REQUIREMENTS

FOR
PATENTABILITY

Engr. Niño Angelo S. Torre

Intellectual Property Rights Specialist
Region V & IV-B
 WHAT IS A PATENT?

• A temporary monopoly granted to an inventor

by the government in return for disclosing an
invention.
• The exclusive right to exploit the invention for
20 years from the filing date, i.e. to make, use,
sell, or import an invention.
• The exclusivity right is territorial.
 WHAT IS AN INVENTION?
CHNICAL SOLUTION OF A PROBLEM IN ANY FIELD OF HUMAN AC

INVENTIVE STEP INDUSTRIAL APPLICABILITY

(Not obvious to a person (Real Life Benefit)
skilled the art)

NEW or NOVEL
(Not previously PUBLISHED
OR DISCLOSED in any form,
anywhere in the world)
 PATENTABLE INVENTIONS

 A product, such as a machine, a device, an article of

manufacture, a composition of matter, a microorganism
 A process, such as a method of use, a method of manufacturing,
a non-biological process, a microbiological process

 Computer-Related inventions , invention involves a

computer, computer network or other programmable apparatus, with
features realized wholly or partly by means of a computer program;
and
 An improvement of any of the foregoing
 NON-PATENTABLE
INVENTIONS
 Discoveries, scientific theories, and mathematical methods, a law
of nature, a scientific truth, or knowledge as such;
 Abstract ideas or theories, fundamental concepts apart from the
means or processes for carrying the concept to produce technical
effect;
 Schemes, rules, and methods of performing mental acts and
playing games;
 Method of doing business, such as a method or system for
transacting business without the technical means for carrying out
the method or system;
 Programs for computers;
 NON-PATENTABLE
INVENTIONS

 Methods 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 compositions
for use in any of these methods;

 Plant varieties or animal breeds or essentially biological process

for the production of plants or animals. This provision shall not
apply to microorganism and non-biological and microbiological
processes;
 Aesthetic creations; and
 Anything which is contrary to public order, health, welfare, or
morality, or process for cloning or modifying the germ line genetic
identity of humans or animals or uses of the human embryo.
 3 BASIC REQUIREMENTS OF
PATENTABILITY

1.) NOVEL - NEW

2.) INVENTIVE STEP – NON-OBVIOUS

3.) INDUSTRIAL APPLICABILITY - USE

Conditions: a) Belong to a statutory class of invention.

b) Have sufficiency of disclosure.
SECTION 21 OF R.A. 8293

Requires that an invention be:

1.) NOVEL (NEW)

WHAT IS NOVEL?

An invention shall not be considered

new if it forms part of a prior art.

(Section 23, R.A. 8293)

 WHAT IS A “PRIOR ART”?
- is everything made available to the public by means
of:

written disclosure prior use

PRIOR
ART

oral disclosure
GRACE PERIOD OR NON-
PREDUJIDICIAL

If you have already disclosed or

published your inventions in a journal,
demonstrate, sell or discuss your invention in
public, you can still file a patent within One
(1) year from the date of disclosure or
publication.
NON-PREJUDICIAL
DISCLOSURE

A disclosure during the 12 months period prior to the

filing date or priority date, and the disclosure was made
by:
The inventor or any person

A foreign Patent Office, the Bureau, or

the Office
A third party which obtained the
information directly or indirectly from
the inventor
DISCLOSURES CONSIDERED AS
PRIOR ART

Filing date 12/13/2017

Disclosure 12/13/2016

2012 2013 2014 2015 2016 2017 2018

Everything made available to the public

before the date of filing
1 year grace period
(non-prejudicial disclosure)
WHY DO WE EXAMINE FOR
NOVELTY?

OLD LIGHT BULB AN APPLICATION FILED

YESTERDAY
Is it logical to grant a patent for something
which is already known?
NOVELTY CONSIDERATION

Only one prior art document/disclosure is to be

considered.

Combination of separate items of prior art

document/disclosure is not permissible.
NOVELTY DETERMINATION

A prior art document/disclosure takes away the

novelty of any claimed subject matter when;

It is derivable directly and unambiguously

from that prior art.

Including any features implicit to a person

skilled in the art.
NOVELTY DETERMINATION

A prior art document/disclosure takes away the

novelty of any claimed subject matter when;

The relevant date of the prior art document.

Disclosures prior to the application.

Enabling disclosure of the prior art document.

The information given therein is sufficient to
enable the skilled person to practice the
teaching.
TEST OF NOVELTY

MUGWITH
MUG WITH HEAT SENSITIVE
MUG BISCUIT
BISCUIT MUG
(PRIOR ART) DISPENSER
DISPENSER NEW PATENT
NEW PATENT
(PRIOR ART) APPLICATION
APPLICATION
TEST OF NOVELTY

mug with mug with

thermochromic thermochromic
mug with built- material (battery material (on/off
in thermometer design) design)
(PRIOR ART) (PRIOR ART)
NEW PATENT NEW PATENT
APPLICATION APPLICATION
TEST OF NOVELTY

KNOWN NEWKNOWN
PATENT NEW PATENT
INVENTION INVENTION
APPLICATION APPLICATION
(PRIOR ART) (PRIOR ART)
 TEST OF NOVELTY

Based on: 1.) Specific intended Use

Prior Art: Substance X (lemongrass juice
extract) for use as insect repellant. Not Novel
Claim : Substance X (lemongrass juice extract)
for use as tea.
A claim to a substance X for use as insect repellant would not be considered to be novel
over the same substance known as a tea.
The tea may be novel if the use referred to implies a particular form of the substance,
e.g. the presence of certain additives, which distinguishes it from the known form of
the substance
Prior Art: Substance X (lemongrass juice
extract) for use as insect repellant. Novel
Claim : Use of substance X (lemongrass juice
extract) as tea.
 TEST OF NOVELTY

Based on: 2.) Selection Inventions

A selection invention relates to subject-matter which is selected

from within subject matter already known from the prior art.

 Selected sub-range is considered new, if

a.) narrow compared to the known range,
b.) sufficiently far removed from any specific examples disclosed in the
prior art and from endpoints of the known range, and
c.) not an arbitrary specimen of the prior art, but a purposive selection
linked to a new technical effect.
EXAMPLE SELECTION
INVENTIONS

Prior Art Application Novelty

1. 50-100 deg.C 1. 75 deg.C 

(optimal efficiency)
2. C6-C20 alkyl X
2. C7-C11 alkyl
Examples: C6, C11, C16
and C20
3. C2-5 alkyl 3. C2-10 alkyl X

4. C2-10 alkyl other

4. C2-5 alkyl
than C2-5 alkyl

 TEST OF NOVELTY

Based on: 3.) Generic vs Specific disclosure

 A generic disclosure does not take away the novelty of any

specific example falling within the terms of that disclosure.

However,
 A specific disclosure does take away the novelty of a generic
claim embracing that disclosure.
EXAMPLE GENERIC VS
SPECIFIC

Prior Art Application Novelty

1. silk 1. fabric x

2. fabric 2. cotton 

3. paste 3. adhesive x
EXAMPLE GENERIC VS
SPECIFIC

Prior Art Application Novelty

4. water 4. beverage x

5. beverage 5. fruit juice 

6. tea 6. coffee

7. coffee 7. tea (equivalents)
EQUIVALENTS

 A liquid beverage made of tea.

 A liquid beverage made of coffee.
If something is equivalent to what is claimed, it is
clearly not the same thing. To employ an equivalent to
what is disclosed would be a matter of obviousness,
not a question of novelty.
SECTION 21 OF R.A. 8293

Requires that an invention be:

1.) NOVEL

2.) INVENTIVE STEP

 WHAT IS INVENTIVE STEP?

An invention involves an inventive step, if

having regard to prior art:

-it is not obvious to a person skilled in

the art.

Section 26, R.A. 8293

TEST OF OBVIOUSNESS

 Does not go beyond the normal progress of

technology
 Follows plainly or logically from the prior art

 Does not involve the exercise of any skill or

ability beyond that to be expected of a person
skilled in the art
 The term “obvious” is used as equivalent to the
expression “lacking an inventive step”
TEST OF OBVIOUSNESS
Invention is shown by combining multiple prior art
references or any difference over single reference
is obvious.

Invention: A, B and C

Prior Art reference “1”: A, B

Prior Art reference “2”: C
Examiner: “To combine 1 and 2 would have been
obvious to a person skilled in the art”.
WHO ARE PERSON SKILLED IN
THE ART?

 Fictional person with no inventive ability

 Aware of common general knowledge in specific
art
 Has access to everything disclosed as the state of
the art
 Can observe developments in related technical
field
STAGES OF PROBLEM-SOLUTION
APPROACH

1. Determining the “closest prior art”,

2. Establishing the “objective technical problem” to
be solved, and
3. Considering whether or not the claimed invention,
starting from the closest prior art and the objective
technical problem, would have been obvious to the
skilled person. (could-would approach)
STAGES OF PROBLEM-SOLUTION
APPROACH

3. Could-would approach
• The question to be answered is whether the skilled person
could have arrived at the invention by adapting or
modifying the closest prior art, but whether he would have
done so because the prior art incited him to do so in the
hope of solving the objective technical problem or in
expectation of some improvement or advantage.
TEST OF INVENTIVE STEP

Obvious ba?

KNOWN KNOWN NEW PATENT

INVENTION INVENTION APPLICATION
(PRIOR ART) (PRIOR ART)
 TEST OF INVENTIVE STEP

Problem: The ear-like handle of coffee cups are often quite slippery.
You can therefore easily drop the cup. The result can be a stained
carpet, table cloth, wooden floor… Such coffee stains are usually
very difficult or impossible to remove completely.

Coffee Cup
TEST OF INVENTIVE STEP

Solution: Rubber is used as material for the

handle. This increases the friction between the
handle and the fingers of the user.

Claim: Coffee cup with an ear-like handle

characterized in that the handle is made of rubber.
TEST OF INVENTIVE STEP

COFFEE CUP WITH EAR-

SHAPED HANDLE

Obvious ba? WITH EAR-LIKE

SAUCE PAN
RUBBER HANDLES THAT
REDUCES ITS TEMP.

THERMOS BOTTLE WITH A

RUBBER-COVERED HANDLE
EXAMPLE OF OBVIOUS
INNOVATIONS
EXAMPLE OF OBVIOUS
INNOVATIONS
EXAMPLE OF OBVIOUS
INNOVATIONS
SECTION 21 OF R.A. 8293

Requires that an invention be:

1.) NOVEL

2.) INVENTIVE STEP

3.) INDUSTRIAL APPLICABILITY

WHAT IS INDUSTRIAL
APPLICABILITY?

An invention that can be produced and used in

any industry shall be industrially applicable.

Sec. 27 R.A. 8293)

WHAT IS INDUSTRY?

Includes all manufacturing, extracting and processing activities

of enterprises that were carried out continuously, independently
and for commercial gain. "Industry" need not however have been
conducted for profit -- and a product which was shown to be
useful to cure a rare disease could be considered capable of
industrial application even if it had never been intended for use
in trade at all.
EXAMPLE LACK OF INDUSTRIAL
APPLICABILITY

METHODS OF CONTRACEPTION ARE NOT

INDUSTRIALLY APPLICABLE

PERPETUAL MOTION MACHINE

A GHOST CATCHER
CLEANING AND BORING PROCESS OF A ROOT
CANAL
A METHOD OF SMOKING
 THANK YOU

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Bonifacio, Taguig City