46. Application for permission to amend specification (section 83)

Where the proprietor of a patent intends to apply under section 83 for permission to amend the proprietor’s specification —

the proprietor must give notice of the proprietor’s intention to the Registrar, together with a copy of an advertisement —

identifying the proceedings pending before the Court in which the proprietor intends to apply for such permission;

giving particulars of the amendment sought;

stating the applicant’s address for service within Singapore;

stating that a Statement of Reasons is available from that address; and

stating that any person intending to oppose the amendment must, within 28 days after the advertisement appears in the journal, give to the applicant —

written notice of that person’s intention; and

a Statement of Opposition; and

the Registrar must insert the advertisement once in the journal.

A person who gives notice in accordance with the advertisement is entitled to be heard on the application subject to any direction of the Court as to costs.

The proprietor must, at the same time as giving notice to the Registrar, serve on all parties to the proceedings —

a copy of the Statement of Reasons; and

a copy of the patent as proposed to be amended.

The Statement of Reasons must contain —

full particulars of the amendment sought;

the reasons for the amendment;

the reasons why the applicant contends that in the exercise of the discretion the amendment should be allowed; and

in particular —

a statement whether the amendment is by way of deletion of claims or re‑writing of claims;

insofar as the amendment involves re‑writing claims, details as to why the amendment is in accordance with the statutory requirements of an amendment; and

insofar as the amendment is sought to distinguish over prior art, an indication of the prior art.

The Statement of Opposition must contain full particulars of all grounds of opposition to the application to amend.

The proprietor must —

after the advertisement has appeared in the journal for 42 days, make the application under section 83 —

as soon as may be; and

by summons in the proceedings; and

serve the summons, together with a copy of the specification certified by the Registrar and showing in coloured ink the amendment sought, on —

the Registrar;

the parties to the proceedings; and

any person who has given notice of that person’s intention to oppose the amendment.

On the hearing of the summons, the Court must give directions for the further conduct of the summons as the Court thinks necessary or expedient, including directions relating to —

whether the summons is to be heard with the other proceedings relating to the patent in question or separately and, if separately, fixing the date of hearing thereof;

the manner in which the evidence is to be given;

if the evidence is to be given by affidavit, the times within which the affidavits must be filed; and

whether any production is necessary and, if so, the extent of production and the manner and time within which production is to be given.

Where the Court allows a specification to be amended —

the applicant must —

forthwith file a copy of the Court’s order with the Registrar; and

if required by the Court or the Registrar, leave at the Registry a new specification and drawings as amended, prepared in compliance with the Act; and

the Registrar must cause a copy of the Court’s order to be inserted at least once in the journal.

Where the proprietor of a patent intends to apply under section 83 for permission to amend the proprietor’s specification —

the proprietor must give notice of the proprietor’s intention to the Registrar, together with a copy of an advertisement —

identifying the proceedings pending before the Court in which the proprietor intends to apply for such permission;

giving particulars of the amendment sought;

stating the applicant’s address for service within Singapore;

stating that a Statement of Reasons is available from that address; and

stating that any person intending to oppose the amendment must, within 28 days after the advertisement appears in the journal, give to the applicant —

written notice of that person’s intention; and

a Statement of Opposition; and

the Registrar must insert the advertisement once in the journal.

A person who gives notice in accordance with the advertisement is entitled to be heard on the application subject to any direction of the Court as to costs.

The proprietor must, at the same time as giving notice to the Registrar, serve on all parties to the proceedings —

a copy of the Statement of Reasons; and

a copy of the patent as proposed to be amended.

The Statement of Reasons must contain —

full particulars of the amendment sought;

the reasons for the amendment;

the reasons why the applicant contends that in the exercise of the discretion the amendment should be allowed; and

in particular —

a statement whether the amendment is by way of deletion of claims or re‑writing of claims;

insofar as the amendment involves re‑writing claims, details as to why the amendment is in accordance with the statutory requirements of an amendment; and

insofar as the amendment is sought to distinguish over prior art, an indication of the prior art.

The Statement of Opposition must contain full particulars of all grounds of opposition to the application to amend.

The proprietor must —

after the advertisement has appeared in the journal for 42 days, make the application under section 83 —

as soon as may be; and

by summons in the proceedings; and

serve the summons, together with a copy of the specification certified by the Registrar and showing in coloured ink the amendment sought, on —

the Registrar;

the parties to the proceedings; and

any person who has given notice of that person’s intention to oppose the amendment.

On the hearing of the summons, the Court must give directions for the further conduct of the summons as the Court thinks necessary or expedient, including directions relating to —

whether the summons is to be heard with the other proceedings relating to the patent in question or separately and, if separately, fixing the date of hearing thereof;

the manner in which the evidence is to be given;

if the evidence is to be given by affidavit, the times within which the affidavits must be filed; and

whether any production is necessary and, if so, the extent of production and the manner and time within which production is to be given.

Where the Court allows a specification to be amended —

the applicant must —

forthwith file a copy of the Court’s order with the Registrar; and

if required by the Court or the Registrar, leave at the Registry a new specification and drawings as amended, prepared in compliance with the Act; and

the Registrar must cause a copy of the Court’s order to be inserted at least once in the journal.