IPL 6 - Patent Infringement PDF

**Takeaways** - Copyright and patents protect different aspects of intellectual property. - Patents incentivize innovation by granting inventors a monopoly in exchange for public disclosure. - Patent rights are territorial and must be obtained separately in each jurisdiction. -...

**Takeaways** - Copyright and patents protect different aspects of intellectual property. - Patents incentivize innovation by granting inventors a monopoly in exchange for public disclosure. - Patent rights are territorial and must be obtained separately in each jurisdiction. - The criteria for patentability include novelty, inventive step, and industrial applicability. - Assessing novelty involves considering the state of the art, priority date, and enabling disclosure. - Assessing inventive step requires evaluating whether the invention is obvious to a person skilled in the art. - Secondary indicators, such as commercial success, can be considered in determining inventiveness. Andrew Yip (00:00.674) Welcome to our IP topic on copyright. In this series of slides, we\'ll be looking at what copyright does and does not protect. Before we delve into the details of the patent\'s regime in Singapore, here\'s an introduction to the subject. Through these few slides, you should be able to better understand patent rights in their context. Andrew Yip (01:45.166) Let us first consider what a patent is. The definition on this slide is taken from a leading casebook on IP law in Singapore. The text in red sets out what a patent is, a set of monopoly rights granted by the state, which generally lasts for a maximum of 20 years. We will consider what these rights are in this later lecture. The text in blue sets out the main criteria which must be satisfied in order to obtain a patent. First, protection is only conferred on products such as a new chemical compound or processes such as a new way to manufacture a chemical compound. In order to obtain patent protection, among other things, the product or process must be novel, inventive and capable of industrial application. In addition, The person seeking patent protection must disclose the patent in sufficient detail for others to perform the invention. These criteria will be discussed in greater detail. The text in green sets out the rationale for the patent system. This is also why the patent must be disclosed in sufficient detail for others to perform the invention. This slide shows two examples of famous inventions which have been patented, the light bulb and the aeroplane. Of course, most patents are not for such groundbreaking inventions. Instead, most patents are for improvements over existing products or processes. For example, a better, faster or cheaper way to do something. Andrew Yip (03:35.608) The patent system can be seen as a bargain between the state and the inventor. Patents incentivise inventions by giving inventors and patent owners a monopoly in exchange for the public disclosure of their inventions. Andrew Yip (03:55.638) In doing so, the system encourages innovation, which enhances the quality of human life, creates jobs and spurs economic growth. The public disclosure of knowledge paves the way for even more innovation by future generations of researchers and inventors. Andrew Yip (04:18.71) As mentioned when we looked at the definition of a patent earlier, to obtain protection, the patent must be disclosed to the public. This means that after the patent has expired, the public is free to use the patented invention. This last rationale also stands in contrast to protecting an invention as confidential information. From the perspective of an inventor, There are certain advantages in protecting an invention as confidential information. For example, as long as it remains confidential information, protection can potentially last forever. But from the perspective of society as a whole, it is definitely preferable that an invention be protected as a patent, since that means it will be free for the rest of society to use once the patent has expired. Andrew Yip (05:18.668) Patent rights have to be separately obtained in each jurisdiction of interest. One invention could involve multiple patent grants in different countries and multiple sets of renewables. You should be aware that patent laws and practices differ from jurisdiction to jurisdiction and consult patent professionals who have expertise in the specific jurisdiction. Because patent rights are territorial, There is always the possibility of different patentability or validity findings and enforcement outcomes. Andrew Yip (05:59.328) After that introduction, let\'s take a closer look at the criteria for getting a Andrew Yip (06:09.006) This is the first and key substantive thing you must know about patents. The three positive criteria for an invention to be patentable are novelty, inventive step, and industrial applicability. In addition, as mentioned in the last lecture, a person seeking patent protection must disclose the patent in sufficient detail for a person skilled in the art to perform the invention. Andrew Yip (06:42.37) The need for this criteria of novelty can be understood in relation to the rationale for the patent system. You will recall that the patent system promotes innovation. This is achieved through a monopoly grant over an invention in exchange for the public disclosure of information on the invention. However, we must strike the right balance such that only good monopolies result. What\'s a good monopoly? That\'s one which gives the public something it has not had before and would not be likely to get without the incentive, at least not so soon. A bad monopoly is one which ticks from the public that which it already has or could readily have without the added incentive of the patent right. Thus, the criteria of novelty is needed to ensure that new matter is added to the public domain and the public is not deprived of its right to do what it has always been entitled to do. Andrew Yip (07:46.838) When we talk about novelty, the key terms you must know are state of the art, priority date, person skilled in the art, and anticipate. First, state of the art. You will also commonly encounter another like term, prior art. Section 14 -2 gives us the statutory definition of the state of the art. Have a Andrew Yip (08:19.426) you will see that state -of -the -art is a very broad concept. In terms of subject matter, it can be a pattern specification, journal article, prototype, contents of a lecture, chemical composition, and so Andrew Yip (08:40.558) This concept is also very broad from other perspectives. When we talk about matter that is made available to the public, we are looking at a global standard and not just in the territory where protection is sought. In terms of the modality of being made available, Section 14.2 makes clear that this can be by written or oral disclosure, used or in any other way. More on made available to the public in a later slide. Let us return to the term state of the art in the pattern stack. Andrew Yip (09:20.462) Section 14.7 of the Patents Act makes clear that state -of -the -art does not include a second medical use of a known substance or composition. This is a policy position that has been taken to encourage new medical uses to be found for known substances. Now that we have an idea of what state of the art entails, the next question is, state of the art at what time, what point in time? The answer lies in section 14.2. This points us to the period before the priority date of the invention in question. Thus, can understand priority date to be the cut -off date for determining state of the art. Andrew Yip (10:12.782) The most simple scenario when talking about priority dates is that set out in Section 17.1 of the Patents Act. If no priority claim on an earlier found application is made, then the priority date is taken as the date the patent application is Andrew Yip (10:34.254) However, Section 17 -2 provides for a priority date that can be earlier than the date of filing of the application. Have a look at the provision and its summary here. Andrew Yip (10:51.192) From a practice perspective, the earlier the priority date, the less the content of the state of the art. The later the priority date, the more prior art there is that could potentially defeat the pattern application on the ground of lack of novelty. Therefore, it is common for pattern applicants to claim priority based on an earlier application whenever they can. Andrew Yip (11:16.896) Another key term you must know is the person skilled in the art. Key is also sometimes referred to as the skilled adressee, skilled reader and skilled technician. Be careful not to confuse this term with an expert though. Experts and expert witnesses often possess extraordinary knowledge over and above the common expertise in the field. Have a look at the high -quality decision in Li Ta -ching and Makar GPS technologies. The important thing in patent litigation is getting an expert who is able to assist the court in viewing their patent claims through the eyes of the person skilled in the Andrew Yip (12:02.494) the person skilled in the art. He is someone from the industry or field of the technology relevant to the invention in question. He has a common general knowledge of and practical interest in the subject matter of the patent. Lest you think this is someone inventive, no. The person skilled in the art is unimaginative but reasonably intelligent and he wishes to make the directions in the patent Andrew Yip (12:34.06) You will also come across the term anticipate in cases in textbooks. The term is best explained in this sentence. If a prior art anticipates an invention, that invention has been disclosed in that prior art and is therefore not Andrew Yip (12:53.912) After understanding the key terms used when we discuss novelty, let us now turn to the key concepts. These are need available to the public, no mosaicing and enabling disclosure. Andrew Yip (13:13.902) In the earlier slide on Section 14.2, we have seen how broad the concept of making available to the public is from the statutory language. We also have the benefit of cases, for examples, of making available to the public. These include disclosure to a single member of the public, as well as disclosure through an unread book lying on the shelves of a public library. As you can The concept of making available to the public is Andrew Yip (13:49.814) Mosaicing is to read prior art collectively rather than individually. The rule against mosaicing means that a series of prior art cannot be combined when assessing novelty. Instead, a single prior art is to be compared with the invention in issue. It may be that a series of prior art taken collectively may lead a person skilled in the art to the invention, but that is relevant to inventist death and not novelty. Andrew Yip (14:22.562) There is a very limited exception as recognised in cases such as gene labs and mainline corporate holdings. If a later prior art expressly refers to an earlier prior art, or if a series of documents expressly refer to each other, these can be apprehended collectively, but only in respect of the parts that are expressly referenced. Andrew Yip (14:49.164) The third concept to bear in mind is that of enabling disclosure by the prior art. The prior disclosure must not only identify the content in a patent, it must do so in a way that enables the skilled person to make it. In other words, a mere signpost along the road to the invention will not suffice. The prior art must clearly show directions to the invention, or be a flag that marks the invention. Vague disclosures, or near misses, would not anticipate the pattern. Andrew Yip (15:24.93) Now that we understand the key terms and concepts related to novelty, how is novelty actually assessed? There are three basic steps to this. First, identify the invention as claimed in the patent specification. Second, identify the relevant prior art. IP officers typically search databases relevant to the subject matter to identify relevant prior art. Third, compare the invention and the prior art. to assess whether the invention forms part of the state of the art. The first step above entails a claim construction exercise. This means that the essential features of an invention are determined from the perspective of the person skilled in the art. At the second step, it must be clear that the prior disclosure or use did in fact take place. This is especially pertinent where prior use is supported only by oral evidence. Andrew Yip (16:27.082) At the third step, when comparing the individual prior art with the claims of the invention at hand, bear in mind these principles. It is the perspective of the person skilled in the art that is relevant. You have learnt earlier that such a person is reasonably intelligent but not imaginative. Second, and as you have also learnt earlier, items of prior art are to be individually compared with the invention without mosaicing. When comparing the invention with the prior art, be careful to do so as at the time of the prior art and not after, when more knowledge would have come into existence. The earlier considerations in the slide on enabling disclosure apply. Ask questions such as, would the teachings in the prior art inevitably lead to the invention? Is the prior art a flag that marks the invention? If so, that prior art has anticipated the invention and the latter is not novel. Andrew Yip (17:29.55) There are a few narrow exceptions to the rule against disclosure prior to filing. These can be found in section 14.4 of the Patents Act. You may come across the term grace period in patent practice. This refers to the 12 months from a disclosure that falls within the statutory exceptions such that the disclosure is disregarded in the assessment of novelty. After the grace period expires, the disclosure will no longer be I will leave you to read the Parisians in this light yourself. Andrew Yip (19:12.814) Here is the provision from the Patents Act. The requirement of Inventive Step is also sometimes referred to as the requirement of non -obviousness. The term non -obvious is directly drawn from the language of Section 15, as you can see in this slide. The main point is that an invention involves an Inventive Step if it is not obvious to a person skilled in the art, having regard to the state of the We have covered the key terms, persons skilled in the art and state of the art when considering novelty earlier on. You may wish to refer to those slides for a recap. Andrew Yip (19:58.818) Why does this requirement exist? Recalling the rationale for a pattern system, we understand that a pattern is a strong monopoly right that is granted to promote innovation. Such rights should not be easily granted as a matter of cause, but only be given to inventions which meet certain criteria. In this case, the subject matter must involve an inventive step and not just obvious modifications of what is already known. From the perspective of the public and thinking about enforcement of a patent right, we also understand that a patent monopoly should not stop others from doing what is merely an obvious extension or workshop variation of what\'s already Andrew Yip (20:49.836) The main concepts you must know about inventive step are these. First, whether something is inventive is assessed from the perspective of the person\'s guild -leaning art. This is always a point of reference, and the question is not whether the invention is obvious to the inventor or the expert in the field. Second, unlike novelty, mosaic -ing is allowed. Prior art can be read collectively rather than only individually. if it is obvious to the person\'s guilt in the art to do so. Third, an inventive concept relates to the invention as a whole. A layman way of looking at this is to ask, what is the essence of the patent? Section 25 -5d of the Patents Act requires the claims in the patent application to relate to one invention or a group of inventions which are so linked as to form a single inventive concept. On the other hand, When we use the phrase invented step, it denotes an evaluation of the inventiveness of the patent claim in question compared to the prior art. Having an inventive concept does not necessarily mean that an invention has an invented step as to be patentable. Fourth, when talking about invented step, you will also come across the phrase common general knowledge. This is the technical background of the person skilled in the art. It includes all material in the field he is working in, which he knows exists, and which he would refer to as a matter of course. For example, a description in standard textbooks, a scientific paper that is widely cited, or a set of industry standards may be considered part of the common general knowledge in a particular case. It is important to distinguish common general knowledge from public knowledge. Just because something is in the public domain does not make it part of the common general knowledge. As with novelty, one should guard against assessment of inventive step made with the benefit of hindsight. Andrew Yip (23:01.846) Moving on to how we assess inventive step, the two main approaches are set out here. Their respective merits are structure and simplicity. The structured approach is applied in Singapore. This essentially entails an application of the test in the UK decision of windsurfing and table marine. If you practice patent law in Singapore, you should know how to apply this test. For those inclined towards simplicity, Lord Herschel in Vickers and Siddle puts it concisely that an invention lacked an invented step if what was claimed is so obvious that it would at once occur to anyone acquainted with the subject and desirous of accomplishing the end. More on this later when we come to our own Court of Appeal decision in First Currency Choice in Andrew Yip (23:55.758) Here is the 4 -step windsurfing test. Have a look at the sequential steps. Andrew Yip (24:07.886) Here is the 4 -step windsurfing test. Have a look at the sequential steps. Andrew Yip (24:22.862) Upon a close look, you will realize that the assessment of Invented Step lies in Step 4. The first three steps lay the groundwork for this final step. The question asked at Step 4 really brings us back to the simple question asked by Lord Herschel earlier on. In this regard, the Court of Appeal in First Currency Choice and Mainline requiring that, simplicity is certainly to be appreciated and in assessing the obviousness of an alleged invention, it may sometimes suffice to refer to the test formulated by Lord Herschel in Vickers and Siddle. The Court of Appeal also commented that while the windsurfing test remains a useful guide, it is no more than that. Above all, it should be borne in mind that the windsurfing test is merely a manifestation of judicial inventiveness on how best to pragmatically interpret and elucidate the requirements of section 15 of the Act. Andrew Yip (25:31.306) In seeking to answer the question of inventiveness, courts have considered various formulations. Be aware that these are just tools and they are pitfalls in blindly adopting them without being aware of their limitations. In relation to the obvious -to -try formulation, it has been said that if an invention was obvious to the person skilled in the art to try, it is less likely to be inventive. This test is generally only useful in cases where it is more or less self -evident that what is being tested ought to work. In another formulation, an invention is obvious if the prior art was lying on the road and there for the research worker to use. Courts have also had regard to secondary indicators in their assessment of inventive step. Commercial success could be an indicator of inventive step because it suggests that the invention meets a long -felt need in the industry. And if the invention was obvious, why was it not done before? However, be aware that commercial success is not in itself conclusive of inventiveness. This is because there could be other reasons for the commercial success of an invention, such as clever marketing and competitive pricing. Our Singapore courts have applied this factor in several cases, including the Court of Appeal decision in this slide. Have a look at these cases to see the way in which this factor is applied. Going against conventional wisdom and technical prejudices also supports a finding of inventive step. If, contrary to the mistaken prejudice that something would not work or be impractical, the invention actually works, then this contribution is non -obvious. B24 IPL - **[Patents]** - Subtopic - **[ Infringement]** - s66(1)(a) PA - s66(1)(b), (c) PA - What is the extent of the protection conferred by a patent grant? **[Or how should claims be construed in infringement? (s113 PA)]** - **[Three]** approaches to Claim construction - Lee Tat Cheng v Maka GPS Technologies Pte Ltd \[2018\] 1 SLR 856 ("Maka") **[affirmed the purposeful approach]** - **[ Remedies, Defence and Counterclaim]** - s66(1) PA - No infringement due to unfulfillment of patentability criteria - s66(2) PA - Non-commercial use - s69(1) PA - Defendant had no knowledge of patent - s69(2) PA - Use of the word \"patent\" does not put Defendant on notice - **[ Revocation - two ways]** - \[1\] s80(1) PA - Not a patentable invention - s81 PA- The patent owner must be afforded the opportunity to amend the offending specification - s82(1)(d) PA read with Rule 80 - Revocation Process - s80(5)(a) and (b) PA - Effect of Revocation - **[ Remedies, Defence and Counterclaim]** - **[ Statutory Damages]** - Patents Act (PA): sections 67, 75, 76 - s67 PA - proceedings for infringement of patent - s75 PA - Effect of non-registration on infringement - s76 PA - Infringement of rights conferred by publication of application - Copyright Act (CA): section 305 - Section 308 CA - Statutory damages capped - Statutory v Additional damages (punitive): section 307 CA - PH Hydraulics & Engineering Pte Ltd v Intrepid Offshore Construction Pte Ltd and another \[2012\] SGHC 133 - Trade Marks Act (TMA): section 31 - Section 31(5)-(6) TMA - Factors are not the same under each Act - **[Account of Profits]** derived from the infringing act - **[prevent double recovery - account of profits are mutual exclusive]** - s305(1)(c) CA - s305(2) CA - mutually exclusive - s305(3) CA - s31(2)(c) TMA - s31(4) TMA - mutually exclusive - s31(3) TMA - s67(1)(d) PA - s67(2) PA - Main-Line Corporate Holdings Ltd v UOB and Anor (First Currency Choice, Third Party) \[2009\] SGHC 232 - Bosch Corp v Wiedson International (S) Pte Ltd \[2015\] SGHC 105 - Additional Damages Election of Remedies Defendant should file defence and counterclaim on the basis of invalidty - Revocation of TM Registration: section 22 TMA Invalidation of TM Registration: section 23 TMA Revocation of a Patent: section 80 PA