PATENT

MARIELLE N. VELARDE
STRUCTURE:

1 DEFINITION
2 PATENTABLE INVENTIONS
3 BASIC PATENT PRINCIPLE
4 REQUIREMENT FOR PATENTABILITY
5 PATENT INFRINGEMENT DEFINITION AND CASES
Patent
An invention patent is a government-issued
grant, bestowing an exclusive right to an
inventor over a product or process that
provides any technical solution to a problem in
any field of human activity which is new,
inventive, and industrially applicable.
 Patent
Benefits Eligibility Term of Protection
A patent is an exclusive right
that allows the inventor to The Intellectual Property The term of a patent
exclude others from making, Code of the Philippines shall be twenty (20)
using, or selling the product of sets three conditions for years from the filing
his invention during the life of an invention to be
the patent. Patent owners may date of the
deemed patentable: it application. The
also give permission to, or
has to be new, involves
license, other parties to use patent must be
their inventions on mutually an inventive step, and
maintained yearly,
agreed terms. Owners may industrially applicable.
also sell their invention rights starting from the 5th
to someone else, who then year.
becomes the new owner of the
patent.
How are these defined? In the IP
Code, an invention is not considered
new if it already forms part of the
domain of prior art. Prior art is
explained in the Intellectual Property
Code of the Philippines, Chapter 2,
Section 24 - 24.2.
Sec. 24. Prior Art. - Prior art shall
consist of:
• 24.1. 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
Eligibility
• 24.2. 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. (Sec.
9, R. A. No. 165a)
 DIFFERENT TYPES OF PATENTS

01 Inventions

02 Utility Models

03 Industrial Designs
 PATENTABLE INVENTIONS
(Sec. 21, IP Code & Rule 200, IRR)

A patent is an exclusive right (for 20 years) granted for an

invention, which is a product or a process that provides, in
general, a new way of doing something, or offers a new
technical solution to a problem.

To get a patent, technical information about the invention

must be disclosed to the public in a patent application.
PATENTABLE INVENTIONS
A product, such as a machine, a device, an article of manufacture, a
composition of matter, a microorganism.

A process, such as a method of use, a method of manufacturing, a

non-biological process, a microbiological process

Computer-Related inventions, invention involves a computer,

computer network or other programmable apparatus, with features
realized wholly or partly by means of a computer program; and
An improvement of any of the foregoing
 Non- Patentable Inventions
Chapter 2. Sec. 22. Non-Patentable Inventions. - The following shall be
excluded from patent protection:

• 22.1. Discoveries, scientific theories and mathematical methods;

• 22.2. Schemes, rules and methods of performing mental acts, playing
games or doing business, and programs for computers;
• 22.3 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;
 • 22.4. Plant varieties or animal breeds or essentially biological
process for the production of plants or animals. This provision
shall not apply to micro-organisms and non-biological and
microbiological processes.

Provisions under this subsection shall not preclude Congress to

consider the enactment of a law providing sui generis protection of
plant varieties and animal breeds and a system of community
intellectual rights protection:
• 22.5. Aesthetic creations; and
• 22.6. Anything which is contrary to public order or morality.
(Sec. 8, R. A. No. 165a)
 PATENT PRINCIPLES
TERRITORIALITY DISCLOSURE
- patents are only valid in the  - applicant shall disclose the
country or region in which they invention in a manner
have been granted suffi ciently clear and complete .
Quid pro quo principle –
protection in exchange for
FIRST-TO-FILE disclosure
applicant who files first will get
the patent
CONDITIONAL
patents are granted only upon
compliance with the criteria of
patentability
 REQUIREMENTS FOR PATENTABILITY
Substantive Requirements:

01 NOVEL

02 INVENTIVE STEP

03 INDUSTRIAL APPLICABILITY
 REQUIREMENTS FOR PATENTABILITY
Formal Requirements:

01 Patentable subject matter.

02 Sufficiency of disclosure/enablement
NOVELTY
(Sec. 23, R.A.8293)

An invention shall not be considered

new if it forms part of a prior art.
 WHAT IS A “PRIOR ART”?
Everything made available to the public by means of:

INTERNET
BY USE
PUBLICATION
PRIOR ART
ORAL DESCRIPTION WRITTEN DESCRIPTION

OR ANY OTHER WAY BEFORE THE FILING DATE OF

THE APPLICATION
GRACE PERIOD or NON PREJUDICIAL
DISCLOSURE
If you have already disclosed or published your
inventions in a journal, demonstrate, sell or discuss
your invention in public, you can still file a patent
within one (1) year from the date of disclosure or
publication.
INVENTIVE STEP (NON-OBVIOUS)
(Sec. 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
DEFINITION OF “OBVIOUS” IN PATENTING
What is “obvious”?
• The claimed invention is obvious if the person
skilled in the art on the relevant date would have
been motivated or prompted to realize the claimed
invention by substituting, combining, or modifying
one or more of those items of prior art with a
reasonable likelihood of success.
The term “obvious” is used as equivalent to the
expression “lacking an inventive step”
INDUSTRIAL APPLICABILITY
(Sec. 27 R.A. 8293)

An invention that can be produced and used in any

industry shall be industrially applicable.

- Should have practical and real-life benefit in any

field of human endeavor.
What is Patent Infringement?
Patent Infringement is the violation of a patent owner’s rights with
respect to some invention. Unless permitted by the patent owner, one
commits paten infringement by making, using, offering to sell, or
selling something that contains every element of a patented claim or
its equivalent while the patent is in effect.

Patent infringement is the commission of a prohibited act with

respect to a patented invention without permission from the patent
holder. Permission may typically be granted in the form of a license.
The definition of patent infringement may vary by jurisdiction, but it
typically includes using or selling the patented invention
Analyzing Patent Infringement

1 An infringer is a person said to be responsible for

infringing on someone's new patent.

2 Someone who aids in the creation or sale of a patented

invention is called a contributory infringer.

3 The term "multiple infringers" is used when there are

cases of more than one party being accused of
infringing on the same patent.
 What Are the Types of Patent
Infringement?
Direct Infringement
Someone creates the product without the patent holder's permission. The
infringer doesn't have to know that the patent exists in order for the
patent owner to sue him or her for direct infringement. That person can't
make, use, offer, sell, or import a patented invention whether or not he
or she knows a patent exists.
Indirect Infringement.
The infringer did not directly infringe on the patent but may have
encouraged or helped to infringe on the patent.
Induced Infringement
This refers to inducing or persuading someone to make a patented
invention. This term is often used in the same way as indirect
infringement.

Contributory Infringement

Someone provides a part or a product to help someone else infringe a

patent. That part or product must not have any other reasonable use.

Literal Infringement
To prove literal infringement in court, all elements of a defendant's
device or idea must be present in the patented one.
Willful infringement.
Willful infringement means that another person or company purposely
used someone else's patented ideas or products. A simple way to
disprove willful infringement is to hire a patent attorney, who
presumably will inform his or her client if infringement is about to
occur. It's common for a court to award treble damages in cases of
willful infringement, which can serve to prevent it due to their size.

Doctrine of Equivalents
Even if the device or method doesn’t exactly infringe a patent, a judge
might find in favor of the patent holder. If the device does basically the
same thing and produces the same results, it could be an infringement.
There are five ways to justify a case of patent infringement

• Doctrine of Equivalents
• Doctrine of Complete Coverage
• Doctrine of Compromise
• Doctrine of Estoppel
• Doctrine of Superfluity
Patent Infringement Defenses
The most common defense to patent infringement is that the patent
is not valid. A patent could be invalid for a variety of reasons:

• The patent holder was dishonest on the application

• The patent holder included wrong or misleading information
on the patent
• A person used the patented item or idea for illegal activity
• The patent violates antitrust and other competition laws
• It did not meet novelty and non-obvious requirements
 Penalties for Patent Infringement
If the court finds that the patent infringer is causing damage before or
during the case, it could grant a preliminary injunction, which prevents the
infringer from continuing his or her actions. To have a preliminary
injunction granted, the person requesting the injunction must show the
following:
• Public interest will not be negatively affected if the injunction is
granted.
• There is high merit to the case, which is likely to result in
success.
• There can be additional hardship to the patent holder if the party
infringing is allowed to continue use during the litigation
proceedings.
Preliminary injunctions can be difficult and are not often granted unless there
was adjudication previously that showed validation of the patent.

Other potential penalties include the following:

Permanent injunction. A court could decide to grant a permanent

injunction, or post-trial injunction, if the infringer is found guilty. A
permanent injunction makes the guilty party stop his or her actions
completely. The court almost always grants a permanent injunction if
the infringer is found guilty.
Damages.
The court will usually require the infringer to pay
damages when he or she is found guilty. These costs
might include actual damages, reasonable royalties,
or both. The actual damages are the profits that the
patent holder lost to the infringer. Royalties depend
more on the specifics of the products and the length
of the patent.
Costs
It's common in patent infringement cases for the
infringer to pay costs. These costs include court fees,
filing fees, and even the lawyer fees for the patent
holder. These costs are usually significant. For example,
in 2009, Abbott Laboratories was found guilty of patent
infringement for the drug Humira. The courts required
Abbott Laboratories to pay the plaintiff, Centocor,
$1.67 billion.
Exceptions and Special Cases
• It's not considered infringement if the product uses
recombinant DNA or RNA or Hybridoma technology. This law
also includes genetic manipulation.
• If the infringed patent is related to the Food and Drug
Administration, the court may make the effective date of
penalties fall after the patent expires.
• In special cases, an injunction against selling a product
commercially may be reversed if it's an approved drug or
biological product for humans or animals.
Thank
You