Patents (Amendment) Rules 2014, Singapore, WIPO Lex

Main text(s)

English Patents (Amendment) Rules 2014

Patents (Amendment) Rules 2014

1 S 81/2014

First published in the Government Gazette, Electronic Edition, on 11th February 2014 at 6:00 pm.

No. S 81

PATENTS ACT (CHAPTER 221)

PATENTS (AMENDMENT) RULES 2014

In exercise of the powers conferred by sections 42, 100 and 115 of the Patents Act, the Minister for Law, after consulting with the Intellectual Property Office of Singapore, hereby makes the following Rules:

Citation and commencement

1. These Rules may be cited as the Patents (Amendment) Rules 2014 and shall come into operation on 14th February 2014.

Amendment of rule 2

2. Rule 2(1) of the Patents Rules (R 1) is amended —

(a) by deleting the definitions of “account holder”, “appointed certification authority”, “authentication code”, “certification authority”, “electronic signature” and “identification name”; and

(b) by deleting the definition of “online system operator” and substituting the following definition:

“ “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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New rule 2A

3. The Patents Rules are amended by inserting, immediately after rule 2, the following rule:

“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) each claim of the invention disclosed in the application satisfies each condition or requirement for patentability under section 13;

(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 (1A) or any matter referred to in section 84(2);

(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);

(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

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(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);

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(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 (1A) or any matter referred to in section 84(2).”.

Amendment of rule 3

4. Rule 3 of the Patents Rules is amended —

(a) by deleting paragraph (2) and substituting the following paragraph:

“(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.”; and

(b) by deleting the words “rule 96A(2)” in paragraph (3) and substituting the words “rule 96A(2)(a)”.

Amendment of rule 5

5. Rule 5 of the Patents Rules is amended by deleting the words “Part I of” in paragraph (a).

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Amendment of rule 6

6. Rule 6 of the Patents Rules is amended —

(a) by deleting the words “from the date of the order for costs” in paragraph (1) and substituting the words “after the relevant date referred to in paragraph (1A)”;

(b) by inserting, immediately after paragraph (1), the following paragraph:

“(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.”;

“(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 taxation of costs);

(b) work done for or in the taxation of costs; and

(d) by deleting the words “paragraph (2)” in paragraph (3) and substituting the words “paragraph (2)(a), (b) and (c)”;

(e) by inserting, immediately after the word “matter” in paragraph (4), the words “, all relevant events in the taxation of costs, and all relevant events relating to the making of disbursements”; and

(f) by deleting the words “14 days from” in paragraph (6) and substituting the words “one month after”.

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Amendment of rule 7

7. Rule 7 of the Patents Rules is amended —

(a) by deleting paragraph (3) and substituting the following paragraph:

“(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 taxation of costs); and

(b) work done for or in the taxation of costs.”; and

(b) by inserting, immediately after the words “has been taxed,” in paragraph (4), the words “the party who applied for the costs to be taxed shall file Form HC2, and”.

Amendment of rule 9B

8. Rule 9B(4) of the Patents Rules is amended by deleting the words “Patents Form 26” in sub‑paragraph (ii)(B) and substituting the words “Form CM12”.

Amendment of rule 9C

9. Rule 9C(1) of the Patents Rules is amended by deleting the words “Patents Form 26” in sub‑paragraph (ii)(B) and substituting the words “Form CM12”.

Amendment of rule 10

10. Rule 10 of the Patents Rules is amended —

(a) by deleting the words “a copy thereof and” in paragraph (1);

(b) by deleting the words “(“the opponent”)” in paragraph (3);

(d) by deleting the words “the subsequent procedure” in paragraph (7) and substituting the words “any aspect of the procedure for the reference”.

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Amendment of rule 11

11. Rule 11 of the Patents Rules is amended —

(a) by deleting the words “a copy thereof and” in paragraph (1);

(b) by deleting the words “Patents Form 3” in paragraph (3) and substituting the words “Form HC6”; and

(c) by deleting the words “the subsequent procedure” in paragraph (9) and substituting the words “any aspect of the procedure for the reference”.

Amendment of rule 14

12. Rule 14 of the Patents Rules is amended —

(a) by deleting the words “a copy thereof and” in paragraph (1);

(b) by deleting paragraph (2) and substituting the following paragraph:

“(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.”; and

(c) by deleting the words “the subsequent procedure” in paragraph (3) and substituting the words “any aspect of the procedure for the application”.

Amendment of rule 15

13. Rule 15 of the Patents Rules is amended —

(a) by deleting the words “a copy thereof and” in paragraph (1);

(b) by deleting paragraph (2) and substituting the following paragraphs:

“(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.

(2A) Any other joint applicant who wishes to oppose the request shall —

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(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.”; and

(c) by deleting the words “the subsequent procedure” in paragraph (3) and substituting the words “any aspect of the procedure for the request”.

Amendment of rule 16

14. Rule 16 of the Patents Rules is amended —

(a) by deleting the words “a copy thereof and” in paragraph (1);

(b) by deleting paragraph (2) and substituting the following paragraphs:

“(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.

(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.”;

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(c) by deleting the words “the subsequent procedure” in paragraph (3) and substituting the words “any aspect of the procedure for the reference”;

(d) by inserting, immediately after paragraph (3), the following paragraph:

“(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.”; and

(e) by deleting the word “Referral” in the rule heading and substituting the word “Reference”.

Amendment of rule 17

15. Rule 17 of the Patents Rules is amended —

(a) by deleting paragraph (3) and substituting the following paragraph:

“(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.”; and

(b) by deleting the words “the subsequent procedure” in paragraph (4) and substituting the words “any aspect of the procedure for the application”.

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Amendment of rule 19

16. Rule 19 of the Patents Rules is amended —

(a) by deleting the words “, specification and abstract shall be short, precise and” in paragraph (4) and substituting the words “and the specification shall be the same title, shall be short and precise, and shall”;

(b) by deleting paragraph (6) and substituting the following paragraphs:

“(6) The number of claims shall be reasonable in consideration of the nature of the invention claimed.

(6A) Where there are 2 or more claims, the claims shall be numbered consecutively in Arabic numerals.”; and

“(13) A request to withdraw an application for a patent shall be made by filing Form CM9.”.

Amendment of rule 22

17. Rule 22 of the Patents Rules is amended by deleting paragraph (1).

Amendment of rule 26

18. Rule 26(4) of the Patents Rules is amended by deleting the words “Patents Form 26” in sub‑paragraphs (a)(ii)(B) and (b)(ii)(B) and substituting in each case the words “Form CM12”.

Amendment of rule 26A

19. Rule 26A of the Patents Rules is amended —

(a) by deleting sub‑paragraph (b) of paragraph (1) and substituting the following sub‑paragraph:

“(b) if the applicant does not make any request under section 26(9)(b)(i), any time before the applicant —

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(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).”;

(b) by deleting the words “if the applicant makes a request under section 26(9)(b)(i),” in paragraph (2); and

(c) by deleting the words “Patents Form 26” in paragraph (7)(a)(ii)(B) and (b)(ii)(B) and substituting in each case the words “Form CM12”.

Amendment of rule 27

20. Rule 27 of the Patents Rules is amended —

(a) by deleting the words “paragraphs (1A), (2)” in paragraph (1) and substituting the words “paragraphs (2)”; and

(b) by deleting paragraph (1A).

Amendment of rule 29

21. Rule 29(4) of the Patents Rules is amended by deleting the words “Patents Form 9A” in sub‑paragraph (a) and substituting the words “Form CM9”.

Deletion and substitution of rule 31

22. Rule 31 of the Patents Rules is deleted and the following rule substituted therefor:

“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 —

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(a) every applicant for a patent;

(b) every person who initiates any inter partes proceedings before the Registrar under rule 6, 7, 10, 11, 12, 14, 15, 16, 17, 52, 65, 66, 69, 71, 74, 76, 77, 78, 80, 85 or 91, or paragraph 3 of the Fourth Schedule;

(c) every proprietor of a patent who is a party to any inter partes proceedings before the Registrar, but did not initiate those proceedings; and

(d) every other party to any proceedings before the Registrar.

(2) Where any form 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.

(3) The effect of furnishing an address for service on a form shall be as follows:

(a) where the address for service is furnished on Patents Form 1, 37 or 39, 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;

(b) where the address for service is furnished on Patents Form 2, 4, 5, 6, 7, 29, 32, 33, 35, 52 or 58 or Form HC4 or HC6, or on Patents Form 28 (in so far as the form relates to an application under rule 73(1)) or Patents Form 49 (in so far as the form relates to a request under paragraph 3(4) of the Fourth Schedule), the address for service shall be effective for the purposes of the proceedings in relation to which that form is filed;

(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;

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(d) where the address for service is furnished on Patents Form 34 or 44 or Form CM1, CM2, CM10, CM11 or CM12, or on Patents Form 49 (in so far as the form relates to a request under paragraph 2(1) of the Fourth Schedule), the address for service shall be effective only for the matter for which that form is filed;

(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 proceedings in respect of that patent or application, other than —

(BA) renewal applications or proceedings in respect of that patent; and

(BB) the registration of the transfer of that patent or application; or

(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

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respect of the patent, or the application for a patent, in relation to which that form is filed, other than renewal applications or proceedings in respect of that patent.

(4) Where an address for service is not furnished by or on behalf of any person referred to in sub‑paragraph (b), (c) or (d) of paragraph (1) as required by that paragraph, the Registrar may send to that person a notice to furnish an address for service within 2 months after the date of the notice, and if that person fails to do so —

(a) in the case of a person referred to in paragraph (1)(b), the proceedings in question shall be treated as withdrawn; and

(b) in the case of the proprietor referred to in paragraph (1)(c) or a party referred to in paragraph (1)(d), he shall not be permitted to take part in the proceedings in question.

(5) A request to the Registrar to alter or correct an address for service shall be made on Form CM2.

(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) Unless an address for service is furnished under paragraph (1) or is altered or corrected under paragraph (5), the Registrar —

(a) may treat the address for service of an applicant for a patent as that of the proprietor upon the grant of the patent; and

(b) may treat the trade or business address in Singapore of a person as his address for service.”.

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Amendment of rule 33

23. Rule 33(1) of the Patents Rules is amended —

(a) by deleting the words “and (4)” in sub‑paragraph (a) and substituting the words “, (4) and (6A)”; and

(b) by deleting the words “rule 31” in sub‑paragraph (c) and substituting the words “rule 31(1)(a)”.

Amendment of rule 34

24. Rule 34 of the Patents Rules is amended —

(a) by inserting, immediately after paragraph (1), the following paragraph:

“(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).”;

(b) by deleting sub‑paragraph (b) of paragraph (2) and substituting the following sub‑paragraph:

“(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).”;

(c) by deleting the words “if the applicant makes a request under section 28(9)(b)(i), the” in paragraph (3) and substituting the word “any”; and

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(d) by deleting the words “Patents Form 26” in paragraph (8)(a)(ii)(B) and (b)(ii)(B) and substituting in each case the words “Form CM12”.

Amendment of rule 36

25. Rule 36 of the Patents Rules is amended by deleting the words “section 29(2)(a)” and substituting the words “section 29(1)(a)”.

Amendment of rule 37

26. Rule 37 of the Patents Rules is amended by deleting the words “section 29(2)(b)” and substituting the words “section 29(1)(b)”.

Amendment of rule 38

27. Rule 38 of the Patents Rules is amended by deleting the words “the purposes of section 29(2)(a)” in paragraphs (1) and (2) and substituting in each case the words “filing a request for a search report under section 29(1)(a)”.

Amendment of rule 40

28. Rule 40 of the Patents Rules is amended —

(a) by deleting the words “prescribed for the purposes of section 29(3) and (6)” in paragraph (1) and substituting the words “referred to in rule 2A(2)(a)”;

(b) by deleting paragraph (1A); and

Amendment of rule 41

29. Rule 41 of the Patents Rules is amended by deleting the words “and “corresponding patent” in section 2(1) and of section 29(2)(c)” and substituting the words “, “corresponding patent”, “related national phase application” and “related national phase patent” in section 2(1)”.

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Amendment of rule 42

30. Rule 42 of the Patents Rules is amended —

(a) by deleting the words “section 29(2)(c)(i), (d)(i) or (e)(i) or (4)” in paragraph (1) and substituting the words “section 29(1)(c) or (3)”;

(b) by inserting, immediately after paragraph (1), the following paragraph:

“(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;

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(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.”;

“(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); and

(b) is accompanied by the prescribed fee.”;

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(d) by deleting the words “section 29(2)(c)(i), (d)(i) or (e)(i)” in paragraph (3)(a) and substituting the words “section 29(1)(c)”;

(e) by deleting the words “search report or international search report,” in paragraph (3)(b) and substituting the words “final search results referred to in paragraph (1A)(a) or final international search results referred to in paragraph (1A)(b) or (c),”;

(f) by deleting the words “require the applicant to furnish, within such period as the Registrar may specify” in paragraph (3) and substituting the words “by letter require the applicant to furnish, within 2 months after the date of the Registrar’s letter”; and

(g) by deleting the words “the period specified by the Registrar,” in paragraph (4) and substituting the words “2 months after the date of the Registrar’s letter referred to in paragraph (3),”.

Deletion and substitution of rule 42A

31. Rule 42A of the Patents Rules is deleted and the following rule substituted therefor:

“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

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(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

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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.”.

Deletion and substitution of rule 43

32. Rule 43 of the Patents Rules is deleted and the following rule substituted therefor:

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“Period for filing request for search and examination report, request for examination report or request for supplementary examination report

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.”.

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Deletion of rule 44

33. Rule 44 of the Patents Rules is deleted.

Amendment of rule 45

34. Rule 45 of the Patents Rules is amended —

(a) by deleting the words “section 29(2)(a) or (b)” in paragraph (1) and substituting the words “section 29(1)(a) or (b)”; and

(b) by deleting the word “section 29(2)(a)” in paragraph (3) and substituting the words “section 29(1)(a)”.

Amendment of rule 46

35. Rule 46 of the Patents Rules is amended —

(a) by deleting the words “section 29(5) or (6)” in paragraph (1) and substituting the words “section 29(4)(a) or (5)(a)(ii)”;

(b) by deleting sub‑paragraph (d) of paragraph (1) and substituting the following sub‑paragraph:

“(d) the application discloses any additional matter referred to in section 84(1) or (1A) or any matter referred to in section 84(2);”;

(d) by inserting, immediately after sub‑paragraph (e) of paragraph (1), the following sub‑paragraph:

“(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 his 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 his successor in title,”;

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(e) by inserting, immediately after paragraph (1), the following paragraph:

“(1A) If during a supplementary examination under section 29(6)(a), the Examiner is of the opinion that —

(a) any claim in the application is not supported by the description of the invention;

(b) at the time the prescribed documents referred to in section 29(1)(d) are filed, any claim in the application in suit is not related to at least one claim which —

(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);

(d) the invention is an invention referred to in section 16(2) that is not to be taken to be capable of industrial application;

(e) 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; or

(ii) any earlier grant of a patent for the same invention, with the same priority date, to

25 S 81/2014

the same applicant or his successor in title; or

(f) the application discloses any additional matter referred to in section 84(1) or (1A) or any matter referred to in section 84(2),

the Examiner shall notify the Registrar in writing of that opinion and shall state fully the reasons for his opinion.”;

(f) by inserting, immediately after the word “application” in paragraph (3)(b), the words “(whether or not he makes the amendment of his own volition)”;

(g) by deleting paragraph (4) and substituting the following paragraphs:

“(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.

(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.”;

(h) by inserting, immediately after the words “paragraph (3)” in paragraph (5), the words “to a written opinion in respect of an examination report under section 29(4) or a search and examination report under section 29(5)”;

(i) by deleting the words “from the date of the Registrar’s notification enclosing” in paragraph (5)(c) and substituting the words “after the date of the Registrar’s letter forwarding”; and

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(j) by deleting paragraphs (8), (9) and (10) and substituting the following paragraphs:

“(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.

(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.

(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

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(b) upon the expiry of that period, the written opinion shall be treated as the supplementary examination report.

(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.”.

New rule 46A

36. The Patents Rules are amended by inserting, immediately after rule 46, the following rule:

“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 13.

(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:

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(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(6) shall be 2 months after the date of the Registrar’s letter forwarding the notice under section 29B(5)(b)(ii).”.

Amendment of rule 47

37. Rule 47 of the Patents Rules is amended —

(a) by deleting paragraph (1) and substituting the following paragraph:

“(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).”;

(b) by deleting paragraph (2);

“(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) if any such amendment or correction is made before or at the time of compliance with section 29A(2)(a), the applicant shall file a specification incorporating every such amendment or correction at the time of compliance with section 29A(2)(a);

(b) 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

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amendment or correction within such period as the Registrar may specify; and

(c) 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).”;

(d) by deleting the words “section 30(2)(c)” in paragraph (4A) and substituting the words “section 30(c)”; and

(e) by deleting sub‑paragraph (a) of paragraph (4A) and substituting the following sub‑paragraph:

“(a) a duly completed Patents Form 14; and”.

Deletion of rule 47A

38. Rule 47A of the Patents Rules is deleted.

Amendment of rule 49

39. Rule 49 of the Patents Rules is amended by deleting paragraph (2) and substituting the following paragraphs:

“(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.

(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;

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(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.”.

Amendment of rule 51

40. Rule 51 of the Patents Rules is amended —

(a) by inserting, immediately after the word “rule” in paragraph (3), the words “, or a late application for the renewal of a patent referred to in section 36(3),”; and

(b) by deleting paragraphs (3A), (6) and (7).

Amendment of rule 51A

41. Rule 51A of the Patents Rules is amended —

(a) by deleting paragraph (3) and substituting the following paragraph:

“(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

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the patent shall be treated as having been abandoned.”; and

(b) by inserting, immediately after paragraph (4), the following paragraphs:

“(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.

(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;

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(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

(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.

(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.

(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

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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;

(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.

(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

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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

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(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

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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;

(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

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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

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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.

(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.”.

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Amendment of rule 52

42. Rule 52 of the Patents Rules is amended —

(a) by deleting paragraph (1) and substituting the following paragraphs:

“(1) An application to the Registrar for leave to amend the specification of a patent shall be made on Patents Form 17.

(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.”;

(b) by deleting the words “Patents Form 18” in paragraph (2) and substituting the words “Patents Form 58”;

“(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.

(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.”;

(d) by deleting paragraph (4) and substituting the following paragraphs:

“(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.

(4A) The applicant shall, at the time the counter- statement is filed, serve on the opponent a copy of the counter-statement.”; and

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(e) by deleting the words “the subsequent procedure” in paragraph (5) and substituting the words “any aspect of the procedure for the application”.

Deletion of rule 52A

43. Rule 52A of the Patents Rules is deleted.

Amendment of rule 53

44. Rule 53 of the Patents Rules is amended —

(a) by deleting “30” in paragraph (1)(a) and substituting “18”;

(b) by inserting, immediately after the word “matter” in paragraph (2), the words “in accordance with rule 88”;

(c) by deleting the words “shall, after giving the applicant an opportunity of being heard, determine” in paragraph (3) and substituting the words “shall determine, in accordance with rule 88,”; and

(d) by deleting the words “, together with Patents Form 15, duly completed,” in paragraph (4).

Deletion of rule 53A

45. Rule 53A of the Patents Rules is deleted.

Amendment of rule 54

46. Rule 54 of the Patents Rules is amended —

(a) by deleting the words “Patents Form 21 and shall be advertised by the Registrar in the journal” in paragraph (1) and substituting the words “Form CM3”; and

(b) by deleting paragraphs (2) to (5) and substituting the following paragraphs:

“(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 —

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(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.

(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.”.

Amendment of rule 55

47. Rule 55(3) of the Patents Rules is amended by deleting sub‑paragraph (gc).

Amendment of rule 56

48. Rule 56 of the Patents Rules is amended —

(a) by deleting the words “Patents Form 23” in paragraphs (1) and (3) and substituting in each case the words “Form CM2”;

(b) by deleting the words “or address for service” in paragraph (3)(a) and substituting the words “(not being his address for service)”;

(c) by deleting the words “, address or address for service” in paragraph (3)(b) and substituting the words “or his address (not being his address for service)”;

(d) by deleting the words “, address or address for service” in paragraph (4) and substituting the words “or any address (not being an address for service)”; and

(e) by deleting the words “, address or address for service” in the rule heading and substituting the words “or address”.

Amendment of rule 57

49. Rule 57 of the Patents Rules is amended —

(a) by deleting paragraphs (1), (2) and (3) and substituting the following paragraphs:

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“(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); or

(d) on Form CM8, 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).

(2) Where an application under paragraph (1) is filed other than by means of the electronic filing system, the application shall be signed by or on behalf of —

(a) the person who granted the licence or sub‑licence, if paragraph (1)(a) applies;

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(b) the person who granted the mortgage or security interest, if paragraph (1)(b) applies;

(d) each personal representative and each beneficiary of the deceased, if paragraph (1)(d) applies.

(3) Where an application under paragraph (1) 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.”;

(b) by deleting sub‑paragraphs (a) and (b) of paragraph (4) and substituting the following sub‑paragraphs:

“(a) paragraph (3) does not apply, and paragraph (2) is not complied with; or

(b) the Registrar so directs,”;

(d) by inserting, immediately after paragraph (4), the following paragraph:

“(5) For the purposes of this rule, where a person who is required to sign an application under paragraph (1) is a corporation, it is sufficient for that person to seal the application with its corporate seal.”.

Amendment of rule 58

50. Rule 58(1) of the Patents Rules is amended by deleting the words “Patents Form 23” and substituting the words “Form CM4”.

Amendment of rule 59

51. Rule 59 of the Patents Rules is amended by deleting the words “, upon payment of the applicable fee referred to in the First Schedule,”.

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Amendment of rule 63

52. Rule 63 of the Patents Rules is amended —

(a) by deleting the words “Patents Form 26” in paragraph (1) and substituting the words “Form CM12”;

(b) by inserting, at the end of paragraph (1)(a), the word “or”;

(d) by deleting paragraph (2).

Amendment of rule 64

53. Rule 64 of the Patents Rules is amended by deleting paragraph (1) and substituting the following paragraph:

“(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 Form CM11 accompanied by a copy of the order or direction; and

(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).”.

Amendment of rule 65

54. Rule 65 of the Patents Rules is amended —

(a) by deleting the words “a copy thereof and” in paragraph (1);

(b) by deleting the words “(“the opponent”)” in paragraph (3);

(d) by deleting the words “the subsequent procedure” in paragraph (7) and substituting the words “any aspect of the procedure for the reference”.

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Amendment of rule 66

55. Rule 66 of the Patents Rules is amended —

(a) by deleting the words “a copy thereof and” in paragraph (1);

(b) by deleting paragraph (2) and substituting the following paragraph:

“(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.”; and

(c) by deleting the words “the subsequent procedure” in paragraph (3) and substituting the words “any aspect of the procedure for the application”.

Amendment of rule 69

56. Rule 69 of the Patents Rules is amended —

(a) by deleting the words “a copy thereof and” in paragraph (1);

(b) by deleting paragraph (2) and substituting the following paragraphs:

“(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.

(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

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(b) at the time the counter-statement is filed, serve on the person making the reference a copy of the counter-statement.”; and

(c) by deleting the words “the subsequent procedure” in paragraph (3) and substituting the words “any aspect of the procedure for the reference”.

Amendment of rule 71

57. Rule 71 of the Patents Rules is amended —

(a) by deleting paragraphs (2), (3) and (4) and substituting the following paragraphs:

“(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 Patents Form 29 and a copy of each document referred to in paragraph (1)(a); and

(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 Patents Form 29 and a copy of the document referred to in paragraph (1)(b).

(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

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(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.

(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.”; and

(b) by deleting the words “the subsequent procedure” in paragraph (6) and substituting the words “any aspect of the procedure for the application”.

Amendment of rule 72

58. Rule 72 of the Patents Rules is amended by deleting the words “Patents Form 30” and substituting the words “Patents Form 28”.

Amendment of rule 73

59. Rule 73 of the Patents Rules is amended —

(a) by deleting the words “Patents Form 30” in paragraph (1) and substituting the words “Patents Form 28”;

(b) by deleting the words “accompanied by a copy of the application” in paragraph (1); and

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“(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.”.

Amendment of rule 74

60. Rule 74 of the Patents Rules is amended —

(a) by deleting the words “Patents Form 31” in paragraph (2) and substituting the words “Patents Form 58”;

(b) by deleting paragraph (3) and substituting the following paragraphs:

“(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.

(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.”; and

(c) by deleting the words “the subsequent procedure” in paragraph (4) and substituting the words “any aspect of the procedure for the opposition to the cancellation of the entry”.

Amendment of rule 75A

61. Rule 75A of the Patents Rules is amended by deleting the words “(or P-No.)” in paragraph (b).

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Amendment of rule 76

62. Rule 76 of the Patents Rules is amended —

(a) by deleting the words “Patents Form 3” in paragraph (4) and substituting the words “Form HC6”; and

(b) by deleting the words “the subsequent procedure” in paragraph (9) and substituting the words “any aspect of the procedure for the reference”.

Amendment of rule 77

63. Rule 77 of the Patents Rules is amended —

(a) by deleting the words “Patents Form 3” in paragraph (3) and substituting the words “Form HC6”; and

(b) by deleting the words “the subsequent procedure” in paragraph (7) and substituting the words “any aspect of the procedure for the reference”.

Amendment of rule 78

64. Rule 78 of the Patents Rules is amended —

(a) by deleting the words “a copy thereof and” in paragraph (1);

(b) by deleting paragraph (2) and substituting the following paragraphs:

“(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.

(2A) If the proprietor of the patent wishes to contest the application, he shall —

(a) within 2 months after the date on which he is served the copies of the application and the statement, file a counter-statement on Form HC6 setting out fully the grounds on which he contests the applicant’s case; and

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(b) at the time the counter-statement is filed, serve on the applicant a copy of the counter- statement.”; and

(c) by deleting the words “the subsequent procedure” in paragraph (6) and substituting the words “any aspect of the procedure for the application”.

Amendment of rule 80

65. Rule 80 of the Patents Rules is amended —

(a) by deleting paragraph (2) and substituting the following paragraph:

“(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.”;

(b) by deleting the words “Patents Form 3” in paragraph (3) and substituting the words “Form HC6”; and

(c) by deleting the words “the subsequent procedure” in paragraph (10) and substituting the words “any aspect of the procedure for the application”.

Amendment of rule 80A

66. Rule 80A of the Patents Rules is amended —

(a) by deleting paragraphs (a) and (b) and substituting the following paragraphs:

“(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;

(b) any prescribed documents referred to in section 29(1)(c) or (d); and”; and

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(b) by inserting, immediately after the word “information” in paragraph (c), the words “or prescribed documents”.

Amendment of rule 85

67. Rule 85 of the Patents Rules is amended —

(a) by deleting the words “Patents Form 18” in paragraph (1) and substituting the words “Patents Form 58”;

(b) by deleting the words “accompanied by a copy thereof and be” in paragraph (2);

“(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.”; and

(d) by deleting the words “the subsequent procedure” in paragraph (4) and substituting the words “any aspect of the procedure for the opposition to the amendment”.

Deletion and substitution of rule 87

68. Rule 87 of the Patents Rules is deleted and the following rule substituted therefor:

“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:

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(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).”.

Amendment of rule 88

69. Rule 88 of the Patents Rules is amended —

(a) by inserting, immediately after the words “rule 87” in paragraph (1), the words “in ex parte proceedings, whether interlocutory or otherwise,”;

(b) by deleting the words “Patents Form 40” in paragraph (1) and substituting the words “Form HC4”; and

“(3) A request for the exercise of the discretionary powers of the Registrar under rule 87 in inter partes interlocutory proceedings shall be made to the Registrar in writing.

(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.

(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.

(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.

(7) After hearing each party, the Registrar shall notify every party of his decision in relation to the exercise of the discretionary power.

(8) Where any party wishes to have the Registrar’s grounds of decision in respect of a request under paragraph (1) —

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(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.

(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.

(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.”.

Amendment of rule 88A

70. Rule 88A of the Patents Rules is amended —

(a) by deleting “54,” in paragraph (1);

(b) by deleting the words “or 85” in paragraph (1) and substituting the words “, 85 or 91”;

(c) by deleting the words “Patents Form 40A” in paragraphs (4), (5) and (6) and substituting in each case the words “Form HC1”; and

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(d) by deleting paragraphs (7) to (11) and substituting the following paragraphs:

“(7) If neither party appears at the hearing, the Registrar may dismiss the proceedings.

(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.

(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.

(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.

(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).”.

New rule 88B

71. The Patents Rules are amended by inserting, immediately after rule 88A, the following rule:

“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

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(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 appear at 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

(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.

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(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.”.

Amendment of rule 90

72. Rule 90 of the Patents Rules is amended —

(a) by deleting the words “in Patents Form 41” in paragraph (2) and substituting the words “, and furnish an address for service in Singapore, on Form CM1”; and

(b) by inserting, immediately after paragraph (2), the following paragraphs:

“(3) Notwithstanding paragraph (2), where these Rules require any form referred to in paragraph (4) to be filed, the advocate and solicitor or person referred to in paragraph (2) may file the declaration of authorisation, and furnish the address for service, on that form.

(4) The effect of filing a declaration of authorisation, and furnishing an address for service, on a form shall be as follows:

(a) where the declaration of authorisation is filed, and the address for service is furnished, on Patents Form 1, 37 or 39, 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;

(b) where the declaration of authorisation is filed, and the address for service is furnished, on Patents Form 2, 4, 5, 6, 7, 29, 32, 33, 35, 52 or 58 or Form HC4 or HC6, or on Patents Form 28 (in so far as the form relates to an application under rule 73(1)) or Patents Form 49 (in so far as the form relates to a request under paragraph 3(4) of the Fourth Schedule), the declaration of authorisation and address for

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service shall be effective for the purposes of the proceedings in relation to which that form is filed;

(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 Patents Form 34 or 44 or Form CM2, CM10, CM11 or CM12, or on Patents Form 49 (in so far as the form relates to a request under paragraph 2(1) of the Fourth Schedule), the declaration of authorisation and address for service shall be effective only for the matter for which that form is filed;

(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 —

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(i) if there are 2 declarations of authorisation filed, and 2 addresses for service furnished, on that form —

(A) one declaration of authorisation shall be filed, and 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 declaration of authorisation, and the other address for service, shall be effective for the purposes of all proceedings in respect of that patent or application, other than —

(BA) renewal applications or proceedings in respect of that patent; and

(BB) the registration of the transfer of that patent or application; or

(ii) if there is only one declaration of authorisation filed, and one address for service furnished, on that form, the declaration of authorisation and 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, other than renewal applications or proceedings in respect of that patent.

(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 or any other person

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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 or person;

(b) the party.

(6) The Registrar may, by notice in writing sent to an advocate and solicitor, or any other person, appointed by a party to act on his behalf, require the advocate and solicitor or person to produce evidence of his authority to act for the party.

(7) No act under the Act or these Rules may be done by or to an advocate and solicitor, or any other person, appointed by a party to act on the party’s behalf, until after the advocate and solicitor 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.

(8) Where an advocate and solicitor or any other person, having been appointed by a party to act on the party’s behalf, intends to cease to act on the party’s behalf —

(a) the advocate and solicitor or person shall file, and serve on the party, a notice on Form CM1 of the intention to cease to act on the party’s behalf; and

(b) upon complying with sub‑paragraph (a), the advocate and solicitor or person shall cease to act on the party’s behalf.”.

Amendment of rule 91

73. Rule 91 of the Patents Rules is amended —

(a) by deleting the words “Except where rule 9(3) or 56(3) applies,” in paragraph (1) and substituting the words “Subject to paragraph (12) and unless the Registrar directs otherwise,”;

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(b) by deleting the words “Patents Form 23” in paragraph (1) and substituting the words “Form CM4”;

(c) by deleting the word “The” in paragraph (1A) and substituting the words “Where the request relates to an error in any document other than a form, the”;

(d) by deleting the words “he shall inform the applicant in writing accordingly and request him, within 2 months from the date of his letter, to file” in paragraph (3) and substituting the words “the Registrar shall inform the person making the request in writing accordingly and direct the person to file, within 2 months after the date of the Registrar’s letter,”;

(e) by deleting the words “Patents Form 43” in paragraph (5) and substituting the words “Patents Form 58”;

(f) by deleting paragraph (7) and substituting the following paragraphs:

“(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.

(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.”;

(g) by deleting the words “the subsequent procedure” in paragraph (8) and substituting the words “any aspect of the procedure for the request or the opposition to the request”;

(h) by deleting the word “Where” in paragraph (9) and substituting the word “Before”; and

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(i) by inserting, immediately after paragraph (11), the following paragraphs:

“(12) Paragraph (1) shall not apply to —

(a) any request for correction referred to in rule 9(3), 31(5) or 56(3);

(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 inter partes proceedings under rule 6, 7, 10, 11, 12, 14, 15, 16, 52, 65, 66, 69, 71, 74, 76, 77, 78, 80, 85 or 91, or paragraph 3 of the Fourth Schedule;

(i) any document filed in connection with any inter partes proceedings under rule 17 (other than paragraph (3) thereof);

(ii) any counter-statement on Form HC6 filed in connection with any inter partes proceedings under rule 17(3);

(iii) any document filed in connection with any ex parte proceedings under rule 53 (other than paragraph (2) thereof) or rule 88 (other than paragraph (1) thereof); or

(iv) any request on Form HC4 filed in connection with any ex parte proceedings under rule 53(2) or 88(1); and

(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.

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(13) A request referred to in paragraph (12)(b), (c) or (d) shall be made to the Registrar in writing.”.

Amendment of rule 92

74. Rule 92(1) of the Patents Rules is amended by deleting the words “that the reports or information, as the case may be, referred to in section 30(2) were” in sub‑paragraph (a) and substituting the words “on which any report, document or English translation referred to in section 29, 29B or 30(c) or rule 42 or 42A was”.

Amendment of rule 93

75. Rule 93 of the Patents Rules is amended —

(a) by deleting the words “Patents Form 25” in paragraphs (1) and (2) and substituting in each case the words “Form CM10”;

(b) by deleting the words “at the Registry” where they appear the second time in paragraph (1);

(d) by deleting the words “rule 59, 63(2), 92 or this rule” in paragraph (4)(d) and substituting the words “rule 59 or 92 or this rule, or rule 63(2) in force immediately before 14th February 2014,”.

Amendment of rule 94

76. Rule 94(1) of the Patents Rules is amended by deleting the words “Patents Form” and substituting the word “form”.

Amendment of rule 96A

77. Rule 96A of the Patents Rules is amended by deleting paragraph (2) and substituting the following paragraphs:

“(2) The electronic online system may be used —

(a) by any person for giving, sending to, filing with or serving on the Registrar or the Registry any document (other than a notice or document to be served in proceedings in court); and

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(b) by the Registrar or the Registry for giving, sending to or serving on any person any notice, direction or other document (other than a notice or document to be served in proceedings in court).

(3) The Registrar may issue practice directions specifying —

(a) the documents that are to be filed at or submitted to the Registry using the electronic online system;

(b) the manner in which any document is to be given or sent to, filed with or served on the Registrar or the Registry under paragraph (2)(a);

(c) the manner in which the Registrar or the Registry may give, send or serve any notice, direction or document under paragraph (2)(b); or

(d) the procedures and conditions for the setting-up, operation and use of the electronic online system.”.

Deletion and substitution of rule 96B

78. Rule 96B of the Patents Rules is deleted and the following rule substituted therefor:

“Documents to be signed, made on oath, etc.

96B.—(1) Where any document to be given, sent, filed or served using the electronic online system is to be signed or made on oath or by affirmation, it shall be signed, made on oath or affirmed in the usual way on the original paper document.

(2) Where any document to be given, sent, filed or served using the electronic online system is to be attested, it shall be attested in the usual way in which the original paper document is attested.

(3) The giving, sending, filing or service of any such document using the electronic online system shall be effected by sending a true and complete electronic image of the original paper document.”.

Deletion of rules 96C to 96G

79. Rules 96C to 96G of the Patents Rules are deleted.

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Deletion of rules 96I and 96J

80. Rules 96I and 96J of the Patents Rules are deleted.

Amendment of rule 96K

81. Rule 96K of the Patents Rules is amended by deleting the words “rule 96A(2)” and substituting the words “rule 96A(2)(a)”.

Deletion and substitution of rule 97

82. Rule 97 of the Patents Rules is deleted and the following rule substituted therefor:

“Service of documents

97.—(1) Where the Act or these Rules authorise or require any document to be given or sent to, filed with or served on the Registrar or Registry, the giving, sending, filing or service may be effected on the Registrar or Registry —

(a) by sending the document by pre-paid post;

(b) where there is no fee payable to the Registrar or Registry for the giving, sending, filing or service of the document, by sending the document by facsimile transmission; or

(c) by electronic communication, by sending an electronic communication of the document using the electronic online system in accordance with any practice directions issued by the Registrar under rule 96A(3).

(2) Where the Act or these Rules authorise or require any document to be given or sent to or served on any party other than the Registrar or Registry, the giving, sending or service may be effected on that party by sending the document by post.

(3) Where the Act or these Rules authorise or require any notice, direction or other document to be given or sent to or served on any party by the Registrar or Registry, the Registrar or Registry may effect the giving, sending or service on the party—

(a) by sending the notice, direction or other document by post;

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(b) by sending the notice, direction or other document by facsimile transmission; or

(c) by electronic communication, by sending an electronic communication of the notice, direction or other document using the electronic online system.

(4) Where any notice, direction or other document is sent by post under paragraph (2) or (3), the giving, sending or service, as the case may be, of the notice, direction or other document shall, until the contrary is proved, be treated as having been effected at the time at which the notice or document would have been delivered in the ordinary course of post.

(5) For the purposes of paragraphs (2) and (3), any notice, direction or other document is sent to a party by post if the notice, direction or other document is sent by pre-paid post to the party at his address for service referred to in rule 31 or 90 (as the case may be).

(6) Where any person has attempted to send any document by facsimile transmission under paragraph (1) —

(a) if any part or all of the document received by the Registrar or Registry is illegible or if any part of the document is not received by the Registrar or Registry, the document shall be treated as not having been submitted; and

(b) the burden of proving the legibility and completeness of the document lies with the person who has attempted to send the document.

(7) Notwithstanding the availability of an address for service furnished in accordance with rule 31 or 90 (as the case may be), where any notice, direction or other document to be given, sent or served by the Registrar or Registry is sent to a person by electronic communication using the electronic online system under paragraph (3)(c), it shall be taken to have been duly given, sent to or served on the person.

(8) Service of any notice, direction or other document under the Act or these Rules on a person by electronic communication

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using the electronic online system may be effected only if the person is registered as an account holder in accordance with any practice directions issued by the Registrar under rule 96A(3).

(9) Paragraph (1)(b) shall not apply to the filing of any statutory declaration or affidavit.

(10) This rule shall not apply to notices and documents to be served in proceedings in court.”.

Amendment of rule 98

83. Rule 98 of the Patents Rules is amended —

(a) by deleting the words “paragraphs (4), (7)” in paragraph (1) and substituting the words “paragraphs (7)”;

(b) by deleting paragraphs (3), (4) and (5);

(c) by deleting the words “rule 96A(2)” in paragraphs (6) and (7) and substituting in each case the words “rule 96A(2)(a)”;

(d) by deleting the words “rule 97(2)” wherever they appear in paragraph (10) and substituting in each case the words “rule 97(1)(b)”; and

(e) by deleting paragraph (13).

Deletion and substitution of rule 100

84. Rule 100 of the Patents Rules is deleted and the following rule substituted therefor:

“Correction of irregularities

100.—(1) Subject to paragraph (3), the Registrar may, if he thinks fit, authorise the rectification of any irregularity of procedure connected with any proceeding or other matter before the Registrar, an Examiner or the Registry.

(2) Any rectification made under paragraph (1) shall be made —

(a) after giving the parties such notice as the Registrar may direct; and

(b) subject to such conditions as the Registrar may direct.

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(3) Any time or period prescribed or specified in the Act or these Rules, whether expired or not, may be extended under paragraph (1) if, and only if —

(a) the irregularity or prospective irregularity is attributable, wholly or in part, to a default, omission or other error by the Registrar, an Examiner or the Registry; and

(b) it appears to the Registrar that the irregularity should be rectified.”.

Deletion of rule 105A

85. Rule 105A of the Patents Rules is deleted.

Deletion and substitution of rule 106

86. Rule 106 of the Patents Rules is deleted and the following rule substituted therefor:

“Supporting statements or evidence

106.—(1) Where, by virtue of rule 52(3), 74(2), 85(2) or 91(6), any notice is required to be supported by a statement or evidence, such a statement or evidence shall be filed on, or within 14 days after, the date on which the notice is given.

(2) Where, by virtue of rule 53(1), 73(1) or 108(5), any application is required to be supported by a statement or evidence, such a statement or evidence shall be filed on, or within 14 days after, the date on which the application is made.”.

Deletion and substitution of rule 108

87. Rule 108 of the Patents Rules is deleted and the following rule substituted therefor:

“Extension of time limits in general

108.—(1) Subject to paragraphs (2), (3) and (4) and rule 108A, any time or period prescribed by these Rules for doing any act or taking any proceedings, and any time or period specified by the Registrar under these Rules, may, on written request by a party made no later than 6 months after the first expiry of the time or

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period, be extended by the Registrar if he thinks fit, upon such notice to the parties and upon such terms as he may direct.

(2) Any time or period prescribed in any of the following provisions shall not be extended:

(a) paragraphs (1), (3), (4) and (5);

(b) rules 8(1), 9(1), (2) and (3), 9A(1) and (2)(a), 19(2), 26(5), 26A(1) and (5)(a), 28(a), (b), (c) and (d), 29(4), 34(2), 46(4), (4A) and (5)(c), 49, 51(1), (2) and (2A), 51A(1) and (2), 52(2), 53(1), 73(1), 74(1), 75, 85(1), 86(3A), 88(8)(a), 88A(11), 91(3) and (5) and paragraph 4(2) of the Fourth Schedule;

(d) rule 26A(4) (except so far as it relates to the furnishing of the information prescribed under rule 26A(6)(b) and the filing of the documents prescribed under rule 26A(7)); and

(e) rule 34(5) (except so far as it relates to the furnishing of the information prescribed under rule 34(7)(b) and the filing of the documents prescribed under rule 34(8)).

(3) Any time or period prescribed in any of the following provisions shall be extended for a total period not exceeding 6 months, beginning immediately after the first expiry of the time or period for which the extension is sought, upon filing Patents Form 45 no later than 6 months after the first expiry of the time or period for which the extension is sought:

(a) rule 8(2), 9A(5), 9B(1) or (4), 9C(1), 17(3), 28(e) or (g), 45(2), 46A(2) or (5), 51A(3), 53(4), 67, 68, 84(1), 86(4)(b), 88(1) or 112(4) or (5)(b) or paragraph 1(3) of the Fourth Schedule;

(b) rule 26A(4) (so far as it relates to the furnishing of the information prescribed under rule 26A(6)(b) and the filing of the documents prescribed under rule 26A(7)); or

69 S 81/2014

(c) rule 34(5) (so far as it relates to the furnishing of the information prescribed under rule 34(7)(b) and the filing of the documents prescribed under rule 34(8)).

(4) Any time or period prescribed in any of the following provisions shall be extended for a total period not exceeding 18 months, beginning immediately after the first expiry of the time or period for which the extension is sought, upon filing Patents Form 45 no later than 18 months after the first expiry of the time or period for which the extension is sought:

(a) rule 18(1), 19(11), 26(2), 28(f), 34(1A), 38, 42(3), 43, 47(1) or 86(1), (6), (8) or (8A); or

(b) rule 26(3) (so far as it relates to the filing of the documents prescribed under rule 26(4)(a) and (b)).

(5) Without prejudice to paragraphs (3) and (4), the Registrar may, if he thinks fit, allow any time or period prescribed in any provision listed in paragraph (3) or (4) to be further extended, upon such terms as he may direct, if all of the following requirements are satisfied:

(a) a request to further extend the time or period is made on Patents Form 45 —

(i) in the case of a time or period prescribed in any provision listed in paragraph (3), no later than 6 months after the first expiry of the time or period; or

(ii) in the case of a time or period prescribed in any provision listed in paragraph (4), no later than 18 months after the first expiry of the time or period;

(b) the time or period has already been extended —

(i) in the case of a time or period prescribed in any provision listed in paragraph (3), by 6 months; or

(ii) in the case of a time or period prescribed in any provision listed in paragraph (4), by 18 months;

S 81/2014 70

(6) A single request may be made under paragraph (5) for the extension of more than one time or period in the same proceedings if the extensions are to be made to a common date (but not otherwise).”.

New rule 108A

88. The Patents Rules are amended by inserting, immediately after rule 108, the following rule:

“Extension of time limits for proceedings before Registrar

108A.—(1) Notwithstanding rule 108, but subject to this rule, any time or period referred to in sub‑paragraph (a) or (b) may, at the request of any party or person (being a person affected, or likely to be affected, by the time or period) made by filing Form HC3, be extended by the Registrar upon such terms as he may direct:

(a) any time or period prescribed under rule 6, 10, 11, 12, 13, 14, 15, 16, 52(4), 65, 66, 69, 71, 74(3A)(a), 76, 77, 78, 80, 81, 91(7A)(a) or 106(1) for doing any act or taking any proceedings;

(b) any time or period specified by the Registrar under rule 6, 10, 11, 12, 13, 14, 15, 16, 52(5), 65, 66, 69, 71, 74(4), 76, 77, 78, 80, 81, 91(8) or 106(1) for doing any act or taking any proceedings.

(2) A request under paragraph (1) for an extension of a time or period shall be made before the expiry of the time or period, unless the time or period expired before 14th February 2014.

(3) Before making any request under paragraph (1), the party or person seeking the extension of the time or period shall serve, on every other party or person (being a person affected, or likely to be affected, by the extension), a notice containing —

(a) a statement of the intention of the first-mentioned party or person to seek the extension, the particulars of the extension, and the reason for the extension; and

71 S 81/2014

(b) a request that the other party or person give his written consent to the extension within 2 weeks after the date on which the notice is served on him.

(4) A request under paragraph (1) shall be accompanied by —

(a) a copy of the notice under paragraph (3); and

(b) each written consent, if any, that has been given pursuant to a request under paragraph (3)(b).

(5) The Registrar may refuse to grant an extension of a time or period under paragraph (1), if the Registrar is not satisfied of either or both of the following:

(a) that there is a good and sufficient reason for the extension;

(b) the notice under paragraph (3) has been served in accordance with that paragraph.

(6) Notwithstanding that any party or person on whom a notice under paragraph (3) is served refuses or fails to give his written consent to the extension of the time or period within 2 weeks after the date on which the notice is served on him, the Registrar may grant the extension without conducting a hearing in accordance with rule 88, if the Registrar is satisfied that there is a good and sufficient reason for the extension.”.

Amendment of rule 109

89. Rule 109 of the Patents Rules is amended —

(a) by deleting the words “an extension of time of more than 3 months under rule 100(2), 108(1) or 108(4)” in paragraph (1) and substituting the words “a total extension of time of more than 6 months under rule 108(1), or an extension of time under rule 108(5),”; and

(b) by deleting the words “an extension of time for more than 3 months or has refused an application for extension of time for more than 3 months under rule 100(2), 108(1) or 108(4)” in paragraph (2) and substituting the words “or refused a total

S 81/2014 72

extension of time of more than 6 months under rule 108(1), or an extension of time under rule 108(5),”.

Amendment of rule 110

90. Rule 110 of the Patents Rules is amended —

(a) by deleting the words “certify the day as being one on which there is” in paragraph (1) and substituting the words “issue practice directions to certify that day as one on which there has been”;

(b) by inserting, immediately after the words “day so certified” in paragraph (1), a comma; and

Amendment of rule 118

91. Rule 118 of the Patents Rules is amended by deleting the words “Patents Form 26” and substituting the words “Form CM12”.

Deletion and substitution of First Schedule

92. The First Schedule to the Patents Rules is deleted and the following Schedule substituted therefor:

“FIRST SCHEDULE Rule 3

FEES PAYABLE

Matter Amount $ Corresponding Form

1. Filing a request for the grant of a 160 Patents Form 1 patent

2. Reference under section 20(1) or 450 Patents Form 2 47(1)

3. Application under section 20(5) 50 Patents Form 4 or 47(3) for authorisation by the Registrar

4. Request for directions under 450 Patents Form 5 section 22

73 S 81/2014

Matter

5. Reference under section 23(5) or 48(5) to determine the question of a licence

6. Application to the Registrar under section 24(1) or (3)

7. Filing a statement of inventorship and of right to the grant of a patent

8. Request for early publication under section 27(2)

9. Filing a request for a search report or a supplementary search report

10. Filing a request for a search and examination report

11. Furnishing details referred to in revoked rule 39(1) in force immediately before 1st July 2004

12. Furnishing information referred to in rule 44(1) in force immediately before 14th February 2014

13. Filing a notice of intention to rely on an international preliminary report on patentability referred to in rule 42A in force immediately before 14th February 2014

14. Filing a request for an examination report

15. Filing a request for a supplementary examination report

16. Filing a request for an Examiner’s review report

17. Request to amend application before grant

Amount $

450

Nil

1,925

2,600

Nil

1,350

Nil

1,350

Nil

Corresponding Form

Patents Form 6

Patents Form 7

Patents Form 8

Patents Form 9

Patents Form 10

Patents Form 11

Patents Form 11A

Patents Form 11B

Patents Form 11C

Patents Form 12

Patents Form 12A

Patents Form 12B

Patents Form 13

S 81/2014 74

Matter

18. Filing a response to a written opinion under section 29(9)

19. Request that a certificate of grant be issued —

(a) where the application for a patent has —

(i) a date of filing before 1st July 2004; and

(ii) a date of lodgment before 14th February 2014

(b) where the application for a patent has —

(i) a date of filing before 1st July 2004;

(ii) a date of lodgment on or after 14th February 2014; and

(iii) not more than 25 claims in the patent specification when rule 47(3) is complied with

(i) a date of filing before 1st July 2004;

(ii) a date of lodgment on or after 14th February 2014; and

(iii) more than 25 claims in the patent specification when rule 47(3) is complied with

Amount $ Corresponding Form

Nil Patents Form 13A

Patents Form 14

170

200

200 plus 20 for each claim in excess of 25 claims

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Matter

(d) where the application for a patent has —

(i) a date of filing on or after 1st July 2004; and

(ii) not more than 25 claims in the patent specification when rule 47(3) is complied with

(e) where the application for a patent has —

(i) a date of filing on or after 1st July 2004; and

(ii) more than 25 claims in the patent specification when rule 47(3) is complied with

20. Payment of renewal fee (not including payment of back renewal fees pursuant to restoration or cancellation of entry in the register that licences are available as of right) —

(a) for each year in respect of the 5th, 6th or 7th year of the patent

(b) for each year in respect of the 8th, 9th or 10th year of the patent

Amount $ Corresponding Form

200

200 plus 20 for each claim in excess of 25 claims

Patents Form 15

140

270

350

S 81/2014 76

Matter

(d) for each year in respect of the 14th, 15th or 16th year of the patent

(e) for each year in respect of the 17th, 18th or 19th year of the patent

(f) for the 20th year of the patent

(g) for each year after the 20th year of the patent

21. Payment, where item 20 applies, of an additional fee for renewal under section 36(3) —

(a) not exceeding one month

(b) each succeeding month (but not exceeding 6 months)

22. Application to amend specification after grant

23. Application for the restoration of a patent

24. Payment of an additional fee on the application for the restoration of a patent

25. Payment of back renewal fee pursuant to restoration of a patent —

(a) for each year in respect of the 5th, 6th or 7th year of the patent

(b) for each year in respect of the 8th, 9th or 10th year of the patent

Amount $ Corresponding Form

490

600

710

950

Patents Form 15

100

1,250 Patents Form 17

500 Patents Form 19

300 Patents Form 20

Patents Form 20

140

270

350

77 S 81/2014

Matter

(d) for each year in respect of the 14th, 15th or 16th year of the patent

(e) for each year in respect of the 17th, 18th or 19th year of the patent

(f) for the 20th year of the patent

(g) for each year after the 20th year of the patent

26. Application for entry to be made in the register to the effect that licences under the patent are to be available as of right

27. Application for cancellation of entry in the register under section 54(1) or (3)

28. Application for settlement of terms of licence of right

29. Reference to the Registrar of a dispute as to infringement

30. Application for declaration of non-infringement

31. Application under repealed section 79(1) in force immediately before 1st July 2004 for information on corresponding applications for a patent

32. Application under section 80 for the revocation of a patent

33. Request for re-examination of a patent in response to the Registrar’s direction

34. Payment of prescribed fee for entry into the national phase under section 86(3)

Amount $

490

600

710

950

380

280

100

500

900

200

Corresponding Form

Patents Form 28

Patents Form 29

Patents Form 32

Patents Form 33

Patents Form 34

Patents Form 35

Patents Form 36

Patents Form 37

S 81/2014 78

Matter

35. Payment of prescribed fee and request for publication of translation

36. Application to the Registrar for an international application for a patent (Singapore) to be treated as an application under the Act

37. Payment of the advertisement fee upon receipt of the Registrar’s request under rule 91(3)

38. Request for information relating to a patent or an application for a patent

39. Request for extension of each time or period under revoked rule 108(3) in force immediately before 14th February 2014 — for each month or part thereof for which the extension is sought

40. Request for extension of each time or period under revoked rule 108(4) in force immediately before 14th February 2014

41. Payment of additional fee for extension of each time or period under revoked rule 108(6) in force immediately before 14th February 2014 — for each month or part thereof for which the extension is granted

42. Request for extension of each period under rule 108(3) or (4)— for each month or part thereof for which the extension is sought

43. Request for extension of each period under rule 108(5)

Amount $ Corresponding Form

70 Patents Form 38

160 Patents Form 39

18 Patents Form 42

24 Patents Form 44

200 Patents Form 45

200 Patents Form 46

200 Patents Form 47

200 Patents Form 45

200 plus 200 Patents Form for each 45 month or part

79 S 81/2014

Matter

44. Request for extension of periods under repealed sections 29(7) and 30(1)(a) in force immediately before 14th February 2014 —

(a) where the application is not an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3)

(b) where the application is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3)

45. Payment of transmittal fee under rule 14 of the Regulations under the Patent Co-operation Treaty

46. Payment of fee under rule 117(6) in respect of a request under Rule 26bis.3(a) of the Regulations under the Patent Co‑operation Treaty

47. Request for certificate authorising release of sample of micro- organism under paragraph 2 or 3 of the Fourth Schedule

48. Notice of intention to restrict availability of samples of micro- organisms to experts

Amount $ Corresponding Form

thereof for which the extension is sought

Patents Form 45A

1,800

Nil

150 Patents Form 48

250 —

15 Patents Form 49

15 Patents Form 50

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Matter

49. Notice of objection to the release of a sample of micro-organism to an expert

50. Payment of renewal fee under section 53 or 54 —

(a) for each year in respect of the 5th, 6th or 7th year of the patent

(b) for each year in respect of the 8th, 9th or 10th year of the patent

(d) for each year in respect of the 14th, 15th or 16th year of the patent

(e) for each year in respect of the 17th, 18th or 19th year of the patent

(f) for the 20th year of the patent

(g) for each year after the 20th year of the patent

51. Payment, where item 50 applies, of an additional fee for renewal under section 36(3) —

(a) not exceeding one month

(b) each succeeding month (but not exceeding 6 months)

52. Application to extend the term of a patent under section 36A

53. Filing one or more documents under section 26(7)(c) or (8) or 28(8)

Amount $ Corresponding Form

100 Patents Form 52

Patents Form 53

135

175

245

300

355

475

Patents Form 53

100

950 Patents Form 54

Nil Patents Form 56

81 S 81/2014

Matter

54. Filing a declaration under rule 9(2) or a request under rule 9(3)

55. Filing a request under rule 9A(2)

56. Notice of opposition —

(a) to an application under section 24

(b) to an amendment of a specification after grant

(d) to an application under section 54(1) or (3) for cancellation of an entry in the register

(e) to the correction of an error, clerical error or mistake

57. Using the services of a service bureau referred to in rule 96K to file any of the following by means of the electronic online system:

(a) Patents Form 10, 11, 12, 12B or 45A and any document accompanying that form

(b) any other form and any document accompanying that form

58. Purchasing of a copy of —

(a) Patents Journal A

Amount $ Corresponding Form

120 Patents Form 57

250 Patents Form 57

Patents Form 58

480

250

100

120 plus 0.50 for each page of document

40 plus 0.50 for each page of document

S 81/2014 82

Matter Amount $ Corresponding Form

(b) Patents Journal B 36

59. Request to appoint, change or 8.50 Form CM1 remove agent

60. Request to change the name, address and Singapore address for service of any agent, applicant, proprietor or other interested

13 Form CM2

person

61. Request to surrender a patent 30 Form CM3

62. Request for correction of an error in respect of a patent or an application for a patent, for —

Form CM4

(a) each correction of an error in the register or any connected document

(b) each correction of an error of translation or transcription, or of a clerical error or

mistake, in any document (other than the specification of a patent or the specification of an application for a patent) filed in connection with a patent or an application for a patent

120

mistake, in the specification of a patent or in the specification of an application for a patent

63. Application to register, amend or terminate a licence

60 Form CM6

64. Application to register, amend or terminate a security interest

50 Form CM7

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Matter

65. Application to register a transfer of ownership

66. Request for withdrawal of an application under section 27(1)

67. Request for file inspection

68. Application to record order of court

69. Request for a certified copy of an entry in the register or a certified extract from the register, or a request for a certified document relating to a patent or an application for a patent —

(a) where the certified copy, extract or document is in soft copy

(b) where the certified copy, extract or document is in hard copy

70. Notice of attendance at a hearing under rule 88A

71. Request to extract the Registrar’s certificate of taxation under rule 7

72. Request for extension of time under rule 108A

73. Request for ex parte hearing under rule 88

74. Request for grounds of decision for ex parte hearing under rule 88

75. Filing a counter-statement under rule 10(3), 11(3), 15(2A), 16(2A), 52(4), 65(3), 69(2A), 71(3) or (4), 74(3A), 76(4), 77(3), 78(2A), 80(3) or 91(7A)

Amount $

Nil

715

100

700

360

Corresponding Form

Form CM8

Form CM9

Form CM10

Form CM11

Form CM12

Form HC1

Form HC2

Form HC3

Form HC4

Form HC5

Form HC6

”.

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Deletion and substitution of Second Schedule

93. The Second Schedule to the Patents Rules is deleted and the following Schedule substituted therefor:

“SECOND SCHEDULE Rule 4(3)

DESCRIPTIONS OF FORMS

Form Description of Form

Certificate Form 1 Certificate of grant

Certificate Form 2 Certificate of extension of patent term

Patents Form 1 Request for grant of patent

Patents Form 2 Reference to Registrar on determination of entitlement to patent before or after grant

Patents Form 4 Application for authorisation by Registrar to carry out act on behalf of person to whom directions were given

Patents Form 5 Request for directions on handling of dispute between joint applicants

Patents Form 6 Reference to Registrar to determine question of licence

Patents Form 7 Application to add and/or remove inventors

Patents Form 8 Statement of inventorship and of right to grant of patent

Patents Form 9 Request for early publication

Patents Form 10 Request for search report or supplementary search report

Patents Form 11 Request for search and examination report

Patents Form 11A Furnishing of prescribed details (transitional)

Patents Form 11B Furnishing of prescribed information (transitional)

Patents Form 11C Notice of intention to rely on international preliminary report on patentability (transitional)

Patents Form 12 Request for examination report

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Form Description of Form

Patents Form 12A Request for supplementary examination report

Patents Form 12B Request for report of Examiner’s review

Patents Form 13 Request to amend application before grant

Patents Form 13A Response to written opinion

Patents Form 14 Payment of fee for grant of patent

Patents Form 15 Payment of renewal fee and any additional fee

Patents Form 17 Application to amend specification after grant

Patents Form 19 Application for restoration of patent

Patents Form 20 Payment of additional fee and renewal fee for restoration of patent

Patents Form 28 Application for entry to be made, or for cancellation of entry, in register to effect that licences under patent are to be available as of right

Patents Form 29 Application for settlement of terms of licence of right

Patents Form 32 Reference to Registrar of dispute as to infringement

Patents Form 33 Application for declaration of non- infringement

Patents Form 34 Application for information on corresponding applications for patent (transitional)

Patents Form 35 Application for revocation of patent

Patents Form 36 Request for re-examination of patent in response to direction of Registrar

Patents Form 37 Entry into national phase

Patents Form 38 Payment of fee for publication of translation of international application and/or any amendment to international application

S 81/2014 86

Form Description of Form

Patents Form 39 Application to Registrar for international application to be treated as application under Act

Patents Form 42 Payment of additional fee for advertisement of proposed correction

Patents Form 44 Request for information relating to patent or application for patent

Patents Form 45 Request for extension of time or period

Patents Form 45A Request for extension of periods for search and examination and fee for grant of patent

Patents Form 46 Request for extension of time or period (transitional)

Patents Form 47 Request for extension of time or period (transitional)

Patents Form 48 Payment of transmittal fee under Patent Co‑operation Treaty

Patents Form 49 Request for certificate authorising release of sample of micro-organism

Patents Form 50 Notice of intention to restrict availability of samples of micro-organisms to experts

Patents Form 52 Notice of objection to the release of sample of micro-organism to expert

Patents Form 53 Payment of renewal fee and any additional fee after entry is made in register to effect that licences under patent are to be available as of right

Patents Form 54 Application for extension of term of patent

Patents Form 56 Filing of drawing(s), description or part of description

Patents Form 57 Addition, correction or late declaration of priority

Patents Form 58 Notice of opposition

Form CM1 Request to appoint, change or remove agent

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Form Description of Form

Form CM2 Request to change name, address and Singapore address for service of agent, applicant, proprietor or other interested person

Form CM3 Request to surrender patent

Form CM4 Request for correction of error

Form CM6 Application to register, amend or terminate licence

Form CM7 Application to register, amend or terminate security interest

Form CM8 Application to register transfer of ownership

Form CM9 Request for withdrawal of application

Form CM10 Request for file inspection

Form CM11 Application to record order of court

Form CM12 Request for certified copy of entry in register or certified extract from register / Request for certified document relating to patent or application for patent

Form HC1 Notice of attendance at hearing

Form HC2 Request to extract Registrar’s certificate of taxation

Form HC3 Request for extension of time

Form HC4 Request for ex parte hearing

Form HC5 Request for grounds of decision for ex parte hearing

Form HC6 Counter‑statement ”.

Deletion and substitution of Third Schedule

94. The Third Schedule to the Patents Rules is deleted and the following Schedule substituted therefor:

S 81/2014 88

“THIRD SCHEDULE Rules 5 and 7

SCALE OF COSTS

First column

Item

Second column

Matter

Third column

Amount

Institution of proceedings

1 Drawing and filing notice of opposition or application for revocation together with statement of case

$300

2 Drawing and filing a counter- statement

$300

3 Preparing and filing evidence for a notice of opposition, an application for revocation or a counter- statement

$300-$1,600 per statutory declaration

4 Reviewing any document referred to in item 1, 2 or 3

$150-$800 per document

Interlocutory proceedings and case management conferences

5 Preparing for all interlocutory proceedings and case management conferences

$50-$500

6 Attending all interlocutory proceedings and case management conferences

$50-$500

Other hearings

7 Preparing for hearing $500-$2,000

8 Attendance at hearing $200-$800

Taxation

9 Drawing bill of costs $5 per folio

10 Attending taxation, and obtaining the Registrar’s certificate or order

$100-$300

”.

89 S 81/2014

Amendment of Fourth Schedule

95. The Fourth Schedule to the Patents Rules is amended —

(a) by deleting “(4)” in paragraph 2(3)(i) and substituting “(5)”;

(b) by deleting the words “Patents Form 51” in paragraph 3(4)(a) and (5) and substituting in each case the words “Patents Form 49”;

(c) by deleting the words “sends notice in writing to the Registrar that he objects to a sample of the micro-organism being made available to the expert and gives his reasons for his objection,” in paragraph 3(6) and substituting the words “files a notice of objection on Patents Form 52 and a statement setting out fully the reasons for his objection to the release of a sample of the micro-organism to an expert,”; and

(d) by inserting, immediately after sub‑paragraph (6) of paragraph 3, the following sub‑paragraph:

“(6A) The applicant for the patent shall, at the time the notice of objection and the statement are filed, serve on the requester a copy of the notice of objection and a copy of the statement.”.

Savings and transitional provisions

96.—(1) Subject to paragraphs (2) and (3), rules 3, 16(a), 17, 19(a), 20, 23(a), 24(a) and (b), 25 to 38, 39, 41, 66, 74, 84, 87, 89 and 95(a) (referred to in this paragraph and paragraphs (2) and (3) as the relevant provisions) shall not apply to any application for a patent that is filed before 14th February 2014, or to any patent granted pursuant to any such application, and rules 19(4), 22(1), 26A(1)(b), 27(1) and (1A), 33(1)(a), 34(2)(b), 36, 37, 38, 40, 41, 42, 42A, 43, 44, 45, 46, 47, 47A, 49, 51A, 80A, 92(1)(a), 100, 108 and 109 of, and paragraph 2(3)(i) of the Fourth Schedule to, the Patents Rules in force immediately before that date shall continue to apply to every such application for a patent and every such patent as if the relevant provisions had not been enacted.

(2) The relevant provisions shall apply to —

(a) every new application for a patent made, on or after 14th February 2014, under section 20(3) or 47(4) of the

S 81/2014 90

Patents Act which is treated as having been filed on a date that is before 14th February 2014, and to every patent granted pursuant to any such application; and

(b) every new application for a patent filed, on or after 14th February 2014, under section 26(11) of the Patents Act which is treated as having as its date of filing a date that is before 14th February 2014, and to every patent granted pursuant to any such application.

(3) The relevant provisions shall apply to every international application for a patent (Singapore) that enters the national phase in Singapore under section 86(3) of the Patents Act on or after 14th February 2014, and to every patent granted pursuant to any such application.

(4) Rule 4(a) shall not apply to any form filed before 14th February 2014, and rule 3(2) of the Patents Rules in force immediately before that date shall continue to apply to every such form as if rule 4(a) had not been enacted.

(5) Rules 5, 6, 7 and 94 shall not apply to any order for costs made by the Registrar before 14th February 2014, to any appeal brought in respect of any such order for costs, or to any bill of costs filed in respect of any such order for costs, and rules 5, 6 and 7 of, and the Third Schedule to, the Patents Rules in force immediately before that date shall continue to apply to every such order for costs, appeal and bill of costs as if rules 5, 6, 7 and 94 had not been enacted.

(6) Rule 10(c) shall apply to every counter-statement filed on or after 14th February 2014 in relation to any reference under section 20(1)(a) of the Patents Act, regardless of whether that reference was made before, on or after that date.

(7) Rule 10(d) shall apply to every reference under section 20(1)(a) of the Patents Act, whether made before, on or after 14th February 2014.

(8) Rule 11(b) shall apply to every counter-statement filed on or after 14th February 2014 in relation to any reference under section 20(1)(b) of the Patents Act, regardless of whether that reference was made before, on or after that date.

91 S 81/2014

(9) Rule 11(c) shall apply to every reference under section 20(1)(b) of the Patents Act, whether made before, on or after 14th February 2014.

(10) Rule 12(c) shall apply to every application under section 20(5) of the Patents Act, whether made before, on or after 14th February 2014.

(11) Rule 13(b) shall apply to every counter-statement filed on or after 14th February 2014 in relation to any request under section 22 of the Patents Act, regardless of whether that request was made before, on or after that date.

(12) Rule 13(c) shall apply to every request under section 22 of the Patents Act, whether made before, on or after 14th February 2014.

(13) Rule 14(b) shall apply to every counter-statement filed on or after 14th February 2014 in relation to any question referred to the Registrar under section 23(5) of the Patents Act, regardless of whether that reference was made before, on or after that date.

(14) Rule 14(c) shall apply to every question referred to the Registrar under section 23(5) of the Patents Act, regardless of whether that reference was made before, on or after 14th February 2014.

(15) Rule 15(a) shall apply to every recipient of an application under section 24(1) or (3) of the Patents Act who opposes that application on or after 14th February 2014, regardless of whether that application was made before, on or after that date.

(16) Rule 15(b) shall apply to every application under section 24(1) or (3) of the Patents Act, whether made before, on or after 14th February 2014.

(17) Rule 16(c) shall not apply to any request made before 14th February 2014 for the withdrawal of an application for a patent.

(18) Rule 42 shall apply to every application to the Registrar under rule 52(1) of the Patents Rules for leave to amend the specification of a patent, regardless of whether the application was made before, on or after 14th February 2014.

(19) Rule 44(a) shall not apply to any patent that lapsed before 14th February 2014, and rule 53(1)(a) of the Patents Rules in force

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immediately before that date shall continue to apply to every such patent as if rule 44(a) had not been enacted.

(20) Rule 46 shall not apply to any notice given before 14th February 2014 by a person to the Registrar of the person’s opposition to the surrender of a patent under section 40 of the Patents Act, and rule 54 of the Patents Rules in force immediately before that date shall continue to apply to every such notice as if rule 46 had not been enacted.

(21) Rules 43 and 47 shall not apply to any request made before 14th February 2014 for a search and examination report in respect of any claim or claims in the specification of a patent, and rules 52A and 55(3)(gc) of the Patents Rules in force immediately before that date shall continue to apply to every such request as if rules 43 and 47 had not been enacted.

(22) Rule 49 shall not apply to an application, made before 14th February 2014, to register, or to give notice to the Registrar of, any transaction, instrument or event to which section 43 of the Patents Act applies, and rule 57 of the Patents Rules in force immediately before that date shall continue to apply to every such application as if rule 49 had not been enacted.

(23) Rule 54(c) shall apply to every counter-statement filed on or after 14th February 2014 in relation to any reference under section 47(1) of the Patents Act, regardless of whether that reference was made before, on or after that date.

(24) Rule 54(d) shall apply to every reference under section 47(1) of the Patents Act, whether made before, on or after 14th February 2014.

(25) Rule 55(c) shall apply to every application under section 47(3) of the Patents Act, whether made before, on or after 14th February 2014.

(26) Rule 56(b) shall apply to every counter-statement filed on or after 14th February 2014 in relation to any question referred to the Registrar under section 48(5) of the Patents Act, regardless of whether that reference was made before, on or after that date.

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(27) Rule 56(c) shall apply to every question referred to the Registrar under section 48(5) of the Patents Act, regardless of whether that reference was made before, on or after 14th February 2014.

(28) Rule 57(a) shall apply to every counter-statement, and every statement setting out grounds of objection, that is filed on or after 14th February 2014 in relation to any application under section 53(3)(a) or (b) of the Patents Act, regardless of whether that application was made before, on or after that date.

(29) Rule 57(b) shall apply to every application under section 53(3)(a) or (b) of the Patents Act, regardless of whether that application was made before, on or after 14th February 2014.

(30) Rule 60(a) and (b) shall apply to every notice of opposition, and every counter-statement, that is filed on or after 14th February 2014 in relation to any application under section 54(1) or (3) of the Patents Act, regardless of whether that application was made before, on or after that date.

(31) Rule 60(c) shall apply to every application under section 54(1) or (3) of the Patents Act, regardless of whether that application was made before, on or after 14th February 2014.

(32) Rule 62(a) shall apply to every counter-statement filed on or after 14th February 2014 in relation to any reference under section 67(3) of the Patents Act, regardless of whether that reference was made before, on or after that date.

(33) Rule 62(b) shall apply to every reference under section 67(3) of the Patents Act, whether made before, on or after 14th February 2014.

(34) Rule 63(a) shall apply to every counter-statement filed on or after 14th February 2014 in relation to any reference under section 67(3) of the Patents Act where the only matter stated to be in dispute is the validity of any patent or part of a patent, regardless of whether that reference was made before, on or after that date.

(35) Rule 63(b) shall apply to every reference under section 67(3) of the Patents Act where the only matter stated to be in dispute is the validity of any patent or part of a patent, whether that reference is made before, on or after 14th February 2014.

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(36) Rule 64(b) shall apply to every counter-statement filed on or after 14th February 2014 in relation to any application under section 78 of the Patents Act, regardless of whether that application was made before, on or after that date.

(37) Rule 64(c) shall apply to every application under section 78 of the Patents Act, whether made before, on or after 14th February 2014.

(38) Rule 65(b) shall apply to every counter-statement filed on or after 14th February 2014 in relation to any application for the revocation of a patent, regardless of whether that application was made before, on or after that date.

(39) Rule 65(c) shall apply to every application for the revocation of a patent, whether made before, on or after 14th February 2014.

(40) Rule 67(d) shall apply to every opposition to an amendment under section 83 of the Patents Act, whether the notice of opposition is filed before, on or after 14th February 2014.

(41) Rule 88(1), (3), (4) and (5) of the Patents Rules in force on 14th February 2014 shall not apply to any request made before that date for the exercise of the discretionary powers of the Registrar under rule 87 of the Patents Rules, and rule 88(1) of the Patents Rules in force immediately before that date shall continue to apply to every such request as if rule 69(a) and (b) had not been enacted.

(42) Except as provided in paragraph (41), rule 69(c) shall apply to every request for the exercise of the discretionary powers of the Registrar under rule 87 of the Patents Rules, whether that request was made before, on or after 14th February 2014.

(43) Rule 70(a) shall not apply to any inter partes proceedings under rule 54 of the Patents Rules in force immediately before 14th February 2014, and rule 88A(1) of the Patents Rules shall apply to those proceedings as if rule 70(a) had not been enacted.

(44) Rule 70(c) and (d) shall apply to —

(a) all inter partes proceedings under rule 10, 11, 12, 14, 15, 16, 17, 52, 65, 66, 69, 71, 74, 76, 77, 78, 80, 85 or 91 of the Patents Rules, whether commenced before, on or after 14th February 2014; and

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(b) any inter partes proceedings under rule 54 of the Patents Rules in force immediately before 14th February 2014.

(45) Rule 73(a), (b), (c) and (i) shall not apply to any request made, before 14th February 2014, under rule 91(1) of the Patents Rules, and rule 91(1) and (1A) of the Patents Rules in force immediately before that date shall continue to apply to every such request as if rule 73(a), (b), (c) and (i) had not been enacted.

(46) Rule 73(e) and (f) shall apply to every notice of opposition, and every counter-statement, that is filed on or after 14th February 2014 in relation to any request under rule 91(1) of the Patents Rules, regardless of whether that request was made before, on or after that date.

(47) Rule 73(g) shall apply to every request under rule 91(1) of the Patents Rules, and every opposition to any such request, whether that request was made before, on or after 14th February 2014.

(48) Rule 73(h) shall apply to every pending request under rule 91(1) of the Patents Rules, whether made before, on or after 14th February 2014.

[G.N. Nos. S 501/2009; S 730/2010; S 586/2011; S 210/2013]

Made this 11th day of February 2014.

BEH SWAN GIN Permanent Secretary,

Ministry of Law, Singapore.

[LAW 06/011/012; AG/LLRD/SL/221/2010/1 Vol. 5]

Patents (Amendment) Rules 2014, Singapore

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