PATENT

1. J. 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.

II. Patentable invention may be, or may relate to, a product, or process, or
an improvement of any of the foregoing.
a. Only] is true
b. Only ILis true
c. Both are true
d. Both are false!

Note:

Sec. 22 of the IPC provides that the following shall be excluded from
patent protection:

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;

2. Schemes, rules and methods of performing mental acts, playing games

or doing business, and programs for computers;

3. Methods for treatment of the human or animal body by surgery or

therapy and diagnostic methods practiced on the human or animal body.
It shall 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. It shall not apply to micro-organisms

and non-biological and microbiological processes.
5. Aesthetic creations; and

6. Anything which is contrary to public order or morality.

Note:
Patent

It is a statutory monopoly which protects against unlicensed used of

the patented device or process even by

the one who discovered it through

independent research (60 AM jur. 2d, Patents, Section 6).

Purpose:

1. The patent law seeks to foster and reward invention;

2. It promotes disclosures of inventions to stim ulate further innovation and
to permit the public to
F practice the invention once the patent expires;
an

a”
NT
ingent require
3. The "she public domain ren cre ot Protection seek
ideas nremain there for the fr €K to ensure that
& Dean vs. Shoemart, G.R. 148222, August 15, 2003) ee use of the public (Pear!

pat

Note:
Term of Patent:

The term of a patent is twenty (20) years c

ti .
sfapplication (Sec. 54, IPL). COS COMMER rate the Ming dike

Upon the expiration of that period, the knowledge of the invention

inures to the people, who are thus enabled to practice it and profit from its use.

,|, An invention shall not be considered new if it forms part of a prior art.

I. 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.

a. Only]is true
b. Only IL is true
c. Both are true
d. Both are false?

Note:

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 ofa
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
(Sec. 26.2, IPL),

* 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.
os whole contents of an application for a pa

€ctive in the Philippines, with a filing or pri

an the filing or priority date of the application.

a. Only I is true
Only II is true

tent, published, filed or

rity date that is earlier
PATENT

c. Both are true

d. Both are false?

Note:

Patentable invention ;
It refers to any technical solution of a problem in any field of human

activity which is new, involves an inventive step, and is industrially applicable

(Sec. 21, IPC).

Requisites of Patentability:
1. Any technical solution of a problem in any field of human activity;

2. Inventive step
An invention involves 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.

3. Novelty
An invention shall be considered new if it does not form part of a prior

art.

4, Industrial applicability
An invention that can be produced and used in any industry.

5. Patentable subject matter

An invention that does not fall within the prohibitions of a non-

patentable invention.

They may be, or may relate to:

1. A product, such as a machine, a device, an article of manufacture, a

composition of matter, a microorganism;

2. A process, such as a method of use, a method of manufacturing, a non-

biological process, a mirobiological process; and

3. An improvement of any of the foregoing.

Person Skilled in the Art

He is a person 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 (Rule 207, Rules and Regulations on Inventions).

4. Means any person who, at the filing date of application, had the right to the
patent.

a. Inventor
b. Infringer

c. Trader

d. Proprietor+*

3 Suggested answer: C (Sec. 24, IPC)

4 Suggested answer: A (Sec. 25, IPC)

864
_vention that can be produced a
5. An rially applicable. | nd used in any industry Shall be
in invention involves an inventive Step if, havin
1,48 spvious to a person skilled in the art at the
pot rity date of the application Claiming the in
pri? Only | is true s
Only II is true
c, Both are true
q. Both are false

8 regard to Prior art, itis

time of the filj

In
ention, £ date or

1, The right to a patent belongs - the inventor only.

"| When two or more persons have jointl ;

Sent shall belong to them jointly y made an Invention, the right to
Only I is true

b. Only Il is true

c. Bothare true

d. Both are false®

>

Note:
The right to a patent belongs to the inventor, his heirs, or assigns.

It grants the patent rights of an invention to the person who first files
a patent application for that invention, whether or not he is the inventor (una,

Intellectual Property Law (2012).

General Rule:
The conditions of novelty and inventive step must exist at a certain

date, generally the date on which the application is filed.

Exception:

The right of priority, which means that when one has filed an
application, in one member country of the Paris Convention, the same applicant
May, within a specified time period, apply for protection for the same invention
any of the other member countries. The latter applications will be regarded
4S if they had been filed on the same day as the earliest application.

if If two 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.

"&re two or more applications are filed for the same invention,
"ght to a patent belongs to the applicant who has the earliest filing date
or, .
the earliest priority date.

4 Only I is true

Su este

6 d

*teeested answer: ¢ (Sec. 26 & 27 IPC)

answer: B (Sec. 28 IPC)

the

865
PATENT

b. Only II is true
c. Both are true
d. Both are false’

Right to a Patent

He who first files

separately and independently

Two or more applications filed | Applicant who has the earliest filing date

or the same invention or earliest priority date

Inventions created pursuant toa | Person who commissioned the work,
commission unless agreed otherwise
Employee makes the invention in | It belongs to the employee if the inventive
the course of employment activity is not part of his regular duties

even if the employee uses the time,

facilities, and materials of the employer,

It belongs to the employer if the invention

is the result of the performance of his

regularly assigned duties, unless there is

| an agreement to the contrary,

8.1. The person who commissions the wor

otherwise provided in the contract.

I]. 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.
a. Only I is true

b. Only Il is true
c. Both are true
d. Both are false®

k shall own the patent, unless

Note:
Unity of invention

9. In case the employee made the invention in

the course of his employment

belong to:

7 Suggested a

Nswer: C (Sec, 29,

8 Suggested a ( IPC)

nswer: C (Sec. 30 & 31, IPC)

only Lis true
a. only IJ is true
b. oth are true
G false?
are
d poth

e employee made the invention in the course of his

lov ent contract, the patent shall belong to the employee, if the inventive
emp” ic not a part of his regular duties even if the employee uses the time,

and materials of the employer.

note’ In case th

y be granted unless the application identifies the inventor.

4 resident of the Philippines must appoint and

t or representative in the Philippines.

so. an ap icant who is not

Only Il is true
c, Bothare true
d, Both are false1°

Note:

the Application
The patent application shall be in Filipino or English and

the following:

shall contain

a. Arequest 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.

The Request
The request shall con

name and other data of the app

of the invention.

nt of the patent, the

tain a petition for the gra

e agent and the title

licant, the inventor and th

Disclosure and Description of the Invention

The application shall disclose the invention in a manner sufficiently

cl
ear and complete for it to be carried out by a person skilled in the art.

The Claims

the rr application shall contain one (1)

and shale or which protection is sought. Eac

€ supported by the description.

or more claims which shall define

h claim shall be clear and concise,

The Abstract

55,
Be
lo Steq
Sy ans
Best, Wer: B Ss
€d answer. A ¢. 30, IPC)
€c. 32 & 33, IPC)

867

4
|
|
4
PATENT

The abstract shall consist of a concise summary of the disclosyr,

e
invention as contained in the description, claims, and drawings in Before:
not more than one hundred fifty (150) words. y

11.1. The application shall relate to one invention only or to a group of

inventions forming a single general inventive concept,
II. The fact that a patent has been granted on an application that did not

comply with the requirement of unity of invention shall not be a ground

to cancel the patent.

Only I is true
Only II is true
Both are true
Both are false11

ao of

12.1. After publication of a patent application, any interested party may

inspect the application documents filed with the Intellectual Property
Office.

II. Following the publication of the patent application, any person may
present observations in writing concerning the patentability of the
invention. Such observations shall be communicated to the applicant
who may comment on them.

a. Onlylis true

b. Only IT is true
c. Both are true
d. Both are false?

13.1. If the application meets the legal requirements, the Intellectual

Property Office (IPO) shall grant the patent.
II. A patent shall take effect on the date of the publication of the grant of
the patent in the IPO Gazette.
a. Only lis true
b. Only Il is true
c. Both are true
d. Both are false?

Note:
Annual Fees

To maintain the patent application or patent, an annual fee shall be

paid upon the expiration of four (4) years from the date the application was
published, and of its subsequent anniversary of such date. Payment may be
made within three (3) months before the due date.

A grace period of six (6) months shall be granted for the payment oF
annual fees (Sec. 55, IPC).
‘l Suggested answer: C (Sec. 38, IPC)
1? Suggested answer: C (Sec. 44 & 47, IPC}
13 Suggested answer: C (Sec. 50, IPC)

868
ren
ment of Annual Fees
non PO g patent application shall be deemed withdrawn; or
1. oe patent shall be considered as lapsed from the day following the
expiration of the period within which the annual fees were due (sec. 55,
IPC)
ne term of a patent shall be 17 years from the filing date of the
e
Ih pplication.
iI To maintain
published. .
a, Only Lis true
bp. Only Il is true
c, Both are true
q. Both are false™

the patent application or patent, an annual fee shall be paid

iration of 4 years from the date the application was

ote:
s The term of a patent shall be twenty (20) years from the filing date of

the application.

Upon expiration of that period, the knowledge of the invention inures

tothe people, who are thus enabled to practice it and profit from its use (Pearl &
Dean, Inc. vs, Shoemart, Inc, G.R. No. 148222, August 15, 2003).

15. Any interested person may petition to cancel the patent or any claim
thereof, or parts of the claim, on the following ground/s:

a. That what is claimed as the invention is not new or patentable.

b. That the patent does not disclose the invention in a manner

sufficiently clear and complete for it to be carried out by any
person skilled in the art.

c. That the patent is contrary to public order or morality.

d. All of the above15

Note:

Grounds for Cancellation of Patent

7 That what is claimed as the invention is not new or patentable;
. ise the patent does not disclose the invention in a manner sufficiently
: oF and complete for it to be carried out by any person skilled in the
; or
aT . 7
hat the patent is contrary to public order or morality.

Note:

*tisional applications

's gyetested

Biest answer, B
€q Answer: p ce 7 Pc ci
869
PATENT

When two or more inventions are claimed in a single application byt

are of such a nature that a single patent may not be issued for them, the
applicant is required to “divide” or limit the claims to whichever the invention
he may elect, whereas those inventions not elected may be made the subject of
separate applications which are called “divisional applications (smith ktine
Corp. vs. CA, G.R. No. 126627, August 14, 2003).

Beckman

16. If a person, who was deprived of the patent without his consent or
through fraud is declared by final court order or decision to be the true
and actual inventor, the court shall order:

I. For his substitution as patentee.

I]. At the option of the true inventor, cancel the patent, and award actual
and other damages in his favor if warranted by the circumstances,
a. Only Tis true
b. Only II is true
c. Both are true
d. Bothare false16

17. A patent shall confer on its owner the following exclusive rights:

I, Where the subject matter of a patent is a product: to restrain, prohibit

and prevent any unauthorized person or entity from making, using,
offering for sale, selling, or importing that product;

II. Where the subject matter of a patent is a process: to restrain, prevent

or prohibit any unauthorized person or entity from using the process,
and from manufacturing, dealing in, using, selling or offering for sale, or

importing any product obtained directly or indirectly from such process.

a. Only lis true

b. Only Il is true
c. Both are true
d. Both are false17

Note:
Rights Conferred by Patent
1. To restrain, prohibit and prevent:

a. Where the subject matter of a patent is a product: any

unauthorized person or entity from making, using, offering for sale,

selling or importing that product.

b. Where the subject matter of a patent is a process: any unauthorized

person or entity from using the process, and from manufacturing,
dealing in, using, selling or offering for sale, or importing any
product obtained directly or indirectly from such process.

2. To assign or transfer by succession the patent; and

3. To conclude licensing contracts (Sec. 71, IPL).

‘6 Suggested answer: C (Sec. 68, IPC)

? Suggested answer: C (Sec. 71, IPC)
870
Nom ation s of Patent Rights

fi The owner of a patent has no rj ht t

fori g, without his authorization, the fellow ae anti from

«Using @ patented product which has

Philippines by the owner of the prod
insofar as such use is performed after
the said market;

p, Where the act is done privately and on q

non-commercial purpose provided tha
prejudice the economic interests of the o

c. Where the act consists of making or using exclusively for experimental

use of the invention for scientific purpo

it10} . ses or educational purposes and

such other activities directly related to such Scientific or educational
experimental use;

d. In the case of drugs and medicines, where the act includes testing, using,
making or selling the invention including any data related thereto, solely
for purposes reasonably related to the development and submission of
information and issuance of approvals by government regulatory
agencies required under any law of the Philippines or of another country
that regulates the manufacture, construction, use or sale of any product.

e. Where the act consists of the preparation for individual cases, in a

pharmacy or by a medical professional, of a medicine in accordance with
a medical prescription or acts concerning the medicine so prepared; and

f Where the invention is used in any ship, vessel, aircraft, or land vehicle of
any other country entering the territory of the Philippines temporarily
or accidentally: Provided, That such invention is used exclusively for the
needs of the ship, vessel, aircraft, or land vehicle and not used for the
manufacturing of anything to be sold within the Philippines.

been put on the market in the

uct, or with his express consent,
that product has been so put on

non-commercial scale or fora

€ it does not significantly

wner of the patent;

8.1. Patent owners shall also have the right to assign, or transfer by

Succession the patent, and to conclude licensing contracts for the same.
Any prior user, who, in good faith was using the invention or has
undertaken serious preparations to use the invention in his enterprise
ot business, before the filing date or priority date of the application on
Which a patent is granted, shall have the right to continue the use
ereof as envisaged in such preparations within the territory where
© patent produces its effect.
Only Lis true
Only Il is true
Both are true
Both are false18

C,
PATENT

| 19. A Government agency or third person authorized by the Govern e

exploit the invention even without agreement of the patent OWner wn May
I. The public interest, in particular, national security, nutrition, he ete
the development of other sectors, as determined by the appro th Or
agency of the government, so requires. Priate

Il. A judicial or administrative body has determined that the ann

exploitation, by the owner of the patent or his licensee, jg :
competitive. —

a. Only /is true

b. Only Il is true

c. Both are true

d. Both are false19

Note:

Use of Invention by Government

A government agency or third person authorized by the government

may exploit the invention even without agreement of the patent owner Where:

(a) The public interest, in particular, national security, nutrition, health or

the development of other sectors, as determined by the appropriate
agency of the government, so requires; or

(b) A judicial or administrative body has determined that the manner of

exploitation, by the owner of the patent or his licensee, is anti-
competitive; or

(c) In the case of drugs and medicines, there is a national emergency or

other circumstance of extreme urgency requiring the use of the

invention; or

(d) In the case of drugs and medicines, there is public non-commercial use
of the patent by the patentee, without satisfactory reason; or

(e) In the case of drugs and medicines, the demand for the patented article
in the Philippines is not being met to an adequate extent and on

reasonable terms, as determined by the Secretary of Department of

Health.

20. The making, using, offering for sale, selling, or importing a patented
product or a product obtained directly or indirectly from a patented

process, or the use of a patented process without the authorization of the

patentee constitutes:

Patent infringement.
b. Trademark infringement

c. Copyright infringement
d. Double sale2°

in andt0

21. I. Any patentee, or anyone possessing any right, title or inter pring 2

the patented invention, whose rights have been infringed, ™4

19 Suggested answer: C (Sec. 74, IPC)

20 Suggested answer: A (Sec. 76, IPC)

872

ell
T —
sty ot pefore a court of competent jurisdiction, to recover from the
civil?” such damages sustained thereby, plus attorney’s fees and other
and to secure an injunction for the protection of

exP
his Br who actively induces the infringement of a patent or provides
(I. any? inger with a component of a patented product or of a product

the aed pecause of a patented process knowing it to be especially

pro ted for infringing the patented invention and not suitable for
oP non-infringing use shall be liable as a contributory infringer

stantial |
shall be jointly liable with the infringer.

d
a Only | is true

; Only Il is true
c. Bothare true
4. Both are false?1
Note:
contributory infringer
Anyone who actively induces the infringement of a patent or provides

a component of a patented product or of a product produced

ted process knowing it to be especially adopted for infringing
on and not suitable for substantial non-infringing use shall
butory infringer and shall be jai ly liable

the infringer with

because of a paten
the patented inventi
he liable as a con tri

with the infringer.

Note:
A person or entity who has not been granted letters of patent over an
invention and has not acquired any right or title thereto either as assignee or
tion for infringement because the right to

as licensee, has no cause of ac

maintain an infringement suit depends on the existence of the patent (Cresser

Precision Systems vs. CA, G.R. No. 118708, February 2, 1998).

22, I Ifthe subject matter of a patent is a process for obtaining a product, any
identical product shall be presumed to have been obtained through the
use of the patented process if the product is new or there is substantial
likelihood that the identical product was made by the process and the
owner of the patent has been unable despite reasonable efforts, to

ee the process actually used.

befor oh cannot be recovered for acts 0
the pat e infringer had known; or had reasonable gro
ent.

Only I is true

Only Il is true

Both are true

Both are false22

f infringement committed
unds to know of

aoo0p

a
x

Sy Sted answer.
Beesteg <i er: A (Sec. 76, IPC)

Swer: C (Sec. 78 & 80, IPC)

873
PATENT

Note:

It is presumed that the infringer had known of the patent if on the

patented product, or on the container or package in which the article is
supplied to the public, or on the advertising material relating to the patented
product or process, are placed the words "Philippine Patent" with the number
of the patent.

Note:
Doctrine of Equivalents Test

An infringement also takes place when a device appropriates q prior

invention by incorporating its innovative concept and although with some
modification and change, performs substantially the same way to achieve the
same result. In other words, the principle or mode of operation must be the
same or substantially the same. The doctrine of equivalents, thus, requires
satisfaction of the function-means-and-result test, the patentee having the
burden to show that all three components of such equivalency test are met (Smith
Kline Beckman vs. CA, G.R. No. 126627, August 12, 2003).

Note:
The reason for the doctrine of equivalents is that to permit the
imitation of a patented invention which does not copy any literal detail would

be to convert the protection of the patent grant into a hollow and useless thing
(Godines vs. CA, G.R. No. L-97343, September 13, 1993).

23.1. In an action for infringement, the defendant, in addition to other

defenses available to him, may show the invalidity of the patent, or any
claim thereof.

I]. In an action for infringement, if the court shall find the patent or any
claim to be invalid, it shall cancel the same.
a. Only lis true
b. Only Il is true
c. Both are true
d. Both are false23

Note:

Rermeniibve dor Patent inte

1. Action for damages plus attorney’s fees and other expenses of

litigation and to secure an injunction

Any patentee, or anyone Possessing any right, title, or interest

in and to the patented invention, whose rights have been infringed, may

bring a civil action before a court of competent jurisdiction, to recover

from the infringer such damages sustained thereby, plus attorney 's fees

and other expenses of litigation, and to secure an injunction for the

protection of his rights (sec. 76, IPC).
23 Suggested answer: C (Sec. 81 & 82, IPC)
[or Destruction

nt
2, vispor? in its discreti ,
. The court may, In its discretion, order that the infringing goods,

jements predominantly used in the infringement be

materials, and imp

wispose4 of outside the channels of commerce or destroyed, without
ion (Sec. 76, IPC). .

_ inal action for repetition of infringement.

crim seh ;
3 if infringement is repeated by the infringer or by anyone in

Note:
Defen
1.

Zs

vance with him after finality of the judgment of the court against
nger, the offenders shall, without prejudice to the institution of
a civil action for damages, be criminally liable therefor and, upon
conviction, shall suffer imprisonment for the period of not less than six
(6) months but not more than three (3) years and/or a fine of not less

hundred thousand pesos (P100,000) but not more than Three

than One
hundred thousand pesos (P300,000), at the discretion of the court (Sec. 4,

IPC):

the infri

ses in Action for Infringement

Invalidity of the patent, or any claim thereof; or
Any of the grounds on which a petition of cancellation can be brought.

875