We had previously reported that the Intellectual Property Office of Singapore (“IPOS”) had proposed an Intellectual Property (“IP”) (Amendment) Bill 2021 (the “Bill”). The Bill was passed on 12 January 2022 and the Intellectual Property (Amendment) Act 2022 (the “Amendments Act”) will be coming into effect in Singapore on 26 May 2022. The Amendments Act outlines the changes in procedures and fees for patents, trademarks, registered designs and plant varieties protection. Here, we summarise the key changes in the procedures and fees for filing patent applications in Singapore.
Alternative Form of Office Action
During examination, if the Examiner is of the view that a relatively minor objection may be resolved by amending the application without a Written Opinion, they may invite the applicant to amend the application by issuing an “invitation to amend” in lieu of a Written Opinion. The non-extendable deadline to respond to an invitation to amend is two months.
If the minor amendments requested in the invitation to amend does not resolve the objections, or if the applicant refuses to respond to the invitation to amend, or if the applicant allows the deadline for responding to the invitation to amend lapse, the Examiner may issue a first or subsequent Written Opinion thereafter according to existing practice.
This will apply to all patent applications which have commenced but not completed substantive examination on or after 26 May 2022 and to all requests for substantive examination filed on or after 26 May 2022. However, it will not apply to existing or new applications undergoing Supplementary Examination.
Where an application for a patent discloses a sequence, the description of the patent application must now include a sequence listing, presented as a separate part of the description in a manner that complies with the prevailing World Intellectual Property Organisation (“WIPO”) standard.
In the event that the sequence listing has not been provided, the Registrar may invite the applicant to furnish the sequence listing for the purposes of search but the sequence listing not contained in the description on the date of filing will not form part of the application.
The sequence listing must be included in the description for all applications with a date of filing on or after 26 May 2022. Further, for patent applications with a date of filing on or after 26 May 2022 until 30 June 2022, the sequence listing must comply with the ST.25 standard. For patent applications with a date of filing on or after 1 July 2022, the sequence listing must comply with the ST.26 standard.
Publication of English Translation Of A Non-English International Application
Applicants will no longer be required to file a form and pay the relevant fee to publish the English translation of a non-English international application at the time of entering national phase. Subject to the 18-month publication period or any requests for early publication, the Registrar will automatically publish the English translation if it has been filed at the Registry. This will apply to all international applications entered into national phase in Singapore on or after 26 May 2022.
Examination of the First Invention
It has now been clarified that if the application relates to two or more inventions that do not form a single inventive concept (i.e. if there are unity of invention objections), examination may be restricted to the first invention specified in the claims. This will apply to all requests for examination filed on or after 26 May 2022.
Updating The Examination Review Process
Previously, when a request for examination review was filed, a second Examiner was required to review the application documents to determine whether they agree or disagree with the unclear Substantive/Supplementary Examination Report issued by the first Examiner. For requests for a review of an Examination Report filed on or after 26 May 2022, the second Examiner is no longer required to consider the objections raised in the unclear Examination Report, if amendments are filed at the time of filing the request for examination review.
Submission of Prescribed Documents
If IPOS was responsible for establishing the final result of a search or final result of the international search report in English (for example, in instances where IPOS is the international searching authority that established an English International Search Report) and this report had been previously sent to the applicant, the applicant is no longer required to provide a copy of the search result at the time of filing an examination request. This will apply to requests for examination filed on or after 26 May 2022.
Number of Figures In Abstract
Where the specification contains drawing(s), the applicant will now only be able to indicate a maximum of two figures in the abstract for the purposes of publication. This will apply to any applications filed on or after 26 May 2022.
Publication of Corrections
Further, as part of the Cross-IP amendments that are being implemented on 26 May 2022, the Registrar will have the discretion to publish corrections that may affect the interest of third parties, such as corrections to the name or other particulars of the rights-holder or priority details of an application. Following publication, any person can file a notice of opposition against the proposed correction within 2 months. This will apply to relevant correction requests made on or after 26 May 2022.
Increase In Official Fees
Most official fees during the filing and prosecution stage will increase by about 5% to 6%, while renewal fees will be increased by about 15% to 18%. Applicants may therefore wish to keep these increases in mind when considering their filing strategies. In addition, to avoid having to pay the increased fees, applicants may wish to provide any instructions relating to matters involving payment of official fees as soon as possible before 26 May 2022, when the increased fees will come into effect.
The above changes are intended to improve alignment of patent practice with that of other IP practice groups as well as to improve operational efficiency of patent filings in Singapore. We expect the changes to strengthen Singapore’s position as a global IP hub. If you would like further information on the Amendments Act, please feel free to contact one of our expert attorneys.
*This article has been updated on 9 May 2022 further to IPOS’ announcement on 28 April 2022.