Patenting of AI inventions is now expedited in Singapore

Date: 2019-07-11
Author: Desmond Tan

Substantial patent filing numbers in recent years for Artificial Intelligence (AI) inventions at the Intellectual Property Office of Singapore (IPOS) has led to the introduction of a Fast Track program that 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. The program is slated for a 2 year duration, or for the first 50 such requests. We believe further extensions are likely if IPOS sees a good take-up rate for the program.

Background

AI has been identified as one of the key catalysts and drivers as Singapore transforms to a digital economy. In recent years, Singapore has seen sizeable investment and resources directed to AI in diverse industries ranging from manufacturing, logistics to healthcare and professional services. Consequently, many AI start-ups have been set up in Singapore, and many multinationals have sought to set up AI-related businesses/partnerships in Singapore.

As part of the national thrust to complement Singapore’s shift towards a digital economy and to support innovative enterprises that are looking to bring their AI inventions faster to the global market, IPOS launched an AI Fast Track Initiative on 26 April 2019 to enable a faster-to-grant process for AI inventions that are first-filed in Singapore. The project is slated for a 2 year tenure or will cover the first 50 such requests (whichever comes first).  

Based on how IPOS has extended their fintech Fast Track Initiative after the 1 year pilot duration expired in view of a strong response from the market as detailed in a prior update, we believe that there will be further extensions if IPOS sees a good take-up rate for the program.

What is an AI invention?

According to IPOS, an AI invention can be broadly classified as involving machine learning, and is not limited to the following functional domains:

  • image recognition;
  • speech/voice recognition;
  • natural language processing; and
  • autonomous systems.

How does the AI 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 AI Fast Track Initiative, the following will need to be adhered to:

1. the invention should fall within the categories as indicated in the earlier 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 AI fast track initiative can also be found here.

How can foreign entities reap the benefits of the AI Fast Track Initiative?

Applicants from anywhere in the world are able to qualify for and utilize the AI 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. 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, where residence is a factor.     

How does the AI Fast Track Initiative assist in providing a competitive advantage?

The abbreviated period of as little as 7 months to obtain a granted patent compares very favourably to other jurisdictions. 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.

Broadly speaking, many AI inventions typically require machine learning involving large amounts of data sets or data models in order for the AI inventions to function in a desired manner. In situations where data sets or data models are not readily available, an extended period of time may be required for the machine learning to be carried out to a desired degree of accuracy. In these circumstances, an expedited grant may be critical in maintaining a competitive advantage. 

In addition, from an IP asset perspective, expedited grant of patents in the portfolio 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 may also increase, particularly in relation to enforcement and licensing options, and where combined with a divisional/continuation filing strategy. 

Conclusion

IPOS’ recent AI patenting initiative appears to offer a substantial upside for applicants, regardless of whether they 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.  

Please feel free to contact the author at desmond.tan@fpapatents.com.sg if you are interested in exploring this option further and would like more information.