Singapore: IPOS launches free deferment of patent prosecution as pilot initiative
31 August 2024
In response to the growing interests of applicants in having more time to decide how best to prosecute their Singapore patent applications in alignment with their global patenting strategies and IP commercialization developments, the Intellectual Property Office of Singapore (IPOS) has launched a pilot initiative to allow eligible applicants to defer the filings of request for search and/or examination reports for up to 18 months, at no costs.
Under the current practice, applicants who wish to delay filing a request for search and/or examination reports will need to obtain an 18-month extension of time with a prescribed fee of S$3600 (US$2,770). With this initiative, applicants now have a total of 54 months to file a request for search and/or examination reports, extending the originally prescribed period of 36 months from the earliest priority date or the filing date if no priority claim is made. This extension is offered without any charges.
This initiative is applicable only for Singapore patent applications where the original 36-month prescribed period calculated from the earliest priority date or if no priority claim is made, from the filing date, expires between September 1, 2024, and August 31, 2026(both dates inclusive) (hereinafter referred to as “eligible applications”). In other words, any applications with an initial 36-month deadline that fall before September 1, 2024, but have an extended deadline until August 31, 2026, are not eligible for the pilot initiative.
For eligible applications where an extension has been previously obtained with less than 18 months before this pilot initiative, no withdrawal of such extension request nor refund may be made by the applicants to enjoy the full fee waiver under this pilot initiative. However, applicants may still apply for additional extension for the remaining period to reach the full 18-month extension of time at no cost.
Nevertheless, for eligible applications where the examination request has been made before this pilot initiative, and if the applicants decide to defer the prosecution process under this pilot initiative, they may do so by withdrawing the previously filed request and requesting a corresponding refund, provided that the search and examination have not yet commenced. However, the grant of such refund is at IPOS’ discretion.
Procedurally, under this pilot initiative, extension of time can be obtained retrospectively or by the 54 month-deadline from the earliest priority date or the filing date (if no priority claim is made) for the eligible applications, along with the request for search and/or examination. However, it is recommended to request for extension before the expiry of the initial 36-month deadline to avoid having the application being treated as abandoned, even though the application will be reinstated once the extension is requested by the 54-month deadline under this pilot initiative at no cost.
By deferring patent prosecution under this pilot initiative, there is a possibility of receiving positive examination results from a counterpart patent application. Applicants may use the positive examination results to leverage PPH programs and expedite the prosecution process. Furthermore, IPOS aims to produce a first written opinion within 10 months of the PPH request.
In sum, deferring prosecution under this pilot initiative can be strategically advantageous if the applicant wishes to wait for positive examination results from counterpart applications. This approach may allow the applicant to proceed with the PPH program, which can potentially lead to a cost-effective prosecution process with faster processing time, fewer office actions and a higher grant rate for the application.
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