SG Patents Act 26 Nov 2023 Flashcards
57(1)
Rights of thrid parties to bring infringement proceedings do not apply under s56
34(3)
Offence of s34(1) is liable to $5000 fine, 2 year prison or both
25(5)(b)
Claims shall be clear and concise
16(3)
Allow use of product for treating diseases (e.g., 1st MU, Swiss-type 2nd MU). Supplemented by s14(10)
30
The Registrar must grant a patent application if it fulfills all the following conditions:
(1) all formal requirements are met
(2) a notice of eligibility has issued
(3) prescribed documents (r47(4A), PF14 and ) for grant of patent have been filed
29(5)
After applicant requests search and examination report, the Registrar must (a) cause the examiner to carry out both search and examination; and (b) forward the search and examintion report to applicant when available
75
If transactions of assignment or exclusive licensing have happened, in order to award any infringment remedies, the transactions need to
(a) be registered within 6 months or
(b) convince the court with a reason for the delay
29(4)
After applicant requests examination report, the Registrar must (a) cause the examiner to carry out the examination; and (b) forward the examintion report to applicant when available
27(3)
Registrar may omit matter in the application which harms a person or the society
26(1)
Earliest date of filing captured when submitting
(a) documents indicate a patent is sought
(b) documents identify the applicant
(c) (i) description or (ii) to claim priority, submit a reference, date/country of filing, a statement that the description is incorporated by reference and is contained in the earlier application
13(3)
Non-patentable invention: subject-matter probihited by the law may not fall under 12(2)
20(3)
After the ownership of the patent application is questioned under 20(1)(a), and the application is asked to be amended, refused or withdrawn, the Registrar may order the rightful owner to make a new application, which will have the same filing date as the earlier application
41(4)(a)
Sub-licence can be granted, licence and sub-licence can be assigned or mortgaged
26(12)
The filed application is treated as having been abandoned unless
(a) file one or more claims
(b) pay filing fee
(c) if priority is claimed, submit the required documents under s26(7)
29B(7)
After a negative review examiantion report and notice of refusal are received, the application will be refused 2 months (r46A(5)) after the date of Registrar’s letter
56(2)
Under 56(1)(b), government may import health products after notifying Council for TRIPS
13(2)
Non-patentable invention: encourage offensive, immoral or anti-social behaviours
53(3)(d)
after date of entry of 53(2), renewal fee of the patent is halved as compared to normal rate
80(2)
Upon receiving an application (and fees) to revoke a patent, the court or Registrar may cause the patent to be re-examined by an Examiner
2(1) “inventor”
Define “inventor” as the actual deviser of the invention
61
Government to inform patent owner promptly of actions done under s56
17(4)
request to Registrar to claim priority after the normal 12 months period
26(8)(b)
when the application does not claim any earlier priority
36A(1)(a)
May apply extension of term of patent if there was unreasonable delay in granting the patent
29B(1)
Submit request for a review of an examination report may be made (a) within 2 months (r46A(2)) after the date of Registrar’s letter forwarding notice of intention to refuse with PF12B (r46A(1)); and (b) written submissions
82
Proceedings in which validity of patent may be put in issue
54(2)
Entry is cancelled on after (1) discounted renewal fees are paid and (2) all licensees, if any, consent to the cancellation
69(3)
Remedies of infringement are only carried out after any overdue renewal fees have been paid
67(2)
Court can only ask infringer to pay either damages or an account of profits
39(1)
Restoration of a lapsed patent may be made within 18 months (r53(1)(a)) from the day it lapsed
14(2)
state of the art: made available to the public (note: without an inhibiting fetter) before pirority date of the invention
53(6)
2 months after a general licensee requests owner to bring infringement proceedings without success, the general licensee can bring the proceedings on his own
29(3)
after receiving search report, applicant must within 36 months (r43(1)) from the filing date, file a request for examination report using PF12 (r42(1));
If the research report is received within one month before the 36-month deadline, the new deadline shall be one month from the date of Registrar’s letter forwarding the report
29B(6)(a)
After a positive review examination report and notice of eligibity are received, the deadline to put the application in order is 2 months (r47(2)) after the date of Registrar’s letter
49(1)
Invention made by an employee is taken to belong to the employee’s employer if satisfies
(a) invention was made via normal duties, or specifically assigned, reasonably be expected to result from the carrying out of employee’s duties; and
(b) employee had a special obligation ot further the interests of the employer’s undertaking
69(2)
Patent marking on product should show patent number to avoid the “not aware of” infringement defence
86(3)
Initiate national phase within 30 months (r86(a)) of filing date of international phase application
29(2)
After request for a search report filed under 29(1)(a), the Registrar must (a) cause the application to a search by an examiner; and (b) after receiving search report, send it to the applicant
71(1)
Infringing defence: potential infringing product has been produced before the priority date of the patent and was done in good faith, such product can be produced continuously (it also implies that relevant info used by the defendant was not made available to the public prior to the priority date of the infringed patent, otherwise the info can be used to revoke the patent in question)
17(5)
request for late declaration needs to show (a) due care has been taken OR (b) unintentional
25(5)(c)
Claims be supported by the description. Related to enablement. May overlap with sufficiency. Not a grounds for revocation
29(7)
A WO to be issued if there is any objections
66(2)(a)
Infringement defence: done privately, non-commercial
14(3)
state of the art exception: earlier SG!!! application published after priority date of this invention, and contain the same subject matter when filed and published, considered for novelty but not inventive step evaluation
always check if the prior art is validly entitled to the earliest priority date
27(1)
subject to s33 and if the application is not withdrawn/refused/abandoned, the registrar must publish the application (and any amendments) after 18 months (r29(1))
83
Amendment of specification during proceedings before the court or Registrar as to the validity of a patent
55(1)
any person may apply to the court to grant a compulsory licence to remedy anti-competitive practice
73(2)
If there are 2 or more patent owners, infringement proceedings can be brought by just one of the owners
71(3)
Rights under s71(1) may be assigned or transmitted, or the person having the right can authorise the doing of that act by any business partner
77(2)
To negate claim under 77(1), defendant must show infringement AND claimant cannot provide evidence otherwise
77(1)
Any person aggreieved by threats of proceedings for any infringement of a patent (except for making or importing a product for disposal or of using a process 77(4)) may bring proceedings in the court, claiming any relief mentioned in 77(3)
43(1)
Later registration of rights to patent or application can dispute earlier alleged transactions which have not been registered or not known by the person claiming the later registration
29(12)
Option D is not available for applications with filing dates on or after 1 Jan 2020 (r43(4))
29A(3)
In case of adverse examination report, a notice of intention to refuse is issued
25(4)
Sufficiency of application: disclose the invention clearly and completely for the invention to be performed by a PSA. Disclosure is sufficient if the PSA can identify any obvious error and try to make the invention work
84(2)
If an application is (a) filed by claiming priority to an earlier application and stating that the description is incorporated by reference and is completely contained in the earlier application AND (b) discloses matter extending beyond the earlier application, then the application is not allowed to proceed unless the additional matter is excluded
54(1)
Entry made under s53 may be cancelled any time
28(1)
Registrar must conduct preliminary examination
58
Provision to dispute government use of patented invention under s56
41(1)
Patent or application is personal property, can be transferred
78(1)
If a person failed to obtain from patent owner a declaration of immunity to infringement, the declaration the court may be made by the court
53(2)
if application under 53(1) is made, the Register must give notice to any patent owner or licensee, and make the entry on whether patent owner can grant licences
25(5)(d)
Claims relate to one invention or inventions of a single inventive concept
14(4)
12 months grace period: matter made avialable to the public is excluded from the SOTA
38(1)
The Registrar may allow post-grant amendment of a patent, no added matter under s84(4)(a), no extension beyond protection conferred by patent under s84(4)(b); pf17 (r52(1))
80(1)
The court or the Registrar may revoke a patent on the grounds:
(a) invention is not patentable; (b) patent was not granted to a person entitled; (c) patent specification has sufficiency issue; (d) patent has added matter; (e) an unallowed correction or amendment was made; (f) patent was obtained fraudulently; (g) double patenting, i.e., same priority date, same applicant/successor, and same invention. (compare to s38A on re-examination, s80(1) includes additional (b) and (f) conditions)
34(1)
Resident of Singapore needs to obtain national security clearances from the Registrar before filing or cause to file outside SG unless:
(a) an SG application of the same invention has been filed 2 months earlier
(b) no directions are given under s33 (relating to defence of SG and public safety)
84(4)
Amendments of specification of a patent should not (a) contain added matter; or (b) extend beyond the protection conferred by the patent
27(2)
applicant may request application to be published earlier
66(2)(g)
Infringement defence: parallel importation (except pharma products s66(3))
29(1)(b)
Request search and examination report under Option B using PF11 (r37)
68(1)
Burden of proving innocence is on the alleged infringer provided…
105(1)
only registered patent agent, certified advocate or solicitor can carry on a businees, practise or act as a patent agent; s105(2) applies to partnership; s105(3) applies to body corporate
29A(4)(a)
In response to the notice of intention to refuse, a review of the examination report may be applied within 2 months (r46A(2)) after the date of Registrar’s letter forwarding the notice
26(11)
Divisional application can be filed before parent application is granted, refused, withdrawn or abandoned, the div has the same date of filing as the parent application
13(1)(a)
Patentable invention: novelty
113
Extent of invention: codifies a purposive approach to claim construction for considering the whole specification, interpreted by the description and any drawings in the spec
20(1)
anytime before grant
(a) any person may question the applicant is entitled
(b) applicant may ask to transfer to/add other applicants
46(1)
Multiple patent owners are each entitled to ann equal undivided share in the patent
66(2)(d)
Infringement defence: actions done on an airborne vehicle temporarily or accidentally entered SG territory or accessories used for such a vehicle
66(1)
Define acts of infringement (in SG, without consent);
(a) product: make, dispose of, offer to dispose of, use or import or keep it whether for disposal or otherwise;
(b) process: use or offer it for use in SG when ther person know, or it is obvious, that its use without the consent of the proprietor would be an infringement;
(c) process: dispose of, offer to dispose of, use or import any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise
67(1)
Remedies for infringement, bring civil proceedings in the court
(a) injunction; (b) deliver up or destroy infringing product; (c) damages; (d) an account of profits; (e) declaration that patent is valid
15
Inventive step: no obvious to a PSA, s14(3) not considered to IS assessment (i.e., it is possible to have claims not novel but inventive)
41(6)
assignment or mortgages need to be in writing and signed by the assignor or mortgagor, a body corporate needs to sign or use a seal (best to have both)
29(1)(d)
Request supplementary examiantion report under Option D using PF12A (r42A(1)) within 54 months from filing date (r43(3))
38A(1)
Any person may request (use PF36, r52A(1)) the Registrar to conduct post-grant re-examination on the grounds that
(a) invention is not patentable; (b) insufficiency; (c) added matter; (d) post-grant amendment added matter; (e) pre-grant amendment added matter; (f) correction should not have been allowed; (g) double patenting.
32(1)
After a patent application is published, a third party observation may be submitted (before an examination report is issued according to s32(2)) to the Registrar. The Registrar must given written notice regarding the TPO to the applicant (r45A(1)).
14(10)
Allow new medical uses of known substances, whether it is 1st or 2nd MU. 1st MU is also a purpose-limited product claim, while Swiss-type is a purpose-limited process claim
55(2)
court may determine if grant of licence is necessary to remed an anti-competitive practice (a) there is a market for the patented product in SG; (b) that market is not being supplied or not being supplied on reasonable terms and the court thinks that the patent owner has no valid reason for failing to supply the market whether directly or through a licensee
17(2)
Claiming the date of filing of the earliest priority document disclosing the same (a) invention or (b) matter, the request needs to be made by the same applicant or predecessor in title of the applicant
66(2)(e)
Infringement defence: use of exempted aircraft udner s66(2)(d) or import of parts of such an aircraft
53(1)
After grant, owner may apply to the Register to record that licences under the patent are to be available as of right
72(2)
Party challenging the contested validity and then failed will bare higher cost
70(1)
Partially valid patent can be granted relief for the valid part during infringement proceedings
29(1)(c)
Request examination report under Option A using PF12 (r42(1))
13(1)(b)
Patentable invention: inventive step
29(10)
Before a response to WO has been submitted or a examination/search and examination report has issued, the applicant may (a) withdraw the previous request; and (b) request for supplementary examination within 54 months from filing date (r43(3))
51(1)
Contract of licence is void if it contains “tie-in” conditions to restrict supply of things other than the patented product
29(7A)
If the examiner thinks that matter can be resolved without a WO, the examiner may ask the Registrar to give an invitation to amend
110(2)
The EOT rules may contain the conditions for the rules to be appiled, provide protection and compensation of persons affected by the grant of EOT, authorize the Registrar to grant EOT after the period has expired
47(4)
after grant, if the patent owner is not entitled and patent is revoked under s80 (a) conditionally or (b) unconditionally, the registrar may order to make a new application, which will retain the original filing date
56(3)(a)
allow SG government to supply another country with articles required for the defence of the other country
72(1)
After the alleged patent is decided by the court to be valid, court or registrar may certify the contested validity
29(11)
Before a response to WO has been submitted or a supplementary examination report has issued, the applicant may (a) withdraw the previous request; and (b) request for examination/search and examination within 36 months from filing date (r43(3))
81
Registrar may revoke a patent if found patent lacks novelty under s14(3), but have to first notify the applicant and give a chance for amendment
54(5)
Patent owner shall pay the discounted renewal fees with a period, otherwise the patent will be considered as lapsed
105(8)
Offenses for contravening this section is liable on conviction to a fine not exceeding $5000, 12 months imprisonment or both
66(7)
Define ship or aircraft relevant are registered or belong to Paris Convention parties or WTO members
29(9)
After receiving a WO, the applicant may file (a) a response; and (b) amendments to specification within 5 months (r46(4))
77(3)
Relief includes: (a) declaration that threats are unjustifiable; (b) injunction to stop the threats; (c) damages of any loss sustained by the threats
26(2)
It does not matter if description is not in English. An EN translation should be submitted within 2 month (R19(11)) from the date of a notification issued under r19(10)
16(2)
Prohibits MOT of human or animal body by surgery, therapy or diagnosis
13(1)(c)
Patentable invention: industrial application
29(7C)
Time limit to respond to an invitation to amend is 2 months (r46AA), the applicant can either (a) amend the specification; or (b) reject the invitation to amend
76(1)
Published patent has right starting from date of publication
39(5)
If Registrar is convinced that the lapsed patent was unintentionally resulted, the patent must be restored after the late fees are paid
46(3)
If patent has 2 or more owners, need to all agree before licensing/transferring/mortgaging the patent
17(1)
Priority date of an invention is the date of filing the application.
56(1)
Not an infringenment: government or party authorised in writing by the government from to manipulate a patent
(a) for public non-commercial purposes; or
(b) during national emergency or extreme urgent cases
29(1)(a)
Request search report under Option C with PF10 (r36)
69(1)
Infringement defence for not paying damages or account of profits: not aware of patent existed
105(4)
business and practise in SG in s105(1)-(3) refers to
(a) submit patent application in SG or other countries
(b) prepare specs or other docs
(c) giving advice related to patent prosecution
51(2)
Defence of infringement: show contract has “tie-in” conditions (listed in s51(1))
105A(1)
registered foreign patent agent in SG can carry out business and practise related to patent applications outside SG
52(1)
After patent concerned in a contract has lapsed, either party of a contract can review and update the contract on giving a 3-month notice to the other party
29A(2)
(a) after a notice of eligibity for grant is issued, the deadline to put the application in order is 2 months (r47(1)) after the date of Registrar’s letter forwarding the notice
25(3)
Documents required for a patent application (does not prevent an application from being initiated under s26(1))
(a) a request
(b) descriptin, claim, any drawings
(c) abstract
41(7)
assignee or exclusive licensee of patent or application may initiate infringement proceedings
29B(5)(b)
Review of examination report: After receiving the examination review report, the Registrar must send the applicant a (i) notice of eligibility for grant or (ii) a notice of refusal
110(1)
The Minister may, after consulting with IPOS, make rules on EOT for
(a) any application or patent
(b) any proceedings before the Registrar
(c) any other matter under the act or the rules
66(2)(b)
Infringement defence: experiment on the invention, not with the invention
76(3)
s76(1) only applicable (a) after patent has been granted; and (2) if the infringement applies to both the granted patent and the claims as published
36(1)
Patent term is 20 years from date of filing
14(1)
Invention is new if it does not form part of the state of the art
29(6)
After applicant requests supplementary examination report, the Registrar must (a) cause the examiner to carry out supplementary examination; and (b) forward the supplementary examintion report to applicant when available
36(3)
Based on r51(3A), the prescribed period to pay overdue renewal fee is 6 months after the due date. If paid in time, the patent is treated as if it had never expired
29A(1)
If an examination/search and examination/supplementary examination report does not contain unresolved objection, the Registrar must issue a notice of eligibility for grant
43(3)
s43 is applicable to (a) assignment; (b) mortgage of, or grant of security interest in a patant or patent application; (c) grant, assignment or mortgage of a licence or sub-licence; (d) death of one of the owners; (e) order by court or other competent authority regarding transfer or right to patents
66(2)(e)
Infringement defence: actions done on a ship temporarily or accidentally entered SG territory (actions have to relate to the needs of the ship)
103(1)
sum payable for compundable offences (no prison term, just pay fine)
84(1)
Patent application shall not contain added/additional matter
31(1)
applicant may amend application or specification before grant (pre-grant), no added matter under s84
41(4)
Licence can be granted for working the invention (i.e., licence does not give rights to the invention)
74(1)
Exclusive licensee of a patent has the same right as the owner to bring infringement proceedings after date of licence
41(2)
Patent or application can be assigned or mortgaged
17(3)(a)
Time limit to declare priority is 12 months after date of filing
