Following the move from a self-assessment system to a positive-grant system in 2014, a Singapore patent application can only proceed to grant if the relevant requirements are fulfilled, including patentability requirements. An applicant can still elect the examination route for his application to meet such requirements. Where a positive final result from a PCT, corresponding or related application is available, the applicant has the option of requesting supplementary examination with a view to a quick examination of the application in a relatively cost-effective manner.
According to recently released guidelines for supplementary examination, one criteria to be considered is whether there is indeed a positive patentability indication in the final result being relied upon. Thus, care should be taken even if the claims being relied upon are indicated in the final result as novel, inventive and industrially applicable, as this may in some circumstances be considered a negative indication.
This can arise because Section 14(3) of the Singapore Patents Act provides that prior art documents that are applications having a priority date before the filing of the application under consideration but not published until after the filing of such application are relevant for novelty consideration, but not for inventive step consideration.
Thus, if the final result being relied upon, such as an International Preliminary Report on Patentability from the PCT application, includes a reference which is of P- or E-category, particularly P,X or E,X, the final result may be considered a negative indication, and an objection that the claims do not appear to satisfy the patentability requirements would be raised in an adverse written opinion. For example, if the P- or E-category reference is an international application designating Singapore that has entered the Singapore national phase, the presence of that reference in the final result would amount to a prima facie negative patentability indication.
Importantly, the applicant is only allowed to submit arguments to dispute the validity of the cited reference as prior art and is allowed only one response during supplementary examination. In the event that the priority date of the cited reference is valid, the objection raised in the adverse written opinion cannot be overcome. As a result, there are only limited options left for the applicant to continue the prosecution of the application. For example, the applicant may file a divisional application to restart prosecution. Alternatively, the applicant may choose to withdraw the supplementary examination request before the response deadline and elect a different examination route. However, if the deadline for requesting combined search and substantive examination or requesting substantive examination based on an established search report has passed when the adverse written opinion issues, then an extension of time would have to be requested. Either option above is undesirable as additional costs would be incurred.
Moreover, even if the international application in the P- or E-category reference has not entered the Singapore national phase by the time the examiner establishes the supplementary examination report, a patent eventually granted based on that report would be vulnerable to being challenged if it is subsequently found that the international application has entered the Singapore national phase.
Thus, it is advisable to avoid requesting for supplementary examination if a P- or E-category reference is cited in the positive final result of a PCT, corresponding or related application. Out of an abundance of caution, it is recommended to review the claims in light of such a reference, amending the claims if necessary, and requesting combined local search and substantive examination. Further, these actions should be taken early, since the deadline for requesting local search and substantive examination is 36 months from the earliest priority date, while the deadline for requesting supplementary examination is 54 months from the earliest priority date.