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Singapore’s Positive Grant Patent System: A Closer Look
05 May 2014
Singapore’s amended patent system has finally kicked in!
February 14, 2014 marked the beginning of a historical chapter to Singapore’s patent system when amendments to the Singapore Patents Act and Rules came into force. The amendments were enacted in support of the Patent (Amendment Bill) and the Intellectual Property (Miscellaneous Amendments) Bills that were passed on July 10, 2012.
Self-Assessment Patent System vs. Positive Grant Patent System
One of the major changes brought by the amendments to the Singapore Patents Act and Rules is the shift from the “self-assessment” to a “positive grant” patent system. A brief comparison follows below.
Self-Assessment Patent System
Patent applications that do not satisfy the patentability requirements may still be granted as long as the claims have been searched and examined, and there is no issue of unity of invention.
The applicant decides to proceed to grant a patent application and obtain a patent.
Positive Grant Patent System
Only patent applications that satisfy the patentability requirements may proceed to grant.
Patent applications that do not satisfy patentability requirements will be refused.
The Patent Examiner decides whether to allow applicants to proceed to grant a patent application and obtain a patent.
As the number of Singapore patent applications and patents increase, the positive grant system is expected to closely align its capabilities with other established patent offices, thereby minimizing weak patents and elevating the overall quality of patents in Singapore.
Singapore Positive Grant Patent System Examination Options
All patent applications under the positive grant patent system undergo examination by a Singapore Patent Examiner. Thus, only patent applications that satisfy the patentability requirements would receive a Notice of Eligibility indicating that the application may proceed to grant. Otherwise, a Notice of Intention to Refuse will be issued.
Substantive Examination
The applicant may file a request for local substantive examination within 36 months from the filing date or priority date. Under this option, the applicant may select any one of the following:
1. request a substantive examination based on a local search report issued by Singapore (only if a request for search is filed within 13 months);
2. request a substantive examination based on a foreign search report issued for a corresponding application; or
3. request a combined search and examination.
Supplementary Examination
Alternatively, the applicant may opt to obtain a Singapore patent on the basis of a foreign examination issued for a corresponding foreign application by filing a request for Supplementary Examination within 54 months from the filing date or priority date. The documents required in filing the request are, as follows:
1. a copy of either the corresponding foreign patent or the final examination results with allowed claims referred to in the results; and
2. a table setting out how each Singapore claim is related to the allowed claims of corresponding application.
If the Examiner has objections after substantive examination and supplementary examination, a Written Opinion will be issued and a response must be filed within five months and three months, respectively, from issuance of the opinion. The substantive examination must be completed within 18 months from the issuance date of the first Written Opinion, while a supplementary examination must be completed within six months. Thereafter, the Examiner will issue a Substantive Examination Report or Supplementary Examination Report along with a Notice of Eligibility or a Notice of Intention to Refuse. For the latter, the applicant would still have the option to file a request for an Examination Review or allow the application to be finally refused.
The new positive grant patent system can be illustrated, in Figure 3 below.
Revised Examination Guidelines for Patent
Concomitant to the implementation of the positive grant patent system, the Intellectual Property Office of Singapore (IPOS) has revised the examination guidelines for patents.
The voluminous guidelines provide a comprehensive discussion on the interpretation of the specification and claims, novelty, inventive step, unity of invention, amendments and corrections, patentable subject matter and industrial applicability.
Conclusion
Indeed, Singapore’s initial steps – shifting to a positive grant patent system and improving examination guidelines – are remarkable steps to building Singapore as a world class Asian IP hub. Further, the new patent system supports Singapore’s growing international patent capabilities, recognizing Singapore as a leading patent office for the years to come.
patrick mirandah co. (s) pte ltd
1 Coleman Street
#07-08 The Adelphi
Singapore 179803
T: +65 6336 9696
F: +65 6338 3739
