The Nucleate Artery: Here comes Part 2 of the Intellectual Property special!

📜 Continuing the Conversation: Role of Patent Attorneys and the Landscape of Patent Law in Singapore - Part 2

Welcome back dear readers, as we delve once more into the world of patent law! Following our previous discussion on the vital role of patent attorneys in preserving innovation, we are pleased to have Dr. Violet Lee from Marks & Clerk Singapore LLP for another insightful interview. Join us for this sequel, as we further explore the nuances of intellectual property and gain deeper insights into Singapore’s IP landscape.

A Scientist to Patent Attorney: The Inventor to Protector Journey

How did you embark on your journey towards becoming a Patent Attorney?

I chanced upon this opportunity at a career fair on campus when I was a final year undergraduate. However, I was still undecided, and my passion for chemistry led me to pursue a PhD. Thereafter, I sought out this same opportunity and landed a position as a Trainee Patent Attorney at Marks & Clerk Singapore LLP.

It was not necessary to do an internship at my firm, but a STEM degree in any field is required to begin on-the-job training. During this process, trainees need to pass certain modules within the Graduate Diploma in IP and Innovation Management (GDIPIM) or the Master of IP and Innovation Management (MIPIM) programmes conducted by the Singapore University of Social Sciences (SUSS). Finally, the candidate is required to clear a four-part Patent Agents Qualifying Examination conducted by Intellectual Property Office of Singapore (IPOS) before one can be finally registered as a Patent Attorney.

What made you specialise in Patents, as opposed to other tracks of IP service providers (i.e. IP lawyers, IA/IP consultants, IP mediator/arbitrator)?

It is necessary to pursue an LLB/JD or its equivalent, and be called to the Singapore Bar and become a registered Intellectual Property (IP) lawyer to represent clients in Singapore’s courts, which was not a suitable career path for me. However, we do liaise with IP lawyers to facilitate patent litigation work and if our clients need help with agreements and the like.

How diverse are your colleagues’ expertise? Are they science graduates as well?

Interestingly, we are a melting pot of engineers and scientists – essentially graduates from all trades of STEM. This allows us to effectively advise and handle cases on all kinds of technology as, together, we possess a broad range of technical knowledge and skills.

Would you have any advice for scientists who aspire to take on the challenge of becoming a Patent Attorney?

Yes, please consider being a Patent Attorney! No two days in the office are the same, and you’ll get to be fascinated by new inventions everyday, all while still being able to hone your scientific and analytical skills!

A Patent Attorney’s Day – Patent Filing 101

How relevant or important are IP skills relevant to employees of innovation?

It is indeed increasingly relevant, even for researchers, to become acquainted with IP, as this knowledge guides them to identify products/technologies/processes with IP value. It would also allow the researcher to be familiar with the basics of IP application filing, IP searches, and better understand how/which aspects of their IP can be monetised and enforced – in essence, effectively harness the IP potential of their inventions.

How would you outline the patent application process in Singapore to a prospective applicant?

There are several pathways in this process, each with a different filing timeline. Generally, patents take approximately 2 to 5 years to be granted from their filing date, depending on the complexity of the invention and are effective for 20 years. A few key steps of the patent application process include checking to see if the invention is likely to be patentable (before filing), filing a patent specification, filing a request for search and examination, responding to a Written Opinion issued by the patent examiner, and filing for issuance of the certificate of grant.

An illustration published by IPOS is provided below.

Figure reproduced from: https://www.ipos.gov.sg/about-ip/patents/how-to-register

Do you have any advice to scientists intending to patent a product in their biotech startup? How advisable would it be to consult a patent attorney to guide this process, especially for first timers? For small startups with tight funding, does IPOS offer some "pro-bono" legal advice (just like the Legal Aid Bureau)?

We encourage aspiring patent applicants to seek professional assistance from patent attorneys to guide the process due to the complexity of the patent filing process, as well as the technical expertise required to draft patent specifications. Also, IPOS offers weekly complimentary IP Legal Clinics and IP Business Clinics services as part of its package of services for Singapore citizens or Permanent residents and/or Singapore registered businesses. This may help startups to get better acquainted with the IP process.

IPOS Legal Clinics:

The more popular IP Business Clinic offers consultations on IP strategies and other IP-related business concerns to SC/SPR and/or SG-registered businesses. First-time applicants are provided with a 45-min consultation session to discuss IP strategies and options for businesses with the IP consultant.

Alternatively, the IP Legal Clinic provides the same qualifying applicants with access to a panel of registered IP lawyers. Likewise, first-time applicants are provided with a 45-min consultation session (however, an upfront fee of SGD 200-500 is payable to the assigned law firm, 100% reimbursed by IPOS), covering  IP infringement, opposition, invalidation, or revocation matters to allow them to make an informed decision on their situation.

More details at: https://www.ipos.gov.sg/eservices/ip-clinics

IPOS also offers an Inventor Assistance Programme, which provides pro-bono patent drafting and prosecution services to young inventors (aged 18-35) in Singapore. More details can be found at https://www.ipos.gov.sg/about-ip/patents/managing-patents/inventor-assistance-programme.

Comprehensive prior art searches are crucial to ensure the novelty of an invention during its patent process. Is it similar to a scientific literature review?

Indeed, it is! Much like what we do for scientific literature reviews, we turn to various search databases to identify prior art documents that might destroy the patentability of the invention. For a start, the inventors would likely have conducted their own prior art research in non-patent literature databases such as scientific journals and conference proceedings. With the help of a patent attorney, using the right keywords and classification codes to conduct a more in-depth review using local (i.e. IPOS Digital Hub) and international (e.g. WIPO PatentScope, USPTO, and EPO) patent databases could help in identifying relevant patents and patent applications worldwide.

Again, we encourage aspiring patent applicants to seek professional assistance from qualified patent attorneys to conduct such patentability searches and to review and analyse the search results. Experienced patent attorneys would likely be able to effectively compare prior art with the features of the invention to assess novelty and inventive step, and thereafter prepare a prior art search report. Based on the search results, a patent attorney will draft the patent application in light of the prior art to provide patentability for the patent application. Alternatively, it is also possible that the invention lacks patentability in view of the prior art and so not filing a patent application for the invention can in fact save money for the applicant.

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We are The Nucleate Artery, a monthly newsletter focused on the latest Singaporean biotech research and events. Chat with us via our Slack community: @Liyana Ayub Ow Yong @Leong Kim Whye @Yeow Jiang @Ignacius Tay.

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