Grounds for examination

9.57 During supplementary examination only the following grounds are subject to examination according to Rule 2A(3):

  • Support
  • Relatedness of claims
  • Morality
  • Methods of medical treatment or diagnosis
  • Double patenting
  • No added matter

9.58 It should be noted that there is no provision for consideration of other grounds, including unity, clarity, patentable subject matter and sufficiency. As a consequence it may be possible for the applicant to rely upon final results which have negative indications in relation to these grounds, but a positive determination in relation to novelty, inventive step and industrial applicability. For example, there is no requirement that the claims be directed to a single invention. Thus, if the claims lack unity but additional fees have been paid for a search and examination of the second and subsequent inventions resulting in the final results, then a supplementary examination may be carried out.

9.59 As there is no statutory mechanism by which an Examiner can raise new objections in relation to other matters, e.g. clarity, there is no room for the applicant to make submissions in order to argue against such objection given in the final results and/or amend to overcome such objection.

9.60 Although there is no provision for consideration of clarity in supplementary examination, it may be deliberated whether the support requirement has been met in the meantime wherein the applicant will have one opportunity to respond to the objection raised, if any.

9.61 However, a clarity objection in the final results may nevertheless be referred to by the Examiner in order to determine how the claims were construed and which claims were examined that formed the basis of the positive indication given in the final results. If the foreign report clearly indicates that the search and examination has been limited or truncated in any way due to the clarity objection, then the applicant should amend the claims to the matter for which a search and examination has been carried out and a positive indication is provided. The consideration is a strict one – the final results relied upon must clearly establish that a positive indication is given across the full scope of the claims.

9.62 For example, in cases where the foreign office Examiner examined and gave a positive indication towards the claim “Device comprising X, Y1 and Z” but not “Device comprising X, Y and Z” based on his interpretation, the applicant may amend the claim in the Singapore application from Y to Y1 either prior to requesting supplementary examination or in response to an adverse written opinion.

9.63 In comparison, in cases where the foreign office Examiner did not provide any reasoning for the clarity objection and/or provide any indication as to the extent to which the claims were examined, the Examiner should issue an adverse written opinion indicating it cannot be clearly established that a positive indication in relation to novelty, inventive step and industrial applicability is given across the full scope of the claims. Assuming that the applicant makes an amendment and there is no added matter as a result of the amendment, since there has been no indication of the extent of examination carried out in the foreign report, it is considered that none of the possible amendments would be justified to be entitled to the positive indication given in the foreign report. In such cases, the foreign report cannot be used as the basis for a supplementary examination request and the applicant may consider requesting for an examination under the local or mixed route instead.

9.64 The considerations in relation to support, morality, methods of medical treatment or diagnosis, double patenting and added matter are the same as those for applications undergoing other routes of examination and practices as set out in the relevant section should be followed. Examination of claim relatedness is specifically dealt with in the following section.