Patents (Amendment No. 2) Rules 2022 - Singapore Statutes Online

No. S 399

Patents Act 1994

Patents
(Amendment No. 2) Rules 2022

In exercise of the powers conferred by section 115 of the Patents Act 1994, the Minister for Law, after consulting with the Intellectual Property Office of Singapore, makes the following Rules:

Citation and commencement

1.—(1) These Rules are the Patents (Amendment No. 2) Rules 2022 and, except for rule 41, come into operation on 26 May 2022.

(2) Rule 41 is deemed to have come into operation on 31 December 2021.

Amendment of rule 2

2. In rule 2(1) of the Patents Rules (R 1) —

(a)

in the definition of “international preliminary report on patentability”, replace the full‑stop at the end with a semi‑colon; and

(b)

after the definition of “international preliminary report on patentability”, insert —

“ “sequence” and “sequence listing” have the same meanings as they have under the Patent Co‑operation Treaty.”.

Amendment of rule 9B

3. In rule 9B of the Patents Rules, replace paragraph (4) with —

“(4) Where the Registrar, by notice sent to the applicant or proprietor (as the case may be), requires that applicant or proprietor to furnish to the Registry, in respect of any priority application, a copy of that priority application that is —

(a)	duly certified by the authority with which it was filed; or
(b)	otherwise acceptable to the Registrar,

that applicant or proprietor must, within 2 months starting on the date of the notice, comply with the notice.”.

Amendment of rule 9C

4. In rule 9C(1) of the Patents Rules —

(a)	in sub-paragraph (i)(B)(BB), replace “; or” at the end with a full‑stop; and
(b)	delete sub-paragraph (ii).

New rule 19A

5. After rule 19 of the Patents Rules, insert —

“Description of patent that discloses sequence

19A.—(1) Where an application for a patent discloses a sequence, the description of the application for the patent must include a sequence listing, presented as a separate part of the description and in a manner that complies with the practice directions issued by the Registrar.

(2) Where an application for a patent discloses a sequence and —

(a)	a sequence listing is not included in the description of the application for the patent; or
(b)	the sequence listing that is included is not presented in a manner that complies with the practice directions issued by the Registrar,

the Registrar may invite the applicant to submit, for the purposes of the search and within the period specified in the invitation, a sequence listing presented in a manner that complies with the practice directions issued by the Registrar.

(3) If the applicant does not, within the period specified in the invitation given under paragraph (2), submit the required sequence listing, the Examiner need only search the application to the extent that a meaningful search may be carried out —

(a)	without the sequence listing; or
(b)	with the sequence listing mentioned in paragraph (2)(b),

as the case may be.

(4) Any sequence listing not included in the description of an application for a patent on the date of filing of the application as defined in section 2(1), including a sequence listing submitted pursuant to paragraph (2), does not form part of the application for the patent.

(5) To avoid doubt, paragraph (4) does not prevent the applicant from amending or correcting, in accordance with any provision of the Act or these Rules, the description of an application for a patent in relation to a sequence listing.”.

Amendment of rule 22

6. In rule 22(6) of the Patents Rules, after “the figures”, insert “(which must in no case exceed 2)”.

Amendment of rule 26

7. In rule 26 of the Patents Rules, replace paragraph (4) with —

“(4) The documents prescribed for the purposes of section 26(7)(c) are —

(a)

a copy of the earlier relevant application mentioned in section 26(1)(c)(ii)(C) that is —

(i)	duly certified by the authority with which it was filed; or
(ii)	otherwise acceptable to the Registrar;

(b)

where the earlier relevant application is in a language other than English — an English translation of that earlier relevant application; and

(c)

Patents Form 56.

(4A) Paragraph (4)(a) or (b) does not apply if a copy of the earlier relevant application or an English translation of the earlier relevant application (as the case may be) had previously been filed at the Registry.”.

Amendment of rule 26A

8. In rule 26A of the Patents Rules, replace paragraph (7) with —

“(7) The documents prescribed for the purposes of section 26(9)(b)(iv) are —

(a)

a copy of the earlier relevant application mentioned in section 26(9)(a) that is —

(i)	duly certified by the authority with which it was filed; or
(ii)	otherwise acceptable to the Registrar; and

(b)

where the earlier relevant application is in a language other than English — an English translation of that earlier relevant application or of every part of that earlier relevant application in which the missing part of the application for a patent is contained.

(8) Paragraph (7)(a) or (b) does not apply if a copy of the earlier relevant application, or an English translation of the earlier relevant application or of every part of the earlier relevant application in which the missing part of the application for a patent is contained (as the case may be), had previously been filed at the Registry.”.

Amendment of rule 31

9. In rule 31 of the Patents Rules —

(a)

in paragraph (3)(d), delete sub‑paragraph (i);

(b)

replace paragraphs (4) and (5) with —

“(4) Where —

(a)	an address for service is not furnished by or on behalf of any person mentioned in paragraph (1)(b), (c) or (d) as required by that paragraph; and
(b)	no address is furnished under paragraph (3) by or on behalf of the person for the purposes of any of the proceedings mentioned in that paragraph,

the Registrar may, subject to paragraph (5), treat the person’s trade or business address in Singapore as that person’s address for service for the purposes of those proceedings.

(5) Where the trade or business address of the person is not known to the Registrar, the Registrar may send to the person, at an alternative address of the person, a notice to furnish an address for service for the purposes of the proceedings mentioned in paragraph (4)(b), within 2 months after the date of the notice.

(5A) Where the Registrar does not have any alternative address of the person to send the notice under paragraph (5), or where the Registrar has sent a notice under that paragraph but no address for service is provided within 2 months after the date of the notice —

(a)	in the case of a person mentioned in paragraph (1)(b) — the proceedings in question are treated as withdrawn; and
(b)	in the case of a proprietor mentioned in paragraph (1)(c) or a party mentioned in paragraph (1)(d) — the proprietor or party is not permitted to take part in the proceedings in question.”; and

(c)

replace paragraph (7) with —

“(7) In paragraphs (5) and (5A), “alternative address” means —

(a)	any address (not being an email address) that was previously provided by the person to the Registrar in relation to a matter under these Rules concerning the person that is the same as the matter at hand; or
(b)	any email address that was previously provided by the person to the Registrar in relation to a matter under these Rules that is the same as the matter at hand, where the person had given prior consent for that email address to be used for correspondence with the person for such matter.”.

Amendment of rule 34

10. In rule 34 of the Patents Rules, replace paragraph (8) with —

“(8) The documents prescribed for the purposes of section 28(9)(b)(iv) are —

(a)

a copy of the earlier relevant application mentioned in section 28(9)(a) that is —

(i)	duly certified by the authority with which it was filed; or
(ii)	otherwise acceptable to the Registrar; and

(b)

where the earlier relevant application is in a language other than English — an English translation of that earlier relevant application or of every part of that earlier relevant application in which the drawing or part of the description of the invention that is missing from the application for a patent is contained.

(9) Paragraph (8)(a) or (b) does not apply if a copy of the earlier relevant application, or an English translation of the earlier relevant application or of every part of the earlier relevant application in which the drawing or part of the description of the invention that is missing from the application for a patent is contained (as the case may be), had previously been filed at the Registry.”.

Amendment of rule 42

11. In rule 42 of the Patents Rules —

(a)

after paragraph (1A), insert —

“(1B) A copy of any document mentioned in paragraph (1A)(b)(i) and (c)(i) need not be filed if the Registrar had earlier sent a copy of that document in the English language to the applicant.”; and

(b)

in paragraph (2)(a), after “paragraph (1A)”, insert “, unless this is not required by virtue of paragraph (1B)”.

Amendment of rule 45

12. In rule 45 of the Patents Rules —

(a)

after paragraph (1), insert —

“(1A) If during the preparation of an examination report under section 29(1)(c), it appears that an application relates to 2 or more inventions, but they are not so linked as to form a single inventive concept, the examination may be restricted to one in relation to the first invention specified in the claims of the application, and the Registrar must notify the applicant of that fact.”; and

(b)

in the rule heading, after “Search”, insert “and examination”.

Amendment of rule 46

13. In rule 46 of the Patents Rules, replace paragraphs (1) and (1A) with —

“(1) For the purposes of section 29(7), the prescribed matters are the following:

(a)

the description, claims or drawings are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on —

(i)	the novelty or inventive step of the claimed invention; or
(ii)	whether the claimed invention is capable of industrial application;

(b)

the invention defined in any claim —

(i)	does not appear novel;
(ii)	does not appear to involve an inventive step; or
(iii)	does not appear to be capable of industrial application;

(c)

the conditions specified in sections 13 and 25(4) and (5) have not been complied with;

(d)

the application discloses any additional matter mentioned in section 84(1) or (2) or any matter mentioned in section 84(3);

(e)

a claim relates to an invention in respect of which no search has been completed, and the Examiner has decided not to carry out the examination in respect of that claim;

(f)

there is —

(i)	any other application for a patent for the same invention, with the same priority date, filed by the same applicant or the applicant’s successor in title; or
(ii)	any earlier grant of a patent for the same invention, with the same priority date, to the same applicant or the applicant’s successor in title.

(1A) For the purposes of section 29(8), the prescribed matters are the following:

(a)

any claim in the application is not supported by the description of the invention;

(b)

at the time the prescribed documents mentioned in section 29(1)(d) are filed, any claim in the application in suit is not related to at least one claim which —

(i)	is set out in the prescribed documents relating to the corresponding application, corresponding international application or related national phase application referred to in section 29(1)(d), or to the application in suit during its international phase; and
(ii)	has been examined to determine whether the claim appears to satisfy the criteria of novelty, inventive step (or non‑obviousness) and industrial applicability (or utility);

(c)

the invention defined in any claim of the specification of the application does not constitute an invention;

(d)

the invention is an invention mentioned in section 13(2) that is not patentable;

(e)

the invention is an invention mentioned in section 16(2) that is not to be taken to be capable of industrial application;

(f)

there is —

(i)	any other application for a patent for the same invention, with the same priority date, filed by the same applicant or the applicant’s successor in title; or
(ii)	any earlier grant of a patent for the same invention, with the same priority date, to the same applicant or the applicant’s successor in title;

(g)

the application discloses any additional matter mentioned in section 84(1) or (2) or any matter mentioned in section 84(3).”.

New rule 46AA

14. After rule 46 of the Patents Rules, insert —

“Invitation to amend

46AA. For the purposes of section 29(7C), an applicant for a patent to whom an Examiner gives an invitation to amend mentioned in section 29(7A) or (7B) may, within 2 months after the date of the invitation to amend and in Patents Form 13A —

(a)

amend the specification of the application in the following manner:

(i)	by striking through any text, figure or other matter to be replaced or deleted;
(ii)	by underlining any replacement text, figure or other matter; or

(b)

reject the invitation to amend.”.

Amendment of rule 46A

15. In rule 46A(3) of the Patents Rules, replace “Patents Form 13” with “Patents Form 12B”.

Amendment of rule 47

16. In rule 47 of the Patents Rules —

(a)	in paragraph (4)(a)(i), after “the applicant shall”, insert “, unless the Registrar specifies otherwise,”; and
(b)	in paragraph (4A)(b), after “paragraph (4)”, insert “, if any”.

Amendment of rule 48

17. In rule 48(1) of the Patents Rules, delete “and (3)”.

Amendment of rule 51

18. In rule 51 of the Patents Rules —

(a)

in paragraph (3)(a), replace “; or” at the end with a full‑stop;

(b)

in paragraph (3), delete sub-paragraph (b); and

(c)

after paragraph (3), insert —

“(3A) For the purposes of section 36(3), the prescribed period is 6 months.”.

Amendment of rule 51A

19. In rule 51A(10) of the Patents Rules, after sub‑paragraph (l), insert —

“(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;”.

Replacement of rule 56

20. Rule 56 of the Patents Rules is replaced with —

“Change of particulars

56.—(1) A request by a person (including an advocate and solicitor or any other person appointed by a party to act on the party’s behalf) to change the person’s name or other particular in the register or any application or other document filed at the Registry, must be made in Form CM2.

(2) If the Registrar is satisfied that a request in paragraph (1) may be allowed, the Registrar must cause the register, application or other document to be updated accordingly.”.

Amendment of rule 57

21. In rule 57 of the Patents Rules —

(a)

in paragraph (1)(c), delete “or” at the end;

(b)

in paragraph (1)(d), replace “on Form CM8” with “by way of a written request”;

(c)

in paragraph (1)(d), replace the full‑stop at the end with “; or”;

(d)

in paragraph (1), after sub-paragraph (d), insert —

“(e)	by way of a written request that is accompanied by a copy of the order or directions of the court or the competent authority concerned, in the case of any order or directions of a court or other competent authority mentioned in section 43(3)(e).”;

(e)

replace paragraph (2) with —

“(2) Where an application under paragraph (1)(a), (b), (c) or (d) is filed other than by means of the electronic filing system, the application must be signed by or on behalf of each relevant party.”;

(f)

in paragraph (3), replace “paragraph (1)” with “paragraph (1)(a), (b), (c) or (d)”; and

(g)

replace paragraphs (4) and (5) with —

“(4) In paragraphs (2) and (3), “relevant party” means —

(a)	in the case of paragraph (1)(a) — the person who granted the licence or sub‑licence;
(b)	in the case of paragraph (1)(b) — the person who granted the mortgage or security interest;
(c)	in the case of paragraph (1)(c) — each assignor; or
(d)	in the case of paragraph (1)(d) — each personal representative of the deceased.

(5) Where an application under paragraph (1)(a), (b), (c) or (d) is not signed in accordance with paragraph (2), or not authorised and validated in accordance with paragraph (3), the application must be accompanied by —

(a)

in the case of an assignment of a patent or an application for a patent, at the option of the applicant —

(i)	a copy of the contract of assignment;
(ii)	an extract of the contract of assignment, being an extract that shows the change in the ownership of the patent or application;
(iii)	a certificate of transfer of the patent or application in such form as the Registrar may require, being a certificate signed by all parties to the assignment;
(iv)	a transfer document relating to the patent or application in such form as the Registrar may require, being a document signed by all parties to the assignment; or
(v)	a copy of any documentary evidence that in the Registrar’s view is sufficient to establish the assignment;

(b)

in the case of a grant of a licence or sub‑licence under a patent or an application for a patent, at the option of the applicant —

(i)	an extract of the licence or sub‑licence contract, being an extract that shows the parties to the contract and the rights that are licensed under the contract;
(ii)	a statement of the licence or sub‑licence containing such information as the Registrar may require, being a statement signed by both the person who granted the licence or sub‑licence, and the licensee; or
(iii)	a copy of any documentary evidence that in the Registrar’s view is sufficient to establish the grant;

(c)

in the case of an amendment to, or a termination of, a licence or sub‑licence under a patent or an application for a patent, at the option of the applicant —

(i)	a statement of the amendment or termination (as the case may be) containing such information as the Registrar may require, being a statement signed by both the person who granted the licence or sub‑licence, and the licensee; or
(ii)	a copy of any documentary evidence that in the Registrar’s view is sufficient to establish the amendment or termination, as the case may be; or

(d)

in any other case, a copy of any documentary evidence that in the Registrar’s view is sufficient to establish the transaction, instrument or event.

(6) The Registrar may require the applicant to furnish any document, instrument or information in support of the application within any period that the Registrar may specify.

(7) The Registrar must refuse an application under paragraph (1) if paragraph (2), (3) or (5), or a requirement under paragraph (6), is not complied with.”.

Amendment of rule 58

22. In rule 58 of the Patents Rules —

(a)	in paragraph (1), replace “Without prejudice to rule 56(3), a” with “A”; and
(b)	in paragraph (3), replace “The” with “Subject to rule 58A, the”.

New rule 58A

23. After rule 58 of the Patents Rules, insert —

“Advertisement of and opposition to request for correction

58A.—(1) This rule applies where a person (X) makes a request under rule 58 on or after 26 May 2022 for the correction of any of the following:

(a)	an error in the name or other particular of a person in the register or any document under rule 58;
(b)	an error in any information pertaining to a priority application.

(2) If the Registrar determines that the interests of any person may be affected by the proposed correction, the Registrar may advertise the proposed correction by publishing the request and the nature of the proposed correction in the journal and in any other manner that the Registrar determines.

(3) Any person (Y) may, at any time within 2 months after the date of the advertisement, give notice to the Registrar of opposition to the request on Patents Form 58.

(4) The notice of opposition must be supported by a statement setting out fully the facts on which Y relies.

(5) Y must, at the time the notice and the statement are filed, serve on X a copy of the notice and a copy of the statement.

(6) If X desires to proceed with the request, X must —

(a)	within 2 months after the date on which X is served the copies of the notice and the statement, file a counter‑statement on Form HC6 setting out fully the grounds on which X contests the opposition; and
(b)	at the time the counter-statement is filed, serve on Y a copy of the counter-statement.

(7) The Registrar may give such directions as the Registrar thinks fit with regard to any aspect of the procedure for the request or the opposition to the request.

(8) The Registrar must consider the opposition in deciding whether to grant the request.”.

Amendment of rule 74

24. In rule 74(2) of the Patents Rules, replace “accompanied by a supporting” with “supported by a”.

Amendment of rule 86

25. In rule 86 of the Patents Rules, delete paragraph (7).

Amendment of rule 90

26. In rule 90 of the Patents Rules —

(a)

in paragraph (1), replace sub‑paragraph (a) with —

“(a)

a party may —

(i)	for the purposes of appearing before the Registrar at any proceedings before the Registrar under the Act or these Rules or any treaty to which Singapore is a party — appoint an advocate and solicitor or a registered patent agent to act on the party’s behalf; or
(ii)	for any other matter under the Act or these Rules — appoint an advocate and solicitor, a registered patent agent or any other person to act on the party’s behalf; and”;

(b)

in paragraphs (1)(b), (2), (3), (5)(a), (6) and (7), after “the advocate and solicitor”, insert “, registered patent agent”;

(c)

in paragraphs (2), (5), (6) and (7), after “an advocate and solicitor”, insert “, a registered patent agent”;

(d)

in paragraph (4)(d), delete sub‑paragraph (i);

(e)

in paragraph (4), replace sub‑paragraph (g) with —

“(g)

where the declaration of authorisation is filed, and the address for service is furnished, on Form CM8, the declaration of authorisation is effective for both the purpose of registering the transfer of the patent, or the application for a patent, in relation to which that form is filed (each called in this sub‑paragraph purpose A), and for the purpose of every other proceeding in respect of that patent or application (called in this sub‑paragraph purpose B), and —

(i)	if 2 addresses for service are provided on that form, then one of them is for purpose A and the other is for purpose B, as specified by the person who filed the form; or
(ii)	if one address for service is provided on that form, then it is for both purpose A and purpose B.”;

(f)

replace paragraph (8) with —

“(8) Where an advocate and solicitor, a registered patent agent or any other person (called in this paragraph the agent), having been appointed by a party to act on the party’s behalf, intends to cease to act on the party’s behalf, the agent —

(a)

must file with the Registrar on Form CM1 —

(i)	a notice of the intention;
(ii)	the party’s latest address, including any email address, on the agent’s records; and
(iii)	a statement that the agent has given reasonable notice to the party of the intention, and informed the party of the consequences set out in rule 31(5A) as applied by paragraph (11); and

(b)

must serve Form CM1 on the party at the same time the form is filed with the Registrar.

(9) On receipt of the form mentioned in paragraph (8)(a), the Registrar must send to the party a notice requesting the party to provide an address for service within 3 months after the date of the notice.

(10) The notice in paragraph (9) must be sent to the address of the party filed under paragraph (8)(a)(ii) or any alternative address of the party.

(11) Rule 31(5A)(a) or (b) (whichever is applicable) applies, with the necessary modifications, if —

(a)	the Registrar does not have any alternative address of the party to which to send the notice under paragraph (9); or
(b)	the Registrar sent the notice under paragraph (9) and no address for service was provided within 3 months after the date of the notice.

(12) In paragraphs (10) and (11), “alternative address” has the meaning given by rule 31(7).”; and

(g)

replace the rule heading with —

“Where advocate and solicitor, patent agent, etc., appointed to act for party”.

Amendment of rule 91

27. In rule 91 of the Patents Rules —

(a)

in paragraph (6), replace “accompanied by a supporting” with “supported by a”;

(b)

in paragraph (9), after “correction”, insert “to a specification”;

(c)

in paragraph (12)(a), delete “, 31(5) or 56(3)”;

(d)

in paragraph (12)(b), after “52,”, insert “58A(3), (4) or (6),”; and

(e)

after paragraph (13), insert —

“(14) The Registrar may, on the Registrar’s own initiative, make any consequential amendment to the register arising from any correction pursuant to a request under paragraph (1) that is made on or after 26 May 2022, and the Registrar must notify the applicant making the request of the amendment.”.

Amendment of rule 92

28. In rule 92(1)(e) of the Patents Rules, replace “6 months referred to in” with “period prescribed under”.

Amendment of rule 93

29. In rule 93(1) of the Patents Rules, after “to be inspected”, insert “using the electronic online system”.

Amendment of rule 96A

30. In rule 96A of the Patents Rules —

(a)

in paragraph (1), after “for the purposes of”, insert “the Act and”;

(b)

replace paragraph (2A) with —

“(2A) The electronic online system may be used —

(a)	by the Registrar or the Registry for giving, sending to or serving on any person any notice, direction or other document; and
(b)	by a party for the giving, sending or serving on another party (other than the Registrar or the Registry) of any document required to be given, sent to or served on that other party under the Act or these Rules.

(2B) To avoid doubt, paragraph (2A) does not apply to the service of any notice or document to be served in proceedings in court.”; and

(c)

in paragraph (3)(e), after “the manner in which”, insert “a document filed or kept at the Registry may be inspected, in which”.

Amendment of rule 97

31. In rule 97 of the Patents Rules —

(a)

in paragraph (2)(c), delete “or” at the end;

(b)

in paragraph (2), after sub‑paragraph (c), insert —

“(ca)

by sending an electronic communication using the electronic online system; or”;

(c)

in paragraph (2)(d), after “by any”, insert “other”;

(d)

in paragraph (7), replace “paragraph (2)(d)” with “paragraph (2)(ca) or (d)”; and

(e)

after paragraph (8), insert —

“(9) A notice, direction or other document sent, filed or served by means of an electronic communication (other than the electronic online system) is treated as sent, filed or served —

(a)	if the time and the day the electronic communication becomes capable of being retrieved by the person to whom the notice, direction or document is sent, filed or served does not fall on an excluded day for the business of sending, filing or serving the notice, direction or document — at that time and on that day; or
(b)	if that time falls on such excluded day — on the next following day that is not such excluded day.

(9A) A notice, direction or other document that is —

(a)	transmitted to the Registrar, the Registry or a party by means of the electronic online system; and
(b)	received, by the server of that system set up to receive such transmissions, at any time before midnight on any day,

is treated as sent to, filed with or served on, and received by, the Registrar, the Registry or the party —

(c)	if that day is not an excluded day for the business of sending to, filing with or serving on the Registrar, the Registry or the party the notice, direction or document by means of that system — at that time and on that day; or
(d)	if that day is such excluded day — on the next following day that is not such excluded day.

(9B) For the purposes of paragraph (9A), the notice, direction or document is treated as sent to, filed with or served on, and received by, the Registrar, the Registry or the party if and only if the last byte of the transmission containing the notice, direction or document is received by the server mentioned in that paragraph.

(9C) Any person who sends, files or serves a notice or other document by means of the electronic online system may produce a record of transmission issued through that system as evidence of —

(a)	the sending, filing or service of that notice or document; and
(b)	the date and time when the sending, filing or service took place.”.

Amendment of rule 98

32. In rule 98 of the Patents Rules —

(a)	in paragraph (1), replace “Subject to paragraph (7), any” with “Any”; and
(b)	delete paragraphs (7), (8) and (9).

Amendment of rule 106

33. In rule 106(1) of the Patents Rules, after “52(3),”, insert “58A(4),”.

Amendment of rule 108

34. In rule 108(2)(b) of the Patents Rules —

(a)	after “46(4), (4A) and (5)(c),”, insert “46AA,”;
(b)	replace “51(1), (2) and (2A)” with “51(1), (2), (2A) and (3A)”;
(c)	after “53(1),”, insert “58A(3),”; and
(d)	replace “, 91(3) and (5)” with “and 91(5)”.

Amendment of rule 108A

35. In rule 108A(1) of the Patents Rules —

(a)	in sub-paragraph (a), after “52(4),”, insert “58A(6)(a),”; and
(b)	in sub-paragraph (b), after “52(5),”, insert “58A(7),”.

Amendment of rule 110

36. In rule 110 of the Patents Rules, after paragraph (6), insert —

“(7) In paragraphs (1) and (6), “excluded day” means an excluded day for the business of making, filing, giving, sending or serving the notice, application or other document mentioned in that paragraph.”.

Amendment of rule 114

37. In rule 114 of the Patents Rules —

(a)	in paragraph (3), replace “monthly” with “weekly”; and
(b)	in the rule heading, before “Journal”, insert “Patents”.

Amendment of First Schedule

38. In the First Schedule to the Patents Rules —

(a)

in item 1, under the heading “Amount $”, replace “160” with “170”;

(b)

in item 9, under the heading “Amount $”, replace “1,650” with “1,735”;

(c)

in item 10(a), under the heading “Amount $”, replace “1,650” with “1,750”;

(d)

in item 10(b), under the heading “Amount $”, replace “1,950” with “2,050”;

(e)

in item 14, under the heading “Amount $”, replace “1,350” with “1,420”;

(f)

in item 16, under the heading “Amount $”, replace “1,350” with “1,420”;

(g)

in item 19, under the heading “Amount $”, replace “200” (wherever it appears) with “210”;

(h)

in item 20(a), under the heading “Amount $”, replace “140” with “165”;

(i)

in item 20(b), under the heading “Amount $”, replace “370” with “430”;

(j)

in item 20(c), under the heading “Amount $”, replace “520” with “600”;

(k)

in item 20(d), under the heading “Amount $”, replace “670” with “775”;

(l)

in item 20(e), under the heading “Amount $”, replace “820” with “945”;

(m)

in item 20(f), under the heading “Amount $”, replace “970” with “1,120”;

(n)

in item 20(g), under the heading “Amount $”, replace “1,200” with “1,380”;

(o)

in item 25(a), under the heading “Amount $”, replace “140” with “165”;

(p)

in item 25(b), under the heading “Amount $”, replace “370” with “430”;

(q)

in item 25(c), under the heading “Amount $”, replace “520” with “600”;

(r)

in item 25(d), under the heading “Amount $”, replace “670” with “775”;

(s)

in item 25(e), under the heading “Amount $”, replace “820” with “945”;

(t)

in item 25(f), under the heading “Amount $”, replace “970” with “1,120”;

(u)

in item 25(g), under the heading “Amount $”, replace “1,200” with “1,380”;

(v)

in item 31, under the heading “Corresponding Form”, replace “Patents Form 34” with “—”;

(w)

in item 34, under the heading “Amount $”, replace “200” with “210”;

(x)

in item 50, under the heading “Corresponding Form”, replace “Patents Form 53” with “Patents Form 15”;

(y)

in item 50(a), under the heading “Amount $”, replace “70” with “82.50”;

(z)

in item 50(b), under the heading “Amount $”, replace “185” with “215”;

(za)

in item 50(c), under the heading “Amount $”, replace “260” with “300”;

(zb)

in item 50(d), under the heading “Amount $”, replace “335” with “387.50”;

(zc)

in item 50(e), under the heading “Amount $”, replace “410” with “472.50”;

(zd)

in item 50(f), under the heading “Amount $”, replace “485” with “560”;

(ze)

in item 50(g), under the heading “Amount $”, replace “600” with “690”;

(zf)

in item 51, under the heading “Corresponding Form”, replace “Patents Form 53” with “Patents Form 15”;

(zg)

after item 58, insert —

“59.	Request for correction of error in name or other particular of a person in the register or other document

Form CM4”;

(zh)

in item 70, under the heading “Matter”, replace “Notice of attendance at a hearing under rule 88A” with “Attending a hearing under rule 88A and obtaining decision”;

(zi)

in item 70, under the heading “Amount $”, replace “715” with “1,000”;

(zj)

in item 72(b), under the heading “Amount $”, replace “100” with “120”;

(zk)

in item 74, under the heading “Matter”, replace “for hearing under rule 88 at which only the party who requested the hearing was present” with “under rule 88”; and

(zl)

in item 75, under the heading “Matter”, after “52(4),”, insert “58A(6),”.

Amendment of Second Schedule

39. In the Second Schedule to the Patents Rules —

(a)	in the item relating to Patents Form 13A, under the heading “Description of Form”, after “written opinion”, insert “or a response to an invitation to amend (whether amending the specification of the application or rejecting the invitation)”;
(b)	delete the item relating to Patents Form 34;
(c)	delete the item relating to Patents Form 53;
(d)	in the item relating to Form CM1, under the heading “Description of Form”, replace “, change or remove agent” with “or change agent or notice of intention to cease to act as agent”;
(e)	in the item relating to Form CM2, under the heading “Description of Form”, replace “, address and Singapore address for service of agent, applicant, proprietor or other interested person” with “or other particular of any person”;
(f)	in the item relating to Form HC1, under the heading “Description of Form”, replace “Notice of attendance at hearing” with “Hearing and decision”; and
(g)	in the item relating to Form HC5, under the heading “Description of Form”, delete “for hearing at which only the party who requested the hearing was present”.

Amendment of Fourth Schedule

40. In the Fourth Schedule to the Patents Rules, in paragraph 2(3)(ii), replace “of 6 months referred to in” with “prescribed under”.

Replacement of references to provisions of Act because of 2020 Revised Edition

41. The Patents Rules are amended by replacing each reference to a provision number of the Act specified in the first column of the following table with the provision number of the Act specified opposite it in the second column of the table:

First column

Second column

Provision number
(before 31 December 2021)

New provision number
(as at 31 December 2021)

14(5A)(b) or (5B)(b)

14(6)(b) or (7)(b)

14(5B)(b)

14(7)(b)

14(5C)

14(8)

14(11)

17(2A)(a)

17(3)(a)

17(2A)(b)

17(3)(b)

17(2B)

17(4)

17(2D)

17(6)

17(2D)(a)

17(6)(a)

17(2D)(b)

17(6)(b)

17(5)

17(9)

17(6)

17(10)

29(11A)(a) and (b)

29(12)(a) and (b)

29B(5A)(a)

29B(6)(a)

29B(6)

29B(7)

84(1) or (1A)

84(1) or (2)

84(2)

84(3)

84(4)

86(3) and (6)

86(3) and (5)

86(3) or (6)

86(3) or (5)

86(6)

86(5)

Saving and transitional provisions

42.—(1) Despite rule 5, rule 19A of the Patents Rules inserted by rule 5 does not apply to an application for a patent with a date of filing (within the meaning of section 2(1) of the Act) before 26 May 2022.

(2) Despite rule 6, rule 22(6) of the Patents Rules as amended by rule 6 does not apply to an application for a patent the actual date of filing at the Registry of which was before 26 May 2022, and rule 22(6) of the Patents Rules as in force immediately before that date continues to apply to such application.

(3) Rule 26(4A) of the Patents Rules inserted by rule 7 applies, with the necessary modifications, to an application for a patent in relation to which the prescribed period mentioned in section 26(7) of the Act has not expired as of 26 May 2022, if the documents mentioned in rule 26(4)(a) and (b) of the Patents Rules as in force immediately before that date have yet to be filed by that date.

(4) Rule 26A(8) of the Patents Rules inserted by rule 8 applies, with the necessary modifications, to an application for a patent in relation to which the prescribed period mentioned in section 26(9)(b) of the Act has not expired as of 26 May 2022, if the documents mentioned in rule 26A(7)(a) and (b) of the Patents Rules as in force immediately before that date have yet to be filed by that date.

(5) An address for service furnished before 26 May 2022 on Patents Form 34 has the effect mentioned in rule 31(3)(d) of the Patents Rules as in force immediately before that date.

(6) Despite rule 9(b) read with rule 27, rule 91 of the Patents Rules as amended by rule 27 does not apply to a request to alter or correct an address for service filed before 26 May 2022 in accordance with rule 31(5) of the Patents Rules as in force immediately before that date and that is pending on that date.

(7) Rule 34(9) of the Patents Rules inserted by rule 10 applies, with the necessary modifications, to an application for a patent in relation to which the prescribed period mentioned in section 26(9)(b) of the Act has not expired as of 26 May 2022, if the documents mentioned in rule 34(8)(a) and (b) of the Patents Rules as in force immediately before that date have yet to be filed by that date.

(8) Despite rule 11, rule 42 of the Patents Rules as in force immediately before 26 May 2022 continues to apply to a request for an examination report made before that date.

(9) Rule 45(1A) of the Patents Rules inserted by rule 12 does not apply to a request for an examination report under section 29(1)(c) of the Act made before 26 May 2022.

(10) Despite rule 15, an application to amend the specification of an application for a patent filed before 26 May 2022 in accordance with rule 46A(3) of the Patents Rules as in force immediately before that date, and that is still pending on that date, is treated as if it were filed in accordance with rule 46A(3) of the Patents Rules as amended by rule 15.

(11) Rule 47 of the Patents Rules as amended by rule 16 applies to an application for a patent that is pending on 26 May 2022 if the applicant has yet to comply with section 29A(2)(a) of the Act as of that date.

(12) Despite rule 18(b), an application for the renewal of a patent, or a late application for the renewal of a patent, filed before 26 May 2022 in accordance with rule 51(3)(b) of the Patents Rules as in force immediately before that date, and that is pending on that date, is treated as if it were filed in accordance with rule 51(3) of the Patents Rules as amended by rule 18(b).

(13) Despite rule 20, rule 56(4) of the Patents Rules as in force immediately before 26 May 2022 continues to apply to a request for correction filed in accordance with rule 56 of the Patents Rules at the Registry before that date and is pending on that date, and rule 91 of the Patents Rules as amended by rule 27 does not apply to such request.

(14) Rule 57(7) of the Patents Rules inserted by rule 21(g) applies to an application made under rule 57 of the Patents Rules as in force immediately before 26 May 2022 that is pending on that date, as if the reference to rule 57(2), (3) or (5) or a requirement under rule 57(6) were a reference to rule 57(2), (3) or (4) of the Patents Rules as in force immediately before that date.

(15) Despite rule 25, rule 86(7) of the Patents Rules as in force immediately before 26 May 2022 continues to apply to an application for a patent that is an international application for a patent (Singapore) that has entered the national phase in Singapore before that date under section 86(3) of the Act.

(16) A declaration of authorisation, and an address for service, filed and furnished respectively before 26 May 2022 on Patents Form 34, has the effect mentioned in rule 90(4)(d) of the Patents Rules as in force immediately before that date.

(17) Despite rule 26(f), rule 90(8) of the Patents Rules as in force immediately before 26 May 2022 (called in this paragraph the old rule), continues to apply in relation to a notice mentioned in the old rule that was filed and served in accordance with the old rule before that date.

(18) Despite rule 38(a), the filing fee specified in item 1 of the First Schedule to the Patents Rules as in force immediately before 26 May 2022 continues to apply in relation to the filing of a document containing an indication that a patent is sought in pursuance of an application before that date.

(19) Despite rule 51(2) of the Patents (Amendment) Rules 2004 (G.N. No. S 366/2004) (which in effect requires an application for prescribed information on a corresponding international application or a corresponding application for a patent under section 79(1) of the Act (as in force immediately before 1 July 2004), to be made in Patents Form 34 if the date of filing of the application for a patent concerned is before that date), such an application must be made in writing.

[G.N. Nos. S 501/2009; S 730/2010; S 586/2011; S 210/2013; S 81/2014; S 162/2014; S 739/2014; S 673/2016; S 146/2017; S 573/2017; S 432/2020; S 688/2021; S 216/2022]

Made on 19 May 2022.

LOH KHUM YEAN

Permanent Secretary,
Ministry of Law,
Singapore.

[LAW 71/005; AG/LEGIS/SL/221/2020/1 Vol. 5]

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