7 October, 2015
In this inaugural newsletter, we highlight the following key changes that will be implemented under the Singapore Patents Act on or after 1 January 2017. This update is intended to assist you to plan, manage and enforce your patents portfolio in anticipation of these changes. Patent applicants should be aware of the advantages of filing their Singapore patent applications and filing request for supplementary examination as early as possible and no later than 31 December 2016.
Current Law
Under the current law, patent applicants have a choice of the following options to search and examine their patent
applications in Singapore:-
a. Request search and/or examination with the Intellectual Property Office of Singapore (IPOS) for
patent search and examination to take place before a Singapore patent examiner (“All Local Route”)
b. Request examination with the IPOS based on a foreign search report/results (“Mixed Route”)
c. Submitting final search and examination results from a recognized foreign patents office for re- examination/approval by the IPOS. This is also known as supplementary examination (“All Foreign Route”)
As no fee is payable to the IPOS for the All Foreign Route, it is a popular option amongst patent applicants who wish to
minimise search and examination cost in Singapore.
Closure of All Foreign Route For Search & Examination New Law
Effective from 1 January 2017, the All Foreign Route option will be closed to Singapore patent applicants for the following:-
- Singapore national patent applications with date of filing on or after 1 January 2017
- Singapore divisional patent applications with a lodgement date on or after 1 January 2017
- Patent Cooperation Treaty (PCT) applications with international filing date on or after 1 January 2017
- entering national phase into Singapore
With the closure of the All Foreign Route, applicants will not be able to file a supplementary examination based on final search and examination results of a corresponding foreign patent/ application, a corresponding international application or related foreign national phase patent/ application during the search and examination phase of the application.
All Singapore patent applications which includes Singapore national phase applications will have to undergo (i) a local search and examination (i.e. All Local Route); or (ii) rely on an International Search Report or search results of a corresponding foreign application or related foreign national phase application and file a request for local substantive examination (i.e. Mixed Route).
The New Law will not affect the following applications and the All Foreign Route is still available to the following:-
- Singapore national patent applications with date of filing before 1 January 2017
- Singapore divisional patent applications with a lodgement date before 1 January 2017
- PCT applications with international filing date before 1 January 2017 entering national phase into Singapore on or after 1 January 2017
Savings and Transitional Provisions
Changes to Fees for Supplementary Examination Even though the New Law will not affect the aforementioned
Singapore applications, the IPOS will implement a fee of S$400 for relying on the All Foreign Route if the request for
supplementary examination is filed on or after 1 January 2017.
This fee will be increased annually over a period of a few years.
Comments
The upcoming changes are part of IPOS’ efforts to strengthen the Singapore patent regime in line with Singapore’s IP Hub Master Plan in developing Singapore into a Global IP Hub in Asia.
Following from the above, if Singapore is a market that you are interested in and you wish to rely on the All Foreign Route for search and examination in Singapore without incurring the added fee of S$400 for supplementary examination, you may wish to review your existing inventions and patent portfolio and consider the following:-
1.Convert your existing provisional patent applications (whether filed in Singapore or overseas) to full Singapore national patent applications or PCT applications and file them before 1 January 2017.
2.For existing PCT applications, enter national phase into Singapore immediately and before 1 January 2017.
3. File Singapore divisional patent applications for existing Singapore patent applications before 1 January 2017.
4. File request for supplementary examination or reliance on prescribed information of corresponding foreign patent application before 1 January 2017.
