Proposed Changes to Grace Period Provision and Examination Procedure in Singapore
A Patents (Amendment) Bill was recently tabled at the Singapore Parliament. The Bill relates to revisions to the grace period provision and some aspects of patent examination procedure in Singapore. The Bill was read a second time by the Senior Minister of State for Law, Indranee Rajah SC on 28 February 2017. These changes are to introduce improvements to the patent system and to better support innovators.
Broadening of Grace Period Provisions
Section 14 of the Singapore Patents Act currently provides applicants with a grace period of 12 months prior to the date of filing of the patent application in Singapore for prior disclosures in limited situations. These situations are limited to disclosures due to a breach of confidence or disclosures made at a recognised international exhibition or to a learned society.
The Bill seeks to extend the circumstances under which disclosures, made prior to the filing of a patent application, are to be disregarded for the determination of the state of the art. The proposed amendments broaden the scope of Section 14 so that all disclosures by the inventor, or by a person who obtained the matter disclosed directly or indirectly from the inventor, will be disregarded if the disclosure had been made within the 12 month period immediately preceding the date of filing of the patent application in Singapore.
The broadening of the grace period provision is in line with the practices in the US, Canada, Korea and Australia and has similarities to the practice in Japan, where the grace period is just 6 months rather than 12 months.
The Senior Minister explained that the revisions update the legislation so that the patent regime can be more consistent with modern realities and practices. For example, (1) advances in communication technology have connected people across the globe in ways not previously envisaged and disclosures of technology occur in many situations not contemplated by the current Act; and (2) inventors may need to disclose their inventions to potential investors or share them online to reach out to a larger community of experts.
It should, however, be emphasised that inventors and businesses should keep their inventions secret until an application for a patent has been filed. This is because not all jurisdictions worldwide have a broad grace period and the requirements to be fulfilled also differ in different jurisdictions. Furthermore, a third party who performs in good faith an act that would constitute an infringement of the patent before the priority date of the patent (or, in good faith, makes effective and serious preparations to do such an act), may continue to do so under Section 71 of the Patents Act without infringing the patent.
Closure of the Foreign Route (via Supplementary Examination)
The Bill also relates to closure of the foreign route in Singapore (via the Supplementary Examination process). The closure of the foreign route is so as to improve the quality of patents granted in Singapore.
This closure is currently scheduled to take effect from 1 January 2020 (see our update of 22 August 2016). A commentary on the advantages and disadvantages of this closure is also provided here.
Procedural Amendments to Examination Routes
The Bill seeks to implement revisions to Section 29 of the Patents Act to allow for procedural improvements to the application process. The revisions are to allow applicants greater flexibility to switch tracks between the current foreign route (via Supplementary Examination) and local Substantive Examination route.
Finally, the amendments will allow the Patent Office to treat an application as abandoned if an applicant does not, after receiving a search report, request for an examination report within the prescribed time frame. These changes are to improve the operational efficiency of the Patent Office and to help facilitate the release of new ideas and technologies for the public’s use if the patent applicant is no longer interested in obtaining protection.
How do the proposed changes affect patent applicants?
The above changes are likely to benefit applicants as they will be able to rely on the broadened grace period provisions to file patent applications in the event of inadvertent prior disclosures. The revisions will also provide applicants more time and flexibility to switch track between substantive or supplementary examination routes.
To discuss these topics further please do not hesitate to contact our Singapore patents team.
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