Deferring Patent Examination in Singapore: Strategic Flexibility or Potential Patent Term Loss?

Applicants can continue to defer substantive examination in Singapore at minimal cost following the Intellectual Property Office of Singapore’s (IPOS') extension of its pilot scheme that waives the monthly official fees to extend the deadline to request examination for up to 18 months. While obtaining an 18 month extension at minimal cost may seem an attractive option, applicants should carefully consider whether doing so aligns with their broader patent strategy.

The key question is not whether examination can be deferred, but whether the prosecution flexibility gained by delaying examination outweighs the potential loss of patent term resulting from a later grant.

Strategic Advantages of Deferring Examination

For many applicants, particularly those managing international patent portfolios, the principal benefit of deferral is the ability to allow foreign prosecution to mature before examination commences in Singapore.

This may be particularly valuable where a fresh Singapore search is contemplated. A Singapore examiner may identify prior art that was not cited during international search or examination proceedings in foreign jurisdictions, and come up with new objections. This means that applicants will have to disclose them in jurisdictions with a duty of disclosure, such as the United States, thereby increasing prosecution costs. In some cases, this may even complicate the prosecution of corresponding foreign applications, particularly where newly identified prior art raises questions of novelty or inventive step, necessitating claim amendments, creating prosecution history that must be considered in other jurisdictions, or resulting in inconsistencies between claim sets across territories. Deferring examination can therefore reduce the risk of generating additional prior art citations or examination issues while important foreign applications remain pending.

Deferral may also provide applicants with more time for corresponding foreign applications to progress to allowance or grant, enabling applicants to rely on those results during prosecution in Singapore or to take advantage of the Patent Prosecution Highway’s program to expedite examination and grant. The additional time may also assist applicants in assessing the commercial importance of the invention.

Impact on Patent Term Extension Due to IPOS Delays

A major drawback of deferring examination is its effect on future entitlement to a patent term extension. 

Singapore law permits extensions of patent term where grant has been unreasonably delayed by IPOS. However, periods attributable to the applicant are excluded when assessing eligibility. Importantly, this includes periods during which the applicant has deferred the request for examination. 

Opportunities to obtain patent term extensions based on delays attributable to IPOS have historically been uncommon because patents were generally granted within the relevant statutory timeframes.

However, making use of the deferral to the deadline for examination may adversely affect an applicant’s ability to obtain the extension. Firstly, the deferral period is not counted as part of any delay caused by IPOS. Further, to the extent that current examination delays at IPOS reduce over time, opportunities for obtaining patent term extensions based on IPOS’ delay may become less common.

The significance of this consideration will vary depending on the technology involved. When managing a global portfolio, maintaining prosecution flexibility may be of greater commercial importance than preserving the possibility of a future term extension in Singapore. For pharmaceutical, biotechnology and life sciences inventions, where products may enjoy lengthy commercial life cycles, even a relatively modest extension of patent term may be commercially significant, though again this may be tempered by the size of the Singapore market. 

Short-Lifecycle Technologies

For inventions in rapidly evolving technology sectors, the commercial value of a patent may depend on obtaining enforceable rights as early as possible, as the technology may become obsolete or commercially irrelevant long before any patent term extension would be of practical value. In such cases, deferring examination may reduce the practical value of the patent, and applicants may instead wish to consider accelerated examination through IPOS' SG Patents Fast 4 or Fast 8 programs.

Key Takeaway

The extension of IPOS fee-waiver scheme should not be viewed simply as an opportunity to obtain additional time. Rather, it presents applicants with a strategic choice.

For some applicants, particularly those managing large international patent families, the strategic value of avoiding additional prior art citations or prosecution issues while foreign applications in important jurisdictions remain pending may outweigh any potential loss of patent term in Singapore. For others, particularly where useful patent exclusivity is commercially critical, advancing examination at the earliest opportunity may be the preferable course.

Applicants should therefore consider the Singapore application in the context of the wider patent family and determine whether the strategic benefits of allowing foreign prosecution to mature outweigh the potential loss of useful patent term in Singapore.

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