Chong-Yee Khoo and Irene Low of Cantab IP will be attending the 140th Annual Meeting of the International Trademark Association (INTA) in Seattle, USA.
We expect the INTA conference to be the usual heady mix of thought-provoking sessions, rushing around to meet colleagues, clients and associates and going to one or two INTA 2018 receptions.
The INTA Annual Meeting will be held this year in Seattle, Washington between 19 and 23 May 2018. The venue of the conference is the Washington State Convention Center, 705 Pike Street, Seattle, WA 98101, USA.
We plan to hold the INTA Tweetup again in Seattle and look forward to seeing you then.
We also look forward to the patent specific sessions laid on by the organisers, including the Patent Professional Networking Reception (19 May 2018 from 3 pm to 4 pm).
Are you a patent professional or spend any time working with patents in your regular workload? Join us for a cocktail and an opportunity to mingle with other registrants with similar patent interests and background.
Please let us know if you would like to arrange a meeting with us.
“A Cambridge natural sciences scholar with an extensive research background, Chong-Yee Khoo of Cantab IP is one of the most eminent life sciences experts in Singapore. He is a fine patent attorney too, qualified in the United Kingdom and at the European Patent Office, and the first Singaporean patent attorney to qualify by examination.”
The IAM Patent 1000 guide is compiled following an extensive research process. Over five months, IAM conducts in the region of 1,800 interviews with numerous attorneys at law, patent attorneys and in-house counsel to gather market intelligence on the leading players in the field. Individuals qualify for a listing in the IAM Patent 1000 when they receive sufficient positive feedback from peers and clients with knowledge of their practice and the market within which they operate.
One of the nicest things about the INTA Annual Meeting is being able to meet friends and colleagues at smallish get-togethers, where there is an opportunity to speak properly to another person and to find out what they think about the world.
If you like this sort of thing, please come along to the INTA Tweetup this year.
Chong-Yee Khoo and Irene Low of Cantab IP will be attending the 139th Annual Meeting of the International Trademark Association (INTA) in Barcelona, Spain.
The INTA Annual Meeting will be held in Barcelona, Spain between 20 and 24 May 2017. The venue of the conference is the Fira Gran Via Convention Center.
For the first time, the organisers have made provision for the large number of patent professionals who have been turning up to the conference in recent years. As patent specialists, we welcome this development.
As usual, the INTA conference will be a heady mix of thought-provoking sessions, rushing around to meet colleagues, clients and associates and going to one or two INTA 2017 receptions.
Oh, we almost forgot - the legendary INTA Tweetup is going to be held again, this year in sunny Spain! More on this later.
We are certainly looking forward to the meeting later this year.
Please let us know if you would like to arrange a meeting. We will be in Barcelona from 21 May 2015 to 25 May 2017.
The Intellectual Property Office of Singapore has announced a major revision to the official fees for patent and trade mark filings, which are effective 1 April 2017.
Summary of Changes
For patents, there are some reductions in the official fees during prosecution. The fee for requesting examination stays the same, but there is a new excess claims fee for claims over 20 in number.
At grant, the fee free threshold for assessing claims fees has been reduced to 20, and the excess claims fee for claims over this rises to S$40 per claim. Renewal fees for the latter stages of a patent’s life have been increased significantly.
IPOS’s press release claims “lower filing fees” for IP protection in Singapore, but (according to IPOS’ own figures), there will be an increase in the lifecycle costs for both patent and trade mark applications.
This post deals only with the impact on patent applications. Please contact us if you would like more information on the fee changes, or if you have any questions.
If an application contains more than 20 claims, file a request for examination before 1 April 2017 to avoid the new excess claims fees payable on examination requests. Consider filing a voluntary amendment to reduce the number of claims, if requesting examination after that date.
If a Notice of Eligibility for Grant has been received on an application with more than 20 claims, pay the fee for grant before 1 April 2017 to avoid increased excess claims fees.
On granted patents where a renewal fee for the 8th year (or later) is due on before 30 June 2017, pay the renewal fee before 1 April 2017.
If you like, you can also have a look at Press Release and its Annexes, but this should be taken with a pinch of salt as it doesn’t show the whole picture and - in my opinion - is heavily spun for positive effect.
“Overall, the fees adjustment will result in a net cost reduction for businesses and brand owners, when the various stages in the life cycle of protecting an invention or a trade mark are considered (see Annex A for details).”
Annex B however appears to show that an increase in the “lifecycle” costs for both patents and trade marks, not a decrease.
The actual impact of the fee changes on each application will of course depend on the actual application in question.
A primary consideration will be whether or not a search is requested, as opposed to simply requesting examination relying on an existing search report. The number of claims when examination is requested, as well as the number of claims at grant, will also be factors. Finally, the impact on costs will depend to a large degree on how long the patent is maintained following grant.
We are in the process of doing more detailed calculations on the cases we are handling, and are not in a position to publish any conclusions yet. However, it is clear even at this stage, that for a large number of applications the fee changes will result in a substantial increase in costs, particularly for the biotech and pharma space.
Changes to Patent Prosecution Fees
A number of significant changes have been made to the fees for requesting search and requesting examination. New fees have also been introduced.
Request for Search and Request for Supplementary Search
There is a welcome reduction to the fees for requesting search of a patent application. Currently, the search fee is S$1,925. For searches requested from 1 April 2017 onwards, the fee for IPOS to search a patent application will be reduced to S$1,650.
The fee for a supplementary search for a patent application has also been reduced to the same amount, for requests for supplementary search filed on or after 1 April 2017.
This fee reduction is likely to benefit Singapore applicants, or foreign applicants who first file in Singapore, for which a search report done elsewhere may not be available.
Request for Combined Search and Examination
The official fee for requesting IPOS to prepare a combined search report and examination report will be reduced from S$2,600 to S$1,950. This applies for requests for search and examination made on or after 1 April 2017.
For Singapore national phases of PCT applications, where the International Search Authority is IPOS, there is a further reduction in the fee for a request for search and examination report, to S$1,650. The impact of this change is questionable for foreign applicants.
Note that the new excess claims fee structure will apply for a request for a combined search and examination report (for which see below).
Excess Claims Fee on Examination
Currently, there is no excess claims fee payable on Singapore patent applications on filing, or during prosecution. An excess claims fee of S$20 is payable on grant, for each claim over 25 in number.
From 1 April 2017 onwards, IPOS will charge a new excess claims fee of S$40 for each claim over 20 in number, when an applicant requests examination or combined search and examination. This fee will apply to any examination requests, and requests for combined search and examination, made on or after 1 April 2017.
No. of Claims
Examination Fee + New Excess Claims Fee
Table 1. Comparison of examination fee (and excess claims fees where applicable) before and after 1 April 2017
Excess Claims Fee on Examination: Recommendations
The deadline for requesting examination on a Singapore patent application is 36 months from the earliest claimed priority date (or the date of filing, where there is no priority claim). The same deadline applies for requesting combined search and examination.
A request for examination (or a request for combined search and examination) may be made at any time after the application has been filed. For applications with a large number of claims (such as applications in the biotech and pharma space), the additional excess claims fees could be significant.
Where an application contains more than 20 claims, therefore, we recommend that a request for examination be made before 1 April 2017, to take advantage of the lower fees payable before that date. As noted above, a request for examination can be made at any time after the application is filed.
Where an applicant wishes to combine search and examination, then we recommend that the request for combined search and examination be made before 1 April 2017, for patent applications having 20 claims or more.
Where a request for examination or combined search and examination is filed on or after 1 April 2017, applicants may wish to consider filing a voluntary amendment to reduce the number of claims presented for examination, before a request for examination or combined search and examination is made.
Excess Claims Fee on Grant
The excess claims fee charged on grant (currently S$20 per claim over 25) will also increase, to a fee of S$40 fee for each claim over 20 in number, due when an applicant pays the grant fee. This change applies to grant fees paid on or after 1 April 2017.
This revision in the excess claims fee on grant impacts applicants on two fronts: (i) the threshold for paying the excess claims fee is lowered from 25 claims to 20 claims and (ii) the quantum of the fee goes up from S$20 per claim to $40 per claim.
No. of Claims
Grant Fee + Current Excess Claims Fee
Grant Fee + Excess Claims Fee from 1 April 2017
Table 2. Comparison of fees payable at grant (grant fee and excess claims fees) before and after 1 April 2017
Excess Claims Fee on Grant: Recommendations
The deadline for paying the grant fee is set by IPOS in the Notice of Eligibility for Grant. Where the applicant has received the Notice of Eligibility for Grant on an application with 20 or more claims, then it is advisable to pay the grant fee before 1 April 2017, to avoid the higher excess claims fees.
With the introduction of the excess claims fee on requesting examination (or combined search and examination), there will be two stages during the life of a patent application where excess claims fees are potentially due:
when requesting examination / combined search and examination
when paying the grant fee
Whether you will need to pay any excess claims fees at each stage will depend primarily on the number of claims at that stage. Furthermore, whether excess claims fees have already been paid at examination will affect whether you will need to pay excess claims fees on grant.
No Double Charging
IPOS has confirmed that there will not be any “double charging”. Thus, where an excess claims fee has already been paid on requesting examination or combined search and examination for a claim over 20, that fee will not be charged again on grant, if that claim number is present and the fee has already been paid for that number.
An example provided is for a patent application having 25 claims, on which 5 excess claims fees will have been paid on a request for examination.
When that application grants with the same number of claims, there will be no excess claims fee to be paid (the rationale being that the 5 extra claims will have been charged during examination). This is also the case were the patent to be granted for any number of claims up to 25 in number.
…But Also No Refunds!
IPOS will not refund any excess claims fees paid over the course of prosecution, however.
For example, where an examination report is requested on a patent application having 25 claims, and on grant there are only 23 claims, you won’t need to pay any excess claims on grant, but at the same time you won’t get your money back for the 2 excess claims fees that were paid in the earlier stage.
Calculating Excess Claims Fees Payable
Given the complexity of the above, you might be asking yourself “How do I determine if an excess claims fee is payable on a patent application?” and “What is the excess claims fee for a patent application on grant?”
The following rules may be applied to calculate whether or not excess claims fees are payable when requesting examination or combined search and examination, and when paying the grant fee:
Count the number of claims in the application being presented for a request examination or a request for combined search and examination. Call this X.
If X is 20 or below, there is no excess claims fee payable at this stage
If X is over 20, you need to pay excess claims fees of S$40 * (X - 20)
Count the number of claims in the application being presented for grant. Call this Y.
If Y is 20 or below, there is no excess claims fee payable on grant
If Y is over 20, but the same as or less than X, there is no excess claims fee payable on grant (i.e., 20 < Y ≤ X )
If Y is over 20 and Y is more than X you need to pay excess claims fees of
S$40 * (Y - X) if X was more than 20
S$40 * (Y - 20) if X was 20 or less
If Y is over 20 and Y is less than X, then there is no excess claims fee payable on grant and you will not get a refund for the claims that have been deleted
Changes to Renewal Fees
There are large increases to renewal fees (also known as maintenance fees or annuity fees) for Singapore patents, in the latter years of the patent. Renewal fees for the 4th to 7th years are unchanged.
Current Renewal Fee
Renewal Fee from 1 April 2017
8th to 10th year
11th to 13th year
14th to 16th year
17th to 19th year
after 20th year
Table 3. Comparison of renewal fees before and after 1 April 2017
Renewal Fees: Recommendations
IPOS has confirmed that, where the deadline for renewal falls after 1 April 2017, the old fees will be charged if the maintenance fee is paid before April. However, if the annuity fee is paid late, then the new fees will apply (and you’ll of course also have to pay the late renewal fee).
Under Singapore patent law, it is only possible to pay a renewal fee from 3 months before the due date. Rule 51(1) of the Patents Rules states that:
“an application for…renewal [of a patent]…shall be filed in the 3 months ending with the fourth or, as the case may be, succeeding anniversary of the date of filing” (emphasis added)
Therefore, if the renewal date for a patent falls on or before 30 June 2017, it may be possible for cost savings to be made by paying the renewal fee by 31 March 2017. There will only be savings for renewals for the 8th year onwards, though.
Further Changes Afoot
The proposed fee changes have to be understood in the context of the announcement by IPOS that it intends to remove the ability to request supplementary examination (i.e., the “foreign route”) from 1 January 2020.
It is currently possible to obtain grant of Singapore patent by requesting search and examination, or requesting examination relying on a search report that has already been established in another jurisdiction. It is also currently possible in Singapore to get a Singapore patent relying solely on the prosecution to grant or allowance of a foreign corresponding patent application, by requesting supplementary examination.
IPOS has previously announced that supplementary examination will not be available from 2020 onwards. For applications after that date, the prosecution options will be limited to requesting search and examination, and filing a request for examination relying on foreign or international search report.
The fee changes announced by IPOS are significant. It may be possible for some applicants to mitigate the effects somewhat by taking the recommended steps (requesting examination, paying the grant fee and paying renewal fees) before the implementation date of 1 April 2017. However, the changes are likely to significantly increase the costs of obtaining and maintaining a patent in Singapore, for a large number of cases.
This post only deals with some of the changes that have been announced. There are a number of other changes to fees and practice that are not being discussed in this post (particularly changes to trade mark fees). Details are also subject to change, particularly as the proposed legislative amendments to effect the fee increases have yet to be published.
Please get in touch with us if you would like more information on the fee changes, or if you have any questions on their impact.
UPC Post Brexit from a Big Pharma Perspective Ewan Nettleton (Novartis)
Coordination of Parallel UK & US Proceedings Liz Cohen (Bristows)
View on Brexit from the US Seth Levy (Nixon Peabody)
Regulatory Data Protection Duncan Curley (Innovate Legal)
SPCs Tony Rollins
Entry to the Market – A Generics Perspective Robert Fitt (Mylan)
Dating: How to know they are the one for you: Valuing your Ideal Partner Nigel Crockett (Tukan Partners Ltd)
Making it Work: Secrets to a Successful (Working) Relationship Rachel Thornley (GSK)
Tying the knot: Putting the Right Agreement Together Luke Kempton (Gowling WLG)
Partnering with Pharma: Better to be Single? Andre Hoekema (Galapagos)
Patent Litigation in China Tom Carver (Kemp)
Scientific Presentation Laurence Pearl (CSO Domainex)
Pre-dinner Talk Michael Silverleaf QC (11 South Square)
How Patent Analytics Will Help the Life Science Industry Nigel Swycher (Aistemos)
UK Case Law Update Mark Ridgway (Allen & Overy) and Dev Crease (Keltie LLP)
Asia Pacific IP Update Chong Yee Khoo (Cantab IP)
US Law Update Seth Levy (Nixon Peabody)
EPO Update Panel Discussion Siobhan Yeats (European Patent Office), Hazel Ford (Finnegan) and Christopher Rennie-Smith
My presentation on the morning of the Tuesday will cover updates on patent law and practice, particularly as they relate to biotechnology and pharmaceuticals, in Japan, India, China, Hong Kong, Indonesia, Malaysia and Singapore.
The CIPA Life Sciences Conference is described as “the UK’s premier annual educational and networking event for patent and IP professionals active in the pharma, medical technology and biotechnology sectors”. The conference is organised by the Life Sciences Committee of the Chartered Institute of Patent Attorneys, UK.
I am pleased and honoured to have been invited to speak at the CIPA Life Sciences Conference in November this year. My talk will focus on updates on recent developments in patent law and practice in South East Asia as they relate to the biotech, life sciences and pharma fields.
The conference will also include talks on United Kingdom, European Patent Office and United States patent law updates, coordinating UK & US patent strategies, strategies and practicalities in dealing with the Unified Patent Court (UPC), identifying, building and ending partnerships, supplementary protection certificates (SPCs) and data exclusivity as well as patent analytics for the life sciences.
The CIPA Life Sciences Conference will be held at the Grand Hotel, Brighton on 14 and 15 November 2016 and registration is now open. We hope to see you in Brighton for the conference.
We are pleased to announce that the Association of Singapore Patent Attorneys (ASPA) will hold an IP seminar on 5 October 2016 with the United Kingdom Chartered Institute of Patent Attorneys (CIPA).
The ASPA CIPA IP seminar will be held from 12 noon to 5 pm on Wednesday, 5 October 2016 at the Pacific 1 Ballroom of the Pan Pacific Hotel, Singapore.
We are pleased to have been actively helping to organise this seminar in the past few months, and look forward to seeing you at the seminar.
The talks at the seminar will be presented by members of the CIPA International Liaison Committee who are visiting Singapore en route to Bali to attend the 66th Council Meeting of the Asian Patent Attorneys Association.
Topics to be covered include:
“The Chartered Institute of Patent Attorneys” - Richard Mair (Abel & Imray)
“Life After a Vote to Brexit” - Bobby Smithson (Appleyard Lees)
“Updates on European IP Litigation” - Tim Powell (Potter Clarkson)
“Handling of Professional Conflicts” - Clare Cornell (Finnegan Europe)
“Recent Developments in UK Case Law Relating to Registered Designs” - Carin Burchell (BRANDED!)
“Three Dimensional Trade Marks: Possibilities and Pitfalls” - Clare Cornell
The seminar will provide excellent networking opportunities over tea-breaks and lunch and is open to members of ASPA as well as non-members.
We are pleased to announce that the Tweetup at the 2016 INTA Annual Meeting in Orlando will be held at at the Baskin Robbins ice cream store on International Drive on Monday, 23 May 2016 from 3 pm onwards.
The Baskin Robbins outlet (which also contains a Dunkin’ Donuts) is located at 7440 International Drive, just a few minutes walk from the Orange County Convention Center.
Read on for more information on the Tweetup, including directions and a backup venue in case of bad weather.
Given the sub-tropical climate of the meeting venue, we thought it would be nice to relax over some ice cream this year. Donuts and/or coffee are optional, but recommended for tired minds and bodies.
Please feel free to wander by from 3 pm onwards. People tend to come and go and we’ll be there for a couple of hours at least.
If you’re interested in attending the Tweetup, please register at the INTA Orlando Tweetup page. We look forward to seeing you at the INTA Tweetup from 3 pm on the Monday.
Directions from Orange County Convention Center to Baskin Robbins
The easiest way to get to the venue from the OCCC is to take the covered walkway (red on the map below) to the Rosen Centre Hotel.
The pedestrian walkway is called the “Rosen Centre Skywalk”, and it links the Orange County Convention at its south east corner to the Rosen Centre Hotel.
The Baskin Robbins outlet is just east of the Rosen Centre Hotel, across Hawaiian Court.
(Updated 20 May 2016) Head out of the main entrance of the hotel and turn right. At the end of the road, with Walgreens ahead of you, cross the road. Head right along the pedestrian path (away from Walgreens), until you see the Red Lobster parking sign. Turn left into the car park and walk towards Red Lobster. Baskin Robbins is between Red Lobster and McDonald’s.
Please take care when crossing the road and watch out for traffic in the car park.
The alternative route, marked by dots on the map, is slightly longer. Google Maps doesn’t know about the covered walkway between the OCCC and the Rosen Centre Hotel and will send you along Convention Way and International Drive. If you follow this route, go past Denny’s and Red Lobster and the Baskin Robbins outlet will be on your right, before McDonald’s.
Backup Venue for INTA Tweetup 2016 Orlando
If the weather is bad, we will meet at Meeting Point 3 of the Orange County Convention Center. We will announce any change in venue on Twitter via the #INTA_Tweetup.
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