After several rounds of public consultations, IPOS has recently issued an updated set of examination guidelines for patent applications which will apply to all new applications on or after 16 May 2016. It should be noted that "new applications" refer to:
- national applications for a patent (and any divisional applicationsarising from them) with a filing date on or after 16 May 2016; and
- international applications entering national phase (and any divisional applications arising from them) on or after 16 May 2016.
A copy of the updated set of examination guidelines which outlines the changes can be accessed at the following URL: http://www.ipos.gov.sg/Portals/0/about IP/Patents/For Release Examination Guidelines for Patent Applications at IPOS (ver May 2016)-2.pdf.
We note that IPOS has proceeded to issue an updated set of examination guidelines for patent applications without making any amendments to the relevant legislation. By doing so, it is arguable whether the latest amendments have legal basis.
However, IPOS has indicated that it is conscious of local jurisprudence, and will look towards public policy considerations and international patent norms when carrying out their role as the IP governing body in Singapore. We have been informed in advance of some upcoming changes to the relevant legislation, but as pertinent details have not yet been provided, we can only surmise that some of the changes would pertain to the latest amendments to the examination guidelines.
Amendments in the guidelines relating to CIIS
- When considering claims directed to CIIs, Examiners should determine an extent to which the computer (or other technical features) contributes to the invention defined in the claims. It must be established that the computer (or other technical features), as defined in the claims, is integral to the invention in order for the actual contribution to comprise said computer (or technical features).
- Some examples of CIIs which are considered to be an invention were provided, as follows:
- Claims reciting a computer-implemented business method whereby various technical features (e.g. servers, databases, user devices etc.) interact with the steps of the business method (i) to a material extent; and (ii) in such a manner as to address a specific problem.
- Claims reciting known hardware components for implementing a business method, where if the overall combination of the hardware provides a benefit/solution/advantage, for example, a more secure environment for performing transactions, then the hardware would be regarded to interact with the business method to a material extent to address a specific problem.
- An example of a CII which is not considered to be an invention was provided, as follows:
- Claims reciting technical features that are no more than the workings of a standard operating system, in particular, use of a generic computer or computer system to perform a pure business method. It is deemed that such an interaction would not be considered to be of a material extent and no specific problem appears to be solved.
How do the amendments affect entities who file CII patent applications in Singapore?
For entities who wish to file CII patent applications in Singapore, unfortunately, it appears that a higher bar has been set for obtaining granted CII patents in Singapore.
Based on filing statistics, the effect of the amendments is minimal as a substantial number of patent applicants in Singapore rely on the grant of a corresponding patent in selected jurisdictions when requesting grant for a Singapore patent application. The amendments (currently) do not affect applications which rely on requesting supplementary examination as the process for supplementary examination does not include an assessment of patentable subject matter. However, the validity of such granted patents may be questionable if pertinent amendments are made to the relevant legislation in an upcoming review of the legislation.
For applications that will undergo local search and/or examination, we expect to be making regular submissions of arguments discussing how various technical features carry out interaction in the invention "to a material extent" whenever a patentable subject matter objection is raised against a CII application. Thus, it would be desirable if applicants are able to identify those aspects with regard to their CIIs.
Based on both formal and informal communications with IPOS, we eventually expect a patenting environment (in a worst case scenario) akin to European practice whereby a "technical effect" is mandatory for all CII patent applications. However, such a situation is not yet upon us, and we will be providing further pertinent updates as and when they occur.