Patents

What are Patents

 

The grant of a patent gives to its owner an exclusive right to make, use, import or sell a product, or an exclusive right to use a process, which is the subject of the patent. Full disclosure of the invention is to be provided in the patent documents so that the invention can be performed by “a person skilled in the art”. In exchange for such disclosure, the patentee secures a monopoly right to exploit the patent for a certain period of time.

 

Many companies are built on the basis of a portfolio of patents which they rely on to keep competitors “off his turf”. Companies would invest heavily in research and development to keep inventing and building its patent portfolio. Established companies may also be on the look-out for complementary inventions that they may acquire or license or enter into a joint-venture to jointly exploit the respective parties’ inventions.

 

Filing Requirements

 

To file a Singapore national patent application, the following will be required:

  1. Full name, address and particulars of incorporation or nationality of the Applicant,
  2. Specification containing clear description of the invention, accompanied by drawings or diagrams if appropriate, and claims which define the boundaries of protection sought,
  3. Abstract providing a summary of the key features of the invention,
  4. Where the Applicant is not the inventor, full name, address and nationality of each inventor and information as to how the Applicant derived right to the patent from the inventor,and
  5. Details of priority claim, if any.

 

Alternatively, it is possible to enter National Phase in Singapore of a PCT application, for which the following will be required:

  1. Details of the PCT application,
  2. If the PCT application was not filed in English, a copy of the specification in English together with the translator’s certificate,
  3. International Preliminary Report on Patentability or International Search Report,
  4. If amendments were lodged during the international phase, a copy of the specification incorporating all the amendment.

 

Note: Unless a patent application for the invention has been first- filed in another country by person resident outside of Singapore, it is an offence for a Singapore resident to file or cause to be filed outside of Singapore a patent application for an invention without first filing in Singapore, unless written authorization to do so has been given by the Registrar of Patents.

 

Process of Patent application

 

It would typically take 2 – 4 years for a Singapore national patent application to be granted after moving through the following stages:

  1. formalities examination,
  2. publication,
  3. substantive examination via
    1. request for search followed by request for examination,
    2. request for search and examination, or
    3. reliance on the final prosecution results from corresponding applications with the same priority from one of the prescribed countries – USA, UK, New Zealand, Australia, Europe (filed in English only), Canada (filed in English only), Japan or Korea,effecting amendments as may be appropriate; and
  4. request for grant of patent.

 

For inventions originating from other countries, the most cost-effective way to obtain patent protection in Singapore would be to use the PCT route and relying on the International Preliminary Report on Patentability (Chapter I or Chapter II) or the final prosecution results from corresponding applications with the same priority from any one of the prescribed countries – USA, UK, New Zealand, Australia, Europe (filed in English only), Canada (filed in English only), Japan or Korea,

 

Criteria for Registration

 

For an invention to be patentable in Singapore, it must

    1. be new – “novelty requirement”,
    2. involve an inventive step – “not obvious” to a person skilled in the art, and
    3. be capable of industrial application.

 

Novelty and obviousness are assessed against the “state of the art” as at the date of a patent application (or relevant priority date).  Because even the disclosures by the inventor himself may constitute part of the “state of the art”, it is critical to ensure that there is no disclosure of details of an invention, except under strict condition of confidentiality, before a patent application is filed. Where disclosure is inevitable, for example to a potential investor who would finance the filing of patent applications, a lawyer may be engaged to prepare an appropriate Non-Disclosure Agreement (NDA) and advise on steps that should be taken to safeguard the novelty of the invention before any disclosure is made.

 

Impending Change from Self-assessment system to Positive-grant system

 

Since 23 February 1995 when the new patent regime came into force in Singapore, we have had a self-assessment system whereby it is possible to request for grant of a patent even if the conditions for patentability are not satisfied.  Such a grant will of course can be revoked but until a third party seeks revocation of the patent, it would appear as a granted and subsisting patent on the Patent Register.  In the months ahead, significant amendments to our Patents Act will have the effect of changing the system to a positive-grant system. Should there be unresolved objections in a patent application, the Registry will eventually issue a notice of refusal and the Applicant will have a period in which to decide whether to file a divisional application. A patent grant can be obtained only where there are no unresolved objections and the Registry issues a notice of eligibility to proceed to grant.

 

Patents protection in various countries

 

Patent rights are territorial – a Singapore patent would grant rights over Singapore only and have no impact on activities in other countries. It is usually not adequate to secure a patent in only one country.  In most cases, after a patent application is filed in the home country, corresponding applications would be filed in other countries claiming the date of the first application in the home country, known as “a priority date claim”.  Similarly, it is possible for a national Singapore application to be filed with priority claims from applications filed in other countries. Alternatively, an International Application may be filed in Singapore under the Patent Co-operation Treaty (PCT), or for Singapore to be designated in a PCT application filed elsewhere.