Notes to patent prosecution in Singapore

A patent is a legal protection that allows the owner of the patent to prevent others from using, selling, or even maintaining the invention without permission. This is because the patent grants a monopoly right.

As a result, a patent is extremely powerful. Even if another party later came up with a similar idea without knowing about the patent holder’s, he would still be unable to commercialize it without the patent owner’s permission.

Patent scope and ownership

Inventions that can be protected

Is it possible to have a patent for any form of invention, such as software, business methods, or medical procedures?

Software, mathematical methods, and business methods are not exempt from the patent law.

Currently, the legal position is that a computer program or business method is a patentable subject matter in theory; nonetheless, patent examiners may complain that these do not satisfy the threshold criteria for invention. On that premise, the examination guidelines include a list of examples that will be objected to throughout the examination period:

• discoveries, scientific theories, and mathematical methods;
• aesthetic creations;
• schemes, rules or methods for performing a mental act, playing a game, or doing business;
• presentation of information; and
• isolated products from nature.

Methods of surgery, treatment, or diagnosis practiced on human or animal bodies are statutorily excluded from protection. On the other hand, substances or compositions invented for those methods are not excluded. As such, first medical use claims are allowable subject matter. Second medical use claims, such as Swiss-style claims, are likewise acceptable subject matter.

Ownership of a patent

Who owns the patent on a company employee’s invention, an independent contractor’s idea, numerous inventors’ inventions, or a joint venture’s invention? What is the procedure for officially recording and transferring patent ownership?

An employee’s innovation belongs to his or her employer if it is produced in the course of the employee’s regular duties or during activities that are specifically assigned to the employee but are not included in those duties. There should be a reasonable assumption that an invention will result in each circumstance. Other circumstances where the invention might belong to the employer would be where the employee has a special obligation to serve the employer’s interests due to the nature of his or her duties.

Contracts govern the ownership of inventions not created by employees. Inventions resulting from a joint venture are treated the same way. When numerous inventors work for separate companies, each of their employers is entitled to an equal share of the patent, subject to contract.

The patent register keeps a record of who owns particular patents. A copy of a document demonstrating the transaction should be submitted with a request to register the transaction when there is a change of ownership, whether through assignment or otherwise. Assignments must be in writing and signed by the assignor or on his or her behalf.

Any change in ownership must be registered within six months of the transaction, instrument, or event that caused it. Any exclusive license must be registered within six months after the date of execution. Otherwise, the court will not be able to impose damages or an account of profits for infringements that occurred before the registration date.

Proceedings at the Patent Office

Timetable for patenting

Patents are usually granted within two to three years of submitting an application for examination. A request for an examination must be made within 36 months after the priority date.

Patent prosecution

Is there a way to speed up the patent application process?

If an application is submitted in Singapore without a priority claim and examination is requested at the same time, the application may be fast-tracked if there are fewer than 20 claims in the application. The Singapore Intellectual Property Office (IPOS) runs the ‘SG IP Fast Track’ program, which allows applications to be approved in six months. This program will continue till 29 April 2022.

Even though the application is not approved into the SG IP Fast Track program, it may still be considered for the ’12 Months File-to-Grant’ program, which allows applications to be granted in 12 months if the applicant acts within shortened time frames and the examiner issues a favorable search-and-examination report as the first action during the search and examination.

Singapore also takes part in a number of Patent Prosecution Highway (PPH) programs. IPOS is a participant in the worldwide PPH pilot program, as well as bilateral PPH pilot programs with Brazil, China, Mexico, and the European Patent Office.

Singapore is a member of the ASEAN Patent Examination Co-operation program. An applicant may use search and examination reports from any participating Association of Southeast Asian Nations IP office to expedite examination at any other participating IP office under ASPEC. The ASPEC procedure is carried out in English. Making an ASPEC request does not incur any additional costs.

Contents of a patent application

What information regarding the invention must be disclosed or detailed in a patent application? Are there any specific rules to follow or problems to avoid when considering what to include in your application?

The patent application should give sufficient information to fulfill the Patents Act’s requirements:

• it should disclose the invention in a manner that is clear and complete for the invention to be performed by a person skilled in the art (the sufficiency requirement); and
• the claims should be supported by the description.

The inadequacy of support will only be used as an objection during the examination. It isn’t a cause for invalidity.

Obligations to disclose prior art

Is it necessary for an inventor to disclose prior art to a patent examiner?

When requesting an examination, if the applicant intends to rely on search results from a corresponding application as the basis for examination, the applicant must submit that information. Besides that, the examiner is under no responsibility to disclose prior art.

Additional claims 

Is it possible for a patent applicant to file one or more subsequent applications in order to pursue additional claims to an invention revealed in a previously filed application? If so, what are the requirements or restrictions that apply?

On a voluntary basis or in response to a unity objection presented during the examination period, divisional patent applications can be filed. The number of divisional applications that can be filed, as well as the number of generations of divisional applications, is unlimited. Any divisional application must be submitted while the primary application is still pending and before the parent application’s grant fee is paid.

Appeals to the Patent Office

Is it reasonable to take a patent office decision to court if it is unfavorable?

In most cases, an IPOS verdict can be appealed to the High Court. The following judgments that cannot be appealed are:

• a decision by the Registrar to amend the abstract of the application;
• omission of subject matter from a specification that may be defamatory or that may be generally expected to encourage offensive, immoral or antisocial behavior; and
• a decision to restrict the publication of information, the publication of which may be prejudicial to the defense of Singapore or the safety of the public.

Patent opposition or protest

Is there a way to oppose a patent’s granting through the patent office?

There are no options for submitting an opposition. Only a revocation action can be used to challenge the validity of a patent.

Invention priority

Is there a process in place at the patent office to resolve priority issues between various applicants for the same invention? Who gets priority based on what factors?

Singapore is a jurisdiction that is known for being “first to file”. Priority is assigned only on the basis of the priority date.

The Patents Act establishes procedures for resolving ownership disputes over pending and granted patents. A person can apply to IPOS to be named as the primary applicant or owner, or as a co-applicant or co-owner, on a patent application or patent. Any IPOS decision in this regard might be challenged in the High Court.

Patent modification and re-examination

Is it possible to modify, re-examine, or revoke a patent through the patent office? Is it possible for a judge to amend the patent claims in the process of a lawsuit?

At the patent office, the Patents Act provides for post-grant amendments and revocation procedures. There is no method for re-examination by a third party.

During any proceedings in which the validity of the patent is challenged, the court or the Registrar has the option to enable the patentee to make claim amendments. The revisions must not add new information or expand the claims’ scope. If an amendment is approved, it is deemed to have taken effect as of the patent’s grant date.

The court or the Registrar will consider the following factors when deciding whether to approve amendment:

• relevant matters are sufficiently disclosed (eg, in relation to corresponding patent applications or litigation in other jurisdictions);
• there was any unreasonable delay in seeking amendments; and
• the patentee has gained an unfair advantage by delaying amendments that are known to be needed.

The validity of a patent

What factors can extend the time of a patent’s protection?

You could find the list of Singapore IP Firms here.