LACANILAO, MARICEL R.

2016-0429
ARELLANO UNIVERSITY SCHOOL OF LAW
ATTY. A. ESPINAS

INTELLECTUAL PROPERTY LAW

GUIDE QUESTIONS
27-SEP-20

I. What is a patent?

A patent is a set of exclusive rights granted by a State to an inventor or his assignee for a fixed
period of time in exchange for a disclosure of an invention. Patents may be granted to technical
solutions such as inventions, machines, devices, processes, or an improvement of any of the
foregoing.

II. State the purposes and the ultimate goal of the patent system.

First, patent law seeks to foster and reward invention; second, it promotes disclosures of
inventions to stimulate further invention and to permit the public to practice the invention
once the patent expires; third, the stringent requirements for patent protection seek to ensure
that ideas in the public domain remain there for the free use of the public.

The case of Pearl and Dean v SMI provided that the ultimate goal is to bring new designs and
technologies into the public domain through disclosure.

III. What are the essential elements of a patentable invention? Explain each of the
elements.

The following are the essential elements of a patentable invention are: (1) Novelty; (2)
Inventive step; and (3) Industrial applicability.

a. Novelty
This element expresses that an invention shall not be considered new if it forms part of a “prior
art.” A prior art is provided for under Sec. 24 of the Intellectual Property Code.

b. Inventive Step
Under Sec. 26, 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, as a general rule. The exception to this is that 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.

c. Industrial Applicability

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Industrial applicability means that an invention that can be produced and used in any industry
shall be industrially applicable; such that an invention will be useless if it will be forever
confined in the sphere of theories and principles, it has to have some practical application for it
to be really useful

IV. What is meant by prior art?

Prior art as defined under IP law whole contents of an application for a patent, utility model, or
industrial design registration that are published in accordance with the law, filed or effective in
the Philippines, with a filing or priority date that is earlier than the filing or priority date of the
application are considered prior art, subject to certain conditions.

V. What are non-patentable inventions?

Non-patentable inventions are those inventions which do not comply with Section 21 of RA
8293, or those which fall under non-patentable inventions enumerated under Section 22 of the
same law, which are:
(1) Discoveries, scientific theories and mathematical methods, and in the case of drugs
and medicines, 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;
(2) Schemes, rules and methods of performing mental acts, playing games or doing
business, and programs for computers;
(3) Methods for treatment of the human or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body, shall not apply to products and
composition for use in any of these methods;
(4) Plant varieties or animal breed or essentially biological process for the production of
plants or animals, shall not apply to microorganisms and non-biological and microbiological
processes, but this shall not preclude Congress to consider the enactment of a law providing sui
generis of plant varieties and animal breeds and a system of community intellectual rights
protection;
(5) Aesthetic creations;
(6) Anything which is contrary to public order or morality.

VI. Dr. Herbert, a scientist, published an article in a medical journal his research work on a
potential cure for Covid-19 virus. He disclosed his entire findings, including the
formulation for the potential drug.
After the publication of Dr. Herbert’s article, Z Pharmaceuticals developed the drug in its
laboratory and complying with including all protocols for clinical testing. A peer review
acclaimed the drug produced by Z Pharmaceuticals as an effective drug against the virus.

a) What are the rights of Dr. Herbert?

Dr. Helbert has not produced any rights by virtue of his research as the law provides that that
discoveries, scientific theories and mathematical methods are non-patentable Inventions.

b) What are the rights of Z Pharmaceuticals?

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Z Pharmaceuticals has the right to apply for a patent over the drug developed by it as it falls
under the purview of the patentable inventions. It may thereafter use such right after having
complied with the registration requirements to make, use, offer for sale, sell, or import such
drug, provided that it successfully registered and obtained patent over such drug.

VII. If X is a physician by profession, will he be a person skilled in the art when the supposed
invention relates to a lithium battery? Explain.

Yes, is regarded as a skilled person when the supposed invention relates to a lithium battery.

Rule 207 of the Intellectual Property Law, as amended, states that a person skilled in the art is
such person presumed to be an ordinary practitioner aware of what was common general
knowledge in the art at the relevant date. And presumed to have knowledge of all references
that are sufficiently related to one another and to the pertinent art and to have knowledge of
all arts reasonably pertinent to the particular problems with which the inventor was involved.

The law did not indicate the profession of what it regards as a skilled person, his profession is
therefore irrelevant and he can be regarded as person skilled in the art.

VIII. Explain the first-to-file rule.

Section 29 of RA 8293 states that, “If two or more persons have made the invention separately
and independently of each other, the right to the patent shall belong to the person who filed an
application for such invention, or where two or more applications are filed for the same
invention, to the applicant who has the earliest filing date or, the earliest priority date". This is
the "first-to-file rule".

IX. Differentiate filing date from priority date.

Filing date, follows the “First-to-File” rule under the law. It shall not be understood in its
ordinary meaning or such that the day the application was filed, rather it should be taken to
mean according to what the law says. Filing date is accorded only when all the requirements
provided for under Section 40 of RA 8293 are present, which states that, “The filing date of a
patent application shall be the date of receipt by the Office of at least the following elements”
(a) an express or implicit indication that a Philippine patent is sought; (b) information
identifying the applicant; (c) description of the invention and one or more claims in Filipino or
English.”

on the other hand, priority date, is provided for under Section 31 of RA 8293, which states that,
“An application for patent filed by any person who has previously applied for the same
invention in another country which by treaty, convention, or law affords similar privileges to
Filipino citizens, shall be considered as filed as of the date of filing the foreign application;
provided, that: (a) the local application expressly claims priority; (b) it is filed within 12 months
from the date the earliest foreign application was filed; (c) a certified copy of the foreign

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application together with an English translation is filed within 6 months from the date of filing
in the Philippines.”

X. Richard is a Canadian citizen who applied for a patent to his invention in his home
country, Canada, on April 15, 2020. Unknown to Richard, Ricky, a Filipino inventor also
had a similar or identical invention as Richard’s, and had already filed his patent
application with the IPOPH on May 15, 2020. Through, a Filipino representative,
Richard filed his patent application before the IPOPH on September 21, 2020.

Who between Richard and Ricky shall have the right to the patent?

Between Ricky and Richard, Richard shall have the right to the patent. Section 31 of RA 8293,
“Priority date” states that, an application for patent filed by any person who has previously
applied for the same invention in another country which by treaty, convention, or law affords
similar privileges to Filipino citizens, shall be considered as filed as of the date of filing the
foreign application; provided, that: (a) the local application expressly claims priority; (b) it is
filed within 12 months from the date the earliest foreign application was filed; (c) a certified
copy of the foreign application together with an English translation is filed within 6 months
from the date of filing in the Philippines.

Further, Richard applied for a patent to his invention in Canada on April 15, 2020. Ricky, on the
other hand, filed a patent application on May 15, 2020, and it is only on September 21, 2020
that Richard filed for a patent application in the Philippines.

XI. Liza work with P&G, a manufacturing company, as a product developer of the
company’s Research and Development Unit. In the course of her employment she was
able to develop a new product for the company.
If such new product is patentable, determine who shall have the right to the patent.

P&G shall have the right to the patent. Under Section 30 of RA 8293, it states that where an
invention is made pursuant to a commission, the person who commissions the work shall be
the owner of the patent, unless there was an agreement to the contrary.

When an invention is made by an employee in the course of his employment contract, the right
to patent shall belong to the employee if the inventive activity is not part of his regular duties
even if the employee uses the time, facilities and material of the employer.

XII. Summarize the procedures related to the grant of a patent.

The procedure for the grant of the patent may be summarized as follows:
1. Filing of the Application
2. Accordance of the Filing Date
3. Formality Examination
4. Classification and Search
5. Publication of the application
6. Substantive Examination
7. Grant of the Patent

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8. Publication upon grant
9, Issuance of the Certificate

XIII. What is unity of invention?

Unity of invention states that the application should always relate to one invention only or to a
group of inventions forming a single general inventive concept. Thus, by its virtue, should there
be several independent inventions which do not form a single general inventive concept
claimed in one application, the Director may require that the application be restricted to a
single invention.

A later application filed for an invention divided out shall be considered as having been filed on
the same day as the first application: provided, that the later application is filed within 4
months after the requirement to divide becomes final, or within such additional time, not
exceeding four (4) months, as may be granted; provided, further, that each divisional
application shall not go beyond the disclosure in the initial application.

XIV. What is the importance of conducting a search prior to the filing of an application for a
patent to an invention?

The importance of conducting a search for a patent of invention is that the patent examiner has
a chance to determine the requirement of novelty. It gives the inventor prior knowledge
whether or not there has been the same invention made by other people in some other place.
This will be provided in an Intellectual Property Search Report. Due to such action, he won’t be
wasting his time applying for a patent for his invention given that there is already a person who
has one.

XV. Is a recipe for a menu patentable?

No, a recipe for a menu is not patentable. The law provides that patentable inventions are any
technical solution of a problem in any field of human activity, involves an inventive step, and is
industrially applicable.

XVI. Suppose Alex’s application for a patent has already been published in the IPO Gazette,
what are the rights that are already conferred to him?

Section 46 of RA 8293 states the rights conferred by a patent application after its publication.

Alex shall have the rights of a patentee under Section 76 against any person who, without his
authorization, exercised any of the rights conferred by patent under Section 71 of RA 8293, in
relation to the invention claimed in the published patent application, as if a patent has been
granted for that invention; provided, that the said person had: (1) actual knowledge that the
invention he was using was the subject matter of a published application; and (2) received
written notice that the invention that he was using was the subject matter of a published
application, being identified in the said notice by its serial number; provided, that the action
may not be filed until after the grant of a patent on the published application and within 4 years
from the commission of the acts complained of.

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XVII. How do you know that a product is patented?
As provided for in Sec. 52 of the IPC, a product is known to be patented when the grant of the
patent together with other related information is published in the IPO Gazette within the time
prescribed by the Regulations. Complete description, claims, and drawings of the patent on file
can be found with the Office.

XVIII.What are the grounds for the cancellation of a patent?

The grounds for the cancellation of a patent are: (1) the invention is not new or patentable; (2)
the patent does not disclose the invention in a manner sufficiently clear and complete for it to
be carried out by any person skilled in the art; or (3) the patent is contrary to public order or
morality. Further, any interested person may, upon payment of the required fee, petition to
cancel the patent or any claim thereof, or part of the claim.

XIX. How is infringement of patent committed?

As provided for under Section 76 of RA 8293 as amended, a person or an infringer may commit
infringement of patent by making, using, offering for sale, selling, or importing a patented
product or a product obtained directly or indirectly from a patented process, or the use of a
patented process without the authorization of the patentee; provided, that, it shall not apply to
instances covered by Sections 72.1 and 72.4, Section 74, Section 93.6, and Section 93-A of the
IP law.

SUBMITTED BY:
LACANILAO, MARICEL R.
2016-0429

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