Singapore currently stands as the only country in the Southeast Asian region where Patent Term Extensions (PTE) are possible, at least in theory. In practice, however, the stringent conditions which need to be met in order to extend the term of a granted patent makes PTEs highly improbable.
A Singapore patent may be eligible for PTE if there is an “unreasonable delay” by the Intellectual Property Office of Singapore (IPOS) in granting the patent or if there is a delay in receiving marketing approval when the patent relates to a pharmaceutical product.
An unreasonable delay in granting the patent occurs when the interval between filing the patent application and the eventual grant of the patent exceeds four years. It is crucial for applicants to note that this four-year period is calculated in such a way which exclude delays resulting from an applicant’s actions. For instance, during prosecution, applicants may typically receive at least one written opinion, which sets a five-month period for the applicant to file a response. The time taken by the applicant to file a response is considered a delay “attributable to the applicant” and would not be counted as part of the four-year period.
The difficulty in meeting the “unreasonable delay” condition is further exacerbated for PCT National Phase Applications. This is because the time between the international filing date and the actual date of national phase entry is regarded as a delay attributable to the applicant under the Singapore law.
For a pharmaceutical patent to be eligible for PTE based on a delay in receiving marketing approval, the time between applying for marketing approval and obtaining the same must be longer than two years. Same as the above, this two-year period is calculated in such a way as to exclude any time taken by the applicant to respond to requests by the regulatory body (Health Sciences Authority).
As a result, while the Singapore law does, in theory, allow for PTEs, the actual finding of an unreasonable delay, whether it relates to the grant of a patent or marketing approval of a pharmaceutical product, is expectedly rare.
For applicants who wish to improve their chances of obtaining PTEs in Singapore, we offer some practical tips as follows:
- Initiate early PCT national phase entry
- File a request for substantive examination at the time of filing or shortly after filing
- Respond to written opinions as soon as possible
Finally, it should be noted that even if the above steps are taken, there is no guarantee that a PTE would be possible, unless there are unusual delays by the IPOS in examining the patent application.
