11 Aug 2020
What is the current state of the law on the patentability of CIIs?

When Singapore’s Patents Act first came into force in 1995, computer programs were on a list of subject matter that could not be patented. This list was subsequently removed when the Patents Act was amended a year later. Following from the amendment, there is no legislative prohibition against a CII being patented in Singapore. However, it does not follow that all CIIs will automatically meet the criteria for patent protection.

While there is a dearth of reported court judgments on the patentability of CIIs, the Intellectual Property Office of Singapore (IPOS) has provided further guidance on this issue in its Examination Guidelines for Patent Applications. A key issue when examining CIIs is whether they can be considered an “invention” under the Patents Act.1 While the primary focus of this examination is whether a CII fulfils the baseline criteria for patentability (i.e. the CII must be novel, must involve an inventive step and be capable of industrial application), there is occasionally the residual issue of whether the claims relate to subject matter which is not an invention at all.

In order to address this residual issue, the claimed subject matter of the patent will be examined to identify the actual contribution which is made by the claimed subject matter, having regard to the problem to be solved, how the claimed subject matter works, and what its advantages are. This follows the guidance set out in the Aerotel / Macrossan test adopted by the UK Intellectual Property Office.2

When considering the actual contribution of claims directed to a CII, a Singapore patent examiner would 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 in order for the actual contribution to comprise the computer (or technical features).

By way of example, IPOS has indicated that claims relating to a computer-implemented business method would be considered an invention, and hence patentable, if the various technical features (e.g. servers, databases, user devices) interact with the steps of the business method to a “material extent”, and in such a manner as to address a specific problem. As an example of what “material extent” means, a claim may recite known hardware components for implementing a business method, but if the overall combination of the hardware provides a more secure environment for performing transactions, then the hardware would satisfy the “material extent” test set out above. However, 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 business method, then this would not satisfy the “material extent” test.

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Justin Davidson
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Jerry Chew
Senior Associate
+65 6309 5414