Category Archives: South-East Asia

International Patent Office of Philippines appointed as “International Authority on Patents” by WIPO

Intellectual Property Office of the Philippines (IPOPHIL) was designated as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) by the World Intellectual Property Office (WIPO) on October 5, 2017 at the 57th WIPO General Assembly and 49th Session of the PCT Union Assembly [1] becoming second country of Southeast Asia and 23rd country of world to be assigned as an International Authority on Patents under the Patent Cooperation Treaty (PCT). Patent Cooperation Treaty is an international agreement administered by the World Intellectual Property Organization (WIPO) that allows applicants and inventors to file a single international patent application which will have the legal effect of filing in the different countries bound by the treaty.

The IPOPHIL assigned designations, as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA), will remain in force until 31 December 2027 [2]. IPOPHL can now contribute towards more efficient functioning of PCT system by encouraging IP system in all the other developing countries along with promoting the use of patent system in Philippines and harness the strengths of the Philippines as an Intellectual Property (IP) hub in the region. Philippines is the second international searching authority in South East Asia having massive population of young talent, approx. 104 million, is expected to spur innovation and technological advancement that are key factors in deepening ASEAN economic integration.

Ambassador Evan P. Garcia, permanent representative of the Philippines to the United Nations stated that the appointment of IPOPHL at this designation complements the government policy of mainstreaming science, technology and innovation platform across national and local development agenda. He added that it would further foster research and development in country, fitting into the country’s development plan “Philippine Development Plant (PDP) 2017-2022” [3], which is leaning toward a high-trust society and a globally-competitive knowledge economy.

Director General of IPOPHL, Josephine R. Santiago, remarked that the designation of IPOPHIL as ISA and IPEA complements the national development plan and will transform the country into a knowledge-driven and innovative society which in turn will promote R&D activities. She further stated that IPOPHL has satisfied the requirements for designations as ISA/IPEA. She briefed about the number of improvements undertaken by the IPOPHL to meet the requirements of appointment in the past two years. The requirements include:

(i) Sufficient number of technical and manpower competence to carry out search and examination in required technical fields;
(ii) Use of comprehensive commercial and publicly-accessible databases covering patent and non-patent science and engineering databases, for search and examination;
(iii) A comprehensive and multi-tiered quality management system namely, in-process quality check, ISO QMS 9001:2008 and internal Patent Quality Review System (PQRS); and
(iv) Recommendation by established international authorities particularly the Japan Patent Office (JPO) and IP Australia.

In 2015, 43.5% of the PCT applications were filed by Asia and a progressive growth has been noticed by Southeast Asian countries in registration of patent applications in recent years. Thus there is high demand for international PCT work. Philippines with its seventy years of expertise in search and examination well-suits to serve this growing demand of system.

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

References
[1]http://www.ipophil.gov.ph/releases/2014-09-22-06-26-21/640-ipophl-now-an-international-searching-authority-and-international-preliminary-examining-authority-the-23rd-in-the-world-and-2nd-in-the-asean-region

[2]https://dfa.gov.ph/newsroom/news-from-our-foreign-service-postsupdate/14276-wipo-general-assemblies-appoint-ipophil-as-international-searching-authority-and-international-preliminary-examining-authority-on-patents

[3]http://www.philstar.com/business/2017/10/07/1746166/ipophl-now-international-authority-patent

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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