Patents Act 1994 · 2020 Revised Edition · Part 7 · Provisions as to Patents After Grant
39. Restoration of lapsed patents
Feedback & supportLast amended by an amending law of 2022. 3 amendments in all.
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.
patent
“patent” means a patent under this Act and includes a patent in force by virtue of section 117(3);
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.
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.
Registrar
“Registrar” means the Registrar of Patents and includes any Deputy Registrar of Patents holding office under this Act;
Notice of the application must be published by the Registrar in the prescribed manner.
published
“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;
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.
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.
The effect of an order for the restoration of a patent is as provided in subsections (8) to (13).
Anything done under or in relation to the patent during the period between expiry and restoration is treated as valid.
Anything done during that period which would have constituted an infringement if the patent had not expired is treated as an infringement —
if done at a time when it was possible for the patent to be renewed under section 36(3); or
if it was a continuation or repetition of an earlier infringing act.
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 —
began in good faith to do an act which would have constituted an infringement of the patent if it had not expired; or
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.
The right referred to in subsection (10) does not extend to granting a licence to another person to do the act.
right
“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;
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 —
authorise the doing of that act by any partner of the person’s for the time being in that business; and
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.
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.
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.