Eureka!
You have just created a great new product, UX, or developed an improved manufacturing process with significant reduction in production time. You know your invention has tremendous commercial value, and you are keen to share your idea with a potential business partner. But hold on for a minute. Before you disclose your invention to anyone, you may want to take steps to secure the ownership and protection of your brainchild by patenting your invention.
What is a patent?
A patent is a right granted to the owner of an invention to enable him to exclude others from using, copying or making the invention without his consent in the country in which he has obtained patent protection.
Patents are territorial rights and patent applications have to be filed in each and every country/region that patent rights are sought. Presently, there is no authority that grants worldwide patents to an applicant.
The rationale behind patents is to encourage innovation by preventing competitors from copying an innovator’s novel idea. Incentives like this are essential because research and development can be very expensive and if an innovator is unable to at least recoup the cost of developing his innovation (and profit from it to some degree), the innovator is unlikely to embark in the effort. Patents also promotes diffusion of ideas and information which may have positive effects in the long run.
10,814 patents filed in SG in 2015!
An astonishing figure – there were 10,814 patents filed in Singapore for the year of 2015! The main areas of technology for patent applications filed in Singapore were:
- Chemistry, metallurgy (33.6%)
- Human necessities (25.0%)
- Electricity (20.7%)
- Physics (20.5%)
- Performing operations, transporting (19.7%)
Patents are categorised under 8 main categories. The remaining 3 are:
- Textiles; paper,
- Fixed construction and
- Mechanical engineering; lighting; heating; weapons; blasting
No particular category for Technology Startups
There’s no particular category associated with startups. For example a startup that provides Fintech solutions would likely have patents filed under Physics where there is a subcategory: Data processing systems or methods, specially adapted for….. financial …purpose
File as early as possible — awarded on a first-to-file basis
The distribution of patents registrations is indicative of R&D efforts by local research institutes (A*Star, NTU, NUS) and large innovative corporations (pharma companies, energy companies, tech companies) that possess well-developed patent filing policies. Generally, patents should be filed ASAP since most countries including Singapore award patents to applicants on a first to file basis.
So you’re thinking of obtaining a patent for your idea in Singapore…
To obtain patent protection in Singapore, you will need to file a patent application to the Intellectual Property Office of Singapore. The patent application should include a full written explanation of the invention and the mechanics by which the invention works.
Think it through and be sure you want to file a patent before you start
The patent application process can be lengthy, confusing and even costly. If you just dive in with zero or little understanding of what to do or expect, you may end up over-investing a lot of time and funds or may not have a patent to show for it at the end of it for your efforts. This article is intended to help entrepreneurs (new or existing) think through this decision before you actually commit to getting the patents.
Before filing a patent application:
Step 1: Check if you are in fact entitled to file a patent
You need to first check your entitlement to apply for a patent. Typically as the inventor, you have the right to apply for a patent in your own name but if the invention had been developed in the course of your work as an employee, the rights to apply for the patent may belong to your employer.
Step 2: Establish if your invention can be patented
Not all ideas can be patented.
A common misconception is that any idea can be patented. Patents can be granted for inventions under the following two main broad categories:
- Product (e.g. chemical compound, a safety helmet, a vaccine), or a
- Process, i.e. a method of doing something (e.g. method of mobile payment processing, method of silicon wafer inspection )
The two categories above are actually very broad so UX will be categorised as processes as they can be described by a set of defined steps. For example, Amazon 1 click is a patented process.
Unless there is a specific technical feature incorporated in the business model, pure business models that solely involve mental acts are not patentable. This is similarly applied to mental acts involving method of teaching / learning / playing games.
Generally speaking, mere ideas, aesthetic creations, and/or laws of nature, without a practical application that fits into any of the two categories above, are not patentable. Nevertheless, you may still obtain alternative forms of protection for your creation, such as through registration of trademarks or registered designs as well as copyright.
For example, literary works can be protected through copyright while ornamental designs applied to articles for industrial use (e.g. jewellery designs) can be filed as registered design to prohibit copying by others.
In order for the patent office to grant a patent for your invention, your invention must satisfy all three requirements:
#1. It must be new
This means your invention should not be in the public domain in any way before the patent application is filed. Disclosure of your invention to the public can happen through article features, advertisement by the press, commercial exploitation or demonstration in public.
Moral of the story: Keep your invention secret unless an application for a patent been filed! If it is absolutely necessary to disclose your invention before applying for the patent, (for example, during discussion of your invention with a marketing consultant), make sure the disclosure is made in confidence to the third party, otherwise you risk jeopardising the grant of the patent.
#2. It involves an inventive step
The invention should be an improvement over an existing product or process. This improvement must not be obvious to a (hypothetical) skilled person in that technological field of the invention. An invention involving an inventive step could be one that goes against or in a different direction to the general convention of the existing technology.
An example would be the Blu-ray digital storage format that since replaced the earlier DVD optical storage format. Using read/write laser of a shorter wavelength than lasers used for reading DVDs, Blu-ray disks are capable of holding five times more data than DVDs. More recently, online file hosting service Dropbox was awarded a patent for data synchronisation between devices that does away with the conventional requirement that data has to be first uploaded on an external host. These two inventions demonstrate significant inventiveness by offering solutions that step away from conventional practice.
Does this mean that only sophisticated and complex inventions meet this requirement? No! This is not the case. Complexity or simplicity is not a bar to inventiveness. The humble ring pull-tab found in beverage cans all over the world is a patented product as it was acknowledged to be a non-obvious improvement over existing can opening solutions.
The Amazon one-click ordering system that enables the user to purchase items online with a single click is another example of a seemingly simple process which was granted a patent as it allowed users to bypass the ordering cart system of typical online purchase systems.
#3: It is capable of industrial application
The invention must have some form of practical application and be capable of being made or used in some form of industry. “Industry” is applied in its broadest sense and includes any useful and practical activity ranging from agricultural tools to imaging software used to process images taken by satellites in space.
Most inventions will naturally comply with this requirement since they are either an improvement to existing technical products or processes.
Notably, the fabled perpetual motion machine that claims to be able to operate in a manner contrary to well-established physical laws is an invention that is regarded impossible to achieve and hence regarded to be not capable of industrial application.
Exceptions — Specific inventions that cannot be patented
Applicants will need to take note that in Singapore, the following classes of inventions are specifically excluded from patentability:
- Inventions that encourage offensive, immoral or anti-social behaviour. Inventions relating to abuse of restricted drugs or cloning of humans would not expected to be allowed by the patent office.
- Inventions relating to a method of treatment for humans or animals by surgery or therapy, or it is a method of diagnosis practised on humans or animals.
Although weapons could be used inappropriately, they can be patented if they have been originally designed for legitimate use.
Step 3: Conduct a prior art search
A prior art search can help to detect existing similar developments or inventions and provides an indication whether your invention meets the “new” requirement.
Since patent applications normally represent the first publication of a new invention, searching patent databases is a good starting point for a prior art search. Espacenet is a free searchable worldwide patent database of nearly 100 million patent documents maintained by the European Patent Office.
Note, however, that Espacenet is a basic search tool and you may need to conduct more in-depth searches using commercial search tools or by engaging the help of patent professionals.
Can I DIY this on my own?
Yes, but a non-patent professional may not be able to interpret the search result properly or conduct a prior art search thorough enough for it to be indicative.
Preferably, you should request a prior art search by a patent attorney to obtain a professional opinion on the novelty of your invention. Your patent attorney may also be able to provide useful suggestions to modify your invention based on the prior art search results to improve your chance of patenting. Prior art search cost typically start from SG$2,000.
How long does it take and how much does it cost to search?
No fixed time. This depends on the number of results obtained from the search as you need to review each search result to check if they are indeed relevant to the invention. For example, searching the term “payment processing” returned 709 patent records. The searcher may need to review all 709 records to determine if the invention is indeed new (searching is free with Espacenet).
Typically, a patent agent will be able to provide a prior art search report in 1-2 weeks.
Should the prior art search be conducted against existing patents filed in Singapore or patents in other countries?
Prior art searches has to be conducted on a worldwide basis. The requirement for novelty is worldwide novelty i.e. a patent application filed in Singapore can be rejected by the patent office if the same invention is already in known in Thailand. Hence it is insufficient to only search the patent database of the Intellectual Property Office of Singapore to determine if your invention is new.
Having to do a search on a worldwide basis is one of the reasons why patenting can be quite an involved process.
Step 4: Weigh all the factors
Some considerations you should to take into account before patenting are:
- It can be expensive — The total official fees for a patent application in Singapore alone will start from around S$2,100. Once granted, renewal fees have to be paid annually to maintain the validity of your patent. The total expected cost of patenting–An applicant can expect to pay S$10,000 and above to draft and file a patent application to grant including official fee.
- It can take a long time to obtain grant of a patent – Singapore patent applications typically take 2-4 years to grant. During this application period, the applicant has no patent rights to prevent unauthorised infringement. There is thus limited benefit in filing a patent if the commercial lifespan of the invention is not expected to last beyond 3-4 years.
- Is it worth the effort and cost? You will need to consider market size, market direction and threat of competition. Patents are typically filed in countries with significant market size or capabilities to manufacture the patented product to deter competition.
- Possibility of rejection by the patent office – Although most inventors would like to believe that they have developed a totally new and a patentable invention, many patent applications have been rejected by the Singapore patent office for lacking novelty or inventive step. This may mean that the time and funds you invested up to this point were to no avail.
- Availability of alternate forms of protection – There are other forms of protection such as copyright, confidential information, trade secrets that might be more suitable or easier to protect your idea. For example, if your idea is something that is not easily reverse-engineered, you may consider keeping it as a trade secret.
- Other advantages offered by patents – Owning a patent can help to improve negotiation position for start-ups seeking venture funding.
- Expensive and challenging to enforce a patent – Enforcing patent rights through litigation can be a complex and expensive exercise. Local firm Trek 2000 International Limited reportedly spent 6 million dollars over three years in legal fees to enforce their patent rights in the USB thumb drive against four infringing companies in Singapore. This is even more challenging when the infringement occurs in another country.
Do your homework!
Patents can be a huge competitive advantage and be very useful in fund-raising, negotiations and marketing / branding. That said, it can be an expensive, involved and drawn-out process to obtain a patent. Even before you start the patent application process, there is a fair bit of homework to be done.
Use this guide to help you think through if and how you should protect your idea before you get started.
Upcoming IP articles
In our next article, we will discuss the “Top 5 mistakes made/misconceptions start-ups have about patents in Singapore” and we will later discuss the actual patenting process.
Consult a lawyer on patents for S$49 with a Quick Consult
If you would like legal advice on patents or any other matter related to intellectual property law, you can do so by booking a Quick Consult. When you get an AsiaLawNetwork Quick Consult, a lawyer will call back within 1-2 days for a transparent, flat fee starting at S$49 to give you legal guidance and answer your questions on patents, trademarks, copyrights or any specific aspect of intellectual property law.
This article is written by Chan Wai Yeng from Taylor Vinters Via LLC and edited by Ling Yuan Rong from Asia Law Network.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.