The success of the pilot project for the FINTECH fast track initiative at the Intellectual Property Office of Singapore (IPOS) has led to an extension of the program until 25 April 2020. The program provides applicants with an abbreviated prosecution timeline until grant, and can be used as part of a strategy to obtain granted patents in several jurisdictions in an expedited manner. We believe that there will be further extensions beyond 25 April 2020 if IPOS sees a good take-up rate for the program.
In recent years, Singapore has taken a number of significant steps to position itself as a hub for the FINTECH industry. Consequently, many FINTECH start-ups have been set up in Singapore, and many multinationals have also set up FINTECH-related businesses in Singapore.
As part of the national thrust towards being a hub for the FINTECH industry, the Intellectual Property Office of Singapore (IPOS) launched a FINTECH fast track initiative on 26 April 2018 as a one year long pilot project to enable a faster-to-grant process for FINTECH inventions that are first-filed in Singapore. During the course of the pilot project, there were some applications processed under the project which attained grant within seven months of filing the application in Singapore. Given the strong response from the market (as indicated by IPOS during closed-door stakeholder engagement sessions) during the duration of the pilot project, IPOS has recently announced that the FINTECH fast track initiative will be extended for one more year until 25 April 2020, although this date can still be extended further.
What is a Fintech invention?
According to IPOS, a FINTECH invention can be broadly classified as involving, and is not limited to:
How does the Fintech Fast Track Initiative operate?
Participation in the FINTECH fast track initiative does not require payment of any additional official fees at IPOS. In order to qualify for the FINTECH fast track initiative, the following will need to be adhered to:
1. The invention should fall within the categories as indicated in the above section;
2. The application will need to be first-filed in Singapore;
3. A request for combined search-and-examination will need to be submitted on the date of filing;
4. The application will need to contain 20 or fewer claims; and
5. The applicant will be imposed with shorter than normal timelines when responding to correspondence from IPOS.
A process flow for the FINTECH fast track initiative can also be found here.
How can foreign entities reap the benefits of the Fintech Fast Track Initiative?
Applicants from anywhere in the world are able to qualify for and utilize the FINTECH fast track initiative, as long as they take the requisite steps to ensure that the laws in their respective countries are not contravened. For example, applicants from some countries should obtain foreign filing licenses so as to be able to first-file their patents in Singapore, and multinational corporations could increase their R&D capability in Singapore. In some cases this could include providing job secondments to ensure that the invention is conceived at the premises of their Singaporean subsidiary to avoid a need to obtain the foreign filing licenses, and so forth.
How does the Fintech Fast Track Initiative assist in providing a competitive advantage?
The abbreviated period of as little as seven months to obtain a granted patent is almost unprecedented, and it appears that only Korea has a similar expedited program for FINTECH inventions. In addition, IPOS is part of the Global Patent Prosecution Highway (GPPH) network, and also participates in Patent Prosecution Highway initiatives (PPH’s) with Europe, China and Mexico. Consequently, use of the GPPH or PPH initiatives based on the expedited grant of the Singapore patent could also lead to expedited grant of patents in certain participating countries.
Many FINTECH inventions are relatively easy to replicate when coders are given adequate time to conceive alternative coding solutions. Thus, an expedited grant may be critical in maintaining a competitive advantage. In addition, from an IP asset perspective, the expedited grant may be a business exit strategy as it could lead to an increase in the value of the patent portfolio held by the patentee and hence the patentee itself. From a legal perspective, the legal options available to the patentee also increase, particularly in relation to enforcement and licensing options.
We believe that there is a substantial upside for applicants, regardless of whether the applicants are start-ups or multinational corporations. While there is a greater time pressure on applicants to respond to objections (both formal and substantive) raised by IPOS, the expedited grant procedure provides clear benefits to patentees not only within Singapore, but also potentially in many other countries.
Would you like further information?
Please feel free to contact the author at firstname.lastname@example.org if you are interested in exploring this option further and would like more information.