Letter & Annex A - Intellectual Property Office of Singapore
Letter & Annex A - Intellectual Property Office of Singapore Letter & Annex A - Intellectual Property Office of Singapore
Annex A2.4 Proposed PSA Changes: Post-Grant Amendments2.4.1 Current: Post-grant amendments are limited to amendments which do not discloseadditional matter or extend the scope of protection conferred by the patent (section84(3) of the Patents Act). Amendments filed are advertised and if there are noobjection lodged by third parties the amendments will be accepted.2.4.2 Proposed: It is proposed that all post-grant amendments be examined. The patenteefiles a request for leave to amend with reasons for the post-grant amendments anddetails of the amendments including a claims correspondence table. The amendmentswill be subjected to formalities check and assessment of allowability. If the outcomeof the allowability opinion is positive, the amendments are deemed allowable and theamendments will be advertised for opposition. In the absence of objection by thirdparties, the amendments will be accepted. If the outcome of the allowability opinion isnegative, the amendments are deemed not allowable. The report then becomes arecord for public inspection. The patentee may appeal to the court.2.4.3 Please see Figure 10 for the process on post-grant amendments.Figure 10: Proposed process on post-grant amendmentsRequest for leave to amendwith reasonsFormalities check andallowability assessmentAmendments allowableand advertised foroppositionLeave to amendrefused.Patentee mayappeal to the court.Report becomes a record forpublic inspection.Invitation 41. What are your views about the proposed mandatory post-grant amendmentsallowability opinion for amendments filed after grant?It would be helpful to the Registry if such comments and feedback are accompanied bycomprehensive reasons and, where available, examples or situations in support.Page 19 of 31
Annex A2.5 Proposed PSA Changes: Post-grant Search & Examination2.5.1 Current: A post-grant search and examination report of a patent may be requested byany party on the grounds that the claim(s) is not related to the examined claim(s) orthe examiner did not consider all the relevant prior art in the examination report. Inthe request, the requestor may make observations in relation to the patent and encloseany document considered relevant for the purpose of the examination.2.5.2 Upon receipt of the request and if the requestor is not the patentee, IPOS notifies thepatentee. During the examination period, patentee may respond to the written opinionand propose amendments. Upon completion, the examination report will be sent toboth the requestor and patentee.2.5.3 The examination report is a non-binding opinion and becomes a record for publicinspection.2.5.4 Proposed: To facilitate the examination work, the patentee will be allowed to makeobservations before the commencement of the examination.Invitation 51. What are your views about maintaining the grounds for requesting for a post-grantsearch and examination?2. What is your view about the proposed minor process change in allowing patentee tomake observations?It would be helpful to the Registry if such comments and feedback are accompanied bycomprehensive reasons and, where available, examples or situations in support.Page 20 of 31
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- Page 3 and 4: Annex AProposed Changes to the Pate
- Page 5 and 6: Annex AGlossary of Terms UsedTermMe
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- Page 13 and 14: Annex AInvitation 11. What are your
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- Page 25 and 26: Annex AFigure 12: Proposed Process
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<strong>Annex</strong> A2.4 Proposed PSA Changes: Post-Grant Amendments2.4.1 Current: Post-grant amendments are limited to amendments which do not discloseadditional matter or extend the scope <strong>of</strong> protection conferred by the patent (section84(3) <strong>of</strong> the Patents Act). Amendments filed are advertised and if there are noobjection lodged by third parties the amendments will be accepted.2.4.2 Proposed: It is proposed that all post-grant amendments be examined. The patenteefiles a request for leave to amend with reasons for the post-grant amendments anddetails <strong>of</strong> the amendments including a claims correspondence table. The amendmentswill be subjected to formalities check and assessment <strong>of</strong> allowability. If the outcome<strong>of</strong> the allowability opinion is positive, the amendments are deemed allowable and theamendments will be advertised for opposition. In the absence <strong>of</strong> objection by thirdparties, the amendments will be accepted. If the outcome <strong>of</strong> the allowability opinion isnegative, the amendments are deemed not allowable. The report then becomes arecord for public inspection. The patentee may appeal to the court.2.4.3 Please see Figure 10 for the process on post-grant amendments.Figure 10: Proposed process on post-grant amendmentsRequest for leave to amendwith reasonsFormalities check andallowability assessmentAmendments allowableand advertised foroppositionLeave to amendrefused.Patentee mayappeal to the court.Report becomes a record forpublic inspection.Invitation 41. What are your views about the proposed mandatory post-grant amendmentsallowability opinion for amendments filed after grant?It would be helpful to the Registry if such comments and feedback are accompanied bycomprehensive reasons and, where available, examples or situations in support.Page 19 <strong>of</strong> 31
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