JOHN ROMMEL V.

RAFAEL, 4B
ASSIGNMENT NO. 3: FACEBOOK ASSIGNMENT
1.
Are Patent Utility and Nonobviousness principles that find their
place in Philippine law? If so, what provisions of the IP Code talk
about them?
Yes. In order to have a balanced and stable patent system, it is
necessary to have safeguards that will protect not only the inventors
but also the state insofar as their creations are concerned. Having
principles like patent utility and nonobviousness will definitely ensure
that only those inventions which deserve patent protection will be
protected. However, the requirements may be relaxed as the Bureau
of Patents may deem proper in order to fit to the standards of our
society specially since we are still a developing country, and we need
to encourage more inventors to help us in improving the lives of the
people. Notwithstanding the lack of support of the government to
inventors because of lack of funds, as always, we have ample
provisions in the IP Code regarding patent utility and
nonobviousness. These are the following provisions under the IP
Code:
Sec.21 Patentable Inventions
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.
Sec.26 Inventive Step - 26.1 An invention involves an inventive step
if, 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 the invention.
26.2. In the case of drugs and medicines, there is no inventive step if
the invention results from the mere discovery of a new form or new
property of a known substance which does not result in the
enhancement of the known 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 known process results
in a new product that employs at least one new reactant.
Sec. 27 Industrial Applicability. An invention that can be produced
and used in any industry shall be industrially applicable. (n)

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JOHN ROMMEL V. RAFAEL, 4B

ASSIGNMENT NO. 3: FACEBOOK ASSIGNMENT
Patent Utility
In the United States, in order for an invention to be patentable there
are several requirements/criteria that must be met. In simple terms
they are called the utility requirement. These are essential to the
application since the examiner needs to evaluate the documentary
evidence submitted based on the utility requirement abovementioned.
What is patent utility all about?
Patent utility can easily be defined by enumerating the several factors
which it is composed of. They are operability, beneficial utility and
practical/substantial utility. Understanding them is equivalent to
understanding patent utility so I will start by defining each one of
them. Operability in its simplest sense means that the product to be
patented must somehow have a chance of working or functioning.
The applicants for patent need not however worry since there is a
presumption that the inventions are operable as described. However
if the United States Patent and Trademark Office (USPTO) finds that
there are reasonable doubts as to operability such that it is inherently
unbelievable or base on implausible scientific principles then the
burden shifts to the applicant. The second factor is beneficial utility. It
is best explained with the words of Justice Joseph Story himself in
the leading case of Lowell v. Lewis (1817). To wit:
All that the law requires is, that the invention should not be frivolous
or injurious to the well-being, good policy, or sound morals of
society.
The third requirement is practical (substantial) utility. This simply
means that the invention must have identifiable, specific benefit thats
directed to its purpose. General hopeful statements, general
disclosures of possible uses is not enough, it must show some
specific purpose. In the 2001 UPSTO Utility Guidelines, in order for
the practical utility to be satisfied it must have specific and substantial
utility.
[298 words]
Non obviousness
Non obviousness is one of the many requirements of patentability of
an invention. It is also called inventive step. This requirement is found
in 35 U.S. Code 103, to wit:
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JOHN ROMMEL V. RAFAEL, 4B

ASSIGNMENT NO. 3: FACEBOOK ASSIGNMENT

A patent for a claimed invention may not be obtained,

notwithstanding that the claimed invention is not identically disclosed
as set forth in section 102, if the differences between the claimed
invention and the prior art are such that the claimed invention as a
whole would have been obvious before the effective filing date of the
claimed invention to a person having ordinary skill in the art to which
the claimed invention pertains. Patentability shall not be negated by
the manner in which the invention was made.
Simply stated, it means that the invention must not be obvious to a
person with ordinary skill in the art, before the filing date.
This requirement is also found under Sec. 26 of R.A. 8293, as
amended or also known as Intellectual Property Code of the
Philippines, to wit:
Sec. 26. Inventive Step - 26.1 An invention involves an inventive
step if, 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 the invention.
26.2. In the case of drugs and medicines, there is no inventive step if
the invention results from the mere discovery of a new form or new
property of a known substance which does not result in the
enhancement of the known 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 known process results
in a new product that employs at least one new reactant.
[300 words]
4. What is the rationale behind the need to make claims in a patent?
The claims in the patent is important because it describes the subject
matter of the invention claimed and it is the content of such claim the
the law seeks to protect. However since the Patent Law Treaty
Implementation Act was enacted the patent claims and drawings are
no longer required in order to obtain a filing date for non-provisional
patent application. Still the purpose is the same, it is for the subject
matter of the invention to be described clearly and distinctly in such a
way by the inventor which he regards as his own so that the law may
be able to protect it.

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