Singapore legislation
Regulation 51A
Regulation 51A
Extension of term of patent
Subregulation 1
For the purposes of section 36A(10), an application to extend the term of a patent under section 36A(1)(a) or (b) shall be —
made on Patents Form 54 within 6 months from the date of the grant of the patent; and
accompanied by —
the prescribed fee; and
all documentary evidence which the applicant wishes to rely on to support the application.
Subregulation 2
For the purposes of section 36A(10), an application to extend the term of a patent under section 36A(1)(c) shall be —
made on Patents Form 54 —
within 6 months from —
the date of the grant of the patent; or
the date marketing approval was obtained,whichever is the later;
not later than 6 months before the end of the period of 20 years referred to in section 36(1); and
in any case, while the patent is still in force; and
accompanied by —
the prescribed fee;
a certificate under section 36A(7); and
all other documentary evidence which the applicant wishes to rely on to support the application.
Subregulation 3
Notwithstanding paragraph (1)(b) or (2)(b) —
the Registrar may by letter direct an applicant for an extension of the term of a patent to furnish to the Registrar, within 2 months after the date of the Registrar’s letter, such additional evidence in support of the application as the Registrar may reasonably require; and
if the applicant fails to comply with the Registrar’s direction under sub-paragraph (a), the application for the extension of the term of the patent shall be treated as having been abandoned.
Subregulation 4
A certificate of extension of patent term under section 36A(11) shall be in Certificate Form 2.
Subregulation 5
For the purposes of section 36A(2), a delay by the Registrar in granting a patent shall not be treated as an unreasonable delay under section 36A(1)(a) unless —
the interval between the date of filing of the application for the patent and the date of issue of the certificate of grant, excluding any period attributable to an act or omission of the applicant, exceeds 4 years; or
the interval between the date on which the applicant —
filed a request for a search and examination report in accordance with section 29(1)(b); or
filed a request for an examination report in accordance with section 29(1)(c) or (3),and the date of issue of the certificate of grant, excluding any period attributable to an act or omission of the applicant, exceeds 2 years.
Subregulation 6
For the purposes of section 36A(3), where the proprietor of a patent has made an application under section 36A(1)(a) and has satisfied the Registrar that there was in fact an unreasonable delay by the Registrar in granting the patent, the Registrar shall extend the term of the patent —
in a case to which paragraph (5)(a) applies, by the period by which the interval referred to in paragraph (5)(a) exceeds 4 years;
in a case to which paragraph (5)(b) applies, by the period by which the interval referred to in paragraph (5)(b) exceeds 2 years; or
in a case to which both sub-paragraphs (a) and (b) of paragraph (5) apply, by the longer of the following periods:
the period by which the interval referred to in paragraph (5)(a) exceeds 4 years;
the period by which the interval referred to in paragraph (5)(b) exceeds 2 years.
Subregulation 7
For the purposes of section 36A(5), a curtailment of the opportunity to exploit a patent, the subject of which includes a substance which is an active ingredient of any pharmaceutical product, caused by the process of obtaining marketing approval for a pharmaceutical product, being the first pharmaceutical product to obtain marketing approval which uses the substance as an active ingredient, shall not be treated as an unreasonable curtailment under section 36A(1)(c) unless —
the marketing approval was obtained after the date of issue of the certificate of grant; and
the interval between the date the application for marketing approval was filed and the date marketing approval was obtained, excluding any period attributable to an act or omission of the applicant for marketing approval, exceeds 2 years.
Subregulation 8
For the purposes of section 36A(6), subject to section 36A(7), (8) and (9), where the proprietor of a patent has made an application under section 36A(1)(c) and has satisfied the Registrar that there was in fact an unreasonable curtailment of the opportunity to exploit the patent under section 36A(1)(c), the Registrar shall extend the term of the patent by the shortest of the following periods:
a period equivalent to the interval between the date of issue of the certificate of grant and the date marketing approval was obtained;
the period by which the interval referred to in paragraph (7)(b) exceeds 2 years;
a period of 5 years.
Subregulation 9
For the purposes of section 36A(7), the Registrar shall not extend the term of the patent under section 36A(6) unless the applicant has procured and submitted to the Registrar a certificate from the relevant authority stating —
the date the application for marketing approval was filed;
the date marketing approval was obtained; and
for each period attributable to an act or omission of the applicant for marketing approval, the dates on which the period started and ended.
Subregulation 10
In paragraph (5), “period attributable to an act or omission of the applicant” includes (without prejudice to the generality of the expression) any of the following periods which is applicable:
the period taken by the applicant to pay the filing fee under section 25(1)(b), calculated from the date of filing of the application for the patent to the date on which the filing fee is paid;
the period taken by the applicant to make observations under section 26(3)(b)(i) which satisfy the Registrar that the documents filed at the Registry to initiate the application satisfy all of the conditions in section 26(1)(a), (b) and (c)(i) or (ii), calculated from the date of the Registrar’s notification to the applicant under section 26(3)(a) to the date on which the applicant makes the observations;
the period taken by the applicant to file the documents referred to in section 26(7)(a), (b) and (c), calculated from the date of filing of the application for a patent to the date on which the applicant files the documents;
the period taken by the applicant to comply with section 26(9)(b), if the applicant, after filing at the Registry any missing part of the application, makes a request to the Registrar for section 26(8)(b) not to apply to the application, calculated from the date on which the applicant filed at the Registry the missing part of the application to the date on which the applicant complies with section 26(9)(b);
the period taken by the applicant to make a new application for a patent under section 26(11)(a), calculated from the date of filing of the earlier application for a patent referred to in section 26(11) to the date on which the new application is made;
the period taken by the applicant to file one or more claims for the purposes of the application under section 26(12)(a), calculated from the date of filing of the application for the patent to the date on which the applicant files the claim or claims;
the period taken by the applicant to —
make observations under section 28(4)(a) which satisfy the Registrar that all the formal requirements have been complied with; or
amend his application under section 28(4)(b) to comply with all the formal requirements,calculated from the date of the Registrar’s notification under section 28(4) to the date on which the applicant makes the observations or the earliest date on which the application, as amended by the applicant, complies with all the formal requirements;
the period taken by the applicant to comply with section 28(9)(b), if the applicant, after filing any drawing or part of the description of the invention which is missing from the application, makes a request to the Registrar for section 28(8)(b) not to apply to the application, calculated from the date of the Registrar’s notification under section 28(7) to the date on which the applicant complies with section 28(9)(b);
the period taken by the applicant to —
file a request for a search report under section 29(1)(a) and pay the prescribed fee for that report; or
file a request for a search and examination report under section 29(1)(b) and pay the prescribed fee for that report,calculated from the date of the Registrar’s notification under section 28(11) to the date on which the applicant files the request and pays the fee;
the period taken by the applicant to file the prescribed documents and a request for an examination report under section 29(1)(c) and pay the prescribed fee for that report, calculated from the date of the Registrar’s notification under section 28(11) to the date on which the applicant files the documents and request and pays the fee;
the period taken by the applicant to file the prescribed documents and a request for a supplementary examination report under section 29(1)(d) and pay the prescribed fee for that report, calculated from the date of the Registrar’s notification under section 28(11) to the date on which the applicant files the documents and request and pays the fee;
the period taken by the applicant to file a request for an examination report under section 29(3), calculated from the date of the Registrar’s letter forwarding a copy of the search report under section 29(2)(b) to the date on which the applicant files the request;
(la)the period taken by the applicant to respond to an invitation to amend, calculated from the date the invitation is given to the date on which the applicant responds to the invitation (whether by amending the specification of the application or by rejecting the invitation), or the last day of the period prescribed under section 29(7C), whichever is earlier;
the period taken by the applicant to respond to a written opinion under section 29(9)(a), calculated from the date of the Registrar’s letter forwarding a copy of the written opinion under section 29(7) or (8) to the date on which the applicant responds to the written opinion;
the period taken by the applicant to amend the specification of the application under section 29(9)(b), calculated from the date of the Registrar’s letter forwarding a copy of the written opinion under section 29(7) or (8) to the date on which the applicant makes the amendment;
the period taken by the applicant to apply for a review of the examination report, search and examination report or supplementary examination report under section 29A(4)(a), calculated from the date of the Registrar’s notice under section 29A(3) to the date on which the applicant files the request;
the period taken by the applicant to amend the specification of the application under section 29B(2), calculated from the date of the Registrar’s notice under section 29A(3) to the date on which the applicant makes the amendment;
the period taken by the applicant to satisfy the conditions under section 30(a) and (c), calculated from the date of the notice of eligibility to proceed to the grant of a patent under section 29A(1) or 29B(5)(b)(i) that is received by the applicant to the date on which the applicant satisfies the conditions under section 30(a) and (c);
where the application is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3), the period taken by the applicant to cause the application to enter the national phase in Singapore, calculated from the date of the filing of the application in accordance with the Patent Co-operation Treaty to the date on which the national phase of the application begins under section 86(3);
the period taken by the applicant to rectify any failure to comply with any requirement under the Act or these Rules, such period —
to be calculated from the date by which the applicant is required to comply with the requirement to the date on which the applicant rectifies the failure to comply with the requirement; and
to include any period taken by the Registrar or the Registry to detect or to notify the applicant of the applicant’s failure to comply with the requirement;
the period taken by the applicant to respond to any request by the Registrar for any document, information or evidence, calculated from the date of the Registrar’s notification to the applicant of the request to the date on which the applicant responds to the request;
any extension or alteration of any period to do any thing that is granted by the Registrar or the court at the request or on the application of the applicant.
Subregulation 11
In paragraphs (7) and (9), “period attributable to an act or omission of the applicant for marketing approval” includes (without prejudice to the generality of the expression) —
the period taken by the applicant for marketing approval to correct deficiencies in his application for marketing approval, calculated from the date of the relevant authority’s notification to the applicant for marketing approval of the deficiencies to the date on which the applicant for marketing approval corrects the deficiencies;
the period taken by the applicant for marketing approval to respond to any request by the relevant authority for clarification or information, calculated from the date of the relevant authority’s request to the date on which the relevant authority receives the response of the applicant for marketing approval; and
any extension of any period to do any thing that is granted by the relevant authority at the request or on the application of the applicant for marketing approval.