Patents Act 1994 · 2020 Revised Edition · Part 6 · Procedure for Grant of Patent
29. Search and examination
Feedback & supportLast amended by an amending law of 2022. 3 amendments in all.
The applicant in an application for a patent (called in this subsection the application in suit) must comply with one of the following paragraphs within the period prescribed for that paragraph:
patent
“patent” means a patent under this Act and includes a patent in force by virtue of section 117(3);
except in prescribed circumstances, file a request in the prescribed form for a search report;
file a request in the prescribed form for a search and examination report;
file a request in the prescribed form for an examination report and (except in prescribed circumstances) the prescribed documents, where the applicant relies on the final results of —
a search in one corresponding application, corresponding international application or related national phase application; or
a search during the international phase of the application in suit (if the application in suit is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3));
subject to subsection (12), file the prescribed documents and a request in the prescribed form for a supplementary examination report, where —
the applicant relies on the final results of —
any search and examination as to the substance of one corresponding application, corresponding international application or related national phase application; or
any search and examination as to the substance of the application in suit during its international phase (if the application in suit is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3));
each claim in the application in suit is related to at least one claim in that corresponding application, corresponding international application or related national phase application, or in the application in suit during its international phase, as the case may be; and
according to those results, each claim in the application in suit appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility).
Where the applicant has complied with subsection (1)(a), the Registrar must —
Registrar
“Registrar” means the Registrar of Patents and includes any Deputy Registrar of Patents holding office under this Act;
cause the application to be subjected to a search by an Examiner; and
upon receiving the search report prepared by the Examiner, send the applicant a copy of that report.
Upon receiving the search report under subsection (2)(b) from the Registrar, the applicant must, within the prescribed period, file a request in the prescribed form for an examination report.
search
“search” means a search conducted by an Examiner in relation to an application for a patent to discover such matters as may be prescribed;
Where the applicant has complied with subsection (1)(c) or (3), the Registrar must —
cause the application to be subjected to an examination by an Examiner; and
upon receiving the examination report prepared by the Examiner, send the applicant a copy of that report.
Where the applicant has complied with subsection (1)(b), the Registrar must —
cause the application to be subjected to —
a search by an Examiner; and
an examination by an Examiner; and
upon receiving the search and examination report prepared by the Examiner, send the applicant a copy of that report.
Where the applicant has complied with subsection (1)(d), the Registrar must —
cause the application to be subjected to a supplementary examination by an Examiner; and
upon receiving the supplementary examination report prepared by the Examiner, send the applicant a copy of that report.
If it appears to an Examiner during the examination of an application under subsection (4) or (5) that one or more of the matters prescribed for the purposes of this subsection apply, the Examiner must give the applicant at least one written opinion to that effect, and the Registrar must, upon receiving the written opinion, send the applicant a copy of the written opinion.
Examiner
“Examiner” means any person, organisation, entity or foreign or international patent office or organisation appointed by the Registrar for the purpose of referring any question or matter relating to patents (including the conduct of any search, examination or search and examination, in relation to an application for a patent, whether before or after the patent is granted), and includes any Deputy Registrar of Patents, and any Assistant Registrar of Patents or public officer to whom the Registrar has delegated, under section 5(1), any of the Registrar’s powers or functions under this Act;
The Examiner in subsection (7) may, instead of giving the applicant a written opinion concerning a matter mentioned in that subsection, ask the Registrar to give a notice to the applicant inviting the applicant to amend the application (called in this section an invitation to amend), if the Examiner is of the opinion that the matter can be resolved by this means and without a written opinion and a formal response to it.
The Examiner may also ask the Registrar to give to the applicant an invitation to amend after reviewing a response by the applicant under subsection (9)(a) or an amendment by the applicant under subsection (9)(b) to the application.
An applicant may, within the prescribed period, respond to an invitation to amend by —
amending, in the prescribed manner (but subject to section 84), the specification of the application in accordance with the prescribed conditions; or
rejecting the invitation to amend (with or without an explanation) in the prescribed manner.
The applicant need not respond to the invitation to amend if the applicant withdraws under subsection (10) the request under subsection (1)(c) or (3) for the examination report or the request under subsection (1)(b) for the search and examination report, and may not so respond after the examination report or search and examination report is issued under subsection (4) or (5).
examination
“examination” means an examination conducted by an Examiner in relation to an application for a patent to determine such matters as may be prescribed;
The giving of an invitation to amend to the applicant does not affect the power of the Examiner under subsection (7) to give to the applicant a written opinion, or another written opinion, but the Examiner may not do so until after the applicant responds to the invitation to amend in accordance with subsection (7C) or after the expiry of the prescribed period mentioned in subsection (7C), whichever is earlier.
If it appears to an Examiner during the supplementary examination of an application under subsection (6) that one or more of the matters prescribed for the purposes of this subsection apply, the Examiner must give the applicant one written opinion to that effect, and the Registrar must, upon receiving the written opinion, send the applicant a copy of the written opinion.
supplementary examination
“supplementary examination” means a supplementary examination conducted by an Examiner in relation to an application for a patent to determine such matters as may be prescribed;
Unless the request under subsection (1)(b), (c) or (d) or (3) for the examination report, search and examination report or supplementary examination report is withdrawn under subsection (10) or (11), the applicant must, after receipt of a copy of a written opinion and before the examination report, search and examination report or supplementary examination report is issued under subsection (4), (5) or (6), as the case may be —
respond in the prescribed manner, within the prescribed period, to the written opinion under subsection (7) or (8), as the case may be; and
subject to section 84, amend in the prescribed manner, within the prescribed period, the specification of the application in accordance with the prescribed conditions.
Despite subsection (1), where an applicant has filed a request for an examination report under subsection (1)(c) or (3), or a request for a search and examination report under subsection (1)(b), the applicant may —
withdraw that request —
in any case where an Examiner has given a written opinion under subsection (7), and the applicant has not responded to the written opinion — at any time before the expiry of the prescribed period mentioned in subsection (9)(a); (ia)in any case where the Registrar has given an invitation to amend under subsection (7A) or (7B), and the applicant has not responded to the invitation to amend — at any time before the expiry of the prescribed period mentioned in subsection (7C); or
in any other case — at any time before the examination report or search and examination report is issued under subsection (4) or (5); and
subject to subsection (12), file a request for a supplementary examination report under subsection (1)(d) within the prescribed period for that request.
Despite subsection (1), where an applicant has filed a request for a supplementary examination report under subsection (1)(d), the applicant may —
withdraw that request —
in any case where an Examiner has given a written opinion under subsection (8), and the applicant has not responded to the written opinion — at any time before the expiry of the prescribed period mentioned in subsection (9)(a); or (ii)in any other case — at any time before the supplementary examination report is issued under subsection (6); and
file a request for a search and examination report under subsection (1)(b) or a request for an examination report under subsection (1)(c) or (3) within the prescribed period for that request.
Subsections (1)(d) and (10)(b) do not apply unless —
in any case where the application in suit is a new application mentioned in section 20(3), 26(11) or 47(4) — the actual date of filing of the application in suit is before the prescribed date; or
in any other case — the date of filing of the application in suit is before the prescribed date.
The application is treated as abandoned —
subject to subsection (14), if the applicant fails to do one of the following:
comply with paragraph (b), (c) or (d) of subsection (1) within the period prescribed under that subsection for that paragraph;
where subsection (3) applies, comply with that subsection;
where subsection (10) applies, if the applicant fails to file a request for a supplementary examination report under subsection (1)(d) within the prescribed period mentioned in subsection (10)(b); or
where subsection (11) applies, if the applicant fails to file a request for a search and examination report under subsection (1)(b) or a request for an examination report under subsection (1)(c) or (3) within the prescribed period mentioned in subsection (11)(b).
Where —
after receiving the search report under subsection (2)(b) from the Registrar, the applicant does not file a request for an examination report under subsection (3) within the prescribed period mentioned in that subsection; and
the time prescribed for filing a request for an extension of the prescribed period mentioned in subsection (3) expires before, or within 3 months after, 30 October 2017,the application is treated as abandoned if the applicant fails to file the request for an examination report under subsection (3) within 6 months after that date.
In this section, “actual date of filing”, in relation to an application in suit that is a new application mentioned in section 20(3), 26(11) or 47(4), means the actual date of filing of the new application, and not the date of filing of the earlier application mentioned in section 20(3) or 26(11) or of the application for the patent to which the reference relates mentioned in section 47(4), as the case may be.
date of filing
“date of filing”, in relation to —(a)an application for a patent made under this Act, means the date of filing that application by virtue of section 26; and(b)any other application, means the date which, under the law of the country where the application was made or in accordance with the terms of a treaty or convention to which that country is a party, is to be treated as the date of filing that application in that country or is equivalent to the date of filing an application in that country (whatever the outcome of the application);