Patents (Amendment) Bill
Bill No. 6/2017.
Read the first time on 6 February 2017.

REPUBLIC OF SINGAPOREGOVERNMENT GAZETTEACTS SUPPLEMENT
Published by Authority
NO. 21]THURSDAY, APRIL 13[2017First published in the Government Gazette, Electronic Edition, on 11 April 2017 at 5 pm.

The following Act was passed by Parliament on 28 February 2017 and assented
to by the President on 5 April 2017:—

REPUBLIC OF SINGAPORE
No. 18 of 2017.
I assent.
TONY TAN KENG YAM,President.
5 April 2017.
A BILL
intituled
An Act to amend the Patents Act (Chapter 221 of the 2005 RevisedEdition).
Be it enacted by the President with the advice and consent of theParliament of Singapore, as follows:2

NO. 18 OF 20172

Short title and commencement
1. This Act is the Patents (Amendment) Act 2017 and comes into
operation on a date that the Minister appoints by notification in theGazette.
5

Amendment of section 14
2. Section 14 of the Patents Act is amended —(a) by deleting paragraph (c) of subsection (4) and substituting
the following paragraph:10

1520“(c) the disclosure was due to, or made inconsequence of, the inventor displaying
the invention at an internationalexhibition;”;(b) by deleting the full‑stop at the end of paragraph (d) ofsubsection (4) and substituting the word “; or”, and byinserting immediately thereafter the following paragraph:“(e) subject to subsections (5A) and (5B), thedisclosure was made to the public by theinventor, or by a person who obtained thematter directly or indirectly from theinventor, in any circumstances notdescribed in paragraphs (a) to (d).”;(c) by inserting, immediately after subsection (5), thefollowing subsections:2530“(5A) Subsection (4)(e) applies to the disclosure ofmatter constituting an invention due to, or inconsequence of, the publication by an intellectualproperty administrator (being a person who obtained
the matter directly or indirectly from the inventor) of
an application for an intellectual property right (being
an application containing the matter, but not being theapplication for a patent mentioned in subsection (4)),
or a registration of an intellectual property right
pursuant to such an application, only if —

PATENTS (AMENDMENT)
33(a) the application was filed, without theconsent of the inventor, by a person whoobtained the matter directly or indirectlyfrom the inventor; or(b) the publication was erroneous by reason
that —

5(i) the application had been withdrawn,
refused or abandoned before the dateof the publication; and(ii) consequently, the publication was not
required under the law (whether ofSingapore or elsewhere) or treaty
governing the application.

10(5B) For the purposes of subsection (4)(e), where —(a) the disclosure of matter constituting an
invention is due to, or in consequence of,the publication by an intellectual property
administrator (being a person who obtained
the matter directly or indirectly from theinventor) of an application for an
intellectual property right (being anapplication containing the matter, but not
being the application for a patent mentioned
in subsection (4)), or a registration of an
intellectual property right pursuant to suchan application; and(b) the publication was erroneous by reason
that the publication occurred earlier thanprovided under the law (whether ofSingapore or elsewhere) or treaty
governing the application,
the matter is to be treated as disclosed to the public on
the date when the publication should have occurredunder that law or treaty.”;

15202530

4NO. 18 OF 2017
4(d) by inserting, immediately before subsection (6), thefollowing subsection:“(5C) If the applicant relies on any circumstances
described in any paragraph of subsection (4) when —510(a) complying with section 29(1)(b) or (c), (3)or (9); or(b) making a request under section 29B(1) for areview of an examination report issued
under section 29(4) or a search andexamination
reportissuedundersection 29(5),the applicant must file written evidence complying
with the prescribed requirements in support of theapplicant’s reliance on those circumstances.”; and15(e) by inserting, immediately after subsection (7), thefollowing subsection:“(8) In this section —“foreign intellectual property office” means —20(a) any national or regional office outside
Singapore that performs functions
similar to those that are performedby —(i) the Registry;

2530(ii) the Registry of Plant Varieties
established under section 7 of
the Plant Varieties Protection
Act (Cap. 232A);(iii) the Registry of Designs
established under section 51 ofthe Registered Designs Act(Cap. 266); orPATENTS (AMENDMENT)
55(iv) the Registry of Trade Marksestablished under section 64 oftheTradeMarksAct(Cap. 332);(b) the International Bureau; or5(c) the International Bureau as defined in
section 2(1) of the Registered Designs
Act or section 2(1) of the Trade Marks
Act;“intellectual property administrator” means —10(a) the Registrar;(b) the Registrar of Designs;(c) the Registrar of Plant Varieties;(d) the Registrar of Trade Marks; or(e) a foreign intellectual property office;“Registrar of Designs” means the Registrar ofDesigns appointed under section 49 of theRegistered Designs Act, and includes aDeputy Registrar of Designs and anAssistant Registrar of Designs appointed
under that section;“Registrar of Plant Varieties” means the Registrarof Plant Varieties appointed under section 5 ofthe Plant Varieties Protection Act, andincludes a Deputy Registrar of Plant
Varieties and an Assistant Registrar of Plant
Varieties appointed under that section;“Registrar of Trade Marks” means the Registrarof Trade Marks appointed under section 62 ofthe Trade Marks Act, and includes a Deputy
Registrar of Trade Marks and an Assistant
Registrar of Trade Marks appointed under thatsection.”.

15202530

6NO. 18 OF 2017
6Amendment of section 29
3. Section 29 of the Patents Act is amended —(a) by inserting, immediately before the word “file” insubsection (1)(d), the words “subject to subsection (11A),”;
510(b) by deleting the word “The” in subsection (9) andsubstituting the words “Unless the request undersubsection (1)(b), (c) or (d) or (3) for the examinationreport, search and examination report or supplementary
examination report is withdrawn under subsection (10) or(11), the”;(c) by deleting subsections (10) and (11) and substituting thefollowing subsections:15“(10) Despite subsection (1), where an applicant has
filed a request for an examination report undersubsection (1)(c) or (3), or a request for a search andexamination report under subsection (1)(b), theapplicant may —(a) withdraw that request —25(i) in any case where an Examiner has
given a written opinion undersubsection (7), and the applicant has
not responded to the written
opinion — at any time before theexpiry of the prescribed period
mentioned in subsection (9)(a); or30(ii) in any other case — at any time
before the examination report orsearch and examination report isissued under subsection (4) or (5);and20(b) subject to subsection (11A), file a request
for a supplementary examination reportunder subsection (1)(d) within theprescribed period for that request.

PATENTS (AMENDMENT)
77(11) Despite subsection (1), where an applicant has
filed a request for a supplementary examination reportunder subsection (1)(d), the applicant may —(a) withdraw that request —(i) in any case where an Examiner has
given a written opinion undersubsection (8), and the applicant has
not responded to the written
opinion — at any time before theexpiry of the prescribed period
mentioned in subsection (9)(a); or

510(ii) in any other case — at any time
beforethesupplementary
examination report is issued undersubsection (6); and15(b) file a request for a search and examination
report under subsection (1)(b) or a request
for an examination report undersubsection (1)(c) or (3) within theprescribed period for that request.

20(11A) Subsections (1)(d) and (10)(b) do not apply
unless —(a) in any case where the application in suit is anew application mentioned in section 20(3),26(11) or 47(4) — the actual date of filingof the application in suit is before theprescribed date; or(b) in any other case — the date of filing of theapplication in suit is before the prescribeddate.”;(d) by deleting paragraph (a) of subsection (12) andsubstituting the following paragraph:“(a) subject to subsection (13), if the applicant
fails to do one of the following:2530

8NO. 18 OF 2017
8(i) comply with paragraph (b), (c) or (d)of subsection (1) within the period
prescribed under that subsection forthat paragraph;5(ii) where subsection (3) applies, comply
with that subsection;”;(e) byinserting,
immediatelyafter
thewords“subsection (1)(c)” in subsection (12)(c), the words“or (3)”; and10(f) by inserting, immediately after subsection (12), thefollowing subsections:“(13) Where —15202530(a) after receiving the search report undersubsection (2)(b) from the Registrar, theapplicant does not file a request for anexamination report under subsection (3)within the prescribed period mentioned inthat subsection; and(b) the time prescribed for filing a request foran extension of the prescribed period
mentioned in subsection (3) expires
before, or within 3 months after, the dateof commencement of section 3(f) of thePatents (Amendment) Act 2017,
the application is treated as abandoned if the applicant
fails to file the request for an examination report undersubsection (3) within 6 months after that date.
(14) In this section, “actual date of filing”, inrelation to an application in suit that is a new
application mentioned in section 20(3), 26(11) or47(4), means the actual date of filing of the new
application, and not the date of filing of the earlier
application mentioned in section 20(3) or 26(11) or of
the application for the patent to which the reference

PATENTS (AMENDMENT)
99

relates mentioned in section 47(4), as the case maybe.”.
Saving and transitional provisions
4.—(1) Despite section 2(a), section 14(4)(c) of the Patents Act as inforce immediately before the date of commencement of section 2(a)continues to apply to or in relation to any application for a patent thedate of filing of which is before that date.
(2) Section 2(b), (c) and (e) does not apply to any disclosure ofmatter constituting an invention, made to the public before the date ofcommencement of section 2(b), (c) and (e).
(3) Section 2(d) does not apply to or in relation to any application
for a patent the date of filing of which is before the date ofcommencement of section 2(d).

EXPLANATORY STATEMENT
This Bill seeks to amend the Patents Act (Cap. 221) for the following main
purposes:(a) to extend the circumstances in which disclosures made prior to thefiling of a patent application are to be disregarded during thedetermination of the state of the art, when assessing the novelty andinventive step of an invention which is the subject of a patent or patentapplication;(b) to restrict the option of filing a request for a supplementary examination
report to an applicant whose patent application is filed before aprescribed date;(c) to make the following changes to the search and examination procedurein the patent application process:(i) to provide an applicant with greater flexibility to withdraw arequest for an examination report, a search and examination
report, or a supplementary examination report;(ii) to treat a patent application as abandoned unless the applicant
complies with one of the requirements in section 29(1)(b), (c) or(d) or (3) to request for an examination report, a search and510