SPA Flashcards
13(1)(a)
Patentable invention: novelty
13(1)(b)
Patentable invention: inventive step
13(1)(c)
Patentable invention: industrial application
13(2)
Non-patentable invention: encourage offensive, immoral or anti-social behaviours
13(3)
Non-patentable invention: subject-matter probihited by the law may not necessarily fall under 12(2)
14(1)
Invention is new if it does not form part of the state of the art
14(2)
state of the art: made available to the public globally before pirority date of the invention
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
14(4)
12 months grace period: matter made avialable to the public is excluded from the SOTA:
(a) info was disclosed unlawfully or in breach of confidence;
(b) disclosed due to breach of confidence;
(c) inventor displaying the invention as an international exhibition;
(d) paper read before learned society or published in the transactions of any learned society; or
(e) subject to subsections (6) and (7), disclosed by inventor or person obtained the info from the inventor in circumstances not mentioned in (a) to (d)
14(5)
defined learned society as aiming to promote learning or science
14(6)
patent application may be disregarded if
(a) it was filed without the consent of the inventor; or
(b) the publication should not have happended as the application had been withdrawn/refused/abandoned before publication
14(7)
If publication was earlier than it should be by law, the publication date used to judge the 12-month grace period should be the by-right publication date
14(8)
To disregard any prior art at requesting exam, a written evidence is required to be filed
14(9)
whichever applies to the inventor in s14 applies to the applicant
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
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)
16(2)
MOT of human or animal body by surgery, therapy or diagnosis is not taken to be capable of industrial application
16(3)
Allow product for treating diseases to be patentable subject matter (e.g., 1st MU, Swiss-type 2nd MU). Supplemented by s14(10)
17(1)
Priority date of an invention is the date of filing the application.
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
17(3)(a)
Priority declaration to be within 12 months after date of filing. (unless request is filed under s17(4) to declare priority within 14 months)
17(4)
request to Registrar to claim priority after the normal 12 months period
17(5)
request for late declaration needs to show (a) due care has been taken OR (b) unintentional
19(1)
Any person(s) may make an application for a patent
19(2)
A paten can only be granted to
(a) to the inventor(s);
(b) person(s) entitled to the invention in SG based on local or internatioanl law, by an agreement made before making of the invention; or
(c) successor in title of person(s) in (a) or (b)
19(3)
Without evidence to the contrary, the person who makes a patent application is assumed to be entitled to be granted a patent
20(1)
anytime before grant
(a) any person may question the applicant is entitled
(b) applicant may ask to transfer to/add other applicants
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
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
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
25(5)
Claims must:
(a) define the matter for which the appicant seeks protection;
(b) be clear and concise;
(c) be supported by description; and
(d) relate to one invention or a group of inventions that form a single inventive concept
25(8)
an application may be withdrawn any time before it is granted and such a withdrawal cannot be revoked
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
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)
26(8)(b)
when the application does not claim any earlier priority
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
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)
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))
27(2)
applicant may request application to be published earlier
27(3)
Before publication of an application, Registrar may omit matter in the application which harms a person or the society
28(1)
Registrar must conduct preliminary examination
29(1)(a)
Request search report under Option C with PF10 (r36)
29(1)(b)
Request search and examination report under Option B using PF11 (r37)
29(1)(c)
Request examination report under Option A using PF12 (r42(1))
29(1)(d)
Request supplementary examiantion report under Option D using PF12A (r42A(1)) within 54 months from filing date (r43(3))
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
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
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
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
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
29(7)
At least one WO (or invitation to amend s29(7A)) to be issued if there is any objections
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
29(7B)
The examiner may issue an invitation to amend after receiving a WO response
29(7C)
In response to invitation to amend, the applicant may within 2 months (a) amend or (b) reject the invitation to amend with or without an explanation)
29(7D)
Applicant need not to respond to invitation to amend if request under Option A or B is withdrawn or final report under Option A or B has issued
29(7E)
After the applicant responded to invitation to amend or fail to submit such a response, the Examiner may issue another WO
29(8)
For supplementary examination, if there is any objections, the examiner must issue at least one WO
29(7C)
Time limit to respond to an invitation to amend is 2 months (r46AA), the applicant may either (a) amend the specification; or (b) reject the invitation to amend; or the applicant can do nothing
29(9)
After receiving a WO, the applicant may file (a) a response; and (b) amendments to specification within 5 months (r46(4))
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))
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))
29(12)
Option D is not available for applications with filing dates on or after 1 Jan 2020 (r43(4))
29(13)
Applicantion is treated as abandoned if:
(a) no request for Option A or B is filed;
(b) after withdrawing Option A or B, no Option D is filed; or
(c) after withdrawing Option D, no Option A or B is filed.
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
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
29A(3)
In case of adverse examination report, a notice of intention to refuse is issued
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
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
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
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
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
30
The Registrar must grant a patent application if it fulfills all the following conditions:
(a) all formal requirements are met
(b) a notice of eligibility has issued
(c) prescribed documents (r47(4A), PF14 and ) for grant of patent have been filed
31(1)
applicant may amend application or specification before grant (pre-grant), no added matter under s84
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)).
34(1)
Residents of Singapore needs to obtain national security clearances from the Registrar before filing or cause to file outside SG unless (a) and (b) are satisfied:
(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)
34(3)
Offence of s34(1) is liable to $5000 fine, 2 year prison or both
36(1)
Patent term is 20 years from date of filing
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
36A(1)(a)
May apply extension of term of patent if there was unreasonable delay in granting the patent
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))
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.
39(1)
Restoration of a lapsed patent may be made within 18 months (r53(1)(a)) from the day it lapsed
39(5)
If Registrar is convinced that the lapsed patent was unintentionally resulted, the patent must be restored after the late fees are paid
41(1)
Patent or application is personal property, can be transferred
41(2)
Patent or application can be assigned or mortgaged
41(4)
Licence can be granted for working the invention (i.e., licence does not give rights to the invention)
41(4)(a)
Sub-licence can be granted, licence and sub-licence can be assigned or mortgaged
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)
41(7)
assignee or exclusive licensee of patent or application may initiate infringement proceedings
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
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
43(4)
An application for registration alone makes the registration effective, no need to wait for the registration to be completed
46(1)
Multiple patent owners are each entitled to ann equal undivided share in the patent
46(3)
If patent has 2 or more owners, need to all agree before licensing/transferring/mortgaging the patent
47(1)
after grant, any person having or claiming interest in a patent may force the Registrar to determine (a) the patent’s ownership; (b) whether the patent should have been granted; or (c) whether right in or under the patent should be transferred
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
47(9)
Any dispute of a patent’s rightful owner must be made within 2 years from the date of grant, unless there is evidence to show that the owners knew at grant that there is ownership issue and chose to hide it
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
49(2)
Any other invention made by an employee besides s49(1), belongs to the employee
49(3)
when the invention belongs to the employee, if the employee or any person on behalf apply a patent application or carry out the invention would not infringe the employer’s right
51(1)
Contract of licence is void if it contains “tie-in” conditions to restrict supply of things other than the patented product
51(2)
Defence of infringement: show contract has “tie-in” conditions (listed in s51(1))
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
53(1)
Any time after grant, owner may apply to the Register to record that licences under the patent are to be available as of right
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
53(3)(d)
after date of entry of 53(2), renewal fee of the patent is halved as compared to normal rate
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
54(1)
Entry made under s53 may be cancelled any time
54(2)
Entry is cancelled on after (1) discounted renewal fees are paid and (2) all licensees, if any, consent to the cancellation
54(5)
Patent owner shall pay the discounted renewal fees with a period, otherwise the patent will be considered as lapsed
55(1)
any person may apply to the court to grant a compulsory licence to remedy anti-competitive practice
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
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
56(2)
Under 56(1)(b), government or authorized party may import health products during national emergency or circumstances of extreme urgency after notifying Council for TRIPS
56(3)(a)
allow SG government to supply another country with articles required for the defence of the other country
57(1)
Rights of third parties to bring infringement proceedings do not apply under s56
58
Provision to dispute government use of patented invention under s56
61
Government to inform patent owner promptly of actions done under s56
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
66(2)(a)
Infringement defence: done privately, non-commercial
66(2)(b)
Infringement defence: experiment on the invention, not with the invention
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(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)
66(2)(e)
Infringement defence: use of exempted aircraft udner s66(2)(d) or import of parts of such an aircraft
66(2)(g)
Infringement defence: parallel importation (except pharma products s66(3))
66(7)
Define ship or aircraft relevant are registered or belong to Paris Convention parties or WTO members
67(1)
Remedies for infringement, patent owner brings civil proceedings in the court, and a claim may be made for:
(a) injunction; (b) deliver up or destroy infringing product; (c) damages; (d) an account of profits; (e) declaration that patent is valid
67(2)
For the same infringement, the court can only award the proprietor either damages or an account of profits
68(1)
Burden of proof: for a patented process for obtaining a new product, the burden of proving innocence is on the alleged infringer provided:
(a) the product is new; or
(b) it is very likely that the product is made by the process and the patent owner has been unable to determine the process used
68(2)
Court may not ask for unreasonable confidential info from the alleged infringer for proving innocence
69(1)
(infringement defence) no need to pay damages or account of profits if the infringer was not aware/no reasonable ground to suppose that the patent existed
69(2)
If patent marking on product does not show patent number, it is valid to use “not aware of” defence under s69(1)
69(3)
If there is a late payment of grant fee, the court may refuse to award remedies of infringement committed the after grant (not before grant) up to 6 months until the late grant fee is paid
69(4)
If spec of a patent is amended, the court must decide whether the amended patent was framed in good faith and with reasonable skill and knowledge before the court allows the amendment or award any infringement damages
70(1)
During infringement proceedings, if patent is found to be partially valid, the court may still grant relief, but only to the part which is valid and infringed
71(1)
Continue to carry out infringing act: if potential infringing act had been done or was in preparation stage 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)
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
72(1)
After the alleged patent is decided by the court to be valid/partially valid, court or registrar may certify the contested validity
72(2)
Party challenging the contested validity and then failed may be asked to bare the cost between solicitor and own client of the defendant
73(2)
If there are 2 or more patent owners, infringement proceedings can be brought by just one of the owners
74(1)
Exclusive licensee of a patent has the same right as the owner to bring infringement proceedings after date of licence
74(3)
When exclusive licensee brings an infringement proceeding, the patent owner no need to be made a party of the proceeding; if made a defendant, not liable for any cost unless defendant files and serves a notice of intention or contest or not contest and takes part in the proceedings
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 that any delay was inevitable and it was registered as soon as practical
76(1)
Published patent has right starting from date of publication
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
76(4)
when considering damages under this section, also need to consider 69(3) and (4), and if it is not reasonable to expect that the published application would confer the protection resulting the infringement, the court is to reduce the damage amount
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)
77(2)
To negate claim under 77(1), defendant must show infringement AND claimant cannot provide evidence otherwise
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
77(4)
Groundless threat proceedings not applicable if the threat is related to making product, importing product for disposal or using a process
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
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)
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
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
82
Proceedings in which validity of patent may be put in issue
83
Amendment of specification during proceedings before the court or Registrar as to the validity of a patent
84(1)
Divisional application at filing may contain added matter with respect to parent application but may not proceed unless the added matter is removed
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 priority application, then the application is not allowed to proceed unless the additional matter is excluded
84(3)
Amendment before grant shall not contain added matter
84(4)
Amendments of specification of a patent after grant (s38(1)), to address revocation initiated by Registrar (s81) or during infringement or revocation proceedings (s83) should not (a) contain added matter; or (b) extend beyond the invention as granted
86(3)
Initiate national phase within 30 months (r86(a)) of filing date of international phase application
103(1)
sum payable for compundable offences (no prison term, just pay fine)
105(1)
only registered patent agent, certified advocate or solicitor can carry on a businees, has in force a practicing certificate, practise or act as a patent agent; s105(2) applies to partnership; s105(3) applies to body corporate
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
105(8)
Offenses for contravening this section is liable on conviction to a fine not exceeding $5000, 12 months imprisonment or both
105A(1)
registered foreign patent agent in SG can carry out business and practise related to patent applications outside SG
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
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
113(1)
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
113(2)
Different inventions in the same specification may have different priority dates
