The Singapore Patents Act was amended on 1 July 2004. The amendments have brought about various changes to the search and examination options available to applicants using the PCT route. The search and examination options available for pre- and post-1 July 2004 cases are briefly outlined below.
PCT applications with a filing date before 1 July 2004
For Chapter I applications, applicants can either request combined search and examination or request examination based on the International Search Report (ISR). The respective deadlines for these options are 28 and 32 months from the earliest priority date (or international filing date if the benefit of an earlier priority date is not claimed). Extensions of time for both of these deadlines are available. Where applicants want to request combined search and examination, an extension is commonly required as many applicants wait until the 30 month stage to initiate national phase entry by which time the 28 month deadline has passed.
A request for combined search and examination is normally not pursued in view of the higher official fees associated with this option as compared with requesting examination based on the ISR. However, a combined search and examination may be desirable if the applicant has yet to receive the ISR or where the ISR is only partial and only some of the claims have been searched, for instance, as a result of a lack of unity objection.
For Chapter II applications, search and examination in the national phase does not have to be requested. Grant will occur automatically on payment of the grant fee, regardless of the validity of the claims and whether all of the claims have been searched and examined in the international phase.
Whilst search or examination of Chapter II applications in Singapore does not have to be requested, applicants may nevertheless want to do so. For example, if the International Preliminary Examining Authority gave a negative or incomplete view on the patentability of the claims, the applicant may want to request examination with a view to obtaining a positive or more complete examination report on file. The deadline for requesting search and examination of Chapter II cases is the same as that for Chapter I cases (i.e. 28 months from the earliest priority/filing date).
PCT applications with a filing date on or after 1 July 2004
There is no distinction between Chapter I and Chapter II applications filed on or after 1 July 2004. The same search and examination options are available for both types of application. The options are:
- request examination based on the ISR;
- request examination based on a search report of a corresponding application (a corresponding application being an application that is linked to the Singapore application by a priority claim and that has been filed in or in respect of Australia, Canada (if filed in English), Japan, New Zealand, the United Kingdom, the USA and the European Patent Office (if filed in English));
- request combined search and examination;
- furnish prescribed information in respect of a corresponding application showing the final results of the search and examination as to substance; and
- rely on an International Preliminary Report on Patentability issued in respect of the international application.
The deadline for adopting options (1) – (3) is 21 months and the deadline for options (4) - (5) is 42 months from the earliest priority/filing date. All of these deadlines can be extended by 18 months by filing a request for a "block extension" before 39 months from the earliest priority/filing date. However, the official fee for filing such a "block extension" request is high. In view of this, applicants having the intention to adopt one of options (1) – (3) may want to seek early national phase entry to meet the 21-month deadline.
As an alternative to requesting a block extension, it may be more cost-effective to file a divisional application as the official fees would be less than those incurred via the block extension route. Moreover, filing a divisional application would provide applicants with an even greater postponement of the search/examination deadlines.
In conclusion, the amendments to the Patents Act provide applicants with greater flexibility to meet their specific needs and preferences. However, whilst the new provisions may provide applicants with greater flexibility, applicants may need to take appropriate steps to ensure that their applications are prosecuted in the most cost effective manner possible.
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.