what is a patent? a patent is a statutory grant, by government, which confers to an inventor or his...

What is a patent?What is a patent?

A patent is a statutory grant, by A patent is a statutory grant, by government, which confers to an inventor government, which confers to an inventor or his legal successor, in return for the or his legal successor, in return for the disclosure of the invention to the public, disclosure of the invention to the public, the right for a limited period of time to the right for a limited period of time to exclude others from making, using, selling exclude others from making, using, selling or importing the invention within the or importing the invention within the territory of the country that grants the territory of the country that grants the patent.patent.

The Patent LawThe Patent Law

-- the incentive functionthe incentive function

-- a source of technical informationa source of technical information

-- enhances the transfer of enhances the transfer of technologytechnology

The functions of the patent The functions of the patent systemsystem

TOPICS FOR DISCUSSIONTOPICS FOR DISCUSSION

A.A. Patentable Subject matterPatentable Subject matter

B.B. Conditions of PatentabilityConditions of Patentability

C.C. Patent application and Patent application and application procedureapplication procedure

D.D. Rights of PatenteesRights of Patentees

E.E. Infringement of PatentsInfringement of Patents

Patentable Subject matterPatentable Subject matter

• Sections 21. – Patentable InventionsSections 21. – Patentable Inventions

- Any - Any TECHNICAL SOLUTIONTECHNICAL SOLUTION of a of a problem in any field of human activity which problem in any field of human activity which is new, involves an inventive step and is is new, involves an inventive step and is industrially applicable shall be patentable. industrially applicable shall be patentable. It may be, or may relate to, a product, or It may be, or may relate to, a product, or process, or an improvement of any of the process, or an improvement of any of the foregoing. (Sec. 7, R.A. No. 165a)foregoing. (Sec. 7, R.A. No. 165a)

ARE ALL INVENTIONS ARE ALL INVENTIONS PATENTABLE?PATENTABLE?

NONO. Only a product or a . Only a product or a process or improvement process or improvement thereof that provides a thereof that provides a technical solution to a technical solution to a problem which is new, problem which is new, involves an inventive step involves an inventive step and is industrially applicable and is industrially applicable are patentable.are patentable.

NONO. They are basic principles in science and . They are basic principles in science and mathematics with a broad range of mathematics with a broad range of applications which cannot be appropriated applications which cannot be appropriated by one individual enterprise because of its by one individual enterprise because of its high costs and fundamental interest to the high costs and fundamental interest to the entire community. It becomes appropriable entire community. It becomes appropriable only once it has been reduced to a specific only once it has been reduced to a specific practical application, that is, to the practical application, that is, to the invention of a specific technological invention of a specific technological teaching which is industrially applicable.teaching which is industrially applicable.

ARE SCIENTIFIC PRINCIPLES SUCH AS THE ARE SCIENTIFIC PRINCIPLES SUCH AS THE PYTHAGOREAN THEOREM OR EINSTEIN’S PYTHAGOREAN THEOREM OR EINSTEIN’S LAW OF RELATIVITY PATENTABLE?LAW OF RELATIVITY PATENTABLE?

Computer programs are, in general Computer programs are, in general copyright. In other countries, copyright. In other countries, programming techniques, as programming techniques, as distinct from actual programs, are distinct from actual programs, are also not supposed to be patentable, also not supposed to be patentable, but there are ways in which they but there are ways in which they can be made patentable as ruled in can be made patentable as ruled in Diamond v. Diehr, 450 U.S. 175Diamond v. Diehr, 450 U.S. 175

IS THE COMPUTER SOFTWARE IS THE COMPUTER SOFTWARE PATENTABLE?PATENTABLE?

Micro-organismsMicro-organisms

Diamond v. Chakarabarty 447 U.S. 303, the Diamond v. Chakarabarty 447 U.S. 303, the U.S. Supreme Court had to decide the U.S. Supreme Court had to decide the patentability of certain micro-organisms patentability of certain micro-organisms (which Dr. Chakrabarty had engineered to (which Dr. Chakrabarty had engineered to give them a appetite for eating oil slicks). give them a appetite for eating oil slicks). By a majority decision the Court held that By a majority decision the Court held that a patent could be granted stating that a patent could be granted stating that “anything under the sun that is made by “anything under the sun that is made by man” was potentially patentable. This man” was potentially patentable. This holds equally true in the Philippines.holds equally true in the Philippines.

ARE LIFE FORMS PATENTABLE?ARE LIFE FORMS PATENTABLE?

Animal varietiesAnimal varieties

The ‘oncomouse” (a mouse into The ‘oncomouse” (a mouse into which has been introduced a cancer-which has been introduced a cancer-forming gene, making it a valuable forming gene, making it a valuable experimental animal for testing anti-experimental animal for testing anti-cancer drugs) is “man-made” and is cancer drugs) is “man-made” and is clearly patentable under U.S. law. clearly patentable under U.S. law. There is yet no jurisprudence in the There is yet no jurisprudence in the Philppines on this matter.Philppines on this matter.


Plant varietiesPlant varieties

In the Philippines, they are not In the Philippines, they are not patentable but will be the subject of patentable but will be the subject of sui generissui generis protection. At present, protection. At present, this is covered by Republic Act. 9168, this is covered by Republic Act. 9168, The Plant Varieties Act.The Plant Varieties Act.


Is a natural molecule patentable? The Is a natural molecule patentable? The answer is “answer is “nono”! It is not possible to patent a ”! It is not possible to patent a molecule in exactly the same form in which it molecule in exactly the same form in which it known in nature – as the product would them known in nature – as the product would them lack novelty. However, it is possible to patent lack novelty. However, it is possible to patent a product originating from natural sources in a product originating from natural sources in a form in which it does not occur naturally for a form in which it does not occur naturally for example in a highly purified form. e.g. an example in a highly purified form. e.g. an antibiotic isolated from a micro-organisms antibiotic isolated from a micro-organisms present in a soil sample provided it exhibits a present in a soil sample provided it exhibits a technical effect capable of ‘industrial technical effect capable of ‘industrial application’.application’.

ARE NATURAL PRODUCTS ARE NATURAL PRODUCTS PATENTABLE?PATENTABLE?

In State Street Bank & Trust Co. v. Signature In State Street Bank & Trust Co. v. Signature Financial Group [(149 F. 3d 1368 (1998)] the U.S. Financial Group [(149 F. 3d 1368 (1998)] the U.S. Circuit Court of Appeals found patentable, a Circuit Court of Appeals found patentable, a system (known as Hub and Spoke) that facilitates a system (known as Hub and Spoke) that facilitates a structure whereby mutual funds (spokes) pool structure whereby mutual funds (spokes) pool their assets in an investment portfolio (Hub) their assets in an investment portfolio (Hub) engaged as a partnership. In effect a machine engaged as a partnership. In effect a machine programmed with the Hub and Spoke software programmed with the Hub and Spoke software which produces a “useful, concrete, and tangible which produces a “useful, concrete, and tangible results” is statutory subject matter, even if the results” is statutory subject matter, even if the result is expressed in numbers, such as prices result is expressed in numbers, such as prices profit, percentage, cost or loss. profit, percentage, cost or loss.

Patentability of Computer – Patentability of Computer – Implemented Business MethodImplemented Business Method

• Section 22. – Non-Patentable InventionsSection 22. – Non-Patentable Inventions

- The following shall be excluded from patent - The following shall be excluded from patent protection:protection:

22.1 22.1 – Discoveries, scientific theories and – Discoveries, scientific theories and mathematical methods and in the case of drugs and mathematical methods and in the case of drugs and medicines, the mere discovery of a new form or new medicines, the mere discovery of a new form or new property of a known substance which does not result property of a known substance which does not result in the enhancement of the known efficacy of that in the enhancement of the known efficacy of that substance, or the mere use of a known property or substance, or the mere use of a known property or new use for known substances, or the mere use of a new use for known substances, or the mere use of a known process unless such known process results in known process unless such known process results in a new product that employs at least one new reactant;a new product that employs at least one new reactant;

22.2 –22.2 – Schemes, rules and methods of Schemes, rules and methods of performing mental acts, playing games or doing performing mental acts, playing games or doing business, and programs for computers;business, and programs for computers;


22.3 –22.3 – Methods for treatment of the Methods for treatment of the human or animal body by surgery or therapy human or animal body by surgery or therapy and diagnostic methods practiced on the and diagnostic methods practiced on the human or animal body. This provision shall human or animal body. This provision shall not apply to products and composition for use not apply to products and composition for use in any of these methods;in any of these methods;


22.4 –22.4 – Plant varieties or animal breeds or Plant varieties or animal breeds or essential biological process for the production of essential biological process for the production of plants or animals. This provision shall not apply plants or animals. This provision shall not apply to micro-organisms and non-biological and to micro-organisms and non-biological and microbiological processes.microbiological processes.

Provisions under this subsection shall not Provisions under this subsection shall not prohibit Congress to consider the enactment of a prohibit Congress to consider the enactment of a law providing law providing sui generissui generis protection of plant protection of plant varieties and animal breeds and a system of varieties and animal breeds and a system of community intellectual rights protection;community intellectual rights protection;

Note:Note: Congress recently passed R.A. 9168, the Congress recently passed R.A. 9168, the Plant Varieties Law Plant Varieties Law


22.5 22.5 – Aesthetic creations; and– Aesthetic creations; and

22.6 22.6 – Anything which is contrary to public – Anything which is contrary to public order or morality. order or morality.

Conditions of Conditions of PatentabilityPatentability

• NoveltyNovelty

• Inventive StepInventive Step

• Industrial Industrial ApplicabilityApplicability

Conditions of patentabilityConditions of patentability

• NoveltyNovelty

– – When is the invention not new? if it is not When is the invention not new? if it is not part of the prior art. part of the prior art. Prior artPrior art consists of consists of everything which has been disclosed or everything which has been disclosed or used in public, or sold in the market before used in public, or sold in the market before the patent application for the invention is the patent application for the invention is filed; except any disclosure by the inventor filed; except any disclosure by the inventor (e.g. demonstrating the use of the invention (e.g. demonstrating the use of the invention in a trade fair) within 12 months preceding in a trade fair) within 12 months preceding the filing date of the application.the filing date of the application.

PRIOR ARTPRIOR ART

Anticipation by prior knowledgeAnticipation by prior knowledge• as applied to a combination novelty means that a as applied to a combination novelty means that a

thingthing

is new unless is new unless ALL ELEMENTSALL ELEMENTS in a combination, in a combination, except for significant differences, can be found in except for significant differences, can be found in a single prior description or structure where they a single prior description or structure where they as substantially the same work in the same way.as substantially the same work in the same way.

• as applied to a process as applied to a process

all the elements or steps in question must be all the elements or steps in question must be unequivocally met, element by element, in the unequivocally met, element by element, in the correct sequence or order, and under the same correct sequence or order, and under the same conditions these steps are carried out by the conditions these steps are carried out by the process. process.

PRIOR ARTPRIOR ART

• Disclosure in writingDisclosure in writing

Newspaper advertisements of “electric welded Newspaper advertisements of “electric welded wire mesh” which neither sate the particular wire wire mesh” which neither sate the particular wire mesh was being referred to nor mention the mesh was being referred to nor mention the machine which produce the wire mesh is not prior machine which produce the wire mesh is not prior art vis-à-vis the application.art vis-à-vis the application.

• Disclosure by useDisclosure by use

Prior use that would fall in the definition of prior Prior use that would fall in the definition of prior art is such use of the invention in public, generally art is such use of the invention in public, generally for profit, and the use maybe by only one or a for profit, and the use maybe by only one or a limited numbers of persons. This accept covers an limited numbers of persons. This accept covers an offer to sell.offer to sell.

PRIOR ARTPRIOR ART

• Experimental useExperimental use

The use of an invention by way of to bring the The use of an invention by way of to bring the invention to perfection, or to as certain the utility, invention to perfection, or to as certain the utility, value or success of the invention and not for profit value or success of the invention and not for profit is regarded as experimental. It will not be is regarded as experimental. It will not be considered use that would invalidate the considered use that would invalidate the invention. invention.

Conditions of patentability (continued)Conditions of patentability (continued)

• Inventive stepInventive step

- the invention should - the invention should NOT BE OBVIOUSNOT BE OBVIOUS to a person skilled in the art, i.e. who is to a person skilled in the art, i.e. who is familiar with the technology taught by the familiar with the technology taught by the application at the time it is filed. application at the time it is filed.

Who is a person skilled in the art? a Who is a person skilled in the art? a person presumed to be aware of what was person presumed to be aware of what was common general knowledge in art of the common general knowledge in art of the relevant date and all references to the relevant date and all references to the pertinent art and of all art reasonably pertinent art and of all art reasonably relevant to the problems with which the relevant to the problems with which the inventor was involvedinventor was involved

ILLUSTRATIONILLUSTRATION

IS INVENTION C PATENTABLE?IS INVENTION C PATENTABLE?

A B CERASE

RPENCIL PENCILW/

ERASER

Inventive Step (continued)Inventive Step (continued)

26.2. In the case of drugs and 26.2. In the case of drugs and medicines, there is no inventive medicines, there is no inventive step if the invention results from step if the invention results from the mere discovery of a new form or the mere discovery of a new form or new property of a known substance new property of a known substance which does not result in the which does not result in the enhancement of the known efficacy enhancement of the known efficacy of that substance, or the mere of that substance, or the mere discovery of any new property or discovery of any new property or new use for a known substance, or new use for a known substance, or the mere use of a known process the mere use of a known process unless such known process results unless such known process results in a new product that employs at in a new product that employs at least one new reactant.least one new reactant.

Conditions of patentability (continued)Conditions of patentability (continued)

• Industrial applicabilityIndustrial applicability

- the invention cannot be purely - the invention cannot be purely theoretical. If the invention relates to a theoretical. If the invention relates to a product, it must be capable of being made. product, it must be capable of being made. If it relates to a process, it must be capable If it relates to a process, it must be capable of being used.of being used.

Patent ApplicationPatent ApplicationSec. 32. The applicationSec. 32. The application

32.1 – A patent application shall be in Filipino or 32.1 – A patent application shall be in Filipino or English and shall contain the following:English and shall contain the following:

(a)(a) A request for the grant of patent;A request for the grant of patent;

(b)(b) A description of the invention;A description of the invention;

(c)(c) Drawings necessary for the Drawings necessary for the understanding of the invention;understanding of the invention;

(d)(d) One or more claims; andOne or more claims; and(e)(e) An Abstract.An Abstract.

32.2 – No patent my be granted unless the 32.2 – No patent my be granted unless the application identifies the inventor. If the applicant is not application identifies the inventor. If the applicant is not the inventor, the Office may require him to submit said the inventor, the Office may require him to submit said authority. (Sec. 13, R.A. No. 165a)authority. (Sec. 13, R.A. No. 165a)

PATENT FORMPATENT FORM

Patent Application (continued)Patent Application (continued)

Who may file?Who may file?

• National TreatmentNational Treatment

• Inventor or legal representativeInventor or legal representative

Where?Where?

When?When?

• first-to-file rulefirst-to-file rule

• noveltynovelty

• Right of priorityRight of priority

• Filing dateFiling date

Examination ProcedureExamination Procedure

• Formality ExaminationFormality Examination

• Classification and SearchClassification and Search

• Publication of patent Publication of patent APPLICATIONAPPLICATION

-- rights after publicationrights after publication

-- comments (not comments (not opposition) of third opposition) of third partiesparties

Examination Procedure (continued)Examination Procedure (continued)

• Request for Substantive Request for Substantive ExaminationExamination

• Amendment of ApplicationAmendment of Application

In case of Refusal by examinerIn case of Refusal by examiner

• appeal to Director of Patentsappeal to Director of Patents

• appeal to the Director General of appeal to the Director General of the IPOthe IPO

• appeal to Court of Appeals; to the appeal to Court of Appeals; to the Supreme CourtSupreme Court

Letters PatentLetters Patent

IllustrationIllustration

Rights of PatenteesRights of Patentees

• What are the exclusive rights conferred What are the exclusive rights conferred to the owner of the patent?to the owner of the patent?

- the making, using offering for sale, - the making, using offering for sale, selling or importing a patented product, selling or importing a patented product, a product obtained thru a patented a product obtained thru a patented process or the use of a patented process or the use of a patented process.process.

Rights of Patentees (continued)Rights of Patentees (continued)

• What are the limitations to these rights?What are the limitations to these rights?

- where the patented product was put - where the patented product was put on the market in the Philippines by the on the market in the Philippines by the owners of the patent. (This prohibits owners of the patent. (This prohibits parallel importation) parallel importation) EXCEPTEXCEPT drugs and drugs and medicines where patent rights are medicines where patent rights are exhausted after a drug or medicine has exhausted after a drug or medicine has been introduced in the Philippines or been introduced in the Philippines or anywhere else in the world by the patent anywhere else in the world by the patent ownerowner

Limitations to the rights of Limitations to the rights of patenteespatentees

- the exploitation of the patent is exclusively for - the exploitation of the patent is exclusively for PRIVATE USEPRIVATE USE; or solely for scientific research and ; or solely for scientific research and experiment; Example: reverse engineeringexperiment; Example: reverse engineering

- the use consists of the preparation for individual - the use consists of the preparation for individual cases, by a pharmacist or a medical professional of a cases, by a pharmacist or a medical professional of a medicine in accordance with a medical prescription medicine in accordance with a medical prescription and after the drug or medicines has been put in the and after the drug or medicines has been put in the market by the patent owner in the Philippines or any market by the patent owner in the Philippines or any where else in the world.where else in the world.

- use in transit- use in transit

LimitationsLimitations

• Other limitations to the Rights of the Other limitations to the Rights of the patentee:patentee:

- - TERRITORIALITYTERRITORIALITY: those rights have force : those rights have force and effect only within Philippine territoryand effect only within Philippine territory

- - TERMTERM: 20 years from date of filing; not : 20 years from date of filing; not renewablerenewable

- - PRIOR USERPRIOR USER in good faith in good faith

- - COMPULSORYCOMPULSORY licensing licensing

Limitations; Compulsory LicensingLimitations; Compulsory Licensing

- - Patents may be exploited without the Patents may be exploited without the authority of the patentee through a authority of the patentee through a compulsory license (filed with the IPO compulsory license (filed with the IPO after exhausting attempts to obtain a after exhausting attempts to obtain a voluntary license) on any of these voluntary license) on any of these grounds:grounds:

Limitations; Compulsory Licensing (ContinuedLimitations; Compulsory Licensing (Continued))

Where there is national emergency; or is Where there is national emergency; or is required by national security, nutrition, required by national security, nutrition, health or the development of vital sectors health or the development of vital sectors of the economy; or the manner of of the economy; or the manner of exploitation of the patent by the owner is exploitation of the patent by the owner is determined/ to be anti-competitive; or to determined/ to be anti-competitive; or to exploit a “second” patent which cannot be exploit a “second” patent which cannot be used without infringing the “first” patent if used without infringing the “first” patent if the exploitation of the second patent the exploitation of the second patent involves an important technical advance of involves an important technical advance of considerable economic significance.considerable economic significance.

Special Procedure on the issuance of Special Procedure on the issuance of Compulsory License for drugs and Compulsory License for drugs and

medicinesmedicines

- The Director General of the Intellectual Property - The Director General of the Intellectual Property Office, upon the written recommendation of the Office, upon the written recommendation of the Secretary of the Department of Health, shall, upon Secretary of the Department of Health, shall, upon filing of a petition, grant a filing of a petition, grant a special compulsory special compulsory license for the importationlicense for the importation of patented drugs and of patented drugs and medicines. which shall be an additional special medicines. which shall be an additional special alternative procedure to ensure access to quality alternative procedure to ensure access to quality affordable medicines and shall be primarily for affordable medicines and shall be primarily for domestic consumption: Provided, That adequate domestic consumption: Provided, That adequate remuneration shall be paid to the patent owner. remuneration shall be paid to the patent owner. The grantee of the license shall exercise The grantee of the license shall exercise reasonable measures to prevent the re-exportation reasonable measures to prevent the re-exportation of the products imported under this provision.of the products imported under this provision.

Compulsory License for the Compulsory License for the manufacture and Export of drugs:manufacture and Export of drugs:

““93-A.2. A compulsory license shall also be 93-A.2. A compulsory license shall also be available for the manufacture and available for the manufacture and EXPORT OF EXPORT OF DRUGSDRUGS and medicines to any country having and medicines to any country having insufficient or no manufacturing capacity in the insufficient or no manufacturing capacity in the pharmaceutical sector to address public health pharmaceutical sector to address public health problems: Provided, That, a compulsory license problems: Provided, That, a compulsory license has been granted by such country or such has been granted by such country or such country has, by notification or otherwise, allowed country has, by notification or otherwise, allowed importation into its jurisdiction of the patented importation into its jurisdiction of the patented drugs and medicines from the Philippines in drugs and medicines from the Philippines in compliance with the TRIPS Agreement.compliance with the TRIPS Agreement.

Infringement of PatentsInfringement of Patents

• What constitutes infringement of patents?What constitutes infringement of patents?

- the making, using offering for sale, - the making, using offering for sale, selling or importing a patented product, selling or importing a patented product, or a product obtained from a patented or a product obtained from a patented process without the authorization of the process without the authorization of the patentee.patentee.

Infringement of Patents (continued)Infringement of Patents (continued)

• What are the remedies against What are the remedies against infringers?infringers?

- - Civil action for infringement Civil action for infringement for for injunctioninjunction and damages. and damages.

- - Criminal action for Criminal action for infringement.infringement.

- - Administrative remedy.Administrative remedy.


• Administrative remedyAdministrative remedy

Instead of filing the infringement Instead of filing the infringement action with the Court it may be filed with action with the Court it may be filed with Bureau of Legal Affairs (BLA) of the IPO if Bureau of Legal Affairs (BLA) of the IPO if the amount of damages claimed is not less the amount of damages claimed is not less than P200.000. The Department of Trade than P200.000. The Department of Trade and Industry’s Office of legal affairs and its and Industry’s Office of legal affairs and its Regional Offices have also jurisdiction to Regional Offices have also jurisdiction to try this case regardless of the amount of try this case regardless of the amount of damages claimed.damages claimed.

WHAT ARE CONSIDERED WHAT ARE CONSIDERED “EQUIVALENTS” OF THE INVENTION?“EQUIVALENTS” OF THE INVENTION?

The often-quoted definition of the The often-quoted definition of the doctrine of equivalents state: if two devices doctrine of equivalents state: if two devices do the same work in substantially the same do the same work in substantially the same way and produce substantially the same way and produce substantially the same results, they are the same even though they results, they are the same even though they differ in name, form or shapediffer in name, form or shape


• Criminal action for infringementCriminal action for infringement

It is only after the infringement is It is only after the infringement is repeated that the infringer shall be repeated that the infringer shall be criminally liable (prescription:3 yrs from the criminally liable (prescription:3 yrs from the commission of the second infringement).commission of the second infringement).

ILLUSTRATIVE CASESILLUSTRATIVE CASES• Who may file an infringement action?Who may file an infringement action?

• Cresser v. Court of AppealsCresser v. Court of Appeals

Only the patentee can institute an action for patent Only the patentee can institute an action for patent infringement. infringement.

G.R. No. 118708, Feb. 2, 1998G.R. No. 118708, Feb. 2, 1998

• The principle of equivalentsThe principle of equivalents

Godinez v. Court of AppealsGodinez v. Court of Appeals

G.R. No. 97343 September 13, 1993G.R. No. 97343 September 13, 1993

An infringement occurs when a device appropriates a An infringement occurs when a device appropriates a prior invention by incorporating its innovative concept prior invention by incorporating its innovative concept and, albeit with some modification and change and, albeit with some modification and change performs substantially the same function, in performs substantially the same function, in substantially the same way to achieved the same substantially the same way to achieved the same result.result.


• Requirement of notice to recover Requirement of notice to recover damagesdamages

• Reversal of burden of proof in case Reversal of burden of proof in case of infringement of process patentof infringement of process patent

INDUSTRIAL DESIGNINDUSTRIAL DESIGN

DefinitionDefinition

Any composition of line or colors or Any composition of line or colors or any three dimensional form, whether or any three dimensional form, whether or not associated with lines or colors: not associated with lines or colors: Provided, that such composition or form Provided, that such composition or form gives a gives a SPECIAL APPEARANCESPECIAL APPEARANCE to and to and can serve as pattern for an industrial can serve as pattern for an industrial product or handicraft. (Sec. 122, RA product or handicraft. (Sec. 122, RA 8293).8293).

INDUSTRIAL DESIGN (continued)INDUSTRIAL DESIGN (continued)

Examples:Examples:


Conditions for ProtectionConditions for Protection

Must be new or original, and not Must be new or original, and not dictated essentially by technical or dictated essentially by technical or functional considerations to obtain a functional considerations to obtain a technical result and not contrary to public technical result and not contrary to public order, health or morals.order, health or morals.


Examination Procedure:Examination Procedure:

There is no substantive examination to determine There is no substantive examination to determine whether it is new or original but the examination is whether it is new or original but the examination is limited only as to its compliance with formal limited only as to its compliance with formal requirements.requirements.

However, the bibliographic data and representative However, the bibliographic data and representative drawing of the application will be published in the IPO drawing of the application will be published in the IPO Gazette plus a registrability if one was issued at the Gazette plus a registrability if one was issued at the instance of the applicant. Within 2 months from instance of the applicant. Within 2 months from publication “any interested party” may request for a publication “any interested party” may request for a registrability report and/or furnish the IPO information registrability report and/or furnish the IPO information that the design is not new; the decision to register or to that the design is not new; the decision to register or to refuse the registration will follow.refuse the registration will follow.


Term:Term:

5 years from filing date and renewable for 5 years from filing date and renewable for not more than 2 consecutive period of 5 years.not more than 2 consecutive period of 5 years.

Applicability of Patent Law Provisions:Applicability of Patent Law Provisions:

In almost all other matters, yes, except on In almost all other matters, yes, except on when to file the application to claim the priority when to file the application to claim the priority date of the corresponding foreign application, date of the corresponding foreign application, which is only (6) six months.which is only (6) six months.

UTILITY MODELSUTILITY MODELS

• Concept: No Inventive StepConcept: No Inventive Step

The IP Code retains the The IP Code retains the feature provided in R.A. 165 feature provided in R.A. 165 which distinguishes a utility which distinguishes a utility model from an invention, that is, model from an invention, that is, that a utility model does not that a utility model does not involve inventive steps to be involve inventive steps to be registrable. It is enough that it registrable. It is enough that it has utility. has utility.

Examples:Examples:

UTILITY MODELS (continued)UTILITY MODELS (continued)• Examination ProcedureExamination Procedure

The IP Code, however, does not require that the The IP Code, however, does not require that the application for registration of a utility model undergo application for registration of a utility model undergo substantive examination to determine novelty. The substantive examination to determine novelty. The purpose of this rule is to hasten the processing of utility purpose of this rule is to hasten the processing of utility model.model.

However, the bibliographic data and representative However, the bibliographic data and representative drawing of the application will be published in the IPO drawing of the application will be published in the IPO Gazette plus a registrability if one was issued at the Gazette plus a registrability if one was issued at the instance of the applicant. Within 2 months from instance of the applicant. Within 2 months from publication “any interested party” may request for a publication “any interested party” may request for a registrability report and/or furnish the IPO information that registrability report and/or furnish the IPO information that the utility model is not new; the decision to register or to the utility model is not new; the decision to register or to refuse the registration will follow.refuse the registration will follow.

UTILITY MODELS (continued)UTILITY MODELS (continued)• CancellationCancellation

The registration may be cancelled, however, by the The registration may be cancelled, however, by the Director of Patents at the instance of any person who may be Director of Patents at the instance of any person who may be damaged by the registration if it is found lacking novelty.damaged by the registration if it is found lacking novelty.

• TermTerm

As to the term of the utility model, the IP Code limits it As to the term of the utility model, the IP Code limits it to seven (7) years after the date of the filing of application.to seven (7) years after the date of the filing of application.

• Applicability of Patent LawApplicability of Patent Law

Aside from the foregoing, the provisions governing Aside from the foregoing, the provisions governing patents apply, all things being equal, to the registration of the patents apply, all things being equal, to the registration of the utility models.utility models.

what is a patent? a patent is a statutory grant, by government, which confers to an inventor or his...

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