When assigning a Singaporean patent filing, care should be taken to ensure that the assignment not only complies with the provisions of the Singapore Patents Act but also that the assignment is recorded in a timely manner at the Registry.
The Singapore Patents Act provides that assignments shall be void unless they are in writing and are signed by or on behalf of the parties to the transaction, or in the case of a body corporate is so signed or is under the seal of that body. In other words, for assignments to be valid they must be executed by both the assignor and the assignee. If not, it is possible that the assignment may have some limited effect in equity but this has yet to be confirmed by the Singapore Courts.
Assignees (and exclusive licensees) should also endeavour to ensure that the assignment is promptly registered. This is not only to avoid loss of rights arising from later, conflicting transactions but also to avoid curtailment of the assignee’s rights to damages or an account of profits. This follows from section 75 of the Singapore Patents Act which provides that if an assignment is not registered within six months of the assignment date, and there is no valid reason for the delay, the new proprietor will not be granted damages or an account of profits in respect of infringing acts occurring before the registration of the assignment.
In conclusion, all parties to an assignment should execute the agreement and care should be taken to ensure that the assignment is recorded promptly and no later than six months after the assignment date if possible.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.