This post is part of a series exploring inventorship of patents and inventions in Singapore.
Under Singapore Patent Law, in the first instance, a patent may be granted primarily to the inventor or joint inventors of an invention. Section 2(1) of the Patents Act helpfully defines an “inventor” as the “actual deviser of the invention”.
It is not always the case that the invention belongs to the inventor or inventors, however. In fact, it is quite common for the invention to belong to another party, who is the applicant of the patent application for the invention described.
Invention Not Owned by Inventor
The invention may belong to someone other than the inventor because of the operation of some enactment or rule of law.
For example, under Singapore patent law, if an inventor is employed - and certain circumstances are met - the invention may actually belong to the employer (and not the employee inventor). Note that it is not always the case that an employer owns an invention created by an employee, and you should seek guidance from your patent attorney if needed.
There may be a contract or agreement entered between the inventor and another party which establishes the other party as being entitled as the owner of any inventions made. Under the Patents Act, such an agreement must be entered into with the inventor before the making of the invention.
The inventor or inventors may have made the invention and subsequently decided to assign the invention or transfer the ownership of the invention to another party (the assignee). The other party may therefore be the successor in title of the inventor.
So in many cases, the inventor or inventors will not be the applicant for a patent application. It is for example very common to see patent applications made in the name of a corporate entity, for example a limited company.
Identification of Inventors and Derivation of Rights
As you might expect, the law has a number of provisions to protect inventors against abuses.
For example, under Section 24 of the Singapore Patents Act, the inventor or inventors of an invention have the right to be identified as such in the published patent application and in any patent granted for the application.
Mention of inventor
24.—(1) The inventor or joint inventors of an invention shall have a right to be mentioned as such in any patent granted for the invention and shall also have a right to be so mentioned if possible in any published application for a patent for the invention and, if not so mentioned, a right to be so mentioned in accordance with the rules in a prescribed document.
Section 24 also requires an applicant of a patent application to identify the inventor or inventors of the invention described in the patent, whenever a Singapore patent application is filed. The applicant is also required to describe the means by which they derived the right from the inventors to be granted the patent.
(2) Unless he has already given the Registry the information mentioned in this subsection, an applicant for a patent shall, within the prescribed period, file with the Registry a statement
(a) identifying the person or persons whom he believes to be the inventor or inventors; and
(b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent, and, if he fails to do so, the application shall be treated as having been abandoned.
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”.
Penalty for Non-Compliance
The consequences of not filing a Statement of Inventorship at IPOS by the time limit are quite severe, and may include loss of rights.
Section 24(2) makes clear that if a statement of inventorship is not filed within the appropriate time limit, the application will be treated as having been abandoned.
It is therefore crucial for applicants to ensure that a statement of inventorship is filed at IPOS within the relevant time limit, so as not to jeopardise their rights.
Filing a Statement of Inventorship
Please see our follow-up post for details of how and when to file a Statement of Inventorship at IPOS.
If you have any questions on inventorship or the filing of Patents Form 8, please get in touch with us.