Intellectual Property Office of Singapore (IPOS) released two new initiatives concerning patent examination, titled “Simplified Requests for Examination Reports and Other Legislative Amendments” and “No Extension of Time Fee to File a Request for a Search and/or Examination Report” respectively. Main details are shown in the following.
1. Simplified Requests for Examination Reports
To simplify the requests for examination reports relying on the final results of a search established by IPOS under the Patent Co-operation Treaty, applicants will only be required to submit Patents Form 12 without having to file further documents, i.e. the final international search results, a copy of each of the documents referred to in the final international search results (including non-patent literature) and a list of references to the patent family members corresponding to the documents.
The amendment came into operation from 16 Aug 2024. For the avoidance of doubt, the previous procedure continues to apply to relevant requests for examination reports made before 16 Aug 2024.
2. No Extension of Time Fee to File a Request for a Search and/or Examination Report
Under the Patents Rules, the period prescribed for filing a request is 36 months, but to better support applicants in their IP filings, IPOS is piloting an initiative where eligible applicants may obtain – at no cost[1] – an additional 18 months to file requests for search and/or examination reports, which means that the Patents Form 45 could be filed as late as the last day of 18 months after the end of the period prescribed. Where an applicant had already obtained a previous extension (of less than 18 months), a request under this pilot initiative will allow the period prescribed to be extended at no cost, up to the maximum extension of 18 months.
To benefit from this pilot initiative, applicants must:
a. ensure that the period prescribed for the application expires between 1 September 2024 and 31 August 2026 (both dates inclusive);
b. select the new option in Patents Form 45 to extend the period prescribed by 18 months; and
c. ensure compliance with all the relevant provisions.
Applicants who prefer to receive earlier search and/or examination reports from IPOS and use the reports to advance their corresponding patent applications overseas may continue to tap IPOS’ suite of acceleration programmes with SG IP FAST, the ASEAN Patent Examination Co-operation (ASPEC), Collaborative Search and Examination (CS&E) with Vietnam and the Patent Prosecution Highway (PPH).
It is also possible that applicants obtain positive outcomes from corresponding applications during the extended period, which can be used to leverage PPH programmes[2] for acceleration at IPOS. Applicants relying on positive outcomes from corresponding applications generally require fewer office actions and have a higher grant rate. For such applicants relying on PPH, IPOS endeavours to produce a first written opinion within 10 months of the PPH request.
Information source:
https://www.ipos.gov.sg/about-ip/patents/practice-guidelines-circulars
[1] The official fees for filing a request for extension of time (Patents Form 45) will be waived for the duration of this pilot initiative. Official fees for Patents Form 11 (Request for a Search & Examination Report) or Patents Form 12 (Request for an Examination Report) are not waived.
[2] IPOS has PPH arrangements with more than 30 partners, including the patent offices of China, Japan, Korea, and the United States, and the European Patent Office.
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