Patents Act 1994

2020 REVISED EDITION

This revised edition incorporates all amendments up to and including 1 December 2021 and comes into operation on 31 December 2021

An Act to establish a new law of patents, to enable Singapore to give effect to certain international conventions on patents, and for matters connected therewith.

[23 February 1995: Except sections 104 and 105(1) to (6), (8) and (9)]

PART 1

PRELIMINARY

Short title

1. This Act is the Patents Act 1994.

Interpretation

2.—(1) In this Act, unless the context otherwise requires —

“Convention on International Exhibitions” means the Convention relating to International Exhibitions signed in Paris on 22 November 1928, as amended or supplemented by any protocol to that convention which is for the time being in force;

“corresponding application”, in relation to an application for a patent (called in this definition the application in suit), means an application for protection filed, or treated as filed, with any prescribed patent office that —

(a)

forms the basis for a priority claim under section 17 in the application in suit; or

(b)

is subject to a priority claim based on —

(i)	the application in suit; or
(ii)	an application which is also the basis for a priority claim under section 17 in the application in suit;

“corresponding international application”, in relation to an application for a patent (called in this definition the application in suit), means an application for protection filed under the Patent Co-operation Treaty that —

(a)

forms the basis for a priority claim under section 17 in the application in suit; or

(b)

is subject to a priority claim based on —

(i)	the application in suit; or
(ii)	an application which is also the basis for a priority claim under section 17 in the application in suit;

“corresponding patent”, in relation to a corresponding application, means a patent granted in respect of the corresponding application by the prescribed patent office in which the corresponding application was filed or treated as filed;

“Council for TRIPS” means the Council for Trade-Related Aspects of Intellectual Property Rights established under the TRIPS Agreement;

“country” includes —

(a)	a colony, protectorate or territory subject to the authority or under the suzerainty of another country; or
(b)	a territory administered by another country under the trusteeship of the United Nations;

“court” means the General Division of the High Court;

“date of filing”, in relation to —

(a)	an application for a patent made under this Act, means the date of filing that application by virtue of section 26; and
(b)	any other application, means the date which, under the law of the country where the application was made or in accordance with the terms of a treaty or convention to which that country is a party, is to be treated as the date of filing that application in that country or is equivalent to the date of filing an application in that country (whatever the outcome of the application);

“designate”, in relation to an application or a patent, means designate the country or countries (pursuant to the Patent Co‑operation Treaty) in which protection is sought for the invention which is the subject of the application or patent;

“Doha Declaration Implementation Decision” means the Decision adopted by the General Council of the World Trade Organisation on 30 August 2003 on the implementation of paragraph 6 of the Declaration on the TRIPS Agreement and Public Health adopted in Doha on 14 November 2001;

“employee” means a person who works or (where the employment has ceased) worked under a contract of employment or in employment under or for the purposes of a Government department;

“employer”, in relation to an employee, means the person by whom the employee is or was employed;

“European Patent Convention” means the Convention on the Grant of European Patents;

“European Patent Office” means the office of that name established by the European Patent Convention;

“examination” means an examination conducted by an Examiner in relation to an application for a patent to determine such matters as may be prescribed;

“Examiner” means any person, organisation, entity or foreign or international patent office or organisation appointed by the Registrar for the purpose of referring any question or matter relating to patents (including the conduct of any search, examination or search and examination, in relation to an application for a patent, whether before or after the patent is granted), and includes any Deputy Registrar of Patents, and any Assistant Registrar of Patents or public officer to whom the Registrar has delegated, under section 5(1), any of the Registrar’s powers or functions under this Act;

“exclusive licence” means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on the licensee and persons authorised by the licensee, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application relates, and “exclusive licensee” and “non-exclusive licence” are to be construed accordingly;

“filing fee” means the fee prescribed for the purposes of section 25;

“formal requirements” means those requirements of this Act and the rules which are designated by the rules as formal requirements for the purposes of this Act;

“international application for a patent” means an application made under the Patent Co-operation Treaty;

“international application for a patent (Singapore)” means an application of that description which, on its date of filing, designates Singapore;

“International Bureau” means the secretariat of the World Intellectual Property Organisation established by a convention signed at Stockholm on 14 July 1967;

“international exhibition” means an official or officially recognised international exhibition falling within the terms of the Convention on International Exhibitions or falling within the terms of any subsequent treaty or convention replacing that convention;

“inventor”, in relation to an invention, means the actual deviser of the invention and “joint inventor” is to be construed accordingly;

“journal” has the meaning given by section 115(4);

[Deleted by Act 33 of 2021 wef 14/01/2022]

“marketing approval”, in relation to a pharmaceutical product, means —

(a)	a product licence under section 5 of the Medicines Act 1975 granted before 1 November 2016; or
(b)	a registration under Part 7 of the Health Products Act 2007 granted on or after 1 November 2016;

“medicinal health product” means any health product within the meaning of the Health Products Act 2007 that is prescribed as a medicinal health product;

“medicinal product” means —

(a)	a medicinal product within the meaning of the Medicines Act 1975; or
(b)	a medicinal health product;

“missing part”, in relation to an application for a patent, means —

(a)	any drawing; or
(b)	any part of the description of the invention for which the patent is sought,

which was missing from the application at the date of filing of the application;

“mortgage”, when used as a noun, includes a charge for securing money or money’s worth and, when used as a verb, is to be construed accordingly;

“Office” means the Intellectual Property Office of Singapore incorporated under the Intellectual Property Office of Singapore Act 2001;

“Paris Convention” means the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883;

“patent” means a patent under this Act and includes a patent in force by virtue of section 117(3);

“Patent Co-operation Treaty” means the treaty of that name signed at Washington on 19 June 1970;

“patented invention” means an invention for which a patent is granted and “patented process” is to be construed accordingly;

“patented product” means a product which is a patented invention or, in relation to a patented process, a product obtained directly by means of the process or to which the process has been applied;

“person” includes the Government;

“pharmaceutical product” means a medicinal product which is a substance used wholly or mainly by being administered to a human being for the purpose of treating or preventing disease, but does not include —

(a)

any substance which is used solely —

(i)	for diagnosis or testing; or
(ii)	as a device or mechanism, or an instrument, apparatus or appliance; or

(b)

any substance or class of substances specified in paragraph 2 or 3 of the Schedule;

“prescribed form” means a form published by the Registrar under section 115A;

“priority date” means the date determined as such under section 17;

“published” means made available to the public (whether in Singapore or elsewhere) and a document is taken to be published under any provision of this Act if it can be inspected as of right at any place in Singapore by members of the public, whether on payment of a fee or not, and “republished” is to be construed accordingly;

“register”, when used as a noun, means the register of patents maintained under section 42 and, when used as a verb, means, in relation to any thing, to register or register particulars, or enter notice, of that thing in the register and, when used in relation to a person, means to enter the person’s name in the register;

“registered foreign patent agent” means a person whose name is entered in the register of foreign patent agents kept in accordance with the rules made under section 104;

“registered patent agent” means a person whose name is entered in the register of patent agents kept in accordance with the rules made under section 104;

“Registrar” means the Registrar of Patents and includes any Deputy Registrar of Patents holding office under this Act;

“Registry” means the Registry of Patents established under this Act;

“related national phase application”, in relation to an application for a patent (being an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3)), or a new application filed in accordance with section 26(11) which derived its filing date from an international application for a patent (Singapore) (called in this definition the application in suit), means an application for protection treated as filed with any prescribed patent office (being an international application for a patent (Singapore) that has entered the national or regional phase in the country or jurisdiction the patent office of which is that prescribed patent office) which is derived from the same international application for a patent (Singapore) (being an international application for a patent (Singapore) that is not subject to any priority claim) as the application in suit;

“related national phase patent”, in relation to a related national phase application, means a patent granted in respect of the related national phase application by the prescribed patent office in which the related national phase application was treated as filed;

“relevant authority”, in relation to a pharmaceutical product, means the Health Sciences Authority established under the Health Sciences Authority Act 2001;

“relevant health product” means a patented invention which is a product referred to in —

(a)	paragraph 1(a) of the Doha Declaration Implementation Decision; or
(b)	paragraph 1(a) of the Annex to the TRIPS Agreement;

“right”, in relation to any patent or application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent;

“scientific adviser” means any person with any scientific qualification, any medical practitioner, engineer, architect, surveyor, accountant, actuary and any other specially skilled person;

“search” means a search conducted by an Examiner in relation to an application for a patent to discover such matters as may be prescribed;

“supplementary examination” means a supplementary examination conducted by an Examiner in relation to an application for a patent to determine such matters as may be prescribed;

“TRIPS Agreement” means the Agreement on Trade-Related Aspects of Intellectual Property Rights, set out in Annex 1C to the WTO Agreement, as revised or amended from time to time;

“WTO Agreement” means the World Trade Organisation Agreement signed in Marrakesh in 1994 as revised or amended from time to time.

[2/2007; 18/2008; 20/2009; 15/2012; 4/2014; 40/2019]

(2) Rules may provide for stating in the journal that an exhibition falls within the definition of “international exhibition” in subsection (1) and any such statement is conclusive evidence that the exhibition falls within that definition.

(3) For the purposes of this Act, a matter is taken to have been disclosed in any relevant application within the meaning of section 17 or in the specification of a patent if it was either claimed or disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in that application or specification.

(4) For the purposes of this Act —

(a)

a claim is related to another claim if —

(i)

the 2 claims are identical; or

(ii)

each limitation in the second claim —

(A)	is identical to a limitation in the first claim; or
(B)	differs from a limitation in the first claim only in expression but not in content; and

(b)

more than one claim may be related to a single claim.

(5) References in this Act to an application for a patent, as filed, are references to such an application in the state it was on the date of filing.

(6) References in this Act to an application for a patent being published are references to its being published under section 27.

(7) References in this Act to the Paris Convention or the Patent Co‑operation Treaty are references to that Convention or Treaty or any other international convention or agreement replacing it, as amended or supplemented by any convention or international agreement (including in either case any protocol or annex) to which Singapore is a party, or in accordance with the terms of any such convention or agreement and include references to any instrument made under any such convention or agreement.

(8) The Arbitration Act 2001 does not apply to any proceedings before the Registrar under this Act.

Application to Government

3. This Act binds the Government.

PART 2

ADMINISTRATION

Registrar of Patents and other officers

4.—(1) There is to be a Registrar of Patents who has the chief control of the Registry of Patents.

(2) There is to be one or more Deputy Registrars of Patents who, subject to the control of the Registrar, have all the powers and functions of the Registrar under this Act, other than the powers of the Registrar under section 5.

(3) There is to be one or more Assistant Registrars of Patents.

(4) The Registrar and all the other officers under this section must be appointed by the Minister.

Delegation by Registrar

5.—(1) The Registrar may, in relation to a particular matter or class of matters, by writing under the hand of the Registrar, delegate all or any of the Registrar’s powers or functions under this Act (except this power of delegation) to an Assistant Registrar of Patents, any public officer, or any person with the relevant qualifications for or experience in the matter or class of matters, so that the delegated powers and functions may be exercised by the delegate with respect to the matter or class of matters specified in the instrument of delegation.

[4/2014]

(2) A delegation under this section is revocable at will and no delegation prevents the exercise of a power or function by the Registrar or by any Deputy Registrar of Patents.

(3) A person with the relevant qualifications or experience referred to in subsection (1) is, when exercising the delegated powers and functions, deemed to be a public servant for the purposes of the Penal Code 1871.

[4/2014]

Registry of Patents

6. For the purposes of this Act, there is an office which is known as the Registry of Patents.

Seal of Registry

7. There is a seal of the Registry and impressions of the seal are to be judicially noticed.

Powers of Registrar

8. The Registrar may, for the purposes of this Act —

(a)	summon witnesses;
(b)	receive evidence on oath, whether orally or otherwise;
(c)	require the production of documents or articles; and
(d)	award costs against a party to proceedings before the Registrar.

Disobedience to summons an offence

9.—(1) A person who has been summoned to appear as a witness before the Registrar must not, without lawful excuse, fail to appear in obedience to the summons.

(2) A person who has been required by the Registrar to produce a document or article must not, without lawful excuse, fail to produce the document or article.

(3) Any person who contravenes subsection (1) or (2) shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $2,000 or to imprisonment for a term not exceeding 3 months or to both.

Refusal to give evidence an offence

10.—(1) A person who appears before the Registrar must not, without lawful excuse, refuse to be sworn or to make an affirmation, or to produce documents or articles, or to answer questions, which the person is lawfully required to produce or answer.

(2) Any person who contravenes subsection (1) shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $2,000 or to imprisonment for a term not exceeding 3 months or to both.

Officers not to traffic in inventions

11.—(1) An officer or person employed in the Registry must not buy, sell, acquire or traffic in an invention or patent, whether granted in Singapore or elsewhere, or in a right to, or licence under, a patent, whether granted in Singapore or elsewhere.

(3) A purchase, sale, acquisition, assignment or transfer made or entered into in contravention of this section is void.

(4) This section does not apply to the actual inventor or to an acquisition by bequest or devolution in law.

Officers not to furnish information

12.—(1) An officer or person employed in the Registry must not, except when required or authorised by this Act, or under a direction in writing of the Registrar or by order of a court —

(a)	furnish information on a matter which is being, or has been, dealt with under this Act;
(b)	prepare, or assist in the preparation of, a document required or permitted by or under this Act to be lodged in the Registry; or
(c)	conduct a search in the records of the Registry.

PART 3

PATENTABILITY

Patentable inventions

13.—(1) Subject to subsection (2), a patentable invention is one that satisfies the following conditions:

(a)	the invention is new;
(b)	it involves an inventive step; and
(c)	it is capable of industrial application.

(2) An invention the publication or exploitation of which would be generally expected to encourage offensive, immoral or anti-social behaviour is not a patentable invention.

(3) For the purposes of subsection (2), behaviour is not to be regarded as offensive, immoral or anti-social only because it is prohibited by any law in force in Singapore.

Novelty

14.—(1) An invention is taken to be new if it does not form part of the state of the art.

(2) The state of the art in the case of an invention is taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in Singapore or elsewhere) by written or oral description, by use or in any other way.

(3) The state of the art in the case of an invention to which an application for a patent or a patent relates is taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied:

(a)	that matter was contained in the application for that other patent both as filed and as published; and
(b)	the priority date of that matter is earlier than that of the invention.

(4) For the purposes of this section, the disclosure of matter constituting an invention is to be disregarded in the case of a patent or an application for a patent if occurring later than the beginning of the period of 12 months immediately preceding the date of filing the application for the patent and either —

(a)

the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by any person —

(i)	from the inventor or from any other person to whom the matter was made available in confidence by the inventor or who obtained it from the inventor because the other person or the inventor believed that the other person was entitled to obtain it; or
(ii)	from any other person (A) to whom the matter was made available in confidence by any person mentioned in sub‑paragraph (i) or in this sub‑paragraph or who obtained it from any person so mentioned because A or the person from whom A obtained it believed that A was entitled to obtain it;

(b)

the disclosure was made in breach of confidence by any person who obtained the matter in confidence from the inventor or from any other person to whom it was made available, or who obtained it, from the inventor;

(c)

the disclosure was due to, or made in consequence of, the inventor displaying the invention at an international exhibition;

(d)

the disclosure was due to, or made in consequence of, the inventor describing the invention in a paper read by the inventor or another person with the inventor’s consent or on the inventor’s behalf before any learned society or published with the inventor’s consent in the transactions of any learned society; or

(e)

subject to subsections (6) and (7), the disclosure was made to the public by the inventor, or by a person who obtained the matter directly or indirectly from the inventor, in any circumstances not described in paragraphs (a) to (d).

[18/2017]

(5) In subsection (4)(d), “learned society” includes any club or association constituted in Singapore or elsewhere whose main object is the promotion of any branch of learning or science.

(6) Subsection (4)(e) applies to the disclosure of matter constituting an invention due to, or in consequence of, the publication by an intellectual property administrator (being a person who obtained the matter directly or indirectly from the inventor) of an application for an intellectual property right (being an application containing the matter, but not being the application for a patent mentioned in subsection (4)), or a registration of an intellectual property right pursuant to such an application, only if —

(a)

the application was filed, without the consent of the inventor, by a person who obtained the matter directly or indirectly from the inventor; or

(b)

the publication was erroneous by reason that —

(i)	the application had been withdrawn, refused or abandoned before the date of the publication; and
(ii)	consequently, the publication was not required under the law (whether of Singapore or elsewhere) or treaty governing the application. [18/2017]

(7) For the purposes of subsection (4)(e), where —

(a)

the disclosure of matter constituting an invention is due to, or in consequence of, the publication by an intellectual property administrator (being a person who obtained the matter directly or indirectly from the inventor) of an application for an intellectual property right (being an application containing the matter, but not being the application for a patent mentioned in subsection (4)), or a registration of an intellectual property right pursuant to such an application; and

(b)

the publication was erroneous by reason that the publication occurred earlier than provided under the law (whether of Singapore or elsewhere) or treaty governing the application,

the matter is to be treated as disclosed to the public on the date when the publication should have occurred under that law or treaty.

[18/2017]

(8) If the applicant relies on any circumstances described in any paragraph of subsection (4) when —

(a)	complying with section 29(1)(b) or (c), (3) or (9); or
(b)	making a request under section 29B(1) for a review of an examination report issued under section 29(4) or a search and examination report issued under section 29(5),

the applicant must file written evidence complying with the prescribed requirements in support of the applicant’s reliance on those circumstances.

[18/2017]

(9) In this section, references to the inventor include references to any proprietor of the invention for the time being.

(10) In the case of an invention consisting of a substance or composition for use in a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body, the fact that the substance or composition forms part of the state of the art does not prevent the invention from being taken to be new if the use of the substance or composition in any such method does not form part of the state of the art.

(11) In this section —

“foreign intellectual property office” means —

(a)

any national or regional office outside Singapore that performs functions similar to those that are performed by —

(i)	the Registry;
(ii)	the Registry of Plant Varieties established under section 7 of the Plant Varieties Protection Act 2004;
(iii)	the Registry of Designs established under section 51 of the Registered Designs Act 2000; or
(iv)	the Registry of Trade Marks established under section 64 of the Trade Marks Act 1998;

(b)

the International Bureau; or

(c)

the International Bureau as defined in section 2(1) of the Registered Designs Act 2000 or section 2(1) of the Trade Marks Act 1998;

“intellectual property administrator” means —

(a)	the Registrar;
(b)	the Registrar of Designs;
(c)	the Registrar of Plant Varieties;
(d)	the Registrar of Trade Marks; or
(e)	a foreign intellectual property office;

“Registrar of Designs” means the Registrar of Designs appointed under section 49 of the Registered Designs Act 2000, and includes a Deputy Registrar of Designs and an Assistant Registrar of Designs appointed under that section;

“Registrar of Plant Varieties” means the Registrar of Plant Varieties appointed under section 5 of the Plant Varieties Protection Act 2004, and includes a Deputy Registrar of Plant Varieties and an Assistant Registrar of Plant Varieties appointed under that section;

“Registrar of Trade Marks” means the Registrar of Trade Marks appointed under section 62 of the Trade Marks Act 1998, and includes a Deputy Registrar of Trade Marks and an Assistant Registrar of Trade Marks appointed under that section.

[18/2017]

Inventive step

15. An invention is taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 14(2) and without having regard to section 14(3).

Industrial application

16.—(1) Subject to subsection (2), an invention is taken to be capable of industrial application if it can be made or used in any kind of industry, including agriculture.

(2) An invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body is not taken to be capable of industrial application.

(3) Subsection (2) does not prevent a product consisting of a substance or composition from being treated as capable of industrial application merely because it is invented for use in any such method.

Priority date

17.—(1) For the purposes of this Act, the priority date of an invention to which an application for a patent relates and also of any matter (whether or not the same as the invention) contained in the application is, except as provided by the provisions of this Act, the date of filing the application.

(2) Where in or in connection with an application for a patent (called in this section the application in suit) a declaration is made, whether by the applicant or any predecessor in title of the applicant, complying with the relevant requirements of the rules and specifying one or more earlier relevant applications for the purposes of this section made by the applicant or a predecessor in title of the applicant, and the application in suit has a date of filing, within the period mentioned in subsection (3)(a) or (b), then —

(a)

if an invention to which the application in suit relates is supported by matter disclosed in the earlier relevant application or applications, the priority date of that invention, instead of being the date of filing the application in suit, is the date of filing the relevant application in which that matter was disclosed or, if it was disclosed in more than one relevant application, the earliest of them; and

(b)

the priority date of any matter contained in the application in suit which was also disclosed in the earlier relevant application or applications is the date of filing the relevant application in which that matter was disclosed or, if it was disclosed in more than one relevant application, the earliest of them.

[2/2007]

(3) For the purposes of subsection (2), the period is —

(a)	the period of 12 months immediately following the date of filing of the specified earlier relevant application or, if there is more than one relevant application, the earliest of them; or
(b)	where the Registrar has granted a request under subsection (4), the period commencing immediately after the period referred to in paragraph (a) and ending at the end of such period as may be prescribed. [2/2007]

(4) The applicant may make a request to the Registrar for the declaration referred to in subsection (2) to be made after the period referred to in subsection (3)(a).

[2/2007]

(5) Where the applicant makes a request under subsection (4), the applicant must, if the applicant has failed to file the application in suit within the period mentioned in subsection (3)(a), indicate in the request whether the applicant’s failure to file the application in suit within the period mentioned in subsection (3)(a) —

(a)	occurred in spite of due care required by the circumstances having been taken; or
(b)	was unintentional. [2/2007]

(6) The Registrar must grant a request under subsection (4) if and only if —

(a)

the request is made within such period and in such manner, and complies with such requirements, as may be prescribed; and

(b)

where the applicant has failed to file the application in suit within the period referred to in subsection (3)(a), the Registrar is satisfied that the applicant’s failure to file the application in suit within the period mentioned in subsection (3)(a) —

(i)	occurred in spite of due care required by the circumstances having been taken; or
(ii)	was unintentional. [2/2007]

(7) Where an invention or other matter contained in the application in suit was also disclosed in 2 earlier relevant applications filed by the same applicant as in the case of the application in suit or a predecessor in title of the applicant and the second of those relevant applications was specified in or in connection with the application in suit, the second of those relevant applications, so far as it concerns that invention or matter, is to be disregarded unless —

(a)

it was filed in or in respect of the same country as the first; and

(b)

not later than the date of filing the second, the first (whether or not so specified) was unconditionally withdrawn, or was abandoned or refused, without —

(i)	having been made available to the public whether in Singapore or elsewhere;
(ii)	leaving any right outstanding; and
(iii)	having served to establish a priority date in relation to another application, wherever made.

(8) This section applies for determining the priority date of an invention for which a patent has been granted as it applies for determining the priority date of an invention to which an application for that patent relates.

(9) In this section and section 18, “relevant application” means any of the following applications which has a date of filing:

(a)	an application for a patent under this Act;
(b)	an application in or for a convention country for protection in respect of an invention or an application 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.

(10) In subsection (9), “convention country” means —

(a)	a country other than Singapore that is a party to the Paris Convention or a member of the World Trade Organisation; or
(b)	any other country with which Singapore has entered into a treaty, convention, arrangement or engagement and which is declared by the Minister, by order in the Gazette, as a convention country.

Disclosure of matter, etc., between earlier and later applications

18.—(1) To avoid doubt, where an application (the application in suit) is made for a patent and a declaration is made in accordance with section 17(2) in or in connection with that application specifying an earlier relevant application, the application in suit and any patent granted in pursuance of it are not invalidated by reason only of the relevant intervening acts.

(2) In subsection (1), “relevant intervening acts” means acts done in relation to matter disclosed in an earlier relevant application between the dates of the earlier relevant application and the application in suit, as for example, filing another application for the invention for which the earlier relevant application was made, making information available to the public about that invention or that matter or working that invention, but disregarding any application, or the disclosure to the public of matter contained in any application, which is itself to be disregarded for the purposes of section 17(7).

PART 4

RIGHT TO APPLY FOR AND OBTAIN PATENT

Right to apply for and obtain patent

19.—(1) Any person may make an application for a patent either alone or jointly with another.

(2) A patent for an invention may be granted —

(a)	primarily to the inventor or joint inventors;
(b)	in preference to paragraph (a), to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in Singapore; or
(c)	in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) or any person so mentioned and the successor or successors in title of another person so mentioned,

and to no other person.

(3) Except so far as the contrary is established, a person who makes an application for a patent is taken to be the person who is entitled under subsection (2) to be granted a patent and 2 or more persons who make such an application jointly are taken to be the persons so entitled.

Determination before grant of questions about entitlement to patents, etc.

20.—(1) At any time before a patent has been granted for an invention —

(a)	any person may refer to the Registrar the question whether the person is entitled to be granted (either alone or with any other persons) a patent for that invention or has or would have any right in or under any patent so granted or any application for such a patent; or
(b)	any of 2 or more co-proprietors of an application for a patent for that invention may so refer the question whether any right in or under application should be transferred or granted to any other person,

and the Registrar must determine the question and may make such order as the Registrar thinks fit to give effect to the determination.

[23/2019]

(2) Where a person refers a question relating to an invention under subsection (1)(a) to the Registrar after an application for a patent for the invention has been filed and before a patent is granted pursuant to the application, then, unless the application is refused or withdrawn before the reference is disposed of by the Registrar, the Registrar may, without limiting subsection (1) and subject to subsection (6) —

(a)	order that the application proceeds in the name of that person, either solely or jointly with that of any other applicant or any specified applicant;
(b)	where the reference was made by 2 or more persons, order that the application proceeds in all their names jointly;
(c)	refuse to grant a patent pursuant to the application or order the application to be amended so as to exclude any of the matter in respect of which the question was referred; or
(d)	make an order transferring or granting any licence or other right in or under the application and give directions to any person for carrying out the provisions of any such order.

(3) Where a question is referred to the Registrar under subsection (1)(a) and —

(a)	the Registrar orders an application for a patent for the invention to which the question relates to be so amended;
(b)	any such application is refused under subsection (2)(c) before the Registrar has disposed of the reference (whether the reference was made before or after the publication of the application); or
(c)	any such application is refused under any other provision of this Act or is withdrawn before the Registrar has disposed of the reference, but after the publication of the application,

the Registrar may order that any person by whom the reference was made may within the prescribed period make a new application for a patent for the whole or part of any matter comprised in the earlier application or (as the case may be) for all or any of the matter excluded from the earlier application, subject in either case to section 84, and in either case that, if such a new application is made, it is treated as having been filed on the date of filing the earlier application.

(4) Where a person refers a question under subsection (1)(b) relating to an application, any order under subsection (1) may contain directions to any person for transferring or granting any right in or under the application.

(5) If any person to whom directions have been given under subsection (2)(d) or (4) fails to do anything necessary for carrying out any such directions within 14 days after the date of the directions, the Registrar may, on application made to the Registrar by any person in whose favour or on whose reference the directions were given, authorise him, her or it to do that thing on behalf of the person to whom the directions were given.

(6) Where on a reference under this section it is alleged that, by virtue of any transaction, instrument or event relating to an invention or an application for a patent, any person other than the inventor or the applicant for the patent has become entitled to be granted (either alone or with any other persons) a patent for the invention or has or would have any right in or under any patent so granted or any application for any such patent, an order must not be made under subsection (2)(a), (b) or (d) on the reference unless notice of the reference is given to the applicant and any such person, except any of them who is a party to the reference.

[23/2019]

(7) If it appears to the Registrar on a reference of a question under this section that the question involves a matter which would be more conveniently dealt with by the court, the Registrar may decline to deal with it and, without prejudice to the court’s jurisdiction to determine any such question and make a declaration, the court has jurisdiction to do so.

[23/2019]

(8) No direction may be given under this section so as to affect the mutual rights or obligations of trustees or of the personal representatives of deceased persons, or their rights or obligations as such.

Determination after grant of questions referred before grant

21. If a question with respect to a patent or application is referred by any person to the Registrar under section 20, and is not determined before the time when the application is first in order for a grant of a patent pursuant to the application, that fact does not prevent the grant of a patent, but on its grant that person is treated as having referred to the Registrar under section 47 any question mentioned in that section which the Registrar thinks appropriate.

Handling of application by joint applicants

22. If any dispute arises between joint applicants for a patent whether or in what manner the application should be proceeded with, the Registrar may, on a request made by any of the parties, give such directions as the Registrar thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it must be proceeded with, or for both those purposes, as the case may require.

Effect of transfer of application under section 20 or 22

23.—(1) Where an order is made or directions are given under section 20 or 22 that an application for a patent must proceed in the name of one or some of the original applicants (whether or not it is also to proceed in the name of some other person), any licences or other rights in or under the application, subject to the provisions of the order and any directions under either of those sections, continue in force and are treated as granted by the persons in whose name the application is to proceed.

(2) Where an order is made or directions are given under section 20 that an application for a patent must proceed in the name of one or more persons none of whom was an original applicant (on the ground that the original applicant or applicants was or were not entitled to be granted the patent), any licences or other rights in or under the application, subject to the provisions of the order and any directions under that section and subject to subsection (3), lapse on the registration of the person or those persons as the applicant or applicants or, where the application has not been published, on the making of the order.

(3) If before registration of a reference under section 20 resulting in the making of any order mentioned in subsection (2) —

(a)	the original applicant or any of the applicants, acting in good faith, worked the invention in question in Singapore or made effective and serious preparations to do so; or
(b)	a licensee of the applicant, acting in good faith, worked the invention in Singapore or made effective and serious preparations to do so,

that or those original applicant or applicants or the licensee, on making a request within the prescribed period to the person in whose name the application is to proceed, are entitled to be granted a licence (but not an exclusive licence) to continue working or (as the case may be) to work the invention.

(4) Any such licence must be granted for a reasonable period and on reasonable terms.

(5) Where an order is made as mentioned in subsection (2), the person in whose name the application is to proceed or any person claiming that he, she or it is entitled to be granted any such licence may refer to the Registrar the question whether the latter is so entitled and whether any such period is or terms are reasonable.

(6) The Registrar must determine the question under subsection (5) and may, if the Registrar considers it appropriate, order the grant of such a licence.

Mention of inventor

24.—(1) The inventor or joint inventors of an invention have a right to be mentioned as such in any patent granted for the invention and also have a right to be so mentioned if possible in any published application for a patent for the invention and, if not so mentioned, a right to be so mentioned in accordance with the rules in a prescribed document.

(2) Unless an applicant for a patent has already given the Registry the information mentioned in this subsection, the applicant for a patent must, within the prescribed period, file with the Registry a statement —

(a)	identifying the person or persons whom the applicant believes to be the inventor or inventors; and
(b)	where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of the applicant’s or the applicants’ right to be granted the patent,

and, if the applicant fails to do so, the application is treated as having been abandoned.

(3) Where a person has been mentioned as a sole or joint inventor under this section, any other person who alleges that the former ought not to have been mentioned may at any time apply to the Registrar for a certificate to that effect, and the Registrar may issue such a certificate.

PART 5

APPLICATIONS FOR PATENTS

Making of application

25.—(1) Every application for a patent —

(a)	must be made in the prescribed form and must be filed at the Registry in the manner prescribed in the rules made under section 115 and specified in the practice directions issued by the Registrar; and [Act 7 of 2022 wef 26/05/2022]
(b)	must be accompanied by the fee prescribed for the purposes of this subsection.

(2) Where an application is not accompanied by the fee mentioned in subsection (1)(b), the fee must be paid within the prescribed period.

(3) Every application for a patent must contain —

(a)	a request for the grant of a patent;
(b)	a specification containing a description of the invention, a claim or claims and any drawing referred to in the description or any claim; and
(c)	an abstract,

but this subsection does not prevent an application being initiated by documents complying with section 26(1).

(4) The specification of an application must disclose the invention in a manner which is clear and complete for the invention to be performed by a person skilled in the art.

(5) The claim or claims must —

(a)	define the matter for which the applicant seeks protection;
(b)	be clear and concise;
(c)	be supported by the description; and
(d)	relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.

(6) Without limiting subsection (5)(d), the rules may provide for treating 2 or more inventions as being so linked as to form a single inventive concept for the purposes of this Act.

(7) The purpose of the abstract is to give technical information and on publication it does not form part of the state of the art by virtue of section 14(3), and the Registrar may determine whether the abstract adequately fulfils its purpose and, if it does not, may reframe it so that it does.

(8) Subject to subsection (9), an application for a patent may be withdrawn at any time before the patent is granted and any withdrawal of such an application may not be revoked.

[15/2012]

(9) A request to withdraw an application for a patent must be made in such manner as may be prescribed.

[15/2012]

Date of filing application

26.—(1) Subject to the provisions of this Act, the date of filing an application for a patent is taken to be the earliest date on which the documents filed at the Registry to initiate the application satisfy the following conditions:

(a)

the documents indicate that a patent is sought;

(b)

the documents identify the applicant for the patent; and

(c)

the documents contain —

(i)

something which is or appears to be a description of the invention for which the patent is sought; or

(ii)

where a declaration under section 17(2) is made in or in connection with the application —

(A)	a reference to an earlier relevant application specified in the declaration;
(B)	such information on the earlier relevant application as may be prescribed; and
(C)	a statement that the description of the invention for which the patent is sought is incorporated in the application by reference to, and is completely contained in, the earlier relevant application, as filed. [2/2007]

(2) For the purposes of subsection (1)(c)(i), it is immaterial whether —

(a)	the thing is in, or is accompanied by a translation into, a language accepted by the Registry in accordance with the rules; or
(b)	the thing otherwise complies with the other provisions of this Act and with any relevant rules. [2/2007]

(3) Where the Registrar determines that the documents filed at the Registry to initiate an application for a patent do not satisfy all of the conditions in subsection (1)(a), (b) and (c)(i) or (ii) —

(a)

the Registrar must, as soon as practicable after the filing of those documents, notify the applicant of what else must be filed in order for the application to have a date of filing; and

(b)

the applicant must, within such period as may be prescribed, do either or both of the following:

(i)	make observations on the Registrar’s determination;
(ii)	file every document which must be filed in order for the application to have a date of filing. [2/2007]

(4) Where subsection (3) applies, if the applicant fails to file every document which must be filed in order for the application to have a date of filing before the end of the period prescribed under subsection (3)(b), the application is treated as having been abandoned.

[2/2007]

(5) Subsection (4) does not apply if —

(a)	the applicant makes observations as mentioned in subsection (3)(b)(i) before the end of the period prescribed under subsection (3)(b); and
(b)	as a result of the observations, the Registrar is satisfied that the documents filed at the Registry to initiate the application satisfy all of the conditions in subsection (1)(a), (b) and (c)(i) or (ii). [2/2007]

(6) Where the documents filed at the Registry to initiate an application for a patent satisfy all of the conditions in subsection (1)(a), (b) and (c)(i) or (ii), the Registrar must, as soon as practicable after the filing of the last of those documents, notify the applicant of the date of filing of the application.

[2/2007]

(7) Where an application for a patent has a date of filing under subsection (1) by reason only that the documents filed at the Registry to initiate the application satisfy the conditions in subsection (1)(a), (b) and (c)(ii), the applicant must, within such period as may be prescribed, file at the Registry —

(a)	a written notice confirming that the description of the invention for which the patent is sought is incorporated in the application by reference to the earlier relevant application referred to in subsection (1)(c)(ii)(C);
(b)	the description of the invention for which the patent is sought; and
(c)	such other documents as may be prescribed. [2/2007]

(7A) Subsection (7)(c) does not apply in prescribed circumstances.

[Act 7 of 2022 wef 26/05/2022]

(8) If an application for a patent has a date of filing by virtue of subsection (1), the applicant files at the Registry any missing part of the application within such period and in such manner as may be prescribed, and the applicant does not withdraw that missing part before the end of that period, then —

(a)	that missing part is treated as included in the application; and
(b)	the date of filing of the application is the date on which that missing part is filed at the Registry. [2/2007]

(9) Subsection (8)(b) does not apply if —

(a)

on or before the date which is the date of filing of the application for a patent by virtue of subsection (1), a declaration is made under section 17(2), in or in connection with the application, specifying an earlier relevant application; and

(b)

within such period as may be prescribed, the applicant —

(i)	makes a request to the Registrar for subsection (8)(b) not to apply to the application;
(ii)	files a statement that the missing part referred to in subsection (8) is incorporated in the application by reference to, and is completely contained in, the earlier relevant application, as filed;
(iii)	furnishes such information on the earlier relevant application as may be prescribed; and
(iv)	except in prescribed circumstances, files such other documents as may be prescribed. [2/2007] [Act 7 of 2022 wef 26/05/2022]

(10) Subsections (8) and (9) do not affect the power of the Registrar under section 107(1) to correct an error or a mistake.

[2/2007]

(11) Where, after an application for a patent has been filed, but before the applicant satisfies the condition under section 30(c), or the application is refused, withdrawn, treated as or taken to be withdrawn, or treated as abandoned or as having been abandoned —

(a)	a new application is filed by the original applicant or the original applicant’s successor in title in accordance with the rules in respect of any part of the matter contained in the earlier application; and
(b)	the conditions in subsection (1)(a), (b) and (c)(i) or (ii) are satisfied in relation to the new application (without the new application contravening section 84),

the new application is treated as having, as its date of filing, the date of filing of the earlier application.

[2/2007; 15/2012]

(12) Where an application has a date of filing by virtue of this section, the application is treated as having been abandoned unless —

(a)	the applicant files at the Registry, before the end of such period as may be prescribed, one or more claims for the purposes of the application;
(b)	the applicant pays the filing fee under section 25(1)(b) before the end of the period prescribed under section 25(2); and
(c)	where the application has a date of filing under subsection (1) by reason only that the documents filed at the Registry to initiate the application satisfy the conditions in subsection (1)(a), (b) and (c)(ii), the applicant files at the Registry the documents referred to in subsection (7)(a), (b) and (c) before the end of the period prescribed under subsection (7). [2/2007]

(13) In this section, “relevant application” has the meaning given by section 17(9).

[2/2007]

Publication of application

27.—(1) Subject to section 33, where an application has a date of filing, then, as soon as possible after the end of the prescribed period, the Registrar must, unless the application is withdrawn in the prescribed manner, treated as having been abandoned or refused before preparations for its publication have been completed by the Registry, publish it as filed (including not only the original claims but also any amendment of those claims and new claims subsisting immediately before the completion of those preparations).

(2) The Registrar may, if so requested by the applicant, publish the application as mentioned in subsection (1) during the prescribed period, and in either event must publish the fact and date of its publication in the journal.

(3) The Registrar may omit from the specification of a published application for a patent any matter —

(a)	which in the Registrar’s opinion disparages any person in a way likely to damage the person; or
(b)	the publication or exploitation of which would in the Registrar’s opinion be generally expected to encourage offensive, immoral or anti-social behaviour.

PART 6

PROCEDURE FOR GRANT OF PATENT

Preliminary examination

28.—(1) The Registrar must conduct a preliminary examination of an application for a patent if —

(a)	the application has a date of filing;
(b)	the application has not been withdrawn or treated as abandoned;
(c)	the filing fee under section 25(1)(b) has been paid;
(d)	one or more claims for the purposes of the application have been filed under section 26(12)(a); and
(e)	where the application has a date of filing under section 26(1) by reason only that the documents filed at the Registry to initiate the application satisfy the conditions in section 26(1)(a), (b) and (c)(ii), the documents referred to in section 26(7)(a), (b) and (c) (where applicable) have been filed at the Registry. [2/2007] [Act 7 of 2022 wef 26/05/2022]

(2) If, after the Registrar has conducted a preliminary examination of an application for a patent under subsection (1), the applicant files at the Registry, and does not withdraw, any missing part of the application in accordance with section 26(8), then the Registrar must conduct another preliminary examination of the application, with the missing part treated as included in the application.

[2/2007]

(3) On a preliminary examination of an application, the Registrar must determine —

(a)

whether the application complies with all the formal requirements; and

(b)

whether —

(i)	any drawing referred to in the application; or
(ii)	any part of the description of the invention for which the patent is sought,

is missing from the application.

[2/2007]

(4) If the Registrar determines under subsection (3)(a) that not all the formal requirements have been complied with, then the Registrar must notify the applicant accordingly, and the applicant must, within the prescribed period —

(a)	make observations on the Registrar’s determination; and
(b)	subject to section 84, amend the application in the prescribed manner, so as to comply with all the formal requirements. [15/2012]

(5) Where subsection (4) applies, the Registrar may refuse the application if the applicant fails to amend the application as mentioned in paragraph (b) of that subsection before the end of the prescribed period under that subsection.

[2/2007; 15/2012]

(6) Subsection (5) does not apply if —

(a)	the applicant makes observations as mentioned in subsection (4)(a) before the end of the prescribed period under subsection (4); and
(b)	as a result of the observations, the Registrar is satisfied that all the formal requirements have been complied with. [2/2007; 15/2012]

(7) If the Registrar determines under subsection (3)(b) that a drawing or part of the description of the invention is missing from the application, then the Registrar must notify the applicant accordingly.

[2/2007]

(8) Where subsection (7) applies, if the applicant files the drawing or part of the description of the invention that is missing from the application within such period and in such manner as may be prescribed, and the applicant does not withdraw that drawing or part of the description of the invention before the end of that period, then —

(a)	that drawing or part of the description of the invention is treated as included in the application; and
(b)	the date of filing of the application is the date on which that drawing or part of the description of the invention is filed at the Registry. [2/2007]

(9) Subsection (8)(b) does not apply if —

(a)

on or before the date which is the date of filing of the application by virtue of section 26(1), a declaration is made under section 17(2), in or in connection with the application, specifying an earlier relevant application; and

(b)

within such period as may be prescribed, the applicant —

(i)	makes a request to the Registrar for subsection (8)(b) not to apply to the application;
(ii)	files a statement that the drawing or part of the description of the invention mentioned in subsection (8) is incorporated in the application by reference to, and is completely contained in, the earlier relevant application, as filed;
(iii)	furnishes such information on the earlier relevant application as may be prescribed; and
(iv)	except in prescribed circumstances, files such other documents as may be prescribed. [2/2007] [Act 7 of 2022 wef 26/05/2022]

(10) In subsection (9), “relevant application” has the meaning given by section 17(9).

[2/2007]

(11) Where an application for a patent complies with all the formal requirements under this section within the prescribed period, the Registrar must send a notification to the applicant.

[15/2012]

Search and examination

29.—(1) The applicant in an application for a patent (called in this subsection the application in suit) must comply with one of the following paragraphs within the period prescribed for that paragraph:

(a)

except in prescribed circumstances, file a request in the prescribed form for a search report;

[Act 7 of 2022 wef 26/05/2022]

(b)

file a request in the prescribed form for a search and examination report;

(c)

file a request in the prescribed form for an examination report and (except in prescribed circumstances) the prescribed documents, where the applicant relies on the final results of —

(i)	a search in one corresponding application, corresponding international application or related national phase application; or
(ii)	a search during the international phase of the application in suit (if the application in suit is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3)); [Act 7 of 2022 wef 26/05/2022]

(d)

subject to subsection (12), file the prescribed documents and a request in the prescribed form for a supplementary examination report, where —

(i)

the applicant relies on the final results of —

(A)	any search and examination as to the substance of one corresponding application, corresponding international application or related national phase application; or
(B)	any search and examination as to the substance of the application in suit during its international phase (if the application in suit is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3));

(ii)

each claim in the application in suit is related to at least one claim in that corresponding application, corresponding international application or related national phase application, or in the application in suit during its international phase, as the case may be; and

(iii)

according to those results, each claim in the application in suit appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility).

[15/2012; 18/2017]

(2) Where the applicant has complied with subsection (1)(a), the Registrar must —

(a)	cause the application to be subjected to a search by an Examiner; and
(b)	upon receiving the search report prepared by the Examiner, send the applicant a copy of that report. [15/2012]

(3) Upon receiving the search report under subsection (2)(b) from the Registrar, the applicant must, within the prescribed period, file a request in the prescribed form for an examination report.

[15/2012]

(4) Where the applicant has complied with subsection (1)(c) or (3), the Registrar must —

(a)	cause the application to be subjected to an examination by an Examiner; and
(b)	upon receiving the examination report prepared by the Examiner, send the applicant a copy of that report. [15/2012]

(5) Where the applicant has complied with subsection (1)(b), the Registrar must —

(a)

cause the application to be subjected to —

(i)	a search by an Examiner; and
(ii)	an examination by an Examiner; and

(b)

upon receiving the search and examination report prepared by the Examiner, send the applicant a copy of that report.

[15/2012]

(6) Where the applicant has complied with subsection (1)(d), the Registrar must —

(a)	cause the application to be subjected to a supplementary examination by an Examiner; and
(b)	upon receiving the supplementary examination report prepared by the Examiner, send the applicant a copy of that report. [15/2012]

(7) If it appears to an Examiner during the examination of an application under subsection (4) or (5) that one or more of the matters prescribed for the purposes of this subsection apply, the Examiner must give the applicant at least one written opinion to that effect, and the Registrar must, upon receiving the written opinion, send the applicant a copy of the written opinion.

[15/2012]

(7A) The Examiner in subsection (7) may, instead of giving the applicant a written opinion concerning a matter mentioned in that subsection, ask the Registrar to give a notice to the applicant inviting the applicant to amend the application (called in this section an invitation to amend), if the Examiner is of the opinion that the matter can be resolved by this means and without a written opinion and a formal response to it.

[Act 7 of 2022 wef 26/05/2022]

(7B) The Examiner may also ask the Registrar to give to the applicant an invitation to amend after reviewing a response by the applicant under subsection (9)(a) or an amendment by the applicant under subsection (9)(b) to the application.

[Act 7 of 2022 wef 26/05/2022]

(7C) An applicant may, within the prescribed period, respond to an invitation to amend by —

(a)	amending, in the prescribed manner (but subject to section 84), the specification of the application in accordance with the prescribed conditions; or
(b)	rejecting the invitation to amend (with or without an explanation) in the prescribed manner. [Act 7 of 2022 wef 26/05/2022]

(7D) The applicant need not respond to the invitation to amend if the applicant withdraws under subsection (10) the request under subsection (1)(c) or (3) for the examination report or the request under subsection (1)(b) for the search and examination report, and may not so respond after the examination report or search and examination report is issued under subsection (4) or (5).

[Act 7 of 2022 wef 26/05/2022]

(7E) The giving of an invitation to amend to the applicant does not affect the power of the Examiner under subsection (7) to give to the applicant a written opinion, or another written opinion, but the Examiner may not do so until after the applicant responds to the invitation to amend in accordance with subsection (7C) or after the expiry of the prescribed period mentioned in subsection (7C), whichever is earlier.

[Act 7 of 2022 wef 26/05/2022]

(8) If it appears to an Examiner during the supplementary examination of an application under subsection (6) that one or more of the matters prescribed for the purposes of this subsection apply, the Examiner must give the applicant one written opinion to that effect, and the Registrar must, upon receiving the written opinion, send the applicant a copy of the written opinion.

[15/2012]

(9) Unless the request under subsection (1)(b), (c) or (d) or (3) for the examination report, search and examination report or supplementary examination report is withdrawn under subsection (10) or (11), the applicant must, after receipt of a copy of a written opinion and before the examination report, search and examination report or supplementary examination report is issued under subsection (4), (5) or (6), as the case may be —

(a)	respond in the prescribed manner, within the prescribed period, to the written opinion under subsection (7) or (8), as the case may be; and
(b)	subject to section 84, amend in the prescribed manner, within the prescribed period, the specification of the application in accordance with the prescribed conditions. [15/2012; 18/2017] [Act 7 of 2022 wef 26/05/2022]

(10) Despite subsection (1), where an applicant has filed a request for an examination report under subsection (1)(c) or (3), or a request for a search and examination report under subsection (1)(b), the applicant may —

(a)

withdraw that request —

(i)	in any case where an Examiner has given a written opinion under subsection (7), and the applicant has not responded to the written opinion — at any time before the expiry of the prescribed period mentioned in subsection (9)(a); [Act 7 of 2022 wef 26/05/2022]
(ia)	in any case where the Registrar has given an invitation to amend under subsection (7A) or (7B), and the applicant has not responded to the invitation to amend — at any time before the expiry of the prescribed period mentioned in subsection (7C); or [Act 7 of 2022 wef 26/05/2022]
(ii)	in any other case — at any time before the examination report or search and examination report is issued under subsection (4) or (5); and

(b)

subject to subsection (12), file a request for a supplementary examination report under subsection (1)(d) within the prescribed period for that request.

[18/2017]

(11) Despite subsection (1), where an applicant has filed a request for a supplementary examination report under subsection (1)(d), the applicant may —

(a)

withdraw that request —

(i)	in any case where an Examiner has given a written opinion under subsection (8), and the applicant has not responded to the written opinion — at any time before the expiry of the prescribed period mentioned in subsection (9)(a); or
(ii)	in any other case — at any time before the supplementary examination report is issued under subsection (6); and

(b)

file a request for a search and examination report under subsection (1)(b) or a request for an examination report under subsection (1)(c) or (3) within the prescribed period for that request.

[18/2017]

(12) Subsections (1)(d) and (10)(b) do not apply unless —

(a)	in any case where the application in suit is a new application mentioned in section 20(3), 26(11) or 47(4) — the actual date of filing of the application in suit is before the prescribed date; or
(b)	in any other case — the date of filing of the application in suit is before the prescribed date. [18/2017]

(13) The application is treated as abandoned —

(a)

subject to subsection (14), if the applicant fails to do one of the following:

(i)	comply with paragraph (b), (c) or (d) of subsection (1) within the period prescribed under that subsection for that paragraph;
(ii)	where subsection (3) applies, comply with that subsection;

(b)

where subsection (10) applies, if the applicant fails to file a request for a supplementary examination report under subsection (1)(d) within the prescribed period mentioned in subsection (10)(b); or

(c)

where subsection (11) applies, if the applicant fails to file a request for a search and examination report under subsection (1)(b) or a request for an examination report under subsection (1)(c) or (3) within the prescribed period mentioned in subsection (11)(b).

[15/2012; 18/2017]

(14) Where —

(a)	after receiving the search report under subsection (2)(b) from the Registrar, the applicant does not file a request for an examination report under subsection (3) within the prescribed period mentioned in that subsection; and
(b)	the time prescribed for filing a request for an extension of the prescribed period mentioned in subsection (3) expires before, or within 3 months after, 30 October 2017,

the application is treated as abandoned if the applicant fails to file the request for an examination report under subsection (3) within 6 months after that date.

[18/2017]

(15) In this section, “actual date of filing”, in relation to an application in suit that is a new application mentioned in section 20(3), 26(11) or 47(4), means the actual date of filing of the new application, and not the date of filing of the earlier application mentioned in section 20(3) or 26(11) or of the application for the patent to which the reference relates mentioned in section 47(4), as the case may be.

[18/2017]

Eligibility for grant of patent, etc.

29A.—(1) Where 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) does not contain any unresolved objection, the Registrar must issue to the applicant a notice of eligibility to proceed to the grant of a patent.

[15/2012]

(2) Where the Registrar has issued to the applicant a notice under subsection (1) —

(a)	the applicant must satisfy the conditions under section 30(a) and (c) within the prescribed period; and
(b)	if the applicant fails to comply with paragraph (a), the application is treated as abandoned. [15/2012]

(3) Where 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) contains one or more unresolved objections, the Registrar must issue to the applicant a notice of intention to refuse the application for a patent.

[15/2012]

(4) Where the Registrar has issued to the applicant a notice under subsection (3) —

(a)	the applicant may, within the prescribed period, apply for a review of the examination report, search and examination report or supplementary examination report, as the case may be, in accordance with section 29B(1); and
(b)	if the applicant fails to apply for the review under paragraph (a), the application for a patent must be refused. [15/2012]

Review of examination report, etc.

29B.—(1) A request for a review 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) must be made by filing —

(a)	the prescribed form for the request within the prescribed period; and
(b)	written submissions to overcome the unresolved objections in the examination report, search and examination report or supplementary examination report, as the case may be. [15/2012]

(2) At the time the request under subsection (1) is made, the applicant may, subject to section 84, amend in the prescribed manner the specification of the application to overcome one or more unresolved objections in the examination report, search and examination report or supplementary examination report, as the case may be.

[15/2012]

(3) Upon completing the review of the examination report, search and examination report or supplementary examination report, as the case may be, the Examiner must prepare an examination review report.

[15/2012]

(4) Subject to subsection (4A), the examination review report must specify —

(a)	whether the Examiner agrees or disagrees with the examination report, search and examination report or supplementary examination report, as the case may be;
(b)	where the applicant has amended the specification of the application under subsection (2), whether each unresolved objection in the examination report, search and examination report or supplementary examination report (as the case may be) has been overcome in the amended specification; and
(c)	the reasons for the Examiner’s decision under paragraph (a) and, where applicable, paragraph (b). [15/2012] [Act 7 of 2022 wef 26/05/2022]

(4A) The examination review report need not specify whether the Examiner agrees or disagrees with the examination report, search and examination report or supplementary examination report (as the case may be) if the applicant had amended the specification of the application for the purpose of overcoming all unresolved objections in the report.

[Act 7 of 2022 wef 26/05/2022]

(5) Upon receiving the examination review report, the Registrar must send the applicant —

(a)

a copy of that report; and

(b)

either —

(i)	a notice of eligibility to proceed to the grant of a patent, if the Registrar is satisfied by that report that there is no unresolved objection; or
(ii)	a notice of refusal of the application for a patent, if the Registrar is satisfied by that report that there are one or more unresolved objections. [15/2012]

(6) Where the Registrar has issued to the applicant a notice under subsection (5)(b)(i) —

(a)	the applicant must satisfy the conditions under section 30(a) and (c) within the prescribed period; and
(b)	if the applicant fails to comply with paragraph (a), the application is treated as abandoned. [4/2014]

(7) Where the Registrar has sent the applicant a notice under subsection (5)(b)(ii), the refusal of the application for a patent takes effect upon the expiry of the prescribed period.

[15/2012]

Grant of patent

30. The Registrar must grant the applicant a patent if all of the following conditions have been satisfied:

(a)	all the formal requirements have been complied with;
(b)	the applicant has received a notice of eligibility to proceed to the grant of a patent under section 29A(1) or 29B(5)(b)(i);
(c)	the prescribed documents for the grant of the patent have been filed. [15/2012]

General power to amend application before grant

31.—(1) Subject to subsections (2), (3) and (4), the applicant may, of the applicant’s own volition or otherwise, amend the application or the specification thereof.

[15/2012]

(2) The applicant is not entitled to amend the application or specification unless —

(a)

the applicant has made a request to do so to the Registrar —

(i)	in the prescribed manner; and
(ii)	within the prescribed period; and

(b)

the request is accompanied by the prescribed documents.

[15/2012]

(3) The applicant may only amend the application or specification in accordance with the prescribed conditions and subject to section 84.

[15/2012]

(4) If the applicant fails to comply with any requirement under subsection (2) or (3), the Registrar must —

(a)	refuse the applicant’s request to amend the application or specification; and
(b)	inform the applicant of the refusal. [15/2012]

Observations by third party on patentability

32.—(1) Where an application for a patent has been published, any other person may make observations in writing to the Registrar on the question whether the invention is a patentable invention, stating reasons for the observations, and the Registrar must, subject to subsection (2), consider the observations in accordance with the rules.

[23/2019]

(2) The observations must be received by the Registrar before the Registrar sends to the applicant in the application for the patent —

(a)	a copy of an examination report under section 29(4);
(b)	a copy of a search and examination report under section 29(5); or
(c)	a copy of a supplementary examination report under section 29(6). [23/2019]

(3) A person does not become a party to any proceedings under this Act before the Registrar by reason only that the person makes observations under this section.

[23/2019]

Information prejudicial to defence of Singapore or safety of public

33.—(1) Where an application for a patent is filed in the Registry (whether under this Act or any treaty or international convention to which Singapore is a party) and it appears to the Registrar that the application contains information of a description notified to the Registrar by the Minister as being information the publication of which might be prejudicial to the defence of Singapore, the Registrar must give directions prohibiting or restricting the publication of that information or its communication to any specified person or description of persons.

(2) If it appears to the Registrar that any application so filed contains information the publication of which might be prejudicial to the safety of the public, the Registrar may give directions prohibiting or restricting the publication of that information or its communication to any specified person or description of persons until the end of a period not exceeding 3 months from the end of a period prescribed for the purposes of section 27.

(3) While directions are in force under this section with respect to an application —

(a)	if the application is made under this Act, it will be held in abeyance after the formal requirements of this Act and the rules have been met and will not proceed to be processed in accordance with section 29 until the directions are revoked under subsection (4)(e); and
(b)	if it is an international application for a patent, a copy of it must not be sent to the International Bureau or any international searching authority appointed under the Patent Co‑operation Treaty.

(4) Where the Registrar gives directions under this section with respect to any application, the Registrar must give notice of the application and of the directions to the Minister, and the following provisions must then have effect:

(a)	the Minister must, on receipt of the notice, consider whether the publication of the application or the publication or communication of the information in question would be prejudicial to the defence of Singapore or the safety of the public;
(b)	if the Minister determines under paragraph (a) that the publication or communication of that information would be prejudicial to the safety of the public, the Minister must notify the Registrar who must continue the Registrar’s directions under subsection (2) until they are revoked under paragraph (e);
(c)	if the Minister determines under paragraph (a) that the publication of the application or the publication or communication of that information would be prejudicial to the defence of Singapore or the safety of the public, the Minister must (unless a notice under paragraph (d) has previously been given by the Minister to the Registrar) reconsider that question during the period of 9 months from the date of filing the application and at least once in every subsequent period of 12 months;
(d)	if on consideration of an application at any time it appears to the Minister that the publication of the application or the publication or communication of the information contained in it would not, or would no longer, be prejudicial to the defence of Singapore or the safety of the public, the Minister must give notice to the Registrar to that effect; and
(e)	on receipt of such a notice the Registrar must revoke the directions and may, subject to such conditions (if any) as the Registrar thinks fit, extend the time for doing anything required or authorised to be done by or under this Act in connection with the application, whether or not that time has previously expired.

(5) The Minister may at any time, for the purpose of enabling the Minister to decide the question referred to in subsection (4)(c), do one or both of the following, that is to say, inspect or authorise any person to inspect the application and any document sent to the Registrar in connection with it and where a person is authorised to carry out such inspection, the person must as soon as practicable report on the person’s inspection to the Minister.

(6) Where directions given under this section in respect of an application for a patent for an invention are revoked, and the application is brought in order for the grant of a patent and a patent is granted for the invention, then —

(a)

if while the directions are in force the invention is worked by (or with the written authorisation of or to the order of) a Government department, the provisions of Part 12 apply as if —

(i)	the working were use made by section 56;
(ii)	the application had been published at the end of the prescribed period or at the time the directions were revoked, whichever is earlier; and
(iii)	a patent had been granted for the invention at the time the application is brought in order for the grant of a patent (taking the terms of the patent to be those of the application as it stood at the time it was so brought in order); and

(b)

if it appears to the Minister that the applicant for the patent has suffered hardship while the directions were in force, the Minister may make such payment (if any) by way of compensation to the applicant as appears to the Minister to be reasonable having regard to the inventive merit and utility of the invention, the purpose for which it is designed and any other relevant circumstances.

(7) Where a patent is granted pursuant to an application in respect of which directions have been given under this section, no renewal fees are payable in respect of any period during which those directions were in force.

(8) Any person who fails to comply with any direction under this section shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $5,000 or to imprisonment for a term not exceeding 2 years or to both.

(9) Nothing in this section prevents the disclosure of information concerning an invention to a Government department or authority for the purpose of obtaining advice as to whether directions under this section with respect to an application for a patent for that invention should be made, amended or revoked.

Restrictions on applications abroad by Singapore residents

34.—(1) Subject to this section, no person resident in Singapore may, without written authority granted by the Registrar, file or cause to be filed outside Singapore an application for a patent for an invention unless —

(a)	an application for a patent for the same invention has been filed in the Registry at least 2 months before the application outside Singapore; and
(b)	no directions have been given under section 33 in relation to the application in Singapore or all such directions have been revoked.

(2) Subsection (1) does not apply to an application for a patent for an invention for which an application for a patent has first been filed in a country outside Singapore by a person resident outside Singapore.

(3) Any person who files or causes to be filed an application for the grant of a patent in contravention of this section shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $5,000 or to imprisonment for a term not exceeding 2 years or to both.

(4) In this section —

(a)	any reference to an application for a patent includes a reference to an application for other protection for an invention;
(b)	any reference to either kind of application is a reference to an application under this Act, under the law of any country other than Singapore or under any treaty or international convention to which Singapore is a party; and
(c)	“person resident in Singapore” includes a person who, at the material time, is residing in Singapore by virtue of a valid pass lawfully issued to the person under the Immigration Act 1959 to enter and remain in Singapore for any purpose.

PART 7

PROVISIONS AS TO PATENTS AFTER GRANT

Publication and certificate of grant

35.—(1) As soon as practicable after a patent has been granted under this Act, the Registrar must —

(a)	send to the proprietor of the patent a certificate in the prescribed form that the patent has been granted to the proprietor; and
(b)	publish in the journal a notice that the patent has been granted.

(2) The Registrar must, at the same time as the Registrar publishes a notice under subsection (1)(b) in relation to a patent, publish the specification of the patent, the names of the proprietor and (if different) the inventor and any other matters constituting or relating to the patent which in the Registrar’s opinion it is desirable to publish.

[15/2012]

Term of patent

36.—(1) A patent granted under this Act is treated for the purposes of this Act as having been granted, and takes effect, on the date of issue of the certificate of grant and, subject to subsection (2) and section 36A, continues in force until the end of the period of 20 years beginning with the date of filing the application for the patent or with such other date as may be prescribed.

(2) A patent ceases to have effect at the end of the prescribed period for the payment of any renewal fee if it is not paid within that period.

(3) If, during the prescribed period immediately after the end of the period prescribed for the payment of any renewal fee under subsection (2), the renewal fee and any prescribed additional fee are paid, the patent is treated for the purposes of this Act as if it had never expired, and accordingly —

(a)	anything done under or in relation to it during that further period is valid;
(b)	an act which would constitute an infringement of it if it had not expired constitutes such an infringement; and
(c)	an act which would constitute the use of the patented invention in accordance with section 56 if the patent had not expired constitutes that use. [Act 7 of 2022 wef 26/05/2022]

(4) Rules must include provision requiring the Registrar to notify the registered proprietor of a patent that a renewal fee has not been received from the registered proprietor in the Registry before the end of the prescribed period for the payment of any renewal fee under subsection (2) and before the framing of the notification.

[Act 7 of 2022 wef 26/05/2022]

Extension of term of patent

36A.—(1) The proprietor of a patent may apply to the Registrar to extend the term of the patent on any of the following grounds:

(a)

that there was an unreasonable delay by the Registrar in granting the patent;

(b)

where the patent was granted on the basis of any prescribed documents referred to in section 29(1)(d) relating to one corresponding application or related national phase application, that —

(i)	there was an unreasonable delay in the issue of the corresponding patent or related national phase patent (as the case may be); and
(ii)	the patent office that granted the corresponding patent or related national phase patent (as the case may be) has extended the term of the corresponding patent or related national phase patent (as the case may be) on the basis of such delay;

(c)

where the subject of the patent includes any substance which is an active ingredient of any pharmaceutical product, that —

(i)	there was an unreasonable curtailment of the opportunity to exploit the patent caused by the process of obtaining marketing approval for a pharmaceutical product, being the first pharmaceutical product to obtain marketing approval which uses the substance as an active ingredient; and
(ii)	the term of the patent has not previously been extended on this ground. [15/2012]

(2) A delay by the Registrar in granting a patent is not treated as an unreasonable delay under subsection (1)(a) unless such requirements as may be prescribed are satisfied.

[15/2012]

(3) Where the proprietor of a patent has made an application under subsection (1)(a) and has satisfied the Registrar that there was in fact a particular type of unreasonable delay by the Registrar in granting the patent, the Registrar must extend the term of the patent by such period as may be prescribed for that type of unreasonable delay.

[15/2012]

(4) Where the proprietor of a patent has made an application under subsection (1)(b) and has satisfied the Registrar of the matters referred to in sub-paragraphs (i) and (ii) of subsection (1)(b), the Registrar may, if the Registrar thinks fit, extend the term of the patent by such period, not exceeding 5 years, as the Registrar may determine.

(5) A curtailment of the opportunity to exploit a patent, the subject of which includes a substance which is an active ingredient of any pharmaceutical product, caused by the process of obtaining marketing approval for a pharmaceutical product, being the first pharmaceutical product to obtain marketing approval which uses the substance as an active ingredient, is not treated as an unreasonable curtailment under subsection (1)(c) unless such requirements as may be prescribed are satisfied.

[15/2012]

(6) Subject to subsections (7), (8) and (9), where the proprietor of a patent has made an application under subsection (1)(c) and has satisfied the Registrar that there was in fact an unreasonable curtailment of the opportunity to exploit the patent under subsection (1)(c), the Registrar must extend the term of the patent by such period as may be prescribed.

[15/2012]

(7) The Registrar must not extend the term of the patent under subsection (6) unless the applicant has procured and submitted to the Registrar a certificate from the relevant authority stating such matters as may be prescribed.

[15/2012]

(8) In determining the period by which to extend the term of the patent under subsection (6), the Registrar must rely on, and is not concerned to inquire into the truth of, the statements contained in the certificate from the relevant authority under subsection (7).

(9) Where the term of a patent has been extended under subsection (6), the protection conferred by the patent during the term of the extension applies only to the substance mentioned in subsection (1)(c).

(10) Every application to extend the term of a patent must be —

(a)	made by the proprietor of the patent in the prescribed form within the prescribed period;
(b)	filed in the prescribed manner; and
(c)	accompanied by the prescribed fee and any prescribed documents,

and the Registrar may reject any application that fails to comply with any requirement under this subsection.

(11) As soon as practicable after the Registrar has extended the term of a patent, the Registrar must —

(a)

send to the proprietor of the patent a certificate of extension of patent term in the prescribed form specifying —

(i)	the period of the extension; and
(ii)	any limitation on the protection conferred by the patent during the term of the extension; and

(b)

publish in the journal a notice of the extension.

(12) The proprietor of a patent who has made an application under subsection (1) may withdraw the application by informing the Registrar in writing of the withdrawal of the application, and any such withdrawal is not revocable.

Patent not to be impugned for lack of unity

37. No person may in any proceeding object to a patent or to an amendment of a specification of a patent on the ground that the claims contained in the specification of the patent, as they stand or (as the case may be) as proposed to be amended, relate —

(a)	to more than one invention; or
(b)	to a group of inventions which are not so linked as to form a single inventive concept.

General power to amend specification after grant

38.—(1) Subject to this section and section 84, the Registrar may, on an application made by the proprietor of a patent, allow the specification of the patent to be amended subject to such conditions, if any, as the Registrar thinks fit.

(2) No such amendment is allowed under this section where there are pending before the court or the Registrar proceedings in which the validity of the patent may be put in issue.

(3) An amendment of a specification of a patent under this section has effect and is deemed always to have had effect from the grant of the patent.

(4) A person may give notice to the Registrar of the person’s opposition to an application under this section by the proprietor of a patent, and if the person does so the Registrar must notify the proprietor and consider the opposition in deciding whether to grant the application.

Re-examination after grant

38A.—(1) Any person may, at any time after a patent is granted, file a request for the Registrar to conduct a re‑examination of the specification of a patent for an invention on any of the following grounds:

(a)

the invention is not a patentable invention;

(b)

the specification does not disclose the invention clearly and completely for it to be performed by a person skilled in the art;

(c)

the matter disclosed in the specification extends beyond that disclosed —

(i)

in the application for the patent, as filed; or

(ii)

where the patent was granted on a new application filed under section 20(3) or 47(4) or section 116(6) of the Patents Act (Cap. 221, 1995 Revised Edition), or in accordance with section 26(11), in —

(A)	the earlier application made under this Act;
(B)	the application made under the United Kingdom Patents Act 1977; or
(C)	the application under the European Patent Convention designating the United Kingdom filed at the European Patent Office,

as the case may be, from which the filing date and the right of priority has been derived, as filed;

(d)

an amendment has been made to the specification of the patent under section 38(1), 81 or 83 which —

(i)	results in the specification disclosing any additional matter; or
(ii)	extends the protection conferred by the patent;

(e)

an amendment has been made to the specification of the application for the patent under section 31 which results in the specification disclosing any matter extending beyond that disclosed in the application as filed;

(f)

a correction has been made to the specification of the patent or of the application for the patent under section 107 which should not have been allowed;

(g)

the patent is one of 2 or more patents for the same invention having the same priority date and filed by the same party or the party’s successor in title.

[23/2019]

(2) Every request under subsection (1) must be —

(a)

filed in the prescribed manner;

(b)

accompanied by the prescribed fee; and

(c)

accompanied, at the time the request is filed, by —

(i)	reasons to substantiate the ground specified in the request; and
(ii)	any document that the person considers to be relevant for the purposes of the re‑examination. [23/2019]

(3) The Registrar may reject any request that fails to comply with any requirement in subsection (2).

[23/2019]

(4) The Registrar must not grant a request under subsection (1) if the Registrar is of the view that the request is frivolous, vexatious or an abuse of the process.

[23/2019]

(5) No request under subsection (1) may be filed where there are pending before the court or the Registrar any proceedings in which the validity of the patent may be put in issue.

[23/2019]

(6) Where proceedings before the court or the Registrar, in which the validity of the patent may be put in issue, are filed after a request under subsection (1) is made, the Registrar may make such order or give such direction as the Registrar thinks fit concerning the request.

[23/2019]

(7) Where the Registrar grants a request under subsection (1), the Registrar must cause the specification of the patent to be re‑examined by an Examiner so as to determine whether the ground specified in the request is made out.

[23/2019]

(8) If it appears to the Examiner during the re‑examination of the specification of the patent that —

(a)	the ground specified in the request; or
(b)	based on any document submitted under subsection (2)(c)(ii), any other ground mentioned in subsection (1),

is made out, the Examiner must give the proprietor of the patent a written opinion to that effect, and the Registrar must, upon receiving the written opinion, send the proprietor a copy of the written opinion.

[23/2019]

(9) The proprietor of the patent must respond to the written opinion in the prescribed manner and within the prescribed period.

[23/2019]

(10) Upon receiving the re‑examination report prepared by the Examiner, the Registrar must send to the proprietor of the patent a copy of the report.

[23/2019]

(11) Where the re‑examination report issued under this section contains one or more unresolved objections (being an objection mentioned in the written opinion), the Registrar must make an order revoking the patent.

[23/2019]

(12) An order under subsection (11) may be —

(a)	an order for the unconditional revocation of the patent; or
(b)	where one of the grounds mentioned in subsection (1) has been established, but only so as to invalidate the patent to a limited extent, an order that the patent should be revoked unless within a specified time the specification is amended under section 83 to the satisfaction of the Registrar. [23/2019]

(13) A decision of the Registrar or on appeal from the Registrar does not estop any party to any civil proceedings in which infringement of a patent is in issue from alleging invalidity of the patent on any of the grounds mentioned in subsection (1), whether or not any of the issues involved were decided in the decision.

[23/2019]

(14) A decision of the Registrar to revoke a patent under this section has effect from the date of the grant of the patent.

[23/2019]

(15) A person does not become a party to any proceedings under this Act before the Registrar by reason only that the person files a request under subsection (1), unless the person is the proprietor of the patent.

[23/2019]

Restoration of lapsed patents

39.—(1) Where a patent has ceased to have effect by reason of a failure to pay any renewal fee, an application for the restoration of the patent may be made to the Registrar within the prescribed period.

(2) An application under this section may be made by the person who was the proprietor of the patent or by any other person who would have been entitled to the patent if it had not ceased to have effect.

(3) Where the patent was held by 2 or more persons jointly, the application may, with the permission of the Registrar, be made by one or more of them without joining the others.

[Act 25 of 2021 wef 01/04/2022]

(4) Notice of the application must be published by the Registrar in the prescribed manner.

(5) If the Registrar is satisfied that the failure of the proprietor of the patent to pay any renewal fee within the period prescribed under section 36(2), or to pay that fee and any prescribed additional fee within the period prescribed under section 36(3), was unintentional, the Registrar must by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee.

[15/2012]

[Act 7 of 2022 wef 26/05/2022]

(6) An order under this section may be made subject to such conditions as the Registrar thinks fit (including a condition requiring compliance with any provision of the rules relating to registration which have not been complied with), and if the proprietor of the patent does not comply with any such condition of the order, the Registrar may revoke the order and give such directions consequential on the revocation as the Registrar thinks fit.

(7) The effect of an order for the restoration of a patent is as provided in subsections (8) to (13).

(8) Anything done under or in relation to the patent during the period between expiry and restoration is treated as valid.

(9) Anything done during that period which would have constituted an infringement if the patent had not expired is treated as an infringement —

(a)	if done at a time when it was possible for the patent to be renewed under section 36(3); or
(b)	if it was a continuation or repetition of an earlier infringing act.

(10) If after it was no longer possible for the patent to be so renewed, and before publication of notice of the application for restoration, a person —

(a)	began in good faith to do an act which would have constituted an infringement of the patent if it had not expired; or
(b)	made in good faith effective and serious preparations to do such an act,

the person has the right to continue to do the act or (as the case may be) to do the act, despite the restoration of the patent.

(11) The right referred to in subsection (10) does not extend to granting a licence to another person to do the act.

(12) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (10) may —

(a)	authorise the doing of that act by any partner of the person’s for the time being in that business; 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 in the course of which the act was done or the preparations were made.

(13) Where a product is disposed of to another in exercise of the rights conferred by subsection (10) or (12), that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by the registered proprietor of the patent.

(14) Subsections (8) to (13) apply in relation to the use of a patent in accordance with section 56 as they apply in relation to infringement of the patent.

Surrender of patents

40.—(1) The proprietor of a patent may at any time by notice given to the Registrar offer to surrender the proprietor’s patent.

(2) If the Registrar is satisfied that the patent may properly be surrendered, the Registrar may accept the offer and, as from the date when notice of the Registrar’s acceptance is published in the journal, the patent ceases to have effect, but no action for infringement shall lie in respect of any act done before that date and no right to compensation shall accrue for any use of the patented invention before that date in accordance with section 56.

PART 8

PROPERTY IN PATENTS AND APPLICATIONS
FOR PATENTS AND REGISTRATION

Nature of, and transactions in, patents and applications for patents

41.—(1) Any patent or application for a patent is personal property (without being a thing in action), and any patent or any such application and rights in or under it may be transferred, created or granted in accordance with this section.

(2) Subject to section 46(3), any patent or any such application, or any right in it, may be assigned or mortgaged.

(3) Any patent or any such application or right vests by operation of law in the same way as any other personal property and may be vested by an assent of personal representatives.

(4) Subject to section 46(3), a licence may be granted under any patent or any such application for working the invention which is the subject of the patent or the application; and —

(a)	to the extent that the licence so provides, a sub-licence may be granted under any such licence and any such licence or sub-licence may be assigned or mortgaged; and
(b)	any such licence or sub-licence vests by operation of law in the same way as any other personal property and may be vested by an assent of personal representatives.

(5) Subsections (2) to (4) have effect subject to the provisions of this Act.

(6) Any of the following transactions, that is to say —

(a)	any assignment or mortgage of a patent or any such application, or any right in a patent or any such application;
(b)	any assent relating to any patent or any such application or right,

shall be void unless it is in writing and is signed by or on behalf of the assignor or mortgagor (or, in the case of an assent or other transaction by a personal representative, by or on behalf of the personal representative) or in the case of a body corporate is so signed or is under the seal of that body.

[15/2012]

(7) An assignment of a patent or any such application or a share in it, and an exclusive licence granted under any patent or any such application, may confer on the assignee or licensee the right of the assignor or licensor to bring proceedings by virtue of section 67 or 76 for a previous infringement or to bring the proceedings under section 58 for a previous act.

42.—(1) The Registrar must maintain a register of patents in accordance with the rules made by virtue of this section.

(2) Without affecting any other provisions of this Act or the rules, the rules may make provision with respect to the following matters, including provision imposing requirements as to any of those matters:

(a)	the registration of patents and of published applications for patents;
(b)	the registration of transactions, instruments or events affecting rights in or under patents and applications;
(c)	the furnishing to the Registrar of any prescribed document or description of documents in connection with any matter which is required to be registered;
(d)	the correction of errors in the register and in any document filed at the Registry in connection with registration;
(e)	the publication and advertisement of anything done under this Act or the rules in relation to the register.

(3) Despite anything in subsection (2)(b), no notice of any implied or constructive trust is to be entered in the register and the Registrar is not affected by any such notice.

[4/2014]

(4) A notice of an express trust or of the beneficiary of an express trust, or both, may be entered in the register; but —

(a)	the Registrar is not affected by any such notice in the register; and
(b)	to avoid doubt, a failure to enter such notice in the register does not affect any rights or duties under the trust. [4/2014]

(5) The register need not be kept in documentary form.

(6) Subject to the rules, the public has a right to inspect the register at the Registry at all convenient times.

(7) Any person who applies for a certified copy of an entry in the register or a certified extract from the register is entitled to obtain such a copy or extract on payment of a fee prescribed in relation to certified copies and extracts.

(8) Applications under subsection (7) must be made in such manner as may be prescribed.

[15/2012]

(9) In relation to any portion of the register kept otherwise than in documentary form —

(a)	the right of inspection conferred by subsection (6) is a right to inspect the material on the register; and
(b)	the right to a copy or extract conferred by subsection (7) or the rules is a right to a copy or extract in a form in which it can be taken away and in which it is visible and legible.

Effect of registration, etc., on rights in patents

43.—(1) Any person who claims to have acquired the property in a patent or application for a patent by virtue of any transaction, instrument or event to which this section applies is entitled as against any other person who claims to have acquired that property by virtue of an earlier transaction, instrument or event to which this section applies if, at the time of the later transaction, instrument or event —

(a)	the earlier transaction, instrument or event was not registered;
(b)	in the case of any application which has not been published, notice of the earlier transaction, instrument or event had not been given to the Registrar; and
(c)	in any case, the person claiming under the later transaction, instrument or event did not know of the earlier transaction, instrument or event.

(2) Subsection (1) applies equally to the case where any person claims to have acquired any right in or under a patent or application for a patent, by virtue of a transaction, instrument or event to which this section applies, and that right is incompatible with any such right acquired by virtue of an earlier transaction, instrument or event to which this section applies.

(3) This section applies to the following transactions, instruments and events:

(a)

the assignment of a patent or application for a patent, or a right in it;

(b)

the mortgage of, or grant of any other security interest in, a patent or application;

(c)

the grant or assignment of a licence or sub-licence, or mortgage of, or grant of any other security interest in, a licence or sub-licence, under a patent or application;

(d)

the death of the proprietor or one of the proprietors of any such patent or application or any person having a right in or under a patent or application and the vesting by an assent of personal representatives of a patent, application or any such right; and

(e)

any order or directions of a court or other competent authority —

(i)	transferring a patent or application or any right in or under it to any person; or
(ii)	that an application should proceed in the name of any person,

and in either case the event by virtue of which the court or authority had power to make any such order or give any such directions.

[15/2012]

(4) Where an application for the registration of a transaction, instrument or event has been made, but the transaction, instrument or event has not been registered, then, for the purposes of subsection (1)(a), registration of the application is treated as registration of the transaction, instrument or event.

(5) Provision may be made by rules as to the amendment, alteration or removal from the register of any particulars in the register relating to any transaction, instrument or event referred to in subsection (3).

[15/2012]

Rectification of register

44.—(1) The court may, on the application of any person aggrieved, order the register to be rectified by the making, or the variation or deletion, of any entry in it.

(2) In proceedings under this section, the court may determine any question which may be necessary or expedient to decide in connection with the rectification of the register.

Evidence of register, documents, etc.

45.—(1) The register is prima facie evidence of anything required or authorised by this Act or the rules to be registered.

(2) A certificate purporting to be signed by the Registrar and certifying that any entry which the Registrar is authorised by this Act or any of its rules to make has or has not been made, or that any other thing which the Registrar is so authorised to do has or has not been done, is prima facie evidence of the matter so certified.

(3) Each of the following, that is to say —

(a)	a copy of an entry in the register or an extract from the register which is supplied under section 42(7);
(b)	a copy of any document kept in the Registry or an extract from any such document; or
(c)	any specification of a patent or any application for a patent which has been published,

which purports to be a certified copy or a certified extract is to be admitted in evidence without further proof and without production of the original.

(4) In this section, “certified copy” and “certified extract” mean a copy and an extract certified by the Registrar.

[15/2012]

Co-ownership of patents and applications for patents

46.—(1) Where a patent is granted to 2 or more persons, each of them, subject to any agreement to the contrary, is entitled to an equal undivided share in the patent.

(2) Where 2 or more persons are proprietors of a patent, then, subject to this section and subject to any agreement to the contrary —

(a)	each of them is entitled, by himself, herself or itself or his, her or its agents, to do in respect of the invention, for the person’s own benefit and without the consent of or the need to account to the other or others, any act which would, apart from this subsection and section 56, amount to an infringement of the patent; and
(b)	any such act does not amount to an infringement of the patent.

(3) Subject to sections 20 and 47 and to any agreement for the time being in force, where 2 or more persons are proprietors of a patent, one of them may not without the consent of the other or others grant a licence under the patent or assign or mortgage a share in the patent.

(4) Subject to sections 20 and 47 where 2 or more persons are proprietors of a patent, anyone else may supply one of those persons with the means, relating to an essential element of the invention, for putting the invention into effect, and the supply of those means by virtue of this subsection does not amount to an infringement of the patent.

(5) Where a patented product is disposed of by any of 2 or more proprietors to any person, that person and any other person claiming through that person are entitled to deal with the product in the same way as if it had been disposed of by a sole registered proprietor.

(6) Nothing in subsection (1) or (2) affects the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as such.

(7) This section has effect in relation to an application for a patent which is filed as it has effect in relation to a patent and —

(a)	references to a patent and a patent being granted accordingly include references respectively to any such application and to the application being filed; and
(b)	the reference in subsection (5) to a patented product is to be construed accordingly.

Determination of right to patent after grant

47.—(1) After a patent has been granted for an invention, any person having or claiming a proprietary interest in or under the patent may refer to the Registrar the question —

(a)	who is or are the true proprietor or proprietors of the patent;
(b)	whether the patent should have been granted to the person or persons to whom it was granted; or
(c)	whether any right in or under the patent should be transferred or granted to any other person or persons,

and the Registrar must determine the question and make such order as the Registrar thinks fit to give effect to the determination.

(2) Without limiting subsection (1), an order under that subsection may contain provision —

(a)	directing that the person by whom the reference is made under that subsection is included (whether or not to the exclusion of any other person) among the persons registered as proprietors of the patent;
(b)	directing the registration of a transaction, instrument or event by virtue of which that person has acquired any right in or under the patent;
(c)	granting any licence or other right in or under the patent; and
(d)	directing the proprietor of the patent or any person having any right in or under the patent to do anything specified in the order as necessary to carry out the other provisions of the order.

(3) If any person to whom directions have been given (A) under subsection (2)(d) fails to do anything necessary for carrying out any such directions within 14 days after the date of the order containing the directions, the Registrar may, on an application made to the Registrar by any person in whose favour or on whose reference the order containing the directions was made (B), authorise B to do that thing on behalf of A.

(4) Where the Registrar finds on a reference under this section that the patent was granted to a person not entitled to be granted that patent (either alone or with other persons) and on an application made under section 80 makes an order on that ground for the conditional or unconditional revocation of the patent, the Registrar may order that the person by whom the application was made or that person’s successor in title may, subject to section 84, make a new application for a patent —

(a)	in the case of unconditional revocation, for the whole of the matter comprised in the specification of that patent; and
(b)	in the case of conditional revocation, for the matter which in the opinion of the Registrar should be excluded from that specification by amendment under section 83,

and where such a new application is made, it is treated as having been filed on the date of filing the application for the patent to which the reference relates.

[23/2019]

(5) On any reference under subsection (1) —

(a)

no order may be made under this section transferring the patent to which the reference relates on the ground that the patent was granted to a person not so entitled; and

(b)

no order may be made under subsection (4) on that ground if the reference was made after the end of the period of 2 years beginning with the date of the grant, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or, as the case may be, of the transfer of the patent to the person that the person was not entitled (either alone or with other persons, as the case may be) to the patent.

[23/2019]

(6) An order under this section must not be so made as to affect the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as such.

(7) Where a question is referred to the Registrar under this section, an order must not be made by virtue of subsection (2) or under subsection (4) on the reference unless notice of the reference is given to all persons registered as proprietor of the patent or as having a right in or under the patent, except those who are parties to the reference.

(8) If it appears to the Registrar on a reference under this section that the question referred to the Registrar would be more conveniently dealt with by the court, the Registrar may decline to deal with it and, without prejudice to the court’s jurisdiction to determine any such question and make a declaration, the court has jurisdiction to do so.

[23/2019]

(9) The court must not determine a question whether a patent was granted to a person not entitled to be granted the patent —

(a)	in the exercise of any such declaratory jurisdiction in an action for a declaration; or
(b)	in the exercise of jurisdiction pursuant to a reference under this section,

if the action or the reference (as the case may be) was commenced or made after the end of the period of 2 years beginning with the date of the grant of the patent, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or, as the case may be, of the transfer of the patent to the person that the person was not entitled (either alone or with other persons, as the case may be) to the patent.

[23/2019]

Effect of transfer of patent under section 47

48.—(1) Where an order is made under section 47 that a patent be transferred from any person or persons (the old proprietor or proprietors) to one or more persons (whether or not including an old proprietor) then, except in a case falling within subsection (2), any licences or other rights granted or created by the old proprietor or proprietors are, subject to section 43 and to the provisions of the order, to continue in force and to be treated as granted by the person or persons to whom the patent is ordered to be transferred (the new proprietor or proprietors).

(2) Where an order is so made that a patent be transferred from the old proprietor or proprietors to one or more persons none of whom was an old proprietor (on the ground that the patent was granted to a person not entitled to be granted the patent), any licences or other rights in or under the patent, subject to the provisions of the order and subsection (3), lapse on the registration of that person or those persons as the new proprietor or proprietors of the patent.

(3) Where an order is so made that —

(a)	a patent be transferred as mentioned in subsection (2); or
(b)	a person other than an old proprietor may make a new application for a patent,

and before the reference of the question under that section resulting in the making of any such order is registered, the old proprietor or proprietors or a licensee of the patent, acting in good faith —

(c)	worked the invention in question in Singapore; or
(d)	made effective and serious preparations to do so,

the old proprietor or proprietors or the licensee shall, on making a request to the new proprietor or proprietors within the prescribed period, be entitled to be granted a licence (but not an exclusive licence) to continue working or, as the case may be, to work the invention, so far as it is the subject of the new application.

(4) Any such licence must be granted for a reasonable period and on reasonable terms.

(5) The new proprietor or proprietors of the patent or any person claiming that the person is entitled to be granted any such licence may refer to the Registrar the question whether that person is so entitled and whether any such period is or terms are reasonable.

(6) The Registrar must determine the question mentioned in subsection (5) and may, if he or she considers it appropriate, order the grant of such a licence.

PART 9

EMPLOYEES’ INVENTIONS

Right to employees’ inventions

49.—(1) Despite anything in any rule of law, an invention made by an employee, as between the employee and the employee’s employer, is taken to belong to the employee’s employer for the purposes of this Act and all other purposes if —

(a)	the invention was made in the course of the normal duties of the employee or in the course of duties falling outside the employee’s normal duties, but specifically assigned to the employee, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of the employee’s duties; or
(b)	the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of the employee’s duties and the particular responsibilities arising from the nature of the employee’s duties the employee had a special obligation to further the interests of the employer’s undertaking.

(2) Any other invention made by an employee, as between the employee and his or her employer, is taken for those purposes to belong to the employee.

(3) Where by virtue of this section an invention belongs, as between the employee and his or her employer, to an employee, nothing done —

(a)	by or on behalf of the employee or any person claiming under the employee for the purposes of pursuing an application for a patent; or
(b)	by any person for the purpose of performing or working the invention,

is to be taken to infringe any copyright or design right to which, as between the employee and his or her employer, his or her employer is entitled in any model or document relating to the invention.

(4) In subsection (3), the reference to application for a patent includes an application for other protection for an invention, and includes an application for a patent or any other protection under the law of a country other than Singapore or under any treaty to which Singapore is a party.

Supplementary provisions

50.—(1) This Part does not apply to an invention made by an employee unless at the time the employee made the invention one of the following conditions was satisfied in the employee’s case:

(a)	the employee was mainly employed in Singapore;
(b)	the employee was not mainly employed anywhere or his or her place of employment could not be determined, but his or her employer had a place of business in Singapore to which the employee was attached, whether or not the employee was also attached elsewhere.

(2) In this Part, except so far as the context otherwise requires, references to the making of an invention by an employee are references to the employee making it alone or jointly with any other person, but do not include references to the employee merely contributing advice or other assistance in the making of an invention by another employee.

(3) Any references in section 49 to a patent and to a patent being granted are respectively references to a patent or other protection and to its being granted whether under the law of Singapore or the law in force in any other country or under any treaty or international convention.

(4) Nothing in this Part is to be construed as precluding the operation of an agreement or a contract in relation to the right to an invention.

PART 10

CONTRACTS AS TO PATENTED PRODUCTS

Application of this Part

50A. This Part applies only to —

(a)	any contract for the supply of a patented product;
(b)	any licence to work a patented invention; and
(c)	any contract relating to any such supply or licence,

that was entered into or granted on or after 23 February 1995 but before 1 December 2008.

[18/2008]

Avoidance of certain restrictive conditions

51.—(1) Subject to this section, any condition or term of a contract for the supply of a patented product or of a licence to work a patented invention, or of a contract relating to any such supply or licence, is void insofar as it purports —

(a)	in the case of a contract for supply, to require the person supplied to acquire from the supplier, or the supplier’s nominee, or prohibit the person supplied from acquiring from any specified person, or from acquiring except from the supplier or the supplier’s nominee, anything other than the patented product;
(b)	in the case of a licence to work a patented invention, to require the licensee to acquire from the licensor or the licensor’s nominee, or prohibit the licensee from acquiring from any specified person, or from acquiring except from the licensor or the licensor’s nominee, anything other than the product which is the patented invention or (if it is a process) other than any product obtained directly by means of the process or to which the process has been applied; or
(c)	in either case, to prohibit the person supplied or the licensee from using articles (whether patented products or not) which are not supplied by, or any patented process which does not belong to, the supplier or licensor, or the supplier’s or licensor’s nominee, or to restrict the right of the person supplied or the licensee to use any such articles or process.

(2) In proceedings against any person for infringement of a patent, it is a defence to prove that at the time of the infringement there was in force a contract relating to the patent made by or with the consent of the claimant or a licence under the patent granted by or with the consent of the claimant and containing in either case a condition or term void by virtue of this section.

[Act 25 of 2021 wef 01/04/2022]

[Act 31 of 2022 wef 01/11/2022]

(3) A condition or term of a contract or licence shall not be void by virtue of this section if —

(a)

at the time of the making of the contract or granting of the licence, the supplier or licensor was willing to supply the product, or grant a licence to work the invention, (as the case may be) to the person supplied or the licensee, on reasonable terms specified in the contract or licence and without any such condition or term as is mentioned in subsection (1); and

(b)

the person supplied or the licensee is entitled under the contract or licence to relieve himself, herself or itself of his, her or its liability to observe the condition or term on giving to the other party 3 months’ notice in writing, and subject to payment to that other party of such compensation (being, in the case of a contract to supply, a lump sum or rent for the residue of the term of the contract and, in the case of a licence, a royalty for the residue of the term of the licence) as may be determined by an arbitrator appointed by the Minister.

(4) If in any proceedings it is alleged that any condition or term of a contract or licence is void by virtue of this section, it shall lie on the supplier or licensor to prove the matters set out in subsection (3)(a).

(5) A condition or term of a contract or licence shall not be void by virtue of this section by reason only that it prohibits any person from selling goods other than those supplied by a specific person or, in the case of a contract for the hiring of or licence to use a patented product, that it reserves to the bailor or licensor, or the bailor’s or licensor’s nominee, the right to supply such new parts of the patented product as may be required to put or keep it in repair.

Determination of parts of certain contracts

52.—(1) Any contract for the supply of a patented product or licence to work a patented invention, or contract relating to any such supply or licence, may at any time after the patent or all the patents by which the product or invention was protected at the time of the making of the contract or granting of the licence has or have ceased to be in force, and despite anything to the contrary in the contract or licence or in any other contract, be determined, to the extent (and only to the extent) that the contract or licence relates to the product or invention, by either party on giving 3 months’ notice in writing to the other party.

(2) In subsection (1), “patented product” and “patented invention” include respectively a product and an invention which is the subject of an application for a patent, and that subsection applies in relation to a patent by which any such product or invention was protected and which was granted after the time of the making of the contract or granting of the licence, on an application which had been filed before that time, as it applies to a patent in force at that time.

(3) If, on an application under this section made by either party to a contract or licence falling within subsection (1), the court is satisfied that, in consequence of the patent or patents ceasing to be in force, it would be unjust to require the applicant to continue to comply with all the terms and conditions of the contract or licence, the court may make such order varying those terms or conditions as, having regard to all the circumstances of the case, it thinks just as between the parties.

(4) Without prejudice to any other right of recovery, nothing in subsection (1) is to be taken to entitle any person to recover property let under a hire‑purchase agreement within the meaning of the Hire‑Purchase Act 1969.

(5) This section is without prejudice to any rule of law relating to the frustration of contracts and any right of determining a contract or licence exercisable apart from this section.

PART 11

LICENCES OF RIGHT AND COMPULSORY LICENCES

Licences of right

53.—(1) At any time after the grant of a patent, its proprietor may apply to the Registrar for an entry to be made in the register to the effect that licences under the patent are to be available as of right.

(2) Where an application under subsection (1) is made, the Registrar must give notice of the application to any person registered as having a right in or under the patent and, if satisfied that the proprietor of the patent is not precluded by contract from granting licences under the patent, the Registrar must make that entry.

(3) Where an entry under subsection (2) is made in respect of a patent —

(a)	any person, at any time after the entry is made, is entitled as of right to a licence under the patent on such terms as may be settled by agreement or, in default of agreement, by the Registrar on the application of the proprietor of the patent or the person requiring the licence;
(b)	the Registrar may, on the application of the holder of any licence granted under the patent before the entry was made, order the licence to be exchanged for a licence of right on terms so settled;
(c)	if, in proceedings for infringement of the patent, the defendant undertakes to take a licence on such terms, no injunction may be granted against the defendant and the amount (if any) recoverable against the defendant by way of damages must not exceed twice the amount which would have been payable by the defendant as licensee if such a licence on those terms had been granted before the earliest infringement; and
(d)	the renewal fee payable in respect of the patent after the date of the entry is half the fee which would be payable if the entry had not been made.

(4) An undertaking under subsection (3)(c) may be given at any time before final order in the proceedings, without any admission of liability.

(5) The licensee under a licence of right may (unless, in the case of a licence the terms of which are settled by agreement, the licence otherwise expressly provides) request the proprietor of the patent to take proceedings to prevent any infringement of the patent.

(6) If the proprietor refuses or neglects to take proceedings under subsection (5) within 2 months after being so requested, the licensee may institute proceedings for the infringement in the licensee’s own name as if the licensee were the proprietor, making the proprietor a defendant.

(7) A proprietor so added as defendant shall not be liable for any costs or expenses unless the proprietor files and serves a notice of intention to contest or not contest and takes part in the proceedings.

[Act 25 of 2021 wef 01/04/2022]

Cancellation of entry made under section 53

54.—(1) At any time after an entry has been made under section 53 in respect of a patent, the proprietor of the patent may apply to the Registrar for cancellation of the entry.

(2) Where an application under subsection (1) is made and the balance paid of all renewal fees which would have been payable if the entry had not been made, the Registrar may cancel the entry if satisfied that there is no existing licence under the patent or that all licensees under the patent consent to the application.

(3) Within the prescribed period after an entry had been made under section 53 in respect of a patent, any person who claims that the proprietor of the patent is, and was at the time of the entry, precluded by a contract in which the claimant is interested from granting licences under the patent may apply to the Registrar for cancellation of the entry.

(4) Where the Registrar is satisfied, on an application under subsection (3), that the proprietor of the patent is and was so precluded, the Registrar must cancel the entry.

(5) The proprietor shall be liable to pay, within the prescribed period, a sum equal to the balance of all renewal fees which would have been payable if the entry had not been made, and the patent ceases to have effect at the expiration of that period if that sum is not so paid.

[15/2012]

(6) Where an entry is cancelled under this section, the rights and liabilities of the proprietor of the patent after the cancellation are the same as if the entry had not been made.

(7) Where an application has been made under this section —

(a)	in the case of an application under subsection (1), any person; and
(b)	in the case of an application under subsection (3), the proprietor of the patent,

may, within the prescribed period, give notice to the Registrar of opposition to the cancellation.

(8) The Registrar must, in considering the application made under this section, determine whether the opposition is justified.

Compulsory licences

55.—(1) Any interested person may apply to the court for the grant of a licence under a patent on the ground that the grant of the licence is necessary to remedy an anti-competitive practice.

(2) Without limiting subsection (1), the court may determine that the grant of a licence is necessary to remedy an anti-competitive practice if —

(a)

there is a market for the patented invention in Singapore;

(b)

that market —

(i)	is not being supplied; or
(ii)	is not being supplied on reasonable terms; and

(c)

the court is of the view that the proprietor of the patent has no valid reason for failing to supply that market with the patented invention, whether directly or through a licensee, on reasonable terms.

(3) Subject to this section, if the court is satisfied that the ground mentioned in subsection (1) is established, the court may make an order for the grant of a licence in accordance with the application upon such terms as the court thinks fit.

(4) A licence granted under this section —

(a)	is not exclusive; and
(b)	must not be assigned otherwise than in connection with the goodwill of the business in which the patented invention is used.

(5) Any licence granted under this section may, on the application of any interested party, be terminated by the court where the court is satisfied that the ground upon which the licence was granted has ceased to exist and is unlikely to recur.

(6) Where a licence is granted under this section to any person, the person must pay such remuneration to the patentee as may be agreed, or as may be determined by a method agreed between the person and the patentee or, in default of agreement, as is determined by the court on the application of the person or the patentee.

(7) The powers of the court on an application under this section are to be exercised with a view to securing that the inventor or other person beneficially entitled to a patent receives reasonable remuneration having regard to the economic value of the licence.

(8) No order may be made pursuant to any application under this section which would be at variance with any treaty or international convention relating to patents to which Singapore is a party.

PART 12

USE OF PATENTED INVENTIONS FOR
SERVICES OF GOVERNMENT

Use of patented inventions by Government and authorised parties

56.—(1) Subject to sections 60, 61 and 62, but despite any other section of this Act, the Government and any party authorised in writing by the Government may do anything in relation to a patented invention —

(a)	for a public non-commercial purpose; or
(b)	for or during a national emergency or other circumstances of extreme urgency,

and anything done by virtue of this section does not amount to an infringement of the patent.

[18/2008]

(2) Without limiting subsection (1), subject to sections 60, 61 and 62, but despite any other section of this Act, the Government and any party authorised in writing by the Government may import any relevant health product, and do anything in relation to any relevant health product so imported, for or during a national emergency or other circumstances of extreme urgency, if the Government has given the Council for TRIPS a relevant notification in relation to the relevant health product.

[18/2008]

(3) For the purposes of this section and section 57 —

(a)	any use of an invention for the supply to the government of any country outside Singapore, pursuant to any agreement or arrangement between the Government of Singapore and the government of that country, of articles required for the defence of that country is deemed to be a use of the invention for a public non‑commercial purpose; and
(b)	the power of the Government or any party authorised by the Government to do anything in accordance with this section does not, in the case of a patent relating to an integrated circuit, extend to sale of the invention to the public.

(4) The purchaser of any article sold in the exercise of the powers conferred by this section, and any person claiming through the purchaser, has power to deal with it in the same manner as if the patent were held on behalf of the Government.

(5) In this section —

“integrated circuit” means a product, in its final or an intermediate form, in which the elements, at least one of which is an active element, and some or all of the interconnections are integrally formed in and on, or in or on, a piece of material and which is intended to perform an electronic function;

“relevant notification” means a notification that satisfies the requirements of —

(a)	paragraph 2(a) of the Doha Declaration Implementation Decision; or
(b)	paragraph 2(a) of the Annex to the TRIPS Agreement. [18/2008]

Rights of third parties in respect of Government use

57.—(1) In relation to —

(a)

anything done in accordance with section 56 by the Government or any party authorised in writing by the Government; or

(b)

anything done to the order of the Government —

(i)	for a public non-commercial purpose; or
(ii)	for or during a national emergency or other circumstances of extreme urgency,

by the proprietor of a patent in respect of the patented invention or by the proprietor of an application for a patent in respect of the invention for which the application has been filed and is still pending,

the provisions of any licence, assignment or agreement to which this subsection applies, subject to sections 60, 61 and 62, are of no effect so far as those provisions restrict or regulate the working of the invention, or the use of any model, document or information relating to it, or provide for the making of payments in respect of, or calculated by reference to, such working or use.

(2) The reproduction or publication of any model or document in connection with the said working or use is not to be deemed to be an infringement of any copyright or design right subsisting in the model or document.

(3) Subsection (1) applies to any licence, assignment or agreement which is made, whether before or after 23 February 1995, between (on the one hand) any person who is a proprietor of or an applicant for the patent, or anyone who derives title from any such person or from whom such person derives title, and (on the other hand) any person other than the Government.

References of disputes as to Government use

58.—(1) Any dispute as to the exercise by the Government or a party authorised by the Government of the powers conferred by, or as to the terms for doing anything in accordance with, section 56 may be referred to the court by either party to the dispute after a patent has been granted for the invention.

(2) In determining any dispute referred to the court under this section, the court is to have regard to —

(a)	any benefit or compensation that the patentee of the invention may have received, or may be entitled to receive, directly or indirectly, from the Government or any party authorised by the Government in respect of the patented invention; and
(b)	the need to ensure that the patentee receives reasonable remuneration having regard to the economic value of the patented invention.

(3) If the validity of a patent is put in issue in proceedings under this section and it is found that the patent is only partially valid, the court may, subject to subsection (4), grant relief to the proprietor of the patent in respect of that part of the patent which is found to be valid and to have been used in accordance with section 56.

(4) Where in any such proceedings it is found that a patent is only partially valid, the court is not to grant relief by way of costs or expenses except where the proprietor of the patent proves that the specification of the patent was framed in good faith and with reasonable skill and knowledge, and in that event the court may grant relief in respect of that part of the patent which is valid and has been so used, subject to the discretion of the court as to costs and expenses.

(5) As a condition of any such relief, the court may direct that the specification of the patent be amended to its satisfaction upon an application made for that purpose under section 83, and an application may be so made accordingly, whether or not all other issues in the proceedings have been determined.

(6) In any proceedings under this section, the court may at any time order the whole proceedings or any question or issue of fact arising in them to be referred, on such terms as the court may direct, to an arbitrator; and references to the court in this section are to be construed accordingly.

(7) One of the 2 or more joint proprietors of a patent or an application for a patent may, without the concurrence of the others, refer a dispute to the court under this section, but must not do so unless the others are made parties to the proceedings; but any of the others if made a defendant shall not be liable for any costs or expenses unless the defendant files and serves a notice of intention to contest or not contest and takes part in the proceedings.

[Act 25 of 2021 wef 01/04/2022]

59. [Repealed by Act 19 of 2004]

Nature and scope of rights under section 56

60.—(1) The right to use a patented invention under section 56 —

(a)	is not exclusive;
(b)	must not be assigned otherwise than in connection with the goodwill of the business in which the patented invention is used; and
(c)	is, despite subsection (3)(a) of section 56, limited to the supply of the patented invention predominantly in Singapore by the Government or a party authorised by the Government under that section.

(2) The right under section 56 to use a relevant health product which is imported under section 56(2) does not include a right to export the relevant health product.

[18/2008]

(3) The right to use a patented invention under section 56 may, on the application of any interested party, be terminated by the court, where the court is satisfied that the circumstances that gave rise to the right to use the patented invention have ceased to exist and are unlikely to recur.

(4) Where the court has terminated the right under section 56 to use a patented invention, the court may make such consequential orders as it thinks necessary.

[18/2008]

Duty to inform patentee

61.—(1) Where any thing set out in section 66(1) is done in relation to a patented invention by the Government or a party authorised in writing by the Government for a public non-commercial purpose, the Government department that did or authorised the doing of the thing must inform the patentee promptly of the doing of the thing.

(2) Where any thing set out in section 66(1) is done in relation to a patented invention by the Government or a party authorised in writing by the Government for or during a national emergency or other circumstances of extreme urgency, the Government department that did or authorised the doing of the thing must, as soon as reasonably practicable, inform the patentee of the doing of the thing.

Patentee entitled to remuneration

62.—(1) Subject to subsection (2), where an act is done under section 56, the Government must pay such remuneration to the patentee as may be agreed, or as may be determined by a method agreed, between the Government and the patentee having regard to the economic value of the patented invention or as may, in default of agreement, be determined by the court under section 58.

[18/2008]

(2) No remuneration is payable under subsection (1) in respect of the import or subsequent use under section 56(2) of any relevant health product, if the patentee has received or will receive any other remuneration in respect of that relevant health product.

[18/2008]

63. [Section number not in use]

64. [Section number not in use]

65. [Section number not in use]

PART 13

INFRINGEMENT OF PATENTS

Meaning of infringement

66.—(1) Subject to the provisions of this Act, a person infringes a patent for an invention if, but only if, while the patent is in force, the person does any of the following things in Singapore in relation to the invention without the consent of the proprietor of the patent:

(a)	where the invention is a product, the person makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise;
(b)	where the invention is a process, the person uses the process or the person offers it for use in Singapore when the person knows, or it is obvious to a reasonable person in the circumstances, that its use without the consent of the proprietor would be an infringement of the patent;
(c)	where the invention is a process, the person disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.

(2) An act which, apart from this subsection, would constitute an infringement of a patent for an invention is not an infringement of a patent if —

(a)

it is done privately and for purposes which are not commercial;

(b)

it is done for experimental purposes relating to the subject matter of the invention;

(c)

it consists of the extemporaneous preparation of a medicine for an individual in accordance with a prescription given by a registered medical or dental practitioner or consists of dealing with a medicine so prepared;

(d)

it consists of the use of a product or process in the body or operation of a relevant aircraft, hovercraft or vehicle which has temporarily or accidentally entered or is crossing Singapore (including the airspace above it and its territorial waters) or the use of accessories for such a relevant aircraft, hovercraft or vehicle;

(e)

it consists of the use, exclusively for the needs of a relevant ship, of a product or process in the body of the ship or in its machinery, tackle, apparatus or other accessories, in a case where the ship has temporarily or accidentally entered the territorial waters of Singapore;

(f)

it consists of the use of an exempted aircraft which has lawfully entered or is lawfully crossing Singapore as mentioned in paragraph (d) or of the importation into Singapore, or the use or storage, of any part or accessory for that aircraft;

(g)

subject to subsections (3) and (6), it consists of the import, use or disposal of, or the offer to dispose of, any patented product or any product obtained by means of a patented process or to which a patented process has been applied, which is produced by or with the consent (conditional or otherwise) of the proprietor of the patent or any person licensed by the proprietor, and for this purpose “patent” includes a patent granted in any country outside Singapore in respect of the same or substantially the same invention as that for which a patent is granted under this Act and “patented product”, “patented process” and “licensed” are to be construed accordingly;

(h)

it consists of the doing of any thing set out in subsection (1) in relation to the subject matter of the patent to support any application for marketing approval for a pharmaceutical product, provided that any thing produced to support the application is not —

(i)	made, used or sold in Singapore; or
(ii)	exported outside Singapore,

other than for purposes related to meeting the requirements for marketing approval for that pharmaceutical product; or

(i)

subject to subsection (6), it consists of the import, disposal or offer to dispose of a patented pharmaceutical product for use by or on a specific patient in Singapore, or the use of that product by or on that patient, where —

(i)	that product is required for use by or on that patient;
(ii)	the relevant authority has granted approval specifically for the import of that product for use by or on that patient; and
(iii)	that product was produced by or with the consent (conditional or otherwise) of the proprietor of the patent or any person licensed by the proprietor (and for this purpose “patent” includes a patent granted in any country outside Singapore in respect of the same or substantially the same product and “licensed” is to be construed accordingly). [18/2008]

(3) Subsection (2)(g) does not apply to the import of any patented pharmaceutical product by any person (called in this subsection and subsection (4) the importer) if —

(a)

the product has not previously been sold or distributed in Singapore by or with the consent (conditional or otherwise) of the proprietor of the patent or any person licensed by the proprietor of the patent to sell or distribute the product in Singapore;

(b)

the import of the product by the importer would result in the product being distributed in breach of a contract between —

(i)	the proprietor of the patent; and
(ii)	any person licensed by the proprietor of the patent to distribute the product outside Singapore; and

(c)

the importer has actual or constructive knowledge of the matters referred to in paragraph (b).

(4) For the purposes of subsection (3), where the importer has received a written notice containing the prescribed particulars, the importer is deemed to have constructive knowledge of the matters referred to in subsection (3)(b).

(5) To avoid doubt, in subsection (3), “patent” does not include a patent granted in any country outside Singapore in respect of the same or substantially the same product and “licensed” is to be construed accordingly.

(6) Subsection (2)(g) and (i) does not apply to the import or sale of, or the offer to sell, any relevant health product produced for export to any country, other than Singapore, which is an eligible importing member of the World Trade Organisation.

[18/2008]

(7) In this section —

“eligible importing member”, in relation to the World Trade Organisation, means a member of the World Trade Organisation which —

(a)

is a least-developed country; or

(b)

has given the Council for TRIPS the notification referred to in —

(i)	paragraph 1(b) of the Doha Declaration Implementation Decision; or
(ii)	paragraph 1(b) of the Annex to the TRIPS Agreement;

“exempted aircraft” means an aircraft to which section 30 of the Air Navigation Act 1966 applies;

“relevant ship” and “relevant aircraft, hovercraft or vehicle” mean, respectively, a ship and an aircraft, a hovercraft or a vehicle registered in, or belonging to, any country, other than Singapore, which is —

(a)	a party to the Paris Convention; or
(b)	a member of the World Trade Organisation. [18/2008]

Proceedings for infringement of patent

67.—(1) Subject to this Part, civil proceedings may be brought in the court by the proprietor of a patent in respect of any act alleged to infringe the patent and (without prejudice to any other jurisdiction of the court) in those proceedings a claim may be made —

(a)	for an injunction restraining the defendant from any apprehended act of infringement;
(b)	for an order for the defendant to deliver up or destroy any patented product in relation to which the patent is infringed or any article in which that product is inextricably comprised or any material and implement the predominant use of which has been in the creation of the infringing product;
(c)	for damages in respect of the infringement;
(d)	for an account of the profits derived by the defendant from the infringement; and
(e)	for a declaration that the patent is valid and has been infringed by the defendant.

(2) The court must not, in respect of the same infringement, both award the proprietor of a patent damages and order that the proprietor be given an account of the profits.

(3) In this Act, unless the context otherwise requires, any reference to a claimant includes a reference to the proprietor of the patent.

[Act 23 of 2019 wef 01/04/2022]

[Act 25 of 2021 wef 01/04/2022]

(4) [Deleted by Act 23 of 2019 wef 01/04/2022]

(5) [Deleted by Act 23 of 2019 wef 01/04/2022]

(6) Subject to this Part, in determining whether or not to grant any kind of relief claimed under this section and the extent of the relief granted, the court must apply the principles applied by the court in relation to that kind of relief immediately before 23 February 1995.

[Act 23 of 2019 wef 01/04/2022]

Reversal of burden of proof

68.—(1) In any proceedings for the infringement of a patent, where the subject matter of the patent is a process for obtaining a new product, the burden of proving that a product is not made by the process is on the alleged infringer if the product is new or a substantial likelihood exists that the product is made by the process and the proprietor of the patent has been unable through reasonable efforts to determine the process actually used.

(2) In considering whether a party has discharged the burden imposed upon the party by this section, the court is not to require the party to disclose any manufacturing or commercial secret if it appears to the court that it would be unreasonable to do so.

Restrictions on relief for infringement

69.—(1) In proceedings for infringement of a patent, damages must not be awarded and no order may be made for an account of profits against a defendant who proves that at the date of the infringement the defendant was not aware, and had no reasonable grounds for supposing, that the patent existed.

(2) A person is not to be taken to have been aware or to have had reasonable grounds for supposing by reason only of the application to a product of the word “patent” or “patented”, or any word or words expressing or implying that a patent has been obtained for the product, unless the number of the patent accompanied the word or words.

(3) In proceedings for infringement of a patent, the court may, if the court thinks fit, refuse to award any damages, make an order for an account of profits or grant any other relief (including an injunction) in respect of an infringement committed during the period prescribed under section 36(3), but before the payment of the renewal fee and any additional fee prescribed for the purposes of section 36(3).

[15/2012]

[Act 23 of 2019 wef 01/04/2022]

[Act 7 of 2022 wef 26/05/2022]

(4) Where an amendment of the specification of a patent has been allowed under any of the provisions of this Act, the court must not, in proceedings for an infringement of the patent committed before the decision to allow the amendment, award any damages, make an order for an account of profits or grant any other relief (including an injunction) unless the court is satisfied that the specification of the patent as published was framed in good faith and with reasonable skill and knowledge.

[Act 23 of 2019 wef 01/04/2022]

Relief for infringement of partially valid patent

70.—(1) If the validity of a patent is put in issue in proceedings for infringement of the patent and it is found that the patent is only partially valid, the court may, subject to subsection (2), grant relief in respect of that part of the patent which is found to be valid and infringed.

[Act 23 of 2019 wef 01/04/2022]

(2) Where in any such proceedings it is found that a patent is only partially valid, the court must not grant relief by way of damages, costs or expenses, except where the claimant proves that the specification for the patent was framed in good faith and with reasonable skill and knowledge, and in that event the court may grant relief in respect of that part of the patent which is valid and infringed, subject to the discretion of the court as to costs or expenses and as to the date from which damages should be reckoned.

[Act 23 of 2019 wef 01/04/2022]

[Act 25 of 2021 wef 01/04/2022]

(3) As a condition of relief under this section, the court may direct that the specification of the patent be amended to the court’s satisfaction upon an application made for that purpose under section 83, and an application may be so made accordingly, whether or not all other issues in the proceedings have been determined.

[Act 23 of 2019 wef 01/04/2022]

Right to continue use begun before priority date

71.—(1) Where a patent is granted for an invention, a person who in Singapore before the priority date of the invention —

(a)	does in good faith an act which would constitute an infringement of the patent if it were in force; or
(b)	makes in good faith effective and serious preparations to do such an act,

has the right to continue to do the act or, as the case may be, to do the act, despite the grant of the patent.

(2) The right conferred by subsection (1) does not extend to granting a licence to another person to do the act.

(3) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (1) may —

(a)	authorise the doing of that act by any partner of that person for the time being in that business; 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 in the course of which the act was done or the preparations were made.

(4) Where a product is disposed of to another person in exercise of the rights conferred by subsection (1) or (3), that other person and any person claiming through that other person may deal with the product in the same way as if it had been disposed of by the registered proprietor of the patent.

Certificate of contested validity of patent

72.—(1) Where in any proceedings before the court or the Registrar the validity of a patent to any extent is contested and that patent is found by the court or the Registrar to be wholly or partially valid, the court or the Registrar may certify the finding and the fact that the validity of the patent was so contested.

(2) Where a certificate is granted under this section, then, if in any subsequent proceedings before the court for infringement of the patent or before the court or the Registrar for revocation of the patent, a final order or judgment is made or given in favour of the party relying on the validity of the patent as found in the earlier proceedings, that party, unless the court or the Registrar otherwise directs, is entitled to that party’s costs or expenses as between solicitor and own client other than the costs or expenses of any appeal in the subsequent proceedings.

[Act 23 of 2019 wef 01/04/2022]

Proceedings for infringement by co-owner

73.—(1) In the application of section 66 to a patent of which there are 2 or more joint proprietors, the reference to the proprietor is to be construed —

(a)	in relation to any act, as a reference to that proprietor or those proprietors who, by virtue of section 46 or any agreement mentioned in that section, is or are entitled to do that act without its amounting to an infringement; and
(b)	in relation to any consent, as a reference to that proprietor or those proprietors who, by virtue of section 46 or any such agreement, is or are the proper person or persons to give the requisite consent.

(2) One of 2 or more joint proprietors of a patent may without the concurrence of the others bring proceedings in respect of an act alleged to infringe the patent, but must not do so unless the others are made parties to the proceedings; but any of the others if made a defendant shall not be liable for any costs or expenses unless the defendant files and serves a notice of intention to contest or not contest and takes part in the proceedings.

[Act 25 of 2021 wef 01/04/2022]

Proceedings for infringement by exclusive licensee

74.—(1) The holder of an exclusive licence under a patent has the same right as the proprietor of the patent to bring proceedings in respect of any infringement of the patent committed after the date of the licence; and references to the proprietor of the patent in this Act relating to infringement are to be construed accordingly.

(2) In awarding damages or granting any other relief in any such proceedings, the court is to take into consideration any loss suffered or likely to be suffered by the exclusive licensee as such as a result of the infringement, or, as the case may be, the profits derived from the infringement, so far as it constitutes an infringement of the rights of the exclusive licensee as such.

[Act 23 of 2019 wef 01/04/2022]

(3) In any proceedings taken by an exclusive licensee by virtue of this section, the proprietor of the patent need not be made a party to the proceedings, but if made a defendant shall not be liable for any costs or expenses unless the defendant files and serves a notice of intention to contest or not contest and takes part in the proceedings.

[Act 25 of 2021 wef 01/04/2022]

Effect of non-registration on infringement proceedings

75. Where by virtue of a transaction, instrument or event to which section 43 applies a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent and the patent is subsequently infringed, the court is not to award the person damages or order that the person be given an account of the profits in respect of such a subsequent infringement occurring before the transaction, instrument or event is registered unless —

(a)	the transaction, instrument or event is registered within the period of 6 months beginning with its date; or
(b)	the court is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter. [Act 23 of 2019 wef 01/04/2022]

Infringement of rights conferred by publication of application

76.—(1) Where an application for a patent for an invention is published, then, subject to this section, the applicant has, as from the publication and until the grant of the patent, the same right as the applicant would have had, if the patent had been granted on the date of the publication of the application, to bring proceedings in the court for damages in respect of any act which would have infringed the patent.

[Act 23 of 2019 wef 01/04/2022]

(2) References in sections 66 to 69 and 73 to 75 to a patent and the proprietor of a patent are to be respectively construed as including references to any such application and the applicant, and references to a patent being in force, being granted, being valid or existing are to be construed accordingly.

(3) The applicant is entitled to bring proceedings by virtue of this section in respect of any act only —

(a)	after the patent has been granted; and
(b)	if the act would, if the patent had been granted on the date of the publication of the application, have infringed not only the patent, but also the claims (as interpreted by the description and any drawings referred to in the description or claims) in the form in which they were contained in the application immediately before the preparations for its publication were completed by the Registry.

(4) Section 69(3) and (4) does not apply to an infringement of the rights conferred by this section but in considering the amount of any damages for such an infringement, the court is to consider whether or not it would have been reasonable to expect, from a consideration of the application as published under section 27, that a patent would be granted conferring on the proprietor of the patent protection from an act of the same description as that found to infringe those rights, and if the court finds that it would not have been reasonable, the court is to reduce the damages to such an amount as the court thinks just.

[Act 23 of 2019 wef 01/04/2022]

Remedy for groundless threats of infringement proceedings

77.—(1) Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he or she is the person to whom the threats are made) may, subject to subsection (4), bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3).

(2) In any such proceedings, the claimant, if the claimant proves that the threats were so made and satisfies the court that the claimant is a person aggrieved by them, is entitled to the relief claimed unless —

(a)	the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent; and
(b)	the patent alleged to be infringed is not shown by the claimant to be invalid in a relevant respect. [Act 25 of 2021 wef 01/04/2022]

(3) The said relief is —

(a)	a declaration to the effect that the threats are unjustifiable;
(b)	an injunction against the continuance of the threats; and
(c)	damages in respect of any loss which the claimant has sustained by the threats. [Act 25 of 2021 wef 01/04/2022]

(4) Proceedings may not be brought under this section for a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process.

(5) A mere notification of the existence of a patent does not constitute a threat of proceedings within the meaning of this section.

(6) Nothing in this section renders an advocate and solicitor or any other person liable to an action under this section in respect of an act done by the advocate and solicitor or the other person in the advocate and solicitor’s or the other person’s professional capacity on behalf of a client.

Declaration as to non-infringement

78.—(1) Without prejudice to the jurisdiction of the court to make a declaration apart from this section, a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent may be made by the court in proceedings between the person doing or proposing to do the act and the proprietor of the patent, even though no assertion to the contrary has been made by the proprietor, if it is shown —

(a)	that that person has applied in writing to the proprietor for a written acknowledgment to the effect of the declaration claimed, and has furnished the proprietor with full particulars in writing of the act in question; and
(b)	that the proprietor has refused or failed to give any such acknowledgment. [Act 23 of 2019 wef 01/04/2022]

(2) [Deleted by Act 23 of 2019 wef 01/04/2022]