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IPOS Postpones Foreign Route Closure
12 September 2016
The Intellectual Property Office of Singapore (IPOS) has announced that it will postpone the planned closure of the “foreign route” in its patent regime.
The closure will be delayed from January 1, 2017, to January 1, 2020, according to a circular released by IPOS on July 27. Patent applications with a date of filing on or after the closure date will no longer be eligible to use the foreign route.
IPOS will still allow Patent Cooperation Treaty (PCT) national phase applications to use this route after the closure, if its base PCT application has an international date of filing before January 1, 2020, until all eligible applications are phased out.
However, the plan to impose a fee of S$400 (US$297) for using the foreign route after the closure date has been scraped.
The foreign route currently allows patent applicants to rely on the allowance or grant of a corresponding patent application or the International Preliminary Report to obtain a Singapore patent. Applications using this route are not required to undergo local substantive search and examination on patentability requirements such as novelty and inventive step.
Instead, IPOS only conducts supplementary examination which checks for compliance issues such as double patenting or relatedness of claims between the local application and the corresponding foreign or international application. This option has been attractive to patent applicants as it does not incur any official fee. It is also quicker to clear a substantive examination.
The original plan to abolish the foreign route no earlier than January 1, 2017, was announced last year, which coincided the appointment of IPOS as an International Searching Authority and International Preliminary Examination Authority under the PCT system.
IPOS has said that the aim for the closure was to strengthen the Singapore patent regime, by ensuring all granted patents fully meet the patentability requirements, thereby enhancing the overall quality of patents.
“The postponement is intended to allow sufficient time to patent attorneys and their clients, to adjust to the closure,” a spokesperson for the agency tells Asia IP.
“Singapore’s patent system has undergone major changes in the past few years with the move to build in-house search and examination capability, and closing the foreign route is a step in the right direction,” the spokesperson says. “But we agree with our stakeholders that it has to be introduced in a manner that does not cause undue disruption to the patent system, and the many overseas IP owners who have an interest in bringing their patents into Singapore.”
The spokesperson adds: “As an appointed competent International Search and Preliminary Examining Authority, serving applicants from the United States, Japan, Mexico, Indonesia and Vietnam, Singapore is fully committed to maintaining worldclass delivery of services and building on our goal of becoming an IP hub in Asia.”
IP practitioners in Singapore are generally supportive of the decision of IPOS. Desmond Tan, a principal and patent attorney at Davies Collison Cave in Singapore, noted that there had been concerns from some foreign applicants and subsequently some lobbying against the changes behind the scene. IPOS also held several informal sessions with practitioners in Singapore.
Dedar Singh Gill, managing director of Drew & Napier’s intellectual property department, suggests that the closure of the foreign route is important because at present there is a possibility that some unmeritorious patents may have entered Singapore’s IP system.
“This is a positive development in the right direction towards making Singapore an IP hub. The changes are unlikely to deter foreign companies from seeking patent protection in Singapore,” Gill says. “But a balance needs to be struck between swiftly implementing the changes on one hand, and giving time for the industry to adjust on the other.”
The last major change to Singapore’s patent system was when the amended Patents Act introduced a positive grant system in place of a self-assessment regime in 2014. Under the new rules, only patent applications with fullypositive examination results which satisfy all of the criteria of patentability, including novelty, inventiveness and industrial applicability, may proceed to grant.
Previously, under the selfassessment system, a patent would still proceed to grant even if there were objections raised in the examination report.
The amendment also introduced a supplementary examination for applicants who opt to obtain a Singapore patent on the basis of foreign examination issued for a corresponding foreign application. Gill suggests that this change has already reduced the number of dubious patents being granted.
“The introduction of local substantive examination for foreign applicants will further ensure that no unmeritorious patents find their way to grant in Singapore,” he adds.
