vision statement: “an intellectual property-conscious philippines in a demystified,...

Vision Statement:

“An Intellectual Property-conscious Philippines in a Demystified, Development-oriented, and Democratized IP System by

2020” 1

“BASIC REQUIREMENTS OF PATENTABLE INVENTION”

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CHAMLETTE D. GARCIA, R.M.E.CHAMLETTE D. GARCIA, R.M.E.INTELLECTUAL PROPERTY RIGHTS SPECIALIST IIIINTELLECTUAL PROPERTY RIGHTS SPECIALIST III

Bureau of PatentsBureau of Patents

• A temporary monopoly granted to an inventor by the government in return for disclosing an invention. • The exclusive right to exploit the invention for 20 years from the filing date,i.e. to make, use sell or import an invention.

PATENTPATENT

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A NEW TECHNICAL SOLUTION TO A PROBLEM IN ANY FIELD OF HUMAN ACTIVITY

NEW or NOVEL(NOT PREVIOUSLYPUBLISHED OR DISCLOSED in any form, anywhere in the world)

INVENTIVE STEP(Not obvious to a person

skilled the art)

PRACTICAL USE IN THE INDUSTRY (Real Life Benefit)

Statutory Classes of Inventions: Useful Machine

Improvement of any of the foregoing

Process

Product

Microorganism Non-biological and microbiological processes

Non-Patentable Inventions: 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 animal body by surgery or therapy and diagnostic methods practiced on the human or animal body.

Articles or processes that operate contrary to established physical laws.

Ex. PERPETUAL MOTION MACHINE

Plant varieties or animal breeds or essentially biological process for the production of plants or animals.

Anything which is contrary to public order or morality.

Aesthetic creations.

3 BASIC REQUIREMENTS OF 3 BASIC REQUIREMENTS OF PATENTABLE INVENTIONPATENTABLE INVENTION

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NOVELTY - NEWNESS

INVENTIVE STEP – INVENTIVENESS/ NOT OBVIOUS

INDUSTRIAL APPLICABILITY - USAGE

NEW (NOVEL)NEW (NOVEL)

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Section 21 of R.A. 8293Section 21 of R.A. 8293RequiresRequires that an invention be: that an invention be:

(Sec. 23, R.A.8293)Sec. 23, R.A.8293)

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

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TEST OF TEST OF NOVELTYNOVELTY

everything made available to the public by means of:

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PRIOR ART

What is a “prior art”?What is a “prior art”?

DISCLOSURES considered as PRIOR ART

2007 2008 2009 2010 2011 20122006

Everything made available to the public before the date of filing

Filing date 10/27/2010

1 year grace period(non-prejudicial

disclosure)11

- - If you publish yourIf you publish your inventions in a journal, inventions in a journal, newspaper, library, internet or demonstrate, newspaper, library, internet or demonstrate, sell or discuss your invention in publicsell or discuss your invention in public before you file a patent application,before you file a patent application,

you cannot get a patent for you cannot get a patent for lacking novelty.lacking novelty.

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GRACE PERIOD or NON GRACE PERIOD or NON PREJUDICIAL PREJUDICIAL DISCLOSUREDISCLOSURE

- - If you have already disclosed or published If you have already disclosed or published youryour inventions in a journal, demonstrate, sell inventions in a journal, demonstrate, sell or discuss your invention in public, you can still or discuss your invention in public, you can still file a patent within file a patent within One (1)One (1) year from the date year from the date of disclosure or publication. of disclosure or publication.

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NON-PREJUDICIAL NON-PREJUDICIAL DISCLOSUREDISCLOSURE

A third party and the information is obtained directly or indirectly from the inventor

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A disclosure during the 12 months period prior to the filing date or priority date, and the disclosure was made by:

The inventor

A foreign Patent Office and the information was published by mistake

Why do we examine for Why do we examine for novelty?novelty?

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Is it logical to grant a patent for something which is already known?

An application

filed yesterday

A light bulb as it has

been known and used

What does “new” What does “new” mean?mean?

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KNOWN INVENTIONPRIOR ARTPRIOR ART

PATENT APPLICATION


PATENT APPLICATION

What does “new” What does “new” mean?mean?

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NEW APPLICATIONNEW APPLICATION

Prior Art

Application

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Novelty

X

GENERIC DISCLOSURES

1. metal

2. Aluminum

3. Car-jack

1. Aluminum

2. metal

3. supporting

means

4. 50 deg.C 4. 25-75 deg.C

SPECIFIC DISCLOSURES ARE NOVEL OVER GENERIC DISCLOSURES!

EQUIVALENTEQUIVALENTSS

A watering can made of zinc

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A watering can made of aluminum

If something is equivalent to what is claimed,it clearly is not the same thing. To employ an equivalent to what is disclosed would, be a matter of obviousness, not a question of novelty.

NOVEL

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INVENTIVE STEP

Section 21 of R.A. 8293Section 21 of R.A. 8293RequiresRequires that an invention be: that an invention be:

TEST OF TEST OF INVENTIVE STEPINVENTIVE STEP

An invention involves an inventive step, if having regard to prior art

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it is not obvious to a person skilled in the art.

(Sec. 26, R.A.8293)

Does not go beyond the normal progress of technology

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Follows plainly or logically from the prior art

Does not involve the exercise of any skill or ability beyond that to be expected of a person skilled in the art

OBVIOUSOBVIOUS

The term “obvious” is used as equivalent to the expression “lacking an inventive step”

Fictional person

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Aware of common general knowledge in specific art

Has access to everything disclosed as the state of the art

Can observe developments in related technical field

PERSON SKILLED IN THE ARTEUROPEAN PATENT ACADEMY

with no inventive ability

Developed in order to have a decision making procedure more objective in view of the risk that the invention (after examining the application) may appear simple, trivial and obvious.

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Problem-solution approach

DETERMINATION OFDETERMINATION OF INVENTIVE STEPINVENTIVE STEP

Determining the closest prior art;

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Establishing the technical problem to be solved by the invention with respect to the prior art;

Deciding whether invention is obvious

THREE MAIN STAGESTHREE MAIN STAGES(PROBLEM-SOLUTION APPROACH(PROBLEM-SOLUTION APPROACH

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Deciding whether invention is obvious

THREE MAIN STAGESTHREE MAIN STAGES(PROBLEM-SOLUTION APPROACH(PROBLEM-SOLUTION APPROACH

• Making the decision involves answering the question:

What would a person skilled in the art do, when faced with that objective technical problem and being aware of the state-of-the-art or prior art?

HYDRAULIC RAMHYDRAULIC RAM

APPLICATIONPRIOR ART

90º LONG RADIUS ELBOW

Examples of Test for INVENTIVE STEPExamples of Test for INVENTIVE STEP

Obvious ba?Obvious ba?28

Problem: The ear-like handles of coffee cups areoften quite slippery. You can therefore easily drop the cup. The result can be

a stained carpet, table cloth, wooden floor… Such coffee stains are usually very difficult or impossible to remove

completely.

Coffee Cup

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Claim: Coffee cup with an ear-like handle characterized in that the handle

is made of rubber.

Solution: Rubber is used as material for the handle. This increases the friction between the handle and the fingers of the user.

EXAMPLEEXAMPLE

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COFFEE CUP WITH EAR-SHAPED HANDLE

PRIOR ARTS

SAUCE PAN WITH EAR-LIKE RUBBER HANDLES THAT REDUCES ITS TEMP.

THERMOS BOTTLE WITH A RUBBER-COVERED HANDLE

Obvious ba?Obvious ba?

SUB-TESTS IN EVALUATINGSUB-TESTS IN EVALUATING INVENTIVE STEPINVENTIVE STEP

1.) Aggregation or collocation

NEGATIVE POINTERSNEGATIVE POINTERS

Example: machine for producing sausages consists of a known mincing machine and a known filling machine disposed end-to-end (independent to each other)



2.) A choice of size, form or proportion

Example: The claimed invention relates to a process for carrying out a known reaction and is claimed by a specified rate flow of an inert gas. The prescribed rates are merely those which would necessarily be arrived at by a person skilled in the art.



3.) An exchange of material (analogous substitution)

Example: an electric cable comprises a polyethylene sheath bonded to a metallic shield by an adhesive. The claimed invention lies in the use of a particularly newly developed adhesive known to be suitable for polymer-metal bonding.



4.) Use of well-known material

Example: A washing composition containing a detergent a known compound having the known property of lowering the surface tension of water, this property being known to be an essential one for detergents.



5.) Analogous use – application of known technique

Example: A washing composition containing a detergent with a known compound having the known property of lowering the surface tension of water, this property being known to be an essential one for detergents.



6. ) Use of well-known technical equivalents

Example: The claimed invention relates to a pump-motor combination which differs from a known pump-motor combination solely in that the motor is hydraulic instead of an electric motor.


7. ) Filling a gap in the prior art


Example: The claimed invention relates to building structure made from aluminum. A prior document discloses the same structure and says that it is of lightweight material but fails to mention the use of aluminum. Aluminum is a lightweight material that is well known in the art to be useful as a building material.

OBVIOUS CREATIONSOBVIOUS CREATIONS

THE CREATOR IS A BEER DRINKER WHO ALWAYS FIND IT HARD TO OPEN A BOTTLE OF LIQUOR DURING DRINKING SESSIONS.


NEXT CREATION WAS CONCEIVED BY AN OFFICE WORKER WHO ALWAYS FIND IT HARD TO CARRY A SAUCER OR BISCUIT DISPENSER DURING COFFEE BREAK.


NEXT CREATION WAS CONCEIVED PROBABLY BY A MAN WHO WAS VICTIMIZED BY THIEVES.


NEXT CREATION WAS CONCEIVED BY A COMPANY TO PROTECT THEIR HEADPHONES OR THEIR CUSTOMER.


NEXT CREATION IS AN ECONOMICAL KITCHEN UTENSILS INTENDED TO BE USED BY PEOPLE ON-THE-GO


NEXT CREATION IS FOR PIZZA LOVERS.


NEXT CREATION IS FOR THOSE WHO ARE INTO WEIGHT LOSS OR DIETING.


NEXT CREATION IS FOR THOSE WHO LOVES TO LISTEN TO MUSIC WHILE IN THE COMFORT ROOM.

INDUSTRIAL APPLICABILITYINDUSTRIAL APPLICABILITY

An invention that can be produced and used in any industry shall be industrially applicable.

(Sec. 27 R.A. 8293)

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““PATENT SYSTEM ADDS FUEL PATENT SYSTEM ADDS FUEL OF INTEREST TO THE FIRE OF OF INTEREST TO THE FIRE OF

GENIUS”GENIUS”

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- ABRAHAM LINCOLN

SALAMAT PO!SALAMAT PO!

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