No. S 566
Patents Act
(Chapter 221)
Patents (Patent Agents) (Amendment) Rules 2009
In exercise of the powers conferred by section 104 of the Patents Act, the Minister for Law hereby makes the following Rules:
Citation and commencement
1.  These Rules may be cited as the Patents (Patent Agents) (Amendment) Rules 2009 and shall come into operation on 15th December 2009.
Amendment of rule 3
2.  Rule 3 of the Patents (Patent Agents) Rules 2001 (G.N. No. S 645/2001) (referred to in these Rules as the principal Rules) is amended —
(a)by deleting the words “For the avoidance of doubt and subject to rule 17(2)(f)(ii),” in paragraph (3) and substituting the words “Subject to paragraph (4),”; and
(b)by inserting, immediately after paragraph (3), the following paragraph:
(4)  The fee referred to in rule 17(2)(f)(ii), for making a complaint or giving information against a registered patent agent, shall be refundable at the end of an inquiry by the Disciplinary Committee into the complaint or information, unless —
(a)the Disciplinary Committee determines under rule 18(5) that the complaint or information is frivolous or vexatious; or
(b)the complaint or information is withdrawn by the person who made the complaint or gave the information.”.
Amendment of rule 9
3.  Rule 9 of the principal Rules is amended —
(a)by deleting the words “take out professional indemnity insurance” in paragraph (1) and substituting the words “ensure that professional indemnity insurance has been obtained”;
(b)by deleting sub-paragraph (vii) of paragraph (4)(b) and substituting the following sub-paragraph:
(vii)in a case where paragraph (1) applies, that he has ensured that the professional indemnity insurance referred to in that paragraph has been obtained; and”;
(c)by deleting sub-paragraphs (A) and (B) of paragraph (4)(c)(i) and substituting the following sub-paragraphs:
(A)he will ensure that the professional indemnity insurance that has been obtained will be maintained in force at all times during the practice year in question; and
(B)where the insurance that has been obtained is due to expire before the end of the practice year, he will ensure that the insurance is renewed before such expiry;”; and
(d)by deleting the words “take out the professional indemnity insurance referred to in paragraph (1)” in paragraph (4)(c)(ii) and substituting the words “ensure that the professional indemnity insurance referred to in paragraph (1) has been obtained,”.
Amendment of rule 10
4.  Rule 10 of the principal Rules is amended by deleting paragraph (1) and substituting the following paragraph:
(1)  A practising certificate issued to a registered patent agent under rule 9 —
(a)shall be in force from —
(i)the date of its issue; or
(ii)if it is applied for before the beginning of the practice year in question, the first day of the practice year; and
(b)shall cease to be in force —
(i)when the registered patent agent ceases to practise or to be employed as a registered patent agent;
(ii)upon the occurrence of any of the following events:
(A)the registered patent agent ceases to be resident in Singapore;
(B)the registered patent agent has been convicted of an offence under the Act;
(C)the registered patent agent has been convicted of a criminal offence implying a defect of character which makes him unfit for his profession;
(D)the registered patent agent ceases to meet any requirement of these Rules by virtue of which he was registered; or
(E)in a case where rule 9(1) applies to the registered patent agent, the professional indemnity insurance referred to therein has not been obtained or has expired; or
(III)when the Registrar subsequently issues another practising certificate to the registered patent agent.”.
New Part IIA
5.  The principal Rules are amended by inserting, immediately after rule 15, the following Part:
PART IIA
PROFESSIONAL PRACTICE, CONDUCT AND DISCIPLINE
Code of conduct
15A.—(1)  Every registered patent agent who has in force a practising certificate shall comply with the Code of Conduct set out in the Fifth Schedule.
(2)  Disciplinary proceedings may be taken against any registered patent agent referred to in paragraph (1) who contravenes any provision of the Code of Conduct.”.
Amendment of rule 17
6.  Rule 17 of the principal Rules is amended —
(a)by deleting the words “, which is refundable at the end of the inquiry of the Disciplinary Committee unless it otherwise determines under rule 18(5)” in paragraph (2)(f)(ii); and
(b)by inserting, immediately after paragraph (4), the following paragraph:
(5)  Where the complainant withdraws the complaint made or information given by him before the Registrar has referred the complaint or information to the Disciplinary Committee or before the conclusion of the inquiry by the Disciplinary Committee into the complaint or information —
(a)the Registrar may, notwithstanding such withdrawal, refer the complaint or information to the Disciplinary Committee or direct the Disciplinary Committee to continue the inquiry, as the case may be;
(b)the Disciplinary Committee shall comply with the direction; and
(c)all future proceedings on the complaint or information shall be taken as if the complaint had been made, or the information had been given, by the Registrar.”.
Amendment of rule 20
7.  Rule 20 of the principal Rules is amended by deleting paragraph (4) and substituting the following paragraph:
(4)  The Disciplinary Committee shall serve on the Registrar, the affected person and the complainant (if he is not the Registrar) a report of its decision, including —
(a)a record of the proceedings before it; and
(b)the grounds for its decision.”.
Amendment of rule 22
8.  Rule 22(5) of the principal Rules is amended by deleting the word “Board” and substituting the words “Disciplinary Committee”.
New Fifth Schedule
9.  The principal Rules are amended by inserting, immediately after the Fourth Schedule, the following Schedule:
FIFTH SCHEDULE
Rule 15A(1)
Code of Conduct
Application
1.  This Code of Conduct shall only apply to any registered patent agent who has in force a practising certificate.
Qualification to undertake work
2.—(1)  A registered patent agent shall not undertake any work which he is not qualified to undertake.
(2)  Without prejudice to the generality of sub-paragraph (1), a registered patent agent shall not purport to be able to represent his client before the court, if he is not qualified to do so.
(3)  A registered patent agent shall inform his clients of his qualifications to practise.
(4)  A registered patent agent shall ensure that —
(a)he has the requisite expertise (including technical expertise) to deal with a matter, before he agrees to deal with the matter; and
(b)he applies the requisite level of expertise (including technical expertise) when dealing with the matter.
(5)  A registered patent agent shall, if asked by a client to deal with a matter in respect of which he lacks any requisite expertise (including technical expertise) —
(a)inform the client that he lacks the requisite expertise to do so; and
(b)recommend that the client transfer the matter to a person who is qualified to deal with the matter.
Responsibility for work, act or omission of other person
3.—(1)  A registered patent agent shall be responsible for —
(a)any work done by, and any act or omission of, his employee (not being a registered patent agent); and
(b)any work, act or omission which is expressly or impliedly sanctioned by him.
(2)  A registered patent agent shall actively supervise his employee (not being a registered patent agent).
(3)  If an employee (not being a registered patent agent) of a registered patent agent deals with a client of the registered patent agent, the registered patent agent shall ensure that the client is informed that the employee is not a registered patent agent.
Referral to other person
4.  A registered patent agent who engages any other person, whether in Singapore or elsewhere, to act on behalf of a client in a matter shall ensure that the other person is qualified, and has the requisite expertise (including technical expertise), to deal with the matter.
Maintenance of professional standards
5.—(1)  A registered patent agent shall at all times maintain the standards of his profession, and be courteous and ethical.
(2)  A registered patent agent shall ensure that he understands, and is aware of any changes to —
(a)the Patents Act (Cap. 221) and all subsidiary legislation made under that Act; and
(b)the practices of the Registry and the Office.
(3)  A registered patent agent shall not be fraudulent or deceitful.
(4)  A registered patent agent shall ensure that his client is made aware of the implications, in terms of procedures, costs and timing, of any course of action recommended by him.
(5)  A registered patent agent shall, at the request of his client, provide a detailed estimate of the costs of acting for the client in a matter.
(6)  A registered patent agent shall not undertake any work in such a manner as to unnecessarily or improperly escalate any costs that may be payable to him.
(7)  A registered patent agent shall not overcharge his client.
(8)  A registered patent agent who withdraws his services or ceases to act for a client shall, before doing so, inform the client of any actions necessary to protect or maintain the client’s rights and interests in any patent or application for a patent.
Touting
6.  A registered patent agent shall not —
(a)tout for business; or
(b)do any thing which will reasonably lead to the inference that the thing is done for the purpose of touting.
Referral by other person
7.  Where a client is referred to a registered patent agent by any other person (referred to in this paragraph as the referrer), the registered patent agent —
(a)shall maintain his professional independence and integrity, and shall not permit his professional independence and integrity to be undermined by the referrer;
(b)shall not pay the referrer any commission or other consideration, or otherwise reward the referrer;
(c)shall not allow the referral, his relationship with the referrer, or any desire to avoid offending the referrer, to affect his advice to the client in any way;
(d)shall advise the client impartially and independently;
(e)shall ensure that any decision made by him in relation to the nature, style and extent of his practice are not, in any way, influenced by the referrer; and
(f)shall, while engaged by the client, communicate directly with the client when obtaining or confirming any instructions or giving any advice.
Clients’ moneys
8.—(1)  A registered patent agent shall deal with his clients’ moneys in accordance with the applicable accounting standards made or formulated by the Accounting Standards Council under the Accounting Standards Act (Cap. 2B).
(2)  A registered patent agent shall not use any moneys paid by a client for any purpose other than the purpose for which the client paid the moneys.
Acting in client’s interests
9.—(1)  A registered patent agent shall at all times act in accordance with the law and in the interests of his client.
(2)  A registered patent agent shall —
(a)act promptly on his client’s instructions; or
(b)promptly inform his client, if he is unable to do so.
(3)  A registered patent agent shall not take advantage, for his own benefit or the benefit of any other person, of —
(a)any information given to him by his client; or
(b)any circumstances arising from his professional relationship with his client.
(4)  A registered patent agent shall —
(a)give his client a reasonable opportunity to view the drafts of his client’s specification, before his client’s application for a patent is filed; or
(b)inform his client, if there is insufficient time to do so.
(5)  A registered patent agent shall make available or forward to his client, on his client’s request, all documents, samples and other materials that belong to the client, subject to any lien which the registered patent agent may have on those documents, samples or materials under any written law.
Confidentiality
10.—(1)  Except with the consent of a client or as required by law or any order of any court of competent jurisdiction, a registered patent agent shall not disclose, directly or indirectly —
(a)any confidential information which he receives as a result of the retainer by the client; or
(b)the contents of any papers containing any instructions from the client.
(2)  Notwithstanding sub-paragraph (1), a registered patent agent may utilise any confidential information referred to in sub-paragraph (1)(a) and any contents referred to in sub-paragraph (1)(b) to respond to or defend, whether before any court of competent jurisdiction or any Disciplinary Committee —
(a)any charge or complaint relating to his professional conduct; and
(b)any complaint made or information given against him under rule 17.
Conflict of interests
11.—(1)  A registered patent agent shall take all reasonable steps to avoid being placed in a situation where there is a conflict between —
(a)his interests and the interests of one or more of his clients; or
(b)the interests of 2 or more of his clients.
(2)  Where there is any actual or potential conflict of interests referred to in sub-paragraph (1), a registered patent agent shall —
(a)take immediate steps to resolve the actual or potential conflict of interests; and
(b)ensure that none of his clients are adversely affected by the actual or potential conflict of interests.
Misleading or deceptive conduct or practice
12.—(1)  A registered patent agent shall not engage in any conduct or practice that is misleading or deceptive, or that is likely to mislead or deceive, in his dealings with the Registrar, the Registry, the Office or any other person.
(2)  Without prejudice to the generality of sub-paragraph (1), if any advertising or promotional activities are conducted by or on behalf of a registered patent agent, he shall ensure that —
(a)all statements made in the course of those activities —
(i)are honest and accurate; and
(ii)are not misleading, deceptive or likely to mislead or deceive; and
(b)if any such statements contain comparisons or are of a comparative nature —
(i)those statements are supported by facts; and
(ii)the comparisons are not misleading or likely to mislead.
(3)  In this paragraph, “mislead” includes —
(a)lie;
(b)lead to a wrong conclusion;
(c)create a false impression;
(d)omit or conceal relevant information; and
(e)make false or inaccurate claims,
and “misleading” shall be construed accordingly.”.
[G.N. No. S 92/2007]

Made this 13th day of November 2009.

CHAN LAI FUNG
Permanent Secretary,
Ministry of Law,
Singapore.
[LAW 18/001/006; AG/LEG/SL/221/2002/1 Vol. 8]