On 30 October 2017, the Intellectual Property Office of Singapore (IPOS) published its revised Examination Guidelines, following legislative changes made to the Singapore Patents Act. The key amendments to the Guidelines include the expansion of the grace period provision, the ability to switch between substantive and supplementary examination, a clarification of the term “discoveries” in regard to patent eligibility and the rejection of post-grant amendment claims which are “obviously invalid”.
Expanded Novelty Grace period
The Singapore patent application filing grace period provision had been expanded with the addition of Sections 14(4)(e), 14(5A) – (5C) in the Patents Act (Chapter 221). The amended provisions of the Patents Act now allow an applicant to request an examiner to disregard prior disclosures of an invention made within a year before the filing date, if the public disclosure was made by the inventor or by a person who obtained the matter directly or indirectly from the inventor.
Notably, this expanded provision does not cover the publication of an earlier patent application filed towards the subject-matter of the invention, unless the earlier patent application was:
- filed without the consent of the inventor, or
- was published in error when it should not have been published, or
- was published prematurely under the laws of the country in which the earlier patent application was filed.
Where the publication is premature, it shall be treated as being disclosed to the public only on the date when publication ought to have occurred.
If the pre-filing disclosure was made in a printed publication whose authors are identical to the named inventors, the disclosure would be regarded automatically as being disclosed by the inventors for the purpose of Section 14(4)(e). However, if the printed publication names more authors than the inventors, then the Examination Guidelines address review of evidence in the form of a statutory declaration or an affidavit by the Examiner which should be filed when requesting examination. The Examiner must determine if the evidence sets out a prima facie case that the earlier disclosure was indeed made by the inventor or by a person who obtained the matter directly or indirectly from the inventor.
Switching between Substantive and Supplementary Examination
Sections 29(10) and (11) are newly added into the Patents Act, which allow an Applicant to switch between a substantive examination route or a supplementary examination route, provided that:
a) The earlier request for substantive or supplementary examination (as the case may be) is withdrawn.
b) A substantive examination report or a supplementary examination report (as the case may be) has not yet issued; and
c) The prescribed period for making a request for substantive examination report or a supplementary examination report (as the case may be) has not yet expired.
The Examination Guidelines set out the Examiner’s review of the three requirements in order to allow or disallow the switching between the two examination routes.
Patent Eligibility
The exclusion of discoveries from being taken as eligible for patent finds basis in the Court of Appeal decision, Merck & Co Inc v. Pharmaforte Singapore Pte Ltd [2000] SGCA 39. The revised Examination Guidelines now further clarify the meaning of the term “discoveries”. In particular, based on the significantly expanded Section 8 of the Guidelines, IPOS has clarified that materials or microorganisms that pre-existed in nature would not be patent eligible whether or not, these materials or microorganisms are purified or isolated. If a new use was found for these pre-existing materials or microorganisms, the use may be claimed. If modifications were made to these materials or microorganisms which adapted them for a specific use, then both the modified material and its specific use may be claimed.
Post-grant amendment
Under current Singapore practice, it is not permissible for a post-grant amendment to broaden the scope of protection or to introduce additional matter going beyond the application as filed. A recent Singapore Court of Appeal decision, Warner-Lambert v Novartis [2017] SGCA 45, addressed the issue of whether a post-grant amendment to re-write claims drawn towards a method of treatment into a corresponding Swiss-style format claim would disclose additional matter, or otherwise broaden its scope of protection. On appeal, the Court disallowed the post-grant amendments, noting that it would be artificial to even consider whether the proposed amendments extended the scope of protection where there was no protection to begin with.
Following the decision, the revised Guidelines (at Section 7) now states that when assessing post-grant amendments, the examiner should categorically reject an amendment to claims which are obviously invalid, without needing to consider whether the proposed amendment would add matter or extend the scope of protection. Regrettably, there seems to be no further indication as to what might be considered an “obviously invalid” claim. It would seem that this section of the revised guidelines is aimed at patents granted to methods of therapy, diagnosis or surgery.
The revised Examination Guidelines were effective immediately from publication on 30 October 2017.