The Intellectual Property Office of Singapore has announced a major revision to the official fees for patent and trade mark filings, which are effective 1 April 2017.

Summary of Changes

For patents, there are some reductions in the official fees during prosecution. The fee for requesting examination stays the same, but there is a new excess claims fee for claims over 20 in number.

At grant, the fee free threshold for assessing claims fees has been reduced to 20, and the excess claims fee for claims over this rises to S$40 per claim. Renewal fees for the latter stages of a patent’s life have been increased significantly.

IPOS’s press release claims “lower filing fees” for IP protection in Singapore, but (according to IPOS’ own figures), there will be an increase in the lifecycle costs for both patent and trade mark applications.

This post deals only with the impact on patent applications. Please contact us if you would like more information on the fee changes, or if you have any questions.

Recommendations

Examination Requests

If an application contains more than 20 claims, file a request for examination before 1 April 2017 to avoid the new excess claims fees payable on examination requests. Consider filing a voluntary amendment to reduce the number of claims, if requesting examination after that date.

Grant Procedure

If a Notice of Eligibility for Grant has been received on an application with more than 20 claims, pay the fee for grant before 1 April 2017 to avoid increased excess claims fees.

Renewal Fees

On granted patents where a renewal fee for the 8th year (or later) is due on before 30 June 2017, pay the renewal fee before 1 April 2017.

Details of Fee Changes

IPOS Announcements

If you like, you can also have a look at Press Release and its Annexes, but this should be taken with a pinch of salt as it doesn’t show the whole picture and - in my opinion - is heavily spun for positive effect.

Impact of Fee Changes

IPOS claims that:

“Overall, the fees adjustment will result in a net cost reduction for businesses and brand owners, when the various stages in the life cycle of protecting an invention or a trade mark are considered (see Annex A for details).”

Annex B however appears to show that an increase in the “lifecycle” costs for both patents and trade marks, not a decrease.

The actual impact of the fee changes on each application will of course depend on the actual application in question.

A primary consideration will be whether or not a search is requested, as opposed to simply requesting examination relying on an existing search report. The number of claims when examination is requested, as well as the number of claims at grant, will also be factors. Finally, the impact on costs will depend to a large degree on how long the patent is maintained following grant.

We are in the process of doing more detailed calculations on the cases we are handling, and are not in a position to publish any conclusions yet. However, it is clear even at this stage, that for a large number of applications the fee changes will result in a substantial increase in costs, particularly for the biotech and pharma space.

Changes to Patent Prosecution Fees

A number of significant changes have been made to the fees for requesting search and requesting examination. New fees have also been introduced.

There is a welcome reduction to the fees for requesting search of a patent application. Currently, the search fee is S$1,925. For searches requested from 1 April 2017 onwards, the fee for IPOS to search a patent application will be reduced to S$1,650.

The fee for a supplementary search for a patent application has also been reduced to the same amount, for requests for supplementary search filed on or after 1 April 2017.

This fee reduction is likely to benefit Singapore applicants, or foreign applicants who first file in Singapore, for which a search report done elsewhere may not be available.

Request for Combined Search and Examination

The official fee for requesting IPOS to prepare a combined search report and examination report will be reduced from S$2,600 to S$1,950. This applies for requests for search and examination made on or after 1 April 2017.

For Singapore national phases of PCT applications, where the International Search Authority is IPOS, there is a further reduction in the fee for a request for search and examination report, to S$1,650. The impact of this change is questionable for foreign applicants.

Note that the new excess claims fee structure will apply for a request for a combined search and examination report (for which see below).

Excess Claims Fee on Examination

Currently, there is no excess claims fee payable on Singapore patent applications on filing, or during prosecution. An excess claims fee of S$20 is payable on grant, for each claim over 25 in number.

From 1 April 2017 onwards, IPOS will charge a new excess claims fee of S$40 for each claim over 20 in number, when an applicant requests examination or combined search and examination. This fee will apply to any examination requests, and requests for combined search and examination, made on or after 1 April 2017.

No. of Claims Examination Fee Examination Fee + New Excess Claims Fee Fee Increase Percentage Increase
20 $1,350 $1,350 $0 0%
21 $1,350 $1,390 $40 3%
22 $1,350 $1,430 $80 6%
23 $1,350 $1,470 $120 9%
24 $1,350 $1,510 $160 12%
25 $1,350 $1,550 $200 15%
26 $1,350 $1,590 $240 18%
27 $1,350 $1,630 $280 21%
28 $1,350 $1,670 $320 24%
29 $1,350 $1,710 $360 27%
30 $1,350 $1,750 $400 30%
35 $1,350 $1,950 $600 44%
40 $1,350 $2,150 $800 59%
45 $1,350 $2,350 $1,000 74%
50 $1,350 $2,550 $1,200 89%

Table 1. Comparison of examination fee (and excess claims fees where applicable) before and after 1 April 2017

Excess Claims Fee on Examination: Recommendations

The deadline for requesting examination on a Singapore patent application is 36 months from the earliest claimed priority date (or the date of filing, where there is no priority claim). The same deadline applies for requesting combined search and examination.

A request for examination (or a request for combined search and examination) may be made at any time after the application has been filed. For applications with a large number of claims (such as applications in the biotech and pharma space), the additional excess claims fees could be significant.

Where an application contains more than 20 claims, therefore, we recommend that a request for examination be made before 1 April 2017, to take advantage of the lower fees payable before that date. As noted above, a request for examination can be made at any time after the application is filed.

Where an applicant wishes to combine search and examination, then we recommend that the request for combined search and examination be made before 1 April 2017, for patent applications having 20 claims or more.

Where a request for examination or combined search and examination is filed on or after 1 April 2017, applicants may wish to consider filing a voluntary amendment to reduce the number of claims presented for examination, before a request for examination or combined search and examination is made.

Excess Claims Fee on Grant

The excess claims fee charged on grant (currently S$20 per claim over 25) will also increase, to a fee of S$40 fee for each claim over 20 in number, due when an applicant pays the grant fee. This change applies to grant fees paid on or after 1 April 2017.

This revision in the excess claims fee on grant impacts applicants on two fronts: (i) the threshold for paying the excess claims fee is lowered from 25 claims to 20 claims and (ii) the quantum of the fee goes up from S$20 per claim to $40 per claim.

No. of Claims Grant Fee + Current Excess Claims Fee Grant Fee + Excess Claims Fee from 1 April 2017 Fee Increase Percentage Increase
20 S$200 S$200 S$0 0%
21 S$200 S$240 S$40 20%
22 S$200 S$280 S$80 40%
23 S$200 S$320 S$120 60%
24 S$200 S$360 S$160 80%
25 S$200 S$400 S$200 100%
26 S$225 S$440 S$215 96%
27 S$250 S$480 S$230 92%
28 S$275 S$520 S$245 89%
29 S$300 S$560 S$260 87%
30 S$325 S$600 S$275 85%
35 S$450 S$800 S$350 78%
40 S$575 S$1,000 S$425 74%
45 S$700 S$1,200 S$500 71%
50 S$825 S$1,400 S$575 70%

Table 2. Comparison of fees payable at grant (grant fee and excess claims fees) before and after 1 April 2017

Excess Claims Fee on Grant: Recommendations

The deadline for paying the grant fee is set by IPOS in the Notice of Eligibility for Grant. Where the applicant has received the Notice of Eligibility for Grant on an application with 20 or more claims, then it is advisable to pay the grant fee before 1 April 2017, to avoid the higher excess claims fees.

If the patent application is still being prosecuted, consider amendments to reduce the number of claims.

Two Points for Assessing Excess Claims Fees

With the introduction of the excess claims fee on requesting examination (or combined search and examination), there will be two stages during the life of a patent application where excess claims fees are potentially due:

  • when requesting examination / combined search and examination

  • when paying the grant fee

Whether you will need to pay any excess claims fees at each stage will depend primarily on the number of claims at that stage. Furthermore, whether excess claims fees have already been paid at examination will affect whether you will need to pay excess claims fees on grant.

No Double Charging

IPOS has confirmed that there will not be any “double charging”. Thus, where an excess claims fee has already been paid on requesting examination or combined search and examination for a claim over 20, that fee will not be charged again on grant, if that claim number is present and the fee has already been paid for that number.

An example provided is for a patent application having 25 claims, on which 5 excess claims fees will have been paid on a request for examination.

When that application grants with the same number of claims, there will be no excess claims fee to be paid (the rationale being that the 5 extra claims will have been charged during examination). This is also the case were the patent to be granted for any number of claims up to 25 in number.

…But Also No Refunds!

IPOS will not refund any excess claims fees paid over the course of prosecution, however.

For example, where an examination report is requested on a patent application having 25 claims, and on grant there are only 23 claims, you won’t need to pay any excess claims on grant, but at the same time you won’t get your money back for the 2 excess claims fees that were paid in the earlier stage.

Calculating Excess Claims Fees Payable

Given the complexity of the above, you might be asking yourself “How do I determine if an excess claims fee is payable on a patent application?” and “What is the excess claims fee for a patent application on grant?”

The following rules may be applied to calculate whether or not excess claims fees are payable when requesting examination or combined search and examination, and when paying the grant fee:

  1. Count the number of claims in the application being presented for a request for examination or a request for combined search and examination. Call this X.

    • If X is 20 or below, there is no excess claims fee payable at this stage

    • If X is over 20, you need to pay excess claims fees of S$40 * (X - 20)

  2. Count the number of claims in the application being presented for grant. Call this Y.

    • If Y is 20 or below, there is no excess claims fee payable on grant

    • If Y is over 20, but the same as or less than X, there is no excess claims fee payable on grant (i.e., 20 < Y ≤ X )

    • If Y is over 20 and Y is more than X you need to pay excess claims fees of

      • S$40 * (Y - X) if X was more than 20

      • S$40 * (Y - 20) if X was 20 or less

    • If Y is over 20 and Y is less than X, then there is no excess claims fee payable on grant and you will not get a refund for the claims that have been deleted

Changes to Renewal Fees

There are large increases to renewal fees (also known as maintenance fees or annuity fees) for Singapore patents, in the latter years of the patent. Renewal fees for the 4th to 7th years are unchanged.

Year Current Renewal Fee Renewal Fee from 1 April 2017 Fee Increase Percentage Increase
8th to 10th year S$270 S$370 S$100 37%
11th to 13th year S$350 S$520 S$170 49%
14th to 16th year S$490 S$670 S$180 37%
17th to 19th year S$600 S$820 S$220 37%
20th year S$710 S$970 S$260 37%
after 20th year S$950 S$1,200 S$250 26%

Table 3. Comparison of renewal fees before and after 1 April 2017

Renewal Fees: Recommendations

IPOS has confirmed that, where the deadline for renewal falls after 1 April 2017, the old fees will be charged if the maintenance fee is paid before April. However, if the annuity fee is paid late, then the new fees will apply (and you’ll of course also have to pay the late renewal fee).

Under Singapore patent law, it is only possible to pay a renewal fee from 3 months before the due date. Rule 51(1) of the Patents Rules states that:

“an application for…renewal [of a patent]…shall be filed in the 3 months ending with the fourth or, as the case may be, succeeding anniversary of the date of filing” (emphasis added)

Therefore, if the renewal date for a patent falls on or before 30 June 2017, it may be possible for cost savings to be made by paying the renewal fee by 31 March 2017. There will only be savings for renewals for the 8th year onwards, though.

Further Changes Afoot

The proposed fee changes have to be understood in the context of the announcement by IPOS that it intends to remove the ability to request supplementary examination (i.e., the “foreign route”) from 1 January 2020.

It is currently possible to obtain grant of Singapore patent by requesting search and examination, or requesting examination relying on a search report that has already been established in another jurisdiction. It is also currently possible in Singapore to get a Singapore patent relying solely on the prosecution to grant or allowance of a foreign corresponding patent application, by requesting supplementary examination.

IPOS has previously announced that supplementary examination will not be available from 2020 onwards. For applications after that date, the prosecution options will be limited to requesting search and examination, and filing a request for examination relying on foreign or international search report.

Summary

The fee changes announced by IPOS are significant. It may be possible for some applicants to mitigate the effects somewhat by taking the recommended steps (requesting examination, paying the grant fee and paying renewal fees) before the implementation date of 1 April 2017. However, the changes are likely to significantly increase the costs of obtaining and maintaining a patent in Singapore, for a large number of cases.

This post only deals with some of the changes that have been announced. There are a number of other changes to fees and practice that are not being discussed in this post (particularly changes to trade mark fees). Details are also subject to change, particularly as the proposed legislative amendments to effect the fee increases have yet to be published.

Please get in touch with us if you would like more information on the fee changes, or if you have any questions on their impact.

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