The Intellectual Property Office of Singapore (IPOS) has a new pilot program. Are recent delays at IPOS attributed to waiving the extension fees?

Current situation

The deadline to request examination in Singapore is 36 months from the earliest priority date of an application. Given that the Intellectual Property Office of Singapore (IPOS) has a statutory deadline to examine applications within 18 months of an issuance of a first written opinion, this often means that examination of a Singaporean application occurs before prosecution of the patent family has advanced in other jurisdictions. Unfortunately, IPOS has not been meeting this mandated time frame and this delay is detrimental to applicants.

While the delays by IPOS may be appreciated by applicants looking to delay examination of their Singaporean application or for those seeking a patent term extension, it is an undesirable situation for patent applicants seeking to rely on the findings of their Singapore patent application to fast track counterpart applications in other countries using for example, Patent Prosecution Highway (PPH) programs, the ASEAN Patent Examination Co-operation (ASPEC).

Will the delays be resolved?

IPOS recently shared with IP practitioners in Singapore, its existing approach and plans to resolve the current delays in the patent search and examination process. Their plans are broadly:

1. A simplified process to convert an examination request to a Patent Prosecution Highway (PPH) request

   Since September 2023, it has been possible to convert an examination request to a PPH request provided that a search/examination process has not started for the patent application in question. Otherwise, IPOS will issue the applicant with “an invitation to amend” (ITA) so that the applicant can submit the requisite PPH documents and, if necessary, amendments to align the claims with those that have been granted in a counterpart patent in accordance with the PPH request.

   This is a substantive change. Previously, the process to convert an examination request to a PPH request required withdrawal of the original examination request before submitting a PPH request, together with any necessary claim amendments. This would often also entail payment of extension fees if the PPH request was beyond the original examination request deadline.

2. Increased efficiency for search and examination process

   Examiners at IPOS can now issue an ITA in place of a written opinion if they identify only minor issues while assessing an application. It is now possible to avoid a written opinion if patent applicants respond favourably to the issuance of an ITA. Typically, an ITA is issued if only minor issues, for example, clarity, support, remain in a patent application, or if an examiner is able to provide suggestions to amend the application to overcome all objections. A shorter time limit of 2 months is provided to respond to an ITA (compared with 5 months to respond to a written opinion). This ensures that applications can be processed more expeditiously at IPOS.

3. Working towards issuance of a first written opinion within 10 months of a PPH request (unknown implementation date)

   Mandating such a timeline on IPOS would likely lead to the issuance of examination reports well within the statutory deadline of within 18 months of examination requests. This would likely require IPOS to rely more heavily on the assessment (by the counterpart patent office) of the counterpart granted patent of the PPH request in order to meet this 10 month deadline.

4. Mandating patent specification/abstract submissions be submitted in DOCX format (may be implemented early 2025)

   IPOS is following similar initiatives as at the US and European patent offices to require submission of patent specification/abstract submissions in DOCX format using structured templates. Consequently, patent specification/abstract submissions will be directly read and processed by a computer for both time and labour efficiencies at IPOS.

Latest pilot program to waive extension fees when requesting search and/or examination

On 19 August 2024, IPOS announced a pilot program through which applicants can seek an extension of 18 months to request search and/or examination or PPH without incurring any official extension fees. These fees were USD170/month, so this is a substantial saving for applicants.

In order to benefit from this pilot program, the statutory due date to file the request for examination (or the request for combined search and examination), must fall between 1 September 2024 and 31 August 2026 (inclusive). If an extension of time of less than 18 months was granted earlier whereby the statutory due date falls between 1 September 2024 and 31 August 2026, a request under the pilot program is still possible and will allow the remaining period to be extended at no cost, up to the maximum of 18 months.

How to make the best of IPOS’ plans and the pilot program

• If prosecution of a counterpart application has progressed favourably, convert an existing examination request to a PPH request.
• If there is a desire to slow down the Singapore application or to delay costs for the Singapore application, make use of the free 18 month extension of time.
• If possible, use DOCX documents for Singapore patent applications from the onset to avoid file conversion issues at a later juncture.