Singapore has recently seen developments in its patents scene with the government's efforts to enhance the nation's patents system. This update sets out an overview of these developments:
- Launch of the Patents Open Dossier and Patents Formalities Manual by the Intellectual Property Office of Singapore ("IPOS")
- Public consultation issued by the Ministry of Law and IPOS to gather feedback on the proposed changes to Singapore's patents regime
1. THE PATENTS OPEN DOSSIER AND PATENTS FORMALITIES MANUAL
The Intellectual Property Office of Singapore ("IPOS") has officially launched the Patents Open Dossier and Patents Formalities Manual to provide the public with better access to patent information as well as IPOS's patent prosecution practices and requirements.
A. Patents Open Dossier
The Patents Open Dossier is an online IP2SG file inspection service, which has been made available from 24 July 2017.
Documents (for example, Search and Examination Reports and Responses thereto) relating to published patent applications filed on or after 14 February 2014 can be accessed on the Patents Open Dossier, except for the following:
- Cover Letters
- Supporting Documents and Statements
- Statutory Declarations or Affidavits
- Certificates of Grant
This will allow applicants easier access to their patent application records as well as for third parties to monitor the progress of the patent applications of their interest.
B. Patents Formalities Manual
The Patents Formalities Manual was released on 1 August 2017 and is available for download at the IPOS website.
The Patents Formalities Manual provides applicants with a better understanding of the Singapore Patent Registry's prosecution practices and requirements for patent applications filed with the Registry, including both direct applications and ex-PCT national phase applications.
2. PUBLIC CONSULTATION ON PROPOSED CHANGES TO SINGAPORE’S PATENTS REGIME
A public consultation has been initiated by Singapore's Ministry of Law and IPOS to gather feedback on the proposed changes to Singapore's patents regime. It is believed that the proposed changes would enhance Singapore’s patent system and increase the quality of patents granted. The period of the public consultation will end on 15 August 2017.
In summary, the following changes have been proposed:
1. Formal Process for Third Party Observations
Under the current patents practice, third party observations can be informally submitted to the Singapore Patents Registry for an Examiner's consideration during the examination process.
The proposed amendments aim to formalise a process for submitting such third party observations so as to provide more clarity and transparency in the process. In particular, it has been proposed that:
- Any third party can file third party observations after the publication of the patent application and such observations may be made based on any grounds of examination; and
- An Examiner has the discretion to decide whether the observations should be considered. In general, the Examiner may refuse to consider the observations if the observations are received after the Examiner has commenced drawing up a Written Opinion or an Examination Report.
2. Ex-parte Post-grant Re-examination
An ex-parte re-examination proceeding has been available in other jurisdictions, for example, in the U.S., where any person can request re-examination of a granted patent based on grounds of patentability. There is currently no such mechanism in Singapore.
It has been proposed that:
- A re-examination request can be made ex-parte at any time after the grant of the patent, provided that there is no other proceeding in which the validity of the patent is challenged.
- The ex-parte request may be initiated by either the patentee or any third party; and
- The decision of the Patents Registrar be binding, subject to appeal by the patentee.
The proposed proceeding aims to provide another opportunity for the validity of the patents to be assessed and it is envisaged that this would ensure that only quality patents remain on the Patents Register.
3. Search and Examination Guidelines on Isolated Products from Nature
The proposed amendments are to Chapter 8 of the Search and Examination Guidelines and these amendments aim to clarify the distinction between inventions and discoveries as applied to the issue of isolated products found in nature.
Examples of what represents a discovery and an invention under the proposed amendments are set out as follows:
- An isolated or purified material or microorganism that occurs in nature.
- A new use of an isolated or purified material or microorganism that occurs in nature.
- A modified material or microorganism that can be clearly distinguished from the isolated or purified material or microorganism that occurs in nature.
- A new use of a modified material or microorganism.
- A process that occurs in nature.
- A new application of a process that occurs in nature that comprises technical steps that clearly distinguishes the process from the natural process.
4. New Grace Period for Filing Patent Applications
Under the Singapore Patents Act, certain disclosures are excluded from forming part of the state of the art so long as the Singapore patent application is filed within 12 months from the disclosure. The scope of the grace period provision has been broadened by the Patents (Amendment) Act 2017, which was passed by Parliament on 28 February 2017, and is intended to come into operation in the last quarter of this year.
In light of this expanded scope, proposed amendments have been made to the Singapore Patents Rules as well as the Search and Examination Guidelines to specify the requirements which must be satisfied before the grace period provision will apply, as well as the documentation requirements which must be submitted in support of the applicability of the provision in relation to a patent application. Under the proposed amendments, the requirements would apply equally to ex-PCT national phase application in Singapore.
5. Patentable Subject Matter in Relation to Supplementary Examination
Under the current patents regime, where supplementary examination is requested, there is no provision for an Examiner to raise a patentable subject matter objection.
Under the proposed amendments to the Singapore Patents Rules, an Examiner is allowed to raise an objection relating to patentable subject matter when the Examiner is of the opinion that the invention in the claims does not constitute an invention.
This amendment aims to ensure that the quality of supplementary examination is consistent with the other routes of examination.
It is believed that the above proposed amendments would enhance Singapore’s patent system by increasing the quality of patents granted and it would also provide more certainty to patentees and third parties.
This article is produced by our Singapore office, Bird & Bird ATMD LLP, and does not constitute legal advice. It is intended to provide general information only. Please contact our lawyers if you have any specific queries.