PATENTS 

Domestic patent application in Singapore

For an invention to be patentable under Singapore’s Patents Act, it must, in general, satisfy three key criteria for patentability:

1.       New – The invention should not be publicly known in any way, anywhere in the world.  Owners of inventions should be careful to keep the invention secret until a patent application has been successfully made.  If the idea has already been talked about, commercially exploited, advertised or demonstrated, then the novelty of the invention may be compromised.

2.       Inventive step – The invention must be an improvement over any existing product or process that is already available. The improvement must not be obvious to someone with technical skills or knowledge in the field of the invention.

3.       Industrial application – The invention must be useful and have some form of practical application. It should be capable of being made or used in some form of industry.

* Assuming the invention satisfies the 3 criteria for patentability, there are no existing inventions that are identical or similar, and that the applicant is entitled to register for the patent (e.g. the applicant is the inventor, the employer of the inventor or there is an existing agreement to entitle you to the invention), then you can apply for the patent in Singapore.

We will need the following to file a patent application in Singapore
1.       Description of the invention:
a.       at least one way of carrying out the invention claimed; and
b.      drawings, if any (in black & white or grayscale);
2.       the claims; and
3.       abstract of the invention.
4.       Simply signed Power of Attorney (POA)

We will then engage a patent agent to review/amend the descriptions etc to ensure that they will be ready for filing.

(NB. for the invention to be granted a patent protection that is effective, it is important that the patent application be technically and legally accurate.  This will save time, money and increase the applicant’s chance for a favourable patent application.)

In Singapore, the first person to file an application generally has priority over others for the same invention.

Information/Documents required at the time of filing an PCT application in Singapore
1.1 PCT Application Number
1.2 International Filing Date
1.3 PCT Publication Number
1.4 Earliest priority date
2 If the PCT International Application was not filed and published in English, an English translation of the specification need not be filed by the 30 months deadline.
* However, a verified English translation of the specification must be filed by the 32 months deadline (32 months from the earliest priority date).
3. Simply signed Power of Attorney (POA).

Patent PCT Registration Procedure in Singapore
Stage 1 – Filing of International PCT request (within 12 months from date of earliest. Priority Claim)
Stage 2 – Establishment of International Search Report and Written Opinion (3 months. from receipt of search copy or 9 months from Priority Date, whichever date is later).
After filing a request with the appropriate receiving Office, an International Search Report and a Written Opinion will be furnished to the Applicant by the appropriate International Search Authority (“ISA”). Upon receipt of these documents, a number of options are open to the Applicant before the PCT application enters the national phase, such as:

OPTION 1: Amend the claims under Article 19(1), optionally including a brief statement explaining the amendments (16 months from Priority Date).
OPTION 2: Withdraw the Application under Rule 90bis (15 days prior to Date of Publication, which is generally 18 months from Priority Date).  
OPTION 3: Request Supplementary International Search (19 months from Priority Date) 
OPTION 4: Request International Preliminary Examination (22 months from Priority Date)
OPTION 5: Take no further action in the International Phase (30 months from Priority Date for most countries)
OPTION 6: Send (informal) comments on the Written Opinion of the ISA to the International Bureau (30 months from Priority Date)

Stage 3 – Entry into National Phase (30 months from Priority Date)
Prosecution of the International Phase of PCT applications merely facilitates the obtaining of protection for inventions where such protection is sought in any or all of the PCT Contracting
States. It does not eliminate the necessity of prosecuting the international application in the national phase of processing before the national or regional Offices.
The PCT application will begin entry into the National Phase 30 months (for most countries) from the Priority Date of the Application. Please refer to our info sheet “Nationalising PCT Application in Singapore” for the cost of nationalising a PCT application in Singapore.

Procedure Patent Registration in Singapore (Convention Filing)
Stage 1 - Filing a Request for the Grant of a Patent
In order for us to proceed to file an application, we will require the following information:
a) Name of the Applicant;
b) Registered address of the Applicant;
c) Citizenship/Country of Incorporation;
d) Derivation of right of ownership of Applicant;
e) Name of the Inventor(s);
f) Address of the Inventor(s);
g) Citizenship of the Inventor(s);
h) Country of Permanent Residence of Inventor(s) during the period of invention;
i) Priority document details, if applicable i.e.
• date of filing,
• application number,
• country of filing
j) MS Word format of patent specification in English with abstract (please indicate “Figure” number to be used for abstract); and
k) In the case of a convention application in Singapore, please provide a Statement of Verification of Translation in English where the priority document is filed in a language other than English.
* Simply signed Power of Attorney (POA)

Stage 2 - Request for Substantive Examination of a Patent
A National/ Convention Application filed in Singapore has four (4) options for examination
of the application:

OPTION 1: File a Search Request (by the 13th month from the date of priority filing) followed by filing a Separate Examination Request (by the 36th month from the date of priority filing)
OPTION 2: File a Request for combined Search and Examination (by the 36th month from the date of priority filing)
OPTION 3: File a Request for Examination relying on the International Search Report or the Search Result(s) of a Corresponding Application1 (in English) (by the 36th month from the date of priority filing) 
OPTION 4: File a Request for Supplementary Examination relying on the International Preliminary Report (IPRP) or the Search and Examination Results of a Corresponding Application 1 (by the 54th from the date of priority filing) 

Stage 3 - Request for Issuance of Letter of Grant
Upon completion of the examination process, the Registry will issue one of two types of Notices (i.e. Issuance of Notice of Eligibility or Notice of Intention to Refuse) to notify the Applicant of the eligibility of the National Patent Application for Patent Grant.

Additional Notes:
* Patent Prosecution Highway (“PPH)”
Please be advised that you may also pursue accelerated prosecution through the PPH (by the 54th month from the date of priority filing).

TRADEMARKS

Trademark Law in Singapore
Legal basis is the Trademark Act of 1998, last amendment in force since July 2nd , 2007.
The principles of “common law” apply.
Singapore is a member of the Madrid Protocol.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.

Classification
Nice classification, 11th edition. Multiple-class applications are possible.

Trademark Registragtion Process in Singapore
Filing - Filing particulars are issued within 1 to 2 weeks from the filing date.
Examination - It usually takes about 5 – 6 months before the first office action is issued. If no objections are encountered, the application will proceed directly to advertisement for opposition purposes.
Publication - Once the mark is published in the Government gazette, it will be open for opposition for a period of two (2) months, in which case there is none, the mark will proceed to registration and certificate will be issued.
Grant - Overall, it is anticipated that it would take about 8 – 12 months to obtain a trade mark registration in Singapore assuming it is a smooth application and there is no objection raised by the Registrar.

Remarks about Trademark Registration process in Singapore
The application is filed with the Intellectual Property Office of Singapore.
The application process includes a formal examination, an examination of distinctiveness and registrability under the Trademark Act and a search for prior trademarks.
Prior to registration, the trademark application is published in the Trade Mark Journal.

National Opposition Period
The opposition period is 2 months from publication date of the application. A request for an extension of time to file the notice of opposition may be made by filing the necessary form within 2 months from the date of publication of the application in the Trade Marks Journal. In this case, the opponent has to notify the trademark applicant of its intention to apply for an extension of time and to request the latter’s consent. The total extension of time for which the Registrar may allow to file the notice of opposition cannot exceed 4 months from the date of the publication.

* To complement a multiple-class system, it is now possible to divide a trademark application into two or more applications. A trademark applicant may divide his application into two or more applications so that those classes of goods or services that do not face opposition or objection can proceed to registration first. Division will therefore expedite trademark registration where appropriate.

Timeframe
The processing time from first filing to registration or first office action is approx. 8 to 12 months.

Required information for trademark registration in Singapore
a.       The full name of the applicant;
b.      The Address of the applicant;
c.      The nationality/country of incorporation of the applicant;
d.      An electronic copy of the Mark in jpeg format;
e.      Class(es) in which the Mark is proposed to be filed; and
f.      the proposed specifications of goods or services to be protected under the mark
g.     Simply signed Power of Attorney (POA)

Duration
The trade mark is valid for an initial period of ten (10) years from the date of filing, after which it would have to be renewed every ten (10) years subject to the payment of renewal fees. 

Trademark Examination criteria in Singapore
Generally, under Singapore’s Trade Mark Act, the applicant’s trade mark must distinguish their goods or services from others in the relevant industry.  In particular, the applicant should avoid applying for trade marks that:

a)      denote the kind, quality, quantity, intended purpose, value, the time of production of goods or of rendering of services;
b)      consist of common surnames or geographical names; and/or
c)       conflict with an earlier trade mark (this is why a similar mark search is done); or
d)      mislead the public about the nature of the goods or services.

* In the event that objections are raised against an application in relation to the above, an applicant may overcome the objections by furnishing substantial evidence of use pursuant to a statutory declaration.  We can advise in further detail, at the relevant stage, about how the evidence should be presented in the statutory declaration.