Singapore legislation
Regulation 46
of Supreme Court of Judicature (Intellectual Property) Rules 2022
Regulation 46
Application for permission to amend specification (section 83)
Subregulation 1
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.
Subregulation 2
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.
Subregulation 3
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.
Subregulation 4
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.
Subregulation 5
The Statement of Opposition must contain full particulars of all grounds of opposition to the application to amend.
Subregulation 6
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.
Subregulation 7
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.
Subregulation 8
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.