Singapore: Proposed Practice Changes for PCT National Phase Entry Applications in Singapore

The Intellectual Property Office Of Singapore has recently issued a consultation paper which proposed a "PCT National Phase Track" for national phase entry applications in Singapore. The proposed "PCT National Phase Track" entails revisions to existing search and examination timelines and grant fee deadlines for such patent applications.

Under the current procedures for search and examination of national phase entry applications in Singapore, there are two possible routes of examination, namely the "default fast track route" and the "optional slow track route'.

The "default fast track route" consists of the following Options:

The "optional slow track route" consists of essentially the same options as the fast track route except that the deadlines prescribed in the slow track route are extended by 18 months as outlined below:

The "prescribed information" above refers to details of the final search and examination results or grant details of a corresponding application.

The "corresponding application" is a patent application filed in respect of any one of Australia, Canada (in respect of applications for a Canadian patent filed in the English language), Japan, New Zealand, the United Kingdom, the United States of America, the European Patent Office (in respect of applications for a European patent filed in the English language) and a PCT application, and which is linked to the Singapore application by way of a priority claim or forms the basis for the priority claim.

In order to proceed under the slow track route, an application to invoke the route must be filed by 39 months from the priority date, which incurs an official fee of SGD1,800 (~USD 1150 at the time of writing).

The existing search and examination procedures therefore incur high costs associated with invoking the slow track route. Furthermore, the non-availability of local search and examination options under the default fast track route at the time of national phase entry is somewhat impractical because national phase entry applications are usually filed shortly before, or at, 30 months from the priority date. With the exception of Option 3, most of the deadlines in the Options under the fast track route would have expired. By this time ideally, Option 3 is a logical option to adopt since the IPRP I/II would be available and can be relied on to proceed to grant. However, in most cases the IPRP will have outstanding objections or have unexamined claims, thereby forcing the patentee to request local search and examination (Options 1 and 2) to have an opportunity to deal with these issues. Importantly, one of the requirements for grant of a patent is that all claims must have been examined.

As an alternative to relying on the IPRP in Option 3, the applicant can also furnish prescribed information of corresponding applications. However, the prescribed information may not be available by 42 months from the priority date. Furthermore, the granted claims of the corresponding application may not be related to each of the claims of the Singapore application, thereby resulting in unexamined claims at the time of grant.

Although an extremely early national phase entry can be effected to meet the deadlines of Options 1 and 2 of the fast track route, such an approach is not practical as a decision to enter the national phase in Singapore would usually not be made before 21 months from the earliest priority date.

Accordingly, the slow track route may sometimes be inevitable and patentees may find it frustrating to bear the cost associated with the slow track route since local search and examination under the fast track route are effectively unavailable to them at the time of national phase entry for reasons that are not within their control.

The proposed PCT National Phase Track applies only to national phase entry applications and not to direct filings in Singapore. The proposed track consists of the following Options:

Consequently, in light of the above changes, the deadline to pay the grant fee is fixed at 60 months from priority date.

Accordingly, for national phase entry applications, there is no longer any distinction between the fast track route or the slow track route. Instead these applications will enjoy an exclusive route of their own, that is, the PCT national phase track route.

The proposed PCT national phase track is targeted to come into effect on 1 October 2006.

Transitional provisions have also been proposed in the Consultation Paper as follows.

The 60 month grant fee deadline would be applicable for applications in which the 42 month deadline does not expire as of 1 October 2006 and the grant fee has not been paid.

For cases in which the 39 or 42 month deadline have expired as of 1 October 2006 and the requirements of Options 7, 8 or 9 have not been complied with, it is possible to extend the deadlines under Options 7, 8 or 9 to on or after 1 October 2006 to proceed by any one of these Options.

Assuming the proposed "PCT National Phase Track" route comes into force, the current problems outlined above faced by Singapore PCT national phase Applicants under the existing search and examination procedures may be avoided. More importantly, under the "PCT National Phase Track" route, these applications will not be unduly subjected to the high cost associated with invoking the slow track route.

For existing cases which qualify for the proposed "PCT National Phase Track" route, the changes would also mean more time to await issuance of the ISR or search report of corresponding application when relying on the relevant search report to request examination, and more time to await issuance of prescribed information relating to corresponding applications when relying on such information to obtain grant of the application.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.