To Swiss or Not to Swiss in Singapore

The Intellectual Property Office of Singapore (IPOS) has issued a clarification on the issue of second medical use claim practice in Singapore. In September 2010, IPOS released an “Examination Guide” to Singapore law and practice for contract examiners of pending Singapore applications, being one of the Austrian, Danish or Hungarian Patent Offices.The Examination Guide provides, amongst other things, a section notifying on the allowability of purpose-limited product claims when used for claiming subject matter relating to a second or further medical use of a known substance or composition.

By way of background, the Singapore Patents Act is closely related to the UK Patents Act 1977. The Singapore Courts have followed a number of UK decided judicial precedents in the absence of an equivalent Singapore decision. Furthermore, IPOS has cited EPO Board decisions in written revocation decisions. Accordingly, in the absence of any specific ruling from IPOS or the Singapore Courts, it has been generally assumed that IPOS would align its practice with that of the UK and that of the EPO.

Prior to the implementation of the EPC 2000, the UK and EP Patent Offices have accepted claims drafted in the Swiss style format (i.e., “Use of compound X in the preparation of a medicament for the treatment of disease Y”) for covering subject matter relating to subsequent and different medical uses of a composition or substance. Furthermore, a second medical use claim is considered novel as long as the specified use was unknown. Following implementation of the EPC 2000, in Europe it became possible to obtain protection for a second, subsequent use of a substance or composition by direct claiming using a purpose-limited product claim, i.e., “Compound X for use in the treatment of disease Y”.

Up until recently, it had been generally thought that IPOS would aligned Singapore practice with that adopted in the UK/EPO, in that second medical use can be validly covered by both claims in the Swiss style format and the purpose-limited format.

In the decision G 02/08 issued by the EPO Enlarged Board of Appeal, it was decided that applicants may no longer claim second medical use in the Swiss style format. Instead, European applicants may claim further medical uses directly by using purpose-limited product claims as provided under the newly inserted Section 54(5) of the EPC [corresponding to Section 4A (4), UK Patents Act].

Contrary to the above, the Examination Guide issued by IPOS clarified that there is presently no provision in the Singapore Patents Act which corresponds to the newly minted Section 4A(4) of the UK Patents Act. Singapore’s practice will continue to correspond with the UK provisions prior to the 2004 amendments. The implication of this is that Applicants wishing to seek protection for new, further medical uses of a composition or substance should do so via second medical use claims formulated in the Swiss Style format. On the other hand, purpose-limited product claims remain valid for claiming a first medical use of a compound or substance. As such, the novelty of a purpose-limited product claim would be contingent on the fact that the claimed composition/ substance has not been used in ANY medical method in the prior art. In this regard, the actual specified use in a purpose-limited product claim is irrelevant to its novelty.

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