1 February 2017, Singapore
Significant developments in Singapore’s patent laws are expected to kick in the near future. The key highlights are as follows:
- Expanding the scope of the 12-month Grace Period[i] for exempting novelty-destroying disclosures (implementation date not yet announced; likely 2017);
- New statutory declaration (“SD”) requirement for the Grace Period, pre-grant and post-grant[ii];
- Closure of the Foreign Route, also known as the Supplementary Examination route (“SUP”); and
- Increasing the leeway for withdrawal of an initial examination (“EX”) request and filing a fresh EX request under another route.
The following is a quick glimpse of what these upcoming changes mean for businesses and applicants who are keen to take advantage of them and harness potential benefits in Singapore. We also highlight some issues worth paying attention to.
For a more in-depth comparison between the current and forthcoming positions, and observations from patent attorneys of similar jurisdictions, please click here for the detailed article from Goh Phai Cheng LLC.
Pitfalls and Practicalities For Businesses & Patent Applicants
- Even if a pre-filing disclosure is exempted within the Grace Period in Singapore, the corresponding application in a foreign jurisdiction may be disqualified.
- Not all jurisdictions worldwide have a similarly broad Grace Period. Other jurisdictions (e.g. European Patent Convention members) may have narrower Grace Periods, or no Grace Period at all.
- Even in jurisdictions that do provide a broad Grace Period (e.g. USA, Australia, Korea), pre-filing disclosures will still need to comply with local requirements in order to be exempted. These requirements require further scrutiny to confirm applicability.
- Successfully relying on the Grace Period does not mean a right to stop third parties in Singapore. Whilst an applicant may have a pre-filing disclosure successfully exempted within the Grace Period, it does not stop third parties in Singapore[i] from using their invention in good faith during the 12-month Grace Period, and before the priority date of the invention.
- Drafting the content for the required SD may prove tricky. It remains to be seen how thorough the description of the disclosure at the time of filing has to be. If the SD requires technical details to be disclosed, would it not jeopardise the patent applications abroad?
- The patent application process will be more efficient, more forgiving.
- Dispensing with the need to obtain a certificate for disclosures at international exhibitions, will likely speed up the application process and give applicants one less thing to worry about.
- Inventors and applicants who may have disclosed the invention －either inadvertently or out of a necessity to source for funds －will nevertheless retain the ability to obtain patent rights, but only in Singapore and likely in those countries with Grace Period.(e.g. USA, Australia and Korea).
- Academics and researchers who have disclosed their invention in scientific or technical journal(s) prior to filing a patent will retain the ability to obtain patent rights, but likewise only in Singapore and in those countries with Grace Period, subject to fulfillment of local requirements.
- Minors below the contracting age whose inventions have the potential to be patented and who have disclosed their inventions to manufacturers to obtain a prototype without signing a Non-Disclosure Agreement will similarly retain the ability to obtain patent rights in Singapore.
- Leverage on the SUP route while it remains available for applications filed before 1 January 2020. In particular, applicants should prepare to file:
- national applications, before 1 January 2020;
- international applications entering national phase, before 1 January 2020; and
- divisional applications having an initiation date, before 1 January 2020.
- Seek advice on patent filing strategies early. While an applicant has an additional chance to withdraw an initial EX request and re-file a fresh one to have the invention examined under a different route, even after responding to an unfavourable WO, the unfavourable WO is still a searchable document in the application process for all parties to view. It is uncertain, however, whether a new patent examiner would be assigned for the different route. Advice on patent filing strategies may play a significant role in securing the favourable EX or SUP report highly sought after by investors before money is being pumped in to finance the invention.
Highlighted above are some of the possible pitfalls and practicalities. Applicants are therefore strongly encouraged to avoid making disclosures that unwittingly destroy novelty of their inventions before patent filing. As far as possible, applicants should avoid relying on the Grace Period, which should be a measure of last resort.
Businesses should promptly seek out patent lawyers who have built up close ties and who engage in regular interactions with other foreign patent lawyers with a view to keep abreast of the requirements of international laws and regulations. They are hence better equipped to provide their clients with advice on suitable global filing strategies.
In the new year of 2017, may we look forward to more grace (no pun intended) being given to all earthly and patentable matters.
Disclaimer: The opinions expressed in this article are the sole responsibility of the author and do not necessarily reflect any position or policy of Goh Phai Cheng LLC (“the firm”). While every effort has been made to ensure that the information contained in this article is correct, neither the author nor the firm can accept any responsibility for any errors, omissions or for any consequences resulting therefrom. This update is intended merely to highlight matters of interest in the field of Intellectual Property. All the links are last accessed on 1 February 2017. Should you require advice or information, please email the author Constanceleong@gohpc.com or call (65) 6610 4061.
[iii] Section 71 of the Patents Act
Goh Phai Cheng LLC
IP Academy External Tutor
Constance has 14+ years of post-qualification experience (PQE). She has an active practice in Intellectual Property (IP) law, with particular expertise in the fields of Patent, Copyright, Trademark, Design, Trade Secrets, Confidential Information, Franchise law, Internet law (Social Media), E-commerce and IP transactions. Her work includes IP prosectuion, IP management and IP strategies and intelligence for almost every type of IP right across various industries, ranging from water to e-commerce, in Singapore and globally.
Constance worked at Lloyd Wise, Singapore (which merged into Marks & Clerks) as a patent attorney trainee. In 1999, she left for Queen Mary University of London where she received an LL.M in International and Compartative Copyright Law, Information Technology Law and Internet Law. In 2000, she was admitted as a Solicitor of England & Wales. Constance returned to Singapore and worked at IPOS as a Legal Counsel and Assistant Registrar at the Patents Registry and represented Singapore at World Intellectual Property Organisation (WIPO) conferences until 2010 when she joined Goh Phai Cheng LLC as an associate.