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.

Changes to Patents Rules

There was a gathering of IP lawyers and patent attorneys at IPOS yesterday. An email had been sent some days before, announcing a briefing by IPOS on changes to the Patents Rules. Thinking this must surely refer to the recent substantive proposed changes to the patent system, yours truly mentally prepared herself for an afternoon of heated discussion between "them" and "us". It was therefore somewhat of a let-down when we were told that the briefing was for something else, and that it would indeed be brief.

So here they are, the 2 most recent changes to the Patents Rules, which will take effect later this month :

1. The Hungarian Patent Office joins the Austrian, Australian and Danish Patent Offices on the panel of search and examination authorities appointed by IPOS.

2. The fees for post-grant search and examination will be revised to range from between S$2,600 and S$3,800, up from the current S$2,340 to S$2,515. The revised fees for the Austrian Patent Office will only take effect some time next year.

Singapore company prevails in patent battle and solders on

The High Court of Singapore recently ruled on a suit involving patent infringement and revocation.

The plaintiff, ASM Assembly Automation Ltd ("ASM") commenced an action against Aurigin Technology Pte Ltd ("Aurigin") and 2 other defendants for the infringement of its registered patent for an apparatus and method for automatically placing an array of solder balls onto a substrate. The defendants counterclaimed on 2 main grounds; first, that ASM's patent was invalid for lack of novelty and inventiveness and second, that ASM had made groundless threats of infringement.

On the issue of novelty, while ASM's expert witness made certain unfavourable concessions in the course of cross-examination, Aurigin's expert witness explained how the patent was not new as each of the tendered prior art documents individually disclosed all the elements of the invention. His testimony on novelty was unreservedly accepted by the court, which then held that ASM's patent was not novel.

On the issue of inventiveness, ASM asserted that the patent was inventive as it was an improvement over the prior art. However, this assertion did not bear out during cross-examination. On the contrary, the court observed that the patent was "a disadvantageous modification of the closest prior art".

It was not surprising, therefore, that the court held that the patent was neither novel nor inventive, and Aurigin succeeded in revoking the patent. Accordingly, there could be no patent infringement and the threats made by Aurigin were found to be groundless.

As patent cases rarely make it to trial in Singapore, those that do are valuable stockpiles of instruction and guidance for future cases. Even though the court's judgment did not modify or expand on the law, having applied established common law principles laid down in Trek Technology (S) Pte Ltd v FE Global Electronics Pte Ltd (No. 2) [2005] 3 SLR 389 for novelty and Windsurfing International Inc v Tabur Marine [1985] RPC 59 as approved by the Court of Appeal in First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd [2008] 1 SLR 335 for inventiveness, the following lessons may still be learnt from this case :

1. Exercise care in the selection of expert witnesses; patent attorneys, no matter how qualified, may not necessarily be persons skilled in the art.

2. Ensure that witnesses are qualified and well-prepared to endure cross-examination by opposing counsel. In this case, the court had commented that ASM's expert witness was not familiar enough with the prior art. Cross-examination also demonstrated that the expert witness was ill-prepared, resulting in damage to ASM's case.

The decision is currently under appeal.

Citation : ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd and Others [2009] SGHC 206

Patent Practice Update

The Intellectual Property Office of Singapore has just issued a practice direction stating that issued Certificates of Grant for registered patents will no longer be accompanied by a copy of the granted specification. Patent owners who want a copy of the granted specification will have to download it from the ePatents database. This change will take effect on 1 November 2009.

Proposed changes to patent system

The Intellectual Property Office of Singapore has called for public feedback on several proposed changes to the existing patent system.

Most significant are the suggested modifications to the current self-assessment regime. At present, the burden of whether patent claims meet the patentability criteria lie on applicants, and not the patent office. Patent applications will not be refused even in the light of negative examination reports; it is up to the applicant to amend the claims to address the examiner's objections. IPOS proposes to move away from the self-assessment regime by several means, including :

a. providing for informal hearings with the examiner before the examination report is issued;

b. disallowing amendments to claims after the examination report is issued;

c. refusing applications with negative examination reports;

d. only allowing reliance on fully positive IPRPs;

e. mandatory examination of all post-grant amendments.

Other areas of the patent system that are under consideration are :

1. imposing limits to extensions of time;

2. whether the restoration period for lapsed patents should be shortened from 30 months to 20 months;
3. whether renewal reminders should be sent to patent owners before the renewal deadline;
4. whether second or subsequent new medical use claims should be allowable.

The deadline for feedback is 14 August 2009.

IPOS - JPO Patent Prosecution Highway

Come 1 July 2009, the Singapore and Japan IP offices will embark on a year-long Patent Prosecution Highway ("PPH") test run. The test period may be extended by a year depending on the PPH's popularity among other factors. This is the second PPH pilot programme for IPOS, the first being a collaboration with the US Patent Office ("USPTO"). Information on how to participate in the PPH by filing the requisite notices at IPOS and JPO may be found here and here respectively.

It is yet unknown as to how many PPH cases there are under the 2-month old IPOS-USPTO PPH pilot programme; let's see if I can find out when I make a trip down to IPOS tomorrow morning later.

New IPOS Initiative

Launched in late May 2009, IP Knowledge Kaleidoscope is the latest of IPOS' initiatives to assist businesses in identifying, protecting and commercially exploiting their intellectual property. The Kaleidoscope is primarily a series of factsheets containing relevant information on various aspects of intellectual property. The first factsheet on "Licensing of IP Rights as a Business Tool" is available for download here.

Also, patent owners looking to licence their rights may endorse their patents accordingly. In return, they get a 50% reduction on renewal fees. In order that interested licensees may easily search for these patents, IPOS has now put together a list for convenience. More information is available here.

Patent Prosecution Highway : A One-Way Street?

The United States Patent and Trademark Office (USPTO) and the Intellectual Property Office of Singapore (IPOS) have begun testing the feasibility of sharing the results of their patent search and/or examination results with each other, under what has been called the Patent Prosecution Highway Pilot Programme (Programme).  It is hoped that the shared results would lead to reduced work done, faster prosecution and better search and examination.  The initiative will last for one year from 2 February 2009, and may be extended for another year if necessary.    

Under the Programme, where a patent application has been first filed at the USPTO, and a corresponding application filed at IPOS, the Singapore patent application may in certain circumstances benefit from accelerated prosecution where :-

1. the final results of the search and examination or the patent grant of the US application are available; and

2. the applicant furnishes certain prescribed information of the US application to IPOS.

For instance, a request for accelerated prosecution may be made where the Singapore application validly claims priority from the US application, or where the Singapore application is a national phase entry of a PCT application and which validly claims priority from a US national application.  More scenarios under which accelerated prosecution may be requested in Singapore are found here.   Details on applying for the Programme at the USPTO may be found here.

Our primary concern was how much more the Programme can accelerate the prosecution of Singapore applications, as under Singapore’s current prosecution system, applicants may already rely upon final examination reports of US corresponding applications.   At a discussion with IPOS on Thursday 30 April 2009, IPOS addressed this and other enquiries raised by IP practitioners on the Programme.  

The takeaway from the discussion was that the Programme would benefit applications first filed in Singapore, and then later filed in the US, as that would potentially shave 2 to 3 years off the US application by jump-starting the examination process.  However, as IPOS informed us, in view of our prosecution system, applications first filed in the US (and later filed in Singapore) and where the latter relies on the US examination results, would only be shortened during the grant stage.   The amount of time saved seems insignificant given that it currently only takes about 2 to 4 months from the filing of the grant request to the issuance of the certificate of grant.

Clearly, the Programme is geared towards accelerating applications in the US.  However, considerations such as the documentary requirements for making the US application "special" (i.e.  signing it up for the Programme)  are notoriously heavy and may potentially incur hefty US patent attorney costs.  Then again, this may be a worthwhile exercise depending on the technology involved, such as software patents which by nature have a short shelf-life given the speed of advancement in the area.

The USPTO currently has similar pilot programmes with the German, Danish, Australian, Canadian, UK and European patent offices.  The programme has been made permanent with the Japanese and Korean patent offices.