Publication and certificate of grant
Open ↗35.—(1) As soon as practicable after a patent has been granted under this Act, the Registrar must —(a)
send to the proprietor of the patent a certificate in the prescribed form that the patent has been granted to the proprietor; and
(b)
publish in the journal a notice that the patent has been granted.
(2) The Registrar must, at the same time as the Registrar publishes a notice under subsection (1)(b) 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 constituting or relating to the patent which in the Registrar’s opinion it is desirable to publish.[15/2012]
Term of patent
Open ↗36.—(1) A patent granted under this Act is treated for the purposes of this Act as having been granted, and takes effect, on the date of issue of the certificate of grant and, subject to subsection (2) and section 36A, continues 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 ceases 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 prescribed period immediately after the end of the period prescribed for the payment of any renewal fee under subsection (2), the renewal fee and any prescribed additional fee are paid, the patent is 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 is valid;
(b)
an act which would constitute an infringement of it if it had not expired constitutes such an infringement; and
(c)
an act which would constitute the use of the patented invention in accordance with section 56 if the patent had not expired constitutes that use. [Act 7 of 2022 wef 26/05/2022]
(4) Rules must include provision requiring the Registrar to notify the registered proprietor of a patent that a renewal fee has not been received from the registered proprietor in the Registry before the end of the prescribed period for the payment of any renewal fee under subsection (2) and before the framing of the notification.[Act 7 of 2022 wef 26/05/2022]
Extension of term of patent
Open ↗36A.—(1) The proprietor of a patent may apply to the Registrar to extend the term of the patent on any of the following grounds:(a)
that there was an unreasonable delay by the Registrar in granting the patent;
(b)
where the patent was granted on the basis of any prescribed documents referred to in section 29(1)(d) relating to one corresponding application or related national phase application, that —(i)
there was an unreasonable delay in the issue of the corresponding patent or related national phase patent (as the case may be); and
(ii)
the patent office that granted the corresponding patent or related national phase patent (as the case may be) has extended the term of the corresponding patent or related national phase patent (as the case may be) on the basis of such delay;
(c)
where the subject of the patent includes any substance which is an active ingredient of any pharmaceutical product, that —(i)
there was an unreasonable curtailment of the opportunity to exploit the patent caused by the process of obtaining marketing approval for a pharmaceutical product, being the first pharmaceutical product to obtain marketing approval which uses the substance as an active ingredient; and
(ii)
the term of the patent has not previously been extended on this ground. [15/2012]
(2) A delay by the Registrar in granting a patent is not treated as an unreasonable delay under subsection (1)(a) unless such requirements as may be prescribed are satisfied.[15/2012]
(3) Where the proprietor of a patent has made an application under subsection (1)(a) and has satisfied the Registrar that there was in fact a particular type of unreasonable delay by the Registrar in granting the patent, the Registrar must extend the term of the patent by such period as may be prescribed for that type of unreasonable delay.[15/2012]
(4) Where the proprietor of a patent has made an application under subsection (1)(b) and has satisfied the Registrar of the matters referred to in sub-paragraphs (i) and (ii) of subsection (1)(b), the Registrar may, if the Registrar thinks fit, extend the term of the patent by such period, not exceeding 5 years, as the Registrar may determine.
(5) A curtailment of the opportunity to exploit a patent, the subject of which includes a substance which is an active ingredient of any pharmaceutical product, caused by the process of obtaining marketing approval for a pharmaceutical product, being the first pharmaceutical product to obtain marketing approval which uses the substance as an active ingredient, is not treated as an unreasonable curtailment under subsection (1)(c) unless such requirements as may be prescribed are satisfied.[15/2012]
(6) Subject to subsections (7), (8) and (9), where the proprietor of a patent has made an application under subsection (1)(c) and has satisfied the Registrar that there was in fact an unreasonable curtailment of the opportunity to exploit the patent under subsection (1)(c), the Registrar must extend the term of the patent by such period as may be prescribed.[15/2012]
(7) The Registrar must not extend the term of the patent under subsection (6) unless the applicant has procured and submitted to the Registrar a certificate from the relevant authority stating such matters as may be prescribed.[15/2012]
(8) In determining the period by which to extend the term of the patent under subsection (6), the Registrar must rely on, and is not concerned to inquire into the truth of, the statements contained in the certificate from the relevant authority under subsection (7).
(9) Where the term of a patent has been extended under subsection (6), the protection conferred by the patent during the term of the extension applies only to the substance mentioned in subsection (1)(c).
(10) Every application to extend the term of a patent must be —(a)
made by the proprietor of the patent in the prescribed form within the prescribed period;
(b)
filed in the prescribed manner; and
(c)
accompanied by the prescribed fee and any prescribed documents,
and the Registrar may reject any application that fails to comply with any requirement under this subsection.
(11) As soon as practicable after the Registrar has extended the term of a patent, the Registrar must —(a)
send to the proprietor of the patent a certificate of extension of patent term in the prescribed form specifying —(i)
the period of the extension; and
(ii)
any limitation on the protection conferred by the patent during the term of the extension; and
(b)
publish in the journal a notice of the extension.
(12) The proprietor of a patent who has made an application under subsection (1) may withdraw the application by informing the Registrar in writing of the withdrawal of the application, and any such withdrawal is not revocable.
Patent not to be impugned for lack of unity
Open ↗37. No person may in any proceeding object to a patent or to an amendment of a specification of a patent 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.
General power to amend specification after grant
Open ↗38.—(1) Subject to this section and 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 the Registrar thinks fit.
(2) No such amendment is 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 has effect and is deemed always to have had effect from the grant of the patent.
(4) A person may give notice to the Registrar of the person’s opposition to an application under this section by the proprietor of a patent, and if the person does so the Registrar must notify the proprietor and consider the opposition in deciding whether to grant the application.
Re-examination after grant
Open ↗38A.—(1) Any person may, at any time after a patent is granted, file a request for the Registrar to conduct a re‑examination of the specification of a patent for an invention on any of the following grounds:(a)
the invention is not a patentable invention;
(b)
the specification does not disclose the invention clearly and completely for it to be performed by a person skilled in the art;
(c)
the matter disclosed in the specification extends beyond that disclosed —(i)
in the application for the patent, as filed; or
(ii)
where the patent was granted on a new application filed under section 20(3) or 47(4) or section 116(6) of the Patents Act (Cap. 221, 1995 Revised Edition), or in accordance with section 26(11), in —(A)
the earlier application made under this Act;
(B)
the application made under the United Kingdom Patents Act 1977; or
(C)
the application under the European Patent Convention designating the United Kingdom filed at the European Patent Office,
as the case may be, from which the filing date and the right of priority has been derived, as filed;
(d)
an amendment has been made to the specification of the patent under section 38(1), 81 or 83 which —(i)
results in the specification disclosing any additional matter; or
(ii)
extends the protection conferred by the patent;
(e)
an amendment has been made to the specification of the application for the patent under section 31 which results in the specification disclosing any matter extending beyond that disclosed in the application as filed;
(f)
a correction has been made to the specification of the patent or of the application for the patent under section 107 which should not have been allowed;
(g)
the patent is one of 2 or more patents for the same invention having the same priority date and filed by the same party or the party’s successor in title.[23/2019]
(2) Every request under subsection (1) must be —(a)
filed in the prescribed manner;
(b)
accompanied by the prescribed fee; and
(c)
accompanied, at the time the request is filed, by —(i)
reasons to substantiate the ground specified in the request; and
(ii)
any document that the person considers to be relevant for the purposes of the re‑examination.[23/2019]
(3) The Registrar may reject any request that fails to comply with any requirement in subsection (2).[23/2019]
(4) The Registrar must not grant a request under subsection (1) if the Registrar is of the view that the request is frivolous, vexatious or an abuse of the process.[23/2019]
(5) No request under subsection (1) may be filed where there are pending before the court or the Registrar any proceedings in which the validity of the patent may be put in issue.[23/2019]
(6) Where proceedings before the court or the Registrar, in which the validity of the patent may be put in issue, are filed after a request under subsection (1) is made, the Registrar may make such order or give such direction as the Registrar thinks fit concerning the request.[23/2019]
(7) Where the Registrar grants a request under subsection (1), the Registrar must cause the specification of the patent to be re‑examined by an Examiner so as to determine whether the ground specified in the request is made out.[23/2019]
(8) If it appears to the Examiner during the re‑examination of the specification of the patent that —(a)
the ground specified in the request; or
(b)
based on any document submitted under subsection (2)(c)(ii), any other ground mentioned in subsection (1),
is made out, the Examiner must give the proprietor of the patent a written opinion to that effect, and the Registrar must, upon receiving the written opinion, send the proprietor a copy of the written opinion.
[23/2019]
(9) The proprietor of the patent must respond to the written opinion in the prescribed manner and within the prescribed period.[23/2019]
(10) Upon receiving the re‑examination report prepared by the Examiner, the Registrar must send to the proprietor of the patent a copy of the report.[23/2019]
(11) Where the re‑examination report issued under this section contains one or more unresolved objections (being an objection mentioned in the written opinion), the Registrar must make an order revoking the patent.[23/2019]
(12) An order under subsection (11) 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.[23/2019]
(13) A decision of the Registrar or on appeal from the Registrar does 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 mentioned in subsection (1), whether or not any of the issues involved were decided in the decision.[23/2019]
(14) A decision of the Registrar to revoke a patent under this section has effect from the date of the grant of the patent.[23/2019]
(15) A person does not become a party to any proceedings under this Act before the Registrar by reason only that the person files a request under subsection (1), unless the person is the proprietor of the patent.[23/2019]
Restoration of lapsed patents
Open ↗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.
(3) Where the patent was held by 2 or more persons jointly, the application may, with the permission of the Registrar, be made by one or more of them without joining the others.[Act 25 of 2021 wef 01/04/2022]
(4) Notice of the application must be published by the Registrar in the prescribed manner.
(5) If the Registrar is satisfied that the failure of the proprietor of the patent to pay any renewal fee within the period prescribed under section 36(2), or to pay that fee and any prescribed additional fee within the period prescribed under section 36(3), was unintentional, the Registrar must by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee.[15/2012]
[Act 7 of 2022 wef 26/05/2022]
(6) An order under this section may be made subject to such conditions as the Registrar thinks fit (including a condition requiring compliance with any provision 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 the Registrar thinks fit.
(7) The effect of an order for the restoration of a patent is as provided in subsections (8) to (13).
(8) Anything done under or in relation to the patent during the period between expiry and restoration is treated as valid.
(9) Anything done during that period which would have constituted an infringement if the patent had not expired is treated as an infringement —(a)
if done at a time when it was possible for the patent to be renewed under section 36(3); or
(b)
if it was a continuation or repetition of an earlier infringing act.
(10) 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,
the person has the right to continue to do the act or (as the case may be) to do the act, despite the restoration of the patent.
(11) The right referred to in subsection (10) does not extend to granting a licence to another person to do the act.
(12) 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 (10) may —(a)
authorise the doing of that act by any partner of the person’s 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.
(13) Where a product is disposed of to another in exercise of the rights conferred by subsection (10) or (12), 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.
(14) Subsections (8) to (13) apply in relation to the use of a patent in accordance with section 56 as they apply in relation to infringement of the patent.
Surrender of patents
Open ↗40.—(1) The proprietor of a patent may at any time by notice given to the Registrar offer to surrender the proprietor’s patent.
(2) If the Registrar is satisfied that the patent may properly be surrendered, the Registrar may accept the offer and, as from the date when notice of the Registrar’s acceptance is published in the journal, the patent ceases 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 in accordance with section 56.
Source: Singapore Statutes Online (Attorney-General's Chambers), © Government of Singapore.
