Singapore’s path to Asia for Australian filers

“By establishing a patentability opinion with IPOS, it’s much more likely to be picked up by a patent examiner quickly in Singapore once examination commences in Singapore, leading to speedier prosecution overall.” – Maik Brinkmann

In late July, IP Australia Director General Michael Schwager met with Intellectual Property Office of Singapore (IPOS) CEO Tan Kong Hwee to discuss shared intellectual property (IP) priorities, signing a Memorandum of Understanding (MOU) that will pave the way for Australian filers to choose IPOS to conduct their international patent searches and international preliminary examination. This development aims to support how Australian filers access global markets, particularly in South-East Asia. It comes as a natural evolution of the relationship between the two patent offices and has the potential to build increased efficiency and simplicity for Australians filing in Singapore and through Singapore into other ASEAN Patent Examination Co-operation (ASPEC) nations.

The ASPEC connection

A key value point for this development is its facilitation of an enhanced touchpoint to filing in ASPEC nations for Australians – these nations being Brunei Darussalam, Cambodia, Indonesia, Malaysia, the Philippines, Singapore, Thailand, Lao PDR and Vietnam. By completing international patent searches with IPOS and establishing a patentability opinion from the office, prosecuting the patent application in Singapore more quickly after national phase entry can lead the way for quicker prosecution in ASPEC member countries after positive examination of the Singapore patent application or even based on the positive IPRP established by IPOS.

“The ASPEC program facilitates quicker allowance for granted Singaporean patents in other Southeast Asian countries. It is comparable to a regional version of the patent prosecution highway (PPH) – if a patent receives a positive opinion during examination or is granted in any of these member countries, you can basically use the same claims and file requests with any of the relevant patent offices for accelerated examination under the ASPEC program. Thus, if you have established a positive result in one of these countries, examination can be accelerated in the others,” says Spruson & Ferguson Chemical & Life Sciences Practice Group Leader for Asia, Maik Brinkmann.

In addition, Singapore’s high number of native Chinese language speakers is a useful asset for Australian filers.

“There are probably more people in Singapore who would be able to review Chinese language prior art documents than you will find in Australia,” Brinkmann adds.

Snowball effect: accelerated international examination

The primary problem eased by this direct link to ASPEC is a common one for filers, particularly those looking to file in international jurisdictions – long and varied wait times.

“Typically, when attempting to file in multiple international jurisdictions, filers are faced with highly varied deadlines. By establishing a patentability opinion with IPOS, it’s much more likely to be picked up by a patent examiner quickly in Singapore once examination commences in Singapore, leading to speedier prosecution overall,” says Brinkmann.

Though there are still many steps to go through when proceeding to file patents across multiple ASPEC nations, selecting IPOS as an international search authority opens a door to efficient establishment of preliminary patentability opinion in Singapore, building trust when prosecuting in Singapore and subsequent ASPEC nations.

“Once a patentability opinion is established through the international search phase, filers might then find an accelerated prosecution process in Singapore during the national phase later. This patentability opinion established in the international phase can then also be used in the other ASPEC countries to accelerate prosecution there – it’s a useful snowball effect.

“This step forward gives clients flexibility, particularly if they have intentions to file across South-East Asia. This flexibility is enabled in both directions, as Singaporeans have been able to use the Australian Patent Office as a search authority for some time,” says Brinkmann.

Filing incentives?

While there’s no guarantee this step forward will facilitate filing growth between the two nations, it opens the door for efficiency and ease of process for filers, which could in turn have positive outcomes.

“While I’m unsure if this update will incentivise more filing into ASPEC nations, I’m sure this is partially what the Australia and Singapore patent offices had in mind. I think in particular, if a filer is on the brink of filing in one of the ASPEC nations, this would certainly help push that decision to a yes, as this added flexibility and efficiency is attractive. At the end of the day though, it will always depend on the intentions and priorities of the business filing,” Brinkmann concludes.