Singapore legislation
Clause 63
of Patents Bill
Clause 63
Rights of third parties in respect of Government use
(1)
In relation to —
any use made for the services of the Government of an invention by a Government department, or a person authorised by a Government department, by virtue of section 61; or
anything done for the services of the Government to the order of a Government department by the proprietor of a patent in respect of a patented invention or by the proprietor of an application in respect of an invention for which an application for a patent has been filed and is still pending,the provisions of any licence, assignment or agreement to which this subsection applies shall be of no effect so far as those provisions restrict or regulate the working of the invention, or the use of any model, document or information relating to it, or provide for the making of payments in respect of, or calculated by reference to, such working or use; and the reproduction or publication of any model or document in connection with the said working or use shall not be deemed to be an infringement of any copyright or design right subsisting in the model or document.
(2)
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.
(3)
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 —
in relation to anything done in respect of the invention which, but for this section and section 61, would constitute an infringement of the rights of the licensee, section 61(4) shall have effect as if for the reference to the proprietor of the patent there were substituted a reference to the licensee; and
in relation to anything done in respect of the invention by the licensee by virtue of an authority given under section 61, that section shall have effect as if section 61(4) were omitted.
(4)
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 —
in relation to any use of the invention by virtue of section 61, subsection (4) of that section shall have effect as if the reference to the proprietor of the patent included a reference to the assignor, and any sum payable by virtue of that subsection shall be divided between the proprietor of the patent or application and the assignor in such proportion as may be agreed on by them or as may in default of agreement be determined by the court on a reference under section 64; and
in relation to any act done in respect of the invention for the services of the Government by the proprietor of the patent or application to the order of a Government department, section 61(4) shall have effect as if the act were use made by virtue of an authority given under that section.
(5)
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.
(6)
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.
(7)
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 —
in developing the invention; or
in making payments to the proprietor in consideration of the licence, other than royalties or other payments determined by reference to the use of the invention.
(8)
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.
(9)
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.
(10)
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.