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Grounds for examination

Claim relatedness

9.65 Examination of claim relatedness is set out in Rule 2A(3)(b) as follows:

(b) whether, at the time the prescribed documents referred to in section 29(1)(d) are filed, each claim in the application in suit is related to at least one claim which —

(i) is set out in the prescribed documents relating to the corresponding application, corresponding international application or related national phase application referred to in section 29(1)(d), or to the application in suit during its international phase; and

(ii) has been examined to determine whether the claim appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility);

9.66 The meaning of claim relatedness is given in Section 2(4) which states that:

“For the purposes of this Act —

(a) a claim is related to another claim if —

(i) the 2 claims are identical; or

(ii) each limitation in the second claim

(A) is identical to a limitation in the first claim; or

(B) differs from a limitation in the first claim only in expression but not in content; and

(b) more than one claim may be related to a single claim.”

9.67 The consideration in examination is therefore essentially two-fold:

  • Are all the claims of the Singapore application identical to the claims of the corresponding, related application or PCT application or do they differ only in expression but not in limitation or does each claim at least contain all the limitations in a claim in the corresponding, related application or PCT application?
  • Have the claims of the corresponding, related application or PCT application been examined to determine whether they appear to satisfy the criteria of novelty, inventive step and industrial applicability?

Are the claims related?

9.68 The first consideration will be relatively straightforward where the claims of the Singapore application and the corresponding, related application or PCT application are identical.

9.69 The requirement that each limitation in the claims differs only in expression but not in content means that the claims do not need to be identical in wording provided each limitation in the claims defines the same subject matter.

9.70 For example, a claim defining a method of manufacturing an article would not be related to a claim to using the article in a particular environment. However a claim to a method of using an article may be related to a claim defining the same article when used in the particular method.

9.71 Care should therefore be taken to ensure that the claims are directed to the same subject matter. This will include cases where there may be differences in how claims are construed – for example some offices consider preambles and definitions of purpose to limit the scope of claims. Where the Examiner is aware of the differences in claim construction, or where the documents in support of the request suggest a particular construction has been taken that is not consistent with the Singapore practice, then an objection would be raised that the claims are prima facie not related.

9.72 Section 2(4)(b) states that more than one claim may be related to a single claim. This suggests that a number of claims of different scope of the Singapore application may be related to a single claim of the corresponding, related application or PCT application (and vice versa).

9.73 Thus, one or more claims of the Singapore application may be related to a single claim of the corresponding, related or PCT application – the key consideration being that the Singapore claims are entirely within the scope of those claims. It follows that the claims of the Singapore application may be of a narrower scope than the claims of the corresponding, related application or PCT application. For example, the Singapore claims may include an additional proviso or define a subset of the invention defined in those claims. The Singapore claims may be amended to be further limited by an additional feature that is supported in the specification. However the Singapore claims may not be broader in scope than those of the corresponding, related application or PCT application.

9.74 Any objections to claim relatedness raised should be supported with reasoning in a written opinion. The applicant may remedy the lack of claim relatedness by making amendments and/or making submissions in rebuttal. However, any amendments made must be fully supported by the original application, that is, there is no added matter.

Is there a positive indication for the claims?

9.75 The second consideration is whether the claims of the corresponding, related application or PCT application have been examined to determine whether they appear to satisfy the criteria of novelty, inventive step and industrial applicability. There is no statutory basis on which new citations or objections can be raised in relation to these requirements – the assumption is that these requirements have been determined to be satisfied in the final results provided by the applicant.

9.76 The consideration is therefore a strict one – the final results relied upon must clearly establish that these criteria are met across the full scope of the claims.

9.77 A positive indication must be made in the final results for the claims that are used as the basis for a supplementary examination. When requesting for a supplementary examination, the applicant cannot amend the claims to address the negative indication, nor can they make submissions arguing the objection. If a negative indication has been given against the related claims for novelty, inventive step or industrial applicability then there is no remedy available for the applicant to use these claims for initiating a supplementary examination.

9.78 Where the applicant relies on final results comprising references to P or E documents, said final results may or may not be considered to be a positive indication. In the case of P documents being cited, the Examiner should first check the foreign report for an indication of the validity of the priority claim of the corresponding or related application. If the foreign report indicates that said priority claim appears to be invalid or that the priority claim could not be verified, references to P documents should be taken as a prima facie negative indication since verifying the priority claim is not among the grounds for supplementary examination. An objection would then be raised that the claims do not appear to satisfy the criteria of novelty, inventive step and industrial applicability.

9.79 If the foreign report affirms the validity of the priority claim, the Examiner should then proceed to check the origin of the cited P documents and their  respective prioritydates. In the case where a cited P document has an earlier priority date than the Singapore application and is itself a Singapore application or an international application designating Singapore that has entered the Singapore national phase, the cited P document in the final results should be taken as a negative indication since said reference is relevant for novelty under Section 14(3). An objection would be raised that the claims do not appear to satisfy the criteria of novelty, inventive step and industrial applicability. In the case where the cited P document is an international application designating Singapore that has not entered the Singapore national phase at the time of establishment of the supplementary examination report, the Examiner may proceed to issue a positive supplementary examination report. However, said examination report should include a statement that the positive indication is conditional, provided that the P document does not later enter the Singapore national phase. If it is subsequently found out that the P document has indeed entered the Singapore national phase, Section 81 may be invoked.

9.80 Otherwise, references to P documents may be disregarded and the final results may be taken to be a positive indication despite P documents being raised.

9.81 For final results comprising references to E documents, the Examiner should check if any of the cited E documents are international applications designating Singapore that have entered the Singapore national phase. A check of the priority date of the E document may also be necessary since the E document may have an earlier priority date than the corresponding or related application. If the cited E document has entered the Singapore national phase and has an earlier priority date, the cited E document in the final results should be taken as a negative indication. In the case where the cited E document is an international application designating Singapore that has not entered the Singapore national phase at the time of establishment of the supplementary examination report, the Examiner should similarly issue a positive supplementary examination report comprising a conditional statement as detailed above.

9.82 Examiners should not review the positive indications given in the final results to ensure the corresponding, related application or PCT application used as the basis complies with the Singapore law and practice. Thus, there may be differences in law and practice between the prescribed office or ISA/IPEA in question and Singapore but there is no statutory mechanism by which new citations or objections may be raised. For example, Singapore examines inventive step according to the “Windsurfing test” while many other offices adopt different tests. There may be instances where a different outcome could be obtained using different tests, but no objection can be taken. The same will apply in industrial applicability, but here there is a basis for raising objection if the claims define a method of medical treatment or diagnosis.