3. Rule 9 of the Patents Rules is deleted and the following rules substituted therefor:“Declaration of priority for purposes of section 17 (2) |
9.—(1) Subject to paragraph (2), a declaration for the purposes of section 17 (2) made in or in connection with an application for a patent (referred to in this rule and rules 9A and 9B as the application in suit) shall be made at the time of filing the application in suit.(2) A declaration for the purposes of section 17 (2) may be made after the date of filing if —(a) | it would cause —(i) | the application in suit to have a declared priority date, where there was none previously; or | (ii) | the declared priority date of the application in suit to be brought forward to an earlier date; |
| (b) | it is made within 16 months from —(i) | where sub-paragraph (a)(i) applies, the declared priority date; or | (ii) | where sub-paragraph (a)(ii) applies, the earlier date; |
| (c) | it is made on Patents Form 57; | (d) | the prescribed fee has been paid; and | (e) | the condition referred to in paragraph (4) is satisfied. |
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(3) Where a request to the Registrar to correct a mistake in a declaration for the purposes of section 17 (2) would, if granted, cause the declared priority date to be changed to a different date, the request shall not be granted unless —(a) | it is made within 16 months from the declared priority date, as changed; | (b) | it is made on Patents Form 57; | (c) | the prescribed fee has been paid; and | (d) | the condition referred to in paragraph (4) is satisfied. |
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(4) For the purposes of paragraphs (2)(e) and (3)(d), the condition is that —(a) | the applicant has not made any request under section 27 (2) to publish the application in suit during the period prescribed for the purposes of section 27; or | (b) | any such request has been withdrawn in accordance with rule 29(4). |
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(5) Subject to paragraph (6), a declaration for the purposes of section 17 (2) shall specify, in respect of each priority application —(a) | the date of filing of the priority application; and | (b) | the country in or for which the priority application was made. |
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(6) Where the application in suit is an international application for a patent (Singapore), paragraph (5) shall not apply in respect of a priority application if —(a) | the date of filing of that priority application; and | (b) | the country in or for which that priority application was made, |
have been indicated in compliance with rule 4.10 (a) and (b) of the Regulations under the Patent Co-operation Treaty. |
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(7) Where section 26 (11) applies, a declaration for the purposes of section 17 (2) shall not be made in or in connection with a new application referred to in section 26 (11) if the declaration has not also been made in or in connection with the earlier application. |
(8) In this rule and rules 9B and 9C —“priority application” means an earlier relevant application specified in a declaration for the purposes of section 17 (2); |
“relevant application” has the same meaning as in section 17 (5). |
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Request to Registrar for permission to make late declaration under section 17(2B) |
9A.—(1) The period prescribed for the purposes of section 17 (2A) (b) shall be 2 months.(2) For the purposes of section 17 (2D) (a), a request under section 17 (2B) shall —(a) | subject to rule 86(3A), be made before the end of the period referred to in section 17 (2A) (b); | (b) | be made on Patents Form 57; | (c) | be made only if the prescribed fee has been paid; | (d) | if the applicant failed to file the application in suit within the period referred to in section 17 (2A) (a), state the reason for the failure to file the application in suit within that period; and | (e) | be made only if —(i) | the request relates to an international application for a patent (Singapore); or | (ii) | where the request does not relate to an international application for a patent (Singapore), the condition referred to in paragraph (3) is satisfied. |
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(3) For the purposes of paragraph (2)(e)(ii), the condition is that —(a) | the applicant has not made any request under section 27 (2) to publish the application in suit during the period prescribed for the purposes of section 27; or | (b) | any such request has been withdrawn in accordance with rule 29(4). |
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(4) Where the Registrar determines that every applicable condition referred to in section 17 (2D) for granting a request under section 17 (2B) has been satisfied, the Registrar shall grant the request and notify the applicant accordingly. |
(5) Where the condition referred to in section 17 (2D) (b) for granting a request under section 17 (2B) has not been satisfied, the Registrar shall notify the applicant that the Registrar intends to refuse the request unless —(a) | observations are made or evidence is filed, within 2 months from the date of the notification, to satisfy the Registrar that the applicant’s failure to file the application in suit within the period referred to in section 17 (2A) (a) —(i) | occurred in spite of due care required by the circumstances having been taken; or | (ii) | was unintentional; and |
| (b) | the Registrar is so satisfied on the observations made or evidence filed. |
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(6) Where paragraph (5) applies, the Registrar shall refuse the request under section 17 (2B), and shall inform the applicant accordingly, if —(a) | the applicant fails to make the observations or file the evidence within 2 months from the date of the Registrar’s notification; or | (b) | the Registrar is not satisfied, on all the observations made and evidence filed, that the applicant’s failure to file the application in suit within the period referred to in section 17 (2A) (a) —(i) | occurred in spite of due care required by the circumstances having been taken; or | (ii) | was unintentional. |
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Furnishing of application or file number and of priority documents to support declaration under section 17 (2) |
9B.—(1) Subject to paragraph (3), the applicant shall, before the end of the period of 16 months from the declared priority date, furnish to the Registry the application or file number of each priority application.(2) Subject to paragraph (3), if the applicant fails to comply with paragraph (1) in respect of any priority application, the declaration for the purposes of section 17 (2) shall be disregarded in so far as it relates to that priority application. |
(3) Where the application in suit is an international application for a patent (Singapore), paragraphs (1) and (2) shall not apply in respect of any priority application the application or file number of which has been indicated in compliance with rule 4.10 (a) of the Regulations under the Patent Co-operation Treaty. |
(4) Where the Registrar, by notice sent to the applicant or proprietor, as the case may be, requires him to furnish to the Registry, in respect of any priority application, a copy of that priority application which is —(a) | duly certified by the authority with which it was filed; or | (b) | otherwise acceptable to the Registrar, |
the applicant or proprietor, as the case may be, shall, within 2 months from the date of the notice — |
(i) | comply with the Registrar’s requirement; or | (ii) | if a copy of that priority application is kept at the Registry, as an alternative to complying with the Registrar’s requirement, file —(A) | a request that a copy of that priority application be prepared; and | (B) | Patents Form 26 requesting the Registrar to certify the prepared copy. |
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(5) If the applicant or proprietor, as the case may be, fails to comply with paragraph (4) in respect of any priority application, the declaration for the purposes of section 17 (2) shall be disregarded in so far as it relates to that priority application. |
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Translation of priority documents |
9C.—(1) Where —(a) | a copy of any priority application is furnished under rule 9B(4); | (b) | that priority application is in a language other than English; | (c) | the validity of the claim to priority is relevant to determining whether the invention concerned is patentable; and | (d) | the Registrar, by notice sent to the applicant or proprietor, as the case may be, requires him to furnish to the Registry an English translation of that priority application, |
the applicant or proprietor, as the case may be, shall, within 2 months from the date of the notice — |
(i) | furnish to the Registry both of the following at the same time:(A) | an English translation of that priority application; | (B) | a copy of a verification document — | (BA) | made in accordance with the Registrar’s requirements; and | (BB) | verifying that the translation corresponds to the original text of that priority application; or |
| (ii) | if an English translation of that priority application is kept at the Registry, as an alternative to complying with the Registrar’s requirement, file —(A) | a request that a copy of the translation be prepared; and | (B) | Patents Form 26 requesting the Registrar to certify the prepared copy. |
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(2) The Registrar may, by notice, require to be filed at the Registry or sent to the Registrar, within such period as may be specified in the notice, the original of the verification document. |
(3) If the applicant or proprietor, as the case may be, fails to comply with —(a) | paragraph (1) in respect of any priority application; or | (b) | the Registrar’s requirement under paragraph (2) in respect of any verification document relating to any priority application, |
the declaration for the purposes of section 17 (2) shall be disregarded in so far as it relates to that priority application.”. |
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