Legislative changes to Singapore patents law will see a paradigm shift from the present “self assessment” regime to a “positive grant” system. These changes will have important implications for prosecution and examination of new patent applications filed on or after the date of commencement of the new legislation. The actual commencement date is not yet known but it is expected to be in the third or fourth quarter of 2013.

The salient points to note for changes to patent prosecution include:-

• All patent applications need to undergo substantive examination;
• Every claim in an application must satisfy patentability requirements;
• Patent applications must qualify for grant by a Notice of Eligibility;
• A patent application may be refused on grounds of unresolved patentability issues.

The prosecutions options available to the applicant are:

1. By 13 months from the relevant date* to file initially a request for a new search report and subsequently by 36 months from the relevant date file a separate request for substantive examination report;
2. By 36 months from the relevant date to file a request for combined new search and substantive examination report;
3. By 36 months from the relevant date to file a search report from a foreign route application or a PCT application together with a request for substantive examination report;
4. By 54 months from the relevant date to file the prescribed information/documents together with a request for supplementary examination.

* Relevant date is the priority date, international filing date or actual filing date, whichever is applicable.

The deadlines for prosecution Options 1 through 4 may be extended by 18 months subject to payment of extension fees. Further extension may be possible.

While the first three options are not new, their associated time periods have been changed.

The fourth option is new and will require applicants intending to rely on a positive International Preliminary Report on Patentability (IPRP), grant of a prescribed corresponding foreign patent or allowed claims from such an application to undergo further substantive examination in Singapore. In addition, the applicant needs to file a table of claim relatedness.

Under Option 4, only one Written Opinion will issue. Thus, the applicant has only a single opportunity to resolve all issues relating to patentability; failing which a Notice of Intention to Refuse grant of the patent will issue. However, under Options 1, 2 or 3; more than one Written Opinion may issue. Also the time period for applicant to respond to a Written Opinion under Option 4 is shorter and fixed at three (3) months while that for Options 2 and 3 is longer and fixed at five (5) months.

The present fixed deadline for grant of a patent will be replaced by a 2-month period from date of issuance of the Notice of Eligibility.

This is only a summary of the legislative changes to the Singapore patents law and is not intended to constitute legal advice. For ease of comprehension, please see Annex A. Should you need more information, kindly contact us at singapore@henrygoh.com.sg.