Offence to Lodge Patent Outside Singapore First

(SINGAPORE) If you lodge the patent for a Singapore invention in another country first, be prepared to go to jail or pay a fine.

While this may be the standard patent law observed globally, few outside the legal profession are aware of this and many have been caught offguard.

'There is a jailable term. We were not aware of this. We have always thought that a patent filed in a big country like the US is universally recognised and sufficient,' an IT company head told BT.

If paying a fine appears an easy way out, think again. Paying a fine means you have admitted to committing an offence, and with it, comes the stigma of having a criminal record.

Fortunately, the Intellectual Property Office of Singapore (Ipos), a statutory board under the Ministry of Law since April 2001, has not sent any ignorant inventor to jail for that violation yet.

What patentees should know is that a patent is territorial. There is no such thing as a world patent. While there have been efforts by the World Patent Organisation to facilitate the global filing process via the Paris Convention method or the Patent Co-operation Treaty (PCT) method, a patentee must still make an application in the country where the invention was discovered.

'In short, Section 34 of the Patents Act means that a Singapore resident must first file a patent application for his invention in Singapore. Thereafter, he can file a patent application for the same invention outside Singapore two months after his Singapore filing,' Ipos said.

Otherwise, it is a breach of the law. Under the Patents Act passed in 1995, there could be a jail term of up to two years or a fine not exceeding $5,000.

But Drew & Napier's managing director of intellectual property Morris John said this rule has been mitigated in April 2001 by Ipos having the power to compound the violation charge.

'Fine and composition are different. Composition means you pay and are not treated as a criminal,' Mr John explained.

Section 34 of the Patents Act is not unique to Singapore but also a common provision in other countries, including Japan, US, Australia and UK.

While it may appear stringent, patentees can seek an exemption to file outside Singapore first by seeking the written consent of the Registrar of Patents. This exemption is readily given, sometimes in less than a day, unless there are issues concerning national security or public safety.

Essentially, if a patentee chooses the Paris Convention method and files in Singapore first, he has up to a year to file in other countries that he wants protection. It would be deemed as though he had filed in that country on the same day he filed in Singapore. Almost every United Nations member recognise this.

The same concept is applied in the PCT method, created by the World Intellectual Property Organisation. But in this case, the patentee generally has up to 30 months to file in other countries where he wants protection. About 96 countries abide by the PCT method, including Singapore which is recognised as an international filing office. Malaysia and Taiwan are not members.

The sensitivity surrounding a patent involves national pride. It is a monopoly right over the invention given by the government to the patentee for a limited number of years.

Such information is invaluable for research and development and can be used by others in developing their own products.

Looking at Ipos website, the number of patents applications filed by Singapore residents has risen to 523 applicants in 2001 from 145 in 1995. Singapore patent grants to Singapore residents have also climbed to 170 in 2001 from 20 in 1995.

In 2001, there were 29,093 patents in force in Singapore. Patents related to chemistry and metallurgy, human necessity, electricity, and physics are among the more frequently filed.