Current Situation

Singapore is often perceived as the Southeast Asian country with the most mature IP eco-system and laws. In addition, the IPOS is typically viewed as a well-run IP office and is regularly cited as the first International Search Authority in Southeast Asia. In the days before the COVID-19 pandemic, patent applicants in Singapore were able to prosecute their applications in a timely and predictable manner, whereby examination reports would often be issued within 18 months of examination requests, in accordance with mandated statutory timelines.

Since the COVID-19 pandemic started, patent applicants in Singapore have not been able to receive their examination reports within the mandated statutory timelines, and there have been instances of the examination process not being initiated within 18 months of examination requests.

This has been an undesirable situation for patent applicants, as a sizeable number of patent applicants rely on the findings of their Singapore patent application to fast-track counterpart applications in other countries using options such as the Global Patent Prosecution Highway (GPPH), the ASEAN Patent Examination Co-operation (ASPEC), and the like. In addition, the unpredictability of the examination timeline has also adversely affected patent filing programmes /strategies of patent applicants in Singapore.

Will the delays ever be resolved?

In May 2024, the IPOS acknowledged the delays in the patent search and examination process and shared with IP practitioners in Singapore their plans to resolve the current undesirable situation. Their plans are broadly as follows:

1. A simplified process to convert a typical examination request to a Patent Prosecution Highway (PPH) request (already implemented since September 2023);
2. A more efficient search and examination process involving the use of a notification to carry out an amendment (called “an invitation to amend”) (already implemented since September 2023);
3. Working towards the issuance of a first written opinion within 10 months of a PPH request (unknown implementation date); and
4. Mandating that patent specification/abstract submissions be submitted in DOCX format using structured templates so that automated tools could be deployed at the IPOS to improve their work efficiency (may be implemented in early 2025).

Further details of the respective plans are as follows:

1. A simplified process to convert a typical examination request to a Patent Prosecution Highway (PPH) request (already implemented since September 2023).

It is now possible to convert a typical examination request to a PPH request as long as a search/examination process has not started for the patent application in question. This can be done by checking with the IPOS whether or not the search/examination process has started and if so, the IPOS will issue the applicant with “an invitation to amend” (ITA) so that the applicant is provided with an opportunity to submit requisite PPH documents and/or request requisite PPH amendments without having to pay any extension fees.

In the past, the process to convert a typical examination request to a PPH request would require withdrawing the examination request before submitting a PPH request and making the requisite PPH amendments. Oftentimes, this would entail the payment of extension fees as well.

2. A more efficient search and examination process involving the use of an ITA to carry out an amendment (already implemented since September 2023).

It is now possible to avoid a written opinion if patent applicants respond favourably to the issuance of an ITA. Typically, an ITA is issued if, only minor issues remain in an application. For example, clarity, or if an examiner is able to provide suggestions to amend the application to overcome all objections.

3. Working towards the issuance of a first written opinion within 10 months of a PPH request (unknown implementation date).

The implementation of such a timeline on the IPOS would likely lead to the issuance of examination reports well within the statutory mandated deadline of within 18 months of examination requests.

4. Mandating that patent specification/abstract submissions be submitted in DOCX format using structured templates so that automated tools could be deployed at the IPOS to improve their work efficiency (may be implemented early 2025).

The IPOS is following similar initiatives undertaken at the United States Patent and TM Office (USPTO) and the European Patent Office (EPO) to consider the implementation of requirements for patent specification/abstract submissions to be submitted in DOCX format using structured templates. Consequently, the IPOS is expecting patent specification/abstract submissions to be directly read and processed by a computer for increased time and labour efficiencies.

Takeaways from IPOS’ plans

• The simplified process to convert a typical examination request to a PPH request is welcome, as it is likely to aid patent applicants in providing more flexibility to their patent filing programmes/strategies without the need for extension fees.
• The current legislation defines how an ITA can only be issued during the course of examining a patent application. There would be a legal inconsistency if the IPOS relied on the issuance of an ITA for the simplified process to convert a typical examination request to a PPH request without amending the requisite legislation.
• The use of the ITAs since September 2023 has already provided patent applicants with shortened timelines and some prosecution conveniences since their recent implementation.
• The possible mandating of the DOCX submission requirements for patent specification/abstract submissions raises several concerns, such as file conversion issues, word processor versions used by patent applicants, undue burden/inconvenience on patent applicants, discrimination against those unfamiliar with technology, specifications of PCT applications, and so forth.
• It is heartening that the IPOS is able to acknowledge their shortcomings and is actively acting to resolve the current delays.