On 22/05/2013,
you requested for the version in force on 22/05/2013
incorporating all amendments published on or before 22/05/2013.
The closest version currently available is that of 09/12/1994.
PART XI
LICENCES OF RIGHT AND COMPULSORY LICENCES
53.
—(1) At any time after the grant of a patent its proprietor may apply to the Registrar for an entry to be made in the register to the effect that licences under the patent are to be available as of right.
(2) Where an application under subsection (1) is made, the Registrar shall give notice of the application to any person registered as having a right in or under the patent and, if satisfied that the proprietor of the patent is not precluded by contract from granting licences under the patent, shall make that entry.
(3) Where an entry under subsection (2) is made in respect of a patent —
(a)
any person shall, at any time after the entry is made, be entitled as of right to a licence under the patent on such terms as may be settled by agreement or, in default of agreement, by the Registrar on the application of the proprietor of the patent or the person requiring the licence;
(b)
the Registrar may, on the application of the holder of any licence granted under the patent before the entry was made, order the licence to be exchanged for a licence of right on terms so settled;
(c)
if in proceedings for infringement of the patent the defendant undertakes to take a licence on such terms, no injunction shall be granted against him and the amount (if any) recoverable against him by way of damages shall not exceed twice the amount which would have been payable by him as licensee if such a licence on those terms had been granted before the earliest infringement;
(d)
the renewal fee payable in respect of the patent after the date of the entry shall be half the fee which would be payable if the entry had not been made.
(4) An undertaking under subsection (3)(c) may be given at any time before final order in the proceedings, without any admission of liability.
(5) The licensee under a licence of right may (unless, in the case of a licence the terms of which are settled by agreement, the licence otherwise expressly provides) request the proprietor of the patent to take proceedings to prevent any infringement of the patent; and if the proprietor refuses or neglects to do so within two months after being so requested, the licensee may institute proceedings for the infringement in his own name as if he were the proprietor, making the proprietor a defendant.
(6) A proprietor so added as defendant shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings.
54.
—(1) At any time after an entry has been made under section 53 in respect of a patent, the proprietor of the patent may apply to the Registrar for cancellation of the entry.
(2) Where an application under subsection (1) is made and the balance paid of all renewal fees which would have been payable if the entry had not been made, the Registrar may cancel the entry if satisfied that there is no existing licence under the patent or that all licensees under the patent consent to the application.
(3) Within the prescribed period after an entry had been made under section 53 in respect of a patent, any person who claims that the proprietor of the patent is, and was at the time of the entry, precluded by a contract in which the claimant is interested from granting licences under the patent may apply to the Registrar for cancellation of the entry.
(4) Where the Registrar is satisfied, on an application under subsection (3), that the proprietor of the patent is and was so precluded, he shall cancel the entry; and the proprietor shall then be liable to pay, within a period specified by the Registrar, a sum equal to the balance of all renewal fees which would have been payable if the entry had not been made, and the patent shall cease to have effect at the expiration of that period if that sum is not so paid.
(5) Where an entry is cancelled under this section, the rights and liabilities of the proprietor of the patent shall after the cancellation be the same as if the entry had not been made.
(6) Where an application has been made under this section —
(a)
in the case of an application under subsection (1), any person; and
(b)
in the case of an application under subsection (3), the proprietor of the patent,
may within the prescribed period give notice to the Registrar of opposition to the cancellation; and the Registrar shall, in considering the application, determine whether the opposition is justified.
55.
—(1) At any time after the expiration of 3 years, or of such other period as may be prescribed, from the date of the grant of a patent, any person may apply to the Registrar —
(a)
for a licence under the patent;
(b)
for an entry to be made in the register to the effect that licences under the patent are to be available as of right; or
(c)
where the applicant is a Government department, for the grant to any person specified in the application of a licence under the patent,
if it appears at the time such application is filed, one or more of the grounds specified in subsection (2) are met.
(2) The grounds referred to in subsection (1) are —
(a)
that there is no production of the patented product or application of the patented process in Singapore without any legitimate reason;
(b)
that there is no product produced in Singapore under the patent for sale in Singapore or there are some but they are sold at unreasonably high prices or do not meet the public demand without any legitimate reason;
(c)
that by reason of the refusal of the proprietor of the patent to grant a licence or licences on reasonable terms —
(i)
a market for the export of any patented product made in Singapore is not being supplied;
(ii)
the working or efficient working in Singapore of any other patented invention which makes a substantial contribution to the art is prevented or hindered; or
(iii)
the establishment or development of commercial or industrial activities in Singapore is unfairly prejudiced; and
(d)
that by reason of conditions imposed by the proprietor of the patent on the grant of licences under the patent, or on the disposal or use of the patented product or on the use of the patented process, the manufacture, use or disposal of materials not protected by the patent, or the establishment or development of commercial or industrial activities in Singapore, is unfairly prejudiced.
(3) Subject to subsections (4) to (6), if the Registrar is satisfied that any of those grounds under subsection (2) are established, he may —
(a)
where the application is under subsection (1)(a), order the grant of a licence to the applicant on such terms (including the transfer of know-how associated with the patented invention) as he thinks fit;
(b)
where the application is under subsection (1)(b), make such an entry as is there mentioned; or
(c)
where the application is under subsection (1)(c), order the grant of a licence to the person specified in the application on such terms (including the transfer of know-how associated with the patented invention) as the Registrar thinks fit.
(4) Where the application is made on the ground that there is no production of the patented product or application of the patented process in Singapore or there is insufficient or no product produced under the patent for sale in Singapore, and it appears to the Registrar that the time which has elapsed since the publication in the journal of a notice of the grant of the patent has for any reason been insufficient to enable the invention to be so worked, he may by order adjourn the application for such period as will in his opinion give sufficient time for the invention to be so worked.
(5) No entry shall be made in the register under this section on the ground mentioned in subsection (2)(c)(i), and any licence granted under this section on that ground shall contain such provisions as appear to the Registrar to be expedient for restricting the countries in which any product concerned may be disposed of or used by the licensee.
(6) No order or entry shall be made under this section in respect of a patent on the ground mentioned in subsection (2)(c)(ii) unless the Registrar is satisfied that the proprietor of the patent for the other invention is able and willing to grant to the proprietor of the patent and his licensees a licence under the patent for the other invention on reasonable terms.
(7) An application may be made under this section in respect of a patent notwithstanding that the applicant is already the holder of a licence under the patent; and no person shall be estopped or barred from alleging any of the matters specified in subsection (2) by reason of any admission made by him, whether in such a licence or otherwise, or by reason of his having accepted such a licence.
56.
—(1) At any time after the date of the grant of a patent in respect of —
(a)
a substance capable of being used as food or medicine or in the production of food or medicine;
(b)
a process for producing any such substance as aforesaid; or
(c)
any invention capable of being used as or as part of a surgical or curative device,
the Registrar may, on application made to him by any person, order the grant to the applicant of a licence under the patent on such terms as he thinks fit, unless it appears to him that there are good reasons for refusing the application.
(2) A licence granted under this section shall entitle the licensee to make, use or dispose of the invention as a food or medicine, or for the purpose of the production of food or medicine or as part of a surgical or curative device.
(3) An application under this section may be made notwithstanding that the applicant is already the holder of a licence under the patent.
(4) A licence granted under this section and section 55 may permit the licensee to import the patented product.
57.
—(1) Where the Registrar is satisfied, on an application made under section 55 or 56 in respect of a patent, that the manufacture, use or disposal of materials not protected by the patent is unfairly prejudiced by reason of conditions imposed by the proprietor of the patent on the grant of licences under the patent, or on the disposal or use of the patented product or the use of the patented process, he may, subject to those sections, order the grant of licences under the patent to such customers of the applicant as he thinks fit as well as to the applicant.
(2) Where an application under section 55 or 56 is made in respect of a patent by a person who holds a licence under the patent, the Registrar may —
(a)
if he orders the grant of a licence to the applicant, order the existing licence to be cancelled; or
(b)
instead of ordering the grant of a licence to the applicant, order the existing licence to be amended.
(3) Section 53(5) and (6) shall apply to a licence granted in pursuance of an order under section 55 or 56 and to a licence granted by virtue of an entry under section 55 as it applies to a licence granted by virtue of an entry under section 53.
58.
—(1) The powers of the Registrar on an application under section 55 in respect of a patent shall be exercised with a view to securing the following general purposes:
(a)
that inventions which can be worked on a commercial scale in Singapore and which should in the public interest be so worked shall be worked without undue delay such that they are available in Singapore to an adequate extent and supplied on reasonable terms;
(b)
that the interests of any person for the time being working or developing an invention in Singapore under the protection of a patent shall not be unfairly prejudiced;
(c)
that the royalty and other remuneration, if any, reserved to the inventor or other person beneficially entitled to a patent is reasonable having regard to the nature of the invention.
(2) Subject to subsection (1), the Registrar shall, in determining whether to make an order or entry in pursuance of such an application, take account of the following matters:
(a)
the nature of the invention, the time which has elapsed since the publication in the journal of a notice of the grant of the patent and the measures already taken by the proprietor of the patent or any licensee to make full use of the invention;
(b)
the ability of any person to whom a licence would be granted under the order to work the invention to the public advantage; and
(c)
the risks to be undertaken by that person in providing capital and working the invention if the application for an order is granted,
but shall not be required to take account of matters subsequent to the making of the application.
59.
—(1) The proprietor of a patent or any other person wishing to oppose an application under sections 55 to 58 may, in accordance with the rules, give to the Registrar notice of opposition; and the Registrar shall consider the opposition in deciding whether to grant the application.
(2) Where an appeal is brought from an order made by the Registrar in pursuance of an application under sections 55 to 58 or from a decision of his to make an entry in the register in pursuance of such an application or from a refusal of his to make such an order or entry, the Attorney-General, or such other counsel as he may appoint, shall be entitled to appear and be heard.
(3) Where an application under sections 55 to 58 is opposed under subsection (1), and either —
(a)
the parties consent; or
(b)
the proceedings require a prolonged examination of documents or any scientific or local investigation which cannot in the opinion of the Registrar conveniently be made before him,
the Registrar may at any time order the whole proceedings, or any question or issue of fact arising on them, to be referred to an arbitrator agreed on by the parties or, in default of agreement, appointed by the Registrar.
(4) The arbitrator to whom any reference is made under subsection (3) shall report his findings to the Registrar.
(5) The expenses of and incidental to a reference to an arbitrator under subsection (3) shall, in default of agreement between the parties, be borne equally by the parties to the reference.
60.
—(1) The Registrar may make an entry in the register under sections 55 to 58 notwithstanding any contract which would have precluded the entry on the application of the proprietor of the patent under section 53.
(2) An entry made in the register under sections 55 to 58 shall for all purposes have the same effect as an entry made under section 53.
(3) Where a licence has been granted under section 53, 55 or 56 and the proprietor of the patent and the licensee are unable to agree within a reasonable time on the amount of royalty or compensation to be reserved to the proprietor of the patent, the Registrar shall determine the royalty or compensation payable.
(4) No order or entry shall be made in pursuance of an application under sections 55 to 58 which would be at variance with any treaty or international convention relating to patents to which Singapore is a party.