Patents Rules - Singapore Statutes Online

Patents Act

(Chapter 221, Sections 42, 110 and 115)

Patents Rules

R 1

G.N. No. S 1/1995

REVISED EDITION 1996

(15th May 1996)

[23rd February 1995]

PRELIMINARY

Citation

1. These Rules may be cited as the Patents Rules.

Definitions

2.—(1) In these Rules, unless the context otherwise requires —

“costs” includes fees, charges, disbursements, expenses, allowances and remuneration;

“declared priority date” means —

(a)

the date of filing of the earliest relevant application specified in a declaration made for the purposes of section 17 where the priority date claimed in the declaration has not been lost or abandoned and where the declaration has not been withdrawn before preparations for the publication of the application in suit have been completed by the Registry in accordance with section 27; or

(b)

where an international application for a patent (Singapore) is to be treated as an application for a patent under the Act, the date of filing of the earliest application filed in or for a country which is a convention country specified in an order made under section 89or which, in accordance with the law of a convention country or a treaty or international convention to which a convention country is a party, is equivalent to such an application, the priority of which is claimed in a declaration filed for the purposes of Article 8 of the Patent Co-operation Treaty, provided that such priority claim has not been lost or abandoned under the provisions of that Treaty.

(2) In these Rules, except where otherwise indicated —

(a)	references to a section are references to that section of the Act;
(b)	references to a rule are references to that rule in these Rules;
(c)	references to a Schedule are references to that Schedule to these Rules; and
(d)	references to the filing of a form or other document are references to filing it at the Registry.

(3) The Examiners prescribed for the purposes of section 2 shall be the Australian Patent Office and the Austrian Patent Office.

Fees

3. The fees to be paid in respect of any matters arising under the Act or these Rules shall be those specified in the First Schedule and, in any case where a form specified in that Schedule as the corresponding form in relation to any matter is required to be used, that form shall be accompanied by the fees specified in respect of that matter.

Forms

4. The forms mentioned in these Rules are those set out in the Second Schedule, modified as necessary to enable them to be used, accompanied by the appropriate fee (if any) and such forms shall be used in all cases in which they are applicable and may be modified as directed by the Registrar to meet other cases.

Costs

5. The Registrar may make an order for costs in respect of —

(a)	any of the matters set out in the first column of Part I of the Third Schedule; and
(b)	the expenses and allowances of a person in relation to proceedings under the Act or these Rules.

Taxation of costs

6.—(1) A party may request for party and party costs to be taxed by filing a copy of the bill of costs at the Registry and he shall, at the same time, send to every other person entitled to be heard in the taxation proceedings, a copy of the bill of costs.

(2) Every bill of costs shall set out in 2 separate sections the following:

(a)	work done in the cause or matter; and
(b)	all disbursements made in the cause or matter.

(3) The costs claimed under paragraph (2) shall set out the sum claimed for each item.

(4) The bill of costs shall set out in chronological order, with dates, all relevant events in the cause or matter.

(5) Where costs have already been awarded for any of the events set out, this fact and the amount awarded shall be indicated.

(6) Any party on whom a copy of the bill of costs has been served in accordance with paragraph (1) shall, if he wishes to dispute the bill, within 14 days from the receipt of the copy of the bill, mark the copy thereof in accordance with paragraph (7) and send a copy thereof duly marked to both the Registrar and the party requesting for taxation.

(7) A party on whom a copy of the bill of costs has been served shall effect marking on the copy thereof served by writing on the right hand margin against each item the word “Agree” if he agrees with the cost claimed for that item or the word “Disagree” if he disagrees.

(8) Upon the expiry of the period of time referred to in paragraph (6), the Registrar shall give to the parties entitled to be heard in the taxation proceedings notice of the date and time appointed for taxation.

Taxation proceedings

7.—(1) If any party entitled to be heard in any taxation proceedings does not attend at the time appointed for the taxation, the Registrar may proceed with the taxation.

(2) The Registrar may, if he thinks it is necessary to do so, adjourn the proceedings from time to time.

(3) The provisions relating to the scale of costs in the Third Schedule shall apply to the taxation proceedings.

(4) When the bill has been taxed, the Registrar shall proceed to make his certificate for the amount of the taxed costs.

(5) Costs awarded in proceedings before the Registrar are not intended to compensate the parties for the expense to which they have been put.

International exhibitions

8.—(1) An applicant for a patent who wishes the disclosure of matter constituting an invention to be disregarded in accordance with section 14 (4) (c) shall, within the same day of filing the application for the patent, inform the Registrar in writing that the invention has been displayed at an international exhibition.

(2) The applicant shall, within 4 months from the day of filing the application, file a certificate, issued by the authority responsible for the exhibition, stating that the invention was in fact exhibited there.

(3) The certificate shall also state the opening date of the exhibition and, where the first disclosure of the invention did not take place on the opening date, the date of first disclosure.

(4) The certificate shall be accompanied by an identification of the invention, duly authenticated by the authority.

(5) For the purposes of section 2 (2), a statement may be published in the Journal that an exhibition described in the statement falls within the definition of international exhibition in section 2 (1).

(6) In the case of an international application for a patent (Singapore), the application of this rule shall be subject to rule 86(3).

Declaration of priority

9.—(1) A declaration claiming priority for the purpose of section 17 shall be made within the same day of filing the application for a patent (“the application in suit”) and shall state the date of filing of any application specified in the declaration and the country in or for which it was filed.

(2) Subject to rule 28, where the application in suit is for a patent under the Act, the applicant shall, within 16 months from the declared priority date, furnish to the Registry in respect of every application specified in the declaration its file number.

(2A) Subject to paragraph (4), the applicant shall, within 22 months from the declared priority date, furnish to the Registry, in respect of every application specified in the declaration, a copy of that application duly certified by the authority with which it was filed or otherwise verified to the satisfaction of the Registrar.

(3) Where an application specified in the declaration is an application for a patent under the Act or an international application for a patent which is filed at the Registry —

(a)

if the application is filed under section 26 (6), the applicant shall, at the time of filing the application, file —

(i)	a request that a copy of the application specified in the declaration be prepared for use in the Registry; and
(ii)	Patents Form 26 requesting the Registrar to certify the same; or

(b)

if the application is filed otherwise than under section 26 (6), the applicant shall file that request and that form in compliance with any request made by the Registrar.

(4) Where the application in suit is an international application for a patent (Singapore) which is to be treated as an application for a patent under the Act, the requirements of paragraphs (1), (2) and (2A) shall be treated as having been complied with to the extent that the requirements of rules 4.10 (a) and (c) and 17.1 (a) or (b) of the Regulations under the Patent Co-operation Treaty have been fulfilled.

(5) Where a copy of an application is filed or treated as having been filed under paragraph (2A), (3) or (4) and that application is in a language other than English, a translation thereof into English, verified to the satisfaction of the Registrar as corresponding to the original text, shall be filed within 22 months from the declared priority date.

(6) In the case of an international application for a patent (Singapore), the application of paragraph (5) shall be subject to rule 86(4)(c).

(7) If the applicant fails to satisfy the requirements of paragraph (2), (2A) or (5) within the time specified or as extended under rule 108, the claim to priority shall be deemed to be relinquished.

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