In brief: patent prosecution in Singapore

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

There are no statutory exclusions for software, mathematical methods or business methods.

The legal position is presently that a computer program or business method is, in principle, patentable subject matter; however, patent examiners may object that these do not meet the threshold requirement for there to be an invention. The examination guidelines provide a list of examples that will be objected to during examination on that basis:

• discoveries, scientific theories and mathematical methods;
• aesthetic creations;
• schemes, rules or methods for performing a mental act, playing a game or doing business;
• presentation of information; and
• isolated products from nature.

Methods of surgery, treatment or diagnosis practised on human or animal bodies are statutorily excluded from protection; however, substances or compositions invented for use in those methods are not excluded. As such, first medical use claims (eg, having the format ‘Compound X for use in the treatment of disease Y’) are allowable subject matter. Second medical use claims, such as Swiss-style claims, are also considered to be allowable subject matter.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

An employee’s invention belongs to his or her employer, provided that it is generated in the course of the employee’s normal duties or generated during activities that fall outside those duties but that are specifically assigned to the employee. In each case, there should be a reasonable expectation that an invention may result. Other circumstances in which the invention would belong to the employer would be where there is a special obligation on the employee, because of the nature of his or her duties, to further the employer’s interests.

Ownership of inventions that are not made by employees is governed by contract. The same applies to inventions arising from a joint venture. Where there are multiple inventors employed by different entities, the respective employers are each entitled to an equal share of the patent, subject to contract.

Patent ownership is recorded on the register of patents. Where there is a change of ownership, whether this be by assignment or otherwise, a copy of a document evidencing the transaction should accompany a request to register the transaction. Assignments must be in writing and signed by or on behalf of the assignor.

Any change in ownership should be registered within six months of the transaction, instrument or event that led to the change. Any exclusive licence should also be registered within six months of its execution. Otherwise, the court may not award damages or an account of profits for infringing acts occurring prior to the date of registration.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

Patents are typically granted within two to three years of requesting examination. Examination must be requested by 36 months from the priority date.

The typical cost of obtaining a patent in Singapore (excluding drafting costs) is between US$4,000 and US$7,000.

Are there any procedures to expedite patent prosecution?

If an application is filed in Singapore without a priority claim, it is possible to be fast-tracked if examination is requested at the same time, and there are fewer than 20 claims in the application. The Intellectual Property Office of Singapore (IPOS) operates the ‘SG IP Fast Track’ programme under which applications can be granted in as little as six months. This programme will run until 29 April 2022.

Even if the application is not accepted into the SG IP Fast Track programme, it may still enter the ’12 Months File-to-Grant’ programme, which enables applications to be granted within 12 months, provided the applicant acts within shortened time frames, and the first action of the examiner during search and examination is a favourable search-and-examination report.

Singapore also participates in various Patent Prosecution Highway (PPH) programmes. IPOS is a participating office in the global PPH pilot programme and also has bilateral PPH pilot programmes with the patent offices of Brazil, China, Mexico and the European Patent Office.

Singapore is a participant in the ASEAN Patent Examination Co-operation (ASPEC) scheme. Under ASPEC, an applicant may use search and examination reports from any participating IP office of the Association of Southeast Asian Nations to accelerate examination in any other participating IP office. The ASPEC process is conducted in English, and there is no additional fee payable for making an ASPEC request.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The patent application should disclose enough to meet the requirements of the Patents Act:

• it should disclose the invention in a manner that is clear and complete for the invention to be performed by a person skilled in the art (the sufficiency requirement); and
• the claims should be supported by the description.

Lack of support will only be raised as a ground of objection during examination. It is not a ground of invalidity.

Must an inventor disclose prior art to the patent office examiner?

If the applicant wishes to rely on search results from a corresponding application as the basis for examination, then the applicant must provide details of those when requesting examination. Other than that, there is no obligation to disclose prior art to the examiner.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

It is possible to file divisional patent applications on a voluntary basis or in response to a unity objection raised during examination. There is no limit to the number of divisional applications, nor the number of generations of divisional applications, that can be filed. Any divisional application must be filed while the parent application is pending (ie, not refused, withdrawn, treated as or taken to be withdrawn, or treated as abandoned or as having been abandoned) and before the grant fee is paid for the parent application.

Is it possible to appeal an adverse decision by the patent office in a court of law?

In general, an adverse decision by IPOS may be appealed to the High Court. The only decisions that cannot be appealed are:

• a decision by the Registrar to amend the abstract of the application;
• omission of subject matter from a specification that may be defamatory or that may be generally expected to encourage offensive, immoral or antisocial behaviour; and
• a decision to restrict publication of information, the publication of which may be prejudicial to the defence of Singapore or the safety of the public.

Does the patent office provide any mechanism for opposing the grant of a patent?

No opposition proceedings are available. Validity can only be challenged by way of a revocation action.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

Singapore is a ‘first to file’ jurisdiction. Priority is determined strictly according to the priority date.

The Patents Act provides mechanisms to settle ownership disputes for pending applications and granted patents. A person may apply to IPOS to be named on an application or patent as sole applicant or owner, or co-applicant or co-owner. Any decision of IPOS in this regard may be appealed to the High Court.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

The Patents Act provides for post-grant amendments and revocation actions at the patent office. There is no third-party re-examination procedure available.

The court or the Registrar has the discretion to allow the patentee to make claim amendments during any proceedings in which the validity of the patent is put in issue. The amendments must not add matter or broaden the scope of the claims. If an amendment is allowed, it is deemed to have had effect from the date of grant of the patent.

In exercising the discretion to allow amendment, the court or the Registrar will consider whether:

• relevant matters are sufficiently disclosed (eg, in relation to corresponding patent applications or litigation in other jurisdictions);
• there was any unreasonable delay in seeking amendments; and
• the patentee has gained an unfair advantage by delaying amendments that are known to be needed.

How is the duration of patent protection determined?

The normal term of a patent is 20 years from the filing date.

The term of a patent may be extended on the following grounds:

1. there was a delay by IPOS during examination;
2. the patentee requested supplementary examination, and a patent-term extension was granted in relation to the foreign patent being relied upon for grant in Singapore; or
3. there was a delay in obtaining marketing approval for a pharmaceutical product that has as an active ingredient a substance that is the subject of the patent.

There is no limit to the extension available under points (1) and (2). A maximum extension of five years is available under point (3).

Law stated date

Give the date on which the information above is accurate.

5 November 2020.