Contact

RESOURCES

Introduction

Standard of proof

1.3 While the Patents Act and Rules set out the requirements for patentability, there is no legislative standard of proof set out in the Act for applicants to meet these requirements. In this regard, legal precedent in the UK may provide some guidance for Examiners in Singapore.

1.4 The standard of proof for patentability in the UK was recently considered by Floyd J in the UK Patents Court (Blacklight Power Inc v The Comptroller-General of Patents [2008] EWHC 2763 (Pat)). Floyd J reviewed the authorities (Fujitsu’s Application [1996] RPC 511, Macrossan’s Application [2006] EWHC 705 which was heard on appeal together with Aerotel’s Application [2007] RPC 7). These were cases related to patentable subject matter, but Floyd J considered they were applicable more broadly. He stated that:

“I think that the effect of these authorities is as follows. It is not the law that any doubt, however small, on an issue of fact would force the Comptroller to allow the application to proceed to grant. Rather he should examine the material before him and attempt to come to a conclusion on the balance of probabilities. If he considers that there is a substantial doubt about an issue of fact which could lead to patentability at that stage, he should consider whether there is a reasonable prospect that matters will turn out differently if the matter is fully investigated at a trial. If so he should allow the application to proceed.”

1.5 He went on to detail the approach that an Examiner should take:

“The examiner will first raise an objection and put it to the applicant. The applicant then has an opportunity of persuading the Comptroller that his basis for considering that the objection applies is not sound. If the applicant does not persuade him to withdraw the objection he may refuse the application… But at that stage he should consider whether, because there is a substantial doubt about an issue of fact, there is a reasonable prospect that matters may turn out differently at a trial, when there will be a full exploration of the matter with the benefit of expert evidence. If there is such a reasonable prospect he should allow the matter to proceed to grant. It goes without saying that mere optimism and a reasonable prospect of matters turning out differently are not the same thing. The reasonable prospect must be based on credible material before the Office… Moreover the greater has been the opportunity for the applicant to produce such material at the application stage, the smaller scope there is for supposing that giving him the benefit of the doubt will lead to a different conclusion.”

1.6 Thus Examiners should consider the material before them on the balance of probabilities. If there is a fact in contention, the Examiner should consider whether there is a reasonable prospect that the matters may turn out differently at a trial, when there will be a full exploration of the matter with the benefit of expert evidence. Thus, for example, there would be little prospect of success that an applicant would be able to produce evidence that a perpetual motion machine could operate in the real world, and on that basis an objection would be maintained.

1.7 However, questions as to the common general knowledge in a particular area may be less clear cut and a full consideration with the benefit of expert evidence may give a reasonable prospect of a different outcome. Indeed in Martek Biosciences Corporation v Cargill International Trading Pte Ltd [2012] SGHC 35, the Court cautioned against a Tribunal making decisions in the absence of clear evidence on the common general knowledge:

“… the basis upon which the Tribunal arrived at the conclusion that claim 1 lacked inventive step was an assertion that it would have been obvious to a skilled reader to combine different features of the various prior art. With respect the Tribunal erred in doing so. The Tribunal did not possess the expertise to determine for itself, on the face of the prior art and the Patent, whether the invention would have been obvious to a skilled reader without any basis in evidence as to what a skilled reader would have known or understood. The test of whether a claim involves an inventive step is premised on the viewpoint of the skilled reader.”

1.8 This of course does not absolve applicants from their onus of providing the Examiner with compelling submissions, or indeed evidence that addresses an objection. An objection that is soundly based in the principles of inventive step and where the Examiner has construed the documents according to the established law is likely to only be overcome by evidence from the applicant addressing the objection, rather than by an argument as to the Examiner lacking evidence of the common general knowledge.