Second Reading Speech by Senior Minister of State for Law, Indranee Rajah SC, on the Patents (Amendment) Bill

28 Feb 2017 Posted in Parliamentary speeches and responses

Madam Speaker,

1. I beg to move, “That the Bill be now read a Second Time”.

1. Introduction

2. Innovation is crucial for our nation’s continued economic growth. It allows our enterprises to create new products and services, and gives them a competitive edge over their rivals. Enterprises need to be able to effectively protect and commercialise their intellectual property (“IP”) to preserve their competitive edge. The Committee on the Future Economy (“CFE”) recognised this when it stated that a strong IP ecosystem is needed to support innovation and technology adoption.

3. The Patents (Amendment) Bill introduces several improvements to our patent system. These amendments allow our patent system to better support innovators.

4. Madam, the main features of the Bill are as follows:
   1. First, we will broaden the grace period provision to better allow inventors to protect their inventions, while facilitating the spread of new ideas and technologies.
   2. Second, we will close the foreign route to obtaining a patent in Singapore to improve the quality and consistency of granted patents.
   3. Third, we will implement procedural amendments to allow applicants greater flexibility in the application process, and to improve operational efficiency at the Intellectual Property Office of Singapore (“IPOS”).

2. Broadening the Grace Period Provision for Patent Applications

5. Let me first touch on broadening the grace period provision for patent applications.

6. To provide some background, let me briefly describe IPOS’ patent search and examination process.
   1. Before a patent is granted for an invention, it must be “new” and “inventive”.
   2. An IPOS examiner searches publicly available information at the time of the patent application to understand the current state of technology. This is known as the “state of the art”^[1].
   3. The examiner then examines the invention in the patent application against the “state of the art” to determine whether the invention is indeed new and inventive. This is the standard practice for all patent offices around the world.

7. Under this system, if an inventor publicly discloses his invention before applying for a patent, this information will form part of the “state of the art”. So when he subsequently applies for a patent, the invention may not be assessed to be new or inventive.

8. The Patents Act contains a “grace period provision” that allows for limited circumstances under which the disclosure of an invention will not be considered part of the “state of the art”^[2]. For example, if the invention is disclosed at one of the international exhibitions on a limited list, or is disclosed in the publication of a learned society, it will not be included in the “state of the art” if the application is filed within 12 months of the disclosure.

9. This grace period provision encourages knowledge sharing and promotes learning while preserving the inventor’s commercial interests.

10. Clause 2 of the Patents (Amendment) Bill expands the situations covered by the grace period provision. Clause 2(b) will allow any disclosure of the invention originating from the inventor to be covered by the grace period provision. In other words, the grace period provision will not be limited to disclosures at specific international exhibitions or in a learned society publication.

11. This broadening of the grace period provision is in line with practices in the US, Australia, Japan and Korea.

12. It updates our legislation so that our patents regime can be more consistent with modern realities and practices.
    1. Advances in communication technology have connected people across the globe in ways not previously envisaged, and disclosures of technology occur in many situations not contemplated by the current Act.
    2. For example, inventors may need to reveal the invention to potential investors, or share it online to reach out to a larger community of experts.

13. It should be emphasised that disclosing an invention before applying for a patent still carries risks. Not all jurisdictions have a similarly broad grace period provision. We would therefore strongly encourage inventors to always be judicious about disclosing their inventions before applying for a patent.

14. IPOS will work with stakeholders and IP professionals to ensure that this message is conveyed clearly to patent applicants.

3. Closure of Foreign Route

15. I now turn to the amendments in Clause 3 of the present Bill, relating to the closure of the foreign route to obtaining a patent in Singapore.

16. This is another step in our quest to improve the quality of patents granted in Singapore.
    1. In 2013, IPOS’ in-house patent examination unit commenced operations, marking the first time Singapore had the capabilities to examine our patent applications.
    2. In February 2014, we tightened our patent system to only allow a patent to be granted if it meets the patentability requirements in our law.
    3. However, at that point of time, we allowed patent applicants to rely on foreign examination reports for the same invention to enter our system. We are now proposing to close this route so that all patent applications are fully examined by our examiners against our standards of patentability. This will increase the quality of our granted patents and marks the further maturation of our patent system.

17. Let me explain how closing the foreign route improves the quality of patents granted in Singapore.

18. Patent applications undergo search and examination before a patent is granted. There are currently 3 search and examination routes in Singapore:
    1. First, under the “local route”, the full search and examination is conducted by IPOS.
    2. Second, under the “mixed route”, applicants submit the search report issued by a foreign patent office for the same invention, and IPOS conducts only the examination.
    3. Third, under the “foreign route”, applicants submit the full search and examination report issued by a foreign patent office for the same invention, and IPOS conducts only a limited-scope Supplementary Examination.

19. The limited-scope Supplementary Examination does not cover the same grounds as a full examination. In particular, the invention is not assessed on the key requirements of being new and inventive.

20. Thus, patents may be granted under the foreign route for inventions that would not have met the standards for patentability under the local or mixed route. This is because these foreign route patents were assessed to be new and inventive by a foreign patent office, whose standards may differ from Singapore’s.

21. Clause 3(a) of the present Bill therefore closes the foreign route option. For patent applications filed on or after the prescribed date, they must go through either the local or mixed route. Patents will be granted only after full examination based on Singapore’s laws and practices. This will therefore ensure the quality of Singapore granted patents and increase stakeholders’ confidence in the validity of these patents.

22. This amendment aligns our patent system with that of major jurisdictions, such as the US, Japan and Europe, who do not provide for the foreign route mechanism and require all patent applications to be fully examined by their patent offices.

23. IPOS has been actively engaging the patent profession on the closure of the foreign route. With this change, local patent agents and IP lawyers will adjust their practice to take on higher value work as all the patent applications they handle will have to undergo full examination by IPOS.

4. Other Procedural Amendments

24. The Patents (Amendment) Bill will also implement procedural improvements to the application process:
    1. Clause 3(c) will allow patent applicants greater flexibility in switching between search and examination routes. This will make our patent application process more applicant-friendly.
    2. Clause 3(d) will allow IPOS to treat an application as abandoned if the applicant does not, after receiving a search report, request for an examination report within the prescribed time frame. This will improve IPOS’ operational efficiency. It will also facilitate the release of new ideas and technologies for the public’s use if the patent applicant is no longer interested in obtaining protection.

5. Conclusion

25. The Bill implements a number of improvements to the patent application process. It is part of our efforts to better support the national innovation agenda by helping companies protect and sharpen their competitive edge, grow, and create good jobs in Singapore.

26. Madam Speaker, I beg to move.

^[1]See section 14(2) of the Patents Act, which defines “state of the art”. The “priority date” against which the “state of the art” is determined is found in section 17(1) of the Patents Act.

^[2]See section 14(4) of the Patents Act.

Last updated on 28 Feb 2017