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12/05/16

Engr. Eduael G. Usal

Patenting Inventions:
Idea Conception to
Patentable Invention

Technical Expert, Innovation and


Technology Support office
Office of the VP for Research Extension,
Planning and Development PUP

Patenting Inventions:
Frequently Asked Questions

PUP PULILAN CAMPUS


June 28, 2016

Engr. Eduael G. Usal

Former Technical Expert


Innovation and Technology Support office
Office (ITSO)

TOPICS
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INVENTION

Inventions
Occurrence of an Invention
Contents of Thesis vis-a-vis Inventions
Difference Between Improvement and
Innovation
Patentable Inventions
Statutory Classes of Inventions
Patents and Patent Systems
Dual Entity of a Patent
Rights of a Patentee
Patent Infringement
Novelty
Inventive Step
Industrial Susceptibility
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Invention is a technical solution of a problem in


any field of human activity.
Some Early Inventions that Changed the World

Babbage: Difference Engine.

Wright Brothers: Flying


Machine.

Wheel: 3500 BC

Swan: 1878

TV: Philo
Farnsworth
1928

Graham Bell Feb 14, 1876

INVENTION

OCCURRENCE OF INVENTION

Some of Japanese Craziest Inventions

Under patent law, two important


steps must be realized before there
is said to be an invention*:
1. the invention must

be conceived.

Ear Enhancer

Wedding Countdown
Bra

Splash
Protector

Solar Lighter

2. the invention must be

reduced to practice.

*Patent Law Basics for University Researchers, Baylor University, Waco


Texas, USA

Book Shaped Pillow


for Bookworms

Urinating Saddle

Baby Powered Mop

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OCCURRENCE OF INVENTION

OCCURRENCE OF INVENTION
THE

THE INVENTION MUST BE CONCEIVED

In the legal sense, the


conception of an invention occurs
when someone has mentally
developed an idea, but an idea
alone is insufficient to constitute
a patentable invention

a. Actual reduction
to practice
Requires making a working
model of the invention.

Only inventions can be patented,


not ideas**.
**McGee DR. 2007. Invention Disclosures and the Role of Inventors

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ENABLING DISCLOSURE
1. ABSTRACT
2. TITLE
3. TECHNICAL FIELD
4. BACKGROUND
5. SUMMARY

INVENTION MUST BE REDUCED TO PRACTICE.

Contains the gist of solution to a technical


problem, not more than 150 words
Should refer to the technical features of the
invention, fancy names are not permissible
Broad and specific statement of the field of art
to which the invention pertains
Specific problems in the prior art that needs to
be solved
Gist of the technical solutions and advantages
of the present invention

6. BRIEF
DESCRIPTION OF
DRAWINGS

Descriptions of the several views of the


drawings

7. DETAILED
DESCRIPTION

Complete description on how to fabricate,


compound and use the invention.

It refers to the actual


construction of the
invention in physical form

b. Constructive reduction
to practice
Is accomplished by filing a
patent application that
teaches a person skilled in
the art to make or use the
invention without undue
research or
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experimentation.

THESIS VS PATENT SPECISFICATIONS

THESIS

PATENT SPECS

Title Page

None

Introductory Page

None

Approval Page

None

Table of Contents

None

Preface,
Acknowledgement,
Dedication, etc.
Abstract

None

Up to 150 words only

THESIS VS PATENT SPECISFICATIONS

THESIS

PATENT SPECS

Statement of the Problem


(Review of Rel. Lit.)
Body

Background of the
invention
Detailed Description

Experiment/ Result
Hypothesis

Working Example or
Embodiment
None

Flowchart/Drawings

Flow Chart/Drawings

Conclusion/Result

Claims

INNOVATION
INNOVATION = IP + COMECIALIZATION

Innovation is the translation of


invention to a marketable product
or process.

is the process by which inventions


get commercialized.
It is about finding more efficient ways
to do things.
It is about increasing productivity
It is about economics, not knowledge.

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DIFFERENCE BETWEEN
IMPROVEMENT AND INNOVATION

PATENTABLE INVENTIONS

Improvement

doing things better (evolutionary).

A NEW TECHNICAL SOLUTION OF A PROBLEM


in any field of human activity
NOVEL OR NEW TO THE WORLD (NOT PREVIOUSLY
PUBLISHED OR DISCLOSED, anywhere in the world)

Innovation
doing things
differently
(revolutionary).
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NON-PREJUDICIAL DISCLOSURE OR
GRACE PERIOD

PATENTABLE INVENTIONS
A NEW TECHNICAL SOLUTION TO A TECHNICAL PROBLEM
NOT PREVIOUSLY
PUBLISHED
OR DISCLOSED,
anywhere in the world

THEREFORE IF YOU:

publish your invention in a


journal,
demonstrate or discuss
your invention in public,
before you file a patent
application,
can you still obtain a patent?

yes

no

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If an invention has been disclosed


or published in a journal,
demonstrated or discussed in
public, it can still be filed for
patent within One (1) year from
the date of disclosure or
publication.
01/22/16
date of
disclosure

01/21/17
last day
of filing

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PATENTABLE INVENTIONS
A NEW TECHNICAL SOLUTION TO A TECHNICAL PROBLEM
INVENTIVE (i.e. not an
"OBVIOUS" solution)

SUSCEPTBLE OF INDUSTRIAL APPLICATION.

STATUTORY CLASSES OF INVENTION

Useful machine
Product
Process or improvement of any of
the foregoing
Microorganism
Non-biological and microbiological
processes
(Sec. 21, IP CODE)

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STATUTORY CLASSES OF INVENTION

STATUTORY CLASSES OF INVENTION

1. Useful machine

Process

2. Product

ASUS Transformer
Book T300 Chi
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STATUTORY CLASSES OF INVENTION

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STATUTORY CLASSES OF INVENTION

Microorganism

Non-biological and microbiological processes

e.g. A method of

treating a plant
characterized by
the application of
growth- stimulating
substance or
radiation.

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NON-PATENTABLE INVENTIONS

NON-PATENTABLE INVENTIONS

Discoveries, scientific theories


and mathematical method;

Plant varieties or
animal breeds or
essentially biological
process for the
production of plants
or animals. Aesthetic
creations; and

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.

RA 9168: New Plant


Varieties Protection Act

Anything which is
contrary to public
order or morality.
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(Sec. 22, IP CODE)

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NOVELTY

PATENTABLE INVENTIONS

An invention is not considered new if it


forms part of a PRIOR ART .

A NEW TECHNICAL SOLUTION OF A PROBLEM


in any field of human activity
NOVEL OR NEW TO THE WORLD (NOT PREVIOUSLY
PUBLISHED OR DISCLOSED, anywhere in the world)

(Sec. 23, IP CODE)

LET US NOT RE-INVENT THE


To avoid re-inventing the wheel, a
PRIOR ART SEARCH IS NECESSARY.
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PATENT

PRIOR ART
Any
disclosure
oral
made
before the
filing or
priority
date of
the
invention written

use
Invention: The main body structure
of the BMW i8 is made of Carbon Fibre
Reinforced Plastic (CFRP).

PRIOR
ARTS
secret

others

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DISCLOSURE

Patent system is a bargain struck between the


inventor and the state.
Reveal
invention
(disclosure)

Get
exclusivity
(patent)

It is an exclusive right granted


by the state for an invention
that is new, involves inventive
step and capable of industrial
application.

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What is PATENT SYSTEM

Patent applicant

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The patent
application should
reveal/disclose the
invention so that

it could be
carried out by
the person
skilled in the
art.
Public

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DISCLOSURE

DUAL ENTITY OF A PATENT


TECHNICAL PUBLICATION

contains state of the art


technological information for
purposes of Research and
Product Development

LEGAL TITLE
Certificate of Ownership

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INVENTIVE STEP

WHAT IS OBVIOUSNESS

An invention involves an inventive step,


if having regard to prior art

it

Not

beyond normal progress of


technology

is not obvious to a person


skilled in the art.

Follows plainly or logically from the


prior art

Does

not require any skill or ability


beyond that to be expected of the
person skilled in the art

(Sec. 26, R.A.8293)


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WHO IS A PERSON SKILLED IN THE ART

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DETERMINATION OF INVENTIVE STEP

An ordinary practitioner who:

Is aware of common general knowledge in


specific art
Has access to everything disclosed as the
state of the art
Observes developments in related
technical field

PROBLEM-SOLUTION APPROACH

Determining the closest prior art

Establishing the technical problem to


be solved

Deciding whether invention is


obvious

Has no inventive ability

He knows EVERYTHING, in his


art, but has ZERO imagination!
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PATENTABLE INVENTIONS
A NEW TECHNICAL SOLUTION TO A TECHNICAL PROBLEM
INVENTIVE STEP (i.e.
not an "OBVIOUS"
solution)

SUSCEPTBLE OF INDUSTRIAL APPLICATION.

DETERMINATION OF
INVENTIVE STEP
Claim:
A pouring vessel comprising
(a) a compartment for liquids (1),
(b) a handle (2),
(c) a lid, and
(d) two spouts (3) extending from the
compartment (1),
(e) whereby the tops of the two spouts
are arranged at the same height.

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Claim:
A pouring vessel comprising
(a) a compartment for liquids (1),
(b) a handle (2),
(c) a lid, and
(d) two spouts (5) extending from the compartment (1),
(e) whereby the tops of the two spouts are arranged at the same height.

Document D1:
A teapot with
one spout.

Document D2:
High efficiency distributor for
fertilizer. Each rod has several
nozzles for spraying liquid.

Document D3:
A filter handle
with two
spouts to be
used with a
coffee-maker.

Document D4:
An oil and vinegar bottle
which reveals a second bottle
inside. The two spouts are
cleverly arranged to ensure
the second bottle never drips
while the first one is in use.

Document D1:

Document D2:

Document D3:
Document D4:

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Assessing inventive step (I)


Determine the closest prior art and common
features:
(a) a compartment for liquids
(b) a handle
(c) a lid
(d) one spout
Differences over D1:
two spouts instead of one
particular arrangement of the spouts
Drawback of prior art: time-consuming
Advantage/effect of the invention:
the time needed to fill multiple cups is reduced
Objective problem to solve:
how to modify the teapot of D1
to reduce the time needed to fill multiple cups

Is the claimed solution obvious


in view of the prior art?

D2

D1
D4

Objective problem for


the skilled person: How
to modify the teapot of D1
in order to reduce the time
needed to fill multiple cups

D3

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INDUSTRIAL APPLICABILITY

OVIOUSNESS

An invention that can be produced


and used in any industry shall be
(Sec.
industrially applicable.

RAM PUMP

27 R.A. 8293)

90 LONG RADIUS
ELBOW

PRIOR ART

APPLICATION

Is it obvious?

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INDUSTRIAL APPLICABILITY
What is Industry?

Industry includes any physical activity


of technical character, ie. an activity
which belongs to the useful or practical
arts as distinct from aesthetic arts; it
does not necessary imply the use of
machine or the manufacture of an
article and could cover e.g. a process
for dispersing fog, or process of
converting energy.
Agriculture is generally considered as
industry,

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INVENTION QUOTES TO PONDER


The role of the teacher is to create the
conditions for invention rather than provide
ready-made knowledge.
Papert
To invent, you need a good imagination and a
pile of junk.
Edison
Doubt is the father of invention.
Galileo
If necessity is the mother of invention,
discontent is the father of progress.
Rockefeller
The true sign of intelligence is not knowledge
but imagination.
Einstein

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Method and apparatus for


Reforming air in an Internal
Combustion Engine

Phil. Pat. No.


1-2006-000551
Inventor: Erao
Evangelista

5 TRAITS OF GOOD INVENTORS


1. Vision: Inventors need to see beyond what
already exists. Some of the best inventions
are improvements on what already exists.
2. Patience: Most likely, its going to take time
for people and the market to accept the
invention.
3. Passion: You really have to love and believe in
what you are doing.
4. Persistence: You cant give up. Youre going
to have the door slammed in your face a
number of times.
5. Willingness to be surrounded by good
people: Rarely is an inventor able to do it all
by himself.
http://www.newsobserver.com/2013/06/03/2936498/five-traitsof-successful-inventors.html#storylink=cpy

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PWEDE NA
PONG GUMISING,
SALAMAT PO!

References:
1. EPO/OHIM Intellectual Property Teaching Kit IP
Advanced Part I Patents
2. EPO Core Module 1
3. Nature Publishing Group
4. Engr. Merlito Carag, IPO Phl
5. Fortune Magazine
6. Jon Plumley 2012 2013 2014, C21 Web Designs

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7. samsungtomorrow