Legislation Update 2001

The following is a brief summary of the main amendments:

The 8th Edition of the Nice International Classification of Goods and Services
The Third Schedule of the Trade Marks Rules is amended to give effect to the 8th Edition of the Nice Classification of Goods and Services by reflecting the class headings of new Classes 42, 43, 44 and 45. This amendment came into operation on 1 January 2002.

E-filing of Forms TM 1, TM 4, TM 9, TM 19, TM 26 and TM 49
The Trade Marks Rules as amended by the Amendment Rules 2001 will provide for the electronic filing of six types of application forms. E-filing, which was implemented on 15 January 2002, is an alternative mode of filing Forms TM , TM 4, TM 9, TM 19, TM 26 and TM 49.

Unlike applications which are filed manually, applications which are electronically filed on a working week day or Saturday will continue to be accepted and given a filing date bearing the same date as long as they are successfully received by the computer server by 11.59pm that day.

The Trade Marks Registry will continue to allow these forms to be filed manually. However, there will be a slight increase in the fee for filing the forms manually. This is to encourage applicants to e-file.

Streamlining of trade marks examination procedure, in particular, by the filing of declaration in new Form TM 5 to support priority claims
With effect from 15 January 2002, it is no longer necessary for applicants to file priority documents in all cases where priority is claimed in applications for registration. Instead, applicants (or their agents) need only file a declaration in Form TM 5 stating the particulars of the priority claim. Priority claims will be accepted on the basis of Form TM 5, duly completed and filed. However, the Registrar will continue to exercise her discretion and request for priority documents to be filed to verify the priority claim where there are grounds to suspect that the declaration in Form TM 5 is untrue. There is no fee for the filing of Form TM 5 which must be filed manually only and need not be filed together with Form TM 4 or Form TM 9.

Others:

Amendment to Form TM 1
There are slight changes to Form TM 1 to cater for Madrid Protocol cases. The same Form TM 1 is used for both national cases and Madrid Protocol cases. This change took effect from 15 January 2002.

Amendment to Form TM 23
Form TM 23 is amended to give effect to the Oaths and Declarations Act 2000. This change took effect from 15 January 2002.

New scanning fee for search purposes
With effect from 15 January 2002, we charge for the use of our scanner in the Public Search Room for picture mark search purposes. The fee will be $1 for each page scanned.

Patents (Amendment) Act 2001 [Act No. 28/2001]
This amendment was passed by Parliament and the President's assent was obtained in August 2001. This amendment in brief, includes changes to the provisions in the Patents Act relating to:

• the regulation of patent agents;

• the introduction of prescribed patents forms for compliance pursuant to Section 29(1)(c) and Section 29(4) of the Patents Act; and
• the general streamlining of patent processes.

• Section 6 (introduction of prescribed patents forms for compliance pursuant to Section 29(1)(c) and Section 29(4) of the Patents Act) and
• Section 14 (Part XIX on patent agents)

• provisions on periods prescribed for formulating claims to complete patent applications if they were not furnished at the time of filing; and
• provisions making clear the translation requirements of non-English foreign search reports etc. that are relied upon under Rule 42 of the Patents Rules

• modifying certain procedural requirements relating to applications and grants of patents;
• facilitating the implementation of an electronic patent register and the maintaining of information in an electronic environment; and
• dispensing with the need to Gazette new entrants to the Paris Convention and WTO as convention countries - the latest list of member states can be found in the Websites of WIPO (for the Paris Convention) and WTO (for the WTO/TRIPS Agreement)http://www.wipo.int/treaties/ip/paris/index.html
  http://www.wto.org/english/thewto_e/whatis_e/tif_e/org6_e.htm

Patent Agents

b) Under the Patents Act, Sections 104 and 105 [except for Section 105(7)] were not brought into force with the rest of the Act. This was to allow time for our patent regime to mature before we start regulating our own patent agent profession. More than five years have since passed and we are ready to have our own regulated patent agent profession.

c) The provisions in this Bill provide for the regulation of patent agents. [A flowchart is annexed herewith as a guide to reading the proposed section 105.] The changes include provisions relating to:

• the register of patent agents;
• the making of rules (including transitional matters) to regulate the registration process;
• the making of rules to regulate the conduct and practice of a registered patent agent
• who may carry on a business, practice or act as a patent agent
• who may describe, hold or permit to be described or held out as a patent agent

• administer the systems of protection of Intellectual Property(IP) in Singapore (particularly the registration of trade marks, patents and designs)
• provide administrative support to the Copyright Tribunal (the Copyright Tribunal will still remain separate from the statutory board but IPOS will provide administrative support for the Tribunal to perform its functions)
• maintain and disseminate IP information and documentation (this will include the functions previously undertaken by the National Patent Information Centre)
• represent the Government internationally on IP matters
• advice the Government on IP policies (including apart from trade marks, patents and designs, also copyright, integrated circuits and geographical indications)
• engage in training and exercise regulatory functions over IP agents .
  manage co-operation and exchange programmes with other organisations and IP offices.