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8 September 2016
The Intellectual Property Office of Singapore ("IPOS") recently announced that the "foreign route" for obtaining the grant of a Singapore patent will be abolished with effect from 1 January, 2020.
The following types of applications will be affected:
(a) patent applications with a date of filing on or after 1 January 2020; and
(b) divisional applications with a lodgment date on or after 1 January 2020 (regardless of the date of filing).
With the closure of the "foreign route", all affected Singapore patent applications will have to undergo local substantive examination.
Current Procedure for Grant
There are currently three routes for the grant of a Singapore patent application:
(a) Local Route: where a request for local substantive search and examination is filed;
(b) Mixed Route: where a request for local substantive examination is made based on the search results of a prescribed foreign patent office or international authority under the PCT; or
(c) Foreign Route: where the substantive search and examination results of a prescribed foreign patent office or international authority under the PCT is relied upon for grant.
Both the local and mixed routes are unaffected by the changes announced.
Under the foreign route, IPOS only undertakes a "supplementary examination" which checks for issues such as claim relatedness between the claims submitted for grant and those allowed/granted by the prescribed office/authority, whether the submitted claims are supported by the specification, and double patenting. There is no substantive examination of patentability requirements such as novelty and inventive step. Once the application clears the supplementary examination, the application will proceed to grant upon payment of the requisite grant fees.
The foreign route is therefore a quick and cost efficient option for applicants who have filed a corresponding foreign or PCT application with a prescribed patent office/international authority, and obtained grant or a positive examination report on such an application. However, since substantive examination is conducted by a number of different patent offices with varying examination guidelines and practices, the foreign route suffers from a lack of consistency in examination standards and quality. IPOS hopes to address this issue with the closure of the foreign route.
Suggested Actions
Details of the changes have not been announced as they have not been enacted into legislation. Nevertheless, applicants who wish to take advantage of the benefits offered by the foreign route should take steps to ensure that their Singapore applications (including divisional applications) are filed before 1 Jan 2020.
For further information, please contact:
Angeline Lee, Baker & McKenzie.Wong & Leow
Angeline.M.Lee@Bakermckenzie.com
