Patents Rules (Revised Edition 2007, amended up the Patents (Amendment No. 2) Rules 2017), Singapore, WIPO Lex

Main text(s)

English Patents Rules (Revised Edition 2007, amended up the Patents (Amendment No. 2) Rules 2017)

Patents Rules (Revised Edition 2007, as amended up the Patents (Amendment No. 2) Rules 2017)

CAP. 221, R 1] Patents Rules [2007 Ed. p. 1

PATENTS ACT (CHAPTER 221, SECTIONS 42, 110 AND 115)

PATENTS RULES

ARRANGEMENT OF RULES

PRELIMINARY

Rule

1. Citation 2. Definitions 2A. Definitions of examination, search and supplementary

examination in Act 3. Fees 4. Forms 5. Costs 6. Taxation of costs 7. Taxation proceedings 8. Written evidence in support of circumstances in section 14(4),

etc. 9. Declaration of priority for purposes of section 17(2) 9A. Request to Registrar for permission to make late declaration

under section 17(2B) 9B. Furnishing of application or file number and of priority

documents to support declaration under section 17(2) 9C. Translation of priority documents

RIGHT TO APPLY FOR AND OBTAIN A PATENT

10. References under section 20(1)(a) 11. References by co-proprietors under section 20(1)(b) 12. Orders under section 20 13. Prescribed period for new application under section 20(3) 14. Authorisation under section 20(5) 15. Request by joint applicants under section 22 16. Reference to Registrar under section 23

INVENTORS

17. Mention of inventor 18. Procedure where applicant is not inventor or sole inventor

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APPLICATIONS FOR PATENTS

Rule

19. Application for grant of patent 20. Micro-organisms 21. Drawings 22. Abstracts 23. Size and presentation of documents 24. Form of statements, counter-statements and evidence 25. Unity of invention 26. Certain matters prescribed under section 26 26A. Missing parts 27. New applications under section 26(11) 28. Extension of period for filing new applications 29. Publication of applications 30. Completion of preparations for publication

PROCEDURE FOR GRANT

31. Address for service 32. [Deleted] 33. Formal requirements 34. Preliminary examination 35. [Deleted] 36. Request for search report 37. Request for search and examination report 38. Period for filing request for search report 39. [Deleted] 40. Minimum documentation for search 41. Prescribed patent offices 42. Request for examination report 42A. Request for supplementary examination report 43. Period for filing request for search and examination report,

request for examination report or request for supplementary examination report, etc.

44. [Deleted] 45. Search procedure where 2 or more inventions claimed 46. Written opinion of Examiner, etc. 46A. Review of examination report, etc. 47. Putting application in order 47A. [Deleted] 48. Application for amendment before grant

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Rule

49. Time for making amendments before grant 50. Certificate of grant

PATENTS AFTER GRANT

51. Renewal of patents 51A. Extension of term of patent 52. Amendment of specification after grant 52A. [Deleted] 53. Restoration of lapsed patent 53A. [Deleted] 54. Surrender of patents

55. Register of patents 56. Alteration or correction of name or address 57. Application for registration of transaction, etc. 58. Request for correction of errors 59. Inspection of register, etc. 60. [Deleted] 61. Advertisement of matters contained in register 62. Entries in respect of right to a patent 63. Certificates and copies supplied by Registrar 64. Orders or directions by court

ENTITLEMENT TO PATENT

65. Reference to Registrar of right to patent 66. Application for authorisation to carry out directions 67. Time limits for making new application 68. Request for licence to continue working new patent 69. Reference as to entitlement to grant of licence

LICENCES OF RIGHT

70. Entry in register of licence of right 71. Settlement of terms of licence of right 72. Cancellation of entry in register as to licence of right by

proprietor 73. Cancellation of entry in register as to licence of right by third

party

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Rule

74. Procedure as to cancellation of entry in register as to licence of right

75. Action by Registrar on cancellation in register as to licence of right

INFRINGEMENT OF PATENTS

75A. Particulars prescribed under section 66(4)

INFRINGEMENT PROCEEDINGS BEFORE REGISTRAR

76. Reference to Registrar for determination of infringement 77. Procedure where validity of patent is in dispute 78. Application for declaration as to non-infringement

REVOCATION OF PATENTS

79. [Deleted] 80. Procedure on application for revocation 80A. Material information prescribed under section 80(1)(f)(iii) 81. Procedure relating to preparation of re-examination report 82. Copies and conclusions of re-examination report 83. Award of costs on surrender of patent 84. Notification of an opportunity to amend

AMENDMENT OF PATENTS IN INFRINGEMENT OR REVOCATION PROCEEDINGS

85. Procedure as to opposition to amendment

NATIONAL PROCESSING OF INTERNATIONAL APPLICATIONS

86. Treatment of international applications

HEARINGS, AGENTS AND CORRECTION OF ERRORS

87. Registrar’s discretionary powers 88. Request for hearing 88A. Hearing and notice of attendance at hearing 88B. Case management conference 89. Hearings in public 90. Right of audience 91. Correction of errors in patents and applications

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INFORMATION AND INSPECTION

Rule

92. Information about patents and patent applications 93. Inspection of documents 94. Confidential documents 95. Publication of bibliographic information 96. Request for information on unpublished patent applications

ELECTRONIC ONLINE SYSTEM

96A. Establishment of electronic online system 96B. Documents to be signed, made on oath, etc. 96C. [Deleted] 96D. [Deleted] 96E. [Deleted] 96F. [Deleted] 96G. [Deleted] 96H. Use of electronic online system to be in accordance with these

Rules, etc. 96I. [Deleted] 96J. [Deleted] 96K. Service bureau

MISCELLANEOUS

97. Service of documents 98. Hours of business and excluded days 99. [Deleted] 100. Correction of irregularities 101. Dispensation by Registrar 102. Filing of evidence 103. Statutory declarations and affidavits 104. Admission of documents 105. Directions as to furnishing of documents 105A. [Deleted] 106. Supporting statements or evidence 107. Appointment of scientific advisers by Registrar 108. Extension of time limits in general 108A. Extension of time limits for proceedings before Registrar 109. Protection and compensation of persons affected by extension of

time 110. Calculation of times or periods

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Rule

111. Copies of documents 112. Translations 113. Publication and sale of documents 114. Journal 115. Reports of cases

INTERNATIONAL APPLICATIONS

116. Filing of international applications 117. Fees for international applications 118. Certified copies 119. Fee currency 120. Modified application of Act and Rules to United Kingdom and

European Patent Office applications Fifth Schedule— [Repealed] Eighth Schedule The Schedules

[23rd February 1995]

PRELIMINARY

Citation

1. These Rules may be cited as the Patents Rules.

Definitions

2.—(1) In these Rules, unless the context otherwise requires —

[Deleted by S 81/2014 wef 14/02/2014]

“certificate of grant” means a certificate for the purposes of section 35(1);

[Deleted by S 81/2014 wef 14/02/2014]

“convention country” has the same meaning as in section 17(6);

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“costs” includes fees, charges, disbursements, expenses, allowances and remuneration;

“declared priority date” means —

(a) the date of filing of the earliest relevant application specified in a declaration made for the purposes of section 17(2) where the priority date claimed in the declaration has not been lost or abandoned and where the declaration has not been withdrawn before preparations for the publication of the application in suit have been completed by the Registry in accordance with section 27; or

(b) where an international application for a patent (Singapore) is to be treated as an application for a patent under the Act, the date of filing of the earliest application filed in or for a country which is a convention country or which, in accordance with the law of a convention country or a treaty or international convention to which a convention country is a party, is equivalent to such an application, the priority of which is claimed in a declaration filed for the purposes of Article 8 of the Patent Co-operation Treaty, provided that such priority claim has not been lost or abandoned under the provisions of that Treaty;

“electronic online system” means the electronic online system established under rule 96A;

[Deleted by S 81/2014 wef 14/02/2014]

“initiation date”, in relation to a new application for a patent, means the date on which the application was initiated by the filing at the Registry of any document which satisfies any condition referred to in section 26(1)(a), (b) or (c);

[Deleted by S 81/2014 wef 14/02/2014]

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“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.

[S 81/2014 wef 14/02/2014]

(2) In these Rules, except where otherwise indicated —

(a) references to a section are references to that section of the Act;

(b) references to a rule are references to that rule in these Rules;

(d) references to the filing of a form or other document are references to filing it at the Registry.

(3) [Deleted by S 210/2013 wef 08/04/2013]

Definitions of “examination”, “search” and “supplementary examination” in Act

2A.—(1) For the purposes of the definition of “examination” in section 2(1), the matters to be determined by an Examiner when conducting an examination in relation to an application for a patent are —

(a) whether, taking into consideration all the relevant prior art, if any, that the Examiner is aware of or that has been discovered in a search —

(i) the invention defined in each claim of the specification of the application satisfies each condition or requirement for patentability under section 13;

[S 573/2017 wef 30/10/2017]

(ii) the conditions specified in section 25(4) and (5) have been complied with;

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(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

(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;

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(b) whether, at the time the prescribed documents referred to in section 29(1)(d) are filed, each claim in the application in suit is related to at least one claim which —

(i) is set out in the prescribed documents relating to the corresponding application, corresponding international application or related national phase application referred to in section 29(1)(d), or to the application in suit during its international phase; and

(ii) has been examined to determine whether the claim appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility);

(ba) whether the invention defined in each claim of the specification of the application constitutes an invention;

[S 573/2017 wef 30/10/2017]

(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).

[S 81/2014 wef 14/02/2014]

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Fees

3.—(1) The fees to be paid in respect of matters arising under the Act or these Rules shall be those specified in the First Schedule.

(2) Unless otherwise provided for in these Rules, or the Registrar permits or directs otherwise —

(a) where a fee is specified in the First Schedule in respect of any matter, the fee shall be paid at the same time as the filing of the form corresponding to the matter; and

(b) if the fee is not paid, the form shall not be treated as filed. [S 81/2014 wef 14/02/2014]

(3) Unless the Registrar permits or directs otherwise, payment of a fee in connection with an act referred to in rule 96A(2)(a) shall be made using any mode of payment designated by the electronic online system if the act is carried out using that system.

[S 81/2014 wef 14/02/2014]

[S 739/2014 wef 13/11/2014]

Forms

4.—(1) The Registrar shall publish at the Office’s Internet website at http://www.ipos.gov.sg —

(a) the forms to be used for any purpose relating to —

(i) any application for or grant of a patent;

(ii) any proceedings before the Registrar under the Act or these Rules; or

(iii) any other matter under the Act or these Rules;

(b) the Registrar’s directions relating to the use of any form; and

[S 739/2014 wef 13/11/2014]

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(2) Any form may be modified on the direction of the Registrar —

(a) for use in a case other than the case for which it is intended; or

(b) for carrying out any transaction by means of the electronic online system.

(3) Any reference in these Rules to a numbered form shall be construed as a reference to the current version of the form bearing the corresponding number which is —

(a) described in the Second Schedule; and

(b) published at the Internet website referred to in paragraph (1).

[S 739/2014 wef 13/11/2014]

(4) The matters referred to in the Act, including sections 17(2D), 25(1) and (9), 26(8), 27(1), 28(4) and (8), 29(9), 29B(2), 31(1), 36A(10), 42(8), 80(9) and 108(1), of the Act, shall be filed with, made to or given to, the Registrar, or done in an effective and efficient manner by means which may be specified by the Registrar by the issuance of practice directions.

[S 739/2014 wef 13/11/2014]

Costs

5. The Registrar may make an order for costs in respect of —

(a) any of the matters set out in the second column of the Third Schedule; and

[S 81/2014 wef 14/02/2014]

(b) the expenses and allowances of a person in relation to proceedings under the Act or these Rules.

Taxation of costs

6.—(1) Where the Registrar has made an order for costs in favour of a party to proceedings before the Registrar and the party wishes to have party and party costs taxed by the Registrar, the party shall, within one month after the relevant date referred to in paragraph (1A) —

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(a) apply for the costs to be taxed by filing a copy of the bill of costs; and

(b) send at the same time a copy of the bill of costs to every other person entitled to be heard in the taxation proceedings.

[S 81/2014 wef 14/02/2014]

(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.

[S 81/2014 wef 14/02/2014]

(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

(3) The costs claimed under paragraph (2)(a), (b) and (c) shall set out the sum claimed for each item.

[S 81/2014 wef 14/02/2014]

(4) The bill of costs shall set out in chronological order, with dates, all relevant events in the cause or matter, all relevant events in the taxation of costs, and all relevant events relating to the making of disbursements.

[S 81/2014 wef 14/02/2014]

(5) Where costs have already been awarded for any of the events set out, this fact and the amount awarded shall be indicated.

(6) Any party on whom a copy of the bill of costs has been served in accordance with paragraph (1) shall, if he wishes to dispute the bill, within one month after the receipt of the copy of the bill, mark the copy thereof in accordance with paragraph (7) and send a copy thereof

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duly marked to both the Registrar and the party requesting for taxation.

[S 81/2014 wef 14/02/2014]

(7) A party on whom a copy of the bill of costs has been served shall effect marking on the copy thereof served by writing on the right hand margin against each item the word “Agree” if he agrees with the cost claimed for that item or the word “Disagree” if he disagrees.

(8) Upon the expiry of the period of time referred to in paragraph (6), the Registrar shall give to the parties entitled to be heard in the taxation proceedings notice of the date and time appointed for taxation.

Taxation proceedings

7.—(1) If any party entitled to be heard in any taxation proceedings before the Registrar does not attend at the time appointed for the taxation, the Registrar may proceed with the taxation.

(2) The Registrar may, if he thinks it is necessary to do so, adjourn the proceedings from time to time.

(3) The provisions in the Third Schedule shall apply to the sections of the bill of costs relating to —

(a) work done in the cause or matter (other than for or in the taxation of costs); and

(b) work done for or in the taxation of costs. [S 81/2014 wef 14/02/2014]

(4) When the bill has been taxed, the party who applied for the costs to be taxed shall file Form HC2, and the Registrar shall proceed to make his certificate for the amount of the taxed costs.

[S 81/2014 wef 14/02/2014]

(5) Costs awarded in proceedings before the Registrar are not intended to compensate the parties for the expense to which they have been put.

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Written evidence in support of circumstances in section 14(4), etc.

8.—(1) The written evidence filed under section 14(5C) by an applicant for a patent must comply with the following requirements:

(a) the written evidence must be by statutory declaration or affidavit, and must enclose all supporting documents;

(b) where the applicant relies on the circumstances described in section 14(4)(c), the written evidence must —

(i) state that the invention to which the applicant’s application relates was in fact displayed at an international exhibition;

(ii) state the opening date of the exhibition and, where the first disclosure of the invention did not take place on that date, the date of the first disclosure; and

(iii) enclose one or more supporting documents identifying the invention that was displayed at the exhibition;

(c) where the applicant claims that the publication by a foreign intellectual property office of an application for an intellectual property right (being an application containing matter constituting the invention to which the applicant’s application relates), or a registration of an intellectual property right pursuant to such an application, was erroneous for a reason mentioned in section 14(5A)(b) or (5B)(b), the written evidence must enclose an acknowledgment from the foreign intellectual property office —

(i) stating that the publication was erroneous and the reason for the publication being erroneous; and

(ii) if section 14(5B)(b) applies, stating the earliest date on which the publication ought to have been made under the law or treaty governing the application.

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(2) For the purposes of section 2(2), a statement may be published in the journal that an exhibition described in the statement falls within the definition of “international exhibition” in section 2(1).

(3) In this rule, “foreign intellectual property office” has the same meaning as in section 14(8).

[S 573/2017 wef 30/10/2017]

Declaration of priority for purposes of section 17(2)

9.—(1) Subject to paragraph (2), a declaration for the purposes of section 17(2) made in or in connection with an application for a patent (referred to in this rule and rules 9A and 9B as the application in suit) shall be made at the time of filing the application in suit.

(2) A declaration for the purposes of section 17(2) may be made after the date of filing if —

(a) it would cause —

(i) the application in suit to have a declared priority date, where there was none previously; or

(ii) the declared priority date of the application in suit to be brought forward to an earlier date;

(b) it is made within 16 months from —

(i) where sub‑paragraph (a)(i) applies, the declared priority date; or

(ii) where sub‑paragraph (a)(ii) applies, the earlier date;

(d) the prescribed fee has been paid; and

(e) the condition referred to in paragraph (4) is satisfied.

(3) Where a request to the Registrar to correct a mistake in a declaration for the purposes of section 17(2) would, if granted, cause the declared priority date to be changed to a different date, the request shall not be granted unless —

(a) it is made within 16 months from the declared priority date, as changed;

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(b) it is made on Patents Form 57;

(d) the condition referred to in paragraph (4) is satisfied.

(4) For the purposes of paragraphs (2)(e) and (3)(d), the condition is that —

(a) the applicant has not made any request under section 27(2) to publish the application in suit during the period prescribed for the purposes of section 27; or

(b) any such request has been withdrawn.

(5) Subject to paragraph (6), a declaration for the purposes of section 17(2) shall specify, in respect of each priority application —

(a) the date of filing of the priority application; and

(b) the country in or for which the priority application was made.

(6) Where the application in suit is an international application for a patent (Singapore), paragraph (5) shall not apply in respect of a priority application if —

(a) the date of filing of that priority application; and

(b) the country in or for which that priority application was made,

have been indicated in compliance with rule 4.10(a) and (b) of the Regulations under the Patent Co-operation Treaty.

(7) Where section 26(11) applies, a declaration for the purposes of section 17(2) shall not be made in or in connection with a new application referred to in section 26(11) if the declaration has not also been made in or in connection with the earlier application.

(8) In this rule and rules 9B and 9C —

“priority application” means an earlier relevant application specified in a declaration for the purposes of section 17(2);

“relevant application” has the same meaning as in section 17(5).

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Request to Registrar for permission to make late declaration under section 17(2B)

9A.—(1) The period prescribed for the purposes of section 17(2A)(b) shall be 2 months.

(2) For the purposes of section 17(2D)(a), a request under section 17(2B) shall —

(a) subject to rule 86(3A), be made before the end of the period referred to in section 17(2A)(b);

(b) be made on Patents Form 57;

(d) if the applicant failed to file the application in suit within the period referred to in section 17(2A)(a), state the reason for the failure to file the application in suit within that period; and

(e) be made only if —

(i) the request relates to an international application for a patent (Singapore); or

(ii) where the request does not relate to an international application for a patent (Singapore), the condition referred to in paragraph (3) is satisfied.

(3) For the purposes of paragraph (2)(e)(ii), the condition is that —

(a) the applicant has not made any request under section 27(2) to publish the application in suit during the period prescribed for the purposes of section 27; or

(b) any such request has been withdrawn.

(4) Where the Registrar determines that every applicable condition referred to in section 17(2D) for granting a request under section 17(2B) has been satisfied, the Registrar shall grant the request and notify the applicant accordingly.

(5) Where the condition referred to in section 17(2D)(b) for granting a request under section 17(2B) has not been satisfied, the Registrar

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shall notify the applicant that the Registrar intends to refuse the request unless —

(a) observations are made or evidence is filed, within 2 months from the date of the notification, to satisfy the Registrar that the applicant’s failure to file the application in suit within the period referred to in section 17(2A)(a) —

(i) occurred in spite of due care required by the circumstances having been taken; or

(ii) was unintentional; and

(b) the Registrar is so satisfied on the observations made or evidence filed.

(6) Where paragraph (5) applies, the Registrar shall refuse the request under section 17(2B), and shall inform the applicant accordingly, if —

(a) the applicant fails to make the observations or file the evidence within 2 months from the date of the Registrar’s notification; or

(b) the Registrar is not satisfied, on all the observations made and evidence filed, that the applicant’s failure to file the application in suit within the period referred to in section 17(2A)(a) —

(i) occurred in spite of due care required by the circumstances having been taken; or

(ii) was unintentional.

Furnishing of application or file number and of priority documents to support declaration under section 17(2)

9B.—(1) Subject to paragraph (3), the applicant shall, before the end of the period of 16 months from the declared priority date, furnish to the Registry the application or file number of each priority application.

(2) Subject to paragraph (3), if the applicant fails to comply with paragraph (1) in respect of any priority application, the declaration for

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the purposes of section 17 (2) shall be disregarded in so far as it relates to that priority application.

(3) Where the application in suit is an international application for a patent (Singapore), paragraphs (1) and (2) shall not apply in respect of any priority application the application or file number of which has been indicated in compliance with rule 4.10(a) of the Regulations under the Patent Co-operation Treaty.

(4) Where the Registrar, by notice sent to the applicant or proprietor, as the case may be, requires him to furnish to the Registry, in respect of any priority application, a copy of that priority application which is —

(a) duly certified by the authority with which it was filed; or

(b) otherwise acceptable to the Registrar,

the applicant or proprietor, as the case may be, shall, within 2 months from the date of the notice —

(i) comply with the Registrar’s requirement; or

(ii) if a copy of that priority application is kept at the Registry, as an alternative to complying with the Registrar’s requirement, file —

(A) a request that a copy of that priority application be prepared; and

(B) Form CM12 requesting the Registrar to certify the prepared copy.

[S 81/2014 wef 14/02/2014]

(5) If the applicant or proprietor, as the case may be, fails to comply with paragraph (4) in respect of any priority application, the declaration for the purposes of section 17(2) shall be disregarded in so far as it relates to that priority application.

Translation of priority documents

9C.—(1) Where —

(a) a copy of any priority application is furnished under rule 9B(4);

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(b) that priority application is in a language other than English;

(d) the Registrar, by notice sent to the applicant or proprietor, as the case may be, requires him to furnish to the Registry an English translation of that priority application,

the applicant or proprietor, as the case may be, shall, within 2 months from the date of the notice —

(i) furnish to the Registry both of the following at the same time:

(A) an English translation of that priority application;

(B) a copy of a verification document —

(BA) made in accordance with the Registrar’s requirements; and

(BB) verifying that the translation corresponds to the original text of that priority application; or

(ii) if an English translation of that priority application is kept at the Registry, as an alternative to complying with the Registrar’s requirement, file —

(A) a request that a copy of the translation be prepared; and

(B) Form CM12 requesting the Registrar to certify the prepared copy.

[S 81/2014 wef 14/02/2014]

(2) The Registrar may, by notice, require to be filed at the Registry or sent to the Registrar, within such period as may be specified in the notice, the original of the verification document.

(3) If the applicant or proprietor, as the case may be, fails to comply with —

(a) paragraph (1) in respect of any priority application; or

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(b) the Registrar’s requirement under paragraph (2) in respect of any verification document relating to any priority application,

the declaration for the purposes of section 17(2) shall be disregarded in so far as it relates to that priority application.

RIGHT TO APPLY FOR AND OBTAIN A PATENT

References under section 20(1)(a)

10.—(1) A reference under section 20(1)(a) shall be made on Patents Form 2 and shall be accompanied by a statement setting out fully the nature of the question, the facts upon which the person making the reference relies and the order or other relief which he is seeking.

[S 81/2014 wef 14/02/2014]

(2) The Registrar shall send a copy of the reference and statement to —

(a) any person (other than the person referred to in paragraph (1)) alleged in the reference to be entitled to be granted a patent for the invention;

(b) any person (not being a party to the reference) who is shown in the register as having a right in or under the patent application;

(c) any person (not being a party to the reference) who is an applicant for the patent or has given notice to the Registrar of a relevant transaction, instrument or event; and

(d) every person who has been identified in the application for a patent or a statement filed under section 24(2)(a) as being, or being believed to be, the inventor or joint inventor of the invention.

(3) If any person who is sent a copy of the reference and statement under paragraph (2) wishes to oppose the making of the order or the granting of the relief sought, he shall, within 2 months from the date of the Registrar’s letter forwarding such copies, file a counter-statement on Form HC6 setting out fully the grounds of his opposition and the

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Registrar shall send a copy of the counter-statement to the person making the reference and to those recipients of the copy of the reference and statement who are not party to the counter-statement.

[S 81/2014 wef 14/02/2014]

(4) The person making the reference or any such recipient may, within 2 months from the date of the Registrar’s letter forwarding a copy of the counter-statement, file evidence in support of his case and shall send a copy of the evidence —

(a) in any case, to the opponent; and

(b) in the case of evidence filed by such a recipient, to the person making the reference.

(5) Within 2 months from the date of the Registrar’s letter forwarding the copy of such evidence to him or, if no such evidence is filed, within 2 months from the expiration of the period within which the copy of such evidence could have been filed, the opponent may file evidence in support of his case and shall send a copy of the evidence so filed to the person making the reference and those recipients; and, within 2 months from the date of receipt of the copy of the opponent’s evidence, that person or any of those recipients may file further evidence confined to matters strictly in reply and shall send a copy of it to the persons mentioned in paragraph (4)(a) and (b).

(6) No further evidence shall be filed except by leave or direction of the Registrar.

(7) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the reference.

[S 81/2014 wef 14/02/2014]

References by co-proprietors under section 20(1)(b)

11.—(1) A reference under section 20(1)(b) shall be made on Patents Form 2 and shall be accompanied by a statement setting out fully the nature of the question, the facts relied upon by the co- proprietor making the reference and the order he is seeking.

[S 81/2014 wef 14/02/2014]

(2) The Registrar shall send a copy of the reference and statement to —

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(a) each co-proprietor who is not a party to the reference and who has not otherwise indicated, in writing, his consent to the making of the order sought;

(b) any person to whom it is alleged in the reference that any right in or under an application for a patent should be transferred or granted;

(c) any person (not being a party to the reference) who is shown in the register as having a right in or under the patent application;

(d) any person (not being a party to the reference) who has given notice to the Registrar of a relevant transaction, instrument or event; and

(e) every person who has been identified in the application for the patent or a statement filed under section 24(2)(a) as being, or being believed to be, the inventor or joint inventor of the invention.

(3) Any person who receives a copy of the reference and statement and who wishes to oppose the order sought may, within 2 months from the date of the Registrar’s letter forwarding copies of the reference and statement, file a counter-statement on Form HC6 setting out fully the grounds of his opposition.

[S 81/2014 wef 14/02/2014]

(4) The Registrar shall, as appropriate, send a copy of any counter- statement to —

(a) each co-proprietor who is a party to the reference; and

(b) any person to whom a copy of the reference and statement were sent pursuant to paragraph (2).

(5) Any person who receives a copy of the counter-statement may, within 2 months from the date of the Registrar’s letter forwarding such copy, file evidence in support of his case and shall send a copy of the evidence so filed to the co-proprietor making the reference and to each person who has filed a counter-statement.

(6) Any person entitled to receive a copy of the evidence filed under paragraph (5) may, within 2 months from the date of receipt of the

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copy of such evidence or, if no such evidence is filed, within 2 months from the expiration of the period within which it could have been filed, file evidence in support of his case and shall send a copy of the evidence so filed to each of the other parties listed in paragraph (4).

(7) Any person who receives a copy of the evidence filed under paragraph (6) may, within 2 months from the date of receipt of the copy of such evidence, file further evidence confined to matters strictly in reply and shall, as appropriate, send a copy of the evidence so filed to the parties listed in paragraph (4).

(8) No further evidence shall be filed by any party except by leave or direction of the Registrar.

(9) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the reference.

[S 81/2014 wef 14/02/2014]

Orders under section 20

12.—(1) Where an order is made under section 20 that an application for a patent shall proceed in the name of one or more persons none of whom was an original applicant, the Registrar shall notify all original applicants and their licensees, of whom he is aware, of the making of the order.

(2) A person notified under paragraph (1) may make a request under section 23(3) within 2 months from the date of the notification received from the Registrar.

Prescribed period for new application under section 20(3)

13. The prescribed period for the purpose of subsection (3) of section 20 shall be 3 months from the day on which the time for appealing from an order made under that subsection expires without an appeal being brought or, where an appeal is brought, from the day on which it is finally disposed of.

Authorisation under section 20(5)

14.—(1) An application under section 20(5) for authority to do anything on behalf of a person to whom directions have been given under section 20(2)(d) or (4) shall be made in writing and shall be

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accompanied by a statement setting out fully all the facts upon which the applicant relies and the nature of the authorisation sought.

[S 81/2014 wef 14/02/2014]

[S 739/2014 wef 13/11/2014]

(2) The applicant shall, at the time the application and the statement are filed, serve on the person alleged to have failed to comply with the directions a copy of the application and a copy of the statement.

[S 81/2014 wef 14/02/2014]

(3) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the application.

[S 81/2014 wef 14/02/2014]

Request by joint applicants under section 22

15.—(1) A request under section 22 by a joint applicant shall be made in writing and shall be accompanied by a statement setting out fully the facts upon which he relies and the directions which he seeks.

[S 81/2014 wef 14/02/2014]

[S 739/2014 wef 13/11/2014]

(2) The person making the request shall, at the time the request and the statement are filed, serve on every other joint applicant a copy of the request and a copy of the statement.

[S 81/2014 wef 14/02/2014]

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

(a) within 2 months after the date on which he is served with the copies of the request and the statement, file a counter- statement on Form HC6 setting out fully the grounds of his opposition; and

(b) at the time the counter-statement is filed, serve on the person making the request, and on every other joint applicant who is not a party to the counter-statement, a copy of the counter-statement.

[S 81/2014 wef 14/02/2014]

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(3) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the request.

[S 81/2014 wef 14/02/2014]

Reference to Registrar under section 23

16.—(1) Where, following the making of such an order as is mentioned in section 23(3), a question is referred to the Registrar under section 23(5) as to whether any person is entitled to be granted a licence or whether the period or terms of the licence are reasonable, the reference shall be made in writing and shall be accompanied by a statement setting out fully the facts upon which the person making the reference relies and the terms of the licence which he is prepared to accept or grant.

[S 81/2014 wef 14/02/2014]

[S 739/2014 wef 13/11/2014]

(2) The person making the reference shall, at the time the reference and the statement are filed, serve on every relevant person a copy of the reference and a copy of the statement.

[S 81/2014 wef 14/02/2014]

(2A) Any relevant person who does not agree to grant or accept a licence for such period and upon such terms shall —

(a) within 2 months after the date on which he is served with the copies of the reference and the statement, file a counter- statement on Form HC6 setting out fully the grounds of his opposition; and

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

[S 81/2014 wef 14/02/2014]

(3) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the reference.

[S 81/2014 wef 14/02/2014]

(4) In this rule, “relevant person” means a person (not being the person making the reference) in whose name the application is to

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proceed, or who claims to be entitled to be granted a licence, as the case may be.

[S 81/2014 wef 14/02/2014]

INVENTORS

Mention of inventor

17.—(1) An application to the Registrar under section 24(1) or (3) by any person who alleges —

(a) that he ought to have been mentioned as the inventor or joint inventor of an invention in any patent granted or published application for a patent for the invention; or

(b) that any person mentioned as sole or joint inventor in any patent granted or published application for a patent for the invention ought not to have been so mentioned,

shall be made on Patents Form 7 and shall be accompanied by a statement setting out fully the facts relied upon.

(2) The Registrar shall send a copy of any such application and statement to —

(a) every person registered as proprietor of, or applicant for, the patent (other than the applicant under section 24 himself);

(b) every person who has been identified in the application for the patent or a statement filed under section 24(2)(a) as being, or being believed to be, the inventor or joint inventor of the invention; and

(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

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(b) at the time the notice of opposition is filed, serve a copy of the notice of opposition on every person referred to in paragraph (1) or (2)(a), (b) or (c) who is not a party to the notice of opposition.

[S 81/2014 wef 14/02/2014]

(4) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the application.

[S 81/2014 wef 14/02/2014]

(5) The document prescribed for the purposes of section 24(1) shall be an addendum or erratum slip.

Procedure where applicant is not inventor or sole inventor

18.—(1) Subject to rules 28 and 86(8) and (8A), the period prescribed for the purposes of section 24 (2) shall be —

(a) where there is no declared priority date, 16 months from the date of filing of the application for a patent; or

(b) where there is a declared priority date, 16 months from the declared priority date.

(1A) A statement filed under section 24(2) shall be made on Patents Form 8.

(2) Where —

(a) the applicant is not the sole inventor; or

(b) the applicants are not the joint inventors of the invention,

and the application does not contain a declared priority date which relates to an earlier relevant application as defined in section 17(5)(b), the Registrar shall send a copy of the Patents Form 8 filed under paragraph (1) to each inventor who is not one of the applicants.

(3) Where the application is an international application for a patent (Singapore), the requirements of paragraph (1) shall be treated as having been complied with if the provisions of rules 4.1(a)(iv) and 4.6 of the Regulations under the Patent Co-operation Treaty have been complied with, whether or not there was any requirement that they be complied with.

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APPLICATIONS FOR PATENTS

Application for grant of patent

19.—(1) A request for the grant of a patent shall be made on Patents Form 1.

(2) Where a document containing an indication that a patent is sought in pursuance of an application is filed with the Registrar without Patents Form 1 or the filing fee, the Form shall be filed with, and the fee shall be paid to, the Registry within one month from the date of the filing of the document.

(3) The specification contained in an application for a patent made under section 25 shall state the title of the invention and continue with the description and the claim or claims and the drawings, if any, in that order.

(4) The title appearing in the request and the specification shall be the same title, shall be short and precise, and shall indicate the matter to which the invention relates; and if in the opinion of the Registrar it fails to comply with this paragraph, the Registrar may reframe it so that it does so comply.

[S 81/2014 wef 14/02/2014]

(5) The description shall first state the title of the invention as appearing in the request and shall —

(a) specify the technical field to which the invention relates;

(b) indicate the background art which, as far as it is known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention;

(c) disclose the invention as claimed in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and shall state the advantageous effects, if any, of the invention with reference to the background art;

(d) briefly describe the figures in the drawings, if any;

(e) set forth at least one mode for carrying out the invention claimed, with examples where appropriate, and with reference to the drawings, if any; and

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(f) indicate explicitly, when it is not otherwise obvious from the description or the nature of the invention, the way or ways in which the invention satisfies the condition in section 13(1)(c) of being capable of industrial application.

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

[S 81/2014 wef 14/02/2014]

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

[S 81/2014 wef 14/02/2014]

(7) The definition in the claim of the matter for which protection is sought shall be in terms of the technical features of the invention which may be expressed in structural, functional or mathematical terms.

(8) Claims shall be written —

(a) in 2 parts, the first part consisting of a statement indicating those technical features of the invention which are necessary in connection with the definition of the claimed subject-matter and which, in combination, appear to be part of the prior art and the second part preceded by the words “characterised in that”, “characterised by”, “wherein the improvement comprises”, or other words to the same effect, followed by a statement stating concisely the technical features which, in combination with the features stated in the first part, define the matter for which protection is sought; or

(b) in a single statement containing a recitation of a combination of several elements or steps, or a single element or step, which defines the matter for which protection is sought.

(9) Claims shall not rely, in respect of the technical features of the invention, on references to the description or drawings, unless such a reference is necessary for the understanding of the claim or enhances the clarity or conciseness of the claim.

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(10) Where —

(a) the documents filed at the Registry to initiate an application for a patent include something which —

(i) is or appears to be a description of the invention for which the patent is sought; and

(ii) is in a language other than English; and

(b) the applicant has not filed an English translation of that thing,

the Registrar shall notify the applicant that an English translation of that thing is required.

(11) Where the applicant has been notified under paragraph (10), he shall, within 2 months from the date of the notification, file an English translation of that thing.

(12) If the applicant fails to comply with paragraph (11), the Registrar shall refuse his application for a patent.

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

[S 81/2014 wef 14/02/2014]

Micro-organisms

20. The Fourth Schedule shall have effect in relation to certain applications for patents, and granted patents, for inventions which require for their performance the use of micro-organisms.

Drawings

21.—(1) Drawings forming part of an application for a patent made under section 25 shall be on sheets the size of which shall be A4 (29.7 cm x 21 cm).

(2) The sheets shall not contain frames round the usable or used surface.

(3) The minimum margins shall be as follows:

(a) top: 2.5 cm;

(b) left side: 2.5 cm;

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(d) bottom: 1.0 cm.

(4) The margins, when submitted, must be completely blank.

(5) Drawings shall be executed as follows:

(a) without colouring in durable, black, sufficiently dense and dark, uniformly thick and well-defined lines and strokes to permit satisfactory reproduction;

(b) cross-sections shall be indicated by oblique hatching which should not impede the clear reading of the reference signs and leading lines;

(c) the scale of the drawings and the distinctiveness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty. If, as an exception, the scale is given on a drawing, it shall be represented graphically;

(d) all numbers, letters and reference lines, appearing on the drawings, shall be simple and clear and brackets, circles and inverted commas shall not be used in association with numbers and letters;

(e) each element of each figure shall be in proper proportion to each of the other elements in the figure, except where the use of a different proportion is indispensable for the clarity of the figure;

(f) the height of the numbers and letters shall not be less than 0.32 cm and for the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used;

(g) the same sheet of drawings may contain several figures; where figures drawn on 2 or more sheets are intended to form one whole figure, the figures on the several sheets shall be so arranged that the whole figure can be assembled without concealing any part of the partial figures; and the different figures shall be arranged without wasting space, clearly separated from one another and shall be numbered

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consecutively in Arabic numerals, independently of the numbering of the sheets;

(h) reference signs not mentioned in the description or claims shall not appear in the drawings, and vice versa; and the same features, when denoted by reference signs, shall throughout the application, be denoted by the same signs;

(i) the drawings shall not contain textual matter, except, when required for the understanding of the drawings, a single word or words such as “water”, “steam”, “open”, “closed”, “section on AA”, and in the case of electric circuits and block schematic or flow sheet diagrams, a few short catchwords; and

(j) the sheets of drawings shall be numbered in accordance with rule 23(13) and (14).

(6) Flow sheets and diagrams shall be considered drawings for the purposes of these Rules.

(7) Paragraphs (1) to (4) and (5)(f), (g) and (j) shall not apply to any drawing to be filed with the Registry using the electronic online system, and that drawing shall instead comply with practice directions issued by the Registrar in place of the requirements of those paragraphs.

Abstracts

22.—(1) [Deleted by S 81/2014 wef 14/02/2014]

(2) The abstract shall contain a concise summary of the disclosure as contained in the specification.

(3) The summary shall indicate the technical field to which the invention belongs and be drafted in such a way which allows a clear understanding of the technical problem to which the invention relates, the gist of the solution of that problem through the invention, and the principal use or uses of the invention.

(4) Where appropriate, the abstract shall also contain the chemical formula which, among those contained in the specification, best characterises the invention but shall not contain statements on the

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alleged merits or value of the invention or on its speculative application.

(5) The abstract shall be as concise as the disclosure permits and shall normally not contain more than 150 words.

(6) If the specification contains any drawings, the applicant shall indicate on the abstract the figure or, exceptionally, the figures of the drawings which he suggests should accompany the abstract when published.

(7) The Registrar may decide to publish one or more other figures if he considers that they better characterise the invention.

(8) Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by the reference sign used in that drawing.

(9) The abstract shall be so drafted that it constitutes an efficient instrument for the purposes of searching in the particular technical field, in particular by making it possible to assess whether there is a need to consult the specification itself.

Size and presentation of documents

23.—(1) Subject to paragraph (29), this rule shall apply to all documents (including drawings) making up an application for a patent, including any replacement thereof, to be filed with the Registry by any means.

(1A) All documents referred to in paragraph (1) shall be in English.

(2) Unless otherwise provided, the specification (including any drawing therein), abstract and any replacement sheet thereof shall be filed singly.

(3) All documents referred to in paragraph (1) shall be so presented as to permit direct reproduction by photography, electrostatic or electronic processes, scanning, photo offset and microfilming, in an unlimited number of copies.

(4) All sheets must be free from cracks, creases and folds.

(5) Only one side of the sheet shall be used.

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(6) All documents referred to in paragraph (1) shall be in A4 paper size (29.7 cm x 21 cm) and shall be on pliable, strong, white, smooth, matt and durable paper.

(7) Each sheet (other than drawings) shall be used with its short sides at the top and bottom (upright position).

(8) The request for the grant of a patent, the description, claims, drawings and abstract shall each commence on a new sheet.

(9) The sheets shall be so connected that they can be easily turned when consulted, and easily separated and joined again if they have been separated.

(10) The minimum margins of the sheets containing the description, the claims and the abstract shall be as follows:

(a) top: 2.0 cm;

(b) left side: 2.5 cm;

(d) bottom: 2.0 cm.

(11) The margins of the documents making up the application, when filed, and of any replacement documents, must be completely blank.

(12) In the application, except in the drawings —

(a) all sheets in the request shall, when filed, be numbered consecutively; and

(b) all other sheets shall, when filed, be numbered consecutively as a separate series,

and all such numbering shall be in Arabic numerals placed at the top or bottom of the sheet, in the middle, but not in the top or bottom margin.

(13) All sheets of drawings contained in the application shall be numbered consecutively as a separate series.

(14) Such numbering shall be in Arabic numerals placed at the top or bottom of the sheet, in the middle, but not in the top or bottom margin.

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(15) Every document (other than drawings) referred to in paragraph (1) shall be typed or printed in a dark, indelible colour in at least 1½ line spacing and in characters of which the capital letters are not less than 0.21 cm high except that graphic symbols and characters and chemical and mathematical formulae may be written or drawn, in a dark indelible colour.

(16) The request for the grant of a patent, the description, claims and abstract shall not contain drawings.

(17) The description, claims and abstract may contain chemical or mathematical formulae.

(18) The description and the abstract may contain tables.

(19) The claims may contain tables only if their subject-matter makes the use of tables desirable.

(20) In all documents referred to in paragraph (1), units of weights and measures shall be expressed in terms of the metric system.

(21) If a different system is used, units of weights and measures shall also be expressed in terms of the metric system.

(22) Temperatures shall be expressed in degrees Celsius.

(23) For the other physical values, the units recognised in international practice shall be used, for mathematical formulae the symbols in general use, and for chemical formulae the symbols, atomic weights and molecular formulae in general use shall be employed.

(24) In general, use should be made of technical terms, signs and symbols generally accepted in the field in question.

(25) If a formula or symbol is used in the specification, a copy thereof, prepared in the same manner as drawings, shall be furnished if the Registrar so directs.

(26) The terminology and the signs shall be consistent throughout the application.

(27) All documents referred to in paragraph (1) shall be reasonably free from deletions and other alterations, over-writings and interlineations and shall, in any event, be legible.

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(28) Non-compliance with this rule may be authorised by the Registrar if the authenticity of the content is not in question and the requirements for good reproduction are not in jeopardy.

(29) Paragraphs (2) and (4) to (15) shall not apply to any document to be filed with the Registry using the electronic online system, and that document shall instead comply with practice directions issued by the Registrar in place of the requirements of those paragraphs.

Form of statements, counter-statements and evidence

24. Rule 23(3) to (7) shall apply, with the necessary modifications, to any statement, counter-statement or evidence filed, unless the Registrar directs otherwise.

Unity of invention

25.—(1) Without prejudice to the generality of section 25(5)(d), where 2 or more inventions are claimed (whether in separate claims or as alternatives within a single claim), such inventions shall be treated as being so linked as to form a single inventive concept only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features.

(2) In this rule, “special technical features” means those technical features which define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.

Certain matters prescribed under section 26

26.—(1) The information on an earlier relevant application prescribed for the purposes of section 26 (1)(c)(ii)(B) shall be —

(a) the date of filing of the earlier relevant application; and

(b) the country in or for which the earlier relevant application was made.

(2) The period prescribed for the purposes of section 26(3)(b) shall be 2 months from the date of the Registrar’s notification under section 26(3)(a).

(3) The period prescribed for the purposes of section 26(7) shall be —

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(a) subject to sub‑paragraph (b), 3 months from the date of filing of the application for a patent; or

(b) where a new application has been filed under section 20(3), 26(11) or 47(4), 3 months from the initiation date.

(4) The documents prescribed for the purposes of section 26(7)(c) shall be —

(a) either of the following:

(i) a copy of the earlier relevant application referred to in section 26(1)(c)(ii)(C) which is —

(A) duly certified by the authority with which it was filed; or

(B) otherwise acceptable to the Registrar;

(ii) if a copy of that earlier relevant application is kept at the Registry —

(A) a request that a copy of that earlier relevant application be prepared; and

(B) Form CM12 requesting the Registrar to certify the prepared copy;

[S 81/2014 wef 14/02/2014]

(b) where the earlier relevant application referred to in section 26(1)(c)(ii)(C) is in a language other than English, either of the following:

(i) an English translation of that earlier relevant application;

(ii) if an English translation of that earlier relevant application is kept at the Registry —

(A) a request that a copy of the translation be prepared; and

(B) Form CM12 requesting the Registrar to certify the prepared copy; and

[S 81/2014 wef 14/02/2014]

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(5) The period prescribed for the purposes of section 26(12)(a) shall be —

(a) subject to sub‑paragraph (b) —

(i) where there is no declared priority date, 12 months from the date of filing of the application for a patent; or

(ii) where there is a declared priority date, whichever following period expires later:

(A) 12 months from the declared priority date; or

(B) 2 months from the date of filing of the application; or

(b) where a new application has been filed under section 20(3), 26(11) or 47(4), 2 months from the initiation date.

Missing parts

26A.—(1) The period prescribed for the purposes of section 26(8) shall be —

(a) if the applicant makes a request under section 26(9)(b)(i)—

(i) subject to sub‑paragraph (ii), 3 months from the date of filing of the application for a patent; or

(ii) where a new application has been filed under section 20(3), 26(11) or 47(4), 3 months from the initiation date; or

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

(i) files a request for a search report under section 29(1)(a);

(ii) files a request for a search and examination report under section 29(1)(b);

(iii) files a request for an examination report under section 29(1)(c); or

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 41

(iv) files a request for a supplementary examination report under section 29(1)(d).

[S 81/2014 wef 14/02/2014]

(2) For the purposes of section 26(8), any missing part of an application for a patent shall be filed on Patents Form 56.

[S 81/2014 wef 14/02/2014]

(3) An applicant may only withdraw a missing part by giving written notice to the Registrar.

(4) The period prescribed for the purposes of section 26(9)(b) shall be —

(a) subject to sub‑paragraph (b), 3 months from the date of filing of the application for a patent; or

(b) where a new application has been filed under section 20(3), 26(11) or 47(4), 3 months from the initiation date.

(5) Any request under section 26(9)(b) (i) shall —

(a) be made at the time the applicant files any missing part of the application under section 26(8);

(b) be accompanied by —

(i) the statement under section 26(9)(b)(ii);

(ii) the information under section 26(9)(b)(iii); and

(iii) the documents under section 26(9)(b)(iv); and

(6) The information on an earlier relevant application prescribed for the purposes of section 26(9)(b)(iii) shall be —

(a) the date of filing of the earlier relevant application;

(b) the application or file number of the earlier relevant application; and

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p. 42 2007 Ed.] Patents Rules [CAP. 221, R 1

(7) The documents prescribed for the purposes of section 26(9)(b)(iv) shall be —

(a) either of the following:

(i) a copy of the earlier relevant application referred to in section 26(9)(a) which is —

(A) duly certified by the authority with which it was filed; or

(B) otherwise acceptable to the Registrar;

(ii) if a copy of that earlier relevant application is kept at the Registry —

(A) a request that a copy of that earlier relevant application be prepared; and

(B) Form CM12 requesting the Registrar to certify the prepared copy; and

[S 81/2014 wef 14/02/2014]

(b) where the earlier relevant application referred to in section 26(9)(a) is in a language other than English, either of the following:

(i) an English translation of that earlier relevant application or of every part of that earlier relevant application in which the missing part of the application for a patent is contained;

(ii) if an English translation of that earlier relevant application, or of every part of that earlier relevant application in which the missing part of the application for a patent is contained, is kept at the Registry —

(A) a request that a copy of the translation be prepared; and

(B) Form CM12 requesting the Registrar to certify the prepared copy.

[S 81/2014 wef 14/02/2014]

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 43

New applications under section 26(11)

27.—(1) Subject to paragraphs (2) and (3), a new application for a patent which includes a request that it be treated as having as its date of filing the date of filing of an earlier application may be filed in accordance with section 26(11) —

(a) of the applicant’s own volition; or

(b) to comply with the requirements of section 25(5)(d). [S 81/2014 wef 14/02/2014]

(1A) [Deleted by S 81/2014 wef 14/02/2014]

(2) Where possible, the description and drawings of the earlier application and the new application shall respectively relate only to the matter for which protection is sought by that application.

(3) Where it is necessary for an application to describe the matter for which protection is sought by another application, it shall include a reference by number to that other application.

Extension of period for filing new applications

28. Where a new application is filed under section 20(3), 26(11) or 47(4) —

(a) the requirement under rule 9(1) shall be complied with on the initiation date;

(b) after the expiry of the period referred to in rule 9(2)(b), the requirements under rule 9(2)(c) and (d) shall be complied with on the initiation date;

(c) after the expiry of the period referred to in rule 9(3)(a), the requirements under rule 9(3)(b) and (c) shall be complied with on the initiation date;

(d) after the expiry of the period referred to in rule 9A(2)(a), the requirements under rule 9A(2)(b), (c) and (d) shall be complied with on the initiation date;

(e) after the expiry of the period referred to in rule 9B(1), the requirement under rule 9B(1) shall be complied with on the initiation date;

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(f) after the expiry of the period referred to in rule 18(1), the requirement under section 24(2) read with rule 18(1A) shall be complied with on the initiation date; and

(g) the requirements under paragraph 1(2)(a)(ii) and (3) of the Fourth Schedule, in a case to which they apply, shall be complied with on or before the time ascertained under paragraph 1(3) of that Schedule or the initiation date, whichever is the later.

Publication of applications

29.—(1) Subject to paragraphs (2), (3) and (4), an application for a patent shall be published for the purposes of section 27 as soon as possible after the expiration of 18 months from the declared priority date or, where there is no declared priority date, the date of filing the application.

(2) Where a new application is filed under section 20(3), 26(11) or 47(4), as the case may be, the period prescribed for the purposes of section 27 shall be 18 months from the declared priority date for the earlier application or, where there is no declared priority date, the date of filing the earlier application.

(3) A request for early publication of an application in accordance with section 27(2) shall be made on Patents Form 9.

(4) No application for a patent may be published if it is —

(a) withdrawn by filing Form CM9; or [S 81/2014 wef 14/02/2014]

(b) treated as having been abandoned or refused,

earlier than one month preceding the expiration of the time period applicable under paragraph (1) or (2).

Completion of preparations for publication

30. The Registrar may determine when the preparations for publication of an application for a patent are to be treated as having been completed.

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PROCEDURE FOR GRANT

Address for service

31.—(1) For the purposes of any proceedings before the Registrar, an address for service in Singapore shall be furnished in accordance with paragraph (2) by or on behalf of —

(a) every applicant for a patent;

(b) every person who initiates any 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, or any application, request, reference or notice, referred to in paragraph (3) is required to be filed in relation to the proceedings, the address for service shall be furnished on that form, application, request, reference or notice, as the case may be.

[S 739/2014 wef 13/11/2014]

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

(a) where the address for service is furnished on —

(i) Patents Form 1 or 37; or

(ii) any application made under rule 86(9) or (13),

the address for service shall be effective for the purposes of all proceedings in respect of the patent, or the application for a patent, in relation to which that form is filed or the application is made, as the case may be;

[S 739/2014 wef 13/11/2014]

(b) where the address for service is furnished on —

(i) Patents Form 2, 7, 35 or 58;

(ii) Form HC4 or HC6;

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p. 46 2007 Ed.] Patents Rules [CAP. 221, R 1

(iii) Patents Form 28 (in so far as the form relates to an application referred to in rule 73(1));

(iv) an application referred to in rule 14(1), 71(1) or 78(1);

(v) a request referred to in rule 15(1) or made under paragraph 3(4) of the Fourth Schedule;

(vi) a reference referred to in rule 16(1) or 76(1); or

(vii) a notice filed under paragraph 3(6) of the Fourth Schedule,

the address for service shall be effective for the purposes of the proceedings in relation to which that form or notice is filed, or that application, request or reference is made, as the case may be;

[S 739/2014 wef 13/11/2014]

(c) where the address for service is furnished on Patents Form 15, 19, 20 or 53, the address for service shall be effective only for the purposes of all renewal applications or proceedings in respect of the patent in relation to which that form is filed;

(d) where the address for service is furnished on —

(i) Patents Form 34;

(ii) Form CM1, CM2, CM10 or CM12;

(iii) an application made under rule 64(1); or

(iv) a request mentioned in rule 92(1) or (2) or made under paragraph 2(1) of the Fourth Schedule,

the address for service is effective only for the matter for which that form is filed or that application or request is made, as the case may be;

[S 146/2017 wef 01/04/2017]

(e) where the address for service is furnished on Form CM6, the address for service shall be effective for the purposes of all proceedings in respect of the licence in relation to which that form is filed;

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 47

(f) where the address for service is furnished on Form CM7, the address for service shall be effective for the purposes of all proceedings in respect of the security interest in relation to which that form is filed;

(g) where the address for service is furnished on Form CM8—

(i) if there are 2 addresses for service furnished on that form —

(A) one address for service shall be furnished for the purpose of registering the transfer of the patent, or the application for a patent, in relation to which that form is filed, and shall be effective only for that purpose; and

(B) the other address for service shall be effective for the purposes of all other proceedings in respect of that patent or application; or

[S 739/2014 wef 13/11/2014]

(ii) if there is only one address for service furnished on that form, the address for service shall be effective for the purposes of all proceedings in respect of the patent, or the application for a patent, in relation to which that form is filed.

[S 739/2014 wef 13/11/2014]

(4) Where 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.

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p. 48 2007 Ed.] Patents Rules [CAP. 221, R 1

(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.

[S 81/2014 wef 14/02/2014]

Period for commencement of formalities examination

32. [Deleted by S 93/2007]

Formal requirements

33.—(1) The following shall be formal requirements for the purposes of the Act:

(a) the requirements of rule 19(1), (4) and (6A); [S 81/2014 wef 14/02/2014]

(b) the requirements laid down in rules 21(1), (2), (3), (4), (5) (other than those contained in paragraph (5)(h)) and (7), 22 and 23 (other than those contained in paragraphs (19), (20) and (26));

(d) the filing of an abstract referred to in section 25(3)(c).

(2) Where the application is an international application for a patent (Singapore) which, by virtue of section 85, is to be treated as an application for a patent under the Act, the requirements of rules 19(1), 21, 22 and 23 shall be treated as having been complied with to the extent that the requirements of the corresponding provisions of the Regulations under the Patent Co-operation Treaty, have been fulfilled.

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Preliminary examination

34.—(1) Where, on a preliminary examination of an application for a patent (referred to in this paragraph as the application in suit), the Registrar finds that a declaration for the purposes of section 17(2) specifies a date of filing for an earlier relevant application which is more than 12 months before the date of filing of the application in suit, the Registrar shall notify the applicant accordingly.

(1A) The period prescribed for the purposes of section 28(4) shall be 2 months after the date of the Registrar’s notification under section 28(4).

[S 81/2014 wef 14/02/2014]

(2) The period prescribed for the purposes of section 28(8) shall be —

(a) if the applicant makes a request under section 28(9)(b)(i), 3 months from the date of the Registrar’s notification under section 28(7); or

(b) if the applicant does not make any request under section 28(9)(b)(i), any time before the applicant —

(i) files a request for a search report under section 29(1)(a);

(ii) files a request for a search and examination report under section 29(1)(b);

(iii) files a request for an examination report under section 29(1)(c); or

(iv) files a request for a supplementary examination report under section 29(1)(d).

[S 81/2014 wef 14/02/2014]

(3) For the purposes of section 28(8), any drawing or part of the description of the invention that is missing from the application shall be filed on Patents Form 56.

[S 81/2014 wef 14/02/2014]

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(4) An applicant may only withdraw the drawing or part of the description of the invention that is missing from the application by giving written notice to the Registrar.

(5) The period prescribed for the purposes of section 28(9)(b) shall be 3 months from the date of the Registrar’s notification under section 28(7).

(6) Any request under section 28(9)(b)(i) shall —

(a) be made at the time the applicant files the drawing or part of the description of the invention that is missing from the application under section 28(8);

(b) be accompanied by —

(i) the statement under section 28(9)(b)(ii);

(ii) the information under section 28(9)(b)(iii); and

(iii) the documents under section 28(9)(b)(iv); and

(7) The information on an earlier relevant application prescribed for the purposes of section 28(9)(b)(iii) shall be —

(a) the date of filing of the earlier relevant application;

(b) the application or file number of the earlier relevant application; and

(8) The documents prescribed for the purposes of section 28(9)(b)(iv) shall be —

(a) either of the following:

(i) a copy of the earlier relevant application referred to in section 28(9)(a) which is —

(A) duly certified by the authority with which it was filed; or

(B) otherwise acceptable to the Registrar;

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(ii) if a copy of that earlier relevant application is kept at the Registry —

(A) a request that a copy of that earlier relevant application be prepared; and

(B) Form CM12 requesting the Registrar to certify the prepared copy; and

[S 81/2014 wef 14/02/2014]

(b) where the earlier relevant application referred to in section 28(9)(a) is in a language other than English, either of the following:

(i) an English translation of that earlier relevant application or of every part of that earlier relevant application in which the drawing or part of the description of the invention that is missing from the application for a patent is contained;

(ii) if an English translation of that earlier relevant application, or of every part of that earlier relevant application in which the drawing or part of the description of the invention that is missing from the application for a patent is contained, is kept at the Registry —

(A) a request that a copy of the translation be prepared; and

(B) Form CM12 requesting the Registrar to certify the prepared copy.

[S 81/2014 wef 14/02/2014]

Copies of documents referred to in formalities report

35. [Deleted by S 93/2007]

Request for search report

36. A request for a search report under section 29(1)(a) shall be made on Patents Form 10.

[S 81/2014 wef 14/02/2014]

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Request for search and examination report

37. A request for a search and examination report under section 29(1)(b) shall be made on Patents Form 11.

[S 81/2014 wef 14/02/2014]

Period for filing request for search report

38.—(1) The period prescribed for filing a request for a search report under section 29(1)(a) shall be —

(a) if the application contains no declared priority date, 13 months from the date of filing; or

(b) if the application contains a declared priority date, 13 months from the declared priority date.

[S 81/2014 wef 14/02/2014]

(2) Notwithstanding paragraph (1), where a new application is filed under section 20(3), 26(11) or 47(4), as the case may be, the period prescribed for filing a request for a search report under section 29(1)(a) shall be 13 months from the actual date of filing of the new application.

[S 81/2014 wef 14/02/2014]

Details of foreign applications

39. [Deleted by S 366/2004]

Minimum documentation for search

40.—(1) The documentation referred to in rule 2A(2)(a) (“minimum documentation”) shall consist of —

(a) the patents issued by or registered in Singapore;

(b) the patent applications published in Singapore;

(d) the published international (Patent Co-operation Treaty) applications.

[S 81/2014 wef 14/02/2014]

(1A) [Deleted by S 81/2014 wef 14/02/2014]

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(2) Subject to paragraphs (3) and (4), the “national patent documents” shall be the following:

(a) the patents issued by Australia, France, the former Reichspatentamt of Germany, Japan, Switzerland (in French and German languages only), the United Kingdom and the United States of America;

(b) the patents issued by the Federal Republic of Germany; and

(3) The patent documents of Japan, for which no abstracts in the English language are generally available, need not form part of the “minimum documentation” referred to in paragraph (1).

[S 81/2014 wef 14/02/2014]

(4) Only those patents issued and those patent applications published, after a date not more than 50 years before the declared priority date or, where there is no declared priority date, the date of filing of the application being subjected to a search, need form part of the “minimum documentation” referred to in paragraph (1).

[S 81/2014 wef 14/02/2014]

Prescribed patent offices

41. The patent offices prescribed for the purposes of the definitions of “corresponding application”, “corresponding patent”, “related national phase application” and “related national phase patent” in section 2(1) shall be —

(a) those of Australia, Canada (in respect of applications for a Canadian patent filed in the English language), Japan, New Zealand, Republic of Korea, the United Kingdom and the United States of America; and

(b) the European Patent Office (in respect of applications for a European patent filed in the English language).

[S 81/2014 wef 14/02/2014]

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Request for examination report

42.—(1) A request for an examination report under section 29(1)(c) or (3) shall be made on Patents Form 12.

[S 81/2014 wef 14/02/2014]

(1A) The prescribed documents referred to in section 29(1)(c) are—

(a) where the applicant relies on the final results of a search in one corresponding application or related national phase application —

(i) a copy of each of the final search results in respect of the corresponding application or related national phase application, as the case may be, together with a copy of each of the documents referred to in the final search results; and

(ii) an English translation of each of the final search results that is in a language other than English;

(b) where the applicant relies on the final results of a search in one corresponding international application —

(i) a copy of each of the final international search results in respect of the corresponding international application together with a copy of each of the documents referred to in the final international search results; and

(ii) an English translation of each of the final international search results that is in a language other than English;

(c) where the application in suit is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3), and the applicant relies on the final results of a search during the international phase of the application in suit —

(i) a copy of each of the final international search results in respect of the application in suit together with a copy of each of the documents referred to in the final international search results; and

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(ii) an English translation of each of the final international search results that is in a language other than English;

(d) a list of references to the patent family members as corresponding to each document in a language other than English that is cited in the final search results referred to in sub‑paragraph (a) or final international search results referred to in sub‑paragraph (b) or (c), as the case may be; and

(e) where any list of references to the patent family members referred to in sub‑paragraph (d), or any part of that list, is in a language other than English, an English translation of that list or part.

[S 81/2014 wef 14/02/2014]

(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. [S 81/2014 wef 14/02/2014]

(3) Where —

(a) an applicant has filed a request for an examination report under section 29(1)(c); and

[S 81/2014 wef 14/02/2014]

(b) any document referred to in the final search results referred to in paragraph (1A)(a) or final international search results referred to in paragraph (1A)(b) or (c), as the case may be, is in a language other than English,

[S 81/2014 wef 14/02/2014]

the Registrar may by letter require the applicant to furnish, within 2 months after the date of the Registrar’s letter —

(i) an English translation of the whole or any part of that document; and

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(ii) a copy of a verification document —

(A) made in accordance with the Registrar’s requirements; and

(B) verifying that the translation corresponds to the original text of that document or part thereof.

[S 81/2014 wef 14/02/2014]

(4) Where an applicant fails to comply with the Registrar’s requirements under paragraph (3)(i) and (ii) within 2 months after the date of the Registrar’s letter referred to in paragraph (3), the request for an examination report shall be treated as having been abandoned.

[S 81/2014 wef 14/02/2014]

Request for supplementary examination report

42A.—(1) A request for a supplementary examination report under section 29(1)(d) shall be made on Patents Form 12A.

(2) The prescribed documents referred to in section 29(1)(d) are —

(a) where the applicant relies on the final results of any search and examination as to the substance of one corresponding application, corresponding international application or related national phase application —

(i) either —

(A) a copy of the patent granted by the patent office in question which is —

(AA) duly certified by that patent office; or

(AB) otherwise acceptable to the Registrar,

and, where the patent is in a language other than English, an English translation of the patent; or

(B) all of the following:

(BA) other documents, to the satisfaction of the Registrar, setting out the final results of the search and examination as to the substance of the corresponding

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application, corresponding international application or related national phase application, as the case may be;

(BB) where any document referred to in sub‑paragraph (BA) is in a language other than English, an English translation of that document;

(BC) a copy of the patent claims referred to in the final results; and

(ii) a table setting out how each claim in the application in suit is related to at least one claim in the corresponding application, corresponding international application or related national phase application, as the case may be, being a claim which has been examined to determine whether the claim appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility); or

(b) where the application in suit is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3), and the applicant relies on the final results of any search and examination as to the substance of the application in suit during its international phase —

(i) an international preliminary report on patentability in respect of the application in suit during its international phase and, where that international preliminary report on patentability is in a language other than English, an English translation of that international preliminary report on patentability; and

(ii) a table setting out how each claim in the application in suit is related to at least one claim in the application in suit during its international phase, being a claim which has been examined to determine whether the claim appears to satisfy the criteria of novelty,

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inventive step (or non-obviousness) and industrial applicability (or utility).

(3) A request for a supplementary examination report under section 29(1)(d) shall not be treated as having been made unless the form required under paragraph (1) —

(a) is filed with the prescribed documents referred to in paragraph (2); and

(b) is accompanied by the prescribed fee.

(4) In this rule, a reference to the final results of the search and examination as to the substance of a corresponding international application is a reference to an international preliminary report on patentability in respect of the corresponding international application.

[S 81/2014 wef 14/02/2014]

Period for filing request for search and examination report, request for examination report or request for supplementary examination report, etc.

43.—(1) Subject to paragraph (2), the period prescribed for filing a request for a search and examination report under section 29(1)(b) or a request for an examination report under section 29(1)(c) or (3) shall be —

(a) subject to sub‑paragraph (b), 36 months after —

(i) the declared priority date of the application; or

(ii) where there is no declared priority date, the date of filing of the application; or

(b) where a new application is filed under section 20(3), 26(11) or 47(4), 36 months after the actual date of filing of the new application.

(2) Where the Registrar sends the applicant a copy of the search report under section 29(2)(b) at any time later than one month before the expiry of the period prescribed under paragraph (1)(a) or (b), as the case may be, the period prescribed for filing a request for an examination report under section 29(3) shall be one month from the

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date of the Registrar’s letter forwarding the copy of the search report sent under section 29(2)(b).

(3) The period prescribed for filing a request for a supplementary examination report under section 29(1)(d) shall be —

(a) subject to sub‑paragraph (b), 54 months after —

(i) the declared priority date of the application; or

(ii) where there is no declared priority date, the date of filing of the application; or

(b) where a new application is filed under section 20(3), 26(11) or 47(4), 54 months after the actual date of filing of the new application.

[S 81/2014 wef 14/02/2014]

(4) The prescribed date mentioned in section 29(11A)(a) and (b) is 1 January 2020.

[S 573/2017 wef 30/10/2017]

44. [Deleted by S 81/2014 wef 14/02/2014]

Search procedure where 2 or more inventions claimed

45.—(1) If during the preparation of a report under section 29(1)(a) or (b) it appears that an application relates to 2 or more inventions, but they are not so linked as to form a single inventive concept, the search may be restricted to one in relation to the first invention specified in the claims of the application, and the Registrar shall notify the applicant of that fact.

[S 81/2014 wef 14/02/2014]

(2) If the applicant desires a search to be conducted in relation to a second or subsequent invention specified in the claims, he shall, within 2 months from the date of the Registrar’s notification referred to in paragraph (1), request on Patents Form 10 for a supplementary search report and pay the prescribed search fee for each invention in respect of which the search is to be made.

(3) If a new application for a patent is filed under section 26(11) in respect of any part of the matter contained in an earlier application for

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a patent, the applicant may, in lieu of complying with section 29(1)(a), notify the Registrar in writing that he intends to rely on —

(a) any search report or supplementary search report established in the earlier application; or

(b) where the earlier application is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3), any international search report or international supplementary search report established during the international phase of the earlier application.

[S 81/2014 wef 14/02/2014]

(4) Rule 42(2), (3) and (4) shall apply to any request for an examination report that is filed by an applicant who relies on an international search report or international supplementary search report under paragraph (3).

Written opinion of Examiner, etc.

46.—(1) If during an examination under section 29(4)(a) or (5)(a)(ii), the Examiner is of the opinion that —

(a) the description, claims, or drawings are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on —

(i) the novelty or inventive step of the claimed invention; or

(ii) whether the claimed invention is capable of industrial application;

(b) the invention defined in any claim —

(i) does not appear novel;

(ii) does not appear to involve an inventive step; or

(iii) does not appear to be capable of industrial application;

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

[S 81/2014 wef 14/02/2014]

(e) a claim relates to an invention in respect of which no search has been completed, and he has decided not to carry out the examination in respect of that claim; or

[S 81/2014 wef 14/02/2014]

(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,

[S 81/2014 wef 14/02/2014]

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

[S 81/2014 wef 14/02/2014]

(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

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step (or non-obviousness) and industrial applicability (or utility);

(ba) the invention defined in any claim of the specification of the application does not constitute an invention;

[S 573/2017 wef 30/10/2017]

(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 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.

[S 81/2014 wef 14/02/2014]

(2) The Registrar shall, on receipt of the written opinion, forward the opinion as soon as possible to the applicant together with an invitation to the applicant to file a response thereto.

(3) The applicant may file a response to the written opinion in Patents Form 13A containing —

(a) written submissions on the Examiner’s opinion; or

(b) an amendment of the specification of the application (whether or not he makes the amendment of his own volition),

[S 81/2014 wef 14/02/2014]

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and where the applicant wishes to make written submissions and amend the specification of the application, he shall do both at the same time.

(3A) Subject to paragraph (3B), where an amendment of the specification of the application is filed under paragraph (3), it shall be in the form of a copy of the specification with the amendment indicated in the following manner:

(a) by striking through any text, figure or other matter to be replaced or deleted; and

(b) by underlining any replacement text, figure or other matter.

(3B) Paragraph (3A) shall not apply if the amendment is filed using the electronic online system, and the amendment shall instead comply with practice directions issued by the Registrar in place of the requirements of that paragraph.

(4) Any response under paragraph (3) to the first written opinion in respect of —

(a) an examination report under section 29(4); or

(b) a search and examination report under section 29(5),

shall be filed within 5 months after the date of the Registrar’s letter forwarding the written opinion.

[S 81/2014 wef 14/02/2014]

(4A) Any response under paragraph (3) to the written opinion in respect of a supplementary examination report under section 29(6) shall be filed within 3 months after the date of the Registrar’s letter forwarding the written opinion.

[S 81/2014 wef 14/02/2014]

(5) Where the applicant has filed a response under paragraph (3) to a written opinion in respect of an examination report under section 29(4) or a search and examination report under section 29(5) —

(a) the Examiner may, in his discretion, issue a further written opinion to the Registrar stating fully the reasons for the opinion;

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(b) paragraphs (2) and (3) shall accordingly apply; and

(c) any response under paragraph (3) to the further written opinion shall be filed within 5 months after the date of the Registrar’s letter forwarding the further written opinion.

[S 81/2014 wef 14/02/2014]

(6) In deciding whether to issue any further written opinion, the Examiner may also take into consideration whether sufficient time remains for the applicant to respond to his written opinion and for him to draw up the examination report or the search and examination report.

(7) A further opinion or report issued by the Examiner need not take into account any response filed by the applicant after he has commenced drawing up his opinion or report.

(8) Subject to paragraphs (9), (10) and (11), the Examiner shall —

(a) send the examination report, or the search and examination report, to the Registrar before the expiry of 18 months after the date of the Registrar’s invitation under paragraph (2) to file a response to the first written opinion in respect of the examination report or the search and examination report, as the case may be; and

(b) send the supplementary examination report to the Registrar before the expiry of 6 months after the date of the Registrar’s invitation under paragraph (2) to file a response to the written opinion in respect of the supplementary examination report.

[S 81/2014 wef 14/02/2014]

(9) Where the applicant does not file a response to the first written opinion in respect of an examination report or a search and examination report within the period specified in paragraph (4) —

(a) the Registrar shall inform the Examiner accordingly; and

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(b) upon the expiry of that period, the first written opinion shall be treated as the examination report or the search and examination report, as the case may be.

[S 81/2014 wef 14/02/2014]

(10) Where the applicant does not file a response to the written opinion in respect of a supplementary examination report within the period specified in paragraph (4A) —

(a) the Registrar shall inform the Examiner accordingly; and

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

[S 81/2014 wef 14/02/2014]

(11) Where the applicant does not file a response to a further written opinion in respect of an examination report or a search and examination report within the period specified in paragraph (5)(c) —

(a) the Registrar shall inform the Examiner accordingly; and

(b) upon the expiry of that period, the further written opinion shall be treated as the examination report or the search and examination report, as the case may be.

[S 81/2014 wef 14/02/2014]

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).

[S 81/2014 wef 14/02/2014]

Putting application in order

47.—(1) The period prescribed for the purposes of section 29A(2)(a) shall be 2 months after the date of the notice of eligibility to proceed to the grant of a patent under section 29A(1).

[S 81/2014 wef 14/02/2014]

(2) The period prescribed for the purposes of section 29B(5A)(a) shall be 2 months after the date of the notice of eligibility to proceed to the grant of a patent under section 29B(5)(b)(i).

[S 162/2014 wef 10/03/2014]

(3) Payment of the prescribed fee for the grant of a patent must be accompanied by Patents Form 14 duly completed and filed by the applicant.

(4) Where the specification of the application for a patent has been amended or corrected, or one or more missing parts have been included in the application, since the filing of the application —

(a) in any case where the Registrar has issued to the applicant a notice of eligibility to proceed to the grant of a patent under section 29A(1) —

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

(ii) if any such amendment or correction is made after the time of compliance with section 29A(2)(a), the applicant shall file a specification incorporating

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

(iii) any such missing part shall be included before or at the time of compliance with section 29A(2)(a), and the applicant shall file a specification incorporating every such missing part at the time of compliance with section 29A(2)(a); or

(b) in any case where the Registrar has sent the applicant a notice of eligibility to proceed to the grant of a patent under section 29B(5)(b)(i) —

(i) if any such amendment or correction is made before or at the time of compliance with section 29B(5A)(a), the applicant shall file a specification incorporating every such amendment or correction at the time of compliance with section 29B(5A)(a);

(ii) if any such amendment or correction is made after the time of compliance with section 29B(5A)(a), the applicant shall file a specification incorporating every such amendment or correction within such period as the Registrar may specify; and

(iii) any such missing part shall be included before or at the time of compliance with section 29B(5A)(a), and the applicant shall file a specification incorporating every such missing part at the time of compliance with section 29B(5A)(a).

[S 162/2014 wef 10/03/2014]

(4A) The documents prescribed for the purposes of section 30(c) shall be —

(a) a duly completed Patents Form 14; and [S 81/2014 wef 14/02/2014]

(b) every specification required to be filed under paragraph (4). [S 81/2014 wef 14/02/2014]

(5) [Deleted by S 93/2007]

(5A) [Deleted by S 93/2007]

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(6) No amendment or correction (other than an amendment or correction introduced in order to comply with the formal requirements) may be introduced in the specification to be filed under paragraph (4).

(7) Paragraphs (4) and (6) shall not apply to an international application for a patent (Singapore) if the only amendment to the specification since the filing of the application was an amendment referred to in section 86(6) of the Act which has been incorporated in the specification of the application before it was published in accordance with the Patent Co-operation Treaty.

47A. [Deleted by S 81/2014 wef 14/02/2014]

Application for amendment before grant

48.—(1) Subject to rules 46(3) and (3A) and 56(1) and (3), an application for amendment of —

(a) the request for the grant of a patent on Patents Form 1; or

(b) the description, claims, drawings and abstract,

shall be made on Patents Form 13.

(2) The application for amendment of a document referred to in paragraph (1)(a) or (b) shall be accompanied by a copy of that document with the proposed amendment indicated therein in the following manner:

(a) by striking through any text, figure or other matter to be replaced or deleted; and

(b) by underlining any replacement text, figure or other matter.

(3) [Deleted by S 93/2007]

(4) Paragraph (2) shall not apply if the application for amendment is to be filed using the electronic online system; and the application for amendment shall instead comply with practice directions issued by the Registrar in place of the requirements in that paragraph, including the filing of such other document prepared in such manner as may be specified therein.

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Time for making amendments before grant

49.—(1) The applicant may, of his own volition, amend the request for the grant of a patent at any time before payment of the fee for the grant of the patent.

(2) Subject to paragraph (3), the applicant may, unless the Registrar otherwise requires, of the applicant’s own volition, amend the description, claims, drawings and abstract at any time before payment of the fee for the grant of a patent.

[S 81/2014 wef 14/02/2014]

(3) Subject to section 29B(2), an amendment shall not be made under paragraph (2) —

(a) at any time after the filing of a request for a search report under section 29(1)(a) and before the receipt of that report by the applicant;

(b) at any time after the filing of a request for a search and examination report under section 29(1)(b), unless the amendment is contained in a response filed under rule 46(3) in respect of that report;

(c) at any time after the filing of a request for an examination report under section 29(1)(c) or (3), unless the amendment is contained in a response filed under rule 46(3) in respect of that report;

(d) at any time after the filing of a request for a supplementary examination report under section 29(1)(d), unless the amendment is contained in a response filed under rule 46(3) in respect of that report; or

(e) at any time after a request for a review under section 29B(1) is made.

[S 81/2014 wef 14/02/2014]

Certificate of grant

50. A certificate of grant under section 35(1) shall be in Certificate Form 1.

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PATENTS AFTER GRANT

Renewal of patents

51.—(1) If it is desired to keep a patent in force for a further year or part thereof after the expiration of the fourth or any succeeding year from the date of filing an application for that patent as determined in accordance with section 26, section 116(6) of the Patents Act (Cap. 221, 1995 Ed.) or section 117(4), an application for its renewal, in respect of the next succeeding year, accompanied by the prescribed renewal fee for that year, shall be filed in the 3 months ending with the fourth or, as the case may be, succeeding anniversary of the date of filing.

(2) Where a patent is granted under section 30 after the expiry of the period of 45 months from the date of filing, the application for the renewal of the patent may be filed, and any renewal fees which have become due (including any fees due in respect of preceding years) may be paid, at any time up to the end of the period of 3 months from the date on which the patent is granted.

(2A) Where the Registrar has extended the term of a patent under section 36A after the expiry of the period of 20 years referred to in section 36(1), an application for the renewal of the patent may be filed, and any renewal fees which have become due (including any fees due in respect of preceding years) may be paid, within 3 months from the date of the certificate of extension of patent term issued under section 36A(11) in respect of the patent.

(3) An application for the renewal of a patent under this rule, or a late application for the renewal of a patent referred to in section 36(3), shall be filed —

(a) on Patents Form 15; or

(b) on Patents Form 53 if an entry has been made in the register under section 53(2) that licences under the patent are to be available as of right.

[S 81/2014 wef 14/02/2014]

(3A) [Deleted by S 81/2014 wef 14/02/2014]

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(3B) On receipt by the Registrar of —

(a) an application for the renewal of a patent that is filed in accordance with the Act and these Rules; and

(b) payment for the renewal fee and (if applicable) the additional fee for late application, that is made in accordance with the Act and these Rules,

the patent shall be renewed.

(4) Where the period for payment of a renewal fee pursuant to paragraph (1) has expired, the Registrar shall, not later than one month from the last date for payment under that paragraph and if the fee still remains unpaid, send to the proprietor of the patent a notice reminding him that payment is overdue and of the consequences of non-payment.

(5) Where a patent to which section 117(3) applies has never been renewed under paragraph (1), the application of section 36(4) in relation to the patent is modified to the extent that the Registrar is not required to send a notice reminding the proprietor of the patent that the payment is overdue.

(6) [Deleted by S 81/2014 wef 14/02/2014]

(7) [Deleted by S 81/2014 wef 14/02/2014]

(8) [Deleted by S 300/2000 wef 03/07/2000]

Extension of term of patent

51A.—(1) For the purposes of section 36A(10), an application to extend the term of a patent under section 36A(1)(a) or (b) shall be —

(a) made on Patents Form 54 within 6 months from the date of the grant of the patent; and

(b) accompanied by —

(i) the prescribed fee; and

(ii) all documentary evidence which the applicant wishes to rely on to support the application.

(2) For the purposes of section 36A(10), an application to extend the term of a patent under section 36A(1)(c) shall be —

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(a) made on Patents Form 54 —

(i) within 6 months from —

(A) the date of the grant of the patent; or

(B) the date marketing approval was obtained,

whichever is the later;

(ii) not later than 6 months before the end of the period of 20 years referred to in section 36(1); and

(iii) in any case, while the patent is still in force; and

(b) accompanied by —

(i) the prescribed fee;

(ii) a certificate under section 36A(7); and

(iii) all other documentary evidence which the applicant wishes to rely on to support the application.

(3) Notwithstanding paragraph (1)(b) or (2)(b) —

(a) the Registrar may by letter direct an applicant for an extension of the term of a patent to furnish to the Registrar, within 2 months after the date of the Registrar’s letter, such additional evidence in support of the application as the Registrar may reasonably require; and

(b) if the applicant fails to comply with the Registrar’s direction under sub‑paragraph (a), the application for the extension of the term of the patent shall be treated as having been abandoned.

[S 81/2014 wef 14/02/2014]

(4) A certificate of extension of patent term under section 36A(11) shall be in Certificate Form 2.

(5) For the purposes of section 36A(2), a delay by the Registrar in granting a patent shall not be treated as an unreasonable delay under section 36A(1)(a) unless —

(a) the interval between the date of filing of the application for the patent and the date of issue of the certificate of grant,

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excluding any period attributable to an act or omission of the applicant, exceeds 4 years; or

(b) the interval between the date on which the applicant —

(i) filed a request for a search and examination report in accordance with section 29(1)(b); or

(ii) filed a request for an examination report in accordance with section 29(1)(c) or (3),

and the date of issue of the certificate of grant, excluding any period attributable to an act or omission of the applicant, exceeds 2 years.

[S 81/2014 wef 14/02/2014]

(6) For the purposes of section 36A(3), where the proprietor of a patent has made an application under section 36A(1)(a) and has satisfied the Registrar that there was in fact an unreasonable delay by the Registrar in granting the patent, the Registrar shall extend the term of the patent —

(a) in a case to which paragraph (5)(a) applies, by the period by which the interval referred to in paragraph (5)(a) exceeds 4 years;

(b) in a case to which paragraph (5)(b) applies, by the period by which the interval referred to in paragraph (5)(b) exceeds 2 years; or

(i) the period by which the interval referred to in paragraph (5)(a) exceeds 4 years;

(ii) the period by which the interval referred to in paragraph (5)(b) exceeds 2 years.

[S 81/2014 wef 14/02/2014]

(7) For the purposes of section 36A(5), a curtailment of the opportunity to exploit a patent, the subject of which includes a substance which is an active ingredient of any pharmaceutical product, caused by the process of obtaining marketing approval for

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a pharmaceutical product, being the first pharmaceutical product to obtain marketing approval which uses the substance as an active ingredient, shall not be treated as an unreasonable curtailment under section 36A(1)(c) unless —

(a) the marketing approval was obtained after the date of issue of the certificate of grant; and

(b) the interval between the date the application for marketing approval was filed and the date marketing approval was obtained, excluding any period attributable to an act or omission of the applicant for marketing approval, exceeds 2 years.

[S 81/2014 wef 14/02/2014]

(8) For the purposes of section 36A(6), subject to section 36A(7), (8) and (9), where the proprietor of a patent has made an application under section 36A(1)(c) and has satisfied the Registrar that there was in fact an unreasonable curtailment of the opportunity to exploit the patent under section 36A(1)(c), the Registrar shall extend the term of the patent by the shortest of the following periods:

(a) a period equivalent to the interval between the date of issue of the certificate of grant and the date marketing approval was obtained;

(b) the period by which the interval referred to in paragraph (7)(b) exceeds 2 years;

(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

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(c) for each period attributable to an act or omission of the applicant for marketing approval, the dates on which the period started and ended.

[S 81/2014 wef 14/02/2014]

(10) In paragraph (5), “period attributable to an act or omission of the applicant” includes (without prejudice to the generality of the expression) any of the following periods which is applicable:

(a) the period taken by the applicant to pay the filing fee under section 25(1)(b), calculated from the date of filing of the application for the patent to the date on which the filing fee is paid;

(b) the period taken by the applicant to make observations under section 26(3)(b)(i) which satisfy the Registrar that the documents filed at the Registry to initiate the application satisfy all of the conditions in section 26(1)(a), (b) and (c)(i) or (ii), calculated from the date of the Registrar’s notification to the applicant under section 26(3)(a) to the date on which the applicant makes the observations;

(c) the period taken by the applicant to file the documents referred to in section 26(7)(a), (b) and (c), calculated from the date of filing of the application for a patent to the date on which the applicant files the documents;

(d) the period taken by the applicant to comply with section 26(9)(b), if the applicant, after filing at the Registry any missing part of the application, makes a request to the Registrar for section 26(8)(b) not to apply to the application, calculated from the date on which the applicant filed at the Registry the missing part of the application to the date on which the applicant complies with section 26(9)(b);

(e) the period taken by the applicant to make a new application for a patent under section 26(11)(a), calculated from the date of filing of the earlier application for a patent referred to in section 26(11) to the date on which the new application is made;

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(f) the period taken by the applicant to file one or more claims for the purposes of the application under section 26(12)(a), calculated from the date of filing of the application for the patent to the date on which the applicant files the claim or claims;

(g) the period taken by the applicant to —

(i) make observations under section 28(4)(a) which satisfy the Registrar that all the formal requirements have been complied with; or

(ii) amend his application under section 28(4)(b) to comply with all the formal requirements,

calculated from the date of the Registrar’s notification under section 28(4) to the date on which the applicant makes the observations or the earliest date on which the application, as amended by the applicant, complies with all the formal requirements;

(h) the period taken by the applicant to comply with section 28(9)(b), if the applicant, after filing any drawing or part of the description of the invention which is missing from the application, makes a request to the Registrar for section 28(8)(b) not to apply to the application, calculated from the date of the Registrar’s notification under section 28(7) to the date on which the applicant complies with section 28(9)(b);

(i) the period taken by the applicant to —

(i) file a request for a search report under section 29(1)(a) and pay the prescribed fee for that report; or

(ii) file a request for a search and examination report under section 29(1)(b) and pay the prescribed fee for that report,

calculated from the date of the Registrar’s notification under section 28(11) to the date on which the applicant files the request and pays the fee;

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(j) the period taken by the applicant to file the prescribed documents and a request for an examination report under section 29(1)(c) and pay the prescribed fee for that report, calculated from the date of the Registrar’s notification under section 28(11) to the date on which the applicant files the documents and request and pays the fee;

(k) the period taken by the applicant to file the prescribed documents and a request for a supplementary examination report under section 29(1)(d) and pay the prescribed fee for that report, calculated from the date of the Registrar’s notification under section 28(11) to the date on which the applicant files the documents and request and pays the fee;

(l) the period taken by the applicant to file a request for an examination report under section 29(3), calculated from the date of the Registrar’s letter forwarding a copy of the search report under section 29(2)(b) to the date on which the applicant files the request;

(m) the period taken by the applicant to respond to a written opinion under section 29(9)(a), calculated from the date of the Registrar’s letter forwarding a copy of the written opinion under section 29(7) or (8) to the date on which the applicant responds to the written opinion;

(n) the period taken by the applicant to amend the specification of the application under section 29(9)(b), calculated from the date of the Registrar’s letter forwarding a copy of the written opinion under section 29(7) or (8) to the date on which the applicant makes the amendment;

(o) the period taken by the applicant to apply for a review of the examination report, search and examination report or supplementary examination report under section 29A(4)(a), calculated from the date of the Registrar’s notice under section 29A(3) to the date on which the applicant files the request;

(p) the period taken by the applicant to amend the specification of the application under section 29B(2), calculated from the

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date of the Registrar’s notice under section 29A(3) to the date on which the applicant makes the amendment;

(q) the period taken by the applicant to satisfy the conditions under section 30(a) and (c), calculated from the date of the notice of eligibility to proceed to the grant of a patent under section 29A(1) or 29B(5)(b)(i) that is received by the applicant to the date on which the applicant satisfies the conditions under section 30(a) and (c);

(r) where the application is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3), the period taken by the applicant to cause the application to enter the national phase in Singapore, calculated from the date of the filing of the application in accordance with the Patent Co-operation Treaty to the date on which the national phase of the application begins under section 86(3);

(s) the period taken by the applicant to rectify any failure to comply with any requirement under the Act or these Rules, such period —

(i) to be calculated from the date by which the applicant is required to comply with the requirement to the date on which the applicant rectifies the failure to comply with the requirement; and

(ii) to include any period taken by the Registrar or the Registry to detect or to notify the applicant of the applicant’s failure to comply with the requirement;

(t) the period taken by the applicant to respond to any request by the Registrar for any document, information or evidence, calculated from the date of the Registrar’s notification to the applicant of the request to the date on which the applicant responds to the request;

(u) any extension or alteration of any period to do any thing that is granted by the Registrar or the court at the request or on the application of the applicant.

[S 81/2014 wef 14/02/2014]

Informal Consolidation – version in force from 30/10/2017

CAP. 221, R 1] Patents Rules [2007 Ed. p. 79

(11) In paragraphs (7) and (9), “period attributable to an act or omission of the applicant for marketing approval” includes (without prejudice to the generality of the expression) —

(a) the period taken by the applicant for marketing approval to correct deficiencies in his application for marketing approval, calculated from the date of the relevant authority’s notification to the applicant for marketing approval of the deficiencies to the date on which the applicant for marketing approval corrects the deficiencies;

(b) the period taken by the applicant for marketing approval to respond to any request by the relevant authority for clarification or information, calculated from the date of the relevant authority’s request to the date on which the relevant authority receives the response of the applicant for marketing approval; and

(c) any extension of any period to do any thing that is granted by the relevant authority at the request or on the application of the applicant for marketing approval.

[S 81/2014 wef 14/02/2014]

Amendment of specification after grant

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

[S 81/2014 wef 14/02/2014]

(1A) If the Registrar is satisfied that the application may be allowed, the Registrar shall advertise the application by publishing the application and the reasons for the proposed amendment in the journal and in such other manner, if any, as the Registrar may direct.

[S 81/2014 wef 14/02/2014]

(2) Any person wishing to oppose the application to amend shall, within 2 months from the date of the advertisement in the journal, file notice to the Registrar on Patents Form 58.

[S 81/2014 wef 14/02/2014]

Informal Consolidation – version in force from 30/10/2017

p. 80 2007 Ed.] Patents Rules [CAP. 221, R 1

(3) The notice shall be supported by a statement setting out fully the facts upon which the opponent relies and the relief which he seeks.

[S 81/2014 wef 14/02/2014]

(3A) The opponent shall, at the time the notice and the statement are filed, serve on the applicant a copy of the notice and a copy of the statement.

[S 81/2014 wef 14/02/2014]

(4) Within 2 months after the date on which the applicant is served with the copies of the notice and the statement, he shall, if he wishes to continue with the application, file a counter-statement on Form HC6 setting out fully the grounds upon which the opposition is resisted.

[S 81/2014 wef 14/02/2014]

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

[S 81/2014 wef 14/02/2014]

(5) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the application.

[S 81/2014 wef 14/02/2014]

(6) An application under this rule shall be accompanied by a copy of the specification with the proposed amendment indicated therein in the following manner:

(a) by striking through any text, figure or other matter to be replaced or deleted; and

(b) by underlining any replacement text, figure or other matter.

(6A) [Deleted by S 93/2007]

(7) Where notice of opposition has been filed, the Registrar, in determining whether leave to amend should be granted, may cause the patent as proposed to be amended to be examined by an examiner to determine whether the amendment is allowable under section 84 (3), in which case the application for leave to amend together with the notice of opposition, the accompanying statement and any counter- statement, shall be taken into consideration by the examiner during his examination.

Informal Consolidation – version in force from 30/10/2017

CAP. 221, R 1] Patents Rules [2007 Ed. p. 81

(8) Where leave to amend a specification is given, the applicant shall, if the Registrar so requires, and within a time to be fixed by him, file a new specification as amended, which shall be prepared in accordance with rules 19, 21 and 23.

(8A) [Deleted by S 93/2007]

(8B) No amendment or correction (other than an amendment or correction introduced in order to comply with rule 19, 21 or 23) may be introduced in the new specification to be filed under paragraph (8).

(9) Where no notice of opposition is received by the Registrar under paragraph (2) or where such notice fails to comply with paragraph (3) and the Registrar is satisfied with the reasons for making the proposed amendments, he may give leave to the applicant to amend the specification of the patent.

(10) Where an application to amend is filed using the electronic online system —

(a) paragraph (6) shall not apply to the application; and

(b) the application shall instead comply with practice directions issued by the Registrar in place of the requirements under that paragraph.

52A. [Deleted by S 81/2014 wef 14/02/2014]

Restoration of lapsed patent

53.—(1) An application under section 39 for the restoration of a patent —

(a) may be made at any time within 18 months from the day on which it ceased to have effect; and

[S 81/2014 wef 14/02/2014]

(b) shall be made on Patents Form 19 together with a statutory declaration or affidavit setting out the grounds for the application and the evidence in support thereof,

and the Registrar shall publish in the journal notice of the making of the application.

Informal Consolidation – version in force from 30/10/2017

p. 82 2007 Ed.] Patents Rules [CAP. 221, R 1

(1A) Where the application is for the restoration of a patent to which section 117(3) applies, the evidence referred to in paragraph (1)(b) shall include —

(a) that which establishes that the patent remained in force in the United Kingdom at the time the first renewal was due if the patent had never been renewed under the Act; and

(b) a statutory declaration stating that the patent has not been revoked in the United Kingdom.

(2) If, upon consideration of the grounds and evidence, the Registrar is not satisfied that a case for an order under section 39 has been made out, he shall notify the applicant accordingly and, unless within one month from the date of the Registrar’s notification the applicant requests to be heard in the matter in accordance with rule 88, the Registrar shall refuse the application.

[S 81/2014 wef 14/02/2014]

(3) If the applicant requests a hearing within the time allowed, the Registrar shall determine, in accordance with rule 88, whether the application shall be allowed or refused.

[S 81/2014 wef 14/02/2014]

(4) If the Registrar decides to allow the application, he shall notify the applicant accordingly and require him, within 2 months from the date of the Registrar’s notification to him, to file Patents Form 20 accompanied by the prescribed additional fee and the amount of any unpaid renewal fee, upon receipt of which the Registrar shall order the restoration of the patent and publish the fact in the journal.

[S 81/2014 wef 14/02/2014]

(5) Paragraph (1)(a) as amended by the Patents (Amendment) Rules 1997 shall also apply to any patent to which section 117(3) applies which had ceased to have effect before 1st April 1997.

53A. [Deleted by S 81/2014 wef 14/02/2014]

Surrender of patents

54.—(1) A notice of an offer under section 40 by a proprietor of a patent to surrender his patent shall be given on Form CM3.

[S 81/2014 wef 14/02/2014]

Informal Consolidation – version in force from 30/10/2017

CAP. 221, R 1] Patents Rules [2007 Ed. p. 83

(2) A notice under paragraph (1) shall have no effect unless the proprietor of the patent states in the notice that each person having a right in the patent —

(a) has been given not less than 3 months’ notice of the proprietor’s intention to surrender the patent; and

(b) either is not affected by the surrender of the patent, or has no objection to the surrender of the patent.

[S 81/2014 wef 14/02/2014]

(3) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the surrender of the patent.

[S 81/2014 wef 14/02/2014]

(4) [Deleted by S 81/2014 wef 14/02/2014]

(5) [Deleted by S 81/2014 wef 14/02/2014]

55.—(1) The Registrar shall maintain an electronic form of the register to which access may be gained using the electronic online system.

(1A) No entry shall be made in the register in respect of any application for a patent before the application has been published in accordance with section 27.

(2) Upon such publication, the Registrar shall cause to be entered in the register —

(a) the name and address of the applicant or applicants;

(b) the name and address of the person or persons stated by the applicant or applicants to be believed to be the inventor or inventors;

(d) the date of filing and the file number of the application for the patent;

Informal Consolidation – version in force from 30/10/2017

p. 84 2007 Ed.] Patents Rules [CAP. 221, R 1

(e) the date of filing and the file number of any application declared for the purposes of section 17(2) and the country in or for which the application was made;

(f) the date on which the application was published;

(g) the address for service of the applicant or applicants; and

(h) the symbol or symbols of the International Patent Classification allocated to the application.

(3) The Registrar shall also cause to be entered in the register —

(a) [Deleted by S 132/97]

(b) the date on which the application is withdrawn, treated as having been abandoned, treated as having been withdrawn, refused or treated as having been refused;

(d) the name and address of the person or persons to whom the patent is granted if different to the entries made in accordance with paragraph (2)(a);

(e) the address for service, if different to the entry made in accordance with paragraph (2)(g);

(f) notice of any transaction, instrument or event referred to in section 43(3);

(g) the date of renewal of the patent, if any;

(ga) the date of any application under section 36A to extend the term of the patent;

(gb) the period of the extension of the term of the patent under section 36A, if any;

(gc) [Deleted by S 81/2014 wef 14/02/2014]

(h) the cessation of the patent, if any;

(i) the restoration of the patent, if any;

(j) particulars of any decision to revoke the patent; and

(k) particulars of any court order in relation to the patent.

Informal Consolidation – version in force from 30/10/2017

CAP. 221, R 1] Patents Rules [2007 Ed. p. 85

(4) The Registrar may at any time enter in the register such other particulars as he may think fit.

Alteration or correction of name or address

56.—(1) A request by any person, upon the alteration of his name, for that alteration to be entered in the register or on any application or other document filed at the Registry shall be made on Form CM2.

[S 81/2014 wef 14/02/2014]

(2) [Deleted by S 739/2014 wef 13/11/2014]

(3) A request by a person for —

(a) the alteration of his address (not being his address for service); or

[S 81/2014 wef 14/02/2014]

(b) the correction of any error in his name or his address (not being his address for service),

[S 81/2014 wef 14/02/2014]

as entered in the register or on any application or other document filed at the Registry, shall be made on Form CM2.

[S 81/2014 wef 14/02/2014]

(4) If the Registrar is satisfied that any request to alter or correct any name or any address (not being an address for service) may be allowed, he shall cause the register, application or other document to be altered or corrected accordingly.

[S 81/2014 wef 14/02/2014]

Application for registration of transaction, etc.

57.—(1) An application to register, or to give notice to the Registrar of, any transaction, instrument or event to which section 43 applies shall be made —

(a) on Form CM6, in the case of the grant, assignment, amendment or termination of a licence or sub‑licence under a patent or an application for a patent;

(b) on Form CM7, in the case of the grant, assignment, amendment or termination of a mortgage of, or any other

Informal Consolidation – version in force from 30/10/2017

p. 86 2007 Ed.] Patents Rules [CAP. 221, R 1

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).

[S 81/2014 wef 14/02/2014]

(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;

(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.

[S 81/2014 wef 14/02/2014]

(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.

[S 81/2014 wef 14/02/2014]

Informal Consolidation – version in force from 30/10/2017

CAP. 221, R 1] Patents Rules [2007 Ed. p. 87

(4) If —

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

[S 81/2014 wef 14/02/2014]

(b) the Registrar so directs, [S 81/2014 wef 14/02/2014]

the person making an application under paragraph (1) shall lodge with the Registrar, within such period as the Registrar may specify —

(i) a copy of any document establishing the transaction, instrument or event which is —

(A) duly certified; or

(B) otherwise acceptable to the Registrar; or

(ii) a copy each of such extracts from such documents as are sufficient to establish the transaction, instrument or event which is —

(A) duly certified; or

(B) otherwise acceptable to the Registrar.

(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.

[S 81/2014 wef 14/02/2014]

Request for correction of errors

58.—(1) Without prejudice to rule 56(3), a request for the correction of each error in the register or in any document filed at the Registry in connection with registration shall be made on Form CM4; and the correction shall be clearly identified on a document filed together with the form or, if not, on the form itself.

[S 81/2014 wef 14/02/2014]

(2) Where a request is sought to correct the same error in both the register and any document filed at the Registry in connection with the registration, the request may be made on a single form.

Informal Consolidation – version in force from 30/10/2017

p. 88 2007 Ed.] Patents Rules [CAP. 221, R 1

(3) The Registrar may call for such written explanation of the reasons for the request or evidence in support of it as he may require in order to satisfy himself that there is an error and, upon being so satisfied, shall make such correction as may be agreed between the proprietor of the patent or applicant and the Registrar.

(4) This rule is without prejudice to the power of the Registrar to correct any entry in the register which is attributable wholly or in part to an error, default or omission on the part of the Registry.

Inspection of register, etc.

59. Any person may make use of the electronic online system —

(a) to inspect the register; or

(b) to search and retrieve —

(i) published patents specifications in respect of a patent or application for a patent;

(ii) an entry in the register; or

(iii) information as to the renewal of a patent. [S 81/2014 wef 14/02/2014]

Inspection of register

60. [Deleted by S 300/2000]

Advertisement of matters contained in register

61. The Registrar may arrange for the publication and advertisement of such things done under the Act or these Rules in relation to the register as he may think fit.

Entries in respect of right to a patent

62. On the reference to the Registrar of a question under section 20(1) or 47(1), he shall, subject to rule 55(1A), cause an entry to be made in the register of the fact and of such other information relating to the reference as he may think fit.

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 89

Certificates and copies supplied by Registrar

63.—(1) Upon request made on Form CM12 and payment of the appropriate fee, but subject to paragraph (3), the Registrar shall supply —

(a) a certified copy or certified extract falling within section 45; or

[S 81/2014 wef 14/02/2014]

(b) [Deleted by S 81/2014 wef 14/02/2014]

(2) [Deleted by S 81/2014 wef 14/02/2014]

(3) The restrictions on making documents available for inspection contained in rule 93(4) shall apply equally to the supply by the Registrar under this rule of copies of or extracts from such documents or requests as are referred to in rule 93(4); and nothing in this rule shall be construed as imposing upon the Registrar the duty of supplying copies of or extracts from any document or file of a description referred to in rule 93(5).

Orders or directions by court

64.—(1) Notwithstanding any other provision in these Rules, where any order or direction has been made or given by any court or other competent authority in any matter under the Act, the person, or one of the persons, in whose favour the order is made or the direction is given —

(a) shall file an application to record the order or direction, accompanied by a copy of the order or direction; and

[S 739/2014 wef 13/11/2014]

(b) if the Registrar so requires and within such period as the Registrar may specify, shall file a specification as amended (prepared in accordance with rules 19, 21 and 23).

[S 81/2014 wef 14/02/2014]

(2) Upon a filing under paragraph (1), the specification shall be amended or the register rectified or altered, as the case may require.

Informal Consolidation – version in force from 30/10/2017

p. 90 2007 Ed.] Patents Rules [CAP. 221, R 1

ENTITLEMENT TO PATENT

Reference to Registrar of right to patent

65.—(1) A reference under section 47(1) shall be made on Patents Form 2 and shall be accompanied by a statement setting out fully the nature of the question, the facts upon which the person making the reference relies and the order which he is seeking.

[S 81/2014 wef 14/02/2014]

(2) The Registrar shall send a copy of the reference and statement to every person who is not a party to the reference being —

(a) a person who is shown on the register as having any right in or under the patent;

(b) a person who has given notice to the Registrar of a relevant transaction, instrument or event; or

(3) If any person who is sent a copy of the reference and statement under paragraph (2) wishes to oppose the making of the order sought, he shall, within 2 months from the date of the Registrar’s letter forwarding such copies to him, file a counter-statement on Form HC6 setting out fully the grounds of his opposition and the Registrar shall send a copy of the counter-statement to the person making the reference and to those recipients of the copy of the reference and statement who are not party to the counter-statement.

[S 81/2014 wef 14/02/2014]

(4) The person making the reference or any such recipient may, within 2 months from the date of the Registrar’s letter forwarding the copy of the counter-statement, file evidence in support of his case and shall send a copy of the evidence —

(a) in any case, to the opponent; and

(b) in the case of evidence filed by such a recipient, to the person making the reference.

(5) Within 2 months from the date of receipt of the copy of such evidence or, if no such evidence is filed, within 2 months from the

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 91

expiration of the time within which the copy of such evidence could have been filed, the opponent may file evidence in support of his case and shall send a copy of that evidence to the person making the reference and to those recipients; and, within 2 months from the date of receipt of the copy of the opponent’s evidence, that person or any of those recipients may file further evidence confined to matters strictly in reply and shall send a copy of it to the persons mentioned in paragraph (4)(a) and (b).

(6) No further evidence shall be filed by any party except by leave or direction of the Registrar.

(7) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the reference.

[S 81/2014 wef 14/02/2014]

Application for authorisation to carry out directions

66.—(1) An application under section 47(3) for authority to do anything on behalf of a person to whom directions have been given under section 47(2)(d) shall be made in writing and shall be accompanied by a statement setting out fully the facts upon which the applicant relies and the nature of the authorisation sought.

[S 81/2014 wef 14/02/2014]

[S 146/2017 wef 01/04/2017]

(2) The applicant shall, at the time the application and statement are filed, serve on the person referred to in paragraph (1) a copy of the application and a copy of the statement.

[S 81/2014 wef 14/02/2014]

(3) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the application.

[S 81/2014 wef 14/02/2014]

Time limits for making new application

67. Where the Registrar orders that a new application may be made under section 47(4), it shall be made within 3 months from the day on which the time for appealing from that order expires without an appeal being brought or, where an appeal is brought, from the day on which it is finally disposed of.

Informal Consolidation – version in force from 30/10/2017

p. 92 2007 Ed.] Patents Rules [CAP. 221, R 1

Request for licence to continue working new patent

68.—(1) Where an order is made under section 47 that a patent shall be transferred to one or more persons none of whom was an old proprietor of it or that a person other than an old proprietor may make a new application for a patent, a request under section 48(3) for the grant of a licence to continue working or, as the case may be, to work the invention shall be made within 2 months from the date of notification by the Registrar of the making of the order.

(2) Where such an order is made, the Registrar shall notify the old proprietor or proprietors, and their licensees of whom he is aware, of the making of the order.

Reference as to entitlement to grant of licence

69.—(1) Where a question is referred to the Registrar under section 48(5) as to whether any person is entitled to be granted a licence or whether the period or terms of a licence are reasonable, the reference shall be made in writing and shall be accompanied by a statement setting out fully the facts upon which the person making the reference relies and the terms of the licence which he is prepared to accept or grant.

[S 81/2014 wef 14/02/2014]

[S 146/2017 wef 01/04/2017]

(2) The person making the reference shall, at the time the reference and the statement are filed, serve on every new proprietor and every person claiming to be entitled to be granted a licence (each such proprietor or person not being the person making the reference) a copy of the reference and a copy of the statement.

[S 81/2014 wef 14/02/2014]

(2A) Any proprietor or person referred to in paragraph (2) who does not agree to grant or accept a licence for such period and upon such terms shall —

(a) within 2 months after the date on which he is served with the copies of the reference and the statement, file a counter- statement on Form HC6 setting out fully the grounds of his objection; and

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 93

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

[S 81/2014 wef 14/02/2014]

(3) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the reference.

[S 81/2014 wef 14/02/2014]

LICENCES OF RIGHT

Entry in register of licence of right

70.—(1) An application under section 53(1) shall be made on Patents Form 28.

(2) Every entry made in the register consequent upon such an application shall be published in the journal and in such other manner (if any) as the Registrar thinks necessary.

Settlement of terms of licence of right

71.—(1) An application under section 53(3)(a) or (b) shall be made in writing together with —

(a) in the case of an application by the proprietor of the patent, one copy of a draft of the licence he proposes and of a statement of the facts he relies on; and

(b) in the case of an application by any other person, one copy of a draft of the licence he seeks.

[S 739/2014 wef 13/11/2014]

(2) The applicant shall —

(a) in the case of an application by the proprietor, at the time the application and the documents referred to in paragraph (1)(a) are filed, serve on the person to whom the applicant proposes to grant the licence a copy of the application and a copy of each document referred to in paragraph (1)(a); and

[S 739/2014 wef 13/11/2014]

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p. 94 2007 Ed.] Patents Rules [CAP. 221, R 1

(b) in the case of an application by any other person, at the time the application and the document referred to in paragraph (1)(b) are filed, serve on the proprietor a copy of the application and a copy of the document referred to in paragraph (1)(b).

[S 81/2014 wef 14/02/2014]

[S 739/2014 wef 13/11/2014]

(3) Within 2 months after the date on which the application is served on him in accordance with paragraph (2) —

(a) in the case of an application by the proprietor, the person referred to in paragraph (2)(a) may —

(i) file a counter-statement on Form HC6 setting out fully the grounds of his objection; and

(ii) at the time the counter-statement is filed, serve on the proprietor a copy of the counter-statement; or

(b) in the case of an application by any other person, the proprietor may —

(i) file a statement setting out fully the grounds of his objection; and

(ii) at the time the statement is filed, serve on the person referred to in paragraph (2)(b) a copy of the statement.

[S 81/2014 wef 14/02/2014]

(4) Within 2 months after the date on which a statement under paragraph (3)(b) is served on him, the person therein referred to —

(a) may file a counter-statement on Form HC6; and

(b) if he does so, shall at the time the counter-statement is filed, serve on the proprietor a copy of the counter-statement.

[S 81/2014 wef 14/02/2014]

(5) No further statement or counter-statement shall be served by either party without the leave or direction of the Registrar.

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 95

(6) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the application.

[S 81/2014 wef 14/02/2014]

Cancellation of entry in register as to licence of right by proprietor

72. An application under section 54(1) shall be made on Patents Form 28.

[S 81/2014 wef 14/02/2014]

Cancellation of entry in register as to licence of right by third party

73.—(1) An application under section 54(3) shall be made on Patents Form 28 within 2 months from the date of publication in the journal of the relevant entry and shall be supported by a statement setting out fully the nature of the claimant’s interest and the facts upon which he relies.

[S 81/2014 wef 14/02/2014]

(2) The claimant shall, at the time the application is filed, serve on the proprietor of the patent a copy of the application and a copy of the statement.

[S 81/2014 wef 14/02/2014]

Procedure as to cancellation of entry in register as to licence of right

74.—(1) Every application under section 54(1) or (3) shall be advertised in the journal and the period within which notice of opposition to the cancellation of an entry may be given under section 54(7) shall be 2 months from the date of the advertisement.

(2) Such notice of opposition shall be given on Patents Form 58 and shall be accompanied by a supporting statement setting out fully the facts upon which the opponent relies.

[S 81/2014 wef 14/02/2014]

Informal Consolidation – version in force from 30/10/2017

p. 96 2007 Ed.] Patents Rules [CAP. 221, R 1

(3) The opponent shall, at the time the notice of opposition and the supporting statement are filed, serve on the applicant for cancellation of the entry a copy of the notice and a copy of the statement.

[S 81/2014 wef 14/02/2014]

(3A) If the applicant for cancellation of the entry desires to proceed with the application, he shall —

(a) within 2 months after the date on which he is served the copies of the notice and the statement, file a counter- statement on Form HC6 setting out fully the grounds on which the opposition is contested; and

(b) at the time the counter-statement is filed, serve on the opponent a copy of the counter-statement.

[S 81/2014 wef 14/02/2014]

(4) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the opposition to the cancellation of the entry.

[S 81/2014 wef 14/02/2014]

Action by Registrar on cancellation in register as to licence of right

75.—(1) Where the Registrar has received an application from the proprietor of a patent to cancel an entry in the register under section 54(1), the Registrar shall notify the proprietor of the patent who shall, within 2 months from the date of the Registrar’s notification to him, pay fees equal to the amount of the balance of all renewal fees which would have been payable if the entry had not been made.

(2) Upon receipt of the fees under paragraph (1), the Registrar may proceed to cancel the entry if he is satisfied that there is no existing licence under the patent or that all licensees under the patent consent to the application.

(3) Where the Registrar cancels an entry in the register in respect of a patent under section 54(3), the Registrar shall notify the proprietor of the patent who shall, within 2 months from the date of the Registrar’s notification to him, pay fees equal to the amount of the balance of all

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renewal fees which would have been payable if the entry had not been made.

(4) Patents Form 15 shall be filed with the Registry when fees are paid to the Registry under this rule.

INFRINGEMENT OF PATENTS

Particulars prescribed under section 66(4)

75A. A written notice to an importer under section 66(4) shall contain the following particulars:

(a) a statement that the notice is issued in accordance with section 66(4);

(b) the patent number of the patent relied on, as stated in the certificate of grant;

[S 81/2014 wef 14/02/2014]

(d) the date on which that patent was granted;

(e) the name and address of each proprietor of that patent;

(f) the address for service of the proprietor or proprietors, as the case may be;

(g) the name and address of the person referred to in section 66(3)(b)(ii);

(h) a detailed statement explaining how the import of the patented product by the importer would result in the product being distributed in breach of the contract referred to in section 66(3)(b);

(i) the text of all clauses in the contract referred to in section 66(3)(b) which are relied on or referred to in the statement under paragraph (h).

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INFRINGEMENT PROCEEDINGS BEFORE REGISTRAR

Reference to Registrar for determination of infringement

76.—(1) Where a reference is made to the Registrar under section 67(3), the parties thereto shall make it in writing, accompanied by a joint statement giving full particulars of the matters which are in dispute and of those on which they are in agreement.

[S 739/2014 wef 13/11/2014]

(2) The procedure set out in this rule shall apply unless the only matter stated in the reference to be in dispute is the validity of any patent or part of a patent.

(3) The party to the dispute who is the proprietor of the patent or an exclusive licensee of the patent (such party being referred to in this rule and rule 77 as the plaintiff) shall, if he desires to proceed with the reference, within 14 days from making the reference, file a statement giving full particulars of his case on the matters in dispute and shall at the same time send a copy of the statement to the other party to the dispute.

(4) Within 2 months from the date of receipt by the other party to the dispute of the copy of the plaintiff’s statement, the other party (referred to in this rule and rule 77 as the defendant) shall, if he wishes to contest the plaintiff’s case, file a counter-statement on Form HC6 setting out fully the grounds on which he contests the plaintiff’s case and shall at the same time send a copy of the counter-statement to the plaintiff.

[S 81/2014 wef 14/02/2014]

(5) If the defendant alleges in his counter-statement that the patent or any part of it alleged by the plaintiff to have been infringed is not valid, the plaintiff shall, if he wishes to contest the defendant’s allegation, within 2 months from the date of receipt of the counter- statement, file a further statement setting out fully the grounds on which he contests the defendant’s allegation and shall at the same time send a copy of the further statement to the defendant.

(6) Subject to such directions as the Registrar may give, the plaintiff may, within 2 months from the date of receipt of the counter-

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statement, or, if he has filed a further statement under paragraph (5), within 2 months thereof, file evidence in support of his case and shall send a copy thereof to the defendant.

(7) Within 2 months from the date of receipt of the copy of the plaintiff’s evidence or, if the plaintiff does not file any evidence, within 2 months from the expiration of the time within which such evidence could have been filed, the defendant may file evidence in support of his case and shall send a copy of that evidence to the plaintiff; and, within 2 months from the date of receipt of the copy of the defendant’s evidence, the plaintiff may file further evidence confined to matters strictly in reply and shall send a copy of it to the defendant.

(8) No further evidence shall be filed by either party except by leave or direction of the Registrar.

(9) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the reference.

[S 81/2014 wef 14/02/2014]

Procedure where validity of patent is in dispute

77.—(1) Where the only matter stated in the reference made under section 67(3) to be in dispute is the validity of any patent or part of a patent, the procedure set out in this rule shall apply.

(2) The defendant shall, if he wishes to contest the plaintiff’s case, within 14 days from making the reference, file a statement giving full particulars of the grounds on which he alleges that the patent or part of the patent is invalid and shall at the same time send a copy of the statement to the plaintiff.

(3) The plaintiff shall, if he wishes to contest the defendant’s allegation, within 2 months from the date of receipt of the defendant’s statement, file a counter-statement on Form HC6 giving full particulars of the grounds on which he contests the defendant’s allegations, and shall at the same time send a copy of it to the defendant.

[S 81/2014 wef 14/02/2014]

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(4) Subject to such directions as the Registrar may think fit to give, the defendant may, within 2 months from the date of receipt of the plaintiff’s counter-statement, file evidence in support of his case, and shall send a copy of it to the plaintiff.

(5) Within 2 months from the date of receipt of the copy of the defendant’s evidence or, if the defendant does not file any evidence, within 2 months from the expiration of the time within which such evidence could have been filed, the plaintiff may file evidence in support of his case and shall send a copy of that evidence to the defendant; and, within 2 months from the date of receipt of the copy of the plaintiff’s evidence, the defendant may file further evidence confined to matters strictly in reply and shall send a copy of it to the plaintiff.

(6) No further evidence shall be filed by either party except by leave or direction of the Registrar.

(7) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the reference.

[S 81/2014 wef 14/02/2014]

Application for declaration as to non-infringement

78.—(1) An application to the Registrar under section 78 for a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent shall be made in writing and shall be accompanied by a statement setting out fully the facts upon which the applicant relies as showing that section 78(1)(a) and (b) have been complied with and the relief which he seeks.

[S 81/2014 wef 14/02/2014]

[S 739/2014 wef 13/11/2014]

(2) The applicant shall, at the time the application and the statement are filed, serve on the proprietor of the patent a copy of the application and a copy of the statement.

[S 81/2014 wef 14/02/2014]

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

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(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

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

[S 81/2014 wef 14/02/2014]

(3) Subject to such directions as the Registrar may think fit to give, the applicant may, within 2 months from the date of receipt of the copy of the counter-statement, file evidence in support of his application and shall send a copy thereof to the proprietor of the patent.

(4) Within 2 months from the date of receipt of the copy of the applicant’s evidence or, if the applicant does not file any evidence, within 2 months from the expiration of the time within which such evidence could have been filed, the proprietor of the patent may file evidence in support of his case and shall send a copy of that evidence to the applicant; and, within 2 months from the date of receipt of the copy of the proprietor’s evidence, the applicant may file further evidence confined to matters strictly in reply and shall send a copy of it to the proprietor.

(5) No further evidence shall be filed by either party except by leave or direction of the Registrar.

(6) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the application.

[S 81/2014 wef 14/02/2014]

REVOCATION OF PATENTS

Application for information on corresponding applications

79. [Deleted by S 366/2004]

Procedure on application for revocation

80.—(1) An application to the Registrar for the revocation of a patent shall be made on Patents Form 35 and shall be accompanied by a statement setting out fully the grounds of revocation, including the facts upon which the applicant relies and the relief which he seeks.

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(2) The applicant shall, at the time the application and the statement are filed, serve on the proprietor of the patent a copy of the application and a copy of the statement.

[S 81/2014 wef 14/02/2014]

(3) Within 3 months from the date of receipt of the copies of the application and statement, the proprietor of the patent, if he wishes to contest the application, shall file a counter-statement on Form HC6 setting out fully the grounds upon which the application is contested and he may, at the same time file an amendment of the specification of the patent in accordance with section 83, and shall at the same time send a copy of the amendment (if any) and the counter-statement to the applicant.

[S 81/2014 wef 14/02/2014]

(4) If the proprietor of the patent fails to file the counter-statement in accordance with paragraph (3), he shall not be allowed to take part in the subsequent proceedings, and the application for revocation shall be considered by the Registrar as if each specific fact set out in the statement were conceded, except in so far as it is contradicted by other document in the possession of the Registrar.

(5) The applicant may, within 3 months from the date of receipt of the copy of the amendment (if any) and the counter-statement, file evidence as he may desire to adduce in support of his case and shall at the same time send a copy of that evidence to the proprietor.

(6) If the applicant files no evidence in accordance with paragraph (5), he shall, unless the Registrar otherwise directs, be deemed to have abandoned his application.

(7) If the applicant files evidence in accordance with paragraph (5), then, within 3 months from the date of receipt of the copy of the applicant’s evidence, the proprietor of the patent may file evidence as he desires to adduce in support of his case and shall at the same time send a copy of that evidence to the applicant.

(8) Within 3 months from the date of receipt by the applicant of the copy of the proprietor’s evidence, the applicant may file further evidence confined to matters strictly in reply and shall at the same time send a copy of that evidence to the proprietor.

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(9) No further evidence shall be filed by either party, but in any proceedings before the Registrar, he may at any time, if he thinks fit, give leave to either party to file any evidence upon such terms as to costs or otherwise as he may think fit.

(10) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the application.

[S 81/2014 wef 14/02/2014]

Material information prescribed under section 80(1)(f)(iii)

80A. The material information for the purposes of section 80(1)(f)(iii) shall be —

(a) any prescribed information referred to in —

(i) repealed section 29(2)(c)(ii) or (d)(ii) in force immediately before 14th February 2014; or

(ii) repealed section 29(5) in force immediately before 1st July 2004;

[S 81/2014 wef 14/02/2014]

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

[S 81/2014 wef 14/02/2014]

(c) where the prescribed information or prescribed documents referred to in paragraph (a) or (b) includes any document that is not in English, the English translation of such document that was filed.

[S 81/2014 wef 14/02/2014]

Procedure relating to preparation of re-examination report

81.—(1) If the Registrar decides to cause the patent to be re- examined —

(a) the Registrar shall direct the applicant for revocation of the patent to file Patents Form 36 requesting re-examination of the patent, together with the prescribed re-examination fee and any security for the costs or expenses of the proceedings specified by the Registrar, within 2 months from the date of the direction, and if the applicant fails to do

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so within that period he shall be deemed to have abandoned his application; and

(b) the Examiner shall during re-examination take into consideration the statement by the applicant, any amendment of the specification of the patent, the counter- statement by the proprietor of the patent and any evidence filed under rule 80 and shall recommend whether or not the patent should be revoked on any of the grounds specified in the application for revocation, and shall notify the Registrar of the conclusions in the re-examination report stating fully the reasons for such conclusions.

(2) If amendments have been proposed under section 83(1) by the proprietor of the patent, the Examiner shall in the re-examination report include an opinion as to whether the amendment proposed —

(a) is allowable under section 84(3); and

(b) would overcome, in whole or in part, any of the grounds of revocation specified in the application for revocation.

Copies and conclusions of re-examination report

82. The Registrar shall send a copy of the re-examination report to both the applicant for revocation of the patent and the proprietor of the patent, and he shall take into consideration the conclusions of the re- examination report in making his determination on the patent or the patent as amended.

Award of costs on surrender of patent

83. If, in proceedings before the Registrar under section 80, the proprietor of a patent offers to surrender his patent under section 40, the Registrar shall, in deciding whether costs should be awarded to the applicant for revocation, consider whether proceedings might have been avoided if the applicant had given reasonable notice to the proprietor before the application was filed.

Notification of an opportunity to amend

84.—(1) Where it appears to the Registrar in accordance with section 81 that the patent ought to be revoked, the proprietor of the

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patent shall be so notified and afforded an opportunity, within 3 months from the date of such notification, to make observations and to amend the specification of the patent.

(2) Where the Registrar allows under section 83 the proprietor of the patent to amend the specification of the patent, he may, before the specification is amended, require the applicant to file a new specification, as amended, prepared in accordance with rules 19, 21 and 23.

AMENDMENT OF PATENTS IN INFRINGEMENT OR REVOCATION PROCEEDINGS

Procedure as to opposition to amendment

85.—(1) Where in proceedings before the Registrar a proposed amendment under section 83 is advertised, notice of opposition to such an amendment may, within 2 months from the date of advertisement in the journal, be filed on Patents Form 58.

[S 81/2014 wef 14/02/2014]

(2) Such notice of opposition shall be supported by a statement setting out fully the facts upon which the opponent relies and the relief which he seeks.

[S 81/2014 wef 14/02/2014]

(3) The opponent shall, at the time the notice of opposition and the statement are filed, serve, on the proprietor of the patent and on every other party to the proceedings before the Registrar, a copy of the notice of opposition and a copy of the statement.

[S 81/2014 wef 14/02/2014]

(4) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the opposition to the amendment.

[S 81/2014 wef 14/02/2014]

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NATIONAL PROCESSING OF INTERNATIONAL APPLICATIONS

Treatment of international applications

86.—(1) Subject to this rule, in relation to an international application for a patent (Singapore) which is, under section 85, to be treated as an application for a patent under the Act, the prescribed period for the purposes of section 86(3) and (6) shall be —

(a) in a case where —

(i) the relevant date is on or after 1st May 2002, and the national phase of the application begins on or after 1st January 2004; or

(ii) Singapore has been elected in accordance with Chapter II of the Patent Co-operation Treaty,

30 months from the relevant date; or

(b) in any other case, 20 months from the relevant date.

(2) Payment of the prescribed fee shall be made within the period prescribed in paragraph (1)(a) or (b), as the case may be, and if the applicant so wishes, together with the filing of Patents Form 37.

(3) [Deleted by S 93/2007]

(3A) Where an international application for a patent (Singapore) has begun the national phase, a request may be made under section 17(2B) within one month from the date the national phase of the application begins.

(4) In the case of an international application for a patent (Singapore), where an English translation of a document or part of a document is required by the Act or these Rules to be filed before or at the time limit for entering the national phase, verification of the translation, as required under rule 112 and permitted by rule 51 bis 1(d) of the Regulations under the Patent Co-operation Treaty, may be given to the Registrar at any time before the end of 2 months after that time limit.

[S 573/2017 wef 30/10/2017]

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(5) For the purposes of section 86(3) and (6), where an English translation of the application or any amendment of the application is required, the translation —

(a) shall exclude the request and abstract unless —

(i) the applicant expressly requests the Registrar to proceed earlier than the expiry of the period prescribed in paragraph (1); and

(ii) the application has not been published in accordance with the Patent Co-operation Treaty;

(b) shall include any textual matter in the drawings in a form which complies with rule 49.5(d) of the Regulations under the Patent Co-operation Treaty;

(c) where a title has been established by the International Searching Authority under rule 37.2 of the Regulations under the Patent Co-operation Treaty which differs from the title included in the application as originally filed, shall include the former title in place of the latter; and

(d) may exclude any textual matter contained in a sequence listing forming part of the description if such textual matter complies with rule 12.1(d) of the Regulations under the Patent Co-operation Treaty and the description complies with rule 5.2(b) of those Regulations.

(6) Where an applicant is required to file a translation into English both of an application as originally filed and of the amendment to it, in accordance with paragraph (5), in order to satisfy the relevant conditions of section 86(3) and (6) and at the expiry of the applicable period referred to in paragraph (1), the prescribed fee has been paid and one but not both of the necessary translations has been filed —

(a) the Registrar shall give notice to the applicant at the address furnished by the applicant in accordance with rule 31 requiring the applicant to file the required translation within 2 months from the date on which the notice is sent; and

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(b) the applicable period shall be treated in respect of that translation as not expiring until the end of the period specified in the notice given under sub‑paragraph (a).

(7) The Registrar shall publish any translation supplied in accordance with section 86(3) or (6) following the filing of Patents Form 38 accompanied by the payment of the prescribed fee.

(8) In the case of an international application for a patent (Singapore) in respect of which the conditions specified in section 86(3)(a) are satisfied, the period prescribed for the purposes of section 24(2) shall be 2 months from the time limit for entering the national phase.

(8A) In the case of an international application for a patent (Singapore) in respect of which the conditions specified in section 86(3)(b) are satisfied, the period prescribed for the purposes of section 24(2) shall be the later of the following periods to expire:

(a) the period prescribed by rule 18(1);

(b) 2 months from the date on which those conditions are satisfied.

(9) Where, in relation to an international application for a patent (Singapore), the applicant desires that section 85(1) shall not cease to apply to the application by virtue of the operation of section 85(3), application shall be made to the Registrar in writing, accompanied by a statement of the facts upon which the applicant relies.

[S 739/2014 wef 13/11/2014]

(10) An international application for a patent (Singapore) shall not be treated as withdrawn under the Act if it, or the designation of Singapore in it, is deemed to be withdrawn under the Patent Co- operation Treaty where, in the same or comparable circumstances in relation to an application under the Act (other than an international application for a patent) —

(a) the Registrar could have directed that an irregularity be rectified under rule 100 or that an extension be granted under rule 108; and

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(b) the Registrar determines that the application would not have been treated as withdrawn under the Act.

(11) Where under section 85(3) an application is not to be treated as withdrawn and the applicant wishes to proceed —

(a) the Registrar may amend any document received by the Registry from the receiving Office or the International Bureau and alter any period or time which is specified in the Act or these Rules upon such terms (including payment of any appropriate prescribed fee) as he may direct; and

(b) the fee prescribed under section 86(3) shall not be payable.

(12) Where the applicant satisfies the Registrar that —

(a) because of an error made by the receiving Office, an international application for a patent (Singapore) has been accorded a date of filing which is incorrect; or

(b) the priority claim made under Article 8(1) of the Patent Co- operation Treaty has been considered not to have been made by the receiving Office or the International Bureau because of an error made by the Office or the Bureau,

the Registrar may amend any document received by the Registry from the receiving Office or the International Bureau or alter any period or time which is specified in the Act or these Rules as if the error were an error on the part of the Registry.

(13) Where —

(a) an international application for a patent (Singapore) purports to designate Singapore; and

(b) the applicant alleges that he has been refused a filing date under the said Treaty on account of an error or omission in any institution having functions under the said Treaty,

the applicant may apply to the Registrar in writing for it to be treated as an application under the Act, accompanied by a statement of the facts upon which he relies; and the Registrar may amend any

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document filed by the applicant and alter any period or time which is specified in the Act or these Rules upon such terms as he may direct.

[S 739/2014 wef 13/11/2014]

(14) In this rule, “receiving Office” has the same meaning as in the Patent Co-operation Treaty.

(15) In this rule, in relation to an international application for a patent (Singapore) —

“relevant date”means the declared priority date or, where there is no declared priority date, the date of filing of that application;

“time limit for entering the national phase” means the end of the relevant period prescribed by paragraph (1) or, in a case where that period has been extended under paragraph (6), rule 100 or 108, the end of that period as so extended.

HEARINGS, AGENTS AND CORRECTION OF ERRORS

Registrar’s discretionary powers

87.—(1) Without prejudice to any of the provisions of the Act or these Rules requiring the Registrar to hear any party to proceedings under the Act or these Rules, or to give such party an opportunity to be heard, but subject to paragraph (2), the Registrar shall, before exercising any discretionary power vested in him by or under the Act or these Rules adversely to any party to a proceeding before him, give that party an opportunity to be heard.

(2) Paragraph (1) and rule 88 do not apply to either of the following:

(a) the issue of a notice of intention to refuse an application for a patent under section 29A(3);

(b) the sending of a notice of refusal of an application for a patent under section 29B(5)(b)(ii).

[S 81/2014 wef 14/02/2014]

Request for hearing

88.—(1) A request for the exercise of the discretionary powers of the Registrar under rule 87 in ex parte proceedings, whether interlocutory or otherwise, shall be made on Form HC4 and shall

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be filed within one month from the date of notification by the Registrar of any objection to an application or the date of any other indication that he proposes to exercise a discretionary power, and the Registrar may refuse to hear any party who has not filed the request within the time allowed.

[S 81/2014 wef 14/02/2014]

(2) Upon receipt of a request under paragraph (1), the Registrar shall send to the person making the request a notice of a time when he may be heard which shall be not less than 14 days from the date of the notice.

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

[S 81/2014 wef 14/02/2014]

(4) A person shall, at the time he makes a request under paragraph (3), serve on every other party to the proceedings a copy of the request.

[S 81/2014 wef 14/02/2014]

(5) Except as provided in paragraph (1) or (3), no request shall be made for the exercise of the discretionary powers of the Registrar under rule 87.

[S 81/2014 wef 14/02/2014]

(6) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for a hearing under this rule.

[S 81/2014 wef 14/02/2014]

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

[S 81/2014 wef 14/02/2014]

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

(a) the party shall, within 6 weeks after the date of the Registrar’s decision, by filing Form HC5, request the Registrar to state the Registrar’s grounds of decision; and

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(b) the Registrar shall as soon as practicable send the grounds of decision to the party.

[S 81/2014 wef 14/02/2014]

(9) Where any party wishes to have the Registrar’s grounds of decision in respect of a request under paragraph (3) —

(a) the party shall —

(i) request the Registrar in writing to state the Registrar’s grounds of decision; and

(ii) at the time the party makes the request under sub‑paragraph (i), serve on every other party to the proceedings a copy of that request; and

(b) the Registrar shall as soon as practicable send the grounds of decision to every party to the proceedings.

[S 81/2014 wef 14/02/2014]

(10) The date on which the Registrar’s grounds of decision are sent to the party making the request under paragraph (8)(a) or (9)(a)(i), as the case may be, shall be deemed to be the date of the Registrar’s decision for the purpose of an appeal.

[S 81/2014 wef 14/02/2014]

Hearing and notice of attendance at hearing

88A.—(1) This rule shall apply only to 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, or paragraph 3 of the Fourth Schedule, where the parties have filed evidence pursuant to any of those rules or to a direction by the Registrar.

[S 81/2014 wef 14/02/2014]

(2) Upon completion of the filing of evidence by the parties, the Registrar shall give notice to the parties of the date or dates on which he will hear arguments on the case.

(3) The parties shall file with the Registrar their written submissions and bundles of authorities at least one month before the first date of hearing notified under paragraph (2), and shall at the same time as

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filing, exchange with one another their respective written submissions and bundles of authorities.

(4) Any party who intends to appear at the hearing shall file Form HC1 with the Registrar before the date he intends to appear at that hearing.

[S 81/2014 wef 14/02/2014]

(5) Any party who does not file Form HC1 with the Registrar before the date he intends to appear at the hearing may be treated as not desiring to be heard, and the Registrar may proceed with the hearing in the absence of that party or may, without proceeding with the hearing, give his decision or dismiss the proceedings, or make such other order as he thinks fit.

[S 81/2014 wef 14/02/2014]

(6) If, after filing Form HC1 with the Registrar, a party does not appear at the hearing, the Registrar may proceed with the hearing in the absence of that party, or may, without proceeding with the hearing, give his decision or dismiss the proceedings, or make such other order as he thinks fit.

[S 81/2014 wef 14/02/2014]

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

[S 81/2014 wef 14/02/2014]

(8) Upon making any decision or order under paragraph (5) or (6) or dismissing any proceedings under paragraph (5), (6) or (7), the Registrar shall notify every party of the decision, order or dismissal, as the case may be, in writing.

[S 81/2014 wef 14/02/2014]

(9) Any decision or order made by the Registrar under paragraph (5) or (6) in the absence of any party may, on the application of that party, be set aside by the Registrar on such terms as the Registrar thinks fit.

[S 81/2014 wef 14/02/2014]

(10) Any proceedings dismissed under paragraph (5), (6) or (7) may, on the application of any party, be restored on the direction of the Registrar.

[S 81/2014 wef 14/02/2014]

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(11) An application under paragraph (9) or (10) shall be made within 14 days after the date of the Registrar’s notification under paragraph (8).

[S 81/2014 wef 14/02/2014]

Case management conference

88B.—(1) Notwithstanding anything in these Rules, at any stage of any application to or proceedings before the Registrar, the Registrar may direct the applicant or parties to attend a case management conference in order that the Registrar may make such order or give such direction as he thinks fit for the just, expeditious and economical disposal of the matter.

(2) At a case management conference, the Registrar may —

(a) consider any matter, including the possibility of settlement of all or any of the issues in the application or proceedings; and

(b) direct the parties to furnish him with such information as he may require.

(3) If any party fails to comply with any direction or order given under paragraph (1) or (2), the Registrar may —

(a) where that direction or order was given in relation to any application or proceedings initiated by that party, dismiss the application or proceedings, as the case may be; or

(b) make such other order as the Registrar thinks fit.

(4) Any direction given or order made by the Registrar under paragraph (1), (2) or (3) may be set aside or varied by him on such terms as he thinks fit.

(5) If, during or pursuant to a case management conference, the parties are agreeable to a settlement of all or some of the matters in dispute in any application or proceedings, the Registrar may —

(a) give his decision in relation to the application or proceedings; or

(b) make such order as he thinks just to give effect to the settlement.

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(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.

(8) Any application or proceedings dismissed under paragraph (3) or (6) may, on the application of any party, be restored on the direction of the Registrar.

[S 81/2014 wef 14/02/2014]

Hearings in public

89.—(1) Subject to paragraph (2), where a hearing before the Registrar of any dispute between 2 or more parties relating to any matter in connection with a patent or an application for a patent takes place after the publication of the application under section 27, the hearing of the dispute shall be in public.

(2) After consulting those parties to the dispute who appear in person or are represented at a hearing to which paragraph (1) applies, the Registrar may direct that the hearing not be held in public.

Right of audience

90.—(1) Unless the Registrar directs otherwise in any particular case —

(a) all attendances upon the Registrar by a party to any proceedings before the Registrar or any other matter under the Act or these Rules may be made by or through —

(i) an advocate and solicitor; or

(ii) any other person,

appointed by the party to act on his behalf; and

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(b) every notice, application or other document filed under the Act by the party may be signed by the advocate and solicitor or the person so appointed.

(2) Where any party to any proceedings before the Registrar or any other matter under the Act or these Rules appoints an advocate and solicitor or any other person —

(a) to act on his behalf; or

(b) to act on his behalf in substitution for another,

the advocate and solicitor or person shall file a declaration of authorisation, and furnish an address for service in Singapore, on Form CM1 on the first occasion when he acts on behalf of the party.

[S 81/2014 wef 14/02/2014]

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

[S 739/2014 wef 13/11/2014]

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

(a) where the declaration of authorisation is filed, and the address for service is furnished, on —

(i) Patents Form 1 or 37; or

(ii) any application made under rule 86(9) or (13),

the declaration of authorisation and address for service shall be effective for the purposes of all proceedings in respect of the patent, or the application for a patent, in relation to which that form is filed or the application is made, as the case may be;

[S 739/2014 wef 13/11/2014]

(b) where the declaration of authorisation is filed, and the address for service is furnished, on —

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(i) Patents Form 2, 7, 35 or 58;

(ii) Form HC4 or HC6;

(iii) Patents Form 28 (in so far as the form relates to an application referred to in rule 73(1));

(iv) an application referred to in rule 14(1), 71(1) or 78(1);

(v) a request referred to in rule 15(1) or made under paragraph 3(4) of the Fourth Schedule;

(vi) a reference referred to in rule 16(1) or 76(1); or

(vii) a notice filed under paragraph 3(6) of the Fourth Schedule,

the declaration of authorisation and address for service shall be effective for the purposes of the proceedings in relation to which that form or notice is filed, or that application, request or reference is made, as the case may be;

[S 739/2014 wef 13/11/2014]

(c) where the declaration of authorisation is filed, and the address for service is furnished, on Patents Form 15, 19, 20 or 53, the declaration of authorisation and address for service shall be effective only for the purposes of all renewal applications or proceedings in respect of the patent in relation to which that form is filed;

(d) where the declaration of authorisation is filed, and the address for service is furnished, on —

(i) Patents Form 34;

(ii) Form CM2, CM10 or CM12;

(iii) an application made under rule 64(1); or

(iv) a request mentioned in rule 92(1) or (2) or made under paragraph 2(1) of the Fourth Schedule,

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the declaration of authorisation and address for service are effective only for the matter for which that form is filed or that application or request is made, as the case may be;

[S 146/2017 wef 01/04/2017]

(e) where the declaration of authorisation is filed, and the address for service is furnished, on Form CM6, the declaration of authorisation and address for service shall be effective for the purposes of all proceedings in respect of the licence in relation to which that form is filed;

(f) where the declaration of authorisation is filed, and the address for service is furnished, on Form CM7, the declaration of authorisation and address for service shall be effective for the purposes of all proceedings in respect of the security interest in relation to which that form is filed;

(g) where the declaration of authorisation is filed, and the address for service is furnished, on Form CM8 —

(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 other proceedings in respect of that patent or application; or

[S 739/2014 wef 13/11/2014]

(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

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application for a patent, in relation to which that form is filed.

[S 81/2014 wef 14/02/2014]

[S 739/2014 wef 13/11/2014]

(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 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. [S 81/2014 wef 14/02/2014]

(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.

[S 81/2014 wef 14/02/2014]

(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.

[S 81/2014 wef 14/02/2014]

(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.

[S 81/2014 wef 14/02/2014]

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Correction of errors in patents and applications

91.—(1) Subject to paragraph (12) and unless the Registrar directs otherwise, a request for the correction of an error of translation or transcription or of a clerical error or mistake in any specification of a patent, in an application for a patent or in any document filed in connection with a patent or such an application shall be made on Form CM4.

[S 81/2014 wef 14/02/2014]

(1A) Where the request relates to an error in any document other than a form, the request shall be accompanied by a copy of the document with the proposed correction indicated in the following manner:

(a) by striking through any text, figure or other matter to be replaced or deleted; and

(b) by underlining any replacement text, figure or other matter. [S 81/2014 wef 14/02/2014]

(1B) [Deleted by S 93/2007]

(1C) Paragraph (1A) shall not apply if the request is to be filed using the electronic online system; and the request shall instead comply with practice directions issued by the Registrar in place of the requirements in that paragraph, including the filing of such other document prepared in such manner as may be specified therein.

(2) Where such a request relates to a specification, no correction shall be made therein unless the correction is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction.

(3) The Registrar may advertise the proposed correction by publishing the request and the nature of the proposed correction in the journal and in such other manner, if any, as the Registrar may determine.

[S 739/2014 wef 13/11/2014]

(4) [Deleted by S 739/2014 wef 13/11/2014]

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(5) Any person may, at any time within 2 months from the date of the advertisement, give notice to the Registrar of opposition to the request on Patents Form 58.

[S 81/2014 wef 14/02/2014]

(6) Such notice of opposition shall be accompanied by a supporting statement setting out fully the facts on which the opponent relies and the relief which he seeks.

(7) The opponent shall, at the time the notice and the statement are filed, serve on the person making the request a copy of the notice and a copy of the statement.

[S 81/2014 wef 14/02/2014]

(7A) If the person making the request desires to proceed with the request, he shall —

(a) within 2 months from the date on which he is served the copies of the notice and the statement, file a counter- statement on Form HC6 setting out fully the grounds on which he contests the opposition; and

(b) at the time the counter-statement is filed, serve on the opponent a copy of the counter-statement.

[S 81/2014 wef 14/02/2014]

(8) The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for the request or the opposition to the request.

[S 81/2014 wef 14/02/2014]

(9) Before the Registrar grants the request for correction, the person making the request shall, if the Registrar so requires, and within the time specified by the Registrar, file a new specification as corrected, which shall be prepared in accordance with rules 19, 21 and 23.

[S 81/2014 wef 14/02/2014]

(10) [Deleted by S 93/2007]

(11) No amendment or correction (other than an amendment or correction introduced in order to comply with the formal requirements) may be introduced in the new specification to be filed under paragraph (9).

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(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.

[S 81/2014 wef 14/02/2014]

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

[S 81/2014 wef 14/02/2014]

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INFORMATION AND INSPECTION

Information about patents and patent applications

92.—(1) A request under section 108 for information relating to any patent or application for a patent may be made as to —

(a) the date on which any report, document or English translation referred to in section 29, 29B or 30(c) or rule 42 or 42A was received by the Registrar;

[S 81/2014 wef 14/02/2014]

(b) when the specification of a patent or application for a patent was published;

(c) when an application for a patent was withdrawn, was treated as having been withdrawn, was treated as having been abandoned, was refused or was treated as having been refused;

(d) whether a renewal fee was not paid within the period prescribed for the purposes of section 36(2);

(e) whether a renewal fee was paid within the 6 months referred to in section 36(3);

(f) when a patent has ceased to have effect and/or an application for restoration of a patent was filed;

(g) when an entry was made in the register or an application was made for the making of such entry;

(h) when any application or request was made or action taken involving an entry in the register or advertisement in the journal, if the nature of the application, request or action is specified in the request;

(i) when any document may be inspected in accordance with rule 93 or 94; and

(j) such other particulars referred to in any patent or application for a patent as the Registrar may in any particular case allow.

(2) As regards information relating to any patent in force by virtue of section 117(3), a request may also be made as to when —

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(a) a certificate of registration was issued;

(b) the patent was first renewed under this Act; and

(c) an entry was made in the Register of Patents under the repealed Registration of United Kingdom Patents Act (Cap. 271, 1985 Ed.).

(3) Every request mentioned in paragraph (1) or (2) must be made in writing.

[S 146/2017 wef 01/04/2017]

Inspection of documents

93.—(1) Subject to paragraph (5), and to the restrictions prescribed in paragraph (4), after the date of publication of an application for a patent in accordance with section 27, the Registrar shall, upon request made on Form CM10 and upon payment of the prescribed fee, permit all documents filed or kept at the Registry in relation to the application or any patent granted in pursuance of it, to be inspected.

[S 81/2014 wef 14/02/2014]

(2) Subject to the same restrictions and to rule 96 where the circumstances specified in section 108(4) or (5) exist, the Registrar shall, upon request made on Form CM10, and upon payment of the prescribed fee, permit inspection of such documents before the publication in accordance with section 27.

[S 81/2014 wef 14/02/2014]

(3) [Deleted by S 81/2014 wef 14/02/2014]

(4) The restrictions referred to in paragraph (1) are —

(a) that no document shall be open to inspection until 14 days after it has been filed at the Registry;

(b) that documents prepared in the Registry solely for use therein shall not be open to inspection;

(c) that any document sent to the Registry, at its request or otherwise, for inspection and subsequent return to the sender, shall not be open to inspection;

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(d) that no request made under rule 59 or 92 or this rule, or rule 63(2) in force immediately before 14th February 2014, or this rule shall be open to inspection; and

[S 81/2014 wef 14/02/2014]

(e) that documents in respect of which the Registrar issues directions under rule 94 that they are to be treated as confidential shall not be open to inspection, except as permitted in accordance with that rule.

(5) Nothing in this rule shall be construed as imposing on the Registrar any duty of making available for public inspection any document or any part of a document —

(a) which in his opinion disparages any person in a way likely to damage him; or

(b) the publication or exploitation of which would in his opinion be generally expected to encourage offensive, immoral or anti-social behaviour.

(6) No appeal shall lie from a decision of the Registrar under paragraph (5) not to make a document or part of a document available for public inspection.

Confidential documents

94.—(1) Where a document other than a form is filed at, or sent to, the Registry, and the person filing or sending it or any party to the proceedings to which the document relates so requests, giving his reasons, within 14 days from the filing or sending of the document, the Registrar may direct that it be treated as confidential, and the document shall not be open to public inspection while the matter is being determined by the Registrar.

[S 81/2014 wef 14/02/2014]

(2) Where such a direction has been given and not withdrawn, nothing in this rule shall be taken to authorise or require any person to be allowed to inspect the document to which the direction relates except by leave of the Registrar.

(3) The Registrar shall not withdraw any direction given under this rule nor shall he give leave for any person to inspect any document to

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which a direction which has not been withdrawn relates without prior consultation with the person at whose request the direction was given, unless the Registrar is satisfied that such prior consultation is not reasonably practicable.

(4) Where such a direction is given or withdrawn, a record of the fact shall be filed with the document to which it relates.

(5) Where the period referred to in paragraph (1) is extended under rule 108, the relevant document shall not be, or, if the period is extended upon expiry, the relevant document shall cease to be open to public inspection until the expiry of the extended period, and, if a request for a direction is made, the document shall not be open to public inspection while the matter is being determined by the Registrar.

Publication of bibliographic information

95. The following bibliographic information is prescribed for the purposes of section 108(3)(a):

(a) the number of the application;

(b) the date of filing of the application and, where a declaration has been made under section 17(2), the filing date, country and file number, when available, of each application referred to in that declaration;

(c) the name of the applicant or applicants including any applicant or applicants resulting from an order under section 20;

(d) an alteration of the name of the applicant or applicants under rule 56;

(e) the title of the invention; and

(f) if the application has been withdrawn, has been treated as having been withdrawn, has been treated as having been abandoned, has been refused or has been treated as having been refused, that fact.

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Request for information on unpublished patent applications

96.—(1) Where the circumstances specified in section 108(4) exist, a request under section 108(1) shall be accompanied by a statutory declaration verifying their existence and such documentary evidence (if any) supporting the request as the Registrar may require.

(2) The Registrar shall send a copy of the request, the declaration and the evidence (if any) to the applicant for the patent and shall not comply with the request until the expiry of 14 days thereafter.

ELECTRONIC ONLINE SYSTEM

Establishment of electronic online system

96A.—(1) There shall be established an electronic online system for the purposes of these Rules.

(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

(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).

[S 81/2014 wef 14/02/2014]

(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

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

[S 81/2014 wef 14/02/2014]

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.

[S 81/2014 wef 14/02/2014]

96C. [Deleted by S 81/2014 wef 14/02/2014]

96D. [Deleted by S 81/2014 wef 14/02/2014]

96E. [Deleted by S 81/2014 wef 14/02/2014]

96F. [Deleted by S 81/2014 wef 14/02/2014]

96G. [Deleted by S 81/2014 wef 14/02/2014]

Use of electronic online system to be in accordance with these Rules, etc.

96H. A person shall comply with these Rules and practice directions issued by the Registrar when using the electronic online system for any purpose under these Rules.

96I. [Deleted by S 81/2014 wef 14/02/2014]

96J. [Deleted by S 81/2014 wef 14/02/2014]

Service bureau

96K. The Registrar may establish or appoint agents to establish one or more service bureaus to assist in the use of the electronic online

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system in carrying out any of the transactions referred to in rule 96A(2)(a).

[S 81/2014 wef 14/02/2014]

MISCELLANEOUS

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;

[S 739/2014 wef 13/11/2014]

(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); or

[S 739/2014 wef 13/11/2014]

(d) by hand. [S 739/2014 wef 13/11/2014]

(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;

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

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(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 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).

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(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.

[S 81/2014 wef 14/02/2014]

Hours of business and excluded days

98.—(1) Subject to paragraphs (7) and (10), any business done under the Act or these Rules —

(a) on any day after the hours of business of the Registry for that class of business; or

(b) on any day which is an excluded day for that class of business,

shall be taken to have been done on the next following day which is not an excluded day for that class of business.

[S 81/2014 wef 14/02/2014]

(2) Where the time for doing any business under the Act or these Rules expires on an excluded day for the doing of that class of business, that time shall be extended to the next following day which is not an excluded day for the doing of that class of business.

(3) [Deleted by S 81/2014 wef 14/02/2014]

(4) [Deleted by S 81/2014 wef 14/02/2014]

(5) [Deleted by S 81/2014 wef 14/02/2014]

(6) For the avoidance of doubt, where the time for carrying out any transaction referred to in rule 96A(2)(a) expires on an excluded day for the carrying out of that transaction, that time shall be extended to the next following day which is not an excluded day for the carrying out of that transaction, notwithstanding the availability of the electronic online system for the carrying out of that transaction.

[S 81/2014 wef 14/02/2014]

(7) Where, in carrying out any transaction referred to in rule 96A(2)(a), a document —

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(a) is transmitted to the Registry by means of the electronic online system; and

(b) is received, by the server of that system set up to receive such transmissions, at any time before midnight on any day which is not an excluded day for the business of sending to or filing with the Registry that document by means of that system,

that document shall be treated as sent to or filed with, and received by, the Registry at that time and on that day.

[S 81/2014 wef 14/02/2014]

(8) For the purposes of paragraph (7), a document shall be treated as sent to or filed with, and received by, the Registry if and only if the last byte of the transmission containing the document is received by the server referred to in that paragraph.

(9) Any person who sends or files a document by means of the electronic online system may produce a record of transmission issued through that system together with a copy of the notification of acceptance of that document by the Registrar as evidence of —

(a) the sending or filing of that document; and

(b) the date and time when the sending or filing took place.

(10) Subject to rule 97(1)(b), where a document referred to in rule 97(1)(b) —

(a) is transmitted to the Registrar or Registry by means of facsimile transmission; and

(b) is received —

(i) by any facsimile machine designated by the Registry for the receipt of such transmissions; and

(ii) at any time before midnight on any day which is not an excluded day for the business of sending to or filing with the Registry of that document by means of facsimile transmission,

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that document shall be treated as sent to or filed with, and received by, the Registry at that time and on that day.

[S 81/2014 wef 14/02/2014]

(11) For the purposes of paragraph (10) —

(a) a document shall be treated as sent to or filed with, and received by, the Registry if and only if all sheets comprising the complete document are received by the facsimile machine referred to in that paragraph; and

(b) the date and time of receipt of the document, as recorded by the facsimile machine referred to in that paragraph, shall, until the contrary is proved, be treated as the date and time when the document was sent to or filed with, and received by, the Registry.

(12) In the Act and these Rules, “excluded day”, in relation to any specific class of business, means any day on which the Registry shall be taken to be closed for the purposes of the transaction by the public of that class of business.

(13) [Deleted by S 81/2014 wef 14/02/2014]

Excluded days

99. [Deleted by S 366/2004]

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.

(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 —

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(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.

[S 81/2014 wef 14/02/2014]

Dispensation by Registrar

101. Where, under these Rules, any person is required to do any act or thing, or any document or evidence is required to be produced or filed, and it is shown to the satisfaction of the Registrar that from any reasonable cause that person is unable to do that act or thing, or that document or evidence cannot be produced or filed, the Registrar may, upon the production of such evidence and subject to such terms as he thinks fit, dispense with the doing of any such act or thing, or the production or filing of such document or evidence.

Filing of evidence

102.—(1) Where under these Rules evidence may be filed, it shall be by statutory declaration or affidavit.

(2) The original statutory declaration or affidavit shall be filed, unless the Registrar directs in any particular case that a copy thereof may be filed.

(3) Unless the Registrar directs otherwise, he —

(a) may, if he thinks fit in any particular case, in lieu of or in addition to such evidence —

(i) take oral evidence; or

(ii) accept any written statement or documentary evidence; and

(b) shall allow any witness to be cross-examined on any evidence given by the witness.

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Statutory declarations and affidavits

103. Any statutory declaration or affidavit, the original or a copy of which is to be filed under the Act or these Rules, shall be made and subscribed as follows:

(a) in Singapore, before any justice of the peace, or any commissioner or other officer authorised by law to administer an oath for the purpose of any legal proceedings;

(b) in any part of the Commonwealth except Singapore, before any judge, justice of the peace, or any officer authorised by law to administer an oath for the purpose of any legal proceedings; and

(c) elsewhere, before a Singapore consul or vice-consul, or other person performing the functions of a Singapore vice- consul, or before a notary public, judge or magistrate, or any officer authorised by law to administer an oath for the purpose of any legal proceedings.

Admission of documents

104. Any document purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorised by rule 103 to take a declaration, in testimony that the declaration was made and subscribed before him, may be admitted by the Registrar without proof of the genuineness of the seal or signature or of the official character of the person or his authority to take the declaration.

Directions as to furnishing of documents

105. At any stage of —

(a) any proceedings before the Registrar; or

(b) any other matter under the Act or these Rules,

the Registrar may direct that such documents, information or evidence as he may require shall be furnished within such period as he may fix.

105A. [Deleted by S 81/2014 wef 14/02/2014]

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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.

[S 81/2014 wef 14/02/2014]

Appointment of scientific advisers by Registrar

107.—(1) The Registrar may at any time and on his own motion nominate a scientific adviser or scientific advisers from a panel of advisers to assist him in any proceeding under the Act or these Rules, either —

(a) by sitting with the Registrar at the hearing of the proceedings; or

(b) by inquiring and reporting on any question of fact or opinion not involving a question of law or construction,

as the Registrar may direct.

(2) Upon the nomination of a scientific adviser under paragraph (1), the Registrar shall notify all parties to the proceedings of his nominated adviser.

(3) The question to be submitted to the nominated adviser and the instructions to be given to him shall, failing agreement between the parties, be settled by the Registrar.

(4) The remuneration of the nominated adviser for assisting in proceedings under the Act or these Rules, including his allowance and expenses, shall be as determined by the Registrar in accordance with the provisions of the Sixth Schedule.

(5) Without prejudice to any other order of the Registrar in providing for payment of a nominated adviser’s remuneration, the party shall be liable, or where there are more than one party to the

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proceedings be jointly and severally liable, to pay the amount determined by the Registrar as the nominated adviser’s remuneration.

(6) The payment of the remuneration of the nominated adviser by the party, or where more than one party to the proceedings are liable for such remuneration by the parties, shall be through such mode and in such manner as the Registrar may direct.

(7) Where the proceedings under the Act or these Rules are initiated by a party who neither resides nor carries on business in Singapore, the Registrar may require the party to give security for the remuneration of the nominated adviser, and in default of such security being given, may treat the proceedings as being abandoned.

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 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) and (5); [S 573/2017 wef 30/10/2017]

(aa) paragraph (4) (except where paragraph (7) provides otherwise);

[S 573/2017 wef 30/10/2017]

(b) rules 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;

[S 573/2017 wef 30/10/2017]

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p. 138 2007 Ed.] Patents Rules [CAP. 221, R 1

(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 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), 88(1) or 112(4) or (5)(b) or paragraph 1(3) of the Fourth Schedule;

[S 573/2017 wef 30/10/2017]

(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

(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)).

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 139

(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;

(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).

[S 81/2014 wef 14/02/2014]

(7) Where —

(a) after receiving the search report under section 29(2)(b) from the Registrar, the applicant does not file a request for an examination report under section 29(3) within the period prescribed in rule 43(1) or (2) (whichever is applicable) for filing that request; and

(b) the time prescribed under paragraph (4) for filing Patents Form 45 to extend that period expires before, or within 3 months after, 30 October 2017,

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the time prescribed under paragraph (4) for filing that Form is extended to the end of 6 months after that date.

[S 573/2017 wef 30/10/2017]

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, 88B, 91(8) or 106(1) for doing any act or taking any proceedings.

[S 739/2014 wef 13/11/2014]

(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

(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

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(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.

[S 81/2014 wef 14/02/2014]

Protection and compensation of persons affected by extension of time

109.—(1) Where the Registrar has granted a total extension of time of more than 6 months under rule 108(1), or an extension of time under rule 108(5), for any act in relation to an application for a patent that had been published under section 27, or in proceedings under the Act or these Rules which has not been so done within the time required, he shall publish in the journal a notification of his decision.

[S 81/2014 wef 14/02/2014]

(2) Where the Registrar has granted or refused a total extension of time of more than 6 months under rule 108(1), or an extension of time under rule 108(5), for any act in relation to an application for a patent that had been published under section 27, or in proceedings under the Act or these Rules, and where the court reviews the decision of the Registrar under section 90 or 91 and decides to vary the decision under review or set aside the decision under review and make a decision in substitution for the decision so set aside, the Registrar shall

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cause to be published in the journal a notification of the decision of the court.

[S 81/2014 wef 14/02/2014]

(3) Where a notification referred to in paragraph (1) or (2) has been published, a person who availed himself, or took definite steps by way of contract or otherwise to avail himself, of the invention and the subject of the application for the patent concerned by reason of the act or step in relation to which the extension was granted not having been done or taken within the time allowed shall have the right to continue to avail himself of the invention but this right does not extend to granting a licence to another person in respect of the invention.

(4) If the person entitled to the right conferred by paragraph (3) availed himself, or took the steps to avail himself, of the invention in the course of business, that person may —

(a) authorise any partners of his for the time being in that business to avail themselves of the invention; and

(b) assign that right, or transmit it on death (or in the case of a body corporate, on its dissolution), to any person who acquires that part of the business.

(5) Where a product is disposed of to another in exercise of the rights conferred by paragraph (3) or (4), that other person and any person claiming through him may deal with the product in the same way as if it has been disposed by the registered proprietor of the patent.

Calculation of times or periods

110.—(1) Where, on any day, there is —

(a) a general interruption or subsequent dislocation in the postal services of Singapore;

(b) an event or circumstances causing an interruption in the normal operation of the Registry; or

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the Registrar may issue practice directions to certify that day as one on which there has been an “interruption” and, where any period of time specified in the Act or these Rules for the giving, making or filing of any notice, application or other document expires on a day so certified, the period shall be extended to the first following day (not being an excluded day) which is not so certified.

[S 81/2014 wef 14/02/2014]

(2) [Deleted by S 81/2014 wef 14/02/2014]

(3) Where, in or in connection with an application for a patent (“the application in suit”), it is desired to make a declaration specifying for the purposes of section 17(2) an earlier relevant application and the period of 12 months immediately following the date of filing the earlier relevant application ends on a day which is an excluded day for the purposes of section 111, then if the declaration is made on the first following day on which the Registry is open for the transaction of such business, such period shall be altered so as to include both the day of filing of the earlier relevant application and the day on which the declaration is made in or in connection with the application in suit.

(4) Where it is desired to make such a declaration and the period of 12 months referred to in paragraph (3) from the date of filing the earlier relevant application ends on a day certified under paragraph (1) as being one on which there is an interruption, and if the declaration is made on the first day after the end of the interruption, the period shall be altered so as to include both the day of filing of the earlier relevant application and the day on which the declaration is made in or in connection with the application in suit.

(5) Where an application for a patent is filed on the day immediately following a day which is certified under paragraph (1) as being one on which there is an interruption or which is an excluded day for the purposes of section 111, the period of 12 months specified in section 14(4) shall be computed from the day after the next preceding day which is neither so certified nor so excluded.

(6) If in any particular case the Registrar is satisfied that the failure to give, make or file any notice, application or other document within —

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(a) any period of time specified in the Act or these Rules for such giving, making or filing;

(b) the period of 12 months following a disclosure of matter constituting an invention falling within paragraph (a), (b), (c) or (d) of section 14(4); or

was wholly or mainly attributable to a failure or undue delay in the postal services in Singapore or the electronic online system, the Registrar may, if he thinks fit —

(i) extend the period of time for the giving, making or filing so that it ends on the day of the receipt by the addressee of the notice, application or other document (or, if the day of such receipt is an excluded day, on the first following day which is not an excluded day);

(ii) determine that the period of 12 months referred to in sub‑paragraph (b) shall be altered so that it begins on the day of the disclosure and ends on the day of receipt by the Registry of the application for the patent (or, if the day of such receipt is an excluded day, on the first following day which is not an excluded day); or

(iii) determine that the period of 12 months referred to in paragraph (3) shall be altered so as to include both the day of filing of the earlier relevant application and the day on which the declaration specifying that application is received by the Registry (or, if the day of such receipt is an excluded day, the first following day which is not an excluded day),

as the case may be, in each case upon such notice to other parties and upon such terms as he may direct.

Copies of documents

111.—(1) Where a document, other than a published Singapore specification or application, is referred to in any reference, notice, statement, counter-statement or evidence required by the Act or these Rules to be filed at the Registry or sent to the Registrar, one copy of

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that document shall be furnished to the Registry within the period that the reference, notice, statement, counter-statement or evidence may be filed or sent.

(2) Where a copy of any evidence is required by the Act or these Rules to be sent direct to any person, a copy of any document referred to in that document shall also be sent direct to that person.

Translations

112.—(1) Except as expressly provided in the Act or these Rules, this rule shall apply where, in pursuance of the Act or these Rules, there is filed at the Registry or sent to the Registrar —

(a) any document or part of a document which is in a language other than English; or

(b) an English translation of any document or part of a document.

(2) Subject to paragraph (3), where any document or part of a document filed at the Registry or sent to the Registrar is in a language other than English, an English translation of the document or part shall be filed or sent together with the document or part.

(3) Where the document or part has been or will be translated into English under the Patent Co-operation Treaty, the Registrar may permit the English translation to be filed or sent after the document or part has been filed at the Registry or sent to the Registrar.

(4) Where any English translation of a document or part of a document is filed at the Registry or sent to the Registrar under paragraph (2) —

(a) the Registrar may refuse to accept the translation if it is in his opinion inaccurate; and

(b) if he does so —

(i) he shall notify the person who filed or sent the translation of his refusal to accept the translation; and

(ii) another English translation of the document or part shall be filed or sent within 2 months from the date of the Registrar’s notification.

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p. 146 2007 Ed.] Patents Rules [CAP. 221, R 1

(5) Where any English translation of a document or part of a document is filed at the Registry or sent to the Registrar under paragraph (2) —

(a) there shall be filed or sent together with the translation a copy of a verification document —

(i) made in accordance with the Registrar’s requirements; and

(ii) verifying that the translation corresponds to the original text of the document or part; and

(b) the Registrar may, by notice, require to be filed at the Registry or sent to the Registrar, within 2 months from the date of the notice, the original of the verification document.

(6) Where any document or part of a document filed at the Registry or sent to the Registrar is in a language other than English, the Registrar may treat the document or part as not having been filed or sent unless —

(a) there is sent or filed together with the document or part —

(i) an English translation of the document or part; and

(ii) a copy of a verification document under paragraph (5)(a) made in respect of the translation; and

(b) if the Registrar has issued a notice under paragraph (5)(b), the original of the verification document is filed at the Registry or sent to the Registrar within 2 months from the date of the notice.

(7) Paragraphs (4), (5) and (6)(a)(ii) and (b) shall not apply to any document or part of a document translated into English under the Patent Co-operation Treaty.

Publication and sale of documents

113. The Registrar may arrange for the publication and sale of copies of specifications and other documents in the Registry and of indexes to, and abridgements or abstracts of, such documents.

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Journal

114.—(1) The Registrar shall publish a journal containing particulars of applications for and grant of patents and other proceedings under the Act and any other information that he may deem to be generally useful or important.

(2) The journal shall be entitled “The Patents Journal”.

(3) Unless the Registrar otherwise directs, the journal shall be published monthly.

(4) [Deleted by S 419/2006]

Reports of cases

115. The Registrar may from time to time publish reports of —

(a) cases relating to patents decided by him; and

(b) cases relating to patents (whether under the Act or otherwise) decided by any court or body (whether in Singapore or elsewhere),

being cases which he considers to be generally useful or important.

INTERNATIONAL APPLICATIONS

Filing of international applications

116. Where the Registry is the competent receiving Office under the Patent Co‑operation Treaty, an international application for a patent shall be filed at the Registry in English or Chinese.

[S 739/2014 wef 13/11/2014]

[S 673/2016 wef 01/01/2017]

Fees for international applications

117.—(1) Subject to paragraph (5), payment of the transmittal fee referred to in rule 14 of the Regulations under the Patent Co-operation Treaty shall be made to the Registry within one month from the date on which the international application for a patent to which it relates is filed at the Registry.

[S 739/2014 wef 13/11/2014]

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(2) Where, in accordance with rule 19.4(a) of the Regulations under the Patent Co-operation Treaty, an international application for a patent is considered to have been received by the Registry on behalf of the International Bureau as receiving Office, the transmittal of the application by the Registry shall be subject to a payment of the fee under rule 19.4(b) of those Regulations.

(3) Subject to paragraph (5), payment of the international filing fee referred to in rule 15.1 of the Regulations under the Patent Co- operation Treaty shall be made to the Registry within the period referred to in rule 15.4 of those Regulations.

(4) Subject to paragraph (5), payment of the search fee referred to in rule 16.1 of the Regulations under the Patent Co-operation Treaty shall be made to the Registry within the period referred to in rule 16.1(f) of those Regulations.

(5) Where the payment of a fee referred to in paragraph (1), (3) or (4) has not been made to the Registry within the period prescribed under the applicable paragraph (referred to in this paragraph as the specified period) —

(a) the Registry shall give notice to the applicant requiring the applicant to pay the Registry the outstanding fee and a late payment fee calculated in accordance with rule 16bis.2 of the Regulations under the Patent Co-operation Treaty within one month from the date on which the notice is sent to the applicant; and

(b) the specified period shall be treated in respect of the outstanding fee as not expiring until the end of the one- month period referred to in sub‑paragraph (a).

(6) Where an international application for a patent is filed at the Registry as receiving Office, and a request is made under rule 26bis.3(a) of the Regulations under the Patent Co-operation Treaty, payment of the prescribed fee shall be made to the Registry within the period referred to in rule 26bis.3(e) of those Regulations.

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Certified copies

118. A request under rule 17.1 or rule 21.2 of the Regulations under the Patent Co-operation Treaty for a certified copy of an international application for a patent as filed with the Registry as receiving Office and of any corrections thereto shall be made on Form CM12 and shall be accompanied by the appropriate fee.

[S 81/2014 wef 14/02/2014]

Fee currency

119. The fees referred to in rules 117 and 118 shall be paid in Singapore dollars.

Modified application of Act and Rules to United Kingdom and European Patent Office applications

120. The Seventh Schedule shall have effect in respect of applications for patents filed under section 116(6) of the Patents Act (Cap. 221, 1995 Ed.) and patents granted thereon.

FIRST SCHEDULE

Rule 3

FEES PAYABLE

Matter Amount $ Corresponding Form

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

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

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

4. Request for directions under section 22 450 —

5. Reference under section 23(5) or 48(5) 450 — to determine the question of a licence

6. Application to the Registrar under 450 Patents Form 7 section 24(1) or (3)

7. Filing a statement of inventorship and Nil Patents Form 8 of right to the grant of a patent

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p. 150 2007 Ed.] Patents Rules [CAP. 221, R 1

FIRST SCHEDULE — continued

Matter

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 —

(a) in any case where an international application for a patent (Singapore) has entered the national phase, and before the filing of the request for a search and examination report, an international search report or an international preliminary report on patentability was established in that application by the Office under the Patents Co‑operation Treaty

(b) in any other case

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

Amount $

1,650

1,650 plus 40 for each claim in excess of 20 claims

1,950 plus 40 for each claim in excess of 20 claims

Nil

1,350

Corresponding Form

Patents Form 9

Patents Form 10

Patents Form 11

Patents Form 11A

Patents Form 11B

Patents Form 11C

Patents Form 12

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 151

FIRST SCHEDULE — continued

Matter Amount $ Corresponding Form

plus 40 for each claim in excess of 20

claims

15. Filing a request for a supplementary Nil Patents Form 12A examination report

16. Request for an examination review 1,350 Patents Form 12B report

17. Request to amend application before Nil Patents Form 13 grant

18. Filing a response to a written opinion Nil Patents Form 13A under section 29(9)

19. Request that a certificate of grant be Patents Form 14 issued —

(a) where the application for a 170 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 200 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 20 claims in the patent specification when rule 47(3) is complied with

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FIRST SCHEDULE — continued

Matter Amount $ Corresponding Form

(i) the application for a excess of 20 patent has — claims

(A) a date of filing before 1 July 2004;

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

(ii) a supplementary examination report is relied upon for the issue of the certificate of grant

(ca) where — 200 plus 40 for

(i) the application for a patent has —

each claim in excess of 20 claims

(A) a date of filing before 1 July 2004;

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

(ii) a search and examination report or an examination report is relied upon for

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 153

FIRST SCHEDULE — continued

Matter Amount $ Corresponding Form

the issue of the certificate of grant; and

(iii) there were not more than 20 claims in the patent specification when the request for that report was made

(cb) where — 200 plus 40 for

(i) the application for a patent has —

each claim in excess of the number of

(A) a date of filing claims in the before 1 July 2004; patent

(B) a date of lodgment on or after

specification when the

14 February 2014; and

request for that report was made

(ii) a search and examination report or an examination report is relied upon for the issue of the certificate of grant; and

(iii) there were more than 20 claims in the patent specification when the request for that report was made

(d) where the application for a 200 patent has —

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

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FIRST SCHEDULE — continued

Matter

(ii) not more than 20 claims in the patent specification when rule 47(3) is complied with

(e) where —

(i) the application for a patent has —

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

(B) more than 20 claims in the patent specification when rule 47(3) is complied with; and

(ii) a supplementary examination report is relied upon for the issue of the certificate of grant

(f) where —

(i) the application for a patent has —

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

(B) more than 20 claims in the patent specification when rule 47(3) is complied with;

(ii) a search and examination report or an examination report is relied upon for the issue of the certificate of grant; and

Amount $ Corresponding Form

200 plus 40 for each claim in excess of 20 claims

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 155

FIRST SCHEDULE — continued

Matter

(iii) there were not more than 20 claims in the patent specification when the request for that report was made

(g) where —

(i) the application for a patent has —

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

(B) more than 20 claims in the patent specification when rule 47(3) is complied with;

(ii) a search and examination report or an examination report is relied upon for the issue of the certificate of grant; and

(iii) there were more than 20 claims in the patent specification when the request for that report was made

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 plus 40 for each claim in excess of the number of claims in the patent specification when the request for that report was made

Patents Form 15

140

370

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FIRST SCHEDULE — continued

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

520

670

820

970

1,200

Patents Form 15

100

1,250 Patents Form 17

500 Patents Form 19

300 Patents Form 20

Patents Form 20

140

370

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 157

FIRST SCHEDULE — continued

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

Amount $

520

670

820

970

1,200

380

280

100

500

900

Corresponding Form

Patents Form 28

—

Patents Form 34

Patents Form 35

Patents Form 36

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p. 158 2007 Ed.] Patents Rules [CAP. 221, R 1

FIRST SCHEDULE — continued

Matter

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

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. [Deleted by S 739/2014 wef 13/11/2014]

38. [Deleted by S 146/2017 wef 01/04/2017]

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

200 Patents Form 37

70 Patents Form 38

160 —

200 Patents Form 45

200 Patents Form 46

200 Patents Form 47

200 Patents Form 45

200 plus 200 Patents Form 45 for each month

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 159

FIRST SCHEDULE — continued

Matter Amount $ Corresponding Form

or part thereof for which the extension is sought

44. Request for extension of periods under Patents Form 45A repealed sections 29(7) and 30(1)(a) in force immediately before 14th February 2014 —

(a) where the application is not an 1,800 international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3)

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

45. Payment of transmittal fee under 150 — rule 14 of the Regulations under the Patent Co-operation Treaty

46. Payment of fee under rule 117(6) in 250 — respect of a request under Rule 26bis.3(a) of the Regulations under the Patent Co-operation Treaty

47. [Deleted by S 739/2014 wef 13/11/2014]

48. [Deleted by S 739/2014 wef 13/11/2014]

49. Notice of objection to the release of a 100 — sample of micro-organism to an expert

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

(a) for each year in respect of the 70 5th, 6th or 7th year of the patent

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FIRST SCHEDULE — continued

Matter

(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)

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

Amount $ Corresponding Form

185

260

335

410

485

600

Patents Form 53

100

950 Patents Form 54

Nil Patents Form 56

120 Patents Form 57

250 Patents Form 57

Patents Form 58

480

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 161

FIRST SCHEDULE — continued

Matter Amount $ Corresponding Form

(d) to an application under 90 section 54(1) or (3) for cancellation of an entry in the register

(e) to the correction of an error, 100 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 120 plus 0.50 45A and any document for each page accompanying that form of document

(b) any other form and any 40 plus 0.50 document accompanying that for each page form of document

(c) any statutory declaration or 0.50 for each affidavit filed as evidence in page of inter partes proceedings or any document written submission or bundle of authorities, not accompanying any form when filed

58. Purchasing of a copy of —

(a) Patents Journal A 10

(b) Patents Journal B 36

59. [Deleted by S 146/2017 wef 01/04/2017]

60. [Deleted by S 146/2017 wef 01/04/2017]

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p. 162 2007 Ed.] Patents Rules [CAP. 221, R 1

FIRST SCHEDULE — continued

Matter Amount $ Corresponding Form

61. [Deleted by S 146/2017 wef 01/04/2017]

62. Request for correction of an error in Form CM4 respect of a patent or an application for a patent, for —

(a) each correction of an error in the 50 register or any connected document

(b) each correction of an error of 50 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

(c) each correction of an error of 120 translation or transcription, or of a clerical error or mistake, in the specification of a patent or in the specification of an application for a patent

63. Application to register, amend or 60 Form CM6 terminate a licence

64. Application to register, amend or 50 Form CM7 terminate a security interest

65. Application to register a transfer of 70 Form CM8 ownership

66. Request for withdrawal of an Nil Form CM9 application under section 27(1)

67. Request for file inspection 30 Form CM10

68. [Deleted by S 739/2014 wef 13/11/2014]

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FIRST SCHEDULE — continued

Matter Amount $ Corresponding Form

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 —

Form CM12

(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

715 Form HC1

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

80 Form HC2

72. Request for extension of time under rule 108A —

Form HC3

(a) for first extension of that period —

(b) for second or subsequent extension of that period

100

73. Request for ex parte hearing under rule 88

100 Form HC4

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

700 Form HC5

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)

360 Form HC6

[S 146/2017 wef 01/04/2017]

[S 739/2014 wef 13/11/2014]

[S 81/2014 wef 14/02/2014]

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p. 164 2007 Ed.] Patents Rules [CAP. 221, R 1

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 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

Patents Form 12A Request for supplementary examination report

Patents Form 12B Request for examination review report

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

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 165

SECOND SCHEDULE — continued

Form Description of Form

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 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

[Deleted by S 146/2017 wef 01/04/2017]

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 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

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

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. .

p. 166 2007 Ed.] Patents Rules [CAP. 221, R 1

SECOND SCHEDULE — continued

Form Description of Form

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 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

[S 146/2017 wef 01/04/2017]

[S 739/2014 wef 13/11/2014]

[S 81/2014 wef 14/02/2014]

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

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 167

THIRD SCHEDULE — continued

First column

Item

Second column

Matter

Third column

Amount

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

[S 81/2014 wef 14/02/2014]

FOURTH SCHEDULE

Rules 20, 28 and 108

MICRO-ORGANISMS

Applications

1.—(1) The specification of an application for a patent, or of a patent, for an invention which requires for its performance the use of a micro-organism —

(a) which is not available to the public at the date of filing of the application; and

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FOURTH SCHEDULE — continued

(b) which cannot be described in the specification in such a manner as to enable the invention to be performed by a person skilled in the art,

shall, in relation to the micro-organism itself, be treated for the purposes of the Act as disclosing the invention in such a manner only if one of the conditions set out in sub‑paragraph (2), is satisfied.

(2) The conditions referred to in sub‑paragraph (1) are —

(a) a condition that —

(i) not later than the date of filing of the application, a culture of the micro-organism has been deposited with any international depositary authority which is able to furnish a sample of the micro-organism; and

(ii) the name of the international depositary authority, the date when the culture was deposited and the accession number of the deposit are given in the specification of the application; and

(b) a condition, in the case of an international application for a patent (Singapore) which is treated, by virtue of section 85 as a patent under the Act, or, as the case may be, an application for a patent under the Act, that the corresponding provisions of the Implementing Regulations to the Patent Co-operation Treaty have been complied with,

and where a new deposit is made under paragraph 4, a further condition that the applicant or proprietor makes a new deposit in accordance with that paragraph.

(3) Where the condition of sub‑paragraph (2)(a)(ii) is not satisfied at the time the application for a patent is filed, it shall be satisfied —

(a) within 16 months from —

(i) the declared priority date; or

(ii) the date of filing the application where there is no declared priority date;

(b) where, on a request made by the applicant, the Registrar publishes the application before the end of the period prescribed for the purposes of section 27(1), before the date of the request; or

(c) where the Registrar sends notification to the applicant that, in accordance with section 108(4), he has received a request by any person for information and inspection of documents under subsection (1) of that section, before the end of one month after his sending to the applicant notification of his receipt of the request,

whichever is the earliest.

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FOURTH SCHEDULE — continued

(4) The giving of the information specified in sub‑paragraph (2)(a)(ii) shall constitute the unreserved and irrecoverable consent of the applicant to the international depositary authority with which a culture (including a deposit which is to be treated as having always been available by virtue of paragraph 4(2)) is from time to time deposited making the culture available on receipt of the Registrar’s certificate authorising the release to the person who is named therein as a person to whom the culture may be made available and who makes a valid request therefor to the authority.

Availability of cultures

2.—(1) Subject to paragraph 3, a request that the Registrar certify a person as a person to whom an international depositary authority may furnish a sample of a micro-organism —

(a) before publication of the application for a patent, to a person who has made a request under section 108(1) in the circumstances mentioned in rule 1(3)(c); and

(b) at any later time, to any person,

shall be made on the form provided for by the Regulations under the Budapest Treaty.

[S 739/2014 wef 13/11/2014]

(2) The Registrar shall send a copy of any form lodged with him under sub‑paragraph (1) and of his certificate authorising the release of the sample —

(a) to the applicant for, or proprietor of, the patent;

(b) to the international depositary authority; and

(3) A request under sub‑paragraph (1) shall comprise, on the part of the person to whom the request relates, undertakings for the benefit of the applicant for, or proprietor of, the patent —

(a) not to make the culture, or any culture derived from it, available to any other person; and

(b) not to use the culture, or any culture derived from it, otherwise than for experimental purposes relating to the subject matter of the invention,

and —

(i) subject to sub‑paragraph (iii), both undertakings shall have effect during any period before the application for a patent has been withdrawn, has been treated as having been abandoned, has been

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FOURTH SCHEDULE — continued

refused or is treated as having been refused (including any further period allowed under rule 100 or 108(1) or (5) but excluding, where an application is reinstated under either of those rules, the period before it is reinstated);

[S 81/2014 wef 14/02/2014]

(ii) if a patent is granted on the application, the undertaking set out in sub‑paragraph (a) shall also have effect during any period for which the patent is in force and during the period of 6 months referred to in section 36(3); and

(iii) the undertaking set out in sub‑paragraph (b) shall not have effect after the date of publication in the journal of a notice that the patent has been granted,

and, in this sub‑paragraph, references to a culture derived from a deposited culture of a micro-organism are references to a culture so derived which exhibits those characteristics of the deposited culture essential for the performance of the invention.

(4) For the purpose of enabling any act specified in section 57 to be done in relation to the culture for the services of the Government, the undertakings specified in sub‑paragraph (3) —

(a) shall not be required from any Government department or person authorised in writing by a Government department for the purposes of this paragraph; and

(b) shall not have effect in relation to any such person who has already given them.

(5) An undertaking given pursuant to sub‑paragraph (3) may be varied by way of derogation by agreement between the applicant or proprietor and the person by whom it is given.

(6) Where, in respect of a patent to which the undertaking set out in sub‑paragraph (3)(a) has effect —

(a) an entry is made in the register under section 53 to the effect that licences are to be available as of right; or

(b) a compulsory licence is granted under section 55,

that undertaking shall not have effect to the extent necessary for effect to be given to any such licence.

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FOURTH SCHEDULE — continued

Availability of cultures to experts

3.—(1) Subject to sub‑paragraph (3), where, before the preparations for publication under section 27 of an application for a patent have been completed, the applicant gives notice in writing to the Registrar of his intention that a sample of the micro-organism should be made available only to an expert, the provisions of this paragraph shall have effect.

[S 739/2014 wef 13/11/2014]

(2) The Registrar —

(a) shall, at the time of publication of the application under section 27, publish a notice in the journal that the provisions of this paragraph have effect; and

(b) notwithstanding paragraph 2, shall not, until the patent is granted or the application has been withdrawn, has been treated as having been abandoned, has been refused or is treated as having been refused, issue any certificate authorising release of a sample otherwise than under this paragraph.

(3) In the case of an international application for a patent (Singapore), the applicant may, for the purpose set out in sub‑paragraph (1), give notice in writing to the International Bureau under rule 13 bis 3 of the Regulations under the Patent Co- operation Treaty before the technical preparations for international publication of the application are complete of his intention that a sample of the micro-organism should be made available only to an expert and he shall be treated by the Registrar for the purposes of this paragraph as having complied with the conditions in sub‑paragraph (1) and sub‑paragraph (2)(a) shall not apply.

(4) Any person wishing to have a sample of the micro-organism made available (“the requester”) —

(a) shall make a request to the Registrar on the form provided for by the Regulations under the Patent Co-operation Treaty nominating the person (“the expert”) to whom he wishes the sample to be made available; and

[S 81/2014 wef 14/02/2014]

[S 739/2014 wef 13/11/2014]

(b) shall at the same time file undertakings by the expert as set out in rule 2(3) in accordance with the provisions of that paragraph.

(5) The Registrar shall send a copy of the form filed under sub‑paragraph (4) to the applicant for the patent and shall specify the period within which the applicant

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FOURTH SCHEDULE — continued

may object, in accordance with sub‑paragraph (6), to a sample of the micro- organism being available to the expert.

[S 81/2014 wef 14/02/2014]

[S 739/2014 wef 13/11/2014]

(6) Unless, within the period specified by the Registrar under sub‑paragraph (5) (or within such longer period as the Registrar may, on application made to him within that period, allow), the applicant for the patent files a notice of objection in writing and a statement setting out fully the reasons for his objection to the release of a sample of the micro-organism to an expert, the Registrar shall send a copy of any form lodged with him under sub‑paragraph (4)(a) and of his certificate authorising the release of the sample —

(a) to the applicant for the patent;

(b) to the international depositary authority concerned;

(d) to the expert.

[S 81/2014 wef 14/02/2014]

[S 739/2014 wef 13/11/2014]

(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.

[S 81/2014 wef 14/02/2014]

(7) Where, in accordance with sub‑paragraph (6), the applicant for the patent sends notice to the Registrar of his objection to the issue of a certificate in favour of the expert, the Registrar —

(a) shall decide, having regard to the knowledge, experience and technical qualifications of the expert and to any other factors he considers relevant, whether to issue his certificate in favour of the expert; and

(b) if he decides to authorise the release of the sample to the expert, shall send to the persons referred to in sub‑paragraph (6) a copy of any form lodged with him under sub‑paragraph (4)(a) and of his certificate authorising the release of the sample to the expert.

(8) Before making a decision in accordance with sub‑paragraph (7), the Registrar shall afford the applicant and the requester the opportunity of being heard.

(9) If the Registrar decides under sub‑paragraph (7) not to issue his certificate in favour of the expert, the requester may, by notice in writing to the Registrar and the applicant, nominate another person as the expert for the purposes of this paragraph;

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FOURTH SCHEDULE — continued

and the Registrar shall give such directions as he may think fit with regard to the subsequent procedure.

(10) Nothing in this paragraph shall affect the rights under section 56 of any Government department or of any person authorised in writing by a Government department.

New deposits

4.—(1) Where the international depositary authority with which a deposit or a new deposit of a culture has been made under this Schedule —

(a) notifies the applicant or proprietor that it —

(i) cannot satisfy a request made in accordance with rule 2(1) or 3(4); or

(ii) is not able lawfully, to satisfy such a request, for the culture to be made available;

(b) ceases temporarily or permanently to carry out the functions of an international depositary authority; or

(c) ceases for any reason to conduct its activities as an international depositary authority in an objective and impartial manner,

subject to sub‑paragraph (3), the applicant or proprietor may, unless the culture has been transferred to another international depositary authority which is able to make it available, make a new deposit of a culture of the micro-organism.

(2) For the purposes of paragraph 1 and this paragraph, the deposit shall be treated as always having been available if, within 3 months of the receipt of such notification or of the international depositary authority ceasing to perform the functions of an international depositary authority or to conduct its activities as such an authority in an objective and impartial manner, the applicant or proprietor —

(a) in a case where the deposit has not already been transferred, makes the new deposit;

(b) furnishes to the international depositary authority with which the new deposit is made a declaration that the culture so deposited is of the same micro-organism as was the culture originally deposited; and

(c) requests amendment of the specification under section 31 or 38, as the case may be, so as to indicate the accession number of the transferred or new deposit and, where applicable, the name of the international depositary authority with which the deposit has been made.

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(3) The new deposit referred to in sub‑paragraph (1) —

(a) shall, subject to sub‑paragraph (b), be made with the same international depositary authority as was the original deposit; or

(b) in the cases referred to in sub‑paragraphs (1)(a)(ii), (b) and (c), shall be made with another international depositary authority which is able to satisfy the request.

Definitions

5. In this Schedule —

“Budapest Treaty” means the Treaty on the International Recognition of the Deposit of Micro-organisms for the purposes of Patent Procedure done at Budapest in 1977;

“depositary institution” means an institution which, at all relevant times —

(a) carries out the functions of receiving, accepting and storing micro-organisms and the furnishing of samples thereof; and

(b) conducts its affairs in so far as they relate to the carrying out of those functions in an objective and impartial manner;

“international depositary authority” means a depositary institution which has acquired the status of international depositary authority as provided in Article 7 of the Budapest Treaty.

FIFTH SCHEDULE

[Deleted by S 366/2004]

SIXTH SCHEDULE

Rule 107

REMUNERATION OF SCIENTIFIC ADVISERS

1. A person appointed as a scientific adviser to assist the Registrar in proceedings under the Act and who attends the proceedings before the Registrar shall be paid—

(a) a reasonable amount for expenses incurred for transport between his usual place of residence and the place where the proceedings take place; and

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SIXTH SCHEDULE — continued

(b) if the scientific adviser is required to be absent overnight from his usual place of residence, a reasonable amount as allowance for meals and accommodation up to a daily maximum of $250.

2. A person appointed as a scientific adviser to assist the Registrar in proceedings under the Act shall, apart from the expenses and allowances referred to in paragraph 1, be paid an amount of not less than $650 but not more than $2,000 for each day or part thereof for which he hears the case or works on the report pursuant to an inquiry referred to him under rule 107(1)(b).

3. A person appointed as a scientific adviser to sit with the Registrar at the hearing of any proceedings may, apart from the expenses and allowances referred to in paragraph 1, be paid an amount not less than $650 but not more than $2,000 if he is subsequently not required to hear the proceedings with the Registrar.

SEVENTH SCHEDULE

Rule 120

MODIFIED APPLICATION OF THE ACT AND RULES TO UNITED KINGDOM AND EUROPEAN PATENT OFFICE APPLICATIONS

1. 1In this Schedule, “foreign application” means —

(a) an application for a patent under the United Kingdom Patents Act 1977; or

(b) an application designating the United Kingdom filed at the European Patent Office.

2. Where a foreign application is pending on 23rd February 1995, and the applicant makes an application under section 116(6) of the Patents Act (Cap. 221, 1995 Ed.) for the grant of a patent, the provisions of the Act and these Rules shall apply to the foreign application with the following modifications:

(a) where the application under section 116(6) of the Patents Act (Cap. 221, 1995 Ed.) is filed after the 16-month period prescribed in rule 9(2) or 18(1) —

(i) all the requirements of rules 9 and 18, except for the prescribed period of 16 months, shall be complied with within the same day of filing the application; and

1This Schedule applies to applications filed under section 116(6) of the Patents Act (1995 Ed.) and patents granted thereon and replaces the Seventh Schedule which was deleted on 1st July 2004 by the Patents (Amendment) Rules 2004 (S 366/2004). References in this Schedule to provisions in the Patents Act or Patents Rules may be to provisions that have been modified after 1st July 2004. Reference should be made to the transitional provisions in the Acts or Rules making such modifications to ascertain if the provisions cited in this Schedule are references to provisions in force prior to such modifications.

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SEVENTH SCHEDULE — continued

(ii) the requirements of paragraph 1(2)(a)(ii) and (3) of the Fourth Schedule, in a case to which they apply, shall be complied with on or before the time ascertained under the said paragraph 1(3) or the time of filing the application, whichever is the later;

(b) the application for the patent shall, notwithstanding rule 19, be treated as having been abandoned unless —

(i) the description, claims and drawings required to be filed are identical with those as filed with the foreign application;

(ii) the application is accompanied by a certified copy of the description, claims and drawings as filed with the foreign application; and

(iii) a declaration stating that the foreign application was pending on 23rd February 1995 is made within the same day of filing the application;

(c) the requirements of section 26(1) are modified to the extent that the application shall be accorded, under section 116(6) of the Patents Act (Cap. 221, 1995 Ed.), the same date of filing as the date of filing of the foreign application, when the following considerations are satisfied in relation to the application:

(i) the considerations of section 26(1)(a) and (b); and

(ii) the documents filed at the Registry contain a description of the invention which is identical with that as filed with the foreign application as of its filing date;

(d) the period prescribed for the purposes of section 28(1) shall be the period which expires on the actual date of filing of the application;

(e) the requirements of rule 29 are modified to the extent that the 18-month period under rule 29(1) or (2) shall commence from the actual date of filing the application;

(f) the requirements of rule 33(1) are modified to the extent that the requirements of rule 19 as modified by sub‑paragraph (b) also apply;

(g) the requirements of rule 38 in force immediately before 1st July 2004 shall apply and are modified to the extent that the 16-month period commences from the actual date of filing the application;

(h) the requirements of repealed section 29(1)(a) in force immediately before 1st July 2004 shall apply and are modified to the extent that instead of filing a request for a search report, the applicant may file a

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SEVENTH SCHEDULE — continued

copy of the search report which is issued in respect of the foreign application, provided that the application in Singapore relates to the same or substantially the same invention as the foreign application at the time of search;

(i) the requirements of repealed section 29(1)(b) in force immediately before 1st July 2004 shall apply and are modified to the extent that instead of filing a request for a search and examination report, the applicant may file a copy of the search report and the examination report resulting from an examination as to substance which is issued in respect of the foreign application, provided that the application in Singapore relates to the same or substantially the same invention as the foreign application at the time of search and at the time of examination, respectively;

(j) repealed section 29(12) in force immediately before 1st July 2004 shall apply and is modified to the extent that “corresponding application” includes the foreign application;

(k) the conditions of repealed section 30(2)(c) in force immediately before 1st July 2004 shall apply and are modified to the extent that the search report and the substantive examination report which is issued in respect of the foreign application can be substituted for —

(i) the search and examination report referred to in repealed section 30(2)(c)(i) in force immediately before 1st July 2004; or

(ii) the search report and the examination report referred to in repealed section 30(2)(c)(ii) or (iii) in force immediately before 1st July 2004,

as the case may be;

(l) the requirements of rule 43 in force immediately before 1st July 2004 shall apply and are modified to the extent that the period prescribed under paragraph (1) or (2) of that rule shall be 22 months from the actual date of filing the application;

(m) the requirements of rule 46(8) in force immediately before 1st July 2004 shall apply and are modified to the extent that the period referred to in that provision shall be 39 months from the actual date of filing the application under section 116(6) of the Patents Act (Cap. 221, 1995 Ed.);

(n) the requirements of rule 47(1) in force immediately before 1st July 2004 are modified to the extent that the period prescribed under that

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SEVENTH SCHEDULE — continued

provision shall be 42 months from the actual date of filing the application; and

(o) the date prescribed for the purposes of section 36(1) shall be the date of filing of the application accorded under section 116(6) of the Patents Act (Cap. 221, 1995 Ed.).

3. Rule 108(2) and (3) shall, when applied to any foreign application referred to in paragraph 2, be modified to read as follows:

“(2) The provisions referred to in paragraph (1) are rules 9(1), 19(2), 26(5) and (6), 28 (so far as it relates to rule 9(1)), 46(4), (5), (8) and (10), 49, 51(1), 52(2), 52A(8), 53(1), 54(2), 73(1), 74(1), 75, 85(1), 91(3) and (5) and paragraph 4(2) of the Fourth Schedule.

(3) A time or period prescribed in rules 9(2), (2A) and (5) (including the period therein prescribed as substituted by rule 2(a) of the Seventh Schedule), 18(1) (including the period therein prescribed as substituted by paragraph 2 (a) of the Seventh Schedule), 26(2) and (4), 28 (except so far as it relates to rule 9(1)), 38(1), 43 (including the period therein prescribed as substituted by paragraph 2(l) of the Seventh Schedule), 47(1) and (2), 53(4), 86(1), (6) and (8), 97(2)(c) and rule 1(3) of the Fourth Schedule shall, if not previously extended, be extended for a period not exceeding 3 months upon filing Patents Form 45 before the end of the period for which extension is sought.”.

4. Sections 26(6), 27(1), 29, 30, 31, 36(2), 36A and 69 shall not apply to any foreign application referred to in paragraph 2, and instead sections 26(6), 27(1), 29, 30, 31, 32, 36(2), 69 and 79 in force immediately before 1st July 2004 shall apply to that application with the modifications referred to in paragraph 2.

5. Rules 27(1), 36, 37, 38, 40(1), 41, 42, 42A, 43, 44, 45(1), (3) and (4), 46, 47(1), (2) and (4A), 47A, 49(2), 51(2A) and 51A shall not apply to any foreign application referred to in paragraph 2, and instead —

(a) rules 27(1), 36, 37, 38, 39, 40(1), 41, 42, 43, 44, 45(1) and (3), 46, 47(1) and (2), 49(2) and 79 in force immediately before 1st July 2004 shall apply to that application with the modifications referred to in paragraph 2; and

(b) any reference in these Rules to rules 27(1), 36, 37, 38, 40(1), 41, 42, 43, 44, 45(1) and (3), 46, 47(1) and (2) and 49(2) shall be construed in accordance with sub‑paragraph (a).

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CAP. 221, R 1] Patents Rules [2007 Ed. p. 179

EIGHTH SCHEDULE

[Deleted by S 419/2006]

[G.N. Nos. S 583/95; S 106/96; S 224/96; S 132/97; S 260/97; S 458/97; S 82/98; S 116/98; S 203/99; S 286/99; S 510/99; S 300/2000; S 60/2001; S 500/2001; S 656/2001;

S 75/2002; S 355/2002; S 324/2003; S 503/2003; S 504/2003; S 366/2004; S 116/2005; S 242/2006; S 419/2006; S 24/2007; S 93/2007; S 501/2009;

S 730/2010; S 586/2011]

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LEGISLATIVE HISTORY

PATENTS RULES (CHAPTER 221, R 1)

This Legislative History is provided for the convenience of users of the Patents Rules. It is not part of these Rules.

1. G. N. No. S 538/1995 — Patents Rules 1995

Date of commencement : Date not available

2. 1993 Revised Edition — Patents Rules

Date of operation : 23 February 1995

3. G. N. No. S 106/1996 — Patents (Amendment) Rules 1996

Date of commencement : 24 February 1996

4. G. N. No. S 224/1996 — Patents (Amendment No. 2) Rules 1996

Date of commencement : 1 June 1996

5. G. N. No. S 132/1997 — Patents (Amendment) Rules 1997

Date of commencement : 1 April 1997

6. G. N. No. S 260/1997 — Patents (Amendment No. 2) Rules 1997

Date of commencement : 1 June 1997

7. G. N. No. S 458/1997 — Patents (Amendment No. 3) Rules 1997

Date of commencement : 15 October 1997

8. G. N. No. S 82/1998 — Patents (Amendment) Rules 1998

Date of commencement : 2 March 1998

9. G. N. No. S 116/1998 — Patents (Amendment No. 2) Rules 1998

Date of commencement : 1 June 1998

10. G. N. No. S 203/1999 — Patents (Amendment) Rules 1999

Date of commencement : 1 June 1999

11. G. N. No. S 286/1999 — Patents (Amendment No. 2) Rules 1999

Date of commencement : 1 July 1999

12. G. N. No. S 510/1999 — Patents (Amendment No. 3) Rules 1999

Date of commencement : 20 December 1999

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13. G. N. No. S 300/2000 — Patents (Amendment) Rules 2000

Date of commencement : 3 July 2000

14. G. N. No. S 60/2001 — Patents (Amendment) Rules 2001

Date of commencement : 15 February 2001

15. G. N. No. S 500/2001 — Patents (Amendment No. 2) Rules 2001

Date of commencement : 17 October 2001

16. G. N. No. S 656/2001 — Patents (Amendment No. 3) Rules 2001

Date of commencement : 15 January 2002

17. G. N. No. S 75/2002 — Patents (Amendment) Rules 2002

Date of commencement : 25 February 2002

18. G. N. No. S 503/2003 — Patents (Amendment No. 2) Rules 2003

Date of commencement : 31 July 2002

19. G. N. No. S 355/2002 — Patents (Amendment No. 2) Rules 2002

Date of commencement : 15 August 2002

20. G. N. No. S 324/2003 — Patents (Amendment) Rules 2003

Date of commencement : 1 August 2003

21. G. N. No. S 504/2003 — Patents (Amendment No. 3) Rules 2003

Date of commencement : 1 January 2004

22. G. N. No. S 366/2004 — Patents (Amendment) Rules 2004

Date of commencement : 1 July 2004

23. G. N. No. S 116/2005 — Patents (Amendment) Rules 2005

Date of commencement : 1 April 2005

24. G. N. No. S 242/2006 — Patents (Amendment) Rules 2006

Date of commencement : 2 June 2006

25. G. N. No. S 419/2006 — Patents (Amendment No. 2) Rules 2006

Date of commencement : 1 August 2006

26. G. N. No. S 24/2007 — Patents (Amendment) Rules 2007

Date of commencement : 1 February 2007

27. G. N. No. S 93/2007 — Patents (Amendment No. 2) Rules 2007

Date of commencement : 1 April 2007

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iii

28. 2007 Revised Edition — Patents Rules

Date of operation : 1 October 2007

29. G. N. No. S 501/2009 — Patents (Amendment) Rules 2009

Date of commencement : 22 October 2009

30. G. N. No. S 730/2010 — Patents (Amendment) Rules 2010

Date of commencement : 6 December 2010

31. G.N. No. S 586/2011 — Patents (Amendment) Rules 2011

Date of commencement : 1 January 2011

32. G.N. No. S 586/2011 — Patents (Amendment) Rules 2011

Date of commencement : 1 December 2011

33. G.N. No. S 210/2013 — Patents (Amendment) Rules 2013

Date of commencement : 8 April 2013

34. G.N. No. S 81/2014 — Patents (Amendment) Rules 2014

Date of commencement : 14 February 2014

35. G.N. No. S 162/2014 — Patents (Amendment No. 2) Rules 2014

Date of commencement : 10 March 2014

36. G.N. No. S 739/2014 — Patents (Amendment No. 3) Rules 2014

Date of commencement : 13 November 2014

37. G.N. No. S 673/2016 — Patents (Amendment) Rules 2016

Date of commencement : 1 January 2017

38. G.N. No. S 146/2017 — Patents (Amendment) Rules 2017

Date of commencement : 1 April 2017

39. G.N. No. S 573/2017 — Patents (Amendment No. 2) Rules 2017

Date of commencement : 30 October 2017

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Patents Rules (Revised Edition 2007, amended up the Patents (Amendment No. 2) Rules 2017), Singapore

Available Materials