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Home > Legislation > IP Legislation > Legislation Updates
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Legislation Update 2004
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The following is a summary of some of the amendments introduced in the Patents (Amendment) Act 2004 and the Patents (Amendment) Rules 2004. These amendments came into force on 1 July 2004.
For applications with a date of filing on or after 1 July 2004, applicants are no longer required to furnish prescribed details of corresponding applications or corresponding international applications.
For applications with a date of filing on or after 1 July 2004, such applications will be published as soon as possible after the expiry of 18 months from the priority date or where there is no priority date, the filing date of the application. The establishment of search results will no longer be a condition for publication.
Where before an application having a date of filing on or after 1 July 2004 is published, the applicant wishes to withdraw the application, he shall do so on PF 9A (2004) within 17 months from the priority date or where there is no priority date, the filing date of the application.
For applications with a date of filing on or after 1 July 2004, a response to a written opinion issued by an Examiner shall be made on PF 13A.
With the 1 January 2004 amendments to the Patent Cooperation Treaty, the concept of the International Preliminary Report on Patentability or IPRP was introduced. For PCT applications, having a date of filing on or after 1 July 2004 entering National Phase in Singapore, applicants can choose to rely on their IPRP (Chapter I) or IPRP (Chapter II) established during the PCT International Phase to meet the search and examination requirements of the Patents Act. If an applicant chooses to do so, he must inform the Registrar of his intention by filing PF 11C (2004).
For applications with a date of filing on or after 1 July 2004, new conditions have been added to the requirements for the grant of a patent. These include unity of invention and the requirement for each claim in the patent specification at the point the prescribed documents for grant are furnished and the fee for the grant of a patent is paid to be related to a claim that has been examined.
For patents granted on applications with a date of filing on or after 1 July 2004, the term of a patent may be extended on grounds under section 36A(1) of the Patents Act. These grounds are:
- There was an unreasonable delay by the Registrar in the granting of the patent;
- There was an unreasonable delay caused by a foreign patent office in the issuance of the patent relating to a corresponding application, or
- There was an unreasonable delay in obtaining marketing approval for a pharmaceutical product.
An application for the extension of the term of a patent shall be made on PF 54 (2004).
In general, for applications with a date of filing on or after 1 July 2004 or for applications where the 28th month period expires on or after 1 July 2004, priority document(s) is required to be furnished only upon the request of the Registrar.
With effect from 1 July 2004, any party can request an Examiner to search and examine any claim or claims of a patent on grounds under section 38A of the Patents Act. Such a request shall be made on PF 55.
Where a written opinion is issued by the Examiner and the proprietor wishes to respond to this written opinion, he shall do so on PF 13A.
Tables 1A and 1B summarise the new patents forms that are introduced on 1 July 2004:
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Table 1A: New forms to be used for applications with a date of filing on or after 1 July 2004 |
| PF 1 (2004)* |
Request for the Grant of a Patent under Section 25 |
| PF 9A (2004) |
Withdrawal of an Application for a Patent under Section 27(1) |
| PF 10 (2004)* |
Request for a Search Report or Supplementary Search Report |
| PF 11 (2004)* |
Request for a Search and Examination Report |
| PF 11B (2004)* |
Furnishing of Prescribed Information |
| PF 11C (2004) |
Notice of Intention to Rely on International Preliminary Report on Patentability under Section 29(2)(e)(ii) |
| PF 12 (2004)* |
Request for an Examination Report |
| PF 14 (2004)* |
Payment of Fee for Grant of a Patent under Section 30 |
| PF 45 (2004)* |
Request for Extension of Time or Period under Rule 108(3) |
| PF 45A (2004) |
Request for Extension of Periods under Sections 29(7) and 30(1)(a) |
| PF 46 (2004)* |
Request for Extension of Time or Period under Rule 108(4) |
| PF 47 (2004)* |
Additional Fee for Extension of Time or Period under Rule 108(6) |
| PF 54 (2004) |
Request for an Extension of the Term of a Patent under Section 36A |
* For applications with a date of filing before 1 July 2004, these requests are to be made on the current PF 1, PF 10, PF 11, PF 11B, PF 12, PF 14, PF 45, PF 46 or PF 47, whichever applicable.
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Table 1B: Other new forms |
| PF 13A |
Response to Written Opinion under Section 31 or 38A
Note: PF 13A is to be used for
- submitting a response to written opinion under Section 31 for an application with a date of filing on or after 1 July 2004
- submitting a response to written opinion under Section 38A for all patents
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| PF 55 |
Request for Search and Examination after Grant under Section 38A |
With regards to a response to Written Opinion under Section 31, PF 13 will continue to be in use for amendments to the specification of an application with a date of filing before 1 July 2004.
Amendments were made to the following Patents Forms:
- PF 13
- To allow for a request to amend the specification of an application, in response to a written opinion issued under Section 31 of the Patents Act for an application with a date of filing before 1 July 2004
- To allow for a request to amend the specification of an application in response to the Registrar’s notification under Section 30(6) of the Patents Act
- PF 10, PF 11, PF 11A, PF 11B, PF 12 and PF 34 – the titles of these forms will be amended
- PF 11B, PF 19, PF 23, PF 24 and PF 46 - the amendments introduced are to simplify the filing of these forms.
With effect from 1 July 2004, Patents Forms to be used in proceedings before the Registrar and any amendment of these forms will be published in Patents Journal A. A separate issue of Patents Journal A containing all patents forms will be made available for sale to the public on 1 July 2004.
Copies of the patents forms are available for downloading here.
For applications with a date of filing on or after 1 July 2004, a new Two-Track Application System has been introduced, comprising a default Fast Track system and a Slow Track system. Each Track has its own set of prescribed periods for the purposes of complying with the search and examination and grant requirements within the application process.
The prescribed periods under the Fast Track system shall apply by default when an application is first filed. These periods shall continue to apply until a ‘Request for Extension of Periods under Sections 29(7) and 30(1)(a)’ is filed on PF 45A (2004) within 39 months from the priority date or where there is no priority date, the filing date of the application. Once PF 45A (2004) is approved by the Registry, the prescribed periods under the Fast Track system will be replaced by the later prescribed periods under the Slow Track system.
The new prescribed periods under both the Fast Track and Slow Track systems, and for filing the request to move from the Fast Track system to the Slow Track system are summarised in Tables 2A to 2C below:
| Table 2A: Prescribed Periods Under The Fast Track Application System |
| Request for a Search Report or Supplementary Search Report |
PF 10 (2004) |
13 |
| Request for a Search and Examination Report |
PF 11 (2004) |
21 |
| Furnishing of Prescribed Information |
PF 11B (2004) |
42 |
| Notice of Intention to Rely on International Preliminary Report on Patentability under Section 29(2)(e)(ii) |
PF 11C (2004) |
42 |
| Request for an Examination Report |
PF 12 (2004)
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21 |
| Payment of Fee for Grant of a Patent under Section 30 |
PF 14 (2004)
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42 |
| Table 2B: Prescribed Period To File The Request To Move From The Fast Track Application System To The Slow Track Application System |
| Request for Extension of Periods under Sections 29(7) And 30(1)(a) |
PF 45A (2004) |
39 |
| Table 2C: Prescribed Periods Under The Slow Track Application System |
| Request for a Search Report or Supplementary Search Report |
PF 10 (2004) |
No change from Fast Track |
| Request for a Search and Examination Report |
PF 11 (2004) |
39 |
| Furnishing of Prescribed Information |
PF 11B (2004) |
60 |
| Notice of Intention to Rely on International Preliminary Report on Patentability under Section 29(2)(e)(ii) |
PF 11C (2004) |
60 |
| Request for an Examination Report |
PF 12 (2004)
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39 |
| Payment of Fee for Grant of a Patent under Section 30 |
PF 14 (2004)
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60 |
1 Generally, the prescribed periods are calculated from the declared priority date of the application or where the application contains no declared priority date, from the date of filing of the application.
This Notification was gazetted on 25 June 2004 and it declared that the Trade Marks (Amendment) Act 2004, would come into operation on 1 July 2004.
Notification: The Trade Marks (Amendment) Act 2004 has been passed by Parliament on 15 June 2004 and assented by the President on 24 June 2004.
Introduces a definition of a “well known mark” and some factors which may be relevant in deciding whether a trade mark is well known.
A trade mark will be refused registration if the use of that mark in relation to goods or services for which it is sought to be registered, would cause dilution in an unfair manner of the distinctive character of the well known mark or would take unfair advantage of the distinctive character of the well known mark, where the well known trade mark is well known to the public at large.
The owner of a well known trade mark is entitled to restrain the use of any business identifier which is identical with or similar to a well known trade mark which is well known to the public at large, where the use would cause dilution in an unfair manner of the distinctive character of the trade mark or take unfair advantage of the distinctive character of the well known trade mark.
An application for registration of a trade mark will be accorded a filing date once certain minimum filing requirements have been satisfied.
To provide a grace period of six months after the expiry of the registration of the trade mark within which a proprietor may renew the registration upon payment of a late fee without having to seek to restore the trade mark.
Trade marks no longer have to be visually perceptible.
Any use which constitutes fair use in comparative commercial advertising or promotion, is for a non-commercial purpose; or is for the purpose of news reporting or news commentary, is not infringement.
Where the infringement involves the use of a counterfeit trade mark, the court may award damages and an account of profits attributable to the infringement that have not been taken into account in computing the damages or statutory damages.
Mere failure to record a licence does not render it ineffective against a person acquiring a conflicting interest in or under the trade mark in ignorance. Registration is not a pre-requisite to qualify for damages or account of profits for infringement.
The information which proprietors have to give to Customs in the notice to object to the importation of infringing goods has been relaxed.
There are also provisions for ex officio border measures by Customs officers.
It is now clarified that priority may only be claimed from the first application filed in a convention country in respect of those goods or services.
Certain administrative procedures are now under the purview of the Registrar. For example, (a) the forms to be used in proceedings before the Registrar; and (b) the hours of business of the Registry and the days which are treated as excluded days.
Conclusion: The Trade Marks (Amendment) Act 2004 came into operation 1st July 2004.
The Trade Marks (Amendment) Act 2004 can be purchased online at SNP Corporation Ltd (www.snpcorp.com/webshop/). It is also available at the website of www.egazette.com.sg for a limited period.
The following is a summary of some of the amendments proposed in Trade Marks (Amendment) Rules 2004 which are targeted came into force on 1 July 2004:
The requirement of lodging five artwork copies of the trade mark in colour in the following circumstances is removed: where the application for registration is of a trade mark that is in colour, colour as a trade mark or a trade mark that is subject to a colour limitation.
In order to simplify the application process, Form TM 5 is no longer required. The amendment further makes it clear that it is possible to claim priority from more than one priority application and for some but not all the goods/services in the current application. Applicant will be required to state the goods/services covered by the priority in the application form.
This amendment removes the current requirement that an application to change name has to be accompanied by relevant documentary evidence of the change.
This clarifies the procedure for filing Notice of Opposition to an amendment of an application for registration after publication where the amendment affects the representation of the trade mark or the goods or services.
Renewal of registration of a trade mark may still be made within a further period of six months after the expiry of the trade mark. This is done by way of late application for renewal via Form TM 24 with the fee of $370.
Restoration period is now within six months from the date of the removal of the trade mark from the register.
This provides a time period of one month for the party awarded costs after hearings before the Registrar to apply for taxation of costs.
This form is for late application for renewal of registration.
Form TM 11 will now be used in place of Form TM 36 (Notice of opposition to application for alteration of a registered trade mark). Forms TM 5 and TM 47 will be deleted.
The forms to be used in proceedings before the Registrar and any amendment of such forms will now be published in the Trade Marks Journal. A separate edition of the Trade Marks Journal containing the consolidated forms will be on sale from 1 July 2004. For the first edition, to ensure smooth implementation, we are retaining the majority of the existing forms. Please see separate Notice on Forms for details of the changes to the forms.
The following is a summary of some of the amendments proposed in Trade Marks (International Registration)(Amendment) Rules which came into force on 1 July 2004:
This amendment removes the adverse consequences for failure to record the grant of a licence under a protected international trade mark.
The amendment also clarifies that a person who becomes a proprietor of a protected international trade mark (Singapore) by virtue of a grant of security interest or relevant transaction is not entitled to damages, account of profits or statutory damages in respect of any infringement occurring after the date of the transaction and before the transaction is recorded in the International Register.
The forms to be used in proceedings before the Registrar and any amendment of such forms will now be published in the Trade Marks Journal. A separate edition of the Trade Marks Journal containing the consolidated forms will be on sale from 1 July 2004. For the first edition, to ensure smooth implementation, we are retaining the majority of the existing forms. Please see separate Notice on Forms for details of the changes to the forms.
The following is a summary of some of the amendments proposed in Trade Marks (Border Enforcement Measures) (Amendment) Rules 2004 which came into force on 1 July 2004:
Prescribed Period under Section 93A(3) of the Act
This sets out the prescribed periods under Section 93A(3) by which the proprietor of the registered trade mark has to do certain acts or the detained goods will be released to the importer, exporter or consignee of the goods:
- prescribed period of 48 hours to give notice, submit documents/information/fees and to deposit money/provide security under Section 93A(3)(a);
- prescribed period of 48 hours to deposit money/ provide security and 10 working days to institute action/serve Order of Court under Section 93A(3)(b).
The Schedule setting out the form of the notice under Section 82(1) has been amended.
The following is a summary of some of the amendments proposed in the Registered Designs (Amendment) Rules 2004 which are targeted to come into force on 1 January 2005:
Section 20 of the Registered Designs Act relating to the date of registration has been amended. The amended Section 20 reads:
“Date of registration 20. —(1) A design when registered shall be registered as of the date on which the application for registration is filed, and that date shall be deemed for the purposes of this Act to be the date of its registration.”
The amendment will be effective only in relation to applications lodged on and from the 1 January 2005. With effect from the 1 January 2005 therefore, the date of registration of a design which has a priority claim, is the date of its application at the Registry.
Priority documents are no longer required to be filed with an application which claims priority. However, the Registrar has the discretion to request a copy of such documents where the need arises. The amendment to the rule also makes clear that multiple priorities may be claimed.
The forms to be used in proceedings before the Registrar and any amendments to such forms will now be published in the Designs Journal. Please note however, the existing forms have not been amended in this round of amendments and as such, the Designs forms in the IPOS website may still be used.
The Designs Registry has published a special edition of the Designs Journal (No 01A/2005) which contains the revised edition of the Designs Forms.
The revised forms are also downloadable from IPOS' website after 15 January 2005. The updated forms are marked "V01/01/05" at the bottom left corner of each page to distinguish them from the older version of the forms. All design applications are required to be submitted using these forms from 17 January 2005.
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Rule 14 has been amended to clarify that the Registrar may issue practice directions to indicate the maximum number of views of a representation, the dimensions of each view. The requirement that the representations must be in the form of a drawing or photograph suitable for reproduction is retained.
The amendment clearly states that a late fee will have to be paid if an application for the extension of registration is filed within six months after the date of expiry of the current period of registration.
The amendment clarifies what is required for applications relating to the different registrable transactions as listed in Section 34(2) of the Registered Designs Act. The amendment also clarifies the consequence of non-compliance with the requirements.
Rules 40 to 44 have been amended and new Rules 49A (Extension of time in revocation proceedings), 49B (Costs in uncontested revocations), 49C (intervention by third parties), 52 (Right of affected party to be heard) and Rule 54 (Evidence in proceedings before Registrar) to mirror the established opposition procedures in the Trade Marks Rules. The new Rule 47A introduces a Pre-hearing review procedure and rule 60A, the Case Management Conference into the Rules.
A new Part VIIA has been inserted in the Rules which govern applications for costs and the procedures for taxation of costs. A new Fourth Schedule relating to the Scale of Costs is introduced.
Rule 57 has been amended to prescribe the procedure for requesting extensions of time. Such requests will require a notice to be sent to all parties affected by the extension and the requestor must obtain the consent of all these relevant parties. The Registrar has the discretion to refuse to grant an extension in situations where there are no good and sufficient reasons for an extension or where the parties likely to be affected by the extension have not been notified that an extension is being sought. The Registrar also has discretion to allow an extension without having to conduct a hearing if he is satisfied that there is good and sufficient reason to do so.
The hours of business and excluded days will now be published by way of Practice Directions. |
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Last updated on 05 Oct 2011 |
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