Proposed Changes To Singapore Patent Regime And Their Implications To European SMEs.

15 August, 2017

 

Today’s blog post is taking a closer look at the proposed changes to  Singapore Patent Regime and explains their implications to European SMEs wishing to patent their inventions in Singapore. 

 

Singapore is currently in the process of amending its patent regime as the government has submitted the proposed amendments for public consultation due to end on 15 August 2017.  Major amendments concern the examination guidelines on isolated products from nature; third party observations; patent re-examination option; the examination guidelines on the new patents grace period and amendments to Patents Rules concerning patentable subject matter and supplementary examination. The aim of these proposed amendments is improving Singapore’s patent regime and further increasing the confidence of stakeholders and investors in Singapore’s patent regime[1].

 

Patent examination guidelines on isolated products from nature

 

In order to have a more balanced patent regime, the Singapore Government is proposing to clarify the distinction between ‘inventions’ and ‘discoveries’ as applied to the issue of isolated products found in nature. According to the new proposal isolated or purified materials or microorganisms that can be found in nature would represent a discovery and would not be an invention – thus these materials or microorganisms would not be eligible for patent.

 

At the same time, if a new use of the isolated or purified material or microorganism is found, then the new use can be claimed and it can also be patented.  Furthermore, the new proposal states that “in the case of an isolated material or microorganism which has been modified such that the modified material or microorganism can be clearly distinguished from the isolated or purified naturally occurring material or microorganisms, then not only can the modified material or microorganism be claimed but also any new use of the modified material or microorganism”.[2] In this case both the new material and new use can be patented.

 

Similarly, according to the new proposal, a claim directed at a process that occurs in nature would not be patentable but if a new application of the process is found, then the specific application can be claimed. For EU SMEs this means that isolated natural materials cannot be patented and they will remain for everyone to use. At the same time, as new use is patentable, it can encourage SMEs to invest into finding new uses for isolated natural materials.

 

Submission of Third Party Observations

 

In practice third parties have already been allowed to submit their observations to the patent examiner before patent grant, but the Singapore Government is now seeking to formalize this process in the revised Patent Act.

 

According to the proposal, third party observations can provide a cost-effective opportunity to highlight relevant prior art and provide comments on their relevance to a patent application, which should reduce the risks of patents being granted that do not actually meet all the formal requirements. This would save SMEs money they would otherwise have to use to later challenge the patents in the court that are similar to patents granted to their invention.

 

According to the new proposal, third parties could submit observations after the publication of the patent application in question. The examiners, however, are not obliged to consider third party observations, while it remains at their discretion whether to do so. According to the proposal, third party observations can be based on any grounds of examination.

 

At the same time, if third parties observations are relying on prior art, they must indicate why, and state clearly which part of the prior art is relevant in relation to a specific requirement considered in examination. Furthermore the claims in issue in the application must also be specified.[3] Once the Registrar has deemed the third party observation to be in order, it will be sent to the examiner, who has the right to disregard the observation.

 

Re-examination Option

 

Re-examination option will be a new process that could be requested after the grant of the patent. According to the new proposal, re-examination is a process in which the patentee or a third party can request a patent to be reexamined to verify whether the subject matter it claims is patentable. The aim of this new process is to offer a cost-effective measure to EU SMEs for revoking patents that should have never been granted in first place.

 

Currently, to revoke a patent one would need to go through court proceedings.

 

According to the proposal re-examination request may be filed by anybody (e.g. a patentee, an agent or any third party) at any time after grant of the patent, and only if there are no other proceedings in which the validity of the patent may be put in issue whether in court or before the Registrar of Patents.

 

The grounds of re-examination would be limited to those requirements which are considered during the examination process, except the requirement of unity of invention and if requestor is relying on prior art, the re-examination request must contain reasons why, and state clearly which part of the prior art is relevant in relation to a specific requirement considered in examination.[4] During the re-examination procedure, the patent examiner will only consider patent documents and printed or electronic publications, and would not take into account prior use.

 

The Registrar shall generally accept the re-examination request, unless it is frivolous or constitutes an abuse of the re-examination process. In case the grounds of the re-examination do not make out, the Registrar will issue a positive re-examination report accompanied with a certificate and the requestor of the re-examination will not be able to appeal the decision.  However, if a negative re-examination report is issued, a patentee can appeal it. As the re-examination will be an ex parte process, the requestor of re-examination cannot take part in the re-examination process after having filed the request.

 

Changes to the Patent Examination Guidelines on Patents Grace Period

 

In 2017, Singapore’s Patent Act was amended so that it broadens the scope of grace period for patent applications. Previously the grace period of 12 months applied to cases where the invention was disclosed by the inventor during an exhibition or in a paper read in front of the learned society, or if the invention was disclosed due to breach of confidentiality or due to the information on the patent being obtained unlawfully. The 2017 Patent Amendment Act broadened the scope of the grace period for patent applications, so that it now also takes into consideration previous disclosure (within 12 months of filing for a patent application) due to various errors. For example, in case the first patent application had been withdrawn by the patentee for various reasons or refused or abandoned before the date of the publication and therefore the publication was not required under the law, however the application was published due to a mistake. In this case the 12 months grace period for a new patent application will still apply.  Similarly, if a third party files the patent application without the consent of the inventor and the application has been published by the intellectual property administrators then the 12 months grace period will still apply and the inventor has 12 months to file his or her new patent application.

 

The Singapore Government is now proposing to amend the Patent Examination Guidelines to take into account the broadened scope of the Patent Act. According to the new proposal, the applicant must file written evidence in support of reliance on the new circumstances broadening the scope of the grace period for patent application.

 

Furthermore, supporting written evidence must be submitted by statutory declaration or affidavit and enclose all supporting documents. It will also be the applicant’s duty to provide enough evidence of erroneous publication of the patent application, so that Singapore patent examiners could apply the 12 months grace period.[5] For example, if the patent application was erroneously published the first time, the applicant must provide proof of this to the Singapore patent examiners in order to be able to claim the 12 months grace period for his/her patent application.

 

Amendments to the Patents Rules concerning patentable subject matter and supplementary examination

The Singapore Government plans to amend the Patents Rules in a way that a patent examiner could raise an objection relating to patentable subject matter also under the supplementary examination route. Currently the Singaporean patent examiners could only raise an objection relating to patentable subject matter under the local or mixed patent routes. Local patent route means that a patent application is submitted to the Intellectual Property Office of Singapore (IPOS) and substantive examination is also carried out by IPOS. Mixed route means that the local substantive examination by IPOS is based on the foreign search and examination report.

 

In Singapore there’s also a third route for obtaining patents, which is called foreign route. When using the foreign route, applicants file the application with foreign eligible patent offices (AU, CA, JP, KR, NZ, UK, US, EPO) and IPOS will accept the results of the foreign patent offices, while conducting only supplementary examination, under which until now IPOS patent examiners were not able to raise objections relating to patentable subject matter, but were only conducting a formal check. The proposed amendments would make it now possible for IPOS patent examiners to raise objections to patentable subject matter (i.e. to novelty) also when conducting a supplementary examination under the foreign route. According to patent lawyers “This would close the loophole that currently allows patent applications with non-patentable subject matter from proceeding to grant under the supplementary examination procedure”.[6]

 

[1] Public Consultation on Proposed Changes to Singapore’s Patents Regime, 2017, available at: https://www.ipos.gov.sg/docs/default-source/resources-library/ip-legislation/Public-Consultations/public-consultation-on-proposed-changes-to-patents-re.pdf?sfvrsn=0

[2] Ibid

[3] Annex B to the Public Consultation on Proposed Changes to Singapore’s Patents Regime, 2017, available at: https://www.ipos.gov.sg/docs/default-source/resources-library/ip-legislation/Public-Consultations/annex-b—proposal-to-formalise-submission-of-third-p.pdf?sfvrsn=0

[4] Annex C to the Public Consultation on Proposed Changes to Singapore’s Patents Regime, 2017, available at: https://www.ipos.gov.sg/docs/default-source/resources-library/ip-legislation/Public-Consultations/annex-c—proposed-new-re-examination-optionb2181977c2d0635fa1cdff0000abd271.pdf?sfvrsn=0

[5] Annex F to the Public Consultation on Proposed Changes to Singapore’s Patents Regime, 2017, available at: https://www.ipos.gov.sg/docs/default-source/resources-library/ip-legislation/Public-Consultations/annex-f—proposed-amendments-to-guidelines-on-patent-(003).pdf?sfvrsn=0

[6] Proposed changes to Singapore patent system, Gowling WLG, July 2017, available at: https://gowlingwlg.com/en/global/insights-resources/proposed-changes-to-singapore-patent-system