4 Nov
2020

Patents in Asia 2020: Singapore

Davies Collison Cave

In recent decades, Singapore has established itself as a regional leader in IP protection. Its success is marked by the former head of the IP Office of Singapore (IPOS), Daren Tang, being appointed WIPO director general, having already led IPOS to become an international examining authority.

IPOS is one of the fastest examining IP offices around the world, with various programmes that can achieve grant within six to 12 months of filing in Singapore. Moreover, Singapore has recently moved away from allowing applicants to simply rely on allowed claims of foreign applications and instead introduced a system in which all applications are substantively examined under local law.

As a result, applicants filing in Singapore can obtain granted rights quickly and with considerable confidence that these are strong and enforceable.

How do you get a patent in Singapore?

Types of protection and eligibility criteria

Types of application

There is one type of patent application in Singapore, with no provisional patent applications, petty patents or utility models.

A patent application may be filed as:

  • a direct application, with or without a priority claim under the Paris Convention;
  • a national phase entry of a Patent Cooperation Treaty (PCT) application; or
  • a divisional application of a pending Singapore application.

Eligible inventions

For an invention to be patentable it must be novel, inventive and industrially applicable.

The prior art base for novelty and inventive step includes all matter published anywhere in the world before the priority date. Additionally, Singapore applications that were filed before, but published after, the priority date may be relevant prior art for the assessment of novelty.

A disclosure by the inventor that occurred within 12 months of the filing date may be disregarded for the purposes of assessing novelty.

Methods of medical treatment and diagnosis cannot be protected. In addition, the Singapore Patents Act prohibits the protection of inventions the publication or exploitation of which would be generally expected to encourage offensive, immoral or antisocial behaviour.

IPOS provides a list of examples of inventions to which it will object on patentable subject matter grounds, namely:

  • discoveries;
  • scientific theories and mathematical methods;
  • aesthetic creations;
  • schemes, rules or methods for performing a mental act, playing a game or doing business;
  • the presentation of information; and
  • isolated products from nature.

Application process and costs

Costs

A Singapore patent application generally costs between S$4,000 and S$7,000 from filing through to grant (excluding drafting charges). Therefore, it is cost effective.

Filing

The usual 12-month Paris Convention deadline applies, and the national phase deadline is 30 months from the earliest priority date. The national phase deadline is extendable by up to 18 months as of right, upon payment of extension fees.

The filing process involves filing particular forms setting out the bibliographic details of the application, together with a copy of the specification – except where that specification is available in English from the WIPO database. If a PCT application has not been filed in English, then a verified English translation of it (and any amendments made during the international phase) must be provided at national phase entry. No power of attorney is required.

The application undergoes formalities examination and, on successful completion thereof, a filing date is retrospectively allocated.

Search and examination

The application then undergoes search and examination. The search can be carried out separately from examination, although this rarely happens in practice as it increases costs.

The deadline for requesting a standalone search is 13 months from the earliest priority date.

There are three options for examination. The deadline for requesting examination under each of these is:

  • 36 months from the earliest priority date for combined search and examination;
  • 36 months from the earliest priority date for substantive examination relying on a relevant foreign search or the international search report; and
  • 54 months from the earliest priority date for supplementary examination.

Each of these deadlines is extendable by up to 18 months.

Under the first option, IPOS starts the search and examination process from scratch. Under the second, IPOS can conduct further searches but reduces its fees as a result of being given a search on which it may rely. IPOS then examines the application based on that search and any further search results. Under the third option, IPOS charges no official fee and accepts that the invention is novel and inventive.

Under the third option, IPOS considers only matters such as whether the invention:

  • is supported by the description;
  • is contrary to morality;
  • is a method of medical treatment;
  • is based on added matter; or
  • gives rise to an objection of double patenting.

The Patent Rules have been amended to remove the third option with effect from 1 January 2020. There are transitional provisions that enable applications with a filing date prior to the cut-off date to remain eligible for this option – this includes national phase entries of PCT applications with an international filing date prior to the cut-off date.

Grant and annuities

After successful examination, a notice of eligibility for grant is issued, followed swiftly by the grant itself – provided the applicant submits the necessary documentation and payment.

Annuities accumulate from the fourth anniversary of the priority date. Accumulated annuities are payable within three months of grant and annually thereafter.

Excess claims fees

Official excess claims fees of around S$30 per claim are payable on each claim in excess of 20, for the first and second examination options, and at the time of paying the grant fees for the third examination option.

Re-registration in Cambodia and Laos

A patent granted in Singapore can be re-registered in Cambodia and/or Laos, provided that it complies with the respective patentability requirements of those countries. In general, the Cambodian and Laotian requirements are satisfied if the Singapore requirements are satisfied. Cambodia and Laos each have statutory exclusions for some types of subject matter, such as business methods.

Technology-based considerations (software and pharmaceuticals)

The Singapore Patents Act considers methods of treatment or diagnosis practised on the human or animal body to be incapable of industrial application. Therefore, such inventions are not patentable.

Computer software is generally considered patentable subject matter in Singapore, provided that the invention satisfies the relevant eligibility criteria (eg, novelty and inventive step).

Second medical use claims, such as Swiss-style claims, are also patentable.

What are the major administrative procedures in your jurisdiction?

As discussed above, the application undergoes examination during the patent application process.

Appealing patent office decisions

If IPOS finds against the applicant during examination, it will issue an adverse examination report. The applicant then has two months in which to request an examination review, including making amendments or arguments to ensure that the application is accepted. The examination review is conducted by IPOS.

IPOS decisions can generally be appealed to the High Court. However, there are exceptions for certain decisions to be made at the sole discretion of the patent office. These exceptions relate more to administrative matters than matters of technical substance.

Third-party challenges – oppositions and invalidations

Pre-grant, third parties may submit third-party observations. These are informal submissions and the patent examiner has sole discretion as to whether to take the observations into consideration.

There is no formal pre-grant opposition. Instead, post-grant revocation may be sought. Only IPOS has jurisdiction to hear original applications for revocation, although its decisions may be appealed to the High Court.

Administrative enforcement options

Subject to agreement between a patentee and an alleged infringer, the question of infringement can be heard before IPOS. If the patentee is successful, it may then make a claim of damages or seek a declaration that the patent is valid and infringed by the infringer.

Despite this being a low-cost option for testing infringement, parties seldom avail themselves of it since the registrar of patents may decline to hear the case and can instead refer the matter to the High Court.

How are patents enforced through the courts?

Key forums and their composition (judge versus jury trials)

Infringement

Patent infringement proceedings are civil actions. They take place in the High Court and a single specialist IP judge is appointed to hear the proceedings.

Infringement proceedings culminate in a trial in which the court makes an evidence-based decision as to whether a claim has been proven against an infringer. The trial is a public hearing unless there are circumstances warranting confidentiality (eg, confidential information or trade secrets).

Revocation

Only IPOS has jurisdiction to hear an original application for revocation. Otherwise, applications for revocation in the courts can only be brought as a cross-claim to invalidity proceedings or as an appeal from an IPOS decision on revocation.

Trial flow – discovery, trial, witnesses, timing and costs

Patentees can commence proceedings by serving a writ of summons on an alleged infringer. The patentee typically also supplies a statement of claim setting out the facts of the case against the alleged infringer.

Service of the writ of summons sets the deadline for the infringer to enter an appearance by filing a memorandum of appearance (MOA). This signifies an intention to contest the patentee’s claim. After filing the MOA a time limit is set for the alleged infringer to file its defence – namely, to set out evidence in support of its position to counter the statement of claim. This can be accompanied by a counterclaim (eg, for revocation of the patent).

Failure, by the alleged infringer, to file the MOA in a timely manner can enable the patentee to file for judgment (in default of appearance).

Thereafter, the discovery process and exchange of evidence takes place. Document disclosure requires the parties to disclose all relevant documents, including lab notes, maps, photographs, emails, drawings and other information. Disclosure is required regardless of whether the documents are beneficial or detrimental to the disclosing party’s case.

The parties to proceedings may appoint expert witnesses, as may the court. Regardless of which party appoints an expert, the primary duty of the expert is to provide the court with an impartial and independent opinion on questions of fact. The expert is generally expected to endeavour to think as a person skilled in the art – an unimaginative and uninventive person or team, equipped with the required knowledge to work the invention as set out in the specification.

Experts must generally be available for cross-examination.

The trial is then held on the basis of the evidence.

Patent infringement trials typically last between 18 and 36 months. Historically, trials involve at least two days at the hearing, although this can increase up to a month for complex cases.

An average trial costs between S$250,000 and S$330,000, excluding appeal.

Legal doctrines, available remedies and the appeals process

Patent owners can seek various remedies, including:

  • an injunction to restrain future infringement of the patent or asset disposal;
  • damages or an account of profits, but not both;
  • an order for the infringer to deliver up or destroy any infringing products; and
  • a declaration of patent validity and infringement.

The High Court decision can be appealed to the Court of Appeal. The Court of Appeal is the highest appellate court in Singapore.

How are patents commercialised in your jurisdiction?

Patent working requirements, pharma-specific rules

Working the invention

In certain circumstances, a compulsory licence may be available where a patented invention has not been worked in Singapore (see below).

Pharma-specific rules

Under the Health Products Act, all therapeutic products (eg, biosimilar products) must be registered with the Health Sciences Authority (HSA) before they can be supplied in Singapore. An applicant for registration of a therapeutic product is required to make a declaration on whether the therapeutic product is subject to a subsisting patent and will be required to notify the relevant patent owner where necessary. This provides the patent owner with an opportunity to initiate legal proceedings to block the registration of the therapeutic product.

The Patents Act allows for the possibility of a patent-term extension where there was an “unreasonable curtailment of the opportunity to exploit the patent caused by the process of obtaining marketing approval” for a pharmaceutical product before the HSA.

Laws and rules applicable to licensing (including FRAND)

Compulsory licences

A compulsory licence can be granted by the High Court if:

  • there is a market for the patented invention in Singapore that is either not being supplied or not being supplied on reasonable terms; and
  • the court is of the view that the patentee has no valid reason for failing to supply the market (directly or through a licensee) on reasonable terms.

A compulsory licence is non-exclusive and non-assignable, and can be terminated if the court is satisfied that the circumstances giving rise to its grant no longer exist and are unlikely to recur.

The patentee is entitled to remuneration on grant of the licence; this may be by agreement with the licensee or by determination of the court if no agreement is reached.

Use of patented inventions by the Singapore government

There are provisions governing exploitation of a patented invention by the Singapore government (or parties authorised by it) for a public non-commercial purpose or during a national emergency or other circumstances of extreme urgency. This includes the import and use of pharmaceutical products needed to address public health issues (notification to the council of the Agreement on Trade-Related Aspects of Intellectual Property under Paragraph 2(a) of the annex to the agreement is required). However, such products cannot be exported.

A ‘public non-commercial purpose’ includes use of the invention for supply to the government of a country outside Singapore of articles required for the defence of that country. However, such articles cannot be sold to the public.

The government must inform the patentee of the exploitation of the invention and remunerate it accordingly. Moreover, the government’s right to use the invention is non-exclusive and non-assignable.

Anti-tying provisions

Licences cannot:

  • impose a condition requiring the licensee to acquire anything other than the patented invention (or a product thereof) from the licensor or its nominee; or
  • prohibit the licensee from using articles or processes that do not belong to the licensor.

Such conditions are void and can give rise to a defence to infringement if infringement took place while the licence containing the condition was in force.

A licence condition is not void merely because it reserves the right to supply such new parts of the patented product as may be required to put or keep it in repair.

FRAND

Similar provisions apply to those for compulsory licensing.

Inventor remuneration issues

There are no inventor remuneration provisions under the Singapore Patents Act.

Thomas Griffiths

Managing principal – Singapore

[email protected]

Thomas Griffiths is the managing principal of Davies Collison Cave Asia. He is a registered patent attorney in Singapore, Australia and New Zealand. Mr Griffiths is recognised for his expertise in AI, cybersecurity, blockchain and medical devices technologies and has worked on litigious enforcement and defence proceedings in around 10 countries. He takes a commercial approach to developing global IP portfolios for local and international clients, assessing freedom-to-operate, resolving IP ownership disputes and general IP enforcement matters. Mr Griffiths is treasurer of the Association of Singapore Patent Attorneys and has a bachelor’s in both computer science and engineering (mechatronics) (honours).

Ken Simpson

Principal – Singapore

[email protected]

Ken Simpson is a principal of Davies Collison Cave Asia. He is a registered patent attorney in Singapore, Australia and New Zealand. Dr Simpson specialises in patents for software and computer technology and has experience in a wide variety of other technologies, particularly fintech, semiconductors, anti-counterfeiting technology, additive manufacturing, optics and bioinformatics. He has worked with a range of clients in both the private and public sectors in Australia, Singapore and the United Kingdom, helping them to obtain, defend and enforce IP rights, as well as advising them on freedom-to-operate and IP strategy. In addition to his years in private practice, Dr Simpson has worked as in-house counsel for a large multinational financial services company, where he advised on all areas of intellectual property, including IP-related aspects of contracts and M&A deals, patent and brand strategy and protection, and technology and brand licensing.