Formal Pre-Grant Third Party Observation and Post-Grant Re-Examination Procedures in Singapore
The Intellectual Property Office of Singapore (IPOS) has recently introduced some amendments to the Singapore Patents Act and Rules. The amendments mainly focus on enhancing the Dispute Resolution Processes of Singapore’s patents regime, as summarised below.
Pre-Grant Third Party Observation
The IPOS established a new pre-grant third-party observation process, which allows third parties to formally submit observations on a patent application’s patentability at any time between the application’s publication and the issuance of the relevant examination report.
There was no formal mechanism for submitting third-party observations prior to the implementation of this process, and the Examiner was not obligated to consider the observations even if they were made. Following the formalization of the process, the Examiner is now required to take into account any third-party observations that may have been made during the application’s examination.
Any written state of the art information and any prior art documents that may be relevant for assessing the patentability of the patent application can be included in the third party observations. When submitting third-party observations, the third party is not required to pay an official fee. If the Examiner determines that a third-party observation has an impact on the patentability of the patent application, the Examiner will issue a Written Opinion, which the applicant will have the opportunity to formally respond to. Notably, a third party who submits an observation does not become a party to the patent application’s proceedings.
The Registrar is required by the rules to notify the applicant in writing of any third-party observations received. The Patents Open Dossier will also publish third-party observations that are being considered for examination. As a result, third-party observations should be submitted through a registered patent agent in Singapore to protect the third-identity. party’s
Surprisingly, while the new provisions generally allow observations “on whether an invention is a patentable invention,” the amended examination guidelines state that the Examiner is only required to consider observations based on one or more of the grounds for supplementary examination if the application is undergoing supplementary examination. In other words, observations on novelty and inventive step would be ignored in such a case.
Post-Grant Re-Examination
The IPOS reintroduced a post-grant re-examination process, allowing anyone (including the patentee) to request a re-examination of a granted patent at any time after the grant, as long as there are no other proceedings in which the patent’s validity may be challenged, whether in court or before the Registrar. Post-grant examination was not available in recent iterations of the Patents Act prior to its reintroduction.
The request for re-examination must include the reasons for the granted patent’s non-validity, as well as any relevant prior art documents. If a request for re-examination of a patent is made, the patentee will be notified. The Patents Open Dossier will also be used to publish documents related to the re-examination process. As a result, in order to protect the requestor’s identity, the request for post-grant re-examination can be submitted through a registered patent agent in Singapore.
If the Examiner finds that the alleged ground(s) for re-examination are supported by evidence, the Examiner will issue a Written Opinion, to which the patentee may formally respond by filing written submissions and/or patent specification amendments. After receiving the Written Opinion, the patentee may also request an interview with the Examiner. Unless the requestor is the patentee, the re-examination requestor does not become a party to the re-examination process and is only notified when a re-examination report is issued.
Interestingly, the new provisions require the Registrar to make an order for revoking the patent if the re-examination report contains one or more unresolved objections that have been raised in the Written Opinion. In other words, a third party can challenge the validity of the patent through the post-grant re-examination process without initiating revocation proceedings. Further, if the patent was granted under the supplementary examination route, the grounds for re-examination are not limited to only the grounds which were considered during the supplementary examination before patent issuance. Instead, in such a case, re-examination can be requested on the grounds for substantive examination, for example, the invention lacks novelty and/or inventive step light of prior art references.
On the other hand, the patentee can make use of post-grant re-examination to strengthen the patent by requesting post-grant amendments and re-examination, for example, in light of newly-discovered prior art. The patentee may also request a certificate of contested validity if the patent is subject to a re-examination request by a third party and found to be wholly or partially valid.
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