| 1. These Rules may be cited as the Patents Rules. |
2.—(1) In these Rules, unless the context otherwise requires —| [Deleted by S 81/2014 wef 14/02/2014] |
| [Deleted by S 81/2014 wef 14/02/2014] |
| [Deleted by S 81/2014 wef 14/02/2014] |
| “certificate of grant” means a certificate for the purposes of section 35(1); |
| [Deleted by S 81/2014 wef 14/02/2014] |
| “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the priority date claimed in the declaration has not been lost or abandoned and where the declaration has not been withdrawn before preparations for the publication of the application in suit have been completed by the Registry in accordance with section 27; or | | (b) | where an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; |
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| “electronic online system” means the electronic online system established under rule 96A; |
| [Deleted by S 81/2014 wef 14/02/2014] |
| [Deleted by S 81/2014 wef 14/02/2014] |
| “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); |
| [Deleted by S 81/2014 wef 14/02/2014] |
| “international preliminary report on patentability” means an international preliminary report on patentability (Chapter I of the Patent Co-operation Treaty), or an international preliminary report on patentability (Chapter II of the Patent Co-operation Treaty), referred to in the Regulations under the Patent Co-operation Treaty. [S 81/2014 wef 14/02/2014] |
(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. |
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| (3) [Deleted by S 210/2013 wef 08/04/2013] |
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| Definitions of “examination”, “search” and “supplementary examination” in Act |
2A.—(1) For the purposes of the definition of “examination” in section 2(1), the matters to be determined by an Examiner when conducting an examination in relation to an application for a patent are —| (a) | whether, taking into consideration all the relevant prior art, if any, that the Examiner is aware of or that has been discovered in a search —| (i) | the invention defined in each claim of the specification of the application satisfies each condition or requirement for patentability under section 13; [S 573/2017 wef 30/10/2017] | | (ii) | the conditions specified in section 25(4) and (5) have been complied with; | | (iii) | the application discloses any additional matter referred to in section 84(1) or (1A) or any matter referred to in section 84(2); |
| | (b) | whether the description, or any claim or drawing, in the application is so unclear, or any claim in the application is so inadequately supported by the description, that no meaningful opinion can be formed on whether the claimed invention satisfies all or any of the conditions for patentability under section 13(1); | | (c) | whether any claim in the application relates to an invention for which no search has been completed; and | | (d) | whether there is —| (i) | any other application for a patent for the same invention, with the same priority date, filed by the same applicant or his successor in title; and | | (ii) | any earlier grant of a patent for the same invention, with the same priority date, to the same applicant or his successor in title. |
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(2) For the purposes of the definition of “search” in section 2(1), the matters to be discovered by an Examiner when conducting a search in relation to an application for a patent are the relevant prior art contained in —| (a) | the documentation prescribed under rule 40; and | | (b) | any additional documentation that the Examiner is aware of and considers to be relevant. |
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(3) For the purposes of the definition of “supplementary examination” in section 2(1), the matters to be determined by an Examiner when conducting a supplementary examination in relation to an application for a patent (referred to in this paragraph as the application in suit) are —| (a) | whether each claim in the application is supported by the description of the invention; | | (b) | whether, at the time the prescribed documents referred to in section 29(1)(d) are filed, each claim in the application in suit is 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); |
| | (ba) | whether the invention defined in each claim of the specification of the application constitutes an invention; [S 573/2017 wef 30/10/2017] | | (c) | whether the invention is an invention referred to in section 13(2) that is not patentable; | | (d) | whether the invention is an invention referred to in section 16(2) that is not to be taken to be capable of industrial application; | | (e) | whether there is —| (i) | any other application for a patent for the same invention, with the same priority date, filed by the same applicant or his successor in title; and | | (ii) | any earlier grant of a patent for the same invention, with the same priority date, to the same applicant or his successor in title; and |
| | (f) | whether the application discloses any additional matter referred to in section 84(1) or (1A) or any matter referred to in section 84(2). [S 81/2014 wef 14/02/2014] |
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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 otherwise provided for in these Rules, or the Registrar permits or directs otherwise —| (a) | 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; and | | (b) | if the fee is not paid, the form shall not be treated as filed. [S 81/2014 wef 14/02/2014] |
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| (3) Unless the Registrar permits or directs otherwise, payment of a fee in connection with an act referred to in rule 96A(2)(a) shall be made using any mode of payment designated by the electronic online system if the act is carried out using that system. [S 81/2014 wef 14/02/2014] [S 739/2014 wef 13/11/2014] |
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4.—(1) The Registrar shall publish at the Office’s Internet website at http://www.ipos.gov.sg —| (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. [S 739/2014 wef 13/11/2014] |
(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. |
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(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 at the Internet website referred to in paragraph (1). [S 739/2014 wef 13/11/2014] |
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| (4) The matters referred to in the Act, including sections 17(2D), 25(1) and (9), 26(8), 27(1), 28(4) and (8), 29(9), 29B(2), 31(1), 36A(10), 42(8), 80(9) and 108(1), of the Act, shall be filed with, made to or given to, the Registrar, or done in an effective and efficient manner by means which may be specified by the Registrar by the issuance of practice directions. [S 739/2014 wef 13/11/2014] |
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5. The Registrar may make an order for costs in respect of —| (a) | any of the matters set out in the second column of the Third Schedule; and [S 81/2014 wef 14/02/2014] | | (b) | the expenses and allowances of a person in relation to proceedings under the Act or these Rules. |
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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 after the relevant date referred to in paragraph (1A) —| (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. [S 81/2014 wef 14/02/2014] |
(1A) For the purposes of paragraph (1), the relevant date is —| (a) | subject to sub-paragraph (b), the date of the order for costs made by the Registrar; or | | (b) | where any appeal is brought in respect of that order for costs, the date on which that appeal is finally disposed of. [S 81/2014 wef 14/02/2014] |
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(2) Every bill of costs shall set out in 3 separate sections the following:| (a) | work done in the cause or matter (other than for or in the taxation of costs); | | (b) | work done for or in the taxation of costs; and | | (c) | all disbursements made in the cause or matter. [S 81/2014 wef 14/02/2014] |
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| (3) The costs claimed under paragraph (2)(a), (b) and (c) shall set out the sum claimed for each item. [S 81/2014 wef 14/02/2014] |
| (4) The bill of costs shall set out in chronological order, with dates, all relevant events in the cause or matter, all relevant events in the taxation of costs, and all relevant events relating to the making of disbursements. [S 81/2014 wef 14/02/2014] |
| (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 one month after 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. [S 81/2014 wef 14/02/2014] |
| (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. |
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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 in the Third Schedule shall apply to the sections of the bill of costs relating to —| (a) | work done in the cause or matter (other than for or in the taxation of costs); and | | (b) | work done for or in the taxation of costs. [S 81/2014 wef 14/02/2014] |
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| (4) When the bill has been taxed, the party who applied for the costs to be taxed shall file Form HC2, and the Registrar shall proceed to make his certificate for the amount of the taxed costs. [S 81/2014 wef 14/02/2014] |
| (5) Costs awarded in proceedings before the Registrar are not intended to compensate the parties for the expense to which they have been put. |
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| Written evidence in support of circumstances in section 14(4), etc. |
8.—(1) The written evidence filed under section 14(5C) by an applicant for a patent must comply with the following requirements:| (a) | the written evidence must be by statutory declaration or affidavit, and must enclose all supporting documents; | | (b) | where the applicant relies on the circumstances described in section 14(4)(c), the written evidence must —| (i) | state that the invention to which the applicant’s application relates was in fact displayed at an international exhibition; | | (ii) | state the opening date of the exhibition and, where the first disclosure of the invention did not take place on that date, the date of the first disclosure; and | | (iii) | enclose one or more supporting documents identifying the invention that was displayed at the exhibition; |
| | (c) | where the applicant claims that the publication by a foreign intellectual property office of an application for an intellectual property right (being an application containing matter constituting the invention to which the applicant’s application relates), or a registration of an intellectual property right pursuant to such an application, was erroneous for a reason mentioned in section 14(5A)(b) or (5B)(b), the written evidence must enclose an acknowledgment from the foreign intellectual property office —| (i) | stating that the publication was erroneous and the reason for the publication being erroneous; and | | (ii) | if section 14(5B)(b) applies, stating the earliest date on which the publication ought to have been made under the law or treaty governing the application. |
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| (2) 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). |
| (3) In this rule, “foreign intellectual property office” has the same meaning as in section 14(8). [S 573/2017 wef 30/10/2017] |
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| 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. |
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(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. |
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(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. |
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(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. |
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(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. |
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| (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). |
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| 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. |
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(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. |
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| (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. |
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(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. |
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| 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) | Form CM12 requesting the Registrar to certify the prepared copy. [S 81/2014 wef 14/02/2014] |
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| (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. |
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| 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 |
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| | (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) | Form CM12 requesting the Registrar to certify the prepared copy. [S 81/2014 wef 14/02/2014] |
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| (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. |
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