We recently reported on the Intellectual Property Office of Singapore’s (IPOS) announcement in regard to lowering fees for Intellectual Property Protection from 1 April 2017. As part of this, IPOS also announced the introduction of an excess claim fee, details of which are covered below.
How will it work?
For examination requests (including requests for examination relying on a search result of a corresponding application or search and examination) and requests for payment of grant fee filed on or after 1 April 2017 with the Singapore patent office, excess claim fees need to be paid if the claim set on file comprises more than 20 claims. The official excess claim fee will be S$40 (around US$28) per claim in excess of 20 claims.
There is no particular restriction on the number of independent claims one may present within the 20 claims quota although plural independent claims may occasionally lead to objections regarding a lack of conciseness during substantive examination.
According to IPOS, the implementation of the excess claim fee will help to reduce the current burden on patent examiners. IPOS also observed that the average patent application has around 18 claims and thus does not expect the excess claim fee to apply to most applicants. We believe this change will most likely affect clients with chemical or biotech inventions.
Options for minimising your fees
Voluntary amendments can be made in Singapore any time before a request for examination has been made. Therefore, we would strongly recommend our clients to consider preliminary amendments prior to requesting examination to reduce such fees where necessary. In particular, clients may wish to note that Singapore accepts multiple dependent claims. It is also permissible for multiple dependent claims to refer to other multiple dependent claims. Accordingly, one should consider taking advantage of such claim dependencies to cover important combinations of features or secondary inventive embodiments.
Additionally, where possible, one should also consider utilizing Markush-style drafting to reduce the total number of dependent claims. This option may be particularly useful for chemical inventions.
As mentioned above, the excess claim fee is to be paid twice; once at the time of requesting examination and additionally at the time of grant. However, the excess claim fee paid at the time of grant only applies to claims over and above those already paid for when requesting examination. For example, if amendments were made during prosecution which resulted in additional claims being granted, the excess claim fee at grant would only apply to those additional claims. Accordingly, it may be prudent to keep this in mind when amending claims during prosecution.
Considerations for Supplementary Examination
For clients who may prefer to rely on a foreign corresponding patent for Supplementary Examination in Singapore, it should be noted that no excess claim fee needs to be paid when requesting Supplementary Examination. However, the excess claim fee will still apply at the time of grant. As such, it remains useful to consider filing a reduced claim set when requesting Supplementary Examination. This can be done for instance by combining dependent claims or cancelling claims which may be of lower importance. Under the Supplementary Examination route, it is a legal requirement for the claims being prosecuted in Singapore to substantively correspond to the claims allowed or granted in the foreign patent. Hence, while voluntary amendments could certainly be made to reduce the number of claims, care should be taken to ensure that the amended claims remain in compliance with the formal requirements of Supplementary Examination.
We are closely watching this space for further developments and will provide updates as and when new information arises. In the meantime, if you have any questions in regard to the above, please don’t hesitate to contact us.