Intellectual Property and Patent Drafting Training

Carlos Hilado Memorial State College

Workshop in Patent Drafting and Documentation

This Topic :
Spotting the Invention
Lecturer:

Dr. ARMANDO R. REOSURA

WIPO IAP Patent Specialist /Patent Agent/Inventor
Director, Intellectual Property Management Office
and Innovation and Support Office (ITSO), CHMSC
 Intellectual Property and Patent Drafting Training
Carlos Hilado Memorial State College

Spotting the Invention

Armando R. Reosura, Ph.D.

Patent Specialist, IAP/WIPO
Director, IPMO/Manager, ITSO
Carlos Hilado Memorial State College
Check out

“HOW TO FILE A PATENT WITHOUT

PAYING FOR A LAWYER’S FEE”

Copy and paste to your browser:

bit.ly/HowToFileAPatent
 Note:
the following steps and presentations (tabulation) need
not be documented for application as the patent office
does not require you to submit your evidence of
conducting this procedure. Doing the steps that follows
will only provide you with a sound decision whether to
pursue the filing of your invention or improving your
product to meet the novelty and non-obviousness
requirement.
Armando R. Reosura
In Invention Spotting, You need to:

1. Select the closest prior art/s from your searches.

2. Spot the differences and similarities between each
prior arts and the invention.
3. Eliminate the known element/s (based on prior art/s)so
that new features (in the invention) are left.
4. Examine if there is/are surprising effect in that new
feature/s.
 Requirements of A Patentable invention:

✓• Industrial Applicability
• Novelty
• Inventive Step (Non-obviousness)

“An invention shall be considered “industrially applicable” if it can be

produced and used in any kind of industry.”

Sec. 23,26,and 27, IP Code

 Requirements of A Patentable invention:

✓• Industrial Applicability

✓• Novelty
• Inventive Step (non-obviousness)

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

Sec 23, IP Code

In Invention Spotting, You need to:

1. Select the closest prior arts from your searches

2. Spot the differences and similarities between each
prior arts and the invention.
3. Eliminate the known element/s (based on prior
art/s)so that new features are left.
4. Examine if there is/are surprising effect in that new
feature
 Requirements of A Patentable invention:

✓• Industrial Applicability

✓• Novelty

✓ • Inventive Step (non-obviousness)

“An invention involves an inventive step if, having regard to prior art, it is
not obvious to a person skilled in the art ...”

Sec 23, IP Code

 Requirements of A Patentable invention:

• Industrial Applicability
• Novelty
• Inventive Step (Non-obviousness)

“Novelty and inventive step are different criteria. Novelty exists if there is any
difference between the claimed invention and the known art.

The question – “Is there inventive step?” – is asked only if there is novelty.

Sec. 25.1 Manual for Substantive Examination

Requirements of A Patentable invention:

Part of prior art

Novel element(s)
Is it Inventive?
Prior art

technology
Novelty
“ an invention shall not be considered new if it
forms part of a prior art”.

The "prior art" is consisting of "everything which has

been made available to the public anywhere
in the world, before the filing date or the priority
date of the Philippine application claiming the
invention”
BAGO BA?
 Looks different (NOVEL)
A caster is an invention itself. The table has existed even
It has existed since 1876 before the caster. BUT NOT INVENTIVE

Adding casters underneath any furniture or appliance will consequently make it mobile.
Inventive Step
An invention involves an inventive step if, having
regard to the 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”
OBVIOUS BA?
Inventive Step
The claims must define an invention that in
addition to being novel, must also be non-obvious
to one having ordinary skill in the art.

You must be sure that the added or narrowed

elements define a structure or step that is
sufficiently different from the prior art to be
considered non-obvious. Thus having inventive
step.
 Simple Knowledge can make your technology obvious
A priori knowledge is that which is independent from experience.

Prior Art 1
Your invention

INVENTIVE
NOVEL
Priori knowledge of a person with
Prior Art 2
ordinary skill

NOVELTY ASSESSMENT INVENTIVENESS ASSESSMENT

Examining Novelty and Inventive Step
Examining Novelty and Inventive Step
Assuming, that it is year 1857 and you came across same problem:

pencil
Is it novel?
YES.
At this time the idea
is a new concept.
eraser
Is it Inventive?
No.
Merely combining
fastener known element does
not constitute
Prior Arts Invention Inventiveness.
Examining Novelty and Inventive Step
Assuming, that it is year 1857 and you came across same problem:
Then how was Lipman able to Patent his Pencil with eraser?

VS. Lead-pencil Rubber-eraser

The provision of solution to a problem does

not warrant inventiveness BUT on HOW the
solution was made.
Examining Novelty and Inventive Step

Then how was Lipman able to Patent his Pencil with eraser?
Examining Novelty and Inventive Step

J.B. OSTROWSKI’S ALUMINUM FERRULE

Is an invention that does not claim about the
combination of a pencil and an eraser.
He claims about a fixture he created to make
this combination more secure

1. A HIGH STRENGTH ALUMINUM PENCIL FERRULE

COMPRISING A HOLLOW CYLINDER OF ALUMINUM
HAVING A PLURALITY OF LONGITUDINAL SERRATIONS
ON THE OUTER FACE THEREOF, SAID SERRATIONS
COVERING THE MAJOR PORTION OF THE OUTER FACE
OF SAID CYLINDER AND EXTENDING LONGITUDINALLY
OVER THE ENTIRE SURFACE THEREOF.
Examining Novelty
Examining Novelty
A tabulated result of prior art search
ELEMENTS MY INVENTION PRIOR ART 1 PRIOR ART 2 PRIOR ART 3

PEN-HOLDING TRAINER
✓ FIRST HOLDING
MEM (MID FING)

✓MEM (PEN)
SECOND HOLDING

✓ MEANS
ATTACHING
Examining Novelty
ELEMENTS MY INVENTION PRIOR ART 1 PRIOR ART 2 PRIOR ART 3
PEN-HOLDING US 8,926,203 B1
TRAINER
FIRST HOLDING
MEM (MID FING) ✓
✓
SECOND HOLDING
MEM (PEN)

✓
ATTACHING
MEANS
CLAIM:

A writing instrument gripping aid, comprising a

hollow prism body consisting of a thumb
positioning face, an index finger positioning
face and a middle finger positioning face, which
respectively comprise a thumb positioning
structure, an index finger positioning structure
and a middle finger positioning structure,

FIRST HOLDING
MEM (MID FING)
SECOND HOLDING
MEM (PEN)
ATTACHING
MEANS
Examining Novelty
ELEMENTS YOUR PRIOR ART 1 PRIOR ART 2 PRIOR ART 3
INVENTION
PEN-HOLDING
US 8,926,203 B1 USOO5876134A
TRAINER

✓
FIRST HOLDING
MEM (MID FING)
SECOND HOLDING
MEM (PEN) ✓ ✓
ATTACHING
MEANS ✓
CLAIM:

A finger manipulated article Selected from the

group
consisting of razors and writing instruments
having a handle
that can be easily maneuvered by the fingers,
Said handle
having a body and a gripping Surface
comprising a foam FIRST HOLDING
layer on an outer Surface of the body Said foam MEM (MID FING)
having a SECOND HOLDING
density of from 0.32 to 1.5 g/cm and being MEM (PEN)
deformable by ATTACHING
MEANS
the fingers of a user of the article.
Examining Novelty
ELEMENTS YOUR PRIOR ART 1 PRIOR ART 2 PRIOR ART 3
INVENTION
PEN-HOLDING US2173451
US 8,926,203 B1 USOO5876134A
TRAINER

✓
FIRST HOLDING
MEM (MID FING)
SECOND HOLDING
MEM (PEN) ✓ ✓ ✓
ATTACHING
MEANS ✓
CLAIM:
FIRST HOLDING
A writing implement attachment consisting of MEM (MID FING)
a one piece sleeve having a straight slot ex SECOND HOLDING
tending through its Wall and extending from MEM (PEN)
end to end of the sleeve, said sleeve having at ATTACHING
least ne circumferentially enlarged portion MEANS
forming an abutment for the fingers when
grasping the sleeve, said sleeve being provided
with a bore and having inwardly extending
spaced ribs extend ing around the bore.
Examining Novelty
ELEMENTS YOUR PRIOR ART 1 PRIOR ART 2 PRIOR ART 3
INVENTION
PEN-HOLDING US2173451
US 8,926,203 B1 USOO5876134A
TRAINER

✓
FIRST HOLDING novel novel
MEM (MID FING)
SECOND HOLDING
MEM (PEN) ✓ ✓ ✓ ✓
ATTACHING
MEANS ✓ novel novel novel
 CLAIM:
CLAIM:

A writing instrument gripping aid, comprising a

A training apparatus comprising:
hollow prism body consisting of a thumb
a first holding member (4) having a
positioning face, an index finger positioning
first aperture (14), a second holding
face and a middle finger positioning face, which
member (8) having a second aperture
respectively comprise a thumb positioning
(16), and a means (12) to attach said
structure, an index finger positioning structure
first (4) and second holding members
and a middle finger positioning structure,
(8).
Examining Novelty
ELEMENTS YOUR PRIOR ART 1 PRIOR ART 2 PRIOR ART 3
INVENTION
PEN-HOLDING US2173451
US 8,926,203 B1 USOO5876134A
TRAINER

✓
FIRST HOLDING novel novel novel
MEM (MID FING)
SECOND HOLDING
MEM (PEN) ✓ ✓ ✓ ✓
ATTACHING
MEANS ✓ novel novel novel
Examining Novelty
ELEMENTS YOUR PRIOR ART 1 PRIOR ART 2 PRIOR ART 3
INVENTION
PEN-HOLDING US2173451
US 8,926,203 B1 USOO5876134A
TRAINER

✓
FIRST HOLDING
MEM (MID FING)
SECOND HOLDING
MEM (PEN) ✓ ✓ ✓ ✓
ATTACHING
MEANS ✓
Examining Inventive Step
Requirements of A Patentable invention:
part of prior art
SECOND HOLDING MEM (PEN)

Novel element(s)
Other pen holding • FIRST HOLDING
guides MEM (MID FING)
• ATTACHING
MEANS
Pen-holding
trainer
Examining Inventive Step
Is there inventive step? - only arises if there is novelty.
Will combining the elements in the prior art result to my invention?.

ELEMENTS YOUR
INVENTION
PEN-HOLDING
TRAINER
FIRST HOLDING
MEM (MID FING) INVENTIVE
ATTACHING
MEANS
INVENTIVE
SECOND HOLDING
MEM (PEN)
Examining Inventive Step
The question – Is there inventive step? - only arises if there is novelty.

ELEMENTS YOUR
INVENTION
PEN-HOLDING
TRAINER
FIRST HOLDING
MEM (MID FING) novel/inventive
ATTACHING
MEANS
novel/inventive
SECOND HOLDING
MEM (PEN)
Examining Inventive Step
The question – Is there inventive step? - only arises if there is novelty.

ELEMENTS YOUR
INVENTION
PEN-HOLDING
TRAINER
FIRST HOLDING
MEM (MID FING) novel/inventive
ATTACHING
MEANS
novel/inventive
SECOND HOLDING
MEM (PEN)
Examining Inventive Step
The question – Is there inventive step? - only arises if there is novelty.

ELEMENTS YOUR
INVENTION DECISION:
PEN-HOLDING Proceed to Drafting the Claims
TRAINER
FIRST HOLDING
and Descriptions
MEM (MID FING) novel/inventive
ATTACHING
MEANS
novel/inventive
SECOND HOLDING
MEM (PEN)
I CLAIM:

1. A training apparatus comprising: a

first holding member (4) having a first
aperture (14), a second holding
member (8) having a second
aperture (16), and a means (12) to
attach said first (4) and second
holding members (8).
 Intellectual Property and Patent Drafting Training
Carlos Hilado Memorial State College

Spotting the Invention

THANK YOU
Armando R. Reosura, Ph.D.
Patent Specialist, IAP/WIPO
Director, IPMO/Manager, ITSO
Carlos Hilado Memorial State College