Singapore – Patentable Subject Matter Clarified

After taking into consideration feedback from patent practitioners and policies of foreign patent offices that are relevant to Singapore, the Intellectual Property Office of the Singapore (IPOS) has released a revised version of the Examination Guidelines for Patent Applications, which contains amendments to the section concerning patentable subject matter.

The guidelines state that the assessment of whether the invention is patentable involves a consideration inter alia of whether the subject matter is novel, inventive and capable of industrial application. A separate analysis of the claimed subject matter should be conducted if there is a remaining issue that the claimed subject matter is not an “invention.”

To determine whether or not the claims define an “invention,” the Examiner should identify the actual contribution made by the claimed subject matter. An example is cited in the guidelines regarding business method claims. These claims would be considered an invention if the technical features (e.g. servers, user devices, etc.) interact with the business method to a material extent to address a specific problem. However, if the technical features recited in the claims are no more than the workings of a standard operating system, e.g. use of a computer system to perform a purely business method, then the claimed subject matter would not be considered an “invention” as such interaction is not considered to be a material extent and does not solve a specific problem.

The guidelines also declare that the following subject matters (among other things) are not considered to be “inventions”:

(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;

(d) the presentation of information.

The revised guidelines are applicable to all national applications for a patent (and any divisional arising from it) with a filing date on or after 16 May 2016, and international applications entering national phase (and any divisional arising from it) on or after 16 May 2016.