Summary

Search and Examination

The options for search and examination of any patent application in Singapore are complicated. The summary below is to some extent a simplified version of the options available! Generally, unless there is any specific option an applicant wishes to adopt on a particular case, we will advise on what we feel is the best option in the circumstances.

With recent amendments to Singapore Patents Act and Rules, a “two-track” examination system for Singapore patent applications was introduced. By default, a patent application proceeds via the “fast track”. An overview of this option is illustrated as a flowchart in Annex A. Alternatively, it is possible to prosecute a patent application by the “slow-track” by paying a block extension fee by 39 months from the filing or priority (if claimed), in which deadlines are extended.

National Applications

Fast Track

There are several options (routes 1 -5), depending on the existence of corresponding applications filed in prescribed countries and their status at the time examination has to be requested. Corresponding applications are applications sharing one or more of the priority claims of the Singapore Application or which claim priority from the Singapore Application and have been filed in any of the following prescribed countries:

Australia
Canada (in English)
New Zealand
United Kingdom
United States of America
European Patent Office, (in English)
PCT applications
Japan
Republic of Korea

The various search and examination routes are, as follows:

Routes 1 and 2 - In these routes, no reliance is place upon corresponding foreign applications and the routes differ only at the time search is requested. In route 1, a search is requested separately by the deadline of 13 months from the filing date, or priority date if priority is claimed, with examination being subsequently requested by the deadline of 21 months from the filing/priority date. In route 2 search and examination are requested together by the deadline of 21 months from the filing/priority date. These routes are the most straight forward and familiar but are the most expensive. We only recommend route 1 if the applicant specifically desires a separate search before making a decision as to whether or not examination should be requested since it is cheaper to request search and examination together by route 2 than separately by route 1.

Route 3 - Instead of requesting a local search it is possible to rely on the search of a corresponding foreign application in one of the countries noted above if such is issued by the deadline of 21 months from the filing/priority date in which case examination may be requested based on the foreign search report, saving costs. For this option we will need a copy of the Search Report, a copy of each of the citations raised and a patent family list for those citations not in English.

Route 4 - It is possible to rely on acceptance of a corresponding foreign application in one of the countries noted above (but not New Zealand) instead of requesting both search and examination. In such a case, there is no need to request either search or examination by the deadline of 21 months from the priority/filing date for routes 1 – 3. Instead, any action can be deferred until closer to the deadline for paying the grant fees of 42 months from the priority/filing date. At that time it is necessary to file either documents showing conclusion of examination as to substance of the corresponding foreign application or a copy of the patent either certified or otherwise acceptable to the Registrar.

Route 5 - The disadvantage of route 4 is that at the time a decision is made as to whether or not to request examination usually one would not know that a corresponding application would be accepted by the deadline of 42 months from priority, so this is a bit of a gamble. If by that deadline a corresponding application has not been accepted, the only way that prosecution of the application can continue is by filing a divisional application which resets the deadlines for search and examination allowing more time for the corresponding application to be accepted. This is Route 5. All deadlines for the divisional are reset from its actual date of lodgment and all routes 1 – 5 are available for this divisional case. Thus it is also possible to request normal search and examination of the divisional case if prosecution of foreign applications is not progressing.


Slow Track

To convert an application from the fast track to the slow track which allows more time for requesting examination and/or obtaining acceptance of a corresponding foreign application, a request for block extension must be filed within the deadline of 39 months from the filing/priority date. However, the official fee for conversion from the fast to the slow track is extremely high and we do not recommend this option. If the applicant needs more time, we recommend the use of route 5 noted above, that is to say waiting until close to 42 months from the filing/priority date and then filing a divisional application, since this is cheaper and the applicant gets more time.

PCT National Phases

For PCT application entering the national phase in Singapore, the deadlines for search and examination depend upon the date of filing of the PCT application.

PCT Applications filed before July 1, 2004

If the PCT application has a PCT filing date before 1 July 2004, the search and examination options depend upon whether the application enters the national phase via Chapter I or Chapter II.

For Chapter I national phase entries it is necessary to request local examination based on the International Search Report and the deadline for doing this is 32 months from filing/priority and we will need a copy of the International Search Report including patent family list and one copy of each citation raised. There is also an option to request combined search and examination of such cases. The deadline for this is 28 months from filing or priority if claimed, before the deadline for national phase entry, although extensions are available.

If the application enters the national phase via Chapter II, that is to say a Demand for International Preliminary Examination was filed, it is not necessary to request local examination at all.

PCT Applications filed on or after July 1, 2004

For PCT applications entering the national phase with the filing date on or after 1 July 2004, search and examination does not need to be requested for any such application, provided the Registrar is informed that the applicant wishes to rely either on the IPRP Chapter I or Chapter II which has issued in the International Phase or on the acceptance of a corresponding foreign application in the manner of Route 4, above.

If the applicant nevertheless wishes to request a further search and examination of the application it is necessary either to enter the national phase by 21 months from filing or priority and request search and examination or to request a block extension of time and request search and examination by the 39 months from filing or priority. With changes that came into effect on 1 August 2006 in which official fees for requesting block extension for PCT national phase applications are reduced to zero, generally, we recommend that block extension is requested even if the applicant does not wish to request local search and examination. In additional to extending the examination deadline, the block extension also extends the deadline for paying the grant fees by 18 months, thus allowing the applicant more time to see what happens in other jurisdictions before final decisions have to be made here.

Please be advised that if reliance is placed for any PCT application on the International Search and Examination Reports, and if these are incomplete, for example if some claims have not been searched and/or examined, the claims of the application should be limited, before grant, to those which were searched and examined. In the alternative, local search and examination can be requested by 39 months from filing or priority together with the block extension, as discussed above, so that the unexamined claims can be searched and examined. The above recommendations also apply to any amended claims the applicant wishes to file which are outside the scope of the claims examined during the international phase. We will provide advice concerning these matters after entry to the national phase.

Grant

Singapore has a “self assessment” system in that the Singapore Patents Registry does not positively tell the applicant if he is or is not entitled to a patent. It is necessary for the applicant to assess if the claims presented at grant are patentable or not. The Registry will, however, require certain formalities to have been completed before a patent is granted as follows:

1. If local examination has been requested by any route, the “final” examination report must have issued. In this respect, for local examination if there are any objections to patentability, one and possibly two written opinions may issue giving unextendable deadlines of five months each for response. After response(s) have been received or if there are no objections, an examination report is concluded by the examiner and sent to the Registrar. PCT national phase applications for which examination has been requested follow this procedure.

2. If reliance is placed on an accepted corresponding foreign patent application, prescribed details concerning that accepted patent application must have been filed with the Registrar.

3.  For PCT applications for which examination has not been requested, the Registrar must have received the International Preliminary Examination Report or IPRP Chapter I or Chapter II, as appropriate. As noted above, the applicant must indicate that he wishes to rely on the report.

4. The grant fees are due to be paid within 42 months from the filing or priority date although for PCT applications having a filing date before 1 July 2004, this deadline is 54 months from the priority date.

Amendments can be made at any time up until the grant fees are paid but such amendments must be within the scope of the claims examined either in the International Phase, under local examination or those granted in a corresponding accepted foreign application if reliance is placed on that application. If claims of different scope are required, these should be filed in a divisional application.

After the grant fees are paid, the Registrar subsequently issues the patent certificate.

Renewal fees are due after the 4th year on the anniversary of filing and can be paid up to six months late with a fine. If the patent certificate does not issue by the time the first renewal fee is due, payment of that renewal fee is deferred until the patent certificate actually issues at which time a three month extension period is granted for paying the outstanding renewal(s).


 


 

Address:

TAGI-UNI Building 104 Mecca Street, Um-Uthaina, Amman, Jordan

P.O. Box: 921100, Amman 11192, Jordan
Telephone: (00 962-6) 5 100 900
Fax: (00 962-6) 5 100 901
Email: asia@agip.com
Contact: Diala Al Masri (Ms.)