The Intellectual Property Office of Singapore (“IPOS”) has announced certain changes to IP practices, as well as a general increase in official fees.  The pertinent changes, which took effect from 26 May 2022, are highlighted below:

 

 

Official fees

With the exception of design applications, which sees a reduction in fees from S$250 to S$200 per application, a general increase in official fees of between 10% to 15% will be applied across the various stages of patent application, including filing and annuities.

 

Patent

 

1.     Removal of request for publication and accompanying fees

Even if the international application was filed and published in a non-English language, applicants need not file a separate form to request for publication of English translation when entering the application into Singapore national phase. IPOS will publish the English translation filed with the national phase application within the prescribed period.

 

2.     Limitation of the number of figures accompanying abstract to up to two

If the application contains more than two drawings, applicants can only choose up to two drawings to accompany the abstract.

 

3.     Removal of the obligation to furnish prescribed documents in prescribed circumstances during the patent prosecution process

When making a request for incorporating the description by reference, filing missing parts or support for the declaration of a priority claim, applicants are no longer required to provide a copy of the earlier relevant application filed with IPOS.

When requesting examination based on IPOS’ search report, applicants no longer have to provide a copy of the report.

 

4.     Submission of sequence listing

If the patent application discloses a sequence, a sequence listing has to submitted at the time of filing to form part of the description of the application.

 

5.     Minor amendments during substantive examination

At the examination stage, if the examiner is of the view that minor amendments to the specification will make the application eligible for grant, e.g. wrong claim dependencies, the examiner may issue an “invitation to amend”. The applicant will then have two months to make those amendments.  If the amendments do not overcome the problems identified, the examiner will issue a Written Opinion according to the existing practice.

 

6.     Streamlining of the examination review process 

If a request for an examination review accompanies amendments to address all outstanding objections, the examiner would only assess the amended application.

 

7.     Restricting examination to the first invention

If an application contains two or more inventions, the examiner will only examine the first invention.

 

8.      File inspection available only via electronic system

Requests for file inspection may only be made by registered users of IPOS’ online platform.

 

9.     Removal of the requirement for Singapore address for service to seek Section 34 Security Clearance

A request for security clearance can now be requested without the need for a Singapore address for service.

 

 

Designs

 

1.     Clarification of processes as regards sets of articles and non-physical products

Design applications in respect of sets of articles and non-physical products may be registered.

 

2.     Filing of disclaimers

IPOS will allow a visual and/or text disclaimer as long as it is clearly and consistently represented and/or described.

 

3.     Reduction of period for reinstatement 

A request for reinstatement of an application or right must be filed within two months (previously six months) from the time it was deemed abandoned/withdrawn or ceased to have effect. 

 

Cross-IP that apply to patents

Other changes in process, which apply to the patent practice, include the following:

  • Proposed corrections relating to the name or other particulars of the applicant/owner and priority details may be published for opposition purposes.
  • Correction of a person’s name or other particulars should be requested via a requisite form only.
  • If an agent intends to cease to act on a party’s behalf, the agent should provide the party’s latest address and a statement that reasonable notice has been given to the party and that consequences have been explained to the party.
  • A copy of documents can now be served on the counter-party via IPOS’ online platform.
  • An assent or an order of the Court may be notified to IPOS via a written request. No form and fee will be required. For recordal of an order of Court, a copy of the order should be submitted. For recordal of an assent, the request is to be authorised by each personal representative of the deceased.
  • Patents and Designs Journals will be published on a weekly basis (from a monthly basis).

 

Launch of IPOS Digital Hub

IPOS will also be launching a new IP filing system, which will replace its existing e-services platform on 4 May 2022. 

These changes are intended to enhance operational efficiency and business-friendliness as innovators and businesses use IP to grow locally and globally.

 

FICPI’s view and involvement

FICPI uniquely combines education and advocacy on topics around patents and trade marks, with a focus on developing the professional excellence of its individual members. FICPI Forums, Congress, committees and meetings are opportunities to gather insights from the international IP attorney community on any issue, whether it be practice-related or topics of patent and trade mark law.

Next steps

 

 

 

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