How to Revoke a Patent in Singapore
Parties who believe that a patent has been granted without proper basis may apply to have the patent revoked. The procedure can be summarised as follows:
- Filing of Application
- Proprietor’s Filing of Counter-Statement
- Completing of Notification to Registrar Form
- Selection of Mode of Dispute Resolution
- Filing of Evidence
- Requesting for Extension of Time (If Required)
- Attending of Case Management Conference
- Preparing for Hearing
- Dealing with Post-Hearing Matters
All the forms mentioned in this article (except for those relating to filing of evidence, written submissions and bills of cost) may be downloaded from the website of the Intellectual Property Office of Singapore (IPOS) here.
Filing of Application
To revoke a patent in Singapore, a person must first file an Application for Revocation of Patent Form with IPOS via this FormSG form. Applications for patent revocation filed with the General Division of the High Court (whether by way of a counter-claim or otherwise) will not be entertained as the General Division of the High Court can hear only revocation cases that are being appealed against.
The Application for Revocation of Patent Form is to be accompanied with a statement stating in detail the grounds of revocation. It should also include the facts that the applicant is relying on to support his application, and the relief that he seeks.
Grounds of revocation
The grounds upon which a patent may be revoked can be found in section 80 of the Patents Act. They are as follows:
- The invention is not a patentable invention;
- The patent proprietor is someone whom the patent should not have been granted to;
- The patent specification fails to disclose the invention clearly and completely for it to be performed by someone skilled in the art;
- The matter disclosed in the patent specification extends beyond what has been disclosed in the filed patent application;
- An amendment or correction, which should have been disallowed, has been made to the patent specification or patent application;
- The patent was procured fraudulently, or on a misrepresentation, or on any non-disclosure or inaccurate disclosure of any prescribed material information. Such non-disclosure or inaccuracy in disclosure is regardless of whether the person obliged to provide the information knew or ought to have reasonably known of such information or inaccuracy; and
- The patent is one of 2 or more patents for the same invention which share the same priority date and was filed by the same party or his successor in title.
Proprietor’s Filing of Counter-Statement
If the proprietor intends to contest the application, he must file a Counter-Statement Form within 3 months from the date of receipt of copies of the application and statement. He may also simultaneously file an amendment of a specification of the patent as well.
The proprietor must then serve his counter-statement and any proposed amendment on the applicant. Such proposed amendment (if there is one) will be advertised in the Patents Journal A upon the Registrar’s approval.
Completing of Notification to Registrar Form
After the filing of the counter-statement, both the applicant and the proprietor will receive a Notification to Registrar Form. This form is to be completed and submitted to IPOS within 1 month of the filing of the counter-statement.
The Notification to Registrar Form will include a Request for WIPO Mediation Form and an Agreement and Request for WIPO Expert Determination in IPOS Patent Proceedings Form. These forms are for the parties to indicate whether they would like to resolve their dispute through mediation or expert determination.
Selection of Mode of Dispute Resolution
Both parties may agree to resolve the dispute through any of the following modes:
- Mediation: A neutral third party assists parties in settling their dispute by themselves;
- Expert determination: An expert skilled in the relevant field decides technical issues that have arisen from the parties’ dispute; and
- Litigation: the Registrar will decide the parties’ dispute for them.
Should both parties request for mediation or expert determination, the revocation proceedings will generally be suspended so that mediation or expert determination may take place.
Should parties decide to litigate the matter instead, the revocation proceedings will proceed. The Registrar will then provide deadlines regarding the filing of evidence, and highlight any concerns regarding the application for revocation and counter-statement. This will be done either in writing or at a case management conference.
Filing of Evidence
If the applicant intends to provide evidence, he should file a statutory declaration in the Evidence by Initiator Form within 3 months from the date of receipt of the counter-statement and the patent specification amendment (if any). The evidence provided should substantiate the applicant’s grounds for revoking the patent. The applicant is also required to send a copy of the statutory declaration to the proprietor.
The proprietor is then entitled to file a statutory declaration in the Evidence by Respondent Form stating the evidence he will be relying on to support his own case. This statutory declaration has to be filed within 3 months from the date of receipt of the applicant’s statutory declaration. The proprietor will also have to send a copy of that statutory declaration to the applicant.
If the applicant wants to reply to certain matters raised in the proprietor’s statutory declaration, he will have to file another statutory declaration in the Evidence-In-Reply by Initiator Form. This form must be filed within 3 months from the date of receipt of the proprietor’s statutory declaration, with a copy sent to the proprietor at the same time.
Requesting for Extension of Time (If Required)
Any party to the revocation proceedings may request for an extension of time at any point of the proceedings. The procedure is as follows:
- Notify all parties likely to be affected by the extension, including the other party to the proceedings. In the notice, the party should state his intention to request for an extension of time, as well as details of and reasons for the extension. He also has to seek the recipients’ written consent to the extension within 2 weeks after the date of receipt of the notice.
- File a Request for Extension of Time Form with IPOS. Copies of the notice sent, as well as the written consent given by all other affected parties, are to be attached to this form when it is filed.
Attending of Case Management Conference
Following parties’ filing of evidence, the Registrar will direct both parties to attend a case management conference.
Additionally, the Registrar may direct the applicant to request for a re-examination of the patent in question. This request is to be made through the filing a Request for Re-examination of Patent in Response to Direction of Registrar Form within 2 months from the date of such direction. It costs S$900.00 to file this form. Should the applicant fail to do so, he will be taken to have abandoned his application for revocation.
At the case management conference, the Registrar will:
- Consider the re-examination report in deciding on the conduct of the case;
- Give directions concerning the amendment of specifications (where applicable). If the proprietor’s proposed amendment were allowed, the proprietor must file a clean copy of the amended specification within 1 month from the date of the Registrar’s direction; and
- Inform both parties of the hearing date.
Preparing for Hearing
Subsequently, the parties will have to prepare for the hearing by:
- Filing their written arguments and bundle of authorities (e.g. statutes, cases) that they intend to rely on in the Written Submissions & Bundle of Authorities Form at least a month before the hearing date;
- Exchanging their respective written submissions and bundles of authorities at least a month before the hearing date; and
- Filing a Notice of Attendance at Hearing Form (together with payment of S$715.00) before the hearing to indicate that they intend to be present at the hearing.
Dealing with Post-Hearing Matters
After the hearing, the Registrar will notify the parties on its decision and the grounds for it.
Parties intending to appeal the Registrar’s decision have to file their appeal with the High Court within 6 weeks of the date of decision.
Costs of the hearing are usually awarded to the winning party, and parties are encouraged to agree between themselves on the sum to be paid. However, if an agreement cannot be reached, the party entitled to costs may file a Bill of Cost Form within 1 month from the date of decision for a taxation hearing. A copy of the form should also be served on the other party at the same time.
If the other party objects to the sum proposed, he may file a Marked Bill of Cost Form within 1 month after receipt of the Bill of Cost Form.
At the taxation hearing, the Registrar will award costs based on the Scale of Costs found in the Third Schedule of the Patents Rules. The party entitled to costs will thereafter file a Request to Extract Registrar’s Certificate of Taxation Form (together with payment of S$80.00) to obtain a taxation certificate that is enforceable in court.
The procedure for revoking a patent in Singapore is relatively straightforward. However, the substance of the application will require greater consideration and expertise as it involves making both legal and technical arguments on why the patent should be revoked.
Parties requiring the services of a patent lawyer to assist them with having a patent revoked may get in touch with one of our experienced patent lawyers.
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