Overview of the Amendments to the Singapore Patents Act, the Patents Rules in Conjunction with PCT Regulation Changes at the International Level

Singapore, having deposited its instrument of accession to the Patent Co-operation Treaty with WIPO on 23 November 1994, will witness some radical changes to its patent laws come 1 April 2007. As with the last major revision to the Act in July 2004, the 1 April 2007 amendments are of considerable epic proportions, challenging some of the ‘traditional’ patent tenets we have been holding to date. The shake up is necessary to align our patent system with two significant changes to PCT regulations, also effective 1 April 2007. The PCT amendments, are in turn, engendered by the desire to bring the treaty in line with the Patent Law Treaty (PLT).As one may be aware, the two fundamental changes at the international level encompass the following in brief:-

Ability to request restoration of priority claim if international application was filed after the 12 month priority period; andAbility to incorporate material into the PCT filing that were not initially included in the filing of the international application provided the material has been previously disclosed in the priority documents.

In a nutshell, varying by the Receiving Office and countries where national phase is entered, filing after the end of the priority year (12 months deadline) may be allowed and the priority claim restored if the applicant makes a request of the Receiving Office and makes a showing that the delay in filing the application was either unintentional or in spite of due care. Each receiving office may determine the standard they will be applying in deciding whether the priority claim is to be restored. Such a request must be made within 2 months of the missed priority deadline. Any priority claim in an international application up to 14 months before the filing date of the international application will remain in the application and will serve as the basis for calculation of all PCT time limits during the international phase, regardless of whether the Receiving Office restores the priority claim or not. If the Receiving Office refuses to restore a priority claim, the applicant may take up the issue with the Designated Offices upon the National Phase.

Singapore has initially informed WIPO that the above changes were incompatible with the national laws and thus entered itself as a party of reservations to the amendments in both the capacities as a Receiving Office and Designated Office. These so called reservations will be eventually removed as member states with reservations such as Singapore, morph their national laws to allow compliance with the new PCT rules. On 7 March 2007, the Intellectual Property Office of Singapore (IPOS) announced that it would attempt to meet all the obligations under the new PCT rulings, with the exception of a single reservation on 1 April 2007.

Education of the new related changes were quickly actuated in earnest. In addition, IPOS also took into account the feedback of the patent industry gathered over the last few years and implemented them as improvements wherever possible. Simplification of prosecution processes resulted, much to the benefit of the people supporting the trade. We now present an overview of the more salient April 2007 amendments to Singapore patent laws for your understanding.

Changes to the laws concerning priority claims at the Designated Office

The PCT changes would seem logical to affect the handling of international applications but the Singapore Registry deemed it just to extend the changes to domestic applications. Domestic applications or ‘direct filing’ applications are applications that enter Singapore by way of the Paris Convention or non-conventional filings. In fact this is the epicenter of the changes. A breakdown of the changes can be evinced as under:-

Late declaration of priority under Section 17 i.e. restoration of right of priority;Treatment of description not included in application as filed, i.e. incorporation by reference of description; andTreatment of parts missing from the specification as filed, i.e. incorporation by reference of missing parts

For domestic applications, applicants who wish to file a patent application in Singapore will be advised by their local agents that any declaration of priority must be made within the same day of filing the application in suit (Rule 9 of the Singapore Patents Rules). Also, the date of filing the application in suit must not be later than 12 months after the date of filing of the declared priority application (Section 17 of the Singapore Patents Act). Currently, if the declaration is not made within the day of filing the application, no claim to priority will be entertained by the Singapore Patents Registry.

All these laws will still remain relevant after 1 April 2007, albeit with the sweeping changes mentioned, a lifeline will now be cast to applicants who fail to declare their priorities on the date of filing. This lifeline is a second chance known as new Rule 9(2). A declaration claiming priority under Section 17 can be made under new Rule 9(2) after the date of filing, if and only if the declaration causes the application in suit which had no declared priority date previously, to now own a declared earliest priority date; or in the case where the application already carries a priority date, to now own an earlier priority date. The takeaway is that before 1 April 2007, such a declaration is indeed not possible when Rule 9(2) was not in existence.

The local agent on behalf of such aggrieved applicants will have to effect the declaration on a prescribed form within 16 months from the earliest declared priority date. The reasoning similarly applies to cases whereby clerical errors have been made to the date of a priority application.

What happens in cases where the application in suit is filed later than 12 months from the declared priority date? Before the new changes effective from 1 April 2007, there were no safety net provisions for these events and no claims of priority to earlier applications were allowed. On or after 1 April 2007, a request may now be made under new Section 17(2B) for permission from the Singapore Patents Registry to file the application in suit later than 12 months (but no later than 14 months) from the earliest declared priority date. Such a request may be drawn up by the local registered patent agent on a prescribed form within 14 months from the earliest priority date. If the said case is a PCT national phase application, the request must be submitted within 1 month from the date of national phase entry. The application must not have been published, palpably unless it is a PCT national phase application. Singapore, acting in the capacity as the Designated Office, has graciously accepted both the two international standards mentioned in paragraph 3 i.e. delay in filing the application was either unintentional or in spite of due care required by the circumstances having been taken.

Description Incorporated by Reference to Priority Application

On a different note now, under current section 26(1), to be able to file an application in Singapore, one of the pre-requisites to be satisfied before the patent office is that the specification document submitted must contain a description. No date of filing will be accorded if the specification submitted does not contain a description. In line with the new PCT level changes however, under new Section 26(1)(c)(ii), an applicant can as a substitute for the description, file documents containing

A reference to an earlier application declared in accordance with section 17(2);The date of filing of the earlier application and the country it was filed in [new section 26(1)(c)(ii)(B) & new rule 26(1)]A statement that the description is incorporated in the application by reference to, and is completely contained in, the earlier application, as filed [new section 26(1)(c)(ii)(C)]

Please be aware that the mere statement of incorporation by reference of the description does not exempt the need to file drawings, if any. If no drawings are filed on the date of filing of the application in suit, any drawings filed later may be treated as a part missing from the application.

In order to complete this process, one must be aware that the failure to file the following documents required under new section 26(7) within 3 months from the date of filing [new rule 26(3)] will result in the application being treated as having been abandoned [new section 26(12)]:

A written notice confirming that the description in incorporated in the application by reference to, and is completely contained in, the earlier application, as filed [new section 26(7)(a)];The description [new section 26(7)(b)];A copy of the earlier application and its English translation, if any [new section 26(7)(c) & rule 26(4)]; andPrescribed Patents Form [new section 26(7)(c) & rules 26(4)]

Drawing or Part of Description Incorporated by Reference to Priority Application.

In Singapore, the definition of a missing part is defined in Section 2(1) as: “missing part”, in relation to an application for a patent, means –

(a) any drawing; or

(b) any part of the description of the invention for which the patent is sought, which was missing from the application at the date of filing of the application.

For the purposes of Section 2(1), claims are not considered as a part of the application.

For applications filed before 1 April 2007, a drawing or part of the description missing from the application can be filed with the unfortunate sentence that the date of filing of the application is changed to the lodgement date of the missing part, a situation which could be deleterious to the interests of applicants. This where the beauty of the 1 April changes comes in again. The Registry will now entertain applicants who feel that the filing date should not be changed to the later date of lodgement of the missing parts as long the applicant makes a request under either new Section 26(9)(b)(i) or 28(9)(b)(i) for the date of filing to remain status quo. To qualify for consideration under such circumstances, there are two deadlines to abide by in respect of the two prescribed periods

To file the missing part within 3 months from the date of filing the application, andTo lodge the request to retain the original filing date before the Registry also within 3 months from date of filing.

The Singapore Patent regime is to be lauded in overcoming the initial reservations on the incompatibilities between the national laws and the PCT regulations. As we support our Registry in the promotion of the knowledge of these changes, which admittedly can baffle the untrained mind, we hope that this succinct article can ameliorate your understanding of the imminent changes in the Singapore patent landscape. Please feel free to contact our agency in the event should you require more information. The changes in the Patent Co-operation Treaty are indubitably, enhancements to spur technological advancement through the workings of the relevant laws and regulations. And we working in concert with the Intellectual Property Office of Singapore, hope to be a part of these exciting changes which will consequentially benefit the likes of you, the applicants.