1 February 2017, Singapore. Significant developments in Singapore’s patents laws are expected to kick in soon in the near future. The key highlights are as follows:
- Expanding the scope of the 12-month Grace Period[i] for exempting novelty-destroying disclosures (implementation date: 30 October 2017);
- New statutory declaration (“SD”) requirement for the Grace Period, pre-grant and post-grant[ii];
- Closure of the Foreign Route, also known as the Supplementary Examination route (“SUP”) (implementation date: 1 January 2020); and
- Increasing the leeway for withdrawal of an initial examination (“EX”) request and filing a fresh EX request under another route.
What follows is a more in-depth comparison between the current and forthcoming positions.
- Expanding the scope of the 12-month Grace Period provision
Currently, applicants are given an opportunity to patent their invention even though it has been disclosed 12 months prior to the filing of the patent application. However, this applies only to three limited situations, namely, where the disclosure:
- occurred within 12 months prior to the filing date of the patent application in Singapore;
- occurred due to a breach of confidence; or
- was made at a recognised international exhibition or to a learned society.
In all other situations, the disclosure would result in a loss of the ability to obtain a patent in Singapore.
In addition, currently, a patent applicant who wishes for the disclosure of the invention at an international exhibition to qualify for the Grace Period is required to inform the Registrar of Patents on the same day of the patent application filing. He is also required to file a certificate issued by the authority responsible for the exhibition, stating that the invention was in fact exhibited there.
Upon implementation of the changes in law, all types of disclosure by the applicant will qualify for the Grace Period. The 12-month Grace Period under the new law will be given in all situations, and no longer only in three limited situations. In other words, where an invention has been publicly disclosed within 12 months prior to the patent application filing, Singapore patent rights can still be obtained. There will also no longer be a requirement to submit a certificate from the exhibition authority (for international exhibitions).
Below are several interesting observations by patent attorneys of jurisdictions that have similar Grace Period provisions as to how Grace Period has impacted businesses and patent applicants in their countries, how often it is relied on and what requirements, if any, are to be satisfied before relying on such Grace Period:
The Grace Period is a useful and important tool to protect an inventor’s right. The Grace Period has been particularly useful for universities, national research institutes and small businesses. It has also been useful for commercialised products having short lifetimes or requiring fast market release. In the above cases, the Grace Period has allowed earlier disclosure of inventions for the public or faster release of products (which may be helpful for technical innovation) without destroying the novelty element.
Since the Grace Period is relied on for relatively exceptional situations, it is not often invoked. Nonetheless, the number of patent applications relying on the Grace Period has been gradually increasing in Korea. Based on an Association Internationale pour la Protection de la Propriété Intellectuelle (“AIPPI”) article published in 2013, about 2-3% of patent applications of the entire patent applications filed in Korea in 2012 relied on the Grace Period, which statistics are in line with Mr Kim’s experience in his practice.
If a Korean application or a Patent Cooperation Treaty (“PCT”) application is filed within 12 months from a disclosure, there is no other specific requirement in Korea that needs to be complied. Further, the general Grace Period provision is applicable to all types of disclosures, be it made by an inventor or by a third party without the inventor’s permission. Procedurally, a request to apply the Grace Period must be submitted to the Korean Intellectual Property Office (“KIPO”). Under a recent revision of the Korean Patent Act (applicable to applications filed on or after July 29, 2015), an applicant has up to the close of prosecution to file a request to claim the Grace Period.
In Australia, a complete application must be filed within 12 months of a disclosure. This includes a PCT application designating Australia.
Given that there is no need to declare or provide a written statement that the applicant intends to rely on the Grace Period provision, he is unaware of any data indicating the extent of reliance of the Grace Period provision.
Grace Period is often relied upon especially by academic institutions (e.g. universities) where inventors may have inadvertently published before an assessment of the commercial importance of the technology is conducted.
It is my opinion that the Grace Period is very helpful for private inventors, professors and small to medium size companies who are not aware of the fact that most countries require you to first file and then disclose. In my experience, the Grace Period is only used when an inventor makes a mistake and discloses her/his invention prior to filing a patent application. I hope that one day all countries will recognize the Grace Period to help our small, not so well informed inventors.
The Grace Period provision is not about excuses, it’s about providing results.
2. New declaration requirement for the 12-month Grace Period
Applicants are to annex a statutory declaration (“SD”) in their patent application form when claiming any of the grounds in the broadened Grace Period prior to grant, in relation to any of the following purposes:
(a) a search and examination (“S&E”) request;
(b) an EX request;
(c) a review of an EX or S&E report request; and
(d) responding to a WO.
This ensures that applicants have the ability to claim the Grace Period pre-grant of the patent, while maintaining examination efficiency.
For international exhibitions, the SD has to state:
(i) that the invention was in fact exhibited at an international exhibition, and identify the invention; and
(ii) the opening date of the exhibition, and where the first disclosure of the invention did not take place on the opening date, the date of the first disclosure.
For all other circumstances, the SD has to set out all relevant facts why the pre-filing disclosure of the invention should be disregarded. Documentary evidence in support thereof must also be annexed.
Further, patentees can also claim grace under any of the grounds in the broadened Grace Period post-grant in proceedings before the Registrar and the Courts. The patentee has to produce evidence to the Registrar/Court to substantiate the ground being claimed.
This SD requirement will apply to both national patent applicants and applicants of an international patent application designating Singapore.
3. Closure of the Foreign / Supplementary Examination Route
In the spirit of work-sharing between prescribed offices and reduction of work duplication, the Singapore patent system allows patent applicants to rely on either:
- a foreign application – Examples include EX reports from USA, EPO (filed in the English Language), Canada (filed in the English Language), UK, Japan, Korea, Australia, New Zealand; or
- an international application – WIPO’s favourable International Preliminary Report on Patentability (“IPRP”) to apply for a Singapore patent application, with the condition that the application undergoes a Supplementary examination (“SUP”).
This explains the terminology in the labels “Foreign / Supplementary Route”.
Currently, the SUP is restricted to checking the corresponding granted patent for certain matters excluding the patentability of the invention’s claims. This seemingly workable solution therefore results in the Singapore patent examiners being constrained by the SUP provision in the Patents Rules, in that they are precluded from objecting to patents that do not fully comply with the Singapore Patents Act.
The Intellectual Property Office of Singapore (IPOS) is of the view that while the main concepts of novelty, inventiveness and industrial applicability of the subject matter appear to be similar, Singapore’s approach to patentability differs somewhat. Accordingly, this gives rise to the granted foreign corresponding patent being inconsistent with Singapore’s patentability framework.
Given that the Foreign Route tends to or has the effect of undermining the quality of patents granted by Singapore, this route will cease to be available when the new laws take effect on 1 January 2020.
4. More leeway for withdrawal
As it stands now, upon receipt of an unfavourable WO, an applicant may choose not to respond, withdraw that initial EX or S&E request and file a new request for SUP. He may, vice versa, withdraw that initial request for SUP and file a new EX or S&E request.
When these changes take effect, an applicant will have an additional chance to withdraw an initial EX request and file a fresh EX request under another route. This is possible even after the applicant has responded to an unfavourable WO, so long as the S&E / EX / SUP report (as the case may be) has yet to be issued.
The following is a quick glimpse of what these upcoming changes mean for businesses and applicants who are keen to take advantage of them and harness potential benefits in Singapore. We also highlight some issues worth paying attention to.
Pitfalls and Practicalities For Businesses & Patent Applicants
- Even if a pre-filing disclosure is exempted within the Grace Period in Singapore, the corresponding application in a foreign jurisdiction may be disqualified.
a. Not all jurisdictions worldwide have a similarly broad Grace Period. Other jurisdictions (e.g. European Patent Convention members) may have narrower Grace Periods, or no Grace Period at all.
b. Even in jurisdictions that do provide a broad Grace Period (e.g. USA, Australia, Korea), pre-filing disclosures will still need to comply with local requirements in order to be exempted. These requirements require further scrutiny to confirm applicability.
- Successfully relying on the Grace Period does not mean a right to stop third parties in Singapore. Whilst an applicant may have a pre-filing disclosure successfully exempted within the Grace Period, it does not stop third parties in Singapore[iii] from using their invention in good faith during the 12-month Grace Period, and before the priority date of the invention.
- Drafting the content for the required SD may prove tricky. It remains to be seen how thorough the description of the disclosure at the time of filing has to be. If the SD requires technical details to be disclosed, would it not jeopardise the patent applications abroad?
- The patent application process will be more efficient, more forgiving.
a. Dispensing with the need to obtain a certificate for disclosures at international exhibitions, will likely speed up the application process, giving applicants one less thing to worry about.
b. Inventors and applicants who may have disclosed the invention － either inadvertently or out of a necessity to source for funds － will nevertheless retain the ability to obtain patent rights, but only in Singapore and likely in those countries with Grace Period (e.g. USA, Australia, Korea).
c. Academics and researchers who have disclosed their invention in scientific or technical journal(s) prior to filing a patent will retain the ability to obtain patent rights, but likewise only in Singapore and in those countries with Grace Period, subject to fulfilment of local requirements.
d. Minors below the contracting age whose inventions have the potential to be patented and who have disclosed their inventions to manufacturers to obtain a prototype without signing a Non-Disclosure Agreement will similarly retain the ability to obtain patent rights in Singapore.
- Leverage on the SUP route while it remains available for applications filed before 1 January 2020. In particular, applicants should prepare to file:
- national applications, before 1 January 2020;
- international applications entering national phase, before 1 January 2020; and
- divisional applications having an initiation date, before 1 January 2020.
- Seek advice on patent filing strategies early. While an applicant has an additional chance to withdraw an initial EX request and re-file a fresh one to have the invention examined under a different route, even after responding to an unfavourable WO, the unfavourable WO is still a searchable document in the application process for all parties to view. It is uncertain, however, whether a new patent examiner would be assigned for the different route. Advice on patent filing strategies may play a significant role in securing the favourable EX or SUP report highly sought after by investors before money is being pumped in to finance the invention.
- Filing strategies to claim the benefit of Grace Period.
Korean patent attorney Mr Hun Shik Kim shared that since the Grace Periods and the requirements are different globally, applicants should establish a separate filing strategy and timeline for each country to claim the benefit of the Grace Period. Further, he proposed that an international harmonisation of law regarding the Grace Period would be desirable to more effectively guarantee the benefit of the Grace Period.
On the other hand, Australian patent attorney Dr Mathew Lucas shared his view that the Grace Period is not part of a filing strategy per se, but rather a “safety net”, should there be an inadvertent disclosure prior to filing. Nonetheless, he noted that countries such as the USA and Canada have Grace Period provisions, and such jurisdictions are commercially important to Australian applicants. Therefore, a common filing strategy for Grace Period cases is to file in key jurisdictions like Australia and the USA.
While Europe does not (as yet) have Grace Period provisions, a move for Singapore to adopt Grace Period provisions affords greater scope for Singapore applicants (such as universities and research institutes) to protect their inventions domestically. It also encourages foreign applicants to file in Singapore. This brings the law into better alignment with those of the USA, which is a commercially important jurisdiction for Singapore applicants (often more so than Europe).
Highlighted above are seven possible pitfalls and practicalities. We are of the view that patent applicants should generally avoid making disclosures that unwittingly destroy novelty of their inventions before patent filing. As far as possible, they should avoid relying on the Grace Period, which should be invoked as a measure of last resort.
Businesses should promptly seek out patent lawyers who have built up close ties and who engage in regular interactions with other foreign patent lawyers with a view to keep abreast of the requirements of international laws and regulations. They are hence better equipped to provide their clients with advice on suitable global filing strategies.
In the new year of 2017, may we look forward to more grace (no pun intended) being given to all earthly and patentable matters.
[iii] Section 71 of the Patents Act
This article has been peer reviewed by the IP Academy and a condensed version of it has been published on IP Academy’s blog at IPA Beacon on 3 February 2017. It is subsequently re-published in the official publication of the Law Society of Singapore, Law Gazette, March 2017 Issue.
Disclaimer: The opinions expressed in this article are the sole responsibility of the author and do not necessarily reflect any position or policy of Goh Phai Cheng LLC (“the firm”). While every effort has been made to ensure that the information contained in this article is correct, neither the author nor the firm can accept any responsibility for any errors, omissions or for any consequences resulting therefrom. This update is intended merely to highlight matters of interest in the field of Intellectual Property. All the links are last accessed on 1 February 2017. Should you require advice or information, please email the author Constanceleong@gohpc.com or call (65) 6610 4061.
Last updated: 19 October 2017