IPOS Examination (Patentability) Guidelines 2010
IPOS Examination (Patentability) Guidelines 2010
IPOS Examination (Patentability) Guidelines 2010
Page 1 of 72
This Guide explains IPOS’ Search and Examination (SE) practice on patentability
issues in Singapore.
This Guide serves as a source of reference for our Examiners appointed pursuant to rule
2(3) of the Patent Rules and this will assist them in the course of performing SE on
Singapore patent applications as well as patents in re-examination or post grant SE.
The Registry of Patents, IPOS will continue to update this Guide from time to time, so
as to keep it relevant as far as possible.
Statements made in this Guide are not in themselves an authority and should not be
used as a set of legal requirements. Reference to legal requirements includes reference
to the Singapore Patents Act (Cap. 221), the Singapore Patents Rules and the Singapore
legal decisions.
Feedback if any
This Guide is prepared by the Patent Quality Management Unit (Search &
Examination). If you have any suggestions or feedback in relation to this Guide, please
drop us an e-mail (ipos_enquiry@ipos.gov.sg) and attention it to this Unit.
Page 2 of 72
CONTENTS
Chapter Paragraphs Description
1 Introduction
1.1 to 1.5 A. Background
1.6 B. Singapore patents case law
2 Patentable Inventions
2.1 A. Statutory Requirements
2.2 to 2.4 B. Legislative History
2.5 to 2.6 C. Effect of the 1996 amendments – Open floodgates?
2.7 to 2.13 D. Patentable subject matter
i. Approach taken in Europe
ii. Approach taken in UK
iii. Approach taken in US
iv. Approach taken in Singapore
2.14 to 2.16 E. Invention
2.17 to 2.18 F. Patentable Invention
2.19 G. Patentability Assessment: In a Nutshell
3 Novelty
3.1 A. Statutory Requirements
3.2 to 3.6 B. State of the art
3.7 to 3.9 C. Grace Period
3.10 to 3.15 D. Priority Date
3.16 to 3.20 E. Novelty Test
i. Signpost is not enough
ii. Publicly made available
iii. Combining prior art
iv. Enabling Disclosure
3.21 to 3.23 F. Minimum Documentation
3.24 to 3.25 G. Internet Disclosures
3.26 to 3.27 H. Prior Art Consideration: Standard of proof
Page 3 of 72
CONTENTS
Chapter Paragraphs Description
4 Inventive Step
4.1 to 4.2 A. Statutory Requirements
4.3 to 4.6 B. Inventive Step Test
4.7 to 4.9 C. The Inventive Concept
4.10 to 4.14 D. The skilled addressee
4.15 to 4.17 E. Common General Knowledge
4.18 to 4.22 F. Third and fourth steps mentioned in the Windsurfing case
4.23 G. Combining prior art
4.24 H. No rule of thumb
4.25 I. Inventive Step assessment: In a nutshell
5 Industrial Application
5.1 to 5.2 A. Statutory Requirements
5.3 to 5.4 B. Industry
5.5 to 5.6 C. Capable of industrial application: Insufficient if vague and
speculative
5.7 to 5.8 D. “Methods of treatment & diagnosis” Exception
5.9 E. Industrial Applicability assessment: In a nutshell
Page 4 of 72
CONTENTS
Chapter Paragraphs Description
Page 5 of 72
1 INTRODUCTION
A Background
1.1 The patent system in Singapore has features which are similar to other patent regimes
around the world. In a nutshell, it allows for patent applications for inventions to be
filed with the Registry of Patents (Registry) at the Intellectual Property of Singapore
(IPOS), searched and examined on formal and substantive (includes patentability)
requirements, published soon after 18 months and granted patents if the grant
requirements are met. Further, as Singapore is a member of the Patent Co-operation
Treaty (PCT), in addition to allowing PCT applications to be filed with the Registry
as a PCT receiving Office, PCT applications designating Singapore can enter national
phase with the Registry.
S29 1.2 What is special in the Singapore patent system is the availability of several search
r36-50 and substantive examination (SE) options for applicants to choose from. They are
namely:
S 2(1) 1.3 This Guide focuses on the LOCAL & MIXED SE route where Search, Examination
or combined Search and Examination requests are filed with the Registry and then
subsequently sent to the Examiner. Section 2(1) of the Patents Act defines an
Examiner to mean “such person, organisation or foreign or international patent office
or organisation as may be prescribed to whom the Registrar may refer questions
relating to patents, including search and examination of applications for patents”.
r2(3) 1.4 Rule 2(3) of the Patent Rules explains that the Examiners prescribed for the purposes
of section 2 shall be the Australian Patent Office, the Austrian Patent Office, the
Danish Patent and Trademark Office and the Hungarian Patent Office.
1.5 The law that the Examiners apply when conducting Search, Examination or
combined Search and Examination on Singapore patent applications is Singapore
Page 6 of 72
1.6 Even though the patent system in Singapore started as early as in 1937, local case law
only started to grow in the last two decades. And grow we did, as to date, there are
patent decisions made by the Registry of Patents, IPOS, the High Court as well as the
Court of Appeal (which is the highest court of appeal in Singapore). These decisions
are important in the patent history of Singapore as they lay down the foundation on
how our patent legislation should be applied and we have annexed to this Guide
(Annex) a list of these patent decisions for one’s ease of reference. Copies of these
patent decisions are also provided to the Examiners and in addition, they can also ask
for them from our Patent Quality Management Unit (Search & Examination).
Page 7 of 72
2 PATENTABLE INVENTION
A Statutory requirements
S 13 2.1 Patentable inventions
Section 13.—(1) Subject to subsection (2), a patentable invention is one that satisfies
the following conditions:
(a) the invention is new;
(b) it involves an inventive step; and
(c) it is capable of industrial application
(3) For the purposes of subsection (2), behaviour shall not be regarded as offensive,
immoral or antisocial only because it is prohibited by any law in force in Singapore.
B Legislative History
2.2 Section 13 of the Patents Act shares its roots with section 1 of the United Kingdom
Patents Act 1977.
2.3 This section was amended by The Patents (Amendment) Act 1995 and the
amendments came into force on 1 Jan 96 via The Patents Act (Commencement)
Notification 1995. Section 13 as it was then (see extract below) was amended by
deleting subsections (2) and (5).
Patentable inventions
13. —(1) Subject to subsections (2) and (3), a patentable invention is one that
satisfies the following conditions:
(a) the invention is new;
(b) it involves an inventive step; and
(c) it is capable of industrial application.
(2) It is hereby declared that the following (among other things) are not
Page 8 of 72
but the foregoing provisions shall prevent anything from being treated as an
invention for the purposes of this Act only to the extent that a patent or an
application for a patent relates to that thing as such.
(4) For the purposes of subsection (3), behaviour shall not be regarded as
offensive, immoral or anti-social only because it is prohibited by any law in
force in Singapore.
(5) The Minister may, by order published in the Gazette, vary the provisions
of subsection (2) for the purposes of maintaining them in conformity with
developments in science and technology.
2.5 Arising from the 1996 amendments where Section 13 as it was then was amended by
deleting subsections (2) and (5), some questioned whether they resulted in the
opening of floodgates and that anything now can be an invention. Guidance in
Singapore can be derived from the Parliamentary Speech of Assoc. Prof. Ho Peng
Kee (then Parliamentary Secretary to the Minister for Law) when he introduced the
amendments to the Patents Act in 1995 and explained during the Second Reading in
Parliament:
Sir, other amendments in the Bill include the deletion of section 13(2) of the
Act. Section 13(2) is a short and non- exhaustive listing of subjects which are
Page 9 of 72
Sir, this deletion will not limit our flexibility in rejecting any subject matter
which is non-patentable under section 13(1). The existing provisions are
sufficient to enable Singapore to keep up with advances and changes in
science and technology.
2.6 Section 13(2) as it was then, provides a non exhaustive list of subject matter which
were not inventions under Section 13 and with the removal of this subsection, the
impact as to what inventions fall under Section 13 remains unchanged. The repeal of
this non exhaustive list should not be read to mean that subject matter which was
formerly excluded as “invention” is now considered as “patentable invention”. The
subject matter still has to meet the requirements of it being an invention and that it
meets the test in section 13.
2.7 Articles 52(2) and 52(3) of the European Patent Convention (EPC) contains a non
exclusive list of subject matter as such that are not to be regarded as inventions and
article 53 identifies the types of inventions that are excluded from patentability. In
UK, similar provisions are found in sections 1, 4A and Schedule A2 of the UK
Patents Act. Even though the UK and EPC requirements are similar, the steps
leading up to an assessment of whether an invention meets these requirements is not
the same.
2.8 In brief, the European Patent Office (EPO) determines whether the claimed subject
matter in the patent application as a whole is excluded from being considered an
invention and assesses whether the claimed subject matter has a technical character.
In the process, features of the claimed subject matter having technical character are
identified and assessed for inventive step. An invention is non patentable if it has no
technical character. Therefore if the claimed subject matter does not have technical
character the claims will not be examined. More information on the patent practice
before the EPO can be found in http://www.epo.org/.
2.9 The UK patent office’s practice on the other hand applies the “four step approach”
referred to by Jacob LJ in Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC
7 (Aerotel/Macrossan). This test is reproduced as follows:
Page 10 of 72
2.10 A quick comparison of articles 52(2), 52(3) and 53 of the European Patent
Convention (EPC) with sections 1, 4A and Schedule A2 of the UK Patents Act and
sections 13, 14, 16 of the Singapore Patents Act can be found in the table below. For
the most part, one can say that our laws are similar. However, what is noticeably
absent in the Singapore provisions is an elaboration of what is not considered to be
an invention. Neither is there any mention about excluding plant or animal varieties
or essentially biological processes for the production of plants or animals from
patentability.
Page 11 of 72
Not patentable / “An invention the “A patent shall not be European patents shall
patent not to be publication or granted for an not be granted in
granted exploitation of which invention the respect of:
would be generally commercial “(a) inventions the
expected to encourage exploitation of which commercial
offensive, immoral or would be contrary exploitation of which
anti-social behaviour is to public policy or would be contrary to
not a patentable morality” "ordre public" or
invention.” Re: UK Section 1(3) morality…”
Re: SG Section 13(2) Re: EPC Article 53a
Unpatentable / patent No Equivalent “An invention shall not European patents shall
not to be granted statutory provision be considered not be granted in
unpatentable solely on respect of:
the ground that it “(b) plant or animal
varieties or essentially
Page 12 of 72
Not patentable / No Equivalent “The following are not (1) The human body, at
patent not to be statutory provision patentable inventions – the various stages of its
granted formation and
(a) the human body, at development, and the
the various stages of simple discovery of
its formation and one of its elements,
development, and the including the sequence
simple discovery of or partial sequence of a
one of its elements, gene, cannot constitute
including the sequence patentable inventions.
or partial sequence
of a gene;
Re: EPC Rule 28
(b) processes for
cloning human beings;
Under Article 53(a),
(c) processes for European patents shall
modifying the germ not be granted in
Page 13 of 72
Page 14 of 72
2.11 In the US 35 Patents Code, section 100 defines the term “invention” to mean an
invention or discovery and section 101 states that whoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title. Its Supreme Court in Diamond v.
Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980), held that microorganisms
produced by genetic engineering are not excluded from patent protection by
35 U.S.C. 101. It also read the term 'manufacture' in section 101 in accordance with
its dictionary definition to mean 'the production of articles for use from raw materials
prepared by giving to these materials new forms, qualities, properties, or
combinations whether by hand labor or by machinery.'". More information on the
patent practice before the USPTO can be found in http://www.uspto.gov/
Recently, the case of In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008),
revived discussions on this subject when the US Court of Appeals for the Federal
Circuit did not apply the "useful, concrete, and tangible" test for patent-eligibility
previously set out in State Street Bank & Trust Co. v. Signature Financial Group,
Inc., 149 F.3d 1368 (Fed. Cir. 1998). In place, the court applied the machine-or
transformation test as the applicable test for patent-eligible subject matter. This is
now pending before the US Supreme Court.
This prompted the USPTO to issue interim examination instructions (See extracts
below) for evaluating subject matter eligibility under 35 USC § 101 pending the
Supreme Court’s decision on the appeal.
“There are two criteria for determining subject matter eligibility and both
must be satisfied. The claimed invention (1) must be directed to one of the
four statutory categories, and (2) must not be wholly directed to subject
matter encompassing a judicially recognized exception, as defined below.
Page 15 of 72
2.12 The approaches taken in Europe, UK and even in the US, however different their
patent laws may be, reveal a similar constant challenge faced when assessing whether
a particular subject matter is deserving of patent protection. Judicial bodies continue
to struggle to identify workable tests that could successfully sieve out cases not
eligible for patent protection. Tests such as “technical character”, “technical
contribution”, “technical effect”, "useful, concrete, and tangible" and “machine or
transformation” have sprung out through the years and we need to approach the use
of such tests with the relevant background (e.g. different statutory provisions) in
mind.
2.13 In Singapore, our Examiners should approach section 13 as it is and begin to assess
whether a claimed subject matter in a patent application is an invention. Unlike in
some other jurisdictions, our Examiners need not be embroiled in the debate on
whether a particular claimed subject matter falls within a statutory list of exclusions
and whether the subject matter has “technical character”, “technical contribution” or
“technical effect”. Instead, our Examiners should focus on the quest in ascertaining
whether a claimed subject matter is an invention to begin with.
E. Invention
2.14 What then is an invention? In the Singapore Court of Appeal’s decision of Merck &
Co Inc v Pharmaforte Singapore Pte Ltd [2000] SGCA 39, Chao Hick Tin JA said
said:
“In this regard, we must also point out that the fact that a discovery is made
does not mean there is an invention. The latter does not necessarily follow
from the former“.
His Honour cited Lindley LJ’s statement in the United Kingdom’s case of Lane Fox v
Kensington and Knightsbridge Electric Lighting Co [1892] 3 Ch 424 at p 429 where
he said:
“An invention is not the same thing as a discovery. When Volta discovered
the effect of an electric current from his battery on a frog’s leg he made a
great discovery, but no patentable invention. Again, a man who discovers that
a known machine can produce effects which no one before him knew could
be produced by it, may make a great and useful discovery; but, if he does no
more, his discovery is not a patentable invention: … He has added nothing
but knowledge to what previously existed. A patentee must do something
Page 16 of 72
2.15 Our Examiners should thus look out for that “something more” for the subject matter
in question to rise above the status of a “discovery” to the status of an “invention”.
Subject matter e.g. a scheme, rule or method for performing a mental act, playing a
game or doing business, or a program for a computer will thus have to pass the first
hurdle of it being an invention.
2.16 However, even if the Examiner were to form a preliminary view that the subject
matter in question is not an invention, he should proceed to consider if the other
limbs in section 13(1) are met. This subsequent step could assist the Examiner in re-
assessing his earlier preliminary view that the subject matter in question is not an
invention.
F Patentable invention
2.17 In Singapore, section 13(1) states that a patentable invention is one that satisfies the
following conditions:
(a) the invention is new;
(b) it involves an inventive step; and
(c) it is capable of industrial application.
Section 13(2) also goes on to say that “An invention the publication or exploitation of
which would be generally expected to encourage offensive, immoral or anti-social
behaviour is not a patentable invention.”
2.18 Hence, even after determining that the subject matter in question is an invention, is
new, involves an inventive step and is capable of industrial application, the invention
can still fail to qualify as a patentable invention if the publication or exploitation of
the invention would be generally expected to encourage offensive, immoral or anti-
social behaviour.
Page 17 of 72
Step 2 Is the subject matter in question, new? If yes or no, proceed to Step 3.
Step 3 Does the subject matter in question, involve an inventive step? If yes or
no, proceed to Step 4.
Page 18 of 72
3 NOVELTY
A Statutory requirements
S 14 3.1 Novelty
Section 14.—(1) An invention shall be taken to be new if it does not form part of the
state of the art.
(2) The state of the art in the case of an invention shall be taken to comprise all
matter (whether a product, a process, information about either, or anything else)
which has at any time before the priority date of that invention been made available
to the public (whether in Singapore or elsewhere) by written or oral description, by
use or in any other way.
(3) The state of the art in the case of an invention to which an application for a patent
or a patent relates shall be taken also to comprise matter contained in an application
for another patent which was published on or after the priority date of that invention,
if the following conditions are satisfied:
(a) that matter was contained in the application for that other patent both as
filed and as published; and
(b) the priority date of that matter is earlier than that of the invention.
(4) For the purposes of this section, the disclosure of matter constituting an invention
shall be disregarded in the case of a patent or an application for a patent if occurring
later than the beginning of the period of 12 months immediately preceding the date of
filing the application for the patent and either
—
(a) the disclosure was due to, or made in consequence of, the matter having
been obtained unlawfully or in breach of confidence by any person —
(i) from the inventor or from any other person to whom the matter was
made available in confidence by the inventor or who obtained it from
the inventor because he or the inventor believed that he was entitled to
obtain it; or
(ii) from any other person to whom the matter was made available in
confidence by any person mentioned in sub-paragraph (i) or in this
sub-paragraph or who obtained it from any person so mentioned
because he or the person from whom he obtained it believed that he
Page 19 of 72
(b) the disclosure was made in breach of confidence by any person who
obtained the matter in confidence from the inventor or from any other person
to whom it was made available, or who obtained it, from the inventor;
(c) the disclosure was due to, or made in consequence of, the inventor
displaying the invention at an international exhibition and the applicant states,
on filing the application, that the invention has been so displayed and also,
within the prescribed period, files written evidence in support of the statement
complying with any prescribed condition; or
(d) the disclosure was due to, or made in consequence of, the inventor
describing the invention in a paper read by him or another person with his
consent or on his behalf before any learned society or published with his
consent in the transactions of any learned society.
(5) In subsection (4) (d), “learned society” includes any club or association
constituted in Singapore or elsewhere whose main object is the promotion of any
branch of learning or science.
(6) In this section, references to the inventor include references to any proprietor of
the invention for the time being.
Page 20 of 72
In the light of high translation costs to be borne by the applicants, translations of the
whole or part of the Non-English cited document should be sought only after the
Examiner exhausts the following alternatives:
(a) Rely on his or her knowledge of the e.g. French and German language where
applicable
(b) Refer to any English family members
(c) Refer to any available English Abstracts
(d) Apply Machine Translation Tools (freely available from the web) or request
the applicants to furnish a Machine Translation over the Non-English cited
document.
If, from the above, the Examiner is still of the opinion that a translation of part or the
whole Non-English cited document is necessary, he/she may proceed to request for it.
S2(1) 3.4 Section 14(2) defines a cut off date when making a state of the art consideration to
S 14(2) include all matter made publicly available at any time before the priority date.
S 14(3)
S17
However, Section 14(3) carves out an exception as it explains that the state of the art
in the case of an invention to which an application for a patent or a patent relates
includes matter
• contained in an application for another patent* which was published on or
after the priority date of that invention, if
o that matter was contained in the application for that other patent
both as filed and as published; and
o the priority date of that matter is earlier than that of the invention.
* Section 2(1) defines "patent" to mean a patent under the Patents Act and includes a
patent in force by virtue of Section 117 (3).
S 14(3) 3.5 In sum, Section 14(3) allows under limited circumstances, matter published after the
priority date of the invention to be considered as part of the state of the art. Only
applications for a patent, that is, either an application which is made under the Act or
one which is treated as such, are considered. See Figure below which illustrates a
patent application filed in Singapore and was accorded a number 123. This
application 123 claims priority of an earlier filed patent application in US. Hence, the
assessment of novelty will cover all relevant disclosures made before the US filing
date, this being the priority date of Singapore patent application 123. Meanwhile,
Page 21 of 72
S 15 3.6 It must also be noted that the Section 14(3) consideration is also limited to the
assessment of novelty and is not used for assessing inventive step.
C Grace Period
S 14(4) 3.7 On the issue of matter that had been made available to the public, Section 14(4)
S 14(5) provides for certain matter to be disregarded under Section 14(1) notwithstanding
that the matter falls under Section 14(2), if the disclosure was made under certain
circumstances, and within what is seen as a 12 month “grace period”. These
circumstances briefly include disclosures made as a result of a breach of confidence
or where the inventor revealed the invention at an International Exhibition or before a
learned society and Section 14(5) explains that a “learned society” includes any club
or association constituted in Singapore or elsewhere whose main object is the
promotion of any branch of learning or science.
r8 3.8 In the case of a disclosure at an International Exhibition, rule 8 of the Patent Rules
details the requirements that applicants are required to comply with.
Page 22 of 72
(2) The applicant shall, within 4 months from the day of filing the application,
file a certificate, issued by the authority responsible for the exhibition, stating
that the invention was in fact exhibited there.
(3) The certificate shall also state the opening date of the exhibition and, where
the first disclosure of the invention did not take place on the opening date, the
date of the first disclosure.
(5) For the purposes of section 2 (2), a statement may be published in the
journal that an exhibition described in the statement falls within the definition
of international exhibition in section 2 (1).
3.9 Examiners will be informed of whether such a disclosure has been made in the
Patents Form 1 filed by the applicant. The patent request form (See extract of Patents
Form 1 below) of the patent application contains a section which facilitates the
applicant in making such a disclosure. Patents Form 1 is also enclosed together with
the Request for Search and/or Examination, when the Request is forwarded to the
Examiner.
For PCT national-phase (SG) entry applications, where applicants file a request for
Examination with IPOS, the Examiner will note that such a disclosure is made at the
International phase and this fact is revealed in the International Search Report (Rule
33.1 of the PCT Regulations).
Page 23 of 72
D Priority Date
S 14(2) 3.10 It is recalled that Section 14(1) says that an invention shall be taken to be new if it
does not form part of the state of the art while Section 14(2) explains that the state of
the art in the case of an invention shall be taken to comprise all matter which has at
any time before the priority date of that invention been made available to the public.
S17 3.11 Subsections (1) & (2) of Section 17 of the Patents Act are reproduced below and they
explain what the priority date refers to. In a nutshell, the priority date of an invention
by default is the date of filing of a patent application unless there is an earlier
relevant application filed in a convention country.
Priority date
17.—(1) For the purposes of this Act, the priority date of an invention to which
an application for a patent relates and also of any matter (whether or not the
same as the invention) contained in the application is, except as provided by
the provisions of this Act, the date of filing the application.
(b) the priority date of any matter contained in the application in suit
which was also disclosed in the earlier relevant application or
applications shall be the date of filing the relevant application in
which that matter was disclosed or, if it was disclosed in more than
one relevant application, the earliest of them.
S17 3.12 The other subsections of section 17 and the corresponding provisions in the rules
r9 specify requirements that include when the subsequent patent application has to be
r9A
r9B
filed in order to claim priority over the earlier relevant application, when the
Page 24 of 72
r9B(4) 3.13 During the search process, the Examiners shall identify as far as possible, all relevant
r33 prior art immediately before the date of filing of a patent application, regardless of
whether there is a priority declaration made in the patent application.
r9B(4) 3.14 During the examination process, the Examiner shall generally not investigate the
validity of the priority claim. However, the Examiner shall do so when there is a
potential prior art that is published on or after the priority date but before the date of
filing of the patent application that is being examined. Hence, in Singapore, priority
documents are not furnished by the applicants as a matter of course in all cases. They
are to be furnished by the applicants when the Examiner informs the Registrar of the
need.
3.15 Likewise, in the case of non English priority documents, rule 9C states that
r9C translations need to be furnished only when required (the Examiner informs the
IPOS Officer in the Patents Search and Examination Unit who had previously
forwarded the Request for Search and/or Examination Report to the Examiner, of the
need) and where the validity of the claim to priority is relevant to determining
whether the invention concerned is patentable.
E Novelty Test
3.16 Tay Yong Kwang J in the decision of Mühlbauer AG v Manufacturing Integration
Technology Ltd [2009] SGHC 45 where he applied the guiding principles set out by
Lai Kew Chai J in Trek Technology (Singapore) Pte Ltd v FE Global Electronics
Pte Ltd (No. 2) [2005] 3 SLR 389 at [16] and they are reproduced as follows:
(a) the issue is determined by asking whether an invention forms part of the
state of the art;
(b) the prior art must, in order to invalidate the patent, be such that a person of
ordinary skill and knowledge of the subject would at once perceive and
understand and be able to practically apply the discovery without the
necessity of making further experiments;
(c) the prior art documents must be construed as at the date of publication and
it is not permissible to perform an ex post facto analysis;
(d) each prior art document has to be considered separately and not combined
into a mosaic to arrive at the invention;
(e) the person skilled in the art is an unimaginative person of competent but
Page 25 of 72
(f) the prior art document must contain clear directions to do what the patent
claims to have invented.
3.17 Further guidance can be found in Merck & Co Inc v Pharmaforte Singapore Pte
Ltd, [1999] SGHC 323, where the plaintiffs argued that any prior art that is relied on
to destroy novelty must unequivocally point to the invention and must not merely be
a signpost on the path to discovering the invention. Lai Kew Chai J in delivering the
judgment of the High Court agreed and he said that “they correctly stated that
anticipation only arises if it discloses to a notional instructed reader essential integers
to the invention as claimed: General Tire and Rubber Co v Firestone Tyre and
Rubber Co [1972] RPC 457 at 485.”.
3.18 Tay Yong Kwang J in Insitutut Pasteur v Genelabs Diagnostics Pte Ltd [2000]
SGHC 53 at paragraph 188 also explained:
188 The law concerning anticipation is strict to the patentee and to the
challenger of the patent. A claim is invalid if it covers any item of the prior
art which has been disclosed to anyone (except in confidence), by any means
(written or oral or by use), anywhere in the world, at any time in history
(before the priority date). Even availability to a single member of the public
will suffice. Similarly, availability to the public is satisfied if the document
can be found on the shelves of a public library. It is irrelevant whether anyone
knew it was available or had inspected it. [Vitoria, Encyclopedia of United
Kingdom and European Patent Law] Anticipation can therefore encompass a
disclosure which the inventor was totally ignorant of.
3.19 As for the combination of prior art in the assessment of novelty, Tay Yong Kwang J
in Insitutut Pasteur v Genelabs Diagnostics Pte Ltd [2000] SGHC 53 at paragraph
190 said:
Anticipation must be found within the document alleged to have anticipated the
invention. It is not permissible to combine the teachings of two or more
documents except where one of these directs the reader to study the other. One
cannot create a "mosaic of extracts" from documents spread over a number of
years [Von Heydon v Neustadt (1880) 50 LJ Ch. 126]. Similarly, "it is not open to
you to take a packet of prior documents and by putting a puzzle together produce
Page 26 of 72
3.20 Another novelty requirement is that the disclosure must be ‘enabling’, i.e. sufficient
so as to enable the skilled addressee to put the invention into practice. The Court of
Appeal in Genelabs Diagnostics Pte Ltd v Institut Pasteur [2000] SGCA 60
observed that Merck & Co Inc v Pharmaforte Singapore Pte Ltd [2000] SGCA 39
had concluded that for a prior publication to anticipate the patent it must be
established that following the teachings in the prior publication would inevitably lead
to the invention covered by the patent. The prior disclosure must not only identify the
subject matter of the claim in the later patent, it must do so in a way that enables the
skilled man to make or obtain it, a kind of enabling disclosure.
F Minimum Documentation
r40 3.21 The primary aim of the search process conducted by the Examiner is to identify as
much relevant prior art as possible. Hence, even though Section 14(2) defines the
state of the art to comprise all matter (whether a product, a process, information
about either, or anything else) which has at any time before the priority date of that
invention been made available to the public (whether in Singapore or elsewhere) by
written or oral description, by use or in any other way, rule 40 of the Patent Rules
prescribes the minimum set of documentation that should be referred to in the course
of search.
40.—(1) The documentation prescribed for the purposes of section 29 (3) and
(6) (“minimum documentation”) shall consist of —
(a) the patents issued by or registered in Singapore;
(b) the patent applications published in Singapore;
(c) the “national patent documents” as specified in paragraph (2); and
(d) the published international (Patent Co-operation Treaty)
applications.
(1A) The documentation prescribed for the purposes of section 38A (7)
(“minimum documentation”) shall consist of —
(a) the patents issued by or registered in Singapore;
(b) the patent applications published in Singapore;
(c) the “national patent documents” as specified in paragraph (2); and
(d) the published international (Patent Co-operation Treaty)
Page 27 of 72
(2) Subject to paragraphs (3) and (4), the “national patent documents” shall be
the following:
(3) The patent documents of Japan, for which no abstracts in the English
language are generally available, need not form part of the “minimum
documentation” referred to in paragraph (1) or (1A).
(4) Only those patents issued and those patent applications published, after a
date not more than 50 years before the declared priority date or, where there is
no declared priority date, the date of filing of the application being subjected
to a search, need form part of the “minimum documentation” referred to in
paragraph (1) or (1A).
S38A 3.22 Hence, rule 40 only specifies the minimum extent that Examiners should consider but
S80 it does not cover the extent mentioned in Section 14. Examiners may refer to other
documents if they have access to them. Disclosures (e.g. oral) not captured by the
Examiner can be raised after a patent is granted, by anyone who wishes to challenge
the validity of the patent under Section 80 of the Patents Act. Anyone can also file a
search and examination request after grant under Section 38A of the Patents Act if
they wish to have an assessment of that disclosure which was previously not
considered.
3.23 The Registry has also made available an on-line access to published patent
applications and patents in Singapore through this portal
http://www.epatents.gov.sg/PE/. This enables anyone, anywhere in the world with
internet access to conduct such searches. Our Examiners should use this site when
conducting search. In the event where the Examiners encounter any potential prior art
from this Singapore patent database, they can pull out the published patent
specification from it as well as the relevant extract from the patent register. The
documents are available free of charge.
Page 28 of 72
G Internet disclosures
3.24 Internet Disclosures can be relevant and may fall within the ambit of Section 14.
There are however challenges arising when considering such disclosures.
3.25 The PCT International Search and Preliminary Examination Guidelines provide some
guidance on this subject. (http://www.wipo.int/pct/en/texts/pdf/ispe.pdf)
11.15 It may happen that the publication date is not sufficiently identified to
know if it is published in time to be considered to be state of the art according
to Rule 64.1(b) (that is, it is not clear if the disclosure occurred before or after
the valid priority date). This may happen, for example, where only the month
or year of publication is given and this is the same as the month or year of the
valid priority of the international application. In these cases, the Authority
may need to make enquiries with the owner of the web site in order to
establish the publication date to a sufficient degree of accuracy to know if it is
relevant state of the art in accordance with Rule 64.1(b) in the same way as it
would act in order to establish a more accurate publication date for a paper
published document.
Page 29 of 72
(b) indexing dates given to the web page by search engines (these are
usually later than the actual publication date of the disclosure since the
search engines usually take some time to index a new web site) and
1
The category "E" document refers to an earlier patent application and it may have been mistakenly referenced in this
paragraph of the PCT International Search and Preliminary Examination Guidelines. PCT has been informed and they
agree that category “E” should not have been so referenced and they will make the changes accordingly.
Page 30 of 72
11.20 In the absence of evidence to the contrary, the examiner should assume
that the content of the Internet disclosure has not changed over time.
2.29.1 In cases of alleged prior use, the required standard of proof is the
balance of probabilities. Within this standard, the Patents County Court in
Kavanagh Balloons Pty Ltd v Cameron Balloons Ltd [2004] RPC 5 held that
a flexible degree of probability should be applied to evidence relating to prior
use. The cogency of the evidence had to match the occasion and be
proportionate to the subject matter. Because of the nature of the monopoly
itself and question of public interest, no stricter standard should be applied. It
was held that it was not necessary for an opponent to prove his case “up to the
hilt” as had been required by the EPO Technical Board of Appeal in
Sekisui/shrinkable sheet [1998] OJEPO 161 (T 472/92). The hearing officer
in Colley's Application [1999] RPC 97 also distinguished from Sekisui by not
requiring proof “up to the hilt”, but followed this decision and Demmeler
Maschinenbau GmbH & Co KG (T 908/95) in holding that mere assertion of
prior use was insufficient: place, time and detail were essential.
3.27 In Singapore, we would apply the PCT approach taken on internet disclosures as well
as the standard of proof i.e. “balance of probabilities” adopted in the UK for prior art
consideration This should guide the Examiner in his consideration on whether a
Page 31 of 72
3.29 Paragraphs 4A.16, 4A.26 and 4A.27 of the UK Manual of Patent Practice (Jul 2010)
explains how the current UK provisions are interpreted.
4A.16 Section 4A(3) has the effect that a known substance or composition
may be patented for use in a method of treatment by surgery or therapy or of
diagnosis provided that its use in any such method is new ("first medical
use"). That is to say, if a known substance or composition not previously used
in surgery, therapy or diagnosis is found to be useful in treating, say a human
disease, or to obtain a specific "therapeutic" effect (eg analgesic or antibiotic),
a patent for the substance or composition for use in therapy (unspecified) may
be obtained, i.e. the claim need not be limited to the specific therapeutic
effect; additional claims directed towards more than one specific therapeutic
effect may be allowed in the same patent application, provided of course that
they are supported by the description. The terms surgery, therapy and
diagnosis are discussed in more detail in paragraphs 4A.02-4A.14.
Page 32 of 72
4A.27 Following implementation of the EPC 2000, the practice in both this
Office and the EPO was to allow inventions relating to second medical uses
to be claimed using either the direct second medical use claim format under
Section 4A(4), or the Swiss-type format, or both, pending guidance from the
UK courts and/or the EPO Boards of Appeal. In February 2010, the EPO
Enlarged Board of Appeal issued its decision on G 02/08 ABBOTT
RESPIRATORY/Dosage regime. This decided that applicants may no longer
claim second medical use inventions in the Swiss format. The Enlarged Board
held that Swiss-type claims were previously accepted (in G 05/83
EISAI/Second medical indication [1985] 3 OJEPO 64) as the only possible
means of protecting inventions relating to second medical uses in order to fill
a loophole in the provisions of the EPC 1973. The new Article 54(5)
(equivalent to Section 4A(4)) fills this loophole by explicitly allowing claims
to the further specific use of a known drug, and so the reason for this special,
“judge-made” law no longer exists.
3.30 A table of comparison between the various provisions from Singapore, UK and the
EPC is reproduced below to highlight the similarities and differences.
(2) An invention of a (2) An invention of a 4A.-(1) A patent shall not European patents shall
method of treatment of method of treatment of be granted for the not be granted in respect
the human or animal the human or animal invention of- of:
body by surgery or body by surgery or
therapy or of diagnosis therapy or of diagnosis (a) a method of (c) methods for treatment
practised on the human practised on the human treatment of the of the human or animal
or animal body shall not or animal body shall not human or animal body by surgery or
be taken to be capable of be taken to be capable of body by surgery or therapy and diagnostic
industrial application. industrial application. therapy, or methods practised on the
human or animal body;
(b) a method of this provision shall not
Section 14(7) Section 2(6) diagnosis practised apply to products, in
on the human or particular substances or
animal body. compositions, for use in
(7) In the case of an (6) In the case of an any of these methods.
invention consisting of a invention consisting of a
substance or composition substance or composition
for use in a method of for use in a method of Article 54(4)
(2) Subsection (1) above
treatment of the human treatment of the human does not apply to an
or animal body by or animal body by invention consisting of a (4) Paragraphs 2 and 3
surgery or therapy or of surgery or therapy or of
Page 33 of 72
3.31 Section 14(7) of the Singapore Patents Act corresponds to Section 2(6) of the UK
Patents Act prior to the amendments made in 2004. Paragraph 76 of the
"Examination Guidelines for Patent Applications relating to Medical Inventions in
the UKIPO" updated as of August 2008, explains that the “case law relating to first
medical use under the repealed Section 2(6) (or the equivalent Article 54(5) of the
EPC 1973) will continue to govern our practice under Section 4A(3). The exception
to this is the case law relating to the novelty of claims of the form “substance X, for
use in treating disease Y”, which is now governed by Section 4A(4)…”.
Singapore currently does not have a provision in the Singapore Patents Act which
Page 34 of 72
Page 35 of 72
Step 2 Ensure that Examiner has access to the Minimum Documentation which
includes Singapore published patent applications. Then proceed to Step
3.
Step 3 Apply the Novelty Test mentioned in this Chapter on the subject matter
in question.
Step 3A Examiners shall continue to examine the Swiss type claim format in
Singapore patent applications. Claims drafted in a manner that
corresponds to Section 4A(4) of the UK Patents Act would not be novel
under Section 14 of the SG Patents Act if substance X had been used in
ANY medical method in the prior art.
Page 36 of 72
4 INVENTIVE STEP
A Statutory requirements
S15 4.1 Inventive step
4.2 Consideration of inventive step occurs during the substantive examination phase of a
patent application. This occurs after the completion of the search process.
There are, we think, four steps which require to be taken in answering the
jury question. The first is to identify the inventive concept embodied in the
patent in suit. Thereafter, the court has to assume the mantle of the normally
skilled but unimaginative addressee in the art at the priority date and to
impute to him what was, at that date, common general knowledge in the art in
question. The third step is to identify what, if any, differences exist between
the matter cited as being “known or used” and the alleged invention. Finally,
the court has to ask itself whether, viewed without any knowledge of the
alleged invention, those differences constitute steps which would have been
obvious to the skilled man or whether they require any degree of invention.
4.4 This test was slightly modified by Lord Justice Jacob in the UK Court of Appeal’s
decision of Pozzoli SPA vs. BDMO SA et anor. [2007] EWCA Civ 588 (“Pozzoli”)
where he explained in [15] and [16], that the Windsurfing [supra] test:
Page 37 of 72
16 Next, that first step actually involves two steps, identification of the
attributes of the notional “person skilled in the art” (the statutory term) and
second identification of the common general knowledge of such a person.
4.5 Whichever test is applied to assist in deciding on the inventive step issue, V K Rajah
JA (delivering the judgment of the court) in First Currency Choice Pte Ltd v Main-
Line Corporate Holdings Ltd and Another Appeal [supra] reminds us at [42]-[45]
of his judgment as follows:
43 In this respect, the Windsurfing test ([41] above) has been criticised for
over- elaborating the statutory definition of “inventive step” without reducing
the confusion and uncertainty that has long been associated with it. David I
Bainbridge in Intellectual Property (Pearson, 6th Ed, 2007) at p 400
contends that the first three steps of the Windsurfing test are, in reality,
redundant. He notes that s 3 of the Patents Act 1977 (c 37) (UK) (“the 1977
English Act”) (which is equivalent to s 15 of the Act) seems straightforward
and requires a one-step test only, namely, whether the alleged invention is
“not obvious to a person skilled in the art”. The Windsurfing test, in
Bainbridge’s view, does not provide any intrinsic guidance on the statutory
provision itself, but “merely affords a structured method of assessing whether
the requirement of inventive step has been satisfied” (see Intellectual
Property at p 400). Bainbridge further cautions that in breaking down the test
in s 3 of the 1977 English Act, there is a latent danger that artificiality will be
introduced, which might distort the test. He persuasively suggests (ibid) that a
simpler formulation is to ask:
Page 38 of 72
It is also pertinent to note that the European Patent Office does not appear to
have adopted a structured approach along the lines of the Windsurfing test in
determining whether an invention involves an inventive step.
4.6 Paragraph 3.46 of the UK Manual of Patent Practice (Jul 2010) also reminds us that
when considering an inventive step objection, the examiner should always bear in
mind this warning from Jacob LJ in Angiotech Pharmaceuticals v Conor Medsystems
Inc [2007] EWCA Civ 5:
Page 39 of 72
“The first is to identify the inventive concept embodied in the patent in suit”
Re: Windsurfing [supra].
4.7 Lord Walker of Gestingthorpe in delivering the House of Lord’s decision of Generics
(UK) Limited and others (Appellants) v H Lundbeck A/S (Respondents) [2009]
UKHL 12 explained at [30] that:
4.8 Tan Lee Meng J in ASM Assembly Automation Ltd v Aurigin Technology Pte
Ltd and Others [2009] SGHC 206 at paragraph 39 said:
4.9 The above case precedents provide the framework for our Examiners to use, when
identifying what an “inventive concept” is, in the course of examination.
Page 40 of 72
4.11 V K Rajah JA in the case of First Currency Choice Pte Ltd v Main-Line Corporate
Holdings Ltd and another Appeal [supra] explained in [27] and [28] of the
judgment, that:
The notional skilled person with the common general knowledge of the art
Page 41 of 72
4.12 Judith Prakash J in Ng Kok Cheng v Chua Say Tiong [2001] SGHC 143 summed up
the essential indicators of a skilled person in the art as a person who:
(2) has a practical interest in the subject matter of the patent or is likely to act
on the directions given in it; and
65. In the case of obviousness in view of the state of the art, a key question is
generally "what problem was the patentee trying to solve?" That leads one in
turn to consider the art in which the problem in fact lay. It is the notional team
in that art which is the relevant team making up the person skilled in the art.
If it would be obvious to that team to bring in different expertise, then the
invention will nonetheless be obvious. Likewise if the possessor of the "extra
expertise" would himself know of the other team's problem. But if it would
not be obvious to either of the notional persons or teams alone and not
obvious to either sort of team to bring in the other, then the invention cannot
fairly be said to be obvious. As it was put in argument before us the
possessors of the different skills need to be in the same room and the team
with the problem must have some reason for telling the team who could solve
it what the problem is.
71. It follows that the correct approach in this case is to start with the real
problem faced by exploration geophysicists. Did they appreciate they had a
solvable problem? How could they determine whether a thin layer of porous
rock identified by seismics as potentially hydrocarbon bearing in fact does so
or is just a false positive bearing only brine or water? One then asks whether
the notional exploration geophysicist who read the cited prior art would see
that the answer was to use CSEM, or if not that, at least that CSEM had a
sufficient prospect of being useful that it was worth asking a CSEM expert.
72. The problem must also be approached the other way round, from the point
Page 42 of 72
74. One further approach is not necessary: that is to ask whether the notional
team including both types of expert would see that CSEM would solve or
stood a very good chance, of solving the problem. That is because Mr
Thorley's concession provides the answer here.
75. There is danger to be avoided. There are cases where, even though you
can, in retrospect, clearly see that there was a problem and articulate what it
was, workers at the time did not do that. They did not say: "this is our
problem. If only we had a solution to it." Instead they simply put up with
things as they were. Then the essence of the invention is the insight that there
was a solvable problem at all. The Haberman case, see below, is a good
example.
NB. CSEM (Controlled Source Electromagnetic)
4.14 The above case precedents provide the framework for our Examiners to use, when
identifying who the skilled addressee should be, in the course of examination.
4.15 It is recalled that in assessing novelty, the prior art must, in order to invalidate the
patent, be such that a person of ordinary skill and knowledge of the subject would at
once perceive and understand and be able to practically apply the discovery without
the necessity of making further experiments. Is this knowledge the same as common
general knowledge in the art in question that is imputed onto a normally skilled but
unimaginative addressee in the art at the priority date, when assessing inventive step?
4.16 The Court of Appeal in the case of First Currency Choice Pte Ltd v Main-Line
Corporate Holdings Ltd and Another Appeal [supra] explained at [38]-[41] of the
judgment that:
38 At first blush, there does not appear to be a clear distinction between the
Page 43 of 72
If they were [intended to mean the same thing,] there would now be
little, if any, difference between novelty and obviousness. Obviousness
would cover practically every case of lack of novelty. In head (e)
[which deals with novelty] these words are used in an artificial sense
and are held to include matter which in fact no one in the United
Kingdom ever knew or was likely to know, such as the contents of
some foreign specification which no one had ever looked at and which
the most diligent searcher would probably miss. I think that in head (f)
[which deals with obviousness] the words should have the more
natural meaning of what was or ought to have been known to a
diligent searcher.
40 However, Lord Reid’s approach was seriously queried in the same case by
Page 44 of 72
41 In any event, the English courts have remained fixated with the use of the
notional skilled person’s common general knowledge in the test for
obviousness, despite the above criticisms. There are, admittedly, inherent
difficulties in defining both “common general knowledge” and “state of the
art”. Nevertheless, the explanation proffered by Lord Reid in Mills & Rockley
(Electronics) Limited ([39] supra) appears to be the preferable approach as
it injects substance into the legislative intent underlying s 15 of the Act. The
reliance on common general knowledge in the test for obviousness is also
embodied in the oft-cited four-step “Windsurfing test” laid down by the
English Court of Appeal in Windsurfing International Inc v Tabur Marine
(Great Britain) Ltd [1985] RPC 59 (“Windsurfing”) at 73–74 (and adopted
by this court in Merck & Co Inc v Pharmaforte Singapore Pte Ltd [2000] 3
SLR 717 at [50])…
4.17 The above case precedents provide the framework for our Examiners to use, when
identifying what “common general knowledge” entail, in the course of examination.
”The third step is to identify what, if any, differences exist between the matter
cited as being “known or used” and the alleged invention. Finally, the court
has to ask itself whether, viewed without any knowledge of the alleged
invention, those differences constitute steps which would have been obvious
to the skilled man or whether they require any degree of invention.” Re:
Windsurfing [supra].
Page 45 of 72
4.19 With the differences at hand, the Examiner will then begin his assessment on whether
“those differences constitute steps which would have been obvious to the skilled man
or whether they require any degree of invention”.
4.20 The Court of Appeal in First Currency Choice Pte Ltd v Main-Line Corporate
Holdings Ltd and Another Appeal [2007] SGCA 50 was similarly faced with this
question and they opined at paragraphs 51 and 54 as follows:
51 This final component of the Windsurfing test (see [41] above) formed the
crux of the present appeals. It is up to the court to decide the question, which
is “a kind of jury question” (Windsurfing ([41] supra) at 71): Is the invention
in question obvious? The importance of striking the apposite balance between
encouraging and stifling innovation has been succinctly summarised in Glaxo
Group Ltd’s Patent [2004] RPC 43 at [41] as follows:
54 The crucial point was that at the material time, no other party had
introduced an automatic system to implement the process of deciphering a
payment card’s operating currency. Although the step might have seemed,
when all was said and done, Lilliputian, it was no less significant a step
forward, a step which nobody else had taken before (see Peng Lian Trading
Co v Contour Optik Inc [2003] 2 SLR 560 (“Peng Lian Trading”) at [31]).
A helpful analogy can be drawn with the decision in FE Global Electronics
([26] supra). In that case, it was held that the patentee had an inventive
concept for a new type of data storage device that was quite different from
and more convenient to use than the conventional data storage devices. This
court went on further to say that, admittedly, all the elements required for that
invention were available to those skilled in the art. Yet, before the patentee
applied for the patent in question, no one else had thought of combining those
elements together to form a new type of data storage device. Although some
might have viewed the invention as a simple one, this court noted that
Page 46 of 72
4.21 The following approaches have been considered by our courts in assessing this last
step and we have extracted a few below for our Examiner’s easy reference:
This was one of the factors that laws considered when assessing whether the
invention was obvious in ASM Assembly Automation Ltd v Aurigin
Technology Pte Ltd and Others [2009] SGHC 206 [at paragraph 55]
b. Commercial success
c. So obvious
Page 47 of 72
4.22 A list of such approaches can also be found at paragraph 3.74 in Chapter 3 of the UK
Manual of Patent Practice (Jul 2010) and use of these approaches will depend upon
the particular circumstances of the case in question. They include:
Page 48 of 72
H No rule of thumb
4.24 Finally on this subject, we find an extract in the UK Manual of Patent Practice (Jul
2010) to be very relevant and we have reproduced it below.
Page 49 of 72
Step 2 If there is a priority date claim and a prior art falling between the date of
filing and the priority date claimed, proceed to examine the validity of
the priority date claim. The Examiner may inform the IPOS Officer in
the Patents Search and Examination Unit who had previously
forwarded the Search/Examination Request to the Examiner, of the need
to assess the priority document.
In the event where the priority document is not in English, the Examiner
may inform the IPOS Officer in the Patents Search and Examination
Unit who had previously forwarded the Search/Examination Request of
the need for a translation. Then proceed to Step 2A.
Step 2A In the event where the Examiner considers the Search results furnished
by the applicant and the search results refer to any non English
document, in the interest of managing costs, the Examiner should first
attempt to find an English family equivalent and/or use online free
machine translations to get a better idea of the disclosure in the non
English document before deciding to ask for English translations from
the applicant through the IPOS Officer in the Patents Search and
Examination Unit who had previously forwarded the Examination
Request. Then proceed to Step 3.
Step 3 Apply the Inventive Step Test mentioned in this Chapter on the subject
matter in question.
Page 50 of 72
5 INDUSTRIAL APPLICATION
A Statutory requirements
S16 5.1 Industrial application
5.2 A table of comparison between the various provisions from Singapore, UK and the
EPC is reproduced below to highlight the similarities and differences. It is noted that
all 3 laws share the same phrase “if it can be made or used in any kind of industry,
including agriculture”. On inventions relating to methods of treatment & diagnosis,
in Singapore and in UK (pre 2004 amendments), they are excluded from being
capable of industrial application. The Patents Act in UK (post 2004 amendments) is
aligned with the EPC where patents will not be granted for inventions relating to
methods of treatment & diagnosis. The provisions share a common underlying
objective i.e. inventions relating to methods of treatment & diagnosis should not
considered as patentable inventions in the interests of the public.
Page 51 of 72
B Industry
5.3 Paragraph 4.02 of the UK Manual of Patent Practice [Jul 2010] explains what the
term “industry” refers to.
Page 52 of 72
5.4 The above UK practice provides a good reference point for our Examiners to use,
when identifying what is “industrial application”, in the course of examination.
5.5 The UK Court of Appeal in the case of Eli Lilly & Co v Human Genome Sciences Inc
[2010] EWCA Civ 33 at paragraphs 66 to 70 referred to the EPO case of Max-Planck
T 0870/04 (May 2005).
Page 53 of 72
68. The present case indeed provides an example of the danger of what can
happen if patenting too far upstream is allowed. Both sides (HGS in
collaboration with GlaxoSmithKline) are conducting clinical trials but each is
trying a different antibody to Neutrokine-α and for different conditions. As a
matter of interest the HGS trials are for the treatment of lupus, one of the few
diseases not mentioned in the patent. If the patent were valid, the valuable
research and development work done by Lilly into a field apparently not
researched (and certainly not taken through to clinical trial) by HGS would
potentially be rendered futile. The patent system would not be working as it
should. It would be operating to prevent research, not to encourage it.
69. It is also important to note an earlier paragraph of Max Planck, for the
Boards still regard it as good law:
70. So the question here is which side of the borderline the case lies – a
question of degree turning on the facts and not a pure question of law.
Page 54 of 72
50. Nor do I accept that on his construction the claim amounts to merely to a
method of treatment. It is to the manufacture of the medicines to be used in
that treatment. I am reinforced in that view by the consideration that the
Article 54(4) provision about methods of treatment is an exception to
patentability and as an exception should be construed narrowly…
5.8 In Singapore, our Examiners should read the exception under section 16(2) narrowly.
Page 55 of 72
Page 56 of 72
A Statutory requirements
S 13 6.1 Patentable inventions
(3) For the purposes of subsection (2), behaviour shall not be regarded as offensive,
immoral or anti-social only because it is prohibited by any law in force in
Singapore.
B Legislative History
6.2 This provision shares its roots with section 1 of the UK Patents Act 1977 and even
though both Section 13 of the Singapore Patents Act and Section 1 of the UK
Patents Act had undergone changes since, the provisions relating to morality
continue to exist albeit in a differently worded text.
6.3 Sections 13(2) & 13(3) of the Singapore provisions correspond generally with
Sections 1(3) & 1(4) of the UK provisions.
Page 57 of 72
Page 58 of 72
1.33 Sections 1(3) and 1(4) were amended by the Patents Regulations 2000
(SI 2000 No.2037) so that the wording would more closely reflect the
wording of article 27(2) of the TRIPS agreement. Section 1(3)(a) had
previously stated that a patent would not be granted for an invention whose
“publication or exploitation” would “be generally expected to encourage
offensive, immoral or antisocial behaviour”. In practical terms, the effect of
s.1(3) remains the same, which is to prevent the grant of patent rights for
inventions which the general public would regard as abhorrent or from
which the public need protection. It provides a reasonably objective test
which has to be applied to each invention and its particular set of facts and
circumstances. Clearly what is to be regarded as contrary to public policy or
morality will vary according to changes in social attitudes and on no
account ought examiners to allow their own personal and individual beliefs
to colour their judgment on this matter. The decision of Aldous J in the case
of Masterman's Design [1991] RPC 89 under a similar provision of the
Registered Designs Act 1949 deals with issues broadly corresponding with
those which may arise under s.1(3). The Patents Act 1977 (Isle of Man)
Order 2003 (SI 2003 No. 1249) amended sections 1(3) and 1(4) for the Isle
of Man.
[Only in the clearest cases should examiners invoke this subsection and then only
following consultation with their Deputy Director. Any genuine doubt should be
exercised in favour of the applicant with an appropriate minute being created. ]
6.5 The UK also amended her laws to implement Articles 1 to 11 of the European
Directive 98/44/EC on the legal protection of biotechnological inventions. As the
European Directive does not apply to Singapore, they are not replicated in our
Patents Act.
6.6 What is instructive from reading the UK provisions and also the corresponding
provisions in the European Directive 98/44/EC is that these are standards
established within the European Community on the patentability of
biotechnological inventions. For example, they have steered clear from saying that
patenting of processes for cloning human beings, the commercial exploitation of
which would be contrary to public policy or morality. Instead, they merely declare
that such inventions are not patentable inventions, even though the background to
such a declaration could have arisen from an agreement that the commercial
exploitation of such processes would be contrary to public policy or morality.
6.7 In any event, these foreign practices serve as a reference guide for our Examiners in
that they provide assessment tools and tests to be use in the course of Examination.
Page 59 of 72
6.8 In the absence of local case precedents, we looked into UK’s and EPO’s practice to
see if they can shed any guiding principles which may be relevant to our
consideration under sections 13(2) and (3).
6.9 Paragraph 1.33 of the UK Manual of Patent Practice (Jul 2010) reminds us that
ii. Abhorrent
6.10 Paragraph 4.1 of the Guidelines for Examination in the European Patent Office
explains as follows:
6.11 On “offensive and non-offensive use”, paragraph 4.3 of the Guidelines for
Examination in the European Patent Office explains as follows:
Page 60 of 72
6.12 In sum, we would recall that section 13(2) states that an invention the publication
or exploitation of which would be generally expected to encourage offensive,
immoral or anti-social behaviour is not a patentable invention. The above tests are
useful as a guide and we would advise our Examiners to apply the above tests with
section 13(2) in mind.
D Section 13(3)
6.13 Section 13(3) states that “For the purposes of subsection (2), behaviour shall not be
regarded as offensive, immoral or antisocial only because it is prohibited by any
law in force in Singapore.”
1.36 Section 1(4) is a rider to section 1(3) to make it clear that an act or
action prohibited by a law is not to be considered as necessarily the same
thing as contrary to public policy or morality. (One reason for this is that a
product which could not lawfully be used in the UK may be manufactured
lawfully in the UK for export to countries where its use is not illegal).
However the existence of a law or regulation may be a material fact to be
taken into consideration in determining whether to refuse an application
under s.1(3). The nature and probable uses of the invention will need to be
considered as well as the exact terms of the prohibition. Thus if the
prohibition is directed unconditionally to the very act which the inventor
proposes very careful deliberation must be given as to whether to invoke
s.1(3). In such cases a useful test is to consider why the prohibition exists.
For example it is considered that the Landmines Act 1998 (implementing
the Ottawa Convention) was passed because the public in the UK generally
Page 61 of 72
6.15 Hence, the mere fact that a particular behaviour is prohibited by any law (in force
in Singapore) does not necessarily lead one to conclude that the behaviour is
regarded as offensive, immoral or antisocial. On the other hand, a finding of
Section 13(2) can still be raised notwithstanding the presence of a legal prohibition
if the behaviour is regarded as offensive, immoral or antisocial in any event.
6.16 An example is the Human Cloning and Other Prohibited Practices Act in
Singapore. Notwithstanding the existence of this law, an objection under Section
13(2) of the Patents Act should still be raised in a case when the invention relates to
human reproductive cloning. There should still be a finding that the invention the
publication or exploitation of which would be generally expected to encourage
offensive, immoral or anti-social behaviour and is not a patentable invention.
6.17 The Bioethics Advisory Committee (BAC) issued a report in 2001 and it stated (at
paragraph 39, page 31) that:
Following the issuance of the BAC report, the Human Cloning Human Cloning and
Other Prohibited Practices Act was enacted and it came into force in Singapore on
1st October 2004. In the Second Reading of the Bill as it then was, the Senior
Minister of State & Health Dr Balaji Sadasivan said that:-
Page 62 of 72
6.18 The prohibition of human reproductive cloning was codified into law in Singapore
as it is almost unanimous from the international community, local scientific and
religious groups as well as our general public that reproductive cloning of human
beings is abhorrent and should not be allowed under any circumstances. This is
prohibited by law in Singapore because it is regarded as offensive, immoral or
antisocial and as such objections under Section 13(2) should be made over such
inventions.
On the issue of morality with regard to gene inventions, we are reminded of the
case before the Opposition Division of the EPO in Howard Florey Institute
[Relaxin], V8/94 Relaxin, OJ EPO 6/1995 where it separated the arguments from
the patent issues that had to be decided on.
6.20 In Howard Florey Institute [Relaxin], it held that with regard to the isolation of
mRNA from tissue taken from pregnant women, the proprietor stated that the
women who donated tissue consented to do so within the framework of necessary
gynaecological operations. The Opposition Division of the EPO held that the
allegation that human life is being patented is unfounded. They pointed out that
DNA is not "life", but a chemical substance which carries genetic information and
can be used as an intermediate in the production of proteins which may be
medically useful. The patenting of a single human gene has nothing to do with the
patenting of human life. Even if every gene in the human genome were cloned (and
possibly patented), it would be impossible to reconstitute a human being from the
sum of its genes.
6.21 In Singapore, when assessing the issue of morality with regard to gene inventions,
we need to approach the issue in a similar objective manner as was done by the
Technical Board of the EPO in the Howard Florey Institute [Relaxin] case.
Through this process, it allows one to identify the issues at hand before one begins
to apply the Guiding Principles mentioned this Guide to the facts.
6.22 We share the EPO’s view that the patenting of a single human gene has nothing to
do with the patenting of human life. Even if every gene in the human genome were
Page 63 of 72
Chimeras in the mythical sense reared their heads in Book 6 of the Iliad (Homer).
In that book, a Chimera was described as a monster, where its head was that of a
lion, its tail was that of a serpent, and its body, was that of a goat.
6.24 Hence, inventions have to be examined as a whole and the term “chimeric animal”
should be read in perspective. It is only in the clearest cases should Section 13(2)
be invoked. Section 13(2) will apply if the grant of patent rights for inventions
which the general public would regard as abhorrent or from which the public need
protection.
Page 64 of 72
The WIPO article also summarised the positions taken in the US, EPO and Canada
then.
6.27 In the absence of local laws prohibiting the creation of such transgenic non-human
mammals coupled with the scientific and medical benefits arising from such
researches involving the use of these transgenic non-human mammals, mere
offence to a section of the public, in the sense that that section of the public would
consider the invention distasteful, is not enough for Section 13(2) to apply. Section
13(2) will apply only if the general public would regard the grant of patent rights
for such inventions as abhorrent or where the public need protection from the
publication or exploitation of the invention. Inventions involving transgenic
animals do not attract a section 13(2) objection.
Page 65 of 72
6.28 The use of the human embryo for commercial or industrial purposes is not
patentable under the UK Patents Act Schedule A2. European Directive 98/44/EC.
However, in Singapore, such use is governed under the Singapore Human Cloning
and other Prohibited Practices Act (http://statutes.agc.gov.sg/) which prohibits the
use of the human embryo after 14 days of its development after fertilisation.
6.29 Methods for generating cloned human embryonic stem cell lines as well as methods
where human blastocysts (an early stage of the embryo) are generated from
fertilised human oocytes should not run foul with the Human Cloning Human
Cloning and Other Prohibited Practices Act. The Senior Minister of State for
Health (Dr Balaji Sadasivan) in the Second Reading of the Human Cloning Human
Cloning and Other Prohibited Practices Bill (as it then was) explained:
Clause 5 of the Bill bans the implantation of any human clone in the body
of a human or animal. Since reproductive cloning, as we know it today,
requires implantation of the embryo into a womb, this effectively prohibits
the development of a human clone. Clause 7 prohibits against developing
human embryo created other than by fertilisation of human egg by human
sperm for a period of more than 14 days. In addition, clause 8 prohibits
against developing any human embryo outside the body of a woman for a
period of more than 14 days. I understand that embryos less than 14 days
old compose of undifferentiated cells. So the Bill allows for stem cell
research to be done on these cells for as long as it takes and so long as the
embryo is not further developed. I understand that the 14-day point was
recommended because it is at this time that the primitive streak appears.
Many groups believe that human life begins to exist only later. Thus,
clauses 7 and 8, read together, address our objections against experimenting
with human life forms while allowing stem cell research.
6.30 Inventions arising from use of human blastocysts in stem cell research not
prohibited under the Singapore Human Cloning and other Prohibited Practices Act
(http://statutes.agc.gov.sg/) will not attract a Section 13(2) objection.
Page 66 of 72
Table 9: Steps Involved in assessing the subject matter under section 13(2)
Step 1 Determine whether the subject matter in question is “abhorrent” or
“offensive” mentioned in this Chapter. If so, to proceed with Step 2.
Step 3 When in doubt, raise the issue to the Patent Quality Management Unit
(Search & Examination), IPOS.
Page 67 of 72
ANNEX
LIST OF PATENT DECISIONS IN SINGAPORE
CASE NAME COURT/IPOS CASE KEY WORDS Referred in
CITATION* this Guide
(Paragraphs)
1 Merck & Co, Inc v High Court — Suit No [1999] SGHC 323 Pharmaceutical product- 3.17
Pharmaforte 413 of 1999 Product claims-Process
Singapore Pte Ltd Lai Kew Chai J claims-Scope of claims-
23–27 August, 14 Purposive or realistic claim
October, 22 December construction-Infringement-
1999 Lack of novelty-
[2000] SGCA 39 Anticipation by disclosure-
Lack of inventive step-
Utility-Industrial
Court of Appeal — application- -Invalid 2.14, 3.20, 4.16
Civil Appeal No 9 of patent-Difference in purity
2000 unpatentable-Unsuccessful
Yong Pung How CJ, LP shift of burden of proof of
Thean and Chao Hick infringement to infringer
Tin JJA defendants by s68(1)
24 May, 28 July 2000 Patents Act
2 Genelabs High Court — Suit No [2000] SGHC 53 Virus test kit- European 3.18, 3.19
Diagnostics Pte Ltd 1762 of 1998 patent- Transitional
v Institut Pasteur & Tay Yong Kwang JC provision s116(3)
Anor Patents Act-Purposive
31 March 2000
construction-
[2000] SGCA 60 Infringement-Validity-
Court of Appeal — Novelty- Inventive step- 3.20
Civil Appeal No 14 of
Prior art-Disclosure-
2000
Innocent infringement-
Yong Pung How CJ, LP Acquiescence-Grant of
Thean and Chao Hick licence s43 Patents Act-
Tin JJA
Registration of exclusive
21 August, 2 November licence s75 Patents Act
2000
3 Bean Innovations High Court — Suit No [2000] SGHC 219 Letterbox mechanism- -
Pte Ltd and Another 1549 of 1999 Groundless threats-
v Flexon (Pte) Ltd Rubin J infringement-claims
21, 23–25 February, construction-specification
18 April, 12, 23 May,
31 October 2000
[2001] SGCA 42
Court of Appeal —
Civil Appeal No 78 of
2000
Yong Pung How CJ, LP
Page 68 of 72
ANNEX
LIST OF PATENT DECISIONS IN SINGAPORE
CASE NAME COURT/IPOS CASE KEY WORDS Referred in
CITATION* this Guide
(Paragraphs)
Thean and Chao Hick
Tin JJA
23 April, 26 May 2001
5 Peng Lian Trading High Court — Suits [2002] SGHC 238 Spectacle frames-lack of
Co v Nos 147/2000 and inventive step-definition-
Contour Optik Inc 371/2001 material difference-
and others Lee Seiu Kin JC revocation-groundless
3-16 October 2001, threats-recordals-
30 September-4
October, 14 October
2002
[2003] SGCA 25
Court of Appeal —
Civil Appeal No 126 of 4.20
2002
Yong Pung How CJ,
Chao Hick Tin JA and
Judith Prakash J
29 April; 24 June 2003
6 FE Global High Court — Suits [2005] SGHC 90 Computer peripheral- 3.16, 4.10,
Electronics Pte Ltd Nos 609, 604 and 672 Innocent Infringement- 4.11, 4.20
and Others v Trek of 2002 Purposive approach-
Technology Lai Kew Chai J subject matter in
(Singapore) Pte Ltd 12–30 April; 4–5 May; amendments-added matter-
disclosure-lack of
10 November 2004; 12
[2005] SGCA 55 inventive step-novelty-
May 2005
assignment of rights-
groundless threat-
Court of Appeal — revocation-
Suits Nos 69/2005, misrepresentation-
70/2005 conspiracy-joint
Yong Pung How CJ, tortfeasorship-undue delay
Chao Hick Tin JA and
Page 69 of 72
ANNEX
LIST OF PATENT DECISIONS IN SINGAPORE
CASE NAME COURT/IPOS CASE KEY WORDS Referred in
CITATION* this Guide
(Paragraphs)
Tan Lee Meng J
11 November, 30
December 2005
Page 70 of 72
ANNEX
LIST OF PATENT DECISIONS IN SINGAPORE
CASE NAME COURT/IPOS CASE KEY WORDS Referred in
CITATION* this Guide
(Paragraphs)
9 Seiko Epson Corp v High Court — Suit No [2007] SGHC 81 Ink cartridges- -
Sepoms Technology 699/2005, RA manufacturing-Innocent
Pte Ltd and Another 375/2006 infringement-defence to
Lai Siu Chiu J liability-accounting records
25 May 2007 [2007] SGCA 52
10 Mühlbauer AG v High Court — Suit No [2009] SGHC 45 Machine-Electronic 3.16, 4.3, 4.21
Manufacturing 80/2007 components-Inspection-
Integration Tay Yong Kwang J Placement-Infringement-
Technology Ltd 23 February 2009 Invalidity-Novelty-
Anticipation-Inventive
step-Threat of infringement
[2010] SGCA 6 s77 Patents Act-Expert
Court of Appeal — Evidence-Mosaic of prior
Civil Appeal No 34 of art-Commercial success not
2009 conclusive
Chao Hick Tin JA,
Andrew Phang Book
Leong JA, V K Rajah
JA
23 February 2010
11 ASM Assembly High Court — Suit No [2009] SGHC 206 Apparatus-Method-Place- 4.8, 4.21
Automation Ltd v 163/2007 Array of solder balls-
Aurigin Technology Tan Lee Meng J Substrate-Infringement-
Pte Ltd and Others 16 September 2009 Injunction-Revocation-
Novelty- Inventive step-
Serious and effective
preparations to
manufacture s71(1) Patents
Act-Groundless threats of
infringement s77 Patents
Act
12 Cargill International IPOS [2009] SGIPOS 12 Infant formula-Arachidonic -
Trading Pte Ltd v Danielle Yeow DR and acid-Eicosapentaneoic
Martek Biosciences acid-Triglyceride-
Page 71 of 72
ANNEX
LIST OF PATENT DECISIONS IN SINGAPORE
CASE NAME COURT/IPOS CASE KEY WORDS Referred in
CITATION* this Guide
(Paragraphs)
Corporation Isabel Chng PAR Revocation-Patentability-
3 November 2009 Novelty-Inventive step-
Foreign decisions-
Independence of expert
witnesses-Former or
current employees-Claim
construction-Dimensional
limitation-Enabling
disclosure-Submission of
evidence after close of
proceedings without leave
Page 72 of 72