02 September, 2014
Spruson

Lapsed patent restoration requirements changed

Lapsed patent restoration requirements changed

Singapore has moved to a positive grant patent system with amendments to the Singapore Patents Act and Rules taking effect on February 14 2014. This will affect all Singapore patent applications lodged in Singapore on or after this date.

However, the term of a patent remains at 20 years from the date of filing of the application as long as the patent is maintained through the payment of annual renewal fees.

Renewal fees are only payable for a Singapore patent application after it becomes granted. Typically, renewal fees are payable annually for the fifth year onwards, in advance of the year to which they relate and such renewal fees can only be paid within the three months preceding their due date. For a patent granted after 45 months from its accorded filing date, renewal fees that are ostensibly due before grant (including any fees due in respect of the preceding years) are not due until three months from the date of grant of the Singapore patent.

If a due date for paying a renewal fee has been missed, there is a grace period of six months for attending to the missed renewal fee from the date of expiration, upon payment of a penalty fee. If the renewal fee is not paid by the end of this grace period, the patent cannot be renewed without formal restoration proceedings.

One of the changes to the Singapore patent system concerns the prescribed period made available for the restoration of patents that have lapsed by reason of a failure to pay any renewal fee. This is particularly important because when this prescribed period expires, an owner loses his right to prevent others from exploiting his invention. It also has consequences for third parties who are advised of a patent’s abandonment only after revocation or any grace period for restoration. Hence, it is crucial that the owner maintains his portfolio of patents by attending to any renewal fee in a timely manner.

Under the previous self-assessment patent system, an application for the restoration of a lapsed patent could be made at any time within 30 months of the missed renewal date. On the other hand, under the new positive grant system, this 30-month period has been shortened to 18 months. The shortening of the prescribed period for restoration may put an owner at a disadvantage while third parties may welcome this new provision as there is now a shorter period of uncertainty before the owner’s invention can be exploited.

Another point to note is that the restoration of a lapsed patent is entirely at the discretion of the Registrar. Previously, the restoration of a lapsed patent was only possible if the Registrar was satisfied that the owner had taken “reasonable care” to attend to renewal requirements. With the new positive grant patent system, the Registrar must be satisfied that the failure of the owner in paying the renewal fee on time is “unintentional”. Although some parties may see this new criterion as a less stringent test as compared to the “reasonable care” test, the new criterion still involves a negative proposition as it remains difficult to prove with logical certainty. Also, revising the standard to “unintentional” brings Singapore in line with other jurisdictions such as the United Kingdom.

The provision further requires that a statutory declaration or an affidavit setting out grounds for the restoration application and supporting evidence be submitted along with the application. This does not mean that a mere assertion that the failure to pay the renewal fee was unintentional would be sufficient. As restoration is not a casual administrative procedure and there are potentially far-reaching consequences, evidence will need to be produced to convince the Registrar that the failure was indeed unintentional. In the instance where an owner has decided to allow a patent to lapse and subsequently there is a change of mind, restoration is likely not to be allowed by the Registrar. It is necessary to show that the owner intended to pay the renewal fees by explaining the circumstances surrounding the matter.

Regardless whether a patent renewal falls under the old law or the new provisions, it is beneficial for a patent owner to attend to any Singapore renewal fee requirements punctually so as to avoid any difficulties with patent restoration.

First Published in June 2014 edition of Managing Intellectual Property (MIP)


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