Effects of Closure of Supplementary Examination in Singapore by Elfin Lim & Howard Yap
Prior to 1 January 2020, patent applications in Singapore were able to rely on a positive examination report from a corresponding foreign application/patent (or positive International Preliminary Report on Patentability (IPRP) for PCT applications entering Singapore national phase) to request for supplementary examination.
The supplementary examination route is often favoured over local examination as supplementary examination does not involve any official fees, thus providing the applicant with cost savings. In comparison to the 36 months deadline to request for local examination, the 54 months deadline to request for supplementary examination also allows applicants to defer examination costs.
However, during supplementary examination, Singapore patent examiners are not able to raise substantive issues directed to novelty and inventive step. As a result, it is possible for patents that do not meet local patentability requirements to be granted under supplementary examination due to differences in patent law between countries.
In a bid to improve the quality of patents granted in Singapore, the intellectual property office of Singapore (IPOS) has moved to close the supplementary examination route. As of 1 January 2020, the supplementary examination route is no longer available to the following Singapore patent applications:
- Domestic applications having a date of filing on or after 1 January 2020;
- Divisional applications having a lodgement date on or after 1 January 2020; and
- PCT applications entering national phase in Singapore with an international filing date on or after 1 January 2020.
Consequently, these applications will be subject to substantive local examination by Singapore patent examiners to determine if the applications meet local requirements. With the closure of the Supplementary Examination route, applicants will be more reliant than ever on patent attorneys in Singapore to address substantive issues raised in office actions.
Informal communications with Examiner
Prior to responding to substantive office actions, it is also possible for Singapore patent attorneys to initiate informal communications in the form of email correspondences and phone interviews with the Singapore patent examiner to discuss the issues raised in the office action. In our experience, initiating informal communications with the patent examiner is often useful for achieving a better understanding of the examiner’s rationale for the issues raised. On occasions, we have also sought the examiner’s comments on our proposed claim amendments to distinguish the claimed invention. Overall, we have enjoyed great success in utilizing applicant-initiated informal communications to improve the efficiency and streamline patent prosecution for our clients.
Gradual abolishment of Supplementary Examination
As the deadline for requesting supplementary examination is 54 months from the declared priority date (or 54 months from the filing date where there is no declared priority date) for domestic and PCT applications, and 54 months from the lodgement date for divisional applications, the following Singapore patent applications remain eligible for the Supplementary Examination:
- Domestic applications (with no priority date) having a filing date before 1 January 2020;
- Divisional applications having a lodgement date before 1 January 2020; and
- PCT applications (with no priority date) entering national phase in Singapore with an international filing date before 1 January 2020.
However, once the 54 month deadline expires for these applications, the supplementary examination route will truly be closed. Leading up to the full closure of the supplementary examination route, we expect Applicant-initiated informal communications with examiners to be used more frequently to expedite prosecution for applications under local examination.