applications that do not meet the usual novelty, inventive step and industrial application criteria applied in most jurisdictions.
The Intellectual Property Office of Singapore (IPOS) is currently establishing a team of examiners and applications will no longer be sent overseas to be examined by foreign patent offices. Two types of examination are to be available:
- Examination based on final search results for a corresponding application or a search conducted by IPOS; and
- Supplemental examination based on final search and examination results of a corresponding application.
Corresponding applications include national applications in Australia, New Zealand, the United Kingdom, the United States and Europe which have a priority relationship with the Singapore application, and a national phase application in any of these countries based on the same international application as the Singapore application.
However, if proceeding via the supplementary examination route, a comparison of the Singaporean claims and the corresponding claims must be filed, and the claims granted in Singapore must “relate” to the claims of the corresponding application. According to the Singapore Patents Act, “relate” means that the claims are identical or differ only in expression, not content. This obviously places restrictions on the ability to amend the claims in Singapore.
In light of the change to the “positive grant” system, the post-grant search and examination system will be discontinued. The dual track examination options (fast or slow) will also be abolished. However, accelerated examination can still be requested under the ASEAN acceleration arrangement (which covers a number of South Asian countries), or the Patent Prosecution Highway through which examination can be sped up based on corresponding claims accepted in the United States, Japan, South Korea or China. Under the accelerated examination route, IPOS hopes to provide a determination on patentability within 12 months of filing in Singapore. If examination is not accelerated, the examination report should issue approximately 54 months from the priority date.
The new system should provide better assurance for owners of Singaporean patents as well as those concerned about infringement in Singapore since fewer invalid patents should be granted.