Category Archives: Singapore

Amendments in Patent Application Process in Singapore

The process of applying for patents in Singapore will become much easier and more efficient after Intellectual Property Office of Singapore (IPOS), in its continued efforts to ease patent application process, has introduced few changes in Patent forms 1 and 12B. According to a circular released on November 21, 2017 on IPOS website [1], these changes will be effective from 10 December 2017 [1] and will be available to Patent Applicants from that date. IPOS claims that after these changes the patent application process will be enhanced for general Applicants.

Amendments to ‘Patents form 1’ [2]

a. Patents forms 1 & 8 will be merged

This change will allow Applicants to enter details of inventors for which the patent has been applied in part 7 of the newly merged form i.e. merged ‘form 1’ & 8. There will be no need to file a separate form 8. It is a welcome move for the Applicants as they will not have to fill multiple forms. In addition to this, the Applicants will now be able to derive rights from the Inventor. Applicants can do this by filling in part 8 of the newly merged form. However, these amendments will not change the process of correcting the details of the inventors i.e. Patents Form 13 will not be applicable for such amendment or correction. Applicants will also be able to submit the details of the inventor separately by filling Patent Form 8 which will still be available for submissions.

b. A separate attachment for sequence listing

A new document will also be available for “sequence listing” for attachment at the time of filing of patent applications. A “sequence listing” is a list of biological sequences in the format prescribed by WIPO Standard ST.25 (Presentation of nucleotide and amino acid sequence listings) using controlled vocabulary (i.e. defined terms for certain features). This document will be available to patent applicants in case they do not want to include sequence listing as a part of description or claims. Also, the applicants will be able to paginate this document and will be able to indicate the page count of sequence listing document in a separate field.

In addition to this, if Applicants want to submit sequence listing as a separate reference document, not forming part of the description or claims, such document can be submitted using the mentioned “sequence listing” document type with a cover letter attached to indicate that it will serve as a reference document only.

c. A new feature of auto-population during divisional filings

Yet another efficient and productive move by the IPOS is the introduction of auto-population feature when a divisional application is being filed. This means that when an Applicant files a divisional application, relevant information from the parent application will be auto-populated for the convenience of the Applicants. Having said that, the Applicants will still be able to amend the auto-populated fields if they choose to do the same.

 Amendments to Patents ‘Form 12B’ [3]

Similar to the changes in Patents form 1, for the ease of Applicants, Patents Form 13 will also be merged with Patents Form 12B. Applicants don’t need to fill Form 13 in case they wish to make amendments to the specification when requesting for an examination review report using Patents Form 12B, and can do so by selecting the option “Written submissions and proposed amendments are filed” in Patents form B. With this selection, the Applicant will be required to submit both a clean and a marked up copy of the amendment of the specification.

Conclusion

Such amendments in the Patent Application process as mentioned above will be available from December 10, 2017. Further, these changes will ease the application process and will allow Applicants some flexibility in sequence listing, and amending details of inventors as well as amending the specification.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

 References:

[1] https://www.ipos.gov.sg/docs/default-source/resources-library/patents/circulars/(2017)-circular-no-8—enhancements-to-patent-application-process.pdf

[2] https://www.ipos.gov.sg/docs/default-source/resources-library/patents/patent-forms-and-fees/form-pf1—otc.pdf

[3] https://www.ipos.gov.sg/docs/default-source/resources-library/patents/patent-forms-and-fees/form-pf12b—otc477c1877c2d0635fa1cdff0000abd271.pdf

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Intellectual Property of Singapore: Patents legislative amendments

In continuation of IPOS’s efforts to strengthen the patent regime and make Singapore’s Intellectual Property one of the best in the world also supporting inventive individual and businesses [1], Patents (Amendments) Act, 2017 and Patents (Amendment no.2 ) shall come into force on October 30, 2017 [2].

IPOS’ Patents legislative amendments

In IPOS’ efforts of delivering a well-equipped and a well-suited legal framework as well as a policy framework to individual patent applicants and corporate business houses, the Patents (Amendment) Act 2017 and the Patents (Amendment No.2) Rules 2017 will enter into force on 30 Oct 2017 [2]. The October version of the revised examination guidelines for Patent Applications at IPOS will also get published on the same date on the online website of IPOS (https://www.ipos.gov.sg/). Below are the key highlights of these amendments as released in the Patents Circular No.7/2017 [3] on IPOS website.

 Broadening of Grace Period

As effective from 30th October 2017, under the broadened grace period all the applicants will now be able to apply for patent protection for their invention notwithstanding that their invention has been disclosed prior to the filing of the patent application. In instances where the inventors have publicly disclosed their inventions prior to filing a patent application for the same, the broadened grace period will act as a safety cover for the entity in obtaining the Singapore patent rights. However, an important thing to note for the applicants is that not all jurisdictions have a provision for similarly broadened grace period, therefore, all the applicants are strongly encouraged to avoid or exercise prudence and caution before disclosing their inventions to third parties before applying for a patent.

Further as per the new provision, the applicants who require or ‘wish for’ their invention disclosure to be graced may inform the registrar when making:

  1. a request for search and examination;
  2. a request for examination;
  3. a response to written opinion; and
  4. a request for a review of an examination report or of a search and examination report.

The above requests must be accompanied by written evidence in the form of a statutory declaration or affidavit that complies with the requirements of the new Rule 8 of the Patents Rules.

 Changes to Supplementary Examination

As per the rules, supplementary examination route will become unavailable for patent applications filed on or after Jan 1, 2020 [3] i.e.

–  for Singapore national applications having a date of filing on or after Jan 1, 2020,

– for International applications entering national phase having a date of filing on or after 1 Jan 2020, and

– for Divisional applications having an initiation date on or after Jan 1, 2020.

However, patent applications filed before 1 January 2020 will continue to use the supplementary examination route. This means that with the unavailability of the supplementary examination route, all patent applications filed on or after 1 January 2020 will undergo full examination by IPOS examiners.  Given that, the entire process of examination is going to be carried out in Singapore, the quality and consistency of patents granted in Singapore is expected to improve. This will also align Singapore’s patent system with that of major jurisdictions, such as those of the US, Japan, and Europe, that perform a full examination of the patent applications that they receive. A period of 3 (three) years has been granted as grace period for the community to adjust as the change shall be effective from 30th October 2017 but shall come into operation from January 2020

Further,  as per the amendment,  the scope of supplementary examination has expanded by allowing an examiner to raise an objection relating to patentable subject matter to ensure consistency in the assessment of patentable subject matter across all the routes of examination.

Amendments to the Guidelines on Isolated Products from Nature

The Guidelines have been revised to clarify the distinction between inventions and discoveries as applicable to the issue of isolated products from nature. As per the new guidelines, a material or microorganism already existing in nature represents a discovery and therefore an isolated or purified material or microorganism from nature is not an invention. However, if a new use of the isolated or purified material or microorganism is found, then the new use can be claimed. The revised Guidelines will take effect on 30 October 2017.

The overall objective of this amendment is to facilitate innovation by allowing others to develop applications relating to the discovery and to monetize or earn rewards for translational research and development.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

Citing Sources

[1] https://www.ipos.gov.sg/about-ipos/singapore-ip-ranking

[2]https://www.ipos.gov.sg/media-events/happenings/ViewDetails/patents-and-designs-legislative-amendments-to-enter-into-force-on-30-oct-2017/

[3]https://www.ipos.gov.sg/docs/default-source/resources-library/patents/circulars/(2017)-circular-no-7—amendment-to-patents-act-and-rules-to-enter-into-force-on-30-october-2017.pdf