PART VI
PROCEDURE FOR GRANT OF PATENT
28.
—(1) The Registrar shall conduct a preliminary examination of an application for a patent if —
(a)
the application has a date of filing;
(b)
the application has not been withdrawn or treated as abandoned;
(c)
the filing fee under section 25(1)(b) has been paid;
(d)
one or more claims for the purposes of the application have been filed under section 26(12)(a); and
(e)
where the application has a date of filing under section 26(1) by reason only that the documents filed at the Registry to initiate the application satisfy the conditions in section 26(1)(a), (b) and (c)(ii), the documents referred to in section 26(7)(a), (b) and (c) have been filed at the Registry.
(2) If, after the Registrar has conducted a preliminary examination of an application for a patent under subsection (1), the applicant files at the Registry, and does not withdraw, any missing part of the application in accordance with section 26(8), then the Registrar shall conduct another preliminary examination of the application, with the missing part treated as included in the application.
(3) On a preliminary examination of an application, the Registrar shall determine —
(a)
whether the application complies with all the formal requirements; and
(b)
whether —
(i)
any drawing referred to in the application; or
(ii)
any part of the description of the invention for which the patent is sought,
is missing from the application.
(4) If the Registrar determines under subsection (3)(a) that not all the formal requirements have been complied with, then the Registrar shall notify the applicant accordingly and shall specify in the notification a period during which the applicant shall have the opportunity —
(a)
to make observations on the Registrar’s determination; and
(b)
subject to section 84, to amend the application so as to comply with all the formal requirements.
(5) Where subsection (4) applies, the Registrar may refuse the application if the applicant fails to amend the application as mentioned in paragraph (b) of that subsection before the end of the period specified by the Registrar under that subsection.
(6) Subsection (5) does not apply if —
(a)
the applicant makes observations as mentioned in subsection (4)(a) before the end of the period specified by the Registrar under subsection (4); and
(b)
as a result of the observations, the Registrar is satisfied that all the formal requirements have been complied with.
(7) If the Registrar determines under subsection (3)(b) that a drawing or part of the description of the invention is missing from the application, then the Registrar shall notify the applicant accordingly.
(8) Where subsection (7) applies, if the applicant files the drawing or part of the description of the invention that is missing from the application within such period and in such manner as may be prescribed, and the applicant does not withdraw that drawing or part of the description of the invention before the end of that period, then —
(a)
that drawing or part of the description of the invention shall be treated as included in the application; and
(b)
the date of filing of the application shall be the date on which that drawing or part of the description of the invention is filed at the Registry.
(9) Subsection (8)(b) does not apply if —
(a)
on or before the date which is the date of filing of the application by virtue of section 26(1), a declaration is made under section 17(2), in or in connection with the application, specifying an earlier relevant application; and
(b)
within such period as may be prescribed, the applicant —
(i)
makes a request to the Registrar for subsection (8)(b) not to apply to the application;
(ii)
files a statement that the drawing or part of the description of the invention referred to in subsection (8) is incorporated in the application by reference to, and is completely contained in, the earlier relevant application, as filed;
(iii)
furnishes such information on the earlier relevant application as may be prescribed; and
(iv)
files such other documents as may be prescribed.
(10) In subsection (9), “relevant application” has the same meaning as in section 17(5).
29.
—(1) Where an application for a patent complies with all the formal requirements, the Registrar shall send a notification to the applicant.
[19/2004]
(2) The applicant shall comply with any of the following paragraphs which is applicable within the period prescribed for that paragraph:
(a)
where the application is not an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3), file a request in the prescribed form and pay the prescribed fee for a search report;
(b)
file a request in the prescribed form and pay the prescribed fee for a search and examination report;
(c)
where a corresponding application for a patent has been filed at any prescribed patent office —
(i)
file —
(A)
a copy of the search report in respect of the corresponding application;
(B)
where the search report is not in English, an English translation of the search report;
(C)
a copy of each prescribed document and, where required by the rules, an English translation of the document if it is not in English; and
(D)
a request in the prescribed form for an examination report,
and pay the prescribed fee for an examination report; or
(ii)
file —
(A)
in the prescribed form, the prescribed information relating to the corresponding application; and
(B)
where the prescribed information includes any document that is not in English, an English translation of such document;
(d)
where a corresponding international application for a patent has been filed —
(i)
file —
(A)
a copy of the international search report in respect of the corresponding international application;
(B)
where the international search report is not in English, an English translation of the international search report;
(C)
a copy of each prescribed document and, where required by the rules, an English translation of the document if it is not in English; and
(D)
a request in the prescribed form for an examination report,
and pay the prescribed fee for an examination report; or
(ii)
file —
(A)
in the prescribed form, the prescribed information relating to the corresponding international application; and
(B)
where the prescribed information includes any document that is not in English, an English translation of such document;
(e)
where the application is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3) —
(i)
file —
(A)
a copy of the international search report issued in respect of the application;
(B)
where the international search report is not in English, an English translation of the international search report;
(C)
a copy of each prescribed document and, where required by the rules, an English translation of the document if it is not in English; and
(D)
a request in the prescribed form for an examination report,
and pay the prescribed fee for an examination report; or
(ii)
file a notice in the prescribed form of the applicant’s intention to rely on the international preliminary report on patentability in respect of that application.
[19/2004]
(3) Where the applicant has filed a request and paid the prescribed fee for a search report under subsection (2)(a), the Registrar shall —
(a)
cause the application to be subjected to a search by an Examiner to discover the relevant prior art contained in —
(i)
such documentation as may be prescribed; and
(ii)
any additional documentation that the Examiner is aware of and considers to be relevant; and
(b)
upon receiving the search report prepared by the Examiner, send the applicant a notification and a copy of the search report.
[19/2004]
(4) Upon receiving the search report under subsection (3)(b) from the Registrar, the applicant shall, within the prescribed period, file a request in the prescribed form and pay the prescribed fee for an examination report.
[19/2004]
(5) Where the applicant has filed a request and paid the fee for an examination report under subsection (2)(c)(i), (d)(i) or (e)(i) or (4), the Registrar shall —
(a)
cause the application to be subjected to an examination by an Examiner to determine —
(i)
(ii)
whether the application discloses any additional matter referred to in section 84(1); and
(iii)
whether the application discloses any matter extending beyond that disclosed in the application as filed,
taking into consideration all the relevant prior art, if any, that the Examiner is aware of or that has been referred to in the search report or international search report, as the case may be; and
(b)
upon receiving the examination report prepared by the Examiner, send the applicant a notification and a copy of the examination report.
[19/2004]
(6) Where the applicant has filed a request and paid the fee for a search and examination report under subsection (2)(b), the Registrar shall —
(a)
cause the application to be subjected to —
(i)
a search by an Examiner to discover the relevant prior art contained in —
(A)
such documentation as may be prescribed; and
(B)
any additional documentation that the Examiner is aware of and considers to be relevant; and
(ii)
an examination by an Examiner to determine —
(A)
(B)
whether the application discloses any additional matter referred to in section 84(1); and
(C)
whether the application discloses any matter extending beyond that disclosed in the application as filed,
taking into consideration all the relevant prior art, if any, that the Examiner is aware of or that has been discovered in the search; and
(b)
upon receiving the search and examination report prepared by the Examiner, send the applicant a notification and a copy of the search and examination report.
[19/2004]
(7) If, within the prescribed period under —
(a)
paragraph (b), (c)(i) or (ii), (d)(i) or (ii) or (e)(i) or (ii) of subsection (2); or
(b)
an applicant files a request in the prescribed form and pays the prescribed fee for that period to be extended, the applicant shall perform the acts set out in that provision within the prescribed extended period for performing those acts.
[19/2004]
30.
—(1) Subject to subsection (4), the Registrar shall grant the applicant a patent if —
(a)
the conditions in subsection (2) are satisfied before the end of the prescribed period or any extension thereof; and
(b)
the conditions in subsection (3) have been satisfied.
[19/2004]
(2) The conditions referred to in subsection (1)(a) are —
(a)
that all the formal requirements have been complied with;
(b)
that the Registrar has received —
(i)
the search report referred to in section 29(3) and the examination report referred to in section 29(5);
(ii)
the search and examination report referred to in section 29(6);
(iii)
the search report referred to in section 29(2)(c)(i), the examination report referred to in section 29(5) and, where the search report is not in English, an English translation of the search report;
(iv)
the prescribed information referred to in section 29(2)(c)(ii) or (d)(ii) and, where the prescribed information includes any document that is not in English, an English translation of such document;
(v)
the international search report referred to in section 29(2)(d)(i) or (e)(i), the examination report referred to in section 29(5) and, where the international search report is not in English, an English translation of the international search report; or
(vi)
in the case of an international application for a patent (Singapore) which has entered the national phase in Singapore under section 86(3), as an alternative to the document or documents referred to in any of sub-paragraphs (ii), (iii), (iv) and (v) —
(A)
the notice referred to in section 29(2)(e)(ii);
(B)
an international search report in respect of that application;
(C)
an international preliminary report on patentability in respect of that application; and
(D)
where any report referred to in sub-paragraph (B) or (C) is not in English, an English translation of that report;
(c)
that the prescribed documents for the grant of the patent have been filed; and
(d)
that the prescribed fee for the grant of the patent has been paid.
[19/2004]
(3) The conditions referred to in subsection (1)(b) are —
(a)
that —
(i)
the document or documents received by the Registrar under subsection (2)(b) do not disclose any unresolved objection on the ground that the claim or claims in the application do not relate to one invention or to a group of inventions which are so linked as to form a single inventive concept; or
(ii)
if any such objection is disclosed, the applicant has satisfied the Registrar that the objection has been resolved;
(b)
where the applicant relies on any examination report referred to in section 29(5), any search and examination report referred to in section 29(6) or any international preliminary report on patentability referred to in subsection (2)(b)(vi), that each claim in the application at the time the prescribed documents for the grant of the patent were filed and the prescribed fee for the grant of the patent was paid is related to at least one claim in the application at the time the report was issued —
(i)
which has been examined; and
(ii)
which is referred to in the report;
(c)
where the applicant relies on the prescribed information relating to a corresponding application referred to in section 29(2)(c)(ii) or the prescribed information relating to a corresponding international application referred to in section 29(2)(d)(ii), at the time the prescribed documents for the grant of the patent were filed and the prescribed fee for the grant of the patent was paid, that each claim in the application is related to at least one claim —
(i)
which is set out in the prescribed information relating to the corresponding application or corresponding international application, as the case may be; and
(ii)
which 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);
(d)
that the invention is not an invention referred to in section 13(2); and
(e)
that there is —
(i)
no other application for a patent for the same invention having the same priority date filed by the same applicant or his successor in title; and
(ii)
no earlier grant of a patent for the same invention having the same priority date to the same applicant or his successor in title.
[19/2004]
(4) If, within the prescribed period under subsection (1)(a) —
(a)
an appeal is filed in court in respect of an application; and
(b)
the applicant applies to the court to extend that period while the appeal is pending,
the court may extend that period to such date as the court may determine.
[19/2004]
(5) Where the conditions in subsection (2) are not satisfied before the end of the prescribed period under subsection (1)(a) or any extension thereof, the applicant shall be deemed to have abandoned his application at the end of that period.
[19/2004]
(6) If the Registrar is of the opinion that any condition in subsection (3) has not been satisfied —
(a)
the Registrar shall send a notification to the applicant setting out the grounds for the Registrar’s objection to granting a patent;
(b)
the applicant shall have the right to respond to the Registrar’s objection within a period specified by the Registrar;
(c)
unless the Registrar withdraws his objection, the applicant shall, within a period specified by the Registrar and subject to section 84, amend the specification of his application in accordance with the prescribed conditions, with a view to satisfying the conditions in subsection (3); and
(d)
if any condition in subsection (3) remains unsatisfied at the end of the period referred to in paragraph (c), the applicant shall be deemed to have abandoned his application at the end of that period.
[19/2004]
31.
—(1) If it appears to an Examiner during the examination of an application that —
(a)
(b)
the application discloses —
(i)
any additional matter referred to in section 84(1); or
(ii)
any matter extending beyond that disclosed in the application for the patent as filed,
the Examiner shall give the applicant at least one written opinion to that effect, and the Registrar shall, upon receiving the written opinion, send the applicant a notification and a copy of the written opinion.
[19/2004]
(2) The applicant shall, before the examination report is issued, have the right —
(a)
to respond in the prescribed manner to the written opinion within any prescribed period; and
(b)
subject to section 84, to amend in the prescribed manner the specification of the application in accordance with the prescribed conditions.
[19/2004]
(3) Notwithstanding subsection (1), during any period prescribed for the purposes of this subsection, the applicant may, in accordance with the prescribed conditions and subject to section 84, amend the application of his own volition.
[19/2004]
32. [Repealed by Act 19/2004]
33.
—(1) Where an application for a patent is filed in the Registry (whether under this Act or any treaty or international convention to which Singapore is a party) and it appears to the Registrar that the application contains information of a description notified to him by the Minister as being information the publication of which might be prejudicial to the defence of Singapore, the Registrar shall give directions prohibiting or restricting the publication of that information or its communication to any specified person or description of persons.
(2) If it appears to the Registrar that any application so filed contains information the publication of which might be prejudicial to the safety of the public, he may give directions prohibiting or restricting the publication of that information or its communication to any specified person or description of persons until the end of a period not exceeding 3 months from the end of a period prescribed for the purposes of section 27.
(3) While directions are in force under this section with respect to an application —
(a)
if the application is made under this Act, it will be held in abeyance after the formal requirements of this Act and the rules have been met and will not proceed to be processed in accordance with section 29 until the directions are revoked under subsection (4)(e); and
(b)
if it is an international application for a patent, a copy of it shall not be sent to the International Bureau or any international searching authority appointed under the Patent Co-operation Treaty.
(4) Where the Registrar gives directions under this section with respect to any application, he shall give notice of the application and of the directions to the Minister, and the following provisions shall then have effect:
(a)
the Minister shall, on receipt of the notice, consider whether the publication of the application or the publication or communication of the information in question would be prejudicial to the defence of Singapore or the safety of the public;
(b)
if the Minister determines under paragraph (a) that the publication or communication of that information would be prejudicial to the safety of the public, he shall notify the Registrar who shall continue his directions under subsection (2) until they are revoked under paragraph (e);
(c)
if the Minister determines under paragraph (a) that the publication of the application or the publication or communication of that information would be prejudicial to the defence of Singapore or the safety of the public, he shall (unless a notice under paragraph (d) has previously been given by the Minister to the Registrar) reconsider that question during the period of 9 months from the date of filing the application and at least once in every subsequent period of 12 months;
(d)
if on consideration of an application at any time it appears to the Minister that the publication of the application or the publication or communication of the information contained in it would not, or would no longer, be prejudicial to the defence of Singapore or the safety of the public, he shall give notice to the Registrar to that effect; and
(e)
on receipt of such a notice the Registrar shall revoke the directions and may, subject to such conditions (if any) as he thinks fit, extend the time for doing anything required or authorised to be done by or under this Act in connection with the application, whether or not that time has previously expired.
(5) The Minister may at any time, for the purpose of enabling him to decide the question referred to in subsection (4)(c), do one or both of the following, that is to say, inspect or authorise any person to inspect the application and any document sent to the Registrar in connection with it and where a person is authorised to carry out such inspection, he shall as soon as practicable report on his inspection to the Minister.
(6) Where directions given under this section in respect of an application for a patent for an invention are revoked, and the application is brought in order for the grant of a patent and a patent is granted for the invention, then —
(a)
if while the directions are in force the invention is worked by (or with the written authorisation of or to the order of) a Government department, the provisions of Part XII shall apply as if —
(i)
the working were use made by section 56;
(ii)
the application had been published at the end of the prescribed period or at the time the directions were revoked, whichever is earlier; and
(iii)
a patent had been granted for the invention at the time the application is brought in order for the grant of a patent (taking the terms of the patent to be those of the application as it stood at the time it was so brought in order); and
(b)
if it appears to the Minister that the applicant for the patent has suffered hardship while the directions were in force, the Minister may make such payment (if any) by way of compensation to the applicant as appears to the Minister to be reasonable having regard to the inventive merit and utility of the invention, the purpose for which it is designed and any other relevant circumstances.
(7) Where a patent is granted in pursuance of an application in respect of which directions have been given under this section, no renewal fees shall be payable in respect of any period during which those directions were in force.
(8) Any person who fails to comply with any direction under this section shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $5,000 or to imprisonment for a term not exceeding 2 years or to both.
(9) Nothing in this section shall prevent the disclosure of information concerning an invention to a Government department or authority for the purpose of obtaining advice as to whether directions under this section with respect to an application for a patent for that invention should be made, amended or revoked.
[UK Patents 1977, s. 22]
34.
—(1) Subject to this section, no person resident in Singapore shall, without written authority granted by the Registrar, file or cause to be filed outside Singapore an application for a patent for an invention unless —
(a)
an application for a patent for the same invention has been filed in the Registry not less than 2 months before the application outside Singapore; and
(b)
no directions have been given under section 33 in relation to the application in Singapore or all such directions have been revoked.
(2) Subsection (1) shall not apply to an application for a patent for an invention for which an application for a patent has first been filed in a country outside Singapore by a person resident outside Singapore.
(3) Any person who files or causes to be filed an application for the grant of a patent in contravention of this section shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $5,000 or to imprisonment for a term not exceeding 2 years or to both.
(4) In this section —
(a)
any reference to an application for a patent includes a reference to an application for other protection for an invention;
(b)
any reference to either kind of application is a reference to an application under this Act, under the law of any country other than Singapore or under any treaty or international convention to which Singapore is a party; and
(c)
“person resident in Singapore” includes a person who, at the material time, is residing in Singapore by virtue of a valid pass lawfully issued to him under the Immigration Act (Cap. 133) to enter and remain in Singapore for any purpose.
[UK Patents 1977, s. 23]