Nature of, and transactions in, patents and applications for patents
Open ↗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 vests 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 vests 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) 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,
shall be void unless it is in writing and is signed by or on behalf of the assignor or mortgagor (or, in the case of an assent or other transaction 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.
[15/2012]
(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 58 for a previous act.
Register of patents
Open ↗42.—(1) The Registrar must maintain a register of patents in accordance with the rules made by virtue of this section.
(2) Without affecting 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 document 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 document filed at the Registry in connection with registration;
(e)
the publication and advertisement of anything done under this Act or the rules in relation to the register.
(3) Despite anything in subsection (2)(b), no notice of any implied or constructive trust is to be entered in the register and the Registrar is not affected by any such notice.[4/2014]
(4) A notice of an express trust or of the beneficiary of an express trust, or both, may be entered in the register; but —(a)
the Registrar is not affected by any such notice in the register; and
(b)
to avoid doubt, a failure to enter such notice in the register does not affect any rights or duties under the trust.[4/2014]
(5) The register need not be kept in documentary form.
(6) Subject to the rules, the public has a right to inspect the register at the Registry at all convenient times.
(7) Any person who applies for a certified copy of an entry in the register or a certified extract from the register is entitled to obtain such a copy or extract on payment of a fee prescribed in relation to certified copies and extracts.
(8) Applications under subsection (7) must be made in such manner as may be prescribed.[15/2012]
(9) In relation to any portion of the register kept otherwise than in documentary form —(a)
the right of inspection conferred by subsection (6) is a right to inspect the material on the register; and
(b)
the right to a copy or extract conferred by subsection (7) 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.
Effect of registration, etc., on rights in patents
Open ↗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 is 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) applies 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 applies 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, or grant of any other security interest in, a patent or application;
(c)
the grant or assignment of a licence or sub-licence, or mortgage of, or grant of any other security interest in, 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 person,
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.
[15/2012]
(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 is treated as registration of the transaction, instrument or event.
(5) Provision may be made by rules as to the amendment, alteration or removal from the register of any particulars in the register relating to any transaction, instrument or event referred to in subsection (3).[15/2012]
Rectification of register
Open ↗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.
Evidence of register, documents, etc.
Open ↗45.—(1) The register is prima facie evidence of anything required or authorised by this Act or the rules to be registered.
(2) A certificate purporting to be signed by the Registrar and certifying that any entry which the Registrar is authorised by this Act or any of its rules to make has or has not been made, or that any other thing which the Registrar is so authorised to do has or has not been done, is 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(7);
(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 is to 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.[15/2012]
Co-ownership of patents and applications for patents
Open ↗46.—(1) Where a patent is granted to 2 or more persons, each of them, subject to any agreement to the contrary, is 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 is entitled, by himself, herself or itself or his, her or its agents, to do in respect of the invention, for the person’s 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 56, amount to an infringement of the patent; and
(b)
any such act does 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 may 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 2 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 does not amount to an infringement of the patent.
(5) Where a patented product is disposed of by any of 2 or more proprietors to any person, that person and any other person claiming through that person are 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) affects 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 has 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 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 is to be construed accordingly.
Determination of right to patent after grant
Open ↗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 must determine the question and make such order as the Registrar thinks fit to give effect to the determination.
(2) Without limiting subsection (1), an order under that subsection may contain provision —(a)
directing that the person by whom the reference is made under that subsection is 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 (A) 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 the Registrar by any person in whose favour or on whose reference the order containing the directions was made (B), authorise B to do that thing on behalf of A.
(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 (either 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 that person’s 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 is treated as having been filed on the date of filing the application for the patent to which the reference relates.
[23/2019]
(5) On any reference under subsection (1) —(a)
no order may 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
(b)
no order may 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 transfer of the patent to the person that the person was not entitled (either alone or with other persons, as the case may be) to the patent.[23/2019]
(6) An order under this section must 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 must 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 the Registrar would be more conveniently dealt with by the court, the Registrar 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 has jurisdiction to do so.[23/2019]
(9) The court must not determine a question whether a patent was granted to a person not entitled to be granted the patent —(a)
in the exercise of any such declaratory jurisdiction in an action for a declaration; or
(b)
in the exercise of jurisdiction pursuant to a reference under this section,
if the action or the reference (as the case may be) was commenced or made 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 the person that the person was not entitled (either alone or with other persons, as the case may be) to the patent.
[23/2019]
Effect of transfer of patent under section 47
Open ↗48.—(1) Where an order is made under section 47 that a patent 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 are, subject to section 43 and to the provisions of the order, to continue in force and to 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 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, 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)
a patent be transferred as mentioned in subsection (2); or
(b)
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 —
(c)
worked the invention in question in Singapore; or
(d)
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 must be granted for a reasonable period and on reasonable terms.
(5) The new proprietor or proprietors of the patent or any person claiming that the person 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.
(6) The Registrar must determine the question mentioned in subsection (5) and may, if he or she considers it appropriate, order the grant of such a licence.
Source: Singapore Statutes Online (Attorney-General's Chambers), © Government of Singapore.
