Singapore Statutes Online Subsidiary Legislation Supplement published on01 Mar 2007
Patents (Amendment No. 2) Rules 2007
Table of Contents
Enacting Formula
1 Citation and commencement
2 Amendment of rule 2
3 Deletion and substitution of rule 9 and new rules 9A, 9B and 9C
4 Amendment of rule 18
5 Amendment of rule 19
6 Deletion and substitution of rule 26 and new rule 26A
7 Amendment of rule 27
8 Deletion and substitution of rule 28
9 Deletion of rule 32
10 Amendment of rule 33
11 Deletion and substitution of rule 34
12 Deletion of rule 35
13 Amendment of rule 42
14 Amendment of rule 45
15 Amendment of rule 46
Singapore Statutes Online Subsidiary Legislation Supplement published on01 Mar 2007
16 Amendment of rule 47
17 Amendment of rule 48
18 Amendment of rule 52
19 Amendment of rule 52A
20 Amendment of rule 56
21 Amendment of rule 86
22 Amendment of rule 91
23 Amendment of rule 97
24 Amendment of rule 108
25 Deletion and substitution of rule 112
26 Deletion and substitution of rule 117
27 Amendment of First Schedule
28 Amendment of Second Schedule
29 Miscellaneous amendments
30 Transitional and savings provisions
THE SCHEDULE Immediately Before 1ST April 2007 Which Continue to Apply to Requests or Other Documents First Filed or Furnished Thereunder Before That Date
No. S 93
Singapore Statutes Online Subsidiary Legislation Supplement published on01 Mar 2007
PATENTS ACT (CHAPTER 221)
PATENTS (AMENDMENT NO. 2) RULES 2007
In exercise of the powers conferred by sections 42, 110, 115 and 115A of the Patents Act, the Minister for Law, after consulting with the Intellectual Property Office of Singapore, hereby makes the following Rules:
Citation and commencement
1. These Rules may be cited as the Patents (Amendment No. 2) Rules 2007 and shall come into operation on 1st April 2007.
Amendment of rule 2
2. Rule 2(1) of the Patents Rules (R 1) is amended —
(a) by deleting the words “section 17” in paragraph (a) of the definition of “declared priority date” and substituting the words “section 17(2)”; and
(b) by inserting, immediately after the definition of “identification name”, the following definition:
“ “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);”.
Deletion and substitution of rule 9 and new rules 9A, 9B and 9C
3. Rule 9 of the Patents Rules is deleted and the following rules substituted therefor:
“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 —
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(i) the application in suit to have a declared priority date, where there was none previously; or
(ii) the declared priority date of the application in suit to be brought forward to an earlier date;
(b) it is made within 16 months from —
(i) where sub-paragraph (a)(i) applies, the declared priority date; or
(ii) where sub-paragraph (a)(ii) applies, the earlier date;
(c) it is made on Patents Form 57;
(d) the prescribed fee has been paid; and
(e) the condition referred to in paragraph (4) is satisfied.
(3) Where a request to the Registrar to correct a mistake in a declaration for the purposes of section 17 (2) would, if granted, cause the declared priority date to be changed to a different date, the request shall not be granted unless —
(a) it is made within 16 months from the declared priority date, as changed;
(b) it is made on Patents Form 57;
(c) the prescribed fee has been paid; and
(d) the condition referred to in paragraph (4) is satisfied.
(4) For the purposes of paragraphs (2)(e) and (3)(d), the condition is that —
(a) the applicant has not made any request under section 27 (2) to publish the application in suit during the period prescribed for the purposes of section 27; or
(b) any such request has been withdrawn in accordance with rule 29(4).
(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.
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(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).
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;
(c) be made only if the prescribed fee has been paid;
(d) if the applicant failed to file the application in suit within the period referred to in section 17 (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
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(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 in accordance with rule 29(4).
(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 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
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(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 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) Patents Form 26 requesting the Registrar to certify the prepared copy.
(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.
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Translation of priority documents
9C.—(1) Where —
(a) a copy of any priority application is furnished under rule 9B(4);
(b) that priority application is in a language other than English;
(c) the validity of the claim to priority is relevant to determining whether the invention concerned is patentable; and
(d) the Registrar, by notice sent to the applicant or proprietor, as the case may be, requires him to furnish to the Registry an English translation of that priority application,
the applicant or proprietor, as the case may be, shall, within 2 months from the date of the notice —
(i) furnish to the Registry both of the following at the same time:
(A) an English translation of that priority application;
(B) a copy of a verification document —
(BA) made in accordance with the Registrar’s requirements; and
(BB) verifying that the translation corresponds to the original text of that priority application; 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) Patents Form 26 requesting the Registrar to certify the prepared copy.
(2) The Registrar may, by notice, require to be filed at the Registry or sent to the Registrar, within such period as may be specified in the notice, the original of the verification document.
(3) If the applicant or proprietor, as the case may be, fails to comply with —
(a) paragraph (1) in respect of any priority application; or
(b) the Registrar’s requirement under paragraph (2) in respect of any verification document relating to any priority application,
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the declaration for the purposes of section 17 (2) shall be disregarded in so far as it relates to that priority application.”.
Amendment of rule 18
4. Rule 18 of the Patents Rules is amended by deleting paragraph (1) and substituting the following paragraphs:
“(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.”.
Amendment of rule 19
5. Rule 19 of the Patents Rules is amended by inserting, immediately after paragraph (9), the following paragraphs:
“(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.”.
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Deletion and substitution of rule 26 and new rule 26A
6. Rule 26 of the Patents Rules is deleted and the following rules substituted therefor:
“Certain matters prescribed under section 26
26.—(1) The information on an earlier relevant application prescribed for the purposes of section 26 (1) (c) (ii) (B) shall be —
(a) the date of filing of the earlier relevant application; and
(b) the country in or for which the earlier relevant application was made.
(2) The period prescribed for the purposes of section 26 (3) (b) shall be 2 months from the date of the Registrar’s notification under section 26 (3) (a).
(3) The period prescribed for the purposes of section 26 (7) shall be —
(a) subject to sub-paragraph (b), 3 months from the date of filing of the application for a patent; or
(b) where a new application has been filed under section 20 (3), 26(11) or 47(4), 3 months from the initiation date.
(4) The documents prescribed for the purposes of section 26 (7) (c) 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) Patents Form 26 requesting the Registrar to certify the prepared copy;
(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;
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(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) Patents Form 26 requesting the Registrar to certify the prepared copy; and
(c) Patents Form 56.
(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 payment of the fee for the grant of the patent.
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(2) For the purposes of section 26 (8), if the applicant makes a request under section 26 (9) (b) (i), any missing part of an application for a patent shall be filed on Patents Form 56.
(3) An applicant may only withdraw a missing part by giving written notice to the Registrar.
(4) The period prescribed for the purposes of section 26 (9) (b) shall be —
(a) subject to sub-paragraph (b), 3 months from the date of filing of the application for a patent; or
(b) where a new application has been filed under section 20 (3), 26(11) or 47(4), 3 months from the initiation date.
(5) Any request under section 26 (9) (b) (i) shall —
(a) be made at the time the applicant files any missing part of the application under section 26 (8);
(b) be accompanied by —
(i) the statement under section 26 (9) (b) (ii);
(ii) the information under section 26 (9) (b) (iii); and
(iii) the documents under section 26 (9) (b) (iv); and
(c) be considered never to have been made unless every requirement under section 26 (9) has been complied with.
(6) The information on an earlier relevant application prescribed for the purposes of section 26 (9) (b) (iii) shall be —
(a) the date of filing of the earlier relevant application;
(b) the application or file number of the earlier relevant application; and
(c) the country in or for which the earlier relevant application was made.
(7) The documents prescribed for the purposes of section 26 (9) (b) (iv) shall be —
(a) either of the following:
(i) a copy of the earlier relevant application referred to in section 26 (9) (a) which is —
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(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) Patents Form 26 requesting the Registrar to certify the prepared copy; and
(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) Patents Form 26 requesting the Registrar to certify the prepared copy.”.
Amendment of rule 27
7. Rule 27 of the Patents Rules is amended —
(a) by deleting paragraph (1) and substituting the following paragraph:
“(1) Subject to paragraphs (1A), (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
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(b) to comply with the requirements of section 25(5)(d).”; and
(b) by deleting the marginal note and inserting the following rule heading:
“New applications under section 26 (11)”.
Deletion and substitution of rule 28
8. Rule 28 of the Patents Rules is deleted and the following rule substituted therefor:
“Extension of period for filing new applications
28. Where a new application is filed under section 20 (3), 26(11) or 47(4) —
(a) the requirement under rule 9(1) shall be complied with on the initiation date;
(b) after the expiry of the period referred to in rule 9(2)(b), the requirements under rule 9(2)(c) and (d) shall be complied with on the initiation date;
(c) after the expiry of the period referred to in rule 9(3)(a), the requirements under rule 9(3)(b) and (c) shall be complied with on the initiation date;
(d) after the expiry of the period referred to in rule 9A(2)(a), the requirements under rule 9A(2)(b), (c) and (d) shall be complied with on the initiation date;
(e) after the expiry of the period referred to in rule 9B(1), the requirement under rule 9B(1) shall be complied with on the initiation date;
(f) after the expiry of the period referred to in rule 18(1), the requirement under section 24 (2) read with rule 18(1A) shall be complied with on the initiation date; and
(g) the requirements under rule 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 rule 1(3) of that Schedule or the initiation date, whichever is the later.”.
Deletion of rule 32
9. Rule 32 of the Patents Rules is deleted.
Amendment of rule 33
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10. Rule 33(1) of the Patents Rules is amended by deleting the words “For the purposes of sections 28 (1) (“formalities examination”) and 30 (2) (a), the” and substituting the word “The”.
Deletion and substitution of rule 34
11. Rule 34 of the Patents Rules is deleted and the following rule substituted therefor:
“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.
(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 payment of the fee for the grant of the patent.
(3) For the purposes of section 28 (8), if the applicant makes a request under section 28 (9) (b) (i), the drawing or part of the description of the invention that is missing from the application shall be filed on Patents Form 56.
(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
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(c) be considered never to have been made unless every requirement under section 28 (9) has been complied with.
(7) The information on an earlier relevant application prescribed for the purposes of section 28 (9) (b) (iii) shall be —
(a) the date of filing of the earlier relevant application;
(b) the application or file number of the earlier relevant application; and
(c) the country in or for which the earlier relevant application was made.
(8) The documents prescribed for the purposes of section 28 (9) (b) (iv) 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;
(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) Patents Form 26 requesting the Registrar to certify the prepared copy; and
(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
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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) Patents Form 26 requesting the Registrar to certify the prepared copy.”.
Deletion of rule 35
12. Rule 35 of the Patents Rules is deleted.
Amendment of rule 42
13. Rule 42 of the Patents Rules is amended —
(a) by deleting sub-paragraphs (b) and (c) of paragraph (2) and substituting the following sub-paragraphs:
“(b) in the case of a request for an examination report under section 29(2)(d) (i), a copy of the international search report in respect of the corresponding international application referred to in section 29(2)(d) (i) together with a copy of each of the documents referred to in that international search report;
(c) in the case of a request for an examination report under section 29(2)(e) (i), a copy of the international search report in respect of the application referred to in section 29(2)(e) (i) together with a copy of each of the documents referred to in that international search report;”;
(b) by deleting sub-paragraph (e) of paragraph (2) and substituting the following sub-paragraph:
“(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.”; and
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(c) by deleting paragraphs (3), (4) and (5) and substituting the following paragraphs:
“(3) Where —
(a) an applicant has filed a request for an examination report under section 29(2)(c) (i), (d)(i) or (e)(i); and
(b) any document referred to in the search report or international search report, as the case may be, is in a language other than English,
the Registrar may require the applicant to furnish, within such period as the Registrar may specify —
(i) an English translation of the whole or any part of that document; and
(ii) a copy of a verification document —
(A) made in accordance with the Registrar’s requirements; and
(B) verifying that the translation corresponds to the original text of that document or part thereof.
(4) Where an applicant fails to comply with the Registrar’s requirements under paragraph (3) (i) and (ii) within the period specified by the Registrar, the request for an examination report shall be treated as having been abandoned.”.
Amendment of rule 45
14. Rule 45(4) of the Patents Rules is amended by deleting the words “Rule 42 (2) to (5)” and substituting the words “Rule 42 (2), (3) and (4)”.
Amendment of rule 46
15. Rule 46 of the Patents Rules is amended by deleting paragraph (3A) and substituting the following paragraph:
“(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
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(b) by underlining any replacement text, figure or other matter.”.
Amendment of rule 47
16. Rule 47 of the Patents Rules is amended —
(a) by deleting paragraphs (5) and (5A);
(b) by deleting “, (5), (5A)” in paragraph (7); and
(c) by deleting the words “or any necessary translation of the specification into English” in paragraph (7) and substituting the words “before it was published in accordance with the Patent Co-operation Treaty”.
Amendment of rule 48
17. Rule 48 of the Patents Rules is amended —
(a) by deleting paragraph (3); and
(b) by deleting the words “Paragraphs (2) and (3)” in paragraph (4) and substituting the words “Paragraph (2)”.
Amendment of rule 52
18. Rule 52 of the Patents Rules is amended —
(a) by deleting paragraphs (6A) and (8A); and
(b) by deleting the words “paragraphs (6) and (6A)” in paragraph (10) and substituting the words “paragraph (6)”.
Amendment of rule 52A
19. Rule 52A of the Patents Rules is amended by deleting paragraph (7A) and substituting the following paragraph:
“(7A) Subject to paragraph (7B), where a proposed amendment of the specification of the patent is filed under paragraph (7), it shall be in the form of a copy of the specification with the proposed 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.”.
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Amendment of rule 56
20. Rule 56 of the Patents Rules is amended —
(a) by deleting paragraphs (3), (3A) and (4) and substituting the following paragraphs:
“(3) A request by a person for —
(a) the alteration of his address or address for service; or
(b) the correction of any error in his name, address or address for service,
as entered in the register or on any application or other document filed at the Registry, shall be made on Patents Form 23.
(4) If the Registrar is satisfied that any request to alter or correct any name, address or address for service may be allowed, he shall cause the register, application or other document to be altered or corrected accordingly.”; and
(b) by deleting the marginal note and inserting the following rule heading:
“Alteration or correction of name, address or address for service”.
Amendment of rule 86
21. Rule 86 of the Patents Rules is amended —
(a) by deleting paragraph (3);
(b) by inserting, immediately before paragraph (4), the following paragraph:
“(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.”;
(c) by deleting the words “a translation into English” in paragraph (4)(d) and substituting the words “an English translation”;
(d) by deleting the words “to the extent that the application or any amendment made under Article 19 of the Patent Co-operation Treaty, or in a case where Singapore has been elected in accordance with Chapter II of the Treaty, any amendment annexed to the international preliminary examination report under Chapter II of the Treaty are not in English, a translation into English of the application as originally filed or, as the case may be, of the application as
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originally filed and of the amendment is necessary; however,” in paragraph (5) and substituting the words “where an English translation of the application or any amendment of the application is required,”;
(e) by deleting sub-paragraph (ii) of paragraph (5)(a) and substituting the following sub-paragraph:
“(ii) the application has not been published in accordance with the Patent Co-operation Treaty;”;
(f) by deleting the words “sections 24(2) and 28 (1)” in paragraph (8) and substituting the words “section 24(2)”;
(g) by inserting, immediately after paragraph (8), the following paragraph:
“(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.”; and
(h) by inserting, immediately after the words “other than an international application” in paragraph (10), the words “for a patent”.
Amendment of rule 91
22. Rule 91 of the Patents Rules is amended —
(a) by deleting the words “rule 56 (3)” in paragraph (1) and substituting the words “rule 9 (3) or 56 (3)”;
(b) by deleting paragraph (1B);
(c) by deleting the words “Paragraphs (1A) and (1B)” in paragraph (1C) and substituting the words “Paragraph (1A)”; and
(d) by deleting paragraph (10).
Amendment of rule 97
23. Rule 97(2) of the Patents Rules is amended —
(a) by inserting, at the end of sub-paragraph (a), the word “and”;
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(b) by deleting the semi-colon at the end of sub-paragraph (b) and substituting a full-stop; and
(c) by deleting sub-paragraphs (c) and (d).
Amendment of rule 108
24. Rule 108 of the Patents Rules is amended —
(a) by deleting paragraphs (2) and (3) and substituting the following paragraphs:
“(2) The provisions referred to in paragraph (1) are —
(a) rules 8 (1), 9 (1), (2) and (3), 9A (1) and (2)(a), 19 (2), 26 (5), 26A (1), 26A (5)(a), 28 (a), (b), (c) and (d), 34 (2), 46 (4) and (5)(c), 47A (1), 49, 51 (1) and (2A), 51A (1) and (2), 52 (2), 52A (4) and (8), 53 (1), 54 (2), 73 (1), 74 (1), 75, 85 (1), 86 (3A), 91(3) and (5) and paragraph 4(2) of the Fourth Schedule;
(b) rule 26 (3) (except so far as it relates to the filing of the documents prescribed under rule 26 (4)(a) and (b));
(c) 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
(d) 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) A time or period prescribed in —
(a) rule 9A (5), 9B (1) or (4), 9C (1), 18 (1), 19 (11), 26 (2), 28 (e), (f) or (g), 38, 43, 47 (1) or (2), 53 (4), 86 (1), (6), (8) or (8A), 112 (4) or (5)(b) or paragraph 1(3) of the Fourth Schedule;
(b) rule 26 (3) (so far as it relates to the filing of the documents prescribed under rule 26 (4)(a) and (b));
(c) 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 26 (7)); or
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(d) 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)),
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.”; and
(b) by deleting the words “the extension sought” in paragraph (4A) and substituting the words “an extension for a period not exceeding 12 months”.
Deletion and substitution of rule 112
25. Rule 112 of the Patents Rules is deleted and the following rule substituted therefor:
“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 —
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(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.
(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.”.
Deletion and substitution of rule 117
26. Rule 117 of the Patents Rules is deleted and the following rule substituted therefor:
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“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, accompanied by Patents Form 48, within one month from the date on which the international application for a patent to which it relates is filed at the Registry.
(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.”.
Amendment of First Schedule
27. The First Schedule to the Patents Rules is amended —
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(a) by deleting item 26 and substituting the following items:
“ 26. On filing a request, in respect of
one or more patents or applications for patents, for —
12 23
(a) each alteration or correction of name
(b) each alteration or correction of address (not being an address for service)
26A. On filing a request, in respect of each patent or application for a patent, for —
12 23
(a) each alteration or correction of address for service
(b) each correction of an error in the register or any connected document
(c) each correction of an error of translation or transcript or clerical error or mistake in the specification of a patent, in an application for a patent or in any document filed in connection with a patent or such an application
”;
(b) by deleting the words “of documents” wherever they appear in the first column of item 27 (a) and (b) and substituting in each case the words “or document”;
(c) by inserting, immediately after item 50, the following item:
“ 50A. On payment of fee under
rule 117 (6) in respect of a request under Rule 26bis.3 (a) of the Regulations under the
250 —
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Patent Co-operation Treaty
”; and
(d) by inserting, immediately after item 56B, the following items:
“ 56BA. On filing one or more
documents under section 26(7) (c) or (8) or 28 (8)
— 56
56BB. On filing a declaration under rule 9 (2) or a request under rule 9 (3)
120 57
56BC. On filing a request under rule 9A (2)
250 57
”.
Amendment of Second Schedule
28. The Second Schedule to the Patents Rules is amended by inserting, immediately after the item relating to Patents Form 55, the following items:
“ Patents Form 56 Filing of Documents under section 26(7) (c) or
(8) or 28(8)
Patents Form 57 Declaration under rule 9 (2) or Request under rule 9 (3) or 9A (2)
”.
Miscellaneous amendments
29. The Patents Rules are amended —
(a) by inserting, immediately after the words “international application” wherever they appear in the following provisions, the words “for a patent”:
Rules 116(1) and (2) and 118 and item 28 (d) of the First Schedule;
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(b) by inserting, immediately after the words “international application” in item 41 of the First Schedule, the words “for a patent (Singapore)”; and
(c) by inserting, immediately after the words “International Application” in the item relating to Patents Form 39 in the Second Schedule, the words “for a Patent (Singapore)”.
Transitional and savings provisions
30.—(1) Rules 2(a), 3, 21(b) and 22(a) shall only apply in relation to an application for a patent that qualifies for a date of filing on or after 1st April 2007, and the definition of “declared priority date” in rule 2(1) and rules 9 and 91(1) of the Patents Rules in force immediately before that date shall continue to apply to an application for a patent that qualifies for a date of filing before that date.
(2) Rules 2(b), 4, 5, 6, 7, 8, 9, 10, 11, 12 and 21(f) and (g) shall only apply in relation to an application for a patent that is initiated on or after 1st April 2007, and rules 18(1), 26, 27, 28, 32, 33(1), 34, 35 and 86(8) of the Patents Rules in force immediately before that date shall continue to apply to an application for a patent that is initiated before that date.
(3) Rule 21(a), (d) and (e) shall only apply in relation to an international application for a patent (Singapore) that enters the national phase of the application in Singapore on or after 1st April 2007, and rule 86(5) of the Patents Rules in force immediately before that date shall continue to apply to an international application for a patent (Singapore) that enters the national phase of the application in Singapore before that date.
(4) Rule 24 shall not apply to any time or period which —
(a) is prescribed by the Patents Rules for doing any act or taking any proceedings, or is specified by the Registrar under those Rules; and
(b) has expired before 1st April 2007,
and rule 108(2), (3) and (4A) of the Patents Rules in force immediately before that date shall continue to apply to that time or period.
(5) Rule 26 shall only apply to an international application for a patent that qualifies for an international filing date on or after 1st April 2007, and rule 117 of the Patents Rules in force immediately before that date shall continue to apply to an international application for a patent that qualifies for an international filing date before that date.
(6) Where any request or other document was first filed in or furnished to the Registry before 1st April 2007 under the applicable provision specified in the first column of the Schedule (being a provision of the Patents Rules in force immediately before that date), or under any provision of the Act or the Patents Rules in force immediately before
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that date read with the applicable provision, the applicable provision shall continue to apply to that request or document on or after that date as if the corresponding provision of these Rules specified in the second column thereof had not been made.
THE SCHEDULE Rule 30(6)
IMMEDIATELY BEFORE 1ST APRIL 2007 WHICH CONTINUE TO APPLY TO REQUESTS OR OTHER DOCUMENTS FIRST FILED OR
FURNISHED THEREUNDER BEFORE THAT DATE
First column Second column
Provision of Patents Rules in force immediately before 1st April 2007
Corresponding provision of these Rules
1. Rule 42(2), (3), (4) or (5) Rule 13
2. Rule 45(4) Rule 14
3. Rule 46(3A) Rule 15
4. Rule 47(5), (5A) or (7) Rule 16
5. Rule 48(3) or (4) Rule 17
6. Rule 52(6A) or (8A) Rule 18
7. Rule 52A(7A) Rule 19
8. Rule 56(3), (3A) or (4) Rule 20
9. Rule 91(1B), (1C) or (10) Rule 22(b), (c) and (d)
10. Rule 97(2) Rule 23
11. Rule 112 Rule 25
Made this 27th day of February 2007.
CHAN LAI FUNG Permanent Secretary,
Ministry of Law, Singapore.
[TMC 002/87B; AG/LEG/SL/221/2002/1 Vol. 7] LAW 18/001/001 Vol. 10]
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