INTELLECTUAL PROPERTY LAW

I. What is a patent?

A patent is a set of exclusive rights granted by a state to an inventor or his assignee for
a fixed period of time in exchange for a disclosure of an invention.

II. State the purposes and the ultimate goal of the patent system.

The ultimate goal of a patent system is to bring new designs and technologies into the
public domain through disclosure.

The three-fold purpose of patent law are:

1. Patent law seeks to foster and reward invention
2. It promotes disclosures of inventions to stimulate further invention and to permit the
public to practice the invention once the patent expires
3. The stringent requirements for patent protection seek to ensure that ideas in the
public domain remain there for the free use of the public.

III. What are the essential elements of a patentable invention. Explain each of the
elements.

The elements of patentability under Sec. 21 of RA 8293 are: (1) novelty; (2) inventive
step; and (3) industrial applicability

1. Novelty – under Section 23, in relation to Section 24, of RA 8293, is an invention

that do not form part of a prior art.

2. Inventive Step – under Section 26 of RA 8293, it connotes that the invention

should not be obvious to a person skilled in art.

A person skilled in art is: presumed to be an ordinary practitioner aware of what

was common general knowledge in the art at the relevant date; 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; and presumed to have
had at his disposal the normal means and capacity for routine work and
experimentation.

3. Industrial applicability – under Section 27 of RA 8293, an invention that can be

produced and used in any industry. An invent that has to have some practical
application for it to be truly useful.

IV. What is meant by prior art?

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 Prior art, under Section 24, consists of:

1. Everything that is already available to the public not only in the country but anywhere
in the world. the requirement that the thing is already in the public domain must be
present before the filing date or the priority date of the application claiming the
invention.

2. Those that are actually subject of application for patent registration. The whole
contents of an application for a patent, utility model, or industrial design registration
that are published in accordance with the law, filed or effective in the Philippines,
with a filing or priority date that is earlier than the filing or priority date of the
application are considered prior art.

V. What are non-patentable inventions?

The following, under Section 22 of RA 8293, shall be excluded from patent protection:

1. Discoveries, scientific theories, and mathematical methods. in 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 know 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 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. Method for treatment of the human or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body;

4. Plant varieties or animal breeds or essentially biological process for the production of
plants or animals, but does not apply to microorganisms and non-biological and
microbiological processes.

5. Aesthetic creations; and

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

VI. Dr. Herbert, a scientist, published an article in a medical journal his research work
on a potential cure for Covid-19 virus. He disclosed his entire findings, including
the formulation for the potential drug. After the publication of Dr. Herbert’s article,
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 Z Pharmaceuticals developed the drug in its laboratory and complying with
including all protocols for clinical testings. A peer review acclaimed the drug
produced by Z Pharmaceuticals as an effective drug against the virus.

a. What are the rights of Dr. Herbert?

Dr. Herbert has the right to demand compensation or credit from Z

Pharmaceuticals. Intellectual property is defined as the term used to describe
intangible assets resulting from the creative work of an individual or organization.
It also refers to creations of the mind. In the situation provided, the formulation for
the potential drug as well as the research was conducted by Dr. Herbert and as a
result of his work’s publication, Z Pharmaceuticals, following the formulation, was
able to produce and develop an effective drug against COVID-19. Therefore, as
the formulation was Dr. Herbert’s intellectual property, he is entitled to
compensation or credit for the use of his ideas.

b. What are the rights of Z Pharmaceuticals?

Z Pharmaceuticals has the right to apply for a patent of the drug. There
are 3 elements of patentability: (1) novelty; (2) inventive step; and (3) industrial
applicability. In the situation provided, although the formulation was the original
idea of Dr. Herbert, his invention however lacks the necessary elements for
patentability. On the other hand, Z Pharmaceuticals was able to meet all the
requisites. First, the formulation is new. Second, the invention is not obvious to a
person skilled in the art as it was a formulation only thought of by Dr. Herbert and
the formulation came to the knowledge of Z Pharmaceuticals by the act of the Dr.
Herbert of publishing his work. Lastly, the invention is industrially applicable as Z
pharmaceutical was able to produce it and use it in its industry.

VII. If X is a physician by profession, will he be a person skilled in the art when the
supposed invention relates to a lithnium battery? Explain.

No because X is a physician by profession which a profession that do not relate to

lithnium batteries.

A person skilled in the art is one to be an ordinary practitioner aware of common general
knowledge in the art at the relevant date; 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; and is presumed also to have had at his disposal the normal
means and capacity for routine work and experimentation.

In the case at hand, X being a physician by profession cannot be said to have, in relation
to lithnium batteries, common general knowledge of the battery; have knowledge of all
references that is sufficiently related to the battery; or presumed to have at his disposal

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 the means and capacity for routine work and experimentation of the battery. X, thus,
cannot be considered a person skilled in the are of lithnium battery.

VIII. Explain the first-to-file rule.

First-to-File Rule, under Section 29 of IPL, provides that if two or more persons have
made the invention separately and independently, the right to 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 earliest
priority date.

Naturally, for this rule to apply, there must at least be two persons who have made the
invention separately and independently of each other. Otherwise, joint ownership under
Section 28 may exist or the situation may call for the application of Section 67.

IX. Differentiate filing date from priority date.

Filing Date is accorded when: (1) an express or implicit indication that a Philippine patent
is sough; (2) information identifying the applicant; and (3) description of the invention
and one or more claims in Filipino or English. If any of these elements is not submitted,
the application is considered withdraw. If the date of filling cannot be accorded, the
applicant shall be given an opportunity to correct deficiencies. If the application does not
contain all the elements, the filing date should be that date when all elements are
received. If the deficiencies are not remedied within the prescribed time, the application
shall be considered withdrawn.

Priority Date is one where an application for patent for the same invention that was filed
in another counter. In case of two or more applications for patent over the same
invention, an application with a latter local filing date may still be preferred provided that
it has an earlier foreign application in compliance with Sec 31 of the law. The right of
priority given to a patent applicant is only relevant when there are two or more conflicting
patent applications on the same invention. Because a right of priority does not
automatically grant letters patent to an applicant, possession of a right of priority does
not confer any property rights on the applicant in the absence of an actual patent.

X. Richard is a Canadian citizen who applied for a patent to his invention in his home
country, Canada, on April 15, 2020. Unknown to Richard, Ricky, a Filipino
inventor also had a similar or identical invention as Richard’s, and had already
filed his patent application with the IPOPH on May 15, 2020. Through, a Filipino
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 representative, Richard filed his patent application before the IPOPH on
September 21, 2020. Who between Richard and Ricky shall have the right to the
patent?

Richard would have the right to the patent.

Priority date comes into play when there is an application for patent for the same
invention that was filed in another country. Following the First-to-File rule, in case of two
or more applications for patent over the same invention, an application with a latter local
filing date may still be the preferred application over a previous local filing date provided
that it has an earlier foreign application assuming of course that requirements of Section
31 are all complied with.

In the case at hand, Richard already filed a patent application in Canada on April 15,
2020, even though he had a later date in filing in the Philippines, on September 21,
2020. He still has the priority date executed. Therefore, Richard shall have the right to
the patent.

XI. Liza work with P&G, a manufacturing company, as a product developer of the
company’s Research and Development Unit. In the course of her employment she
was able to develop a new product for the company. If such new product is
patentable, determine who shall have the right to the patent.

The employer shall have the right to the patent because the invention was made
pursuant to a commission.

When an invention was made by an employee in the course of his employment contract,
the patent shall belong to:

a. The employee, if the inventive activity is not a part of his regular duties even if the
employee uses the time, facilities and materials of the employer.
b. The employer, if the invention is the result of the performance of his regularly
assigned duties, unless there is an agreement, express or implied, to the contrary.

In this case, since Liza developed a new product in course of her employment as
product developer of P&G, then the patent belong to the P&G, absent any agreement,
express or implied, that Liza shall have the patent.

XII. Summarize the procedures related to the grant of a patent.

Summary of grant of patent procedure:

1. Filing of application
2. Accordance of filing date
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 3. Formality examination
4. Classification and Search
5. Publication of the application
6. Substantive examination
7. Grant of patent
8. Publication upon grant
9. Issuance of certificate

XIII. What is unity of invention?

Unity of invention requires the application to relate to one invention only or to a group of
inventions forming a single general inventive step.

If several independent inventions which do not form a single general inventive concept
are claimed in one application, the Director may require that the application be restricted
to a single invention. A later application filed for an invention divided out shall be
considered as having been filed on the same day as the first application. Provided, that
the latter application is filed within four months after the requirement to divide becomes
final, or within such additional time, not exceeding four months, as may be granted.
Provided, further that each divisional application shall not go beyond the disclosure in
the initial application.

The fact that a patent has been granted or an application that did not comply with the
requirement of unity of invention shall not be a ground to cancel the patent.

XIV. What is the importance of conducting a search prior to the filing of an application
for a patent to an invention?

Conduct of search is important because:

1. It mentions documents available at the Office at the time of drawing up the
Intellectual Property Search Report; taken into consideration the assessment of
novelty and inventive step of the invention
2. It distinguishes between cited documents published before the date of priority
claimed, between such date of priority and date of filing, and on or after the date of
filing
3. It contains the classification of the subject matter of the application in accordance
with the International Patent Classification
4. It include documents cited in a search established in the corresponding foreign
application

XV. After the filing of his application for a patent with the IPOPH, Alex, found out that
the information contained in his application was disclosed by a patent officer to
another person, and the latter immediately proceeded to make the same invention.
Will Alex’s application be prejudiced by such disclosure on the ground of lack of
novelty?

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 No, Alex’s application will not be prejudiced by such disclosure. The element of novelty
requires a thing as not yet known to the public besides the inventor. In this case, the
Alex’s invention is not yet known to the public besides the alleged another person who
made the same invention.

XVI. Is a recipe for a menu patentable?

No, a recipe for menu is not patentable because it is not a technical solution to a
problem. Section 21 of Law on Patent requires an invention to be a technical solution
which is new, involves an inventive step, and industrially applicable.

XVII. Suppose Alex’s application for a patent has already been published in the IPO
Gazette, what are the rights that are already conferred to him?

Alex, under Section 46 of IPL, shall have all the rights of patentee under Section 76
against any person who exercised any of the rights conferred under Section 71 of the
IPL in relation to the invention claimed in the published patent application, as if a patent
had been granted for that invention.

XVIII. How do you know that a product is patented?

1. If there are effective markings indicative of patent in the product’s name or logo.
2. Upon checking before the Intellectual Property Office of the Philippines

XIX. What are the grounds for the cancellation of a patent?

The following, under Section 61 of RA 8293, are the grounds for cancellation of patent:
1. The invention is not new or not patentable
2. 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
3. The patent is contrary to public order or morality.

Where the grounds for cancellation relate to some of the claims or parts of the claim,
cancellation may be affected to such extent only.

XX. How is infringement of patent committed?

Patent Infringement is committed by the making, using, offering for sale, selling or
importing a patented product; a product obtained directly or indirectly from a patented
process; or the use of a patented process without the authorization of the patentee.

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  The End   

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