Patents Rules

Source: Singapore Statutes Online | Archived by Legal Wires

Patents Act
(CHAPTER 221, Sections 42, 110 and 115)
Patents Rules
R 1
G.N. No. S 1/1995

REVISED EDITION 2007
(1st October 2007)
[23rd February 1995]
PRELIMINARY
Citation
1.  These Rules may be cited as the Patents Rules.
Definitions
2.—(1)  In these Rules, unless the context otherwise requires —
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“certificate of grant” means a certificate for the purposes of section 35(1);
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“convention country” has the same meaning as in section 17(10);
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“costs” includes fees, charges, disbursements, expenses, allowances and remuneration;
“declared priority date” means —
(a)the date of filing of the earliest relevant application specified in a declaration made for the purposes of section 17(2) where the priority date claimed in the declaration has not been lost or abandoned and where the declaration has not been withdrawn before preparations for the publication of the application in suit have been completed by the Registry in accordance with section 27; or
(b)where an international application for a patent (Singapore) is to be treated as an application for a patent under the Act, the date of filing of the earliest application filed in or for a country which is a convention country or which, in accordance with the law of a convention country or a treaty or international convention to which a convention country is a party, is equivalent to such an application, the priority of which is claimed in a declaration filed for the purposes of Article 8 of the Patent Co-operation Treaty, provided that such priority claim has not been lost or abandoned under the provisions of that Treaty;
“electronic online system” means the electronic online system established under rule 96A;
[Deleted by S 81/2014 wef 14/02/2014]
[Deleted by S 81/2014 wef 14/02/2014]
“initiation date”, in relation to a new application for a patent, means the date on which the application was initiated by the filing at the Registry of any document which satisfies any condition referred to in section 26(1)(a), (b) or (c);
[Deleted by S 81/2014 wef 14/02/2014]
“international preliminary report on patentability” means an international preliminary report on patentability (Chapter I of the Patent Co-operation Treaty), or an international preliminary report on patentability (Chapter II of the Patent Co-operation Treaty), referred to in the Regulations under the Patent Co-operation Treaty;
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“sequence” and “sequence listing” have the same meanings as they have under the Patent Co-operation Treaty.
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(2)  In these Rules, except where otherwise indicated —
(a)references to a section are references to that section of the Act;
(b)references to a rule are references to that rule in these Rules;
(c)references to a Schedule are references to that Schedule to these Rules; and
(d)references to the filing of a form or other document are references to filing it at the Registry.
(3)  [Deleted by S 210/2013 wef 08/04/2013]
Definitions of “examination”, “search” and “supplementary examination” in Act
2A.—(1)  For the purposes of the definition of “examination” in section 2(1), the matters to be determined by an Examiner when conducting an examination in relation to an application for a patent are —
(a)whether, taking into consideration all the relevant prior art, if any, that the Examiner is aware of or that has been discovered in a search —
(i)the invention defined in each claim of the specification of the application satisfies each condition or requirement for patentability under section 13;
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(ii)the conditions specified in section 25(4) and (5) have been complied with;
(iii)the application discloses any additional matter referred to in section 84(1) or (2) or any matter referred to in section 84(3);
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(b)whether the description, or any claim or drawing, in the application is so unclear, or any claim in the application is so inadequately supported by the description, that no meaningful opinion can be formed on whether the claimed invention satisfies all or any of the conditions for patentability under section 13(1);
(c)whether any claim in the application relates to an invention for which no search has been completed; and
(d)whether there is —
(i)any other application for a patent for the same invention, with the same priority date, filed by the same applicant or his successor in title; and
(ii)any earlier grant of a patent for the same invention, with the same priority date, to the same applicant or his successor in title.
(2)  For the purposes of the definition of “search” in section 2(1), the matters to be discovered by an Examiner when conducting a search in relation to an application for a patent are the relevant prior art contained in —
(a)the documentation prescribed under rule 40; and
(b)any additional documentation that the Examiner is aware of and considers to be relevant.
(3)  For the purposes of the definition of “supplementary examination” in section 2(1), the matters to be determined by an Examiner when conducting a supplementary examination in relation to an application for a patent (referred to in this paragraph as the application in suit) are —
(a)whether each claim in the application is supported by the description of the invention;
(b)whether, at the time the prescribed documents referred to in section 29(1)(d) are filed, each claim in the application in suit is related to at least one claim which —
(i)is set out in the prescribed documents relating to the corresponding application, corresponding international application or related national phase application referred to in section 29(1)(d), or to the application in suit during its international phase; and
(ii)has been examined to determine whether the claim appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility);
(ba)whether the invention defined in each claim of the specification of the application constitutes an invention;
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(c)whether the invention is an invention referred to in section 13(2) that is not patentable;
(d)whether the invention is an invention referred to in section 16(2) that is not to be taken to be capable of industrial application;
(e)whether there is —
(i)any other application for a patent for the same invention, with the same priority date, filed by the same applicant or his successor in title; and
(ii)any earlier grant of a patent for the same invention, with the same priority date, to the same applicant or his successor in title; and
(f)whether the application discloses any additional matter referred to in section 84(1) or (2) or any matter referred to in section 84(3).
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Fees
3.—(1)  The fees to be paid in respect of matters arising under the Act or these Rules shall be those specified in the First Schedule.
(2)  Unless otherwise provided for in these Rules, or the Registrar permits or directs otherwise —
(a)where a fee is specified in the First Schedule in respect of any matter, the fee shall be paid at the same time as the filing of the form corresponding to the matter; and
(b)if the fee is not paid, the form shall not be treated as filed.
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(3)  Subject to paragraph (4), a fee must be paid using the mode of payment permitted or directed by the Registrar.
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(4)  Where the electronic online system is used to carry out an act referred to in rule 96A(2), the fee payable in connection with that act must, unless otherwise permitted or directed by the Registrar, be paid using the mode of payment designated by the electronic online system.
[S 432/2020 wef 05/06/2020]
Forms
4.—(1)  The Registrar shall publish at the Office’s Internet website at http://www.ipos.gov.sg —
(a)the forms to be used for any purpose relating to —
(i)any application for or grant of a patent;
(ii)any proceedings before the Registrar under the Act or these Rules; or
(iii)any other matter under the Act or these Rules;
(b)the Registrar’s directions relating to the use of any form; and
(c)any amendment or modification of any such form or direction.
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(2)  The Registrar may modify any form in any particular case or class of cases.
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(3)  Any reference in these Rules to a numbered form shall be construed as a reference to the current version of the form bearing the corresponding number which is —
(a)described in the Second Schedule; and
(b)published at the Internet website referred to in paragraph (1).
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(4)  The matters referred to in the Act, including sections 17(6), 25(1) and (9), 26(8), 27(1), 28(4) and (8), 29(9), 29B(2), 31(1), 36A(10), 42(8), 80(9) and 108(1), of the Act, shall be filed with, made to or given to, the Registrar, or done in an effective and efficient manner by means which may be specified by the Registrar by the issuance of practice directions.
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Costs
5.  The Registrar may make an order for costs in respect of —
(a)any of the matters set out in the second column of the Third Schedule; and
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(b)the expenses and allowances of a person in relation to proceedings under the Act or these Rules.
Assessment of costs
6.—(1)  Where the Registrar has made an order for costs in favour of a party to proceedings before the Registrar and the party wishes to have party and party costs assessed by the Registrar, the party shall, within 8 weeks after the relevant date referred to in paragraph (1A) —
(a)apply for the costs to be assessed by filing a copy of the bill of costs; and
(b)send at the same time a copy of the bill of costs to every other person entitled to be heard in the assessment proceedings.
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(1A)  For the purposes of paragraph (1), the relevant date is —
(a)subject to sub-paragraph (b), the date of the order for costs made by the Registrar; or
(b)where any appeal is brought in respect of that order for costs, the date on which that appeal is finally disposed of.
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(2)  Every bill of costs shall set out in 3 separate sections the following:
(a)work done in the cause or matter (other than for or in the assessment of costs);
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(b)work done for or in the assessment of costs; and
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(c)all disbursements made in the cause or matter.
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(3)  The costs claimed under paragraph (2)(a), (b) and (c) shall set out the sum claimed for each item.
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(4)  The bill of costs shall set out in chronological order, with dates, all relevant events in the cause or matter, all relevant events in the assessment of costs, and all relevant events relating to the making of disbursements.
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(5)  Where costs have already been awarded for any of the events set out, this fact and the amount awarded shall be indicated.
(6)  Any party on whom a copy of the bill of costs has been served in accordance with paragraph (1) shall, if he wishes to dispute the bill, within one month after the receipt of the copy of the bill, mark the copy thereof in accordance with paragraph (7) and send a copy thereof duly marked to both the Registrar and the party requesting for assessment.
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(7)  A party on whom a copy of the bill of costs has been served shall effect marking on the copy thereof served by writing on the right hand margin against each item the word “Agree” if he agrees with the cost claimed for that item or the word “Disagree” if he disagrees.
(8)  Upon the expiry of the period of time referred to in paragraph (6), the Registrar shall give to the parties entitled to be heard in the assessment proceedings notice of the date and time appointed for assessment.
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Assessment proceedings
7.—(1)  If any party entitled to be heard in any assessment proceedings before the Registrar does not attend at the time appointed for the assessment, the Registrar may proceed with the assessment.
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(2)  The Registrar may, if he thinks it is necessary to do so, adjourn the proceedings from time to time.
(3)  The provisions in the Third Schedule shall apply to the sections of the bill of costs relating to —
(a)work done in the cause or matter (other than for or in the assessment of costs); and
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(b)work done for or in the assessment of costs.
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(4)  When a bill of costs has been assessed, the Registrar must make the Registrar’s certificate for the amount of the assessed costs.
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(5)  Costs awarded in proceedings before the Registrar are not intended to compensate the parties for the expense to which they have been put.
(6)  Paragraphs (3) and (5) do not apply to any assessment of costs or expenses of a party who is entitled under section 72(2) to the party’s costs or expenses as between solicitor and own client.
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Written evidence in support of circumstances in section 14(4), etc.
8.—(1)  The written evidence filed under section 14(8) by an applicant for a patent must comply with the following requirements:
(a)the written evidence must be by statutory declaration or affidavit, and must enclose all supporting documents;
(b)where the applicant relies on the circumstances described in section 14(4)(c), the written evidence must —
(i)state that the invention to which the applicant’s application relates was in fact displayed at an international exhibition;
(ii)state the opening date of the exhibition and, where the first disclosure of the invention did not take place on that date, the date of the first disclosure; and
(iii)enclose one or more supporting documents identifying the invention that was displayed at the exhibition;
(c)where the applicant claims that the publication by a foreign intellectual property office of an application for an intellectual property right (being an application containing matter constituting the invention to which the applicant’s application relates), or a registration of an intellectual property right pursuant to such an application, was erroneous for a reason mentioned in section 14(6)(b) or (7)(b), the written evidence must enclose an acknowledgment from the foreign intellectual property office —
(i)stating that the publication was erroneous and the reason for the publication being erroneous; and
(ii)if section 14(7)(b) applies, stating the earliest date on which the publication ought to have been made under the law or treaty governing the application.
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(2)  For the purposes of section 2(2), a statement may be published in the journal that an exhibition described in the statement falls within the definition of “international exhibition” in section 2(1).
(3)  In this rule, “foreign intellectual property office” has the same meaning as in section 14(11).
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Declaration of priority for purposes of section 17(2)
9.—(1)  Subject to paragraph (2), a declaration for the purposes of section 17(2) made in or in connection with an application for a patent (referred to in this rule and rules 9A and 9B as the application in suit) shall be made at the time of filing the application in suit.
(2)  A declaration for the purposes of section 17(2) may be made after the date of filing if —
(a)it would cause —
(i)the application in suit to have a declared priority date, where there was none previously; or
(ii)the declared priority date of the application in suit to be brought forward to an earlier date;
(b)it is made within 16 months from —
(i)where sub-paragraph (a)(i) applies, the declared priority date; or
(ii)where sub-paragraph (a)(ii) applies, the earlier date;
(c)it is made on Patents Form 57;
(d)the prescribed fee has been paid; and
(e)the condition referred to in paragraph (4) is satisfied.
(3)  Where a request to the Registrar to correct a mistake in a declaration for the purposes of section 17(2) would, if granted, cause the declared priority date to be changed to a different date, the request shall not be granted unless —
(a)it is made within 16 months from the declared priority date, as changed;
(b)it is made on Patents Form 57;
(c)the prescribed fee has been paid; and
(d)the condition referred to in paragraph (4) is satisfied.
(4)  For the purposes of paragraphs (2)(e) and (3)(d), the condition is that —
(a)the applicant has not made any request under section 27(2) to publish the application in suit during the period prescribed for the purposes of section 27; or
(b)any such request has been withdrawn.
(5)  Subject to paragraph (6), a declaration for the purposes of section 17(2) shall specify, in respect of each priority application —
(a)the date of filing of the priority application; and
(b)the country in or for which the priority application was made.
(6)  Where the application in suit is an international application for a patent (Singapore), paragraph (5) shall not apply in respect of a priority application if —
(a)the date of filing of that priority application; and
(b)the country in or for which that priority application was made,
have been indicated in compliance with rule 4.10(a) and (b) of the Regulations under the Patent Co-operation Treaty.
(7)  Where section 26(11) applies, a declaration for the purposes of section 17(2) shall not be made in or in connection with a new application referred to in section 26(11) if the declaration has not also been made in or in connection with the earlier application.
(8)  In this rule and rules 9B and 9C —
“priority application” means an earlier relevant application specified in a declaration for the purposes of section 17(2);
“relevant application” has the same meaning as in section 17(9).
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Request to Registrar for permission to make late declaration under section 17(4)
9A.—(1)  The period prescribed for the purposes of section 17(3)(b) shall be 2 months.
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(2)  For the purposes of section 17(6)(a), a request under section 17(4) shall —
(a)subject to rule 86(3A), be made before the end of the period referred to in section 17(3)(b);
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(b)be made on Patents Form 57;
(c)be made only if the prescribed fee has been paid;
(d)if the applicant failed to file the application in suit within the period referred to in section 17(3)(a), state the reason for the failure to file the application in suit within that period; and
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(e)be made only if —
(i)the request relates to an international application for a patent (Singapore); or
(ii)where the request does not relate to an international application for a patent (Singapore), the condition referred to in paragraph (3) is satisfied.
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(3)  For the purposes of paragraph (2)(e)(ii), the condition is that —
(a)the applicant has not made any request under section 27(2) to publish the application in suit during the period prescribed for the purposes of section 27; or
(b)any such request has been withdrawn.
(4)  Where the Registrar determines that every applicable condition referred to in section 17(6) for granting a request under section 17(4) has been satisfied, the Registrar shall grant the request and notify the applicant accordingly.
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(5)  Where the condition referred to in section 17(6)(b) for granting a request under section 17(4) has not been satisfied, the Registrar shall notify the applicant that the Registrar intends to refuse the request unless —
(a)observations are made or evidence is filed, within 2 months from the date of the notification, to satisfy the Registrar that the applicant’s failure to file the application in suit within the period referred to in section 17(3)(a) —
(i)occurred in spite of due care required by the circumstances having been taken; or
(ii)was unintentional; and
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(b)the Registrar is so satisfied on the observations made or evidence filed.
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(6)  Where paragraph (5) applies, the Registrar shall refuse the request under section 17(4), and shall inform the applicant accordingly, if —
(a)the applicant fails to make the observations or file the evidence within 2 months from the date of the Registrar’s notification; or
(b)the Registrar is not satisfied, on all the observations made and evidence filed, that the applicant’s failure to file the application in suit within the period referred to in section 17(3)(a) —
(i)occurred in spite of due care required by the circumstances having been taken; or
(ii)was unintentional.
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Furnishing of application or file number and of priority documents to support declaration under section 17(2)
9B.—(1)  Subject to paragraph (3), the applicant shall, before the end of the period of 16 months from the declared priority date, furnish to the Registry the application or file number of each priority application.
(2)  Subject to paragraph (3), if the applicant fails to comply with paragraph (1) in respect of any priority application, the declaration for the purposes of section 17 (2) shall be disregarded in so far as it relates to that priority application.
(3)  Where the application in suit is an international application for a patent (Singapore), paragraphs (1) and (2) shall not apply in respect of any priority application the application or file number of which has been indicated in compliance with rule 4.10(a) of the Regulations under the Patent Co-operation Treaty.
(4)  Where the Registrar, by notice sent to the applicant or proprietor (as the case may be), requires that applicant or proprietor to furnish to the Registry, in respect of any priority application, a copy of that priority application that is —
(a)duly certified by the authority with which it was filed; or
(b)otherwise acceptable to the Registrar,
that applicant or proprietor must, within 2 months starting on the date of the notice, comply with the notice.
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(5)  If the applicant or proprietor, as the case may be, fails to comply with paragraph (4) in respect of any priority application, the declaration for the purposes of section 17(2) shall be disregarded in so far as it relates to that priority application.
Translation of priority documents
9C.—(1)  Where —
(a)a copy of any priority application is furnished under rule 9B(4);
(b)that priority application is in a language other than English;
(c)the validity of the claim to priority is relevant to determining whether the invention concerned is patentable; and
(d)the Registrar, by notice sent to the applicant or proprietor, as the case may be, requires him to furnish to the Registry an English translation of that priority application,
the applicant or proprietor, as the case may be, shall, within 2 months from the date of the notice —
(i)furnish to the Registry both of the following at the same time:
(A)an English translation of that priority application;
(B)a copy of a verification document —
(BA)made in accordance with the Registrar’s requirements; and
(BB)verifying that the translation corresponds to the original text of that priority application.
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(ii)[Deleted by S 399/2022 wef 26/05/2022]
(2)  The Registrar may, by notice, require to be filed at the Registry or sent to the Registrar, within such period as may be specified in the notice, the original of the verification document.
(3)  If the applicant or proprietor, as the case may be, fails to comply with —
(a)paragraph (1) in respect of any priority application; or
(b)the Registrar’s requirement under paragraph (2) in respect of any verification document relating to any priority application,
the declaration for the purposes of section 17(2) shall be disregarded in so far as it relates to that priority application.
RIGHT TO APPLY FOR AND OBTAIN A PATENT
References under section 20(1)(a)
10.—(1)  A reference under section 20(1)(a) shall be made on Patents Form 2 and shall be accompanied by a statement setting out fully the nature of the question, the facts upon which the person making the reference relies and the order or other relief which he is seeking.
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(2)  The Registrar shall send a copy of the reference and statement to —
(a)any person (other than the person referred to in paragraph (1)) alleged in the reference to be entitled to be granted a patent for the invention;
(b)any person (not being a party to the reference) who is shown in the register as having a right in or under the patent application;
(c)any person (not being a party to the reference) who is an applicant for the patent or has given notice to the Registrar of a relevant transaction, instrument or event; and
(d)every person who has been identified in the application for a patent or a statement filed under section 24(2)(a) as being, or being believed to be, the inventor or joint inventor of the invention.
(3)  If any person who is sent a copy of the reference and statement under paragraph (2) wishes to oppose the making of the order or the granting of the relief sought, he shall, within 2 months from the date of the Registrar’s letter forwarding such copies, file a counter-statement on Form HC6 setting out fully the grounds of his opposition and the Registrar shall send a copy of the counter-statement to the person making the reference and to those recipients of the copy of the reference and statement who are not party to the counter-statement.
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(4)  The person making the reference or any such recipient may, within 2 months from the date of the Registrar’s letter forwarding a copy of the counter-statement, file evidence in support of his case and shall send a copy of the evidence —
(a)in any case, to the opponent; and
(b)in the case of evidence filed by such a recipient, to the person making the reference.
(5)  Within 2 months from the date of the Registrar’s letter forwarding the copy of such evidence to him or, if no such evidence is filed, within 2 months from the expiration of the period within which the copy of such evidence could have been filed, the opponent may file evidence in support of his case and shall send a copy of the evidence so filed to the person making the reference and those recipients; and, within 2 months from the date of receipt of the copy of the opponent’s evidence, that person or any of those recipients may file further evidence confined to matters strictly in reply and shall send a copy of it to the persons mentioned in paragraph (4)(a) and (b).
(6)  No further evidence shall be filed except with permission or by direction of the Registrar.
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(7)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the reference.
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References by co-proprietors under section 20(1)(b)
11.—(1)  A reference under section 20(1)(b) shall be made on Patents Form 2 and shall be accompanied by a statement setting out fully the nature of the question, the facts relied upon by the co-proprietor making the reference and the order he is seeking.
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(2)  The Registrar shall send a copy of the reference and statement to —
(a)each co-proprietor who is not a party to the reference and who has not otherwise indicated, in writing, his consent to the making of the order sought;
(b)any person to whom it is alleged in the reference that any right in or under an application for a patent should be transferred or granted;
(c)any person (not being a party to the reference) who is shown in the register as having a right in or under the patent application;
(d)any person (not being a party to the reference) who has given notice to the Registrar of a relevant transaction, instrument or event; and
(e)every person who has been identified in the application for the patent or a statement filed under section 24(2)(a) as being, or being believed to be, the inventor or joint inventor of the invention.
(3)  Any person who receives a copy of the reference and statement and who wishes to oppose the order sought may, within 2 months from the date of the Registrar’s letter forwarding copies of the reference and statement, file a counter-statement on Form HC6 setting out fully the grounds of his opposition.
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(4)  The Registrar shall, as appropriate, send a copy of any counter-statement to —
(a)each co-proprietor who is a party to the reference; and
(b)any person to whom a copy of the reference and statement were sent pursuant to paragraph (2).
(5)  Any person who receives a copy of the counter-statement may, within 2 months from the date of the Registrar’s letter forwarding such copy, file evidence in support of his case and shall send a copy of the evidence so filed to the co-proprietor making the reference and to each person who has filed a counter-statement.
(6)  Any person entitled to receive a copy of the evidence filed under paragraph (5) may, within 2 months from the date of receipt of the copy of such evidence or, if no such evidence is filed, within 2 months from the expiration of the period within which it could have been filed, file evidence in support of his case and shall send a copy of the evidence so filed to each of the other parties listed in paragraph (4).
(7)  Any person who receives a copy of the evidence filed under paragraph (6) may, within 2 months from the date of receipt of the copy of such evidence, file further evidence confined to matters strictly in reply and shall, as appropriate, send a copy of the evidence so filed to the parties listed in paragraph (4).
(8)  No further evidence shall be filed by any party except with permission or by direction of the Registrar.
[S 216/2022 wef 01/04/2022]
(9)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the reference.
[S 81/2014 wef 14/02/2014]
Orders under section 20
12.—(1)  Where an order is made under section 20 that an application for a patent shall proceed in the name of one or more persons none of whom was an original applicant, the Registrar shall notify all original applicants and their licensees, of whom he is aware, of the making of the order.
(2)  A person notified under paragraph (1) may make a request under section 23 (3) within 2 months from the date of the notification received from the Registrar.
Prescribed period for new application under section 20(3)
13.  The prescribed period for the purpose of subsection (3) of section 20 shall be 3 months from the day on which the time for appealing from an order made under that subsection expires without an appeal being brought or, where an appeal is brought, from the day on which it is finally disposed of.
Authorisation under section 20(5)
14.—(1)  An application under section 20(5) for authority to do anything on behalf of a person to whom directions have been given under section 20(2)(d) or (4) shall be made in writing and shall be accompanied by a statement setting out fully all the facts upon which the applicant relies and the nature of the authorisation sought.
[S 81/2014 wef 14/02/2014]
[S 739/2014 wef 13/11/2014]
(2)  The applicant shall, at the time the application and the statement are filed, serve on the person alleged to have failed to comply with the directions a copy of the application and a copy of the statement.
[S 81/2014 wef 14/02/2014]
(3)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the application.
[S 81/2014 wef 14/02/2014]
Request by joint applicants under section 22
15.—(1)  A request under section 22 by a joint applicant shall be made in writing and shall be accompanied by a statement setting out fully the facts upon which he relies and the directions which he seeks.
[S 81/2014 wef 14/02/2014]
[S 739/2014 wef 13/11/2014]
(2)  The person making the request shall, at the time the request and the statement are filed, serve on every other joint applicant a copy of the request and a copy of the statement.
[S 81/2014 wef 14/02/2014]
(2A)  Any other joint applicant who wishes to oppose the request shall —
(a)within 2 months after the date on which he is served with the copies of the request and the statement, file a counter-statement on Form HC6 setting out fully the grounds of his opposition; and
(b)at the time the counter-statement is filed, serve on the person making the request, and on every other joint applicant who is not a party to the counter-statement, a copy of the counter-statement.
[S 81/2014 wef 14/02/2014]
(3)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the request.
[S 81/2014 wef 14/02/2014]
Reference to Registrar under section 23
16.—(1)  Where, following the making of such an order as is mentioned in section 23(3), a question is referred to the Registrar under section 23(5) as to whether any person is entitled to be granted a licence or whether the period or terms of the licence are reasonable, the reference shall be made in writing and shall be accompanied by a statement setting out fully the facts upon which the person making the reference relies and the terms of the licence which he is prepared to accept or grant.
[S 81/2014 wef 14/02/2014]
[S 739/2014 wef 13/11/2014]
(2)  The person making the reference shall, at the time the reference and the statement are filed, serve on every relevant person a copy of the reference and a copy of the statement.
[S 81/2014 wef 14/02/2014]
(2A)  Any relevant person who does not agree to grant or accept a licence for such period and upon such terms shall —
(a)within 2 months after the date on which he is served with the copies of the reference and the statement, file a counter-statement on Form HC6 setting out fully the grounds of his opposition; and
(b)at the time the counter-statement is filed, serve on the person making the reference a copy of the counter-statement.
[S 81/2014 wef 14/02/2014]
(3)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the reference.
[S 81/2014 wef 14/02/2014]
(4)  In this rule, “relevant person” means a person (not being the person making the reference) in whose name the application is to proceed, or who claims to be entitled to be granted a licence, as the case may be.
[S 81/2014 wef 14/02/2014]
INVENTORS
Mention of inventor
17.—(1)  An application to the Registrar under section 24(1) or (3) by any person who alleges —
(a)that he ought to have been mentioned as the inventor or joint inventor of an invention in any patent granted or published application for a patent for the invention; or
(b)that any person mentioned as sole or joint inventor in any patent granted or published application for a patent for the invention ought not to have been so mentioned,
shall be made on Patents Form 7 and shall be accompanied by a statement setting out fully the facts relied upon.
(2)  The Registrar shall send a copy of any such application and statement to —
(a)every person registered as proprietor of, or applicant for, the patent (other than the applicant under section 24 himself);
(b)every person who has been identified in the application for the patent or a statement filed under section 24(2)(a) as being, or being believed to be, the inventor or joint inventor of the invention; and
(c)every other person whose interests the Registrar considers may be affected by the application.
(3)  Any recipient of the copies of the application and the statement who wishes to oppose the application shall —
(a)within 2 months after the date of the Registrar’s letter forwarding such copies to him, file a notice of opposition on Patents Form 58 setting out fully the grounds of his opposition; and
(b)at the time the notice of opposition is filed, serve a copy of the notice of opposition on every person referred to in paragraph (1) or (2)(a), (b) or (c) who is not a party to the notice of opposition.
[S 81/2014 wef 14/02/2014]
(4)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the application.
[S 81/2014 wef 14/02/2014]
(5)  The document prescribed for the purposes of section 24(1) shall be an addendum or erratum slip.
Procedure where applicant is not inventor or sole inventor
18.—(1)  Subject to rules 28 and 86(8) and (8A), the period prescribed for the purposes of section 24 (2) shall be —
(a)where there is no declared priority date, 16 months from the date of filing of the application for a patent; or
(b)where there is a declared priority date, 16 months from the declared priority date.
(1A)  A statement filed under section 24(2) shall be made on Patents Form 8.
(2)  [Deleted by S 688/2021 wef 01/10/2021]
(3)  Where the application is an international application for a patent (Singapore), the requirements of paragraph (1) shall be treated as having been complied with if the provisions of rules 4.1(a)(iv) and 4.6 of the Regulations under the Patent Co-operation Treaty have been complied with, whether or not there was any requirement that they be complied with.
APPLICATIONS FOR PATENTS
Application for grant of patent
19.—(1)  A request for the grant of a patent shall be made on Patents Form 1.
(2)  Where a document containing an indication that a patent is sought in pursuance of an application is filed with the Registrar without Patents Form 1 or the filing fee, the Form shall be filed with, and the fee shall be paid to, the Registry within one month from the date of the filing of the document.
(3)  The specification contained in an application for a patent made under section 25 shall state the title of the invention and continue with the description and the claim or claims and the drawings, if any, in that order.
(4)  The title appearing in the request and the specification shall be the same title, shall be short and precise, and shall indicate the matter to which the invention relates; and if in the opinion of the Registrar it fails to comply with this paragraph, the Registrar may reframe it so that it does so comply.
[S 81/2014 wef 14/02/2014]
(5)  The description shall first state the title of the invention as appearing in the request and shall —
(a)specify the technical field to which the invention relates;
(b)indicate the background art which, as far as it is known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention;
(c)disclose the invention as claimed in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and shall state the advantageous effects, if any, of the invention with reference to the background art;
(d)briefly describe the figures in the drawings, if any;
(e)set forth at least one mode for carrying out the invention claimed, with examples where appropriate, and with reference to the drawings, if any; and
(f)indicate explicitly, when it is not otherwise obvious from the description or the nature of the invention, the way or ways in which the invention satisfies the condition in section 13(1)(c) of being capable of industrial application.
(6)  The number of claims shall be reasonable in consideration of the nature of the invention claimed.
[S 81/2014 wef 14/02/2014]
(6A)  Where there are 2 or more claims, the claims shall be numbered consecutively in Arabic numerals.
[S 81/2014 wef 14/02/2014]
(7)  The definition in the claim of the matter for which protection is sought shall be in terms of the technical features of the invention which may be expressed in structural, functional or mathematical terms.
(8)  Claims shall be written —
(a)in 2 parts, the first part consisting of a statement indicating those technical features of the invention which are necessary in connection with the definition of the claimed subject-matter and which, in combination, appear to be part of the prior art and the second part preceded by the words “characterised in that”, “characterised by”, “wherein the improvement comprises”, or other words to the same effect, followed by a statement stating concisely the technical features which, in combination with the features stated in the first part, define the matter for which protection is sought; or
(b)in a single statement containing a recitation of a combination of several elements or steps, or a single element or step, which defines the matter for which protection is sought.
(9)  Claims shall not rely, in respect of the technical features of the invention, on references to the description or drawings, unless such a reference is necessary for the understanding of the claim or enhances the clarity or conciseness of the claim.
(9A)  The applicant making the request under paragraph (1) may, at the time of making the request, provide the information mentioned in section 24(2).
[S 688/2021 wef 01/10/2021]
(10)  Where —
(a)the documents filed at the Registry to initiate an application for a patent include something which —
(i)is or appears to be a description of the invention for which the patent is sought; and
(ii)is in a language other than English; and
(b)the applicant has not filed an English translation of that thing,
the Registrar shall notify the applicant that an English translation of that thing is required.
(11)  Where the applicant has been notified under paragraph (10), he shall, within 2 months from the date of the notification, file an English translation of that thing.
(12)  If the applicant fails to comply with paragraph (11), the Registrar shall refuse his application for a patent.
(13)  A request to withdraw an application for a patent shall be made by filing Form CM9.
[S 81/2014 wef 14/02/2014]
Description of patent that discloses sequence
19A.—(1)  Where an application for a patent discloses a sequence, the description of the application for the patent must include a sequence listing, presented as a separate part of the description and in a manner that complies with the practice directions issued by the Registrar.
(2)  Where an application for a patent discloses a sequence and —
(a)a sequence listing is not included in the description of the application for the patent; or
(b)the sequence listing that is included is not presented in a manner that complies with the practice directions issued by the Registrar,
the Registrar may invite the applicant to submit, for the purposes of the search and within the period specified in the invitation, a sequence listing presented in a manner that complies with the practice directions issued by the Registrar.
(3)  If the applicant does not, within the period specified in the invitation given under paragraph (2), submit the required sequence listing, the Examiner need only search the application to the extent that a meaningful search may be carried out —
(a)without the sequence listing; or
(b)with the sequence listing mentioned in paragraph (2)(b),
as the case may be.
(4)  Any sequence listing not included in the description of an application for a patent on the date of filing of the application as defined in section 2(1), including a sequence listing submitted pursuant to paragraph (2), does not form part of the application for the patent.
(5)  To avoid doubt, paragraph (4) does not prevent the applicant from amending or correcting, in accordance with any provision of the Act or these Rules, the description of an application for a patent in relation to a sequence listing.
[S 399/2022 wef 26/05/2022]
Micro-organisms
20.  The Fourth Schedule shall have effect in relation to certain applications for patents, and granted patents, for inventions which require for their performance the use of micro-organisms.
Drawings
21.—(1)  Drawings forming part of an application for a patent made under section 25 shall be on sheets the size of which shall be A4 (29.7 cm x 21 cm).
(2)  The sheets shall not contain frames round the usable or used surface.
(3)  The minimum margins shall be as follows:
(a)top: 2.5 cm;
(b)left side: 2.5 cm;
(c)right side: 1.5 cm; and
(d)bottom: 1.0 cm.
(4)  The margins, when submitted, must be completely blank.
(5)  Drawings shall be executed as follows:
(a)without colouring in durable, black, sufficiently dense and dark, uniformly thick and well-defined lines and strokes to permit satisfactory reproduction;
(b)cross-sections shall be indicated by oblique hatching which should not impede the clear reading of the reference signs and leading lines;
(c)the scale of the drawings and the distinctiveness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty. If, as an exception, the scale is given on a drawing, it shall be represented graphically;
(d)all numbers, letters and reference lines, appearing on the drawings, shall be simple and clear and brackets, circles and inverted commas shall not be used in association with numbers and letters;
(e)each element of each figure shall be in proper proportion to each of the other elements in the figure, except where the use of a different proportion is indispensable for the clarity of the figure;
(f)the height of the numbers and letters shall not be less than 0.32 cm and for the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used;
(g)the same sheet of drawings may contain several figures; where figures drawn on 2 or more sheets are intended to form one whole figure, the figures on the several sheets shall be so arranged that the whole figure can be assembled without concealing any part of the partial figures; and the different figures shall be arranged without wasting space, clearly separated from one another and shall be numbered consecutively in Arabic numerals, independently of the numbering of the sheets;
(h)reference signs not mentioned in the description or claims shall not appear in the drawings, and vice versa; and the same features, when denoted by reference signs, shall throughout the application, be denoted by the same signs;
(i)the drawings shall not contain textual matter, except, when required for the understanding of the drawings, a single word or words such as “water”, “steam”, “open”, “closed”, “section on AA”, and in the case of electric circuits and block schematic or flow sheet diagrams, a few short catchwords; and
(j)the sheets of drawings shall be numbered in accordance with rule 23(13) and (14).
(6)  Flow sheets and diagrams shall be considered drawings for the purposes of these Rules.
(7)  Paragraphs (1) to (4) and (5)(f), (g) and (j) shall not apply to any drawing to be filed with the Registry using the electronic online system, and that drawing shall instead comply with practice directions issued by the Registrar in place of the requirements of those paragraphs.
[S 324/2003 wef 01/08/2003]
Abstracts
22.—(1)  [Deleted by S 81/2014 wef 14/02/2014]
(2)  The abstract shall contain a concise summary of the disclosure as contained in the specification.
(3)  The summary shall indicate the technical field to which the invention belongs and be drafted in such a way which allows a clear understanding of the technical problem to which the invention relates, the gist of the solution of that problem through the invention, and the principal use or uses of the invention.
(4)  Where appropriate, the abstract shall also contain the chemical formula which, among those contained in the specification, best characterises the invention but shall not contain statements on the alleged merits or value of the invention or on its speculative application.
(5)  The abstract shall be as concise as the disclosure permits and shall normally not contain more than 150 words.
(6)  If the specification contains any drawings, the applicant shall indicate on the abstract the figure or, exceptionally, the figures (which must in no case exceed 2) of the drawings which he suggests should accompany the abstract when published.
[S 399/2022 wef 26/05/2022]
(7)  The Registrar may decide to publish one or more other figures if he considers that they better characterise the invention.
(8)  Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by the reference sign used in that drawing.
(9)  The abstract shall be so drafted that it constitutes an efficient instrument for the purposes of searching in the particular technical field, in particular by making it possible to assess whether there is a need to consult the specification itself.
Size and presentation of documents
23.—(1)  Subject to paragraph (29), this rule shall apply to all documents (including drawings) making up an application for a patent, including any replacement thereof, to be filed with the Registry by any means.
(1A)  All documents referred to in paragraph (1) shall be in English.
(2)  Unless otherwise provided, the specification (including any drawing therein), abstract and any replacement sheet thereof shall be filed singly.
(3)  All documents referred to in paragraph (1) shall be so presented as to permit direct reproduction by photography, electrostatic or electronic processes, scanning, photo offset and microfilming, in an unlimited number of copies.
(4)  All sheets must be free from cracks, creases and folds.
(5)  Only one side of the sheet shall be used.
(6)  All documents referred to in paragraph (1) shall be in A4 paper size (29.7 cm x 21 cm) and shall be on pliable, strong, white, smooth, matt and durable paper.
(7)  Each sheet (other than drawings) shall be used with its short sides at the top and bottom (upright position).
(8)  The request for the grant of a patent, the description, claims, drawings and abstract shall each commence on a new sheet.
(9)  The sheets shall be so connected that they can be easily turned when consulted, and easily separated and joined again if they have been separated.
(10)  The minimum margins of the sheets containing the description, the claims and the abstract shall be as follows:
(a)top: 2.0 cm;
(b)left side: 2.5 cm;
(c)right side: 2.0 cm; and
(d)bottom: 2.0 cm.
(11)  The margins of the documents making up the application, when filed, and of any replacement documents, must be completely blank.
(12)  In the application, except in the drawings —
(a)all sheets in the request shall, when filed, be numbered consecutively; and
(b)all other sheets shall, when filed, be numbered consecutively as a separate series,
and all such numbering shall be in Arabic numerals placed at the top or bottom of the sheet, in the middle, but not in the top or bottom margin.
(13)  All sheets of drawings contained in the application shall be numbered consecutively as a separate series.
(14)  Such numbering shall be in Arabic numerals placed at the top or bottom of the sheet, in the middle, but not in the top or bottom margin.
(15)  Every document (other than drawings) referred to in paragraph (1) shall be typed or printed in a dark, indelible colour in at least 1½ line spacing and in characters of which the capital letters are not less than 0.21 cm high except that graphic symbols and characters and chemical and mathematical formulae may be written or drawn, in a dark indelible colour.
(16)  The request for the grant of a patent, the description, claims and abstract shall not contain drawings.
(17)  The description, claims and abstract may contain chemical or mathematical formulae.
(18)  The description and the abstract may contain tables.
(19)  The claims may contain tables only if their subject-matter makes the use of tables desirable.
(20)  In all documents referred to in paragraph (1), units of weights and measures shall be expressed in terms of the metric system.
(21)  If a different system is used, units of weights and measures shall also be expressed in terms of the metric system.
(22)  Temperatures shall be expressed in degrees Celsius.
(23)  For the other physical values, the units recognised in international practice shall be used, for mathematical formulae the symbols in general use, and for chemical formulae the symbols, atomic weights and molecular formulae in general use shall be employed.
(24)  In general, use should be made of technical terms, signs and symbols generally accepted in the field in question.
(25)  If a formula or symbol is used in the specification, a copy thereof, prepared in the same manner as drawings, shall be furnished if the Registrar so directs.
(26)  The terminology and the signs shall be consistent throughout the application.
(27)  All documents referred to in paragraph (1) shall be reasonably free from deletions and other alterations, over-writings and interlineations and shall, in any event, be legible.
(28)  Non-compliance with this rule may be authorised by the Registrar if the authenticity of the content is not in question and the requirements for good reproduction are not in jeopardy.
(29)  Paragraphs (2) and (4) to (15) shall not apply to any document to be filed with the Registry using the electronic online system, and that document shall instead comply with practice directions issued by the Registrar in place of the requirements of those paragraphs.
Form of statements, counter-statements and evidence
24.  Rule 23(3) to (7) shall apply, with the necessary modifications, to any statement, counter-statement or evidence filed, unless the Registrar directs otherwise.
[S 366/2004 wef 01/07/2004]
Unity of invention
25.—(1)  Without prejudice to the generality of section 25 (5) (d), where 2 or more inventions are claimed (whether in separate claims or as alternatives within a single claim), such inventions shall be treated as being so linked as to form a single inventive concept only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features.
(2)  In this rule, “special technical features” means those technical features which define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
Certain matters prescribed under section 26
26.—(1)  The information on an earlier relevant application prescribed for the purposes of section 26 (1)(c)(ii)(B) shall be —
(a)the date of filing of the earlier relevant application; and
(b)the country in or for which the earlier relevant application was made.
(2)  The period prescribed for the purposes of section 26(3)(b) shall be 2 months from the date of the Registrar’s notification under section 26(3)(a).
(3)  The period prescribed for the purposes of section 26(7) shall be —
(a)subject to sub-paragraph (b), 3 months from the date of filing of the application for a patent; or
(b)where a new application has been filed under section 20(3), 26(11) or 47(4), 3 months from the initiation date.
(4)  The documents prescribed for the purposes of section 26(7)(c) are —
(a)a copy of the earlier relevant application mentioned in section 26(1)(c)(ii)(C) that is —
(i)duly certified by the authority with which it was filed; or
(ii)otherwise acceptable to the Registrar;
(b)where the earlier relevant application is in a language other than English — an English translation of that earlier relevant application; and
(c)Patents Form 56.
[S 399/2022 wef 26/05/2022]
(4A)  Paragraph (4)(a) or (b) does not apply if a copy of the earlier relevant application or an English translation of the earlier relevant application (as the case may be) had previously been filed at the Registry.
[S 399/2022 wef 26/05/2022]
(5)  The period prescribed for the purposes of section 26(12)(a) shall be —
(a)subject to sub-paragraph (b) —
(i)where there is no declared priority date, 12 months from the date of filing of the application for a patent; or
(ii)where there is a declared priority date, whichever following period expires later:
(A)12 months from the declared priority date; or
(B)2 months from the date of filing of the application; or
(b)where a new application has been filed under section 20(3), 26(11) or 47(4), 2 months from the initiation date.
Missing parts
26A.—(1)  The period prescribed for the purposes of section 26(8) shall be —
(a)if the applicant makes a request under section 26(9)(b)(i) —
(i)subject to sub-paragraph (ii), 3 months from the date of filing of the application for a patent; or
(ii)where a new application has been filed under section 20(3), 26(11) or 47(4), 3 months from the initiation date; or
(b)if the applicant does not make any request under section 26(9)(b)(i), any time before the applicant —
(i)files a request for a search report under section 29(1)(a);
(ii)files a request for a search and examination report under section 29(1)(b);
(iii)files a request for an examination report under section 29(1)(c); or
(iv)files a request for a supplementary examination report under section 29(1)(d).
[S 81/2014 wef 14/02/2014]
(2)  For the purposes of section 26(8), any missing part of an application for a patent shall be filed on Patents Form 56.
[S 81/2014 wef 14/02/2014]
(3)  An applicant may only withdraw a missing part by giving written notice to the Registrar.
(4)  The period prescribed for the purposes of section 26(9)(b) shall be —
(a)subject to sub-paragraph (b), 3 months from the date of filing of the application for a patent; or
(b)where a new application has been filed under section 20(3), 26(11) or 47(4), 3 months from the initiation date.
(5)  Any request under section 26(9)(b) (i) shall —
(a)be made at the time the applicant files any missing part of the application under section 26(8);
(b)be accompanied by —
(i)the statement under section 26(9)(b)(ii);
(ii)the information under section 26(9)(b)(iii); and
(iii)the documents under section 26(9)(b)(iv); and
(c)be considered never to have been made unless every requirement under section 26(9) has been complied with.
(6)  The information on an earlier relevant application prescribed for the purposes of section 26(9)(b)(iii) shall be —
(a)the date of filing of the earlier relevant application;
(b)the application or file number of the earlier relevant application; and
(c)the country in or for which the earlier relevant application was made.
(7)  The documents prescribed for the purposes of section 26(9)(b)(iv) are —
(a)a copy of the earlier relevant application mentioned in section 26(9)(a) that is —
(i)duly certified by the authority with which it was filed; or
(ii)otherwise acceptable to the Registrar; and
(b)where the earlier relevant application is in a language other than English — an English translation of that earlier relevant application or of every part of that earlier relevant application in which the missing part of the application for a patent is contained.
[S 399/2022 wef 26/05/2022]
(8)  Paragraph (7)(a) or (b) does not apply if a copy of the earlier relevant application, or an English translation of the earlier relevant application or of every part of the earlier relevant application in which the missing part of the application for a patent is contained (as the case may be), had previously been filed at the Registry.
[S 399/2022 wef 26/05/2022]
New applications under section 26(11)
27.—(1)  Subject to paragraphs (2) and (3), a new application for a patent which includes a request that it be treated as having as its date of filing the date of filing of an earlier application may be filed in accordance with section 26(11) —
(a)of the applicant’s own volition; or
(b)to comply with the requirements of section 25(5)(d).
[S 81/2014 wef 14/02/2014]
(1A)  [Deleted by S 81/2014 wef 14/02/2014]
(2)  Where possible, the description and drawings of the earlier application and the new application shall respectively relate only to the matter for which protection is sought by that application.
(3)  Where it is necessary for an application to describe the matter for which protection is sought by another application, it shall include a reference by number to that other application.
Extension of period for filing new applications
28.  Where a new application is filed under section 20(3), 26(11) or 47(4) —
(a)the requirement under rule 9(1) shall be complied with on the initiation date;
(b)after the expiry of the period referred to in rule 9(2)(b), the requirements under rule 9(2)(c) and (d) shall be complied with on the initiation date;
(c)after the expiry of the period referred to in rule 9(3)(a), the requirements under rule 9(3)(b) and (c) shall be complied with on the initiation date;
(d)after the expiry of the period referred to in rule 9A(2)(a), the requirements under rule 9A(2)(b), (c) and (d) shall be complied with on the initiation date;
(e)after the expiry of the period referred to in rule 9B(1), the requirement under rule 9B(1) shall be complied with on the initiation date;
(f)after the expiry of the period referred to in rule 18(1), the requirement under section 24(2) read with rule 18(1A) shall be complied with on the initiation date; and
(g)the requirements under paragraph 1(2)(a)(ii) and (3) of the Fourth Schedule, in a case to which they apply, shall be complied with on or before the time ascertained under paragraph 1(3) of that Schedule or the initiation date, whichever is the later.
Publication of applications
29.—(1)  Subject to paragraphs (2), (3) and (4), an application for a patent shall be published for the purposes of section 27 as soon as possible after the expiration of 18 months from the declared priority date or, where there is no declared priority date, the date of filing the application.
(2)  Where a new application is filed under section 20(3), 26(11) or 47(4), as the case may be, the period prescribed for the purposes of section 27 shall be 18 months from the declared priority date for the earlier application or, where there is no declared priority date, the date of filing the earlier application.
(3)  A request for early publication of an application in accordance with section 27(2) shall be made on Patents Form 9.
(4)  No application for a patent may be published if it is —
(a)withdrawn by filing Form CM9; or
[S 81/2014 wef 14/02/2014]
(b)treated as having been abandoned or refused,
earlier than one month preceding the expiration of the time period applicable under paragraph (1) or (2).
Completion of preparations for publication
30.  The Registrar may determine when the preparations for publication of an application for a patent are to be treated as having been completed.
PROCEDURE FOR GRANT
Address for service
31.—(1)  For the purposes of any proceedings before the Registrar, an address for service in Singapore shall be furnished in accordance with paragraph (2) by or on behalf of —
(a)every applicant for a patent;
(b)every person who initiates any proceedings with notice before the Registrar under rule 6, 7, 10, 11, 12, 14, 15, 16, 17, 52, 65, 66, 69, 71, 74, 80, 85 or 91, or paragraph 3 of the Fourth Schedule;
[S 216/2022 wef 01/04/2022]
(c)every proprietor of a patent who is a party to any proceedings with notice before the Registrar, but did not initiate those proceedings; and
[S 216/2022 wef 01/04/2022]
(d)every other party to any proceedings before the Registrar.
(2)  Where any form, or any application, request, reference or notice, referred to in paragraph (3) is required to be filed in relation to the proceedings, the address for service shall be furnished on that form, application, request, reference or notice, as the case may be.
[S 739/2014 wef 13/11/2014]
(3)  The effect of furnishing an address for service shall be as follows:
(a)where the address for service is furnished on —
(i)Patents Form 1 or 37; or
(ii)any application made under rule 86(9) or (13),
the address for service shall be effective for the purposes of all proceedings in respect of the patent, or the application for a patent, in relation to which that form is filed or the application is made, as the case may be;
[S 739/2014 wef 13/11/2014]
(b)where the address for service is furnished on —
(i)Patents Form 2, 7, 35 or 58;
(ii)Form HC4 or HC6;
(iii)Patents Form 28 (in so far as the form relates to an application referred to in rule 73(1));
(iv)an application referred to in rule 14(1) or 71(1);
[S 216/2022 wef 01/04/2022]
(v)a request referred to in rule 15(1) or made under paragraph 3(4) of the Fourth Schedule;
(vi)a reference referred to in rule 16(1); or
[S 216/2022 wef 01/04/2022]
(vii)a notice filed under paragraph 3(6) of the Fourth Schedule,
the address for service shall be effective for the purposes of the proceedings in relation to which that form or notice is filed, or that application, request or reference is made, as the case may be;
[S 739/2014 wef 13/11/2014]
(c)where the address for service is furnished on Patents Form 15, 19, 20 or 53, the address for service shall be effective only for the purposes of all renewal applications or proceedings in respect of the patent in relation to which that form is filed;
(d)where the address for service is furnished on —
(i)[Deleted by S 399/2022 wef 26/05/2022]
(ii)Form CM1, CM2, CM10 or CM12;
(iii)an application made under rule 64(1); or
(iv)a request mentioned in rule 92(1) or (2) or made under paragraph 2(1) of the Fourth Schedule,
the address for service is effective only for the matter for which that form is filed or that application or request is made, as the case may be;
[S 146/2017 wef 01/04/2017]
(e)where the address for service is furnished on Form CM6, the address for service shall be effective for the purposes of all proceedings in respect of the licence in relation to which that form is filed;
(f)where the address for service is furnished on Form CM7, the address for service shall be effective for the purposes of all proceedings in respect of the security interest in relation to which that form is filed;
(g)where the address for service is furnished on Form CM8 —
(i)if there are 2 addresses for service furnished on that form —
(A)one address for service shall be furnished for the purpose of registering the transfer of the patent, or the application for a patent, in relation to which that form is filed, and shall be effective only for that purpose; and
(B)the other address for service shall be effective for the purposes of all other proceedings in respect of that patent or application; or
[S 739/2014 wef 13/11/2014]
(ii)if there is only one address for service furnished on that form, the address for service shall be effective for the purposes of all proceedings in respect of the patent, or the application for a patent, in relation to which that form is filed.
[S 739/2014 wef 13/11/2014]
(4)  Where —
(a)an address for service is not furnished by or on behalf of any person mentioned in paragraph (1)(b), (c) or (d) as required by that paragraph; and
(b)no address is furnished under paragraph (3) by or on behalf of the person for the purposes of any of the proceedings mentioned in that paragraph,
the Registrar may, subject to paragraph (5), treat the person’s trade or business address in Singapore as that person’s address for service for the purposes of those proceedings.
[S 399/2022 wef 26/05/2022]
(5)  Where the trade or business address of the person is not known to the Registrar, the Registrar may send to the person, at an alternative address of the person, a notice to furnish an address for service for the purposes of the proceedings mentioned in paragraph (4)(b), within 2 months after the date of the notice.
[S 399/2022 wef 26/05/2022]
(5A)  Where the Registrar does not have any alternative address of the person to send the notice under paragraph (5), or where the Registrar has sent a notice under that paragraph but no address for service is provided within 2 months after the date of the notice —
(a)in the case of a person mentioned in paragraph (1)(b) — the proceedings in question are treated as withdrawn; and
(b)in the case of a proprietor mentioned in paragraph (1)(c) or a party mentioned in paragraph (1)(d) — the proprietor or party is not permitted to take part in the proceedings in question.
[S 399/2022 wef 26/05/2022]
(6)  Anything sent to or served on a person at his address for service shall be taken to have been duly sent to or served on the person.
(7)  In paragraphs (5) and (5A), “alternative address” means —
(a)any address (not being an email address) that was previously provided by the person to the Registrar in relation to a matter under these Rules concerning the person that is the same as the matter at hand; or
(b)any email address that was previously provided by the person to the Registrar in relation to a matter under these Rules that is the same as the matter at hand, where the person had given prior consent for that email address to be used for correspondence with the person for such matter.
[S 399/2022 wef 26/05/2022]
Period for commencement of formalities examination
32.  [Deleted by S 93/2007]
Formal requirements
33.—(1)  The following shall be formal requirements for the purposes of the Act:
(a)the requirements of rule 19(1), (4) and (6A);
[S 81/2014 wef 14/02/2014]
(b)the requirements laid down in rules 21(1), (2), (3), (4), (5) (other than those contained in paragraph (5)(h)) and (7), 22 and 23 (other than those contained in paragraphs (19), (20) and (26));
(c)the requirements of rule 31(1)(a); and
[S 81/2014 wef 14/02/2014]
(d)the filing of an abstract referred to in section 25(3)(c).
(2)  Where the application is an international application for a patent (Singapore) which, by virtue of section 85, is to be treated as an application for a patent under the Act, the requirements of rules 19(1), 21, 22 and 23 shall be treated as having been complied with to the extent that the requirements of the corresponding provisions of the Regulations under the Patent Co-operation Treaty, have been fulfilled.
Preliminary examination
34.—(1)  Where, on a preliminary examination of an application for a patent (referred to in this paragraph as the application in suit), the Registrar finds that a declaration for the purposes of section 17(2) specifies a date of filing for an earlier relevant application which is more than 12 months before the date of filing of the application in suit, the Registrar shall notify the applicant accordingly.
(1A)  The period prescribed for the purposes of section 28(4) shall be 2 months after the date of the Registrar’s notification under section 28(4).
[S 81/2014 wef 14/02/2014]
(2)  The period prescribed for the purposes of section 28(8) shall be —
(a)if the applicant makes a request under section 28(9)(b)(i), 3 months from the date of the Registrar’s notification under section 28(7); or
(b)if the applicant does not make any request under section 28(9)(b)(i), any time before the applicant —
(i)files a request for a search report under section 29(1)(a);
(ii)files a request for a search and examination report under section 29(1)(b);
(iii)files a request for an examination report under section 29(1)(c); or
(iv)files a request for a supplementary examination report under section 29(1)(d).
[S 81/2014 wef 14/02/2014]
(3)  For the purposes of section 28(8), any drawing or part of the description of the invention that is missing from the application shall be filed on Patents Form 56.
[S 81/2014 wef 14/02/2014]
(4)  An applicant may only withdraw the drawing or part of the description of the invention that is missing from the application by giving written notice to the Registrar.
(5)  The period prescribed for the purposes of section 28(9)(b) shall be 3 months from the date of the Registrar’s notification under section 28(7).
(6)  Any request under section 28(9)(b)(i) shall —
(a)be made at the time the applicant files the drawing or part of the description of the invention that is missing from the application under section 28(8);
(b)be accompanied by —
(i)the statement under section 28(9)(b)(ii);
(ii)the information under section 28(9)(b)(iii); and
(iii)the documents under section 28(9)(b)(iv); and
(c)be considered never to have been made unless every requirement under section 28(9) has been complied with.
(7)  The information on an earlier relevant application prescribed for the purposes of section 28(9)(b)(iii) shall be —
(a)the date of filing of the earlier relevant application;
(b)the application or file number of the earlier relevant application; and
(c)the country in or for which the earlier relevant application was made.
(8)  The documents prescribed for the purposes of section 28(9)(b)(iv) are —
(a)a copy of the earlier relevant application mentioned in section 28(9)(a) that is —
(i)duly certified by the authority with which it was filed; or
(ii)otherwise acceptable to the Registrar; and
(b)where the earlier relevant application is in a language other than English — an English translation of that earlier relevant application or of every part of that earlier relevant application in which the drawing or part of the description of the invention that is missing from the application for a patent is contained.
[S 399/2022 wef 26/05/2022]
(9)  Paragraph (8)(a) or (b) does not apply if a copy of the earlier relevant application, or an English translation of the earlier relevant application or of every part of the earlier relevant application in which the drawing or part of the description of the invention that is missing from the application for a patent is contained (as the case may be), had previously been filed at the Registry.
[S 399/2022 wef 26/05/2022]
Copies of documents referred to in formalities report
35.  [Deleted by S 93/2007]
Request for search report
36.  A request for a search report under section 29(1)(a) shall be made on Patents Form 10.
[S 81/2014 wef 14/02/2014]
Request for search and examination report
37.  A request for a search and examination report under section 29(1)(b) shall be made on Patents Form 11.
[S 81/2014 wef 14/02/2014]
Period for filing request for search report
38.—(1)  The period prescribed for filing a request for a search report under section 29(1)(a) shall be —
(a)if the application contains no declared priority date, 13 months from the date of filing; or
(b)if the application contains a declared priority date, 13 months from the declared priority date.
[S 81/2014 wef 14/02/2014]
(2)  Notwithstanding paragraph (1), where a new application is filed under section 20(3), 26(11) or 47(4), as the case may be, the period prescribed for filing a request for a search report under section 29(1)(a) shall be 13 months from the actual date of filing of the new application.
[S 81/2014 wef 14/02/2014]
Details of foreign applications
39.  [Deleted by S 366/2004]
Minimum documentation for search
40.—(1)  The documentation referred to in rule 2A(2)(a) (“minimum documentation”) shall consist of —
(a)the patents issued by or registered in Singapore;
(b)the patent applications published in Singapore;
(c)the “national patent documents” as specified in paragraph (2); and
(d)the published international (Patent Co-operation Treaty) applications.
[S 81/2014 wef 14/02/2014]
(1A)  [Deleted by S 81/2014 wef 14/02/2014]
(2)  Subject to paragraphs (3) and (4), the “national patent documents” shall be the following:
(a)the patents issued by Australia, France, the former Reichspatentamt of Germany, Japan, Switzerland (in French and German languages only), the United Kingdom and the United States of America;
(b)the patents issued by the Federal Republic of Germany; and
(c)the patent applications, if any, published in the countries referred to in sub-paragraphs (a) and (b).
(3)  The patent documents of Japan, for which no abstracts in the English language are generally available, need not form part of the “minimum documentation” referred to in paragraph (1).
[S 81/2014 wef 14/02/2014]
(4)  Only those patents issued and those patent applications published, after a date not more than 50 years before the declared priority date or, where there is no declared priority date, the date of filing of the application being subjected to a search, need form part of the “minimum documentation” referred to in paragraph (1).
[S 81/2014 wef 14/02/2014]
Prescribed patent offices
41.  The patent offices prescribed for the purposes of the definitions of “corresponding application”, “corresponding patent”, “related national phase application” and “related national phase patent” in section 2(1) shall be —
(a)those of Australia, Canada (in respect of applications for a Canadian patent filed in the English language), Japan, New Zealand, Republic of Korea, the United Kingdom and the United States of America; and
(b)the European Patent Office (in respect of applications for a European patent filed in the English language).
[S 81/2014 wef 14/02/2014]
Request for examination report
42.—(1)  A request for an examination report under section 29(1)(c) or (3) shall be made on Patents Form 12.
[S 81/2014 wef 14/02/2014]
(1A)  The prescribed documents referred to in section 29(1)(c) are —
(a)where the applicant relies on the final results of a search in one corresponding application or related national phase application —
(i)a copy of each of the final search results in respect of the corresponding application or related national phase application, as the case may be, together with a copy of each of the documents referred to in the final search results; and
(ii)an English translation of each of the final search results that is in a language other than English;
(b)where the applicant relies on the final results of a search in one corresponding international application —
(i)a copy of each of the final international search results in respect of the corresponding international application together with a copy of each of the documents referred to in the final international search results; and
(ii)an English translation of each of the final international search results that is in a language other than English;
(c)where the application in suit is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3), and the applicant relies on the final results of a search during the international phase of the application in suit —
(i)a copy of each of the final international search results in respect of the application in suit together with a copy of each of the documents referred to in the final international search results; and
(ii)an English translation of each of the final international search results that is in a language other than English;
(d)a list of references to the patent family members as corresponding to each document in a language other than English that is cited in the final search results referred to in sub-paragraph (a) or final international search results referred to in sub-paragraph (b) or (c), as the case may be; and
(e)where any list of references to the patent family members referred to in sub-paragraph (d), or any part of that list, is in a language other than English, an English translation of that list or part.
[S 81/2014 wef 14/02/2014]
(1B)  If the final results of a search mentioned in paragraph (1A)(b) or (c) have been established by the Office under the Patent Co-operation Treaty, a copy of any document mentioned in paragraph (1A)(b), (c), (d) and (e) need not be filed.
[S 652/2024 wef 16/08/2024]
(2)  A request for an examination report under section 29(1)(c) shall not be treated as having been made unless the form required under paragraph (1) —
(a)is filed with the prescribed documents referred to in paragraph (1A), unless this is not required by virtue of paragraph (1B); and
[S 399/2022 wef 26/05/2022]
(b)is accompanied by the prescribed fee.
[S 81/2014 wef 14/02/2014]
(3)  Where —
(a)an applicant has filed a request for an examination report under section 29(1)(c); and
[S 81/2014 wef 14/02/2014]
(b)any document referred to in the final search results referred to in paragraph (1A)(a) or final international search results referred to in paragraph (1A)(b) or (c), as the case may be, is in a language other than English,
the Registrar may by letter require the applicant to furnish, within 2 months after the date of the Registrar’s letter —
(i)an English translation of the whole or any part of that document; and
(ii)a copy of a verification document —
(A)made in accordance with the Registrar’s requirements; and
(B)verifying that the translation corresponds to the original text of that document or part thereof.
[S 81/2014 wef 14/02/2014]
(4)  Where an applicant fails to comply with the Registrar’s requirements under paragraph (3)(i) and (ii) within 2 months after the date of the Registrar’s letter referred to in paragraph (3), the request for an examination report shall be treated as having been abandoned.
[S 81/2014 wef 14/02/2014]
Request for supplementary examination report
42A.—(1)  A request for a supplementary examination report under section 29(1)(d) shall be made on Patents Form 12A.
(2)  The prescribed documents referred to in section 29(1)(d) are —
(a)where the applicant relies on the final results of any search and examination as to the substance of one corresponding application, corresponding international application or related national phase application —
(i)either —
(A)a copy of the patent granted by the patent office in question which is —
(AA)duly certified by that patent office; or
(AB)otherwise acceptable to the Registrar,
and, where the patent is in a language other than English, an English translation of the patent; or
(B)all of the following:
(BA)other documents, to the satisfaction of the Registrar, setting out the final results of the search and examination as to the substance of the corresponding application, corresponding international application or related national phase application, as the case may be;
(BB)where any document referred to in sub-paragraph (BA) is in a language other than English, an English translation of that document;
(BC)a copy of the patent claims referred to in the final results; and
(ii)a table setting out how each claim in the application in suit is related to at least one claim in the corresponding application, corresponding international application or related national phase application, as the case may be, being a claim which has been examined to determine whether the claim appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility); or
(b)where the application in suit is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3), and the applicant relies on the final results of any search and examination as to the substance of the application in suit during its international phase —
(i)an international preliminary report on patentability in respect of the application in suit during its international phase and, where that international preliminary report on patentability is in a language other than English, an English translation of that international preliminary report on patentability; and
(ii)a table setting out how each claim in the application in suit is related to at least one claim in the application in suit during its international phase, being a claim which has been examined to determine whether the claim appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility).
(3)  A request for a supplementary examination report under section 29(1)(d) shall not be treated as having been made unless the form required under paragraph (1) —
(a)is filed with the prescribed documents referred to in paragraph (2); and
(b)is accompanied by the prescribed fee.
(4)  In this rule, a reference to the final results of the search and examination as to the substance of a corresponding international application is a reference to an international preliminary report on patentability in respect of the corresponding international application.
[S 81/2014 wef 14/02/2014]
Period for filing request for search and examination report, request for examination report or request for supplementary examination report, etc.
43.—(1)  Subject to paragraph (2), the period prescribed for filing a request for a search and examination report under section 29(1)(b) or a request for an examination report under section 29(1)(c) or (3) shall be —
(a)subject to sub-paragraph (b), 36 months after —
(i)the declared priority date of the application; or
(ii)where there is no declared priority date, the date of filing of the application; or
(b)where a new application is filed under section 20(3), 26(11) or 47(4), 36 months after the actual date of filing of the new application.
(2)  Where the Registrar sends the applicant a copy of the search report under section 29(2)(b) at any time later than one month before the expiry of the period prescribed under paragraph (1)(a) or (b), as the case may be, the period prescribed for filing a request for an examination report under section 29(3) shall be one month from the date of the Registrar’s letter forwarding the copy of the search report sent under section 29(2)(b).
(3)  The period prescribed for filing a request for a supplementary examination report under section 29(1)(d) shall be —
(a)subject to sub-paragraph (b), 54 months after —
(i)the declared priority date of the application; or
(ii)where there is no declared priority date, the date of filing of the application; or
(b)where a new application is filed under section 20(3), 26(11) or 47(4), 54 months after the actual date of filing of the new application.
[S 81/2014 wef 14/02/2014]
(4)  The prescribed date mentioned in section 29(12)(a) and (b) is 1 January 2020.
[S 573/2017 wef 30/10/2017]
[S 399/2022 wef 31/12/2021]
44.  [Deleted by S 81/2014 wef 14/02/2014]
Search and examination procedure where 2 or more inventions claimed or new application filed under section 26(11)
45.—(1)  If during the preparation of a report under section 29(1)(a) or (b) it appears that an application relates to 2 or more inventions, but they are not so linked as to form a single inventive concept, the search may be restricted to one in relation to the first invention specified in the claims of the application, and the Registrar shall notify the applicant of that fact.
[S 81/2014 wef 14/02/2014]
(1A)  If during the preparation of an examination report under section 29(1)(c), it appears that an application relates to 2 or more inventions, but they are not so linked as to form a single inventive concept, the examination may be restricted to one in relation to the first invention specified in the claims of the application, and the Registrar must notify the applicant of that fact.
[S 399/2022 wef 26/05/2022]
(2)  If the applicant desires a search to be conducted in relation to a second or subsequent invention specified in the claims, he shall, within 2 months from the date of the Registrar’s notification referred to in paragraph (1), request on Patents Form 10 for a supplementary search report and pay the prescribed search fee for each invention in respect of which the search is to be made.
(3)  If a new application for a patent is filed under section 26(11) in respect of any part of the matter contained in an earlier application for a patent, the applicant may, in lieu of complying with section 29(1)(a), notify the Registrar in writing that he intends to rely on —
(a)any search report or supplementary search report established in the earlier application; or
(b)where the earlier application is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3), any international search report or international supplementary search report established during the international phase of the earlier application.
[S 81/2014 wef 14/02/2014]
(4)  Rule 42(2), (3) and (4) shall apply to any request for an examination report that is filed by an applicant who relies on an international search report or international supplementary search report under paragraph (3).
[S 688/2021 wef 01/10/2021]
[S 399/2022 wef 26/05/2022]
Observation by third party on patentability
45A.—(1)  If the Registrar receives an observation in writing on the question of whether an invention is a patentable invention under section 32(1), the Registrar must give written notice of this fact to the applicant in the application for the patent.
(2)  The Registrar must send a copy of the observation to an Examiner who is carrying out an examination of the application under section 29(4)(a) or (5)(a)(ii) or a supplementary examination under section 29(6)(a), and the Examiner must take the observation into consideration.
[S 688/2021 wef 01/10/2021]
Written opinion of Examiner, etc.
46.—(1)  For the purposes of section 29(7), the prescribed matters are the following:
(a)the description, claims or drawings are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on —
(i)the novelty or inventive step of the claimed invention; or
(ii)whether the claimed invention is capable of industrial application;
(b)the invention defined in any claim —
(i)does not appear novel;
(ii)does not appear to involve an inventive step; or
(iii)does not appear to be capable of industrial application;
(c)the conditions specified in sections 13 and 25(4) and (5) have not been complied with;
(d)the application discloses any additional matter mentioned in section 84(1) or (2) or any matter mentioned in section 84(3);
(e)a claim relates to an invention in respect of which no search has been completed, and the Examiner has decided not to carry out the examination in respect of that claim;
(f)there is —
(i)any other application for a patent for the same invention, with the same priority date, filed by the same applicant or the applicant’s successor in title; or
(ii)any earlier grant of a patent for the same invention, with the same priority date, to the same applicant or the applicant’s successor in title.
[S 399/2022 wef 26/05/2022]
(1A)  For the purposes of section 29(8), the prescribed matters are the following:
(a)any claim in the application is not supported by the description of the invention;
(b)at the time the prescribed documents mentioned in section 29(1)(d) are filed, any claim in the application in suit is not related to at least one claim which —
(i)is set out in the prescribed documents relating to the corresponding application, corresponding international application or related national phase application referred to in section 29(1)(d), or to the application in suit during its international phase; and
(ii)has been examined to determine whether the claim appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility);
(c)the invention defined in any claim of the specification of the application does not constitute an invention;
(d)the invention is an invention mentioned in section 13(2) that is not patentable;
(e)the invention is an invention mentioned in section 16(2) that is not to be taken to be capable of industrial application;
(f)there is —
(i)any other application for a patent for the same invention, with the same priority date, filed by the same applicant or the applicant’s successor in title; or
(ii)any earlier grant of a patent for the same invention, with the same priority date, to the same applicant or the applicant’s successor in title;
(g)the application discloses any additional matter mentioned in section 84(1) or (2) or any matter mentioned in section 84(3).
[S 399/2022 wef 26/05/2022]
(2)  The Registrar shall, on receipt of the written opinion, forward the opinion as soon as possible to the applicant together with an invitation to the applicant to file a response thereto.
(3)  The applicant may file a response to the written opinion in Patents Form 13A containing —
(a)written submissions on the Examiner’s opinion; or
(b)an amendment of the specification of the application (whether or not he makes the amendment of his own volition),
and where the applicant wishes to make written submissions and amend the specification of the application, he shall do both at the same time.
[S 81/2014 wef 14/02/2014]
(3A)  Subject to paragraph (3B), where an amendment of the specification of the application is filed under paragraph (3), it shall be in the form of a copy of the specification with the amendment indicated in the following manner:
(a)by striking through any text, figure or other matter to be replaced or deleted; and
(b)by underlining any replacement text, figure or other matter.
(3B)  Paragraph (3A) shall not apply if the amendment is filed using the electronic online system, and the amendment shall instead comply with practice directions issued by the Registrar in place of the requirements of that paragraph.
(4)  Any response under paragraph (3) to the first written opinion in respect of —
(a)an examination report under section 29(4); or
(b)a search and examination report under section 29(5),
shall be filed within 5 months after the date of the Registrar’s letter forwarding the written opinion.
[S 81/2014 wef 14/02/2014]
(4A)  Any response under paragraph (3) to the written opinion in respect of a supplementary examination report under section 29(6) shall be filed within 3 months after the date of the Registrar’s letter forwarding the written opinion.
[S 81/2014 wef 14/02/2014]
(5)  Where the applicant has filed a response under paragraph (3) to a written opinion in respect of an examination report under section 29(4) or a search and examination report under section 29(5) —
(a)the Examiner may, in his discretion, issue a further written opinion to the Registrar stating fully the reasons for the opinion;
(b)paragraphs (2) and (3) shall accordingly apply; and
(c)any response under paragraph (3) to the further written opinion shall be filed within 5 months after the date of the Registrar’s letter forwarding the further written opinion.
[S 81/2014 wef 14/02/2014]
(6)  In deciding whether to issue any further written opinion, the Examiner may also take into consideration whether sufficient time remains for the applicant to respond to his written opinion and for him to draw up the examination report or the search and examination report.
(7)  A further opinion or report issued by the Examiner need not take into account any response filed by the applicant after he has commenced drawing up his opinion or report.
(8)  Subject to paragraphs (9), (10) and (11), the Examiner shall —
(a)send the examination report, or the search and examination report, to the Registrar before the expiry of 18 months after the date of the Registrar’s invitation under paragraph (2) to file a response to the first written opinion in respect of the examination report or the search and examination report, as the case may be; and
(b)send the supplementary examination report to the Registrar before the expiry of 6 months after the date of the Registrar’s invitation under paragraph (2) to file a response to the written opinion in respect of the supplementary examination report.
[S 81/2014 wef 14/02/2014]
(9)  Where the applicant does not file a response to the first written opinion in respect of an examination report or a search and examination report within the period specified in paragraph (4) —
(a)the Registrar shall inform the Examiner accordingly; and
(b)upon the expiry of that period, the first written opinion shall be treated as the examination report or the search and examination report, as the case may be.
[S 81/2014 wef 14/02/2014]
(10)  Where the applicant does not file a response to the written opinion in respect of a supplementary examination report within the period specified in paragraph (4A) —
(a)the Registrar shall inform the Examiner accordingly; and
(b)upon the expiry of that period, the written opinion shall be treated as the supplementary examination report.
[S 81/2014 wef 14/02/2014]
(11)  Where the applicant does not file a response to a further written opinion in respect of an examination report or a search and examination report within the period specified in paragraph (5)(c) —
(a)the Registrar shall inform the Examiner accordingly; and
(b)upon the expiry of that period, the further written opinion shall be treated as the examination report or the search and examination report, as the case may be.
[S 81/2014 wef 14/02/2014]
Invitation to amend
46AA.  For the purposes of section 29(7C), an applicant for a patent to whom an Examiner gives an invitation to amend mentioned in section 29(7A) or (7B) may, within 2 months after the date of the invitation to amend and in Patents Form 13A —
(a)amend the specification of the application in the following manner:
(i)by striking through any text, figure or other matter to be replaced or deleted;
(ii)by underlining any replacement text, figure or other matter; or
(b)reject the invitation to amend.
[S 399/2022 wef 26/05/2022]
Review of examination report, etc.
46A.—(1)  A request for a review under section 29B(1) of an examination report issued under section 29(4), a search and examination report issued under section 29(5) or a supplementary examination report issued under section 29(6) shall be made on Patents Form 12B.
(2)  The period prescribed for the purposes of sections 29A(4)(a) and 29B(1)(a) shall be 2 months after the date of the Registrar’s letter forwarding to the applicant the notice under section 29A(3).
(3)  The applicant may amend the specification of the application under section 29B(2) by filing the amendment on Patents Form 12B.
[S 399/2022 wef 26/05/2022]
(4)  Where an amendment of the specification of an application is filed under paragraph (3), it shall be in the form of a copy of the specification with the amendment indicated in the following manner:
(a)by striking through any text, figure or other matter to be replaced or deleted; and
(b)by underlining any replacement text, figure or other matter.
(5)  The period prescribed for the purposes of section 29B(7) shall be 2 months after the date of the Registrar’s letter forwarding the notice under section 29B(5)(b)(ii).
[S 81/2014 wef 14/02/2014]
[S 399/2022 wef 31/12/2021]
Putting application in order
47.—(1)  The period prescribed for the purposes of section 29A(2)(a) shall be 2 months after the date of the notice of eligibility to proceed to the grant of a patent under section 29A(1).
[S 81/2014 wef 14/02/2014]
(2)  The period prescribed for the purposes of section 29B(6)(a) shall be 2 months after the date of the notice of eligibility to proceed to the grant of a patent under section 29B(5)(b)(i).
[S 162/2014 wef 10/03/2014]
[S 399/2022 wef 31/12/2021]
(3)  Payment of the prescribed fee for the grant of a patent must be accompanied by Patents Form 14 duly completed and filed by the applicant.
(4)  Where the specification of the application for a patent has been amended or corrected, or one or more missing parts have been included in the application, since the filing of the application —
(a)in any case where the Registrar has issued to the applicant a notice of eligibility to proceed to the grant of a patent under section 29A(1) —
(i)if any such amendment or correction is made before or at the time of compliance with section 29A(2)(a), the applicant shall, unless the Registrar specifies otherwise, file a specification incorporating every such amendment or correction at the time of compliance with section 29A(2)(a);
[S 399/2022 wef 26/05/2022]
(ii)if any such amendment or correction is made after the time of compliance with section 29A(2)(a), the applicant shall file a specification incorporating every such amendment or correction within such period as the Registrar may specify; and
(iii)any such missing part shall be included before or at the time of compliance with section 29A(2)(a), and the applicant shall file a specification incorporating every such missing part at the time of compliance with section 29A(2)(a); or
(b)in any case where the Registrar has sent the applicant a notice of eligibility to proceed to the grant of a patent under section 29B(5)(b)(i) —
(i)if any such amendment or correction is made before or at the time of compliance with section 29B(6)(a), the applicant shall file a specification incorporating every such amendment or correction at the time of compliance with section 29B(6)(a);
[S 399/2022 wef 31/12/2021]
(ii)if any such amendment or correction is made after the time of compliance with section 29B(6)(a), the applicant shall file a specification incorporating every such amendment or correction within such period as the Registrar may specify; and
[S 399/2022 wef 31/12/2021]
(iii)any such missing part shall be included before or at the time of compliance with section 29B(6)(a), and the applicant shall file a specification incorporating every such missing part at the time of compliance with section 29B(6)(a).
[S 162/2014 wef 10/03/2014]
[S 399/2022 wef 31/12/2021]
(4A)  The documents prescribed for the purposes of section 30(c) shall be —
(a)a duly completed Patents Form 14; and
[S 81/2014 wef 14/02/2014]
(b)every specification required to be filed under paragraph (4), if any.
[S 81/2014 wef 14/02/2014]
[S 399/2022 wef 26/05/2022]
(5)  [Deleted by S 93/2007]
(5A)  [Deleted by S 93/2007]
(6)  No amendment or correction (other than an amendment or correction introduced in order to comply with the formal requirements) may be introduced in the specification to be filed under paragraph (4).
(7)  Paragraphs (4) and (6) shall not apply to an international application for a patent (Singapore) if the only amendment to the specification since the filing of the application was an amendment referred to in section 86(5) of the Act which has been incorporated in the specification of the application before it was published in accordance with the Patent Co-operation Treaty.
[S 399/2022 wef 31/12/2021]
47A.  [Deleted by S 81/2014 wef 14/02/2014]
Application for amendment before grant
48.—(1)  Subject to rules 46(3) and (3A) and 56(1), an application for amendment of —
(a)the request for the grant of a patent on Patents Form 1; or
(b)the description, claims, drawings and abstract,
shall be made on Patents Form 13.
[S 399/2022 wef 26/05/2022]
(2)  The application for amendment of a document referred to in paragraph (1)(a) or (b) shall be accompanied by a copy of that document with the proposed amendment indicated therein in the following manner:
(a)by striking through any text, figure or other matter to be replaced or deleted; and
(b)by underlining any replacement text, figure or other matter.
(3)  [Deleted by S 93/2007]
(4)  Paragraph (2) shall not apply if the application for amendment is to be filed using the electronic online system; and the application for amendment shall instead comply with practice directions issued by the Registrar in place of the requirements in that paragraph, including the filing of such other document prepared in such manner as may be specified therein.
Time for making amendments before grant
49.—(1)  The applicant may, of his own volition, amend the request for the grant of a patent at any time before payment of the fee for the grant of the patent.
(2)  Subject to paragraph (3), the applicant may, unless the Registrar otherwise requires, of the applicant’s own volition, amend the description, claims, drawings and abstract at any time before payment of the fee for the grant of a patent.
[S 81/2014 wef 14/02/2014]
(3)  Subject to section 29B(2), an amendment shall not be made under paragraph (2) —
(a)at any time after the filing of a request for a search report under section 29(1)(a) and before the receipt of that report by the applicant;
(b)at any time after the filing of a request for a search and examination report under section 29(1)(b), unless the amendment is contained in a response filed under rule 46(3) in respect of that report;
(c)at any time after the filing of a request for an examination report under section 29(1)(c) or (3), unless the amendment is contained in a response filed under rule 46(3) in respect of that report;
(d)at any time after the filing of a request for a supplementary examination report under section 29(1)(d), unless the amendment is contained in a response filed under rule 46(3) in respect of that report; or
(e)at any time after a request for a review under section 29B(1) is made.
[S 81/2014 wef 14/02/2014]
Certificate of grant
50.  A certificate of grant under section 35 (1) shall be in Certificate Form 1.
[S 366/2004 wef 01/07/2004]
PATENTS AFTER GRANT
Renewal of patents
51.—(1)  If it is desired to keep a patent in force for a further year or part thereof after the expiration of the fourth or any succeeding year from the date of filing an application for that patent as determined in accordance with section 26, section 116(6) of the Patents Act (Cap. 221, 1995 Ed.) or section 117(4), an application for its renewal, in respect of the next succeeding year, accompanied by the prescribed renewal fee for that year, shall be filed in the 3 months ending with the fourth or, as the case may be, succeeding anniversary of the date of filing.
(2)  Where a patent is granted under section 30 after the expiry of the period of 45 months from the date of filing, the application for the renewal of the patent may be filed, and any renewal fees which have become due (including any fees due in respect of preceding years) may be paid, at any time up to the end of the period of 3 months from the date on which the patent is granted.
(2A)  Where the Registrar has extended the term of a patent under section 36A after the expiry of the period of 20 years referred to in section 36(1), an application for the renewal of the patent may be filed, and any renewal fees which have become due (including any fees due in respect of preceding years) may be paid, within 3 months from the date of the certificate of extension of patent term issued under section 36A(11) in respect of the patent.
(3)  An application for the renewal of a patent under this rule, or a late application for the renewal of a patent referred to in section 36(3), shall be filed —
(a)on Patents Form 15.
[S 399/2022 wef 26/05/2022]
(b)[Deleted by S 399/2022 wef 26/05/2022]
(3A)  For the purposes of section 36(3), the prescribed period is 6 months.
[S 399/2022 wef 26/05/2022]
(3B)  On receipt by the Registrar of —
(a)an application for the renewal of a patent that is filed in accordance with the Act and these Rules; and
(b)payment for the renewal fee and (if applicable) the additional fee for late application, that is made in accordance with the Act and these Rules,
the patent shall be renewed.
(4)  Where the period for payment of a renewal fee pursuant to paragraph (1) has expired, the Registrar shall, not later than one month from the last date for payment under that paragraph and if the fee still remains unpaid, send to the proprietor of the patent a notice reminding him that payment is overdue and of the consequences of non-payment.
(5)  Where a patent to which section 117(3) applies has never been renewed under paragraph (1), the application of section 36(4) in relation to the patent is modified to the extent that the Registrar is not required to send a notice reminding the proprietor of the patent that the payment is overdue.
(6)  [Deleted by S 81/2014 wef 14/02/2014]
(7)  [Deleted by S 81/2014 wef 14/02/2014]
(8)  [Deleted by S 300/2000 wef 03/07/2000]
Extension of term of patent
51A.—(1)  For the purposes of section 36A(10), an application to extend the term of a patent under section 36A(1)(a) or (b) shall be —
(a)made on Patents Form 54 within 6 months from the date of the grant of the patent; and
(b)accompanied by —
(i)the prescribed fee; and
(ii)all documentary evidence which the applicant wishes to rely on to support the application.
(2)  For the purposes of section 36A(10), an application to extend the term of a patent under section 36A(1)(c) shall be —
(a)made on Patents Form 54 —
(i)within 6 months from —
(A)the date of the grant of the patent; or
(B)the date marketing approval was obtained,
whichever is the later;
(ii)not later than 6 months before the end of the period of 20 years referred to in section 36(1); and
(iii)in any case, while the patent is still in force; and
(b)accompanied by —
(i)the prescribed fee;
(ii)a certificate under section 36A(7); and
(iii)all other documentary evidence which the applicant wishes to rely on to support the application.
(3)  Notwithstanding paragraph (1)(b) or (2)(b) —
(a)the Registrar may by letter direct an applicant for an extension of the term of a patent to furnish to the Registrar, within 2 months after the date of the Registrar’s letter, such additional evidence in support of the application as the Registrar may reasonably require; and
(b)if the applicant fails to comply with the Registrar’s direction under sub-paragraph (a), the application for the extension of the term of the patent shall be treated as having been abandoned.
[S 81/2014 wef 14/02/2014]
(4)  A certificate of extension of patent term under section 36A(11) shall be in Certificate Form 2.
(5)  For the purposes of section 36A(2), a delay by the Registrar in granting a patent shall not be treated as an unreasonable delay under section 36A(1)(a) unless —
(a)the interval between the date of filing of the application for the patent and the date of issue of the certificate of grant, excluding any period attributable to an act or omission of the applicant, exceeds 4 years; or
(b)the interval between the date on which the applicant —
(i)filed a request for a search and examination report in accordance with section 29(1)(b); or
(ii)filed a request for an examination report in accordance with section 29(1)(c) or (3),
and the date of issue of the certificate of grant, excluding any period attributable to an act or omission of the applicant, exceeds 2 years.
[S 81/2014 wef 14/02/2014]
(6)  For the purposes of section 36A(3), where the proprietor of a patent has made an application under section 36A(1)(a) and has satisfied the Registrar that there was in fact an unreasonable delay by the Registrar in granting the patent, the Registrar shall extend the term of the patent —
(a)in a case to which paragraph (5)(a) applies, by the period by which the interval referred to in paragraph (5)(a) exceeds 4 years;
(b)in a case to which paragraph (5)(b) applies, by the period by which the interval referred to in paragraph (5)(b) exceeds 2 years; or
(c)in a case to which both sub-paragraphs (a) and (b) of paragraph (5) apply, by the longer of the following periods:
(i)the period by which the interval referred to in paragraph (5)(a) exceeds 4 years;
(ii)the period by which the interval referred to in paragraph (5)(b) exceeds 2 years.
[S 81/2014 wef 14/02/2014]
(7)  For the purposes of section 36A(5), a curtailment of the opportunity to exploit a patent, the subject of which includes a substance which is an active ingredient of any pharmaceutical product, caused by the process of obtaining marketing approval for a pharmaceutical product, being the first pharmaceutical product to obtain marketing approval which uses the substance as an active ingredient, shall not be treated as an unreasonable curtailment under section 36A(1)(c) unless —
(a)the marketing approval was obtained after the date of issue of the certificate of grant; and
(b)the interval between the date the application for marketing approval was filed and the date marketing approval was obtained, excluding any period attributable to an act or omission of the applicant for marketing approval, exceeds 2 years.
[S 81/2014 wef 14/02/2014]
(8)  For the purposes of section 36A(6), subject to section 36A(7), (8) and (9), where the proprietor of a patent has made an application under section 36A(1)(c) and has satisfied the Registrar that there was in fact an unreasonable curtailment of the opportunity to exploit the patent under section 36A(1)(c), the Registrar shall extend the term of the patent by the shortest of the following periods:
(a)a period equivalent to the interval between the date of issue of the certificate of grant and the date marketing approval was obtained;
(b)the period by which the interval referred to in paragraph (7)(b) exceeds 2 years;
(c)a period of 5 years.
[S 81/2014 wef 14/02/2014]
(9)  For the purposes of section 36A(7), the Registrar shall not extend the term of the patent under section 36A(6) unless the applicant has procured and submitted to the Registrar a certificate from the relevant authority stating —
(a)the date the application for marketing approval was filed;
(b)the date marketing approval was obtained; and
(c)for each period attributable to an act or omission of the applicant for marketing approval, the dates on which the period started and ended.
[S 81/2014 wef 14/02/2014]
(10)  In paragraph (5), “period attributable to an act or omission of the applicant” includes (without prejudice to the generality of the expression) any of the following periods which is applicable:
(a)the period taken by the applicant to pay the filing fee under section 25(1)(b), calculated from the date of filing of the application for the patent to the date on which the filing fee is paid;
(b)the period taken by the applicant to make observations under section 26(3)(b)(i) which satisfy the Registrar that the documents filed at the Registry to initiate the application satisfy all of the conditions in section 26(1)(a), (b) and (c)(i) or (ii), calculated from the date of the Registrar’s notification to the applicant under section 26(3)(a) to the date on which the applicant makes the observations;
(c)the period taken by the applicant to file the documents referred to in section 26(7)(a), (b) and (c), calculated from the date of filing of the application for a patent to the date on which the applicant files the documents;
(d)the period taken by the applicant to comply with section 26(9)(b), if the applicant, after filing at the Registry any missing part of the application, makes a request to the Registrar for section 26(8)(b) not to apply to the application, calculated from the date on which the applicant filed at the Registry the missing part of the application to the date on which the applicant complies with section 26(9)(b);
(e)the period taken by the applicant to make a new application for a patent under section 26(11)(a), calculated from the date of filing of the earlier application for a patent referred to in section 26(11) to the date on which the new application is made;
(f)the period taken by the applicant to file one or more claims for the purposes of the application under section 26(12)(a), calculated from the date of filing of the application for the patent to the date on which the applicant files the claim or claims;
(g)the period taken by the applicant to —
(i)make observations under section 28(4)(a) which satisfy the Registrar that all the formal requirements have been complied with; or
(ii)amend his application under section 28(4)(b) to comply with all the formal requirements,
calculated from the date of the Registrar’s notification under section 28(4) to the date on which the applicant makes the observations or the earliest date on which the application, as amended by the applicant, complies with all the formal requirements;
(h)the period taken by the applicant to comply with section 28(9)(b), if the applicant, after filing any drawing or part of the description of the invention which is missing from the application, makes a request to the Registrar for section 28(8)(b) not to apply to the application, calculated from the date of the Registrar’s notification under section 28(7) to the date on which the applicant complies with section 28(9)(b);
(i)the period taken by the applicant to —
(i)file a request for a search report under section 29(1)(a) and pay the prescribed fee for that report; or
(ii)file a request for a search and examination report under section 29(1)(b) and pay the prescribed fee for that report,
calculated from the date of the Registrar’s notification under section 28(11) to the date on which the applicant files the request and pays the fee;
(j)the period taken by the applicant to file the prescribed documents and a request for an examination report under section 29(1)(c) and pay the prescribed fee for that report, calculated from the date of the Registrar’s notification under section 28(11) to the date on which the applicant files the documents and request and pays the fee;
(k)the period taken by the applicant to file the prescribed documents and a request for a supplementary examination report under section 29(1)(d) and pay the prescribed fee for that report, calculated from the date of the Registrar’s notification under section 28(11) to the date on which the applicant files the documents and request and pays the fee;
(l)the period taken by the applicant to file a request for an examination report under section 29(3), calculated from the date of the Registrar’s letter forwarding a copy of the search report under section 29(2)(b) to the date on which the applicant files the request;
(la)the period taken by the applicant to respond to an invitation to amend, calculated from the date the invitation is given to the date on which the applicant responds to the invitation (whether by amending the specification of the application or by rejecting the invitation), or the last day of the period prescribed under section 29(7C), whichever is earlier;
[S 399/2022 wef 26/05/2022]
(m)the period taken by the applicant to respond to a written opinion under section 29(9)(a), calculated from the date of the Registrar’s letter forwarding a copy of the written opinion under section 29(7) or (8) to the date on which the applicant responds to the written opinion;
(n)the period taken by the applicant to amend the specification of the application under section 29(9)(b), calculated from the date of the Registrar’s letter forwarding a copy of the written opinion under section 29(7) or (8) to the date on which the applicant makes the amendment;
(o)the period taken by the applicant to apply for a review of the examination report, search and examination report or supplementary examination report under section 29A(4)(a), calculated from the date of the Registrar’s notice under section 29A(3) to the date on which the applicant files the request;
(p)the period taken by the applicant to amend the specification of the application under section 29B(2), calculated from the date of the Registrar’s notice under section 29A(3) to the date on which the applicant makes the amendment;
(q)the period taken by the applicant to satisfy the conditions under section 30(a) and (c), calculated from the date of the notice of eligibility to proceed to the grant of a patent under section 29A(1) or 29B(5)(b)(i) that is received by the applicant to the date on which the applicant satisfies the conditions under section 30(a) and (c);
(r)where the application is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3), the period taken by the applicant to cause the application to enter the national phase in Singapore, calculated from the date of the filing of the application in accordance with the Patent Co-operation Treaty to the date on which the national phase of the application begins under section 86(3);
(s)the period taken by the applicant to rectify any failure to comply with any requirement under the Act or these Rules, such period —
(i)to be calculated from the date by which the applicant is required to comply with the requirement to the date on which the applicant rectifies the failure to comply with the requirement; and
(ii)to include any period taken by the Registrar or the Registry to detect or to notify the applicant of the applicant’s failure to comply with the requirement;
(t)the period taken by the applicant to respond to any request by the Registrar for any document, information or evidence, calculated from the date of the Registrar’s notification to the applicant of the request to the date on which the applicant responds to the request;
(u)any extension or alteration of any period to do any thing that is granted by the Registrar or the court at the request or on the application of the applicant.
[S 81/2014 wef 14/02/2014]
(11)  In paragraphs (7) and (9), “period attributable to an act or omission of the applicant for marketing approval” includes (without prejudice to the generality of the expression) —
(a)the period taken by the applicant for marketing approval to correct deficiencies in his application for marketing approval, calculated from the date of the relevant authority’s notification to the applicant for marketing approval of the deficiencies to the date on which the applicant for marketing approval corrects the deficiencies;
(b)the period taken by the applicant for marketing approval to respond to any request by the relevant authority for clarification or information, calculated from the date of the relevant authority’s request to the date on which the relevant authority receives the response of the applicant for marketing approval; and
(c)any extension of any period to do any thing that is granted by the relevant authority at the request or on the application of the applicant for marketing approval.
[S 81/2014 wef 14/02/2014]
Amendment of specification after grant
52.—(1)  An application to the Registrar for permission to amend the specification of a patent shall be made on Patents Form 17.
[S 81/2014 wef 14/02/2014]
[S 216/2022 wef 01/04/2022]
(1A)  If the Registrar is satisfied that the application may be allowed, the Registrar shall advertise the application by publishing the application and the reasons for the proposed amendment in the journal and in such other manner, if any, as the Registrar may direct.
[S 81/2014 wef 14/02/2014]
(2)  Any person wishing to oppose the application to amend shall, within 2 months from the date of the advertisement in the journal, file notice to the Registrar on Patents Form 58.
[S 81/2014 wef 14/02/2014]
(3)  The notice shall be supported by a statement setting out fully the facts upon which the opponent relies and the relief which he seeks.
[S 81/2014 wef 14/02/2014]
(3A)  The opponent shall, at the time the notice and the statement are filed, serve on the applicant a copy of the notice and a copy of the statement.
[S 81/2014 wef 14/02/2014]
(4)  Within 2 months after the date on which the applicant is served with the copies of the notice and the statement, he shall, if he wishes to continue with the application, file a counter-statement on Form HC6 setting out fully the grounds upon which the opposition is resisted.
[S 81/2014 wef 14/02/2014]
(4A)  The applicant shall, at the time the counter-statement is filed, serve on the opponent a copy of the counter-statement.
[S 81/2014 wef 14/02/2014]
(5)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the application.
[S 81/2014 wef 14/02/2014]
(6)  An application under this rule shall be accompanied by a copy of the specification with the proposed amendment indicated therein in the following manner:
(a)by striking through any text, figure or other matter to be replaced or deleted; and
(b)by underlining any replacement text, figure or other matter.
(6A)  [Deleted by S 93/2007]
(7)  Where notice of opposition has been filed, the Registrar, in determining whether permission to amend should be granted, may cause the patent as proposed to be amended to be examined by an examiner to determine whether the amendment is allowable under section 84 (3), in which case the application for permission to amend together with the notice of opposition, the accompanying statement and any counter-statement, shall be taken into consideration by the examiner during his examination.
[S 216/2022 wef 01/04/2022]
(8)  Where permission to amend a specification is given, the applicant shall, if the Registrar so requires, and within a time to be fixed by him, file a new specification as amended, which shall be prepared in accordance with rules 19, 21 and 23.
[S 216/2022 wef 01/04/2022]
(8A)  [Deleted by S 93/2007]
(8B)  No amendment or correction (other than an amendment or correction introduced in order to comply with rule 19, 21 or 23) may be introduced in the new specification to be filed under paragraph (8).
(9)  Where no notice of opposition is received by the Registrar under paragraph (2) or where such notice fails to comply with paragraph (3) and the Registrar is satisfied with the reasons for making the proposed amendments, he may give permission to the applicant to amend the specification of the patent.
[S 216/2022 wef 01/04/2022]
(10)  Where an application to amend is filed using the electronic online system —
(a)paragraph (6) shall not apply to the application; and
(b)the application shall instead comply with practice directions issued by the Registrar in place of the requirements under that paragraph.
Re-examination after grant
52A.—(1)  A request for the Registrar to conduct a re-examination of the specification of a patent under section 38A(1) must be made on Patents Form 36, and be accompanied by —
(a)the prescribed fee;
(b)a statement —
(i)identifying each ground under section 38A(1) on which the request is made; and
(ii)explaining how that ground or grounds is or are satisfied; and
(c)any document mentioned in section 38A(2)(c)(ii).
(2)  Where any document mentioned in section 38A(2)(c)(ii) that is filed is in a language other than English, the Registrar may require the person who filed the request to provide, within the time specified by the Registrar —
(a)an English translation of the whole or any part of that document; and
(b)a copy of a document verifying, to the Registrar’s satisfaction, that the translation corresponds to the original text of that document or part of that document.
(3)  If the person fails to comply with paragraph (2)(a) or (b) within the time specified by the Registrar, the request is treated as having been abandoned.
(4)  Where the Registrar grants a request under section 38A(1), the Registrar must forward to an Examiner —
(a)the request;
(b)the statement mentioned in paragraph (1)(b); and
(c)each document mentioned in paragraph (1)(c).
(5)  The proprietor of the patent may, within 2 months after the date on which the Registrar sends the proprietor a copy of the Examiner’s written opinion under section 38A(8), request an interview with the Examiner, and the Registrar must grant such a request.
(6)  The Registrar may, in any particular case, grant a request for an interview with the Examiner that is made after the period mentioned in paragraph (5).
(7)  If the proprietor of the patent wishes to respond to the written opinion given under section 38A(8), the proprietor must file a response in Patents Form 13A, containing —
(a)written submissions on the Examiner’s written opinion; or
(b)an application to amend the specification of the patent, with the amendment indicated by —
(i)striking through any text, figure or other matter to be replaced or deleted; and
(ii)underlining any replacement text, figure or other matter,
and where the proprietor wishes to make written submissions and apply to amend the specification of the patent, the proprietor must do both at the same time.
(8)  The proprietor of the patent must file the response mentioned in paragraph (7) with the Registrar within 3 months after the date on which the Registrar sends to the proprietor a copy of the written opinion.
(9)  If the proprietor of the patent fails to respond to the written opinion within the period mentioned in paragraph (8) —
(a)the Registrar must inform the Examiner accordingly; and
(b)the written opinion is treated as the re-examination report mentioned in section 38A(10).
(10)  Where an application to amend the specification of the patent has been filed by the proprietor under paragraph (7)(b) and it appears to the Examiner that the proposed amendment would resolve any objection mentioned in the written opinion, the Examiner must state so in the re-examination report and specify in the report the objection that would be so resolved.
(11)  The Registrar may direct the proprietor of the patent to file with the Registrar, within the time specified by the Registrar —
(a)in a case where paragraph (10) applies — a specification incorporating the amendment mentioned in paragraph (10); or
(b)in a case where the Registrar makes an order mentioned in section 38A(12)(b) — a specification incorporating any amendment (including any proposed amendment mentioned in paragraph (10)) relating to the order to the satisfaction of the Registrar.
[S 688/2021 wef 01/10/2021]
Restoration of lapsed patent
53.—(1)  An application under section 39 for the restoration of a patent —
(a)may be made at any time within 18 months from the day on which it ceased to have effect; and
[S 81/2014 wef 14/02/2014]
(b)shall be made on Patents Form 19 together with a statutory declaration or affidavit setting out the grounds for the application and the evidence in support thereof,
and the Registrar shall publish in the journal notice of the making of the application.
(1A)  Where the application is for the restoration of a patent to which section 117(3) applies, the evidence referred to in paragraph (1)(b) shall include —
(a)that which establishes that the patent remained in force in the United Kingdom at the time the first renewal was due if the patent had never been renewed under the Act; and
(b)a statutory declaration stating that the patent has not been revoked in the United Kingdom.
(2)  If, upon consideration of the grounds and evidence, the Registrar is not satisfied that a case for an order under section 39 has been made out, he shall notify the applicant accordingly and, unless within one month from the date of the Registrar’s notification the applicant requests to be heard in the matter in accordance with rule 88, the Registrar shall refuse the application.
[S 81/2014 wef 14/02/2014]
(3)  If the applicant requests a hearing within the time allowed, the Registrar shall determine, in accordance with rule 88, whether the application shall be allowed or refused.
[S 81/2014 wef 14/02/2014]
(4)  If the Registrar decides to allow the application, he shall notify the applicant accordingly and require him, within 2 months from the date of the Registrar’s notification to him, to file Patents Form 20 accompanied by the prescribed additional fee and the amount of any unpaid renewal fee, upon receipt of which the Registrar shall order the restoration of the patent and publish the fact in the journal.
[S 81/2014 wef 14/02/2014]
(5)  Paragraph (1)(a) as amended by the Patents (Amendment) Rules 1997 shall also apply to any patent to which section 117(3) applies which had ceased to have effect before 1st April 1997.
53A.  [Deleted by S 81/2014 wef 14/02/2014]
Surrender of patents
54.—(1)  A notice of an offer under section 40 by a proprietor of a patent to surrender his patent shall be given on Form CM3.
[S 81/2014 wef 14/02/2014]
(2)  A notice under paragraph (1) shall have no effect unless the proprietor of the patent states in the notice that each person having a right in the patent —
(a)has been given not less than 3 months’ notice of the proprietor’s intention to surrender the patent; and
(b)either is not affected by the surrender of the patent, or has no objection to the surrender of the patent.
[S 81/2014 wef 14/02/2014]
(3)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the surrender of the patent.
[S 81/2014 wef 14/02/2014]
(4)  [Deleted by S 81/2014 wef 14/02/2014]
(5)  [Deleted by S 81/2014 wef 14/02/2014]
REGISTER AND OFFICIAL DOCUMENTS
Register of patents
55.—(1)  The Registrar shall maintain an electronic form of the register to which access may be gained using the electronic online system.
(1A)  No entry shall be made in the register in respect of any application for a patent before the application has been published in accordance with section 27.
(2)  Upon such publication, the Registrar shall cause to be entered in the register —
(a)the name and address of the applicant or applicants;
(b)the name and address of the person or persons stated by the applicant or applicants to be believed to be the inventor or inventors;
(c)the title of the invention;
(d)the date of filing and the file number of the application for the patent;
(e)the date of filing and the file number of any application declared for the purposes of section 17(2) and the country in or for which the application was made;
(f)the date on which the application was published;
(g)the address for service of the applicant or applicants; and
(h)the symbol or symbols of the International Patent Classification allocated to the application.
(3)  The Registrar shall also cause to be entered in the register —
(a)[Deleted by S 132/97]
(b)the date on which the application is withdrawn, treated as having been abandoned, treated as having been withdrawn, refused or treated as having been refused;
(c)the date on which the patent is granted;
(d)the name and address of the person or persons to whom the patent is granted if different to the entries made in accordance with paragraph (2)(a);
(e)the address for service, if different to the entry made in accordance with paragraph (2)(g);
(f)notice of any transaction, instrument or event referred to in section 43(3);
(g)the date of renewal of the patent, if any;
(ga)the date of any application under section 36A to extend the term of the patent;
(gb)the period of the extension of the term of the patent under section 36A, if any;
(gc)[Deleted by S 81/2014 wef 14/02/2014]
(h)the cessation of the patent, if any;
(i)the restoration of the patent, if any;
(j)particulars of any decision to revoke the patent; and
(k)particulars of any court order in relation to the patent.
(4)  The Registrar may at any time enter in the register such other particulars as he may think fit.
Change of particulars
56.—(1)  A request by a person (including an advocate and solicitor or any other person appointed by a party to act on the party’s behalf) to change the person’s name or other particular in the register or any application or other document filed at the Registry, must be made in Form CM2.
(2)  If the Registrar is satisfied that a request in paragraph (1) may be allowed, the Registrar must cause the register, application or other document to be updated accordingly.
[S 399/2022 wef 26/05/2022]
Application for registration of transaction, etc.
57.—(1)  An application to register, or to give notice to the Registrar of, any transaction, instrument or event to which section 43 applies shall be made —
(a)on Form CM6, in the case of the grant, assignment, amendment or termination of a licence or sub-licence under a patent or an application for a patent;
(b)on Form CM7, in the case of the grant, assignment, amendment or termination of a mortgage of, or any other security interest in, a patent or an application for a patent, or a licence or sub-licence under a patent or an application for a patent;
(c)on Form CM8, in the case of any assignment of a patent or an application for a patent, or of a right in a patent or an application for a patent (being a right other than a licence or sub-licence under the patent or application for a patent, or a mortgage of, or any other security interest in, the patent or application for a patent, or a licence or sub-licence under the patent or application for a patent);
[S 399/2022 wef 26/05/2022]
(d)by way of a written request, in the case of the death of a proprietor of a patent or an application for a patent, or of any person having a right in or under a patent or an application for a patent, and the vesting, by an assent of the personal representatives of the deceased, of the patent, application or right, referred to in section 43(3)(d); or
[S 81/2014 wef 14/02/2014]
[S 399/2022 wef 26/05/2022]
(e)by way of a written request that is accompanied by a copy of the order or directions of the court or the competent authority concerned, in the case of any order or directions of a court or other competent authority mentioned in section 43(3)(e).
[S 399/2022 wef 26/05/2022]
(2)  Where an application under paragraph (1)(a), (b), (c) or (d) is filed other than by means of the electronic filing system, the application must be signed by or on behalf of each relevant party.
[S 399/2022 wef 26/05/2022]
(3)  Where an application under paragraph (1)(a), (b), (c) or (d) is filed by means of the electronic online system, the application shall be authorised by each relevant party and validated by such means as the Registrar considers fit.
[S 81/2014 wef 14/02/2014]
[S 399/2022 wef 26/05/2022]
(4)  In paragraphs (2) and (3), “relevant party” means —
(a)in the case of paragraph (1)(a) — the person who granted the licence or sub‑licence;
(b)in the case of paragraph (1)(b) — the person who granted the mortgage or security interest;
(c)in the case of paragraph (1)(c) — each assignor; or
(d)in the case of paragraph (1)(d) — each personal representative of the deceased.
[S 399/2022 wef 26/05/2022]
(5)  Where an application under paragraph (1)(a), (b), (c) or (d) is not signed in accordance with paragraph (2), or not authorised and validated in accordance with paragraph (3), the application must be accompanied by —
(a)in the case of an assignment of a patent or an application for a patent, at the option of the applicant —
(i)a copy of the contract of assignment;
(ii)an extract of the contract of assignment, being an extract that shows the change in the ownership of the patent or application;
(iii)a certificate of transfer of the patent or application in such form as the Registrar may require, being a certificate signed by all parties to the assignment;
(iv)a transfer document relating to the patent or application in such form as the Registrar may require, being a document signed by all parties to the assignment; or
(v)a copy of any documentary evidence that in the Registrar’s view is sufficient to establish the assignment;
(b)in the case of a grant of a licence or sub‑licence under a patent or an application for a patent, at the option of the applicant —
(i)an extract of the licence or sub‑licence contract, being an extract that shows the parties to the contract and the rights that are licensed under the contract;
(ii)a statement of the licence or sub‑licence containing such information as the Registrar may require, being a statement signed by both the person who granted the licence or sub‑licence, and the licensee; or
(iii)a copy of any documentary evidence that in the Registrar’s view is sufficient to establish the grant;
(c)in the case of an amendment to, or a termination of, a licence or sub‑licence under a patent or an application for a patent, at the option of the applicant —
(i)a statement of the amendment or termination (as the case may be) containing such information as the Registrar may require, being a statement signed by both the person who granted the licence or sub‑licence, and the licensee; or
(ii)a copy of any documentary evidence that in the Registrar’s view is sufficient to establish the amendment or termination, as the case may be; or
(d)in any other case, a copy of any documentary evidence that in the Registrar’s view is sufficient to establish the transaction, instrument or event.
[S 399/2022 wef 26/05/2022]
(6)  The Registrar may require the applicant to furnish any document, instrument or information in support of the application within any period that the Registrar may specify.
[S 399/2022 wef 26/05/2022]
(7)  The Registrar must refuse an application under paragraph (1) if paragraph (2), (3) or (5), or a requirement under paragraph (6), is not complied with.
[S 399/2022 wef 26/05/2022]
Request for correction of errors
58.—(1)  A request for the correction of each error in the register or in any document filed at the Registry in connection with registration shall be made on Form CM4; and the correction shall be clearly identified on a document filed together with the form or, if not, on the form itself.
[S 81/2014 wef 14/02/2014]
[S 399/2022 wef 26/05/2022]
(2)  Where a request is sought to correct the same error in both the register and any document filed at the Registry in connection with the registration, the request may be made on a single form.
(3)  Subject to rule 58A, the Registrar may call for such written explanation of the reasons for the request or evidence in support of it as he may require in order to satisfy himself that there is an error and, upon being so satisfied, shall make such correction as may be agreed between the proprietor of the patent or applicant and the Registrar.
[S 399/2022 wef 26/05/2022]
(4)  This rule is without prejudice to the power of the Registrar to correct any entry in the register which is attributable wholly or in part to an error, default or omission on the part of the Registry.
Advertisement of and opposition to request for correction
58A.—(1)  This rule applies where a person (X) makes a request under rule 58 on or after 26 May 2022 for the correction of any of the following:
(a)an error in the name or other particular of a person in the register or any document under rule 58;
(b)an error in any information pertaining to a priority application.
(2)  If the Registrar determines that the interests of any person may be affected by the proposed correction, the Registrar may advertise the proposed correction by publishing the request and the nature of the proposed correction in the journal and in any other manner that the Registrar determines.
(3)  Any person (Y) may, at any time within 2 months after the date of the advertisement, give notice to the Registrar of opposition to the request on Patents Form 58.
(4)  The notice of opposition must be supported by a statement setting out fully the facts on which Y relies.
(5)  Y must, at the time the notice and the statement are filed, serve on X a copy of the notice and a copy of the statement.
(6)  If X desires to proceed with the request, X must —
(a)within 2 months after the date on which X is served the copies of the notice and the statement, file a counter‑statement on Form HC6 setting out fully the grounds on which X contests the opposition; and
(b)at the time the counter-statement is filed, serve on Y a copy of the counter-statement.
(7)  The Registrar may give such directions as the Registrar thinks fit with regard to any aspect of the procedure for the request or the opposition to the request.
(8)  The Registrar must consider the opposition in deciding whether to grant the request.
[S 399/2022 wef 26/05/2022]
Inspection of register, etc.
59.  Any person may make use of the electronic online system —
(a)to inspect the register; or
(b)to search and retrieve —
(i)published patents specifications in respect of a patent or application for a patent;
(ii)an entry in the register; or
(iii)information as to the renewal of a patent.
[S 81/2014 wef 14/02/2014]
Inspection of register
60.  [Deleted by S 300/2000]
Advertisement of matters contained in register
61.  The Registrar may arrange for the publication and advertisement of such things done under the Act or these Rules in relation to the register as he may think fit.
Entries in respect of right to a patent
62.  On the reference to the Registrar of a question under section 20(1) or 47(1), he shall, subject to rule 55(1A), cause an entry to be made in the register of the fact and of such other information relating to the reference as he may think fit.
Certificate of contested validity of patent
62A.—(1)  This rule applies where the court or the Registrar has certified under section 72(1) that a patent is found to be wholly or partially valid in any proceedings before the court or the Registrar (as the case may be), and the fact that the validity of the patent was contested in the proceedings.
(2)  If the certificate is given by the court, the proprietor of the patent may file a written request with the Registrar to add to the entry of the patent in the register a note that the certificate has been given in the course of the proceedings, and a copy of the certificate must be filed together with the written request.
(3)  The Registrar must, on receipt of the request mentioned in paragraph (2) and the copy of the certificate, add the note to the entry of the patent in the register.
(4)  If the certificate is given by the Registrar, the Registrar must add to the entry of the patent in the register a note that such certificate has been given in the course of the proceedings.
[S 688/2021 wef 01/10/2021]
Certificates and copies supplied by Registrar
63.—(1)  Upon request made on Form CM12 and payment of the appropriate fee, but subject to paragraph (3), the Registrar shall supply —
(a)a certified copy or certified extract falling within section 45; or
[S 81/2014 wef 14/02/2014]
(b)[Deleted by S 81/2014 wef 14/02/2014]
(c)a certificate for the purposes of section 45.
[S 81/2014 wef 14/02/2014]
(2)  [Deleted by S 81/2014 wef 14/02/2014]
(3)  The restrictions on making documents available for inspection contained in rule 93(4) shall apply equally to the supply by the Registrar under this rule of copies of or extracts from such documents or requests as are referred to in rule 93(4); and nothing in this rule shall be construed as imposing upon the Registrar the duty of supplying copies of or extracts from any document or file of a description referred to in rule 93(5).
Orders or directions by court
64.—(1)  Notwithstanding any other provision in these Rules, where any order or direction has been made or given by any court or other competent authority in any matter under the Act, the person, or one of the persons, in whose favour the order is made or the direction is given —
(a)shall file an application to record the order or direction, accompanied by a copy of the order or direction; and
[S 739/2014 wef 13/11/2014]
(b)if the Registrar so requires and within such period as the Registrar may specify, shall file a specification as amended (prepared in accordance with rules 19, 21 and 23).
[S 81/2014 wef 14/02/2014]
(2)  Upon a filing under paragraph (1), the specification shall be amended or the register rectified or altered, as the case may require.
ENTITLEMENT TO PATENT
Reference to Registrar of right to patent
65.—(1)  A reference under section 47(1) shall be made on Patents Form 2 and shall be accompanied by a statement setting out fully the nature of the question, the facts upon which the person making the reference relies and the order which he is seeking.
[S 81/2014 wef 14/02/2014]
(2)  The Registrar shall send a copy of the reference and statement to every person who is not a party to the reference being —
(a)a person who is shown on the register as having any right in or under the patent;
(b)a person who has given notice to the Registrar of a relevant transaction, instrument or event; or
(c)a person who is alleged in the reference to be entitled to a right in or under the patent.
(3)  If any person who is sent a copy of the reference and statement under paragraph (2) wishes to oppose the making of the order sought, he shall, within 2 months from the date of the Registrar’s letter forwarding such copies to him, file a counter-statement on Form HC6 setting out fully the grounds of his opposition and the Registrar shall send a copy of the counter-statement to the person making the reference and to those recipients of the copy of the reference and statement who are not party to the counter-statement.
[S 81/2014 wef 14/02/2014]
(4)  The person making the reference or any such recipient may, within 2 months from the date of the Registrar’s letter forwarding the copy of the counter-statement, file evidence in support of his case and shall send a copy of the evidence —
(a)in any case, to the opponent; and
(b)in the case of evidence filed by such a recipient, to the person making the reference.
(5)  Within 2 months from the date of receipt of the copy of such evidence or, if no such evidence is filed, within 2 months from the expiration of the time within which the copy of such evidence could have been filed, the opponent may file evidence in support of his case and shall send a copy of that evidence to the person making the reference and to those recipients; and, within 2 months from the date of receipt of the copy of the opponent’s evidence, that person or any of those recipients may file further evidence confined to matters strictly in reply and shall send a copy of it to the persons mentioned in paragraph (4)(a) and (b).
(6)  No further evidence shall be filed by any party except with permission or by direction of the Registrar.
[S 216/2022 wef 01/04/2022]
(7)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the reference.
[S 81/2014 wef 14/02/2014]
Application for authorisation to carry out directions
66.—(1)  An application under section 47(3) for authority to do anything on behalf of a person to whom directions have been given under section 47(2)(d) shall be made in writing and shall be accompanied by a statement setting out fully the facts upon which the applicant relies and the nature of the authorisation sought.
[S 81/2014 wef 14/02/2014]
[S 146/2017 wef 01/04/2017]
(2)  The applicant shall, at the time the application and statement are filed, serve on the person referred to in paragraph (1) a copy of the application and a copy of the statement.
[S 81/2014 wef 14/02/2014]
(3)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the application.
[S 81/2014 wef 14/02/2014]
Time limits for making new application
67.  Where the Registrar orders that a new application may be made under section 47 (4), it shall be made within 3 months from the day on which the time for appealing from that order expires without an appeal being brought or, where an appeal is brought, from the day on which it is finally disposed of.
Request for licence to continue working new patent
68.—(1)  Where an order is made under section 47 that a patent shall be transferred to one or more persons none of whom was an old proprietor of it or that a person other than an old proprietor may make a new application for a patent, a request under section 48 (3) for the grant of a licence to continue working or, as the case may be, to work the invention shall be made within 2 months from the date of notification by the Registrar of the making of the order.
(2)  Where such an order is made, the Registrar shall notify the old proprietor or proprietors, and their licensees of whom he is aware, of the making of the order.
Reference as to entitlement to grant of licence
69.—(1)  Where a question is referred to the Registrar under section 48(5) as to whether any person is entitled to be granted a licence or whether the period or terms of a licence are reasonable, the reference shall be made in writing and shall be accompanied by a statement setting out fully the facts upon which the person making the reference relies and the terms of the licence which he is prepared to accept or grant.
[S 81/2014 wef 14/02/2014]
[S 146/2017 wef 01/04/2017]
(2)  The person making the reference shall, at the time the reference and the statement are filed, serve on every new proprietor and every person claiming to be entitled to be granted a licence (each such proprietor or person not being the person making the reference) a copy of the reference and a copy of the statement.
[S 81/2014 wef 14/02/2014]
(2A)  Any proprietor or person referred to in paragraph (2) who does not agree to grant or accept a licence for such period and upon such terms shall —
(a)within 2 months after the date on which he is served with the copies of the reference and the statement, file a counter-statement on Form HC6 setting out fully the grounds of his objection; and
(b)at the time the counter-statement is filed, serve on the person making the reference a copy of the counter-statement.
[S 81/2014 wef 14/02/2014]
(3)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the reference.
[S 81/2014 wef 14/02/2014]
LICENCES OF RIGHT
Entry in register of licence of right
70.—(1)  An application under section 53 (1) shall be made on Patents Form 28.
(2)  Every entry made in the register consequent upon such an application shall be published in the journal and in such other manner (if any) as the Registrar thinks necessary.
Settlement of terms of licence of right
71.—(1)  An application under section 53(3)(a) or (b) shall be made in writing together with —
(a)in the case of an application by the proprietor of the patent, one copy of a draft of the licence he proposes and of a statement of the facts he relies on; and
(b)in the case of an application by any other person, one copy of a draft of the licence he seeks.
[S 739/2014 wef 13/11/2014]
(2)  The applicant shall —
(a)in the case of an application by the proprietor, at the time the application and the documents referred to in paragraph (1)(a) are filed, serve on the person to whom the applicant proposes to grant the licence a copy of the application and a copy of each document referred to in paragraph (1)(a); and
[S 739/2014 wef 13/11/2014]
(b)in the case of an application by any other person, at the time the application and the document referred to in paragraph (1)(b) are filed, serve on the proprietor a copy of the application and a copy of the document referred to in paragraph (1)(b).
[S 81/2014 wef 14/02/2014]
[S 739/2014 wef 13/11/2014]
(3)  Within 2 months after the date on which the application is served on him in accordance with paragraph (2) —
(a)in the case of an application by the proprietor, the person referred to in paragraph (2)(a) may —
(i)file a counter-statement on Form HC6 setting out fully the grounds of his objection; and
(ii)at the time the counter-statement is filed, serve on the proprietor a copy of the counter-statement; or
(b)in the case of an application by any other person, the proprietor may —
(i)file a statement setting out fully the grounds of his objection; and
(ii)at the time the statement is filed, serve on the person referred to in paragraph (2)(b) a copy of the statement.
[S 81/2014 wef 14/02/2014]
(4)  Within 2 months after the date on which a statement under paragraph (3)(b) is served on him, the person therein referred to —
(a)may file a counter-statement on Form HC6; and
(b)if he does so, shall at the time the counter-statement is filed, serve on the proprietor a copy of the counter-statement.
[S 81/2014 wef 14/02/2014]
(5)  No further statement or counter-statement shall be served by either party without the permission or direction of the Registrar.
[S 216/2022 wef 01/04/2022]
(6)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the application.
[S 81/2014 wef 14/02/2014]
Cancellation of entry in register as to licence of right by proprietor
72.  An application under section 54(1) shall be made on Patents Form 28.
[S 81/2014 wef 14/02/2014]
Cancellation of entry in register as to licence of right by third party
73.—(1)  An application under section 54(3) shall be made on Patents Form 28 within 2 months from the date of publication in the journal of the relevant entry and shall be supported by a statement setting out fully the nature of the claimant’s interest and the facts upon which he relies.
[S 81/2014 wef 14/02/2014]
(2)  The claimant shall, at the time the application is filed, serve on the proprietor of the patent a copy of the application and a copy of the statement.
[S 81/2014 wef 14/02/2014]
Procedure as to cancellation of entry in register as to licence of right
74.—(1)  Every application under section 54(1) or (3) shall be advertised in the journal and the period within which notice of opposition to the cancellation of an entry may be given under section 54(7) shall be 2 months from the date of the advertisement.
(2)  Such notice of opposition shall be given on Patents Form 58 and shall be supported by a statement setting out fully the facts upon which the opponent relies.
[S 81/2014 wef 14/02/2014]
[S 399/2022 wef 26/05/2022]
(3)  The opponent shall, at the time the notice of opposition and the supporting statement are filed, serve on the applicant for cancellation of the entry a copy of the notice and a copy of the statement.
[S 81/2014 wef 14/02/2014]
(3A)  If the applicant for cancellation of the entry desires to proceed with the application, he shall —
(a)within 2 months after the date on which he is served the copies of the notice and the statement, file a counter-statement on Form HC6 setting out fully the grounds on which the opposition is contested; and
(b)at the time the counter-statement is filed, serve on the opponent a copy of the counter-statement.
[S 81/2014 wef 14/02/2014]
(4)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the opposition to the cancellation of the entry.
[S 81/2014 wef 14/02/2014]
Action by Registrar on cancellation in register as to licence of right
75.—(1)  Where the Registrar has received an application from the proprietor of a patent to cancel an entry in the register under section 54(1), the Registrar shall notify the proprietor of the patent who shall, within 2 months from the date of the Registrar’s notification to him, pay fees equal to the amount of the balance of all renewal fees which would have been payable if the entry had not been made.
(2)  Upon receipt of the fees under paragraph (1), the Registrar may proceed to cancel the entry if he is satisfied that there is no existing licence under the patent or that all licensees under the patent consent to the application.
(3)  Where the Registrar cancels an entry in the register in respect of a patent under section 54(3), the Registrar shall notify the proprietor of the patent who shall, within 2 months from the date of the Registrar’s notification to him, pay fees equal to the amount of the balance of all renewal fees which would have been payable if the entry had not been made.
(4)  Patents Form 15 shall be filed with the Registry when fees are paid to the Registry under this rule.
INFRINGEMENT OF PATENTS
Particulars prescribed under section 66(4)
75A.  A written notice to an importer under section 66(4) shall contain the following particulars:
(a)a statement that the notice is issued in accordance with section 66(4);
(b)the patent number of the patent relied on, as stated in the certificate of grant;
[S 81/2014 wef 14/02/2014]
(c)the date of filing of the application pursuant to which that patent was granted;
(d)the date on which that patent was granted;
(e)the name and address of each proprietor of that patent;
(f)the address for service of the proprietor or proprietors, as the case may be;
(g)the name and address of the person referred to in section 66(3)(b)(ii);
(h)a detailed statement explaining how the import of the patented product by the importer would result in the product being distributed in breach of the contract referred to in section 66(3)(b);
(i)the text of all clauses in the contract referred to in section 66(3)(b) which are relied on or referred to in the statement under paragraph (h).
76.  [Deleted by S 216/2022 wef 01/04/2022]
77.  [Deleted by S 216/2022 wef 01/04/2022]
78.  [Deleted by S 216/2022 wef 01/04/2022]
REVOCATION OF PATENTS
Application for information on corresponding applications
79.  [Deleted by S 366/2004]
Procedure on application for revocation
80.—(1)  An application to the Registrar for the revocation of a patent shall be made on Patents Form 35 and shall be accompanied by a statement setting out fully the grounds of revocation, including the facts upon which the applicant relies and the relief which he seeks.
(2)  The applicant shall, at the time the application and the statement are filed, serve on the proprietor of the patent a copy of the application and a copy of the statement.
[S 81/2014 wef 14/02/2014]
(3)  Within 3 months from the date of receipt of the copies of the application and statement, the proprietor of the patent, if he wishes to contest the application, shall file a counter-statement on Form HC6 setting out fully the grounds upon which the application is contested and he may, at the same time file an amendment of the specification of the patent in accordance with section 83, and shall at the same time send a copy of the amendment (if any) and the counter-statement to the applicant.
[S 81/2014 wef 14/02/2014]
(4)  In the case of an application for revocation of the patent specifying a ground mentioned in section 80(1), the application for the revocation of the patent must be granted if the proprietor of the patent fails to file the counter-statement in accordance with paragraph (3).
[S 688/2021 wef 01/10/2021]
(4A)  An order for the revocation of a patent made under paragraph (4) may be set aside by the Registrar, on the application of the proprietor of the patent, on any terms that the Registrar thinks fit.
[S 688/2021 wef 01/10/2021]
(4B)  An application under paragraph (4A) must be made within 14 days after the date of the Registrar’s notification of the order for the revocation of the patent made under paragraph (4).
[S 688/2021 wef 01/10/2021]
(5)  The applicant may, within 3 months from the date of receipt of the copy of the amendment (if any) and the counter-statement, file evidence as he may desire to adduce in support of his case and shall at the same time send a copy of that evidence to the proprietor.
(6)  If the applicant files no evidence in accordance with paragraph (5), he shall, unless the Registrar otherwise directs, be deemed to have abandoned his application.
(7)  If the applicant files evidence in accordance with paragraph (5), then, within 3 months from the date of receipt of the copy of the applicant’s evidence, the proprietor of the patent may file evidence as he desires to adduce in support of his case and shall at the same time send a copy of that evidence to the applicant.
(8)  Within 3 months from the date of receipt by the applicant of the copy of the proprietor’s evidence, the applicant may file further evidence confined to matters strictly in reply and shall at the same time send a copy of that evidence to the proprietor.
(9)  No further evidence shall be filed by either party, but in any proceedings before the Registrar, he may at any time, if he thinks fit, give permission to either party to file any evidence upon such terms as to costs or otherwise as he may think fit.
[S 216/2022 wef 01/04/2022]
(10)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the application.
[S 81/2014 wef 14/02/2014]
Material information prescribed under section 80(1)(f)(iii)
80A.  The material information for the purposes of section 80(1)(f)(iii) shall be —
(a)any prescribed information referred to in —
(i)repealed section 29(2)(c)(ii) or (d)(ii) in force immediately before 14th February 2014; or
(ii)repealed section 29(5) in force immediately before 1st July 2004;
[S 81/2014 wef 14/02/2014]
(b)any prescribed documents referred to in section 29(1)(c) or (d); and
[S 81/2014 wef 14/02/2014]
(c)where the prescribed information or prescribed documents referred to in paragraph (a) or (b) includes any document that is not in English, the English translation of such document that was filed.
[S 81/2014 wef 14/02/2014]
Procedure relating to preparation of re-examination report
81.—(1)  If the Registrar decides to cause the patent to be re-examined —
(a)the Registrar shall direct the applicant for revocation of the patent to file Patents Form 36 requesting re-examination of the patent, together with the prescribed re-examination fee and any security for the costs or expenses of the proceedings specified by the Registrar, within 2 months from the date of the direction, and if the applicant fails to do so within that period he shall be deemed to have abandoned his application; and
(b)the Examiner shall during re-examination take into consideration the statement by the applicant, any amendment of the specification of the patent, the counter-statement by the proprietor of the patent and any evidence filed under rule 80 and shall recommend whether or not the patent should be revoked on any of the grounds specified in the application for revocation, and shall notify the Registrar of the conclusions in the re-examination report stating fully the reasons for such conclusions.
(2)  If amendments have been proposed under section 83(1) by the proprietor of the patent, the Examiner shall in the re-examination report include an opinion as to whether the amendment proposed —
(a)is allowable under section 84(4); and
(b)would overcome, in whole or in part, any of the grounds of revocation specified in the application for revocation.
[S 399/2022 wef 31/12/2021]
Copies and conclusions of re-examination report
82.  The Registrar shall send a copy of the re-examination report to both the applicant for revocation of the patent and the proprietor of the patent, and he shall take into consideration the conclusions of the re-examination report in making his determination on the patent or the patent as amended.
Award of costs on surrender of patent
83.  If, in proceedings before the Registrar under section 80, the proprietor of a patent offers to surrender his patent under section 40, the Registrar shall, in deciding whether costs should be awarded to the applicant for revocation, consider whether proceedings might have been avoided if the applicant had given reasonable notice to the proprietor before the application was filed.
Notification of an opportunity to amend
84.—(1)  Where it appears to the Registrar in accordance with section 81 that the patent ought to be revoked, the proprietor of the patent shall be so notified and afforded an opportunity, within 3 months from the date of such notification, to make observations and to amend the specification of the patent.
(2)  Where the Registrar allows under section 83 the proprietor of the patent to amend the specification of the patent, he may, before the specification is amended, require the applicant to file a new specification, as amended, prepared in accordance with rules 19, 21 and 23.
AMENDMENT OF PATENTS IN RE-EXAMINATION OR REVOCATION PROCEEDINGS
[S 216/2022 wef 01/04/2022]
Procedure as to opposition to amendment
85.—(1)  Where in proceedings before the Registrar a proposed amendment under section 83 is advertised, notice of opposition to such an amendment may, within 2 months from the date of advertisement in the journal, be filed on Patents Form 58.
[S 81/2014 wef 14/02/2014]
(2)  Such notice of opposition shall be supported by a statement setting out fully the facts upon which the opponent relies and the relief which he seeks.
[S 81/2014 wef 14/02/2014]
(3)  The opponent shall, at the time the notice of opposition and the statement are filed, serve, on the proprietor of the patent and on every other party to the proceedings before the Registrar, a copy of the notice of opposition and a copy of the statement.
[S 81/2014 wef 14/02/2014]
(4)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the opposition to the amendment.
[S 81/2014 wef 14/02/2014]
NATIONAL PROCESSING OF INTERNATIONAL APPLICATIONS
Treatment of international applications
86.—(1)  Subject to this rule, in relation to an international application for a patent (Singapore) which is, under section 85, to be treated as an application for a patent under the Act, the prescribed period for the purposes of section 86(3) and (5) shall be —
(a)in a case where —
(i)the relevant date is on or after 1st May 2002, and the national phase of the application begins on or after 1st January 2004; or
(ii)Singapore has been elected in accordance with Chapter II of the Patent Co-operation Treaty,
30 months from the relevant date; or
(b)in any other case, 20 months from the relevant date.
[S 399/2022 wef 31/12/2021]
(2)  Payment of the prescribed fee shall be made within the period prescribed in paragraph (1)(a) or (b), as the case may be, and if the applicant so wishes, together with the filing of Patents Form 37.
(3)  [Deleted by S 93/2007]
(3A)  Where an international application for a patent (Singapore) has begun the national phase, a request may be made under section 17(4) within one month from the date the national phase of the application begins.
[S 399/2022 wef 31/12/2021]
(4)  In the case of an international application for a patent (Singapore), where an English translation of a document or part of a document is required by the Act or these Rules to be filed before or at the time limit for entering the national phase, verification of the translation, as required under rule 112 and permitted by rule 51 bis 1(d) of the Regulations under the Patent Co-operation Treaty, may be given to the Registrar at any time before the end of 2 months after that time limit.
[S 573/2017 wef 30/10/2017]
(5)  For the purposes of section 86(3) and (5), where an English translation of the application or any amendment of the application is required, the translation —
(a)shall exclude the request and abstract unless —
(i)the applicant expressly requests the Registrar to proceed earlier than the expiry of the period prescribed in paragraph (1); and
(ii)the application has not been published in accordance with the Patent Co-operation Treaty;
(b)shall include any textual matter in the drawings in a form which complies with rule 49.5(d) of the Regulations under the Patent Co-operation Treaty;
(c)where a title has been established by the International Searching Authority under rule 37.2 of the Regulations under the Patent Co-operation Treaty which differs from the title included in the application as originally filed, shall include the former title in place of the latter; and
(d)may exclude any textual matter contained in a sequence listing forming part of the description if such textual matter complies with rule 12.1(d) of the Regulations under the Patent Co-operation Treaty and the description complies with rule 5.2(b) of those Regulations.
[S 399/2022 wef 31/12/2021]
(6)  Where an applicant is required to file a translation into English both of an application as originally filed and of the amendment to it, in accordance with paragraph (5), in order to satisfy the relevant conditions of section 86(3) and (5) and at the expiry of the applicable period referred to in paragraph (1), the prescribed fee has been paid and one but not both of the necessary translations has been filed —
(a)the Registrar shall give notice to the applicant at the address furnished by the applicant in accordance with rule 31 requiring the applicant to file the required translation within 2 months from the date on which the notice is sent; and
(b)the applicable period shall be treated in respect of that translation as not expiring until the end of the period specified in the notice given under sub-paragraph (a).
[S 399/2022 wef 31/12/2021]
(7)  [Deleted by S 399/2022 wef 26/05/2022]
(8)  In the case of an international application for a patent (Singapore) in respect of which the conditions specified in section 86(3)(a) are satisfied, the period prescribed for the purposes of section 24(2) shall be 2 months from the time limit for entering the national phase.
(8A)  In the case of an international application for a patent (Singapore) in respect of which the conditions specified in section 86(3)(b) are satisfied, the period prescribed for the purposes of section 24(2) shall be the later of the following periods to expire:
(a)the period prescribed by rule 18(1);
(b)2 months from the date on which those conditions are satisfied.
(9)  Where, in relation to an international application for a patent (Singapore), the applicant desires that section 85(1) shall not cease to apply to the application by virtue of the operation of section 85(3), application shall be made to the Registrar in writing, accompanied by a statement of the facts upon which the applicant relies.
[S 739/2014 wef 13/11/2014]
(10)  An international application for a patent (Singapore) shall not be treated as withdrawn under the Act if it, or the designation of Singapore in it, is deemed to be withdrawn under the Patent Co-operation Treaty where, in the same or comparable circumstances in relation to an application under the Act (other than an international application for a patent) —
(a)the Registrar could have directed that an irregularity be rectified under rule 100 or that an extension be granted under rule 108; and
(b)the Registrar determines that the application would not have been treated as withdrawn under the Act.
(11)  Where under section 85(3) an application is not to be treated as withdrawn and the applicant wishes to proceed —
(a)the Registrar may amend any document received by the Registry from the receiving Office or the International Bureau and alter any period or time which is specified in the Act or these Rules upon such terms (including payment of any appropriate prescribed fee) as he may direct; and
(b)the fee prescribed under section 86(3) shall not be payable.
(12)  Where the applicant satisfies the Registrar that —
(a)because of an error made by the receiving Office, an international application for a patent (Singapore) has been accorded a date of filing which is incorrect; or
(b)the priority claim made under Article 8(1) of the Patent Co-operation Treaty has been considered not to have been made by the receiving Office or the International Bureau because of an error made by the Office or the Bureau,
the Registrar may amend any document received by the Registry from the receiving Office or the International Bureau or alter any period or time which is specified in the Act or these Rules as if the error were an error on the part of the Registry.
(13)  Where —
(a)an international application for a patent (Singapore) purports to designate Singapore; and
(b)the applicant alleges that he has been refused a filing date under the said Treaty on account of an error or omission in any institution having functions under the said Treaty,
the applicant may apply to the Registrar in writing for it to be treated as an application under the Act, accompanied by a statement of the facts upon which he relies; and the Registrar may amend any document filed by the applicant and alter any period or time which is specified in the Act or these Rules upon such terms as he may direct.
[S 739/2014 wef 13/11/2014]
(14)  In this rule, “receiving Office” has the same meaning as in the Patent Co-operation Treaty.
(15)  In this rule, in relation to an international application for a patent (Singapore) —
“relevant date” means the declared priority date or, where there is no declared priority date, the date of filing of that application;
“time limit for entering the national phase” means the end of the relevant period prescribed by paragraph (1) or, in a case where that period has been extended under paragraph (6), rule 100 or 108, the end of that period as so extended.
HEARINGS, AGENTS AND CORRECTION OF ERRORS
Registrar’s discretionary powers
87.—(1)  Without prejudice to any of the provisions of the Act or these Rules requiring the Registrar to hear any party to proceedings under the Act or these Rules, or to give such party an opportunity to be heard, but subject to paragraph (2), the Registrar shall, before exercising any discretionary power vested in him by or under the Act or these Rules adversely to any party to a proceeding before him, give that party an opportunity to be heard.
(2)  Paragraph (1) and rule 88 do not apply to either of the following:
(a)the issue of a notice of intention to refuse an application for a patent under section 29A(3);
(b)the sending of a notice of refusal of an application for a patent under section 29B(5)(b)(ii).
[S 81/2014 wef 14/02/2014]
Request for hearing
88.—(1)  A request for the exercise of the discretionary powers of the Registrar under rule 87 in proceedings at which only the party making the request is present, whether interlocutory or otherwise, shall be made on Form HC4 and shall be filed within one month from the date of notification by the Registrar of any objection to an application or the date of any other indication that he proposes to exercise a discretionary power, and the Registrar may refuse to hear any party who has not filed the request within the time allowed.
[S 81/2014 wef 14/02/2014]
[S 216/2022 wef 01/04/2022]
(2)  Upon receipt of a request under paragraph (1), the Registrar shall send to the person making the request a notice of a time when he may be heard which shall be not less than 14 days from the date of the notice.
(3)  A request for the exercise of the discretionary powers of the Registrar under rule 87 in interlocutory proceedings with notice shall be made to the Registrar in writing.
[S 81/2014 wef 14/02/2014]
[S 216/2022 wef 01/04/2022]
(4)  A person shall, at the time he makes a request under paragraph (3), serve on every other party to the proceedings a copy of the request.
[S 81/2014 wef 14/02/2014]
(5)  Except as provided in paragraph (1) or (3), no request shall be made for the exercise of the discretionary powers of the Registrar under rule 87.
[S 81/2014 wef 14/02/2014]
(6)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for a hearing under this rule.
[S 81/2014 wef 14/02/2014]
(7)  After hearing each party, the Registrar shall notify every party of his decision in relation to the exercise of the discretionary power.
[S 81/2014 wef 14/02/2014]
(8)  Where any party wishes to have the Registrar’s grounds of decision in respect of a request under paragraph (1) —
(a)the party shall, within 6 weeks after the date of the Registrar’s decision, by filing Form HC5, request the Registrar to state the Registrar’s grounds of decision; and
(b)the Registrar shall as soon as practicable send the grounds of decision to the party.
[S 81/2014 wef 14/02/2014]
(9)  Where any party wishes to have the Registrar’s grounds of decision in respect of a request under paragraph (3) —
(a)the party shall —
(i)request the Registrar in writing to state the Registrar’s grounds of decision; and
(ii)at the time the party makes the request under sub-paragraph (i), serve on every other party to the proceedings a copy of that request; and
(b)the Registrar shall as soon as practicable send the grounds of decision to every party to the proceedings.
[S 81/2014 wef 14/02/2014]
(10)  The date on which the Registrar’s grounds of decision are sent to the party making the request under paragraph (8)(a) or (9)(a)(i), as the case may be, shall be deemed to be the date of the Registrar’s decision for the purpose of an appeal.
[S 81/2014 wef 14/02/2014]
Hearing and notice of attendance at hearing
88A.—(1)  This rule shall apply only to proceedings with notice under rule 10, 11, 12, 14, 15, 16, 17, 52, 65, 66, 69, 71, 74, 80, 85 or 91, or paragraph 3 of the Fourth Schedule, where the parties have filed evidence pursuant to any of those rules or to a direction by the Registrar.
[S 81/2014 wef 14/02/2014]
[S 216/2022 wef 01/04/2022]
(2)  Upon completion of the filing of evidence by the parties, the Registrar shall give notice to the parties of the date or dates on which he will hear arguments on the case.
(3)  The parties shall file with the Registrar their written submissions and bundles of authorities at least one month before the first date of hearing notified under paragraph (2), and shall at the same time as filing, exchange with one another their respective written submissions and bundles of authorities.
(4)  Any party who intends to appear at the hearing shall file Form HC1 with the Registrar before the date he intends to appear at that hearing.
[S 81/2014 wef 14/02/2014]
(5)  Any party who does not file Form HC1 with the Registrar before the date he intends to appear at the hearing may be treated as not desiring to be heard, and the Registrar may proceed with the hearing in the absence of that party or may, without proceeding with the hearing, give his decision or dismiss the proceedings, or make such other order as he thinks fit.
[S 81/2014 wef 14/02/2014]
(6)  If, after filing Form HC1 with the Registrar, a party does not appear at the hearing, the Registrar may proceed with the hearing in the absence of that party, or may, without proceeding with the hearing, give his decision or dismiss the proceedings, or make such other order as he thinks fit.
[S 81/2014 wef 14/02/2014]
(7)  If neither party appears at the hearing, the Registrar may dismiss the proceedings.
[S 81/2014 wef 14/02/2014]
(8)  Upon making any decision or order under paragraph (5) or (6) or dismissing any proceedings under paragraph (5), (6) or (7), the Registrar shall notify every party of the decision, order or dismissal, as the case may be, in writing.
[S 81/2014 wef 14/02/2014]
(9)  Any decision or order made by the Registrar under paragraph (5) or (6) in the absence of any party may, on the application of that party, be set aside by the Registrar on such terms as the Registrar thinks fit.
[S 81/2014 wef 14/02/2014]
(10)  Any proceedings dismissed under paragraph (5), (6) or (7) may, on the application of any party, be restored on the direction of the Registrar.
[S 81/2014 wef 14/02/2014]
(11)  An application under paragraph (9) or (10) shall be made within 14 days after the date of the Registrar’s notification under paragraph (8).
[S 81/2014 wef 14/02/2014]
Case management conference
88B.—(1)  Notwithstanding anything in these Rules, at any stage of any application to or proceedings before the Registrar, the Registrar may direct the applicant or parties to attend a case management conference in order that the Registrar may make such order or give such direction as he thinks fit for the just, expeditious and economical disposal of the matter.
(2)  At a case management conference, the Registrar may —
(a)consider any matter, including the possibility of settlement of all or any of the issues in the application or proceedings; and
(b)direct the parties to furnish him with such information as he may require.
(3)  If any party fails to comply with any direction or order given under paragraph (1) or (2), the Registrar may —
(a)where that direction or order was given in relation to any application or proceedings initiated by that party, dismiss the application or proceedings, as the case may be; or
(b)make such other order as the Registrar thinks fit.
(4)  Any direction given or order made by the Registrar under paragraph (1), (2) or (3) may be set aside or varied by him on such terms as he thinks fit.
(5)  If, during or pursuant to a case management conference, the parties are agreeable to a settlement of all or some of the matters in dispute in any application or proceedings, the Registrar may —
(a)give his decision in relation to the application or proceedings; or
(b)make such order as he thinks just to give effect to the settlement.
(6)  If any party does not attend a case management conference, the Registrar may —
(a)where the case management conference pertains to any application or proceedings initiated by that party, dismiss the application or proceedings, as the case may be;
(b)make such other order as the Registrar thinks fit; or
(c)adjourn the case management conference.
[S 688/2021 wef 01/10/2021]
(7)  An order made by the Registrar in the absence of a party under paragraph (6) may be set aside by the Registrar, on the application of that party, on such terms as the Registrar thinks fit.
(8)  Any application or proceedings dismissed under paragraph (3) or (6) may, on the application of any party, be restored on the direction of the Registrar.
[S 81/2014 wef 14/02/2014]
Hearings in public
89.—(1)  Subject to paragraph (2), where a hearing before the Registrar of any dispute between 2 or more parties relating to any matter in connection with a patent or an application for a patent takes place after the publication of the application under section 27, the hearing of the dispute shall be in public.
(2)  After consulting the parties to the dispute mentioned in paragraph (1), the Registrar may direct that the hearing not be held in public.
[S 688/2021 wef 01/10/2021]
Where advocate and solicitor, patent agent, etc., appointed to act for party
90.—(1)  Unless the Registrar directs otherwise in any particular case —
(a)a party may —
(i)for the purposes of appearing before the Registrar at any proceedings before the Registrar under the Act or these Rules or any treaty to which Singapore is a party — appoint an advocate and solicitor or a registered patent agent to act on the party’s behalf; or
(ii)for any other matter under the Act or these Rules — appoint an advocate and solicitor, a registered patent agent or any other person to act on the party’s behalf; and
[S 399/2022 wef 26/05/2022]
(b)every notice, application or other document filed under the Act by the party may be signed by the advocate and solicitor, registered patent agent or the person so appointed.
[S 399/2022 wef 26/05/2022]
(2)  Where any party to any proceedings before the Registrar or any other matter under the Act or these Rules appoints an advocate and solicitor, a registered patent agent or any other person —
(a)to act on his behalf; or
(b)to act on his behalf in substitution for another,
the advocate and solicitor, registered patent agent or person shall file a declaration of authorisation, and furnish an address for service in Singapore, on Form CM1 on the first occasion when he acts on behalf of the party.
[S 81/2014 wef 14/02/2014]
[S 399/2022 wef 26/05/2022]
(3)  Notwithstanding paragraph (2), where these Rules require any form, or any application, request, reference or notice, referred to in paragraph (4) to be filed, the advocate and solicitor, registered patent agent or person referred to in paragraph (2) may file the declaration of authorisation, and furnish the address for service, on that form, application, request, reference or notice, as the case may be.
[S 739/2014 wef 13/11/2014]
[S 399/2022 wef 26/05/2022]
(4)  The effect of filing a declaration of authorisation, and furnishing an address for service, shall be as follows:
(a)where the declaration of authorisation is filed, and the address for service is furnished, on —
(i)Patents Form 1 or 37; or
(ii)any application made under rule 86(9) or (13),
the declaration of authorisation and address for service shall be effective for the purposes of all proceedings in respect of the patent, or the application for a patent, in relation to which that form is filed or the application is made, as the case may be;
[S 739/2014 wef 13/11/2014]
(b)where the declaration of authorisation is filed, and the address for service is furnished, on —
(i)Patents Form 2, 7, 35 or 58;
(ii)Form HC4 or HC6;
(iii)Patents Form 28 (in so far as the form relates to an application referred to in rule 73(1));
(iv)an application referred to in rule 14(1) or 71(1);
[S 216/2022 wef 01/04/2022]
(v)a request referred to in rule 15(1) or made under paragraph 3(4) of the Fourth Schedule;
(vi)a reference referred to in rule 16(1); or
[S 216/2022 wef 01/04/2022]
(vii)a notice filed under paragraph 3(6) of the Fourth Schedule,
the declaration of authorisation and address for service shall be effective for the purposes of the proceedings in relation to which that form or notice is filed, or that application, request or reference is made, as the case may be;
[S 739/2014 wef 13/11/2014]
(c)where the declaration of authorisation is filed, and the address for service is furnished, on Patents Form 15, 19, 20 or 53, the declaration of authorisation and address for service shall be effective only for the purposes of all renewal applications or proceedings in respect of the patent in relation to which that form is filed;
(d)where the declaration of authorisation is filed, and the address for service is furnished, on —
(i)[Deleted by S 399/2022 wef 26/05/2022]
(ii)Form CM2, CM10 or CM12;
(iii)an application made under rule 64(1); or
(iv)a request mentioned in rule 92(1) or (2) or made under paragraph 2(1) of the Fourth Schedule,
the declaration of authorisation and address for service are effective only for the matter for which that form is filed or that application or request is made, as the case may be;
[S 146/2017 wef 01/04/2017]
(e)where the declaration of authorisation is filed, and the address for service is furnished, on Form CM6, the declaration of authorisation and address for service shall be effective for the purposes of all proceedings in respect of the licence in relation to which that form is filed;
(f)where the declaration of authorisation is filed, and the address for service is furnished, on Form CM7, the declaration of authorisation and address for service shall be effective for the purposes of all proceedings in respect of the security interest in relation to which that form is filed;
(g)where the declaration of authorisation is filed, and the address for service is furnished, on Form CM8, the declaration of authorisation is effective for both the purpose of registering the transfer of the patent, or the application for a patent, in relation to which that form is filed (each called in this sub‑paragraph purpose A), and for the purpose of every other proceeding in respect of that patent or application (called in this sub‑paragraph purpose B), and —
(i)if 2 addresses for service are provided on that form, then one of them is for purpose A and the other is for purpose B, as specified by the person who filed the form; or
(ii)if one address for service is provided on that form, then it is for both purpose A and purpose B.
[S 399/2022 wef 26/05/2022]
(5)  The Registrar, in dealing with any matter under the Act or these Rules in respect of which a party has appointed an advocate and solicitor, a registered patent agent or any other person to act on the party’s behalf, may require the personal signature or presence of either or both of the following:
(a)the advocate and solicitor, registered patent agent or person;
[S 399/2022 wef 26/05/2022]
(b)the party.
[S 81/2014 wef 14/02/2014]
[S 399/2022 wef 26/05/2022]
(6)  The Registrar may, by notice in writing sent to an advocate and solicitor, a registered patent agent, or any other person, appointed by a party to act on his behalf, require the advocate and solicitor, registered patent agent or person to produce evidence of his authority to act for the party.
[S 81/2014 wef 14/02/2014]
[S 399/2022 wef 26/05/2022]
(7)  No act under the Act or these Rules may be done by or to an advocate and solicitor, a registered patent agent, or any other person, appointed by a party to act on the party’s behalf, until after the advocate and solicitor, registered patent agent or person has filed a declaration of authorisation, and furnished an address for service, in accordance with paragraph (2) or (3) or, in the case of a change in his name or address for service or both, until he has filed Form CM2 in respect of that change.
[S 81/2014 wef 14/02/2014]
[S 399/2022 wef 26/05/2022]
(8)  Where an advocate and solicitor, a registered patent agent or any other person (called in this paragraph the agent), having been appointed by a party to act on the party’s behalf, intends to cease to act on the party’s behalf, the agent —
(a)must file with the Registrar on Form CM1 —
(i)a notice of the intention;
(ii)the party’s latest address, including any email address, on the agent’s records; and
(iii)a statement that the agent has given reasonable notice to the party of the intention, and informed the party of the consequences set out in rule 31(5A) as applied by paragraph (11); and
(b)must serve Form CM1 on the party at the same time the form is filed with the Registrar.
[S 399/2022 wef 26/05/2022]
(9)  On receipt of the form mentioned in paragraph (8)(a), the Registrar must send to the party a notice requesting the party to provide an address for service within 3 months after the date of the notice.
[S 399/2022 wef 26/05/2022]
(10)  The notice in paragraph (9) must be sent to the address of the party filed under paragraph (8)(a)(ii) or any alternative address of the party.
[S 399/2022 wef 26/05/2022]
(11)  Rule 31(5A)(a) or (b) (whichever is applicable) applies, with the necessary modifications, if —
(a)the Registrar does not have any alternative address of the party to which to send the notice under paragraph (9); or
(b)the Registrar sent the notice under paragraph (9) and no address for service was provided within 3 months after the date of the notice.
[S 399/2022 wef 26/05/2022]
(12)  In paragraphs (10) and (11), “alternative address” has the meaning given by rule 31(7).
[S 399/2022 wef 26/05/2022]
Correction of errors in patents and applications
91.—(1)  Subject to paragraph (12) and unless the Registrar directs otherwise, a request for the correction of an error of translation or transcription or of a clerical error or mistake in any specification of a patent, in an application for a patent or in any document filed in connection with a patent or such an application shall be made on Form CM4.
[S 81/2014 wef 14/02/2014]
(1A)  Where the request relates to an error in any document other than a form, the request shall be accompanied by a copy of the document with the proposed correction indicated in the following manner:
(a)by striking through any text, figure or other matter to be replaced or deleted; and
(b)by underlining any replacement text, figure or other matter.
[S 81/2014 wef 14/02/2014]
(1B)  [Deleted by S 93/2007]
(1C)  Paragraph (1A) shall not apply if the request is to be filed using the electronic online system; and the request shall instead comply with practice directions issued by the Registrar in place of the requirements in that paragraph, including the filing of such other document prepared in such manner as may be specified therein.
(2)  Where such a request relates to a specification, no correction shall be made therein unless the correction is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction.
(3)  The Registrar may advertise the proposed correction by publishing the request and the nature of the proposed correction in the journal and in such other manner, if any, as the Registrar may determine.
[S 739/2014 wef 13/11/2014]
(4)  [Deleted by S 739/2014 wef 13/11/2014]
(5)  Any person may, at any time within 2 months from the date of the advertisement, give notice to the Registrar of opposition to the request on Patents Form 58.
[S 81/2014 wef 14/02/2014]
(6)  Such notice of opposition shall be supported by a statement setting out fully the facts on which the opponent relies and the relief which he seeks.
[S 399/2022 wef 26/05/2022]
(7)  The opponent shall, at the time the notice and the statement are filed, serve on the person making the request a copy of the notice and a copy of the statement.
[S 81/2014 wef 14/02/2014]
(7A)  If the person making the request desires to proceed with the request, he shall —
(a)within 2 months from the date on which he is served the copies of the notice and the statement, file a counter-statement on Form HC6 setting out fully the grounds on which he contests the opposition; and
(b)at the time the counter-statement is filed, serve on the opponent a copy of the counter-statement.
[S 81/2014 wef 14/02/2014]
(8)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the request or the opposition to the request.
[S 81/2014 wef 14/02/2014]
(9)  Before the Registrar grants the request for correction to a specification, the person making the request shall, if the Registrar so requires, and within the time specified by the Registrar, file a new specification as corrected, which shall be prepared in accordance with rules 19, 21 and 23.
[S 81/2014 wef 14/02/2014]
[S 399/2022 wef 26/05/2022]
(10)  [Deleted by S 93/2007]
(11)  No amendment or correction (other than an amendment or correction introduced in order to comply with the formal requirements) may be introduced in the new specification to be filed under paragraph (9).
(12)  Paragraph (1) shall not apply to —
(a)any request for correction referred to in rule 9(3);
[S 399/2022 wef 26/05/2022]
(b)any request for the correction of an error of translation or transcription, or of a clerical error or mistake, in any document filed in connection with any proceedings with notice under rule 6, 7, 10, 11, 12, 14, 15, 16, 52, 58A(3), (4) or (6), 65, 66, 69, 71, 74, 80, 85 or 91, or paragraph 3 of the Fourth Schedule;
[S 216/2022 wef 01/04/2022]
[S 399/2022 wef 26/05/2022]
(c)any request for the correction of an error of translation or transcription, or of a clerical error or mistake, in —
(i)any document filed in connection with any proceedings with notice under rule 17 (other than paragraph (3) thereof);
[S 216/2022 wef 01/04/2022]
(ii)any counter-statement on Form HC6 filed in connection with any proceedings with notice under rule 17(3);
[S 216/2022 wef 01/04/2022]
(iii)any document filed under rule 53 (other than paragraph (2) thereof) or rule 88 (other than paragraph (1) thereof) in connection with any proceedings at which only the party making a request for the exercise of the discretionary powers of the Registrar is present; or
[S 216/2022 wef 01/04/2022]
(iv)any request on Form HC4 filed under rule 53(2) or 88(1) in connection with any proceedings at which only the party making the request is present; and
[S 216/2022 wef 01/04/2022]
(d)any request for the correction of an error of translation or transcription, or of a clerical error or mistake, in any document filed under rule 88A or 108A.
[S 81/2014 wef 14/02/2014]
(13)  A request referred to in paragraph (12)(b), (c) or (d) shall be made to the Registrar in writing.
[S 81/2014 wef 14/02/2014]
(14)  The Registrar may, on the Registrar’s own initiative, make any consequential amendment to the register arising from any correction pursuant to a request under paragraph (1) that is made on or after 26 May 2022, and the Registrar must notify the applicant making the request of the amendment.
[S 399/2022 wef 26/05/2022]
INFORMATION AND INSPECTION
Information about patents and patent applications
92.—(1)  A request under section 108 for information relating to any patent or application for a patent may be made as to —
(a)the date on which any report, document or English translation referred to in section 29, 29B or 30(c) or rule 42 or 42A was received by the Registrar;
[S 81/2014 wef 14/02/2014]
(b)when the specification of a patent or application for a patent was published;
(c)when an application for a patent was withdrawn, was treated as having been withdrawn, was treated as having been abandoned, was refused or was treated as having been refused;
(d)whether a renewal fee was not paid within the period prescribed for the purposes of section 36(2);
(e)whether a renewal fee was paid within the period prescribed under section 36(3);
[S 399/2022 wef 26/05/2022]
(f)when a patent has ceased to have effect and/or an application for restoration of a patent was filed;
(g)when an entry was made in the register or an application was made for the making of such entry;
(h)when any application or request was made or action taken involving an entry in the register or advertisement in the journal, if the nature of the application, request or action is specified in the request;
(i)when any document may be inspected in accordance with rule 93 or 94; and
(j)such other particulars referred to in any patent or application for a patent as the Registrar may in any particular case allow.
(2)  As regards information relating to any patent in force by virtue of section 117(3), a request may also be made as to when —
(a)a certificate of registration was issued;
(b)the patent was first renewed under this Act; and
(c)an entry was made in the Register of Patents under the repealed Registration of United Kingdom Patents Act (Cap. 271, 1985 Ed.).
(3)  Every request mentioned in paragraph (1) or (2) must be made in writing.
[S 146/2017 wef 01/04/2017]
Inspection of documents
93.—(1)  Subject to paragraph (5), and to the restrictions prescribed in paragraph (4), after the date of publication of an application for a patent in accordance with section 27, the Registrar shall, upon request made on Form CM10 and upon payment of the prescribed fee, permit all documents filed or kept at the Registry in relation to the application or any patent granted in pursuance of it, to be inspected using the electronic online system.
[S 81/2014 wef 14/02/2014]
[S 399/2022 wef 26/05/2022]
(2)  Subject to the same restrictions and to rule 96 where the circumstances specified in section 108(4) or (5) exist, the Registrar shall, upon request made on Form CM10, and upon payment of the prescribed fee, permit inspection of such documents before the publication in accordance with section 27.
[S 81/2014 wef 14/02/2014]
(3)  [Deleted by S 81/2014 wef 14/02/2014]
(4)  The restrictions referred to in paragraph (1) are —
(a)that no document shall be open to inspection until 14 days after it has been filed at the Registry;
(b)that documents prepared in the Registry solely for use therein shall not be open to inspection;
(c)that any document sent to the Registry, at its request or otherwise, for inspection and subsequent return to the sender, shall not be open to inspection;
(d)that no request made under rule 59 or 92 or this rule, or rule 63(2) in force immediately before 14th February 2014, shall be open to inspection; and
[S 81/2014 wef 14/02/2014]
(e)that documents in respect of which the Registrar issues directions under rule 94 that they are to be treated as confidential shall not be open to inspection, except as permitted in accordance with that rule.
(5)  Nothing in this rule shall be construed as imposing on the Registrar any duty of making available for public inspection any document or any part of a document —
(a)which in his opinion disparages any person in a way likely to damage him; or
(b)the publication or exploitation of which would in his opinion be generally expected to encourage offensive, immoral or anti-social behaviour.
(6)  No appeal shall lie from a decision of the Registrar under paragraph (5) not to make a document or part of a document available for public inspection.
Confidential documents
94.—(1)  Where a document other than a form is filed at, or sent to, the Registry, and the person filing or sending it or any party to the proceedings to which the document relates so requests, giving his reasons, within 14 days from the filing or sending of the document, the Registrar may direct that it be treated as confidential, and the document shall not be open to public inspection while the matter is being determined by the Registrar.
[S 81/2014 wef 14/02/2014]
(2)  Where such a direction has been given and not withdrawn, nothing in this rule shall be taken to authorise or require any person to be allowed to inspect the document to which the direction relates except with permission of the Registrar.
[S 216/2022 wef 01/04/2022]
(3)  The Registrar shall not withdraw any direction given under this rule nor shall he give permission for any person to inspect any document to which a direction which has not been withdrawn relates without prior consultation with the person at whose request the direction was given, unless the Registrar is satisfied that such prior consultation is not reasonably practicable.
[S 216/2022 wef 01/04/2022]
(4)  Where such a direction is given or withdrawn, a record of the fact shall be filed with the document to which it relates.
(5)  Where the period referred to in paragraph (1) is extended under rule 108, the relevant document shall not be, or, if the period is extended upon expiry, the relevant document shall cease to be open to public inspection until the expiry of the extended period, and, if a request for a direction is made, the document shall not be open to public inspection while the matter is being determined by the Registrar.
Publication of bibliographic information
95.  The following bibliographic information is prescribed for the purposes of section 108(3)(a):
(a)the number of the application;
(b)the date of filing of the application and, where a declaration has been made under section 17(2), the filing date, country and file number, when available, of each application referred to in that declaration;
(c)the name of the applicant or applicants including any applicant or applicants resulting from an order under section 20;
(d)an alteration of the name of the applicant or applicants under rule 56;
(e)the title of the invention; and
(f)if the application has been withdrawn, has been treated as having been withdrawn, has been treated as having been abandoned, has been refused or has been treated as having been refused, that fact.
Request for information on unpublished patent applications
96.—(1)  Where the circumstances specified in section 108 (4) exist, a request under section 108 (1) shall be accompanied by a statutory declaration verifying their existence and such documentary evidence (if any) supporting the request as the Registrar may require.
(2)  The Registrar shall send a copy of the request, the declaration and the evidence (if any) to the applicant for the patent and shall not comply with the request until the expiry of 14 days thereafter.
 

Archived for legal research. Authoritative version at sso.agc.gov.sg.