Applying for a Patent Outside Singapore

Patent protection is territorial in nature. Separate applications will have to be made in each of the country/region where patent protection is desired. To obtain protection overseas, it is necessary to file applications in the countries concerned either individually or through the Patent Co-operation Treaty which facilitates the filing of International Applications.

Deciding which country to file your patent applications in depends very much on where you wish to seek patent protection in. It is ultimately a commercial decision that has to be taken. Further, patent requirements differ from country to country and costs including translation and professional fees have to be taken into account.

4.2  Written Authority Clearance (Sections 34 Patents Act )

Person resident in Singapore

Whilst it is not mandatory to apply for patent protection in Singapore first before seeking patent protection overseas, any person resident in Singapore is required to obtain written authorisation from the Registrar of Patents for an invention, before he files or causes to be filed outside Singapore an application for a patent for that invention.

Alternative to seeking written authorization is for the person resident in Singapore to file a patent application for an invention first in Singapore. If no Direction prohibiting or restricting the publication or communication of information contained in the patent application has been issued by the Registrar of Patents within 2 months from that filing, he may then proceed to file or cause to file overseas a patent application for that invention.

Contravention of Section 34 is a criminal offence.

4.3  Seeking Registrar's Written Authority

Persons wanting such permission should apply directly, in writing, to the Registrar of Patents.The Section 34 application form is available at the Registry of Patents or IPOS website at www.ipos.gov.sg. A brief summary of the invention and the drawings, if any, should accompany the application for written authority.

The information in such an application is confidential. Therefore, for submission by hand, the applicants are advised to place their requests into the National Security Box that is located at the IPOS' counter.

For submission by fax or mail, the applicants are advised to inform the Registry’s duty officer of the day of their intention. This would enable the officer to look out for the requests and deal with them expeditiously. To speak to the officer on duty, please call the Registry at Tel: (65) 6339 8616.

Upon receipt of the request, the Registry would respond in less than 5 working days from the date of receipt. For urgent cases, where the officers have been given prior notice, immediate action may be taken.

4.4  The Patent Co-operation Treaty (PCT)

The PCT is an international treaty to facilitate the filing of patent applications in different countries concurrently. The PCT system produces the same effect as if a national patent application has been filed with the national patent office in each country designated by the applicant. It facilitates the applicant in seeking patent protection for his invention in several countries simultaneously by filing an international application with a single office, in one language and a single set of forms and fees.

The PCT system for filing of an international application is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) based in Geneva, Switzerland. An international application may be initiated by a resident or national of a PCT contracting country wanting to seek protection in other PCT Contracting States. To apply, an applicant would file an international application with the patent office in his home country or the International Bureau of WIPO in Geneva. The filing of a PCT request constitutes the automatic designation of all Contracting States that are bound by the PCT on the international filing date.

4.5  Advantages of Using PCT

(a) The PCT system offers convenience should the applicant wish to seek patent protection in more than one PCT contracting region or country. Being a file-once-apply-all system, the applicant does not need to file separate applications in each of the designated countries.

(b) An international application benefits from the longer time period offered by the international phase of the PCT. This is the period from the time of filing to the time for entering the regional or national phase. During this period, the applicant can re-assess the commercial viability of the invention before incurring further costs associated with the national phases at the designated regions or countries. In the national phase, there may be expenses such as translation costs, agent fees and national fees that can amount to a considerable sum of money.

4.6  The PCT international application process after submission (in a nutshell)

EXAMPLE 3

Upon submission, the international application undergoes the international phase and where an applicant decides to do so subsequently, the regional or national phase.

The international phase consists of two chapters: Chapter I & Chapter II. The applicant has the option of entering the national phase upon completion of Chapter I or II. On entering the national phase, each designated office would evaluate the application and decide on grant or refuse the patent application according to its national laws.

In Chapter I of the PCT, the international application will be subject to a search by an International Searching Authority (ISA).

A written opinion will also be issued by the ISA according to the international search procedure. Details of the international application and the International Search Report, will be published by the International Bureau. This concludes Chapter I of the PCT. If the applicant chooses to enter the national phase at this juncture, the written opinion by the ISA will be converted by the International Bureau into the International Preliminary Report on Patentability (Chapter I)
(IPRP (Chapter I).

Where the applicant decides to proceed with the international phase, he will file a demand for an international preliminary examination under Chapter II of the PCT.

The examination gives the applicant a preliminary and non-binding opinion on the patentability of the invention. For the purposes of the examination, the written opinion issued in Chapter I of the international phase may be used. Upon completion of the examination, an International Preliminary Report on Patentability (Chapter II) (IPRP (Chapter II)) will be established. This concludes Chapter II of the PCT.

An applicant, who is a resident or national of Singapore, may file an international application under the PCT directly with the Registry of Patents in Singapore or the International Bureau at WIPO in Geneva, Switzerland. (See Example 3)

Where applicable, the necessary Section 34 National Security Clearances should be obtained.

In Singapore, the Registry of Patents accepts international applications in a type-written format; or a printed cum digital format by using the PCT-SAFE software provided by WIPO. PCT-SAFE also provides a feature for the preparation of documents for electronic filing of PCT applications.

However, please note that the Registry of Patents in Singapore is not ready to accept PCT applications filed electronically.

Singapore has acceded to both Chapter I and Chapter II of the PCT. An applicant, in his international application with respect to Singapore, has a choice whether to enter the national phase in Singapore under Chapter I or Chapter II.

Such international applications are treated the same as any patent application filed in Singapore.

The following example illustrates some key features under the PCT.

On entering the national phase in Singapore under Chapter I, the applicant may proceed to file a request for examination relying on the search results obtained earlier during the international phase. On receipt of the examination report from the Registry of Patents in Singapore, the applicant may proceed to pay the fee for the grant of a patent. This grant is subject to the application meeting the necessary statutory requirements.

Alternatively, on or after 1 July 2004, applicants may instead of requesting for an examination report in Singapore, rely on their IPRP (Chapter I) established during the international phase to meet the search and examination requirements under the Patents Act. If this option is chosen, the applicant may proceed directly to pay the fee for the grant of a patent. The grant is subject to the application meeting with all the statutory requirements of the Patents Act and Rules.

4.8.2 Entering National Phase in Singapore under Chapter II

On entering the national phase in Singapore under Chapter II, the applicant may proceed to pay the fee for the grant of a patent relying on the reports established during its international phase (i.e. International Search Report and International Report on Patentability (IPRP) Chapter II) in lieu of having to file a further search and examination request with the Registry of Patents in respect of the same invention. The grant is subject to the application meeting with all the statutory requirements of the Patents Act and Rules.

Upon entry into the national phase in Singapore, in the course of the patenting process and the post grant processes, patent users are advised to refer to the Patents Act and the Patents Rules for the applicable procedure, patents forms, fees and the prescribed time periods.

A complete list of the patents forms and fees is available at the Registry of Patents and is downloadable from the IPOS website www.ipos.gov.sg