The Intellectual Property Office of Singapore (IPOS) has issued an update to the Examination Guidelines for Patent Applications on March 2020 to provide further guidance on validity of priority claims and lack of unity objections.
Validity of priority
In assessing whether an invention in an application may be accorded its claimed priority date from an earlier application, IPOS has clarified that the focus of the assessment is on whether the earlier application, directly and unambiguously as a whole, while taking into account the common general knowledge of the skilled person, discloses the invention in the concerned application whose priority is in question. The disclosure may be explicit or implicit, and must enable the skilled person to work the invention in the concerned application.
The earlier application need not necessarily describe every possible embodiment of the invention for it to disclose and enable the subject matter of the concerned application. For instance, where the claimed invention relates to a principle of general application, it may be sufficient that the earlier application describes a limited number of individual embodiments of the general application. The number of, and extent to which, the individual embodiments need to be disclosed will vary from case to case.
This update is in line with the approach adopted in Element Six Technologies Ltd v IIa Technologies Pte Ltd [2020] SGHC 26 with reference to Unwired Planet International Ltd v Huawei Technologies Co Ltd and others [2017] Bus LR 1971. In particular, the approach taken in these cases was that the assessment of priority involved asking whether the invention is directly and unambiguously derivable from the priority document, and not whether every possible embodiment of the invention is derivable. Further, the priority document must be read with the benefit of common general knowledge which forms the factual matrix against which the technical disclosure is determined.
Therefore, care should be taken to ensure that a claimed invention can validly be derived, be it directly or indirectly, from the priority application. In the event a priority validity objection is raised, arguments for how common general knowledge can enable the skilled person to work the invention may be useful for overcoming this objection.
Unity objection
IPOS has provided further guidance on search and examination of an application, in the event of a lack of unity objection.
Previously, if it appeared that an application related to two or more inventions that are not so linked as to form a single inventive concept, a search may be restricted to one in relation to the ‘first invention’ specified in the claims of the concerned application. IPOS has now clarified that the ‘first invention’ is defined as the invention first mentioned in the claims i.e. in order of appearance of the two or more inventions in the claims. Examination will then generally be directed only to this invention in the event of a unity objection.
More importantly, amendments by an applicant to address the unity objection must limit the claims to the first invention. In other words, redirection of the claims to any of the other inventions noted in the unity objection is not allowed, even if these inventions may have been covered in the search report.
In view of this, applicants may want to present claims in such a way that the first claim always covers subject-matter that the applicant considers most important, so that examination can be directed to this subject-matter, even if a unity objection is raised.