Under the Patents Act, there is an obligation for an Applicant to name the inventors in a Singapore patent application. The Applicant is also required to disclose how he derived the right to be granted a patent from the inventors.
The time limits for filing a statement of inventorship are set out in the Rules, but are different depending on the type of application involved. Failure to file a statement of inventorship could lead to the application being treated as having been abandoned.
Because of this, it is crucial that a statement of inventorship is filed at IPOS within the relevant time limt.
Filing a Statement of Inventorship
The identification of the inventors and the derivation of rights is done by filing Patents Form 8. This form is commonly known as the “Statement of Inventorship”.
Rule 18 of the Singapore Patents Rules sets out the general time limits for filing Patents Form 8.
Procedure where applicant is not inventor or sole inventor
18.—(1) Subject to rules 28 and 86(8) and (8A), the period prescribed for the purposes of section 24 (2) shall be
(a) where there is no declared priority date, 16 months from the date of filing of the application for a patent; or
(b) where there is a declared priority date, 16 months from the declared priority date.
Failure to File a Statement of Inventorship
The penalties for not complying with the requirement for filing a Statement of Inventorship are severe. They may include irrevocable loss of rights in the patent application.
Section 24(2) of the Singapore Patents Act states that if an applicant fails to provide the inventorship details and the derivation of rights, the “the application shall be treated as having been abandoned”.
The use of the word “shall” indicates that the Registrar has no discretion on whether to treat the application as having been abandoned. If Patents Form 8 is not filed, the application will be treated as having been abandoned.
So it is important for applicants to make sure that they comply with these requirements by filing a Statement of Inventorship on Patents Form 8 within the time limits set out in the Act and Rules.
Time Limits for Filing a Statement of Inventorship
Singapore Patent Applications
This section deals with the deadline for filing Patents Form 8 on a Singapore patent application filed by virtue of Section 25 of the Patents Act, i.e., not a Singapore national phase of a PCT application under Section 86 of the Singapore Patents Act nor a divisional patent application filed under Section 26(11) of the Patents Act.
An applicant of a such a patent application needs to file Patents Form 8 within the time limits set out in Rule 18:
where the patent application claims priority from another application under the Paris Convention, the time limit for filing a Statement of Inventorship is 16 months from the earliest claimed priority date.
if no priority is claimed in the Singapore patent application, the deadline for filing Patents Form 8 is 16 months from the date of filing of the patent application.
The form needs to identify each and every inventor of the invention described in the patent application. The applicant also needs to state how he derived his right to be granted the patent from the inventors (e.g., as an employer of the inventor or inventors, by virtue of an assignment, etc).
As indicated above, these requirements apply to Singapore first filings as well as convention applications in Singapore claiming priority from another application filed in Singapore or elsewhere.
The time limit of 16 months from priority/filing does not apply to a divisional patent application filed under Section 26(11) of the Patents Act. A Patents Form 8 is required for divisional patent applications, but this is due on the same date as the divisional application is lodged at IPOS (see below for details).
The time limit of 16 months from priority/filing does not apply generally to PCT applications or International Patent Applications entering the Singapore national phase under Section 86 of the Patents Act, for which no Patents Form 8 is due (see below for details).
International Patent Applications Entering the Singapore National Phase
The PCT Request filed to initiate an International Patent Application requires the applicant to identify all the inventors and to give their names, addresses and countries of residence.
Note that it is no longer a requirement in the PCT Request to identify the citizenship of each inventor. Neither do the PCT rules require the applicant to state how he derived the right to file the application from the inventors.
Nevertheless, Rule 18(3) of the Singapore Patent Rules provides that a Statement of Inventorship on Patents Form 8 does not need to be filed, provided that rules 4.1(a)(iv) and 4.6 of the Regulations under the Patent Co-operation Treaty have been complied with. This is usually the case where a PCT Request has been filled out properly.
So, for Singapore patent applications which are national stage entries of PCT applications, there is no requirement for Patents Form 8 to be filed.
Singapore Divisional Patent Applications
Rule 28(f) governs the deadline for filing a Statement of Inventorship in a Singapore patent application which is divided from another.
Such divisional applications are often filed long after the normal deadline of 16 months from the priority date/filing date. In such cases, Rule 28(f) states that the requirement of Rule 18 needs to be complied with “on the initiation date”.
In other words, the applicant of a divisional application needs to file a Statement of Inventorship on Patents Form 8 on the same day the divisional application is lodged at IPOS.
Whenever a divisional application is filed, a Statement of Inventorship must also be filed on the same day. Otherwise, the patent application will be treated as having been abandoned.
Divisional of a Singapore National Phase
We are often instructed to file a divisional application from a parent application which is the national phase in Singapore of a PCT application. In this situation, often the only information we have regarding the inventors comes from the WIPO Patentscope bibliography.
As described above, when a PCT application is filed, the applicant does not need to set out the citizenship of the inventors in the PCT Request. The PCT Request also does not require the applicant to declare how he derived the right to the patent from the inventors. Of course, the applicant is also not required to indicate in the PCT Request whether the inventor was resident in Singapore at any time during the making of the invention!
In order for us to fill out Patent Form 8 properly, however, we need to set out each inventor’s citizenship, whether he or she was resident in Singapore and the derivation of rights.
Information Required for Statement of Inventorship
Given the strict deadline for filing a Statement of Inventorship on a divisional application, we ask our clients to provide us in good time before the divisional deadline:
For each inventor, we need to have the full name of the inventor, their full address, the country of permanent residence and citizenship of the inventor, as well as information on whether the inventor was resident in Singapore at any time during the period of the invention. We need to have full details of how the applicant derived its rights to the invention from each of the inventors, whether by employment, by assignment dated … or by some other means.
Please provide the full chain of title. If the rights were acquired by assignment, please let us have the date of the assignment.
If you have any questions on inventorship or the filing of Patents Form 8, please get in touch with us.