SPA Flashcards
13(1)(a)
Patentable invention: novelty
13(1)(b)
Patentable invention: inventive step
13(1)(c)
Patentable invention: industrial application
13(2)
Non-patentable invention: encourage offensive, immoral or anti-social behaviours
13(3)
Non-patentable invention: subject-matter probihited by the law may not necessarily fall under 12(2)
14(1)
Invention is new if it does not form part of the state of the art
14(2)
state of the art: made available to the public globally before pirority date of the invention
14(3)
state of the art exception: earlier SG!!! application published after priority date of this invention, and contain the same subject matter when filed and published, considered for novelty but not inventive step evaluation
always check if the prior art is validly entitled to the earliest priority date
14(4)
12 months grace period: matter made avialable to the public is excluded from the SOTA:
(a) info was disclosed unlawfully or in breach of confidence;
(b) disclosed due to breach of confidence;
(c) inventor displaying the invention as an international exhibition;
(d) paper read before learned society or published in the transactions of any learned society; or
(e) subject to subsections (6) and (7), disclosed by inventor or person obtained the info from the inventor in circumstances not mentioned in (a) to (d)
14(5)
defined learned society as aiming to promote learning or science
14(6)
patent application may be disregarded if
(a) it was filed without the consent of the inventor; or
(b) the publication should not have happended as the application had been withdrawn/refused/abandoned before publication
14(7)
If publication was earlier than it should be by law, the publication date used to judge the 12-month grace period should be the by-right publication date
14(8)
To disregard any prior art at requesting exam, a written evidence is required to be filed
14(9)
whichever applies to the inventor in s14 applies to the applicant
14(10)
Allow new medical uses of known substances, whether it is 1st or 2nd MU. 1st MU is also a purpose-limited product claim, while Swiss-type is a purpose-limited process claim
15
Inventive step: no obvious to a PSA, s14(3) not considered to IS assessment (i.e., it is possible to have claims not novel but inventive)
16(2)
MOT of human or animal body by surgery, therapy or diagnosis is not taken to be capable of industrial application
16(3)
Allow product for treating diseases to be patentable subject matter (e.g., 1st MU, Swiss-type 2nd MU). Supplemented by s14(10)
17(1)
Priority date of an invention is the date of filing the application.
17(2)
Claiming the date of filing of the earliest priority document disclosing the same (a) invention or (b) matter, the request needs to be made by the same applicant or predecessor in title of the applicant
17(3)(a)
Priority declaration to be within 12 months after date of filing. (unless request is filed under s17(4) to declare priority within 14 months)
17(4)
request to Registrar to claim priority after the normal 12 months period
17(5)
request for late declaration needs to show (a) due care has been taken OR (b) unintentional
19(1)
Any person(s) may make an application for a patent
19(2)
A paten can only be granted to
(a) to the inventor(s);
(b) person(s) entitled to the invention in SG based on local or internatioanl law, by an agreement made before making of the invention; or
(c) successor in title of person(s) in (a) or (b)
19(3)
Without evidence to the contrary, the person who makes a patent application is assumed to be entitled to be granted a patent
20(1)
anytime before grant
(a) any person may question the applicant is entitled
(b) applicant may ask to transfer to/add other applicants
20(3)
After the ownership of the patent application is questioned under 20(1)(a), and the application is asked to be amended, refused or withdrawn, the Registrar may order the rightful owner to make a new application, which will have the same filing date as the earlier application
25(3)
Documents required for a patent application (does not prevent an application from being initiated under s26(1))
(a) a request
(b) descriptin, claim, any drawings
(c) abstract
25(4)
Sufficiency of application: disclose the invention clearly and completely for the invention to be performed by a PSA. Disclosure is sufficient if the PSA can identify any obvious error and try to make the invention work
25(5)
Claims must:
(a) define the matter for which the appicant seeks protection;
(b) be clear and concise;
(c) be supported by description; and
(d) relate to one invention or a group of inventions that form a single inventive concept
25(8)
an application may be withdrawn any time before it is granted and such a withdrawal cannot be revoked
26(1)
Earliest date of filing captured when submitting
(a) documents indicate a patent is sought
(b) documents identify the applicant
(c) (i) description or (ii) to claim priority, submit a reference, date/country of filing, a statement that the description is incorporated by reference and is contained in the earlier application
26(2)
It does not matter if description is not in English. An EN translation should be submitted within 2 month (R19(11)) from the date of a notification issued under r19(10)
26(8)(b)
when the application does not claim any earlier priority
26(11)
Divisional application can be filed before parent application is granted, refused, withdrawn or abandoned, the div has the same date of filing as the parent application
26(12)
The filed application is treated as having been abandoned unless
(a) file one or more claims
(b) pay filing fee
(c) if priority is claimed, submit the required documents under s26(7)
27(1)
subject to s33 and if the application is not withdrawn/refused/abandoned, the registrar must publish the application (and any amendments) after 18 months (r29(1))
27(2)
applicant may request application to be published earlier
27(3)
Before publication of an application, Registrar may omit matter in the application which harms a person or the society
28(1)
Registrar must conduct preliminary examination
29(1)(a)
Request search report under Option C with PF10 (r36)
29(1)(b)
Request search and examination report under Option B using PF11 (r37)
29(1)(c)
Request examination report under Option A using PF12 (r42(1))
29(1)(d)
Request supplementary examiantion report under Option D using PF12A (r42A(1)) within 54 months from filing date (r43(3))
29(2)
After request for a search report filed under 29(1)(a), the Registrar must (a) cause the application to a search by an examiner; and (b) after receiving search report, send it to the applicant
29(3)
after receiving search report, applicant must within 36 months (r43(1)) from the filing date, file a request for examination report using PF12 (r42(1));
If the research report is received within one month before the 36-month deadline, the new deadline shall be one month from the date of Registrar’s letter forwarding the report
29(4)
After applicant requests examination report, the Registrar must (a) cause the examiner to carry out the examination; and (b) forward the examintion report to applicant when available
29(5)
After applicant requests search and examination report, the Registrar must (a) cause the examiner to carry out both search and examination; and (b) forward the search and examintion report to applicant when available
29(6)
After applicant requests supplementary examination report, the Registrar must (a) cause the examiner to carry out supplementary examination; and (b) forward the supplementary examintion report to applicant when available
29(7)
At least one WO (or invitation to amend s29(7A)) to be issued if there is any objections
29(7A)
If the examiner thinks that matter can be resolved without a WO, the examiner may ask the Registrar to give an invitation to amend
29(7B)
The examiner may issue an invitation to amend after receiving a WO response
29(7C)
In response to invitation to amend, the applicant may within 2 months (a) amend or (b) reject the invitation to amend with or without an explanation)
29(7D)
Applicant need not to respond to invitation to amend if request under Option A or B is withdrawn or final report under Option A or B has issued
29(7E)
After the applicant responded to invitation to amend or fail to submit such a response, the Examiner may issue another WO
29(8)
For supplementary examination, if there is any objections, the examiner must issue at least one WO
29(7C)
Time limit to respond to an invitation to amend is 2 months (r46AA), the applicant may either (a) amend the specification; or (b) reject the invitation to amend; or the applicant can do nothing
29(9)
After receiving a WO, the applicant may file (a) a response; and (b) amendments to specification within 5 months (r46(4))
29(10)
Before a response to WO has been submitted or a examination/search and examination report has issued, the applicant may (a) withdraw the previous request; and (b) request for supplementary examination within 54 months from filing date (r43(3))
29(11)
Before a response to WO has been submitted or a supplementary examination report has issued, the applicant may (a) withdraw the previous request; and (b) request for examination/search and examination within 36 months from filing date (r43(3))
29(12)
Option D is not available for applications with filing dates on or after 1 Jan 2020 (r43(4))
29(13)
Applicantion is treated as abandoned if:
(a) no request for Option A or B is filed;
(b) after withdrawing Option A or B, no Option D is filed; or
(c) after withdrawing Option D, no Option A or B is filed.
29A(1)
If an examination/search and examination/supplementary examination report does not contain unresolved objection, the Registrar must issue a notice of eligibility for grant
29A(2)
(a) after a notice of eligibity for grant is issued, the deadline to put the application in order is 2 months (r47(1)) after the date of Registrar’s letter forwarding the notice
29A(3)
In case of adverse examination report, a notice of intention to refuse is issued
29A(4)(a)
In response to the notice of intention to refuse, a review of the examination report may be applied within 2 months (r46A(2)) after the date of Registrar’s letter forwarding the notice
29B(1)
Submit request for a review of an examination report may be made (a) within 2 months (r46A(2)) after the date of Registrar’s letter forwarding notice of intention to refuse with PF12B (r46A(1)); and (b) written submissions