DIPLOMA IN LAW & MANAGEMENT

LAW OF PATENTS
LECTURE 1 : CONDITIONS FOR A PATENT

Learning Objectives

That students will be able to:

a) list the conditions needed for an invention to be
patented
b) explain the concepts and tests related to the
conditions.

Types of patents Not Patentable Sec 13(2)

 Process  Invention which if

published / exploited
encourages offensive;
 Product
immoral; anti-social
behaviour
Requirements for a patent :
Not Patentable Sec 16(2)
Sec. 13(1) P.A.
 Method of treatment of
human /animal body
 Novelty

 Inventive step

 Industrial application

Administrative requirement:

Sec. 16 (P.A)
 Clear and complete
disclosure

Prepared by Mrs. Annie P. Gomez 1

Lecturer, Diploma in Law & Management
© Temasek Polytechnic. Prepared in 2006
Updated and Revised Version
1. What is a patent?

A patent is a monopoly granted by the State for an

invention. The governing law is The Patents Act
Chapter 221 as amended in 2004 (referred to as PA.)

The „monopoly‟ granted refers to the exclusive rights

of the patent owner to:

a) use the patent/invention

b) to make copies of invention (manufacture)

c) to sell the manufacture copies

d) to license the rights in the patent to third

parties (licencees)

e) take infringement proceedings / enforce rights

f) to sell / assign the patent rights

41. —(1) Any patent or application for a patent is

personal property (without being a thing in action),
and any patent or any such application and rights in
or under it may be transferred, created or granted
in accordance with this section

The patent protection, i.e. the monopoly over the

invention is for 20 years after which society is free
to exploit it.

Patent law protects the particular type of product or

process for which protection is sought and the
technology and ideas involved in the invention.

E.g. Sonny invents a pocket sized mobile radio which

a listener can listen to through the use of
small headphones. Sonny patents the mobile
radio.

Does this mean that no one else can manufacture

a pocket sized radio with small headphones?

_____________________________________________

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Prepared by Mrs. Annie P. Gomez 2
Lecturer, Diploma in Law & Management
© Temasek Polytechnic. Prepared in 2006
Updated and Revised Version
 The 2 main types of patents are:

a. Process patent i.e. monopoly rights over a

particular technique

E.gs:

i) The technique involved in preparing the

vaccine for AIDS;
ii) A new formula for making a face cream to
remove wrinkles.

b. Product patent i.e. monopoly rights in the

technology involved in making a new type of
product

E.gs:

iii) A new type of micro chip for computers;

iv) A new equipment for mining steel.

2. Procedure for application

An individual or corporation who has the legal right

to the patent i.e. the inventor or the legal owner of
the patent may apply.

The application must be made to the Intellectual

Property Office of Singapore (IPOS) in Singapore for
registration.

It is only after registration that the patent owner

is entitled to all the rights including the right to
sue for infringement in Singapore.

3A. What is patentable? Conditions / Requirements

Sec. 13(1) (PA.) states that to get patent protection

the invention must be:

a) new (novel) i.e. it has not been made available

to the public in any written or oral form, or
been in use or made known in any other way.

Prepared by Mrs. Annie P. Gomez 3

Lecturer, Diploma in Law & Management
© Temasek Polytechnic. Prepared in 2006
Updated and Revised Version
 b) involve an inventive step (not be obvious) i.e.
it must be something that would not have
occurred to a specialist in that field.

c) capable of industrial application i.e. it can be

industrially manufactured and used.

We will now examine each of the requirements set out

under Sec 13(1).

a. Novelty

Sec. 14(1) PA
An invention shall be taken to be new if it does
not form part of the state of the art.

A novel invention is one that has not been made

available to the public before the priority date
of the invention.

Sec. 17(1) PA states that the priority date of

an invention in respect of which a patent
application is made is the date of the
application for the patent.

`
Sec. 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.

The Patent Office will take into account all

knowledge available anywhere in the world and if
the invention does not appear anywhere or is not
made known to anyone then the invention is
novel.

Sec. 14(3)
The state of the art also includes matter
contained the patent application of another
invention filed earlier.
Prepared by Mrs. Annie P. Gomez 4
Lecturer, Diploma in Law & Management
© Temasek Polytechnic. Prepared in 2006
Updated and Revised Version
 This means that matters disclosed in an earlier
patent that was granted or an earlier patent
application are also taken into account. The
relevant date is the date of filing of the
current patent application which is known as the
priority date.

The test of novelty is thus a worldwide novelty

test.

The relevant test is whether the invention has

been anticipated by previous patent or
publication or use anywhere else in the world.
This is essentially a factual investigation or a
question of fact.

Fomento v Mentmore

F invents a new type of pen nib with a „housing‟

that helps improve the flow of ink. He gives
three of his friends a pen each without
informing them that it should be kept
confidential.
The fact that it has been made known before the
patent application would prevent the invention
from being novel. The fact that only three
people have the pen is irrelevant.

Merck & Co. Inc v Pharmaforte Singapore Pte Ltd

[2000] 3 SLR 717 held that for a prior art to
anticipate the patent, it must be established
that by following the teachings in the prior
publication, one would inevitably be led to the
invention. The prior publication must not only
identify the subject matter of the claim in the
later patent but it must do it in a way that
enables the skilled man to make it or obtain it.

General Tire v Firestone

Firestone applied for a patent over a formula

for making vulcanised rubber for tyres. General
Tire challenged the validity of Firestone‟s
application. General Tire alleged that the
technology was part of the state of the art.
Prepared by Mrs. Annie P. Gomez 5
Lecturer, Diploma in Law & Management
© Temasek Polytechnic. Prepared in 2006
Updated and Revised Version
 The prior state of the art suggested a similar
starting point but different way or method to
achieve a particular result.

It was held that Firestone‟s formula was

patentable because it was way or method of
achieving a result and it was different from the
prior art.

Sachs LJ held:
The earlier publication and the patentee's claim
must each be construed as they would be at their
respective dates of publication by a reader
skilled in the art to which they relate having
regard to the state of knowledge in such art at
the relevant date.

If the art is one having highly developed

technology then the notional skilled reader need
not necessarily be a single person but a team
whose combined skills would normally be employed
in the art in interpreting and carrying into
effect instructions.

Since it is difficult to go backwards in time to

describe whether the invention is new, the
Courts suppose that the other invention is later
and will decide whether it infringes the
invention.

If the answer is yes, i.e. the later invention

infringes the earlier one then the later
invention is not new or novel.

Asahi KKK Application (1991)

There were 2 elements to the invention, i.e. the

formula and the means by which the formula was
carried out.

The prior art in this case related only to the

formula and it was not sufficient to destroy the
novelty of the invention.

Prepared by Mrs. Annie P. Gomez 6

Lecturer, Diploma in Law & Management
© Temasek Polytechnic. Prepared in 2006
Updated and Revised Version
 Exceptions to prior disclosure

Qn? Are there any exceptions where the

invention may still be treated as ‘new’
even though it has earlier been disclosed
to the public before filing the patent
application?

Sec. 14(4) PA provides for certain situations

when the invention may be treated as being „new‟
even though it has already been disclosed to the
public before the date of filing of the patent
application.

In order to rely on these exceptions, several

conditions must be satisfied:

1) the prior disclosure must occur within 12

months immediately before the date of
filing the patent application; AND

2) the prior disclosure must relate to one of

the following events, namely:

i) Sec. 14(4)(a)
The prior disclosure was obtained
unlawfully or in breach of confidence;

OR

ii) Sec. 14(4)(b)

The matter was disclosed in breach of
confidence by the person who obtained
it;

OR

iii) Sec. 14(4)(c)

The disclosure was made at a display
of the invention at an international
exhibition1;

OR

1
Defined in PA to mean "an official or officially recognised international exhibition falling within the
terms of the Convention on International Exhibitions
Prepared by Mrs. Annie P. Gomez 7
Lecturer, Diploma in Law & Management
© Temasek Polytechnic. Prepared in 2006
Updated and Revised Version
 iv) Sec. 14(4)(d)
The disclosure was made by the
inventor describing the invention in a
paper read by him or another person
with his consent before any learned
society or published with his consent
in the transactions of any learned
society2.

Sec. 14 (7): New medical use of known product

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.

b. Inventive step (Non-obvious)

Sec. 13(1)(b) PA
A patentable invention must also be one which
involves an inventive step.

Sec. 15 PA
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.

The invention must not be obvious to someone who

is skilled in the particular field.

The test is whether a person skilled in the art

would say that the invention is obvious i.e the

Defined in PA as including "any club or association constituted in Singapore or elsewhere whose main object is the
promotion of any branch of learning or science."

Prepared by Mrs. Annie P. Gomez 8

Lecturer, Diploma in Law & Management
© Temasek Polytechnic. Prepared in 2006
Updated and Revised Version
 test used is that the skilled person who has all
the relevant information would not have thought
of the invention himself. It is a qualitative
test.

Williams v Nye (1890) RPC 62

W invented a sausage making machine that had two

parts, one for mincing meat and the other for
filling the sausage skins. It was in fact a
combination of two existing machines.

The invention was held to be novel (new) because

it was not available anywhere else at the
priority date but it did not involve an
inventive step because a skilled person looking
at the mincing machine and the filling machine
would have thought of the idea of combining the
two.

It was held to be obvious to the notional

skilled person and therefore not inventive.

Windsurfer's Decision (1985)

In the Windsurfer‟s Decision, Oliver J outlined

4 steps to be followed in determining
obviousness:-

i) what is the inventive concept embodied in

the patent?

ii) what is common general knowledge in the art

in question as held by the normally skilled
but unimaginative addressee in the art at
the priority date?

iii) what, if any, differences exist between the

matter cited as being "known or used" and
the alleged invention?

iv) Would those differences constitute steps

which would have been obvious to the
skilled man or would they require a degree
of invention?

Prepared by Mrs. Annie P. Gomez 9

Lecturer, Diploma in Law & Management
© Temasek Polytechnic. Prepared in 2006
Updated and Revised Version
 Who is person skilled in the art?

Valensi v British Radio (1973)

The hypothetical addressee is not a person

of exceptional skill and knowledge. He is
not expected to exercise any invention or
prolonged research or inquiry or
experiment. However he must display
reasonable degree of skill and common
knowledge in the art.

Beechem Group Ltd's Application

In the above case, Buckley LJ distinguished

between exercises of ingenuity and voyages
of discovery. The former is obvious and the
latter non obvious. If a skilled man has no
particular problem or need in mind but as a
good lead for research, to extend human
knowledge embarked on a voyage of
discovery, it is non obvious.

Genentech v Wellcome

Genentech's application for a patent of

recombinant DNA technology was obvious
because more than 400 research teams were
working on similar projects.

Mustill LJ's test of obviousness asked what

obstacles a skilled man would face enroute
to a goal. If obstacles could be overcome
by ternacity, techniques, trial and error
with no more, the invention was obvious, If
it required spark of imagination beyond
imagination properly attributed to non
skilled person in art, then it is not
obvious.

c. Industrial Application

Sec. 13(1)(c)
An invention must be capable of industrial
application.

Sec. 16(1)
Prepared by Mrs. Annie P. Gomez 10
Lecturer, Diploma in Law & Management
© Temasek Polytechnic. Prepared in 2006
Updated and Revised Version
 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.

The invention must be capable of being produced

and used industrially i.e. in any kind of
industry including medicine, education or
agriculture.

3B. Clear and Complete Disclosure

There must be clear and complete disclosure of the

patent in the patent application.

Sec. 25(4)
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.

Sec. 80(1)(c)
The Registrar has the discretion to revoke a patent
on the ground that the specification of the patent
does not disclose the invention clearly and
completely for it to be performed by a person skilled
in the art.

Rationale for clear and complete disclosure.

i) A patent is a monopoly right granted by the

state to the patentee. In exchange for
disclosing the patent, The patentee has the
exclusive rights to exploit the patent during
the period of the monopoly.

ii) The patent protects precisely what is covered in

the claim in the patent application documents
and not beyond that.

iii) A clear and complete disclosure allows for an

effective patent examination.

4. What is not patentable?

Prepared by Mrs. Annie P. Gomez 11

Lecturer, Diploma in Law & Management
© Temasek Polytechnic. Prepared in 2006
Updated and Revised Version
 Sec 13(3); Sec 16(2) P. A. list what are not
patentable and we will consider a few of these.

Sec 13 (3)

An invention, the publication/exploitation of which

encourages offensive, immoral or anti-social
behaviour is not patentable.

Eg. Frank cross breeds an elephant with a

hippopotamus and calls it an Elepotamus. Frank
knows that many zoos and circuses around the
world would be interested in the new creature.

Qn. Will Frank be able to patent this novel

creature?

________________________________________________

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Sec. 13(2)

Behaviour shall not be regarded as offensive,

immoral or anti-social only because it is
prohibited by any law in force in Singapore.
Sec 16(2)

A method of treating the human or animal body by

surgery or therapy is not patentable.

Eg. Dr. Chan discovers a new type of surgery for

patients with heart disease. He will not be able
to patent this as it is a method of treating
human body.

The reason for this is that any surgeon with the

necessary skills should be able to perform this
operation on a patient who needs it.

Prepared by Mrs. Annie P. Gomez 12

Lecturer, Diploma in Law & Management
© Temasek Polytechnic. Prepared in 2006
Updated and Revised Version
 Sec. 16(3)

A product consisting of a substance or composition

is capable of industrial application although it was
invented for the purposes of being used in a
method of treatment.

5. Priority date

Sec. 17. (1) The priority date of an invention

……….is…. the date of filing the
application.

(5) (b) …… Priority date is the earlier

date if the earlier application is
…made in a convention country within
12 months of the local application.

(6) In subsection (5), “convention country”

means —

(a) a country other than Singapore that

is a party to the Paris Convention or a
member of the World Trade Organisation; OR

(b) any other country with which

Singapore has entered into a treaty,
convention, arrangement or engagement …

Prepared by Mrs. Annie P. Gomez 13

Lecturer, Diploma in Law & Management
© Temasek Polytechnic. Prepared in 2006
Updated and Revised Version