For Singapore patent applications, it has been a common practice to make voluntary amendments in particular to the claims, at anytime before payment of the grant fee. The patent applications could proceed to grant even though the amendments were not searched and examined.
However, the above practice is no longer suitable in view of the amendments of the Singapore Patents Act which came into effect on 1 July 2004. For Singapore patent applications with filing dates on or after 1 July 2004, there is a requirement for each claim to be related to at least one examined claim. According to Section 2(3A) of the Singapore Patents Act, a claim is related to another claim if the 2 claims are identical; or each limitation in the second claim is identical to a limitation in the first claim; or differs from a limitation in the first claim only in expression but not in content; and more than one claim may be related to a single claim.
Therefore, if an applicant e.g. relies on an local Examination report, a local Search and Examination report or a corresponding International Preliminary Examination Report (IPRP) Chapter I or II for grant of a Singapore patent application, each claim in the application has to be related to at least one claim which has been examined and referred to in the relevant report relied on at the time of paying the grant fee. Similarly, the requirement for examined claims also applies if an applicant relies on prescribed information relating to a foreign corresponding application, e.g. a granted patent or a document setting out the final results of the search and examination as to substance. The new requirement thus imposes restrictions on the voluntary amendments that can be made to the claims of the applications before grant.
Even where no voluntary amendment is made, the new requirement for examined claims is still relevant. This is because there may be instances where not all of the claims are examined in the examination report relied on for grant, such an application would not satisfy the requirement for examined claims at grant stage.
In those circumstances, one option is to delete the unexamined claims. If, however, the unexamined claims are important and desired in the application, local examination may be requested so that the full set of claims would be examined in order to ensure that this new requirement is met.
As a requirement for grant, the presence of unexamined claims should result in refusal by the Singapore Patent Office to allow the application to proceed to grant. However, where applications are erroneously allowed to proceed to grant, presence of unexamined claims can still have severe consequences. More particular, the court or the Registrar may refuse to award damages, make an order for an account of profits or grant any other relief in proceedings for infringement if the alleged infringed claim is not related to any examined claims. Thus, it is important that applicants are aware of these consequences and proactively address this new requirement for examined claims.
In the event that an applicant only becomes aware of the existence or problem of unexamined claims after grant, the issue can be addressed by requesting for post grant search and examination of the unexamined claims. However, it is important to note that the request can not only be made by the applicant but also by third parties. Therefore, competitors are able to request for re-examination of the granted patent where the patent includes unexamined claims, causing the patentee to face the time and costs associated with the post grant search and examination procedures.
Again, this emphasises the importance that the applicants are aware of these consequences and proactively address this new requirement for examined claims at the time of paying the grant fee for Singapore patent applications.
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.