By Tony Yeo and Benjamin Gaw, Directors at Drew & Napier LLC

I. Introduction

The recent introduction of the positive grant system for patent applications in Singapore is a sea change that is welcomed by both Singapore’s patent practitioners and lawmakers. Since Singapore’s own patent system started in 1995, the Singapore IP regime has grown tremendously and has been consistently making the headlines internationally, having been ranked top 5 by the World Economic Forum and top 10 by the Institute for Management Development.

Singapore is also Asia’s most innovative country according to the Global Innovation Index 2012 compiled by the INSEAD Business School in collaboration with the World Intellectual Property Organisation. With such commendable accolades, the move into the new positive grant system to strengthen the Singapore IP regime is indeed timely. Further, the positive grant system is aligned with the master plan of Singapore’s IP Steering Committee, which is currently looking to develop Singapore into an IP hub and will recommend strategies along two key thrusts, namely (i) to develop a vibrant marketplace to transact and commercialise intellectual property; and (ii) to build world-class capabilities and infrastructure. This article will set out the key changes made under the positive grant system and show how the positive grant system will allow Singapore to grow into an IP hub through the various benefits it brings.

II. Previous self-assessment system

Pragmatism characterized the old IP regime where the aim was simply to encourage a greater level of innovation. Previously, in order to obtain a patent grant, a self-assessment system applied where a patent would proceed to grant even if there were objections raised in the examination report. The self-assessment system currently only applies to patent applications with filing dates up till 13 February 2014.

III. Positive grant system

On 14 February 2014, the amended Patents Act came into force. Under the amended Patents Act, only patent applications with fully positive examination results can proceed to grant. In order to be “fully positive”, a patent applicant’s claimed subject matter must fulfill the criteria of patentability: novelty, inventiveness and industrial applicability.

To ensure that only fully positive patent applications proceed to grant, the additional stage of an examination review has been added to the patent application process. Where an applicant receives an examination report that contains objections, he may request for examination review and submit his written submissions addressing those objections.

The examination review will then be followed with an examination review report. The patent application will proceed to grant if the examination review report shows no objections. However, if the examination review report still contains objections, the application will not proceed to grant.

A stricter procedure is also introduced for patent applications going through the foreign route. Unlike the self-assessment system, foreign search and examination results now have to undergo an additional supplementary examination, where an examiner will examine the foreign application to determine whether it conforms to Singapore’s patent practice. If the examiner has a no objections, the patent application will proceed to grant. However, if the examiner has any objections, the applicant will have the opportunity to apply for an examination review as well to address the objections through written submissions. If the examiner is satisfied that the objections have been overcome, the patent application will proceed to grant.

In light of the newly-introduced positive grant system, the Intellectual Property Office of Singapore  (“IPOS”) is establishing an in-house Patent Search & Examination Unit to carry out the search and examination of patent applications. During the early stages of Singapore’s IP regime, Singapore was unable to commit to the substantial investment required to build domestic patent search and examination capabilities. Thus, Singapore outsourced search and examination works to patent offices in other countries, such as the Danish Patent and Trademark Office, the Austrian Patent Office and the Hungarian Intellectual Property Office.

IPOS is now shifting away from outsourcing in order to be in line with Singapore’s aim to build world-class search and examination capabilities in specific technology classes that are aligned with the country’s main R&D thrusts.

As of now, a first batch of 40 new patent examiners, mainly in the biotechnology area, has been recruited in 2012. A second batch of patent examiners is being trained while a third batch of examiners is being recruited by IPOS. IPOS is keen on developing an in-house Patent Search & Examination Unit with a wide range of expertise and currently, IPOS is looking to recruit examiners with PhDs in Chemistry, Chemical Engineering, Mechanical Engineering, Aerospace Engineering, Electrical & Electronic Engineering, Computer Engineering, Physics, Life Sciences and Biotechnology.

IV. Benefits of the positive grant system

A clear benefit of the positive grant system for innovators is the shorter time span in obtaining a patent grant. Instead of taking three to four years, applicants can obtain a patent grant within 12 months if their applications are conforming.

In particular, companies in the Information Communications Technology sector will stand to benefit from the shortened grant process with quick innovation cycles.

Another industry that stands to benefit is the pharmaceutical-biotechnology sector. The conducive environment created for biotechnology-related patent applicants is in line with Singapore’s aim to keep up with Asia’s rapidly growing demand for novel and more effective therapies and healthcare solutions. Currently, more than S$3.7 billion has been set aside for 2011 to 2015 to enhance Singapore’s existing biomedical R&D infrastructure, integrate multidisciplinary research and translate basic science into tangible outcomes. The Standards, Productivity and Innovation Board (SPRING Singapore) has also launched the S$40 million Biomedical Science Accelerator (BSA) Programme to nurture innovative companies to encourage the formation of medical technology start-ups in Singapore.

An efficient patent application system is extremely crucial for companies in the biotechnology industry, which generally invest a significantly higher proportion of their revenues in R&D and have very high costs for the development of new products and processes but relatively low costs of imitation. The positive grant system thus complements Singapore’s goal to remain as a key global biomedical manufacturing site.

In addition, the positive grant system will also enable Singapore to be better suited for the various international patent agreements it has entered into. Since 2009, Singapore has obtained Patent Prosecution Highway (PPH) agreements with the United States, Japan, China, Korea and Mexico. The PPH is a work-sharing arrangement between two IP offices whereby the examination of a patent application can be accelerated by referencing the examination results from another IP office. This allows innovators to enjoy an accelerated application process in other countries when they file a patent with IPOS. A similar arrangement that IPOS is also part of is the ASEAN Patent Examination Cooperation (ASPEC), a work sharing platform for innovators to penetrate the ASEAN market. Through the positive grant system, international offices would be assured of the higher quality patents filed in Singapore and can rely on the examination results obtained from IPOS.

According to IPOS, these initiatives allow innovators to file their applications in other countries with a net time saving of about 50%. For instance, the turnaround time for filing an application with Japan and the United States is 2 to 3 years, saving applicants up to 2 years.

A knock-on effect of the PPH and the ASPEC initiatives is that Singapore will be able to attract more foreign innovators to file an application with IPOS, which in turn benefits the Singapore economy. Since the PPH and ASPEC are available to applicants who are not from the countries of partner offices, such applicants will be incentivised to file a patent in Singapore in order to ride on the suite of these international patent agreements as well. The positive grant system thus allows a generation of business for IPOS and is in line with Singapore’s aim of becoming an Asian IP hub. The Singapore Government hopes that Singapore will receive an enhanced level of foreign investment from multinational companies, such as Rolls-Royce and Mead Johnson Nutrition which recently invested hundreds of millions of dollars to set up manufacturing and R&D facilities in Singapore.

The positive grant system will also raise the overall quality of patents granted in Singapore. This is not to say that the quality of patents granted under the previous system were of a lower standard – over the past five years, the proportion of Singapore patent grants based on fully positive reports has risen to over 90%. In 2011, 95% of Singapore patent grants were based on full positive examination reports. Nonetheless, it is foreseeable that the positive grant system will motivate patent applicants to produce quality innovations that are likely to succeed under the positive grant system where a patent grant is no longer guaranteed.

V. Conclusion

As of now, the positive grant system is only at an infancy stage since it came into force on 14 February 2014. It remains to be seen if its potentially promising effects will eventually bear out in the next few years and if Singapore does manage to stay ahead of the curve in this competitive environment where IP offices all over the world are working to enhance their regimes.