Amendment to Patents Act and Rules To Enter Into Force On 30 October 2017
(Circular No. 7/2017, dated 6 October 2017)
As part of IPOS’ effort to provide a fit-for-purpose legal and policy framework to support
innovative individuals and businesses, the Patents (Amendment) Act 2017 and thePatents (Amendment No.2) Rules 2017 will enter into force on 30 October 2017. The
revised Examination Guidelines for Patent Applications at IPOS (October 2017 version)(“Guidelines”) will also be published on the same day on the IPOS Website.
Key features of the amendments include:a. broadening of grace period;b. changes to supplementary examination; andc. amendments to the Guidelines on isolated products from nature and theassessment of post-grant amendments.
Broadening of Grace Period
The broadened grace period will take effect on 30 October 2017. Under the broadened
grace period, applicants have the opportunity to obtain patent protection for theirinvention notwithstanding that it has been disclosed prior to the filing of the patentapplication.
The objective of the broadened grace period is to provide a limited safety net for theobtaining of Singapore patent rights for patent applicants in instances where theinvention has been publicly disclosed prior to the filing of a patent application. Applicantsshould note that not all jurisdictions have a similarly broad grace period provision.
Therefore, all applicants are strongly encouraged to avoid disclosing their inventions tothird parties before applying for a patent.
Applicants who wish for disclosure to be graced may inform the Registrar when making:1) a request for search and examination;2) a request for examination;3) a response to written opinion; and4) a request for a review of an examination report or of a search andexamination report.
The request for the disclosure to the graced must be accompanied by written evidence
in the form of a statutory declaration or affidavit that complies with the requirements of
the new Rule 8 of the Patents Rules.
More information on how patent examiners will examine patent applications when an
applicant requests for a disclosure to be graced will be made available in Chapter 3 ofthe revised Guidelines.

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Changes to Supplementary Examination
The supplementary examination route will not be available for patent applications filed
on or after 1 January 20201. Patent applications filed before 1 January 2020 may
continue to use the supplementary examination route.
With the closure of the supplementary examination route, all patent applications filed on
or after 1 January 2020 will undergo full examination by our examiners. This will
increase the quality of our granted patents and increase stakeholders’ confidence in thevalidity of these patents. It will also align our patent system with that of major
jurisdictions, such as those of the US, Japan and Europe, that perform a full examinationon the patent applications that they receive. As this is a substantial change in practice,a three-year lead time was given for the community to adjust since the firstannouncement was made.
In line with our plan to progressively improve the quality of Singapore granted patents,
the scope of supplementary examination has been expanded to allow an examiner toraise an objection relating to patentable subject matter. This will ensure consistency inthe assessment of patentable subject matter across all the routes of examination. Thischange will take effect on 30 October 2017.
More information on the new scope of supplementary examination will be madeavailable in Chapter 9 of the revised Guidelines, which incorporated feedback that wasprovided during the public consult held from 5 July 2017 to 15 August 2017.
Amendments to the Guidelines on Isolated Products from Nature
The Guidelines will be amended to clarify the distinction between inventions anddiscoveries as applied to the issue of isolated products from nature. To find a material
or microorganism that pre-existed in nature would represent a discovery and therefore
an isolated or purified material or microorganism from nature is not an invention.
However if a new use of the isolated or purified material or microorganism is found, then
the new use can be claimed. The revised Guidelines will take effect on 30 October 2017.
The objective of this revision is to facilitate innovation by allowing others to develop
applications relating to the discovery, and to incentivise translational research anddevelopment.
More information can be found in Chapter 8 of the revised Guidelines, which will bemade available on the IPOS website on 30 October 2017.

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Patent applications filed on or after 1 Jan 2020 refers to –National applications having a date of filing on or after 1 Jan 2020,International applications entering national phase having a date of filing on or after 1 Jan 2020, andDivisional applications having an initiation date on or after 1 Jan 2020.

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Updates to the Guidelines on Assessment of Patent Post-Grant Amendments
In light of the recent Singapore Court of Appeal decision of Warner-Lambert Company
LLC v Novartis (Singapore) Pte Ltd [2017] SGCA 45, Circular No. 1/2016 and Chapter
7, Section E of the Guidelines will be updated to provide greater clarity on theassessment of post-grant amendments, including the issue of “obviously invalid” claims
at paragraphs 61 to 65 of the Court of Appeal decision.
More information can be found in the revised Circular and Chapter 7 of the revised
Guidelines, which will be made available on IPOS’ website. The revised Circular andrevised Guidelines will take effect on 30 October 2017.
Other Procedural Changes
The new legislation also introduces the following procedural improvements, which takeeffect on 30 October 2017 –a)Applicants can choose to switch examination route at any time before theexamination report or supplementary examination report is issued. This is achange from the current requirement to switch examination route before
responding to a written opinion. The greater flexibility in switching between
search and examination routes will make our patent application process more
applicant-friendly.

b)

The Registry can treat an application as abandoned if the applicant does not,after receiving a search report, request for an examination report within theprescribed time frame. This will facilitate the flow of new ideas andtechnologies if the applicant is no longer interested in obtaining protection.
Affected applicants (of those applications where the time prescribed for filing
Patents Form 45 to extend the time to request for an examination report
expires before, or within 3 months after, 30 October 2017) are given theopportunity till 30 April 2018 to file Patents Form 45.
****************************************************The updated legislative amendments in relation to the changes above will be madeavailable on the IPOS website (https://www.ipos.gov.sg/resources/ip-legislation) after it
is published in the Government Gazette.
The revised Examination Guidelines for Patent Applications at IPOS (October 2017version)(“Guidelines”)
willbeavailable
ontheIPOS
website(https://www.ipos.gov.sg/resources/patent) on 30 October 2017.
If you have any enquiries,(chung_ka_yee@ipos.gov.sg)

pleasecontact

Ms

ChungKaYee

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