‘CORRESPONDING’ PATENT APPLICATIONS JURISDICTION REPORT: SINGAPORE
Ameen Kalani Henry Goh (S) Pte Ltd
Under Section 2 of the Singapore Patents Act and Rule 41 of the Singapore Patents Rules, a ‘corresponding patent application’ is defined as one that is filed in a recognised country or patent office that is linked to a Singapore patent application through a priority claim. A corresponding application must be one that forms the basis for a priority claim or is subject to a priority claim based on the application in suit.
Also under Rule 41, corresponding applications filed or patents granted by the European Patent Office and Canadian Patent Office are recognised only if they were originally filed in English. It would be wise to remove the English language restriction for corresponding applications and patents filed with the European and Canadian Patent Offices. Instead, the applicant could be required to provide a verified English translation of the corresponding application or of the granted patent. Removing the English language restriction would enable applicants to rely on applications in any of the official filing languages of the European and Canadian Patent Offices. By comparison, in neighbouring Malaysia, an applicant cannot rely on its corresponding Canadian application, but there is no English language requirement when relying on a corresponding prescribed European application under the modified substantive examination route.
Te current definition of ‘corresponding application or patent’ results in at least one negative outcome. One scenario would see an applicant filing a PCT International application in the first instance with no claim to priority. Let us assume that this application then enters the PCT national phase in Singapore and in a recognised country under Rule 41, where it is subsequently allowed. Under the current statutory definition, the applicant will not be able to rely on this PCT national phase application, or its resulting patent in the other country, to satisfy grant requirements in Singapore. Tis appears to place the applicant in a disadvantageous position when filing a PCT International application in the first instance without a priority claim. It goes against the reason for allowing applicants freedom to prosecute their Singapore applications by relying on corresponding applications. Again in Malaysia, there is no requirement for the application in suit to be linked through a priority claim to a prescribed corresponding application before the latter can be relied upon under the modified substantive examination route.
Where the applicant intends to rely on a prescribed corresponding application or patent under Rule 41, two requirements are especially important. Firstly, each claim in the Singapore application when the grant fee is paid must be related to at least one claim in the prescribed corresponding application. Secondly, each claim in the Singapore application must have been examined to determine whether it appears to satisfy the criteria of novelty, inventive step and industrial applicability.
“ [A] METHOD OF TREATMENT CLAIM IS PRIMA FACIE DEEMED TO LACK INDUSTRIAL APPLICABILITY IN SINGAPORE. HOWEVER, CLAIMS DRAFTED IN THE FIRST, SECOND OR FURTHER MEDICAL USE FORMS ARE NOT CONSIDERED TO BE METHODS OF TREATMENT OR DIAGNOSIS.”
Let us assume that a claim relating to a method of treatment of the human or animal body has been searched and examined in a prescribed corresponding application in relation to industrial applicability and found to be patentable under the patent laws of a recognised country as stated in Rule 41. Te current recognised list of countries under Rule 41 includes Australia and the United States of America, where a method of treatment claim may be found to have industrial applicability. It should be pointed out that a method of treatment claim is prima facie deemed to lack industrial applicability in Singapore. However, claims draſted in the first, second or further medical use forms are not considered to be methods of treatment or diagnosis.
Applicants need to be aware of these issues, in addition to the associated statutory time periods, when intending to rely on their prescribed ‘corresponding applications’ to satisfy grant requirements in Singapore.
Ameen Kalani is a director at Henry Goh (S) Pte Ltd. He can be contacted at:
henryspl@singnet.com.sg or
hgoh_sg@henrygoh.com
94 World Intellectual Property Review September/October 2010
www.worldipreview.com
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