OVERVIEW OF

PATENTS

DINDO O. DUMALI
IPRS II
Documentation Information Technology Transfer Bureau
Technology Transfer Division
DEFINITION

A set of exclusive rights granted by a

sovereign state to an inventor or
assignee for a limited period of time in
exchange for detailed public disclosure
of an invention.

Exclusive right: Exclude others from exploiting the

technology, from making, using, selling the technology

Patent right does not give you an automatic right to

commercialize.
LEGAL REQUIREMENTS

NOVELTY NEW (Section 23)

INVOLVES
INVENTIVE STEP NOT OBVIOUS (Section 26)

MUST BE OF INDUSTRIALLY
PRACTICAL USE (Section 27)
APPLICABLE
 PATENT LIFE CYCLE

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 LIMITATIONS OF A PATENT

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 LIMITATIONS OF A PATENT

(Section 55)

(4 years from the date the application was published)

FIRST TO FILE SYSTEM (Section 29)

• First to file not first to invent will be
considered the owner

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WHAT CAN BE PATENTED? (Section 21)

Any technical solution of a problem in any field

of human activity which is NEW, INVOLVES
INVENTIVE STEP and is INDUSTRIALLY
APPLICABLE shall be patentable.
 WHAT CAN BE PATENTED?
Product:

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WHAT CAN BE PATENTED?

Composition of
Matter

Or an improvement of any of the foregoing (Section 7, R.A.

No. 165a)
NOT PATENTABLE (Section 22)
• Discoveries, scientific theories and mathematical methods;
• Schemes, rules and methods of performing mental acts, playing
games or doing business;
• Programs for computers;
• Method for treatment of the human or animal body by surgery
or therapy and diagnostic methods practiced on the human or
animal body. (This provision shall not apply to products and
composition for use in any of these methods);
• Plant varieties or animal breeds or essential biological process
for the production of plants and animals. (Shall not apply to
microorganisms and non-biological and microbial processes);
• Aesthetic creations
• Anything which is contrary to pubic order or morality
PATENT
BASIC THINGS YOU HAVE TO UNDERSTAND ABOUT
PATENTS:
1. SPOTTING THE INVENTION
2. CLAIMS
3. HOW THE PATENT SYSTEM WORKS
 10 STEPS IN PATENT DRAFTING
1. Spotting the invention
2. Generalizing the invention (concept)
3. Drawing one or more figures showing the invention
4. Arranging the figures of the drawing in a sequence
5. Deciding on the terminology to describe the invention
6. Drafting the claims
7. Drafting the detailed description (reference numerals)
8. Inserting the numerals in the claims
9. Writing the introductory part of the description
10.Writing the abstract and review

http://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_bkk_16/wipo_ip_bkk_16_t9.pdf
SPOTTING THE INVENTION

• Before taking the steps necessary to protect a particular

invention, you need to find out what the invention really is.
• The inventor generally does not really know what the
invention is – usually the inventor thinks the
prototype/embodiment is the invention, but it is not!
• If you are to protect his/her invention, you need first to
identify what that invention is about.
• It is not uncommon for there to be more than one invention
within a single prototype/embodiment.
 EXAMPLE 1:
TECHNICAL FEATURES:
1. Body
Case/Housing/Body 2. Lead

TECHNICAL PROBLEM:
1. No means to erase if a mistake in
writing is committed

TECHNICAL SOLUTION:

Lead

Another possible technical problem is the type of casing or body.

The body of the prior art may be difficult to sharpen and the
present
Invention may provide a type of wood that is easier to sharpen
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 EXAMPLE 1:

Case/Housing/Body Case/Housing/Body

Eraser

Metal Plate

Lead
Lead

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 EXAMPLE 1:

TECHNICAL
FEATURES

CASE/HOUSING/BODY YES YES

LEAD YES YES

ERASER NO YES

METAL PLATE NO YES

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CLAIMS
• the heart of a patent, in that they define the limits
of exactly what the patent does, and does not,
cover
 CLAIMS

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 PATENT: HOW IT WORKS

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PATENT: HOW IT WORKS
 PATENT: HOW IT WORKS

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 EXERCISE 1:
Let us ASSUME that the pencils below were granted patent protection on the year indicated.
ASSUME also that the pencil protected on 2016 was the first pencil ever protected.

2016 2017 2018

Protected in the Protected in the Protected in the
Philippines only Philippines and Philippines,
US Japan and US
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 IMPORTANCE OF PATENTS

Revenue Source Commercialize

Marketing Benefit Strong Market Position

Bargaining Chip Increase in negotiating power

Industry control/
Influence Opportunity to license/sell

Defensive Uses
Protect against infringement

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PURPOSE OF A PATENT

To enable the
To encourage To facilitate
Incentive for inventor to
inventors to technology
future recoup the
disclose their transfer and
research cost of the
inventions licensing
invention
 APPRECIATING PATENTS

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 APPRECIATING PATENTS

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 APPRECIATING PATENTS

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 APPRECIATING PATENTS

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 HOW TO OBTAIN PATENT PROTECTION

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 WAYS OF FILING A PATENT APPLICATION

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PCT APPLICATION PROCESS
LOCAL APPLICATION FLOWCHART
REQUIREMENTS
REQUIREMENTS
ON LINE FILING

http://onlineservices.ipophil.gov.ph/
eInventionFile/
ONLINE FILING
The Inventor Assistance Program
DITTB-TTD Local 5301 to 5303
dindo.dumali@ipophil.gov.ph