Patentable Inventions

Refer to any technical solution of a problem in any field of human activity which is new, involves
inventive steps and industrially applicable.

1. Novel- New, it is not a prior art

2. Inventive Step- it is not obvious to a person skilled in the art at the time of filing date or priority
date of application claiming invention.

No Inventive Step

Persons Skilled in Art

-the person presumed to have knowledge of all references that are sufficiently related to one
another and to the pertinenet art and to have knowdlege of invetntions.
- a person presumed to be an ordinary practitioner aware of what was common general knowledge
in the art at the relevant date.

Obviousness and non-obviuosness Test

Graham factor
1. The scope and content of the prior art
2. level of ordinary skill in the art
3. differences between the claimed invention and the prior art
4. Objective evidnec of non obviousness

3. industrially applicable
An invention that can be produced and used in the industry.

There are three fold purpose of the Patent law

1. patent law seeks to foster and reward inventions
2. it promotes the disclosures of inventions to stimulate further innovations and to permit the public
to practice invention once the patent expires
3. to conduct a stringent examination requirrements for patent protection seek to ensure that ideas
in the public domain remain there for the free use of the public.

CLASSES OF PATENTANBLE INVENTIONS (MPPIMN)

1. useful machines
2. a product
3. process
4. Improvements
5. Microorganism
6. Non biological and microbiologivcal process

FIRST-TO-FILE-RULE
When there are two or more persons have made the invention separately and independlty of each
other, the right to patent shall belong to the first person who first filed an application for such
invention.

Prejudicial Disclosure
If the inventor discloses an invention, suh as offering it for sale, the world is free to copy and
use it with impunity (freedom). Once disclosed the public without protection of a valid patent, are
subject to appropriation without restraint.
Non-Prejudicial Disclosure
Any disclosure made within 12 mos before filing date does not prejudice the application if
the disclosure is made by:
1. Inventor himself
2. patent Office
a. when the information of the latters office was contained in another application filed by
the inventor that should have not been disclosed by the office
b. it is contained in the pplicatiion of a 3rd person without the knowledge or consent of the
inventor
3. third person

INFRINGEMENT
-it is the making, using, offering for sale, selling or importing a patented product or a
product obtained directly or indirectly from a patented process, or use of a patented process
without the authorization of the patentee.

a. Literal Infirngement- an act of infringement of patent under this test if one makes or sells
an item that contains all the elements of the patent claim.
a.1 Exactness Ruel- sold, made or used conforms exactly to the patent claim of another
a.2 Additional Rule – sold, made or used an item that has all the elemts of the patent claim
of another plus other elements

b. Doctine of Equivalents
Provides that infringement also takes place when a device appropriates a prior invention by
incorporating its innovative concept and, although some modification and change, performs
substantially the same function in substantially the same way to CHIEVE SUBTANTIALLY THE SAME
RESULT.
Function means and result test(FMRT)

Voluntary License Contract

Granting authority to enterprise that can commercially exploit the invention.
Two objctives of the law:
1. To encourage the transfer and dissemination of technology
2. prevent practices that may have an adverse effect on competition and trade.

Compulsory Licensing
-a licenses issued by the Director General of the IPO to exploit a patnted invention without the
permission of the patnet holder, either manufacture or trhough parallel importation.

Voluntary License and Technology Transfer Agreement

Prohibited Provision:
1. Licensor reserves the right to fix the sale or resale prices of the products manufactured o the basis
of the license
2. Restricions regarding the volume and structure of production

Mandatory provision
1. Apllicable laws are the Philippine Law, veue shall be the proper court in the place where the
licensee has its principal office
2. Continued to access to imporveent in tech and processes
3. Arbitrattion
4. Paymrnt of Philippine taxes.

*noncompliance shall be considered unenforceable.