Supplementary Examination

Overview of supplementary examination

9.1 This chapter of the Guidelines refers to the Singapore Patents Act and Rules with effect from 14th Feb 2014. Note: for the purpose of conciseness, the expression “corresponding or related application” is used hereinafter to refer to:

(a) the corresponding application; or
(b) the corresponding international application; or
(c) the related national phase application.

The term “PCT application” refers to the international phase of an international application for a patent (Singapore) that has entered the national phase in Singapore under Section 86(3).

9.2 Under Section 29(1)(d) applicants may rely on the prosecution of certain foreign or international applications for supplementary examination of a patent application in Singapore. The basic requirements that make an application suitable for supplementary examination process are:

  • There are final results of search and examination as to the substance of a corresponding or related application, or the PCT application; and
  • Each claim in the Singapore application is related to one or more claims in the corresponding or related application, or the PCT application, as the case may be; and
  • According to the final results each claim of the Singapore application appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility).

9.3 The determination of whether a foreign or international application can be used for initiating a supplementary examination is performed by the Registry at filing, so Examiners should not routinely check these details. However if the Examiner notices that the application may not fulfil the requirements of being corresponding or related then they should refer the matter to the Registry.

9.4 Supplementary examination considers only a limited number of prescribed matters under Rule 2A(3). The presumption is that the quality of the examination carried out in the foreign offices is such that little or no additional examination is required on the application in Singapore. There is no statutory mechanism by which an Examiner may raise new citations or objections if they become aware of them.

9.5 If the foreign report has a negative indication against a claim for novelty, inventive step or industrial applicability, then that claim cannot be used for initiating a supplementary examination. There is no action available to the applicant to amend and/or make submissions in order to use any claim that has a negative indication for initiating a supplementary examination, regardless of how trivial an amendment is required. The applicant in such cases can only rely upon claims for which there are positive indications.

9.6 In contrast, it is possible to further limit the scope of a claim for which there is a positive indication by adding further provisos or additional features that are supported in the specification. The assumption here is that the positive indication applies to all matter within the scope of the claim.

9.7 Furthermore, the reference in the Patents Act and Rules to there being a positive indication in relation to novelty, inventive step and industrial applicability is restricted to the consideration (and as a consequence the law and practices) in the foreign offices. Thus, in theory at least, the outcome of the foreign search and examination could be inconsistent with the Singapore law and practices.

9.8 As there is no legislative basis on which an Examiner can raise new objections, they should strictly apply the existing legislative requirements, and in particular ensure that the final results filed in support of the supplementary examination request clearly establish that the claims are novel, inventive and industrially applicable across the full scope of the claims.

9.9 For example, if the final results indicate that a search and examination has not been carried out across the full scope of the claims because, for example, of clarity or support issues, then a supplementary examination can only be requested by relying on those claims that have been examined and given a positive opinion. In such cases the applicant may file an amendment to limit to those claims qualified for the supplementary examination either before requesting the examination or in response to an adverse written opinion.