1 S 146/2017
First published in the Government Gazette, Electronic Edition, on 31 March 2017 at 5 pm.
No. S 146
PATENTS ACT (CHAPTER 221)
PATENTS (AMENDMENT) RULES 2017
In exercise of the powers conferred by section 115 of the Patents Act, the Minister for Law, after consulting with the Intellectual Property Office of Singapore, makes the following Rules:
Citation and commencement
1. These Rules are the Patents (Amendment) Rules 2017 and come into operation on 1 April 2017.
Amendment of rule 31
2. Rule 31(3) of the Patents Rules (R 1) is amended by deleting sub‑paragraph (d) and substituting the following sub‑paragraph:
“(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;”.
Amendment of rule 66
3. Rule 66(1) of the Patents Rules is amended by deleting the words “on Patents Form 4” and substituting the words “in writing”.
S 146/2017 2
Amendment of rule 69
4. Rule 69(1) of the Patents Rules is amended by deleting the words “on Patents Form 6” and substituting the words “in writing”.
Amendment of rule 90
5. Rule 90(4) of the Patents Rules is amended by deleting sub‑paragraph (d) and substituting the following sub‑paragraph:
“(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,
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;”.
Amendment of rule 92
6. Rule 92 of the Patents Rules is amended by deleting paragraph (3) and substituting the following paragraph:
“(3) Every request mentioned in paragraph (1) or (2) must be made in writing.”.
Amendment of First Schedule
7. The First Schedule to the Patents Rules is amended —
(a) by deleting “1,925” in item 9 under the heading “Amount $” and substituting “1,650”;
3 S 146/2017
(b) by deleting item 10 and substituting the following item:
Matter Amount Corresponding $ Form
“10. Filing a request for a search Patents Form 11 and examination report —
(a) in any case where an 1,650 plus 40 international for each claim application for a in excess of patent (Singapore) has 20 claims 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 1,950 plus 40 for each claim in excess of 20 claims
”;
(c) by inserting, immediately after “1,350” in item 14 under the heading “Amount $”, the words “plus 40 for each claim in excess of 20 claims”;
(d) by deleting “25” in item 19(b)(iii) and (d)(ii) under the heading “Matter” and substituting in each case “20”;
(e) by deleting paragraph (c) of item 19 and substituting the following paragraphs:
S 146/2017 4
Matter
“(c) where —
(i) the application for a patent has —
(A) a date of filing before 1 July 2004;
(B) a date of lodgment on or after 14 February 2014; and
(C) 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
(ca) where —
(i) the application for a patent has —
(A) a date of filing before 1 July 2004;
(B) a date of lodgment on or after 14 February 2014; and
(C) more than 20 claims in the patent specification when rule 47(3) is complied with;
Amount Corresponding $ Form
200 plus 40 for each claim in excess of 20 claims
200 plus 40 for each claim in excess of 20 claims
5 S 146/2017
(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 not more than 20 claims in the patent specification when the request for that report was made
(cb) where —
(i) the application for a patent has —
(A) a date of filing before 1 July 2004;
(B) a date of lodgment on or after 14 February 2014; and
(C) 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
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
”;
S 146/2017 6
(f) by deleting paragraph (e) of item 19 and substituting the following paragraphs:
Matter
“ (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
200 plus 40 for each claim in excess of 20 claims
7 S 146/2017
(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 —
200 plus 40 for each claim in excess of the number of
(A) a date of filing on or after 1 July 2004; and
(B) more than 20 claims in the patent specification when
claims in the patent specification when the request for that report was made
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
”;
(g) by deleting “270” in item 20(b) “Amount $” and substituting “370”;
under the heading
(h) by deleting “350” in item 20(c) “Amount $” and substituting “520”;
under the heading
(i) by deleting “490” in item 20(d) “Amount $” and substituting “670”;
under the heading
(j) by deleting “600” in item 20(e) “Amount $” and substituting “820”;
under the heading
(k) by deleting “710” in item 20(f) “Amount $” and substituting “970”;
under the heading
S 146/2017 8
(l) by deleting “950” in item 20(g) under the heading “Amount $” and substituting “1,200”;
(m) by deleting “270” in item 25(b) under the heading “Amount $” and substituting “370”;
(n) by deleting “350” in item 25(c) under the heading “Amount $” and substituting “520”;
(o) by deleting “490” in item 25(d) under the heading “Amount $” and substituting “670”;
(p) by deleting “600” in item 25(e) under the heading “Amount $” and substituting “820”;
(q) by deleting “710” in item 25(f) under the heading “Amount $” and substituting “970”;
(r) by deleting “950” in item 25(g) under the heading “Amount $” and substituting “1,200”;
(s) by deleting item 38;
(t) by deleting “135” in item 50(b) under the heading “Amount $” and substituting “185”;
(u) by deleting “175” in item 50(c) under the heading “Amount $” and substituting “260”;
(v) by deleting “245” in item 50(d) under the heading “Amount $” and substituting “335”;
(w) by deleting “300” in item 50(e) under the heading “Amount $” and substituting “410”;
(x) by deleting “355” in item 50(f) under the heading “Amount $” and substituting “485”;
(y) by deleting “475” in item 50(g) under the heading “Amount $” and substituting “600”; and
(z) by deleting items 59, 60 and 61.
Amendment of Second Schedule
8. The Second Schedule to the Patents Rules is amended by deleting the item relating to Patents Form 44.
9 S 146/2017
Saving and transitional provisions
9.—(1) Despite rule 2, rule 31(3)(d) of the Patents Rules as in force immediately before 1 April 2017 continues to apply to any address for service furnished on Patents Form 44 before that date when a request under section 108 of the Patents Act or rule 92(2) of the Patents Rules is made to the Registrar.
(2) Despite rule 5, rule 90(4)(d) of the Patents Rules as in force immediately before 1 April 2017 continues to apply to any declaration of authorisation filed, and any address for service furnished, on Patents Form 44 before that date when a request under section 108 of the Patents Act or rule 92(2) of the Patents Rules is made to the Registrar.
[G.N. Nos. S 501/2009; S 730/2010; S 586/2011; S 210/2013; S 81/2014; S 162/2014; S 739/2014;
S 673/2016]
Made on 31 March 2017.
NG HOW YUE Permanent Secretary,
Ministry of Law, Singapore.
[LAW 18/001/001 Vol. 11; AG/LEGIS/SL/221/2015/1 Vol. 2]