Database on Flexibilities in the Intellectual Property System

Provisions of Law

Preliminary examination

28.-(1) The Registrar shall conduct a preliminary examination of an application for a patent if

(a) the application has a date of filing;

(b) the application has not been withdrawn or treated as abandoned;

(d) one or more claims for the purposes of the application have been filed under section 26 (12) (a); and

(e) where the application has a date of filing under section 26 (1) by reason only that the documents filed at the Registry to initiate the application satisfy the conditions in section 26 (1) (a), (b) and (c) (ii), the documents referred to in section 26 (7) (a), ( b) and (c) have been filed at the Registry.

(2) If, after the Registrar has conducted a preliminary examination of an application for a patent under subsection (1), the applicant files at the Registry, and does not withdraw, any missing part of the application in accordance with section 26 (8), then the Registrar shall conduct another preliminary examination of the application, with the missing part treated as included in the application.

(3) On a preliminary examination of an application, the Registrar shall determine

(a) whether the application complies with all the formal requirements; and

(b) whether

(i) any drawing referred to in the application; or

(ii) any part of the description of the invention for which the patent is sought, is missing from the application.

(4) If the Registrar determines under subsection (3) (a) that not all the formal requirements have been complied with, then the Registrar shall notify the applicant accordingly and shall specify in the notification a period during which the applicant shall have the opportunity

(a) to make observations on the Registrar's determination; and

(b) subject to section 84, to amend the application so as to comply with all the formal requirements.

(5) Where subsection (4) applies, the Registrar may refuse the application if the applicant fails to amend the application as mentioned in paragraph (b) of that subsection before the end of the period specified by the Registrar under that subsection.

(6) Subsection (5) does not apply if

(a) the applicant makes observations as mentioned in subsection (4) (a) before the end of the period specified by the Registrar under subsection (4); and

(b) as a result of the observations, the Registrar is satisfied that all the formal requirements have been complied with.

(7) If the Registrar determines under subsection (3) (b) that a drawing or part of the description of the invention is missing from the application, then the Registrar shall notify the applicant accordingly.

(8) Where subsection (7) applies, if the applicant files the drawing or part of the description of the invention that is missing from the application within such period and in such manner as may be prescribed, and the applicant does not withdraw that drawing or part of the description of the invention before the end of that period, then

(a) that drawing or part of the description of the invention shall be treated as included in the application; and

(b) the date of filing of the application shall be the date on which that drawing or part of the description of the invention is filed at the Registry.

(9) Subsection (8) (b) does not apply if

(a) on or before the date which is the date of filing of the application by virtue of section 26 (1), a declaration is made under section 17 (2), in or in connection with the application, specifying an earlier relevant application; and

(b) within such period as may be prescribed, the applicant

(i) makes a request to the Registrar for subsection (8) (b) not to apply to the application;

(ii) files a statement that the drawing or part of the description of the invention referred to in subsection (8) is incorporated in the application by reference to, and is completely contained in, the earlier relevant application, as filed;

(iii) furnishes such information on the earlier relevant application as may be prescribed; and

(iv) files such other documents as may be prescribed.

(10) In subsection (9), "relevant application" has the same meaning as in section 17 (5).

Search and examination

29.-(1) Where an application for a patent complies with all the formal requirements , the Registrar shall send a notification to the applicant.

(2) The applicant shall comply with any of the following paragraphs which is applicable within the period prescribed for that paragraph:

(a) where the application is not an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86 (3), file a request in the prescribed form and pay the prescribed fee for a search report;

(b) file a request in the prescribed form and pay the prescribed fee for a search and examination report;

(i) file

(A) a copy of the search report in respect of the corresponding application;

(B) where the search report is not in English, an English translation of the search report;

(C) a copy of each prescribed document and, where required by the rules, an English translation of the document if it is not in English; and

(D) a request in the prescribed form for an examination report,

and pay the prescribed fee for an examination report; or

(ii) file

(A) in the prescribed form, the prescribed information relating to the corresponding application; and

(B) where the prescribed information includes any document that is not in English, an English translation of such document;

(d) where a corresponding international application for a patent has been filed

(i) file

(A) a copy of the international search report in respect of the corresponding

international application;

(B) where the international search report is not in English, an English translation of the international search report;

(C) a copy of each prescribed document and, where required by the rules, an English translation of the document if it is not in English; and

(D) a request in the prescribed form for an examination report,

and pay the prescribed fee for an examination report; or

(ii) file

(A) in the prescribed form, the prescribed information relating to the corresponding international application; and

(B) where the prescribed information includes any document that is not in English, an English translation of such document;

(e) where the application is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86 (3)

(i) file

(A) a copy of the international search report issued in respect of the application;

(B) where the international search report is not in English, an English translation of the international search report;

(C) a copy of each prescribed document and, where required by the rules, an English translation of the document if it is not in English; and

(D) a request in the prescribed form for an examination report,

and pay the prescribed fee for an examination report; or

(ii) file a notice in the prescribed form of the applicant's intention to rely on the

international preliminary report on patentability in respect of that application.

[19/2004]

(3) Where the applicant has filed a request and paid the prescribed fee for a search report under subsection (2) (a), the Registrar shall

(a) cause the application to be subjected to a search by an Examiner to discover the relevant prior art contained in

(i) such documentation as may be prescribed; and

(ii) any additional documentation that the Examiner is aware of and considers to be relevant; and

(b) upon receiving the search report prepared by the Examiner, send the applicant a notification and a copy of the search report.

(4) Upon receiving the search report under subsection (3) (b) from the Registrar, the applicant shall, within the prescribed period, file a request in the prescribed form and pay the prescribed fee for an examination report.

(5) Where the applicant has filed a request and paid the fee for an examination report under subsection (2) (c) (i), (d) (i) or (e) (i) or (4), the Registrar shall

(a) cause the application to be subjected to an examination by an Examiner to determine

(i) whether the conditions specified in sections 13 and 25 (4) and (5) have been complied with;

(ii) whether the application discloses any additional matter referred to in section 84 (1); and

(iii) whether the application discloses any matter extending beyond that disclosed in the application as filed,

taking into consideration all the relevant prior art, if any, that the Examiner is aware of or that has been referred to in the search report or international search report, as the case may be; and

(b) upon receiving the examination report prepared by the Examiner, send the applicant a notification and a copy of the examination report.

(6) Where the applicant has filed a request and paid the fee for a search and examination report under subsection (2) (b), the Registrar shall

(a) cause the application to be subjected to

(i) a search by an Examiner to discover the relevant prior art contained in

(A) such documentation as may be prescribed; and

(B) any additional documentation that the Examiner is aware of and considers to be

relevant; and

(ii) an examination by an Examiner to determine

(A) whether the conditions specified in sections 13 and 25 (4) and (5) have been

complied with;

(B) whether the application discloses any additional matter referred to in section 84

(1); and

taking into consideration all the relevant prior art, if any, that the Examiner is aware of or that has been discovered in the search; and

(b) upon receiving the search and examination report prepared by the Examiner, send the applicant a notification and a copy of the search and examination report.

[19/2004]

(7) If, within the prescribed period under

(a) paragraph (b), (c) (i) or (ii), (d) (i) or (ii) or (e) (i) or (ii) of subsection (2); or

(b) subsection (4),

an applicant files a request in the prescribed form and pays the prescribed fee for that period to be extended, the applicant shall perform the acts set out in that provision within the prescribed extended period for performing those acts.

Search and examination after grant

38A.-(1) Subject to subsection (2), any person may request for a search and examination report in respect of any claim or claims in the specification of a patent on any of the following grounds:

(a) where the patent was granted on the basis of any examination report or search and examination report referred to in section 29, any international preliminary report on patentability referred to in section 30 (2) (b) (vi) or any international preliminary examination report, that

(i) at least one claim in the application for the patent at the time the prescribed documents for the grant of the patent were filed and the prescribed fee for the grant of the patent was paid was not related to any claim in the application at the time the report was issued

(A) which has been examined; and

(B) which is referred to in the report; or

(ii) the Examiner of the application did not consider all the relevant prior art before preparing the report;

(b) where the patent was granted on the basis of any prescribed information relating to a corresponding application or corresponding international application referred to in section 29, that

(i) at the time the prescribed documents for the grant of the patent were filed and the

prescribed fee for the grant of the patent was paid, at least one claim in the application for the patent did not relate to any claim

(A) which is set out in the prescribed information relating to the corresponding

application or corresponding international application, as the case may be; and

(B) which has been examined to determine whether the claim appears to satisfy the

criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility); or

(ii) the Examiner of the corresponding application or corresponding international application, as the case may be, did not consider all the relevant prior art before preparing his report on the examination of the corresponding application or corresponding international application, as the case may be.

[19/2004]

(2) The Registrar shall not grant a request under subsection (1) unless

(a) the request is filed in the prescribed manner;

(b) the prescribed fee for the search and examination report has been paid; and

[19/2004]

(3) Subject to subsection (4), any person who files a request under subsection (1) may, at the time he files the request, also file

(a) any observation which he wishes to make in relation to the patent; and

(b) any document which he considers to be relevant for the purposes of the examination.

(4) Where any document referred to in subsection (3) (b) is not in English, the person who files the request under subsection (1) shall also file an English translation of the document.

[19/2004]

(5) The Registrar shall not grant a request under subsection (1) if he is of the view that the request is frivolous, vexatious or an abuse of the process.

[19/2004]

(6) No request under subsection (1) shall be filed or granted where there are pending before the court or the Registrar proceedings in which the validity of the patent may be put in issue.

[19/2004]

(7) Where the Registrar grants a request under subsection (1), the Registrar shall cause the claim or claims to be subjected to

(a) a search by an Examiner to discover the relevant prior art contained in

(i) such documentation as may be prescribed; and

(ii) any additional documentation that the Examiner is aware of and considers to be relevant; and

(b) an examination by an Examiner to determine

(i) whether the conditions specified in sections 13 and 25 (4) and (5) have been complied with;

(ii) whether the specification of the patent discloses any additional matter referred to in

section 84 (1); and

(iii) whether the specification of the patent discloses any matter extending beyond that

disclosed in the application for the patent as filed,

taking into consideration all the relevant prior art, if any, that the Examiner is aware of or that has been discovered in the search.

(8) If it appears to the Examiner during the examination of the specification of the patent that

(a) the conditions specified in sections 13 and 25 (4) and (5) have not been complied with; or

(b) the specification of the patent discloses

(i) any additional matter referred to in section 84 (1); or

(ii) any matter extending beyond that disclosed in the application for the patent as filed,

the Examiner shall give the proprietor of the patent a written opinion to that effect, and the proprietor of the patent shall, before the examination report is issued, have the right to respond in the prescribed manner to the written opinion within the prescribed period.

(9) Upon receiving the search and examination report prepared by the Examiner, the Registrar shall

(a) send a copy of the report to the proprietor of the patent; and

(b) where the request under subsection (1) is not filed by the proprietor of the patent, send a copy each of

(i) the report;

(ii) any written opinion given by the Examiner; and

(iii) any response given in the prescribed manner by the proprietor of the patent to any such written opinion,

to the person who filed the request.

Title:	Sections 28, 29 and 38A of the Patents Act No. 21 of 25/11/1994 as of 01/12/2008
Field of IP:	Patents
Type of flexibility:	Substantive examination
Summary table:

Legislative Implementation of Flexibilities - Singapore

Provisions of Law