Patents Bill

This Act may be cited as the Patents Act 1994 and shall come into operation on such date as the Minister may, by notification in the Gazette, appoint.

The Minister may appoint different dates for the coming into operation of the different Parts or provisions of this Act.

In this Act, unless the context otherwise requires —

“appointed day”, in any provision of this Act, means the date appointed under section 1 for the coming into operation of that provision;

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

“count” means the High Court;

“date of filing”, in relation to —

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

“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;

“Examiner” means such person, organisation or foreign or international patent office or organisation as may be prescribed to whom the Registrar may refer questions relating to patents, including search and examination of applications for patents;

“exclusive licence” means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorised by him, 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” shall be construed accordingly;

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

“formal requirements” means those requirements designated as such by rules made for the purposes of section 28;

“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 14th 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” shall be construed accordingly;

“journal” has the same meaning as in section 115(4);

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

“Paris Convention” means the Convention for the Protection of Industrial Property signed at Paris on 20th 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 19th June 1970;

“patented invention” means an invention for which a patent is granted and “patented process” shall 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;

“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 shall be 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” shall be construed accordingly;

“register”, when used as a noun, means the register of patents kept 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 his name in the register;

“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;

“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;

“services of the Government” and “use for the services of the Government” have the same meanings as in section 62(2), including, as respects any period of emergency within the meaning of section 65, the meanings assigned to them by that section.

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 shall be conclusive evidence that the exhibition falls within that definition.

For the purposes of this Act, a matter shall be 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.

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.

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

References in this Act to the Paris Convention or the Patent Co-operation Treaty are references to that convention 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.

The Arbitration Act [Cap. 10] shall not apply to any proceedings before the Registrar under this Act.

Every application for a patent —

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

Every application for a patent shall contain —

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

The claim or claims shall —

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

The purpose of the abstract is to give technical information and on publication it shall 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.

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.

The date of filing an application for a patent shall, subject to the provisions of this Act, be taken to be the earliest date on which the following considerations are satisfied in relation to the application:

Every application for a patent shall be examined on filing to determine whether —

If a date of filing cannot be accorded, the Registrar shall give the applicant an opportunity to correct the deficiencies, and if the deficiencies are not corrected within the prescribed period, the application shall be treated as having been abandoned.

If the filing fee has not been paid within the period prescribed under section 25(2), the application shall be treated as having been abandoned.

If before the grant of a patent under section 30 it is found that any drawing referred to in any such application is filed later than the date which by virtue of subsection (1) is to be treated as the date of filing the application, the Registrar shall give the applicant an opportunity of requesting within the prescribed period that the date on which the drawing is filed shall be treated for the purposes of this Act as the date of filing the application, and —

Where, after an application for a patent has been filed and before the patent is granted, a new application is filed by the original applicant or his successor in title in accordance with the rules in respect of any part of the matter contained in the earlier application and the conditions mentioned in subsection (1) are satisfied in relation to the new application (without the new application contravening section 84) the new application shall be treated as having, as its date of filing, the date of filing the earlier application.

Nothing in subsection (5) shall be construed as affecting the power of the Registrar under section 107(1) to correct errors or mistakes with respect to the filing of drawings.

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 shall, unless the application is withdrawn, 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 amendments of those claims and new claims subsisting immediately before the completion of those preparations) and he may, if so requested by the applicant, publish it as aforesaid during that period, and in either event shall publish the fact and date of its publication in the journal.

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

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, shall be void in so far it purports —

Subsection (1) shall apply to contracts and licences whether made or granted before or after the appointed day.

In proceedings against any person for infringement of a patent, it shall be 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 plaintiff or a licence under the patent granted by him or with his consent and containing in either case a condition or term void by virtue of this section.

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

If in any proceeding 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 (4)(a).

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 his nominee, the right to supply such new parts of the patented product as may be required to put or keep it in repair.

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 notwithstanding 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.

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 shall apply 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.

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, it 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.

Without prejudice to any other right of recovery, nothing in subsection (1) shall be taken to entitle any person to recover property let under a hire-purchase agreement within the meaning of the Hire-Purchase Act [Cap. 125].

This section shall apply to contracts and licences whether made before or after the appointed day.

This section shall be 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.

There shall be a Registrar of Patents who shall have the chief control of the Registry of Patents.

There shall be one or more Deputy Registrars of Patents who shall, 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.

There shall be one or more Assistant Registrars of Patents.

The Registrar and all the other officers under this section shall be appointed by the Minister.

The Registrar may, in relation to a particular matter or class of matters, by writing under his hand, delegate all or any of his powers or functions under this Act (except this power of delegation) to an Assistant Registrar of Patents or any public officer 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.

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

A person who has been summoned to appear as a witness before the Registrar shall not, without lawful excuse, fail to appear in obedience to the summons.

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

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.

A person who appears before the Registrar shall not, without lawful excuse, refuse to be sworn or to make an affirmation, or to produce documents or articles, or to answer questions, which he is lawfully required to produce or answer.

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.

An officer or person employed in the Registry shall 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.

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.

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

This section shall not apply to the actual inventor or to an acquisition by bequest or devolution in law.

An officer or person employed in the Registry shall not, except when required or authorised by this Act, or under a direction in writing of the Registrar or by order of a court —

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.

Subject to subsections (2) and (3), a patentable invention is one that satisfies the following conditions:

It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of —

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.

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

The Minister may, by order published in the Gazette, vary the provisions of subsection (2) for the purposes of maintaining them in conformity with developments in science and technology.

An invention shall be taken to be new if it does not form part of the state of the art.

The state of the art in the case of an invention shall be 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.

The state of the art in the case of an invention to which an application for a patent or a patent relates shall be 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:

For the purposes of this section, the disclosure of matter constituting an invention shall 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 —

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

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 shall 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.

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

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 shall not be taken to be capable of industrial application.

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

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.

If in or in connection with an application for a patent (the application in suit) a declaration is made, whether by the applicant or any predecessor in title of his, 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 his and each having a date of filing during the period of 12 months immediately preceding the date of filing the application in suit, then —

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

This section shall apply 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.

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

It is hereby declared for the avoidance of doubt that 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 shall not be invalidated by reason only of the relevant intervening acts.

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(3).

Any person may make an application for a patent either alone or jointly with another.

A patent for an invention may be granted —

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

At any time before a patent has been granted for an invention —

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 in pursuance of the application, then, unless the application is refused or withdrawn before the reference is disposed of by the Registrar, the Registrar may, without prejudice to the generality of subsection (1) and subject to subsection (6) —

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

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.

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 him by any person in whose favour or on whose reference the directions were given, authorise him to do that thing on behalf of the person to whom the directions were given.

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 (whether 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 shall 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.

If it appears to the Registrar on a reference of a question under this section that the question involves matters which would more properly be determined by the court, he 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 shall have jurisdiction to do so.

No direction shall 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.

Where an order is made or directions are given under section 20 or 22 that an application for a patent shall 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 shall, subject to the provisions of the order and any directions under either of those sections, continue in force and be treated as granted by the persons in whose name the application is to proceed.

Where an order is made or directions are given under section 20 that an application for a patent shall 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 shall, 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.

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

Any such licence shall be granted for a reasonable period and on reasonable terms.

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 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, and the Registrar shall determine the question and may, if he considers it appropriate, order the grant of such a licence.

The inventor or joint inventors of an invention shall have a right to be mentioned as such in any patent granted for the invention and shall 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.

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

Where a person has been mentioned as a sole or joint inventor in pursuance of 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.

Where an application for a patent has a date of filing and is not withdrawn or treated as having been abandoned, the Registrar shall as soon as practicable after the end of the prescribed period examine the application so as to determine whether the application complies with those requirements of this Act and the rules which are designated by the rules as formal requirements for the purposes of this Act.

Where after an examination under subsection (1) it is determined that not all the formal requirements are complied with, the Registrar shall give the applicant an opportunity to make observations and to amend the application within such period as the Registrar may specify so as to comply with those requirements (subject, however, to section 84), and, if the applicant fails to do so, the Registrar may refuse the application.

Where an application for a patent complies with all the formal requirements referred to in section 28(1), the Registrar shall notify the applicant who shall —

Where the applicant has filed a request and paid the fee under subsection (1)(a), the Registrar shall cause the application to be subject to a search by an Examiner to discover the relevant prior art contained in such documentation as may be prescribed.

Upon receipt of the report of the search carried out under subsection (2), the Registrar shall send to the applicant a copy of the report, and the applicant may, within the prescribed period, file a request and pay the prescribed fee, for an examination report on the application so as to determine whether the conditions specified in sections 13 and 25(4) and (5) have been complied with, taking into consideration all the relevant prior art, if any, referred to in the search report; and upon receipt of the report, the Registrar shall send to the applicant a copy of the report.

Where the applicant has furnished the prescribed details under subsection (1)(c), he shall, subject to subsection (5), within the prescribed period, file the prescribed information in, or translated into the English language relating to any one of the corresponding international applications or other corresponding applications referred to in subsection (1)(c).

The applicant may, instead of filing the prescribed information referred to in subsection (4), within the prescribed period, either —

Where the applicant has filed a request and paid the fee under subsection (1)(b) or (5)(b), the Registrar shall cause the application to be subject to —

Where the applicant has filed a request and paid the fee under subsection (5)(a), the Registrar shall cause the application to be subject to an examination by an Examiner so as to determine whether the conditions specified in sections 13 and 25(4) and (5) have been complied with, taking into consideration all the relevant prior art, if any, referred to in the search report; and upon receipt of the examination report, the Registrar shall send to the applicant a copy of the report.

Where an international application for a patent (Singapore) has been filed by the applicant and the international preliminary examination report is not established, the applicant may, within the prescribed period file a request in the prescribed form and pay the prescribed fee, for an examination report on the application so as to determine whether the conditions specified in sections 13 and 25(4) and (5) have been complied with, taking into consideration all the relevant prior art, if any, referred to in the international search report; and upon receipt of the examination report, the Registrar shall send to the applicant a copy of the report.

For the purposes of this Part, “corresponding international application” and “corresponding application”, in relation to an invention, mean an application for protection filed, respectively, under the Patent Co-operation Treaty or with any prescribed patent office in respect of the same or substantially the same invention as that which is the subject of the application in suit, the application filed under the Patent Co-operation Treaty or with the prescribed patent office being —

Where before the end of the prescribed period the conditions in subsection (2) are satisfied, the Registrar shall grant the applicant a patent.

The conditions referred to in subsection (1) are —

Notwithstanding subsection (1), the Registrar may refuse to grant a patent —

If it appears to an Examiner during the examination of an application that the conditions specified in sections 13 and 25(4) and (5) have not been complied with, the Examiner shall give the applicant one written opinion to that effect, and the applicant shall before the examination report is issued have the right to —

At any time before a patent is granted in pursuance of an application, the applicant may in accordance with the prescribed conditions and subject to section 84, amend the application of his own volition.

Where an application for a patent has not, before the end of such period as may be prescribed, complied with the requirements of section 30(2), the application shall be treated as having been abandoned at the end of that period.

If at the end of the prescribed period under subsection (1) an appeal to the court is pending in respect of the application or the time within which such an appeal could be brought has not expired, that period —

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 him by the Minister as being information the publication of which might be prejudicial to the defence of Singapore, the Registrar shall give directions prohibiting or restricting the publication of that information or its communication to any specified person or description of persons.

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, he 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.

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

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

The Minister may at any time, for the purpose of enabling him 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 documents sent to the Registrar in connection with it and where a person is authorised to carry out such inspection, he shall as soon as practicable report on his inspection to the Minister.

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 —

Where a patent is granted in pursuance of an application in respect of which directions have been given under this section, no renewal fees shall be payable in respect of any period during which those directions were in force.

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.

Nothing in this section shall prevent 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.

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

Subsection (1) shall 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.

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.

In this section —

As soon as practicable after a patent has been granted under this Act, the Registrar shall publish in the journal a notice that it has been granted.

The Registrar shall, as soon as practicable after he publishes a notice under subsection (1), send the proprietor of the patent a certificate in the prescribed form that the patent has been granted to the proprietor.

The Registrar shall, at the same time as he publishes a notice under subsection (1) 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 (including the prescribed information under sections 29 and 30) constituting or relating to the patent which in the Registrar’s opinion it is desirable to publish.

A patent granted under this Act shall be treated for the purposes of this Act as having been granted, and shall take effect on the date on which notice of its grant is published in the journal and, subject to subsection (2), shall continue 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.

A patent shall cease 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.

If during the period of 6 months immediately following the end of the prescribed period the renewal fee and any prescribed additional fee are paid, the patent shall be treated for the purposes of this Act as if it had never expired, and accordingly —

Rules shall include provision requiring the Registrar to notify the registered proprietor of a patent that a renewal fee has not been received from him in the Registry before the end of the prescribed period and before the framing of the notification and requiring the proprietor of a patent in force by virtue of section 117(3) to furnish to the Registrar —

Subject to this section and to 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 he thinks fit.

No such amendment shall be 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.

An amendment of a specification of a patent under this section shall have effect and be deemed always to have had effect from the grant of the patent.

A person may give notice to the Registrar of his opposition to an application under this section by the proprietor of a patent, and if he does so the Registrar shall notify the proprietor and consider the opposition in deciding whether to grant the application.

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.

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; and where the patent was held by two or more persons jointly, the application may, with the leave of the Registrar, be made by one or more of them without joining the others.

Notice of the application shall be published by the Registrar in the prescribed manner.

If the Registrar is satisfied that the proprietor of the patent took reasonable care to see that any renewal fee was paid within the prescribed period or that that fee and any prescribed additional fee were paid within the 6 months immediately following the end of that period, the Registrar shall 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 provisions 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 he thinks fit.

The effect of an order for the restoration of a patent shall be as provided in subsections (7) to (11).

Anything done under or in relation to the patent during the period between expiry and restoration shall be treated as valid.

Anything done during that period which would have constituted an infringement if the patent had not expired shall be treated as an infringement —

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 —

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 (9) may —

Where a product is disposed of to another in exercise of the rights conferred by subsection (9) or (10), 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 (7) to (11) shall apply in relation to the use of a patent for the services of the Government as they apply in relation to infringement of the patent.

The proprietor of a patent may at any time by notice given to the Registrar offer to surrender his patent.

A person may give notice to the Registrar of his opposition to the surrender of a patent under this section, and if he does so the Registrar shall notify the proprietor of the patent and determine the question.

If the Registrar is satisfied that the patent may properly be surrendered, he may accept the offer and, as from the date when notice of his acceptance is published in the journal, the patent shall cease 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 for the services of the Government.

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.

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

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

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 —

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

Any of the following transactions, that is to say —

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 64 for a previous act.

There shall be kept at the Registry a register of patents which shall comply with the rules made by virtue of this section and shall be kept in accordance with such rules.

Without prejudice to 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:

Notwithstanding anything in subsection (2)(b), no notice of any trust, whether express, implied or constructive, shall be entered in the register and the Registrar shall not be affected by any such notice.

The register need not be kept in documentary form.

Subject to the rules, the public shall have a right to inspect the register at the Registry at all convenient times.

Any person who applies for a certified copy of an entry in the register or a certified extract from the register shall be entitled to obtain such a copy or extract on payment of a fee prescribed in relation to certified copies and extracts; and the rules may provide that any person who applies for an uncertified copy or extract shall be entitled to such a copy or extract on payment of a fee prescribed in relation to uncertified copies and extracts.

Applications under subsection (6) or the rules made by virtue of that subsection shall be made in such manner as may be prescribed.

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

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 shall be 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 —

Subsection (1) shall apply 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.

This section shall apply to the following transactions, instruments and events:

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 shall be treated as registration of the transaction, instrument or event.

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.

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.

The register shall be prima facie evidence of anything required or authorised by this Act or the rules to be registered.

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

Each of the following, that is to say —

In this section, “certified copy” and “certified extract” mean a copy and an extract certified by the Registrar and sealed with the seal of the Registry.

Where a patent is granted to two or more persons, each of them shall, subject to any agreement to the contrary, be entitled to an equal undivided share in the patent.

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

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

Subject to sections 20 and 47 where two 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 shall not amount to an infringement of the patent.

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

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

This section shall have effect in relation to an application for a patent which is filed as it has effect in relation to a patent and —

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 —

Without prejudice to the generality of subsection (1), an order under that subsection may contain provision —

If any person to whom directions have been given 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 him by any person in whose favour or on whose reference the order containing the directions was made, authorise him to do that thing on behalf of the person to whom the directions were given.

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 (whether 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 his successor in title may, subject to section 84, make a new application for a patent —

On any reference under subsection (1), no order shall 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 no order shall be made under subsection (4) on that ground if the reference was made after the end of the period of two 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 him that he was not entitled to the patent.

An order under this section shall 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.

Where a question is referred to the Registrar under this section, an order shall 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.

If it appears to the Registrar on a reference under this section that the question referred to him would more properly be determined by the court, he 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 shall have jurisdiction to do so.

The court shall not in the exercise of any such declaratory jurisdiction determine a question whether a patent was granted to a person not entitled to be granted the patent if the proceedings in which the jurisdiction is invoked were commenced after the end of the period of two 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 him that he was not entitled to the patent.

Where an order is made under section 47 that a patent shall 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 shall, subject to section 43 and to the provisions of the order, continue in force and be treated as granted by the person or persons to whom the patent is ordered to be transferred (the new proprietor or proprietors).

Where an order is so made that a patent shall 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 shall, 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.

Where an order is so made that a patent shall be transferred as mentioned in subsection (2) or that 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, worked the invention in question in Singapore or 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.

Any such licence shall be granted for a reasonable period and on reasonable terms.

The new proprietor or proprietors of the patent or any person claiming that he 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, and the Registrar shall determine the question and may, if he considers it appropriate, order the grant of such a licence.

Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, be taken to belong to his employer for the purposes of this Act and all other purposes if —

Any other invention made by an employee shall, as between him and his employer, be taken for those purposes to belong to the employee.

Where by virtue of this section an invention belongs, as between him and his employer, to an employee, nothing done —

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.

This Part shall not apply to an invention made before the appointed day.

This Part shall not apply to an invention made by an employee unless at the time he made the invention one of the following conditions was satisfied in his case:

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

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.

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

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.

Where an application under subsection (1) is made, the Registrar shall 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, shall make that entry.

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

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

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; and if the proprietor refuses or neglects to do so within two months after being so requested, the licensee may institute proceedings for the infringement in his own name as if he were the proprietor, making the proprietor a defendant.

A proprietor so added as defendant shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings.

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.

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.

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.

Where the Registrar is satisfied, on an application under subsection (3), that the proprietor of the patent is and was so precluded, he shall cancel the entry; and the proprietor shall then be liable to pay, within a period specified by the Registrar, 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 shall cease to have effect at the expiration of that period if that sum is not so paid.

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

Where an application has been made under this section —

At any time after the expiration of 3 years, or of such other period as may be prescribed, from the date of the grant of a patent, any person may apply to the Registrar —

The grounds referred to in subsection (1) are —

Subject to subsections (4) to (6), if the Registrar is satisfied that any of those grounds under subsection (2) are established, he may —

Where the application is made on the ground that there is no production of the patented product or application of the patented process or there is insufficient or no product produced under the patent for sale in Singapore, and it appears to the Registrar that the time which has elapsed since the publication in the journal of a notice of the grant of the patent has for any reason been insufficient to enable the invention to be so worked, he may by order adjourn the application for such period as will in his opinion give sufficient time for the invention to be so worked.

No entry shall be made in the register under this section on the ground mentioned in subsection (2)(c)(i), and any licence granted under this section on that ground shall contain such provisions as appear to the Registrar to be expedient for restricting the countries in which any product concerned may be disposed of or used by the licensee.

No order or entry shall be made under this section in respect of a patent on the ground mentioned in subsection (2)(c)(ii) unless the Registrar is satisfied that the proprietor of the patent for the other invention is able and willing to grant to the proprietor of the patent and his licensees a licence under the patent for the other invention on reasonable terms.

An application may be made under this section in respect of a patent notwithstanding that the applicant is already the holder of a licence under the patent; and no person shall be estopped or barred from alleging any of the matters specified in subsection (2) by reason of any admission made by him, whether in such a licence or otherwise, or by reason of his having accepted such a licence.

At any time after the date of the grant of a patent in respect of —

A licence granted under this section shall entitle the licensee to make, use or dispose of the invention as a food or medicine, or for the purpose of the production of food or medicine or as part of a surgical or curative device.

An application under this section may be made notwithstanding that the applicant is already the holder of a licence under the patent.

A licence granted under this section and section 55 may permit the licensee to import the patented product.

Where the Registrar is satisfied, on an application made under section 55 or 56 in respect of a patent, that the manufacture, use or disposal of materials not protected by the patent is unfairly prejudiced by reason of conditions imposed by the proprietor of the patent on the grant of licences under the patent, or on the disposal or use of the patented product or the use of the patented process, he may, subject to those sections, order the grant of licences under the patent to such customers of the applicant as he thinks fit as well as to the applicant.

Where an application under section 55 or 56 is made in respect of a patent by a person who holds a licence under the patent, the Registrar may —

Section 53(5) and (6) shall apply to a licence granted in pursuance of an order under section 55 or 56 and to a licence granted by virtue of an entry under section 55 as it applies to a licence granted by virtue of an entry under section 53.

The powers of the Registrar on an application under section 55 in respect of a patent shall be exercised with a view to securing the following general purposes:

Subject to subsection (1), the Registrar shall, in determining whether to make an order or entry in pursuance of such an application, take account of the following matters:

The proprietor of a patent or any other person wishing to oppose an application under sections 55 to 58 may, in accordance with the rules, give to the Registrar notice of opposition; and the Registrar shall consider the opposition in deciding whether to grant the application.

Where an appeal is brought from an order made by the Registrar in pursuance of an application under sections 55 to 58 or from a decision of his to make an entry in the register in pursuance of such an application or from a refusal of his to make such an order or entry, the Attorney-General, or such other counsel as he may appoint, shall be entitled to appear and be heard.

Where an application under sections 55 to 58 is opposed under subsection (1), and either —

The arbitrator to whom any reference is made under subsection (3) shall report his findings to the Registrar.

The expenses of and incidental to a reference to an arbitrator under subsection (3) shall, in default of agreement between the parties, be borne equally by the parties to the reference.

The Registrar may make an entry in the register under sections 55 to 58 notwithstanding any contract which would have precluded the entry on the application of the proprietor of the patent under section 53.

An entry made in the register under sections 55 to 58 shall for all purposes have the same effect as an entry made under section 53.

Where a licence has been granted under section 53, 55 or 56 and the proprietor of the patent and the licensee are unable to agree within a reasonable time on the amount of royalty or compensation to be reserved to the proprietor of the patent, the Registrar shall determine the royalty or compensation payable.

No order or entry shall be made in pursuance of an application under sections 55 to 58 which would be at variance with any treaty or international convention relating to patents to which Singapore is a party.

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:

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.

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.

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 —

The arbitrator to whom any reference is made under subsection (4) shall report his findings to the Registrar.

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.

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 —

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.

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.

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.

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 —

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.

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.

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.

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 —

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.

Subsection (4) is without prejudice to any rule of law relating to the confidentiality of information.

Any reference in section 61 to a patented invention, in relation to any time, is a reference to an invention for which a patent has before that time been, or is subsequently, granted.

In this Part, unless the context otherwise requires, “the services of the Government” includes —

In subsection (2)(a) and section 61(1)(a), references to a sale or supply of anything for foreign defence purposes are references to a sale or supply of the thing —

In relation to —

Subsection (1) shall apply to a licence, assignment or agreement which is made, whether before or after the appointed day, 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 a Government department.

Where an exclusive licence granted otherwise than for royalties or other benefits determined by reference to the working of the invention is in force under the patent or application, then —

Subject to subsection (3), where a patent, or the right to the grant of a patent, has been assigned to the proprietor of the patent or application in consideration of royalties or other benefits determined by reference to the working of the invention, then —

Where section 61(4) applies to any use of an invention and a person holds an exclusive licence under the patent or application (other than such a licence as is mentioned in subsection (3)) authorising him to work the invention, then subsections (7) and (8) shall apply.

In subsections (7) and (8), “the section 61(4) payment” means such payment, if any, as the proprietor of the patent or application and the Government department agree under section 61, or the Registrar determines under that section, should be made by the department to the proprietor in respect of the use of the invention.

The licensee shall be entitled to recover from the proprietor of the patent or application such part, if any, of the section 61(4) payment as may be agreed on by them or as may, in default of agreement, be determined by the court under section 64 to be just having regard to any expenditure incurred by the licensee —

Any agreement by the proprietor of the patent or application and the Government department under section 61(4) as to the amount of the section 61(4) payment shall be of no effect unless the licensee consents to the agreement; and any determination by the Registrar under section 61(4) as to the amount of that payment shall be of no effect unless the licensee has been informed of the reference to the Registrar and is given an opportunity to be heard.

Where any model, document or information relating to an invention is used in connection with any use of the invention which falls within subsection (1)(a), or with anything done in respect of the invention which falls within subsection (1)(b), section 61(4) shall (whether or not it applies to any such use of the invention) apply to the use of the model, document or information as if for the reference in it to the proprietor of the patent there were substituted a reference to the person entitled to the benefit of any provision of an agreement which is rendered inoperative by this section in relation to that use; and in section 61 the references to terms for the use of an invention shall be construed accordingly.

Nothing in this section shall be construed as authorising the disclosure to a Government department or any other person of any model, document or information to the use of which this section applies in contravention of any such licence, assignment or agreement as is mentioned in this section.

Any dispute as to —

If in such proceedings any question arises whether an invention has been recorded or tried as mentioned in section 61, and the disclosure of any document recording the invention, or of any evidence of the trial thereof, would in the opinion of the Government department be prejudicial to the public interest, the disclosure may be made confidentially to counsel for the other party or to an independent expert mutually agreed upon.

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 for the services of the Government.

Where in any such proceedings it is found that a patent is only partially valid, the court shall not 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.

As a condition of any such relief, the court may direct that the specification of the patent shall 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.

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 shall be construed accordingly.

One of the two or more joint proprietors of a patent or application for a patent may without the concurrence of the others refer a dispute to the court under this section, but shall 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 he enters an appearance and takes part in the proceedings.

During any period of emergency within the meaning of this section, the powers exercisable in relation to an invention by a Government department or a person authorised by a Government department under section 61 shall include power to use the invention for any purpose which appears to the department necessary or expedient —

In this section, the use of an invention includes, in addition to any act constituting such use by virtue of section 61, any act which would, apart from that section and this section, amount to an infringement of the patent or, as the case may be, give rise to a right under section 76 to bring proceedings in respect of the application, and any reference in this Act to “use for the services of the Government” shall, as respects any period of emergency, be construed accordingly.

In this section, “period of emergency” means any period beginning with such date as may be declared by the Minister by order published in the Gazette to be the commencement, and ending with such date as may be so declared to be the termination, of a period of emergency for the purposes of this section.

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, he does any of the following things in Singapore in relation to the invention without the consent of the proprietor of the patent:

An act which, apart from this subsection, would constitute an infringement of a patent for an invention shall not do so if —

In this section, “relevant ship” and “relevant aircraft, hovercraft or vehicle” mean respectively a ship and an aircraft, hovercraft or vehicle registered in, or belonging to, any country other than Singapore which is a party to the Paris Convention; and “exempted aircraft” means an aircraft to which section 5 of the Air Navigation Act [Cap. 6] applies.

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 —

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

The proprietor of a patent and any other person may by agreement with each other refer to the Registrar the question whether that other person has infringed the patent and on the reference, the proprietor of the patent may make any claim mentioned in subsection (1)(c) or (e).

In this Act, unless the context otherwise requires —

If it appears to the Registrar on a reference under subsection (3) that the question referred to him would more properly be determined by the court, he may decline to deal with it and the court shall have jurisdiction to determine the question as if the reference were proceedings brought in the court.

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 or the Registrar shall apply the principles applied by the court in relation to that kind of relief immediately before the appointed day.

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 shall be 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.

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

In proceedings for infringement of a patent, damages shall not be awarded and no order shall be made for an account of profits against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that the patent existed; and a person shall not be taken to have been so aware or to have had reasonable grounds for so 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.

In proceedings for infringement of a patent the court or the Registrar may, if it or he thinks fit, refuse to award any damages or make any such order in respect of an infringement committed 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 subsection.

Where an amendment of the specification of a patent has been allowed under any of the provisions of this Act, no damages shall be awarded in proceedings for an infringement of the patent committed before the decision to allow the amendment unless the court or the Registrar is satisfied that the specification of the patent as published was framed in good faith and with reasonable skill and knowledge.

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 or the Registrar may, subject to subsection (2), grant relief in respect of that part of the patent which is found to be valid and infringed.

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

As a condition of relief under this section, the court or the Registrar may direct that the specification of the patent shall be amended to its or his 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.

Where a patent is granted for an invention, a person who in Singapore before the priority date of the invention —

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 —

Where a product is disposed of to another in exercise of the rights conferred by subsection (1) or (2), 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.

If 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.

Where a certificate is granted under this section, then, if in any subsequent proceedings before the court or the Registrar for infringement of the patent or 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 shall, unless the court or the Registrar otherwise directs, be entitled to his costs or expenses as between solicitor and own client other than the costs or expenses of any appeal in the subsequent proceedings.

In the application of section 66 to a patent of which there are two or more joint proprietors, the reference to the proprietor shall be construed —

One of two 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 shall 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 he enters an appearance and takes part in the proceedings.

Subject to this section, the holder of an exclusive licence under a patent shall have 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 shall be construed accordingly.

In awarding damages or granting any other relief in any such proceedings, the court or the Registrar shall 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.

In any proceedings taken by an exclusive licensee by virtue of this section, the proprietor of the patent shall be made a party to the proceedings, but if made a defendant shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings.

Where an application for a patent for an invention is published, then, subject to this section, the applicant shall have, as from the publication and until the grant of the patent, the same right as he would have had, if the patent had been granted on the date of the publication of the application, to bring proceedings in the court or before the Registrar for damages in respect of any act which would have infringed the patent; and references in sections 66 to 69 and 73 to 75 to a patent and the proprietor of a patent shall 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 shall be construed accordingly.

The applicant shall be entitled to bring proceedings by virtue of this section in respect of any act only —

Section 69(2) and (3) shall 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 or the Registrar 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 from an act of the same description as that found to infringe those rights, and if the court or the Registrar finds that it would not have been reasonable, it or he shall reduce the damages to such an amount as it or he thinks just.

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 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).

In any such proceedings, the plaintiff shall, if he proves that the threats were so made and satisfies the court that he is a person aggrieved by them, be entitled to the relief claimed unless —

The said relief is —

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.

It is hereby declared that a mere notification of the existence of a patent does not constitute a threat of proceedings within the meaning of this section.

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 or the Registrar in proceedings between the person doing or proposing to do the act and the proprietor of the patent, notwithstanding that no assertion to the contrary has been made by the proprietor, if it is shown —

A declaration made by the Registrar under this section shall have the same effect as a declaration by the court.

The Registrar may, on the application of any interested person and on the payment of the prescribed fee, request the proprietor of a patent to furnish to the Registrar, within such period as the Registrar may specify, the prescribed information on all corresponding international applications or corresponding applications for a patent made by him or his predecessor in title at any prescribed patent office with respect to which details had been furnished to the Registrar under section 29(1)(c).

Where the proprietor of a patent has furnished the prescribed information under subsection (1) or where such information is available at the Registry, the Registrar shall as soon as practicable send to the interested person the prescribed information so furnished or available.

Where the proprietor of a patent fails without good cause to comply with the request of the Registrar under subsection (1), the Registrar may by order revoke the patent with effect from the date of the grant of the patent.

For the purpose of this section, “corresponding international application” and “corresponding application” have the same meanings as in section 29(9).

Subject to the provisions of this Act, the Registrar may, on the application of any person, by order revoke a patent for an invention on (but only on) any of the following grounds:

On the application of any person for an order to revoke a patent on any of the grounds specified in subsection (1)(a), (c), (d) and (e), the Registrar may, subject to subsections (3) and (4), cause the patent to be re-examined by an Examiner so as to determine whether the patent should be revoked on any of those grounds and require the applicant to pay the prescribed re-examination fee.

The Registrar shall not cause a patent to be re-examined under subsection (2) where, within the prescribed period, the applicant for the revocation of the patent fails to give such security for the costs or expenses of the proceedings as the Registrar may specify; in which case, the application for revocation shall be treated as having been abandoned.

An application for the revocation of a patent on the ground mentioned in subsection (1)(b) —

An order under this section may be —

A decision of the Registrar or on appeal from the Registrar shall 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 referred to in subsection (1), whether or not any of the issues involved were decided in the decision.

An order under this section revoking a patent shall have effect from the date of the grant of the patent.

Where an applicant for the revocation of a patent discontinues or withdraws his application, he shall pay such costs or expenses of the proceedings as the Registrar may determine.

An application for an order to revoke a patent shall be —

Section 93 shall not apply in relation to the decision of the Registrar to cause a patent to be re-examined under this section.

Subject to this section, the validity of a patent may be put in issue —

The validity of a patent may not be put in issue in any other proceedings and, in particular, no proceedings may be instituted (whether under this Act or otherwise) seeking only a declaration as to the validity or invalidity of a patent.

The only grounds on which the validity of a patent may be put in issue (whether in proceedings for revocation under section 80 or otherwise) are the grounds on which the patent may be revoked under that section.

No determination shall be made in any proceedings mentioned in subsection (1) on the validity of a patent which any person puts in issue on the ground mentioned in section 80(1)(b) unless —

Where the validity of a patent is put in issue by way of defence or counterclaim, the court or the Registrar shall, if it or he thinks it just to do so, give the defendant an opportunity to comply with the condition in subsection (4)(a).

In subsection (4), “entitlement proceedings”, in relation to a patent, means a reference under section 47(1) on the ground that the patent was granted to a person not entitled to it or proceedings for a declaration that it was so granted.

Where proceedings with respect to a patent are pending in the court under any provision of this Act mentioned in subsection (1), no proceedings may be instituted without the leave of the court before the Registrar with respect to that patent under section 67(3), 76, 78 or 80.

It is hereby declared that for the purposes of this Act the validity of a patent is not put in issue merely because the Registrar is considering its validity in order to decide whether to revoke it under section 81.

In any proceedings before the court or the Registrar in which the validity of a patent is put in issue, the court or, as the case may be, the Registrar may, subject to section 84, allow the proprietor of the patent to amend the specification of the patent in such manner, and subject to such terms as to the publication and advertisement of the proposed amendment and as to costs, expenses or otherwise, as the court or Registrar thinks fit.

A person may give notice to the court or the Registrar of his opposition to an amendment proposed by the proprietor of the patent under this section, and if he does so the court or the Registrar shall notify the proprietor and consider the opposition in deciding whether the amendment or any amendment should be allowed.

An amendment of a specification of a patent under this section shall have effect and be deemed always to have had effect from the grant of the patent.

Where an application for an order under this section is made to the court, the applicant shall notify the Registrar, who shall be entitled to appear and be heard and shall appear if so directed by the court.

An application for a patent which —

No amendment of an application for a patent shall be allowed under section 31 if it results in the application disclosing any matter extending beyond that disclosed in the application as filed.

No amendment of the specification of a patent shall be allowed under section 38(1), 81 or 83 if it —

An international application for a patent (Singapore) for which a date of filing has been accorded under the Patent Co-operation Treaty shall, subject to sections 86 and 87, be treated for the purposes of this Act as an application for a patent under this Act.

If the application, or the designation of Singapore in it, is withdrawn or (except as mentioned in subsection (3)) deemed to be withdrawn under the Patent Co-operation Treaty, it shall be treated as withdrawn under this Act.

An application shall not be treated as withdrawn under this Act if it, or the designation of Singapore in it, is deemed to be withdrawn under the Patent Co-operation Treaty —

If an international application for a patent which designates Singapore is refused a filing date under the Patent Co-operation Treaty and the Registrar determines that the refusal was caused by an error or omission in an institution having functions under that Treaty, he may direct that the application shall be treated as an application under this Act, having such date of filing as he may direct.

The Registry shall act as a receiving Office under Article 2 of the Patent Co-operation Treaty in respect of international applications filed by citizens of Singapore or persons resident in Singapore.

The prescribed transmittal fee, in addition to the fees prescribed by the Patent Co-operation Treaty, shall be paid to the Registry by any person filing an international application under that Treaty.

The provisions of the Patent Co-operation Treaty relating to publication, search, examination and amendment, and not those of this Act, apply to an international application for a patent (Singapore) during the international phase of the application.

The international phase of the application means the period from the filing of the application in accordance with the Patent Co-operation Treaty until the national phase of the application begins.

The national phase of the application begins —

For the purpose of subsection (3), a “copy of the application” includes a copy published in accordance with the Patent Co-operation Treaty in a language other than that in which it was originally filed.

If the prescribed period expires without the conditions mentioned in subsection (3)(a) being satisfied, the application shall be taken to be withdrawn.

Where during the international phase the application is amended in accordance with the Patent Co-operation Treaty, the amendment shall be treated as made under this Act if —

The Registrar shall on payment of the prescribed fee publish any translation filed at the Registry under subsection (3) or (6).

Where an international application for a patent (Singapore) is accorded a filing date under the Patent Co-operation Treaty —

If the application, not having been published under this Act, is published in accordance with the Patent Co-operation Treaty it shall be treated, for purposes other than those mentioned in subsection (3), as published under section 27 when the conditions mentioned in section 86(3)(a) are complied with.

For the purposes of section 61 (use of invention for service of the Government) and section 76 (infringement of rights conferred by publication) the application, not having been published under this Act, shall be treated as published under section 27 —

The reference in subsection (3)(b)(ii) to the service of a translation on a Government department or other person is to its being sent by post or delivered to that department or person.

During the international phase of the application, section 20 does not apply (determination of questions of entitlement in relation to application under this Act); but after the end of the international phase, that section shall apply.

Judicial notice shall be taken of the Patent Co-operation Treaty and any gazette, bulletin or journal published under the Treaty; and any such document shall be admissible as evidence of any instrument or other act thereby communicated of any institution having functions under the Treaty.

Evidence of any instrument issued under the Patent Co-operation Treaty by any institution or of any document in the custody of any institution or reproducing in legible form any information in such custody otherwise than in legible form, or any entry or extract from such a document, may be given in any legal proceedings by production of a copy certified as a true copy by an official of that institution; and any document purporting to be such a copy shall be received in evidence without proof of the official position or handwriting of the person signing the certificate.

Evidence of any instrument mentioned in subsection (2) may also be given in any legal proceedings —

In this section, “legal proceedings” includes proceedings before the Registrar.

The Minister may, with a view to the fulfilment of any treaty, convention, arrangement or engagement, by order published in the Gazette declare that any country specified in the order is a convention country for the purposes of section 17.

For the purposes of this section, every colony, protectorate and territory subject to the authority or under the suzerainty of another country, and every territory administered by another country under the trusteeship system of the United Nations shall be taken to be a country in the case of which a declaration may be made under this section.

Any proceedings before the court relating to patents and other matters under this Act shall be dealt with by a judge sitting alone or, if he thinks fit, with one or more scientific advisers selected by the judge from the panel appointed under subsection (2).

Rules under this Act may make provision for the appointment of a panel of scientific advisers to assist the court and the Registrar in proceedings under this Act, for regulating the functions of such advisers and for remunerating such advisers.

An appeal shall lie to the court from any decision of the Registrar under this Act or the rules except any of the following decisions:

For the purpose of hearing appeals under this section, the court may consist of one or more judges of the court in accordance with directions given by or on behalf of the Chief Justice.

An appeal shall not lie to the Court of Appeal from a decision of the court on appeal from a decision of the Registrar under this Act or the rules —

The court may, for the purpose of determining any question in the exercise of its original or appellate jurisdiction under this Act, make any order or exercise any other power which the Registrar could have made or exercised for the purpose of determining that question.

In all proceedings before the court under this Act, the costs of the Registrar shall be in the discretion of the court, but the Registrar shall not be ordered to pay the costs of any other of the parties.

Any party to any proceedings before the Registrar under this Act or any treaty to which Singapore is a party may appear before the Registrar in person or be represented by an advocate and solicitor or a registered patent agent or, subject to section 105, by any other person whom he desires to represent him.