Rajah & Tann Singapore has contributed a Practice Note titled “Prior Art and Patentability (Singapore)” to Practical Law Asia (Thomson Reuters).
When conducting patentability and validity evaluations, global patent counsel must often assess whether a reference document or activity qualifies as prior art. This is challenging as patent laws vary across countries, and even slight differences can have a significant impact on the final patentability and validity conclusions.
Authored by Partner Tng Sheng Rong (Deputy Head, Intellectual Property), Senior Associate Edina Lim and Associate Claire Mak, the Practice Note discusses the key principles of prior art and patentability in Singapore, which affect the scope of protection for any patent granted in the jurisdiction. It explores important considerations for determining whether a reference document or activity qualifies as prior art under the Singapore Patents Act 1994 (2020 Rev Ed). The Practice Note also touches on novelty and inventive step (obviousness), outlining the analytical framework used in Singapore in assessing an invention’s patentability. Topics covered under this include (i) the requirements for public availability; (ii) the enabling disclosure test for novelty; and (iii) the application of the four-step Windsurfing test for determining obviousness.
Topics covered:
Prior Art
- Dates for Prior Art Determinations
- Prior Art Documents
- Prior Art Activities
- Exceptions to Prior Art
Novelty
- Scope of Claims and Claim Construction
- Analytical Framework for Determining Novelty
- Enabling Disclosure
- Inherency
- Other Key Novelty Considerations
Inventive Step
- Relevant State of the Art
- Four-Step Windsurfing Test
- Secondary Considerations
Practical Considerations
- Developing a Singapore Patent Portfolio
- Evaluating Third-Party Singapore Patents
- Addressing Infringement Allegations
- Strategies for Overcoming Obviousness Arguments
The Practice Note is a useful resource for patent counsel managing global patent portfolios and those conducting freedom-to-operate (FTO) studies, as this enables them to grasp the framework for assessing patentability and the validity of third-party patents relevant to their clients’ business.
To read the full Practice Note, please click here. Reproduced from Practical Law with the permission of the publishers. For further information, visit practicallaw.com.
Find out more about our Intellectual Property Practice here.
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Please note also that whilst the information in this publication is correct to the best of our knowledge and belief at the time of writing, it is only intended to provide a general guide to the subject matter and should not be treated as legal advice or a substitute for specific professional advice for any particular course of action as such information may not suit your specific business and operational requirements. You should seek legal advice for your specific situation. In addition, the information in this publication does not create any relationship, whether legally binding or otherwise. Rajah & Tann Asia and its member firms do not accept, and fully disclaim, responsibility for any loss or damage which may result from accessing or relying on the information in this publication.
