PATENTS & CONFIDENTIAL

INFORMATION

CPD DAY

Name Lawyer

9 OCTOBER 2015

Presentation by : WENDY LOW, PARTNER

Contact details : wendy.low@rajahtann.com

Topics to be covered

• Patentable Subject Matter

• Patent Amendment

• Patent Revocation

• Patent Infringement

Patentable Subject Matter v Patentability

What Is Not Patentable Under Singapore Patents

Act

Invention of a method for treating humans or

animals by surgery or therapy, or of diagnosis

practised on human or animals

Invention that could encourage offensive, immoral or anti-social behaviour

Patentability

For something to be patentable, there are a few important

conditions that must be met.

The subject matter must be:

1) novel

2) inventive

3) have a form of practical industrial application

Patentable Subject Matter

• IT software patent : Alice Corp v CLS Bank

• Number of patent lawsuits filed in U.S. dropped by 13% in 2014 (2015

Patent Litigation Studies : A Change In Patentee’s Fortune : PWC)

• Genes

Alice Corp v CLS Bank

• Computerized method configured to perform electronic

escrow services for online transactions

• Patentable software or abstract idea (Title 35 of the

United States Code) - claims do no more than ‘simply

instruct the practitioner to implement the abstract idea of

intermediated settlement on a generic computer’

USPTO Guidelines

• Step 1 : To determine whether the claim is to a process,

machine, manufacture or composition of matter under 35

U.S.C. 101

• Step 2a : If it is, then step 2a asks if the claim is directed

to a law of nature, a natural phenomenon or an abstract

idea e.g. Planet Bingo, LLC v. VKGS LLC, No. 13-1663

(Fed. Cir. 2014)

• Step 2b : whether the claim recites additional elements

that amount to significantly more than the judicial

exception (step 2b). If yes, then the claim qualifies as

eligible subject matter under 35 U.S.C. 101.

DDR Holdings, LLC v Hotels.com, L.P.

• Appeal brought by defendants National Leisure

Group, Inc. and World Travel Holdings, Inc.

• United States Court of Appeals for the Federal

Circuit found that ’399 patent was not invalid and

infringed

• ‘399 patent claims address the problem of

retaining website visitors.

DDR Holdings, LLC v Hotels.com, L.P.

• Distinguished from Ultramercial v Hulu

• ‘399 claims do not generically claim “use of the

Internet” to perform abstract business practice.

• Claims yields result that overrides the routine

sequence of clicking a hyperlink

DDR Holdings, LLC v Hotels.com, L.P.

• With the invention, the hyperlink is to directed to

an automatically-generated hybrid web page

hosted by an outsource provider that combines

visual “look and feel” elements from both the

host website and the third-party merchant’s

website.

• Host website does not instantly losing visitors to

the third-party’s website.

EPO Approach

• Step 1 : whether a claimed invention includes

any technical features/ element

• Step 2 : a non-obvious "technical contribution”

– Computer-implemented inventions that only

solve a business problem using a computer,

rather than a technical problem, are

considered unpatentable as lacking an

inventive step

•

Unitary Patent

• Patent protection in 25 member states (Spain, Italy and

Croatia are not currently participating)

• Exclusive jurisdiction of the Unitary Patent Court, which

will comprise of a court of first instance, a court of appeal

and a registry

Ship's Equipment Centre Bremen GmbH v Fuji Trading

(Singapore) Pte Ltd and others [2015] 4 SLR 781

• Whether amendment to Singapore patent should

be allowed if its corresponding amended patent

has been revoked by EPO

• Disallowing amendment on exercise of Court’s

discretion – non-disclosure, delay, unfair advantage

Patent Amendment

Patent Revocation

• Lonza Biologics Tuas Pte Ltd v Genpharm International

Inc [2015] SGIPOS 13

• Application of Evidence Act and the Rules of Court to

IPOS proceedings - by consent/ acquiescence; s 137 EA

• Rule 80(10) Patent Rules - discretion to exclude

statutory declaration if opposing party is deprived of

opportunity to cross-examine absent expert witness.

Patent Revocation

• Rule 80(4) -registrar to consider revocation application

on the basis that “each specific fact set out in the

statement were conceded, except in so far as it is

contradicted by other document in [his] possession” e.g.

prior art

• Re-examination Report - reliance on the excluded

statutory declaration of the proprietor’s expert

Patent Infringement

AG v Lee Kwai Hou Howard and others [2015] SGDC 114

• Orders granted pursuant to s 15(2) of the Protection from

Harassment Act 2014

• Statements made online arising from preceding patent

infringement action commenced by Mobilestats

Confidential Information

• ANB v ANC and another and another matter

[2015] SGCA 43

• Serious legal issue to be tried – protection of

private information surreptitiously obtained

under law of confidence

Confidential Information

• Jardine Lloyd Thompson Pte Ltd v Howden Insurance

Brokers (S) Pte Ltd and others [2015] SGHC 202

• Whether “springboard” injunction extends to cases

where there was no misuse of confidential information

• UBS Wealth : “available to prevent any future or further

serious economic loss to a previous employer caused by

former staff members taking an unfair advantage, an

‘unfair start’, of any serious breaches of their contract of

employment (or if they are acting in concert with others,

of any breach by any of those others). …

Confidential Information

• ICAP Approach preferred :

“ In the absence of restrictive covenants, there is

nothing in the general law to prevent a number of

employees in concert deciding to leave their employer

and set themselves up in competition with him. And there

is now no rule of law or equity which restrains a

competitor from seeking out the servants of another and

offering him employment provided he does not thereby

procure a breach of the servant’s contract of service …”

Official Secrets (Discovery)

• PricewaterhouseCoopers LLP v Celestial Nutrifoods

[2015] 3 SLR 665

• Justice Prakesh's finding that PWC had not shown that

the documents contained PRC state secrets was upheld

on CA appeal

• Redaction to overcome objections on ground of state

secrecy

• US SEC and Hong Court decisions have similarly

rejected arguments based on PRC Secrecy Law

Official Secrets (Discovery)

• Elbow Holdings Pte Ltd v Marina Bay Sands Pte Ltd

[2014] SGHC 26

• Distinction between category of documents which

could constitute protectable papers e.g. secret

service documents, as opposed to content of , say

commercial transactions involving state interests

• S 125(1) EA allows for approval to be given by a

"Minister" to overcome disputed disclosure of documents

concerning "affairs of the state".

Disclaimer

• The material in this presentation is prepared for general information only and is not intended to be a full analysis of the points discussed. This presentation is also not intended to constitute, and should not be taken as, legal, tax or financial advice by Rajah & Tann. The structures, transactions and illustrations which form the subject of this presentation may not be applicable or suitable for your specific circumstances or needs and you should seek separate advice for your specific situation. Any reference to any specific local law or practice has been compiled or arrived at from sources believed to be reliable and Rajah & Tann does not make any representation as to the accuracy, reliability or completeness of such information.