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No. S 116

Patents Act

(Chapter 221)

Patents (Amendment) Rules 2005

In exercise of the powers conferred by sections 42, 110, 115 and 115A of the Patents Act, the Minister for Law, after consulting with the Intellectual Property Office of Singapore, hereby makes the following Rules:

Citation and commencement

1.—(1) These Rules may be cited as the Patents (Amendment) Rules 2005 and shall, with the exception of rule 3, come into operation on 1st April 2005.

(2) Rule 3 shall be deemed to have come into operation on 1st January 2004.

Amendment of rule 17

2. Rule 17(1) of the Patents Rules (R 1) is amended by deleting the words “a copy thereof and” in the 10th and 11th lines.

Amendment of rule 18

3. Rule 18(3) of the Patents Rules is amended by deleting the words “rules 4.1 (a) (v)” and substituting the words “rules 4.1 (a) (iv)”.

Amendment of rule 33

4. Rule 33(1) of the Patents Rules is amended —

(a)	by inserting, at the end of sub-paragraph (c), the word “and”;
(b)	by deleting the word “; and” at the end of sub-paragraph (d) and substituting a full-stop; and
(c)	by deleting sub-paragraph (e).

Deletion and substitution of rule 43

5. Rule 43 of the Patents Rules is deleted and the following rule substituted therefor:

“Period prescribed under section 29 (2) (b) to (e) or (4)

43.—(1) Subject to paragraphs (2) and (3), the period prescribed for filing a request for a search and examination report under section 29 (2) (b) or a request for an examination report under section 29 (2) (c) (i), (d) (i) or (e) (i) or (4) shall be —

(a)

subject to sub-paragraph (b), 21 months from —

(i)	the declared priority date; or
(ii)	where there is no declared priority date, the date of filing of the application; or

(b)

where a new application is filed under section 20 (3), 26(6) or 47(4), 21 months from the actual date of filing of the new application.

(2) Subject to paragraph (3), where the Registrar sends the applicant a copy of the search report under section 29 (3) (b) at any time later than one month before the expiry of the period prescribed under paragraph (1)(a) or (b), as the case may be, the period prescribed for filing a request for an examination report under section 29 (4) shall be one month from the date of the Registrar’s notification under section 29 (3) (b).

(3) Where a request under sections 29 (7) and 30(1)(a) to extend a prescribed period under section 29 (2) (b), (c) (i), (d) (i) or (e) (i) or (4) and the corresponding prescribed period under section 30 (1) (a) is filed in accordance with rule 47A(1), the period prescribed for filing a request for a search and examination report under section 29 (2) (b) or a request for an examination report under section 29 (2) (c) (i), (d) (i) or (e) (i) or (4) shall be the prescribed extended period under section 29 (7) for performing that act.

(4) Subject to paragraph (5), the period prescribed for filing the prescribed information relating to a corresponding application under section 29 (2) (c) (ii), the prescribed information relating to a corresponding international application under section 29 (2) (d) (ii) or a notice in Patents Form 11C under section 29 (2) (e) (ii) shall be —

(a)

subject to sub-paragraph (b), 42 months from —

(i)	the declared priority date of the application; or
(ii)	where there is no declared priority date, the date of filing of the application; or

(b)

where a new application is filed under section 20 (3), 26(6) or 47(4), 42 months from the actual date of filing of the new application,

or the date on which section 30 (2) (c) is complied with and the prescribed fee for the grant of a patent is paid in accordance with rule 47(3), whichever is the earlier.

(5) Where a request under sections 29 (7) and 30(1)(a) to extend a prescribed period under section 29 (2) (c) (ii), (d) (ii) or (e) (ii) and the corresponding prescribed period under section 30 (1) (a) is filed in accordance with rule 47A(1), the period prescribed for filing the prescribed information relating to a corresponding application under section 29 (2) (c) (ii), the prescribed information relating to a corresponding international application under section 29 (2) (d) (ii) or a notice in Patents Form 11C under section 29 (2) (e) (ii) shall be —

(a)

subject to sub-paragraph (b), 39 months from —

(i)	the declared priority date of the application; or
(ii)	where there is no declared priority date, the date of filing of the application; or

(b)

where a new application is filed under section 20 (3), 26(6) or 47(4), 39 months from the actual date of filing of the new application.”.

Amendment of rule 46

6. Rule 46 of the Patents Rules is amended by inserting, immediately after paragraph (3), the following paragraphs:

“(3A) Subject to paragraph (3B), where an amendment of the specification of the application is filed under paragraph (3) —

(a)

it shall be in the form of a copy of the specification with the amendment indicated in the following manner:

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

(b)

the words “replacement sheet”, followed by the date of signing of the Patents Form 13A, shall be stated at the top right-hand margin of each sheet of the copy of the specification.

(3B) Paragraph (3A) shall not apply if the amendment is filed using the electronic online system, and the amendment shall instead comply with practice directions issued by the Registrar in place of the requirements of that paragraph.”.

Amendment of rule 48

7. Rule 48(1) of the Patents Rules is amended by deleting the words “rule 56 (3)” and substituting the words “rules 46 (3) and (3A) and 56 (1) and (3)”.

Amendment of rule 52A

8. Rule 52A of the Patents Rules is amended —

(a)

by deleting the word “fees” in paragraph (1)(a) and substituting the word “fee”; and

(b)

by inserting, immediately after paragraph (7), the following paragraphs:

“(7A) Subject to paragraph (7B), where a proposed amendment of the specification of the patent is filed under paragraph (7) —

(a)

it shall be in the form of a copy of the specification with the proposed amendment indicated in the following manner:

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

(b)

the words “replacement sheet”, followed by the date of signing of the Patents Form 13A, shall be stated at the top right-hand margin of each sheet of the copy of the specification.

(7B) Paragraph (7A) shall not apply if the proposed amendment is filed using the electronic online system, and the proposed amendment shall instead comply with practice directions issued by the Registrar in place of the requirements of that paragraph.”.

Amendment of rule 96A

9. Rule 96A of the Patents Rules is amended by deleting paragraph (2) and substituting the following paragraph:

“(2) The Registrar may issue practice directions specifying —

(a)	the forms and documents that are to be filed at or submitted to the Registry using the electronic online system;
(b)	the manner in which any such form or document is to be filed or submitted.”.

New rule 105A

10. The Patents Rules are amended by inserting, immediately after rule 105, the following rule:

“Filing of miscellaneous documents

105A. Where —

(a)	it is provided or directed that a specific numbered form is to be accompanied by a document when that form is filed at or submitted to the Registry, and that form is filed or submitted without that document;
(b)	any person wishes to file at or submit to the Registry any document (other than any letter to the Registrar or the Registry), and there is no provision or direction for that document to be filed or submitted using any specific numbered form; or
(c)	the Registrar has directed that a document be filed at or submitted to the Registry using Patents Form 99,

that document shall be filed or submitted using Patents Form 99.”.

Amendment of rule 108

11. Rule 108(3) of the Patents Rules is amended by deleting “38 (1)” and substituting “38”.

Amendment of First Schedule

12. The First Schedule to the Patents Rules is amended —

(a)

by inserting, immediately after item 56B, the following item:

“

56C.

On filing any miscellaneous document or documents

—

”; and

(b)

by deleting paragraphs (a) and (b) of item 59 and substituting the following paragraphs:

“

(a) Patents Form 10, 11, 12 or 45A and any document accompanying that form

120 plus 0.50 for each page of form or document

(b) Patents Form 8, 11A, 11B, 11C, 13 or 13A and any document accompanying that form

45 plus 0.50 for each page of form or document

”.

Amendment of Second Schedule

13. The Second Schedule to the Patents Rules is amended by inserting, immediately after the item relating to “Patents Form 55”, the following item:

“

Patents Form 99

Filing of Miscellaneous Document or Documents

”.

Transitional provisions

14.—(1) Rules 4, 7 and 11 shall only apply in relation to an application for a patent with a date of filing on or after 1st July 2004.

(2) Rule 5 shall only apply in relation to an application for a patent with a date of filing on or after 1st July 2004, and the revoked rule 43 of the Patents Rules (R 1) in force immediately before that date shall continue to apply to an application for a patent with a date of filing before that date.

(3) Rule 6 shall only apply in relation to a response filed on or after 1st April 2005 in support of an application for a patent with a date of filing on or after 1st July 2004.

[G.N. Nos. S 224/96; S 132/97; S 260/97; S 458/97; S 82/98; S 116/98; S203/99; S 286/99; S 510/99; S 300/2000; S 60/2001; S 500/2001; S 656/2001; S75/2002; S 355/2002; S 324/2003; S 503/2003; S 504/2003; S 366/2004]

Made this 7th day of March 2005.

LIEW HENG SAN

Permanent Secretary,
Ministry of Law,
Singapore.

[TMC 002/87B; AG/LEG/SL/221/2002/1 Vol. 6]