Singapore residents must file a patent application in Singapore first or obtain permission from the Registrar of Patents before proceeding to file a foreign patent application first. This provision does not apply to patent applications first filed outside Singapore by a person resident outside Singapore.
Section 34 of the Singapore Patents Act 1994 prohibits Singapore residents from filing patent applications abroad without obtaining prior written authority granted by the Registrar. The only exception is when a patent application for the same invention has been filed in the Registry not less than two months before the patent application is filed overseas, and the Registrar has not issued a direction prohibiting publication of the information contained in the patent application because the information in the Singapore patent application is prejudicial to public safety or Singapore’s defence.
Significantly, section 34 applies to a "person resident in Singapore". Sub-section (4) defines the phrase to include a person, who at the material time (emphasis added), is lawfully residing in Singapore by virtue of a valid pass to enter and remain in Singapore for any purpose. For example, this could apply to foreign nationals working in Singapore on valid work permits and possibly other visitors to Singapore who have been issued passes to conduct business in Singapore.
As such, it is important to determine to whom the phrase "person resident in Singapore" refers. Section 2 of the Patents Act 1994 defines "person" to "include the government", and the Interpretation Act, Cap. 1, defines "person" to "include any company or association or body of persons, corporate or unincorporate". However, Section 34 provides little express indication as to whether the term applies to either the patent applicant or the inventor, creating some ambiguity in interpreting the provision. The intention of the provision suggests that the provision is meant to cover both the patent applicant and the inventor.
Another ambiguity in section 34 is what time the term "material time" refers to, given that the provision does not contain an explicit reference to the act of inventing or the inventor, who is the actual deviser of the invention. One view is that "the material time" is concerned with the time of devising or conceiving the invention. However, another view is that the term refers to the time a patent application is filed or caused to be filed. At the time of writing this article, the Singapore Courts have not published a decision interpreting the term in question.
While section 34 does not apply when the patent application has first been filed in a country outside Singapore by a person resident outside Singapore, the legal position is unclear when there are several inventors or patent applicants involved, where at least one of the inventors or patent applicants is resident in Singapore "at the material time". Given the serious sanctions for contravening section 34, a conservative interpretation is that if at least one of the inventors or patent applicants is resident in Singapore at any of the times of devising the invention and making the patent application, the first patent application should be filed in Singapore or written authorization to file abroad should be obtained from the Registrar of Patents before filing abroad.
Contravening section 34 is a criminal offence. The possible penalties include a fine not exceeding SG$ 5,000, imprisonment for a term not exceeding 2 years, or both. There are no provisions for retroactively obtaining permission from the Registrar to file abroad first, or for considering, as a possible mitigating factor, whether the contravening party had knowledge of the party’s unlawful action. In this regard, it is important to note that section 34 applies to any person resident in Singapore who files or causes to be filed the patent application outside of Singapore. Thus, parties resident in Singapore besides the inventor and the patent applicant could contravene the provision if they are directly involved in the filing of a patent application abroad in violation of section 34.
As a practical solution, the Registrar generally allows the offence of contravening section 34 to be "compounded". If the responsible party can demonstrate with evidence that the contravention occurred in good faith, the responsible party can simply pay a significantly lower fine.
In light of the above, prudence suggests written authority from the Registrar should be obtained before filing a patent application outside Singapore where at least one party to the foreign patent application is an inventor or a patent applicant resident in Singapore. The minimum information to be submitted to the Intellectual Property Office of Singapore (IPOS) should include an abstract of the invention and the details of the patent applicant(s) and the inventor(s). Written authority can normally be obtained from IPOS within one working day of submitting to IPOS the request for permission to file abroad.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.
