Geneva, Switzerland
May 17, 2012
Source:Intellectual Property Watch
By Maricel Estavillo
The tiny island state of Singapore has begun to ramp up its capacity for patent search and examination ahead of a bold move to adopt a new patent system, one of the proposed major amendments to its Patents Act. The Southeast Asian economic high-flyer is pressing for changes to its laws to position itself as an Asian hub for intellectual property.
Moving to what it calls as a “positive grant” patent system from the present “self assessment” type of system tops the list of amendments to Singapore’s patent law. In the current system, even patents that do not meet the full patentability criteria commonly observed in more developed patent offices abroad can be registered.
The positive grant system, on the other hand, which is the term Singapore uses to refer to the system used in Japan, in the United Kingdom and by the European Patent Office (EPO) is stricter and calls for the fulfilment of more patentability requirements.
Singapore was forced to adopt the lenient self-assessment type of patent system due to the lack of sufficient domestic patent search and examination capabilities when it first put up its own patent system back in 1995.
Migrating to the new system is supposed to raise the quality of registered patents in the country and make its patent office comparable to established patent offices abroad.
“This will strengthen business and investor confidence in our IP regime, and enhance Singapore’s reputation as a leading IP hub in Asia,” the Singapore Ministry of Law said in a press release that was sent out ahead of the first reading in the Parliament on the Patents Amendment Bill on 14 May.
The shift to the new system also signals Singapore’s new mandate to move away from outsourcing search and examination works to patent offices in other countries.
The ministry said that it will build “world-class” search and examination capabilities in what it describes as specific technology classes that are aligned with the country’s main research and development (R&D) thrusts.
“Preparations for this new initiative are well on track. Response to IPOS’ (Intellectual Property Office of Singapore) initial recruitment exercise for patent examiners has been excellent, with over 180 quality applicants for 20 positions. The team is expected to be operational by mid-2013,” the ministry said.
To date, there are only about 100 Singapore-registered patent agents in practice and only Singapore-registered patent agents can undertake patent agent work in the country.
Prof. Josef Straus of the Munich-based Max Planck Institute for Intellectual Property and Competition Law said the current initiative of Singapore seems to “follow a sound logic,” but it is too early to tell whether the changes can bolster its regional bid to become an IP hub.
“The move to perform searches and examinations in some areas of technology in IPOS itself seems to follow a sound logic, providing they can really master the task,” Straus said in an interview. “Only the future will answer this. This will to a large extent depend on the numbers.”
Even the system of established patent offices is not foolproof.
“As a general rule I would say that every country should have enough human resources to be competent enough to perform a substantive examination. Whether this should be done from scratch or in a kind of opposition proceedings, rechecking the examination results of a reliable partner office, however, seems debatable,” Straus said.
“The present international situation is irrational: to examine the same invention five, six and more times based on basically harmonised patentability requirements is not easy to defend, bearing in mind the globalised markets and the fact that the large majority of patents is actually not exploited and the number of patents enforced and/or challenged in courts is in terms of percentage negligible,” he added.
Opening Up Market to Foreign Patent Agents
The proposed amendments also include allowing foreign patent agents to do offshore patent agency work in Singapore without requiring them to qualify as Singapore-registered patent agents.
“This move will broaden the range of patent services in Singapore, particularly in international patent expertise, and is intended to meet the growth in regional demand for international patent services and attract such work to Singapore,” the ministry said.
In particular, foreign-registered patent agents will be allowed to do at least the following:
1. Apply for patents at any place other than in Singapore;
2. Prepare the specifications or other documents to comply with the patent law of any country other than in Singapore and for international application for a patent, including applications for Patent Cooperation Treaty (PCT);and
3. Give advice about the validity or infringement of patents under the patent law of any country other than Singapore.
Managed by the World Intellectual Property Office (WIPO) and with 145 contracting states to date, the PCT is a tool for filing an international application, in which a patent applicant is given up to 18 months to seek protection in selected foreign countries.
A stricter patent system and opening up its patent system to foreign patent agents are strategic moves that could potentially boost the volume of patent activities of Singapore-based companies abroad and vice versa and holds promise for Singapore leading the development of IP capacity of the Southeast Asian region.
Eiji Katayama, a patent lawyer at Abe, Ikubo & Katayama law office in Tokyo, said Singapore’s initiative to reform its patent law comes at a time when intellectual property is gaining ground in Asia. “As Singapore undertook quite unique policies in other areas, I am interested to see how Singapore will play a role in Asia’s IP in the coming years,” Katayama told Intellectual Property Watch.
At present, the patent numbers are still small on this side of the world.
At the EPO, for instance, the number of European patent applications filed by Singapore-based applicants for 2011 was at 305, still small compared to Germany at 26,234 and the United States at 34,993. But compared with other Southeast Asian countries, Singapore’s number is already high: Philippines at 3, Thailand at 7, Malaysia at 79 or Vietnam with 0. EPO data may be accessed here.
Albeit promising, foreign observers see the bid of Singapore to become an IP hub as requiring it to forge closer cooperation with other Asian economies.
Already, the ministry admitted that some local patent agents have expressed concern about the effects of competition from foreign patent agents on the local profession.
“Our view is that if Singapore can develop stronger international patent agent capabilities, we can attract more work from the region and grow the overall market for Singapore firms,” the Ministry of Law said in the press release. “Such a move, moreover, would help improve the overall infrastructure in Singapore necessary to support national R&D efforts and the innovation economy in general.”
Singapore is now reviewing the registration requirements for their local patent agents to ensure that the changes to the law would not put them at a disadvantage.
Other amendments to Singapore’s patent law include the setting up of an integrated registry for all IP transactions and the transfer of regulation of pharmaceutical products for human use from the Medicines Act to the Health Products Act.
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