Singapore Patent Law updates: Pre-Grant Third Party Observations of Patent Applications and Post-Grant Re-Examination of Patents

In Singapore, amendments have been introduced to the Singapore Patent Rules from 1 October 2021 to formalise pre-grant third party observations and to introduce post-grant re-examination, with an aim to enhance dispute resolution processes.

Formalised pre-grant third party observations

The existing pre-grant third party observations process is now formalised. After publication and before the issuance of the search and examination report, examination report, or supplementary examination report, a third party may make observations in writing to IPOS, on the question of whether the invention is a patentable invention. The third party must state the reasons for such observations and may submit any relevant prior art documents. There is no fee and official form for this service.

Upon receipt of third party observations, the registrar will inform the applicant and publish the third party observations on the Patents Open Dossier. The examiner must consider whether such observations are relevant to the patentability of any claims that are pending in the application when carrying out examination. If relevant, the examiner will raise objections in a Written Opinion, to which the applicant can formally respond.

Re-examination after grant

Prior to 1 October 2021, the only available option to oppose to a patent is to seek formal revocation proceedings against the patent owner. However, a third party can now make a request to re-examine a Singapore patent after grant, with a prescribed fee, accompanying reasons supporting the non-validity of the granted patent and relevant prior art documents if appropriate. The re-examination grounds that a third party can reply on are:

a. The invention is not a patentable invention;

b. The specification does not disclose the invention clearly and completely for it to be performed by a person skilled in the art;

c. The specification discloses additional matter beyond that disclosed in the application as filed;

d. A post-grant amendment has been made to the specification which should not be allowable;

e. A pre-grant amendment has been made to the specification which should not be allowable;

f. A correction has been made to the specification which should not be allowable; and

g. The patent falls foul of double patenting.

There is no time-limit to file the re-examination request. If the examiner after re-examination finds the patent valid nonetheless, no action by the patentee is needed. On the other hand, if the examiner finds that an alleged ground is made out, he/she must issue a written opinion to the patentee. The patentee will be given an opportunity to request an interview with the examiner within two months after the written opinion is issued.

In addition, the patentee must respond to the written opinion within three months after the written opinion is issued, providing written submissions and/or amendments to the specification of the patent. At the conclusion of the re-examination process, the examiner will provide a re-examination report. A positive re-examination report will be issued if the examiner determines that the patent is valid, or where written submissions and/or amendment to the specification of the patent have overcome the objections raised by the examiner. Otherwise, a negative re-examination report containing one or more unresolved objections will be issued, in which case the registrar must make an order to revoke the patent. Thus, after the issuance of the re-examination report, the patent will either be maintained in its original form, maintained in an amended form or revoked. If the registrar orders to revoke the patent, the patentee may appeal to the court.

The third party who makes third party observations or requests re-examination may keep the identity confidential, by making such submissions via a registered Singapore patent agent.

Third party observations give the public an opportunity to notify IPOS of any information that might be relevant for assessing the patentability of the patent application at an early stage, without incurring cost of a formal revocation proceedings after grant. Re-examination process also allows patentees to evaluate and strengthen their patents through amendments. Overall, these amendments bring more certainty and robustness to the Singapore patent system.

If you have any questions, please contact Vivian Wei Cheng.

Source: GOWLING WLG-Vivian Wei Cheng

Editor: IPR Daily-Ann