27 July, 2017
The Ministry of Law (MinLaw) and the Intellectual Property Office of Singapore (IPOS) are presently seeking feedback on proposed changes to Singapore's patents regime. These proposed changes are in line with the government's initiative of enhancing Singapore's patents regime by increasing the quality of patents and making it more user-friendly.
The current public consultation covers the following proposed changes:
(1.) amendments to the IPOS' Examination Guidelines on isolated products from nature;
(2.) a new formal process for the submission of Third Party Observations (before patent grant) and a new re-examination option;
(3.) amendments to the IPOS' patent examination guidelines on the new patents grace period arising from the Patents (Amendment) Act 2017; and
(4.) amendments to the Patents Rules concerning patentable subject matter and supplementary examination.
1. Proposed amendments to IPOS' Examination Guidelines on isolated products from nature
The proposed amendments aim to clarify the distinction between inventions and discoveries as applied to the issue of isolated products found in nature. It is proposed that Chapter 8 of the IPOS' Examination Guidelines be amended to specify that an isolated or purified material or microorganism found in nature would represent a discovery, but a new use of the isolated or purified material or microorganism may constitute a patentable invention. In the case where an isolated material or microorganism has been modified to the extent that it can be clearly distinguished from the isolated or purified naturally occurring material or microorganisms, such modified material or microorganism, and any new use of such modified material or microorganism, may also constitute a patentable invention. Likewise, an invention that is directed to a naturally occurring process would not be allowable, but a new application of the naturally occurring process may possibly be patentable.
2. Proposed new patents mechanisms
A formalised process for the submission of third party observations on patent applications. Presently, third party observations on patent applications are submitted to the Registrar of Patents on an informal basis, and conveyed to the examiners for consideration during the examination process. For more clarity and transparency, it is proposed that a formalised process for the submission of such third party observations be introduced. Such third party observations will be provided to the patent applicant so that the patent applicant would aware of any third party observations made against its application.
A new re-examination option in which the patent applicant or a third party can request a patent to be re-examined to verify that the subject matter it claims is patentable. Presently, there is no mechanism which allows for the re-examination of a granted Singapore patent. It is proposed that a new re-examination option be introduced to allow patentees or any third parties to request for the re-examination of granted patents. Such re-examination will allow patents that should not have been granted to be revoked in a more cost- and time-effective manner, and also allow patentees to evaluate, and possibly, strengthen their patent through amendment of claims. The request for re-examination, which will be an ex parte process, may be made any time after grant of the patent, and only if there are no proceedings in which the validity of the patent is in issue whether in court or before the Registrar of Patents.
3. Proposed amendments to IPOS' Examination Guidelines on patents grace period arising from the Patents (Amendment) Act 2017
The Patents (Amendment) Act 2017, which broadens the scope of the grace period for patent applications, was passed in Parliament on 28 February 2017 and gazetted in the Government Gazette on 11 April 2017. It is proposed that the examination practice which relates to this expanded scope on patents grace period be amended to include the following:
For a disclosure to be disregarded from the state of the art under Section 14(4) of the Singapore Patents Act (Chapter 221) (Patents Act), the disclosure should be of "matter constituting an invention", made within the period of 12 months immediately before the date of filing the application for the patent, and due to the following circumstances:
- where information relating to the invention has been obtained unlawfully or where there was a breach in confidence by any person who obtained such information in confidence from the inventor or from any other person;
- where the inventor had displayed the invention at an international exhibition;
- where the inventor (or any person with his consent or on his behalf) presents on or publishes the invention before a learned society; or
- where the inventor (or any person who obtained the matter directly or indirectly from the inventor) discloses information relating to the invention in circumstances not described in (i) to (iii).
If the applicant intends to rely on any of the circumstances described in (i) to (iv), the applicant must file written evidence in support of such reliance by way of statutory declaration or affidavit. The onus lies on the applicant to make out a sufficient prima facie case in the statutory declaration or affidavit that one of the circumstances in (i) to (iv) is satisfied.
The written evidence filed in reliance of (i) to (iv) should contain facts about the contents of the disclosure, the date of the disclosure, the identity of the disclosing entity and its link to the inventor. In particular, the written evidence should satisfy the link to the inventor in the relevant circumstance claimed.
Where (ii) or (iii) is relied on, the written evidence should show on its face that the disclosure was "due to, or made in consequence of, the inventor".
Where (iv) is relied on, the written evidence should show that the disclosure was made to the public "by the inventor, or by a person who obtained the matter directly or indirectly from the inventor."
In respect of printed publications, it is apparent that a disclosure is by the inventor (or joint inventors) if the said disclosure names the inventor (or joint inventors) as an author and does not name additional persons as authors.
The circumstances in (iv) does not permit an inventor's or joint inventors' own applications from being disregarded, unless under limited circumstances prescribed. Otherwise, an inventor's or joint inventors' own earlier patent applications would normally form part of the state of the art under Section 14(2) or Section 14(3) of the Patents Act.
Disregarded disclosures should still be documented during the course of search or examination of an application along with appropriate indication of the relevance of said disclosure to the prosecution of the application.
4. Proposed amendments to Patents Rules concerning patentable subject matter and supplementary examination
The proposed amendments are aimed to allow an examiner to raise an objection relating to patentable subject matter under the supplementary examination route if the examiner is of the opinion that an invention in the claims does not constitute patentable subject matter.
The full details on all the proposed changes can be found in the Public Consultation Paper on Proposed Changes to Singapore's Patents Regime here.
For further information, please contact:
Andy Leck, Principal, Baker & McKenzie.Wong & Leow
andy.leck@bakermckenzie.com
