| 1. These Rules may be cited as the Patents Rules. |
2.—(1) In these Rules, unless the context otherwise requires —| “account holder” means a person registered as an account holder by the Registrar under rule 96D; |
| “appointed certification authority” means a certification authority appointed by the Registrar under rule 96C; |
| “authentication code” means an identification or identifying code, password or any other authentication method or procedure that may be assigned to or approved for an account holder by the Registrar; |
| “certificate of grant” means a certificate for the purposes of section 35 (1); |
| “certification authority” has the same meaning as in the Electronic Transactions Act (Cap. 88); |
| “convention country” has the same meaning as in section 17 (6); |
| “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 (2) 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the priority date claimed in the declaration has not been lost or abandoned and where the declaration has not been withdrawn before preparations for the publication of the application in suit have been completed by the Registry in accordance with section 27; or | | (b) | where an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 or 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; |
|
| “electronic online system” means the electronic online system established under rule 96A; |
| “electronic signature” has the same meaning as in the Electronic Transactions Act (Cap. 88); |
| “identification name” means an identification name assigned to an account holder by the Registrar under rule 96E; |
| “initiation date”, in relation to a new application for a patent, means the date on which the application was initiated by the filing at the Registry of any document which satisfies any condition referred to in section 26 (1) (a), (b) or (c); |
| “online system operator” means an online system operator appointed by the Registrar under rule 96B. |
(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, the Austrian Patent Office, the Danish Patent and Trademark Office and the Hungarian Patent Office. [S 501/2009 wef 22/10/2009] |
|
3.—(1) The fees to be paid in respect of matters arising under the Act or these Rules shall be those specified in the First Schedule.(2) Unless —| (a) | otherwise provided for in these Rules; or | | (b) | the Registrar permits or directs otherwise, |
| where a fee is specified in the First Schedule in respect of any matter, the fee shall be paid at the same time as the filing of the form corresponding to the matter. |
|
| (3) Unless the Registrar permits or directs otherwise, payment of a fee in connection with an act referred to in rule 96A(2) shall be made using the electronic online system if the act is carried out using that system. |
|
4.—(1) The Registrar shall publish in the journal —| (a) | the forms to be used for any purpose relating to —| (i) | any application for or grant of a patent; | | (ii) | any proceedings before the Registrar under the Act or these Rules; or | | (iii) | any other matter under the Act or these Rules; |
| | (b) | the Registrar’s directions relating to the use of any form; and | | (c) | any amendment or modification of any such form or direction. |
(2) Any form may be modified on the direction of the Registrar —| (a) | for use in a case other than the case for which it is intended; or | | (b) | for carrying out any transaction by means of the electronic online system. |
|
(3) Any reference in these Rules to a numbered form shall be construed as a reference to the current version of the form bearing the corresponding number which is —| (a) | described in the Second Schedule; and | | (b) | published in the journal. |
|
|
5. The Registrar may make an order for costs in respect of —| (a) | any of the matters set out in the second 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. |
|
6.—(1) Where the Registrar has made an order for costs in favour of a party to proceedings before the Registrar and the party wishes to have party and party costs taxed by the Registrar, the party shall, within one month from the date of the order for costs —| (a) | apply for the costs to be taxed by filing a copy of the bill of costs; and | | (b) | send at the same time a copy of the bill of costs to every other person entitled to be heard in the taxation proceedings. |
(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. |
|
7.—(1) If any party entitled to be heard in any taxation proceedings before the Registrar 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 the 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(4). |
|
| 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. |
|
(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. |
|
(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. |
|
(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. |
|
(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. |
|
| (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). |
|
|
| 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. |
|
|
(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. |
|
| (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. |
|
(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. |
|
|
|
| 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. |
|
|
| (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. [S 93/2007 wef 01/04/2007] |
|
| 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. |
|
| (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. |
|
|
|
