We received a query today from one of our clients, who is interested in filing a divisional patent application off a pending case in Singapore.

I had advised our client that a divisional application may be filed off a Singapore application before the grant fee is paid. Of course, the Singapore application must be alive at that point and not have been abandoned.

The question then became: if the divisional application must be filed before we pay the grant fee, when do we need to pay the fee for grant in the Singapore patent application?

TL;DR

The deadline for paying the grant fee on a Singapore application is not fixed and cannot be determined in advance. The grant fee deadline is two months from the date of a “Notice of Eligibility for Grant” issued by IPOS, concluding prosecution.

There is no set date under Singapore patent law for the deadline for paying the grant fee, that can be determined in advance. The due date for paying the fee for grant is determined only at the end of the prosecution process for a Singapore patent application.

Essentially, when prosecution of a Singapore application concludes, the Intellectual Property Office of Singapore (IPOS) will issue an “Examination Report” (where examination has been requested) or a “Supplementary Examination Report” (where the applicant has requested supplementary examination).

As an aside, unlike some other jurisdictions, the Examination Report terminates the prosecution process, and there is no opportunity as such for a response to be filed to the Examination Report. During prosecution, one or more Written Opinions are issued instead, to which an applicant may file a response with reasoned arguments, perhaps accompanied by amended claims (which must not contain any added subject matter).

If the Examination Report or Supplementary Examination Report is “positive”, IPOS will also issue a “Notice of Eligibility to Proceed to Grant” (also known as a “Notice of Eligibility for Grant”). A “positive” Examination Report is one without any outstanding objections.

This Notice of Eligibility for Grant will set a deadline of two months from the letter, for the applicant to pay the grant fee and to comply with the grant formalities.

The grant formalities include the filing of a consolidated copy of the patent specification, incorporating each and every change that has been made to the patent specification since filing, as well as the payment of any excess claims fees due (for claims over 25 in number).

Therefore, during the prosecution of a Singapore patent application, there is no set deadline that we can report to our clients as to when they need to pay the grant fee. We normally report the grant fee deadline only when we receive and report the Examination Report.

Note that the above discussion only applies to patent applications filed under the current Singapore Patent Act and Rules. The rules applying to the grant procedure of “old act” cases are substantially different. Please contact us if you would like more information on this.

For more information, you might like to have a look at another of our blog posts with more details on the grant process for Singapore patents.

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