Boo Yee Swan (Lee & Lee) – Singapore
Hi everyone, I’m Boo Yee Swan from the law firm Lee & Lee in Singapore. Lee & Lee is a full-service law firm, and we do have an IP department which is a medium-sized practice.
I’ll just talk about National Phase entries today, inSingapore.
The deadline is 30 months, and we have one extension which can be granted automatically for a period of up to 3 months. So you can choose to elect whether it’s one month, two months, or three months, but there is only
one extension which is automatic. So, you need to know exactly how many months you want to enter. A second extension or subsequent extensions are possible, but these will have to be lodged together with statutory declarations to setting out the grounds on why the extensions are required. For the first extension, extension fees are Singapore $200 per month requested. That works out to be about US $167 per month. The exchange rate now is about US $1 toSingapore $1.2.
Excess fees – When we are paying grant fees for up to 25 claims, it is Singapore $200, and for claims above 25, you will have to pay extra fees of $20 per claim.
Let me just talk a bit about the Singapore patent system and a few unique features of our system to give you some background, before we proceed. The Singapore system is slightly different from other jurisdictions. It is relatively new because our Patents Act only came into force in 1995. The government thus aims to avail applicants of more options to obtain grant in addition to the normal route of requesting search and examination. So you’ll
see later on as we go through the presentation that there are various routes to grant which applicants can actually choose.
It is also quite easy to obtain grant in Singapore. As long as the applicant actually elects a route to grant by the prescribed deadline, pays the grant fees, files the proper documentation, the Registrar will just grant the patent,
regardless of whether your examination report is favourable, or whether it actually contains matters waiting to be resolved, or it is negative. Once you actually elect a route to grant and pay the grant fees, the Registry will just
issue the grant. This is because the Singapore patent system is a self-examining one, therefore it places the onus of obtaining the best possible patent protection on the applicant. Hence, if you do not actually amend your
patent application or ensure that it’s properly worded, then the patent could then be subject to revocation post grant. For your information, in Singapore, we do not have any pre-grant opposition proceedings available.
The other unique feature about the Singapore patent system is that we have a 2-track system of obtaining grant. There is a fast track and a slow track. People may think that by choosing the slow track you are actually slowing down the patent application process, but that is really not the case. Choosing the slow track simply gives you a bit more time to consider your options before you elect a route to grant. So, for example, if you feel at that point in time, maybe immediately after entering National Phase, that you already have the proper documentation to elect a certain route to grant and you proceed to pay the grant fees, then even though you have actually selected the slow track, your patent application will still be processed by the Registry quite soon after, and you will then obtain a
certificate of grant. Hence, the slow track basically just gives you more time to consider options.
Let’s talk about the fast track first and the routes to grant which are under the fast track. By default, a Singapore
application will proceed via the fast track. So if you don’t take any particular action, then it will just proceed by the fast track. Under the fast track, the applicant must elect a route to grant by 42 months from the priority date. What are these routes to grant? There are two under the fast track. One is that you can elect to file a Notice of Intention to rely on the International Preliminary Report on Patentability (IPRP). This is quite a popular route which is chosen by many applicants. It’s usually chosen if the applicant wishes to secure grant based on claims which have been examined and referred to in the IPRP. No official fees are payable for this route.
The second route is to rely on the acceptance or grant of a corresponding application, what we refer to as filing “prescribed information relating to a corresponding application”. For this route, there are also no official fees
payable. The applicant usually chooses this route if he wishes to secure grant based on claims which have been examined and referred to in the corresponding application.
What then would you consider to be a “corresponding application”? Under our Act, a “corresponding application” is one which is filed with one of the following patent offices: U.K., U.S.A., Australia, New Zealand, Japan, Korea,
as well as Canada (but only those filed in English), and the EPO (but also only those filed in English).
What do we mean by “prescribed information”? The applicant must file a certified copy of the patent grant of the corresponding application that you’re relying on, or if it’s not been granted yet, then other documents which set out the final results of search and examination as to substance of that corresponding application, plus a copy of the patent claims referred to in the final results. (If these are not in English, then we need to lodge verified English
translations). We will also need to file the IPC symbols which have been allocated to the application, or, if they have not yet been allocated, then the IPC symbols which, in the applicant’s opinion, should be allocated.
Let’s go on to the slow track. To transfer to the slow track, the applicant must file a request for block extensions of time by the deadline of 39 months from the priority date. This deadline is quite important because it’s non-extendible. No official fees are payable. However, you have to distinguish this from the Convention national applications – no official fees are payable only for PCT national phase entries, not for national applications filed under the Paris Convention. If it’s a regular Convention national application in Singapore, then the official fees for transferring to the slow track can be quite hefty (which is $1800 right now). Once you’ve transferred the application to the slow track, the deadline for electing a route to grant would be extended to 60 months from the priority date. For applicants who have chosen to rely on a corresponding application, transferring to the slow track may be quite useful, because sometimes you may not get grant of your corresponding application by 42 months. So, if you do not transfer to the slow track and you face a deadline of 42 months, and if you do not obtain grant of your corresponding application by then and you do not want to rely on the IPRP, then you will have to start paying extension fees from the 42nd month. So, transferring to the slow track gives applicants the option of buying more time while you await the results of your corresponding applications. Some applicants may have filed corresponding applications in the USA., or UK, EPO, for example, and we have had the experience that many times, some of
these applications do not proceed to grant by 42 months, and we are not able to rely on them by the 42–month deadline.
So, we always encourage our clients to elect the slow track, because you really have nothing to lose – no official fees payable, and it gives you more time; and if it happens that your corresponding application is allowed well before
the prescribed deadline, you can still go ahead and elect a route to grant, file the proper documentation, pay the grant fees, and the Registry will just process your application ASAP.
For the routes to grant under the slow track, apart from relying on the IPRP, or a corresponding application, you have one more choice which is to request search and examination; or to request examination plus a copy of your International Search Report; or you can request examination plus a copy of the Search Report of your corresponding application, if your corresponding application has not yet proceeded to grant. This must however be filed by the 39th month, so together with the transfer to the slow track, we will have to file the request for search and examination, or the request for examination.
In Singapore, software and business methods are not excluded matter from being patentable, so as long as your invention is able to fulfil the requirements of patentability – of novelty, non-obviousness, and industrial applicability – then a patent can be granted.
We have no disclosure requirements.
I can’t think of any particular industry that we are really relevant for, so I guess all products.
