Singapore Introduces a More Complex Patent System
The article discusses the latest amendments to the Patents Act (Cap 221) and Rules.

The Singapore Patents Act and Rules were amended on 1 July 2004, in line with Singapore’s obligations under the IP Chapter of the Singapore-USA Free Trade Agreement, and following a review of Singapore patent practice. Many of the changes only apply to applications with a filing date on or after 1 July 2004.¹ Some of the key changes are highlighted below.

Unity of Invention is Required for the Grant of a Patent

Unity of invention is now a requirement for a patent to be granted. However, the Registrar will allow the applicant the right to respond to an objection on unity. Section 30 of the Act has been amended to allow a review (post-grant examination) of a patent to take place after payment of the grant fee to ensure unity. This would mainly affect cases such as PCT applications that enter the national phase in Singapore, and those relying on the search and examination of corresponding applications. The final date for filing divisional applications is now the date when the application or patent complies with the requirements of s 30.²

Pre-grant Claim Amendments

Claims unrelated to any claim(s) that were subject to an examination are not allowed to be added prior to the payment of the grant fee. The applicant should, therefore, be careful when inserting independent claims. However, the Registrar will allow the applicant the right to respond in this situation.³
 

Search and Re-examination After Grant

Any person may request for a search and examination report for a patent after grant on any of the following grounds:

•    there is at least one claim not related to any claim(s) that were subject to an examination;⁴ and

•    relevant prior art was not considered in the preparation of the examination report.⁵

The requestor may select which patent office is to perform the search and examination — the patent offices of Austria, Australia and Denmark are the available choices with the fee varying according to the office selected.⁶

Extension of the Patent Term

The proprietor of a patent may file an application with the Registrar to extend the term (by not more than five years) of the patent in the following circumstances:

•      there was an unreasonable delay by the Registrar in granting the patent;

•      where the patent was granted on the basis of prescribed information relating to a corresponding application, there was an unreasonable delay in the issuance/grant of the corresponding application, and the term of the corresponding application has been extended as a result of the delay; and

•      where the patent includes a substance which is an active ingredient of a pharmaceutical product, there was an unreasonable delay in being able to exploit the patent due to the process of obtaining approval from the Health Sciences Authority (‘HSA’) for a pioneering pharmaceutical product, and the term of the patent has not previously been extended because of the aforementioned delays.⁷

However, the extension of term due to unreasonable delays by the patent office requires a request, and a hefty fee of S$950.⁸ The onus to apply for an extension of term lies on the applicant. It is not automatic. There are also more than 17 aspects of ‘delay’ to be taken into consideration.⁹ These include the time taken to enter the national phase in Singapore calculated from the date of filing of the international application. The fee is the same regardless of the reason(s) for the extension of term.

Allowance of the Use of Patented Products in Experimentation to Obtain Marketing Approval

The use of a patented product in a manner which would otherwise be deemed to infringe the patent would be allowable in relation to supporting an application for regulatory approval for the commercial marketing or use of any product.¹⁰

Restrictions on the Parallel Importation of Pharmaceutical Products

The importation of any patented pharmaceutical product by any person would constitute an infringement if:

•      the product has not previously been sold or distributed in Singapore by or with the consent (conditional or otherwise) of the proprietor of the patent, or an authorised person;

•      the importing of the product would result in the breach of a sale/distribution contract between the proprietor and an authorised person; and

•      the importer is aware of the breach in the aforementioned contract.¹¹

Increase in Official Fees

Many fees have been increased, particularly those for requesting search and examination. The grant fee will now include a surcharge of S$20 for each claim beyond 25 claims, but this only applies to applications with a filing date on or after 1 July 2004. As PCT applications at national phase entry in Singapore take the date of filing the PCT application as their filing date, the excess claims surcharge will only be imposed in the future.¹² Given the size of the Singapore market, the fees appear to be more expensive compared to some of the other industrialised countries.

Multi-Track Patent System

Applicants now have the option of a dual track examination system:

•      a fast track with considerably shortened periods (grant at 42 months);¹³ and

•      a slow track with considerably lengthened periods (grant at 60 months) .¹⁴

The fast track is the default track and a request is required to transfer to the slow track. An official fee is payable for the request. This multi-track system has made the Singapore patent system one of the most complex patent systems to understand.

Alban Kang and Karol Goh
Alban Tay Mahtani & de Silva
E-mail: alban@atmdlaw.com.sg and karolgoh@atmdlaw.com.sg