Legal Bulletin November 2016

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Published date: 29 Nov 2016

IPOS seeks feedback on proposed changes to Singapore’s patents legislation: Broadening the grace period for patent applications

On 27 October 2016, the Intellectual Property Office of Singapore (“IPOS”) announced that it is seeking feedback on proposed amendments to Singapore’s Patents Act and Patents Rules. The proposed changes relate mainly to the broadening of the grace period for patent applications. IPOS is reviewing the grace period provisions in order to keep the Singapore patent regime relevant in light of the evolving innovation and business landscapes where the need for early disclosure of invention is becoming more common and unavoidable.
 
The proposed changes aim to provide a limited safety net for patent applicants or inventors in instances where the invention has been publicly disclosed prior to the filing of a patent application, so that Singapore patent rights can still be obtained.
 
The consultation closes on 30 November 2016.
 
Background
 
To be protected by way of a patent under the Patents Act, an invention must be new, involve an inventive step and be capable of industrial application. Section 14 of the Patents Act provides that an invention is "new" if it does not form part of the state of the art. The state of the art comprises all products, processes, information about products and processes, or anything else, which has been, at any time before the date of filing the patent application (“Filing Date”), made available to the public, whether in Singapore or elsewhere.
 
It is only in the limited situations outlined in section 14(4) of the Patents Act that an applicant may apply to patent his invention despite the invention having been disclosed to the public prior to the Filing Date. This is where the disclosure is made within the 12-month period immediately preceding the Filing Date (a) in breach of confidence, (b) in consequence of the inventor displaying the invention at a recognised international exhibition, or (c) in a paper read before a learned society. In all other situations, the disclosure would result in loss of the ability to obtain a patent in Singapore.
 
Broadening the grace period for patent applications
 
All disclosures within prior 12-month period of Filing Date to be graced
 
IPOS proposes to broaden the scope of section 14(4) of the Patents Act so that all disclosures of an invention by the inventor or by a person who obtained the matter disclosed directly or indirectly from the inventor will be graced if the disclosure is made within the 12-month period immediately preceding the Filing Date.
 
This change will allow inventors or applicants to retain the ability to obtain patent rights in Singapore in situations where they have inadvertently disclosed the invention in ignorance of the patentability requirements, or for the purpose of sourcing for funds, or to secure early buyer/market interest. Academics and researchers who have disclosed the invention at a public event or in a scientific or technical journal before a patent application has been filed will also benefit from this change.
 
Nevertheless, IPOS strongly encourages all individuals and businesses to keep their inventions secret until an application for a patent has been filed as not all jurisdictions have a broad grace period (e.g. countries that are party to the European Patent Convention do not have a broad grace period) and, among those that do have a broad grace period (e.g. the USA, Japan and the Republic of Korea), the requirements to be satisfied differ. Further, there may be third parties claiming prior user rights. Applicants and inventors are advised to enter into confidentiality agreements should they need to tell others about the invention.
 
Third parties claiming prior user rights
 
Notwithstanding the proposed broadening of the grace period, a third party in Singapore who, before the Filing Date, had done in good faith an act that would constitute infringement of the patent if it were in force, or had made in good faith effective and serious preparations to do such an act, would be allowed to continue to do so under section 71 of the Patents Act. This is in line with the policy objective of not encouraging public disclosures prior to the filing of the patent application.
 
Requirement to file statutory declaration
 
IPOS proposes amending the Patents Act and Patents Rules to require an applicant seeking to avail himself of the broadened grace period under section 14(4) of the Patents Act prior to grant, to submit supporting written evidence in the form of a statutory declaration in relation to the following purposes:
 
(a)     a search and examination of a patent application;
 
(b)     an examination of a patent application; or
 
(c)     a review of an examination report or a search and examination report.
 
The requirement to submit a statutory declaration will apply to both national patent applicants as well as applicants of an international application for a patent (Singapore).
 
Currently, a patent applicant who wishes the disclosure of the invention at an international exhibition to be graced must inform the Registrar of Patents in writing on the same day of filing the patent application that the invention has been displayed at an international exhibition. He is also required to file a certificate issued by the authority responsible for the exhibition stating that the invention was in fact exhibited there (“Certificate Requirement”). IPOS proposes to replace these requirements with a requirement for the applicant to file a statutory declaration stating, among other things, the disclosure of the invention at an international exhibition and provide identification of the invention. The Certificate Requirement will be removed.
 
For the other grounds on which the disclosure is sought to be disregarded, the statutory declaration must set out the relevant facts which show why the disclosure should be disregarded and must be accompanied by supporting documentary evidence.
 
Other changes to the Patents Act
 
Closure of supplementary examination route
 
IPOS had announced previously that it would be closing the supplementary examination route for Singapore patent applications (which allows a patent to be granted by reliance on the search and examination report issued by selected foreign IP offices) with effect from 1 January 2020. This development follows extensive industry consultations and the conclusion that a closure of the supplementary examination route will increase the quality of patents granted in Singapore.
 
IPOS sought feedback on proposed changes to section 29 of the Patents Act to implement the closure of the supplementary examination route.
 
Withdrawal of request for search and examination accompanied by fresh request for examination under another route
 
Currently, under section 29(10) of the Patents Act, an applicant who has filed a request for examination or search and examination may, instead of responding to a written opinion issued by the Examiner, withdraw that request and file a new request for supplementary examination. Under the current section 29(11), an applicant who has filed a request for supplementary examination may, instead of responding to a written opinion issued by the Examiner, withdraw that request and file a new request for examination or search and examination.
 
IPOS proposes amending sections 29(10) and 29(11) to allow an applicant to withdraw the initial request for search and examination, examination or supplementary examination (“Initial Request”) at any time before the examination report or search report or supplementary examination report is issued. In the case where a written opinion has been issued by an Examiner and the applicant chooses not to respond to the written opinion, the applicant has until the expiry of the period for providing a response to the written opinion to withdraw the Initial Request. Otherwise, the written opinion would be treated as the examination report or supplementary examination report.
 
If the applicant chooses to respond to the written opinion, the applicant maintains the ability to withdraw the Initial Request, up to the point where the examination report or supplementary examination report is issued. Where no written opinion has been issued, the applicant has until the point where the examination report or search report or supplementary examination report is issued, to withdraw the Initial Request.
 
Reference materials
 
The following materials can be found on the IPOS website www.ipos.gov.sg:
 
 
 
 
 
 
For further information, please contact:
 
+65 6890 7883
 
+65 6890 7516
 

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