Wednesday, February 17, 2010

Reliance on New Zealand patents to grant

In Singapore, it is possible for a patent application to proceed to grant based on final examination results or granted patent of a corresponding application in any one of seven prescribed patent offices, including the New Zealand Patent Office. When this option is elected, section 30(3)(c) of our Patents Act states that the claims in the Singapore patent application must relate to the claims in the corresponding application (we believe that the claims should be identical) which have been examined for novelty, inventive step and industrial application.

However, the Singapore Registry has recently highlighted that the New Zealand Patent Office does not examine patent applications for inventive step. Therefore, while Singapore patents proceeding to grant on the strength of a corresponding New Zealand patent (or final examination results thereof) will still be granted, such patents may be challenged on the basis that they have not been examined for inventive step. In that event, it is possible to request post-grant search and examination at the relevant time.

In the circumstances, patent applicants are encouraged to rely on corresponding patents of prescribed offices i.e. the United States, United Kingdom, Australia, Korea, Japan, European Patent Office (if filed in English), Canada (if filed in English), which examine for all three criteria of patentability, or final examination results thereof.

Meanwhile, it is believed that the current New Zealand Patents Act of 1953 will be replaced by a new Act, which will, among other changes, introduce inventiveness as an examination criteria.


Mick McLaughlin said...

Hi Vicki, Good post and at a relevant time. The matter came up for me last week. In hindsight, amazing that it hasn’t come up before now.

I believe you’re right to say that IPOS will still allow the patent to grant on the basis of the NZ application - that seems to be their current practice anyway - but it's not clear to me that this is correct practice. Section 30(1)(b) stipulates that the Registrar shall grant a patent subject to the conditions in subsection (3) having been satisfied. Of course one of the requirements of subs(3) is that the claims of the corresponding case were examined for inter alia inventive step. So, for NZ applications, the conditions of subs (3) are not satisfied and maybe the Registrar should not grant a patent based on a corresponding NZ case. (There is a complex argument that the claims of the SG case could be related to the NZ application but also examined for inventive step in another application, but I think that’s too tortuous an interpretation and perhaps not the most practical argument to make.) If the patent shouldn’t be granted based on a NZ case, then it makes something of a mockery of Rule 41 for the purposes of S29(2)(c)(ii). (Probably a Section of the Act takes precedence over an Implementing Regulation in the case of conflict? I checked the Interpretation Act to see if it gave any guidance on how to handle conflicts, but it doesn’t.)

It’s all extremely messy. Let me know if you ever get any clarification on it!

VH said...

Hi Mick, thanks for your comment. Until Rule 41 is amended, IPOS still has to grant on the basis of NZ patent. Pending clarification on this issue, I think we may have to be creative in our approach to 30(3), including the tortuous interpretation that you mentioned. What do you think of proceeding to grant based on NZ patent, then making post-grant amendments to conform with a later-granted corresponding patent by a prescribed office OR to conform with a granted European patent which was not filed in English (which falls outside Rule 41 and could not be relied on)?

Mick McLaughlin said...

I'm still not convinced a NZ application satisfies the requirements of S30(3)(c) and that a SG patent should be granted on the basis of a NZ one, despite the specific reference to NZ in Rule 41. That's the nub of the problem.

However, if IPOS is prepared to allow it, it's not clear at the moment what harm would be done. The only downside I can think of for now is that the patent could be open to revocation on the ground that it was obtained on a misrepresentation, the misrepresentation being that the claims of the SG patent were related to claims in the corresponding (NZ) application which were examined for inventive step. However, seems unlikely, given the fact IPOS would have contributed to the "misrepresentation" a) by explicitly mentioning NZ in Rule 41 and then b) allowing the SG patent to grant on the basis of the NZ case, even after having raised the issue (of no examination for IS in NZ with the applicant). Not sure post-grant amendments would be necessary or required (or if there really was a problem that it would fix the problem).