Singapore: New Positive Assessment Examination Procedure

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On 10 July 2012 Singapore passed the Patent (Amendment) Bill and the Intellectual Property (Miscellaneous Amendments) Bill.

One of the biggest changes is that Singapore has moved away from a self-assessment system to a positive assessment system.

Under the self-assessment system, a patent application may be granted even if it does not meet patentability criteria in Singapore. In contrast, under the positive assessment system the patent application must satisfy patentability criteria in order for grant.

These changes apply to divisional, convention, and non-convention applications filed on or after 14 February 2014, and PCT national phase applications that enter the national phase in Singapore on or after 14 February 2014.

The below information is based on the draft Patent Rules (issued 9 October 2013). The Patent Rules may change prior to being finalised.

1. Examination procedure

In moving away from the self-assessment system, Singapore has abolished block extensions, meaning the “slow track” available under self-assessment has also been abolished. The end result is a positive assessment system providing two primary options for national phase patent examination as follows:

1.1 Local search and examination

Local search and examination will now be conducted by the Intellectual Property Office of Singapore (IPOS). The examiner will conduct a search in respect of each of the claims of the application to determine patentability.

For Singapore national phase applications, local search and examination is to be requested within 36 months of the earliest priority date of the application.

The grounds of examination will include an assessment of whether:

  • the claims are novel and inventive
  • the claims are supported by the description
  • the claimed invention is capable of industrial applicability (methods of medical treatment are not taken to be capable of industrial application)
  • the application includes added subject matter
  • the invention as claimed is contrary to morality
  • there is double patenting
  • each of the claims relates to a claim that has been searched

During examination, the examiner will issue a first written opinion. The Applicant will have 5 months within which to file a response. A further written opinion may be issued at the examiner’s discretion, setting a further period of 5 months during which the Applicant may file a response.

18 months from the date of issue of the first written opinion an examiner’s report will issue with one of the following outcomes:

  • in the event that the claims are found to be allowable, a Notice of Eligibility will be issued with the examiner’s report, or
  • in the event that the claims are deemed to lack patentability a Notice of Intention to Refuse the Application will be issued with the examiner’s report.

If a Notice of Intention to Refuse the Application is issued, the Applicant may apply for a review of the examination report by filing the prescribed request form, and including any written comments and/or amendments to address the examiner’s objections. This is ostensibly an appeal proceeding. This must be filed within two months of receiving the Notice of Intention to Refuse the Application.

IPOS will review the submissions and will subsequently issue an examination review report and either (i) a Notice of Eligibility, or (ii) a Notice of Refusal.

If a Notice of Refusal is issued, the Applicant will be provided with two months within which to file a divisional application before the application is irrevocably refused.

1.2 Supplementary examination

Supplementary examination occurs where the Applicant seeks to rely on a PCT application with a clear IPRP or the acceptance/allowance or grant of a corresponding application in Australia, Canada (for English applications), Japan, New Zealand, South Korea, the UK, the USA, and at the EPO (for English applications).

Supplementary examination must be requested within 54 months of the priority date of the application.

Under supplementary examination, the Intellectual Property Office of Singapore (IPOS) will conduct examination to ensure the application conforms to Singaporean patent practice. This is ostensibly a form of modified examination. Supplementary examination will consider whether:

  • the claims being examined are “related” to claims in the corresponding application on which supplementary examination is based
  • the claims are supported by the description
  • the invention as claimed is contrary to morality
  • the invention as claimed relates to a method of medical treatment
  • double patenting
  • the application includes added subject matter.

In the event that the examiner raises an objection, a Notice of Intention to Refuse the Application will be issued outlining the nature of the objection. As above, the Applicant is provided with a single opportunity to resolve any objection(s) within a prescribed period.

Regardless of the type of examination chosen once the Notice of Eligibility has issued, the Applicant will have two months within which to pay the grant fee.

1.3 Examination flowchart for positive assessment

 

Topics:  Patent Prosecution, Patents

Published In: Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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