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Novelty

Statutory requirements

3.1 Section 14(1) provides that:

An invention shall be taken to be new if it does not form part of the state of the art.

3.2 Sections 14(2) and 14(3) set out the state of the art as follows:

(2) The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in Singapore or elsewhere) by written or oral description, by use or in any other way.

(3) The state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied:

(a) that matter was contained in the application for that other patent both as filed and as published; and

(b) the priority date of that matter is earlier than that of the invention.

3.3 Thus, an invention defined in a claim lacks novelty if the specified combination of features has already been disclosed in the prior art. In Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd (No. 2) [2005] 3 SLR 389, Lai Kew Chai J provided the following guidance in determining novelty:

(1) the issue is determined by asking whether an invention forms part of the state of the art;

(2) the prior art must, in order to invalidate the patent, be such that a person of ordinary skill and knowledge of the subject would at once perceive and understand and be able to practically apply the discovery without the necessity of making further experiments;

(3) the prior art documents must be construed as at the date of publication and it is not permissible to perform an ex post facto analysis;

(4) each prior art document has to be considered separately and not combined into a mosaic to arrive at the invention;

(5) the person skilled in the art is an unimaginative person of competent but average technical skill;

(6) the prior art document must contain clear directions to do what the patent claims to have invented.

3.4 The Singapore Courts have followed UK precedent in approaching the determination of novelty. The UK approach has recently been summarized in SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent [2006] RPC 10, where the House of Lords held there were two requirements for anticipation: prior disclosure and enablement. These are distinct concepts, each of which has to be satisfied and each of which has its own rules.