06 December, 2016
Spruson

Singapore Update: Pros and Cons of Obtaining Patent Protection via the Foreign Route

Singapore Update: Pros and Cons of Obtaining Patent Protection via the Foreign Route

Singapore provides three patent prosecution routes, namely: Local Route, Mixed Route, and Foreign Route. The Local Route is a local substantive search and examination that is performed by local Examiners. The Mixed Route is an option where the examination is performed by a local Examiner who relies on the search report of a corresponding application. The Foreign Route is inherently different from the other prosecution routes in that it is an approach that allows patent applicants to circumvent the need to request for local substantive search and/or examination by relying on the allowance or grant of a corresponding patent application. This article will mainly focus on the nuances, the benefits, and the possible pitfalls of the Foreign Route.

Using the Foreign Route

In the current Singapore patent system (post February 2014); to proceed with the Foreign Route, a request for supplementary examination (as opposed to local substantive search and/or examination) is required. At the time of conducting supplementary examination, a Singapore Examiner will then perform a formal check of the corresponding patent document to determine whether:

  1. each claim of the corresponding patent is supported by the description as originally filed (i.e. whether the scope is justified in light of the experimental data provided in the application as filed);
  2. each claim of the application as originally filed in Singapore relates to at least one claim in the corresponding patent;
  3. each claim of the corresponding patent has been determined by the prescribed patent office to be novel, inventive, and industrially applicable;
  4. the invention of the corresponding patent encourages offensive, immoral, and anti-social behaviour and hence is not patentable in Singapore;
  5. the claims are directed toward invention that is not to be taken to be capable of industrial application (i.e. method of treatment of the human or animal body);
  6. there is any other patent application or granted patent for the same invention, with the same priority date, and filed by the same applicant (i.e. “double patenting”); and
  7. the patent document disclosed any additional matter (i.e. “added matter”).

Among the formal requirements above, the requirement for claims to be related (i.e. point (2) above) is  a Singapore specific practice. In order to be considered as related, the claims of the Singapore application (“Singapore claims”) should ideally be identical to the claims of the corresponding patent (“corresponding claims”). However, when the wordings are not identical, the Singapore claims will still be considered as related to the corresponding claims if the limitation in the claims defines the same subject matter, and if the scope of the Singapore claims is equal or narrower than the corresponding claims. Therefore, the applicant should be aware of the possibility that the Singapore claims may have additional dependent claims that further limits the claims as granted or allowed in the corresponding application (provided the limiting feature is supported in the specification).

Because the patentability of the claims has been determined by the prescribed patent office (as mentioned on point (3) above), in Foreign Route applications the Singapore Examiner will not examine:

  1. the patentability of the claims (novelty, inventiveness, industrial applicability);
  2. the unity of the invention; and
  3. the clarity of the claims.

Challenges of using the Foreign Route

With the absence of an official fee, the Foreign Route has been an attractive cost effective optionfor many cost conscious applicants. What may appear to be a simple prosecution route, however, may not be as straightforward as it seems. There are several major challenges in employing the Foreign Route.

The main challenge in employing the Foreign Route is the fact that it allows for very limited claim amendments. Claims that have formats that are not allowed in Singapore (e.g. method of treatment claim, omnibus claim, and purpose-limited medical claim that is construed as second/further medical use) cannot be amended to allowable formats and therefore must be deleted.

In addition to the restrictive allowable claim amendments, as illustrated in the following table, the Foreign Route is rife with various country-specific pitfalls.

Countries/Region Formalities requirement Caveats
Australia To claim same priority Method of treatment claims and omnibus claims must be deleted;Voluntary amendments made in AU patent must be reviewed with Singapore “added matter” test.
Canada To claim same priority;Patent application filed in English only Voluntary amendments made in CA patent must be reviewed with Singapore “added matter” test
Japan To claim same priority;Translation to English required Voluntary amendments made in JP patent must be reviewed with Singapore “added matter” test.
New Zealand To claim same priority Historically, inventive step was not examined in NZ. Thus NZ patent/patent application with filing date of before 13 September 2014 would not meet the patentability requirements in Singapore. Any divisional applications from parent patent application having a filing date of before 13 September 2014 would also be considered not suitable.
Republic of Korea To claim same priority;Translation to English required Voluntary amendments made in KR patent must be reviewed with Singapore “added matter” test.
United Kingdom To claim same priority Purpose limited product claim is construed as first medical use claims. If patentability of claim is from its further use (e.g. second medical use), the claim would not be considered patentable in Singapore.
United States of America To claim same priority It is not allowable to rely on the combination of multiple patents (e.g. to rely on a US patent towards product in combination with a US patent towards method);Method of treatment claims must be deleted;Voluntary amendments made in US patent must be reviewed with Singapore “added matter” test.
European Patent Office To claim same priority;Patent application filed in English only Purpose limited product claim is construed as first medical use claims. If patentability of claim is from its further use (e.g. second medical use), the claim would not be considered patentable in Singapore.

If the pitfalls above are not observed, as illustrated on the flowchart below, it is likely that an Examiner of the Supplementary Examination would issue a Written Opinion, to which the applicant only has one chance to respond (see Flowchart A).

If the response to the Written Opinion is unsatisfactory for the Examiner, an unclear Examination Report would be issued. Whilst the applicant would have an opportunity to request a Review of the unclear Examination Report, the request for a review is costly (SGD 1350, equivalent to approximately USD 1135). Furthermore, if the result of the examination review report is negative, the applicant will not have any chance to respond to the Examination Review Report, a notice of refusal will be issued, and the application will be refused. A divisional would be necessary to maintain the application pending. In this case, in addition to the cost of requesting a review of the unclear Examination report, the applicant will also need to pay the fee for filing and maintaining the divisional application. The total cost of such processes may prove to be more expensive than the cost of opting for a local search and examination from the beginning (i.e. choosing the Local Route or Mixed Route instead of the Foreign Route).

  patent-chart-a_001

Later deadline for Supplementary Examination

It should also be appreciated that the deadline to elect Supplementary Examination (i.e. 54 months after priority/filing date) is much later than that of the other local search and/or examination options (i.e. 36 months after priority/filing date). Thus, if it is close to the 54th month, and there is no corresponding application that has been granted or allowed, the only option that the applicant has is to file a divisional application. If the applicant opts to file a divisional, the applicant virtually needs to go back to square one of the patent prosecution process. Thus, the applicant will lose some valuable time (especially when compared to local/mixed route – see Flowchart B for comparison).

patent-chart-b_001  

Different approaches to patentability requirements

Finally, in most jurisdictions the patentability of an application is determined through the examination of the novelty, inventiveness, and industrial applicability of the subject matter. Whilst the main concepts appear to be similar, due to the slight differences in approaches to patentability requirements, the examination performed in the foreign corresponding application may not be in line with Singapore’s approach to patentability. Thus, based on such understanding, local search and examination may be a less risky course of action when compared to the Foreign Route.

Next steps

As the Foreign Route approach will be closed by 1 January 2020 (for further detail, please see our article of 17 August 2016), applicants wishing to enjoy the potential cost benefit of this approach should act promptly. If you have any questions regarding the suitability of the local, mixed, or foreign route for your application, please don’t hesitate to contact us.


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