New Singapore guidelines for examining computer implemented inventions (CIIS)
After several rounds of public consultations, the Intellectual Property Office of Singapore (IPOS) has issued an updated set of examination guidelines for computer implemented inventions (CIIs) that will apply to all new patent applications from 16 May 2016. The "new applications" are:
i) national applications for a patent (and any divisional applicationsarising from them) with a filing date on or after 16 May 2016; and
ii) international applications entering national phase (and any divisional applications arising from them) on or after 16 May 2016.
IPOS has issued the updated guidelines for patent applications without making any amendments to the relevant legislation.
IPOS has indicated that it is conscious of local jurisprudence, and will look towards public policy considerations and international patent norms when carrying out their role as the IP governing body in Singapore.
Amendments in the guidelines relating to CIIS
- When considering claims directed to CIIs, Examiners should determine the extent to which the computer (or other technical features) contributes to the invention defined in the claims. It must be established that the computer (or other technical features), as defined in the claims, is integral to the invention.
- An example given of a CII which is considered to be an invention is a computer-implemented business method if the various technical features (e.g. servers, databases, user devices etc.) interact with the steps of the business method (i) to a material extent; and (ii) in such a manner as to address a specific problem.
- An example given of what is meant by "material extent" is a claim reciting known hardware components for implementing a business method, but the overall combination of the hardware provides, for example, a more secure environment for performing transactions, then the hardware would be regarded to interact with the business method to a material extent to address a specific problem.
- An example given of a CII which is not considered to be an invention is if the technical features recited in the claim are no more than the workings of a standard operating system, in particular, the use of a generic computer or computer system to perform a pure business method. In that case it would be considered that the actual contribution is likely to be only the business method
How do the amendments affect entities who file CII patent applications in Singapore?
For entities who wish to file CII patent applications in Singapore, it appears that a higher bar has been set for obtaining granted CII patents in Singapore, although this bar is similar to that which currently applies in the US, Europe and Australia.
Based on filing statistics, the effect of the amendments is minimal as a substantial number of patent applicants in Singapore rely on the grant of a corresponding patent in selected jurisdictions when requesting grant for a Singapore patent application. The amendments (currently) do not affect applications which rely on requesting supplementary examination as the process for supplementary examination does not include an assessment of patentable subject matter.
For applications that will undergo local search and/or examination, we expect to be making submissions discussing how various technical features provide a contribution to the invention "to a material extent" whenever a patentable subject matter objection is raised against a CII application. Thus, it would be desirable if applicants are able to identify those aspects with regard to their CIIs.
Based on both formal and informal communications with IPOS, we eventually expect a practice (in a worst case scenario) similar to European practice where a technical effect or contribution is mandatory for all CII patent applications. However, such a situation is not yet upon us, and we will provide further updates as the practice develops.
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