Today we’re continuing with our South-East Asia IPR Series with another core area of Singaporean IP law, the law of patents. Patents are essential, especially to those operating in the mechanical or electrical engineering sector, or manufacturing goods anywhere in the world.
A solid patent portfolio can prevent the copying and manufacturing of products by competitors and allows SMEs to exploit their inventions free from competition.
In addition, monitoring competitors patent portfolios and applications can provide useful information on their business strategy and product direction, thus enabling SMEs to react in advance of product releases to better handle threats to their market position presented by products utilising these new features or processes.
Singapore has recently been named ASEANs first International Patent Search and Examination Authority under the Patent Cooperation Treaty (PCT), and has the most developed legislation and procedures in the region.
So read on, and if you have any queries, feel free to contact our experts at the South-East Asia IPR SME Helpdesk for free, tailored advice.
What are patents?
A patent is a right granted to the owner of an invention to prevent others from making, using, importing or selling the invention without his permission. A patent may be obtained for a product or process that gives a new, technical solution to a problem, or a new method of doing things, the composition of a new product, or a technical improvement on how certain objects work.
Unlike most countries, Singapore only offers one official type of patent, however, registered designs, integrated circuits, and plant varieties can be registered separately and are conferred specific protection under Singapore IP law.
Patents in Singapore
In order to obtain a patent in Singapore, an invention must satisfy the criteria of showing ‘novelty’, having an ‘inventive step’, and must be ‘industrially applicable’. The date of your patent will be the date of filing the application for grant of patent in Singapore, however if an earlier application for the same product or process was filed in another country that is a member of the Paris Convention or World trade Organisation, you may claim ‘priority’. This means that your patent protection will begin from the date of your earlier application (or ‘priority date’), provided that the Singapore application is made within 12 months from the date of filing of the earlier application.
SMEs should consider applying for patents in Singapore as soon as possible, as mentioned above, Singapore operates a ‘first-to-file- system and the first person to file an application will own the rights to the invention once it is granted. IP is a territorial right, therefore it is essential to register your patent in Singapore before commencing business dealings there, and to be wary of disclosing too much information about your invention to third parties.
Obtaining patent protection
Any individual inventor, or people owning the rights to a patent by virtue of an agreement may make an application for a patent in Singapore. There are no restrictions as to nationality or residency, however a Singapore address must be provided for the service, to which all correspondence will be sent.
Applications must be made in English using the official form which can be obtained online and submitted to the Intellectual Property Office of Singapore (IPOS) either online via IP2SG (Patents) Search or by hand/post to the Registry of Patents, IPOS.
The application must be accompanies by:
- The application fee
- An English translation if any documents provided are in a language other than English
- A copy of your application filed earlier in a Paris Convention country or a WTO member country (if you wish to claim this earlier date as your ‘priority date’)
Patents in Singapore are assessed through a ‘positive grant’ system, whereby patent applications are materially examined by the examiners of the IPOS and only applications with fully positive examination results can proceed to grant.
Singapore is a member of the ASEAN Patent Examination Co-operation (ASPEC), a regional patent work sharing programme involving 9 of the 10 IP offices in the ASEAN member countries (only Myanmar is not yet involved). This cooperation agreement aims to reduce complexity, save time on applications and improve the quality of search and examination. Through this mechanism references made to an earlier examination, already performed in one IP office will help an examiner in the other IP office to better understand the invention claim, reduce search volumes and develop a more comprehensive examination strategy. In theory this would result in expedited applications for patents in Singapore, where a patent is already held in another ASEAN country.
In addition, Singapore is part of a pilot program called the Patent Prosecution Highway (PPH), involving the IP offices of the United States, Japan, Korea, China and Mexico. This mechanism aims to provide a means of significantly accelerating the examination of patent applications where a patent has already been obtained in a partner IP office. It also allows the sharing of information between involved IP offices and for search and examination results to be shared and used to expedite applications. To qualify, patent owners must have a corresponding patent application for the same invention filed with IPOS or a PPH partner office. IPOS has similar PPH agreements with the European Patent Office (EPO) and the State Intellectual Property Office (SIPO) or the People’s Republic of China.
The basic filing fee (charged by IPOS) for lodging a patent application is around EUR 100 (170 Singapore dollars). There are additional fees for subsequent steps in the application process dependant on the details of the application.
Once granted, patents in Singapore are valid for 20 years from the date of filing, subject to the payment of annual renewal fees starting from the end of the 4th year.
Integrated circuit layout-designs are protected for a duration of 10 years if they are first used commercially within five years of creation. In any other case, they are protected for 15 years from the date of creation.
New plant varieties can be protected for a maximum of 25 years, as long as the patent is renewed by the owner for this maximum term.
For more information on the application and registration process please refer to the IPOS website.
Singaporean IP law offers three main avenues of enforcement for those facing infringement of patents; civil litigation, criminal prosecution, and customs seizures. Unlike most ASEAN countries, there are no administrative actions available in Singapore. In many cases however, private mediation via legal professionals is more effective and should be considered as a viable option. For patent issues, mediation is often an effective tool which, given the severity of penalties for infringement in Singapore, will often result in a favourable outcome, as well as representing a considerable saving over civil or criminal actions.
In the event of patent infringement, civil litigation proceedings can be initiated with the Courts, which may award remedies including damages (or an account of profits), statutory damages, injunctions, and/or destruction orders for infringing goods.
Criminal prosecutions are not generally available for patent infringement.
It should be noted that the Singapore Patents Act contains provisions against groundless threats of legal action. Therefore, any proposed demand letter should be carefully drafted to make clear the legal basis upon which your potential infringement claim is premised. A statement which merely notifies the other party of the existence of a trade mark registration does not constitute a threat of proceedings.