1 S 80/2014
First published in the Government Gazette, Electronic Edition, on 11th February 2014 at 6.00 pm.
No. S 80
PATENTS ACT (CHAPTER 221)
PATENTS (PATENT AGENTS)
(AMENDMENT) RULES 2014
In exercise of the powers conferred by section 104 of the Patents Act, the Minister for Law hereby makes the following Rules:
Citation and commencement
1. These Rules may be cited as the Patents (Patent Agents) (Amendment) Rules 2014 and shall come into operation on 14th February 2014.
Amendment of rule 2
2. Rule 2(1) of the Patents (Patent Agents) Rules 2001 (G.N. No. S 645/2001) (referred to in these Rules as the principal Rules) is amended ––
(a) by inserting, immediately after the definition of “Disciplinary Committee”, the following definitions:
“ “foreign patent agency work” means any of the types of work referred to in section 105A(4)(a), (b) and (c) of the Act;
“foreign patent agent certificate” means a foreign patent agent certificate issued under rule 10B(4) or 10C(5);”;
(b) by deleting the definition of “patent agency work” and substituting the following definition:
“ “patent agency work” means any of the types of work referred to in section 105(4)(a), (b) and (c) of the Act, and includes, for the avoidance of doubt, any foreign patent agency work;”; and
S 80/2014 2
(c) by deleting the definition of “register” and substituting the following definitions:
“ “register of foreign patent agents” means the register of foreign patent agents maintained under rule 5(1A);
“register of patent agents” means the register of patent agents maintained under rule 5(1).”.
Amendment of rule 3
3. Rule 3(4) of the principal Rules is amended by inserting, immediately after the words “registered patent agent”, the words “or a registered foreign patent agent”.
Amendment of rule 4
4. Rule 4(1) of the principal Rules is amended by inserting, immediately after the words “a patent agent” in sub‑paragraph (a)(i), the words “or a foreign patent agent”.
Amendment of heading to Part II
5. Part II of the principal Rules is amended by inserting, immediately after the words “OF PATENT AGENTS” in the Part heading, the words “AND FOREIGN PATENT AGENTS”.
Amendment of rule 5
6. Rule 5 of the principal Rules is amended –– (a) by inserting, immediately after paragraph (1), the following
paragraph: “(1A) The Registrar shall keep and maintain a register
of foreign patent agents which shall contain –– (a) the names and practice addresses in Singapore
of all individuals registered as foreign patent agents under these Rules;
(b) the dates of their registration; (c) the terms of foreign patent agent certificates
issued to them; and (d) such of their other particulars as the Registrar
may determine.”;
3 S 80/2014
(b) by inserting, immediately after the words “The register” in paragraph (2), the words “of patent agents and the register of foreign patent agents”; and
(c) by inserting, immediately after the words “of patent agents” in the rule heading, the words “and register of foreign patent agents”.
Amendment of rule 6
7. Rule 6 of the principal Rules is amended by inserting, immediately after the word “registration” in the rule heading, the words “as patent agent”.
Amendment of rule 7
8. Rule 7 of the principal Rules is amended –– (a) by inserting, immediately after the word “registration” in
paragraph (1), the words “as a patent agent”; (b) by deleting the words “one or both of whom is or are”
in paragraph (1)(c)(iii) and substituting the words “at least one of whom is”;
(c) by inserting, immediately after the word “registered” in paragraphs (2) and (4), the words “as a patent agent”;
(d) by inserting, immediately after the words “the register” in paragraph (4), the words “of patent agents”;
(e) by inserting, immediately after the word “applicant” in paragraphs (5) and (6), the words “as a patent agent”;
(f) by inserting, immediately after the word “application” in paragraph (7), the words “for registration as a patent agent”; and
(g) by inserting, immediately after the word “registration” in the rule heading, the words “as patent agent”.
Amendment of rule 8
9. Rule 8(1) of the principal Rules is amended by inserting, immediately after the word “registration”, the words “as a patent agent”.
S 80/2014 4
Amendment of rule 9
10. Rule 9 of the principal Rules is amended –– (a) by inserting, immediately after the word “registered” in
paragraph (4)(b)(vi), the words “as a patent agent”; and (b) by deleting the word “he” in paragraph (5) and substituting
the words “the Registrar”.
Amendment of rule 10
11. Rule 10(1) of the principal Rules is amended by inserting, immediately after the word “convicted” in paragraph (b)(ii)(C), the words “, whether in Singapore or elsewhere,”.
New rules 10A to 10E
12. The principal Rules are amended by inserting, immediately after rule 10, the following rules:
“Eligibility to apply for registration as foreign patent agent
10A. An individual is eligible to apply for registration as a foreign patent agent if ––
(a) he is resident in Singapore; and (b) he is registered as a patent agent or patent attorney
with –– (i) any patent office (other than the Registry); or (ii) any professional accreditation or regulatory
body for patent agents or patent attorneys in any country or jurisdiction other than Singapore.
Application for registration as foreign patent agent
10B.––(1) An application for registration as a foreign patent agent shall be made to the Registrar in Form H, and shall be accompanied by ––
(a) the applicable fee in the First Schedule; (b) documentary proof of the applicant’s eligibility to
apply for registration as a foreign patent agent; (c) a certificate of good standing issued by the patent
office (other than the Registry), or the professional accreditation or regulatory body for patent agents or patent attorneys, with which the applicant is registered as a patent agent or patent attorney;
5 S 80/2014
(d) 2 certificates of good character relating to the applicant in Form B, from 2 responsible individuals ––
(i) who are not immediately related to the applicant; (ii) who have known the applicant for at least
12 months and have had opportunities to judge his character; and
(iii) at least one of whom is resident in the country or jurisdiction in which the applicant is registered as a patent agent or patent attorney; and
(e) documentary proof that the applicant has obtained professional indemnity insurance against any liability incurred by him when carrying out foreign patent agency work in the practice year during which his application for registration as a foreign patent agent is made, where the amount of insurance cover is at least $1 million for each claim.
(2) The Registrar may require the applicant to furnish, within a specified period, such further evidence or information as the Registrar considers necessary to determine whether the applicant ––
(a) is eligible to apply for registration as a foreign patent agent; or
(b) meets the additional requirements referred to in paragraph (4)(b).
(3) The Registrar may accept in place of, or require in addition to, either or both of the certificates of good character such other evidence of good character of the applicant as the Registrar considers necessary.
(4) The Registrar may register the applicant as a foreign patent agent by issuing to him a foreign patent agent certificate and entering his name and particulars in the register of foreign patent agents, if the Registrar is satisfied that the applicant ––
(a) is eligible to apply for registration as a foreign patent agent;
(b) meets such additional requirements for registration as a foreign patent agent as the Registrar may specify; and
(c) is of good character.
S 80/2014 6
(5) An application for registration as a foreign patent agent shall be refused if it is not made in accordance with this rule.
Application for renewal of registration as foreign patent agent
10C.––(1) A registered foreign patent agent who wishes to renew his registration as a foreign patent agent for any practice year shall, before making an application for the renewal of the registration, ensure that professional indemnity insurance has been obtained against any liability incurred by him when carrying out foreign patent agency work in that practice year, where the amount of insurance cover is at least $1 million for each claim.
(2) An application to renew the registration of a foreign patent agent shall not be made earlier than 2 months before the commencement of the practice year in question.
(3) The application shall be made to the Registrar in Form H, and shall be accompanied by ––
(a) the applicable fee in the First Schedule, which shall be the same amount irrespective of the term of the foreign patent agent certificate;
(b) a declaration in writing by the applicant stating –– (i) his name in full; (ii) the name under which he intends to practise or
the name of his employer; (iii) his practice address in Singapore; (iv) that he is resident in Singapore; (v) that he has not been convicted of an offence
under the Act and has not been convicted or guilty of any of the matters referred to in rule 17(1)(a) to (g) for which he has not already been dealt with under Part III;
(vi) that he continues to meet the requirements of these Rules, and the additional requirements referred to in rule 10B(4)(b), by virtue of which he was registered as a foreign patent agent; and
(vii) that he has ensured that the professional indemnity insurance referred to in paragraph (1) has been obtained; and
7 S 80/2014
(c) a written undertaking by the applicant that –– (i) he will ensure that the professional indemnity
insurance that has been obtained will be maintained in force at all times during the practice year in question; and
(ii) where the insurance that has been obtained is due to expire before the end of the practice year, he will ensure that the insurance is renewed before such expiry.
(4) The Registrar may require the registered foreign patent agent to furnish, within a specified period, such other evidence or information as the Registrar considers necessary for the purposes of the application.
(5) The Registrar may renew the registration of the foreign patent agent and issue to him a new foreign patent agent certificate, if the Registrar is satisfied that ––
(a) the application is made in accordance with this rule; and (b) the applicant continues to meet the requirements of
these Rules, and the additional requirements referred to in rule 10B(4)(b), by virtue of which he was registered as a foreign patent agent.
(6) The renewal of the registration of a foreign patent agent may be subject to such conditions as the Registrar may specify.
Term of foreign patent agent certificate
10D.––(1) A foreign patent agent certificate issued to a registered foreign patent agent under rule 10B(4) or 10C(5) ––
(a) shall be in force from –– (i) the date of its issue; or (ii) if it is issued pursuant to an application for the
renewal of the registration of the foreign patent agent made before the beginning of the practice year in question, the first day of the practice year; and
(b) shall cease to be in force upon the occurrence of any of the following events:
(i) the registered foreign patent agent ceases to practise as a registered foreign patent agent;
S 80/2014 8
(ii) the registered foreign patent agent ceases to be resident in Singapore;
(iii) the registered foreign patent agent has been convicted of an offence under the Act;
(iv) the registered foreign patent agent has been convicted, whether in Singapore or elsewhere, of a criminal offence implying a defect of character which makes him unfit for his profession;
(v) the registered foreign patent agent ceases to meet any requirement of these Rules, or any additional requirement referred to in rule 10B(4) (b), by virtue of which he was eligible to apply for registration as a foreign patent agent;
(vi) the professional indemnity insurance referred to in rule 10B(1)(e) or 10C(1), as the case may be, has not been obtained or has expired;
(vii) the Registrar subsequently issues another foreign patent agent certificate to the registered foreign patent agent.
(2) A foreign patent agent certificate issued in the month of April, pursuant to an application for the renewal of the registration of a foreign patent agent, shall be deemed to have been in force from the first day of that month.
(3) Where the registration of a foreign patent agent has been cancelled or suspended under rule 20, any foreign patent agent certificate issued to him under rule 10B(4) or 10C(5) shall be treated as cancelled, and he shall immediately surrender the certificate to the Registrar.
(4) Any person who without lawful excuse contravenes paragraph (3) shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $1,000.
Removal of particulars of foreign patent agent from register of foreign patent agents
10E.––(1) Subject to paragraph (3), the Registrar shall remove, from the register of foreign patent agents, the name and other particulars of any foreign patent agent ––
(a) who has ceased to practise as a registered foreign patent agent;
9 S 80/2014
(b) who has failed to renew his registration as a foreign patent agent;
(c) who applies for his registration as a foreign patent agent to be cancelled; or
(d) whose registration as a foreign patent agent has been cancelled under Part III.
(2) A foreign patent agent who has ceased to practise as a registered foreign patent agent shall, within 7 days after his last day of practice as a registered foreign patent agent, notify the Registrar in writing of that cessation.
(3) The Registrar shall not remove, from the register of foreign patent agents, under paragraph (1)(c) the name and other particulars of a foreign patent agent, if ––
(a) any complaint has been made against the foreign patent agent, or any information has been provided in respect of the foreign patent agent, to the Disciplinary Committee under rule 17; or
(b) any disciplinary proceedings under Part III are pending against the foreign patent agent.”.
Amendment of rule 12
13. Rule 12 of the principal Rules is amended –– (a) by inserting, immediately after the words “entry in the
register”, the words “of patent agents, or in the register of foreign patent agents,”; and
(b) by inserting, immediately after the words “in register” in the rule heading, the words “of patent agents or register of foreign patent agents”.
Amendment of rule 13
14. Rule 13 of the principal Rules is amended –– (a) by inserting, immediately after the words “registered patent
agent” in paragraph (1), the words “or registered foreign patent agent”; and
(b) by inserting, immediately after the words “in the register” in paragraph (2), the words “of patent agents or the register of foreign patent agents, as the case may be,”.
S 80/2014 10
Amendment of rule 14
15. Rule 14 of the principal Rules is amended –– (a) by inserting, immediately after the words “from the register”,
the words “of patent agents or the register of foreign patent agents”; and
(b) by inserting, immediately after the word “register” in the rule heading, the words “of patent agents or register of foreign patent agents”.
Amendment of rule 15
16. Rule 15 of the principal Rules is amended by deleting the words “or practising certificate” in paragraphs (1), (3) and (4) and substituting in each case the words “, practising certificate or foreign patent agent certificate”.
Amendment of rule 15A
17. Rule 15A of the principal Rules is amended –– (a) by inserting, immediately after the words “practising
certificate” in paragraph (1), the words “, and every registered foreign patent agent who has in force a foreign patent agent certificate,”; and
(b) by inserting, immediately after the words “registered patent agent” in paragraph (2), the words “or registered foreign patent agent”.
Amendment of rule 16
18. Rule 16(1) of the principal Rules is amended by inserting, immediately after the words “registered patent agent” in sub‑paragraph (a), the words “or registered foreign patent agent”.
Amendment of rule 17
19. Rule 17 of the principal Rules is amended –– (a) by inserting, immediately after the words “that a registered
patent agent” in paragraph (1), the words “or registered foreign patent agent”;
(b) by inserting, immediately after the word “convicted” in paragraph (1)(a), the words “, whether in Singapore or elsewhere,”;
11 S 80/2014
(c) by inserting, immediately after the words “patent agency work in his name” in paragraph (1)(d), the words “(if the affected person is a registered patent agent), or has allowed any person who is not a registered patent agent or registered foreign patent agent to carry out any foreign patent agency work in his name (if the affected person is a registered foreign patent agent)”;
(d) by deleting the words “or a practising certificate” in paragraph (1)(e) and substituting the words “or foreign patent agent, or a practising certificate or foreign patent agent certificate,”;
(e) by deleting the words “or the issue of his practising certificate” in paragraph (1)(f) and substituting the words “as a patent agent or foreign patent agent, or the issue of his practising certificate or foreign patent agent certificate,”; and
(f) by inserting, immediately after the words “registered patent agent” in the rule heading, the words “or registered foreign patent agent”.
Amendment of rule 20
20. Rule 20 of the principal Rules is amended –– (a) by inserting, immediately after the words “a patent agent”
in paragraph (1)(b) and (c), the words “, or as a foreign patent agent,”;
(b) by inserting, immediately after the words “in the register” in paragraph (5), the words “of patent agents or the register of foreign patent agents, as the case may be”; and
(c) by inserting, immediately after the words “from the register” in paragraph (6), the words “of patent agents or the register of foreign patent agents, as the case may be”.
Amendment of rule 21
21. Rule 21 of the principal Rules is amended –– (a) by deleting paragraph (1) and substituting the following
paragraph:
S 80/2014 12
“(1) Where the registration of the affected person has been ordered by the Disciplinary Committee to be suspended or cancelled ––
(a) in any case where the affected person is a registered patent agent, the Committee may, with the agreement of any other registered patent agent, appoint that other registered patent agent to carry on the practice of the affected person for such period as the Committee may specify; or
(b) in any case where the affected person is a registered foreign patent agent, the Committee may, with the agreement of any other registered foreign patent agent, appoint that other registered foreign patent agent to carry on the practice of the affected person for such period as the Committee may specify.”;
(b) by inserting, immediately after the words “The registered patent agent” in paragraph (2), the words “or registered foreign patent agent”;
(c) by inserting, immediately after the words “to the registered patent agent” in paragraph (2), the words “or registered foreign patent agent”; and
(d) by inserting, immediately after the words “registered patent agent” in paragraph (2)(a) and (b), the words “or registered foreign patent agent”.
Amendment of rule 22
22. Rule 22 of the principal Rules is amended –– (a) by inserting, immediately after the words “whose
registration” in paragraph (1), the words “as a patent agent or as a foreign patent agent”;
(b) by inserting, immediately after the words “the register” in paragraph (4), the words “of patent agents or register of foreign patent agents, as the case may be”; and
(c) by inserting, immediately after the word “registration” in the rule heading, the words “as patent agent or foreign patent agent”.
13 S 80/2014
Amendment of rule 23
23. Rule 23(4) of the principal Rules is amended by inserting, immediately after the words “the register”, the words “of patent agents”.
Amendment of First Schedule
24. The First Schedule to the principal Rules is amended –– (a) by inserting, immediately after “9(4),” in the Schedule
reference, “10B(1), 10C(3),”; (b) by deleting the words “or practising certificate” in item 4
and substituting the words “, practising certificate or foreign patent agent certificate”;
(c) by inserting, immediately after the words “registered patent agent” in item 5, the words “or registered foreign patent agent”;
(d) by inserting, immediately after the word “registration” in item 6, the words “as a patent agent or foreign patent agent”; and
(e) by inserting, immediately after item 6, the following item: “ 7. Application for registration as a foreign
patent agent under rule 10B or for renewal of registration as a foreign patent agent under rule 10C
H $300
”.
Amendment of Second Schedule
25. The Second Schedule to the principal Rules is amended –– (a) by inserting, immediately after the words “rule 7(1)(c)” in
the item relating to Form B, the words “or 10B(1)(d)”; (b) by deleting the words “or Practising Certificate” in the item
relating to Form E and substituting the words “, Practising Certificate or Foreign Patent Agent Certificate”;
(c) by inserting, immediately after the words “Registered Patent Agent” in the item relating to Form F, the words “or Registered Foreign Patent Agent”;
(d) by inserting, immediately after the words “Registration of Patent Agent” in the item relating to Form G, the words “or Foreign Patent Agent”; and
S 80/2014 14
(e) by inserting, immediately after the item relating to Form G, the following item:
“ H Application for Registration as a Foreign Patent Agent under rule 10B or for Renewal of Registration as a Foreign Patent Agent under rule 10C ”.
Amendment of Fifth Schedule
26. The Fifth Schedule to the principal Rules is amended –– (a) by deleting the words “registered patent agent who has in
force a practising certificate” in paragraph 1 and substituting the words “relevant patent agent”;
(b) by inserting, immediately after paragraph 1, the following paragraph:
“Definitions
1A. In this Code of Conduct, unless the context otherwise requires ––
“client”, in relation to a relevant patent agent ––
(a) means a person ––
(i) on whose behalf the relevant patent agent acts as an agent; or
(ii) for whom the relevant patent agent undertakes any work; and
(b) includes ––
(i) a person for whom the relevant patent agent provides an address for service for any matter under the Patents Act (Cap. 221); and
(ii) an intermediary through whom the relevant patent agent receives instructions;
“relevant patent agent” means ––
(a) a registered patent agent who has in force a practising certificate; or
(b) a registered foreign patent agent who has in force a foreign patent agent certificate.”;
(c) by deleting paragraphs 2, 3 and 4 and substituting the following paragraphs:
“Undertaking of work 2.––(1) A relevant patent agent shall, when undertaking any
work, apply the standard of skill, care and diligence that may reasonably be expected of a relevant patent agent.
15 S 80/2014
(2) A relevant patent agent shall ensure that the appropriate expertise (including technical expertise) is applied when any work is undertaken for his client.
(3) A relevant patent agent shall not represent that he is able to represent his client before the court, if he is not entitled to do so.
Responsibility for work, act or omission of other person
3.––(1) A relevant patent agent shall be responsible for any work done by, and any act or omission of, another person, if the work, act or omission is expressly or impliedly sanctioned by the relevant patent agent.
(2) A relevant patent agent shall exercise proper supervision over his employees and other staff.
(3) If any employee or other staff of a relevant patent agent (such employee or staff not being a relevant patent agent) deals with a client of the relevant patent agent, the relevant patent agent shall ensure that the client is informed that the employee or staff is not a relevant patent agent.
Referral to other person
4.––(1) A relevant patent agent who engages any other person, whether in Singapore or elsewhere, to act on behalf of a client in a matter shall ensure that the other person has the appropriate qualifications and the requisite expertise to deal with the matter.
(2) A relevant patent agent shall not engage any other person, whether in Singapore or elsewhere, to act on behalf of a client in a matter, unless the relevant patent agent has obtained the client’s consent to do so.”;
(d) by deleting the words “registered patent agent” wherever they appear in paragraphs 5(1), (2), (3), (4), (6), (7) and (8), 6, 7, 8(2), 9(1), (2), (3), (4) and (5), 10(2), 11(1) and (2) and 12(1) and (2) and substituting in each case the words “relevant patent agent”;
(e) by inserting, immediately after the word “Office” in paragraph 5(2)(b), the words “which relate to his practice in Singapore”;
(f) by deleting sub‑paragraph (5) of paragraph 5 and substituting the following sub‑paragraph:
“(5) A relevant patent agent shall –– (a) at the request of his client, provide a detailed estimate of
the costs of acting for the client in a matter; and
S 80/2014 16
(b) if it appears that those costs will exceed the estimate by a material amount, ensure that the client is informed before those costs exceed the estimate.”;
(g) by deleting sub‑paragraph (1) of paragraph 8 and substituting the following sub‑paragraph:
“(1) A relevant patent agent shall deal with his clients’ moneys in accordance with the applicable accounting standards.”;
(h) by inserting, immediately after sub‑paragraph (3) of paragraph 9, the following sub‑paragraph:
“(3A) A relevant patent agent shall keep his client informed of each development in each matter that he is handling for the client.”; and
(i) by deleting the words “registered patent agent shall not disclose, directly or indirectly” in paragraph 10(1) and substituting the words “relevant patent agent shall not disclose (directly or indirectly) or use, and shall take reasonable care to prevent his employees and other staff, and any other person engaged by him to act on behalf of the client, from disclosing (directly or indirectly) or using”.
[G.N. Nos. S 92/2007; S 566/2009]
Made this 11th day of February 2014.
BEH SWAN GIN Permanent Secretary,
Ministry of Law, Singapore.
[LAW 06/011/012; AG/LLRD/SL/221/2010/4 Vol. 1]