Patent Law Amendments in Singapore – Closure of Reliance on the Foreign Examination Option

A recent change in Singapore has done away with the ability of an applicant to rely on a positive foreign examination result or the international preliminary report on patentability (IPRP) to request supplementary examination. This change will come into force on January 1, 2020. This change has the potential to significantly alter the way applicants pursue protection in Singapore because local search and examination will be the only route available going forward.

Examination options will be unchanged for patent applications pending on January 1, 2020 or PCT national phase entries on or after January 1, 2020 but have an international filing date earlier than January 1, 2020. These applications will still be eligible for the foreign examination option. Importantly, PCT national phase entries with an earlier international filing date of January 1, 2020 do not need to be completed prior to the January 1, 2020 deadline to retain the ability to pursue the foreign examination route.

Direct national applications, such as applications first filed in Singapore on or after January 1, 2020, will not eligible for the foreign examination route. For these applications, filings should be made as soon as possible, and at the very least, prior to the January 1, 2020 deadline if the foreign examination route is desired.

However, divisional applications filed on or after January 1, 2020 will not be eligible for the foreign examination option, regardless of their priority date. Therefore, for divisional applications where applicant desires to retain the foreign examination option, the applicant should consider proactively filing divisionals before January 1, 2020 to retain all examination options in Singapore. Since the examination request deadline of a divisional application is calculated from the divisional’s filing date, applicants can expect to wait for 54 months from the divisional’s filing date to await the outcome of foreign prosecution.

One benefit that comes with above amendments to Singapore’s patent laws is a change to the grace period currently operating in Singapore. Currently, applicants have a 12-month grace period for disclosures originating from inventors only for those cases where the disclosure is derived from a breach of confidence, at a recognized international exhibition, or to a learned society only. With the change in the law, the grace period is broadened to include any disclosures derived from an inventor within 12 months. This now brings the grace period provision in conformity with other countries, such as the United States, Australia, and Japan.

Applicants are strongly advised to review their portfolios to determine whether their cases are negatively impacted by these changes and to proactively file divisional applications where appropriate.

This article appeared in the November 2019 issue of Global Patent Prosecution.