The Singapore Government and the Intellectual Property Office of Singapore (IPOS) have announced proposed changes to Singapore’s patents regime which they are seeking public feedback on until 1 August 2017.
The key changes under consideration are:
Proposed new process for the submission of third party observations – IPOS is proposing to formalize the currently informal process of a third party submitting observations regarding a patent application. This is proposed to be allowed after the patent application is published. The examiner would have broad discretion whether or not to consider such observations which may be based on any grounds of examination, although the observations should specify the objections and the relevant claims clearly.
Proposed new re-examination option for patentees and third parties – it is proposed that aside from requesting re-examination before grant, the patentee or third party would be able to request re-examination after grant of the patent, provided there are no other proceedings in which the validity of the patent may be put in issue. The grounds for re-examination would be similar to those considered during examination, except for the requirement of unity of invention and the scope of re-examination would be limited to the claims identified in the request for re-examination. A point to highlight is that the proposed re-examination procedure will only consider patent documents, printed or electronic publications, and in particular prior use would not be considered.
Amendments to examination guidelines on the new grace period for filing – in relation to the broadened scope of the grace period for patent applications recently introduced in Feb 2017, IPOS is seeking feedback on the proposed examination practice, to take into account various scenarios where the details of the invention are erroneous published (either by the inventor or someone who obtained this from the inventor) and the relevant documentation that must be filed for the prior disclosure of the patent application to fall within the exemption under the grace period.
Proposed amendments to Patents Rules concerning patentable subject matter and supplementary examination – which would allow an examiner to raise an objection relating to patentable subject matter not only under substantive examination but also under the supplementary examination procedure as well. This would close the loophole that currently allows patent applications with non-patentable subject matter from proceeding to grant under the supplementary examination procedure.
Proposed amendments to examination guidelines on isolated products from nature – this is mainly to clarify the distinction between inventions and discoveries as applied to the issue of isolated products found in nature. IPOS is proposing that the examination guidelines clarify that a material or microorganism that already exists in nature represents a discovery and not an invention, although new use of such a material or microorganism can be claimed.
Tan Choon Leng
Choon Leng is a highly regarded Corporate M&A and Private Wealth lawyer and leads JurisAsia's Corporate Practice.