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Are Computer-Implemented Inventions Patentable in Singapore?

Posted on9 Sep 2021
ByNg Chong Yuan FACULTY, IP ACADEMY
What follows is adapted from the article titled ‘Whither Singapore's Harbour for Patenting Computer-Implemented Inventions?’ that was first published in the Singapore Academy of Law Journal (e-First) on 31 August 2021.

Patentability of computer-implemented inventions can be highly contentious. This is so in the US despite its courts treading carefully to develop this area of patent law and cautioning, in Alice Corp Pty Ltd v CLS Bank Intern 134 S Ct 2347 (2014), that otherwise it could “swallow all of patent law”. The court scene on computer program patentability in Singapore is much more muted, and important legal questions relating to the subject matters of exclusion and the exclusion test await a clear answer. The article examines the legal developments in subject-matter patentability of computer-implemented inventions, particularly in the US, the UK and the European Patent Office, for insights that may provide an answer.

Introduction[1]

We live in what is known as the “Information Age” where digital computers are indispensable to human society. Even social activities are increasingly reliant on computers.

A computer is, however, merely a tool for some other purposes. It is the computer program, being coded with instructions for the computer, and the associated data, that represents human intellectual output. The value of computer programs was also emphasised in a 2017 report published by the European Patent Office (“EPO”), where it was suggested that software innovation has increasingly outpaced hardware innovation.[2]

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A computer program, in any language, code or notation, is already protected in Singapore as a literary work under the Copyright Act.[3] This can be one reason to deny general patent eligibility to computer-implemented inventions.

There has been much contention in this area of patent law in some countries, including the US. It is so in the US despite the US Supreme Court treading carefully to develop this area of patent law and cautioning that otherwise it could “swallow all of patent law”.[4]

It has been suggested that during the early days of the development in this area of patent law, the ontological question “what is a computer program” was not properly addressed, and seeds for much flux in the law were thus sowed.[5]

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One reason computer programs are difficult to analyse for patent-eligibility purposes is that they have a duality nature – intangibles insofar that they exist as a series of instructions intended to be carried out by a machine, but also embodying tangibles where the palpable effects from the execution of the series of instructions are concerned. Matthew Fisher attributed a duality nature to computer programs in that they are both “the carrier and the embodiment of a series of instructions specifying a method”.[6] Beyond this simple dichotomy based on tangibility, commentators have adverted to a multidimensional nature in that computer programs exist as coded instructions (two-dimensional), as programmed physical machines (three-dimensional) and, finally, as “social-technical” processes in the effluxion of time (four-dimensional).[7] The fourth dimension of computer programs has become increasingly significant with the pervasiveness of computerisation (digitisation), and the case illustrations set out in the article do support this view.[8]

With a multidimensional character, it is little wonder that computer programs were also known as the “problem children” of modern patent law[9] that one cannot disown but may wish to exclude. It has been difficult to rein in the problem children, and that may be because judges were asked to formulate subject-matter exclusions which the statutes have provided only a vague idea for.[10] And as each additional dimension of the computer program seemingly came to light, the problems returned, and new formulations were provided.[11]

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However, it is submitted that the real concern lies not in the nature of computer programs but in the rapidly expanding fields of computer program implementation. New questions relating to different aspects of patentability are sure to arise with the advent and development of new technologies.

Beyond the introduction

The article further sets out five parts: a brief on Singapore’s position on subject-matter exclusion (Part II); policy objectives relating to subject-matter exclusion (Part III); an examination, with case illustrations, of the current approaches towards computer program exclusions in the US, the UK and the EPO (Part IV, Part V and Part VI, respectively); an evaluation of these approaches (Part VII); and finally some concluding remarks (Part VIII).

To read the full article, visit the Singapore Academy of Law Journal's website here.

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[1] All views from the author in the article are solely expressed in his personal capacity.

[2] European Patent Office, Patents and the Fourth Industrial Revolution at p 20 <http://documents.epo.org/projects/babylon/eponet.nsf/0/17FDB5538E87B4B9C12581EF0045762F/$File/fourth_industrial_revolution_2017__en.pdf> (accessed 1 June 2020).

[3] Cap 63, 2006 Rev Ed. See ss 7A and 7.

[4] Alice Corp Pty Ltd v CLS Bank International 134 S Ct 2347 at 2354 (2014).

[5] Brad Sherman, “Intangible Machines: Patent Protection for Software in the United States” History of Science 2018; 57(1): 18–37, at 20–21.

[6] Matthew Fisher, “Software-related Inventions” in Research Handbook on Intellectual Property and Digital Technologies (Tanya Aplin ed) (Edward Elgar Publishing, 2020) ch 13 at p 292.

[7] Brad Sherman, “Intangible Machines: Patent Protection for Software in the United States” History of Science 2018; 57(1): 18–37, at 21.

[8] Also see Trevor Cook, “The Prejudice Against Patenting Business Methods” in Research Handbook on Intellectual Property and Digital technologies (Tanya Aplin ed) (Edward Elgar Publishing, 2020) ch 14 at p 303.

[9] See Dan L Burk, “Patent Law’s Problem Children: Software and Biotechnology in Transatlantic Context” in Patent Law in Global Perspective (Margot Bagley & Ruth L Okediji eds) (Oxford University Press, 2014) ch 7.

[10] See Dan L Burk, “Patent Law’s Problem Children: Software and Biotechnology in Transatlantic Context” in Patent Law in Global Perspective (Margot Bagley & Ruth L Okediji eds) (Oxford University Press, 2014) ch 7 at pp 189–198 for a US perspective and Matthew Fisher, “Software-related Inventions” in Research Handbook on Intellectual Property and Digital technologies (Tanya Aplin ed) (Edward Elgar Publishing, 2020) ch 13 at pp 281–285 for a European perspective.

[11] Matthew Fisher has helpfully traced the history of the shift in the related European and US jurisprudences in Matthew Fisher, “Software-related Inventions” in Research Handbook on Intellectual Property and Digital Technologies (Tanya Aplin ed) (Edward Elgar Publishing, 2020) ch 13 at pp 285–292 and pp 292–299, respectively.

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