The Law on Patents

 First to File

 The Intellectual Property Code adopts the first-to-file system of patent registration in
contrast to the Patent Law, which followed the first-to-invent system.
 First to file is the rule in which patent priority is determined by which inventor was
the first to file a patent application, rather than who was the first to actually invent.
 The IP Code provides that if two (2) or more persons have made the invention
separately and independently of each other, the right to the patent shall belong 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.

 The first-to-file system may, however, lead to certain fraudulent practices, which the Intellectual
Property Code seeks to minimize.

 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 for
substitution as patentee, or at the option of the true inventor, cancel the patent, and award actual and other
damages in his favor if warranted by the circumstances.

 Any prior user, who, in good faith was using the invention or has undertaken serious
preparations to use the invention in his enterprise or 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 thereof as envisaged in
such preparations within the territory where the patent produces its effect.

 Elements of Patentable Inventions

 Under Section 21, 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. It may be, or
may relate to, a product, or process, or an improvement of any of the foregoing.

 Inventions may be either machines, manufactures, or compositions of matter.

A machine is "a concrete thing, consisting of parts or of certain devices and combinations of devices." 1.

Case: Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863)

A manufacture is "the production of articles for use from raw or prepared materials by giving to these
materials new forms, qualities, properties or combinations, whether by hand labor or by machinery." 2

Case: Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97 (quoting American Fruit Growers, Inc. v. Brogdex
Co., 283 U.S. 1, 11 (1931)
A composition of matter is "a composition of two or more substances or a composite article, whether it be the
result of chemical union, or of mechanical mixture, or whether it be a gas, fluid, powder, or solid." 3

Case: id. at 308, 206 USPQ at 197 (quoting Shell Development Co. v. Watson, 149 F. Supp. 279, 280, 113
USPQ 265, 266 (D.D.C. 1957), aff'd per curiam, 252 F.2d 861, 116 USPQ 428 (D.C. Cir. 1958).
1
Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863)
2
Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97 (quoting American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931)
3
Id. at 308, 206 USPQ at 197 (quoting Shell Development Co. v. Watson, 149 F. Supp. 279, 280, 113 USPQ 265, 266 (D.D.C. 1957),
aff'd per curiam, 252 F.2d 861, 116 USPQ 428 (D.C. Cir. 1958)).
  An invention that consists of a new alloy is an example of a product invention.

 An invention that consists of a new method or process of making a known or new alloy is a process
invention.

 'The corresponding patents are usually referred to as a "product patent for invention," and a "process
patent for invention," respectively.

 Protection for Patentable Inventions

 The protection that a patent for invention confers means that anyone who wishes to
exploit the invention must obtain the authorization of the person who received the patent-called "the
patentee" or "the owner of the patent"-to exploit the invention.

 If anyone exploits the patented invention without such authorization, he commits an

illegal act.

 One speaks about "protection" since what is involved is that the patentee is protected
against exploitation of the invention which he has not authorized. Such protection is limited in time. In
most countries, it is about 20 years.

 The rights, usually called "exclusive rights of exploitation", generally consist

of:

 In the case of product patents for invention, the right to make, use,
sell and import the product that includes the invention, and

 In the case of process patents for invention, the right to use the
process that includes the invention as well as the right to make, use, sell and import products which were
made by the process that includes the invention

Utility Models

One of these two other means or forms of protection consists in the registration, or the granting, of a patent
for a "utility model." The concept of utility models is known in the laws of a certain number of countries,
among them the People's Republic of China, the Federal Republic of Germany and Japan.

The expression "utility model" requires clarification. In essence, it is merely a name given to certain
inventions, namely-according to the laws of most countries which contain provisions on utility models-
inventions in the mechanical field. This is why the objects of utility models are sometimes devices or useful
objects.

Utility models differ from inventions for which patents for invention are available mainly in two respect first,
in the case of an invention called "utility model," the technological progress required is less than the
technological progress ("inventive step")

Case: Gerardo Samson, Jr. Vs. Felipe Tarroza, et al. , G.R. No. L-20354, July 28, 1969

Case: Ex Parte Case Jackson Appeal To the Director of Patents From Final Rejection of Application By
Principal Examiner Raymond M. Jackson, Applicant-Appellant, Appln. Serial No. Um-10473-A, June 15,
1988, Decision No. 91-9 (Pat), August 29, 1991

Conversion of Patent Applications or Applications for Utility Model

Registration

Section 110. 1 states that at any time before the grant or refusal of a patent, an applicant for a patent may
upon payment of the prescribed fee convert his application into an application for registration of a utility
model, which shall be accorded the filling date of the initial application. An application may be converted
only once.

Industrial Designs

Section 112 states that 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 to and can serve as pattern for an industrial product or handicraft. Under Section 113.1, only
industrial designs that are new or original shall benefit from protection under this Act.

Section 113.2 provides that industrial designs dictated essentially by technical or functional considerations to
obtain a technical result or those that are contrary to public order., health or morals shall not be protected.

The appearance of a claimed design must meet the condition of novelty in order to qualify for a design
patent. In other words, a design patent only protects the novel features of the design patented.

Industrial Designs

Industrial designs belong to the aesthetic field, but are at the same time intended to serve as patterns for the
manufacture of products of industry or handicraft. Generally speaking, an industrial design is the ornamental
or aesthetic aspect of a useful article. The ornamental aspect may consist of the shape and/or pattern and/or
color of the article. The ornamental or aesthetic aspect must appeal to the sense of sight. The article must be
reproducible by industrial means.

Independence of Patents

This principle is to be understood in its broadest sense. It means that the grant of a patent for invention in one
country for a given invention does not oblige any other member country to grant a patent for invention for
the same invention.

TRIPS AGREEMENT

National Treatment

The first and most basic general requirement of the TRIPS Agreement is the requirement for national
treatment. By virtue of that requirement, each Member of the WTO must treat the nationals of every other
Member as favorably as its own with respect to intellectual property-i.e., must not discriminate against
foreign nationals of Members.

Most-Favored-Nation Treatment

The requirement for most-favored-nation treatment is an innovation with the TRIPS Agreement. Drawn from
the field of international trade generally, this requirement goes farther than the requirement for national
treatment. It requires not only that each Member give other Members' nationals the same treatment as its
own, but that each Member not prefer any other Member's nationals, or those of any nonmember country,
over the nationals of any Member.

Exhaustion or First-Sale Doctrine

Article 6 of the TRIPS Agreement explicitly disclaims an intent to impose any particular requirements
regarding the issue of the exhaustion of intellectual property rights. As a result, Members of the WTO are
free to implement exhaustion of intellectual property rights as they please.

The term generally refers to doctrines that extinguish certain exclusive rights of the holder of intellectual
property with respect to a particular physical item embodying the intellectual property after the item has first
been sold under the holder's authority.

Patentable Subject Matter

Product and Process Patents

Article 27(1) says that, subject to the stated exceptions, patents must be available for both products and
processes in all fields of technology. This requirement implicitly repudiates a practice observed in a number
of developing countries, of providing only process patents in certain fields of technology, thereby
encouraging local inventors to develop other, non-infringing processes to make the same products.

Exclusive Rights

A product patentee must have the right to prevent others, without authorization, from making, using, offering
for sale, selling, or importing [the patented product] for these purposes.

A process patentee must have the right to prevent others, without authorization, from using the process and
from using, offering for sale, selling, or importing for these purposes at least the product obtained directly by
that process.

Compulsory Licensing

The provisions of the TRIPS Agreement regarding compulsory licensing are probably second in importance
to those specifying the scope of subject matter for which patents must be available.

Proof of Process Patent Infringement

The final major substantive requirement of the TRIPS Agreement in the field of patent law relates to
enforcement of process patents. Among the required exclusive rights of a process patent holder are the rights
to use the patented process to make products and to use, import and sell products made at least directly by
that process.

A process patent holder as such, however, does not have the right to control the making or distribution even
of identical products if made by another, non-infringing process.

Data Submission to Government

Paragraph 3 of Article 39 provides special protection for a certain kind of undisclosed information-that
submitted to government agencies to secure regulatory approval of pharmaceuticals and agricultural
chemicals. More specifically, it protects undisclosed test or other data, the origination of which involves
considerable effort and which is submitted as a condition of regulatory approval for pharmaceutical or
agricultural chemical products which utilize new chemical entities.
Major Concepts of the PCT
The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one application, "an international
application," in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and
Trademark Office), and have that application acknowledged as a regular national or regional filing in as
many Contracting States to the PCT as the applicant "designates" or "elects," that is, names, as countries or
regions in which patent protection is desired.

Requirements for Patentability

Section 21 states that 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. It may be, or may relate to, a
product, or process, or an improvement of any of the foregoing.

Novelty, Inventive Step and Industrial Application

Section 21 embodies the elements of patentability: novelty, inventive step or non-obviousness and industrial
applicability. The dispositive question is not whether the claimed device is an ‘invention’; rather, it is
whether the invention satisfies the standards of patentability.

A conception of the mind is not an invention until represented in some physical form, and unsuccessful
experiments or projects, abandoned by the inventor, are equally destitute of that character.

It is an essential requirement for the validity of a patent that the subject-matter display "invention," more
ingenuity than the work of a mechanic skilled in the art.

The applicant whose invention satisfies the requirements of

[1] novelty, [2] non-obviousness, and [3] utility, and who is [4] willing to reveal to the public the substance
of his discovery and the best mode of carrying out his invention, is granted the [5] right to exclude others
from making, using, or selling the invention throughout the country, for the statutory period.

Novelty

Under Section 23 of the Intellectual Property Code, an invention shall not be considered new if it forms part
of the prior art.

The repealed Patent Act followed the rule of relative novelty. The IP Code follows the rule of absolute
novelty.

Prior art shall consist of:

(i) everything which has been made available to the public anywhere in the world, before the filling
date or the priority date of the application claiming- the invention; and
(ii) (ii) 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

Non-Prejudicial Disclosure

Under Section 25, certain forms of disclosure cannot prejudice the patent applicant. These non-prejudicial
disclosures include:

() The disclosure of information contained in the application during the twelve (12) months preceding the
filing date or the priority date of the application shall not prejudice the applicant on the ground of lack of
novelty if such disclosure was made by:
() The inventor;

() A patent office and the information was contained (a) in another application filed by the inventor and
should not have been disclosed by the office, or (b) in an application filed without the knowledge or consent
of the inventor by a third party which obtained the information directly or indirectly from the inventor; or

() A third party which obtained the information directly or indirectly from the inventor.

Inventive Step

The expression "inventive step" conveys the idea that it is not enough that the claimed invention be new, that
is, different from what exists in the state of the art, but that this difference must have two characteristics: it
must be inventive, that is, the result of a creative idea and it mat be a step, that is, it must be noticeable.

The “inventive step” means that the difference between the claimed invention and the state of the art must be
the result of a creative idea. The notion of inventive step is explained by words to the effect that the
difference between the claimed invention and the state of the art must be "non-obvious".

Enablement

In addition to requiring a written description of the invention, § 112 requires that the specification contain
"the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the
same."

To satisfy the enablement requirement, the specification must enable the full scope of the claimed invention.

Specific and Substantial Utility

The enablement requirement is different from the utility requirement. The requirement is that some specific,
substantial, and credible use be set forth for the invention. On the other hand, the enablement requirement
must disclose how the invention can be carried out, i.e., how the invention can be used.

Case: Man-Made Bacteria: Diamond v. Chakrabarty, Supreme Court of The United States, 447 U.S. 303,
100 S. Ct. 2204, 65 L. Ed. 2d 144, June 16, 1980

Improvement Patents

Section 21 recognizes the patentability of improvement patents. It is well established that an improver can
not appropriate the basic patent of another and that the improver without a license is an infringer and may be
sued as such.

Unlicensed Improver

An improver who appropriates, without license, the basic patent of another, is an infringer and liable as such.

Unpatented Inventions as Part of Public Domain

It is true that 'the discoverer of a new and useful improvement is vested by law with an inchoate right to its
exclusive use, which he may perfect and make absolute by proceeding in the manner which the law requires'.
Failure to file a patent for an invention consigns it to the public domain.
Exclusions from Patentability

Section 22 excludes the following matter from patent protection:

() Discoveries, scientific theories and mathematical methods;

() Schemes, rules and methods of performing mental acts, playing games or doing business, and programs
for computers;

() Methods for treatment of the human or body by surgery or therapy and diagnostic methods practice on the
human or animal body. This provision shall not apply to products and composition for use in any of these
methods;

() Plant varieties or animal breeds or essentially biological process for the production of plants or animals.
This provision shall not apply to micro-organism and non-biological and micro-biological processes.
Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing
sui genesis protection of plant varieties and breeds and a system of community intellectual rights protection:

() Aesthetic creations; and

() Anything which is contrary to public order or morality.

The subject matter courts have found to be outside the four statutory categories of invention is limited to
abstract ideas, laws of nature and natural phenomena.

While this is easily stated, determining whether an applicant is seeking to patent an abstract idea, a law of
nature or a natural phenomenon has proven to be challenging. These three exclusions recognize that subject
matter that is not a practical application or use of an idea, a law of nature or a natural phenomenon is not
patentable.

An idea of itself is not patentable, but a new device by which it may be made practically useful is. 4 While a
scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure
created with the aid of knowledge of scientific truth may be.

Case: U.S. Supreme Court Decision in LabCorp. v. Metabolite

Laboratory Corporation of America Holdings, dba LabCorp v. Metabolite Laboratories, Inc., No. 04–607,
Supreme Court of the United States, On Writ of Certiorari to the United States Court of Appeals for The
Federal Circuit, June 22, 2006

Proving Anticipation

Anticipation by prior art can be found only when a reference discloses exactly what is claimed. A finding of
anticipation requires that the publication describe or disclose all of the elements of the claims, 5 arranged as in
the patented device, functioning in substantially same way to produce substantially same results. Stated
alternatively, in order that an invention may be anticipated by a description contained in a printed
publication, the latter must disclose the complete and operative invention in such full, clear, and exact terms
as to enable any person skilled in the art to which the invention relates, or is most nearly connected, to
practice the invention without the exercise of inventive skill of his own.
4
See, e.g., Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874)
5
C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 48 U.S.P.Q.2d (BNA) 1225 (Fed. Cir. 1998), cert. denied, 526
U.S. 1130, 119 S. Ct. 1804, 143 L. Ed. 2d 1008 (1999)
Evidence Required for Anticipation or Lack of Novelty

The facts establishing anticipation or lack of novelty of a method or device for which a patent has been
granted must be proven by clear and convincing evidence, proof frequently characterized as so sufficiently
clear, certain, and precise as to satisfy beyond reasonable doubt.

Computer Programs

Computer Programs are not patentable. They are protected instead as copyright works under Section 172.1
(n) of the IP Code.

Case: State Street Bank & Trust Co. V Signature Financial Group, Inc., United States Court of Appeals,
Federal Circuit,149 F.3d 1368, 47 U.S.P.Q.2d 1596, July 23, 1998.

Plant Varieties and Animal Breeds

Protection of Plant Varieties is governed by the Plant Variety Protection Act of 2002, Republic Act No.
2168.

Section 4 of the Act specifies the conditions for the grant of the plant variety protection:

The Certificate of Plant Variety Protection shall be granted for varieties that are:
()New;

Newness. — A variety shall be deemed new if the propagating or harvested material of the variety has not
been sold, offered for sale or otherwise disposed of to others, by or with the consent of the breeder, for
purposes of exploitation of the variety;
()In the Philippines for more than one (1) year before the date of filing of an application for plant variety
protection; or

()In other countries or territories in which the application has been filed, for more than four (4) years or, in
the case of vines or trees, more than six (6) years before the date of filing of an application for Plant Variety
Protection.
However, the requirement of novelty provided for in this Act shall not apply to varieties sold, offered for sale
or disposed of to others for a period of five (5) years before the approval of this Act: Provided, That
application for PVP shall be filed within one (1) year from the approval of this Act.

() Distinct;

Distinctness. — A variety shall be deemed distinct if it is clearly distinguishable from any commonly known
variety. The filing of an application for the granting of a plant variety protection or for the entering of a new
variety in an official register of variety in the Philippines or in any country, shall render the said variety a
matter of public knowledge from the date of the said application: Provided, That the application leads to the
granting of a Certificate of Plant Variety Protection or the entering of the said other variety in the official
register of variety as the case may be.

() Uniform; and

Uniformity. — The variety shall be deemed uniform if, subject to the variation that may be expected from
the particular features of its propagation, it is sufficiently uniform in its relevant characteristics.

() Stable.
Stability. — The variety shall be deemed stable if its relevant characteristics remain unchanged after repeated
propagation or, in the case of a particular cycle of propagation, at the end of each such cycle.

Under Section 36, in respect of the propagating materials, holders of a Certificate of Plant Variety Protection
shall have the right to authorize any of the following acts:
() Production or reproduction;
() Conditioning for the purpose of propagation;
() Offering for sale;
() Selling or other marketing;
() Exporting;
() Importing; and
() Stocking for any purpose mentioned above.

The holder may make his authorization subject to conditions and limitations.

Doctrine of Equivalents

Under Section 75.2 of the IP Code, for the purpose of determining the extent of protection confirmed by the
patent, due account shall be taken of elements which are equivalent to the elements expressed in the claims,
so that a claim shall be considered to cover not only an the elements as expressed therein, but also
equivalents.

Under the doctrine of equivalents, an accused product that differs from the claim, and thus does not literally
infringe, nonetheless infringes if its difference from that claim is insubstantial from the perspective of one of
ordinary skill in the relevant art.

The essence of the doctrine of equivalents is that one may not practice a fraud on a patent.   In determining
whether an accused device or composition infringes a valid patent, resort must be had in the first instance to
the words of the claim. If accused matter falls clearly within the claim, infringement is made out and that is
the end of it.

The doctrine of equivalents is founded on the theory that, if two devices do the same work in substantially
the same way and accomplish substantially the same result, they are the same, even though they differ in
name, form or shape.

Case: Pascual Godines vs. The Honorable Court of Appeals, Special Fourth Division and SV-Agro
Enterprises, Inc., G.R. No. 97343. September 13, 1993

Protection of Patent is measured by the Claims

The claims of a patent are what define the scope of an invention.

As such, claim validity must be determined on the basis of what is claimed since their purpose is to force a
patentee to insert in claims those limitations and relationships regarded to be in the invention.

While the language of a patent claim must be read in light of the specification and the file wrapper, the claim
alone is the measure of the invention.

Courts Cannot Expand the Claims

Where patent claim language is clear, it controls and may not be limited or distorted by resort to
specifications, title, or drawings to ascertain the invention. Courts may not add to, or detract from, the claims
matter not expressed or necessarily implied, or enlarge the patent beyond the scope of that which the inventor
claimed and the patent office allowed.

Determining Infringement of Claims

Determining whether a patent claim has been infringed requires a two-step analysis: First, the claim must be
properly construed to determine its scope and meaning. Second, the claim as properly construed must be
compared to the accused device or process. Claim construction is to be determined by the court. In
construing the claims, the court looks to the claims, the specification, the prosecution history, and, if
necessary, extrinsic evidence. Application of the properly construed claim to the accused device is a question
of fact.