MODULE 6

Patent
It is the right granted to an inventor by the State, or by the regional of ce acting for several
States, which allows the inventor to exclude anyone else from commercially exploiting his
invention for a limited period.

Sec 21. Patentable Inventions — Any technical solution of a problem in any eld of 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.

They may be, or may relate to:

product - machine, device, article of manufacture, composition of matter, microorganism
process - method of use, method of manufacturing, non-biological process,
microbiological process
computer-related inventions
improvement of any of the foregoing

Requisites of Patentability
1. Any technical solution of a problem in any eld of human activity;
2. Inventive Step (Sec. 26);
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 ling date or priority date of the
application claiming the invention.
A person is skilled in the art is someone presumed to be an ordinary practitioner
aware of what was common general knowledge in the art, at the relevant date.
He is presumed to have knowledge of all references that are suf ciently related to
one another and to the pertinent art and to the particular problems with which the
inventor was involved.
He is also presumed to have had at his disposal the normal means and capacity for
routine work and experimentation. (Rules and Regulations on Inventions, RULE 207)
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 ef cacy 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 results in a new product that employs
at least one reactant.
3. Novelty (Sec. 23);
An invention shall be not be considered new if if forms part of a prior art.
4. Industrial Applicability (Sec. 27);
An invention that can be produced and used in any industry shall be industrially
applicable.
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 5. Patentable Subject Matter
An invention that does not fall within the prohibitions of a non-patentable invention
under Sec. 22 of the IPC.

Sec 24. — Prior Art shall consist of:

Everything which has been made available to the public anywhere in the world, before the
ling date or the priority date of the application claiming the invention;
The whole contents of an application for a patent, utility model, or industrial design
registration, published in accordance with this Act, led or effective in the Philippines, with
a ling or priority date that is earlier than the ling or priority date of the application
Provided, That the application which has validly claimed the ling date of an earlier
application under a Right of Priority (Sec. 31), shall be prior art with effect as of the ling
date of such earlier application
Provided, further, That the applicant or the inventor identi ed in both applications are not
one and the same.

Exception: Non-Prejudicial Disclosure (Sec. 25)

The disclosure of information contained in the application during the 12 months preceding
the ling 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:
The inventor;
A patent of ce and the information was contained
In another application led by the inventor and should not have been disclosed by the
of ce, or
In an application led without the knowledge or consent of the inventor by a third party
which obtained the information directly or indirectly from the inventor; or
A third party which obtained the information directly or indirectly from the inventor.

Inventor also means any person who, at the ling date of application, had the right to the
patent.

UTILITY MODEL INDUSTRIAL DESIGN

Any new model of implements or tools of Any composition of lines or colors or any
any industrial product even if not possessed three-dimensional form whether or not
of the quality of invention but which is of associated with lines or colors provided that
“practical utility” such composition or form gives a special
appearance to and can serve as pattern for
an industrial product or handicraft

7 years 5 years
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 UTILITY MODEL INDUSTRIAL DESIGN

Inventive step is not necessary Novelty and industrial applicability are not
necessary

May be converted into a patent application if May be registered as copyright work

it complies with all the requisites

Non-Patentable Inventions (Sec. 22)

The following shall be excluded from patent protection:
1. Discoveries, scienti c theories and mathematical methods;
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 ef cacy 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
2. Schemes, rules and methods of performing mental acts, playing games or doing
business, and programs for computers;
3. Methods for the treatment of the human or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body;
This provision does not apply to products and composition for use in any of these
methods.
4. Plant varieties or animal breeds or essentially biological process for the production of
plants or animals;
This provision shall not apply to microorganisms 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.
5. Aesthetic creations; and
6. Anything which is contrary to public order or morality.

Right to a Patent (Sec. 28)

The right to a patent belongs to the inventor, his heirs, or assigns.
When 2 or more persons have jointly made an invention, the right to a patent shall belong
to them jointly.

First-to-File Rule (Sec. 29)

If 2 or more persons have made the invention separately or independently of each other,
the right to the patent shall belong to the person who led an application for such
invention, or
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 Where 2 or more applications are led for the same invention, to the applicant who has the
earliest ling date.

Inventions Created Pursuant to a Commission (Sec. 30)

The person who commissions the work shall own the patent, unless otherwise provided in
the contract.
In case the employee made the invention in the course of his employment contract, the
patent shall belong to:
The employee, if the inventive activity is not a part of his regular duties even if the
employee uses the time, facilities and materials of the employer.
The employer, if the invention is the result of the performance of his regularly-assigned
duties, unless there is an agreement, express or implied, to the contrary.

Right of Priority (Sec. 31)

An application for patent led 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 led as of the date of ling the foreign application:
Provided, That:
The local application expressly claims priority;
It is led within 12 months from the date the earliest foreign application was led; and
A certi ed copy of the foreign application together with an English translation is led within
6 months from the date of ling in the Philippines.

Inequitable Conduct
It is the failure to disclose material information, or the submission of false material
information, with intent to deceive.
A patent holder cannot enforce his rights if he has committed inequitable conduct in the
prosecution of his patent application.

Doctrine of File Wrapper Estoppel

The patentee is precluded from claiming as part of the patented product that which he had
to excise or modify in order to avoid patent of ce rejection, and he may omit any additions
he was compelled to add by patent of ce regulations.
It balances the Doctrine of Equivalents.

Doctrine of Prosecution History Estoppel

It applies when an applicant during patent prosecution narrows a claim to avoid the prior
art, or otherwise to address a speci c concern that arguably should have rendered the
claimed subject matter non-patentable..
It precludes a patentee from obtaining under the Doctrine of Equivalents coverage of
subject matter that has been relinquished during the process of patent application.
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