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Patents |
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Summary |
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Search and Examination |
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The options for search and examination of any patent application in Singapore are complicated. The summary below is to some extent a simplified version of the options available! Generally, unless there is any specific option an applicant wishes to adopt on a particular case, we will advise on what we feel is the best option in the circumstances. |
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With recent amendments to Singapore Patents Act and Rules, a “two-track” examination system for Singapore patent applications was introduced. By default, a patent application proceeds via the “fast track”. An overview of this option is illustrated as a flowchart in Annex A. Alternatively, it is possible to prosecute a patent application by the “slow-track” by paying a block extension fee by 39 months from the filing or priority (if claimed), in which deadlines are extended. |
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National Applications
Fast Track |
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There are several options (routes 1 -5), depending on the existence of corresponding applications filed in prescribed countries and their status at the time examination has to be requested. Corresponding applications are applications sharing one or more of the priority claims of the Singapore Application or which claim priority from the Singapore Application and have been filed in any of the following prescribed countries: |
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Australia
Canada (in English)
New Zealand
United Kingdom
United States of America
European Patent Office, (in English)
PCT applications
Japan
Republic of Korea |
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The various search and examination routes are, as follows: |
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Routes 1 and 2 - In these routes, no reliance is place upon corresponding foreign applications and the routes differ only at the time search is requested. In route 1, a search is requested separately by the deadline of 13 months from the filing date, or priority date if priority is claimed, with examination being subsequently requested by the deadline of 21 months from the filing/priority date. In route 2 search and examination are requested together by the deadline of 21 months from the filing/priority date. These routes are the most straight forward and familiar but are the most expensive. We only recommend route 1 if the applicant specifically desires a separate search before making a decision as to whether or not examination should be requested since it is cheaper to request search and examination together by route 2 than separately by route 1. |
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Route 3 - Instead of requesting a local search it is possible to rely on the search of a corresponding foreign application in one of the countries noted above if such is issued by the deadline of 21 months from the filing/priority date in which case examination may be requested based on the foreign search report, saving costs. For this option we will need a copy of the Search Report, a copy of each of the citations raised and a patent family list for those citations not in English. |
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Route 4 - It is possible to rely on acceptance of a corresponding foreign application in one of the countries noted above (but not New Zealand) instead of requesting both search and examination. In such a case, there is no need to request either search or examination by the deadline of 21 months from the priority/filing date for routes 1 – 3. Instead, any action can be deferred until closer to the deadline for paying the grant fees of 42 months from the priority/filing date. At that time it is necessary to file either documents showing conclusion of examination as to substance of the corresponding foreign application or a copy of the patent either certified or otherwise acceptable to the Registrar. |
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Route 5 - The disadvantage of route 4 is that at the time a decision is made as to whether or not to request examination usually one would not know that a corresponding application would be accepted by the deadline of 42 months from priority, so this is a bit of a gamble. If by that deadline a corresponding application has not been accepted, the only way that prosecution of the application can continue is by filing a divisional application which resets the deadlines for search and examination allowing more time for the corresponding application to be accepted. This is Route 5. All deadlines for the divisional are reset from its actual date of lodgment and all routes 1 – 5 are available for this divisional case. Thus it is also possible to request normal search and examination of the divisional case if prosecution of foreign applications is not progressing. |
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