Law on Patents (General Provs)

Question 1

What is a patent?

Answer 1

A patent is a set of exclusive rights granted by a state to an inventor of his assignee for a fixed period of time in exchange for a disclosure of an invention.

Question 2

What is the purpose of a patent?

Answer 2

First, patent law seeks to foster and reward invention.
Second, it promotes disclosures of inventions to stimulate further invention and to permit the oubloic to practice the invention once the patent expires
Third, the stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the free use of the public.

Question 3

What is a patentable invention?

Answer 3

Section 21. Any technical solution of a problem in any filed of human activity which is new, involves an inventive step and is industrially applicable shall be patentable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing.

Question 4

What are examples of non-patentable inventions?

Answer 4

22.1. Discoveries, scientific theories and mathematical methods, and in the case of drugs and medicines, the mere discovery of a new form or new property of a known substance which does not result in the enhancement of the known efficacy of that substance, or the mere discovery of any new property or new use for a known substance, or the mere use of a known process unless such known process results in a new product that employs at least one new reactant.

For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;

22.2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;

22.3. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. This provision shall not apply to products and composition for use in any of these methods;

22.4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes.

Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis protection of plant varieties and animal breeds and a system of community intellectual rights protection:

22.5. Aesthetic creations; and

22.6. Anything which is contrary to public order or morality. (Sec. 8, R.A. No. 165a)

Question 5

What are the elements of patentability?

Answer 5

1. Novelty
2. Inventive Step
3. Industrial applicability

Question 6

When is an invention not considered new?

Answer 6

When it forms part of a prior art.

Question 7

What is a filing date?

Answer 7

SECTION 40. Filing Date Requirements. ‑ 40.1. The filing date of a patent application shall be the date of receipt by the Office of at least the following elements:

(a) An express or implicit indication that a Philippine patent is sought;

(b) Information identifying the applicant; and

(c) Description of the invention and one (1) or more claims in Filipino or English.this is the date when all the requirements provided under Section 40 are present

Question 8

What is prior art?

Answer 8

SECTION 24. Prior Art. ‑ Prior art shall consist of:

24.1. Everything which has been made available to the public anywhere in the world, before the filing date or the priority date of the application claiming the invention; and

24.2. The whole contents of an application for a patent, utility model, or industrial design registration, published in accordance with this Act, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application: Provided, That the application which has validly claimed the filing date of an earlier application under Section 31 of this Act, shall be prior art with effect as of the filing date of such earlier application: Provided, further, That the applicant or the inventor identified in both applications are not one and the same. (Sec. 9, R.A. No. 165a)

Question 9

What is the right of priority?

Answer 9

SECTION 31. Right of Priority. ‑ An application for patent filed by any person who has previously applied for the same invention in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing the foreign application: Provided, That: (a) the local application expressly claims priority; (b) it is filed within twelve (12) months from the date the earliest foreign application was filed; and (c) a certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing in the Philippines. (Sec. 15, R.A. No. 165a)

Question 10

When is a disclosure not prejudicial to the application for patent?

Answer 10

SECTION 25. Non-Prejudicial Disclosure. ‑ 25.1. The disclosure of information contained in the application during the twelve (12) months preceding the filing date or the priority date of the application shall not prejudice the applicant on the ground of lack of novelty if such disclosure was made by:

(a) The inventor;

(b) A patent office and the information was contained (a) in another application filed by the inventor and should not have been disclosed by the office, or (b) in an application filed without the knowledge or consent of the inventor by a third party which obtained the information directly or indirectly from the inventor; or

(c) A third party which obtained the information directly or indirectly from the inventor.

Question 11

What is an inventive step?

Answer 11

SECTION 26. Inventive Step. ‑ 26.1. An invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention. (n)

26.2. In the case of drugs and medicines, there is no inventive step if the invention results from the mere discovery of a new form or new property of a known substance which does not result in the enhancement of the known efficacy of that substance, or the mere discovery of any new property or new use for a known substance, or the mere use of a known process unless such known process results in a new product that employs at least one new reactant.

Question 12

What is the graham factors?

Answer 12

These are the factors the court will look at when determining the obviousness of non-onviousness which are:

1. the scope and content of the prior art
2. the level of ordinary skill in the art
3. the differences between the claimed invention and the prior art; and
4. objective evidence of non-obviousness

additionally the court consider these as ‘objective evidence of non-obviousness:

1. commercial success
2. long-felt but unsolved needs
3. failure of others

Question 13

When is an invention industrially applicable?

Answer 13

SECTION 27. Industrial Applicability. ‑ An invention that can be produced and used in any industry shall be industrially applicable.