THE STATUTES OF THE REPUBLIC OF SINGAPORE

PATENTS ACT

(CHAPTER 221)

　

Act

21 of 1994

REVISED EDITION 1995

(15th March 1995)

PRINTED BY THE GOVERNMENT PRINTER, SINGAPORE

1995

CHAPTER 221

Patents Act

ARRANGEMENT OF SECTIONS

PART I

PRELIMINARY

　

Section

1.Short title and commencement.

2.Interpretation.

3.Application to Government.

PART II

ADMINISTRATION

4.Registrar of Patents and other officers.

5.Delegation by Registrar.

6.Registry of Patents.

7.Seal of Registry.

8.Powers of Registrar.

9.Disobedience to summons an offence.

10.Refusal to give evidence an offence.

11.Officers not to traffic in inventions.

12.Officers not to furnish information.

PART III

PATENTABILITY

13.Patentable inventions.

14.Novelty.

15.Inventive step.

16.Industrial application.

17.Priority date.

18.Disclosure of matter, etc., between earlier and later applications.

PART IV

RIGHT TO APPLY FOR AND OBTAIN PATENT

19.Right to apply for and obtain patent.

20.Determination before grant of questions about entitlement to patents, etc.

21.Determination after grant of questions referred before grant.

22.Handling of application by joint applicants.

Section

23.Effect of transfer of application under section 20 or 22.

24.Mention of inventor.

PART V

APPLICATIONS FOR PATENTS

25.Making of application.

26.Date of filing application.

27.Publication of application.

PART VI

PROCEDURE FOR GRANT OF PATENT

28.Examination as to form.

29.Search and examination and corresponding international applications.

30.Grant of patent.

31.General power to amend application before grant.

32.Failure of application.

33.Information prejudicial to defence of Singapore or safety of public.

34.Restrictions on applications abroad by Singapore residents.

PART VII

PROVISIONS AS TO PATENTS AFTER GRANT

35.Publication and certificate of grant.

36.Term of patent.

37.Patent not to be impugned for lack of unity.

38.General power to amend specification after grant.

39.Restoration of lapsed patents.

40.Surrender of patents.

PART VIII

PROPERTY IN PATENTS AND APPLICATIONS

FOR PATENTS AND REGISTRATION

41.Nature of, and transactions in, patents and applications for patents.

42.Register of patents.

43.Effect of registration, etc., on rights in patents.

44.Rectification of register.

45.Evidence of register, documents, etc.

46.Co-ownership of patents and applications for patents.

47.Determination of right to patent after grant.

48.Effect of transfer of patent under section 47.

PART IX

EMPLOYEES' INVENTIONS

Section

49.Right to employees' inventions.

50.Supplementary provisions.

PART X

CONTRACTS AS TO PATENTED PRODUCTS

51.Avoidance of certain restrictive conditions.

52.Determination of parts of certain contracts.

PART XI

LICENCES OF RIGHT AND COMPULSORY LICENCES

53.Licences of right.

54.Cancellation of entry made under section 53.

55.Compulsory licences.

56.Inventions relating to food or medicine or surgical or curative device.

57.Provisions as to licences under section 55 or 56.

58.Exercise of powers on application under section 55.

59.Opposition, appeal and arbitration.

60.Supplementary provisions.

PART XII

USE OF PATENTED INVENTIONS FOR

SERVICES OF GOVERNMENT

61.Use of patented inventions for services of Government.

62.Interpretation, etc., of provisions about Government use.

63.Rights of third parties in respect of Government use.

64.References of disputes as to Governlnent use.

65.Special provisions as to Government use during emergency.

PART XIII

INFRINGEMENT OF PATENTS

66.Meaning of infringement.

67.Proceedings for infringement of patent.

68.Reversal of burden of proof.

69.Restrictions on recovery of damages for infringement.

70.Relief for infringement of partially valid patent.

71.Right to continue use begun before priority date.

72.Certificate of contested validity of patent.

73.Proceedings for infringement by co-owner.

74.Proceedings for infringement by exclusive licensee.

Section

75.Effect of non-registration on infringement proceedings.

76.Infringement of rights conferred by publication of application.

77.Remedy for groundless threats of infringement proceedings.

78.Declaration as to non-infringement.

PART XIV

REVOCATION OF PATENTS AND VALIDITY PROCEEDINGS

79.Information on result of corresponding international applications.

80.Power to revoke patents on application.

81.Registrar's power to revoke patents.

82.Proceedings in which validity of patent may be put in issue.

PART XV

AMENDMENTS OF PATENTS AND APPLICATIONS

83.Amendment of patent in infringement or revocation proceedings.

84.Amendments of applications and patents not to include added matter.

PART XVI

INTERNATIONAL APPLICATIONS FOR PATENTS

85.Effect of filing international application for patent.

86.International and national phases of application.

87.Adaptation of provisions in relation to international application.

88.Evidence of Patent Co-operation Treaty and its instruments.

89.Convention countries.

PART XVII

LEGAL PROCEEDINGS

90.Proceedings before court or Registrar.

91.Appeals from Registrar.

92.General powers of court.

93.Exercise of Registrar's discretionary powers.

94.Right of audience in patent proceedings.

95.Extension of privilege for communications with solicitors relating to patent proceedings.

96.Privilege for communications with patent agents.

97.Costs and expenses in proceedings before Registrar.

98.Licences granted by order of Registrar.

PART XVIII

OFFENCES

Section

99.Falsification of register, etc.

100.Unauthorised claim of patent rights.

101.Unauthorised claim that patent has been applied for.

102.Misuse of title "Registry of Patents".

103.Offences by corporations and partnerships.

PART XIX

PATENT AGENTS

104.Registration of patent agents.

105.Persons entitled to describe themselves as patent agents.

PART XX

MISCELLANEOUS AND GENERAL

106.Immunity of Government, its officers and Examiners.

107.Correction of errors in patents and applications.

108.Information about patent applications and patents, and inspection of documents.

109.Service by post.

110.Extension of time.

111.Hours of business of Registry and excluded days.

112.Government's right to sell forfeited articles.

113.Extent of invention.

114.Availability of samples of micro-organisms.

115.Rules.

116.Transitional provisions.

An Act to establish a new law of patents, to enable Singapore to give effect to certain international conventions on patents, and for matters connected therewith.

[23rd February 1995,

except Sections 104

and 105 (1) to (6),

(8)and (9)]

PART I

PRELIMINARY

　

1.-(1)This Act may be cited as the Patents Act and shall come into operation on such date as the Minister may, by notification in the Gazette, appoint.

(2)The Mimster may appoint different dates for the coming into operation of the different Parts or provisions of this Act.

2.-(1)In this Act, unless the context otherwise requires -

"Convention on International Exhibitions" means the Convention relating to International

Exhibitions signed in Paris on 22nd November 1928, as amended or supplemented by any Protocol

to that convention which is for the time being in force;

"court" means the High Court;

"date of filing", in relation to -

(a)an application for a patent made under this Act, means the date of filing that application by virtue of section 26; and

(b)any other application, means the date which, under the law of the country where the application

as made or in accordance with the terms of a treaty or convention to which that country is a

party, is to be treated as the date of filing that application in that country or is equivalent to the

date of filing an application in that country (whatever the outcome of the application);

"designate", in relation to an application or a patent, means designate the country or countries (in pursuance of the Patent Co-operation Treaty) in which protection is sought for the invention which is the subject of the application or patent;

"employee" means a person who works or (where the employment has ceased) worked under a

contract of employment or in employment under or for the purposes of a Government department;

"employer", in relation to an employee, means the person by whom the employee is or was

employed;

"European Patent Convention" means the Convention on the Grant of European Patents;

"European Patent Office" means the office of that name established by the European Patent

Convention;

"Examiner" means such person, organisation or foreign or international patent office or organisation as

may be prescribed to whom the Registrar may refer questions relating to patents, including search and

examination of applications for patents;

"exclusive licence" means a licence from the proprietor of or applicant for a patent conferring on the

licensee, or on him and persons authorised by him, to the exclusion of all other persons (including

the proprietor or applicant), any right in respect of the invention to which the patent or application

relates, and "exclusive licensee" and "nonexclusive licence" shall be construed accordingly;

"filing fee" means the fee prescribed for the purposes of section 25;

"formal requirements" means those requirements designated as such by rules made for the purposes of

section 28;

"international application for a patent" means an application made under the Patent Co-operation

Treaty;

"international application for a patent (Singapore)" means an application of that description which,

on its date of filing, designates Singapore;

"International Bureau" means the secretariat of the World Intellectual Property Organisation

established by a convention signed at Stockholm on 14th July 1967;

"international exhibition" means an official or officially recognised international exhibition falling

within the terms of the Convention on International Exhibitions or falling within the terms of any

subsequent treaty or convention replacing that convention;

"inventor", in relation to an invention, means the actual deviser of the invention and "joint inventor"

shall be construed accordingly;

"journal" has the same meaning as in section 115 (4);

"mortgage", when used as a noun, includes a charge for securing money or money's worth and,

when used as a verb, shall be construed accordingly;

"Paris Convention" means the Convention for the Protection of Industrial Property signed at Paris on

20th March 1883;

"patent" means a patent under this Act and includes a patent in force by virtue of section 116 (3);

"Patent Co-operation Treaty" means the treaty of that name signed at Washington on 19th June 1970;

"patented invention" means an invention for which a patent is granted and "patented process" shall

be construed accordingly;

"patented product" means a product which is a patented invention or, in relation to a patented

process, a product obtained directly by means of the process or to which the process has been

applied;

"person" includes the Government;

"priority date" means the date determined as such under section 17;

"published" means made available to the public (whether in Singapore or elsewhere) and a document

shall be taken to be published under any provision of this Act if it can be inspected as of right at any

place in Singapore by members of the public, whether on payment of a fee or not; and

"republished" shall be construed accordingly;

"register", when used as a noun, means the register of patents kept under section 42 and, when used

as a verb, means, in relation to any thing, to register or register particulars, or enter notice, of that

thing in the register and, when used in relation to a person, means to enter his name in the register;

"registered patent agent" means a person whose name is entered in the register of patent agents kept

in accordance with the rules made under section 104;

"Registrar" means the Registrar of Patents and includes any Deputy Registrar of Patents holding

office under this Act;

"Registry" means the Registry of Patents established under this Act;

"right", in relation to any patent or application, includes an interest in the patent or application and,

without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share

in the patent;

"scientific adviser" means any person with any scientific qualification, any medical practitioner,

engineer, architect, surveyor, accountant, actuary and any other specially skilled person;

"services of the Government'' and ''use for the services of the Government" have the same meanings

as in section 62 (2), including, as respects any period of emergency within the meaning of section

65, the meanings assigned to them by that section.

(2)Rules may provide for stating in the journal that an exhibition falls within the definition of

"international exhibition" in subsection (1) and any such statement shall be conclusive evidence

that the exhibition falls within that definition.

(3)For the purposes of this Act, a matter shall be taken to have been disclosed in any relevant

application within the meaning of section 17 or in the specification of a patent if it was either

claimed or disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in that

application or specification.

(4)References in this Act to an application for a patent, as filed, are references to such an application

in the state it was on the date of filing.

(5)References in this Act to an application for a patent being published are references to its being

published under section 27.

(6)References in this Act to the Paris Convention or the Patent Co-operation Treaty are references to

that Convention or Treaty or any other international convention or agreement replacing it, as

amended or supplemented by any convention or international agreement (including in either case

any protocol or annex) to which Singapore is a party, or in accordance with the terms of any such

convention or agreement and include references to any instrument made under any such convention

or agreement.

(7)The Arbitration Act shall not apply to any proceedings before the Registrar under this Act.

3.This Act shall bind the Government.

PART II

ADMINISTRATION

4.-(1)There shall be a Registrar of Patents who shall have the chief control of the Registry of Patents.

(2)There shall be one or more Deputy Registrars of Patents who shall, subject to the control of the

Registrar, have all the powers and functions of the Registrar under this Act, other than the powers

of the Registrar under section 5.

(3)There shall be one or more Assistant Registrars of Patents.

(4)The Registrar and all the other officers under this section shall be appointed by the Minister.

5.-(1)The Registrar may, in relation to a particular matter or class of matters, by writing under his hand, delegate all or any of his powers or functions under this Act (except this power of delegation) to an Assistant Registrar of Patents or any public officer so that the delegated powers and functions may be exercised by the delegate with respect to the matter or class of matters specified in the instrument of delegation.

(2)A delegation under this section is revocable at will and no delegation shall prevent the exercise of

a power or function by the Registrar or by any Deputy Registrar of Patents.

6.For the purposes of this Act, there shall be an office which shall be known as the Registry of Patents.

7.There shall be a seal of the Registry and impressions of the seal shall be judicially noticed.

8.The Registrar may, for the purposes of this Act -

(a)summon witnesses;

(b)receive evidence on oath, whether orally or otherwise;

(c)require the production of documents or articles; and

(d)award costs against a party to proceedings before him.

9.-(1)A person who has been summoned to appear as a witness before the Registrar shall not, without lawful excuse, fail to appear in obedience to the summons.

(2)A person who has been required by the Registrar to produce a document or article shall not,

without lawful excuse, fail to produce the document or article.

(3)Any person who contravenes subsection (1) or (2) shall be guilty of an offence and shall be liable

on conviction to a fine not exceeding $2,000 or to imprisonment for a term not exceeding 3

months or to both.

10.-(1)A person who appears before the Registrar shall not, without lawful excuse, refuse to be sworn or to make an affirmation, or to produce documents or articles, or to answer questions, which he is lawfully required to produce or answer.

(2)Any person who contravenes subsection (1) shall be guilty of an offence and shall be liable on

conviction to a fine not exceeding $2,000 or to imprisonment for a term not exceeding 3

months or to both.

11.-(1)An officer or person employed in the Registry shall not buy, sell, acquire or traffic in an invention or patent, whether granted in Singapore or elsewhere, or in a right to, or licence under, a patent, whether granted in Singapore or elsewhere.

(2)Any person who contravenes subsection (1) shall be guilty of an offence and shall be liable on

conviction to a fine not exceeding $2,000 or to imprisonment for a term not exceeding 3 months

or to both.

(3)A purchase, sale, acquisition, assignment or transfer made or entered into in contravention of

this section is void.

(4)This section shall not apply to the actual inventor or to an acquisition by bequest or devolution in

law.

12.-(1)An officer or person employed in the Registry shall not, except when required or authorised by this Act, or under a direction in writing of the Registrar or by order of a court-

(a)furnish information on a matter which is being, or has been, dealt with under this Act;

(b)prepare, or assist in the preparation of, a document required or permitted by or under this Act

to be lodged in the Registry; or

(c)conduct a search in the records of the Registry.

(2)Any person who contravenes subsection (1) shall be guilty of an offence and shall be liable on

conviction to a fine not exceeding $2,000 or to imprisonment for a term not exceeding 3 months

or to both.

PART III

PATENTABILITY

13.-(1)Subject to subsections (2) and (3), a patentable invention is one that satisfies the following conditions:

(a)the invention is new;

(b)it involves an inventive step; and

(c)it is capable of industrial application.

(2)It is hereby declared that the following (among other things) are not inventions for the purposes

of this Act, that is to say, anything which consists of -

(a)a discovery, scientific theory or mathematical method;

(b)a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;

(c)a scheme, rule or method for performing a mental act, playing a game or doing business, or a

program for a computer; or

(d)the presentation of information, but the foregoing provisions shall prevent anything from

being treated as an invention for the purposes of this Act only to the extent that a patent or an

application for a patent relates to that thing as such.

(3)An invention the publication or exploitation of which would be generally expected to encourage

offensive, immoral or anti-social behaviour is not a patentable invention.

(4)For the purposes of subsection (3), behaviour shall not be regarded as offensive, immoral or anti-

social only because it is prohibited by any law in force in Singapore.

(5)The Minister may, by order published in the Gazette, vary the provisions of subsection (2) for the

purposes of maintaining them in conformity with developments in science and technology.

14.-(1)An invention shall be taken to be new if it does not form part of the state of the art.

(2)The state of the art in the case of an invention shall be taken to comprise all matter (whether a

product, a process, information about either, or anything else) which has at any time before the

priority date of that invention been made available to the public (whether in Singapore or

elsewhere) by written or oral description, by use or in any other way.

(3)The state of the art in the case of an invention to which an application for a patent or a patent

relates shall be taken also to comprise matter contained in an application for another patent

which was published on or after the priority date of that invention, if the following conditions

are satisfied:

(a)that matter was contained in the application for that other patent both as filed and as

published; and

(b)the priority date of that matter is earlier than that of the invention.

(4)For the purposes of this section, the disclosure of matter constituting an invention shall be

disregarded in the case of a patent or an application for a patent if occurring later than the

beginning of the period of 12 months immediately preceding the date of filing the application for

the patent and either -

(a)the disclosure was due to, or made in consequence of, the matter having been obtained

unlawfully or in breach of confidence by any person－

( i )from the inventor or from any other person to whom the matter was made available in

confidence by the inventor or who obtained it from the inventor because he or the inventor

believed that he was entitled to obtain it; or

( ii )from any other person to whom the matter was made available in confidence by any

person mentioned in sub-paragraph ( i ) or in this sub-paragraph or who obtained it from

any person so mentioned because he or the person from whom he obtained it believed that

he was entitled to obtain it;

(b)the disclosure was made in breach of confidence by any person who obtained the matter in

confidence from the inventor or from any other person to whom it was made available, or

who obtained it, from the inventor;

(c)the disclosure was due to, or made in consequence of, the inventor displaying the invention at

an international exhibition and the applicant states, on filing the application, that the invention

has been so displayed and also, within the prescribed period, files written evidence in support

of the statement complying with any prescribed conditions; or

(d)the disclosure was due to, or made in consequence of, the inventor describing the invention in

a paper read by him or another person with his consent or on his behalf before any learned

society or published with his consent in the transactions of any learned society.

(5)For the purpose of subsection (4) (d), "learned society" includes any club or association constituted in

Singapore or elsewhere whose main object is the promotion of any branch of learning or science.

(6)In this section, references to the inventor include references to any proprietor of the invention for

the time being.

(7)In the case of an invention consisting of a substance or composition for use in a method of treatment of

the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body,

the fact that the substance or composition forms part of the state of the art shall not prevent the invention

from being taken to be new if the use of the substance or omposition in any such method does not form

part of the state of the art.

15.An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 14 (2) and without having regard to section 14 (3).

16.-(1)Subject to subsection (2), an invention shall be taken to be capable of industrial application if it can be made or used in any kind of industry, including agriculture.

(2)An invention of a method of treatment of the human or animal body by surgery or therapy or of

diagnosis practised on the human or animal body shall not be taken to be capable of industrial

application.

(3)Subsection (2) shall not prevent a product consisting of a substance or composition being treated

as capable of industrial application merely because it is invented for use in any such method.

17.-(1)For the purposes of this Act, the priority date of an invention to which an application for a patent relates and also of any matter (whether or not the same as the invention) contained in the application is, except as provided by the provisions of this Act, the date of filing the application.

(2)If in or in connection with an application for a patent (the application in suit) a declaration is

made, whether by the applicant or any predecessor in title of his, complying with the relevant

requirements of the rules and specifying one or more earlier relevant applications for the

purposes of this section made by the applicant or a predecessor in title of his and each having a

date of filing during the period of 12 months immediately preceding the date of filing the

application in suit, then -

(a)if an invention to which the application in suit relates is supported by matter disclosed in the

earlier relevant application or applications, the priority date of that invention shall instead of

being the date of filing the application in suit be the date of filing the relevant application in

which that matter was disclosed or, if it was disclosed in more than one relevant application,

the earliest of them;

(b)the priority date of any matter contained in the application in suit which was also disclosed in

the earlier relevant application or applications shall be the date of filing the relevant

application in which that matter was disclosed or, if it was disclosed in more than one relevant

application, the earliest of them.

(3)Where an invention or other matter contained in the application in suit was also disclosed in two

earlier relevant applications filed by the same applicant as in the case of the application in suit or

a predecessor in title of his and the second of those relevant applications was specified in or in

connection with the application in suit, the second of those relevant applications shall, so far as it

concerns that invention or matter, be disregarded unless－

(a)it was filed in or in respect of the same country as the first; and

(b)not later than the date of filing the second, the first (whether or not so specified) was

unconditionally withdrawn, or was abandoned or refused, without-

( i )having been made available to the public whether in Sin-gapore or ekewhere;

( ii )leaving any rights outstanding; and

( iii )having served to establish a priority date in relation to another application, wherever

made.

(4)This section shall apply for determining the priority date of an invention for which a patent has

been granted as it applies for determining the priority date of an invention to which an

application for that patent relates.

(5)In this section and section 18, "relevant application" means any of the following applications

which has a date of filing:

(a)an application for a patent under this Act; or

(b)an application in or for a convention country specified under section 89 for protection in

espect of an invention or an application 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.

18.-(1)It is hereby declared for the avoidance of doubt that where an application (the application in suit) is made for a patent and a declaration is made in accordance with section 17 (2) in or in connection with that application specifying an earlier relevant application, the application in suit and any patent granted in pursuance of it shall not be invalidated by reason only of the relevant intervening acts.

(2)In subsection (1), "relevant intervening acts" means acts done in relation to matter disclosed in

an earlier relevant application between the dates of the earlier relevant application and the

application in suit, as for example, filing another application for the invention for which the

earlier relevant application was made, making information available to the public about that

invention or that matter or working that invention, but disregarding any application, or the

disclosure to the public of matter contained in any application, which is itself to be disregarded

for the purposes of section 17 (3).

PART IV

RIGHT TO APPLY FOR AND OBTAIN PATENT

19.-(1)Any person may make an application for a patent either alone or jointly with another.

(2)A patent for an invention may be granted－

(a)primarily to the inventor or joint inventors;

(b)in preference to paragraph (a), to any person or persons who, by virtue of any enactment or

rule of law, or any foreign law or treaty or international convention, or by virtue of an

enforceable term of any agreement entered into with the inventor before the making of the

invention, was or were at the time of the making of the invention entitled to the whole of the

property in it (other than equitable interests) in Singapore;

(c)in any event, to the successor or successors in title of any person or persons mentioned in

paragraph (a) or (b) or any person so mentioned and the successor or successors in title of

another person so mentioned, and to no other person.

(3)Except so far as the contrary is established, a person who makes an application for a patent shall

be taken to be the person who is entitled under subsection (2) to be granted a patent and 2 or

more persons who make such an application jointly shall be taken to be the persons so entitled.

20.-(1)At any time before a patent has been granted for an invention -

(a)any person may refer to the Registrar the question whether he is entitled to be granted (alone

or with any other persons) a patent for that invention or has or would have any right in or

under any patent so granted or any application for such a patent; or

(b)any of 2 or more co-proprietors of an application for a patent for that invention may so refer

the question whether any right in or under application should be transferred or granted to any

other person,

and the Registrar shall determine the question and may make such order as he thinks fit to give effect to the determination.

(2)Where a person refers a question relating to an invention under subsection (1) (a) to the Registrar

after an application for a patent for the invention has been filed and before a patent is granted in

pursuance of the application, then, unless the application is refused or withdrawn before the

reference is disposed of by the Registrar, the Registrar may, without prejudice to the generality

of subsection (1) and subject to subsection (6)

(a)order that the application shall proceed in the name of that person, either solely or jointly with

that of any other applicant or any specified applicant;

(b)where the reference was made by two or more persons, order that the application shall proceed

in all their names jointly;

(c)refuse to grant a patent in pursuance of the application or order the application to be amended

so as to exclude any of the matter in respect of which the question was referred; or

(d)make an order transferring or granting any licence or other right in or under the application and

give directions to any person for carrying out the provisions of any such order.

(3)Where a question is referred to the Registrar under subsection (1) (a) and -

(a)the Registrar orders an application for a patent for the invention to which the question relates

to be so amended;

(b)any such application is refused under subsection (2) (c) before the Registrar has disposed of

the reference (whether the reference was made before or after the publication of the

application); or

(c)any such application is refused under any other provision of this Act or is withdrawn before

the Registrar has disposed of the reference, but after the publication of the application,

the Registrar may order that any person by whom the reference was made may within the prescribed period make a new application for a patent for the whole or part of any matter comprised in the earlier application or, as the case may be, for all or any of the matter excluded from the earlier application, subject in either case to section 84, and in either case that, if such a new application is made, it shall be treated as having been filed on the date of filing the earlier application.

(4)Where a person refers a question under subsection (1) (b) relating to an application, any order

under subsection (1) may contain directions to any person for transferring or granting any right

in or under the application.

(5)If any person to whom directions have been given under subsection (2) (d) or (4) fails to do

anything necessary for carrying out any such directions within 14 days after the date of the

directions, the Registrar may, on application made to him by any person in whose favour or on

whose reference the directions were given, authorise him to do that thing on behalf of the person

to whom the directions were given.

(6)Where on a reference under this section it is alleged that, by virtue of any transaction, instrument

or event relating to an invention or an application for a patent, any person other than the inventor

or the applicant for the patent has become entitled to be granted (whether alone or with any other

persons) a patent for the invention or has or would have any right in or under any patent so

granted or any application for any such patent, an order shall not be made under subsection (2) (a),

(b) or (d) on the reference unless notice of the reference is given to the applicant and any such

person, except any of them who is a party to the reference.

(7)If it appears to the Registrar on a reference of a question under this section that the question

involves matters which would more properly be determined by the court, he may decline to deal

with it and, without prejudice to the court's jurisdiction to determine any such question and make

a declaration, the court shall have jurisdiction to do so.

(8)No direction shall be given under this section so as to affect the mutual rights or obligations of

trustees or of the personal representatives of deceased persons, or their rights or obligations as

such.

21.If a question with respect to a patent or application is referred by any person to the Registrar under section 20, and is not determined before the time when the application is first in order for a grant of a patent in pursuance of the application, that fact shall not prevent the grant of a patent, but on its grant that person shall be treated as having referred to the Registrar under section 47 any question mentioned in that section which the Registrar thinks appropriate.

22.If any dispute arises between joint applicants for a patent whether or in what manner the application should be proceeded with, the Registrar may, on a request made by any of the parties, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it shall be proceeded with, or for both those purposes, as the case may require.

23.-(1)Where an order is made or directions are given under section 20 or 22 that an application for a patent shall proceed in the name of one or some of the original applicants (whether or not it is also to proceed in the name of some other person), any licences or other rights in or under the application shall, subject to the provisions of the order and any directions under either of those sections, continue in force and be treated as granted by the persons in whose name the application is to proceed.

(2)Where an order is made or directions are given under section 20 that an application for a patent

shall proceed in the name of one or more persons none of whom was an original applicant (on

the ground that the original applicant or applicants was or were not entitled to be granted the

patent), any licences or other rights in or under the application shall, subject to the provisions of

the order and any directions under that section and subject to subsection (3), lapse on the

registration of the person or those persons as the applicant or applicants or, where the application

has not been published, on the making of the order.

(3)If before registration of a reference under section 20 resulting in the making of any order

mentioned in subsection (2) -

(a)the original applicant or any of the applicants, acting in good faith, worked the invention in

question in Singapore or made effective and serious preparations to do so; or

(b)a licensee of the applicant, acting in good faith, worked the invention in Singapore or made

effective and serious preparations to do so,

that or those original applicant or applicants or the licensee shall, on making a request within the prescribed period to the person in whose name the application is to proceed, be entitled to be granted a licence (but not an exclusive licence) to continue working or, as the case may be, to work the invention.

(4)Any such licence shall be granted for a reasonable period and on reasonable terms.

(5)Where an order is made as mentioned in subsection (2), the person in whose name the application

is to proceed or any person claiming that he is entitled to be granted any such licence may refer to

the Registrar the question whether the latter is so entitled and whether any such period is or terms

are reasonable, and the Registrar shall determine the question and may, if he considers it

appropriate, order the grant of such a licence.

24.-(1)The inventor or joint inventors of an invention shall have a right to be mentioned as such in any patent granted for the invention and shall also have a right to be so mentioned if possible in any published application for a patent for the invention and, if not so mentioned, a right to be so mentioned in accordance with the rules in a prescribed document.

(2)Unless he has already given the Registry the information mentioned in this subsection, an

applicant for a patent shall, within the prescribed period, file with the Registry a statement-

(a)identifying the person or persons whom he believes to be the inventor or inventors; and

(b)where the applicant is not the sole inventor or the applicants are not the joint inventors,

indicating the derivation of his or their right to be granted the patent,

and, if he fails to do so, the application shall be treated as having been abandoned.

(3)Where a person has been mentioned as a sole or joint inventor in pursuance of this section, any

other person who alleges that the former ought not to have been mentioned may at any time

apply to the Registrar for a certificate to that effect, and the Registrar may issue such a

certificate.

PART V

APPLICATIONS FOR PATENTS

25.-(1)Every application for a patent -

(a)shall be made in the prescribed form and shall be filed at the Registry in the prescribed

manner; and

(b)shall be accompanied by the fee prescribed for the purposes of this subsection.

(2)Where an application is not accompanied by the fee mentioned in subsection (1) (b), the fee shall

be paid within the prescribed period.

(3)Every application for a patent shall contain -

(a)a request for the grant of a patent;

(b)a specification containing a description of the invention, a claim or claims and any drawing

referred to in the description or any claim; and

(c)an abstract,

but this subsection shall not prevent an application being initiated by documents complying with section 26 (1).

(4)The specification of an application shall disclose the invention in a manner which is clear and

complete for the invention to be performed by a person skilled in the art.

(5)The claim or claims shall -

(a)define the matter for which the applicant seeks protection;

(b)be clear and concise;

(c)be supported by the description; and

(d)relate to one invention or to a group of inventions which are so linked as to form a single

inventive concept.

(6)Without prejudice to the generality of subsection (5) (d), the rules may provide for treating two or

more inventions as being so linked as to form a single inventive concept for the purposes of this

Act.

(7)The purpose of the abstract is to give technical information and on publication it shall not form

part of the state of the art by virtue of section 14 (3), and the Registrar may determine whether the

abstract adequately fulfils its purpose and, if it does not, may reframe it so that it does.

(8)An application for a patent may be withdrawn at any time before the patent is granted and any

withdrawal of such an application may not be revoked.

26.-(1)The date of filing an application for a patent shall, subject to the provisions of this Act, be taken to be the earliest date on which the following considerations are satisfied in relation to the application:

(a)the documents filed at the Registry contain an indication that a patent is sought in pursuance

of the application;

(b)those documents identify the applicant or applicants for the patent; and

(c)those documents contain a description of the invention and one or more claims whether or not

the description or the claim or claims complies with the other provisions of this Act and with

any relevant rules.

(2)Every application for a patent shall be examined on filing to determine whether -

(a)the filing fee has been paid; and

(b)the application satisfies the requirements for the accordance of a filing date.

(3)If a date of filing cannot be accorded, the Registrar shall give the applicant an opportunity to

correct the deficiencies, and if the deficiencies are not corrected within the prescribed period, the

application shall be treated as having been abandoned.

(4)If the filing fee has not been paid within the period prescribed under section 25 (2), the

application shall be treated as having been abandoned.

(5)If before the grant of a patent under section 30 it is found that any drawing referred to in any such

application is filed later than the date which by virtue of subsection (1) is to be treated as the date

of filing the application, the Registrar shall give the applicant an opportunity of requesting within

the prescribed period that the date on which the drawing is filed shall be treated for the purposes

of this Act as the date of filing the application, and -

(a)if the applicant makes any such request, the date of filing the drawing shall be so treated; but

(b)otherwise any reference to the drawing in the application shall be treated as omitted.

(6)Where, after an application for a patent has been filed and before the patent is granted, a new

application is filed by the original applicant or his successor in title in accordance with the rules in

respect of any part of the matter contained in the earlier application and the conditions mentioned

in subsection (1) are satisfied in relation to the new application (without the new application

contravening section 84) the new application shall be treated as having, as its date of filing, the

date of filing the earlier application.

(7)Nothing in subsection (5) shall be construed as affecting the power of the Registrar under section

107 (1) to correct errors or mistakes with respect to the filing of drawings.

27.-(1)Subject to section 33, where an application has a date of filing, then, as soon as possible after the end of the prescribed period, the Registrar shall, unless the application is withdrawn, treated as having been abandoned or refused before preparations for its publication have been completed by the Registry, publish it as filed (including not only the original claims but also any amendments of those claims and new claims subsisting immediately before the completion of those preparations) and he may, if so requested by the applicant, publish it as aforesaid during that period, and in either event shall publish the fact and date of its publication in the journal.

(2)The Registrar may omit from the specification of a published application for a patent any matter

(a)which in his opinion disparages any person in a way likely to damage him; or

(b)the publication or exploitation of which would in his opinion be generally expected to

encourage offensive, immoral or anti-social behaviour.

PART VI

PROCEDURE FOR GRANT OF PATENT

28.-(1)Where an application for a patent has a date of filing and is not withdrawn or treated as having been abandoned, the Registrar shall, as soon as practicable after the end of the prescribed period, examine the application so as to determine whether the application complies with those requirements of this Act and the rules which are designated by the rules as formal requirements for the purposes of this Act.

(2)Where, after an examination under subsection (1), it is determined that not all the formal

requirements are complied with, the Registrar shall give the applicant an opportunity to make

observations and to amend the application within such period as the Registrar may specify so as

to comply with those requirements (subject, however, to section 84), and, if the applicant fails to

do so, the Registrar may refuse the application.

29.-(1)Where an application for a patent complies with all the formal requirements referred to in section 28 (1), the Registrar shall notify the applicant who shall -

(a)file a request in the prescribed form and pay the prescribed fee for a search report within the

prescribed period;

(b)file a request in the prescribed form and pay the prescribed fee for a search and examination

report within the prescribed period; or

(c)where the applicant has filed, alone or jointly with any other person, a corresponding

international application for a patent, not designating Singapore, or a corresponding

application for a patent at any prescribed patent office, furnish such detail as prescribed and

within the prescribed period, of all the corresponding international applications and the other

corresponding applications filed by him,

and if the applicant fails to make such request, pay the prescribed fee or furnish the prescribed detail within the prescribed period, the application shall be treated as having been abandoned at the end of the period prescribed under paragraph (a), (b) or (c), whichever is the latest.

(2)Where the applicant has filed a request and paid the fee under subsection (1) (a), the Registrar

shall cause the application to be subject to a search by an Examiner to discover the relevant prior

art contained in such documentation as may be prescribed.

(3)Upon receipt of the report of the search carried out under subsection (2), the Registrar shall send

to the applicant a copy of the report, and the applicant may, within the prescribed period, file a

request and pay the prescribed fee for an examination report on the application so as to

determine whether the conditions specified in sections 13 and 25 (4) and (5) have been complied

with, taking into consideration all the relevant prior art, if any, referred to in the search report;

and upon receipt of the report, the Registrar shall send to the applicant a copy of the report.

(4)Where the applicant has furnished the prescribed details under subsection (1) (c), he shall,

subject to subsection (5), within the prescribed period, file the prescribed information in or

translated into the English language relating to any one of the corresponding international

applications or other corresponding applications referred to in subsection (1) (c).

(5)The applicant may, instead of filing the prescribed information referred to in subsection (4),

within the prescribed period, either -

(a)file a copy of a search report in respect of any one of the corresponding international

applications or other corresponding applications referred to in subsection (1) (c), together with

a request in the prescribed form and the prescribed fee, for an examination report; or

(b)file a request in the prescribed form and pay the prescribed fee for a search and examination

report.

(6)Where the applicant has filed a request and paid the fee under subsection (1) (b) or (5) (b), the

Registrar shall cause the application to be subject to -

(a)a search by an Examiner to discover the relevant prior art contained in such documentation as

may be prescribed; and

(b)an examination by an Examiner so as to determine whether the conditions specified in sections

13 and 25 (4) and (5) have been complied with, taking into consideration all the relevant prior

art, if any, discovered in the search; and upon receipt of the search and examination report, the

Registrar shall send to the applicant a copy of the report.

(7)Where the applicant has filed a request and paid the fee under subsection (5) (a), the Registrar

shall cause the application to be subject to an examination by an Examiner so as to determine

whether the conditions specified in sections 13 and 25 (4) and (5) have been complied with, taking

into consideration all the relevant prior art, if any, referred to in the search report; and upon receipt

of the examination report, the Registrar shall send to the applicant a copy of the report.

(8)Where an international application for a patent (Singapore) has been filed by the applicant and the

international preliminary examination report is not established, the applicant may, within the

prescribed period file a request in the prescribed form and pay the prescribed fee, for an

examination report on the application so as to determine whether the conditions specified in

sections 13 and 25 (4) and (5) have been complied with, taking into consideration all the relevant

prior art, if any, referred to in the international search report; and upon receipt of the examination

report, the Registrar shall send to the applicant a copy of the report.

(9)For the purposes of this Part, "corresponding international application" and "corresponding

application", in relation to an invention, mean an application for protection filed, respectively,

under the Patent Co-operation Treaty or with any prescribed patent office in respect of the same

or substantially the same invention as that which is the subject of the application in suit, the

application filed under the Patent Co-operation Treaty or with the prescribed patent office being -

(a)the basis for a priority claim under section 17 in the application in suit; or

(b)subject to a priority claim based on the application in suit or an application which is also the

basis for a priority claim under section 17 in the application in suit.

30.-(1)Where before the end of the prescribed period the conditions in subsection (2) are satisfied, the Registrar shall grant the applicant a patent.

(2)The conditions referred to in subsection (1) are -

(a)that all the formal requirements have been complied with;

(b)in the case of an international application for a patent (Singapore) where Singapore has been

elected in accordance with Chapter II of the Patent Co-operation Treaty, that the international

preliminary examination report of the application has been received by the Registrar;

(c)in any other case, that the following reports or information have been received by the

Registrar;

( i )the search and examination report referred to in section 29 (6);

( ii )the search report and the examination report referred to in section 29 (3);

( iii ) the search report referred to in section 29 (5) and the examination report referred to in

section 29 (7);

( iv ) the examination report referred to in section 29 (8); or

( v )the prescribed information relating to any one of the corresponding international

applications or other corresponding applications referred to in section 29 (4); and

(d)that the prescribed fee for the grant of a patent has been paid.

(3)Notwithstanding subsection (1), the Registrar may refuse to grant a patent -

(a)in pursuance of more than one application where two or more applications for a patent for the

same invention having the same priority date have been filed by the same applicant or his

successor in title; or

(b)in respect of any thing referred to in section 13 (2) or any invention referred to in section 13 (3).

31.-(1)If it appears to an Examiner during the examination of an application that the conditions pecified in sections 13 and 25 (4) and (5) have not been complied with, the Examiner shall give the applicant at least one written opinion to that effect, and the applicant shall before the examination report is issued have the right to -

(a)respond to the written opinion within any prescribed period; and

(b)amend the specification of the application in accordance with the prescribed conditions and

subject to section 84.

(2)Notwithstanding subsection (1), at any time before a patent is granted in pursuance of an

application, the applicant may, in accordance with the prescribed conditions and subject to

section 84, amend the application of his own volition.

32.-(1)Where an application for a patent has not, before the end of such period as may be prescribed, complied with the requirements of section 30 (2), the application shall be treated as having been abandoned at the end of that period.

(2)If at the end of the prescribed period under subsection (1) an appeal to the court is pending in

respect of the application or the time within which such an appeal could be brought has not

expired, that period -

(a)where such an appeal is pending, or is brought within the said time or before the expiration of

any extension of that time granted (in the case of a first extension) on an application made

within that time or (in the case of a subsequent extension) on an application made before the

expiration of the last previous extension, shall be extended until such date as the court may

determine;

(b)where no such appeal is pending or is so brought, shall continue until the end of the said time

or, if any extension of that time is so granted, until the expiration of the extension or last

extension so granted.

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 documents 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 61;

( 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.

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 to enter

and remain in Singapore for any purpose.

PART VII

PROVISIONS AS TO PATENTS AFTER GRANT

35.-(1)As soon as practicable after a patent has been granted under this Act, the Registrar shall publish in the journal a notice that it has been granted.

(2)The Registrar shall, as soon as practicable after he publishes a notice under subsection (1), send

the proprietor of the patent a certificate in the prescribed form that the patent has been granted to

the proprietor.

(3) The Registrar shall, at the same time as he publishes a notice under subsection (1) in relation to

a patent, publish the specification of the patent, the names of the proprietor and (if different) the

inventor and any other matters (including the prescribed information under sections 29 and 30)

constituting or relating to the patent which in the Registrar's opinion it is desirable to publish.

36.-(1)A patent granted under this Act shall be treated for the purposes of this Act as having been granted, and shall take effect on the date on which notice of its grant is published in the journal and, subject to subsection (2), shall continue in force until the end of the period of 20 years beginning with the date of filing the application for the patent or with such other date as may be prescribed.

(2)A patent shall cease to have effect at the end of the prescribed period for the payment of any

renewal fee if it is not paid within that period.

(3)If during the period of 6 months immediately following the end of the prescribed period the

renewal fee and any prescribed additional fee are paid, the patent shall be treated for the purposes

of this Act as if it had never expired, and accordingly -

(a)anything done under or in relation to it during that further period shall be valid;

(b)an act which would constitute an infringement of it if it had not expired shall constitute such an

infringement; and

(c)an act which would constitute the use of the patented invention for the services of the

Government if the patent had not expired shall constitute that use.

(4) Rules shall include provision requiring the Registrar to notify the registered proprietor of a patent

that a renewal fee has not been received from him in the Registry before the end of the prescribed

period and before the framing of the notification and requiring the proprietor of a patent in force

by virtue of section 116 (3) to furnish to the Registrar -

(a)where the patent is renewed for the first time under this section, a statutory declaration stating

that the patent remains in force in the United Kingdom; and

(b)for every subsequent renewal under this section, a statutory declaration stating that the patent has

not been revoked in the United Kingdom, at the time of the payment of any renewal fee.

37.No person may in any proceeding object to a patent or to an amendment of a specification of a atent on the ground that the claims contained in the specification of the patent, as they stand or, as the case may be, as proposed to be amended, relate -

(a)to more than one invention; or

(b)to a group of inventions which are not so linked as to form a single inventive concept.

38.-(1)Subject to this section and to section 84, the Registrar may, on an application made by the proprietor of a patent, allow the specification of the patent to be amended subject to such conditions, if any, as he thinks fit.

(2)No such amendment shall be allowed under this section where there are pending before the court

or the Registrar proceedings in which the validity of the patent may be put in issue.

(3)An amendment of a specification of a patent under this section shall have effect and be deemed always to have had effect from the grant of the patent.

(4)A person may give notice to the Registrar of his opposition to an application under this section by the proprietor of a patent, and if he does so the Registrar shall notify the proprietor and consider the opposition in deciding whether to grant the application.

39.-(1)Where a patent has ceased to have effect by reason of a failure to pay any renewal fee, an application for the restoration of the patent may be made to the Registrar within the prescribed period.

(2)An application under this section may be made by the person who was the proprietor of the patent or by any other person who would have been entitled to the patent if it had not ceased to have effect; and where the patent was held by 2 or more persons jointly, the application may, with the leave of the Registrar, be made by one or more of them without joining the others.

(3)Notice of the application shall be published by the Registrar in the prescribed manner.

(4)If the Registrar is satisfied that the proprietor of the patent took reasonable care to see that any renewal fee was paid within the prescribed period or that that fee and any prescribed additional fee were paid within the 6 months immediately following the end of that period, the Registrar shall by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee.

(5)An order under this section may be made subject to such conditions as the Registrar thinks fit (including a condition requiring compliance with any provisions of the rules relating to registration which have not been complied with), and if the proprietor of the patent does not comply with any such condition of the order, the Registrar may revoke the order and give such directions consequential on the revocation as he thinks fit.

(6)The effect of an order for the restoration of a patent shall be as provided in subsections (7) to (11).

(7)Anything done under or in relation to the patent during the period between expiry and restoration shall be treated as valid.

(8)Anything done during that period which would have constituted an infringement if the patent had not expired shall be treated as an infringement -

(a)if done at a time when it was possible for the patent to be renewed under section 36 (3);

(b)if it was a continuation or repetition of an earlier infringing act.

(9)If after it was no longer possible for the patent to be so renewed, and before publication of notice of the application for restoration, a person -

(a)began in good faith to do an act which would have constituted an infringement of the patent if it had not expired; or

(b)made in good faith effective and serious preparations to do such an act,

he has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the restoration of the patent; but this right does not extend to granting a licence to another person to do the act.

(10)If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (9) may -

(a)authorise the doing of that act by any partners of his for the time being in that business; and

(b)assign that right, or transmit it on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or the preparations were made.

(11)Where a product is disposed of to another in exercise of the rights conferred by subsection (9) or (10), that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by the registered proprietor of the patent.

(12)Subsections (7) to (11) shall apply in relation to the use of a patent for the services of the Government as they apply in relation to infringement of the patent.

40.-(1)The proprietor of a patent may at any time by notice given to the Registrar offer to surrender his patent.

(2)A person may give notice to the Registrar of his opposition to the surrender of a patent under this section, and if he does so the Registrar shall notify the proprietor of the patent and determine the question.

(3)If the Registrar is satisfied that the patent may properly be surrendered, he may accept the offer and, as from the date when notice of his acceptance is published in the journal, the patent shall cease to have effect, but no action for infringement shall lie in respect of any act done before that date and no right to compensation shall accrue for any use of the patented invention before that date for the services of the Government.

PART VIII

PROPERTY IN PATENTS AND APPLICATIONS

FOR PATENTS AND REGISTRATION

41.-(1)Any patent or application for a patent is personal property (without being a thing in action), and any patent or any such application and rights in or under it may be transferred, created or granted in accordance with this section.

(2)Subject to section 46 (3), any patent or any such application, or any right in it, may be assigned or mortgaged.

(3)Any patent or any such application or right shall vest by operation of law in the same way as any other personal property and may be vested by an assent of personal representatives.

(4)Subject to section 46 (3), a licence may be granted under any patent or any such application for working the invention which is the subject of the patent or the application; and－

(a)to the extent that the licence so provides, a sub-licence may be granted under any such licence and any such licence or sub-licence may be assigned or mortgaged; and

(b)any such licence or sub-licence shall vest by operation of law in the same way as any other personal property and may be vested by an assent of personal representatives.

(5)Subsections (2) to (4) shall have effect subject to the provisions of this Act.

(6)Any of the following transactions, that is to say -

(a)any assignment or mortgage of a patent or any such application, or any right in a patent or any such application;

(b)any assent relating to any patent or any such application or right, hall be void unless it is in writing and is signed by or on behalf of the parties to the transaction (or, in the case of an assent or other ransaction by a personal representative, by or on behalf of the personal representative) or in the case of a body corporate is so signed or is under the seal of that body.

(7)An assignment of a patent or any such application or a share in it, and an exclusive licence granted under any patent or any such application, may confer on the assignee or licensee the right of the assignor or licensor to bring proceedings by virtue of section 67 or 76 for a previous infringement or to bring the proceedings under section 64 for a previous act.

42.-(1)There shall be kept at the Registry a register of patents which shall comply with the rules made by virtue of this section and shall be kept in accordance with such rules.

(2)Without prejudice to any other provisions of this Act or the rules, the rules may make provision with respect to the following matters, including provision imposing requirements as to any of those matters:

(a)the registration of patents and of published applications for patents;

(b)the registration of transactions, instruments or events affecting rights in or under patents and applications;

(c)the furnishing to the Registrar of any prescribed documents or description of documents in connection with any matter which is required to be registered;

(d)the correction of errors in the register and in any documents filed at the Registry in connection with registration; and

(e)the publication and advertisement of anything done under this Act or the rules in relation to the register.

(3)Notwithstanding anything in subsection (2) (b), no notice of any trust, whether express, implied or constructive, shall be entered in the register and the Registrar shall not be affected by any such notice.

(4)The register need not be kept in documentary form.

(5)Subject to the rules, the public shall have a right to inspect the register at the Registry at all convenient times.

(6)Any person who applies for a certified copy of an entry in the register or a certified extract from the register shall be entitled to obtain such a copy or extract on payment of a fee prescribed in relation to certified copies and extracts; and the rules may provide that any person who applies for an uncertified copy or extract shall be entitled to such a copy or extract on payment of a fee prescribed in relation to uncertified copies and extracts.

(7)Applications under subsection (6) or the rules made by virtue of that subsection shall be made in such manner as may be prescribed.

(8)In relation to any portion of the register kept otherwise than in documentary form

(a)the right of inspection conferred by subsection (5) is a right to inspect the material on the register; and

(b)the right to a copy or extract conferred by subsection (6) or the rules is a right to a copy or extract in a form in which it can be taken away and in which it is visible and legible.

43.-(1)Any person who claims to have acquired the property in a patent or application for a patent by virtue of any transaction, instrument or event to which this section applies shall be entitled as against any other person who claims to have acquired that property by virtue of an earlier transaction, instrument or event to which this section applies if, at the time of the later transaction, instrument or event -

(a)the earlier transaction, instrument or event was not registered;

(b)in the case of any application which has not been published, notice of the earlier transaction, instrument or event had not been given to the Registrar; and

(c)in any case, the person claiming under the later transaction, instrument or event did not know of the earlier transaction, instrument or event.

(2)Subsection (1) shall apply equally to the case where any person claims to have acquired any right in or under a patent or application for a patent, by virtue of a transaction, instrument or event to which this section applies, and that right is incompatible with any such right acquired by virtue of an earlier transaction, instrument or event to which this section applies.

(3)This section shall apply to the following transactions, instruments and events:

(a)the assignment of a patent or application for a patent, or a right in it;

(b)the mortgage of a patent or application;

(c)the grant or assignment of a licence or sub-licence, or mortgage of a licence or sub-licence, under a patent or application;

(d)the death of the proprietor or one of the proprietors of any such patent or application or any person having a right in or under a patent or application and the vesting by an assent of personal representatives of a patent, application or any such right; and

(e)any order or directions of a court or other competent authority

( i )transferring a patent or application or any right in or under it to any person; or

( ii )that an application should proceed in the name of any per-son,

and in either case the event by virtue of which the court or authority had power to make any

such order or give any such directions.

(4)Where an application for the registration of a transaction, instrument or event has been made, but the transaction, instrument or event has not been registered, then, for the purposes of subsection (1) (a), registration of the application shall be treated as registration of the transaction, instrument or event.

44.-(1)The court may, on the application of any person aggrieved, order the register to be rectified by the making, or the variation or deletion, of any entry in it.

(2)In proceedings under this section, the court may determine any question which may be necessary or expedient to decide in connection with the rectification of the register.

45.-(1)The register shall be prima facie evidence of anything required or authorised by this Act or the rules be registered.

(2)A certificate purporting to be signed by the Registrar and certifying that any entry which he is authorised by this Act or rules to make has or has not been made, or that any other thing which he is so authorised to do has or has not been done, shall be prima facie evidence of the matter so certified.

(3)Each of the following, that is to say－

(a)a copy of an entry in the register or an extract from the register which is supplied under section 42 (6);

(b)a copy of any document kept in the Registry or an extract from any such document; or

(c)any specification of a patent or any application for a patent which has been published,

which purports to be a certified copy or a certified extract shall be admitted in evidence without further proof and without production of the original.

(4)In this section, "certified copy" and "certified extract" mean a copy and an extract certified by the Registrar and sealed with the seal of the Registry.

46.-(1)Where a patent is granted to 2 or more persons, each of them shall, subject to any agreement to the contrary, be entitled to an equal undivided share in the patent.

(2)Where 2 or more persons are proprietors of a patent, then, subject to this section and subject to any agreement to the contrary－

(a)each of them shall be entitled, by himself or his agents, to do in respect of the invention, for his own benefit and without the consent of or the need to account to the other or others, any act which would, apart from this subsection and section 61, amount to an infringement of the patent; and

(b)any such act shall not amount to an infringement of the patent.

(3)Subject to sections 20 and 47 and to any agreement for the time being in force, where 2 or more persons are proprietors of a patent, one of them shall not without the consent of the other or others grant a licence under the patent or assign or mortgage a share in the patent.

(4)Subject to sections 20 and 47 where two or more persons are proprietors of a patent, anyone else may supply one of those persons with the means, relating to an essential element of the invention, for putting the invention into effect, and the supply of those means by virtue of this subsection shall not amount to an infringement of the patent.

(5)Where a patented product is disposed of by any of two or more proprietors to any person, that person and any other person claiming through him shall be entitled to deal with the product in the same way as if it had been disposed of by a sole registered proprietor.

(6)Nothing in subsection (1) or (2) shall affect the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as such.

(7)This section shall have effect in relation to an application for a patent which is filed as it has effect in relation to a patent and－

(a)references to a patent and a patent being granted shall accordingly include references respectively to any such application and to the application being filed; and

(b)the reference in subsection (5) to a patented product shall be construed accordingly.

47.-(1)After a patent has been granted for an invention, any person having or claiming a proprietary interest in or under the patent may refer to the Registrar the question -

(a)who is or are the true proprietor or proprietors of the patent;

(b)whether the patent should have been granted to the person or persons to whom it was granted; or

(c)whether any right in or under the patent should be transferred or granted to any other person or persons,

and the Registrar shall determine the question and make such order as he thinks fit to give effect to the

determination.

(2)Without prejudice to the generality of subsection (1), an order under that subsection may contain provision -

(a)directing that the person by whom the reference is made under that subsection shall be included (whether or not to the exclusion of any other person) among the persons registered as proprietors of the patent;

(b)directing the registration of a transaction, instrument or event by virtue of which that person has acquired any right in or under the patent;

(c)granting any licence or other right in or under the patent; and

(d)directing the proprietor of the patent or any person having any right in or under the patent to do anything specified in the order as necessary to carry out the other provisions of the order.

(3)If any person to whom directions have been given under subsection (2) (d) fails to do anything necessary for carrying out any such directions within 14 days after the date of the order containing the directions, the Registrar may, on an application made to him by any person in whose favour or on whose reference the order containing the directions was made, authorise him to do that thing on behalf of the person to whom the directions were given.

(4)Where the Registrar finds on a reference under this section that the patent was granted to a person not entitled to be granted that patent (whether alone or with other persons) and on an application made under section 80 makes an order on that ground for the conditional or unconditional revocation of the patent, the Registrar may order that the person by whom the application was made or his successor in title may, subject to section 84, make a new application for a patent -

(a)in the case of unconditional revocation, for the whole of the matter comprised in the specification of that patent; and

(b)in the case of conditional revocation, for the matter which in the opinion of the Registrar should be excluded from that specification by amendment under section 83, and where such a new application is made, it shall be treated as having been filed on the date of filing the application for the patent to which the reference relates.

(5)On any reference under subsection (1), no order shall be made under this section transferring the patent to which the reference relates on the ground that the patent was granted to a person not so entitled, and no order shall be made under subsection (4) on that ground if the reference was made after the end of the period of 2 years beginning with the date of the grant, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or, as the case may be, of the ransfer of the patent to him that he was not entitled to the patent.

(6)An order under this section shall not be so made as to affect the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as such.

(7)Where a question is referred to the Registrar under this section, an order shall not be made by virtue of subsection (2) or under subsection (4) on the reference unless notice of the reference is given to all persons registered as proprietor of the patent or as having a right in or under the patent, except those who are parties to the reference.

(8)If it appears to the Registrar on a reference under this section that the question referred to him would more properly be determined by the court, he may decline to deal with it and, without prejudice to the court's jurisdiction to determine any such question and make a declaration, the court shall have jurisdiction to do so.

(9)The court shall not in the exercise of any such declaratory jurisdiction determine a question whether a patent was granted to a person not entitled to be granted the patent if the proceedings in which the jurisdiction is invoked were commenced after the end of the period of 2 years beginning with the date of the grant of the patent, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or, as the case may be, of the transfer of the patent to him that he was not entitled to the patent.

48.-(1)Where an order is made under section 47 that a patent shall be transferred from any person or persons (the old proprietor or proprietors) to one or more persons (whether or not including an old proprietor) then, except in a case falling within subsection (2), any licences or other rights granted or created by the old proprietor or proprietors shall, subject to section 43 and to the provisions of the order, continue in force and be treated as granted by the person or persons to whom the patent is ordered to be transferred (the new proprietor or proprietors).

(2)Where an order is so made that a patent shall be transferred from the old proprietor or proprietors to one or more persons none of whom was an old proprietor (on the ground that the patent was granted to a person not entitled to be granted the patent), any licences or other rights in or under the patent shall, subject to the provisions of the order and subsection (3), lapse on the registration of that person or those persons as the new proprietor or proprietors of the patent.

(3)Where an order is so made that a patent shall be transferred as mentioned in subsection (2) or that a person other than an old proprietor may make a new application for a patent and before the reference of the question under that section resulting in the making of any such order is registered, the old proprietor or proprietors or a licensee of the patent, acting in good faith, worked the invention in question in Singapore or made effective and serious preparations to do so, the old proprietor or proprietors or the licensee shall, on making a request to the new proprietor or proprietors within the prescribed period, be entitled to be granted a licence (but not an exclusive licence) to continue working or, as the case may be, to work the invention, so far as it is the subject of the new application.

(4)Any such licence shall be granted for a reasonable period and on reasonable terms.

(5)The new proprietor or proprietors of the patent or any person claiming that he is entitled to be granted any such licence may refer to the Registrar the question whether that person is so entitled and whether any such period is or terms are reasonable, and the Registrar shall determine the question and may, if he considers it appropriate, order the grant of such a licence.

PART IX

EMPLOYEES' INVENTIONS

49.-(1)Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, be taken to belong to his employer for the purposes of this Act and all other purposes if -

(a)the invention was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or

(b)the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer's undertaking.

(2)Any other invention made by an employee shall, as between him and his employer, be taken for those purposes to belong to the employee.

(3)Where by virtue of this section an invention belongs, as between him and his employer, to an employee, nothing done -

(a)by or on behalf of the employee or any person claiming under him for the purposes of pursuing an application for a patent; or

(b)by any person for the purpose of performing or working the invention,

shall be taken to infringe any copyright or design right to which, as between him and his employer, his employer is entitled in any model or document relating to the invention.

(4)In subsection (3), the reference to application for a patent includes an application for other protection for an invention, and includes an application for a patent or any other protection under the law of a country other than Singapore or under any treaty to which Singapore is a party.

50.-(1)This Part shall not apply to an invention made before 23rd February 1995.

(2)This Part shall not apply to an invention made by an employee unless at the time he made the invention one of the following conditions was satisfied in his case:

(a)he was mainly employed in Singapore; or

(b)he was not mainly employed anywhere or his place of employment could not be determined, but his employer had a place of business in Singapore to which the employee was attached, whether or not he was also attached elsewhere.

(3)In this Part, except so far as the context otherwise requires, references to the making of an invention by an employee are references to his making it alone or jointly with any other person, but do not include references to his merely contributing advice or other assistance in the making of an invention by another employee.

(4)Any references in section 49 to a patent and to a patent being granted are respectively references to a patent or other protection and to its being granted whether under the law of Singapore or the law in force in any other country or under any treaty or international convention.

(5)Nothing in this Part shall be construed as precluding the operation of an agreement or a contract in relation to the right to an invention.

PART X

CONTRACTS AS TO PATENTED PRODUCTS

51.-(1)Subject to this section, any condition or term of a contract for the supply of a patented product or of a licence to work a patented invention, or of a contract relating to any such supply or licence, shall be void in so far it purports -

(a)in the case of a contract for supply, to require the

person supplied to acquire from the supplier, or his nominee, or prohibit him from acquiring from any specified person, or from acquiring except from the supplier or his nominee, anything other than the patented product;

(b)in the case of a licence to work a patented invention, to require the licensee to acquire from the licensor or his nominee, or prohibit him from acquiring from any specified person, or from acquiring except from the licensor or his nominee, anything other than the product which is the patented invention or (if it is a process) other than any product obtained directly by means of the process or to which the process has been applied;

(c)in either case, to prohibit the person supplied or the licensee from using articles (whether patented products or not) which are not supplied by, or any patented process which does not belong to, the supplier or licensor, or his nominee, or to restrict the right of the person supplied or the licensee to use any such articles or process.

(2)In proceedings against any person for infringement of a patent, it shall be a defence to prove that at the time of the infringement there was in force a contract relating to the patent made by or with the consent of the plaintiff or a licence under the patent granted by him or with his consent and containing in either case a condition or term void by virtue of this section.

(3)A condition or term of a contract or licence shall not be void by virtue of this section if -

(a)at the time of the making of the contract or granting of the licence, the supplier or licensor was willing to supply the product, or grant a licence to work the invention, as the case may be, to the person supplied or the licensee, on reasonable terms specified in the contract or licence and without any such condition or term as is mentioned in subsection (1); and

(b)the person supplied or the licensee is entitled under the contract or licence to relieve himself of his liability to observe the condition or term on giving to the other party 3 months' notice in writing, and subject to payment to that other party of such compensation (being, in the case of a contract to supply, a lump sum or rent for the residue of the term of the contract and, in the case of a licence, a royalty for the residue of the term of the licence) as may be determined by an arbitrator appointed by the Minister.

(4)If in any proceedings it is alleged that any condition or term of a contract or licence is void by virtue of this section, it shall lie on the supplier or licensor to prove the matters set out in subsection (3) (a).

(5)A condition or term of a contract or licence shall not be void by virtue of this section by reason only that it prohibits any person from selling goods other than those supplied by a specific person or, in the case of a contract for the hiring of or licence to use a patented product, that it reserves to the bailor or licensor, or his nominee, the right to supply such new parts of the patented product as may be required to put or keep it in repair.

52.-(1)Any contract for the supply of a patented product or licence to work a patented invention, or contract relating to any such supply or licence, may at any time after the patent or all the patents by which the product or invention was protected at the time of the making of the contract or granting of the licence has or have ceased to be in force, and notwithstanding anything to the contrary in the contract or licence or in any other contract, be determined, to the extent (and only to the extent) that the contract or licence relates to the product or invention, by either party on giving 3 months' notice in writing to the other party.

(2)In subsection (1), "patented product" and "patented invention" include respectively a product and an invention which is the subject of an application for a patent, and that subsection shall apply in relation to a patent by which any such product or invention was protected and which was granted after the time of the making of the contract or granting of the licence, on an application which had been filed before that time, as it applies to a patent in force at that time.

(3)If, on an application under this section made by either party to a contract or licence falling within subsection (1), the court is satisfied that, in consequence of the patent or patents ceasing to be in force, it would be unjust to require the applicant to continue to comply with all the terms and conditions of the contract or licence, the court may make such order varying those terms or conditions as, having regard to all the circumstances of the case, it thinks just as between the parties.

(4)Without prejudice to any other right of recovery, nothing in subsection (1) shall be taken to entitle any person to recover property let under a hire-purchase agreement within the meaning of the Hire-Purchase Act.

(5)This section shall apply to contracts and licences whether made before or after 23rd February 1995.

(6)This section shall be without prejudice to any rule of law relating to the frustration of contracts and any right of determining a contract or licence exercisable apart from this section.

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 2 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 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.

PART XII

USE OF PATENTED INVENTIONS FOR

SERVICES OF GOVERNMENT

61.-(1)Notwithstanding anything in this Act, any Government department and any person authorised in writing by a Government department may, for the services of the Government and in accordance with this section, do any of the following acts in Singapore in relation to a patented invention without the consent of the proprietor of the patent:

(a)where the invention is a product, may-

( i )make, use, import, obtain or keep the product, or sell or offer to sell it where to do so would be incidental or ancillary to making, using, importing, obtaining or keeping it; or

( ii )in any event; sell or offer to sell it for foreign defence purposes or for the production or supply of any drug and medicine, or dispose or offer to dispose of it for any purpose whatever;

(b)where the invention is a process, may use it or, in relation to any product obtained directly by means of the process, do anything mentioned in paragraph (a);

(c)without prejudice to paragraphs (a) and (b), where the invention or any product obtained directly by means of the invention is a drug or medicine, may sell or offer to sell the drug or medicine;

(d)may supply or offer to supply to any person any of the means, relating to an essential element of the invention, for putting the invention into effect;

(e)may dispose or offer to dispose of anything which was made, used, imported, obtained or kept in the exercise of the powers conferred by this section and which is no longer required for the purpose for which it was made, used, imported, obtained or kept, as the case may be,

and anything done by virtue of this subsection shall notamount to an infringement of the patent.

(2)Any act done in relation to an invention by virtue of this section is in this section referred to as use of the invention; and "use",in relation to an invention, in sections 62 to 64 shall be construed accordingly.

(3)So far as the invention has before its priority date been duly recorded by or tried by or on behalf of a Government department otherwise than in consequence of a relevant communication made in confidence, any use of the invention by virtue of this section may be made free of any royalty or other payment to the proprietor.

(4)So far as the invention has not been so recorded or tried, any use of it made by virtue of this section at any time either－

(a)after the publication of the application for the patent for the invention; or

(b)without prejudice to paragraph (a), in consequence of a relevant communication made after the priority date of the invention otherwise than in confidence,

shall be made on such terms as may be agreed either before or after the use by the Government department and the proprietor of the patent or as may in default of agreement be referred to an arbitrator agreed on by the parties or, in default of agreement, appointed by the Registrar.

(5)The arbitrator to whom any reference is made under subsection (4) shall report his findings to the Registrar.

(6)The expenses of and incidental to an arbitrator under subsection (4) shall, in default of agreement between the parties, be borne equally by the parties to the reference.

(7)Where an invention is used by virtue of this section at any time after publication of an application for a patent for the invention but before such a patent is granted, and the terms for its use agreed or determined as mentioned in subsection (4) include terms as to payment for the use, then (notwithstanding anything in those terms) any such payment shall be recoverable only－

(a)after such a patent is granted; and

(b)if, apart from this section, the use would, if the patent had been granted on the date of the publication of the application, have infringed not only the patent but also the claims (as interpreted by the description or claims) in the form in which they were contained in the application immediately before the preparations for its publication were completed by the Registry.

(8)The authority of a Government department in respect of an invention may be given under this section either before or after the patent is granted and either before or after the use in respect of which the authority is given is made, and may be given to any person whether or not he is authorised, directly or indirectly, by the proprietor of the patent to do anything in relation to the invention.

(9)Where any use of an invention is made by or with the authority of a Government department under this section, then, unless it appears to the department that it would be contrary to the public interest to do so, the department shall notify the proprietor of the patent as soon as practicable after the second of the following events, that is to say, the use is begun and the patent is granted, and furnish him with such information as to the extent of the use as he may from time to time require.

(10)A person acquiring anything disposed of in the exercise of the powers conferred by this section, and any person claiming through him, may deal with it in the same manner as if the patent were held on behalf of the Government.

(11)In determining under this section any dispute between a Government department and any person as to the terms for the use of an invention for the services of the Government, the arbitrator shall have regard -

(a)to any benefit or compensation which that person or any person from whom he derives title may have received or may be entitled to receive, directly or indirectly, from any Government department in respect of the invention; and

(b)to whether that person or any person from whom he derives title has in the arbitrator's opinion without reasonable cause failed to comply with a request of the department to use the invention for the services of the Government on reasonable terms.

(12)On a reference under this section, the arbitrator may refuse to grant relief by way of compensation in respect of the use of an invention for the services of the Government during any further period specified under section 36 (3), but before the payment of the renewal fee and any additional fee prescribed for the purposes of that section.

(13)Where an amendment of the specification of a this Act, the arbitrator shall not grant relief by way of compensation under this section in respect of any such use before the decision to allow the amendment unless the Registrar is satisfied that the specification of the patent as published was framed in good faith and with reasonable skill and knowledge.

(14)In considering the amount of any compensation for the use of an invention for the services of the Government after publication of an application for a patent for the invention and before such a patent is granted, the arbitrator shall consider whether or not it would have been reasonable to expect, from a consideration of the application as published under section 27, that a patent would be granted conferring on the proprietor of the patent protection for an act of the same description as that found to constitute that use, and if the arbitrator finds that it would not have been reasonable, he shall reduce the compensation to such amount as he thinks just.

(15)Where, by virtue of a transaction, instrument or event to which section 43 applies, a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent (the new proprietor or licensee) and a Government department or a person authorised by a Government department subsequently makes use of the patented invention under this section, the new proprietor or licensee shall not be entitled to any compensation under subsection (4) (as it stands or as modified by section 63 (3)) in respect of a subsequent use of the invention before the transaction, instrument or event is registered unless－

(a)the transaction, instrument or event is registered within the period of 6 months beginning with its date; or

(b)the Registrar is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter.

(16)In this section, "relevant communication", relation to an invention, means a communication of invention, directly or indirectly, by the proprietor of patent or any person from whom he derives title.

(17)Subsection (4) is without prejudice to any rule of law relating to the confidentiality of information.

62.-(1)Any reference in section 61 to a patented invention, in relation to any time, is a reference to an invention for which a patent has before that time been, or is subsequently, granted.

(2)In this Part, unless the context otherwise requires, "the services of the Government" includes－

(a)the supply of anything for foreign defence purposes;

(b)the production or supply of drugs and medicines required for the provision of pharmaceutical, medical or dental services in any prescribed dispensary, hospital or other medical institution maintained by or on behalf of the Government and in any dispensary, hospital or medical institution which the Minister may specify by notification in the Gazette; and

(c)such purposes relating to the production or use of atomic energy or research into matters connected therewith as the Minister thinks necessary or expedient,

and "use for the services of the Government" shall be construed accordingly.

(3)In subsection (2) (a) and section 61 (1) (a), references to a sale or supply of anything for foreign defence purposes are references to a sale or supply of the thing -

(a)to the government of any country outside Singapore in pursuance of an agreement or arrangement between the Government and the government of that country, where the thing is required for the defence of that country or of any other country whose government is party to any agreement or arrangement with the Government in respect of defence matters; or

(b)to the United Nations, or to the government of any country belonging to that organisation, in pursuance of an agreement or arrangement between the Government and that organisation or government, where the thing is required for any armed forces operating in pursuance of a resolution of that organisation or any organ of that organisation.

63.-(1)In relation to -

(a)any use made for the services of the Government of an invention by a Government department, or a person authorised by a Government department, by virtue of section 61; or

(b)anything done for the services of the Government to the order of a Government department by the proprietor of a patent in respect of a patented invention or by the proprietor of an application in respect of an invention for which an application for a patent has been filed and is still pending,

the provisions of any licence, assignment or agreement to which this subsection applies shall be of no effect so far as those provisions restrict or regulate the working of the invention, or the use of any model, document or information relating to it, or provide for the making of payments in respect of, or calculated by reference to, such working or use; and the reproduction or publication of any model or document in connection with the said working or use shall not be deemed to be an infringement of any copyright or design right subsisting in the model or document.

(2)Subsection (1) shall apply to any licence, assignment or agreement which is made, whether before or after 23rd February 1995, between (on the one hand) any person who is a proprietor of or an applicant for the patent, or anyone who derives title from any such person or from whom such person derives title, and (on the other hand) any person other than a Government department.

(3)Where an exclusive licence granted otherwise than for royalties or other benefits determined by reference to the working of the invention is in force under the patent or application, then－

(a)in relation to anything done in respect of the invention which, but for this section and section 61, would constitute an infringement of the rights of the licensee, section 61(4) shall have effect as if for the reference to the proprietor of the patent there were substituted a reference to the licensee; and

(b)in relation to anythmg done in respect of the invention by the licensee by virtue of an authority given under section 61, that section shall have effect as if section 61(4) were omitted.

(4)Subject to subsection (3), where a patent, or the right to the grant of a patent, has been assigned to the proprietor of the patent or application in consideration of royalties or other benefits determined by reference to the working of the invention, then－

(a)in relation to any use of the invention by virtue of section 61, subsection (4) of that section shall have effect as if the reference to the proprietor of the patent included a reference to the assignor, and any sum payable by virtue of that subsection shall be divided between the proprietor of the patent or application and the assignor in such proportion as may be agreed on by them or as may in default of agreement be determined by the court on a reference under section 64; and

(b)in relation to any act done in respect of the invention for the services of the Government by the proprietor of the patent or application to the order of a Government department, section 61 (4) shall have effect as if the act were use made by virtue of an authority given under that section.

(5)Where section 61 (4) applies to any use of an invention and a person holds an exclusive licence under the patent or application (other than such a licence as is mentioned in subsection (3)) authorising him to work the invention, then subsections (7) and (8) shall apply.

(6)In subsections (7) and (8), "the section 61 (4) payment" means such payment, if any, as the proprietor of the patent or application and the Government department agree under section 61, or the arbitrator determines under that section, should be made by the department to the proprietor in respect of the use of the invention.

(7)The licensee shall be entitled to recover from the proprietor of the patent or application such part, if any, of the section 61 (4) payment as may be agreed on by them or as may, in default of agreement, be determined by the court under section 64 to be just having regard to any expenditure incurred by the licensee－

(a)in developing the invention; or

(b)in making payments to the proprietor in consideration of the licence, other than royalties or other payments determined by reference to the use of the invention.

(8)Any agreement by the proprietor of the patent or application and the Government department under section 61 (4) as to the amount of the section 61(4) payment shall be of no effect unless the licensee consents to the agreement; and any determination by the arbitrator under section 61 (4) as to the amount of that payment shall be of no effect unless the licensee has been informed of the reference to the arbitrator and is given an opportunity to be heard.

(9)Where any model, document or information relating to an invention is used in connection with any use of the invention which falls within subsection (1) (a), or with anything done in respect of the invention which falls within subsection (1) (b), section 61 (4) shall (whether or not it applies to any such use of the invention) apply to the use of the model, document or information as if for the reference in it to the proprietor of the patent there were substituted a reference to the person entitled to the benefit of any provision of an agreement which is rendered inoperative by this section in relation to that use; and in section 61 the references to terms for the use of an invention shall be construed accordingly.

(10)Nothing in this section shall be construed as authorising the disclosure to a Government department or any other person of any model, document or information to the use of which this section applies in contravention of any such licence, assignment or agreement as is mentioned in this section.

64.-(1)Any dispute as to -

(a)the exercise by a Government department or a person authorised by a Government department of the powers conferred by section 61; or

(b)the right of any person to receive any part of a payment made or agreed to be made in pursuance of subsection (4) of section 61 or determined by the arbitrator in pursuance of that subsection,

may be referred to the court by either party to the dispute after a patent has been granted for the invention.

(2)If in such proceedings any question arises whether an invention has been recorded or tried as mentioned in section 61, and the disclosure of any document recording the invention, or of any evidence of the trial thereof, would in the opinion of the Government department be prejudicial to the public interest, the disclosure may be made confidentially to counsel for the other party or to an independent expert mutually agreed upon.

(3)If the validity of a patent is put in issue in proceedings under this section and it is found that the patent is only partially valid, the court may, subject to subsection (4), grant relief to the proprietor of the patent in respect of that part of the patent which is found to be valid and to have been used for the services of the Government.

(4)Where in any such proceedings it is found that a patent is only partially valid, the court shall not grant relief by way of costs or expenses except where the proprietor of the patent proves that the specification of the patent was framed in good faith and with reasonable skill and knowledge, and in that event the court may grant relief in respect of that part of the patent which is valid and has been so used, subject to the discretion of the court as to costs and expenses.

(5)As a condition of any such relief, the court may direct that the specification of the patent shall be amended to its satisfaction upon an application made for that purpose under section 83, and an application may be so made accordingly, whether or not all other issues in the proceedings have been determined.

(6)In any proceedings under this section, the court may at any time order the whole proceedings or any question or issue of fact arising in them to be referred, on such terms as the court may direct, to an arbitrator; and references to the court in this section shall be construed accordingly.

(7)One of the two or more joint proprietors of a patent or an application for a patent may, without the concurrence of the others, refer a dispute to the court under this section, but shall not do so unless the others are made parties to the proceedings; but any of the others if made a defendant shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings.

65.-(1)During any period of emergency within the meaning of this section, the powers exercisable in relation to an invention by a Government department or a person authorised by a Government department under section 61 shall include power to use the invention for any purpose which appears to the department necessary or expedient－

(a)for the efficient prosecution of any war in which Singapore may be engaged;

(b)for the maintenance of supplies and services essential to the life of the community;

(c)for securing a sufficiency of supplies and services essential to the well-being of the community;

(d)for promoting the productivity of industry, commerce and agriculture;

(e)for fostering and directing exports and reducing imports, or imports of any class, from all or any countries and for redressing the balance of trade;

(f)generally for ensuring that the whole resources of the community are available for use, and are used, in a manner best calculated to serve the interests of the community; or

(g)fdr assisting the relief of suffering and the restoration and distribution of essential supplies and services in any country or territory outside Singapore which is in grave distress as a result of war,

and any reference in this Act to the services of the Government shall, as respects any period of emergency, include a reference to those purposes.

(2)In this section, the use of an invention includes, in addition to any act constituting such use by virtue of section 61, any act which would, apart from that section and this section, amount to an infringement of the patent or, as the case may be, give rise to a right under section 76 to bring proceedings in respect of the application, and any reference in this Act to "use for the services of the Government" shall, as respects any period of emergency, be construed accordingly.

(3)In this section, "period of emergency" means any period beginning with such date as may be declared by the Minister by order published in the Gazette to be the commencement, and ending with such date as may be so declared to be the termination, of a period of emergency for the purposes of this section.

PART XIII

INFRINGEMENT OF PATENTS

66.-(1)Subject to the provisions of this Act, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in Singapore in relation to the invention without the consent of the proprietor of the patent:

(a)where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise;

(b)where the invention is a process, he uses the process or he offers it for use in Singapore when he knows, or it is obvious to a reasonable person in the circumstances, that its use without the consent of the proprietor would be an infringement of the patent;

(c)where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.

(2)An act which, apart from this subsection, would constitute an infringement of a patent for an invention shall not do so if -

(a)it is done privately and for purposes which are not commercial;

(b)it is done for experimental purposes relating to the subject-matter of the invention;

(c)it consists of the extemporaneous preparation of a medicine for an individual in accordance with a prescription given by a registered medical or dental practitioner or consists of dealing with a medicine so prepared;

(d)it consists of the use of a product or process in the body or operation of a relevant aircraft, hovercraft or vehicle which has temporarily or accidentally entered or is crossing Singapore (including the air space above it and its territorial waters) or the use of accessories for such a relevant aircraft, hovercraft or vehicle;

(e)it consists of the use, exclusively for the needs of a relevant ship, of a product or process in the body of the ship or in its machinery, tackle, apparatus or other accessories, in a case where the ship has temporarily or accidentally entered the territorial waters of Singapore;

(f)it consists of the use of an exempted aircraft which has lawfully entered or is lawfully crossing Singapore as mentioned in paragraph (d) or of the importation into Singapore, or the use or storage, of any part or accessory for that aircraft; or

(g)it consists of the import, use, disposal or offer to dispose of, of any patented product, or of any product obtained by means of a patented process or to which a patented process has been applied, which is produced by or with the consent (conditional or otherwise) of the proprietor of the patent or any person licensed by him, and for this purpose "patent" includes a patent granted in any country outside Singapore in respect of the same or substantially the same invention as that for which a patent is granted under this Act and "patented product", "patented process" and "licensed" shall be construed accordingly.

(3)In this section, "relevant ship" and "relevant aircraft, hovercraft or vehicle" mean respectively a ship and an aircraft, hovercraft or vehicle registered in, or belonging to, any country other than Singapore which is a party to the Paris Convention; and "exempted aircraft" means an aircraft to which section 5 of the Air Navigation Act applies.

67.-(1)Subject to this Part, civil proceedings may be brought in the court by the proprietor of a patent in respect of any act alleged to infringe the patent and (without prejudice to any other jurisdiction of the court) in those proceedings a claim may be made-

(a)for an injunction restraining the defendant from any apprehended act of infringement;

(b)for an order for him to deliver up or destroy any patented product in relation to which the patent is infringed or any article in which that product is inextricably comprised;

(c)for damages in respect of the infringement;

(d)for an account of the profits derived by him from the infringement; and

(e)for a declaration that the patent is valid and has been infringed by him.

(2)The court shall not, in respect of the same infringement, both award the proprietor of a patent damages and order that he shall be given an account of the profits.

(3)The proprietor of a patent and any other person may by agreement with each other refer to the Registrar the question whether that other person has infringed the patent and on the reference, the proprietor of the patent may make any claim mentioned in subsection (1) (c) or (e).

(4)In this Act, unless the context otherwise requires－

(a)any reference to proceedings for infringement and the bringing of such proceedings includes a reference to a reference under subsection (3) and the making of such a reference;

(b)any reference to a plaintiff includes a reference to the proprietor of the patent; and

(c)any reference to a defendant includes a reference to any other party to the reference.

(5)If it appears to the Registrar on a reference under subsection (3) that the question referred to him would more properly be determined by the court, he may decline to deal with it and the court shall have jurisdiction to determine the question as if the reference were proceedings brought in the court.

(6)Subject to this Part, in determining whether or not to grant any kind of relief claimed under this section and the extent of the relief granted, the court or the Registrar shall apply the principles applied by the court in relation to that kind of relief immediately before 23rd February 1995.

68.-(1)In any proceedings for the infringement of a patent, where the subject-matter of the patent is a process for obtaining a new product, the burden of proving that a product is not made by the process shall be on the alleged infringer if the product is new or a substantial likelihood exists that the product is made by the process and the proprietor of the patent has been unable through reasonable efforts to determine the process actually used.

(2)In considering whether a party has discharged the burden imposed upon him by this section, the court shall not require him to disclose any manufacturing or commercial secrets if it appears to the court that it would be unreasonable to do so.

69.-(1)In proceedings for infringement of a patent, damages shall not be awarded and no order shall be made for an account of profits against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that the patent existed; and a person shall not be taken to have been so aware or to have had reasonable grounds for so supposing by reason only of the application to a product of the word "patent" or "patented", or any word or words expressing or implying that a patent has been obtained for the product, unless the number of the patent accompanied the word or words.

(2)In proceedings for infringement of a patent, the court or the Registrar may, if it or he thinks fit, refuse to award any damages or make any such order in respect of an infringement committed during any further period specified under subsection (3) of section 36, but before the payment of the renewal fee and any additional fee prescribed for the purposes of that subsection.

(3)Where an amendment of the specification of a patent has been allowed under any of the provisions of this Act, no damages shall be awarded in proceedings for an infringement of the patent committed before the decision to allow the amendment unless the court or the Registrar is satisfied that the specification of the patent as published was framed in good faith and with reasonable skill and knowledge.

70.-(1)If the validity of a patent is put in issue in proceedings for infringement of the patent and it is found that the patent is only partially valid, the court or the Registrar may, subject to subsection (2), grant relief in respect of that part of the patent which is found to be valid and infringed.

(2)Where in any such proceedings it is found that a patent is only partially valid, the court or the Registrar shall not grant relief by way of damages, costs or expenses, except where the plaintiff proves that the specification for the patent was framed in good faith and with reasonable skill and knowledge, and in that event the court or the Registrar may grant relief in respect of that part of the patent which is valid and infringed, subject to the discretion of the court or the Registrar as to costs or expenses and as to the date from which damages should be reckoned.

(3)As a condition of relief under this section, the court or the Registrar may direct that the specification of the patent shall be amended to its or his satisfaction upon an application made for that purpose under section 83, and an application may be so made accordingly, whether or not all other issues in the proceedings have been determined.

71.-(1)Where a patent is granted for an invention, a person who in Singapore before the priority date of the invention－

(a)does in good faith an act which would constitute an infringement of the patent if it were in force; or

(b)makes in good faith effective and serious preparations to do such an act,

has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the grant of the patent; but this right does not extend to granting a licence to another person to do the act.

(2)If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (1) may -

(a)authorise the doing of that act by any partners of his for the time being in that business; and

(b)assign that right, or transmit it on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or the preparations were made.

(3)Where a product is disposed of to another in exercise of the rights conferred by subsection (1) or (2), that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by the registered proprietor of the patent.

72.-(1)If in any proceedings before the court or the Registrar the validity of a patent to any extent is contested and that patent is found by the court or the Registrar to be wholly or partially valid, the court or the Registrar may certify the finding and the fact that the validity of the patent was so contested.

(2)Where a certificate is granted under this section, then, if in any subsequent proceedings before the court or the Registrar for infringement of the patent or for revocation of the patent, a final order or judgment is made or given in favour of the party relying on the validity of the patent as found in the earlier proceedings, that party shall, unless the court or the Registrar otherwise directs, be entitled to his costs or expenses as between solicitor and own client other than the costs or expenses of any appeal in the subsequent proceedings.

73.-(1)In the application of section 66 to a patent of which there are two or more joint proprietors, the reference to the proprietor shall be construed -

(a)in relation to any act, as a reference to that proprietor or those proprietors who, by virtue of section 46 or any agreement referred to in that section, is or are entitled to do that act without its amounting to an infringement; and

(b)in relation to any consent, as a reference to that proprietor or those proprietors who, by virtue of section 46 or any such agreement, is or are the proper person or persons to give the requisite consent.

(2)One of two or more joint proprietors of a patent may without the concurrence of the others bring proceedings in respect of an act alleged to infringe the patent, but shall not do so unless the others are made parties to the proceedings; but any of the others if made a defendant shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings.

74.-(1)Subject to this section, the holder of an exclusive licence under a patent shall have the same right as the proprietor of the patent to bring proceedings in respect of any infringement of the patent committed after the date of the licence; and references to the proprietor of the patent in this Act relating to infringement shall be construed accordingly.

(2)In awarding damages or granting any other relief in any such proceedings, the court or the Registrar shall take into consideration any loss suffered or likely to be suffered by the exclusive licensee as such as a result of the infringement, or, as the case may be, the profits derived from the infringement, so far as it constitutes an infringement of the rights of the exclusive licensee as such.

(3)In any proceedings taken by an exclusive licensee by virtue of this section, the proprietor of the patent shall be made a party to the proceedings, but if made a defendant shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings.

75.Where by virtue of a transaction, instrument or event ration to which section 43 applies a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent and the patent is subsequently infringed, the court or the cdings. Registrar shall not award him damages or order that he be given an account of the profits in respect of such a subsequent infringement occurring before the transaction, instrument or event is registered unless -

(a)the transaction, instrument or event is registered within the period of 6 months beginning with its date; or

(b)the court or the Registrar is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter.

76.-(1)Where an application for a patent for an invention is published, then, subject to this section, the applicant shall have, as from the publication and until the grant of the patent, the same right as he would have had, if the patent had been granted on the date of the publication of the application, to bring proceedings in the court or before the Registrar for damages in respect of any act which would have infringed the patent; and references in sections 66 to 69 and 73 to 75 to a patent and the proprietor of a patent shall be respectively construed as including references to any such application and the applicant, and references to a patent being in force, being granted, being valid or existing shall be construed accordingly.

(2)The applicant shall be entitled to bring proceedings by virtue of this section in respect of any act only -

(a)after the patent has been granted; and

(b)if the act would, if the patent had been granted on the date of the publication of the application, have infringed not only the patent, but also the claims (as interpreted by the description and any drawings referred to in the description or claims) in the form in which they were contained in the application immediately before the preparations for its publication were completed by the Registry.

(3)Section 69 (2) and (3) shall not apply to an infringement of the rights conferred by this section but in considering the amount of any damages for such an infringement, the court or the Registrar shall consider whether or not it would have been reasonable to expect, from a consideration of the application as published under section 27, that a patent would be granted conferring on the proprietor of the patent protection from an act of the same description as that found to infringe those rights, and if the court or the Registrar finds that it would not have been reasonable, it or he shall reduce the damages to such an amount as it or he thinks just.

77.-(1)Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4), bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3).

(2)In any such proceedings, the plaintiff shall, if he proves that the threats were so made and satisfies the court that he is a person aggrieved by them, be entitled to the relief claimed unless－

(a)the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent; and

(b)the patent alleged to be infringed is not shown by the plaintiff to be invalid in a relevant respect.

(3)The said relief is－

(a)a declaration to the effect that the threats are unjustifiable;

(b)an injunction against the continuance of the threats; and

(c)damages in respect of any loss which the plaintiff has sustained by the threats.

(4)Proceedings may not be brought under this section for a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process.

(5)It is hereby declared that a mere notification of the existence of a patent does not constitute a threat of proceedings within the meaning of this section.

(6)Nothing in this section shall render an advocate and solicitor or any other person liable to an action under this section in respect of an act done by the advocate and solicitor or the other person in his professional capacity on behalf of a client.

78.-(1)Without prejudice to the jurisdiction of the court to make a declaration apart from this section, a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent may be made by the court or the Registrar in proceedings between the person doing or proposing to do the act and the proprietor of the patent, notwithstanding that no assertion to the contrary has been made by the proprietor, if it is shown－

(a)that that person has applied in writing to the proprietor for a written acknowledgment to the effect of the declaration claimed, and has furnished him with full particulars in writing of the act in question; and

(b)that the proprietor has refused or failed to give any such acknowledgment.

(2)A declaration made by the Registrar under this section shall have the same effect as a declaration made by the court.

PART XIV

REVOCATION OF PATENTS AND VALIDITY PROCEEDINGS

79.-(1)The Registrar may, on the application of any interested person and on the payment of the prescribed fee, request the proprietor of a patent to furnish to the Registrar, within such period as the Registrar may specify, the prescribed information on all corresponding international applications or corresponding applications for a patent made by him or his predecessor in title at any prescribed patent office with respect to which details had been furnished to the Registrar under section 29 (1) (c).

(2)Where the proprietor of a patent has furnished the prescribed information under subsection (1) or where such information is available at the Registry, the Registrar shall as soon as practicable send to the interested person the prescribed information so furnished or available.

(3)Where the proprietor of a patent fails without good cause to comply with the request of the Registrar under subsection (1), the Registrar may by order revoke the patent with effect from the date of the grant of the patent.

(4)For the purpose of this section, "corresponding international application" and "corresponding application" have the same meanings as in section 29 (9).

80.-(1)Subject to the provisions of this Act, the Registrar may, on the application of any person, by order revoke a patent for an invention on (but only on) any of the following grounds:

(a)the invention is not a patentable invention;

(b)the patent was granted to a person who was not entitled to be granted that patent;

(c)the specification of the patent does not disclose the invention clearly and completely for it to be performed by a person skilled in the art;

(d)the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, or, if the patent was granted on a new application filed under section 20 (3), 47 (4) or 116 (6), or as mentioned in section 26 (6), in the earlier application made under this Act or in the application made under the United Kingdom Patents Act 1977 or the application under the European Patent Convention designating the United Kingdom filed at the European Patent Office from which the filing date and the right of priority has been derived, as the case may be, as filed;

(e)the protection conferred by the patent has been extended by an amendment which should not have been allowed;

(f)the applicant for the patent has failed to inform the Registrar about any corresponding international application or corresponding application filed by him as required under section 29 (1) (c) or has furnished any information which in any material particular was false; or

(g)the patent was obtained on a misrepresentation.

(2)On the application of any person for an order to revoke a patent on any of the grounds specified in subsection (1) (a), (c), (d) and (e), the Registrar may, subject to subsections (3) and (4), cause the patent to be re-examined by an Examiner so as to determine whether the patent should be revoked on any of those grounds and require the applicant to pay the prescribed re-examination fee.

(3)The Registrar shall not cause a patent to be re-examined under subsection (2) where, within the prescribed period, the applicant for the revocation of the patent fails to give such security for the costs or expenses of the proceedings as the Registrar may specify; in which case, the application for revocation shall be treated as having been abandoned.

(4)An application for the revocation of a patent on the ground mentioned in subsection (1) (b) -

(a)may only be made by a person found by the court in an action for a declaration or found by the court or the Registrar on a reference under section 47, to be entitled to be granted that patent or to be granted a patent for part of the matter comprised in the specification of the patent sought to be revoked; and

(b)may not be made if that action was commenced or that reference was made after the end of the period of 2 years beginning with the date of the grant of the patent sought to be revoked, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or of the transfer of the patent to him that he was not entitled to the patent.

(5)An order under this section may be -

(a)an order for the unconditional revocation of the patent; or

(b)where one of the grounds mentioned in subsection (1) has been established, but only so as to invalidate the patent to a limited extent, an order that the patent should be revoked unless within a specified time the specification is amended under section 83 to the satisfaction of the Registrar.

(6)A decision of the Registrar or on appeal from the Registrar shall not estop any party to any civil proceedings in which infringement of a patent is in issue from alleging invalidity of the patent on any of the grounds referred to in subsection (1), whether or not any of the issues involved were decided in the decision.

(7)An order under this section revoking a patent shall have effect from the date of the grant of the patent.

(8)Where an applicant for the revocation of a patent discontinues or withdraws his application, he shall pay such costs or expenses of the proceedings as the Registrar may determine.

(9)An application for an order to revoke a patent shall be-

(a)made in the prescribed form and filed at the Registry in the prescribed manner; and

(b)accompanied by the prescribed fee.

(10)Section 93 shall not apply in relation to the decision of the Registrar to cause a patent to be re-examined under this section.

81.If it appears to the Registrar that an invention for which a patent has been granted formed part of the state of the art by virtue only of section 14 (3), he may on his own initiative by order revoke the patent, but shall not do so without giving the proprietor of the patent an opportunity of making any observation and of amending the specification of the patent so as to exclude any matter which formed part of the state of the art as aforesaid without contravening section 84.

82.-(1)Subject to this section, the validity of a patent may be put in issue

(a)by way of defence, in proceedings for infringement of the patent under section 67 or proceedings under section 76 for infringement of rights conferred by the publication of an application;

(b)in proceedings under section 77;

(c)in proceedings in which a declaration in relation to the patent is sought under section 78;

(d)in proceedings before the Registrar under section 80 for the revocation of the patent; or

(e)in proceedings under section 61 or 64.

(2)The validity of a patent may not be put in issue in any other proceedings and, in particular, no proceedings may be instituted (whether under this Act or otherwise) seeking only a declaration as to the validity or invalidity of a patent.

(3)The only grounds on which the validity of a patent may be put in issue (whether in proceedings for revocation under section 80 or otherwise) are the grounds on which the patent may be revoked under that section.

(4)No determination shall be made in any proceedings mentioned in subsection (1) on the validity of a patent which any person puts in issue on the ground mentioned in section 80 (1) (b) unless -

(a)it has been determined in entitlement proceedings commenced by that person or in the proceedings in which the validity of the patent is in issue that the patent should have been granted to him and not some other person; and

(b)except where it has been so determined in entitlement proceedings, the proceedings in which the validity of the patent is in issue are commenced before the end of the period of 2 years beginning with the date of the grant of the patent or it is shown that any person registered as a proprietor of the patent knew at the time of the grant or of the transfer of the patent to him that he was not entitled to the patent.

(5)Where the validity of a patent is put in issue by way of defence or counterclaim, the court or the Registrar shall, if it or he thinks it just to do so, give the defendant an opportunity to comply with the condition in subsection (4) (a).

(6)In subsection (4), "entitlement proceedings", in relation to a patent, means a reference under section 47 (1) on the ground that the patent was granted to a person not entitled to it or proceedings for a declaration that it was so granted.

(7)Where proceedings with respect to a patent are pending in the court under any provision of this Act mentioned in subsection (1), no proceedings may be instituted without the leave of the court before the Registrar with respect to that patent under section 67 (3), 76, 78 or 80.

(8)It is hereby declared that for the purposes of this Act the validity of a patent is not put in issue merely because the Registrar is considering its validity in order to decide whether to revoke it under section 81.

PART XV

AMENDMENTS OF PATENTS AND APPLICATIONS

83.-(1)In any proceedings before the court or the Registrar in which the validity of a patent is put in issue, the court or, as the case may be, the Registrar may, subject to section 84, allow the proprietor of the patent to amend the specification of the patent in such manner, and subject to such terms as to the publication and advertisement of the proposed amendment and as to costs, expenses or otherwise, as the court or Registrar thinks fit.

(2)A person may give notice to the court or the Registrar of his opposition to an amendment proposed by the proprietor of the patent under this section, and if he does so the court or the Registrar shall notify the proprietor and consider the opposition in deciding whether the amendment or any amendment should be allowed.

(3)An amendment of a specification of a patent under this section shall have effect and be deemed always to have had effect from the grant of the patent.

(4)Where an application for an order under this section is made to the court, the applicant shall notify the Registrar, who shall be entitled to appear and be heard and shall appear if so directed by the court.

84.-(1)An application for a patent which-

(a)is made in respect of matter disclosed in an earlier application, or in the specification of a patent which has been granted; and

(b)discloses additional matter, that is, matter extending beyond that disclosed in the earlier application made under this Act or in the application made under the United Kingdom Patents Act 1977 or the application under the European Patent Convention designating the United Kingdom filed at the European Patent Office from which the filing date and right of priority is sought to be derived, as filed, or the application for the patent, as filed,

may be filed under section 20 (3), 47 (4) or 116 (6), or as mentioned in section 26 (6), but shall not be allowed to proceed unless it is amended so as to exclude the additional matter.

(2)No amendment of an application for a patent shall be allowed under section 31 if it results in the application disclosing any matter extending beyond that disclosed in the application as filed.

(3)No amendment of the specification of a patent shall be allowed under section 38 (1), 81 or 83 if it -

(a)results in the specification disclosing any additional matter; or

(b)extends the protection conferred by the patent.

PART XVI

INTERNATIONAL APPLICATIONS FOR PATENTS

85.-(1)An international application for a patent (Singapore) for which a date of filing has been accorded under the Patent Co-operation Treaty shall, subject to sections 86 and 87, be treated for the purposes of this Act as an application for a patent under this Act.

(2)If the application, or the designation of Singapore in it, is withdrawn or (except as mentioned in subsection (3)) deemed to be withdrawn under the Patent Co-operation Treaty, it shall be treated as withdrawn under this Act.

(3)An application shall not be treated as withdrawn under this Act if it, or the designation of Singapore in it, is deemed to be withdrawn under the Patent Co-operation Treaty-

(a)because of an error or omission in an institution having functions under the Treaty; or

(b)because, owing to circumstances outside the applicant's control, a copy of the application was not received by the International Bureau before the end of the time limited for that purpose under the Treaty; or

(c)in such other circumstances as may be prescribed.

(4)If an international application for a patent which designates Singapore is refused a filing date under the Patent Co-operation Treaty and the Registrar determines that the refusal was caused by an error or omission in an institution having functions under that Treaty, he may direct that the application shall be treated as an application under this Act, having such date of filing as he may direct.

(5)The Registry shall act as a receiving Office under Article 2 of the Patent Co-operation Treaty in respect of international applications filed by citizens of Singapore or persons resident in Singapore.

(6)The prescribed transmittal fee, in addition to the fees prescribed by the Patent Co-operation Treaty, shall be paid to the Registry by any person filing an international application under that Treaty.

86.-(1)The provisions of the Patent Co-operation Treaty relating to publication, search, examination and amendment, and not those of this Act, apply to an international application for a patent (Singapore) during the international phase of the application.

(2)The international phase of the application means the period from the filing of the application in accordance with the Patent Co-operation Treaty until the national phase of the application begins.

(3)The national phase of the application begins -

(a)when the prescribed period expires, provided any necessary translation of the application into English has been filed at the Registry and the prescribed fee has been paid by the applicant; or

(b)on the applicant expressly requesting the Registrar to proceed earlier with the national phase of the application, paying the prescribed fee and filing at the Registry -

( i )a copy of the application, if none has yet been sent to the Registry in accordance with the Patent Co-operation Treaty; and

( ii )any necessary translation of the application into English.

(4)For the purpose of subsection (3), "copy of the application" includes a copy published in accordance with the Patent Co-operation Treaty in a language other than that in which it was originally filed.

(5)If the prescribed period expires without the conditions mentioned in subsection (3) (a) being satisfied, the application shall be taken to be withdrawn.

(6)Where during the international phase the application is amended in accordance with the Patent Co-operation Treaty, the amendment shall be treated as made under this Act if-

(a)when the prescribed period expires, any necessary translation of the amendment into English has been filed at the Registry; or

(b)where the applicant expressly requests the Registrar to proceed earlier with the national phase of the application, there is then filed at the Registry－

( i )a copy of the amendment, if none has yet been sent to the Registry in accordance with the Treaty; and

( ii )any necessary translation of the amendment into English,

otherwise the amendment shall be disregarded.

(7)The Registrar shall on payment of the prescribed fee publish any translation filed at the Registry under subsection (3) or (6).

87.-(1)Where an international application for a patent (Singapore) is accorded a filing date under the Patent Co-operation Treaty-

(a)that date or, if the application is re-dated under the Treaty to a later date, that later date shall be treated as the date of filing the application under this Act;

(b)any declaration of priority made under the Treaty shall be treated as made under section 17 (2), and where in accordance with the Treaty any extra days are allowed, the period of 12 months specified in section 17 (2) shall be treated as altered accordingly; and

(c)any statement of the name of the inventor under the Treaty shall be treated as a statement filed under section 24 (2).

(2)If the application, not having been published under this Act, is published in accordance with the Patent Co-operation Treaty, it shall be treated, for purposes other than those mentioned in subsection (3), as published under section 27 when the conditions mentioned in section 86 (3) (a) are complied with.

(3)For the purposes of section 61 (use of invention for service of the Government) and section 76 (infringement of rights conferred by publication) the application, not having been published under this Act, shall be treated as published under section 27 -

(a)if it is published in accordance with the Patent Co-operation Treaty in English, on its being so published; and

(b)if it is so published in a language other than English -

( i )on the publication of a translation of the application in accordance with section 86 (7); or

( ii )on the service by the applicant of a translation into English of the specification of the application on the Government department concerned or, as the case may be, on the person committing the infringing act.

(4)The reference in subsection (3) (b) ( ii ) to the service of a translation on a Government department or other person is to its being sent by post or delivered to that department or person.

(5)During the international phase of the application, section 20 does not apply (determination of questions of entitlement in relation to application under this Act); but after the end of the international phase, that section shall apply.

88.-(1)Judicial notice shall be taken of the Patent Co-operation Treaty and any gazette, bulletin dr journal published under the Treaty; and any such document shall be admissible as evidence of any instrument or other act thereby communicated of any institution having functions under the Treaty.

(2)Evidence of any instrument issued under the Patent Co-operation Treaty by any institution or of any document in the custody of any institution or reproducing in legible form any information in such custody otherwise than in legible form, or any entry or extract from such a document, may be given in any legal proceedings by production of a copy certified as a true copy by an official of that institution; and any document purporting to be such a copy shall be received in evidence without proof of the official position or handwriting of the person signing the certificate.

(3)Evidence of any instrument mentioned in subsection (2) may also be given in any legal proceedings -

(a)by production of a copy purporting to be printed by the Government Printers;

(b)where the instrument is in the custody of a Government department, by production of a copy certified on behalf of the department to be a true copy by an officer of the department generally or specially authorised to do so,

and any document purporting to be such a copy as is mentioned in paragraph (b) of an instrument in the custody of a Government department shall be received in evidence without proof of the official position or handwriting of the person signing the certificate, or of his authority to do so, or of the document being in the custody of the department.

(4)In this section, "legal proceedings" includes proceedings before the Registrar.

89.-(1)The Minister may, with a view to the fulfilment of any treaty, convention, arrangement or engagement, by order published in the Gazette declare that any country specified in the order is a convention country for the purposes of section 17.

(2)For the purposes of this section, every colony, protectorate and territory subject to the authority or under the suzerainty of another country, and every territory administered by another country under the trusteeship system of the United Nations shall be taken to be a country in the case of which a declaration may be made under this section.

PART XVII

LEGAL PROCEEDINGS

90.-(1)Any proceedings before the court relating to patents and other matters under this Act shall be dealt with by a judge sitting alone or, if he thinks fit, with one or more scientific advisers selected by the judge from the panel appointed under subsection (2).

(2)Rules under this Act may make provision for the appointment of a panel of scientific advisers to assist the court and the Registrar in proceedings under this Act, for regulating the functions of such advisers and for remunerating such advisers.

91.-(1)An appeal shall lie to the court from any decision of the Registrar under this Act or the rules except any of the following decisions:

(a)a decision falling within section 25 (7);

(b)a decision under section 27 (2) to omit any matter from a specification;

(c)a decision to give directions under section 33 (1) or (2);

(d)a decision under the rules which is excepted by the rules from the right of appeal conferred by this section.

(2)For the purpose of hearing appeals under this section the court may consist of one or more judges of the court in accordance with directions given by or on behalf of the Chief Justice.

(3)An appeal shall not lie to the Court of Appeal from a decision of the court on appeal from a decision of the Registrar under this Act or the rules -

(a)except where the decision of the Registrar was given under section 20, 38, 47, 67, 80, 81 or 83; or

(b)except where the ground of appeal is that the decision of the court is wrong in law,

but an appeal shall only lie to the Court of Appeal under this section if leave to appeal is given by the court or the Court of Appeal.

92.-(1)The court may, for the purpose of determining any question in the exercise of its original or appellate jurisdiction under this Act, make any order or exercise any other power which the Registrar could have made or exercised for the purpose of determining that question.

(2)In all proceedings before the court under this Act, the costs of the Registrar shall be in the discretion of the court, but the Registrar shall not be ordered to pay the costs of any other of the parties.

93.Without prejudice to any rule of law, the Registrar shall give any party to a proceeding before him an opportunity of being heard before exercising adversely to that party any discretion vested in the Registrar by this Act or the rules.

94.-(1)Any party to any proceedings before the Registrar under this Act or any treaty to which Singapore is a party may appear before the Registrar in person or be represented by an advocate and solicitor or a registered patent agent or, subject to section 105, by any other person whom he desires to represent him.

(2)Without prejudice to the right of counsel to appear before the court, an advocate and solicitor who is not in actual practice and a registered patent agent shall each, notwithstanding anything in the Legal Profession Act, have the right to appear and be heard on behalf of any party to an appeal under this Act from the Registrar to the court.

95.-(1)It is hereby declared that the rule of law which confers privilege from disclosure in legal proceedings in respect of communications made with an advocate and solicitor or a person acting on his behalf, or in relation to information obtained or supplied for submission to an advocate and solicitor or a person acting on his behalf, for the purpose of any pending or contemplated proceedings before a court in Singapore extends to such communications so made for the purpose of any pending or contemplated proceedings before the Registrar under this Act.

(2)In this section, "legal proceedings" includes proceedings before the Registrar; and references to "legal proceedings" and "pending or contemplated proceedings" include references to applications for a patent and to international applications for a patent.

96.-(1)A communication with respect to any matter relating to patents -

(a)between a person and a registered patent agent, a partnership entitled under Part XIX to describe itself as a firm of patent agents or a body corporate entitled under Part XIX to describe itself as a patent agent; or

(b)for tbe purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing his patent agent,

is privileged from disclosure in legal proceedings in Singapore in the same way as a communication between a person and his solicitor or, as the case may be, a communication for the purpose of obtaining, or in response to a request for, information which a person seeks for the purpose of instructing his solicitor.

(2)For the purposes of this section, "legal proceedings" includes proceedings before the Registrar.

97.-(1)The Registrar may, in proceedings before him under this Act, by order award to any party such costs as he may consider reasonable and direct how and by what parties they are to be paid.

(2)Any costs awarded under this section shall, if a District Court or a Magistrate's Court so orders, be recoverable by execution issued from that Court or otherwise as if they were payable under an order of that Court.

(3)If any person by whom -

(a)a reference is made to the Registrar under section 20 or 47;

(b)an application is made to the Registrar for the revocation of a patent; or

(c)notice of opposition is given to the Registrar under section 38 (4), 40 (2), 54 (6), 59 (1) or 107 (2),

neither resides nor carries on business in Singapore, the Registrar may require him to give security for the costs or expenses of the proceedings and in default of such security being given may treat the reference, application or notice as abandoned.

98.Any order by the Registrar for the grant of a licence under this Act shall, without prejudice to any other method of enforcement, have effect as if it were a deed, executed by the proprietor of the patent and all other necessary parties, granting a licence in accordance with the order.

PART XVIII

OFFENCES

99. If a person makes or causes to be made a false entry in any register kept under this Act, or a writing falsely purporting to be a copy or reproduction of an entry in any such register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, he 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 one year or to both.

100.-(1)If a person falsely represents that anything disposed of by him for value is a patented product, he shall, subject to this section, be guilty of an offence and shall be liable on conviction to a fine not exceeding $10,000 or to imprisonment for a term not exceeding one year or to both.

(2)For the purposes of subsection (1), a person who for value disposes of an article having stamped, engraved or impressed on it or otherwise applied to it the word "patent" or "patented" or anything expressing or implying that the article is a patented product, shall be taken to represent that the article is a patented product.

(3)Subsection (1) shall not apply where the representation is made in respect of a product after the patent for that product or, as the case may be, the process in question has expired or been revoked and before the end of a period which is reasonably sufficient to enable the accused to take steps to ensure that the representation is not made or does not continue to be made.

(4)In proceedings for an offence under this section, it shall be a defence for the accused to prove that he used due diligence to prevent the commission of the offence.

101.-(1)If a person represents that a patent has been applied for in respect of any article disposed of for value by him and-

(a)no such application has been made; or

(b)any such application has been refused, withdrawn or treated as having been abandoned,

he shall, subject to this section, be guilty of an offence and shall be liable on conviction to a fine not exceeding $10,000 or to imprisonment for a term not exceeding one year or to both.

(2)Subsection (1) (b) shall not apply where the representation is made or continues to be made before the expiry of a period which commences with the refusal, withdrawal or abandonment and which is reasonably sufficient to enable the accused to take steps to ensure that the representation is not made or does not continue to be made.

(3)For the purpose of subsection (1), a person who for value disposes of an article having stamped, engraved or impressed on it or otherwise applied to it the words "patent applied for" or "patent pending", or anything expressing or implying that a patent has been applied for in respect of the article, shall be taken to represent that a patent has been applied for in respect of it.

(4)In any proceedings for an offence under this section, it shall be a defence for the accused to prove that he used due diligence to prevent the commission of the offence.

102.If any person uses on his place of business, or on any document issued by him, or otherwise, the words "Registry of Patents" or any other words suggesting that his place of business is, or is officially connected with, the Registry of Patents, he 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 one year or to both.

103.-(1)Where an offence under this Act which has been committed by a body corporate is proved to have been committed with the consent or connivance of, or to be attributable to any neglect on the part of, a director, manager, secretary or any similar officer of the body corporate, or any person who was purporting to act in any such capacity, he, as well as the body corporate, shall be guilty of that offence and shall be liable to be proceeded against and punished accordingly.

(2)Where the affairs of a body corporate are managed by its members, subsection (1) shall apply in relation to the acts and defaults of a member in connection with his functions of management as if he were a director of the body corporate.

(3)Proceedings for an offence under this Act alleged to have been committed by a partnership shall be brought in the name of the partnership and not in that of the partners; but without prejudice to any liability of the partners under subsection (5).

(4)A fine imposed on a partnership on its conviction in such proceedings shall be paid out of the partnership assets.

(5)Where a partnership is guilty of an offence under this Act, every partner, other than a partner who is proved to have been ignorant of or to have attempted to prevent the commission of the offence, is also guilty of the offence and liable to be proceeded against and punished accordingly.

PART XIX*

PATENT AGENTS

104.-(1)The Minister may make rules requiring the keeping of a register of persons who act as agent for others for the purposes of applying for or obtaining patents.

(2)The rules may contain such provision as the Minister thinks fit regulating the registration of persons and may, in particular, require the payment of such fees as may be prescribed and authorise in prescribed cases the erasure from the register of the name of any person registered in it, or the suspension of the registration of any person.

(3)The rules may delegate the keeping of the register to another person, and may confer on that person such functions, including disciplinary functions, as may be prescribed.

(4)Such rules may provide that a contravention of the rules shall be an offence and may provide penalties not exceeding a fine of $5,000 or imprisonment for a term not exceeding one year or both.

105.-(1)An individual who is not a registered patent agent shall not -

(a)carry on a business (otherwise than in partnership) under any name or other description which contains the words "patent agent" or "patent attorney"; or

(b)in the course of a business otherwise describe himself or permit himself to be described as a "patent agent" or "patent attorney".

(2)A partnership shall not -

(a)carry on a business under any name or other description which contains the words "patent agent" or "patent attorney"; or

(b)in the course of a business otherwise describe itself or permit itself to be described as a firm of "patent agents" or "patent attorneys",

unless all the partners are registered patent agents or the partnership satisfies such conditions as may be prescribed for the purposes of this section.

(3)A body corporate shall not -

(a)carry on a business (otherwise than in partnership) under any name or other description which contains the words "patent agent" or "patent attorney"; or

(b)in the course of a business otherwise describe itself or permit itself to be described as a "patent agent" or "patent attorney",

unless all the directors of the body corporate are registered patent agents or the body corporate satisfies such conditions as 'may be prescribed for the purposes of this section.

(4)A person who contravenes 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 one year or to both.

(5)This section shall not be construed as prohibiting an advocate and solicitor from taking part in proceedings relating to patents and applications for patents and, in particular, shall not derogate from section 94 as it applies to advocates and solicitors.

(6)A registered patent agent shall not be guilty of an offence under section 33 of the Legal Profession Act by reason only of the preparation by him for use in proceedings on appeal under this Act to the court from the Registrar of any document other than a deed.

(7)No offence is committed under section 33 of the Legal Profession Act by any person by reason only of the preparation by him of a document (other than a deed) for use in proceedings before the Registrar in relation to any patent or application for a patent.

(8)Where this section would be contravened by the use of the words "patent agent" or "patent attorney" in reference to an individual, partnership or body corporate, it is equally contravened by the use of other expressions in reference to that person, or his business or place of business, which are likely to be understood as indicating that he is entitled to be described as a "patent agent" or "patent attorney".

(9)In this section, "director", in relation to a body corporate whose affairs are managed by its members, means any member of the body corporate.

PART XX

MISCELLANEOUS AND GENERAL

106.The Government, any officer of the Registry and any Examiner shall not

(a)be taken to warrant the validity of any patent granted under this Act or any treaty to which Singapore is a party;

(b)incur any liability by reason of or in connection with any examination or investigation required or authorised by this Act or any such treaty or any report or other proceedings consequent on any such examination or investigation; or

(c)incur any liability by reason of an incorrect entry in the register of patent agents maintained under Part XIX.

107.-(1)The Registrar may, subject to any provision of the rules, correct any error of translation or transcription, clerical error or mistake in any specification of a patent or application for a patent or any document filed in connection with a patent or such an application.

(2)Where the Registrar is requested to correct such an error or mistake, any person may in accordance with the rules give the Registrar notice of opposition to the request and the Registrar shall determine the matter.

108.-(1)After publication of an application for a patent in accordance with section 27, the Registrar shall, on request being made to him in the prescribed manner and on payment of the prescribed fee (if any), give the person making the request such information, and permit him to inspect such documents, relating to the application or to any patent granted in pursuance of the application as may be specified in the request, subject, however, to any prescribed restrictions.

(2)Subject to this section, until an application for a patent is so published, documents or information constituting or relating to the application shall not, without the consent of the applicant, be published or communicated to any person by the Registrar.

(3)Subsection (2) shall not prevent -

(a)the Registrar from publishing or communicating to others any bibliographic information about an unpublished application for a patent; or

(b)the Minister from inspecting or authorising the inspection of an application for a patent or any connected documents under section 33 (5).

(4)Where a person is notified that an application for a patent has been made, but not published in accordance with section 27, and that the applicant will, if the patent is granted, bring proceedings against that person in the event of his doing an act specified in the notification after the application is so published, that person may make a request under subsection (1), notwithstanding that the application has not been published, and that subsection shall apply accordingly.

(5)Where an application for a patent is filed, but not published, and a new application is filed in respect of any part of the subject-matter of the earlier application (either in accordance with the rules or in pursuance of an order under section 20) and is published, any person may make a request under subsection (1) relating to the earlier application and on payment of the prescribed fee the Registrar shall give him such information and permit him to inspect such documents as could have been given or inspected if the earlier application had been published.

(6)The publication of the whole or part of a specification of a patent or an application for a patent shall not constitute an infringement of any copyright subsisting under the Copyright Act in any literary or artistic work.

109.Any notice required or authorised to be given by this Act or the rules, and any application or other document so authorised or required to be made or filed, may be given, made or filed by post.

110.-(1)The Minister may make rules to provide for extension of time for any period of time specified for the doing of an act in relation to an application for patent or in proceedings under this Act or the rules, not being proceedings in court.

(2)The rules may contain such provision as the Minister thinks fit regulating the circumstances in which such an extension may be granted and may also provide for the protection and compensation of persons affected by the grant of extension of time and may authorise the Registrar to grant an extension of time notwithstanding that the period has already expired.

111.-(1)Rules may specify the hour at which the Registry shall be taken to be closed on any day for purposes of the transaction by the public of business under this Act or of any class of such business, and may specify days as excluded days for any such purposes.

(2)Any business done under this Act on any day after the hour so specified in relation to business of that class, or on a day which is an excluded day in relation to business of that class, shall be taken to have been done on the next following day not being an excluded day; and where the time for doing anything under this Act expires on an excluded day, that time shall be extended to the next following day not being an excluded day.

112.Nothing in this Act shall affect the right of the Government or any person deriving title, directly or indirectly, from the Government to dispose of or use articles forfeited under the laws relating to customs or excise.

113.-(1)For the purposes of this Act, an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpretated by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly.

(2)It is hereby declared for the avoidance of doubt that where more than one invention is specified in any such claim, each invention may have a different priority date under section 17.

114.-(1)Provision may be made by rules prescribing the circumstances in which the specification of an application for a patent, or of a patent, for an invention which requires for its performance the use of a micro-organism is to be treated as disclosing the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.

(2)The rules may in particular require the applicant or patentee -

(a)to take such steps as may be prescribed for the purposes of making available to the public samples of the micro-organism; and

(b)not to impose or maintain restrictions on the uses to which such samples may be put, except as may be prescribed.

(3)The rules may provide that, in such cases as may be prescribed, samples need only be made available to such persons or descriptions of persons as may be prescribed; and the rules may identify a description of persons by reference to whether the Registrar has given his certificate as to any matter.

(4)An application for revocation of the patent under section 80 (1) (c) may be made if any of the requirements of the rules ceases to be complied with.

115.-(1)The Minister may make such rules as he thinks expedient for regulating the business of the Registry in relation to patents and applications for patents (including international applications for patents) and for regulating all matters placed by this Act under the direction or control of the Registrar.

(2)Without prejudice to the generality of subsection (1), the rules may make provision -

(a)prescribing the form and contents of applications for patents and other documents which may be filed at the Registry and requiring copies to be furnished of any such documents;

(b)regulating the procedure to be followed in connection with any proceeding or other matter before the Registrar or the Registry and authorising the rectification of irregularities of the procedure;

(c)requiring fees to be paid in connection with any such proceeding or matter or in connection with the provision of any service by the Registry and providing for the remission of fees in the prescribed circumstances;

(d)regulating the mode of giving evidence in any such proceeding and empowering the Registrar to compel the attendance of witnesses and the discovery of and production of documents;

(e)requiring the Registrar to publish any proposed amendments of patents and any other prescribed matters including any prescribed steps in any such proceeding;

(f)providing for the appointment of scientific advisers to assist the court and the Registrar in any proceeding before it or him and for the remuneration of such advisers;

(g)prescribing time limits for doing anything required to be done in connection with any such proceeding by this Act or the rules;

(h)giving effect to the right of an inventor of an invention to be mentioned in an application for a patent for the invention;

(i)providing for the publication and sale of documents in the Registry and of information about such documents;

(j)prescribing, in relation to international applications, matters necessary or convenient to be prescribed for carrying out or giving effect to the Patent Co-operation Treaty;

(k)excluding or varying the operation of the provisions of this Act in relation to international applications and applications for patents made under section 116;

(l)requiring and regulating the translation of documents in connection with any application for a patent and the filing and authentication of any such translations; and

(m)prescribing the scale of costs for proceedings before the Registrar.

(3)Rules may make different provisions for different cases.

(4)Rules shall provide for the publication by the Registrar of a journal (referred to in this Act as the journal) containing particulars of applications for and grants of patents, particulars of application for and the registration of patent agents, and of other proceedings under this Act.

(5)Rules may require or authorise the Registrar to make arrangements for the publication of reports of cases relating to patents decided by him or by any court or body whether in Singapore or elsewhere.

116.-(1)Where an application has been made under section 3 of the Registration of United Kingdom Patents Act before 23rd February 1995, the Registrar may issue a certificate of registration under section 5 of that Act after that date as if that Act had not been repealed.

(2)Where a patent has been granted under the United Kingdom Patents Act 1977 not earlier than 36 months before, or not later than 12 months after, 23rd February 1995, the proprietor of the patent may, within a period of 24 months from that date, make an application for a certificate of registration and the Registrar may issue a certificate on such application as if the Registration of United Kingdom Patents Act had not been repealed.

(3)Any certificate of registration issued under section 5 of the Registration of United Kingdom Patents Act and is in force immediately before 23rd February 1995, or issued after that date by virtue of subsection (1) or (2) shall continue in force and the patent to which the certificate relates shall be treated for the purposes of this Act as if it were a patent under this Act granted in pursuance of an application made under this Act and the proprietor of the patent shall accordingly have the same rights, remedies, privileges and obligations and subject to the same conditions (including the payment of any fee prescribed under section 36), as the proprietor of a patent under this Act subject to the following modifications:

(a)the term of the patent shall date from the date of the patent in the United Kingdom and the patent shall subject to this Act remain in force for 20 years from that date and only so long as the patent has not been revoked in the United Kingdom;

(b)such other modifications as may be prescribed.

(4)A patent to which subsection (3) applies shall be treated for the purposes of sections 14 (3) and 17 (2) as being granted on an application with a date of filing under this Act and published under this Act.

(5)The date of filing an application for a patent as mentioned in subsection (4), and the priority date of an invention or other matter contained in that application, shall be determined in accordance with the provisions of the United Kingdom Patents Act 1949 or 1977, as the case may be.

(6)Where before 23rd February 1995 an application for a patent has been made under the United Kingdom Patents Act 1977 or an application designating the United Kingdom has been filed at the European Patent Office, and the application is pending on that date, the applicant may, within 12 months from that date, make an application for the grant of a patent under this Act and the application shall, subject to any prescribed modifications, be accorded a filing date and a right of priority which have been accorded to it in the United Kingdom.

(7)Where an act is commenced before 23rd February 1995 and continues to be done on or after that date, then, if it would not, under the law in force immediately before that date, amount to an infringement of a patent or the privileges or rights arising under a specification, its continuance on or after that date shall not amount to the infringement of that patent or those privileges or rights.

(8)On 23rd February 1995, the Register of Patents kept under section 13 of the repealed Registration of United Kingdom Patents Act shall be taken to form part of the register of patents kept under this Act.

(9)Notwithstanding the repeal of the Patents (Compulsory Licensing) Act, sections 13 and 14 of that Act and the rules made thereunder in force immediately before 23rd February 1995 shall continue to apply in relation to the making, importation or obtaining by or on behalf of the Government of any patented medicine or drug under section 13 of that Act before that date.

*(1) No date has been appointed for the coming into operation of sections 104 and 105 (1) to (6), (8) and (9).

(2)Section 105 (7) was brought into operation on 23rd February 1995 - See G.N. S 36/95.