𝘽𝙀𝙏4-𝙈 | 𝙄𝙣𝙩𝙚𝙡𝙡𝙚𝙘𝙩𝙪𝙖𝙡 𝙋𝙧𝙤𝙥𝙚𝙧𝙩𝙮
The reproduction of a published work in a multiple
02:00PM-05:00PM
QUIZ NO.1
1. A certificate of registration of a trademark may be
renewed for periods of 15 years.
Answer: False
2. It is the three-dimensional disposition, however,
expressed, of the elements, at least one of which is an
active element, and of some or all of the
interconnections of an integrated circuit, or such a
three-dimensional disposition prepared for an
integrated circuit intended for manufacture.
Answer: Layout design
3.IPOPHL is headed by a ____________.
Answer:Director General
4. This bureau has the function to educate the public
and build awareness on intellectual property through
the conduct of seminars and lectures, and other similar
activities.
Answer:Documentation, Information and Technology
Transfer Bureau
5.A patent has a term of ________ years.
Answer: 20
6.This bureau has the function to exercise original
jurisdiction in administrative complaints for violations of
laws involving intellectual property rights.
Answer:Bureau of Legal Affairs
7. The year Republic Act No. 3134 was passed.
Answer:1924
8.The registration of an industrial design may be
renewed.
Answer:True
9.The date Intellectual Property Code of the Philippines
became effective.
Answer:January 1, 1998
10.
copy shall be permitted without the authorization of the
owner of copyright.
Answer:True
11.Scientific theories and mathematical methods are
considered as patentable inventions.
Answer: False
12.A layout design has a term of ________ years.
Answer:10
13.The reproduction in one back-up copy or adaptation
of a computer program shall be permitted without the
authorization of the author.
Answer:True
14.It means the name or designation identifying or
distinguishing an enterprise.
Answer:Trade name
15.The Treaty of Paris did not recognize the existence of
the intellectual property system in the Philippines.
Answer:False
16.The Director General and the Deputies Director
General of the IPOPHL is elected.
Answer:False
17.This Act is also known as the Intellectual Property
Code of the Philippines.
Answer:RA 8293
18.The year WIPO was established.
Answer: 1980
19.Who has the right over a patent?
Answer:inventor
20.It means any visible sign capable of distinguishing
the goods or services of an enterprise.
Answer: Mark
Intellectual Property
● Intellectual property is the creation or product
of the human mind.
● It describes ideas, inventions, technologies,
artworks, music, and literature, that are
 intangible when first created but become
valuable in tangible form as products.

Intellectual Property Rights

1. Patent

2. Utility Model

3. Industrial Design/Layout-Designs of Integrated

Circuits

4. Trademark
Patentable Inventions
5. Copyright
A technical solution to a problem in any field of human
6. Trade Secrets
activity
7. Geographical Indications
Must:
8. New Plant Varieties Patent
● be NEW
A patent is an exclusive right granted by the State for an ● involve an INVENTIVE STEP
invention that is ● be INDUSTRIALLY APPLICABLE Novelty
Requirement
● new
● involves an inventive step New or novel when it does not form part of the prior
● capable of industrial application art.
Invention Prior art means everything made available to the public
anywhere in the world prior to the filing date or priority
● An invention is generally a technical solution to
date of an application.
a problem in any field of human activity
● A complex product may incorporate a number
of inventions that are covered by several
patents, which may be owned by different
patent holders Patent
● This exclusive right gives the inventor the right
to exclude others from making, using, or selling
the product of his invention during the life of
the patent.
● A patent has a term of protection of twenty (20)
years providing an inventor significant
commercial gain. patenta
Example

GOLF BALL CASE (Selection of known material based on

Non-Patentable Inventions
its suitability for the intended use)
● Discovery
1. Problem Abrasion Resistance
● Scientific theory
2. Solution to the Problem Applying "rigid ● Mathematical methods
polyurethane" surface of the golf ball ● Scheme, rule and method of o performing
mental act u playing games
3. No Inventive Step - "Rigid polyurethane" is known ● doing business o program for computer
resistant - Applying the substance to problems in golf
balls would be an person skilled in the art Non-Patentable Inventions

4. Might be Inventive, if - There is an improved and
unexpected result by significantly increasing the flight of
the ball (strong evidence of the presence of invention)
Statutory Classes Of Inventions
• A useful machine
• A product or composition
● Method for treatment — human or animal body
for surgery or therapy and diagnostic method
● Plant variety or animal breed or essentially
biological processes for production of plants
and animals
● Aesthetic creation
● Contrary to public order or morality

• A method or process Patent

• An improvement of any of the foregoing

• Micro-organism

• Non-biological and microbiological process

 A utility model is entitled to seven (7) years of
protection from the date of filing, with no possibility of
renewal.

The drawing on the right is the picture from the original

iPhone potent, which was filed on March 3, 2006. The
"Dual-sided trackpad" potent years filed on Sept. 6 that
some year.

Patent

• Developed as an electrolytic thirst quencher for use by

its football team

• Formula was patented and acquired value

• Trademark — GATORADE

• "Since 1973, Gatorade has brought more than $80

million to the university", Joe Kays & Arline Phillips—
Han, Gatorade-an Idea that Launched an industry

• Patent expired after 17 years but the trademark

remained in force and continued to produce income for
the university

Utility Model

Utility Model is a protection option, which is designed

to protect innovations that are not sufficiently inventive
to meet the inventive threshold required for standard
patent application.

Innovation

Innovation refers to the translation of an invention into

a marketable product or process.

Utility Model

It may be a useful machine, implement, tools, product,

composition, process, improvement or part of the same
that is of

● practical utility,
● novelty and Industrial Design
● industrial applicability.
An industrial design is the ornamental or aesthetic
Utility Model aspect of an article.
The design may consist of:
● three-dimensional features, such as the shape
or surface of an article, or
● a two-dimensional features, such as patterns,
lines or color.
Industrial designs are applied to a wide variety of
products of industry and handicraft
● from technical and medical instruments to
watches, jewelry, and other luxury items;
● from house wares and electrical appliances to
vehicles;
● from textile designs to leisure goods.
● To be protected under most national laws, an
industrial design must be non-functional.
● It is primarily of an aesthetic nature and any
technical features of the article to which it is
applied are not protected.
● Layout-Design is synonymous with
'Topography' and means the three-dimensional
disposition, however expressed, of the
elements, at least one of which is an active
element, and of some or all of the
interconnections of an integrated circuit, or
such a three-dimensional disposition prepared
for an integrated circuit intended for
manufacture.
● Layout-designs of integrated circuits that are
original shall benefit from protection.
● A layout-design shall be considered original if it
is the result of its creator's own intellectual
effort and is not commonplace among creators
of layout-designs and manufacturers of
integrated circuits at the time of its creation.
Registration of a layout-design shall be valid for a period
of ten (10) years, without renewal, and such validity to
be counted from the date of commencement of the
protection:
a. on the date of the first commercial exploitation; b. on
the filing date Trademark
A trademark is a tool used that differentiates goods and
services from each other.
• It is a very important marketing tool that makes the
public identify goods and services.
A trademark can be:
● one word,
● a group of words,
● sign
● symbol,
● logo, or
● a combination of any of these
•Trademark is any visible sign capable of distinguishing
the goods (trademark) or services (service mark) of an
enterprise and shall include a stamped or marked
container of goods (Sec. 21.1, IP Code)
•Trademark is a very effective tool that makes the
public remember the quality of goods and services.
•Once a trademark becomes known, the public will
keep on patronizing the products and services.
NICE CLASSIFICATION (9th ed.)
The following are the general classifications of goods
(Classes 1-34) and services (Classes 35-45).
•Class 43 Services for providing food and drink;
temporary accommodation
•Class 41 Education; providing of training;
entertainment; sporting and cultural activities
•Class 42 Scientific and technological services and
research and design relating thereto; industrial analysis
and research services, design and development of
computer hardware and software, legal services
•Class 16 Paper, cardboard and goods made from these
materials not included in other classes; Printed matter;
bookbinding material; photographs; stationery;
adhesives for stationery or household purposes; artist's
materials; paint brushes; typewriters and office Clothing (c125), food (c129. 30), retail services (cl 35)
requisites(except furniture); instructional and teaching
material (except apparatus); plastic materials for
packaging (not included in other classes); playing cards;
printer's type printing blocks TM indicates that the
"sign" is being claimed as a trademark

® symbol is used with a registered trademark

Copyright
Trademark • Copyright aims at providing protection to authors
(writers, artists, music composers, etc.) on their
creations.

• Such creations are usually designated as "works".

• Copyright is the legal protection extended to the

owner of the rights in an original work.

- WIPO

How is Copyright Obtained?

•Copyright protection is automatic.

•Protection exists at the moment of creation.

•Deposit: National Library/Supreme Court Library ©

symbol is often used for Copyright

● Books, newspapers MN/

● Musical compositions
● Lectures, sermons, letters -44
● Photographic works
• The duration of trademark is:
● Computer programs
0 Ten (10) years from registration 3 Renewable every
Derivative works
ten (10) years
a) Dramatizations, translations, arrangements, and
other alterations of literary or artistic works

b) Collections of literary, scholarly or artistic works, and

compilations of data

• Audiovisual and cinematographic works

Hamburgers, food (c129), restaurant (cl 43) Related Rights

● Performers' rights
● Rights of producers of sound recordings
● Rights of broadcasting organizations Works
Covered by Copyright
 ascertainable by which a business can obtain an
economic advantage over competitors or customers. In
literary works such as
some jurisdictions, such secrets are referred as
● novels, "confidential or classified information."
● poems and
• A company can protect its confidential information
● plays;
through non-compete and non-disclosure contracts
• reference works such as with its employees. The law of protection of
confidential information effectively allows a perpetual
● encyclopedias and monopoly in secret information — it does not expire as
● dictionaries; would a patent.
• databases; •The lack of formal protection, however, means that a
• newspaper articles; third party is not prevented from independently
duplicating and using the secret information once it is
• films and TV programs; discovered.
• architecture; • Secret
• advertisements; • Has commercial value
• maps; • Reasonable steps to keep it secret
•technical drawings and Secret formulation=???
• computer programs Special recipe
• Copyright does not however extend to ideas, but only • The famed formula behind its soda is stowed in an
to the expression of thoughts. For example, the idea of Atlanta bank vault. Coca-Cola's original formula remains
taking a picture of a sunset is not protected by among the world's best-kept trade secrets. The
copyright. Therefore, anyone may take such a picture. beverage behemoth isn't the only brand to legally
• But a particular picture of a sunset taken by a protect its economic advantages.
photographer may be protected by copyright. In such a • Kentucky Fried Chicken's original "11 herbs and
case, if someone else makes copies of the photograph, spices" recipe, handwritten by Col. Sanders was
and starts selling them without the consent of the transferred from a Louisville safe to an undisclosed
photographer, that person would be violating the location. The yellowing parchment is now protected by
photographer's rights. motion sensors and laser beams.
Copyright

Duration of Protection

● Original / Derivative - life + 50 years after death

● 'Joint Authorship - last life + 50 years after
death 'Anonymous / Pseudonymous - 50 years
from publication / making
● 'Applied Art - 25 years from making
● Photo / Audiovisual - 50 years from
publication / making

Trade Secret

A trade secret is a formula, practice, process, design,

instrument, pattern, or compilation of information
which is not generally known or reasonably

Patent Searching
Patent Search
• process by which patented and non-patented
information are located and examined to determine
relevance and similarity to a given patent or proposed
invention.
• a goal-oriented process of mining the valuable
technical and legal information in a patent document.
Available search tools are used to facilitate access and
retrieval of said information.
1. Pre-Application Searches (PAS)
• In the PAS search, the inventor should look for any
printed publications, public knowledge, or patents
already issued in his country or a foreign country that
may relate to the particular invention.
•The PAS would also prepare the inventor for the next
steps in the search process, state-of-the-art and novelty
searches, after getting ample information on the
available publications and public knowledge.
2. State-of-the-Art Search
•This kind of search is also referred to as an informative
search.
• It is performed to determine the general state-of-the-
art (current technology or method) to find the solutions
to a given technical problem as background information
for R&D activities and in order to know what patent
publications already exist in the field of the technology
or research.
• Further reasons for undertaking this kind of search
could be the wish to identify alternative technologies to
solve a problem.
• State-of-the-art searches are especially useful for
technology development or technology transfer
purposes.
3. Novelty Search/Prior Art Search
• The objective of a novelty search is to determine
whether an idea is new.
• The aim of the search is to discover relevant prior art
if a patent has already been granted.
• The outcome of the novelty search will help you with
the next decision of whether to stop or to go forward
spending time and money developing the invention.
• If nothing of relevance was found during a
comprehensive novelty search, the decision could easily
be made to proceed with the subsequent steps to
seeking to patent your invention. The decision is more
difficult if one or several pertinent patent documents
are found.
4. Patentability Search
• A patentability search is made to locate patent
documents relevant to the determination of this other
criteria of patentability, the inventive step.
• This type of search should cover all the technical
fields, which may contain material pertinent to the
invention.
5. Name Search / Bibliographic Search
• These are searches often used for locating information
about published patent documents involving specific
companies or individuals, as applicants, assignees,
patentees or inventors.
• The point of this type of search is to find out what is
covered by a specific patent number or to find out what
patents a particular inventor has to his credit.
6. Technological Activity Search
•These are to be understood as searches for identifying
companies and / or inventors who are active in a
specific field of technology.
•These searches are also suitable for identifying
countries in which a certain technology is being
patented, so as to know where to look to obtain
particular information in a given field of technology.
7. Infringement Search
•The objective of an infringement search is to locate
patents and published patent applications which might
be infringed by a given industrial activity or invention
that attempts to improve on an existing patent.
• In this type of search, the aim is to determine whether
an existing patent gives exclusive rights covering that
industrial activity or any part of it, in
a particular country or region.
• This type of search is often performed to support a
legal opinion that an unauthorized party is or is not
using a patented technology without the permission of the patent family members published in different
the individual or organization who owns it. countries).

8. Freedom-To-Operate Search 12. Patent Landscape Search

• Freedom to operate (FT0) is the ability to proceed *A very comprehensive state-of-the-art search.
with research, development and commercialization of a
product while fully accounting for any potential risks of *The patent landscape search is a deeper analysis
infringing activity, i.e., whether a product can be made, of patent and non-patent references after
used, sold, offered for sale, or exported, with a minimal completion of the state of the art.
risk of infringing the unlicensed Intellectual Property
Rights or Tangible Property Rights of others. *Using aspects of competitive intelligence, a
•An organization will typically conduct a search of this landscape study is something that could anticipate
nature to support a legal opinion that a product does any product liability issues in the future.
not infringe a valid, in-force patent held within the
country where the organization is planning to conduct
business. Patent Drafting
9. Validity Search 1. Abstract of the Disclosure
• In order to determine whether a patent will withstand
attack in litigation, a patent validity search is conducted. 2. Title
You could think of a validity search as an extensive or
3. Technical Field
comprehensive patentability search.
• It is similar to a patentability search, but its purpose is 4. Background of the Invention
to determine whether a patent already obtained on an
invention is valid or not. 5. Summary of the Invention

10. Legal Status Search 6. Brief description of the several views of the
drawings
This type of investigation is made to obtain
information on the validity (status) of a patent or a 7. Detailed Description (specific description)
published patent application, on a given date,
under the applicable patent legislation in one or 8. Claim/s
more countries.
Abstract of the Disclosure
Such information can assist in making decisions
on, for example, exporting or in the negotiation of • Concise summary of the disclosure of the invention
license agreements.
• Preferably not more than 150 words
lt can also give guidance on the value attached to • It must allow a clear understanding of the following:
a particular patent by the patentee.
a. The technical problem
11. Patent Family Search / Equivalent
Search b. The solution of the problem through the invention

* Patent family search are used to find the countries c. The principal use of the invention
in which a given patent application has been filed;
find a patent family members that is written in a Title
desired language; obtain a list of prior art
documents or references cited; and estimate the • Short and specific as possible
importance of invention(based on the number of
• It shall appear as heading on the first page of the
description
• Fancy names are not permissible
• It shall be in technical terms particularly referring to
the technical feature/s of the invention.
Technical Field
• Statement of the field of the art to which the
invention pertains
• Statement should be directed to the subject matter
"BROAD" statement (broad field of technology)
- Agriculture
- Mechanical
- Computers, Electronics & Communications "SPECIFIC"
statement (specific field or goal)
Technical Field
• The present utility model relates generally to a
method of producing floor tile more particularly
coconut petiole parquet with polyester resin as binder.
• The present utility model generally relates to a
process of producing a powdered chocolate drink more
particularly to a process of producing powdered
chocolate drink with alugbati powder.
Background of the Invention
• Related prior art or state of the art - specific prior art
documents - practices, methods, devices, etc. of
common knowledge
• Specific TECHNICAL PROBLEMS in the prior art to be
solved
Background of the Invention
Specific Prior Art Documents
1. Summarize the relevant item/s of the prior art
2. Describe the limitations of said item/s
3. Point out specific problems desired to be solved
Summary of the Invention
• Brief summary of the invention
• Technical solutions to the prior art problem/s
• Advantages of the proposed invention
• For each item/s point out why the invention is better
by briefly explaining the new technical features
Brief Description of the Several Views of the Drawing
To facilitate better understanding, reference is made to
herein below describes figures in which:
Figure 1 illustrates the block diagram of the utility
model; Figure 2 illustrates the block diagram of the
power supply;
Figure 3 illustrates the isometric drawing of the utility
model.
Drawings
• Must show every feature of the invention
• Figures must be consecutively numbered
• The elements must be designated by way of reference
numerals corresponding to the elements in the
description
• The drawings must be formally drafted in accordance
with the Rules as set forth in the Implementing Rules
and Regulations (IRR)
Detailed Description
• Complete description of the manner of making,
constructing, compounding and using the invention.
• Description must: - Be in such full, clear, concise and
in exact terms - Enable person skilled in the art of
science to make, construct, compound and use the
invention
• Best mode of carrying-out the invention
• Description must include at least one way of carrying
out the invention using examples, if appropriate.
• Indicate explicitly if it is not obvious in the description
the ways in which the invention satisfies the
requirement of industrial applicability.
Claims
• A series of numbered statements in a patent
specification, usually following the description, that
define the invention and establish the scope of the
monopoly conferred by the patent.
CLAIMS MUST:
• Define the "Metes" and "Bounds" of the invention
• Particularly point out and distinctly claim the part,
improvement or combination which the applicant
regards as his invention
• Clear, concise and must be fully supported by the
description
• Improvement claims should specifically point out and
distinctly claim in combination with a preamble
statement indicating the prior art features
Categories of Claims
1. Physical Entity a. Apparatus claims/also includes
devices b. Product claim
2. Activity Method claims covering operations
comprising one or more steps performed as part of, e.g.
manufacturing process, chemical process or software
operation
Kinds of Claims
1. Independent Claim
a. Broadly describes the invention
b. Typically written with very broad terms
c. Avoids permitting 1/4; competitors to circumvent the
claims
d. Stands on its own / broadest expression of the
invention and usually numbered as Claim 1
Parts of a Claim 1.
The Preamble provides the name of the subject matter,
or prior art environment associated with the subject
matter.
2. The Body contains
a.The recital of elements (structures, steps, parts or
ingredients) which define the invention
b.The recitation of the manner in which the elements
cooperate or co-act together.
Parts of a Claim
3. The Transition
a. Links the preamble and body of the claim
b. Generally, takes the form "comprising" or "which
comprises"
c. A "colon" (:) is inserted after the transition
Steps Involved 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 reference numerals in the
claims
9. Writing the introductory part of the description
10. Writing the abstract and review
Step 1: Spotting the Invention
• Before taking the steps necessary to protect a
particular invention, you need to find out what the
invention really is.
• What the inventor brings to you is only an example
(embodiment) of his/her invention.
• 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!
Step 1: Spotting the Invention
• 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.
• If there is a novel invention it must involve at least
one feature which distinguishes the prototype
(embodiment, example) from every technology already
publicly known (only novel inventions are worth
considering).
Step 1: Spotting the Invention
• But not every new feature in the example is useful to
define the invention. You need to identify the new
feature(s) or combination of features which provide the
"trick" of the invention (inventive step requirement).
• Find a sole new feature
• Find a new combination of known features
- the hard part is deciding which few elements of the
combination are needed to define the invention and get
the desired benefit. - Note: If A, B, & C are all already
known in the art but have previously only been used
individually, the combination A+B+C is novel.
• Identify what problem did the inventor intend to solve
and what problem he did objectively solve.
Step 2: Generalizing the Invention
• Once we have spotted the feature or combination of
features essential for defining the invention, we are still
not quite ready to draft the claims.
• We need to generalize the specific feature(s) and
crystallize what we think the general idea (concept)
underlying the invention is.
• This can be done once a narrow independent (main)
claim has been drafted and is reviewed (several times).
• It is important to generalize the concept of the
invention by concentrating on the essential features, by
using broad technical concepts, broad language and by
avoiding unnecessary limitations.
Step 3: Drawing Figures Showing the Invention
• Drawings are required when they are necessary for
the understanding of the invention.
• Ask the inventor for sketches or drawings showing
the preferred embodiment of the invention
• Ask for drawings showing important alternatives
and variations of the preferred embodiment
• Ask for drawings showing the big picture of the
invention as well as drawings showing details in
schematics, diagrams, flow sheets, perspective,
elevation, plan, or sectional views.
• Take whatever sketches or drawings you can get
and select later.
Step 4: Arranging the Drawing in Sequence
• After having understood the concept behind the
invention and having collected some sketches or
drawings you have to decide how to explain (disclose)
the invention to the future readers (patent examiner,
judges, competitors, licensees, general public, inventor)
and select (clean) drawings.
• To make patent drafting easier, it is good to arrange
the drawings selected so as to have a sensibly ordered
set of drawings which move from a broad overview, via
intermediate drawings to those that show the details of
the invention.
Step 5: Deciding on the Terminology to Describe the
Invention
• When writing the description, it is helpful to have a
set of drawings to hand which you have labeled with
the names of the parts shown in the drawings
• Write down next to the figures of drawings what
they show
• Write down next to each element shown in each of
the figures how these elements are called by the
specialist and how they could be named in broad terms
(e.g. instead of "copper wire" it might be "electrical
conductor")
• Use dictionaries and/or published patent
documents downloaded from the internet
to describe small details of the invention or a particular
embodiment.
• When you describe the invention, ensure that the
reader can easily follow your explanations about the
structure, function and use of the invention. Start with
the big picture and work into the detail of the invention.

Step 6: Drafting the Claims
• The claim or claims shall define the matter for which
protection is sought.
• Claims shall be clear and concise.
• They shall be fully supported by the description.
• Claims can be process or product.
• Each claim consists of one sentence starting with a
capital letter and ending with a full stop.
• The number of the claims shall be reasonable in
consideration of the nature of the invention claimed.
• If there are several claims, they shall be numbered
consecutively in Arabic numerals.
• Claims shall not, except where absolutely necessary,
rely, in respect of the technical features of the
invention, on references to the description or drawings.
• Do not throw the reader right into the heart of the
invention - lead the reader progressively along a logical
path with no sudden changes of direction.
• What you say in your description, not just the
introduction, will influence the patent office examiner
and the prosecution of the application.
• The description is the source of all allowable
amendments during prosecution of the patent
application — no matter can be added after filing. So,
what you say right at the start of the patenting process
is very important.
Step 8: Inserting the Reference Numerals in the Claims
• When the detailed description is finished, it takes only
a little time to insert the reference signs or reference
numerals into the claims drafted earlier.
• The parts list made during the drafting of the
description can help to avoid errors or omissions.

• In particular, they shall not rely on such references as:

Step 9: Writing the Introductory Part of the Description
"as described in part ... of the description," or "as
illustrated in figure ... of the drawings." • The description shall first state the title of the
invention • Specify the technical field to which the
Step 7: Drafting the Detailed Description
invention relates
• Shall disclose the invention in a manner sufficiently
• Indicate the background art which, as far as known to
clear and complete for the invention to be carried out
the applicant, can be regarded as useful for the
by a person skilled in the art
understanding, searching and examination of the
invention, and, preferably, cite the documents
• Describe in detail at least one way of carrying out the
reflecting such art
invention claimed
• Disclose the invention, as claimed, in such terms that
• This shall be done using examples where appropriate
the technical problem and its solution can be
and with reference to the drawings, if any
understood, and state the advantageous effects, if any,
• In order to make it easier to describe the invention of the invention with reference to the background art
and in order to facilitate understanding, set out your
• Briefly describe the figures in the drawings, if any
material as though you were telling a story.
Step 10: Writing the Abstract
• This means that you should describe the context of
the invention, then the main structure, before you start
• Intended to help searchers know what the patent is
about.
• 150 words maximum.
• Use reference numerals in parentheses
• Often based on the independent claini(s), but this is
not always helpful.
• Unlike the other pads of an application, does not
contribute to the disclosure of the invention.
Final Review
• When you have finished your specification (complete
description, claims, drawings, abstract) review it,
particularly with reference to the language of the claims
(novelty, clarity, unnecessary limitations).
• Are all the features mentioned in the claims also
present in the description?
General Steps in the Patent Process
1. Filling of the Application
2. Formality Examination
3. First Publication (with Search Report)
4. Request for Substantive Examination
5. Submission of 3rd Party Observatior (if any)
6. Substantive Examination (ex-parte proceedings)
7. Grant [or Final Refusal (appealable)]
8. Second Publication of the Patent Grant
General Steps in the Utility Model & Industrial Design
Registration Process
1. Filling of the Application
2. Formality Examination
3. First Publication for Adverse Information
4. Submission of Adverse Information (if any)
5. Registration [or Final Refusal (appealable)]
6. Second Publication of the Registration
Patent Searching
Patent Search
• process by which patented and non-patented
information are located and examined to determine
relevance and similarity to a given patent or proposed
invention.
• a goal-oriented process of mining the valuable
technical and legal information in a patent document.
Available search tools are used to facilitate access and
retrieval of said information.
1. Pre-Application Searches (PAS)
• In the PAS search, the inventor should look for any
printed publications, public knowledge, or patents
already issued in his country or a foreign country that
may relate to the particular invention.
•The PAS would also prepare the inventor for the next
steps in the search process, state-of-the-art and novelty
searches, after getting ample information on the
available publications and public knowledge.
2. State-of-the-Art Search
•This kind of search is also referred to as an informative
search.
• It is performed to determine the general state-of-the-
art (current technology or method) to find the solutions
to a given technical problem as background information
for R&D activities and in order to know what patent
publications already exist in the field of the technology
or research.
• Further reasons for undertaking this kind of search
could be the wish to identify alternative technologies to
solve a problem.
• State-of-the-art searches are especially useful for
technology development or technology transfer
purposes.
3. Novelty Search/Prior Art Search
• The objective of a novelty search is to determine
whether an idea is new.
• The aim of the search is to discover relevant prior art
if a patent has already been granted.
• The outcome of the novelty search will help you with
the next decision of whether to stop or to go forward
spending time and money developing the invention.
• If nothing of relevance was found during a
comprehensive novelty search, the decision could easily
be made to proceed with the subsequent steps to
seeking to patent your invention. The decision is more
difficult if one or several pertinent patent documents
are found.
4. Patentability Search
• A patentability search is made to locate patent
documents relevant to the determination of this other
criteria of patentability, the inventive step.
• This type of search should cover all the technical
fields, which may contain material pertinent to the
invention.
5. Name Search / Bibliographic Search
• These are searches often used for locating information
about published patent documents involving specific
companies or individuals, as applicants, assignees,
patentees or inventors.
• The point of this type of search is to find out what is
covered by a specific patent number or to find out what
patents a particular inventor has to his credit.
6. Technological Activity Search
•These are to be understood as searches for identifying
companies and / or inventors who are active in a
specific field of technology.
•These searches are also suitable for identifying
countries in which a certain technology is being
patented, so as to know where to look to obtain
particular information in a given field of technology.
7. Infringement Search
•The objective of an infringement search is to locate
patents and published patent applications which might
be infringed by a given industrial activity or invention
that attempts to improve on an existing patent.
• In this type of search, the aim is to determine whether
an existing patent gives exclusive rights covering that
industrial activity or any part of it, in
a particular country or region.
• This type of search is often performed to support a
legal opinion that an unauthorized party is or is not
using a patented technology without the permission of
the individual or organization who owns it.
8. Freedom-To-Operate Search
• Freedom to operate (FT0) is the ability to proceed
with research, development and commercialization of a
product while fully accounting for any potential risks of
infringing activity, i.e., whether a product can be made,
used, sold, offered for sale, or exported, with a minimal
risk of infringing the unlicensed Intellectual Property
Rights or Tangible Property Rights of others.
•An organization will typically conduct a search of this
nature to support a legal opinion that a product does
not infringe a valid, in-force patent held within the
country where the organization is planning to conduct
business.
9. Validity Search
• In order to determine whether a patent will withstand
attack in litigation, a patent validity search is conducted.
You could think of a validity search as an extensive or
comprehensive patentability search.
• It is similar to a patentability search, but its purpose is
to determine whether a patent already obtained on an
invention is valid or not.
10. Legal Status Search
This type of investigation is made to obtain
information on the validity (status) of a patent or a
published patent application, on a given date,
under the applicable patent legislation in one or
more countries.
Such information can assist in making decisions
on, for example, exporting or in the negotiation of
license agreements.
lt can also give guidance on the value attached to
a particular patent by the patentee.

11. Patent Family Search / Equivalent Search

* Patent family search are used to find the countries

in which a given patent application has been filed;

find a patent family members that is written in a

desired language; obtain a list of prior art

documents or references cited; and estimate the

importance of invention(based on the number of

the patent family members published in different

countries).

12. Patent Landscape Search

*A very comprehensive state-of-the-art search.

*The patent landscape search is a deeper analysis

of patent and non-patent references after

completion of the state of the art.

*Using aspects of competitive intelligence, a

landscape study is something that could anticipate

any product liability issues in the future.