Patents - Part 1 PDF

Corporate & Commercial Practice Intellectual Property Patents – Part 1 Intellectual Property Office of Singapore Patents An Overview Introduction Definition Rationale and Philosophy Behind Patents Jurisdictional Nature International Dimension...

Corporate & Commercial Practice Intellectual Property Patents – Part 1 Intellectual Property Office of Singapore Patents An Overview Introduction Definition Rationale and Philosophy Behind Patents Jurisdictional Nature International Dimension 3 What is a Patent? “Patents are monopoly rights granted by the State to those who have invented novel products or processes that involve an inventive step over what has gone before and are capable of industrial application. With very limited exceptions, the protection can last for a maximum of 20 years. The social contract underlying the system is that, in return for the grant of the monopoly, the patent specification is placed on the Patents Register that is free for anyone to search and thereby adds to the store of human knowledge and ingenuity. After the patent expires, anyone is free, without restriction or payment, to exercise the patented invention disclosed in the register. Indeed, one of the requirements for patentability is that it discloses sufficient detail so that a skilled person may perform the invention.” Prof David Llewelyn, et al Cases, Materials and Commentary on Singapore Intellectual Property Law (SAL Academy Publishing) (2018) at [02.001] 4 Patent Examples T.A. Edison, Electric Lamp, 27 Jan 1880 O & W Wright, Flying Machine, 22 May 1906 5  Rationale and Philosophy “… the patent laws… began in England in 1624; and, in this country, with the adoption of our constitution. Before then any man might instantly use what another had invented; so that the inventor had no special advantage from his own invention. The patent system changed this; secured for the inventor, for a limited time, the exclusive use of his invention; and thereby added the fuel of interest to the fire of genius, in the discovery and production of new and useful things.” - President Abraham Lincoln Source: Gene Quinn, Celebrating Presidents who Advocated for the U.S. Patent System (18 February 2013) 6 Rationale and Philosophy “Intellectual Property (IP) rights is a cornerstone for global collaboration and will play an even bigger role in years to come – as innovation and technology enable us to build more with less, and to build a better world. A sound system of managing IP is necessary for us to balance the risks and rewards of pursuing innovation, as well as to meet the needs of people around the world.” - DPM Heng Swee Kiat Source: Deputy Prime Minister Heng Swee Keat, Facebook Post (8 May 2020) 7  Rationale and Philosophy Bargain between state and inventor Monopoly over the invention for a limited period of time In exchange for public disclosure of the invention (contrast: protection as confidential information) Objectives Encourage innovation to enhance quality of life, create jobs and spur economic growth Increase the stock of knowledge in the public domain, for further innovation 8 Jurisdictional Nature Territorial Separate protection required in individual jurisdictions  One invention, multiple patent grants & renewals  Possibility of different validity findings and enforcement outcomes 9 Intellectual Property Key Patentability Requirements Patentable Invention Section 13(1) Patents Act New (s 14) Involves an inventive step (s 15) Capable of industrial application (s 16) Section 25(4) Patents Act Sufficiency 11  New Recap rationale for patent system Encourage innovation By granting monopoly over the invention for a limited period of time Distinction between good and bad monopolies Whenever a patent monopoly is granted New matter is added to the public domain The public is not deprived of its right to do what it has always been entitled to do 12 New Key Terms State of the art Priority date Person skilled in the art Anticipate 13  New – State of the Art Section 14(1) An invention shall be taken to be new if it does not form part of the state of the art. Section 14(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. 14 New – State of the Art Prior art Very broad subject matter Can be a patent specification, journal article, prototype, contents of a lecture, a chemical composition etc. 15  New – State of the Art “Made available to the public” Global, not territorial, standard “whether in Singapore or elsewhere” Modality of being “made available” Written or oral description Use Or in any other way 16  New – State of the Art Section 14(10) Patents Act (10) In the case of an invention consisting of a substance or composition for use in a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body, the fact that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if the use of the substance or composition in any such method does not form part of the state of the art. State of the art does not include a new medical use of a known substance or composition 17  New – Priority Date Section 14(2) Patents Act 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. Generally, the priority date is the cut-off date for determining the state of the art 18  New – Priority Date Section 17(1) Patents Act 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. 19  New – Priority Date Section 17(2), (3), (9), (10) Patents Act Priority can be claimed from the date of filing of an earlier application that: is filed in a Paris Convention country or WTO member is filed within the preceding 12 months and discloses matter which supports the invention in the present patent application 20 New – Person Skilled In The Art A.k.a. “skilled addressee”, “skilled reader”, “skilled technician” Do not confuse with “expert” Read: Lee Tat Cheng v Maka GPS Technologies SGHC 48 at - 21  New – Person Skilled In The Art From industry or field of technology relevant to the invention in question Has common general knowledge of the subject matter Has a practical interest in the subject matter of the patent Reasonably intelligent but unimaginative Not inventive Wishes to make the directions in the patent work Read: First Choice Currency Pte Ltd 1 SLR(R) 335 at Ng Kok Cheng v Chua Say Tiong 2 SLR(R) 326 at 22 New – Anticipate If a prior art anticipates an invention, that invention has been disclosed in that prior art and is therefore not novel. 23 New Key Concepts “Made available to the public” No mosaicking Enabling disclosure 24  New – Made Available To The Public Condition is satisfied even if the disclosure had been made available only to a single member of the public Read: Institut Pasteur v Genelabs Diagnostics Pte Ltd SGHC 53 at A book describing the invention that lies amongst the shelves of a public library, but is unread, still potentially anticipates the invention Read: First Currency Choice Pte Ltd v Main-Line 1 SLR(R) 335 at 25  New – No Mosaicking Mosaicking Reading prior art collectively rather than individually Rule against Mosaicking A series of prior art cannot be combined in novelty assessment Instead, a single prior art is to be compared with the invention in issue It may be that the series of prior art may lead a person skilled in the art to the invention, but that is relevant to “inventive step” and not “novelty” 26  New – No Mosaicking Limited exception A later document expressly refers to an earlier document A series of papers or documents expressly refer to each other Only parts which are referred to can be mosaicked Read: Genelabs Diagnostics 3 SLR(R) 530 at - 27  New – Enabling Disclosure The prior disclosure must be an “enabling disclosure” Following the teachings in the prior publication would inevitably lead to the invention 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 person to make or obtain it Not vague disclosures or near misses but must be found within the prior art in issue Read: Muhlbauer AG v Manufacturing Integration Technology Ltd 2 SLR 724 at 28  New – Assessment 3 steps (a) Identify invention as claimed in the patent specification (b) Identify relevant state of the art / prior art (c) Compare (a) and (b) to assess whether the invention is part of the state of the art At (a), claim construction from the perspective of the person skilled in the art At (b), there must be clear and satisfactory evidence that the prior disclosure / use did in fact take place Main-Line Corporate Holdings Ltd v United Overseas Bank 1 SLR(R) 1021 at - 29  New – Assessment At (c), when assessing whether the invention has been anticipated by prior art, bear in mind the following: Seen through the eyes of the person skilled in the art No mosaicking of the different prior art Guard against ex post facto analysis of the invention that invokes knowledge coming into existence after the prior art Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd 1 SLR(R) 1021 at Would teachings in the prior publication inevitably lead to the invention? Mere signpost? Or a flag that marks the invention? 30  New – Exceptions Section 14(4) Patents Act (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 — Specific exceptions to save an invention from novelty- destroying scenarios Within 12 months before filing of the patent application “grace period” 31  New – Exceptions Section 14(4) … continued (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 was entitled to obtain it; (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; Obtained unlawfully / Breach of confidence 32  New – Exceptions Section 14(4) (c) the disclosure was due to, or made in consequence of, the inventor displaying the invention at an international exhibition; (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; or (e) Subject to subsections (6) and (7), the disclosure was made to the public by the inventor, or by a person who obtained the matter directly or indirectly from the inventor, in any circumstances not described in paragraphs (a) to (d). Invention displayed at international exhibition Invention disclosed in a paper to learned society Other circumstances 33 New - Exceptions In summary: under Section 14(4) of the Patents Act, disclosures within 12 months before the filing of the application are disregarded where: disclosures made in breach of confidence disclosures by the inventor at ‘international exhibitions’ disclosures by or with the consent of the inventor before a learned society disclosures in other circumstances 34  Inventive Step Section 15 Patents Act An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 14(2) and without having regard to section 14(3). Inventive step a.k.a. “non-obvious” Not obvious to a person skilled in the art Having regard to the state of the art 35  Inventive Step Recap rationale for patent system Encourage innovation By granting monopoly over the invention for a limited period of time Grant monopoly only to those inventions which meet certain criteria E.g. Must be inventive (involves inventive step), not just obvious modifications of what is already known Monopoly granted should not stop others from doing what is merely an obvious extension or workshop variation of what is already known 36 Inventive Step Key Concepts Assume the mantle of the person skilled in the art Mosaicking allowed, if obvious “Inventive concept” vs “Inventive step” “Common general knowledge” vs “Public knowledge” No ex post facto analysis, which is unfair to inventors 37  Inventive Step - Assessment 2 approaches: Structure Simplicity Structured: Windsurfing v Tabur Marine RPC 59 Applied in SG e.g. Merck v Pharmaforte 2 SLR(R) 708 at ; Genelabs 3 SLR(R) 530 at ; First Currency Choice Pte Ltd v Main-Line 1 SL(R) 335 at 38  Inventive Step - Assessment Windsurfing test 1. Identify the inventive concept in the invention 2. Impute to the person skilled in the art the common general knowledge in the art at the priority date 3. Identify differences, if any, between the prior art and invention 4. Decide whether the differences, viewed without any knowledge of the invention, are obvious steps to the skilled person, or require any degree of invention 39  Inventive Step - Assessment Windsurfing test 1. Identify the inventive concept in the invention 2. Impute to the person skilled in the art the common general knowledge in the art at the priority date 3. Identify differences, if any, between matter cited and invention 4. Decide whether differences, viewed without any knowledge of the alleged invention, are obvious steps to the skilled person, or require any degree of invention The crux of the inquiry lies in Step 4 of the Windsurfing test -> back to simplicity in approach? The test was described as a “useful guide” and no more than that, in First Currency Choice Pte Ltd v Main-Line 1 SLR(R) 335 at 40  Inventive Step - Assessment Some formulations: “Obvious to try”, “well worth trying” “Lying on the road” Merck v Pharmaforte 3 SLR(R) 1072 at “Commercial success” and “long felt want” Mühlbauer v MIT 2 SLR 724 at Going against conventional wisdom / Overcoming misguided prejudice Mühlbauer v MIT 2 SLR 724 at 41  Inventive Step - Assessment Some considerations: Simplicity is not a bar to inventiveness FE Global Electronics v Trek Technology 1 SLR(R) 874 at , First Currency Choice Pte Ltd 1 SLR(R) 335 at , Size of gap between prior art and invention does not measure inventiveness First Currency Choice Pte Ltd 1 SLR(R) 335 at Amount of time spent not determinative of inventiveness 42 Notice Copyright © 2024, Singapore Institute of Legal Education. All rights reserved. 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