Understanding Patentability in Singapore: Key Criteria and Common Pitfalls
12 Sep 2024
Securing a patent is a critical step for inventors to protect their inventions and secure a competitive advantage. With the granted patents, the inventors hold the exclusive rights to use the patent. However, the patent registration process can be complex, with several key criteria that must be met to ensure an invention is patentable. This article discusses the three key criteria for patentability, which are novelty, inventive step and industrial application, some common mistakes the applicants make, and tips for avoiding these mistakes.
Key Criteria for Patentability
Novelty is a fundamental requirement for patentability in Singapore. To be novel, an invention must be new and not have been disclosed to the public before the patent application is filed. This means that any prior art must not disclose the same invention.
The inventive step, also known as non-obviousness, requires that the invention is not obvious to a person skilled in the relevant field. This means that the invention must involve an inventive step over the prior art.
In Singapore the courts have adopted the so-called “Windsurfing approach”, wherein the differences between the prior art and the alleged invention are identified. The skilled person decides whether these differences constitute steps which would have been obvious.
Industrial applicability means that the invention must be useful and have some form of practical application. The description of the patent needs to clearly describe the specific industries or applications where the invention can be applied.
Common Mistakes and How to Avoid Them
The patent application process can be challenging, and many applicants make common mistakes that can reduce the chances of getting a patent granted. Here are some frequent pitfalls and solutions for avoiding them:
1. Inadequate Prior Art Search
Mistake: Failing to conduct a comprehensive prior art search can lead to discovering that your invention is not as novel as you thought, potentially resulting in wasted time and resources.
Solution: Before filing a patent application, you need to perform a comprehensive search of existing prior arts. This will help identify any existing inventions similar to yours and refine your application to address any potential issues.
2. Disclosure to the public
Mistake: The inventors fail to keep the invention secret before a patent application has been successfully made.
Solution: It is important to note that so long as your patent application has not been filed, you should not market, sell or in any other way disclose your invention to third parties. By doing so, you run the risk of adversely affecting the novelty of your invention, which is a requirement for a valid patent. Should it be necessary to make disclosure however, a non-disclosure agreement (NDA) will reduce, but not eliminate the risk of prejudice to you. However, even with NDA, the extent of disclosure should be minimal and should be focused on the advantages of the invention, instead of how the advantages are being achieved.
3. Insufficient Detail in the Patent Application
Mistake: Submitting a patent application with insufficient detail can result in rejections by the examiners. Additionally, making amendments may be challenging due to potential added matter issues.
Solution: It is important to make your patent application detailed and well-drafted by including comprehensive descriptions, drawings, and claims that thoroughly explain the invention and its inventive aspects. You can consider working with a patent agent who is professionally trained to help draft a robust application.
4. Overlooking Inventive Step
Mistake: Many applicants mistakenly believe that obvious modifications to existing technologies are enough to meet the inventive step requirement. However, incremental changes often do not enough.
Solution: It is suggested to clearly describe how your invention represents a significant advancement over prior art in the patent specification. You can provide evidence and arguments to show that the invention involves a non-obvious solution or improvement. This can be achieved through detailed explanations and comparisons with existing technologies.
Conclusion
In summary, it is crucial for a patent to satisfy the three criteria: novelty, inventive step, and industrial applicability, for securing patent protection. By conducting thorough prior art searches, keeping the invention secret, providing detailed descriptions, demonstrating non-obvious advancements, inventors can enhance their chances of successfully obtaining a patent.
- Written by Melanie Yun, Patent Agent at Drew & Napier LLC
Disclaimer: The content in this article is for informational purposes only and does not constitute any legal advice.