On 1 January 2020, the Intellectual Property Office of Singapore (IPOS) will be closing the Supplementary Examination Pathway.
The changes will affect patent applications filed on or after the closure date including:
- National patent applications filed on or after 1 January 2020
- PCT applications entering the national phase in Singapore with an international filing date on or after 1 January 2020
- Divisional patent applications having a lodgment date on or after 1 January 2020 (regardless of the date of filing).
These applications will have no option but to undergo local substantive examination.
In order to assist our clients, we have prepared below a brief summary of the major changes and included some recommendations.
Supplementary Examination
Under the current Supplementary Examination pathway, patent applicants in Singapore can enjoy low costs and speedy prosecution by relying on positive examination results from a corresponding foreign application/patent when seeking grant of a Singapore patent. This process is known as the Supplementary Examination.
The existing Supplementary pathway provides cost savings because there is no official fee, excessive correspondence with the office is avoided and the later Supplementary Examination deadline (54 months from the international filing date compared to 36 months for local examination) allows applicants to delay examination costs.
Changes from 1st January 2020
Under the new system, all applications filed in Singapore on or after the closure date will be subject to the more costly local substantive search and examination process. The purpose of the changes is to enable a more consistent approach for examination of patent applications to ensure that all granted Singapore patents meet local requirements.
By making these changes, IPOS hopes to achieve higher quality Singaporean patents and to reduce the number of invalid patents being granted as a result of issues arising from legal differences in a foreign jurisdiction.
The deadline for local substantive examination will remain at 36 months post-filing date, meaning the cost savings previously associated with the later Supplementary Examination pathway can no longer be enjoyed by applicants.
PCT applications with an earlier international filing date but which enter the national phase after the closure date will remain unaffected. However, the changes will apply to divisional applications lodged after the cut-off date, regardless of whether or not the parent application was filed before the closure date.
It is not necessary to proactively file the request for supplementary examination before the closure date these applications.
Although the procedural changes may ultimately result in an increase in costs, we consider that the benefit to patentees that are associated with a higher degree of certainty invalidity will outweigh the increased financial burden.
Recommended Actions for Clients with Singaporean Patent Applications
- For applicants who wish to take advantage of the current Supplementary Examination Pathway, all PCT and Singaporean convention applications must be filed by 31 December 2019.
- If a future divisional application is desired for an existing application which has already entered the Singaporean national phase, in order to take advantage of the Supplementary Examination pathway, it will be necessary to lodge the divisional application prior to the closure date.
- Contact your Wrays Patent Attorney if you have any questions on how this may affect your application, or if you would like to file an application (or divisional application) prior to the closure of the Supplementary Examination pathway.