This is the tenth post in our 16-part series examining divisional practice in Argentina, Brazil, Canada, China, Europe, India, Indonesia, Malaysia, Mexico, Pakistan, Russia, Thailand, Saudi Arabia, Singapore, the United States, and Vietnam (in no particular order). Our first nine posts examining divisional practice in Brazil, Mexico, China, India, Argentina, Canada, Thailand, Pakistan and Malaysia can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China, Divisional Practice – India, Divisional Practice – Argentina, Divisional Practice – Canada, Divisional Practice -Thailand, Divisional Practice – Pakistan, and Divisional Practice – Malaysia.
Time Periods for Filing a Divisional in Singapore
In Singapore, a divisional application can be filed at any time while an application is pending (i.e., before the conditions for grant are met) or before the application has been refused, withdrawn or abandoned. The divisional application may be filed of the Applicant’s own volition or to address a lack of unity objection under Section 25(5)(d) of the Patents Act.
Requirements for filing a divisional application
When filing a divisional in Singapore, the following must be submitted:
- A Request for Grant of a Patent;
- A Statement of Inventorship;
- Full description of the invention, claims, abstract and, if applicable, drawings; and
- The official fee of SGD $160 (about $120 USD).
The Statement of Inventorship must provide the full details for each inventor (including full name, address, country of permanent residence and nationality) as well as information on how the Applicant derived its rights to the invention from each of the inventors (such as via assignment or employment).
The divisional application will be treated as having, as its date of filing, the date of filing of the earlier application.
A divisional application must not contain any additional matter extending beyond that disclosed in the original application. Added matter is a ground for revocation under Singapore law.
Double Patenting in Singapore
Double patenting is a ground for revocation in Singapore. The test for double patenting is whether the granted divisional claims are directed to “the same invention” as those of the parent patent. Careful drafting of the divisional claims is therefore required to ensure that they are not identical in scope with any of the parent claims. For example, claims that use different terminology but are otherwise identical in substance, or dependent claims where the combination of limitations or additional features results in claims having identical scope in the divisional and the parent, should be avoided.
For a divisional application filed on or after January 1, 2020, a request for substantive examination must be filed within 36 months from the filing or lodgement date of the divisional application. It is no longer possible to rely on the allowed or granted claims of a corresponding application under supplementary examination due to closure of the supplementary examination route for applications having a filing or lodgement date on or after January 1, 2020.
This post was written by Lisa Mueller and Kian Hoe Khoo of Davies Collison Cave Asia Pte. Ltd.