Under the Singapore Patents Act (“the Act”), there are no statutory provisions that limit or prohibit patenting of gene related inventions. Under the Act, an invention is patentable if it meets the requirements of novelty, inventive step and industrial applicability under Section 13(1) of the Act. However, Section 13(2) of the Act provides that “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.” However, this provision has not been tested in a Singapore court of law. In September 2010, the Intellectual Property Office of Singapore (“IPOS”) introduced “a Guide on Patentability Issues arising during Search & Examination” (“the Guide”) to explain Singapore’s patent practice on patentability issues. When assessing the issue of morality, IPOS referred to cases decided under the UK Patents Act 1997, which the Act is based on, and the European Patent Convention (EPC) for guidance.

In particular, when assessing patentability of inventions related to genes, the Guide provides that inventions should be assessed according to the requirements of novelty, inventive step and industrial applicability but not morality. In the Guide, IPOS adopted the approach of the European Patent Office in Howard Florey Institute [Relaxin], V8/94 Relaxin, OJ EPO 6/1995 [“the Relaxin case”]. In the Relaxin case, it was held that the patenting of a single human gene has nothing to do with patenting of human life. In the Guide, the Examiner should proceed to assess whether a gene invention meets the requirements of novelty, inventive step and industrial applicability, and not raise a morality issue against the gene invention.

In addition to the requirements of novelty, inventive step and industrial applicability, the Guide also provides that the Examiner determine if the subject matter of the gene invention is “something more” than a discovery. In Singapore, although discoveries are not excluded from patentability under the Act, discoveries remain unpatentable subject-matter in light of the decision from the Court of Appeal in Merck & Co Inc v Pharmaforte Singapore Pte Ltd [2000] SGCA 39 where Chao Hick Tin JA held:

“In this regard, we must also point out that the fact that a discovery is made does not mean there is an invention. The latter does not necessary follow from the former”.

Although the Guide does not define what a discovery is or state a list of exclusions from patentability, the Guide refers to the UK case of Lane Fox v Kensington and Knightsbridge Electric Lighting Co [1892] 3 Ch 424 at p429 (“Lane Fox case”) for guidance for assessing an invention. In the Lane Fox case, Lindley LJ said “An invention is not the same thing as a discovery… A patentee must do something more; he must make some addition, not only to knowledge, but to previously known inventions, and must so use his knowledge and ingenuity as to produce either a new and useful thing or result, or a new and useful method of producing an old thing or result”.

The Guide clarifies for patentees seeking protection for gene inventions in Singapore that the gene inventions are patentable in Singapore if the gene invention is not a discovery and meets statutory requirements for novelty, inventive step and industrial applicability are met.