The Singapore Parliament passed the Patents (Amendment) Bill ("the Bill") on 28 February 2017 as part of Singapore's latest move to strengthen its patents regime and to better support innovation as a growth driver in the future economy. The key amendments in the Bill are as follows:
- Broadening of the grace period provision for patent applications, to better meet the commercial needs of inventors, facilitate the spread of new ideas, and promote innovation;
- Closure of the foreign examination route within the patent application process, to improve the quality and consistency of granted patents; and
- Implementation of other procedural changes, which makes the patent application process more applicant-friendly, and to streamline operations at the Intellectual Property Office of Singapore (“IPOS”).
Broadening of Grace Period Provision
Singapore applies a worldwide novelty standard in determining whether an invention is patentable. During the search and examination process of a patent application, a claimed invention will be assessed against publicly available information (whether in Singapore or elsewhere) at its priority date (also known as the "state of the art"). Under this assessment, if an invention is publicly disclosed before the inventor applies for a patent, this information will form part of the state of the art and such disclosure can be fatal to the patentability of the invention.
The Singapore Patents Act contains a grace period provision which excludes certain disclosures from forming part of the state of the art so long as the Singapore patent application is filed within 12 months from the disclosure. However, under the current provision, disclosures are only excluded under very narrow circumstances, for example, where a disclosure is made in breach of confidence.
With the amendment, the grace period provision is now broadened to include any disclosure of the invention originating from the inventor.
This amendment follows Parliament's recognition of various business needs, such as the need to attract investors or to publish scientific papers, which motivate inventors to disclose their invention before making a patent application.
However, inventors should still exercise prudence and caution before disclosing their inventions. This is because not all jurisdictions have grace period provisions; even in jurisdictions where there are grace period provisions, the requirements to be satisfied may differ.
Closure of Foreign Route
From 1 January 2020, patent applicants would be faced with a more stringent search and examination process, as the foreign examination route (where supplementary examination is requested based on the allowance or grant of a corresponding application from a prescribed foreign Patent Office) would be abolished. With this change, patent applicants can only choose between requesting either combined search and examination (local route) or examination based on a search report from one of the prescribed foreign Patent Offices (mixed route).
The closure of the foreign route seeks to enhance our patents regime by increasing the quality of patents and ensuring consistency in the patents granted. It is believed that this will ultimately instill greater confidence in our patents system.
Other Procedural Changes
Finally, patent applicants will have greater latitude in switching between search and examination routes, which in turn makes our patent application process more applicant-friendly. Under the current Patents Regulations, applicants can only request to switch routes within a particular timeframe, i.e. after the receipt of a written opinion and before a response to the written opinion is submitted. Following the amendment, a request for route switch can be made at any time before an Examination Report, Search and Examination Report or Supplementary Examination Report is issued.
Failure to file a request for examination within the prescribed timeframe upon receipt of a search report will also mean that the patent application will be treated as abandoned. This will help to streamline the operations at IPOS and at the same time, advance the proliferation of new ideas and technologies for members of the public to use if the patent applicant is no longer interested in obtaining patent protection.
We understand that Amendments i and iii above should be coming into effect sometime this year (2017), although the exact dates have yet to be announced. Do get in touch with us for further details on the changes and on patenting strategies in view of these changes.
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.