August 10, 2018

Who are filing patent applications?

 China had the highest patent application
 Most patent applications come from highly developed countries.

 Einstein was a patent officer. (Swiss Patent Office Assistant Examiner I)

 Thomas Jefferson – First US Patent Examiner; First admin of the US Patent System

GENERAL PATENT PRINCIPLES:

1. Territorial – only recognized in the jurisdiction they are recognized
2. Exclusivity
3. Limited Rights (20 years from date of filing)
4. Conditional (Have to comply with criteria)
a. Novelty
b. Inventive Step
c. Industrially Applicable
d. Annual Fees
5. Reciprocity (Contracting Party will extend reciprocal rights to a national domiciliary)
- National domiciliary has a real and effective industrial establishment
- PHL and Malaysia – if Malaysia grants to Malaysian nationals, must grant Philippines the same period
of protection.
- Extent of protection – treaty/convention + rights under the IP Code
6. First-to-file (First applicant is the one recognized by law)
7. Disclosure Principle (Quid pro quo – state grants protection in exchange for the disclosure); without
disclosing, state can’t give state-sanctioned monopoly.

NOTE: others may use knowledge from existing innovations to subsequently enhance/improve it

Patent – Exclusive right granted to an invention

 Strongest type of IP – vests the holder a bundle of exclusive rights from use to exploitation
 Trademark: Exclude; Copyright: Not to use; Patent: Sell, etc, bundle of rights extensive

Venetian Statute
 1st patent: Boat (1421) Il Baladone
 10 years of protection

Philippine Patent
1. Spanish
- Royal Decrees on patent
2. American
- Those granted in Spain were still considered valid.
- Act 2235
3. Philippines now
- RA 165
- RA 864
- RA 8293
- RA 9502
- RA 9150
- Paris Convention
- Trips Agreement
Kinds of Patent:
1. Inventions (Utility Patent) – Any technical solution to a problem in any field of human activity new,
inventive step, industrially applicable
- Patent issued over any product
 - Can a cure for dog blindness be patentable? YES.
2. Utility Model (Petty Patents) – New and industrially applicable only. (No inventive step)
- Normally involves improvements
3. Industrial Design – Any composition of lines or color or any 3d form.
- “Aesthetics”
4. Lay-Out Design (Topography) – Integrated Circuits

Inv
en
tio
n
Utility Model

Industrial Design

Reciprocity: Convention, treaty or law, foreign country & Philippines

Reverse Reciprocity (Sec. 231, IPC) – If Philippine national files patent in Japan and Japan Patent Office requires
it be translated into Japanese, reverse reciprocity means we could likewise impose the same requirement or burden.

Overview Patents

ELEMENTS INVENTION UTILITY MODEL INDUSTRIAL DESIGN

Subject Matter of Apparatus (Product) & Apparatus (Product) & Article of manufacture
Protection Method (Process) Method (Process) (Product)
Novelty YES YES YES
Inventive Step YES NO NO
Industrial Applicability YES YES YES
Features Protected Technical Element Technical Element Aesthetic Feature (Over-
all aesthetic and
ornamental appearance)
Term of Protection 20 years from filing date 7 years from filing date 5 years from filing date of
within payment of without renewal filing with 2 5-year term
annuities renewal, with payment of
fees (sorry hindi ko
mabasa kaya medyo
magulo)

August 17, 2018

 Article 3 – National Treatment

o Parties here are the members and foreign nationals
o Example of a right that could be given to nationals which could also be applied to foreigners
would be filing period.
 Article 4 – Most Favored Nation Clause
o Parties here are only foreign nationals
 Sec. 111 Prohibition on Parallel Application
o Not allowed for the same object; can’t file for a patent and as a utility model.
o Reason: Hampers the intent of Congress: innovation
o Is conversion allowed in the Philippines? YES.
 Manzano v. CA (LPG burner)
 o Primary purpose of the patent system is not the reward of the individual but the advancement of
the arts and sciences.
o Function: add to the sum of useful knowledge and one of the purposes of the patent system is to
encourage dissemination of information concerning discoveries and inventions.
o Burden of proof: before a patent is issued: applicant
 Pearl & Dean v. Shoemart, Inc. (lightbox)
o What is the three-fold purpose of the patent law?
1. Rewards
2. Disclosures
3. Public Use
o What kind of registration was secured for the lightboxes? Copyright.
o No patent infringement if there was no patent filed.
o Who developed the light box? Pearl & Dean. Isn’t it supposed to be that since they developed that
system, that it should at least enjoy protection for that innovation? No. Stringent requirements for
patent protection seek to ensure that ideas in the public domain remain there for the free use of the
public.
o IP right is a negative right which grants you the exclusive right to exclude others to make, sell,
use, etc.
o Assuming P&D approached you, what will you suggest? Which type of patent? Possibly a utility
model because not an inventive step.
o There can be no infringement of a patent until a patent has been issued. It arises alone from the
grant of the patent.
 Economic Rationale for Patent:
o Promote or incentivize innovation
 Address market failure and restore the incentives to invest in production of knowledge.
 Compettitive markets will fail to provide sufficient incentives to innovators to undertake
costly and risky investments in innovation because of market failure (vaccines)
 Comment: Grant them exclusivity so they can recover the investments; Second best
solution to correct market failure; best: free market.
o Disclosure of Knowledge in Public Domain
 Facilitates the disclosure of knowledge and access to knowledge
 Reduced duplication in R&D
o Technology Transfer, Commercialization, and Diffusion of Knowledge
 Creates tradeable property rights thereby encouraging technology transfer, nationally and
internationally
 TRIPS Agreement
o Most comprehensive multilateral agreement on IP
o Scope: Copyright, TM, Geo indication, Industrial design, patents, lay-outs designs of integrated
circuits, and undisclosed info
o Standard of Protection: Minimum standards.
o Can PH legislate for a longer period for protection? YES. But can’t go lower than that which is
provided.
o Enforcement: Lays down general principles applicable to all IPR enforcement procedures
o Dispute Settlement: Disputes between WTO Members on TRIPS obligations are subject to WTO
dispute settlement procedures.
o What are the patentable subject matter under this?
o What’s the principle of non-discrimination? Article 27(1): place of invention, field of technology,
and whether products are locally produced or imported.
o RA 9502 amended provision on IP Code: When the medicine is not changed as to form or purpose
and does not affect the efficacy, it’s not patentable. The process, if already known, not also
patentable.
 Isn’t this violative of the provision on non-discrimination, because in other fields of
technology, you only have to prove the requisites, but why does this specifically mention
drugs and medicine, aren’t you discriminating them because you’re taking them out?
 Refer to Art. 27 (2) when it provides that members may exclude from patentability
inventions, the prevention within their territory of the commercial exploitation of which
is necessary to protect order public or morality, including to protect human, animal, or
plant life or health or to avoid serious prejudice…
 Article 27(2) is the proof why that amendment provided in RA 9502 is not contrary.
o Article 27(2) Patentable Subject Matter Exclusion:
 Diagnostic, therapeutic and surgical methods for the treatment of humsn or animals;
 Comment: Universal human right: public health. To grant patents to this, you
would be withholding access to medical treatment.
 Platnts and animals other than microorganisms and essentially biological processes for
the production of plants or animals other than non-biological and microbiological
processes.
 Plants are protected here based on the Plant Variety Protection Act.
 Can human beings be patented? NO; humans are considered animals; not proper
objects of patent.
 Microorganisms are patentable.
 Example of biological processes: metabolism – could this be the object of patent
protection? NO.
 If these processes are non-biological and microbiological, PATENTABLE.
What are examples for these? Is cloning a biological process? NO; splitting of
DNA is a non-biological process.
o If the PH grants patent over animals, is that allowed? Go back to the TRIPS Agreement. Member-
state is given a wide latitude if they want to grant or not to grant those under the exlcusions. Any
member-state may grant over those under Article 27(3).
o US grants patent over plant variety. AUS has patent over plant variety. PH does not grant patent
over plant variety, but it grants Plant Variety Protection (sui generis)
 Plant Variety Protection
o What are the conditions? New, Distinct, Uniform, Stable
 RA 8371: IPRA, Sec. 32. Community Intellectual Rights
o Can a patent be issued over intellectual property rights over indigenous communities?
o Indigenous community in Kalinga since time immemorial, used a process in preserving meat
products and this has been from one generation to another. A food company applies for a patent
using that particular process, is that considered as a patentable subject matter? NO. Community
and intellectual rights are not proper subject matters.
 Section 22, IPC
o Non-Patentable Inventions
o Discovery: New star/constellation
 Why not patentable? Can’t be owned by anyone; doesn’t involve the requisites for
patentability. It would be lacking all three requisites. If for example it is just discovered,
it does not mean that it wasn’t there, so it’s not new.
o Scientific theories: Theory of relativity E=mc2
 Why is it not patentable along with mathematical methods?Building blocks of
knowledge; basic concept to be applied for someone to undertake research and
development. The moment you give exclusive rights, you’re practically closing all doors
to research and development.
o Schemes, rules, and methods of performing mental acts, playing games, doing business, programs
for computers
 Why is this not patentable? These are abstract manifestations. A patent is a technical
solution to a problem. The above lack technical element.
o Methods for treatment (already covered)
o Plant varieties
 Why is this not patentable? Covered by sui generis Plant Variety Protection Act.
o Artistic Creation
  Why is this not patentable? Belong to a different kind of IP right (copyright); there is no
inventive step with regard to these aesthetic creations; lack the technical element.
o Bar Question: (2004) Dr. ALX is a scientist honored for workr elated to human genome project.
Among his pioneering efforts concern stem cell research for the cure of Alzheimer’s. Under
corporate sponsorship, he helped developed a microbe that ate and digested oil spill sin the sea.
Now he leads a college team for cancer research in MSS State. The team has experimented on a
mouse whose body cells replicate and bear cancerous tumor. Called oncomouse, it is a life-form
useful for medical research and it is a novel creation. Its body cells do not naturally occur in nature
but are the product of man’s intellect, industry and ingenuity. However, tehre is a doubt whether
local property laws and ethics would allow rights of exclusive ownership on any life-form. Dr.
ALX needs your advice whether the reciprocity principle in private international law could be
applied in our jurisdiction?
 Issue here is WON the oncomouse is patentable. – NO.
 It only seems to be patentable, but it’s one of the exclusions in Sec. 22; Sec. 22 excludes
plant and animals.
 Answer to the question: Can reciprocity principle apply?

PATENT CLAIM

Theory of Patent Claims

 Claims mark the boundaries of the protection provided by a patent, function like technical description of a
land title.
 Written approximation of the abstract inventive concept created by the inventor.
 “Patent fences” – define the scope of protection provided by a patent.
 Claim – protects the invention itself so that no physical embodiment of the invention can be made, used or
sold by anyone without infringing the claims
o Maximize the value of the patent, broad enough that cover various aspects of the invention at
various levels of detail but at the same time narrow enough to protect the essence of the invention.
 Patent agent: provide a large scope, cover as much possible.
 Types of Claim:
1. Apparatus or Device claim – protect embodiments of an invention in the form of a
physical apparatus, system, or devise (e.g. tripod; plurality of legs, if you use this, it any
derivation not covered anymore)
2. Method Claim or Process Claims – recite a sequence of steps which together complete a
task such as making an article (e.g. Method for making tea)
3. Use Claim – in the chemical field specifically for drugs and medicines (e.g. compound X)
 Le Roy v Tatham
o Improvement upon a machine for making pipes and tubes from lead or tin.
o Combination of the following parts, --- the core and bridge, or guide piece, the chamber, and the
die.
o What was novel about the invention?
o SC: A principle is NOT patentable. Principle in the abstract, is a fundamental truth, an original
cause; a motive; these cannot be patented, as no one can claim either them an exclusive right.
o Patentees claimed the combination of the machinery as their invention in part, and no such claim
can be sustained without establishing its novelty—not as to the parts of which it is composed, but
as to the combination.
o The question of whether the newly developed property of elad, used in the formation of pipes,
might have been patented if claimed as developed, without the invention of machinery, was not in
the case.
o A machine or apparatus or other mechanical contrivance, in order to give the party a claim to a
patent therefor, must in itself be substantially new.
o If it is old and well known, and applied only to a new purpose, that does not make it patentable.
o Dissenting Opinion: Discovery of a principle or operty of nature, or a new application of a well
known principle or property of nature and also of some mode of carrying it out into practice so as
 to produce or attain a new and useful effect or result, he is entitled to protection against all other
modes of carrying the same principle or property into practice for obtaining the same effect or
result. Discovery of a “law of nature or property of matter and applied to it” to produce a
beneficial new result, “he is entitled to be protected against all modes by which the same result is
produced by an application of the same law of nature or property of matter. (Application of newly
discovered, patentable)
 Even if not new, but you have new and useful effect or result, then it should be protected.
 Dissent is saying that since there was human intervention, then it should be considered
protected.
 O’Reilly v Morse
o Telegraph most significant invention of 19th century
o Invention occurred at the beginning of a revolution in US patent law.
o Prior to 1836 – US Patent System had an uneven record of protecting IP rights.
o US registration process similar England. No discretion to deny patent to any applicant complying
with certain formalities.
o 2 years before Morse application, the Patent Act abandoned the registration system; there became
a more rigorous patent applcition system.
o Patent claim had been unknown beginning of the 19 th century was evolving into an effective legal
instrument for defining patentee’s rights.
o What was the technical problem being addressed in the patent application? Means of
communication; Electric current gradually decreases as it advances on the wire; not strong enough
to produce a mechanical effect. So habang humahaba, nag dedecrease daw.
o What did Morse use? 2 currents instead of 1, and there was no loss. Combine 2 or more electric
circuits, with independent batteries for the purpose of overcoming the diminished force of
electromagnetism.
o Relayer increases the current after a certain interval, until such time that electric current is restored
to its original state. Signal weakens between repeaters, but Morse restores the signal to a
predetermined level.
o 8th Claim: I do not propose to limit myself to the specific machinery or parts of machinery
described in the foregoing specification and claims; the essence of my invention being the use of
the motive power of the electric or galvanic current, which I call electro-magnetism, however
developed for marking or printing intelligible characters, signs, or letters, at any distances, being a
new application of that power of which I claim to be the first inventor or discoverer.
o Dissenting Opinion: New application of a mechanical device.
o Are the dissenting opinions similar, as compared to the dissenting opinion in Le Roy?
 The Telephone Cases
o What was the state of the art at that time? What was the problem with the prior arts? There were
no usable phones because they cannot transmit voices clearly; sounds or the voices were not clear
or couldn’t be understood.
o Bell’s Contribution: Intermittent Current was the source of the distortion. He invented a circuit to
correspond to the changes in the air, which, if stable, would produce audible sounds.
o What was the problem? A lot of companies were claiming that they were the first ones who
invented.
o 5th Claim: Use of the electric current for the transmission of audible sounds.
o Was this a patent infringement case or patent cancellation? Patent Cancellation
o In Bell: Process and not the use of electricity. In Morse, in any kind of use with regard to
electromagnetism.
o Morse – claim in broad terms ofr the use of motive power of electric current hwoever developed,
for making or printing intelligible characters, letters, or signs at any distances, although a new
application of that power, made by Morse was VOID.
 Can’t claim for something you have not invented. Use without particular process
o Bell – claim for making use of the motive power of magnetism, when developed by the action of
such current.
 Use of magnetism + particular process to which it was connected (ALLOWED)
 o Mere discovery of a new element or law or principle of nature, without any valuable application of
it to the arts, is not the subject of patent.
o Morse: Use + no particular process = VOID.
o Bell: Use + particular process = VALID.
 What are living things? What are characteristics of living things? Grow and reproduce
 Diamond v Chakrabarty
o Plasmid – small DNA molecule that is physically separate from, and can replicate independently
of, chromosomal DNA within a cell.
o What were the 3 claims? (1) Method of producing the bacteria; (2) Claims for an inoculum
comprised of a carrier material floating on water, such as straw and the new bacteria; and (3)
claims to the bacteria themselves.
o Patent examiner rejected on 2 grounds: (1) microorganisms are products of nature and (2) living
things are not patentable subject matter.
 Funk Bros. v. Kalo
o Bond’s discovery: Some strains of each species of root-nodule bacteria do not exert mutually
inhibitive effect on each other. Those mutually non-inhibitive strains can be isolated using
selection and testing methods and can thus be used in mixture cultures. Provided a mix culture of
the rhizobia capable of inoculating the seeds of plants belonging to several cross-inoculation
groups.
o The different species were not naturally occurring.
o No species acquires different use; no change in bacteria.

Chakrabarty Funk Bros.

valid Invalid
Naturally occurring plasmids into a naturally occurring Inventor combined only naturally occurring bacteria
host bacterium into a new and useful package; bacteria combined in a
novel way still “perform in their natural way”

 Parke-Davis v. H.K. Mulford

o What does adrenaline do to the body? It’s triggered by stress: stronger, running faster when there
is a threat.
o The invention was the purified adrenaline extracted from the suprarenal glands of animals.
o Purified adrenaline was medically superior compared to the other forms of adrenaline.
o What was the state of the art in 1911? If the case is to be tried now, would it have the same result?
We would have a different outcome. During that time, technology was not as advanced then.
o One can patent a material that one discovers through a distinct process, even if one does not
change it at all, if the process causes the material to become a new thing commercially and
therapeutically.
o There is no objection to patent claims covering a process for extracting a natural product, as
opposed to claims for the product itself.
 Myriad Case
o Angelina Jolie has a history of breast cancer.
o DNA dictates the kind of hair, eyes, shape of nose, etc.
o Myriad was able to locate BRCA 1 and 2 genes which would dramatically increase an individual
risk of developing breast and ovarian cancer.
o Why is the length of all the chromosomes important? Because the invention specifically locates
where the chromosome is. (It’s as long as from earth to the moon and back)
o What claims are involved? 1, 2, and 5. 2 groups of claims: location and for the synthetic DNA.
o This deals with product claims.
o Isolating DNA: not patentable.
o cDNA: patentable.
 o How would you have saved this patent application? Is there a way to save the patent application?
What’s the value added if you know the location of the DNA? Cut that specific chromosome. File
a process application.
o This case does not involve method claims, patents on new applications of knowledge about the
BRCA1 and BRCA2 genes, or the patentability of DNA in which the order of the naturally
occurring nucleotides has been altered.
o Is this case consistent with the other cases?
 What is a computer program? Set of instructions expressed in words, codes, shcemes, or in any other form,
which is capable when incorporated in a medium that the computer can read, of causing the computer to
perform or achieve a particular task or result.
 Gottschalk v Benson
o Method for convertin binary-coded decimal numerals into pure binary numerals for use with
general purpose digital computer of any type.
o 0 and 1.
o Mathematical formula is an idea, and not patentable.
o Mathematical formula involved here has no substantial practical application except in connection
with a digital computer, which means that if the judgment below is affirmed, the patent would
wholly preempt the mathematical formula and in practical effect would be a patent on the
algorithm itself.
o Process claim of converting binary to pure binary.
 Parker v Flook
o What happens when it reaches a certain point? There would be an alarm.
o Process claim.
o How does this differ from Gottschalk? Or are they similar?
o What’s the effect of the algorithm in the process? Is the algorithm coupled with the process, does
it operate to remove it from patent protection because there is an algorithm? What’s the effect of
having an algorithm incorporated in the process? Is the mere presence of an algorithm remove that
invention from patent protection?
o An invention that departs from the prior art only in its use of a mathematical algorithm is patent-
eligble only if the implementation is novel and non-obvious.
o The algorithm itself must be considered as part of the prior art. Claim for the “principle” thus, not
patent-eligible.
o Once that algorithm is assumed to be in the prior art, the application, considered as a whole is not
patentable.
 Diamond v Diehr
o Rubber curing process using a system which continuously calculates and recalculates cure time.
o Was the mathematical formula sought to be protected here? NO.
o Does it use existing processes? Is it like all the prior art?
o Mere presence of computer in the whole process does not make the invention not eligible for
patent protection because patent protection ios sought for a process of curing synthetic rubber and
the process employs a well-known mathematical equation but they do not seek to preempt the use
of the equation.
o While a mathematical formula, like a law of nature cannot be patented respondents do not seke to
patent a mathematical formula.
o They seek only to foreclose the use of that equation in conjunction with all of the other steps in
their claimed process.
 In re Bilski v Kappos
o How was it applied in this case? Program is mostly an intellectual matter and not transmitted to a
physical object.
 Bilski v Kappos
o Patentability of business methods allowed in this case.
 Alice v CLS Bank International
 o Framework: 1) determine whether the claims at issue are directed to a patent-ineligible concept
and 2) ask whether the claim’s elements, considered both individually and “as an ordered
combination,” “transform the nature of the claim” into a patent-eligible application.
o Ineligible patent claims involving an algorithm for converting binary-coded decimal numerals into
pure binary form; a mathematical formula for computing “alarm limits” in a catalytic conversion
process,; and, a method for hedging against the financial risk of price fluctuations, Bilski.
o Do we have a problem with the cases, considering that patent laws are territorial? Sec. 22 is a
negative list. In the US, there is no list, because it is provided for in Sec. 35 of the US Code –
more general compared to our Sec. 22. We have a more general stand. US cases would say that
business method is actually subsumed under process since such includes method. Precisely
because of this very dynamic directions of US jurisprudence that programs for computers are
included in Sec. 22.

Case Invention Ruling of the Court

Gottschalk v Benson Algorithm for converting decimals Mathematical formula non-
to binary form patentable.
Parker v Flook Updated Alarm Limits (Process + Algorithm itself must be considered
Algorithm = No inventive concept) part of the prior art. Claims for the
principle itself patent-eligible.
Diamond v Diehr Process of curing synthetic rubber Patentable – mere presence of
using a computer + formula formula does not invalidate patent
if process has inventive step.
In re Bilski v Kappos Hedging commodity transaction Machine/transformation test defines
patentability.
Bilski v Kappos Hedging commodity transaction a. MIT test is not the sole test. It
shall be a) noble, b) non
obvious and c) fully described.
b. No categorical exclusion of
business methods from
patentability.
Alice Corp v CLS Bank Risk management Framework:
International 1. Determine whether the claims
at issue are directed to a patent-
ineligible concept and
2. Ask whether the claim’s
elements, considered both
individually and “as an ordered
combination,” “transform the
nature of the claim” into a
patent-ineligible application.
State Street v Signature Financial
Group

 EU and US clash with computer programs.

o US: No express prohibition on US Patent Law even with the America Invents Act
 Jurisprudence is variable; allows patent claim of software. After decision of Bilski, they
issued guidelines. Confusion with patentability of computer programs and business
methods.
o EU: Art. 52 of the European Patent Convention provides that computer programs are not
considered as inventions.
 Only patent applications relating to programs for computers as such are excluded from
patentability means that patentability may be allowed for patent applications relating to
programs for computers where the latter are not considered to be programs for
computers as such.
  What is the significant of “as such”? Also means programs for computers.
o Computer programs are not patentable as such because they are considered as abstract creations
and lacking in technical character (problem-solution approach)
 Technical character must be derived elsewhere.
 Computer software by means of a computer manages an industrial process or working of
a piece of machinery is able to produce a technical effect = PATENTABLE.
o EPO has guidleines on patentability of computer-related inventions.
 IPOPHL Revised Guidelines in the Examination of ICT and CII
o Computer programs are not patentable as such because these are considered as abstract coreations
and lacking in technical character.
o Technical char must be derived elsewhere
o Computer software = not patentable
o Software + hardware = patentable
 Are we circumventing the IP Code when software + hardware = patentable? Not necessrarily since the
computer program is different from the computer system. Program is just a set of instructions but if there is
a hardware, it ceases to be such.