28 January, 2016
The Intellectual Property Office of Singapore (﴾IPOS)﴿ is proposing some changes to the examiner’s guidelines on patentable subject matter, especially with regards to computer- implemented inventions. According to IPOS, Examiners will determine the extent to which the computer (﴾or other technical feature(﴾s)﴿)﴿ contributes to the invention defined in the claims, with the proviso that the computer (﴾or other technical feature(﴾s)﴿)﴿ is integral to the invention. For example, claims relating to a computer- implemented business method may be considered an invention if the various technical features, like servers, databases, user devices, etc, interact with the steps of the business method to a material extent (﴾something beyond a generic computer automating the business method)﴿ and in such a manner so as to address a specific problem, like providing a more secure environment for transactions. This clarification would provide more certainty for applicants seeking to protect their inventions in this field.
IPOS has also explained its stance on the difference between an invention and a discovery, since the Singapore Courts previously made clear that discoveries are not inventions. The discovery of a particular property of a material will add to the stock of knowledge in relation to that particular substance but if that property results in the application of that substance in a new use then it may constitute an invention. For example, the isolation of a naturally occurring material or microorganism would represent a mere discovery, however if a new use of that material is found then the use could be claimed, along with the new isolated material or microorganism, subject to the usual patentability requirements of novelty, inventive step and industrial applicability.
There are no changes to IPOS’s stance on scientific theories, mathematical methods, aesthetic creations (﴾such as literary, dramatic, musical or artistic works)﴿, methods that are considered mental acts or schemes, and presentations of information, and these are not considered patentable subject matter. We will provide further updates once these guidelines are finalised. In the event that you require more details or specific advice regarding your invention, please feel free to contact our team.
For further information, please contact:
Sheena Jacob , Partner, Joyce A Tan & Partners
