Revisions to the Grace Period Provisions and Closure of the Supplementary Examination Route
The following revisions to the Singapore Patents Act and Rules will come into effect on 30 October 2017. The revisions include changes to the grace period provisions and removal of the Supplementary Examination route.
Broadening of the Grace Period Provisions
The upcoming changes to the legislation will allow for a broadened grace period. Under the new legislation, all disclosures deriving from the inventor will be disregarded if the disclosure has been made within the 12 month period immediately preceding the filing date. The 12 month broadened grace period is calculated 12 months up to the date of filing (not the priority date) and applies to disclosures made after 30 October 2017.
Applicants seeking to rely on the grace period provisions may inform the Registrar when making:
- a request for search and examination;
- a request for examination;
- a response to the Written Opinion; and
- a request for a review of an examination report or a search and examination report.
The above request must be accompanied by written evidence in the form of a statutory declaration or affidavit.
Note: Singapore has prior user rights provisions and an inventor who has relied on grace period provisions to disregard a prior disclosure will not be able to stop a third party having prior user rights from infringing the patent.
Closure of the Supplementary Examination Route
Under the new law, the Supplementary Examination route will no longer be available for patent applications filed on or after 1 January 2020.
The phrase “filed on or after 1 January 2020” refers to National applications having a date of filing on or after 1 January 2020, International applications entering national phase having an international date of filing on or after 2020, and divisional applications having a lodgement date on or after 1 January 2020.
Patent applications filed before 1 January 2020 may continue to use the Supplementary Examination Route.
There are also changes to the Patent Act and Rules that provide greater flexibility for applicants to switch between Substantive Examination and Supplementary Examination routes (prior to the removal of the Supplementary Examination route in 2020).
Finally, there will be upcoming changes to the Examination Guidelines to clarify the distinction between inventions and discoveries in relation to products isolated from nature. The revised guidelines will be published on 30 October 2017. An update will be provided shortly when more information is available.
To discuss the above topics further, please contact our Singapore patents team.