English Formalised Third Party Observations and Post-Grant Examination Processes available in Singapore from 1st October 2021
Pursuant to the Intellectual Property (Dispute Resolution) Act 2019, the Singapore Patent Rules have been amended to give effect to the following (effective 1st October 2021):
- Formalised Pre-Grant Third Party Observations; and
- Re-Examination After Grant.
Formalised Pre-Grant Third Party Observation
Any third party may submit observation in writing that may be considered relevant in assessing whether the invention is a patentable invention (“TPO”). The TPO may be filed at any time after the date of publication of the application and before the issuance of the relevant examination report, search and examination report or supplementary examination report.
The TPO must be submitted through the Registry’s IP2SG (e-service portal) through ad-hoc correspondence (no official fee charged) preferably accompanied by any relevant prior art documents. The TPO may be submitted through a registered patent agent, if the third party wishes his/her identity to be kept confidential.
Where the observation is assessed to have been made out, this will result in a Written Opinion. The Applicant will be given a chance to respond to the objections (i.e., within 5 months from receipt of Written Opinion). TPOs that are considered for examination will be published on the Patents Open Dossier.
Re-Examination After Grant
Any person (including the patent proprietor) may, upon payment of prescribed official fee, request that a granted patent to be re-examined.
Briefly, the re-examination process is as follows:
(a) Upon the acceptance of the request, the Registrar will cause the specification to be re-examined by an Examiner;
(b) During the re-examination, the Examiner, if convinced that the grounds of the request is made, will issue a Written Opinion to the proprietor of the patent;
(c) The proprietor, may, within 2 months from receipt of the Written Opinion, request an interview with the Examiner;
(d) The proprietor is required to respond to the Written Opinion within 3 months from receipt thereof.
(e) At the conclusion of the re-examination process, the Examiner will provide a re-examination report, which may either be:
- Positive Re-examination report
- A positive re-examination report will be issued if the Examiner determines that the patent is valid or the written submissions by the proprietor have overcome the objections raised the Examiner in the Written Opinion.
- Negative Re-examination report
- A negative re-examination report will be issued if the Examiner is convinced that the granted patent is invalid or the written submissions by the proprietor failed overcome the objections raised the Examiner in the Written Opinion.
(f) The Registrar will send a copy of the re-examination report to the proprietor and make the report available on the Patents Open Dossier.
*Failure to do so will result in the Written Opinion being the re-examination report.
(g) After the issuance of the re-examination report, the patent will either be maintained in its original form, maintained in an amended form or fully revoked.
Please note that the re-examination is an ex parte process. The requester plays no further role after the submission of the request, unless the requester is also the proprietor of the patent.
Similar to TPO’s, the request may be submitted through a registered patent agent, if the third party/requester wishes his/her identity to be kept confidential.
