INTELLECTUAL PROPERTY LAW
CHAPTER I:
CHAPTER II:
CHAPTER III:
LAW ON PATENTS:
PATENTS
 Latin word “patere” - to lay open (i.e., make
available for public inspection)
 A set of exclusive rights granted by a state on an
inventor of his assignee for a fixed period of time in
exchange for a disclosure of an invention.
 A statutory grant which confers to an inventor or his
legal successor, in return for the disclosure of the
invention to the public, the right for a limited period
of time to exclude others from making, using, selling
or importing the invention within the territory of the
country that grants the patent.
 LETTERS PATENT- originally denoted royal
decrees granting exclusive rights to certain
individuals or businesses.
Three-fold Purpose:
1. Patent law seeks to foster and reward invention;
2. It promotes disclosure of inventions to stimulate
further invention and to permit the public to practice
the invention once the patent expires; and
3. The stringent requirements for patent protection
seek to ensure that ides in the public domain remain
there for the free use of the public
Ultimate Goal:
 Bring new designs and technologies into the public
domain through disclosure. (Pearl & Dean vs. SM GR#
148222, August 15, 2003).
PATENTABLE AND NON-PATENTABLE INVENTIONS
1.NON- PATENTABLE INVENTIONS (Sec. 22, IPC):
 It does not comply with the requirements under Sec.
21 of IPC; hence, exclusion of patentable inventions;
PAD‐SCAD
1. Discoveries, scientific theories and mathematical
methods;
2. In the case of Drugs and medicines, mere
discovery of a new form or new property of a
known substance which does not result in the
enhancement of the efficacy of that substance
3. Schemes, rules and methods of performing
mental acts, playing games or doing business,
and programs for computers
4. Methods for treatment of the human or Animal
body by surgery or therapy and diagnostic
methods
5. 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
o This shall not preclude Congress to consider
the enactment of a law providing sui generis
of plant varieties and animal breeds and a
system of community intellectual rights
protection
6. Aesthetic creations
7. Anything which is contrary to public order or
morality. (Sec. 22, IPC as amended by R.A.
9502)
Computer Programs:
GR: Computer programs are not patentable but
are copyrightable.
XPN: They can be patentable if they are part of
a process (e.g. business process with a step
involving the use of a computer program).
2. PATENTABLE INVENTIONS (Sec 21,IPC):
 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.
Conditions/Elements of Patentability:
A. NOVELTY:
 An invention shall not be considered new if it
forms part of a prior art. (Sec. 23, IPC)
Prior Art:
o 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
o The whole contents of a published
application, filed or effective in the
Philippines, with a filing or priority date
that is earlier than the filing or priority
date of the application.
Filling Date:
o Is accorded only when all the
requirements provided under Sec. 40
are present. (Sec41):
1. Express or implicit indication that a
Philippine patent is sought;
2. Information identifying the applicant;
3. Description of the invention and one
(1) or more claims in Filipino or
English.
o If any of these elements is not submitted
within the period set, the application
shall be considered withdrawn;
Elena Marie Vicente-Ferrer, CSU College of Law 1
 o If the date of filing cannot be accorded,
the applicant shall be given an
opportunity to correct the deficiencies in
accordance with the implementing
Regulations.
o If the application does not contain all the
elements, the filing date should be the
date when all the elements are received.
o If the deficiencies are not remedied
within the prescribed time limit, the
application shall be considered
withdrawn.
o Disclosures that will not prejudice the
application, as long as the disclosure
was:
A. Made during the twelve (12) months
preceding the filing date or the priority
date of the application; and
B. The disclosure was made by any of the
following person:
1. Inventor
2. A patent office and the information
was contained:

Priority Date (Sec 31): a. In another application filed by

the inventor and should have
o Right of Priority- an application for not have been disclosed by the
patent filed by any person who has office, or
previously applied for the same
invention in another country which by b. In an application filed without
treaty, convention, or law affords similar the knowledge or consent of the
privileges of Filipino citizens, shall be inventor by a third party which
considered as filed as of the date of obtained the information directly
filing the foreign application. or indirectly from the inventor;

Provided: 3. A third party - which obtained the

a) The local application expressly information directly or indirectly from
claims priority; the inventor. (Sec. 25, IPC)
b) It is filed within twelve (12) months
from the date the earliest foreign o Any disclosure not within the exceptions
application was filed; specified under Sec. 25 shall be
c) A certified copy of the foreign
considered prejudicial taking into
application together with an English
translation is filed within six (6) consideration the meaning of a “third
months from the date of filing in the party”.
Philippines.
o A disclosure that is prejudicial shall have
the same adverse effect on novelty
o Priority date comes into play when there whether made before or after a non-
is an application for patent for the same
prejudicial disclosure
invention that was filed in another
country.
The burden of proving want of novelty is on him who
o Following the “First-to-file” rule, in case
avers it and the burden is a heavy one which is met only
of two or more applications for patent
by clear and satisfactory proof which overcomes every
over the same invention, an application
reasonable doubt. (Manzano v. CA, G.R. No. 113388.
with a latter local filling date may still be
Sept. 5, 1997)
the preferred application over a previous
local filing date provided that it has an
B. INVENTIVE STEP:
earlier foreign application assuming of
course that the requirements of Sec. 31
 GR: An invention involves an inventive step if,
are all complied with.
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
Available to the Public:
the invention. (Sec. 26, IPC)
o To be “made available to the public”
XPN: In the case of drugs and medicines, there
means at least one member of the
is no inventive step if:
public has been able to access
a. the invention results from the mere
knowledge of the invention without any
discovery of a new form
restriction on passing that knowledge on
b. new property of a known substance which
to others.
does not result in the enhancement of the
known efficacy of that substance,
GR: When a work has already been made
c. new use for a known substance
available to the public, it shall be non‐patentable
d. mere use of a known process
for absence of novelty.
unless such known product that employs at
least one new reactant (Sec. 26.2, as
XPN: Non- Prejudicial Disclosure:
amended by R.A. 9502)

Elena Marie Vicente-Ferrer, CSU College of Law 2


 Inventive step thus connotes that the invention
should not be obvious not to the general public
but to a “person skilled in the art” for it to be
patented.
Person of Ordinary Skill:
A person who is presumed to:
1. Be an ordinary practitioner aware of what
was common general knowledge in the art
at the relevant date.
2. 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.
3. Have had at his disposal the normal means
and capacity for routine work and
experimentation. (Rules and Regulations on
Inventions, Rule 207)
Graham Factors
 Factor a court will look at when determining
obviousness and non-obviousness in the US
(Graham vs. John Deere Co, et al)
The US Supreme Court held that the
OBVIOUSNESS should be determined by
looking at:
1. The scope and content of the prior art
2. The level of ordinary skill in the art
3. The differences between the claimed
invention and the prior art
4. Objective evidence of non-obviousness
Test of Non‐Obviousness:
 If any person possessing ordinary skill in the art
was able to draw the inferences and he
constructs that the supposed inventor drew from
prior art, then the latter did not really invent.
Factors that show “objective evidence of non-
obviousness:
RIGHT TO PATENT:
1. Commercial success
2. Long-felt but unsolved needs; and
3. Failure of others
C. INDUSTRIAL APPLICABILITY:
 An invention that can be produced and used in
any industry, shall be industrially applicable
(Sec. 27, IPC).
 An invention will be useless if it will be forever
confined in the sphere of theories and principles.
It has to be some practical application for it to be
really useful.
 Other Forms Of Patentable Inventions
1. Industrial design – 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. (Sec. 112, IPC)
o Note: Generally speaking, an industrial
design is the ornamental or aesthetic
aspect of a useful article. (Vicente
Amador, Intellectual Property
Fundamentals, 2007)
2. Integrated circuit – A product, in its final
form, or an intermediate form, in which the
elements, at least one of which is an active
elements and some of all of the
interconnections are integrally formed in and
or on a piece of material, and in which is
intended to perform an electronic function.
3. Layout design/topography – The three
dimensional disposition, however
expressed, of the elements, at least one of
which is an active element, and of some or
all of the interconnections of an integrated
circuit, or such a three‐dimensional
disposition prepared for an integrated circuit
intended for manufacture. Registration is
valid for 10 years without renewal counted
from date of commencement of protection.
4. Utility model – A name given to inventions in
the mechanical field
An Invention Qualify as a Utility Model:
 If it is new and industrially applicable. A model
of implement or tools of any industrial product
even if not possessed of the quality of invention
but which is of practical utility. (Sec. 109.1, IPC)
Term of a Utility Model:
 7 years from date of filing of the application
(Sec. 109.3, IPC).
A. Ownership of Patent (Sec 28):
 Belongs to the inventor; heirs or assigns
 Maybe subject of joint-ownership as when two
or more persons have jointly made an invention
B. First-to-File Rule (Sec. 29):
 2 or more persons invented separately and
independently of each other – To the person
who filed an application;
 2 or more applications are filed – the applicant
who has the earliest filing date or, the earliest
priority date. First to file rule. (Sec. 29, IPC)
Elena Marie Vicente-Ferrer, CSU College of Law 3
C. Inventions Pursuant to Commission or
Employment:
 GR: In case where invention is made pursuant
to a commission, the person who commissions
the work shall be the owner of the patent.
XPN: There was an agreement to the contrary.
 When an invention is made by an employee in
the course of his contract, the patent shall
belong to:
1. The EMPLOYEE, if the inventive is not a
part of his regular duties even if the
employees uses the time, facilities and
materials of the employer.
2. The EMPLOYER, if the invention is the
result of the performance of his regular-
assigned duties, unless there is an
agreement, express or implied, to the
contrary.
D. Right of Priority:
(Discussed under Novelty)
 If in case here is an application filed in the
Philippines and another filed in another country,
and the Philippine application was filed earlier
than the application, it is still possible that the
foreign application will be granted by virtue of
this Right of Priority as long as all the requisites
are complied with.
Q: Cheche invented a device that can convert
rainwater into automobile fuel. She asked
Macon, a lawyer, to assist in getting her
invention patented. Macon suggested that they
form a corporation with other friends and have
the corporation apply for the patent, 80% of the
shares of stock thereof to be subscribed by
Cheche and 5% by Macon. The corporation was
formed and the patent application was filed.
However, Cheche died 3 months later of a heart
attack. Franco, the estranged husband of
Cheche, contested the application of the
corporation and filed his own patent application
as the sole surviving heir of Cheche. Decide the
issue with reasons.
A: The estranged husband of Cheche cannot
successfully contest the application. The right
over inventions accrue from the moment of
creation and as a right it can lawfully be
assigned. Once the title thereto is vested in the
transferee, the latter has the right to apply for
its registration. The estranged husband of
Cheche, if not disqualified to inherit, merely
would succeed to the interest of Cheche. (1990
Bar Question)
APPLICATION OF A PATENT:
WHO:
 Any person who is a national or who is domiciled
or has a real and effective industrial
establishment in a country which is a party to
any convention, treaty or agreement relating to
intellectual property rights or the repression of
unfair competition, to which the Philippines is
also a party, or extends reciprocal rights to
nationals of the Philippines by law. (Sec. 3, IPC)
The procedure for the grant of patent may be
summarized as follows:
1. Filing of the application
2. Accordance of the filing date
3. Formality examination
4. Classification and Search
5. Publication of application
6. Substantive examination
7. Grant of Patent
8. Publication upon grant
9. Issuance of certificate (Salao, Essentials of
Intellectual Property Law: a Guidebook on
Republic Act No. 8293 and Related Laws.,
2008)
The patent application shall be in Filipino or English and
shall contain the following:
1. A request for the grant of a patent;
 No patent may be granted unless application
identifies the inventor. If the applicant is not the
inventor, the Office may require submitting said
authority. (Sec. 32)
 Request shall contain a petition for the grant of
the patent, the name and other data of the
applicant, the inventor and the agent and the
title of the invention (Sec. 34)
2. A description of the invention;
 The application shall disclose the invention in a
manner sufficiently clear and complete for it to
be carried out by a person skilled in the art.
3. Drawings necessary for the understanding of the
invention;
4. One or more claims;
 CLAIMS- Defines the matter for which protection
is sought. Each claim shall be clear and concise,
and shall be supported by the description.
Whenever appropriate the claims shall contain:
a. A statement indicating the designation of the
subject matter of the invention and those
technical features which are necessary for
the definition of the climes subject matter but
which, in combination, are part of the prior
art;
b. A characterizing portion preceded by the
expression “characterized in that” or
“characterized by”- stating the technical
features which, in combination with the
Elena Marie Vicente-Ferrer, CSU College of Law 4
 features stated in sub-paragraph (a), it is
desired to protect;
c. If the application contains drawings, the
technical features mentioned in the claims
shall preferably, if the intelligibility of the
claim can thereby be increased, be followed
reference signs relating to these features
and placed between parentheses. These
reference signs shall not be construed as
limiting the claim.

5. An abstract

 A concise summary of the disclosure of the

invention as contained in the description claims
and merely serves as technical information.

Preferably not more than 150 words.

PROHIBITED MATTER:

The application shall not contain:

1. A statement or other matter contrary to “public

order” or morality;
2. Statement disparaging the products or
processes of any

Elena Marie Vicente-Ferrer, CSU College of Law 5