Further changes to the Singapore patent system afoot

We previously reported a major overhaul to the Singapore patent system which came into effect on 14 February 2014 as a result of legislative changes to the Singapore Patents Act and Patent Rules - A Positive Change for the Singapore Patent System – a summary for Australian Investors.

What are the major changes and how will these affect filers into Singapore?

Under the existing system, it is possible to file a Request for Supplementary Examination of a Singapore patent application, such that examination by IPOS is performed on the basis of:

1. a clear International Preliminary Report on Patentability (IPRP) for the corresponding PCT application; or
2. search and examination results for a corresponding patent application which has proceeded to acceptance/allowance or grant in a jurisdiction recognised by IPOS i.e., Australia, Canada, the European Patent Office (only if filed in English), PCT, Japan, New Zealand, Republic of Korea, the United Kingdom or the United States of America.

Under this system (the “foreign route”), no separate substantive search and examination need be requested with IPOS in order to obtain a granted patent in Singapore. This is an attractive option for applicants wishing to gain expeditious and cost-effective grant of a patent in Singapore off the back of rights obtained or being sought in other major jurisdictions.

As a result of the further changes proposed by IPOS, the foreign route will no longer be available and all Singapore patent applications will have to undergo substantive examination by IPOS in order to achieve grant. It will, however, still be possible to request substantive examination by IPOS on the basis of search results arising from a corresponding convention, national/regional phase or PCT application.

Under the proposed transitional provisions, Singapore patent applications having a filing date before 1 January 2017 (including PCT applications, convention applications, and divisional applications) will still be eligible for Supplementary Examination. However, any request for Supplementary Examination filed after 1 January 2017 in respect of an eligible application will attract a new Supplementary Examination Fee of S$400. This fee is also expected to increase in the years following implementation.

In view of these impending changes, investors and businesses with an interest in obtaining patent rights in Singapore and who intend to make use of the Supplementary Examination system, should ensure that an application is filed prior to 1 January 2017. For existing applicants who are yet to file a request for Examination but who are likely to avail themselves of the Supplementary Examination system, a Request should be file before 1 January 2017 to avoid fees.

For further information on this topic, please contact Lee Miles, or your usual FB Rice attorney.