Potential for more cost-effective options for challenging Singapore patents and applications

Date: 2017-08-14
Authors: Karen Bentley & Jacqui Young

The Intellectual Property Office of Singapore (IPOS) is proposing changes in an attempt to create a more robust patent system. At the heart of these changes is a goal to provide third parties with cost-effective options to challenge patents and applications in an effort to ensure only deserving patents are granted and remain granted. These measures may negate the need for expensive patent litigation, which was previously the only option for third party challenges to granted patents in Singapore.

Re-examination following patent grant

Ex parte post-grant re-examination is being proposed. This option would allow a third party, or indeed the patentee, to provide documents and submissions to IPOS that would prompt IPOS to re-examine a granted patent. While discretionary, re-examination requests will generally be allowed.

The patentee will be informed of any re-examination request made by a third party. The examiner will review the submissions and issue a Written Opinion.

  • If a negative report issues (ie the examiner determines there are grounds for objecting to the claims), the patentee will need to address the objections raised or the patent may be revoked.
  • A positive report (dismissal of the request) will require no further action from either party and cannot be appealed by the third party. The re-examination process, however, would not prevent the third party from challenging the patent on the same grounds in subsequent proceedings.

The proposed grounds for re-examination include all the grounds for examination, except for unity of invention. A re-examination request cannot be made while other proceedings are being heard on a patent.

IPOS is proposing to allow a third party re-examination request to effectively be anonymous, whereby the agent acting for the third party may file the re-examination request in the agent’s name only.

Third Party Observations on applications

This option has not formally been available in Singapore in the past, although in practice it has been exercised. IPOS is proposing to formalise the process to allow third parties to make submissions on any ground of examination against a patent application.

The examiner has the discretion to wholly or partially regard, or disregard, the third party observations. IPOS has taken the view, however, that clear and concise third party observations that are supported by prior art will be welcomed and of assistance to the examiner.

IPOS is now reviewing public submissions on these topics. We will watch for further developments and report on these in due course.