Singapore legislation
Clause 61
of Patents Bill
Clause 61
Use of patented inventions for services of Government
(1)
Notwithstanding anything in this Act, any Government department and any person authorised in writing by a Government department may, for the services of the Government and in accordance with this section, do any of the following acts in Singapore in relation to a patented invention without the consent of the proprietor of the patent:
where the invention is a product, may —
make, use, import, obtain or keep the product, or sell or offer to sell it where to do so would be incidental or ancillary to making, using, importing, obtaining or keeping it; or
in any event, sell or offer to sell it for foreign defence purposes or for the production or supply of any drug and medicine, or dispose or offer to dispose of it for any purpose whatever;
where the invention is a process, may use it or, in relation to any product obtained directly by means of the process, do anything mentioned in paragraph (a);
without prejudice to paragraphs (a) and (b), where the invention or any product obtained directly by means of the invention is a drug or medicine, may sell or offer to sell the drug or medicine;
may supply or offer to supply to any person any of the means, relating to an essential element of the invention, for putting the invention into effect;
may dispose or offer to dispose of anything which was made, used, imported, obtained or kept in the exercise of the powers conferred by this section and which is no longer required for the purpose for which it was made, used, imported, obtained or kept, as the case may be,and anything done by virtue of this subsection shall not amount to an infringement of the patent.
(2)
Any act done in relation to an invention by virtue of this section is in this section referred to as use of the invention; and “use”, in relation to an invention, in sections 62 to 64 shall be construed accordingly.
(3)
So far as the invention has before its priority date been duly recorded by or tried by or on behalf of a Government department otherwise than in consequence of a relevant communication made in confidence, any use of the invention by virtue of this section may be made free of any royalty or other payment to the proprietor.
(4)
So far as the invention has not been so recorded or tried, any use of it made by virtue of this section at any time either —
after the publication of the application for the patent for the invention; or
without prejudice to paragraph (a), in consequence of a relevant communication made after the priority date of the invention otherwise than in confidence,shall be made on such terms as may be agreed either before or after the use by the Government department and the proprietor of the patent or as may in default of agreement be referred to an arbitrator agreed on by the parties or, in default of agreement, appointed by the Registrar.
(5)
The arbitrator to whom any reference is made under subsection (4) shall report his findings to the Registrar.
(6)
The expenses of and incidental to an arbitrator under subsection (4) shall, in default of agreement between the parties, be borne equally by the parties to the reference.
(7)
Where an invention is used by virtue of this section at any time after publication of an application for a patent for the invention but before such a patent is granted, and the terms for its use agreed or determined as mentioned in subsection (4) include terms as to payment for the use, then (notwithstanding anything in those terms) any such payment shall be recoverable only —
after such a patent is granted; and
if, apart from this section, the use 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 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.
(8)
The authority of a Government department in respect of an invention may be given under this section either before or after the patent is granted and either before or after the use in respect of which the authority is given is made, and may be given to any person whether or not he is authorised directly or indirectly by the proprietor of the patent to do anything in relation to the invention.
(9)
Where any use of an invention is made by or with the authority of a Government department under this section, then, unless it appears to the department that it would be contrary to the public interest to do so, the department shall cause a notice in such form and containing such particulars as it thinks fit to be published in the Gazette notifying the proprietor of the patent as soon as practicable after the second of the following events, that is to say, the use is begun and the patent is granted, and furnish him with such information as to the extent of the use as he may from time to time require.
(10)
A person acquiring anything disposed of in the exercise of the powers conferred by this section, and any person claiming through him, may deal with it in the same manner as if the patent were held on behalf of the Government.
(11)
In determining under this section any dispute between a Government department and any person as to the terms for the use of an invention for the services of the Government, the arbitrator shall have regard —
to any benefit or compensation which that person or any person from whom he derives title may have received or may be entitled to receive directly or indirectly from any Government department in respect of the invention; and
to whether that person or any person from whom he derives title has in the arbitrator’s opinion without reasonable cause failed to comply with a request of the department to use the invention for the services of the Government on reasonable terms.
(12)
On a reference under this section, the arbitrator may refuse to grant relief by way of compensation in respect of the use of an invention for the services of the Government during any further period specified under section 36(3), but before the payment of the renewal fee and any additional fee prescribed for the purposes of that section.
(13)
Where an amendment of the specification of a patent has been allowed under any of the provisions of this Act, the arbitrator shall not grant relief by way of compensation under this section in respect of any such use before the decision to allow the amendment unless the Registrar is satisfied that the specification of the patent as published was framed in good faith and with reasonable skill and knowledge.
(14)
In considering the amount of any compensation for the use of an invention for the services of the Government after publication of an application for a patent for the invention and before such a patent is granted, the arbitrator shall 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 for an act of the same description as that found to constitute that use, and if the arbitrator finds that it would not have been reasonable, he shall reduce the compensation to such amount as he thinks just.
(15)
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 (the new proprietor or licensee) and a Government department or a person authorised by a Government department subsequently makes use of the patented invention under this section, the new proprietor or licensee shall not be entitled to any compensation under subsection (4) (as it stands or as modified by section 63(3)) in respect of a subsequent use of the invention before the transaction, instrument or event is registered unless —
the transaction, instrument or event is registered within the period of 6 months beginning with its date; or
the Registrar 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.
(16)
In this section, “relevant communication”, in relation to an invention, means a communication of the invention directly or indirectly by the proprietor of the patent or any person from whom he derives title.
(17)
Subsection (4) is without prejudice to any rule of law relating to the confidentiality of information.