Patents - Part 2 PDF

Corporate & Commercial Practice Intellectual Property Patents – Part 2 Intellectual Property Office of Singapore  Industrial Applicability Recap purpose of the patent system. Patent protection is intended for inventions, not mere discoveries. If the subject-matter...

Corporate & Commercial Practice Intellectual Property Patents – Part 2 Intellectual Property Office of Singapore  Industrial Applicability Recap purpose of the patent system. Patent protection is intended for inventions, not mere discoveries. If the subject-matter is capable of industrial application, it indicates that the subject-matter is more than a mere discovery. 2  Industrial Applicability Section 16(1) Patents Act Subject to subsection (2), an invention shall be taken to be capable of industrial application if it can be made or used in any kind of industry, including agriculture. Any kind of industry, including agriculture 3  Industrial Applicability Section 16(2) Patents Act An invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body shall not be taken to be capable of industrial application. Exclusions: Method of treatment of the human or animal body by surgery Method of treatment of the human or animal body by therapy Method of diagnosis practised on the human or animal body 4  Industrial Applicability Section 16(3) Patents Act Subsection (2) shall not prevent a product consisting of a substance or composition from being treated as capable of industrial application merely because it is invented for use in any such method. Notwithstanding the exclusion in Section 16(2), products used in such methods of treatment or diagnosis are potentially capable of industrial application. 5  Sufficiency Section 25(4) Patents Act The specification of an application shall disclose the invention in a manner which is clear and complete for the invention to be performed by a person skilled in the art. 6  Sufficiency: Policy The “patent bargain”: “The condition of giving encouragement is this: that you must specify upon record your invention in such a way as shall teach an artist, when your term is out, to make it – and to make it as well by your directions: for then at the end of the term, the public shall have benefit of it. The inventor has the benefit during the term, and the public have the benefit after…” Liardet v Johnson (1778) “The principle remains the foundation of modern patent law.” Warner Lambert Company LLC v Generics (UK) Ltd t/a Mylan UKSC 56 (Supreme Court) at 7  Sufficiency: Test Question of fact depending on the nature of the invention and the other circumstances of the case. Two-step test: (1) Identify the invention and decide what it claims to enable the skilled man to do (2) Ask whether the specification enables him to do it First Currency Choice Pte Ltd 1 SLR(R) 335 at - 8  Not encourage offensive, immoral or anti-social behaviour Section 13(2),(3) Patents Act (2) 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. (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. 9 Intellectual Property Grant Process and Pre-Filing Considerations Application and Grant Process 1 2 3 4 6 5 7 Source: Japan External Trade Organization (JETRO) Singapore Office, Survey on the Appeal, Opposition and Invalidation Procedures related to Patents, Designs & Trademarks in Singapore (March 2020) Application and Grant Process – Some Points to Note Filing Date Section 26 Patents Act This is important as “novelty” and “inventive step” are assessed as at the priority date, which is usually the date of filing: see Section 17(1) read with Sections 14 & 15 Priority date can be earlier than the filing date if there is a priority claim (i.e. excludes more prior art from consideration) – Section 17 Application and Grant Process – Some Points to Note Publication As soon as possible after 18 months from date of filing / priority date Section 27 Patents Act read with Patents Rule 29(1) Applicant may request for early publication Section 27(2) Patents Act (e.g. if it wishes to expedite the grant of the patent) Application and Grant Process – Some Points to Note Publication (continued) Effect of publication: Loss of protection as confidential information: see QB Net Co Ltd v Earnson Management (S) Pte Ltd 1 SLR(R) 1 at Application forms prior art for other patent applications worldwide Applicant can recover damages for patent infringement dating back to date of publication: Section 76 Patents Act Application and Grant Process – Term of Patent and Renewals Term of Patent Section 36(1) Patents Act A granted patent shall be in force from the date of issue of certificate of grant until the end of a period of 20 years beginning from the date of filing of the application for patent Renewals Patents Rule 51(1) To keep a granted patent in force, the proprietor needs to pay annual renewal fees from the end of the 4th year from the date of filing of the patent application. The renewal fee is payable within a prescribed period (i.e. 3 months preceding each anniversary of the date of filing of the application) Pre-Filing Considerations Disclosure of Invention Filing Strategy Ownership IP Due Diligence Disclosure of Invention Impact of pre-filing disclosures on novelty and inventive step Why should an invention be kept confidential prior to filing? Disclosure of Invention Recap: Grace Period (affects assessment of novelty and inventive step) Legislative amendments in 2017 to Patents Act Section 14(4)(e) etc. and Patents Rule 8 to broaden grace period Caution: Not all jurisdictions have a similarly broad grace period provision. Still some risk in disclosing invention before application for protection. 18 Filing Strategy Key: Business objectives and budget The above affects: Where to file How to file Ownership Employees’ Inventions: Sections 49, 50 Patents Act Right to employees’ inventions 49.—(1) Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, be taken to belong to his employer for the purposes of this Act and all other purposes if — (a) the invention was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or (b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer’s undertaking. 20 Ownership 50.—(1) This Part shall not apply to an invention made by an employee unless at the time he made the invention one of the following conditions was satisfied in his case: (a) he was mainly employed in Singapore; or (b) he was not mainly employed anywhere or his place of employment could not be determined, but his employer had a place of business in Singapore to which the employee was attached, whether or not he was also attached elsewhere. … (4) Nothing in this Part shall be construed as precluding the operation of an agreement or a contract in relation to the right to an invention. 21 IP Due Diligence Why is doing due diligence prior to filing useful? Perform searches of patent literature (information on registered patents and pending patent applications) non-patent literature (such as science, technology and engineering journal articles) 22 Intellectual Property Patent Infringement Acts of Infringement Infringing a product patent Infringing a process patent 24  Infringing a Product Patent Section 66(1)(a) Make Dispose of Offer to dispose of Use Import Keep, whether for disposal or otherwise 25  Infringing a Process Patent Section 66(1)(b), (c) In relation to process In relation to product obtained from process Use Dispose Offer for use Offer to dispose Use Import Keep, whether for disposal or otherwise 26 Lee Tat Cheng v Maka GPS Technologies Pte Ltd 1 SLR 856 (“Maka”) What is the extent of the protection conferred by a patent grant? 27 Section 113(1) … an invention … shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification … as interpreted by the description and any drawings contained in that specification, and the extent of the protection … shall be determined accordingly. 28 Claim Construction Purposive 29  Literal Construction Look at patent claims narrowly and literally Literalism could be exploited by imitators seeking loopholes in the patent monopoly Such imitators could simply avoid infringement by making an immaterial variation to the claimed invention 30  Purposive Approach What a person skilled in the art would have understood the patentee to have used the language of the claim to mean Fair protection to patentee Fair protection to third parties who need to be able to rely on patent claims for delimitation of the boundaries of the patent 31  Doctrine of Equivalents A patent is infringed if the defendant’s product performs substantially the same function in substantially the same way as the invention disclosed in the patent so as to achieve the same results as that invention. Allows a patentee to extend his monopoly beyond the claims in the specification. 32 Maka Doctrine of equivalents decisively rejected Purposive approach affirmed See key principles of purposive approach at of Maka Note that the doctrine of equivalents is applied in many major jurisdictions (e.g. USA, most of Europe, China, Japan & Korea) 33 Defences Section 66(1) Alleged infringement did not take place while the patent is in force  Defence and counterclaim: Patent should be revoked e.g. because it does not fulfil the patentability criteria 34 Defences Section 66(2) Act is done privately and for purposes which are not commercial Act is done for experimental purposes relating to the subject matter of the invention Etc. 35  Restrictions on Relief Section 69(1) No damages / account of profits If defendant was not aware and had no reasonable grounds to suppose, at the date of infringement, that the patent existed Burden of proof on defendant 36  Restrictions on Relief Section 69(2) How to be aware or to have had reasonable grounds to suppose that that the patent existed? Patent number accompanies the word “patent” / “patented” or any word(s) applied to a product, expressing or implying that a patent has been obtained for the product. E.g. “Singapore Patent No. xyzxyz” 37 Intellectual Property Patent Revocation Introduction Why revoke? How to revoke? Patent is cited against your own Apply to revoke a patent patent application (examinable) Apply for binding re-examination (non-examinable) You are sued for patent Challenge validity of patent by way infringement of defence and counterclaim Patent is blocking your freedom to Apply to revoke a patent operate (examinable) You risk infringing a patent Apply for binding re-examination Read more in Section 82(1) Patents Act (non-examinable) 39 Comparison Application to Revoke a Patent Application to Re-examine a Patent (non-examinable) Section 80 Section 38A Rules 80-84 Rule 52A File in High Court or with Registrar of File with Registrar of Patents Patents Inter partes Ex parte Both parties will file evidence and Applicant for re-examination has no role submissions, before Court or Registrar after filing the application decides Chiefly between Registrar and patentee Longer, more expensive process Shorter, less expensive process But applicant for re-examination cannot comment on patentee’s response to written opinion 40 Grounds of Revocation Section 80(1) Not a patentable invention oE.g. not novel oE.g. not inventive Granted to someone not entitled to be granted that patent Etc. 41  Process of Revocation at IPOS Section 82(1)(d) and Rule 80 Application for revocation Counter-statement Amendment to specification may be filed with counter-statement Evidence by applicant for revocation Evidence by proprietor (patentee) Evidence in reply by applicant for revocation 42  Effect of Revocation Section 80(5)(a) Patent is unconditionally revoked Section 80(5)(b) Where ground of revocation is established but only so as to invalidate the patent to a limited extent Patentee may amend specification under Section 83 to the Registrar’s satisfaction Otherwise, patent will be revoked 43 Effect of Revocation Section 80(7) Revocation takes effect from the date of grant of the patent Very serious consequence 44 Notice Copyright © 2024, Singapore Institute of Legal Education. All rights reserved. The Course materials are developed by the Singapore Institute of Legal Education, based on the content, syllabus, and guidance provided by the Chief and Principal Examiners and their teams. No direct or indirect reproduction, publication, communication to the public, adaptation or any other use (that is prohibited and/or proscribed by copyright laws) of the Course materials in whole or in part in any form or medium is allowed without the written permission of the Singapore Institute of Legal Education. Part B Candidates should refer to the Code of Conduct for more information, particularly, the sections on conduct and behaviour, and the use of SILE resources.