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Maximizing the Benefits of Singapore’s Accommodating Patent System with Cost-Free Time Extension for Examination Request
Singapore’s patent system stands out on the global intellectual property stage for its flexible framework, high standards, and user-friendly procedures. Designed to be highly adaptable, it caters to the diverse needs of business owners and innovators by offering a unique balance of both accelerated and deferred patent examinations, with the deferment here referring to postponing of the request for examination through extension of time.
The Intellectual Property Office of Singapore (IPOS) has implemented several initiatives to enhance the efficiency of the patent examination process by offering both acceleration programs for expediting the examination process and time extensions for requesting the search and/or examination report (herein also referred to as “examination request”). This dual provision ensures that Singapore’s patent system is both efficient and accommodating, supporting a wide range of innovation timelines and strategies.
Patent applicants who need faster processing can request accelerated examination, ensuring their patents are reviewed and granted more quickly. This is particularly beneficial for those looking to bring their inventions to market swiftly or seeking to promptly enforce the rights to their inventions. Singapore offers several programs to accelerate the patent grant process including the SG IP Fast, Patent Prosecution Highway (PPH) program, ASEAN Patent Examination Co-operation (ASPEC), and the Singapore-Vietnam Collaborative Search and Examination (CS&E) pilot program.
Whilst there tends to be more interest from patent applicants to expedite the grant of a patent application via these attractive acceleration programs due to various factors such as to gain market advantage, enforce rights, acquire investment and funding, increase licensing opportunity, etc., the patenting and IP commercialization strategy can vary depending on specific circumstances and goals of the patent applicant. One common reason for requesting an extension of time for filing an examination request is to make use of a positive examination result of a corresponding patent application from another country to facilitate the grant of the patent application in a desired country. Extension of time to request for examination is useful if the applicant needs to wait for a favourable examination result of the corresponding patent application to be issued.
Previously, Singapore had a Supplementary Examination route that enabled the reliance on positive examination results from corresponding applications in other countries. This approach was both cost-effective and efficient for obtaining patents in Singapore. However, as of January 1, 2020, Singapore has transitioned away from this system and now all patent applications filed in Singapore needs to undergo Substantive Examination by the Intellectual Property Office of Singapore (IPOS). This change ensures that all patents granted in Singapore adhere to the same rigorous standards of patentability.
Despite this change, Singapore still participates in the PPH and ASPEC programs that allow patent applicants to leverage the positive examination results from corresponding applications in participating patent offices. If a favourable examination result is obtained, the applicant may make a PPH or ASPEC request along with the examination request in Singapore. It should, however, be noted that these programs are only tools to help streamline the examination process, the ultimate examination is conducted independently by IPOS, which holds the authority to decide whether to follow the examination results from other countries through the PPH or ASPEC programs.
Other reasons for extending the time for an examination request include aligning the patent grant with the market readiness of the invention to maximize its commercial impact, managing costs and resources by spreading out the expenses associated with patent prosecution over a longer period, and providing a window to secure better terms during ongoing negotiations or licensing discussions.
Given the varying needs of patent applicants for deferring examination requests, there is a standard extension of time provision in Singapore. Under this standard extension of time provision, a prescribed fee based on the number of months sought for an extension will be incurred. The official fee is S$200 (~ JP¥ 22, 300) for each month of extension sought. The time for a request for search and/or examination report can be extended for a total period not exceeding 18 months with the extension beginning immediately after the first expiry of the period prescribed of 36 months, or period for which the extension is sought upon filing Patents Form 45 (Form to Request for Extension of Time or Period) no later than 18 months after the first expiry of the time or period for which the extension is sought.
On August 19th, 2024, IPOS has further proven itself to be considerate, supportive and flexible to patent applicants by launching a pilot initiative that allows the extension of time for filing the examination request from an initial period prescribed of 36 months from the earliest claimed priority date or filing date if no priority is claimed, to an extra 18 months at no cost. To utilize this pilot initiative, applicants must ensure that the period prescribed for filing a request for a search and/or examination report expires on or between 1 September 2024 and 31 August 2026. When completing Patents Form 45, applicants should select the new option to extend the period prescribed by 18 months. Most importantly, applicants must ensure compliance with all the relevant provisions.
In a situation where an applicant had already obtained a previous extension of less than 18 months, a request under this pilot initiative will allow the period prescribed to be extended at no cost, up to the maximum extension of 18 months. For example, if the period prescribed of 36 months had been previously extended by 1 month, the subsequent request under the pilot initiative will extend the period prescribed for a further 17 months. In short, under this pilot initiative, the period prescribed is 36 months plus 18 months of allowable extension for a total of 54 months.
As the extension of time begins right after the expiry of the period prescribed of 36 months, Patents Form 45 must be filed no later than 18 months after that expiry. However, IPOS encourages applicants to request for the extension of time before the expiry of the period prescribed to prevent the application from being treated as abandoned until the extension of time request is made within the allowable extension period. Further, it is also beneficial to request for the search and/or examination report at the time of requesting the extension of time to maintain the status of the application as “pending” on the register and prevent missing the deadline to file the examination request since an 18- month extension will be given upon approval under this pilot initiative.
Any additional extension for requesting examination beyond the allowable 18-month extension period is discretionary and must be requested before the end of this 18-month period. Based on Rule 108(5) of the Patents Rules, the request must be accompanied by a statutory declaration, or an affidavit, setting out the grounds for the request. A prescribed fee will be charged for this further extension. For contingency purposes, it is highly recommended to file the request for the search and/or examination report before the expiry of the allowable 18-month extension period.
Comparing this pilot initiative with the standard extension of time system for examination request, apart from the obvious cost-saving benefit, it also eliminates the need to make multiple requests to further extend the time within the 18-month period, should an earlier extension of time request made was less than 18 months, as it directly offers a generous 18-month extension of time, saving both hassle and time to make multiple requests.
Since this pilot initiative was just recently launched, if an examination request due within the period of 1 September 2024 till 31 August 2026 has already been filed but the search and examination have not started, IPOS will accept the withdrawal of the examination request and provide a refund. An enquiry on the status of the application may be written to IPOS before deciding on whether to withdraw the filed examination request to participate in this pilot initiative.
Through this pilot initiative, applicants can have sufficient time to plan their global patenting strategies and IP commercialisation developments. In particular, the extended period to request for examination can be used to leverage PPH programs that are applied at the time of filing the examination request if more time is needed to receive a positive examination result from another participating patent office, whereby a first written opinion may be issued by IPOS within just 10 months from the PPH request. Therefore, deferring the filing of the examination request can streamline the examination process through the combined use of suitable acceleration programs, potentially leading to a faster grant after the application enters the examination stage.
The Singapore patent system is accommodating as it is tailored to meet the varied needs of business owners and innovators. Optimal outcomes can be achieved through an effective strategy that leverages these flexible options, whether patent applicants choose to expedite the examination process, delay the time to request for examination, or combine both approaches.
Full Name: Lee Jia Ee
Qualification:
Registered Patent, Trademark and Industrial Design Agent (Malaysia);
Bachelor of Biomedical Engineering (University of Melbourne)
Firm and title:
Country Manager (Global IP Southeast Asia, Singapore);
Director (Global IP Southeast Asia, Malaysia)
Expertise: Biomedical, Mechanics
Language: English, Chinese, Malay