Good day everyone, for today we’ll be talking about LAW ON PATENTS.

So the law on patents is found in

the intellectual property code and being an intellectual creation, it is one of the modes of acquiring
ownership. A patent is an exclusive right acquired over an invention to sell, to use, and to make the
same, whether for commerce or industry. Under section 21, patentable inventions is defined as any
technical solution of a problem in any field of human activity which is new, involves an incentive step,
and is industrially applicable, and if those requirement are satisfied then it shall be patentable. It may
be, or may relate to, a product, or process, or an improvement of any of the foregoing.

So now, under section 22, the law provides for certain articles which are excluded for patent protection,
these are the non-patentable inventions which includes, first, discoveries, scientific theories and
mathematical methods let’s say you came up with a new formula so that is not patentable. Next one,
schemes, rules and methods of performing mental acts, playing games or doing business, and programs
for computers are also non-patentable. Another, methods for treatment of the human or animal body
by surgery or therapy and diagnostic methods practiced on the human or animal body, but this excludes
products and composition for use in any method, for example the medicines, so medicines are subject
for patent. Next is plant varieties or animal breeds, for example a breed of Siberian husky dog is not
patentable. But take note that from these are excluded microorganisms and non-biological and
microbiological processes. In those cases, those may be patented. Another one that is not patentable
are those aesthetic creations or work of art, but a subject to a copyright. Lastly, anything which is
contrary to public order or morality, of course those cannot be subject to a patent, or anything that is
contrary to the law.

Now the purpose of a patent system is not to reward the individual inventor but the advancement of the
arts and sciences. The function of patent is to 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. The ultimate goal of the patent system is to bring new design and technologies into the
public domain through disclosure. Of course, the invention may choose not to get a patent, he could
keep his invention secret forever, and he can also reap the fruits indefinitely. In this case the risk is that
ideas once it is disclosed or the information was stolen and it is now in the public then it will not be
protected by patent and it will be now subject for appropriation without significant restraint. On the
other hand, if the invention is protected by a patent the inventor enjoys the protection of the law for a
specific number of years that I will discuss later and after that period of years expired then it will now go
to the public domain and anyone can now exploit the invention. So that’s the trade-off, no patent, no
protection. But if you can manage to keep the security over the information then you can keep reaping
the benefits all to yourself, indefinitely. While in a patent system you are protected but there’s a time
limit for the protection.

The patent system embodies a 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. In consideration of its disclosure and the consequent benefit to the community
the patent will be granted. An exclusive enjoyment is guaranteed to the inventor but upon expiration of
the period, the knowledge of the invention goes to the public domain and now the public will now be
enabled to practice it and profit by its use.
So the patent has a three-fold purpose. First, to foster and reward invention, second, to promote
disclosure of inventions to stimulate further innovation and to permit the public to practice the
invention once the patent expires. And third, the stringent requirements for patent protection seek to
ensure that the ideas in the public domain remain there for the free use of the public.

Now in order for the invention to be patentable the same must satisfy the three requisite I’ve
mentioned earlier, again novelty, inventive step, and industrial applicability.

So let’s talk about novelty, under section 23 an invention is new or novel if it does not form part of a
prior art. So now, what is prior art? In section 24, explains that 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 second, the whole contents of the application for a patent
utility model or industrial design registration which is published in accordance with the intellectual
property law filed or effective in the Philippines with the filing or priority date that is earlier than the
filing or priority date of the application. So those two fall under prior art. Then now, if the invention
does not form a prior art then the first requisite of novelty is satisfied.

Second requisite, inventive step under section 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 filing date or priority
date of the application claiming the invention.

And the third requisite, the industrial applicability under section 27, is an invention that can be
produced and used in any industry shall be industrially applicable. So there must be applications in
industry.

So, all 3 requisite must be present and satisfied in order for an invention to qualify as a patent.

Now, think of it if one requisite is absent, does it still qualify for registration? So to answer, it depends
noh.

If the invention is new and industrially applicable but it does not involve an inventive step then it may
qualify for registration as a UTILITY MODEL. A utility model is any model of implements or tools or any
industrial product or part thereof which is of practical utility or offers a technical reason of its form
configuration or composition. It may be or may relate to a product, process or improvement of the
foregoing. It essentially refers to an invention in the mechanical field. Take note: the utility model
cannot be patented but it may be registered for a period of seven years from the date of filing without
possibility of renewal. A previous application for a patent, let’s say the inventor initially applied for a
patent, he may convert it later on to an application for a utility model. But take note that an applicant
can’t file 2 applications over the same invention for patent and for utility model at the same time or
consecutively. So that cannot be done, an inventor should choose only one of the two.

Now if an invention is new but it is not industrially applicable and does not involve an inventive step, it
will not qualify for a patent, but it may qualify for registration as industrial design. An industrial design is
any composition of lines or colors or any three dimensional form whether or not associated with lines or
colors, provided that such composition or form gives a special appearance and can serve as a pattern for
an industrial product or handicraft.

And now, under section 28 the right to a patent belongs to the inventor, his heirs or his assigns. When
two (2) or more persons have jointly made an invention, the right to a patent shall belong to them
jointly. Take note of the first to file rule under section 29, says that if two (2) or more persons have
made the invention separately and independently, 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.

When we say priority date, this is the date of filing of the foreign application in case the patent was
applied for abroad over the same invention.

Now, who owns the right to the patent in case of inventions created pursuant to a commission? Under
section 30, the person the commissions the work shall own the patent unless otherwise provided in the
contract, so we must take note of that rule. In case the employee made the invention in the course of
his employment contract then the patent shall belong either to the employee or the employer
depending on the circumstance, and which are those. First, it will belong to the employee if the
inventive activity is not part of its regular duties even if the employee uses the time facilities and
materials of the employer. But the patent will belong to the employer if the invention is the result of the
performance of its regularly assigned duties unless there is an agreement expressed or implied to the
contrary. Well it basically depends to the employment contract, if the contract allows the owner even
the invention was made during the course of his duties at work then the contract will be followed.

Now once a person obtains a right to a patent then he is protected for a term of 20 years from the date
of filing the application. In case of utility models the term of protection is 7 years from the date of
application, and for industrial design 5 years from application which is renewable not more than 2 times
thereafter each with a term of 5 years. Patents and utility models are not renewable.

And under Section 31, 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. So let’s you file an application abroad and then you
file also an application here, you can ask the intellectual property office to consider your filing date
abroad which is earlier as the filing date of you registration here. But the law requires compliance with
the following: (a) the local application expressly claims priority; (b) it is filed within twelve (12) months
from the date the earliest foreign application was filed; (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.

So let’s say for example, you invent something but before you can apply for a patent someone copies it
and that person files a patent before you, the original inventor. By virtue of earlier filing that person is
now entitled to a patent. Do you have a remedy? So the answer is yes, you the actual inventor can file a
petition for cancelation of the patent of the ground that you are the true and actual inventor.
To make it short and precise, so how does one apply for a patent? Of course the inventor must file an
application with the intellectual property office which must be subject to the rule of unity of invention,
meaning that the application shall relate to one invention only or to a group of inventions forming a
single general inventive concept. However take note, the fact that a patent has been granted on an
application that did not comply with requirement of unity of invention, that’s not a ground to cancel the
patent. So the application will be giving a filing date then the intellectual property office will examine
the compliance with requirements of the law on the contents of the application. After that the
intellectual property office will calcify the application, it will make a search for prior art and will check if
the requisite of novelty has been complied with, and if everything is in order the IPO will publish the
application and a document siting a prior art if any after 18 months from the date of filing or priority
date.

After publication any interested party may inspect the application documents and within 6 months from
publication, the applicant may submit a written request for the substantive examination. Now the IPO,
during the examination may grant or refuse the patent. In case of refusal the applicant may appeal to
the director of the bureau of patents and if granted then the patents will be published.

Now take note that a publication already grants the applicant certain rights under section 46, specifically
the right to bring civil actions for infringement against any person who without authorization from the
applicant has wrongfully exercised the rights properly belonging to the applicant in relation to the
invention claimed in the published patent application provided that the offender had actual knowledge
that the invention that he was using was the subject matter of a published application or had received
written notice that the invention that he was using was the subject matter of a published application
being identified in the said notice by its serial number. However, take note that the action may not be
filed until after the grant of a patent on the published application and within four (4) years from the
commission of the acts complained of. So there’s a time limit within which to bring the action even
though he has a right by virtue of publication the applicant still has to observe the time limit given in the
law. Now at the time of the making of this episode the IPO allows the electronic application filing for
patents.

Under section 59, tells that the owner of a patent shall have the right to request the Bureau to make the
changes in the patent in order to:

(a) Limit the extent of the protection conferred by it;

(b) Correct obvious mistakes or to correct clerical errors; and
(c) Correct mistakes or errors, other than those referred to in letter (b), made in good faith: Provided,
That where the change would result in a broadening of the extent of protection conferred by the patent,
no request may be made after the expiration of two (2) years from the grant of a patent and the change
shall not affect the rights of any third party which has relied on the patent, as published.