Change to Positive Grant System: draft Patent (Amendment) Rules released

27 February 2013

Howard Yap

The draft Patents (Amendment) Rules 2013 have been released by the Intellectual Property Office of Singapore (IPOS) in preparation for the changes to the Singapore Patents Act. These changes which shift the regime from a self-assessment system to a positive grant patent system, are likely to come into effect in the second half of 2013.

The changes will apply to patent applications after the date. Therefore, “old” applications (filed prior to the date) will follow the self-assessment system, and “new” applications (filed after the date) will follow the new positive grant system.

Key Changes

• Introduction of supplementary examination – Supplementary examination will be required when the applicant places reliance: on the allowance or grant of a corresponding application or IPRP.

In supplementary examination, the examiner will not examine the claims substantively but will examine whether the claims are patentable subject matter;  will result in double patenting; contain added matter; and properly “related” to the claims of the corresponding application or IPRP being relied upon.

The deadline to file supplementary examination is 54 months from the priority date. If the examiner has at least one objection, a supplementary written opinion will be issued, in which the applicant has 3 months to file a response to.

• Deadline to request for search and examination – The filing of the block extension has been abolished and the deadline to request for independent search and examination is now 36 months from the priority date.

• Allowance – The changes will result in an allowance stage. If the report is positive (no unresolved objections), IPOS will issue a notice of eligibility, which is akin to an allowance. The applicant then must pay the grant fee within 2 months to obtain the Singapore grant.

If however, the report is negative (at least one unresolved objection), IPOS will issue a notice of intention to refuse. The applicant then has 2 months to request for a review of the negative report. If a review is not filed by the expiry of these 2 months, the application will be refused.  

• Review Process – The changes now provide for a review process, where an applicant can request for a review of a negative report. The review request must be accompanied by written submissions to overcome the unresolved objections. The applicant can also choose to simultaneously file amendments to the specification but these amendments must be for the purpose of overcoming the unresolved objections.

This review will be conducted by a different examiner. Upon completing the review, an examination review report will be issued. The examination review report will specify if the new examiner agrees or disagrees with the negative report, whether each unresolved objection has been overcome by the amendments to the specification, and his supporting reasons.

If the Registrar is satisfied that there are no unresolved objections, the Registrar will issue a notice of eligibility.

If there is at least one unresolved objection, the Registrar will issue a notice of refusal. Refusal of the application will take effect 2 months after the date of the notice of refusal.

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