As advised in our recent news update, the foreign route, where an applicant relies on a positive foreign examination result or the IPRP to request supplementary examination in Singapore, will be closed from 1 January 2020. This change has the potential to significantly affect the way Singapore patent applications are handled.
What do you need to know?
- Patent applications which are pending on 1 January 2020, or PCT national phase entries made on or after 1 January 2020 but have an earlier international filing date, will still be eligible for foreign route option:
- It is not necessary to proactively file the request for supplementary examination before 1 January 2020 for these applications.
- PCT national phase entries with an earlier international filing date than 1 January 2020 need not be completed in Singapore before 1 January 2020 to enjoy the foreign route option.
- Direct national applications (e.g. first-filings or convention-type applications) which are lodged in Singapore on or after 1 January 2020 will not be eligible for the foreign route option.
- For such applications, we would recommend filing as soon as practicable before 1 January 2020 if the applicants wish to retain all examination options.
- Divisional applications which are lodged in Singapore on or after 1 January 2020 will not be eligible for the foreign route option.
- Where appropriate, applicants should consider proactively filing divisional applications before 1 January 2020 to retain all examination options for their Singapore cases. For example, if the foreign route is desired for a pending case but the relevant corresponding application is unlikely to achieve allowance by the year-end, a divisional application should be filed as soon as practicable to continue prosecution. Under Singapore practice, all examination request deadlines of a divisional application are calculated based on the divisional lodgement date, so there would be substantial time to await the outcome of the corresponding application (currently set at 54 months from the divisional lodgement date).
The Changing Role of Patent Attorneys in Singapore
One consequence of the closure of the foreign route is that all applicable applications will then proceed under the local route where a request for search and examination or examination only based on a corresponding search report is the only examination route possible. The application will be substantively examined by a Singapore Examiner to determine if the application meets the requirements for patentability under Singapore law. Substantive office action responses will become the norm, and interviews with Examiners to discuss technical issues may be used more frequently to favourably conclude examination within the prescribed timeframe. It is therefore important to ensure that the attorney handling the application is technically qualified in the relevant technology. Rest assured that our team at Spruson & Ferguson (Asia) has over 30 patent professionals who have technical qualifications and experience in their relevant fields with comprehensive knowledge about Singapore patent law.
If you have any questions regarding the upcoming practice change or require assistance with your pending Singapore cases, please do not hesitate to reach out.