Requirements for Patent Registration

Last updated on December 8, 2023

To qualify for patent registration, the key requirements for an invention are that it has to be new, involve an inventive step, and be capable of industrial application.

Invention Must Be New

According to section 13(1)(a) of the Patents Act, every invention to be patented must be new. An entirely new product/method invented is the first and most important criteria in order for an application to succeed. To ascertain this fact in an application, a worldwide test of novelty is used by IPOS. The Intellectual Property Office of Singapore (IPOS) is the country’s registration body for patent applications. By applying the worldwide test of novelty, IPOS will take into account whether or not there is a similar product/method already in use or registered elsewhere in the world.

But what does it mean by “an entirely new product/method”? This is defined in section 14(1) of the Patents Act: An invention is new if it does not form part of the state of the art. For an invention to “form part of the state of the art”, it means that there exists information or materials relating to the alleged patent that has either been publicised or contains information that is general knowledge even before the inventor puts in an application. Such “state of the art” information may also include information found in an earlier patent application regardless of whether or not it is related to the current patent application.

It is a question of fact whether or not an invention can be considered new. There are two steps to the novelty test:

  1. Whether it was anticipated by a previous patent
  2. Whether it was published or used anywhere in the world.

Was it anticipated by a previous patent? The general test would be to ask the ‘would-it-inevitably-lead-to-the-invention’ question. In other words, did the new product copy the methods of production of an existing patent in order to create something else that seemed newer? If there was a modification of the experimental environment, the copied methods of production used in the earlier patent may not ultimately lead to the result produced in the newer invention.

Has the invention been published or used? Information regarding the to-be-registered product cannot have been made available to the public. Such information includes the product and the process to produce it. It will be considered to have been made available to the public if the information is made available to even one member of the public who is free in law to use the information.

However, there are exceptions to this criterion. They are stated in section 14 of the Patents Act:

  1. The product/method was publicised for a maximum of 12 months before the patent application; and
  2. The prior disclosure must relate to one of the following events:
Sections   Explanation
(4)(a) Prior disclosure was obtained unlawfully or in breach of confidence. The person had no authority whatsoever to access the information but stole it and leaked it out.
(4)(b) The matter was disclosed in breach of confidence by the person who obtained it. The person who made the disclosure may have been bound by various factors (eg. employment, government/trade secrets, etc) but still leaked the information out without permission.
(4)(c) The disclosure was made at a display of the invention at an international exhibition. The disclosure was meant for an exhibition (defined to mean “an officially recognised international exhibition falling within the terms of the Convention on International Exhibitions”).
(4)(d) The disclosure was made by the inventor describing the invention in a paper read by him or another person with his consent before any learned society or published with his consent in the transactions of any learned society (defined to include “any club or association constituted in Singapore or elsewhere whose main object is the promotion of any branch of learning or science”). The disclosure was meant for the purposes of educating the public; to inform them of the benefits and uses of the new product/method.

Invention Must Involve An Inventive Step

Another criterion in satisfying the conditions of a successful patent application is found in section 13(1) of the Patents Act: The invention must involve an inventive step.

The meaning of “inventive step” is stated in section 15: The step must not be obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art. This means that the new/inventive step used in creating the invention must not have been obvious to someone skilled in the particular field.

Example: Person A creates a large clock with both analogue and digital capabilities; Person B comes up with the same device which is smaller in size; Person B can be said to be have created something which does not involve an inventive step. The reason is due to the fact that a change in size may be easily anticipated by the original inventor; it is obvious to progress from a larger device, to a smaller device incorporating the same functions and methods of production.

Invention Must Be Capable Of Industrial Application

Another condition to be satisfied is that the product has to be capable of industrial application, and can be made or used in any kind of industry, including agriculture. Section 16 of the Patents Act expressly provides this need. The invention must be capable of being produced and used industrially in any kind of industry including medicine, education or agriculture. This means that the product/method invented requires a specific utility. If the invention does not serve a useful purpose, the grant of patent may be rejected.

The patenting of medication in the treatment of living beings is allowed. However, a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body will not be patentable.

Rights Granted after a Successful Registration of Patents

After patenting the product, the person who had submitted a successful registration then becomes the rightful owner of that particular product/method. Therefore, he will have the following rights:

The product/method basically becomes a personal property of the person who has been granted the patent. He will have the rights to sell, sub-sell, make use of the processes involved in the manufacturing of the product, profit from it, etc. In the event that he discovers someone else infringing his patent (i.e. using his patent without his express permission), he will have the exclusive rights to stop it by claiming the following remedies provided for under section 67(1) of the Patents Act:

(a) Injunction To restrain the infringer from any apprehended act of infringement
(b) Order to deliver or destroy This is an order for the infringer to hand over all the resulting infringing materials as well as the materials which were used in creating the infringed product. The infringing materials will be destroyed to prevent further profiteering.
(c) Damages Monetary compensation as a result of the loss
(d) Account of profits If the infringer had made use of the patent in order to profit from it, the rightful owner may be entitled to the profits. An account of profits is different from receiving damages. Both of these remedies involve the receipt of monetary remuneration, only damages is a remedy of right. A remedy of right means that the court would very likely order the infringer to compensate the rightful owner for misusing a patent which did not belong to him and causing loss to the latter. However, an account of profits is an equitable remedy – the court has discretion whether or not the rightful owner deserves to be awarded the money earned by the infringer.
(e) Declaration A declaration that the patent is valid and that the infringer had abused the rightful owner’s patent. This serves as a ‘shout-out’ to the general public with regards to who the actual patent-holder is.