Singapore - Revocate a Patent

Advertisement

Procedure

Apply Online
A person may apply to revoke a granted patent by filing an application for revocation. The procedure is as follows:

NOTE: All the application form mentioned in the below steps are given in the following link

Step 1: Application for Revocation

1. The applicant has to file a Form PF35 link and a statement of grounds that includes the facts upon which the applicant relies and the relief which he seeks (together with payment of S$500) to Intellectual Property Office of Singapore
2. The applicant has to send a copy to the proprietor a copy of the same Form PF35 and statement at the same time that they are filed to Intellectual Property Office of Singapore.
   

Step 2: Counter- Statement

1. Within 3 months from the date of receipt of the application for revocation from the applicant, if the proprietor wishes to contest the application, the proprietor must file a counter-statement in Form HC6 link that includes the grounds on which the application is contested (together with payment of S$360).
2. Send to the applicant a copy of the same Form HC6 at the same time that it is filed to Intellectual Property Office of Singapore.

   Note: If the step- 2 is not complied with, the proprietor will not be allowed to take part in the subsequent proceedings. The authority will consider the application for revocation as if each specific fact set out in the statement were conceded, except in cases where it is contradicted by a document in authority’s possession.

3. At any point during the proceeding, a party may request for an extension of time under Patents Rule 108A. The procedure is as follows:
4. When the proprietor files a counter-statement, he may at the same time file an amendment of the specification by submitting the proposed amendment together with Form HC6. Send to the applicant a copy of the amendment at the same time that it is filed Intellectual Property Office of Singapore.
5. The proposed amendment will be advertised in the Patents Journal. A person may obtain further details of the patent by filing Form CM10 (together with payment of S$30).
6. Within 2 months from the date of advertisement, a person may oppose the proposed amendment by filing a notice of opposition in Form PF58. The procedure is as follows:
7. File a Form PF58 with Intellectual Property Office of Singapore and a statement that includes the facts upon which the opponent relies and the relief which he seeks (together with payment of S$480).
8. Send to the proprietor a copy of the same Form PF58 and statement at the same time that they are filed with Intellectual Property Office of Singapore.
   

Step 3: Case Management Conference

1. The revocation proceedings are suspended from the date that the counter-statement is filed. Parties will be encouraged to engage each other to explore dispute resolution options.
   

Step 4: Applicant’s Evidence

1. The applicant may file a statutory declaration setting out the evidence he wishes to adduce in support of his case. The procedure is as follows:
2. Within 3 months from the date of issuance of evidential timelines, file with them a statutory declaration in the Evidence by Initiator Form.
3. Send to the proprietor a copy of the same statutory declaration at the same time that it is filed with Intellectual Property Office of Singapore.

Note: If these steps are not complied with, the applicant is deemed to have abandoned his application.

STEP 5: Proprietor’s decision

1. Optionally, after receipt of the applicant’s statutory declaration, the proprietor may file a statutory declaration setting out the evidence he wishes to adduce in support of his case. The procedure is as follows:
2. Within 3 months from the date of receipt of the applicant’s statutory declaration, file with them a statutory declaration in the Evidence by Respondent Form.
3. Send to the applicant a copy of the same statutory declaration at the same time that it is filed with Intellectual Property Office of Singapore.

Step 6: Applicant’s Evidence in reply

1. Optionally, after receipt of the proprietor’s statutory declaration, the applicant may file a statutory declaration setting out further evidence confined to matters strictly in reply to the proprietor’s statutory declaration. The procedure is as follows:
2. Within 3 months from the date of receipt of the proprietor’s statutory declaration, file with us a statutory declaration in the Evidence-In-Reply by Initiator Form.
3. Send to the proprietor a copy of the same statutory declaration at the same time that it is filed with Intellectual Property Office of Singapore.
4. After this stage no further evidence may be filed unless we specifically allow.

Step 7: Case Management conference

1. At any time after the completion of the filing of evidence by the parties, we will direct the parties to attend a case management conference. We may consider any matter including re-examination and amendment of the specification.

Step 8: Re- examination

1. The applicant for revocation may be directed to request for re-examination, within 2 months from the date of our direction. The procedure is as follows:
2. File a Form PF36 (together with payment of S$900 and any additional items that the officials specify e.g. security for costs) to Intellectual Property Office of Singapore.
3. If these steps are not complied with, the applicant shall be deemed to have abandoned his application.
4. The re-examination will take into account the representations of both parties, as well as any amendment of the specification. We will provide the re-examination report to both parties.
   

Step 9. Case management conference

1. The authority directs the parties to attend a case management conference to discuss the conduct of the case in light of the re-examination report, as well as to give directions relating to the amendment of specification, if any. If the proposed amendment is allowed, the proprietor shall file a clean copy of the amended specification within 1 month from the date of our direction.

Step 10: Hearing

1. The authority will notify the parties of a date on which we will hear arguments on the case. The parties shall file with us their written submissions and bundles of authorities in the Written Submissions & Bundle of Authorities Form at least 1 month before the date of hearing and shall at the same time exchange with one another their respective written submissions and bundles of authorities. Any party who intends to appear at the hearing shall file with us Form HC1 (together with payment of S$715) before the hearing.

Step 11: Ground of decision

1. The authority will inform the parties of their grounds of decision.
   

Step 12: Appeal

1. The parties can appeal the officials decision within 6 weeks after the date of their decision. An appeal should be filed at the High Court.

Step 13: Taxation

1. After we issue a decision, costs will usually be awarded to the winning party. The parties should try to agree on the sum for these costs between themselves. If the parties cannot agree on the sum to be paid to the winning party, the winning party can apply for a taxation hearing. This is done by filing with us a bill of costs in the Bill of Cost Form within 1 month from the date of our decision. Send to the other party a copy of the same bill of costs at the same time that it is filed with Intellectual Property Office of Singapore.
2. The paying party can object to any of the itemised costs by marking the bill of costs with “Agree” or “Disagree” against each itemised cost. This is done by filing with us the Marked Bill of Cost Form within 1 month after receipt of the bill of costs. Send to the other party a copy of the same marked bill of costs at the same time that it is filed with Intellectual Property Office of Singapore.
3. After taxation, the party awarded costs can file Form HC2 (together with payment of S$80) to obtain a taxation certificate which can be enforced in court.
   

Advertisement

Required Documents

• Particulars and NRIC of the applicant
• Title of invention
• Copy of patent
• UEN/ Company Code
• Sole Proprietor or Partners' Name
• Certificate of incorporation
• Agent particulars and UEN (If the application form is done by agent)
  

Office Locations & Contacts

INTELLECTUAL PROPERTY OFFICE OF SINGAPORE
1 Paya Lebar Link
No.11-03
PLQ 1, Paya Lebar Quarter
Singapore 408533
Tel: 6339 8616
Contact details link
Office location link

Eligibility

Any person or a company, who needs to restore the patent are eligible to make the application.

Fees

• The applicant has to pay the prescribed fee of $500 to restore the patent.
• The applicant can also find the fee details in the given link
  

Validity

The validity of the restored patent is one year.

Documents to Use

Application form link

Sample Documents

Please attach sample completed documents that would help other people.

Processing Time

Processing time of this procedure completed within 15 -30 days.

Related Videos

Videos explaining the procedure or to fill the applications.
Attach videos using the following tag <&video type='website'>video ID|width|height<&/video&> from external websites.
Please remove the '&' inside the tags during implementation.
Website = allocine, blip, dailymotion, facebook, gametrailers, googlevideo, html5, metacafe, myspace, revver,
sevenload, viddler, vimeo, youku, youtube
width = 560, height = 340, Video ID = Can be obtained from the URL of webpage where the video is displayed.
e.gIn the following url 'http://www.youtube.com/watch?v=Y0US7oR_t3M' Video ID is 'Y0US7oR_t3M'.

Instructions

• Applicants must complete the application form before submitting it. Incomplete applications will not be accepted.
• Applicants must provide genuine information while applying for this procedure.
• The payment is made with:
  • NETS
  • GIRO
  • cash card or credit card
    

Required Information

• Name
• Nationality
• Resident Status
• NRIC/FIN/Passport No
• Employment Pass
• Date of Birth
• Gender
• Residential Address
• Residential No
• Mobile No
• Email Address
• Educational Qualifications
• Work Experience
  

Need for the Document

The Patents Act provides certain safeguards for restoring a lapsed patent. Patent lapsed, due to non-payment of renewal/maintenance fee can be restored within eighteen months from the date of lapse. Within one year of an application for restoration of patent that lapsed should be made. Because, a patent is an exclusive right granted for an invention. In other words, patent protection means that the invention cannot be commercially made, used, distributed, imported, or sold by others without the patent owner's consent.

Information which might help

Guidelines link

Other uses of the Document/Certificate

Please explain what are other uses of obtaining this document/certificate.
e.g. Birth Certificate can be used as proof of identity.

External Links

Place some external links which might help.

Others

More information which might help people.