Patents (Amendment) Act 1995 - Singapore Statutes Online

REPUBLIC OF SINGAPORE

GOVERNMENT GAZETTE

ACTS SUPPLEMENT

Published by Authority

NO. 39]

Friday, November 24

[1995

The following Act was passed by Parliament on 1st November 1995 and assented to by the President on 18th November 1995:—

Patents (Amendment) Act 1995

(No. 40 of 1995)

I assent.

ONG TENG CHEONG

President.

18th November 1995.

Date of Commencement: 1st January 1996

An Act to amend the Patents Act (Chapter 221 of the 1995 Revised Edition).

Be it enacted by the President with the advice and consent of the Parliament of Singapore, as follows:

Short title and commencement

1. This Act may be cited as the Patents (Amendment) Act 1995 and shall come into operation on such date as the Minister may, by notification in the Gazette, appoint.

Amendment of section 2

2. Section 2(1) of the Patents Act is amended —

(a)	by deleting the semi-colon at the end of the definition of “scientific adviser” and substituting a full-stop; and
(b)	by deleting the definitions of “services of the Government” and “use for the services of the Government”.

Amendment of section 13

3. Section 13 of the Patents Act is amended —

(a)	by deleting the words “subsections (2) and (3)” in subsection (1) and substituting the words “subsection (3)”; and
(b)	by deleting subsections (2) and (5).

Amendment of section 30

4. Section 30 of the Patents Act is amended by deleting the words “any thing referred to in section 13 (2) or” in subsection (3) (b).

Repeal of sections 55 to 60 and re-enactment of section 55

5. Sections 55 to 60 of the Patents Act are repealed and the following section substituted therefor:

“Compulsory licences

55.—(1) At any time after the expiration of 3 years from the date of the grant of a patent or 4 years from the date of filing of the patent application, whichever is the later, any person interested may apply to the court for the grant of a licence under the patent upon any of the grounds specified in subsection (2).

(2) The grounds upon which a licence may be granted under this section are that a market for the patented invention is not being supplied, or is not being supplied on reasonable terms, in Singapore.

(3) Subject to this section, if the court is satisfied that either of the grounds referred to in subsection (2) is established, the court may make an order for the grant of a licence in accordance with the application upon such terms as the court thinks fit.

(4) A licence granted under this section —

(a)	is not exclusive;
(b)	shall not be assigned otherwise than in connection with the goodwill of the business in which the patented invention is used;
(c)	is limited to the supply of the patented invention predominantly in Singapore.

(5) Any licence granted under this section may, on the application of any interested party, be terminated by the court where the court is satisfied that the ground upon which the licence was granted has ceased to exist.

(6) Where a licence is granted under this section to any person, the person shall pay such remuneration to the patentee as may be agreed, or as may be determined by a method agreed between the person and the patentee or, in default of agreement, as is determined by the court on the application of the person or the patentee.

(7) No licence shall be granted under this section unless the person applying for the licence has first taken all reasonable steps to obtain a licence from the patentee on reasonable commercial terms and conditions and has failed to obtain such licence within a reasonable period of time.

(8) No licence shall be granted under this section in respect of a patent relating to an integrated circuit except to remedy a practice which is determined by the court to be anti-competitive.

(9) If the patented invention cannot be worked by the applicant without his infringing another patent —

(a)

the court is to make the order under subsection (3) only if the court is further satisfied that the applicant’s patented invention involves an important technical advance of considerable economic significance in relation to the invention claimed in the other patent;

(b)

the court shall further order that the patentee of the other invention —

(i)	shall grant to the applicant a licence to work the other invention insofar as is necessary to work the patented invention; and
(ii)	is to be granted, if he so requires, a cross-licence on reasonable terms to work the patented invention;

(c)

the court shall direct that the licence granted by the patentee of the other invention may be assigned by the applicant —

(i)	only if the licence granted in respect of the patented invention is also assigned; and
(ii)	only to the assignee of that licence.

(10) The powers of the court on an application under this section shall be exercised with a view to securing that the inventor or other person beneficially entitled to a patent shall receive reasonable remuneration having regard to the economic value of the licence.

(11) No order shall be made in pursuance of any application under this section which would be at variance with any treaty or international convention relating to patents to which Singapore is a party.

(12) For the purposes of this section and section 61,

“integrated circuit” means a circuit, in its final or an intermediate form, in which the elements, at least one of which is an active element, and some or all of the interconnections are integrally formed in or on a piece of material and that is intended to perform an electronic function.”.

Repeal of sections 61 and 62 and re-enactment of section 61

6. Sections 61 and 62 of the Patents Act are repealed and the following section substituted therefor:

“Use of patented inventions for services of Government

61.—(1) Subject to sections 65A to 65C, but notwithstanding any other provision of this Act, any Government department, and any person authorised in writing by a Government department, may make, use, exercise and vend any patented invention for the services of the Government and anything done by virtue of this section shall not amount to an infringement of the patent.

(2) For the purposes of this section and section 63 —

(a)	any use of an invention for the supply to the government of any country outside Singapore, in pursuance of any agreement or arrangement between the Government of Singapore and the government of that country, of articles required for the defence of that country shall be deemed to be a use of the invention for the services of the Government of Singapore;
(b)	the power of a Government department or a person authorised by a Government department under this section to make, use, exercise and vend a patented invention shall include the power to sell to any person any articles made in the exercise of the powers conferred by this section that are no longer required for the purpose for which they were made;
(c)	the power of a Government department or a person authorised by a Government department under this section to vend a patented invention shall not, in the case of a patent relating to an integrated circuit, extend to sale of the invention to the public.

(3) The purchaser of any articles sold in the exercise of the powers conferred by this section, and any person claiming through the purchaser, shall have power to deal with them in the same manner as if the patent were held on behalf of the Government.”.

Amendment of section 63

7. Section 63 of the Patents Act is amended —

(a)	by inserting, immediately after the word “shall” in the fourteenth line of subsection (1), the words “, subject to sections 65A to 65C,”; and
(b)	by deleting subsections (3) to (10).

Amendment of section 64

8. Section 64 of the Patents Act is amended by deleting subsections (1) and (2) and substituting the following subsections:

“(1) Any dispute as to the exercise by a Government department or a person authorised by a Government department of the powers conferred by section 61 or as to the terms for the use of an invention for the services of the Government thereunder may be referred to the court by either party to the dispute after a patent has been granted for the invention.

(2) In determining any dispute referred to the court under this section, the court shall have regard to —

(a)	any benefit or compensation that the patentee of the invention may have received, or may be entitled to receive, directly or indirectly from any Government department or any person authorised by a Government department in respect of the patented invention; and
(b)	the need to ensure that the patentee shall receive reasonable remuneration having regard to the economic value of the patented invention.”.

Repeal and re-enactment of section 65 and new sections 65A, 65B and 65C

9. Section 65 of the Patents Act is repealed and the following sections substituted therefor:

“Special provisions as to Government use during emergency

65. Subject to sections 65A to 65C, 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 make, use, exercise and vend the patented invention for any purpose which appears to the Government department necessary or expedient —

(a)	to avoid prejudice to the security or defence of Singapore;
(b)	to assist in the exercise of powers and the implementation of civil defence measures during a state of emergency or state of civil defence emergency under the Civil Defence Act (Cap. 42); or
(c)	for public non-commercial use.

Nature and scope of rights under section 61

65A.—(1) The right to use a patented invention under section 61 —

(a)	is not exclusive;
(b)	shall not be assigned otherwise than in connection with the goodwill of the business in which the patented invention is used;
(c)	is, notwithstanding subsection (2)(a) of section 61, limited to the supply of the patented invention predominantly in Singapore by a Government department or a person authorised by a Government department under that section.

(2) The right to use a patented invention under section 61 may, on the application of any interested party, be terminated by the court, where the court is satisfied that the circumstances that gave rise to the right to use the patented invention have ceased to exist and are unlikely to recur.

(3) Except in a case to which section 65 applies, the right to use a patented invention under section 61 is subject to the Government department or the person authorised by a Government department under section 61 having first taken all reasonable steps to obtain the consent of the patentee to the use of the patented invention on reasonable commercial terms and conditions, and having failed to obtain such consent within a reasonable period of time.

Duty to inform patentee

65B.—(1) Where any use of a patented invention is made by or with the authority of a Government department under section 65 in situations of national emergency or other circumstances of extreme urgency, the Government department shall, as soon as reasonably practicable, inform the patentee of such use and in the case of public non-commercial use, the Government department shall inform the patentee promptly of such use.

(2) Where any use of a patented invention is made by or with the authority of a Government department under section 61, the Government department shall, as soon as practicable after the use of the patented invention has begun, notify and furnish the patentee with such information as to the extent of the use as the patentee may from time to time reasonably require.

(3) Nothing in subsection (2) shall require the Government department to notify or disclose information to the patentee if to do so would, or might reasonably be expected to, prejudice the security or defence of Singapore.

Patentee entitled to remuneration

65C. Where an act is done under section 61, the Government shall pay such remuneration to the patentee as may be agreed, or as may be determined by a method agreed, between the Government and the patentee having regard to the economic value of the patented invention or as may, in default of agreement, be determined by the court under section 64.”.

Amendment of section 67

10. Section 67(1) of the Patents Act is amended by inserting, immediately after the word “comprised” in the last line of paragraph (b), the words “or any material and implement the predominant use of which has been in the creation of the infringing product”.

Amendment of section 97

11. Section 97(3)(c) of the Patents Act is amended by deleting the word “, 59 (1)”.

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