Legislation Update 1999

Patents (Amendment No. 3) Rules 1999

Please kindly be informed that the Patents (Amendment No. 3) Rules 1999 has been gazetted on 19 November 1999. These Rules are therefore available for sale at the following address:

SNP Legal Publications
491 River Valley Road, #01-19/20 Valley Point, Singapore 248371
Tel: 6733 5794

It is to be noted that these Amendments came into operation on 20 December 1999. Features of some of the Amendments are as follows:

Alteration is made to some time periods and deadlines, giving applicants more time to comply with certain requirements. Some examples to the provisions to which the said time periods and deadlines are altered, are in relation to:
- the filing of the priority document(s)/translation(s) thereof;
- the filing of a request for a search and examination report;
- to the filing of the applicants' response to the written opinion issued by the Examiner;
- to the filing of the applicants' request for the Certificate of Grant.
A savings provision can be found in the Amendments to reflect clearly the application of the Amendments, addressing in particular to some of the provisions relating to the altered deadlines/time periods.
Alterations are made to Patents Forms 1, 5, 13, 14, 15, 37, 41, 47 and 53.

A brief overview of the amendments is available below.
For detailed analysis, please refer to the amendment legislation.

Brief overview of Patents (Amendment no. 3) Rules 1999
An overview of the Patents (Amendment No. 3) Rules 1999 is provided below. The summary is not exhaustive. Further reference should be made to the Patents Act and Rules.

Rule	Changes to the Deadline (months)/ Savings provision (if any)	Explanation
Rule 9(2A) - Furnishing of priority document	Deadlines (before 20 Dec 99) 22 from declared priority date (DPD). Note: Modified by Rule 28 [new applications filed under Section 20(3), 26(6) or 47(4)] Deadlines (as of 20 Dec 99) 28 from DPD or no later than the date of filing PF 14, whichever is the earlier. Note: Modified by Rule 28 [new applications filed under Section 20(3), 26(6) or 47(4)]. Savings provision: Rule 18(1)(a) Note Rule 18(2) & (3)	Give applicants more time to furnish the necessary documents to support their priority claim. This would also correspond with the other deadlines for search and examination making it easier for applicants to track deadlines. Also made provisions for cases where applicants file a request for the grant certificate before the 28th month time period. For such cases, they are required to file the priority documents no later than the date of filing PF 14, whichever is the earlier.
Rule 9(4) - Mention of corresponding provisions in PCT	Nil	Amendment Rules are to reflect in the Singapore provisions, the corresponding provisions in the PCT. Reference: Rule 6(5) of UK Patents Rules
Rule 9(5) - English translation of Priority Document	Deadlines (before 20 Dec 99) 22 from DPD. Note: Modified by Rule 28 [new applications filed under Section 20(3), 26(6) or 47(4)] Deadlines (as of 20 Dec 99) 28 from DPD or no later than the date of filing PF 14, whichever is the earlier. Note: Modified by Rule 28 [new applications filed under Section 20(3), 26(6) or 47(4)]. Savings provision: Rule 18(1)(a) Note Rule 18(2) & (3)	Give applicants more time to furnish the necessary documents to support their priority claim. This would also correspond with the other deadlines for search and examination making it easier for applicants to track deadlines. Also made provisions for cases where applicants file a request for the grant certificate before the 28th month time period. For such cases, they are required to file the priority documents no later than the date of filing PF 14, whichever is the earlier.
Rule 18(1) - Mention of inventor	Nil	Make clear that reference to Rule 86(7) should have been made to Rule 86(8).
Rule 23 - Page numberings	Nil	Make clear that indicating page numberings either on the top or bottom of the sheet, but not in the top or bottom margins is acceptable.
Rule 28 - New applications under section 20(3), 26(6) or 47(4).	Linked to Rule 9(2A) and (5) Savings provision: Rule 18(2) & (3)	Consequential changes to the reference made to Rule 9.
Rule 39 - Section 29(1)(c): IPC requirements	Nil	Removal of the IPC requirement at this 16th month stage.
Rule 43 - PF11/12 Section 29(4)	Deadlines (before 20 Dec 99) 22 from DPD/or 22 from date of filing if no DPD/or 22 from actual date of filing [new applications filed under Section 20(3), 26(6) or 47(4)] Deadlines (as of 20 Dec 99) 28 from DPD/or 28 from date of filing if no DPD/or 28 from actual date of filing [new applications filed under Section 20(3), 26(6) or 47(4)] Savings provision: Rule 18(1)(b)(i) Rule 18(1)(b)(ii)	The current options for search and examination. The changes relate only to the time periods. Applicants would be given more time to rely on their foreign search and exam results (if any). At the same time, they can still fall back on the local route if required/desired.
Rule 43 - Search Report issued to applicant within 1 month from the deadline	Deadlines (before 20 Dec 99) 23 from DPD/or 23 from date of filing if no DPD/or 23 from actual date of filing [new applications filed under Section 20(3), 26(6) or 47(4)] Deadlines (as of 20 Dec 99) 29 from DPD/or 29 from date of filing if no DPD/or 29 from actual date of filing [new applications filed under Section 20(3), 26(6) or 47(4)] Savings provision: Rule 18(1)(b)(i) & (ii)	Corresponding changes to the changes made to Rule 42
Rule 44 - Information for purposes of section 29(4).	Nil	Rephrasing of reference to the prescribed foreign patent offices. It is only to make consistent with the phraseology of Section 29(4).
Rule 45 - Modified Time Period to file PF 10 for supplementary Search Report	Deadlines (before 20 Dec 99) Applicant has within one month from the date of the Registrar's notification enclosing search report Deadlines (as of 20 Dec 99) Applicant has within two months from the date of the Registrar's notification enclosing search report	To provide applicants with more time, more flexibility.
Rule 46 - Response to written opinion	Deadlines (before 20 Dec 99) Three or four months from date of IPOS's notification enclosing written opinion. Deadlines (as of 20 Dec 99) Five months from date of IPOS's notification enclosing written opinion.	To provide applicants with more time, more flexibility. This gives applicants a five-month non-extendible response time across the board.
Rule 46 - Response to further written opinion	Deadlines (before 20 Dec 99) Three months from date of IPOS's notification enclosing further written opinion. Deadlines (as of 20 Dec 99) Five months from date of IPOS's notification enclosing further written opinion.	To provide applicants with more time, more flexibility.
Rule 46 - Establishment of the Search/Exam Reports	Deadlines (before 20 Dec 99) 39 from DPD/ or 39 from date of filing if no DPD/or 39 from actual date of filing [new applications filed under Section 20(3), 26(6) or 47(4)] Deadlines (as of 20 Dec 99) 51 from DPD/or 51 from date of filing if no DPD/or 51 from actual date of filing [new applications filed under Section 20(3), 26(6) or 47(4)]. Savings provision: Rule 18(1)(c)(i) Rule 18(1)(c)(ii)	This is a consequential change in view of the changes made to the deadlines for filing search and exam requests.
Rule 47 - Grant	Deadlines (before 20 Dec 99) 42 from DPD/ or 42 from date of filing if no DPD/or 42 from actual date of filing [new applications filed under Section 20(3), 26(6) or 47(4)] Deadlines (as of 20 Dec 99) 54 from DPD/or 54 from date of filing if no DPD/or 54 from actual date of filing [new applications filed under Section 20(3), 26(6) or 47(4)] Savings provision: Rule 18(1)(d)(i) Rule 18(1)(d)(ii)	This is a consequential change as the deadlines for the pre-grant requirements have been altered, and pushed back - thereby giving applicants a more workable time frame. We sought to determine the corresponding deadlines in other countries and we note that in general, 4.5 years (54 months) is the average time. Also made provisions for cases where they file a request for the grant certificate before the 28th month time period. For such cases, they are required to file the priority documents no later than the date they file their request for grant. It must be stressed that applicants having met all the requirements for grant need not wait for the last day (54 months) to file the request for the Grant Certificate and pay the Grant Fee.
Rule 51 - Renewals	Nil	There would be no issue of a certificate of renewal. IPOS would issue only a notification letter.
Rule 86 (Modifying rule 9) - PCT (National Phase) - modifying rule 9(2)(A) & (5)	Deadlines (before 20 Dec 99) Chapter I 20 + 2 from DPD/ or 20+ 2 from date of filing if no DPD Chapter II 30 + 2 from DPD/ or 30+ 2 from date of filing if no DPD Deadlines (as of 20 Dec 99) Chapter I 20 + 8 from DPD/ or 20+ 8 from date of filing if no DPD/ or when filing PF 14, which ever is the earlier Chapter II 30 + 8 from DPD/ or 30+ 8 from date of filing if no DPD or Before the date of filing of PF 14. Savings: Rule 18(1)(e)(i) Rule 18(1)(e)(ii)	See explanation in relation to Rule 9.If PF 14 is filed before the period modified by Rule 86(4)(c), Rule 9 would kick in and applicants would have to comply no later than the date of filing PF 14.
Rule 86 - PCT (National Phase)	Nil	Amendment Rules are to reflect in the Singapore provisions, the corresponding provisions in the PCT. Reference: Rule 85 of UK Patents Rules.
Rule 109 - Protection and compensation of persons affected by Extensions	Savings provision: Rule 18(1)(f)	To advertise the extensions of time only if application had already proceeded to be published (18th month). Also amended the scope of Rule 109 to make it consistent with the general spirit of the provision.
Rule 117 - transmittal fee	Nil	Amendment Rules are consistent with the corresponding provisions of the PCT i.e. IPOS can be reimbursed for transmitting application to PCT for PCT's action and take over. Reference: Rule 118 of UK Patents Rules
Rule 118 - PCT applications	Nil	Amendment Rules are to reflect in the Singapore provisions, the corresponding provisions in the PCT. Reference: Rule 119 of UK Patents Rules
Rule 118 - PCT applications - reference to PF 27 (should be PF 26)	Nil	Make clear that reference to PF 27 should have been made to PF 26.
Second Schedule - Forms	Nil	The changes made to the Forms in the main are aimed at guiding the applicants in furnishing information that would assist all in understanding the applicants' intentions when filing the said Form.
[Savings provision]	Nil	To reflect clearly the application of the Amendment Rules, addressing in particular to provisions relating to the altered deadlines/time periods.

Patents (Convention Countries) (Amendment No. 2) Order 1999
Oman has been gazetted as a convention country under Section 89(1) of the Patents Act (Cap. 221). This was done through the Patents (Convention Countries) (Amendment No. 2) Order 1999 (Gazette No. S334/99).

Copyright (Amendment) Bill 1999
The Copyright (Amendment) Bill 1999 was introduced in Parliament on Tuesday, 3 August 1999.

The introduction of the Bill was part of Singapore’s efforts to strengthen its intellectual property rights regime. The amendments updated Singapore’s copyright laws to keep pace with developments in the digital medium and new ways of exploiting works on the internet.

The amendments to the Copyright Act:

addressed various issues arising from the use of copyright material in a digital environment, such as:
- clarifying that copyright protection also extended to electronic and temporary copying;
- clarifying the liability of network service providers; and
- extending certain existing concepts in the Copyright Act to make them applicable in the digital environment;
gave greater rights to performers in relation to performances under the Act; and
improved the position of rights holders in relation to their re-broadcasting rights and re-transmission rights.

Patents (Amendment No. 2) Rules 1999
The Patents (Amendment No. 2) Rules 1999 (Gazette No. S 286/99) came into operation on 1 July 1999. It introduced the purchase of Patent Journals by post and prescribed the price of such purchases. Details can be found in the Services and Publications page.

Trade marks (Amendment) Rules 1999
The Trade Marks (Amendment) Rules 1999 were published in the Gazette, Electronic Edition on 24 May 1999 and came into operation on 4 June 1999 (Friday).

Please note that Forms TM Form 4, TM Form 9, TM Form 26, TM Form 37, TM Form 38, TM Form 39 have been amended. All applicants and agents are reminded to use the amended forms with effect from 4 June 1999.