Letter & Annex A - Intellectual Property Office of Singapore

Annex A5 Other Proposed Changes: Restoration5.1 Proposed Change 1: Change criterion for restoration from “reasonable care” to“unintentional”5.1.1 Current: A patent owner in the restoration of a lapsed patent must satisfy theRegistrar that he took reasonable care to see that any renewal fee was paid within theprescribed period or that that fee and any prescribed additional fee were paid withinthe 6 months immediately following the end of that period.5.1.2 Section 39(5) of the SG Patents Act is in pari materia with section 28(3) of the UKPatents Act 1977 (as amended by the Copyright, Designs and Patents Act 1988) andquoting a comment of Aldous J in Continental Manufacturing & Sales Inc’s Patent(1994 RPC 535) which was a decision on UK section 28(3), he said that “the words‘reasonable care’ do not need explanation. The standard is that required of theparticular patentee acting reasonably ensuring that the fee is paid”.5.1.3 Aldous J in Ament’s Application 1994 RPC 647 also on UK section 28(3) said that “Ihave come to the conclusion that a patentee who merely establishes inability to paydoes not establish that he has taken reasonable care to see that the fee is paid. Toestablish that, he must go further and show that he wanted to pay and that he hadtaken reasonable care to ensure that he was in a position to pay.”5.1.4 In the UK, the provision was amended on 1 January 2005 by the Regulatory Reform(Patents) Order 2004 and the criterion for restoration has been changed from“reasonable care” to “unintentional”.5.1.5 This “unintentional” test is said to be generally far less stringent than that of“reasonable care”.5.1.6 As to what is envisaged behind the test of “unintentional”, the UK case of MatsushitaElectric Industrial Co. v Comptroller General of Patents [2008] EWHC 2071 (Pat),provides some guidance when Justice Mann held that a mere assertion that the failureto pay the renewal fee was unintentional is not sufficient to enable the Comptroller todetermine that the requirements of section 28(3) are fulfilled. Hence, some evidenceabove and beyond a bald assertion of the law is required.5.1.7 To ensure that our laws remain relevant and current, we reviewed the requirements ina few jurisdictions and we found a variety of tests and to illustrate, we list some ofthem as follow:- restoration if it is shown that the failure was unintentional orunavoidable, or due to reasons not attributable to the original patentee or that nonpayment was due to accident, mistake or other unforeseeable circumstances.5.1.8 Proposed: In Singapore, we are inclined to take a similar approach as in the UK,where the criterion for restoration has been changed in 2005 from “reasonable care”to “unintentional”. We propose to change the criterion for restoration from“reasonable care” to “unintentional”.Page 26 of 31