Quote from Martin Schweiger on August 6, 2018, 7:39 am

That case does not happen often but I hear of such cases every now and then.

What does NOT help is to file the patent application in all the relevant countries on the same day.

In Singapore, you can get a security clearance from IPOS within a very short time. Most other countries take much more time. So if you have an invention made in Singapore and a second country with a security clearance requirement at the same time, request a S34 waiver in Singapore and - after having obtained the S34 waiver - file first in the other country.

What you can do in practice if time is to short to get a security clearance is to file the patent application in that country that has the harshest regime when it comes to enforcing infringements of the security clearance requirement against individuals. By doing so, you have willfully infringed the respective regulations in the other countries, but you avoid the biggest difficulties for yourself.

In Singapore, the administration takes the security clearance requirements very seriously. One better avoids such infringements, and if you find out that the security clearance requirements in a specific case are overlooked unintentionally, you better report this to the authorities as soon as possible. This will trigger an investigation that usually results in a fine of S$ 500 for first-time offenders. Get help from someone with experience in such cases, you are dealing with criminal law here.

As far as Malaysia is concerned, the Patents Act does not provide a way to resolve a breach of the security clearance requirements.  Section 62A mentions that if the infringement occurs then there are penalties - fines & jail. On an informal conversation with the Malaysian Intellectual Property Office, they mentioned that they don't have a mechanism to catch such cases, but it may be addressed in the revisions to the Act. If the inventor chooses to write in to admit fault, the Patent Office will most likely not do anything, but the communication will be kept on record.

In some countries, infringement of the security clearance requirement can constitute a reason for invalidity for a patent that is granted at a later time. So if you already know that you are going to have a later patent application in such a country that claims the priority of the first patent filing, you want to make sure that you do not infringe the security clearance requirements of this country when doing the first patent filing.

Taken all together, it is never good to infringe any security clearance requirements. Avoid it like the plague.

Quote from katieketchup on October 29, 2021, 5:55 pm

Speaking about Singapore security waiver/foreign filing license, I have now a case where a Singapore applicant has filed an earlier priority patent application in China, possibly without a Singapore security waiver/foreign filing license.

The applicant wants to file a non-provisional PCT application now (and later in the US), claiming priorities from the earlier priority patent application in China.

Should the applicant now own up to IPOS that there was no security waiver obtained for the earlier China priority patent application?

 

 

Quote from Martin Schweiger on October 29, 2021, 6:01 pm

@katieketchup

there are only 2 ways out:

#1: report the infringement and file the PCT application, claiming all priorities (maybe you can convince IPOS that this was not their fault, but unlikely. The fine will be S$500 - S$ 1.500, for all cases combined, for first-time offenders)

or

#2: file the file PCT application without claiming all priorities, before the publication of the CN patent application. By doing so, the CN patent application may not become prior art for the PCT application. But it will become prior art for the US patent application, because of the special definition of "prior art" in the USA. One could also withdraw the CN application and not mention it when filing the US patent application. But that may be seen as unlawful under US standards.

conclusion:
#1 is better when they want to pursue a US patent because in the USA: "He who seeks equity must come with clean hands".

Quote from Martin Schweiger on November 2, 2021, 5:37 pm

there is a form for requesting a S34 waiver, here

https://www.ipos.gov.sg/about-ip/patents/managing-patents/forms-fees

see the snip

Quote from Martin Schweiger on February 22, 2023, 9:56 pm

Here is another important piece of information.

Among all the signatories to the Patent Cooperation Treaty (PCT), the national patent laws of around 20 signatories contain the noted special provisions related to foreign patent filing. The World Intellectual Property Office (WIPO) has compiled the relevant provisions of these PCT signatories (see https://www.wipo.int/pct/en/texts/nat_sec.html) for reference by patent applicants when making decisions on international patent filing.

See the attached pdf file

Quote from Martin Schweiger on February 23, 2023, 10:59 am

From a CN colleague of mine

"On 22 April 2022, the CNIPA issued a decision (No. 55586) for an invalidation action filed against China Patent No. CN201720389490.8 (a utility model patent entitled telescopic transmission assembly device and lift stand；priority date: 10 January 2017; Filing Date: 14 April 2017; Patent Grant Publication Date: 16 February 2018; Patent Publication No. CN207016433U) owned by a Chinese company named Zhejiang Jiecang Linear Motion Technology Co. Ltd. (hereafter referred to as “Zhejiang Jiecang”).

The CNIPA’s decision stated that “the concerned China utility model patent is invalidated because Claims 1-11 of the patent violated the secrecy examination requirement prescribed in Article 20.1 of the Patent Law”