Introduction

 

Singapore’s patent system allows applicants the option to request local examination based on prior art search results of a corresponding foreign/related patent application issued by a prescribed patent office under the Singapore Patents Act (e.g., European Patent Office (EPO), United States Patent and Trademark Office (USPTO), IP Australia, Japan Patent Office (JPO), or Korean Intellectual Property Office (KIPO)), rather than commissioning a fresh prior art search by the Intellectual Property Office of Singapore (IPOS). This “mixed route” can offer some advantages; however, relying on such search results may not always be advantageous. Applicants should therefore carefully weigh the benefits and risks before selecting this mixed route.

 

Advantages

 

1. Cost Savings

 

The most obvious benefit is the lower official fees payable for requesting examination, typically resulting in savings of around SGD 600 (or approximately USD 470). In this regard, where a suitable foreign search report already exists, the applicant may request examination in Singapore without incurring the expense of a separate local search by IPOS.

 

2. Faster Prosecution

 

Relying on the corresponding foreign search report can accelerate the examination turnaround timeframe. The IPOS examiner can focus on assessing patentability in light of identified prior art rather than conducting a full prior art search from scratch.

 

In some cases, a favourable examination outcome for a corresponding patent application may also avail the option of expedited programmes such as the Patent Prosecution Highway (PPH) and ASEAN Patent Examination Co-operation (ASPEC), which further expedites examination.  

 

3. Consistency Across Jurisdictions

 

Relying on the same search results may help align claim scopes/strategies across multiple countries. For example, if the key prior art has already been identified and considered in a corresponding application, relying on the search results of the corresponding application may increase the chance of obtaining a consistent claim set in Singapore.

 

This can also ensure consistency during portfolio management and reduce instances of conflicting prosecution arguments and claim amendments across different jurisdictions.

 

4. Prioritisation of Jurisdictions

 

Applicants often prefer to monitor developments in major jurisdictions before committing additional expenditure in other smaller markets. In this regard, applicants can wait for search results from a corresponding application and then leverage on those search results and corresponding claim amendments in Singapore (being a smaller market), in an attempt to streamline prosecution and improve cost efficiency.

 

Disadvantages

 

1. Risk of Incomplete/Irrelevant Prior-Art Coverage

 

The principal drawback is that search results from a corresponding application may not identify prior art that a local search conducted by IPOS would have found, and that may be relevant to the patentability of the claims under Singapore patent law. For example, the search results directed at non-patentable subject matter under Singapore patent law and/or examination guidelines may not be relevant in Singapore. In addition, search methodologies, databases, language capabilities (e.g., IPOS is also capable of searching for Chinese language documents) and classification systems may differ amongst patent offices.

 

2. Differences in Examination Standards/Jurisprudence

 

Although patentability concepts such as novelty and inventive step may have similarities across jurisdictions, their applications may differ, for example, in relation to the assessment of inventiveness.

 

The IPOS examiner remains responsible for assessing compliance with Singapore’s statutory requirements and is not bound by the conclusions reached by the foreign patent office. In this regard, the IPOS examiner may still cite new prior art in addition to the prior art cited in the search results from a corresponding application.

 

3. Potential for Additional Translation Costs

 

Whenever any prior art reference cited in the search results being relied on from a corresponding application is non-English, the IPOS examiner may, at their discretion, request for a verified translation of the cited prior art reference. This may result in additional costs that may not have been budgeted for.

 

4. Potential for Misalignment of Claims

 

The claims to be examined in Singapore may not be identical or correspond to those searched abroad, thereby creating a mismatch between the searched subject matter and the claims to be examined in Singapore.

 

Such a misalignment of claims may render the foreign search results being less reliable because key features of the current claims in Singapore may not have been specifically searched. In a worst case scenario, the IPOS examiner may refuse to examine the claims due to the said mismatch by reason of an unsearched subject matter.

 

5. Increased Risk to Patent Validity in Singapore

 

Cost savings that may be achieved during prosecution may ultimately result in undesirable major consequences if unlocated prior art reference(s) that could have been located by IPOS later undermines the patent’s validity. Therefore, a locally conducted search by IPOS may reduce such risks and strengthen the validity of any resultant Singapore patent.

 

A Quick Reference Guide On Whether to Rely on a Corresponding Search Report

 

When deciding whether to rely on a corresponding search report, an applicant should at least consider:

•  The reputation and thoroughness of the foreign patent office.
• Legal differences present at the foreign patent office compared to Singapore
• Whether the claims in Singapore substantially correspond to those searched abroad.
• The number of non-English cited documents in the corresponding search report.
• The potential litigation or enforcement value of the Singapore patent.

 For high-value inventions, the additional cost of a Singapore search may be justified by the greater certainty it provides.

 

Conclusion

 

Relying on search results from a corresponding case when requesting examination in Singapore offers clear advantages in terms of cost, prosecution speed and administrative simplicity. Where the foreign search is reliable and the claims remain substantially aligned, it can be an effective route to grant.

 

However, applicants should not assume that a foreign search is always the best option. Differences in search practices, databases, legislation and jurisprudence mean that relevant prior art may still be missed. For inventions of significant commercial value, the benefits of an independent Singapore search by IPOS may be critical in the long run.