LAW ON PATENTS
PATENT is a set of exclusive rights granted by a state to an inventor or his
assignee for a fixed period of time in exchange for a disclosure of an invention.
• The term originates from the Latin word patere which means “to lay open” (i.e.,
make available for public inspection) and the term letters patent, which
originally denoted royal decrees granting exclusive rights to certain individuals
or businesses.
• A patent is a valuable asset that must be protected.
• The ULTIMATE GOAL of a patent system is to bring new designs and
technologies into the public domain through disclosure. (Pearl & Dean (Phil.),
Inc. vs. Shoemart, Inc. and North Edsa Marketing, Inc., G.R. No. 148222, August 15,
2003)
• Only when the invention is patented may it be given protection under the
Intellectual Property Law.
• The act secured to the inventor the exclusive right to make use, and vend the
thing patented, and consequently to prevent others from exercising like
privileges without the consent of the patentee. It was passed for the purpose of
encouraging useful invention and promoting new and useful inventions by the
protection and stimulation given to inventive genius, and was intended to
secure to the public, after the lapse of the exclusive privileges granted the
benefit of such inventions and improvements. (Pearl & Dean (Phil.), Inc. vs.
Shoemart, Inc. and North Edsa Marketing, Inc., G.R. No. 148222, August 15, 2003)
• The patent system thus embodies a carefully crafted bargain for encouraging
the creation and disclosure of new useful and non-obvious advances in
technology and design, in return for the exclusive right to practice the
invention for a number of years. The inventor may keep his invention secret
and reap its fruits indefinitely. In consideration of its disclosure and the
consequent benefit to the community, the patent is granted. An exclusive
enjoyment is guaranteed him for 17 years, but upon the expiration of that
period, the knowledge of the invention inures to the people who are thus
enabled to practice it and profit by its use. (Pearl & Dean (Phil.), Inc. vs.
Shoemart, Inc. and North Edsa Marketing, Inc., G.R. No. 148222, August 15, 2003)
THREEFOLD PURPOSE
1.) Patent law seeks to foster and reward invention;
2.) It promotes disclosures of inventions to stimulate further invention and to
permit the public to practice the invention once the patent expires;
3.) The stringent requirements for patent protection seek to ensure that ideas in
the public domain remain there for the free use of the public.
ULTIMATE GOAL - bring new designs and technologies into the public domain
through disclosure.
PATENTABLE INVENTIONS
• Any technical solution of a problem in any field 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, a process, or an improvement
of any of the foregoing. (Section 21, Republic Act No. 8293)
NON-PATENTABLE INVENTIONS
• Those which does not comply with Section 21, Republic Act No. 8293.
• Those which falls under non-patentable inventions under Section 22, Republic
Act No. 8293, to wit:
a.) 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 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;
b.) Schemes, rules and methods of performing mental acts, playing games
or doing business, and programs for computes;
c.) 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;
d.) 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.
e.) Aesthetic creations;
f.) Anything which is contrary to public order or morality;
ELEMENTS OF PATENTABILITY
1.) Novelty
2.) Inventive step
3.) Industrial applicability
• An invention shall not be considered new if it forms part of a prior art.
(Section 23, R.A. 8293)
WHAT IS A PRIOR ART? (Section 24, R.A. 8293)
Prior art shall consist of:
• 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
• 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.
FILING DATE
• Filing date should be understood not in its ordinary meaning, such as the day
application was filed. It should be taken to mean according to what the law
says, that filing date is accorded only when all the requirements provided
under Section 40 of Republic Act No. 8293 are present:
1.) An express or implicit indication that a Philippine patent is
sought. (This is done through the filing of the patent application pursuant
to Section 32.)
“The patent application shall be in Filipino or English and shall
contain the following:
(a) A request for the grant of a patent;
(b) A description of the invention;
(c) Drawings necessary for the understanding of the invention;
(d) One or more claims; and
(e) An abstract.
No patent may be granted unless the application identifies the
inventor. If the applicant is not the inventor, the Office may
require him to submit said authority.” (Section 32, R.A. 8293)
2.) Information identifying the applicant;
3.) Description of the invention and one or more claims in Filipino or
English;
If any of these elements is not submitted within the period set, the
application shall be considered withdrawn. If the date of filing cannot be
accorded, the applicant shall be given an opportunity to correct the
deficiencies in accordance with the implementing regulations. If the
application does not contain all the elements, the filing date should be
that date when all the elements are received. If the deficiencies are not
remedied within the described time limit, the application shall be
considered withdrawn.
PRIORITY DATE
“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.” (Section 32, R.A. 8293)
Priority date therefore comes into play when there is an application for
patent for the same invention that was filed in another country. In case of two or
more applications for a patent over the same invention, an application with a
latter local filing date may still be the preferred application over a previous local
filing date provided that it has an earlier foreign application assuming of course
that the requirements of Section 31 are all complied with.
NON-PREJUDICIAL DISCLOSURE
The element of novelty requires that the thing is not yet known to anyone
besides the inventor. Once it has been known to the public through disclosures,
this requirement may be in peril.
There are disclosures, however, that will not prejudice the application, i.e.,
the application will not be denied for lack of novelty. These are disclosure of
information contained in the application as long as the disclosure was:
1) Made during the 12 months preceding the filing date or the priority date
of the application; and
2) The disclosure was made by any of the following person:
2.1) The inventor;
2.2) 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
2.3) a third party which obtained the information directly or
indirectly from the inventor.
INVENTIVE STEP (Section 26, R.A. 8293)
• 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.
Inventive step connotes that the invention should not be obvious not to the
general public but to a “person skilled in the art” for it to be patented.
A person skilled in the art is 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 sufficiently related to one
another and to the pertinent art and to have knowledge of all arts reasonably
pertinent to the particular problems with which the inventor was involved. He is
presumed also to have had at his disposal the normal means and capacity for
routine work and experimentation.
INDUSTRIALLY APPLICABLE (Section 27, R.A. 8293)
• An invention that can be produced and used in any industry shall be
industrially applicable.
An invention will be useless if it will be forever confined in the sphere of theories
and principles. It has to have some practical application for it to be really useful.
OWNERSHIP OF PATENT (Section 28, R.A. 8293)
• The right to a patent belongs to the inventor. Like any other property, patent
may be acquired through succession or assignment. The right to a patent may
also be subject of joint-ownership as when two or more persons have jointly
made an invention.
FIRST-TO-FILE RULE (Section 29, R.A. 8293)
• If two (2) or more persons have made the invention separately and
independently of each other, the right to the patent shall belong to the person
who filed an application for such invention, or where two or more applications
are filed for the same invention, to the applicant who has the earliest filing date
or, the earliest priority date.
For this rule to apply, there must at least be two persons who have made the
invention separately and independently of each other.
INVENTIONS PURSUANT TO COMMISSION OR EMPLOYMENT (Section 30,
R.A. 8293)
• In cases where invention is made pursuant to a commission, the person who
commissions the work shall be the owner of the patent unless there was an
agreement to the contrary.
• When an invention is made by an employee in the course of his employment
contract, the patent shall belong to:
(a) 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.
(b) 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 (Section 30, R.A. 8293)
• 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 filed as of the
date of filing the foreign application; Provided, That: (a) the local application
expressly claims priority; (b) it is filed within 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 months from
the date of filing in the Philippines.
