This post deals with the process, in particular, the timing of filing voluntary amendments during the prosecution of a patent application in Singapore.

TL;DR

It is possible to file voluntary or discretionary amendments to a Singapore patent application after requesting examination (or combined search and examination, or supplementary examination).

However, we consider it best practice to file any and all voluntary amendments before requesting any examination on a Singapore patent application.

Scope of Voluntary Amendments

Voluntary amendments to the specification of a Singapore patent application may include any of the following:

  • voluntary amendment to the claims of a Singapore patent application
  • voluntary amendment to the drawings a Singapore patent application, and
  • voluntary amendment to the description a Singapore patent application

The General Rule: Voluntary Amendments are Possible

Under the Singapore patent act and rules, it is possible for an applicant to file voluntary amendments after a Singapore patent application has been filed (Section 31(a)), subject to the restrictions in timing outlined in this blog post.

Any amendments to a Singapore patent application have to be made before payment of the grant fee on the Singapore application.

Important: all amendments to Singapore patent applications and Singapore patents, whether voluntary amendments, or amendments made to address objections raised by IPOS Examiners, must comply with the rules regarding added subject matter in Singapore.

Added subject matter is outside the scope of this blog post, but please get in touch with us if you need more information.

Restrictions on Timing of Voluntary Amendments (Singapore Patents Rule 49)

Rule 49 of the Singapore Patents Rules sets out certain restrictions as to the timing of an allowable request for voluntary amendment.

“Time for making amendments before grant

49.— (1) The applicant may, of his own volition, amend the request for the grant of a patent at any time before payment of the fee for the grant of the patent.

(2) Subject to paragraph (3), the applicant may, unless the Registrar otherwise requires, of the applicant’s own volition, amend the description, claims, drawings and abstract at any time before payment of the fee for the grant of a patent.

(3) Subject to section 29B(2), an amendment shall not be made under paragraph (2) —

(a) at any time after the filing of a request for a search report under section 29(1)(a) and before the receipt of that report by the applicant;

(b) at any time after the filing of a request for a search and examination report under section 29(1)(b), unless the amendment is contained in a response filed under rule 46(3) in respect of that report;

(c) at any time after the filing of a request for an examination report under section 29(1)(c) or (3), unless the amendment is contained in a response filed under rule 46(3) in respect of that report;

(d) at any time after the filing of a request for a supplementary examination report under section 29(1)(d), unless the amendment is contained in a response filed under rule 46(3) in respect of that report; or (e) at any time after a request for a review under section 29B(1) is made.”

Unless a request for voluntary amendment is filed within the times set out in Rule 49, it will be refused (Section 31(4) of the Patents Act).

In Singapore, a patent application may be searched by filing a request for a separate search (or as part of a request for combined search and examination).

In each case, the Search Examiner searches the subject matter of the claims and establishes a Search Report.

Rule 49(3)(a) deals with the situation where a separate request for a search report is made (i.e., not combined search and examination, for which see below).

Under Rule 49(3)(a), it is not possible to request a voluntary amendment between the filing of a request for search, and the establishment of the search report by the search examiner.

It makes sense for voluntary amendments not to be possible during the course of a search, as otherwise, it would simply not be possible for the search examiner to do his job.

This is because it would make it difficult or impossible for the search examiner to determine the subject matter to be searched for the Singapore patent application,if it were possible to change the claims during the search process.

Voluntary Amendments Allowed Before Requesting Examination

Rule 49 provides that a voluntary amendment may be entered at any time before a request for examination is filed.

Where a request for combined search and examination is filed, a voluntary amendment may be requested at any time before the request for search and examination is filed.

Finally, in supplementary examination, a request for voluntary amendment may be filed before requesting supplementary examination in a Singapore patent application.

Voluntary Amendments Allowed in Response to Written Opinion during Examination

It is possible to request examination of a Singapore patent application relying on a search report already established in a corresponding application, a corresponding international application, the originating PCT application or a related national phase application.

There are a number of restrictions set out in the Act and Rules on the filing of voluntary amendments after requesting examination on a Singapore patent application.

Rule 49(3)(c) provides that a voluntary amendment cannot be made at any time after a request for examination is filed on the Singapore application, “unless the amendment is contained in a response filed under rule 46(3) in respect of that report”.

An exception is therefore provided in Rule 49, where it is possible to file a voluntary amendment after requesting examination, provided that this is filed in response to a Written Opinion issued in the course of examination.

From this we can see that amendments filed in response to a Written Opinion do not necessarily only have to deal with objections raised in the Singapore Written Opinion.

Voluntary amendments are allowed to be made in a response to a Written Opinion in Singapore.

Written Opinions and Examination Reports

Despite its name, a Written Opinion in Singapore practice is equivalent to an Office Action or Examination Report in other jurisdictions. There is no obligation as such under the Singapore Patents Act to respond to the Written Opinion.

If a response is not filed, then IPOS will issue an Examination Report in due course which will correspond to the Written Opinion.

Where a request for combined search and examination is filed and no response is filed to a Written Opinion, then IPOS will issue a Search and Examination Report in due course which will correspond to the Written Opinion.

In supplementary examination, where the applicant does not respond to a Written Opinion issued by IPOS, the office will issue a Supplementary Examination Report which corresponds to the Written Opinion.

Other Commentaries

We have seen a number of commentaries which appear to suggest that it is not possible at all for a voluntary amendment to be made to a Singapore patent application, after the filing of a request for examination.

For example, we have seen the following from another firm of Singapore patent attorneys:

“After requesting Substantive or Supplementary Examination, further amendments can only be made in response to an objection from an examiner.”

We disagree with the interpretation of the Singapore Act and Rules as set out in these commentaries.

Our view is that it is possible to file an amendment in response to a Written Opinion, where the amendment does not only contain amendments that address the issues raised by the Examiner, but also contains matter that is intended to voluntarily added to the specification.

We come to this conclusion by looking at the wording of Rule 49 (in particular the clause cited above, “unless the amendment is contained in a response filed under rule 46(3) in respect of that report”).

This conclusion is reinforced by a reading of Rule 46.

Rule 46 of the Singapore Patents Rules - Responding to a Written Opinion

Looking at Rule 46 of the Singapore Patents Rules, this provides for the procedure for responding to a Written Opinion.

Rule 46 clearly states:

“(3) The applicant may file a response to the written opinion in Patents Form 13A containing —

(a) written submissions on the Examiner’s opinion; or

(b) an amendment of the specification of the application (whether or not he makes the amendment of his own volition),”

Note the words “(whether or not he makes the amendment of his own volition)” at the last part of Rule 46(3).

This makes clear to us that it is possible for an applicant to make amendments of his or her own volition after requesting examination, provided that he (or she) does so in response to the Written Opinion.

Note: unlike some other jurisdictions, the entry of voluntary amendments filed in response to an Examination Report or Office Action (here, in Singapore, a Written Opinion) is not at the discretion of the Examiner.

Voluntary Amendments During Combined Search and Examination

Rule 49(3)(b) deals with the procedure for requesting voluntary amendments when a request for combined search and examination is made in Singapore.

As with examination, the Singapore Rules disallow voluntary amendments made after requests for combined search and examination, unless these are filed in response to a Written Opinion issued during the combined search and examination procedure.

Voluntary Amendments During Supplementary Examination

It is possible (but not recommended) in the prosecution of a Singapore patent application for a request for supplementary examination to be filed relying on the grant (or substantive allowance) of a foreign corresponding application.

The timing for filing voluntary amendments during supplementary examination is set out in Rule 49(3)(d).

During supplementary examination, after the request for supplementary examination is filed, it is not possible to file voluntary amendments to a Singapore patent application. If the voluntary amendment is made in a response to a Written Opinion issued during supplementary examination, however, IPOS should not reject it.

Note: we do not recommend requesting supplementary examination on a Singapore patent application.

No Voluntary Amendments Possible During Examination Review

The Singapore Patents Act sets out an “Examination Review” process, which is a procedure for review of a negative examination report.

Under Rule 49(3)(e), it is not possible for any voluntary amendments to be filed at any time after a request for a review under section 29B(1) is made.

Note: there appears to be an absolute bar on filing voluntary amendments during the review of an examination report in Singapore.

Voluntary Amendments Not to Include Added Subject Matter

We do not need to remind readers that any amendments, including voluntary amendments, must comply with the relatively strict added subject matter rules applying to Singapore patent applications and Singapore patents.

Please get in touch with us with us if you want to know more about this.

Best Practice for Filing Voluntary Amendments in Singapore

In summary, it is always possible to file voluntary amendments to a Singapore patent application after it is filed, and before any sort of examination is requested. The only restriction is where a search report has been requested (see above)

During examination, if a Written Opinion is issued by IPOS, it is possible to file amendments when responding to the Written Opinion to address any objections raised. It is also possible when responding to the Written Opinion for the applicant to introduce any voluntary amendments desired, subject to added subject matter rules.

However, the reality is that it is not possible to predict in advance how many Written Opinions will be issued by the Examiner for an application.

Where the application complies with the Act and Rules at the point of requesting examination or combined search and examination or supplementary examination, it is possible that no Written Opinion will be issued at all.

If no Written Opinion is issued by the Examiner, that means that an applicant will not be able to take advantage of the saving provided in Rule 49, i.e., to be able to file a response to the Written Opinion containing amendments made of his or her own volition.

Because there is no guarantee of any Written Opinions being issued during prosecution of a Singapore patent application, it is advisable for applicants to treat the date that examination or combined search and examination or supplementary examination is requested as the last date for filing any amendments to the application, in order for there to be reasonable certainty that they will be considered by the Singapore patent office.

Applicability

The discussion above applies both to Singapore national phase applications (i.e., a PCT or International application that has entered the Singapore national phase) as well as “domestic” or convention applications, filed directly at IPOS.

The discussion above applies only to patent applications filed under the current Singapore Patent Act and Rules, i.e., Singapore patent applications filed on or after 14 February 2014, and PCT patent applications (International Patent Applications) entering the Singapore national phase on or after 14 February 2014.

The rules applying to voluntary amendments of “old act” cases (i.e., Singapore patent applications treated under the Singapore Patents Act and Rules as they stood on 13 February 2014) are substantially different. Please contact us if you would like more information on this.

The discussion above does not apply to International Patent Applications designating Singapore filed at the Singapore Patent Office (IPOS) as Receiving Office. Although these are treated under the Singapore patent act as Singapore patent applications, the PCT Rules apply to such applications during the International Phase.

Please get in touch with us if you would like to know more about any of the issues discussed in this post.

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