IPL 5 - Patent Basics PDF

Takeaways Simplicity and the size of the gap between prior art and the invention are important factors in determining patentability. An invention must be capable of industrial application to be eligible for patent protection. Sufficiency requires the disclosure of the invention in sufficient deta...

Takeaways Simplicity and the size of the gap between prior art and the invention are important factors in determining patentability. An invention must be capable of industrial application to be eligible for patent protection. Sufficiency requires the disclosure of the invention in sufficient detail for others to know how it works. Confidentiality before filing is crucial to maintain novelty and avoid prior disclosure. Considerations for filing a patent application include business objectives, budget, and potential competitors. Claim construction is important in determining the extent of patent protection and infringement. Defenses to patent infringement include lack of enforcement at the time of infringement and lack of awareness of the patent. Revocation of a patent can be sought through a revocation application or re-examination. Grounds for revocation include lack of novelty or inventiveness. Revocation of a patent has the effect of nullifying the patent from the date of grant. Andrew Yip (00:10.766) It has been remarked in 1st Currency Choice and Mainline at paragraph 54 that the hallmark of many truly remarkable inventions is precisely their simplicity. So bear in mind that just because something is simple doesn\'t mean it is not inventive. Related to this point is the size of the gap between the prior art and the invention. It doesn\'t matter if the step might have seemed Lilliputian if It is no less significant a step forward, which nobody had taken before. As for the time taken to come up with the invention, our court has recognised that sometimes this takes a while, and at other times, one can have a flash of inspiration and come up with a new idea in a jiffy. Andrew Yip (01:00.204) We have covered two of the three key criteria of a patentable invention. Let us now consider the third requirement, that the invention be capable of industrial application. Why do we have this in requirement? Well, the purpose of the patent system is to promote technological advancement. Patent protection is therefore meant for inventions, not mere discoveries. If the subject matter is capable of industrial application, it indicates that the subject matter can be practical and useful, and not purely abstract, aesthetic or intellectual. The statutory definition is provided in Section 16.1 of the Patents Act. The concept of industry is broad and includes agriculture. Section 16.2 expressly excludes certain subject matter from being capable of industrial application. There is some public policy reason for this, and the argument goes that it is not in the interest of the public to have methods of treatment and diagnosis subject to such a strong monopoly. Andrew Yip (02:10.125) However, Section 16.3 somewhat reigns in the expression of this public policy concern. Pharmaceutical drugs invented for use in such methods of treatment or diagnosis can still be capable of industrial application. You may also recall from our earlier slide that under Section 14.7, a new second medical use of a known substance or composition may also be The current state of the law perhaps reflects the balance between enabling access to diagnosis and treatment on the one hand, and the incentivisation of innovation on the other hand, by enabling drug companies to recoup their substantial investment in R &D. We now come to the requirement of sufficiency, which is set out in section 25 for the Patents Act. Andrew Yip (03:06.091) The requirement of sufficiency has been described as the patent bargain and the foundation of modern patent law. In exchange for the statutory monopoly conferred by the grant of the patent, the applicant must disclose the invention in sufficient detail such that others will know how the invention works. After the expiry of the monopoly, the public will then be free to enjoy the benefits of the patent. Andrew Yip (03:38.519) Whether an invention has been sufficiently disclosed is the question of fact. Courts apply a two -step test to ascertain if this requirement has been met. First, identify the invention and decide what it claims to enable the skilled man to do. Second, ask whether the specification enables him to do Andrew Yip (04:05.719) Finally, we come to a negative criterion. An invention is not patentable if its publication or exploitation would be generally expected to encourage offensive, immoral or antisocial behaviour. However, just because a certain behaviour is prohibited by law in Singapore does not mean that it is therefore offensive, immoral or antisocial. Andrew Yip (04:38.773) Let\'s now take a brief look at the pattern ground process and then learn about some prefiling considerations. The flow chart on this slide sets out the stages in the patent application and grant process up till grant. They are Stage 1, the applicant files a patent application. Stage 2, the registrar conducts a preliminary examination. This is very basic and looks at things like whether the application complies with the formal requirements, whether any drawings or description is missing. Stage search and examination. If there are no unresolved objections, the application proceeds to stage 6, where the registrar issues a notice of eligibility and the patent proceeds to grant. If there are objections arising from examination, the applicant will be given the opportunity to address them, say stage 4. If the objections are not resolved, there will be an examination report to this effect. and the registrar will issue a notice of intention to refuse the patent application. However, at stage 5, the applicant still has the opportunity to seek a review of the examination report and try to overcome any unresolved objections. If it succeeds, the matter will reach stage 6 and the patent proceeds to grant. If the applicant doesn\'t overcome the objection at stage 5, The matter will go on to stage 7. The registrar issues a notice of refusal and the applicant may appeal to the High Court. The next few slides will consider aspects of the process in greater detail. You may wish to pause the video and take some time to look at the process flow here. Have a look at the flow chart again at the end of this section when you should have a better appreciation of the steps in the pattern application process. Andrew Yip (06:47.949) In the next few slides, we\'ll look at some important points in the patent application process. First, the filing date. The date of filing a patent application is the earliest date at which the documents filed at the registry satisfy the conditions in Section 26. The conditions set out in this provision are quite easy to satisfy. This is important as the filing date determines whether an applicant is in time to claim priority from an earlier patent application filed in another jurisdiction. If this is the first patent application, it determines the date at which matters such as novelty and inventive stem are assessed. If there is more than one application filed for the same invention, it also determines which applicant will secure the right to the invention. You are not required to note Section 26 in detail. Second, priority date. An applicant can claim an earlier priority date that is within the 12 months preceding the date of filing his application by making a declaration that specifies one or more earlier relevant applications. We have covered the issue of priority in your second audio lecture on patents. Andrew Yip (08:18.541) Next, let\'s consider publication. The patent application will be published in the patent\'s journal as soon as possible after 18 months from the date of filing the patent application or from the declared priority date. It is possible to request for earlier publication if this is desired. Andrew Yip (08:43.105) The publication date is significant for several reasons. First, upon publication, the information set out in the patent document will be publicly available. Accordingly, it can no longer be protected as confidential information. If the applicant wishes to preserve confidentiality, he must withdraw the patent application prior to publication. Secondly, the patent application will form prior art in the assessment of inventive step for other patent applications. Thirdly, under section 76.1, the right to claim damages for patent infringement accrues from the date of publication. Andrew Yip (09:33.037) Upon grant, the patent shall be enforced 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. See section 36.1. To maintain the patent, the proprietor needs to pay annual renewal fees from the end of the fourth year from the date of filing of the patent application. The renewal fee is payable within a prescribed period, that is, three months preceding each anniversary of the date of filing of the application. See rule 51 Andrew Yip (10:17.995) Now that we know the grant process in Singapore, let\'s learn about the prefiling considerations. This is a very practical topic. Make sure you understand the concepts and the underlying Why should an invention be kept confidential before filing? Recall that in order for a patent to be granted, two of the criteria that an invention must satisfy are novelty and the inventor\'s step. If the invention has been disclosed before the patent application was made, the prior disclosure of that invention would form part of the state of the art. As such, the invention would no longer be novel or Andrew Yip (11:03.885) You would have learned from earlier that there are a few narrow exceptions to the role against disclosure prior to filing. To recap, these exceptions can be found in Section 14 -4 of the Patents Act. Legislative amendments were introduced in 2017 to Patents Act Section 14 and to Patents Rule 8 to introduce and implement a broadened grace period. affecting the assessment of novelty and inventive step. A new Section 14.4e has been added. This covers any circumstances other than those in Section 14.4a to d, where the disclosure was made to the public by the inventor or by a person who obtained the matter directly or indirectly from the inventor. The amendment is intended to update the patent\'s regime so that it is more consistent with modern realities and practices. For example, inventors may need to review the invention to potential investors or share it online to reach out to a larger community of experts. However, it is strongly emphasized that disclosing an invention before applying for a patent carries risk. This is because not all jurisdictions have a similarly broad grace period provision. Therefore, you should always encourage your clients to be cautious about disclosing their invention before applying for patent protection. Also, encourage your clients to have a confidentiality agreement in place before any disclosure of their invention to third parties, if such disclosure must be made. Moving on to the second pre -fouling consideration, the fouling strategy. IP foulings entail costs. These can be generally split into official fees imposed by the IP office as well as professional fees, that is fees charged by lawyers or patent agents. The cost can stack up if protection in multiple jurisdictions is sought. Therefore, find out from your client. Andrew Yip (13:33.311) what his business objectives are, who his business competitors are and what his budget is. You can then advise him where best to file pattern applications. It is common to file applications where the product is made, sold and also where the product is likely to be copied. As for how to file, you just need to be aware that one can file separate national applications in the jurisdictions of interest or file a patent cooperation treaty application. The latter, commonly known as PCT application, enables applicants to seek patent protection in several jurisdictions simultaneously by filing one international application. Andrew Yip (14:33.325) Another prefiling consideration is that of ownership. Section 49, one of the Patents Act, provides that an invention made by an employee in these scenarios, set out in the provision, shall belong to his employer. Basically, if the invention was made in the cause of what the employee inventor was supposed to do in his job, it belongs to the employer by Andrew Yip (15:03.405) However, take note of the condition in Section 51 before this default position applies. The employee must be mainly employed in Singapore, or, in the case where his place of employment cannot be determined, his employer must have a place of business in Singapore to which this employee is attached. Also, be aware that Section 49.1 only sets out the default position. This can be modified by Have a look at session 54 of the patterns Andrew Yip (15:41.441) Conducting a due diligence search prior to filing is useful for two reasons. First, it enables one to assess whether the requirements of novelty and inventive step would be met. Second, a due diligence search helps one to avoid infringing other patents that have been filed or granted. Many law firms and patent agent firms subscribe to sophisticated search tools. that enable them to perform in -depth searches of patent literature and non -pattern literature efficiently. With this, we have come to the end of the audio lecture on prefiling considerations. Let\'s now look at how a patent can be infringed after it is granted. In particular, when we talk about patent infringement, we need to draw a distinction between infringing a product patent and a process patent. Andrew Yip (16:44.341) A product pattern is infringed if any of these listed actions is done in relation to the product. You can see that the range of infringing acts is quite broad. However, the range of defenses is also quite broad. We will come to that further in this lecture. In the meantime, have a look at this list Andrew Yip (17:13.525) Next, we look at the actions that infringe a process pattern. There are two main categories of infringing actions. The first relates to the process itself. The infringing acts are set out in the left column of this table. The second category relates to the product obtained directly by means of that process. Infringing acts are set out in the right column. Andrew Yip (17:48.045) Now that we know the X that can infringe a patent, let\'s consider how we are to know whether a patent has been infringed. In other words, what is the extent of the protection conferred by a patent grant? In 2018, the Court of Appeal gave a landmark decision answering this question. Andrew Yip (18:11.917) Our starting point is section 1131 of the Pattern Set. Have a look at this provision. Andrew Yip (18:25.325) So we see that the extent of protection primarily depends on the claims. In practice, claim construction, how claims are construed, is very important as it directly informs the issue whether there has been infringement. For example, the court in Maca had to construe the terms ignition monitor, ignition voltage, and signal found in the claim. Andrew Yip (18:56.939) How should we then construe claims? Here are the three approaches. Andrew Yip (19:06.561) By literal construction, the patent claims are looked at narrowly and literally. Such literalism could be exploited by imitators who seek loopholes in the patent monopoly. This is because one could simply avoid infringement by making an immaterial variation to the claimed invention. The remaining two approaches to claim construction were born to avoid potential unfairness to the patentee that could result from the literal approach. Andrew Yip (19:41.815) The purposive approach is still based on the language of the patent claim. However, it moves away from literalism and asks the following question. What would a person skilled in the art have understood the patentee to have used the language of the claim to mean? The purposive approach seeks to strike the right balance between fair protection to the patentee and fair protection to third parties. who need to be able to rely on patent claims for delimitation of the boundaries of the patent while keeping to the language of the claims. Andrew Yip (20:27.213) Moving along the sliding scale, we now come to the doctrine of equivalence. This doctrine was developed by the American courts and adopted in the UK Supreme Court decision of activists and Eli Lilly 2017, UKSC 48. Under this doctrine, 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. This allows a patentee to extend his monopoly beyond the claims in the specification. Once the monopoly has been allowed to escape from the terms of the claims, it would not be easy to know where its limits should be drawn. This gives rise to undue uncertainty. Andrew Yip (21:27.117) Back to the Maca decision, the Court of Appeal decisively rejected the doctrine of equivalence and affirmed the applicability of the purposive approach to claim construction in Singapore. The rejected doctrine is inconsistent with Section 113 of our Patents Act, which states in no uncertain terms that the extent of the protection conferred by a patent is to be determined by what is specified in the claims. This does not permit the scope of the protection to be otherwise determined or to extend beyond what is specified in the claims. However, do note that the doctrine of equivalence is applied in many major jurisdictions, as you can see from the slide. Andrew Yip (22:19.789) Moving on from claim construction, there are quite a number of defences to infringement in the Patents Act. We will focus on just a few here. Section 66.1 requires a patent to be enforced at the time of the alleged infringement. If this were not the case, for example, the patent has been surrendered or revoked, the defendant would have a good defence. This is why it is not uncommon in practice for a defendant to claim in its defence and counterclaim that the plaintiff\'s patent is invalid and should be revoked. The patent, once revoked, cannot give the plaintiff a cause of action on which to proceed. Andrew Yip (23:10.285) Section 66 -2 contains a list of other defences to infringement. Have a look at this provision for a sense of the balance that has been struck between the competing interests of the patentee and of society. Andrew Yip (23:29.357) Even if infringement was found and no defence was made out, there could still be restrictions to the relief that a plaintiff may obtain. One such restriction is found in Section 69.1. If a defendant was not aware and had no reasonable grounds to suppose, at the date of infringement, that the pattern existed, then damages or an account of profits shall not be ordered against him. This restriction is for the defendant to plead and prove. On the part of the patentee, Section 69 -2 gives useful guidance on what it can do to prevent a prospective defendant from claiming the benefit of a restriction on relief. A patentee should put the world on notice of his patent by indicating its patent number on its patented product. Andrew Yip (24:33.389) To revoke a patent means to get it off the register as if it was never granted. There are a few reasons why you may want to revoke an existing patent. First, you may have filed your own patent application and this is being blocked by an earlier patent, i.e. during examination, an earlier patent is cited against your application. Second, you may be sued for patent infringement. and in your defence and counterclaim, you can try to revoke the claimant\'s patent so that there is no longer any basis to allege infringement. Third, someone else\'s patent may be blocking you from working a certain technology. You risk infringing that patent. For all these reasons, you may want to get that earlier patent off the register so that it no longer poses a problem to And there are a few ways to do this as shown in the right column of the table here. Andrew Yip (25:48.757) Let\'s compare two ways of getting a patent of the register, by way of a revocation application or an application to re -examine. The commonality between the two is that the court or the IPOS registrar looks at whether the patent satisfies certain patentability criteria. From this, it is determined whether the patent should stay on the register or be removed from it. The differences, on the other are summarised in this table. You can apply to revoke a patent either in court or at IPOS. On the other hand, if you want a patent to be re -examined, you can only go to IPOS for that. A revocation action is inter -parties involving the applicant for revocation and the patentee. Both parties will get to file evidence and submissions and attend a hearing. On the other hand, once an applicant files a re -examination request, he has no further role. Any communication after that is chiefly between the registrar and the patentee. Overall, a revocation action has a longer, more expensive process because the applicant for revocation needs to file evidence and submissions. Re -examination has a shorter, less expensive process. But remember, the applicant has no further involvement after requesting re -examination. Andrew Yip (27:33.133) To recap, a patent is vulnerable to post -grant challenge. A successful challenge could lead to total or partial revocation. What are the possible grounds of revocation? Section 81 exhaustively lists the grounds on which a patent may be revoked. It is quite common in practice to argue that a patent is not novel or not inventive because of specific prior art. Andrew Yip (28:08.351) If you are familiar with the trademark opposition or revocation process, you will find this similar. Essentially, the parties have to file their pleadings and evidence in turn. The difference in patent revocation is that the patentee can amend its specification to try to overcome the challenge to his patent. This is done by filing an amendment to the specification with its counterstatement. Andrew Yip (28:43.177) If the ground of replication is established, the registrar could do one of two things under Section 80E5. First, the pattern may be unconditionally revoked. The alternative option applies where the ground of replication is established, but only so as to invalidate the pattern to a limited extent. In such a case, the registrar will give the patentee time to amend the specification to the registrar\'s satisfaction. If this is not complied with, the whole pattern will be Andrew Yip (29:23.819) The effect of a patent being revoked is as if it were never granted. Revocation takes effect from the date of grant of the patent. This is a very serious consequence, so all patentees should take care to ensure that their specifications and issues of entitlement are in order. B24 IPL - **[Patents]** - Subtopic - **[ What is a Patent]** - **[ Criteria for obtaining a patent]** - **[ Section 13(1) Patents Act]** - \[1\] New (s 14) - s14(10) PA - State of the Art - Person skilled in the Art - Lee Tat Cheng v Maka GPS Technologies \[2017\] SGHC 48 at \[36\]-\[39\] - First Choice Currency Pte Ltd \[2008\] 1 SLR(R) 335 at \[28\] - Ng Kok Cheng v Chua Say Tiong \[2001\] 2 SLR(R) 326 at \[21\] - Anticipate - s14(2) PA - Priority Date - s17(1), (3), (9) and (10) PA - Key Concepts - "Made available to the public" - Rule against mosaicking - Genelabs Diagnostics \[2000\] 3 SLR(R) 530 at \[26\]-\[28\] - Enabling disclosure - Muhlbauer AG v Manufacturing Integration Technology Ltd \[2010\] 2 SLR 724 at \[17\] - Assessment for \'New\' - 3 steps - Main-Line Corporate Holdings Ltd v United Overseas Bank \[2007\] 1 SLR(R) 1021 at \[54\]-\[55\] - Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd \[2007\] 1 SLR(R) 1021 at \[63\] - Exceptions - s14(4) PA - \'grace period\' 12 months before date of application filing - s14(4)(a) and (b) PA - disclosure was unlawful / breach of confidence - s14(4)(c), (d) or (e) PA - disclosure at exhibition / publication - \[2\] Involves an inventive step (s 15) - s15 PA - three requirements - Key Concepts - **[structured]** approach of the Windsurfing test is a **[guide only]** - Windsurfing v Tabur Marine \[1985\] RPC 5 - \[3\] Capable of industrial application (s 16) - s16(1) PA - capable of industrial application - Exclusions - s16(2) PA - method of treatment of human not capable of industrial application - Public policy: not in the interest of the public to have methods of treatment and diagnosis subject to such a strong monopoly. - s16(3) PA - product can be capable of industrial application - \[4\] Section 25(4) Patents Act - s25(4) PA - Sufficiency of disclosure - Public Policy: the Public must have the benefit of the invention after the term - **[Two-Step Test]** - First Currency Choice Pte Ltd \[2008\] 1 SLR(R) 335 at \[60\]-\[61\] - **[BAR:]** s13(2) and (3) PA - Invention cannot be offensive, immoral or anti-social behavior - Grant process - **[ Practical Considerations]** - s26 PA - Date of filing application = priority date - s27 PA read with 29 (1) PR: 18 months publication from date of filing - s36(1) PA - term of the patent = 20 years - 51(1) PR - Renewal - Pre-filing considerations - Disclosure of Invention - Filing Strategy - Ownership - IP Due Diligence - **[ 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