EC CIRCULAR: IPOS TO CLOSE FOREIGN ROUTE WITH EFFECT FROM 1 JANUARY 2020

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For patent applications filed directly in Singapore, as well as Patent Cooperation Treaty (“PCT”) applications entering national phase in Singapore, there are several options in respect of Search and Examination procedures. One such option is the “foreign route”.

When using the foreign route, an applicant need not have his/her application undergo local substantive examination. Instead, the applicant requests for Supplementary Examination by relying on the final search and examination results issued by select foreign patent offices or international authorities under the PCT.

During the Supplementary Examination, the Intellectual Property Office of Singapore (“IPOS”) will only conduct a compliance check on the relevant Singapore application (checking for issues such as double patenting or claim relatedness between the Singapore application and the corresponding foreign application or international application). The application will not be examined on substantive patentability requirements such as novelty or inventive step. Once the Supplementary Examination is cleared, the application will proceed to grant in Singapore upon payment of the relevant official fees.

The foreign route is attractive to many applicants because there are savings in terms of cost and time – no official fees are payable when a request for Supplementary Examination is made, and the Supplementary Examination can be cleared relatively quickly and easily since no substantive examination is involved.

However, there are concerns that the foreign route may not encourage consistency of examination standards and quality, especially in the light of IPOS becoming an International Searching Authority and International Preliminary Examination Authority under the PCT system with effect from 1 September 2015. In August 2015, IPOS indicated that the foreign route may be removed after 2016. This has led to significant feedback from various quarters.

In July 2016, IPOS announced that the foreign route would be closed with effect from 1 January 2020 (the “closure date”). More specifically, patent applications with a date of filing before the closure date are still allowed to use the foreign route. Conversely, patent applications with a date of filing (as well as all divisional patent applications with a lodgement date) on or after the closure date will not be allowed to proceed under the foreign route, and will have to undergo local substantive examination.

Applicants who have incorporated the foreign route into their patenting strategy extending to Singapore should bear the closure date in mind. Singapore applications (and PCT applications) filed thereafter would be limited to the more costly options of substantive search and examination. Applicants who may benefit from prosecuting a divisional application under the foreign route should also ensure that their divisional applications are filed before the closure date.

We expect more information to be revealed at a later date. An updated circular will be posted upon receipt of the actual amendments to the legislation.

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