As you may know, on and after February 14, 2014, the Singapore Patent Office (SIPO) will process patent applications according to either a self-assessment system, or a positive assessment system. Self-assessment will only apply to those Singapore patent applications1 filed before February 14, 2014. Positive assessment will apply to Singapore patent applications filed on or after February 14, 2014. Importantly, certain advantages pertain to self-assessment, but not to positive assessment, see below.
1. More opportunity to utilise final search and examination results of corresponding applications2
Many US and European patent applicants prefer to have their Singapore patent applications prosecuted according to the final search and examination results of a US or European patent application. While self -assessment and positive assessment provide for this, positive assessment requires that these results be submitted 6 months earlier than self-assessment3. Given above, there is good reason to proceed with self-assessment if the final search and examination results will not be available by the relevant positive assessment due date4.
2. Application to divisional applications
There is also good reason to file divisional applications from pending Singapore patent applications before February 14, 2014. Specifically, divisional applications filed before this time will also proceed under self -assessment, and the due date for filing final search and examination results will be calculated from the filing date of the divisional application. This means if block extension is requested at 39 months, the final search and examination results will not be required for another 5 years from the divisional application filing date. Therefore the strategy enables one to establish a later due date for filing final search and examination results, albeit a due date applying to the divisional application.
3. Minimise downstream prosecution costs
Self -assessment based on final search and examination results is expected to be less expensive than positive assessment based on the same results. This is because under self -assessment, a Singapore patent will grant without examination. In comparison, where the applicant relies on final search and examination results in positive assessment, a prosecution phase in the form of Supplementary examination must be initiated by filing a request for examination. A negative report from Supplementary examination would require a further prosecution phase in the form of a request for a review of the negative report. Ultimately, these prosecution phases, applicable only to positive assessment, are expected to add to the cost of processing of a Singapore application filed on or after February 14, 2014.
A further important change that comes into force on and after February 14, 2014 is the abolition of post grant search and examination. This form of post grant review is available under self-assessment, thereby enabling a patentee to request search and examination, for example to consider new prior art. On and after February 14, this form of post grant review will not be available to applications that granted under self -assessment. It follows that prior to February 14, 2014 is the time to address any concern regarding validity of pending Singapore patents, and you must request for post grant search and examination before this time.
1 These are Singapore Convention and non -Convention applications, Singapore PCT National phase applications and Singapore divisional applications.
2 Final search and examination results are the results pertaining to a prescribed corresponding foreign application that has proceeded to acceptance or a PCT application having a clear International Preliminary Examination Report.
3 The later due date applying to self-assessment arises from the self-assessment ‘slow prosecution track’, a prosecution track that is no longer available under positive assessment.
4 The positive assessment due date is 54 months from earliest claimed priority; self-assessment due date is 60 months from earliest claimed priority. For divisional applications the due date is calculated from the divisional application filing date.