Singapore legislation
Section 36A
Section 36A
Extension of term of patent
(1)
The proprietor of a patent may apply to the Registrar to extend the term of the patent on any of the following grounds:
that there was an unreasonable delay by the Registrar in granting the patent;
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 —
there was an unreasonable delay in the issue of the corresponding patent or related national phase patent (as the case may be); and
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;
where the subject of the patent includes any substance which is an active ingredient of any pharmaceutical product, that —
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
the term of the patent has not previously been extended on this ground.
(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.
(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.
(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.
(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.
(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.
(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 —
made by the proprietor of the patent in the prescribed form within the prescribed period;
filed in the prescribed manner; and
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 —
send to the proprietor of the patent a certificate of extension of patent term in the prescribed form specifying —
the period of the extension; and
any limitation on the protection conferred by the patent during the term of the extension; and
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.