Accelerating Patent Grants and Reducing Costs for Inventors from Singapore by Leveraging the US Patent System

Companies and Inventors from Singapore can leverage programs at the United States Patent and Trademark Office (USPTO) to substantially accelerate the process of obtaining of a patent in Singapore, all while reducing the overall cost to create a global patent portfolio.

 

Background

It may come as no surprise that Singapore ranked as one of the most innovative countries in the world.  Singapore ranked #3 in the most recent 2018 Bloomberg Innovation Index.   Singapore also ranked #3 in the World Economic Forum’s Global Competitiveness Report 2017-2018, and #5 in the International Property Rights Index.

Specific areas of technology that Singapore may be known best for pushing the boundaries on are: 1) Immersive Media; 2) Artificial Intelligence (AI) and Data Science; 3) Cybersecurity; and 4) Internet of Things (IoT) and future communications 1.  All areas that are of worldwide significance and growth.  Given this, the innovations developed in Singapore are of global appeal and warrant analysis of whether international protection of the intellectual property associated with those inventions are advisable.

Given that international protection of intellectual property rights can be costly and take a lot of time to obtain, it is important to consider all ways that the process can be optimized for both time and cost.

 

Time and Cost Analysis – Singapore

Preparing and filing a patent in almost any jurisdiction is not an inexpensive endeavor.  An inventor can expect to spend around S$10,000-20,000 in professional fees for the drafting of a patent application in Singapore, and filing fees that start around S$1,700.  At current exchange rates, that is an estimated $8,500-15,800 USD.

According to the Intellectual Property Office of Singapore (IPOS), the average time to get a patent through until grant is about 2-4 years.

 

Time and Cost Analysis – United States

Preparing and filing a patent in the United States is similar in complexity to doing so in Singapore.  Drafting expenses may be slightly lower, with estimated professional fees for preparing a patent application averaging about $6,000-10,000 USD (S$8,200-13700) (our firm averages slightly lower drafting fees of around $4,000-$8,000 USD). Standard filing fees are also a bit lower, with a small entity (companies with fewer than 500 employees) having a base filing fee of $785 USD (S$1,077).

The average time on a standard timeline application in the US is about 2-3 years.

 

Options to Accelerate in the US

Both the USPTO and the IPOS share options for accelerating examination of a patent application.  However, only the USPTO offers an easy acceleration process that is based solely on the payment of an additional fee.  Called Track I Prioritized Examination, the USPTO provides the ability for applicants to pay a fee ($2,000 for small entities or $1,000 for micro-entities) and receive a first office action in the merits, and final disposition within 1 year.

Done right, the Track I Prioritized Examination procedure at the USPTO gives patent applicants quick and clear insight on patentability of an invention.  The accelerated timeline of a Track I Prioritized Examination application also gives patent applicants the ability to have insight on whether foreign filings are worthwhile, will also providing options for accelerating granting of patents in those foreign jurisdiction.

For instance, applicants can leverage the Patent Prosecution Highway (PPH), which is a series of agreements the US has with foreign patent offices, such as Singapore, whereby when a first patent office (e.g., USPTO) allows a patent application, the second patent office (e.g., Singapore) will, upon submission of a request, accelerate the examination of the patent in the second office.

I have written a blog post about this separately elsewhere.

 

One Caveat on Acceleration in Singapore

While the Track I prioritized examination of US applications is available for applications in any industry, IPOS does offer an option for inventions that are in the FinTech space that may be even more advantageous.  A new program launched in 2018 at IPOS, called the FinTech Fast Track initiative, aims to have the time to grant of such FinTech patent applications in as little as 6 months.

So, if your invention is in the FinTech space, you may still be best served by filing in Singapore.  However, if your invention is in any other technological field, the Track I Prioritized Examination application at the USPTO may offer additional benefits over filing directly in Singapore.

 

One Additional Requirement

Before filing directly in the USPTO, those applicants that are Singapore residents till must contact Singapore (IPOS) for national security clearance to file an application abroad before filing an application in Singapore.  Luckily, this is not a complex process and usually only takes a few days to a week or so prior to getting the appropriate clearances.

 

Conclusion

There are several options to accelerate receiving of a patent in the USPTO that should be quite interesting to Singapore companies and residents.  From reduced costs, to quicker allowances, and allowances that can accelerate issuance in Singapore as well as numerous other foreign countries.

With all the options available, it may be time to look at you or your company’s IP practices and identify whether some of these options may work to increase the value of your IP, while simultaneously reducing the cost to protect it.

 

 

 

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