Under the Singapore Patents Act as applicable to international patent applications entering into the Singapore National Phase via PCT Chapter II with international filing dates before 1 July 2004, a patent application may proceed to grant provided that the Patent Office receives a copy of the International Preliminary Examination Report (IPER).
In relation to international patent applications, mere issuance of an IPER does not guarantee that an application is patentable. Some examples of such circumstances are cited below.
In some cases, a deficient or incomplete IPER may be issued on the basis of non-establishment of an International Search Report. It is understood that an International Search Report may not be established for applications that deal with, for example, methods of doing business. In other words, an international application may be issued with an IPER even without its claims searched and examined.
Another example of an IPER for an application that may not be patentable will be an established IPER containing outstanding objections with regards to, for example, unity of invention.
For an international application entering the Singapore National Phase via PCT Chapter II relying on an IPER such as those mentioned above, according to the wording of the law, upon receipt of the IPER by the Patent Office, the application may proceed to grant. Subsequent grant of the patent is regardless of whether there are any outstanding objections or issues in the IPER. It is clear that such patents may not be valid and may be challenged in later proceedings.
The Singapore Patents Act has since been amended such that, as applicable for international applications entering the Singapore National Phase via PCT Chapter II with international filing dates on or after 1 July 2004, each claim of an application must be related to at least one claim which has been examined and referred to in the international preliminary report on patentability (IPRP). The amended Singapore Patents Act also requires the IPRP not contain existing Unity of Invention objections, in order for an application to proceed to grant.
However, while the Singapore Patents Act has been amended to remove the ambiguity in the law regarding valid granted patents for international applications entering the Singapore National Phase via PCT Chapter II with international filing dates on or after 1 July 2004, there are numerous pending cases with international filing dates before 1 July 2004 and relying on deficient or incomplete IPERs. These international applications may have either entered into the Singapore or in the process of entering into the Singapore.
Measures are recommended for these international applications in order to ensure that subsequent granted patents may be valid, rather than being faced with invalidity issues that may arise from mere reliance on deficient or incomplete IPERs.
There are some measures which may be taken for such applications with international filing dates before 1 July 2004 entering the Singapore National Phase via PCT Chapter II, namely, requesting for local search and examination, filing divisional applications, or requesting post-grant search and examination.
For an application or divisional application requesting local search and examination, an obvious advantage will be ensuring that the application is at least examined. Objections during local examination may be overcome by filing arguments, amendment or deletion of objected material as well as filing of divisional applications. A request for a local search and examination may thus increase the likelihood of obtaining a valid patent in Singapore compared to a patent containing unexamined claims.
For granted patents relying on deficient or incomplete IPERs, post-grant search and examination may be requested. A Written Opinion, if issued, will allow the patentee to put on record written submissions or carry out allowable and validating post grant amendments to the patent.
In view of the above, requesting for search and examination, either before or after grant of a patent application that has an international filing date before 1 July 2004 and, which is based on an incomplete or deficient IPER, may result in a stronger patent even though the law provides for grant of such a patent upon only mere receipt of an IPER for 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.