Patent Examination in Singapore

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Patent examination stage in Singapore

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Patent Examination in Singapore

  1. 1. EXAMINATION STAGE IN SINGAPORE Yosuke Tanaka 18 July 2013
  2. 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. 3. Invitation OR Report Invitation Negative Argument Report Positive Report to client Negative Rely on CA Divisional application
  4. 4. How to Read Written Opinion • e.g. Gene sequenceUnity of invention • AllNovelty • AllInventive step • e.g. Medical treatmentIndustrial applicability • ClarityCertain observation
  5. 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. 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. 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. 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. 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. 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. 11. How to prepare response to WO PF 13A Cover letter • Support for amendment • Argument Annex A Amendment (If any)
  12. 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

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