Patent examination stage in Singapore

1. EXAMINATION STAGE
IN SINGAPORE
Yosuke Tanaka
18 July 2013

2. Patent process in Singapore
File Patent application
Request for Examination (PF11, PF12)
Invitation to Respond to Written Opinion
Respond to Written Opinion(PF13A)
Examination Report
Pay grant fee

3. Invitation OR Report
Invitation
Negative
Argument
Report
Positive
Report to
client
Negative
Rely on
CA
Divisional
application

4. How to Read Written Opinion
• e.g. Gene sequenceUnity of
invention
• AllNovelty
• AllInventive step
• e.g. Medical treatmentIndustrial
applicability
• ClarityCertain
observation

5. Reporting letter (Written Opinion)
Unity is
given?
Which
claim is
novel?
Which
claim is
inventive?
Which
claim is
industrial
applicable?
Is there
clarity
issue?
Explain “what’s wrong”

6. How to read patent specification
• Is it my case?Title
• What is the problem?Background of
invention
• What is the solution?Detailed description
of the invention
• What is the solution?Drawings
• How the claim is written?Claims

7. What is claim? What is prior art?
• Claim: area which
applicant wishes to
protect
• The area must be new
• How to respond to
Written Opinion?
Claim
D1
D2
D3
D4

8. Strategy 1: Aggressive approach
• Argument: the
examiner is wrong
• D1 and D2 should not
be in the claimed area
• No amendment
• Argument, Argument
and Argument
Claim
D3
D4D2
D1

9. Strategy 2: Compromised approach
• The examiner is right
• We limited the claimed
area
• Now D1 and D2 are
not in the claimed area
• Limiting amendment
Claim
D3
D4
D2
D1

10. How to prepare argument to WO
“This feature is not disclosed in the prior arts.”
“Problems to be solved in present application
is not considered in the prior arts.”
“According to the prior arts, introducing this
feature results in unwilling drawbacks.”
“There is no clear teaching in the prior arts.”

11. How to prepare response to WO
PF 13A
Cover letter
• Support for amendment
• Argument
Annex A
Amendment (If any)

12. Summary
Invitation or
Report Is it possible to file argument?
Written
Opinion 5 components in Written Opinion
Specification
4 steps to read specification
Claim and
prior arts 2 approaches to respond to WO
Prepare
response to
WO
4 items to prepare to respond to WO