Patentable Subject Matter in Singapore 2016

(For a downloadable version of this note, click here.)

Introduction

On 16 May 2016 the Intellectual Property Office of Singapore (IPOS) issued a revised version of the Examination Guidelines for Patent Applications at IPOS (the “Guidelines”), available here. The Guidelines include a revised Chapter 8 on Patentable Subject Matter and Industrial Applicability.

Background

The modern Singapore Patents Act came into force only in the mid-1990s. It has always been heavily influenced by the UK Patents Act 1977. At the time of its introduction, this version of the Singapore Act included a list of statutory exclusions from patentability:

(a) a discovery, scientific theory or mathematical method;

(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;

(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; or

(d) the presentation of information.

This was subject to the usual qualifier, that the exclusions related only to the extent that a patent/application related to these things “as such”. These exclusions corresponded with exclusions still present to this day in UK legal code. Not long afterwards, the relevant sub-section of the Singapore Act specifying these exclusions was repealed (i.e. it was deleted/removed from the Singapore Act). From that time, it seemed to be the case in practice that anything and everything was “patent eligible” in Singapore. IPOS is now seeking to change this.

The new position

In summary, in the revised Guidelines, IPOS identifies developments in these areas (a) – (d) as being, from now on, not considered “inventions”. That is, IPOS is taking the position that these subject matter areas are again not “patent eligible”. IPOS states that the new Chapter 8 applies to national applications (or any divisional application derived from these) with a filing date on or after 16 May 2016, and to any international applications entering the national phase in Singapore (or any divisional applications derived from these) on or after that date.

Further context

The revised version of the Guidelines has been a long time coming. A public consultation process was initiated, and a lively debate between IPOS and the Singapore patent attorney profession ensued.  The main reason for the debate is that there is a school of thought the current legal code in force in Singapore does not support IPOS’s new position. As noted above, these exclusions were repealed from Singapore law around 20 years ago. They have not been reintroduced into the Singapore Act, and we are not aware of any plan for them to be reintroduced.

IPOS specifically identifies the “actual contribution” test (from the UK decision in Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7) as being relevant in assessing whether an invention is patent eligible. It is worth noting the Aerotel/Macrossan decision is one in a very long line of decisions –spanning decades – from the UK based on exclusions no longer present in Singapore law. Aerotel/Macrossan related to challenges the invention of that patent was excluded from patentability under the business method and computer program exclusions, neither of which are in the current Singapore legal code.

Practical effect

It is very early days and, at this stage, the full impact this is going to have is difficult to predict. The new Chapter 8 does not give an enormous amount of guidance on what is a complex and controversial subject. Despite this, one section in particular may turn out to be helpful, at least in the area of computer-implemented inventions.

Our initial thinking is that if it can be demonstrated technical features of an invention operate together to “address a specific problem” (citing from section 8.7 of the new Guidelines) then the invention is arguably patent eligible. Interestingly, this section 8.7 does not specify that the problem being solved must be a technical problem, a requirement in other jurisdictions when assessing such matters. However, and as always, each case will have to be considered on its own merits.

If – or more likely when – IPOS begins issuing rejections under these new guidelines, it will not be a great surprise if patent applicants start appealing these rejections to the Court.

This is provided for information only and does not constitute legal advice. Please contact us for detailed advice if you have any specific questions. We should be very happy to answer any questions that you may have.

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