Singapore recently introduced a new post grant re-examination process. The new process provides a relatively low cost means to challenge granted patents in Singapore. However, due to the short time for responding in the post-grant re-examination procedure and the limited opportunities for response and amendment, receiving a request for post-grant re-examination potentially presents a significant challenge for a patentee.
Introduction
A post grant re-examination process was recently introduced in Singapore. Under the new process, any person may file a request for re-examination of a granted patent. The request may be filed by the patentee themselves, or by a third party. It is possible to file the request in the name of an agent in order to keep the identity of the actual requestor secret. The proceedings are ex-parte meaning that once the request is filed, only the patentee is involved in the proceedings with the patent office and the requestor plays no further part other than having an opportunity to correct certain formal defects in the request. If the patentee makes amendments during the proceedings, there is an opportunity for third parties, including the requestor to challenge the amendments. Of course, if the request is filed by the patentee, then the requestor will take part in the proceedings as the patentee.
The Singapore patent system has evolved over the past 10 years. Prior to 2014, Singapore had a self-assessment system in which it was possible to obtain a patent without the patent application undergoing examination. Following 2014 a positive grant system was implemented in which all applications had to undergo examination, however one of the examination options was the so-called “foreign route” which allowed a patent to be granted based on a positive examination of a patent application in a foreign jurisdiction and this includes the International Preliminary Report on Patentability (IPRP). The “foreign route” was closed to new applications in January 2020, and presently all newly filed patent applications must undergo substantive examination in Singapore. A major advantage of the foreign route was that it allowed an applicant to obtain a patent in Singapore efficiently and at relatively low cost. However, in some circumstances, for example if a positive IPRP was issued on the corresponding PCT application, it also allowed an applicant to obtain a patent in Singapore without undergoing the scrutiny of full substantive examination.
Prior to the introduction of the re-examination process, the only way to challenge a patent in Singapore was to file a request for revocation. Revocation proceedings in Singapore often involve expert witnesses and due to this, the costs are often high. Thus, the new process provides a cost-effective way for challenging patents in Singapore. However, for patentees, the new process may present new challenges as the time for responding to objections raised in post grant re-examination proceedings is short and the opportunities for amendment are limited.
Grounds for post grant re-examination
A re-examination request may be filed on the basis on one or more of the following grounds:
- novelty, inventive step or non-patentable matter
- sufficiency
- the matter disclosed in the specification of the patent extends beyond that of the application as filed, or in the case of an application such as a divisional application, extends beyond that disclosed in the earlier application
- a post grant amendment was made to the patent which either results in the specification disclosing additional matter beyond that of the application as filed or extends the scope of protection of the patent
- an amendment was made to the application which specification disclosing additional matter beyond that of the application as filed
- a correction was made to the specification of the patent or the patent application, which should not have been allowed
- double patenting.
The post grant re-examination procedure
The post grant re-examination process is shown in the flowchart below.
Initially the requestor files the request for post grant re-examination and pays the official fee. The request must clearly identify each of the grounds on which the re-examination is to be conducted and provide full reasoning for each claim for which the ground is identified. If prior art documents are relied upon for any of the grounds copies of the documents must be provided with the request for re-examination. If any of the documents are not in English, then a verified translation must also be provided.
Following submission of the request for post grant re-examination, the registrar checks if the request complies with formal requirements. The new provisions in the Singapore Patents Act state that the Registrar must not grant a re-examination request that is frivolous, vexatious, or an abuse of the process. The re-submission of a request for re-examination on grounds and reasoning that have already been considered and rejected by an Examiner are considered to fall under this. In particular requests for re-examination with reasoning based on the same or equivalent prior art documents that have already been considered by an Examiner will be rejected by the Registrar.
Once the request has been accepted by the registrar, it is forwarded to an Examiner for re-examination of the patent. The Examiner determines if any of the grounds stated in the request are made out. The re-examination is generally limited to the grounds specified in the request. However, the Examiner may extend objections to claims not mentioned in the request and the Examiner may also consider whether claims lack inventive step in view of prior art documents even if only novelty was raised in the request. If the Examiner considers that any of the grounds are made out, a written opinion is issued setting out the grounds that have been made out and setting a non-extendable deadline of three months for the patent proprietor to respond. If the Examiner considers that none of the grounds are made out, a positive re-examination report is issued stating that the patent is maintained in its original form.
The patent proprietor has only one opportunity to respond to the written opinion. If no response is filed by the deadline, then a re-examination report will be issued on the written opinion. The patent proprietor does have the option of requesting an interview with the Examiner. The request for an interview must be submitted within two months of the date on which the written opinion is sent to the patent proprietor. The Guidelines for Examination recommend that any proposed amendments are included with an agenda submitted with the request for an interview.
If the response to the written opinion submitted by the patent proprietor includes any amendments, these amendments are advertised, and third parties have a two-month period in which to oppose the amendments. In Singapore, the registrar has discretion to refuse post grant amendments where there has been an unreasonable delay in the patentee seeking amendments. For example, if the patentee was aware of a prior art document that rendered a claim on a patent invalid but took no action to amend the claim, the registrar may refuse the patentee permission to make an amendment later. In addition, any post grant amendments must not add matter or extend the scope of protection of the patent. While clarity is not a ground for re-examination, any amended claims must be clear and concise.
The Examiner then considers the response to the written opinion filed by the patent proprietor and any opposition to amendments filed by third parties. The Examiner then issues a re-examination report which will state on of four possible scenarios:
- the patent is maintained in its original form – this would occur if the patent proprietor successfully argues against the objections in the written opinion
- the patent is maintained in amended form – this occurs if the Examiner considers that the amendments filed by the patent proprietor are allowable and overcome all of the objections in the written opinion
- the patent is conditionally revoked – this occurs if some of the claims of the patent are rendered invalid, but the remaining claims are found to be valid
- unconditional revocation of the patent – this occurs if all of the claims are found to be invalid.
If the patent is maintained in amended form, the patent proprietor is set a deadline to submit a consolidated specification including the amendments. If the patent is conditionally revoked, the patent proprietor may submit an amendment to limit the claims to those found to be valid.
The proprietor has the option to appeal a revocation of the patent to the High Court of Singapore. The deadline to file an appeal is 6 weeks from the date of the re-examination report including a decision to revoke the patent. It is notable that, unlike in revocation proceedings, it does not appear possible to adduce expert evidence in re-examination proceedings. Generally, the appeal proceedings are limited to the matters considered in the re-examination proceedings. However, the Court may give permission to adduce new evidence such as expert evidence in appeal proceedings.
The requestor cannot appeal a decision not to accept a request for re-examination or a decision not to revoke a patent following re-examination. However, the requestor can file another request for re-examination in such circumstances. As described above in order for a new request for re-examination to be accepted by the registrar and forwarded to the examiner it would have to contain grounds or reasoning that had not been considered before.
Conclusions
The post-grant re-examination procedure provides a new and low-cost way to challenge patents in Singapore. The new process combined with the restrictions on post-grant amendments in Singapore may provide third parties with a strong means to attack patents. For example, if a patent was granted through the “foreign route” relatively early in Singapore, for example based on the positive opinion in the IPRP, prior art which came to light on a corresponding case could prove fatal to the patent if the proprietor is refused permission to amend to overcome such prior art.
As described above, there is potentially only one opportunity for the patentee to respond during the post-grant re-examination procedure. Therefore, the option to have an interview with the examiner provides a valuable option to receive feedback on possible response strategies. However, in order to make use of this opportunity, the patent proprietor must prepare the possible strategies within a short time. This short time for response may present a significant challenge for patent proprietors.
