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Applying for a patent

Patentability

What are the criteria for patentability in your jurisdiction?

A patentable invention is an invention that is new, involves an inventive step and is capable of industrial application.

What are the limits on patentability?

The following are excluded from patentability:

  • discoveries, scientific theories or mathematical methods;
  • aesthetic creations, including literary, dramatic, musical or artistic works that are covered by copyright;
  • schemes, rules or methods for performing mental acts, playing games or doing business;
  • the presentation of information;
  • methods of treatment or diagnosis for humans or animals;
  • human reproductive cloning; and
  • inventions which would encourage offensive, immoral or antisocial behaviour.

To what extent can inventions covering software be patented?

Claims to software that are characterised only by source code and not by any technical feature cannot be considered an invention on the basis that the actual contribution would be a mere presentation of information.

However, computer programs may be patentable if the invention involves a technical contribution outside the excluded subject matter.

To what extent can inventions covering business methods be patented?

Pure business methods are not considered inventions and are not patentable. However, similar to computer programs, business methods may be patentable if they involve technical contributions outside the excluded subject matter. For example, claims relating to a computer-implemented business method would be considered an invention if the technical features (eg, servers, databases and user devices) interact with the steps of the business method to a material extent and in such a manner as to overcome a specific problem.

To what extent can inventions relating to stem cells be patented?

The Patents Act contains no specific provisions barring stem cells from patentability. Inventions determined by the examiner to fall within the list of acts prohibited by the Human Cloning and Other Prohibited Practices Act will be objected to.

In general, methods of generating human embryonic stem cell lines from human blastocysts will not be objected to. Methods of producing human stem cell lines from adult tissues are usually also allowed.

Are there restrictions on any other kinds of invention?

Inventions that could be significant to the national security of Singapore are subject to special procedures and may be ordered to be kept secret.

Grace period

Does your jurisdiction have a grace period? If so, how does it work?

At present, Singapore provides for a 12-month grace period from the date of first public disclosure of an invention where the disclosure:

  • was due to breach of confidence; and
  • was made at a recognised international exhibition or to a learned society.

To use this grace period, a complete application must be filed with the Intellectual Property Office of Singapore before the 12-month deadline.

Amendments to the Patents Act entered into force on October 30 2017, meaning that all disclosures by the inventor, or by a person who obtained the matter disclosed directly or indirectly from the inventor, will be disregarded if the disclosure was made within the 12-month period immediately before the date of filing the patent application in Singapore.

Oppositions

What types of patent opposition procedure are available in your jurisdiction?

Patent opposition is unavailable in Singapore.   

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

A granted patent may be revoked by the registrar if:

  • the invention is not a patentable invention;
  • the patent was granted on the application of a person not entitled to be granted that patent;
  • the specification did not disclose the invention clearly and completely enough for it to be performed by a person skilled in the art;
  • subject matter not originally disclosed at the application stage has been added;
  • an amendment or correction was made to the specification which should not have been allowed;
  • the patent was obtained fraudulently on any misrepresentation or on any non-disclosure or inaccurate disclosure of any prescribed material information; or
  • there is double patenting.

How can patent office decisions be appealed in your jurisdiction?

Decisions rejecting the grant of a patent can be appealed to the High Court.

Timescale and costs

How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

It typically takes between two and four years to process a patent application. It is possible to request the accelerated processing of a patent application. Applicants can also request expedited examination via applicable patent prosecution highway programmes.

The cost from filing to grant of a patent in Singapore, including official and attorney fees, can range from S$3,000 to S$10,000, depending on the examination route and the complexity of the technology.

Enforcement through the courts

Strategy

What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

The best enforcement strategy for a patent owner will depend on the facts of the case and its business objectives.

Typically, the owner enforces its rights by filing suit in the High Court for an order to enjoin the defendant for infringing the patent, damages or an account of profits, or interest and costs. Before filing an action, it is customary for the plaintiff to send a cease and desist letter to the alleged infringer.

What scope is there for forum selection?

This is not applicable in Singapore.

What are the stages in the litigation process leading up to a full trial?

In general, the stages are as follows:

  • filing and serving the writ of summons;
  • exchange of pleadings and discovery of evidence;
  • evidence given by affidavits from both factual and expert witnesses;
  • trial;
  • judgment; and
  • appeal, if applicable.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

A defendant can take various interlocutory actions to delay the matter, such as an application to strike out the plaintiff’s pleadings.

A defendant may also attempt to delay proceedings by commencing proceedings for revocation of the patent before the registrar of the Intellectual Property Office of Singapore (IPOS). However, this is unlikely to delay court proceedings significantly. The IPOS will likely suspend proceedings while awaiting the outcome of the High Court proceedings.

A party may bring proceedings before the IPOS for revocation of the patent. The High Court of Singapore recently ruled in Sun Electric v Sunseap Group ([2017] SGHC 232) that only the IPOS registrar can revoke a patent.

However, a defendant in a patent infringement suit can bring a counterclaim seeking a court order to declare the invalidity of the patent. The patent’s validity may also be at issue when a defendant makes a claim for groundless threats.

At trial

What level of expertise can a patent owner expect from the courts?

Every IP case will be listed in the IP docket of the High Court. The court also has specialist lists where specific IP judges with the requisite skills and expertise will hear IP disputes.

Are cases decided by one judge, a panel of judges or a jury?

Usually, cases are decided by a single High Court judge. On appeal, the appeal will be heard by a three-judge appeal court.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

There are no jury trials in IP cases.

What role can and do expert witnesses play in proceedings?

Expert witnesses provide assistance to the court and counsel to illuminate technical issues. Each expert’s evidence can be cross-examined, and experts commonly attend court proceedings.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

No. Under the existing law, the Singapore courts apply the principle of purposive construction. The courts take notice of English law developments as the Singapore Patents Act was largely derived from the UK Patents Act 1977.

However, the courts may reassess the doctrine of equivalents when determining issues of infringement in light of the recent holding in Actavis UK Limited v Eli Lilly and Company ([2017] UKSC 48).

In Actavis Lord Neuberger addressed the issue of whether a variant infringes a patented invention because it varies from the invention only in a way or ways that are immaterial. He stated that this issue “squarely raises the principle of equivalents but limits its ambit to those variants which contain immaterial variations from the invention”. To make sense of this issue, Neuberger reformulated and gave pointers on how to apply Justice Hoffmann’s three questions from the seminal case of Improver Corp v Remington Consumer Products Ltd ([1990] FSR 181)

Arguably, the effect of his reformulations is to make it harder for a court to find that a hypothetical skilled addressee would conclude that the patent intends for strict compliance with the literal meaning of the relevant claim of the patent to be an essential requirement of the invention. In other words, there is greater scope for the courts to find that the patentee intended to claim a wider scope of protection than stated in the literal wording of a claim. This may increase the likelihood of an equivalent product or process being found to be infringing.

In Singapore, the courts have affirmed that a patent claim should be construed purposively, and have consistently used the three Improver questions as guidelines when applying the principle of purposive construction of a patent claim to equivalents. It remains to be seen how and to what extent the Singapore courts will adopt the revised Improver questions.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Yes, the High Court can order a preliminary injunction, although a high threshold exists for injunction applications. In determining whether an injunction is warranted, the court will consider whether:

  • there is a serious question to be tried;
  • the balance of convenience lies in favour of granting the injunction; and
  • there are any special circumstances or factors.

Further, the applicant must give an undertaking in respect of any damages suffered by the defendant.

How are issues around infringement and validity treated in your jurisdiction?

Patent validity and revocation can be heard by the registrar of IPOS.

Issues of patent infringement can be heard by the High Court. In these proceedings a claim may be made for:

  • an injunction restraining the defendant from any apprehended act of infringement;
  • an order for it to deliver up or destroy:
    • any patented product in relation to which the patent is infringed;
    • any article in which that product is inextricably comprised; or
    • any material and implement the predominant use of which has been in the creation of the infringing product;
  • damages in respect of the infringement;
  • an account of the profits derived by him from the infringement; and
  • a declaration that the patent is valid and has been infringed by him.

Parties may also, by agreement, refer to the IPOS registrar the question of whether there has been infringement of a patent. On reference, the patent owner may claim damages in respect of the infringement or request a declaration that the patent is valid and has been infringed.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Yes, cases from the commonwealth jurisdictions such as the UK IP Enterprise Court can be highly persuasive if the facts are similar.

Damages and remedies

Can the successful party obtain costs from the losing party?

Yes, the default principle is that the losing party will pay the winning party’s costs. However, this is at the court’s discretion. It can decline to award costs or can choose to award full costs to the winning party after considering all of the circumstances of the case. 

What are the typical remedies granted to a successful plaintiff?

The court can order the following remedies in infringement proceedings:

  • an injunction;
  • damages or an account of profits;
  • delivery up or disposal of infringing articles related to the registered patent; and
  • a declaration that the patent is valid and has been infringed.

How are damages awards calculated? Are punitive damages available?

The court will consider any loss suffered or likely to be suffered by the exclusive licensee as a result of the infringement or the profits derived from the infringement, so far as it constitutes an infringement of the rights of the exclusive licensee as such.

Punitive damages are not available.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

The courts can also grant permanent injunctions to successful plaintiffs.

As the injunction is an equitable remedy, there is an element of judicial discretion. Injunctions may be tailored in terms of scope and duration, allowing the defendant time to negotiate with the plaintiff or to dispose of infringing products.

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?

It usually takes two years from the commencement of an action to trial.

How much should a litigant plan to pay to take a case through to a first-instance decision?

A litigant can expect to pay between S$250,000 and S$400,000, excluding the cost of engaging expert witnesses.

Appeal

Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

A party which is dissatisfied with the High Court’s decision generally has a right of appeal to the Court of Appeal by following the procedure set out in the Rules of Court. The appeal will be heard around six to nine months after filing a notice of appeal.

Options outside court

Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

The World Intellectual Property Organisation (WIPO) operates the Arbitration and Mediation Centre in Singapore, which specialises in resolving IP-related, technology and related commercial disputes. The centre hears IP-related disputes pursuant to the WIPO Mediation, Arbitration, Expedited Arbitration and Expert Determination Rules. As of 2017, patent-related disputes account for 30% of the matters administered by the centre.

The Singapore International Arbitration Centre (SIAC) is also capable of administering IP disputes, as IP arbitrators are appointed to the SIAC’s panel of arbitrators.