Patent Law Notes

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Jesse Neil Cruz Eustaquio; Atty. Lolibeth Medrano; Notes for Patent Law 2014; Ateneo Law Jesse Neil Cruz Eustaquio; Atty. Lolibeth Medrano; Notes for Patent Law 2014; Ateneo Law
Course Syllabus
PATENT LAW, INDUSTRIAL DESIGN AND PLANT VARIETY PROTECTION
Attys. Ferdinand M. Negre, Lolibeth R. Medrano & Ignacio S. Sapalo

Reference:
Robert Patrick Merges and John Fitzgerald Duffy, PATENT LAW AND POLICY: CASES AND
MATERIALS (Fifth Edition 2011)
Nov 15

I. Introduction

A. Framework and General Principles of Intellectual Property System
B. History of the Patent System

Reading:
Chapter 1 : Introduction, Patent Law and Policy: Cases and Materials , pp. 1-13, Robert
Merges & John F. Duffy, 5
th
edition (2011)

See hard copy.

C. History and Development of the Philippine Patent System
D. Sources of Patent Law
1. 1987 Philippine Constitution
Article XII, Secs. 6, 14

Section 6. The use of property bears a social function, and all economic agents shall contribute to the
common good. Individuals and private groups, including corporations, cooperatives, and similar
collective organizations, shall have the right to own, establish, and operate economic enterprises, subject
to the duty of the State to promote distributive justice and to intervene when the common good so
demands.

Section 14. The sustained development of a reservoir of national talents consisting of Filipino scientists,
entrepreneurs, professionals, managers, high-level technical manpower and skilled workers and craftsmen
in all fields shall be promoted by the State. The State shall encourage appropriate technology and regulate
its transfer for the national benefit. The practice of all professions in the Philippines shall be limited to
Filipino citizens, save in cases prescribed by law.

Article XIV, Secs. 10 - 18

SCIENCE AND TECHNOLOGY

Section 10. Science and technology are essential for national development and progress. The State shall
give priority to research and development, invention, innovation, and their utilization; and to science and
technology education, training, and services. It shall support indigenous, appropriate, and self-reliant
scientific and technological capabilities, and their application to the country's productive systems and
national life.

Section 11. The Congress may provide for incentives, including tax deductions, to encourage private
participation in programs of basic and applied scientific research. Scholarships, grants-in-aid, or other
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forms of incentives shall be provided to deserving science students, researchers, scientists, inventors,
technologists, and specially gifted citizens.

Section 12. The State shall regulate the transfer and promote the adaptation of technology from all
sources for the national benefit. It shall encourage the widest participation of private groups, local
governments, and community-based organizations in the generation and utilization of science and
technology.

Section 13. The State shall protect and secure the exclusive rights of scientists, inventors, artists, and
other gifted citizens to their intellectual property and creations, particularly when beneficial to the people,
for such period as may be provided by law.

ARTS AND CULTURE

Section 14. The State shall foster the preservation, enrichment, and dynamic evolution of a Filipino
national culture based on the principle of unity in diversity in a climate of free artistic and intellectual
expression.

Section 15. Arts and letters shall enjoy the patronage of the State. The State shall conserve, promote, and
popularize the nation's historical and cultural heritage and resources, as well as artistic creations.

Section 16. All the country's artistic and historic wealth constitutes the cultural treasure of the nation and
shall be under the protection of the State which may regulate its disposition.

Section 17. The State shall recognize, respect, and protect the rights of indigenous cultural communities
to preserve and develop their cultures, traditions, and institutions. It shall consider these rights in the
formulation of national plans and policies.

Section 18.

The State shall ensure equal access to cultural opportunities through the educational system, public or
private cultural entities, scholarships, grants and other incentives, and community cultural centers, and
other public venues.

The State shall encourage and support researches and studies on the arts and culture.

2. International Agreements
Agreement on Trade-Related Aspects of the Intellectual Property Rights (TRIPS
Agreement)
Reading:
Introduction to the TRIPS Agreement, pp. 8 14, 16-18, A Handbook on the WTO TRIPS
Agreement, Antony Taubman, Hannu Wager and Jayashree Watal (2012)

See hard copy.

Paris Convention for the Protection of Industrial Property

[relate this to the principle of reciprocity.]
[3 options for fiing patent application
(1)
(2) right to priority this is the contribution of the Paris Convention
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(3) ]

Patent Cooperation Treaty

[Provides a unified procedure for filing patent applications to protect invenstions in each of its
contracting states.]

International Conventions and Reciprocity (Section 3, Republic Act No. 8293, IP
Code of the Philippines

Section 3. International Conventions and Reciprocity. - Any person who is a national or who is domiciled
or has a real and effective industrial establishment in a country which is a party to any convention, treaty
or agreement relating to intellectual property rights or the repression of unfair competition, to which the
Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be
entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or
reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise
entitled by this Act. (n)

Reverse Reciprocity of Foreign Laws (Section 231, IP Code)

Section 231. Reverse Reciprocity of Foreign Laws. - Any condition, restriction, limitation, diminution,
requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine
national seeking protection of intellectual property rights in that country, shall reciprocally be enforceable
upon nationals of said country, within Philippine jurisdiction. (n)

elements reciprocity reverse reciprocity
framework convention treaty or law of fc foreign law
parties ph and fc ph and fc
actions of a foreign country extends reciprocal rights condition restriction, limitation,
diminution, requirement, penalty to
ph nationals
ph actions extends benefits the give effect
treaty and convention extends
rights under ip code
can impose condition restriction,
limitation, diminution, requirement,
penalty to foreign nationals
objects national, domiciliary, industrial
establishment of a fc
ph (fc) and foreign nationtals (in
ph)

2. Laws
a. Civil Code of the Philippines
Arts. 712, 521

BOOK III: DIFFERENT MODES OF ACQUIRING OWNERSHIP
Preliminary Provision

Article 712. Ownership is acquired by occupation and by intellectual creation.

Ownership and other real rights over property are acquired and transmitted by law, by donation, by testate
and intestate succession, and in consequence of certain contracts, by tradition.

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They may also be acquired by means of prescription. (609a)

TITLE IV: SOME SPECIAL PROPERTIES

CHAPTER 3: Trade-marks and Trade-names

Article 520. A trade-mark or trade-name duly registered in the proper government bureau or office is
owned by and pertains to the person, corporation, or firm registering the same, subject to the provisions
of special laws. (n)

Article 521. The goodwill of a business is property, and may be transferred together with the right to use
the name under which the business is conducted. (n)

Article 522. Trade-marks and trade-names are governed by special laws. (n)

b. Republic Act 8293 - Intellectual Property Code (IPC) of the Philippines
c. Republic Act 9150 - Protection of Lay-Out Designs of Integrated Circuits Act

Section 1, Sections 112, 113, 114, 116, 117, 118, 119 and 120 under Chapter XIIl of R.A. No. 8293 are
hereby amended to read as follows:

"CHAPTER XIII "INDUSTRIAL DESIGN AND LAYOUT DESIGNS (TOPOGRAPHIES) OF
INTEGRATED CIRCUITS

"SEC. 112. Definition of Terms:"
"1. An Industrial Design is any composition of lines or colors or any three-dimensional form, whether
or not associated with lines or colors: Provided, That such composition or form gives a special
appearance to and can serve as pattern for an industrial product or handicraft;
"2. Integrated Circuit means a product, in its final form, or an intermediate form, in which the
elements, at least one of which is an active element and some or all of the interconnections are
integrally formed in and/or on a piece of material, and which is intended to perform an electronic
function; and
"3. 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."

d. Republic Act 9168 - Philippine Plant Variety Protection Act

TITLE III: Conditions for the Grant of the Plant Variety Protection
Section 4. The Certificate of Plant Variety Protection shall be granted for varieties that are:
a) New;
b) Distinct;
c) Uniform; and
d) Stable.

Section 5. Newness. - A variety shall be deemed new if the propagating or harvested material of the
variety has not been sold, offered for sale or otherwise disposed of to others, by or with the consent of the
breeder, for purposes of exploitation of the variety;
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a) In the Philippines for more than one (1) year before the date of filing of an application for plant
variety protection; or
b) In other countries or territories in which the application has been filed, for more than four (4) years
or, in the case of vines or tress, more than six (6) years before the date of filing of an application for
Plant Variety Protection.
However, the requirement of novelty provided for in this Act shall not apply to varieties sold, offered for
sale or disposed of to others for a period of five (5) years before the approval of this Act. Provided, That
application for PVP shall be filed within one (1) year from the approval of this act.

Section 6. Distinctness. - A variety shall be deemed distinct if it is clearly distinguishable from any
commonly known variety. The filing of an application for the granting of a plant variety protection or for
the entering of a new variety in an official register of variety in the Philippines or in any country, shall
render the said variety a matter of public knowledge from the date of the said application: Provided, That
the application leads to the granting of a Certificate of Plant Variety Protection or the entering of the said
other variety in the official register of variety as the case may be.

Section 7. Uniformity. - The variety shall be deemed uniform if, subject to the variation that may be
expected from the particular features of its propagation, it is sufficiently uniform in its relevant
characteristics.

Section 8. Stability. - The variety shall be deemed stable if its relevant characteristics remain unchanged
after repeated propagation or, in the case of a particular cycle of propagation, at the end of each such
cycle.

e. Republic Act 9502 Cheaper Medicines Act
II. Patents
A. General Principles of Patents
a. Territoriality - IP rights can be protected only if registered in a jurisdiction
b. Exclusivity - IP rights grant the holder the right to exclude others from using (TM),
copying (copyright), making, using, selling (patents)
c. Limited Rights - IP rights granted are subject to limitations on account of public policy,
public health patent rights granted are subject to limitations on account of public
policy, public health
d. Conditional - IP rights are subject to compliance with conditions/criteria for registration
patent is granted only when application complies with the patentability criteria and
validity is subject to post-grant conditions
e. Reciprocity - A [foreign] national or a domiciliary who has a real and effective industrial
establishment in a country which is a party to any convention, treaty or agreement
relating to IP rights or the repression of unfair competition, to which the Philippines is a
party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled
to benefits to the extent necessary to give effect to any provision of such convention,
treaty or reciprocal law, in addition to the rights to which any owner of an intellectual
property right is otherwise entitled under the IP Code.
f. First-to-File - law recognizes the first applicant who filed the application
g. Disclosure - patent applications must be published or disclosed; balances inventors
rights to exclusive use and exploitation of his creation, as well as the social function of
intellectual property which is to democratize knowledge.
B. Types of Patents
1. Invention (Sec. 21, IPC)

CHAPTER II: PATENTABILITY
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Section 21. Patentable Inventions. - Any technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially applicable shall be Patentable. It may be, or
may relate to, a product, or process, or an improvement of any of the foregoing. (Sec. 7, R.A. No. 165a)

2. Utility Model (Section 109.1, IPC)

Section 109. Special Provisions Relating to Utility Models.

109.1. (a) An invention qualifies for registration as a utility model if it is new and industrially applicable.
(b) Section 21, "Patentable Inventions", shall apply except the reference to inventive step as a
condition of protection.

109.2. Sections 43 to 49 shall not apply in the case of applications for registration of a utility model.

109.3. A utility model registration shall expire, without any possibility of renewal, at the end of the
seventh year after the date of the filing of the application.

109.4. In proceedings under Sections 61 to 64, the utility model registration shall be canceled on the
following grounds:
(a) That the claimed invention does not qualify for registration as a utility model and does not meet
the requirements of registrability, in particular having regard to Subsection 109.1 and Sections 22, 23, 24
and 27;
(b) That the description and he claims do not comply with the prescribed requirements;
(c) That any drawing which is necessary for the understanding of the invention has not been
furnished;
(d) That the owner of the utility model registration is not the inventor or his successor in title. (Secs.
55, 56, and 57, R.A. No. 165a)

3. Industrial Design (Secs. 112, 113, 119.1, IPC)

CHAPTER XIII: INDUSTRIAL DESIGN

Section 112. Definition of Industrial Design. - An industrial design is any composition of lines or colors
or any three-dimensional form, whether or not associated-with lines or colors: Provided, That such
composition or form gives a special appearance to and can serve as pattern for an industrial product or
handicraft. (Sec. 55, R.A. No. 165a)

Section 113. Substantive Conditions for Protection.
113.1. Only industrial designs that are new or original shall benefit from protection under this Act.
113.2. Industrial designs dictated essentially by technical or functional considerations to obtain a
technical result or those that are contrary to public order, health or morals shall not be protected. (n)

Section 119. Application of Other Sections and Chapters. - 119.1. The following provisions relating to
patents shall apply mutatis mutandis to an industrial design registration:
Section 21 - Novelty:
Section 24 -
Prior art: Provided, That the disclosure is contained in printed
documents
or in any tangible form;
Section 25 - Non-prejudicial Disclosure;
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Section 27 - Inventions Created Pursuant to a Commission;
Section 28 - Right to a Patent;
Section 29 - First to File Rule;
Section 31
-
Right of Priority: Provided, That the application for industrial
design
shall be filed within six (6) months from the earliest filing date
of the corresponding foreign application;
Section 33 - Appointment of Agent or Representative;
Section 51 - Refusal of the Application;
Sections 56 to 60 - Surrender, Correction of and Changes in Patent;
CHAPTER VII - Remedies of a Person with a Right to Patent;
CHAPTER VIII - Rights of Patentees and Infringement of Patents; and
CHAPTER XI - Assignment and Transmission of Rights.

4. Lay-Out Designs Republic Act 9150 (Topographies of Integrated Circuits RA 9150
amending RA 8293)

"CHAPTER XIII - "INDUSTRIAL DESIGN AND LAYOUT DESIGNS (TOPOGRAPHIES) OF
INTEGRATED CIRCUITS

"SEC. 112. Definition of Terms:"

"1. An Industrial Design is any composition of lines or colors or any three-dimensional form, whether or
not associated with lines or colors: Provided, That such composition or form gives a special
appearance to and can serve as pattern for an industrial product or handicraft;

"2. Integrated Circuit means a product, in its final form, or an intermediate form, in which the elements,
at least one of which is an active element and some or all of the interconnections are integrally
formed in and/or on a piece of material, and which is intended to perform an electronic
function; and

"3. 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."

C. Term of Protection

Article 33, TRIPS Agreement (Invention)

Article 33: Term of Protection
The term of protection available shall not end before the expiration of a period of twenty years counted
from the filing date.[8]

[8] It is understood that those Members which do not have a system of original grant may provide that the term of
protection shall be computed from the filing date in the system of original grant.

Sec. 54, IP Code (Invention)

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Section 54. Term of Patent. - The term of a patent shall be twenty (20) years from the filing date of the
application. (Sec. 21, R.A. No. 165a)

Section 109.3, IP Code (Utility Model)

109.3. A utility model registration shall expire, without any possibility of renewal, at the end of the
seventh year after the date of the filing of the application.

Article 26.3, TRIPS Agreement (Industrial Design)

Article 26: Protection
1. The owner of a protected industrial design shall have the right to prevent third parties not having the
owners consent from making, selling or importing articles bearing or embodying a design which is a
copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial
purposes.
2. Members may provide limited exceptions to the protection of industrial designs, provided that such
exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and
do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account
of the legitimate interests of third parties.
3. The duration of protection available shall amount to at least 10 years.

Section 118, IP Code (Industrial Design)

Section 118. The Term of Industrial Design Registration. - 118.1 The registration of an industrial design
shall be for a period of five (5) years from the filing date of the application.

118.2. The registration of an industrial design may be renewed for not more than two (2) consecutive
periods of five (5) years each, by paying the renewal fee.

118.3. The renewal fee shall be paid within twelve (12) months preceding the expiration of the period of
registration. However, a grace period of six (6) months shall be granted for payment of the fees after such
expiration, upon payment of a surcharge

[Class: Utility Model is not the TRIPS. TRIPS provides a minimum duration of 10 years. The reason why
utility models was given seven years, was to give it less protection, to promote invention instead of utility
models.]

[Compare Invention, Utility Model, and Industrial Design by (1) subject matter {product and process v.
product only} (2) novelty (3) inventive step (4) industrial applicability (4) features protected {technical
elevement v. aesthetic feature} (5) Term of protection]

Section 118, IP Code (Layout-Design)

" 118.5. Registration of a layout-design shall be valid for a period often (10) years, without renewal, and
such validity to be counted from the date of commencement of the protection accorded to the layout-
design. The protection of a layout-design under this Act shall commence:

"a) on the date of the first commercial exploitation, anywhere in the world, of the layout-design by or
with the consent of the right holder: Provided, That an application for registration is filed with the
Intellectual Property Office within two (2) years from such date of first commercial exploitation; or

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"b) on the filing date accorded to the application for the registration of the layout-design if the layout-
design has not been previously exploited commercially anywhere in the world."

D. IP Code Provisions on Patents
1. Patentable Inventions (Section 21, IPC)

CHAPTER II: PATENTABILITY

Section 21. Patentable Inventions. - Any technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially applicable shall be Patentable. It may be, or
may relate to, a product, or process, or an improvement of any of the foregoing. (Sec. 7, R.A. No. 165a)

2. Purpose
Manzano vs. Court of Appeals, 278 SCRA 688

The primary purpose of the patent system is not the reward of the individual but the advancement of the
arts and sciences. The function of a patent is to add to the sum of useful knowledge and one of the
purposes of the patent system is to encourage dissemination of information concerning discoveries and
inventions.

Presumption. The issuance of such patent creates a presumption which yields only to clear and cogent
evidence that the patentee was the original and first inventor.

The burden of proving want of novelty is on him who avers it and the burden is a heavy one which is met
only by clear and satisfactory proof which overcomes every reasonable doubt.

Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)

The patent system embodies a carefully crafted bargain for encouraging the creation and disclosure of
new useful and non-obvious advances in technology and design, in return for the exclusive right to
practice the invention for a number of years.

The inventor may keep his invention secret and reap its fruits indefinitely. In consideration of its
disclosure and the consequent benefit to community, the patent is granted.

The patent law has a three-fold purpose:
(1) Patent law seeks to foster and reward invention;
(2) Promotes disclosures of inventions to stimulate further innovation and to permit the public to practice
the invention once the patent expires;
(3) The stringent requirements for patent protection seek to ensure that ideas in the public domain remain
there for the free use of the public.

There can be no infringement of a patent until a patent has been issued, since whatever right one has to
the invention covered by the patent arises alone from the grant of patent.

Readings:
Report on the International Patent System, pp. 7 22, WIPO Standing Committee on the
Law of Patents 12
th
Session (2008) available
http://www.wipo.int/edocs/mdocs/scp/en/scp_12/scp_12_3.pdf

See hard copy.
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The first section will highlight the economic basis of the patent system. Second part contains statistical
evidence on use of the international and national patent system.

28. Technology and knowledge are classified by economists as public goods. Public goods are those that
are non-rival (they can be used simultaneously by many people) and non-excludable (people cannot
be excluded from freely using the public good). Public goods distort the normal cost-benefit dynamics
that regulate the efficient production and use of goods in a competitive market, and are prone to under-
provision (e.g. public radio) or to over-use (e.g. roads, fishing resources). This is known as market failure.
29. The fundamental role of the patent system from an economists perspective is to address market
failure and restore the incentives to invest in production of knowledge

Patents provide the owner with an exclusive rights for a limited time period, which would increase his/her
incentive to iinovate. However, where the exlusive right allows the firms to establish a monopoly
position, it may lead to market distortions.

See also http://www.wipo.int/pct/en/faqs/faqs.html on Patent Cooperation Treaty

The Nature and Function of the Patent System, Edmund Kitsch, The Journal of Law and
Economics, pp. 265 -291

See Reading

Nov. 22
3. Non-Patentable Inventions (Section 22, IPC as amended by Republic Act 9502, Cheaper
Medicines Act)

Section 22. Non-Patentable Inventions. - The following shall be excluded from patent protection:
22.1. 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.
For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle
size, isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known
substance shall be considered to be the same substance, unless they differ significantly in
properties with regard to efficacy;
22.2. Schemes, rules and methods of performing mental acts, playing games or doing business, and
programs for computers;
22.3. 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
composition for use in any of these methods;
22.4. Plant varieties or animal breeds or essentially biological process for the production of plants or
animals. This provision shall not apply to micro-organisms and non-biological and
microbiological processes.
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Provisions under this subsection shall not preclude Congress to consider the enactment of a law
providing sui generis protection of plant varieties and animal breeds and a system of
community intellectual rights protection:
22.5. Aesthetic creations; and
22.6. Anything which is contrary to public order or morality. (Sec. 8, R.A. No. 165a)

[Class notes: For 22.4 and 22.3 of the IPC is in conformity with Article 27(3)(a-b). Plants and animals is
imbued with public interest, i.e., food security. See R.A. No. 9168.

Q: What is a discovery under 22.1?
Q: Under 22.1, the ultimate test seems to be efficacy.

Article 27, TRIPS Agreement

Article 27: Patentable Subject Matter

1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether
products or processes, in all fields of technology, provided that they are new, involve an inventive step
and are capable of industrial application.[5] Subject to paragraph 4 of Article 65, paragraph 8 of Article
70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without
discrimination as to the place of invention, the field of technology and whether products are imported or
locally produced.

2. Members may exclude from patentability inventions, the prevention within their territory of the
commercial exploitation of which is necessary to protect ordre public or morality, including to protect
human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such
exclusion is not made merely because the exploitation is prohibited by their law.

3. Members may also exclude from patentability:
(a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
(b) plants and animals other than micro-organisms, and essentially biological processes for the production
of plants or animals other than non-biological and microbiological processes. However, Members shall
provide for the protection of plant varieties either by patents or by an effective sui generis system or by
any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date
of entry into force of the WTO Agreement.

[5] For the purposes of this Article, the terms "inventive step" and "capable of industrial application" may be
deemed by a Member to be synonymous with the terms "non-obvious" and "useful" respectively.

[Class Note: Discrimination under Article 27 of the TRIPS does not refer to Article 3 or 4 of the
TRIPS which refer to discrimination as to nationals and nationals of entire States. It is, rather,
discrimination as to the place of invention, the field of technology and whether products are
imported or locally produced.]

Non-patentable Subject Matter A. 27 of TRIPS 21 IP Code
(a) diagnostic, therapeutic and surgical methods for the treatment
of humans or animals;
yes (3)(a) 22.3
(b) plants and animals other than micro-organisms, and essentially
biological processes for the production of plants or animals other
than non-biological and microbiological processes. However,
Members shall provide for the protection of plant varieties either
yes (3)(b) 22.4
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by patents or by an effective sui generis system or by any
combination thereof. The provisions of this subparagraph shall be
reviewed four years after the date of entry into force of the WTO
Agreement.
necessary to protect ordre public or morality, including to protect
human, animal or plant life or health or to avoid serious prejudice
to the environment, provided that such exclusion is not made
merely because the exploitation is prohibited by their law.
yes; (2) 22.6
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.
For the purpose of this clause, salts, esters, ethers,
polymorphs, metabolites, pure form, particle size,
isomers, mixtures of isomers, complexes,
combinations, and other derivatives of a known
substance 2shall be considered to be the same
substance, unless they differ significantly in
no 22.1
Schemes, rules and methods of performing mental acts, playing
games or doing business, and programs for
computers;
no 22.2
Aesthetic creations; and no 22.5

Article 3 and 4 of the TRIPS Agreement

Article 3
National Treatment

1. Each Member shall accord to the nationals of other Members treatment no less favourable than that it
accords to its own nationals with regard to the protection[3] of intellectual property, subject to the
exceptions already provided in, respectively, the Paris Convention (1967), the Berne Convention (1971),
the Rome Convention or the Treaty on Intellectual Property in Respect of Integrated Circuits. In respect
of performers, producers of phonograms and broadcasting organizations, this obligation only applies in
respect of the rights provided under this Agreement. Any Member availing itself of the possibilities
provided in Article 6 of the Berne Convention (1971) or paragraph 1(b) of Article 16 of the Rome
Convention shall make a notification as foreseen in those provisions to the Council for TRIPS.

2. Members may avail themselves of the exceptions permitted under paragraph 1 in relation to judicial
and administrative procedures, including the designation of an address for service or the appointment of
an agent within the jurisdiction of a Member, only where such exceptions are necessary to secure
compliance with laws and regulations which are not inconsistent with the provisions of this Agreement
and where such practices are not applied in a manner which would constitute a disguised restriction on
trade.

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Article 4
Most-Favoured-Nation Treatment

With regard to the protection of intellectual property, any advantage, favour, privilege or immunity
granted by a Member to the nationals of any other country shall be accorded immediately and
unconditionally to the nationals of all other Members. Exempted from this obligation are any advantage,
favour, privilege or immunity accorded by a Member:

(a) deriving from international agreements on judicial assistance or law enforcement of a general nature
and not particularly confined to the protection of intellectual property;

(b) granted in accordance with the provisions of the Berne Convention (1971) or the Rome Convention
authorizing that the treatment accorded be a function not of national treatment but of the treatment
accorded in another country;

(c) in respect of the rights of performers, producers of phonograms and broadcasting organizations not
provided under this Agreement;

(d) deriving from international agreements related to the protection of intellectual property which entered
into force prior to the entry into force of the WTO Agreement, provided that such agreements are notified
to the Council for TRIPS and do not constitute an arbitrary or unjustifiable discrimination against
nationals of other Members.

Republic Act No. 9168, Plant Variety Protection Act

a) New; b) Distinct; c) Uniform; and d) Stable.



b) In other countries or territories in which the application has been filed, for more than four (4)
years or, in the case of vines or tress, more than six (6) years before the date of filing of an
application for Plant Variety Protection.



14
characteristics.

cycle.

Section 32 and 34 of the Indigenous Peoples Right Act

Section 32. Community Intellectual Rights. - ICCs/IPs have the right to practice and revitalize their own
cultural traditions and customs. The State shall preserve, protect and develop the past, present and future
manifestations of their cultures as well as the right to the restitution of cultural, intellectual, religious, and
spiritual property taken without their free and prior informed consent or in violation of their laws,
traditions and customs.

Section 34. Right to Indigenous Knowledge Systems and Practices and to Develop own Sciences and
Technologies. - ICCs/IPs are entitled to the recognition of the full ownership and control and protection
of their cultural and intellectual rights. They shall have the right to special measures to control, develop
and protect their sciences, technologies and cultural manifestations, including human and other genetic
resources, seeds, including derivatives of these resources, traditional medicines and health practices, vital
medicinal plants, animals and minerals, indigenous knowledge systems and practices, knowledge of the
properties of fauna and flora, oral traditions, literature, designs, and visual and performing arts.

[Class note: It is difficult to regulate communal intellectual property rights of indigeous people. Thus, a
special provision is made for it. Even at the international level, there is a special efforts to protect the
intellectual property rights of indigeous people.

[Class notes: Patent claim sets boundaries, patent fences.
(1) invention mental construct inside the mind of the inventor and has no physical
substanct (abstract)
(2) embodiment is the physical form of the invention in the real world
(3) claim e.g. an apparatues for

Types of claims:
1. Apparatus or Device Claims protect embodiments of an invention in the form of a physical
apparatus, system or device, e.g. rice cooker.
2. Method Claims or Process Claims recite a sequence of steps which together complete a
task such as making an article of some sort. e.g. method of making tea.

a. Discoveries, scientific theories and mathematical methods

[Class notes: Reasons why discovery is not patentable: (a) the utility requirement is not complied
with, and (b) it lacks the inventive contribution. Scientific theory and mathematical process are
building blocks to inventions. Thus patents are not granted for it. It is natures library fiction.

OReilly v. Morse, U.S. 62 (1854)

Gist:

15
The Supreme Court clarified the limits on the breadth of a claim. Morse applied for a patent on his
recently invented telegraph. One of the claims in the patent attempted to cover the use of the motive
power of the electric or galvanic current . . . however developed for marking or printing intelligible
characters, signs, or letter, at any distances . . . . The Court disallowed the claim on the ground that it was
impossible to understand [its] extent. In the Courts view, the claim represented an attempt to obtain a
monopoly over the electromagnetic force itself rather than any device which made use of the force.

The dissent criticized the majority for insisting that every claim had to
be tied to a machine.

Notes:

The first seven inventions, set forth in the specifications of his claims, are not subject to exception. The
eighth is too broad and covers too much ground. It is this. "I do not propose to limit myself to the specific
machinery or parts of machinery described in the foregoing specification and claims; the essence of my
invention being the use of the motive power of the electric or galvanic current, which I call electro-
magnetism, however developed, for making or printing intelligible characters, signs or letters at any
distances, being a new application of that power, of which I claim to be the first inventor or discoverer."

The complainants, in their bill, allege that Samuel F. B. Morse, one of them, was the true and original
inventor of the Electro-Magnetic Telegraph, worked by the motive power of electro-magnetism, and of
the several improvements thereon, by which intelligence which is in one place is transmitted to other
distant places, and that by the letters patent of the United States, duly issued to him, Samuel F. B. Morse,
and by his partial assignments to F. O. J. Smith and Alfred Vail, the other complainants, they together are
lawfully invested with the exclusive right of constructing and employing such telegraph for such purpose,
throughout the United States, for the terms in the letters patent mentioned, and which have not yet
expired, and they exhibit the letters patent.

They state that they had been thus in the successful and uninterrupted exercise of the rights granted to
them by the letters patent of the United States, and had been in nowise disturbed therein, until, by the
operations of the defendant, O'Reilly, and the committing of the wrongs presently mentioned, by him and
his co-defendants.

This defendant, O'Reilly, they state, had, as early as 1845, entered into a contract with the complainants,
and another, then having an interest in the patent, whereby he, O'Reilly, acknowledged their right, and
that he had afterwards, in various ways and for a long period of time, manifested his acquiescence in and
admissions of the rights and privileges of them, the complainants, and even insisted on his right to the use
of them himself, under his contract with them; that he had, under this contract and his claims under it, in
fact, used and employed the improved telegraph of the complainants, and persisted in such, his claim, to
employ it on all the lines embraced by his contract, without questioning the validity of their patents.

he and his co-defendants had worked and employed upon said line, a telegraph substantially the same
with the Electro-Magnetic Telegraph, invented by the complainant, Morse, and in his patents mentioned,
against the will and without any authority from them, the complainants

They [Morse et al.]show that the terms of the contract, under which O'Reilly claimed their right to the use
of the telegraph, on certain other lines where he employed it, did not extend to any country north of the
Ohio River

so upon the principle and plan of the said several improvements patented by the complainant

16
the complainants, by the use of their patented improvements, or the principle and essential parts thereof,

They state that they are informed that the defendants sometimes give out in speeches, that the patents of
the complainant, Morse, are void, and at other times, give out and pretend that the machinery and
apparatus which they use for the transmission and the reception of the intelligence upon the said line, is a
distinct and separate invention, which they, the complainants, are informed the defendants call the
Columbian Telegraph:

They allege that the defendants had received, and were then receiving, considerable sums of money for
transmitting intelligence

caused a great diminution of the business of them, the complainants, on their line of telegraph, which they
had caused to be constructed defendants refuse to desist from such violation

The complainants [Morse] pray that the defendants [OReilly], by an order, and the process of the court,
may be enjoined from hereafter using or employing such telegraphs in the violation and infringement of
the rights of them, the complainants, within the District of Kentucky; that they may be compelled to
account for the money received by them in consideration of their unlawful operations and wrongful
exercise of the rights, privileges, and property of the complainants; and that on due proceeding and final
hearing, such order of injunction may be made final and effectual; and that the complainants may have
such other relief as their case may require. And,

The respondent [OReilly] admits the contract with the complainants, of 1845, stated in the bill, and
seems to admit that he had used, under it, portions of the "machine or combinations" described in the
patent to Mr. Morse, of 1840, but denies he had used others under this contract.

He says he was not scientific, and had not seen the patent until after the complainants had alleged he had
forfeited his contract, and instituted a suit to have it vacated, and insists that he is not estopped to deny
the validity of the patents.

He sets up no defense under this contract, and disclaiming any license from the complainants in respect
to the line of telegraph in question, answers, that he believes, on grounds which he sets forth, that Mr.
Morse is not the original and first inventor of the telegraph described in his patents, and insists that his
patents are, on that ground, and upon their face, and for other causes he states, null and void.

He admits the construction and operation of the lines of telegraph in Kentucky and elsewhere by himself
and others, but denying that the instruments employed on them are within the description of the
complainants' patents, even on the supposition of their validity, denies the infringement

The grounds of defense presented by the answer of O'Reilly, and assumed on the proofs, will be
comprehended under these heads of primary division:
I. The complainant, Morse, was not the true and original inventor of this telegraph.
II. The letters patent to him are null and void upon their face, and for other causes dehors [other than] .
III. The telegraph constructed and employed by them, the defendants, is substantially and in law, different
from the telegraph described in the letters patent, to Morse, and of which he can lawfully claim the
exclusive employment, and therefore, on the supposition of the validity of the patents to any extent, there
has been no infringement.
IV. The case on the pleadings and proofs, is not one, whatever might be considered of it on a final hearing
of the bill, which will justify an order for injunction presently.

17
Is Mr. Morse the original inventor of this telegraph, and of the several improvements thereon described
in his letters patent?

It is necessary that we now ascertain and settle, what is the thing which was invented; and to this end it
will be most convenient to begin at its conception, and accompany it in its progress down to its present
state of apparent maturity and completeness.

[Morse were on a ship with a few other intelligent men. Their conversations led to the invention of the
electro-magnetic telegraph technology]

it occurred to him that by means of electricity, signs representing figures, letters, or words, might be
legibly written down at any distance, and that the same effect might be produced by bringing the current
in contact with paper saturated with some saline solution. These ideas took full possession of his mind,
and during the residue of the voyage he occupied himself, in a great measure, in devising means of giving
them practical effect. Before he landed in the United States, he had conceived and drawn out in his
sketch book

"His chief concern, therefore, in his subsequent experiments was to ascertain at what distance from the
battery, sufficient magnetism could be obtained to vibrate a piece of metal to be used for that purpose,
knowing that if he could obtain the least motion at the distance of eight or ten miles, the ultimate object
was within his grasp."

"It was early a question between Professor Morse and myself, where was the limit of the magnetic power
to move a lever? I expressed a doubt whether a lever could be moved by this power at the distance of 20
miles, and my settled conviction was that it could not be done with sufficient force to mark characters on
paper at 100 miles distance

But in the spring of this year he appears to have been excited by the publication of an account of the
invention of a telegraph by two French gentlemen, M. Gonon and Servel, which it was at first
apprehended, from the terms of its announcement, was no other than the Electro-Magnetic Telegraph; but
which afterwards turned out to be only a form of the common telegraph formerly in use, and he consented
to a notice being taken in one of the newspapers of New York, of his invention, and renewed and
increased his exertions to perfect and demonstrate its great superiority and value

In the meantime, on the ___ day of October, 1837, in order to protect his right to his invention, he filed
his caveat in the Patent Office.

It is in these words:

"To the Commissioner of Patents"

"The petition of Samuel F. B. Morse, . . . represents:"

"That your petitioner has invented a new method of transmitting and recording intelligence by means
of electro-magnetism, which he denominates The American Electro-Magnetic Telegraph, and which
he verily believes has not been known or used prior to the invention thereof by your petitioner. Your
petitioner further states that the machinery for a full, practical display of his new invention is not yet
completed, and he therefore prays protection of his right till he shall have matured the machinery, and
desires that a caveat for that purpose may be filed in the confidential archives of the Patent Office and
preserved in secrecy according to the terms and conditions expressed in the act of Congress in that
18
case made and provided, he having paid twenty dollars into the Treasury and complied with other
provisions of the said act."

"New York, Sept. 28th, 1837"

These are the specifications annexed to the caveat:

"The nature of my invention consists in laying an electric or galvanic circuit or conductors of any
length to any distance. These conductors may be made of any metal, such as copper or iron wire, or
strips of copper or iron, or of cords or twine, or other substances, gilt, silvered, or covered with any
metal leaf, properly insulated in the ground, or through or beneath the water, or through the air, and by
causing the electric or galvanic current to pass through the circuit, by means of any generator of
electricity, to make use of the visible signs of the presence of electricity in any part of the said circuit,
to communicate any intelligence from one place to another."

"To make the said visible signs of electricity available for the purpose aforesaid, I have invented the
following apparatus, namely: "

"First. A system of signs by which numbers, and consequently words and sentences, are signified. "
[Thus, the Morse code!]

Page 56 U. S. 76

"Second. A set of type adapted to regulate and communicate the signs, with cases for convenient
keeping of the type, and rules in which to set up the type."

"Third. An apparatus called a Port Rule, for regulating the movement of the type rules, which rules, by
means of the type, in their turn regulate the times and intervals of the passage of electricity."

"Fourth. A register, which records the signs permanently."

"Fifth. A dictionary or vocabulary of words, numbered and adapted to this system of telegraph."

"Sixth. Modes of laying the conductors to preserve them from injury."

Here is a description of each of the articles of the invention, after which he concludes in these words:

"What I claim as my invention and desire to secure by letters patent and to protect for one year is a
method of recording permanently electrical signs, which, by means of metallic wires or other good
conductors of electricity, convey intelligence between two or more places."

The new instrument, which Mr. Morse was enabled to have constructed by his arrangement with Mr. Vail,
was completed in the latter end of this year, and in the succeeding February, 1838, it was exhibited in the
Franklin Institute at Philadelphia, where it operated with success through a circuit of ten miles of wire,
and a committee of the Institute made a report of its success.

[Morse applies for a letters patent.]

Here he gives the several parts of which his invention consisted, and adds a long description of each of
them, and then sums up what he had affirmed he had himself invented in these words:

"What I claim as my invention and desire to secure by letters patent is as follows: "

19
"1st. The formation and arrangement of the several parts of mechanism constituting the type rule, the
straight port rule, the circular port rule, the two signal levers, and the register lever, and alarm lever
with its hammer, as combining, respectively with each of said levers, one or more armatures of an
electromagnet, and as said parts are severally described in the foregoing specification."

"2ndly. The combination of the mechanism constituting the recording cylinder, and the accompanying
rollers and train wheels, with the formation and arrangement of the several parts of mechanism, the
formation and arrangement of which are claimed as above, and as described in the foregoing
specification."

"3dly. The use, system, formation, and arrangement of type and of signs, for transmitting intelligence
between distant points, by the application of electro-magnetism, and metallic conductors combined
with mechanism, described in the foregoing specification."

"4thly. The mode and process of breaking, by mechanism, currents of electricity or galvanism in any
circuit of metallic conductors, as described in the foregoing specification."

"5thly. The mode and process of propelling and connecting currents of electricity or galvanism in and
through any desired number of circuits of metallic conductors, from any known generator of
electricity or galvanism, as described in the foregoing specification."

"6th. The application of electro-magnets by means of one or more circuits of metallic conductors,
from any known generator of electricity or galvanism, to the several levers in the machinery described
in the foregoing specification, for the purpose of imparting motion to said levers and operating said
machinery

Page 56 U. S. 78

and for transmitting, by signs and sounds, intelligence between distant points, and simultaneously to
different points."

"7thly. The mode and process of recording or marking permanently signs of intelligence transmitted
between distant points and simultaneously to different points, by the application and use of electro-
magnetism or galvanism, as described in the foregoing specification."

"8th. The combination and arrangement of electro-magnets, in one or more circuits of metallic
conductors, with armatures of magnets, for transmitting intelligence by signs and sounds, or either,
between distant points, and to different points simultaneously."

"9th. The combination and mutual adaptation of the several parts of the mechanism and system of type
and of signs, with and to the dictionary or vocabulary of words, as described in the foregoing
specification."

It appears that no objection was found to the issuing of the patent immediately, except that there had not
been filed with the specifications a duplicate set of the drawings, and that the Commissioner wrote in
answer to an application for it, to this effect, on the 1st of May.

But Mr. Morse had conceived a hope that he might secure a consideration for the use of his invention in
foreign countries as well as in the United States, and on the 15th of May he returned this answer to the
Commissioner, and departed the next day for Liverpool:

"New York City University, May 15, 1838"

"HON. HENRY L. ELLSWORTH."

20
"DEAR SIR -- Excuse the delay in answering your letter of the 1st instant, relative to a duplicate set of
drawings for my letters patent. May I ask the favor of you to delay issuing the letters patent until you hear
from me in Europe, as I fear issuing them here will at present interfere with my plans abroad."

"I sail tomorrow in the ship Europe for Liverpool. Farewell."

In England, a patent was refused to the American inventor on the ground that some description of his
invention -- the substance of which will appear hereafter -- had been published in the London Magazine.

But he was otherwise received in France.

(Here is given the account of Mr. Rives and Captain Pell, already set out. After which the account
proceeds:)

"The idea of applying galvanism to the construction of telegraphs is not new

"Since the period to which the invention of Mr. Morse's telegraph goes back, other arrangements founded
on the same principles have been announced, of which the most celebrated are those of Mr. Steinheil of
Munich, and of Mr. Wheatstone of London. They differ very much in mechanism."

exclusive right to every improvement where the motive power is the electric current and the result is the
marking or printing intelligible characters, signs, or letters at a distance.

Whoever discovers that a certain useful result will be produced in any art, machine, manufacture,
or composition of matter by the use of certain means is entitled to a patent for it, provided he
specifies the means he uses in a manner so full and exact that anyone skilled in the science to which
it appertains can, by using the means he specifies, without any addition to or subtraction from
them, produce precisely the result he describes. And if this cannot be done by the means he describes,
the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the
means he specifies to produce the result or effect he describes, and nothing more.

Morse has been able, by a new combination of known powers (including electro-magnetism), to discover
a method by which intelligible marks or signs may be printed at a distance but he has not discovered that
the electro-magnetic current, in any other method and combinations, will do as well. The law requires that
a specification be made as part of the patent and such patent will only be issued for the invention
described in the specification. He thus prevents others from attempting to improve upon the manner and
process described and deters the public from using it, even if discovered.

He must describe the manner and process as above mentioned and the end it accomplishes. And anyone
may lawfully accomplish the same end without infringing the patent if he uses means substantially
different from those described.
[In OReilly v. Morse, it was decided that a claim in broad terms for the use of the motive power of the
electric or galvanic current called electromagnetism, however developed, for making or printing
intelligible characters, letters, or signs at any distances, although a new application of that power first
made by Morse, was void, because it was a claim for a patent for an effect produced by the use of
electromagnetism, distinct from the process or machinery necessary to produce it;]
[Important distinction: effect v. process or machinery.]
[Class notes: During the time, the Patent system was only for registration, i.e., no requisite for
novelty, inventive step, and industrial applicability. Two years prior to the case, the patent system
evolved into one that is administrative. The patent system would have to evaluate the application.
21
Morse is a landmarkcase; a precursor to all the mobile communication cases. Morse invented the
repeaters which enforce the electric force over distance.]

[Class notes: Justice Grier Dissent - The mere discovery of a new element or law or principle of
nature, without any valuable application of it to the arts, is not the subject of a patent. But he who
takes this new element or power, as yet useless, from the laboratory of the philosopher and makes it
the servant of man; who applies it to the perfecting of a new and useful art or to the improvement
of one already known, is the benefactor to whom the patent law tenders its protection. The devices
and machines used in the exercise of it may or may not be new, yet, by the doctrine against which I
contend, he cannot patent them, because they were known and used before.]

[Class note: Grier talks about utility.]

The Telephone Cases, 126 U.S. 1 (1888)
http://supreme.justia.com/cases/federal/us/126/1/case.html

The law does not require that a discoverer or inventor, in order to get a patent for a process, must have
succeeded in bringing his art to the highest degree of perfection; it is enough if he describes his method
with sufficient clearness and precision to enable those skilled in the matter to understand what the
process is, and if he points out some practicable way of putting it into operation.

In order to procure a patent for a process, the inventor must describe his invention with sufficient
clearness and precision to enable those skilled in the matter to understand what his process is, and must
point out some practicable way of putting it into operation; but he is not required to bring the art to the
highest degree of perfection.

The main issues in this respect argued by counsel were issues of fact whether Drawbaughs
instruments were made prior to Bells discovery and were practically operative, and whether the
Drawbaugh witnesses to these points were to be believed.

The Supreme Court clarified the line dividing permissible claims from those that were too broad under the
Morse rule. Alexander Graham Bell applied for a patent on the telephone. Fifth claim covered

The method of and apparatus for transmitting vocal or other sounds telegraphically, as herein
described, by causing electrical undulations, similar in form to the vibrations of the air accompanying
the said vocal or other sounds, substantially as set forth. It is contended that this embraces the art of
transferring to or impressing upon a current of electricity the vibrations of air produced by the human
voice in articulate speech, in a way that the speech will be carried to and received by a listener at a
distance on the line of the current.

Bells claim, said the Court, differed from Morses claim because Bell claimed only the use of electric
current for transmitting the human voice.

The Court noted that it may be that electricity cannot be used at all for the transmission of speech except
in the way Bell has discovered.

The court held that the patent claimed but one method of transmitting vocal and other sounds, which
method converted the energy of sound-waves into magnetic energy and then into vibratory currents of
electricity. The court reversed the decree against the manufacturer regarding the fifth claim, holding that
the battery, primary circuit, transmitter diaphragm, its electrodes, and the coil and magnet in the primary
22
or transmitter circuit of the manufacturers apparatus, did not involve the patent method described in
claim five. [So, it was substantially different? How?]

Bell's fifth claim under his patent of March 7, 1876, No. 174,465, is not confined to the magneto
instrument, or to such modes of creating electrical undulations as could be produced by that form of
apparatus.

Bell's fifth claim under his patent of March 7, 1876, also covered his invention of an apparatus to make
useful his discovery of an art or process for electrical transmission of speech, and this invention was
patentable under the laws of the United States.

Bell Telephone Patents

The two patents thus alleged to have come into the ownership of the complainants and to have been
infringed were:
1. No. 174,465, dated March 7, 1876, granted to Alexander Graham Bell for new and useful
improvements in telegraphy, and
2. No. 186,787, dated January 30, 1877, granted to the same inventor for new and useful improvements in
electric telephony.

[The cases in the circuit courts upheld the validity of both patents.]

In this art or, what is the same thing under the patent law, this process, this way of transmitting speech --
electricity, one of the forces of nature -- is employed, but electricity, left to itself, will not do what is
wanted. The art consists in controlling the force as to make it accomplish the purpose.

Thus, his art was put in a condition for practical use. In doing this, both discovery and invention, in the
popular sense of those terms, were involved -- DISCOVERY in finding the art, and INVENTION in devising
the means of making it useful. For such discoveries and such inventions the law has given the discoverer
and inventor the right to a patent, as discoverer, for the useful art, process, method of doing a thing, he
has found, and as inventor for the means he has devised to make his discovery one of actual value.
Other inventors may compete with him for the ways of giving effect to the discovery, but the new art he
has found will belong to him and those claiming under him during the life of his patent. If another
discovers a different art or method of doing the same thing, reduces it to practical use, and gets a patent
for his discovery, the new discovery will be the property of the new discoverer, and thereafter the two will
be permitted to operate each in his own way, without interference by the other. The only question
between them will be whether the second discovery is in fact different from the first.

[Dictionary: To discover is to find (something or someone) unexpectedly or in the course of a search;
To invent is to create or design (something that has not existed before)]

The patent for the art does not necessarily involve a patent for the particular means employed for using it.
Indeed, the mention of any means in the specification or descriptive portion of the patent is only
necessary to show that the art can be used, for it is only useful arts -- arts which may be used to
advantage -- that can be made the subject of a patent.

In the present case, the claim is not for the use of a current of electricity in its natural state as it comes
from the battery, but for putting a continuous current, in a closed circuit, into a certain specified
condition suited to the transmission of vocal and other sounds, and using it in that condition for that
purpose. [Class notes: Highlighted during class.]

23
But it is insisted that the claim cannot be sustained because, when the patent was issued, Bell had not in
fact completed his discovery.

It is quite true that when Bell applied for his patent, he had never transmitted telegraphically spoken
words so that they could be distinctly heard and understood at the receiving end of his line; but in his
specification he did describe accurately, and with admirable clearness, his process -- that is to say, the
exact electrical condition that must be created to accomplish his purpose -- and he also described, with
sufficient precision to enable one of ordinary skill in such matters to make it, a form of apparatus which,
if used in the way pointed out, would produce the required effect, receive the words, and carry them to
and deliver them at the appointed place. will operate successfully

The law does not require that a discoverer or inventor, in order to get a patent for a process, must have
succeeded in bringing his art to the highest degree of perfection; it is enough if he describes his
method with sufficient clearness and precision to enable those skilled in the matter to understand what
the process is, and if he points out some practicable way of putting it into operation. This Bell did.

It is again said that the claim, if given this broad construction, is virtually "a claim for speech
transmission by transmitting it, or in other words, for all such doing of a thing as is provable by doing
it." It is true that Bell transmits speech by transmitting it, and that long before he did so, it was believed
by scientists that it could be done by means of electricity, if the requisite electrical effect could be
produced. Precisely how that subtle force operates under Bell's treatment, or what form it takes, no one
can tell. All we know is that he found out that by changing the intensity of a continuous

Page 126 U. S. 539

current so as to make it correspond exactly with the changes in the density of air caused by sonorous
vibrations, vocal and other sounds could be transmitted and heard at a distance. This was the thing to be
done, and Bell discovered the way of doing it. No one before him had found out how to use electricity
with the same effect. Surely a patent for such a discovery is not to be confined to the mere means he
improvised to prove the reality of his conception.

We come now to consider the alleged anticipation of Philipp Reis. Reis discovered how to reproduce
musical tones, but he did no more. He could sing through his apparatus, but he could not talk. It was
left for Bell to discover that the failure was due not to workmanship, but to the principle which was
adopted as the basis of what had to be done. He found that what he called the "intermittent current" -- one
caused by alternately opening and closing the circuit -- could not be made under any circumstances to
reproduce the delicate forms of the air vibrations caused by the human voice in articulate speech, but that
the true way was to operate on an unbroken current by increasing and diminishing its intensity. This he
called a "vibratory or undulatory current," not because the current was supposed to actually take that
form, but because it expressed with sufficient accuracy his idea of a current which was subjected to
gradual changes of intensity, exactly analogous to the changes of density in the air occasioned by its
vibrations. Such was his discovery, and it was new.

The patents of Cromwell Fleetwood Varley, of London, England it is apparent that he uses the terms
"undulations" and "waves" in an entirely different sense from Bell, for his patent implies operation on the
principle of the electric telegraph -- that is to say, by making and breaking the circuit. In short, there is
nothing in any part of the specification to indicate that the patentee had in his mind "undulations"
resulting "from gradual changes of intensity exactly analogous to the changes in the density of air
occasioned by simple pendulous vibrations," which was Bell's discovery and on which his art rests.

24
Another alleged anticipation is that of Daniel Drawbaugh. Bell got his patent March 7, 1876, and the
fortunate accident which led to his discovery occurred June 2, 1875. Active litigation to enforce
against Richard Dowd. This suit was defended by the Western Union Telegraph Company and vigorously
contested. but before a decision was reached, the case was compromised and a decree entered by
consent.

It was claimed by the People's Company that Drawbaugh's inventions and the inventions covered by
Bell's patents were for substantially the same thing. The main issues in this respect argued by counsel
were issues of fact
(1) whether Drawbaugh's instruments were made prior to Bell's discovery and were practically operative,
and
(2) whether the Drawbaugh witnesses to these points were to be believed.

The next contested suit was brought in the same court on the 28th of July, 1880, against Albert Spencer
and others Each and all of their interests in said improvements and inventions, and the letters patent to
be issued therefor, shall be merged and consolidated as common stock in a corporate body, under the laws
of either of the States of Ohio For the assignment from Drawbaugh to Klemm, Marx, Loth, and Wolf,
$20,000 was paid in money to Chellis, Jacobs, Hill and Drawbaugh, and they were also to have a certain
amount of the stock of the proposed corporation when formed. At this time, and in this way, the
attention of the general public was called for the first time to the fact that Drawbaugh claimed to have
anticipated Bell in the discovery of the telephone. Bell's success had been proclaimed more than four
years before at the Centennial Exposition in Philadelphia. In the meantime, inventions in aid of his
discovery had been multiplied. The People's Company either began or threatened to begin operations
under its charter, and on the 20th of October, 1880, the Bell Company brought suit against it

If his present claim is true, his experiments began almost as far back as those of Reis, and he had in his
shop at Eberly's Mills, within three miles of Harrisburg, telephones that were substantially perfect months
before Bell, on the second of June, 1875, got the clue to his subsequent discoveries. It is conceded that
"D" and "E", made, as is claimed, in February, 1875, are substantially as good magneto instruments as
any Bell had used before December, 1881, and "L", "M", "G", "O", and "H", all of which it is claimed
were constructed by August, 1876, and some in February, 1875 are as good, or nearly as good,
microphones as those of Blake, which were not invented until 1878. The claim is that the discovery of
the process was complete, and that perfect telephones had been made and were in a condition for use, a
year and more before Bell got his patent.

The Centennial Exposition was opened at Philadelphia in May, 1876, and Drawbaugh visited it on the
17th of October, 1876, remaining four or five days. That was all he did during his entire visit to
ascertain whether anyone besides himself had actually entered upon this then new and interesting field of
invention and discovery. He spoke to no one about what he had done himself, and he made no special
effort to find out whether that which was on exhibition was in any respect like what he had at home.
Neither did he when he got home, so far as the records show, say anything to his neighbors or visiting
friends about what he had seen or heard. He had apparently lost all interest in "talking machines." It is
impossible to believe, if Drawbaugh had in his shop, when he reached home from the Centennial,
Exhibits "D", "E", "L", "M", "G", "O", and "H", or even "D" and "E" alone, that he would have set
himself to work in the first instance at developing his clock enterprise or perfecting his former conception
of a measuring faucet instead of making some effort to call the attention of his friends to his great
discovery of the telephone, which he was in danger of losing by the patent which had been issued to
another and which he could not but have known was even then attracting the greatest attention.

Chellis was told that Drawbaugh had "a phonograph and a telephone that he had invented", he gave it no
attention, because, to use his own language, "I was interested in the faucet and motor business, and
25
wished to push them, and I did not think we could do much with the telephone, as Bell had a patent, and I
did not know that he could antedate them." And again, when speaking of a conversation he had with
Drawbaugh, he said: "I advised him to drop it -- the telephone -- as he could not antedate Bell. He said he
did not know about that; that he had been working on it a good while. It was his way of expressing
himself. When I would say, 'You can't antedate Bell', he would say, 'I don't know about that; I have been
working at it a good while. This, it must be remembered, was in 1879, after the telephone had become a
success and after it had been a year or more in use in Harrisburg, where Chellis lived. It is impossible to
believe that either Chellis or Drawbaugh was ignorant of the approximate time of Bell's invention, which
had been the subject of frequent newspaper comment from the time of its exhibition at the Centennial.

If Drawbaugh had at that time in his shop the machines which it is now claimed were all complete as they
now are by August, 1876, and most of them before, there cannot be a doubt that he would have taken
them to someplace where they could be tried and show that they would do what he had all along claimed
for them. All he had to do at any time after he came back from the Centennial was to take any pair of his
little instruments to his friend Zeigler or his friend Stees at Harrisburg, attach them to a line wire, and
show what he had. They were men who could appreciate his achievement and help him if it was, as he
now says it was, a success. It would certainly have been easier then, within two years of the time the first
of them were made and within a year of the date of Bell's patent, to show that he "antedated" Bell, than it
was three years afterwards, when he was brought into the controversy through the instrumentality of his
associates, not, as must be evident to all, to get a patent for himself, but to defeat that of Bell.

But there is another fact in this case equally striking. As has already been seen, "F", "B", "C", and "I"
were in no condition for use when they were produced and put in evidence. To our minds, the result of
the second experiments conclusively showed that the original instruments could not have done what the
witnesses supposed they did, and that what they saw and heard was produced by some other means than
an electric speaking telephone. Without pursuing the subject further, we decide that the Drawbaugh
defense has not been made out.

Another objection to Bell's patent Bell's application was filed February 14, 1876, and afterwards,
during the same day, Elisha Gray filed a caveat The precise charge now made in the printed brief of
Mr. Hill is that "Mr. Bell's attorneys had an underground railroad in operation between their office and
Examiner Wilbur's room in the Patent Office, by which they were enabled to have unlawful and guilty
knowledge of Gray's papers as soon as they were filed in the Patent Office," and "that an important
invention and a claim therefor were bodily interpolated into Bell's specification between February 14,
1876, and February 19, 1876, by Pollok in consequence of the guilty knowledge which the latter already
had of the contents of Gray's caveat before the declaration of interference with Gray on February 19th."

differences has been explained in the most satisfactory manner
Not a shadow of suspicion can rest on anyone growing out of the misprint of the specification in the
Dowd case
Bell says in his testimony that he began writing his specification in September or October, 1875, and
wrote and rewrote it a number of times, finally adopting that mode of expression which seemed to him the
best to explain his invention and the relation which one portion bore to another

At any rate, the bare fact that the difference exists under such circumstances is not sufficient to brand Bell
and his attorneys, and the officers of the Patent Office, with that infamy which the charges made against
them imply. We therefore have no hesitation in rejecting the argument. The variable resistance method is
introduced only as showing another mode of creating electrical undulations. That Bell had had his mind
upon the effect of such a method is conclusively established by a letter which he addressed to Mr.
26
Hubbard on the 4th of May, 1875, and which is found in the Dowd record, introduced into the Overland
case by stipulation

It remains only to consider the patent of January 30, 1877, about which but little has been said either in
the oral or printed arguments. In the Dolbear case it was, by consent, excluded from the decree, and of
course is not presented by that record in this Court. In all the other cases, the patent was sustained,
From the decree in favor of the Molecular Company as to the fifth claim, the Bell Company has appealed.

The claim is not for these several things in and of themselves, but for an electric telephone, in the
construction of which these things, or any of them, are used; hence the fifth claim is not anticipated by the
Schellen magnet, as was decided in the Molecular case below. The patent is not for the magnet, but for the
telephone of which it forms but part. To that extent, the decree in that case was erroneous.

It follows that the decree in each of the cases, so far as it is in favor of the Bell Company and those
claiming under it, must be affirmed, and that the decree in the Molecular case, so far as it is against that
company on the fifth claim of the patent of January 30, 1877, must be reversed, and a decree directed to
that extent in its favor.

DISSENT BY JUSTICE BRADLEY

some forty or fifty witnesses were produced, many of whom saw it and heard speech through it, and
others either saw it or heard it talked about in such a manner as to fix the time when it was in existence

There are two modes (as yet discovered) by which these undulations may be thus produced. In one,
they are produced by interposing in the circuit a substance whose electrical conductivity may be varied by
the concussions or vibrations of the air produced by the voice. This is called the "variable resistance
process" because the electrical current is subjected to the variable resistance (or conductivity) of the
substance thus interposed. By the other mode, the undulations are produced by the inductive effect of an
armature (or small, flat piece of iron) attached to the membrane spoken against and placed near to the
poles of an electromagnet situated in the circuit. In both cases, the undulations impart the vibrations
which caused them to another diaphragm at a distance (called the receiver) by means of an electromagnet
in the circuit placed near to an armature affixed to such diaphragm

[variable resistance process v. electromagnet with membrane]

As it would serve no useful purpose to repeat the testimony of these witnesses, we shall refrain from
doing so. We will only add that nearly all the original instruments used by Drawbaugh were produced on
the trial, and identified by the witnesses. Some of them were broken and in a dilapidated condition, but
sufficiently perfect to be accurately reproduced. Their very form and principle of construction showed
that they were intended for speaking telephones and nothing else. Drawbaugh certainly had the principle,
and accomplished the result. Perhaps without the aid of Mr. Bell, the speaking telephone might not have
been brought into public use to this day, but that Drawbaugh produced it there can hardly be a reasonable
doubt.

A common astronomer, by carefully sweeping the sky, might have been first in discovering the planet
Neptune; while no one but a Leverrier, or an Adams, could have ascertained its existence and position by
calculation. So it was with Bell and Drawbaugh. The latter invented the telephone without appreciating
the importance and completeness of his invention. Bell subsequently projected it on the basis of scientific
inference, and took out a patent for it. But, as our laws do not award a patent to one who was not the first
to make an invention, we think that Bell's patent is void by the anticipation of Drawbaugh.
[Not novel by virtue of Drawbaughs anticipation!]
27

[Class notes:
Morse use of magnetism without regard to particular process to which it is connected cannot be
claimed.
Bell use of magnetism + particular process to which it is connected valid claim.]

must couple apparatus, method, means.]

Thus,
Morse, use + no particular proces = broad, void.
Bell, use + particular proces = valid.

b. Living Things

[Class notes: Living things are divided into plants and animals. Plants and animals may be
distinguished by its reaction to oxygen and carbon-dioxide, and by its mobility. The characteristics
of living things: (1) use energy (2) composed of cells (3) respond to the environtment (4) growth (5)
reproduction.]

Diamond v. Chakrabarty, 447 U.S. 303
http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=447&invol=303

This human-made, genetically engineered bacterium is capable of breaking down multiple components of
crude oil. This bacterium does not occur naturally, and therefore, is believed to have significant value for
the treatment of oil spills.

Chakrabartys patent claims were of three types: first, process claims for the method of producing the
bacteria; second, claims for an inoculum comprised of a carrier material floating on water, such as straw,
and the new bacteria; and third, claims to the bacteria themselves.

W/N a live, human-made micro-organism is patentable subject matter under 35 U.S.C. 101

YES. The case involves the proper interpretation of the 35 U.S.C. 101, specifically the phrases
manufacture and composition of matter and on whether these include living things.

In choosing such expansive terms as manufacture and composition of matter, modified by the
comprehensive any, Congress plainly contemplated that the patent laws would be given wide scope.
[The unambiguous language of the law fairly embraces respondents invention.]

The only limit is that laws of nature, physical phenomena, and abstract ideas are not patentable.

The micro-organism plainly qualifies as patentable subject matter. His claim is not to an unknown natural
phenomenon, but to a non-naturally occurring manufacture or composition of matter a product of
human ingenuity having a distinctive name, character, and use.

[Class notes: See 22.4 of the IP code. Thus, mircoorganisms are patentable in the PH. Thus
Chakrabarty applies in the PH. US does not have a negative list like the PH.]

i) Natural Products and Substances
-Naturally Occurring but Artificially Packaged
Funk Bros. Seed v. Kalo Inoculant Co., 333 U.S. 127 (1948)
28
http://supreme.justia.com/cases/federal/us/333/127/

Bond (patentee), discovered that there are strains of each of six species of Rhizaobium which do not exert
a mutually inhibitive effect on each other. Thus, he was able to provide a mixed culture of Rhizobia
capable of inoculating plants belonging to several groups.

The properties of inhibition or of noninhibition in the bacteria were the work of nature, and therefore
not subject to being patented.

The qualities of these bacteria, like the heat of the sun, electricity, or the qualities of metals, are part of the
storehouse of knowledge of all men. They are manifestations of laws of nature, free to all men and
reserved exclusively to none. He who discovers a hitherto unknown phenomenon of nature has no claim
to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must
come from the application of the law of nature to a new and useful end.

packaging the non-inhibitory strains together does not go beyond the discovery of a phenomenon of
nature and conferred patentability because aggregation of species fell short of invention within the
meaning of the patent statutes. it is hardly more than an advance in the packaging of the
inoculants... No species acquires a different use. The combination of species produces no new
bacteria, no change in the six species of bacteria, and no enlargement of the range of their utility.
Each species has the same effect it always had. [The result was not an invention but was merely a
commercial advantage] The bacteria perform in their natural way. Their use in combination does not
improve in any way their natural functioning. They serve the ends nature originally provided, and act
quite independently of any effort of the patentee.

Even though it may have been the product of skill, it certainly was not the product of invention.

[The Court decided this case under the patent statute in effect before the 1952 recodification, which
distinguished obviousness from invention.] [Opinion: Would an artisan, knowing the newly
discovered natural phenomenon require more than ordinary skill to discover the process by which to
apply that phenomenon as the patentee had done?]

[Class note: Bond merely invented a commercial advantage. - packaging]

[Class note: Q: Compare the ruling in Funk and Chakrabarty. Both microorganism, one valid, one
not. A: In Charkabary inventive step in the form of a non-naturally occurring organism. In Funk
no inventive step, the bacteria has always behaved the same way.]

- Naturally Occurring but Isolated and Purified
Association for Molecular Pathology v. USPTO (The Myriad Case), 569 U.S.
12

Myriad Genetics, Inc. (Myriad), obtained several patents after discovering the precise location and
sequence of the BRCA1 and BRCA2 genes, mutations of which can dramatically increase the risk of
breast and ovarian cancer. This knowledge allowed Myriad to determine the genes typical nucleotide
sequence, which, in turn, enabled it to develop medical tests useful for detecting mutations in these genes
in a particular patient to assess the patients cancer risk. If valid, Myriads patents would give it the
exclusive right to isolate an individuals BRCA1 and BRCA2 genes, and would give Myriad the
exclusive right to synthetically create BRCA cDNA. Assoc. for Molecular Pathoogy filed suit, seeking a
declaration that Myriads patents are invalid under 35 U. S. C. 101.

29
The nucleotides that code for amino acids are exons, and those that do not are introns. Scientists can
extract DNA from cells to isolate specific segments for study. They can also synthetically create exons-
only strands of nucleotides known as composite DNA (cDNA). cDNA contains only the exons that occur
in DNA, omitting the intervening introns.

A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has
been isolated, but cDNA is patent eligible because it is not naturally occurring.

Myriads DNA claim falls within the law of nature exception. Myriads principal contribution was
uncovering the precise location and genetic sequence of the BRCA1 and BRCA2 genes. Myriad did not
create or alter either the genetic information encoded in the BCRA1 and BCRA2 genes or the genetic
structure of the DNA. It found an important and useful gene, but groundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the 101 inquiry. They detail the extensive process of
discovery, but extensive effort alone is insufficient to satisfy 101s demands.

(c) cDNA is not a product of nature, so it is patent eligible under 101. cDNA does not present the
same obstacles to patentability as naturally occurring, isolated DNA segments. Its creation results in an
exons-only molecule, which is not naturally occurring. Its order of the exons may be dictated by nature,
but the lab technician unquestionably creates something new when introns are removed from a DNA
sequence to make cDNA.

Reading:
Bioethics and Patent Law: The Case of Myriad available at
http://www.wipo.int/wipo_magazine/en/2006/04/article_0003.html

[This reading broaches the ethical dimension of the Myriad Case.]

c. Programs for Computer

Art. 171.4 of IPC
171.4. A "computer" is an electronic or similar device having information-processing capabilities, and a
"computer program" is a set of instructions expressed in words, codes, schemes or in any other form,
which is capable when incorporated in a medium that the computer can read, of causing the computer to
perform or achieve a particular task or result;

[Class Notes: Computer programs are not patentable. See 22.2 of IPC. However, they are subject to
copyright.]

What Copyright Patent
When moment of creation moment of filing
Duration of Protection 50 years after death of creator x from date of filing
Requisites originality or independent
creation
novelty, inventive step, industrial
application
Rights not to be copied, but may be
assigned, etc.
right to exclude others from
manufacturing, using, selling,
offering to sell

[Class notes: There is an ongoing debate as to whether copyright or patent should protect computer
programs. The copyright protection was already well in place when TRIPS came into place, which
is why the default in the TRIPS was copyright. Also, computer programs are literary. Different
30
countries of different development stages vary in their protection of computer programs, i.e.,
between copyright and patent.]

Gottschalk v. Benson, 409 U.S. 63
https://bulk.resource.org/courts.gov/c/US/409/409.US.63.-.71.485.html

Engineers Gary Benson and Arthur Tabbot invented a faster and more efficient mathematical procedure
for transforming the normal decimal type of numbers (base 10) into true binary numbers (base 2)
which are simpler to process within computers.

Their attorney argued before the patent examiner that the inventors were entitled to a broad patent
covering any use of their new mathematical procedure, even use of it by a human using pencil and paper.
The examiner rejected their invention. An appellate court overruled the examiner and ordered a patent to
issue. The Commissioner of Patents [Gottschalk] then petitioned successfully to have the Supreme Court
review this decision.

A procedure for solving a given type of mathematical problem is known as an algorithm. [The
procedure is an algorithm] The mathematical procedures can be carried out in existing computers long
in use, no new machinery being necessary. And, as noted, they can also be performed without a computer.

Mackay Co. v. Radio Corp.,while a scientific truth, or the mathematical expression of it, is
not a patentable invention, a novel and useful structure created with the aid of knowledge of
scientific truth may be. That statement followed the longstanding rule that an idea, of
itself, is not patentable. A principle, in the abstract, is a fundamental truth; an original
cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive
right.

We dealt there with a product claim, while the present case deals with a process claim. But we think
the same principle applies.

The end use may (1) vary from the operation of a train to verification of drivers licenses to researching
the law books for precedents and (2) be performed through any existing machinery or future-devised
machinery or without any apparatus.

A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of
acts, performed upon the subject matter to be transformed and reduced to a different state or thing.

Transformation and reduction of an article to a different state or thing is the clue to the patentability of
a process claim that does not include particular machines. So it is that a patent in the process of
manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and
pressure was sustained in Tilghman v. Proctor. The Court said, The chemical principle or scientific
fact upon which it is founded is that the elements of neutral fat require to be severally united with an
atomic equivalent of water in order to separate from each other and become free. This chemical fact was
not discovered by Tilghman. He only claims to have invented a particular mode of bringing about the
desired chemical union between the fatty elements and water.

Decision:

It is conceded that one may not patent an idea. But, in practical effect, that would be the result if the
formula for converting BCD numerals to pure binary numerals were patented in this case. The
mathematical formula involved here has no substantial practical application except in connection with a
31
digital computer, which means that, if the judgment below is affirmed, the patent would wholly preempt
the mathematical formula and, in practical effect, would be a patent of the algorithm itself. [It is in the
very nature of computing and computers to use algorithms, as it is in DNA to have codes in exons.]

It may be that the patent laws should be extended to cover these programs, a policy matter to which we
are not competent to speak.

The Patent Office now cannot examine applications for programs because of a lack of a classification
technique and the requisite search files. Even if these were available, reliable searches would not be
feasible or economic because of the tremendous volume of prior art being generated. Without this search,
the patenting of programs would be tantamount to mere registration, and the presumption of validity
would be all but nonexistent.

It is noted that the creation of programs has undergone substantial and satisfactory growth in the absence
of patent protection, and that copyright protection for programs is presently available.

If these programs are to be patentable, considerable problems are raised which only committees of
Congress can manage, for broad powers of investigation are needed, including hearings which canvass the
wide variety of views which those operating in this field entertain. The technological problems tendered
in the many briefs before us indicate to us that considered action by the Congress is needed.
[Patent, in effect, is not granted.]

[Notes: See 22.2 of the IP code. Excluded from patentable subject matters. But copyrightable?]

[Class notes: Could use the algorithm could be used:
(1) with existing computers
(2) new computers
(3) and without computers.
Therefore it is a ____ and could not be patented.]

Diamond v. Diehr, 450 U.S. 175
http://supreme.justia.com/cases/federal/us/450/175/case.html

Diehr filed a patent application claiming invention for a process for molding raw, uncured synthetic
rubber into cured precision products. Diehr filed a patent application claiming invention for a process for
molding raw, uncured synthetic rubber into cured precision products. While it was possible, by using
well-known time, temperature, and cure relationships, to calculate by means of an established
mathematical equation when to open the molding press and remove the cured product, according to
respondents the industry had not been able to measure precisely the temperature inside the press, thus
making it difficult to make the necessary computations to determine the proper cure time. Respondents
characterized their contribution to the art to reside in the process of constantly measuring the temperature
inside the mold and feeding the temperature measurements into a computer that repeatedly recalculates
the cure time by use of the mathematical equation and then signals a device to open the press at the proper
time.
The patent examiner rejected the respondents claims on the sole ground that they were drawn to
nonstatutory subject matter. He determined that those steps in respondents claims that are carried out by
a computer under control of a stored program constituted nonstatutory subject matter under this Courts
decision in Gottschalk v. Benson. The remaining steps -- installing rubber in the press and the subsequent
closing of the press -- were conventional and necessary to the process, and cannot be the basis of
patentability. The examiner concluded that respondents claims defined and sought protection of a
computer program for operating a rubber-molding press.
32

Whether a process for curing synthetic rubber which includes in several of its steps the use of a
mathematical formula and a programmed digital computer is patentable subject matter.

Yes. That respondents claims involve the transformation of an article, in this case raw, uncured synthetic
rubber, into a different state or thing cannot be disputed. The respondents claims describe in detail a step-
by-step method for accomplishing such, beginning with the loading of a mold with raw, uncured rubber
and ending with the eventual opening of the press at the conclusion of the cure. Industrial processes such
as this are the types which have historically been eligible to receive the protection of our patent laws.

(b) While a mathematical formula, like a law of nature, cannot be the subject of a patent, respondents do
not seek to patent a mathematical formula, but instead seek protection for a process of curing synthetic
rubber. Although their process employs a well-known mathematical equation, they do not seek to pre-
empt the use of that equation, except in conjunction with all of the other steps in their claimed process.

We view respondents claims as nothing more than a process for molding rubber products, and not as an
attempt to patent a mathematical formula.

Similarly, insignificant post-solution activity will not transform an unpatentable principle into a
patentable process. To hold otherwise would allow a competent draftsman to evade the recognized
limitations on the type of subject matter eligible for patent protection. On the other hand, when a claim
containing a mathematical formula implements or applies that formula in a structure or process which,
when considered as a whole, is performing a function which the patent laws were designed to protect
(e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the
requirements. Because we do not view respondents claims as an attempt to patent a mathematical
formula, but rather to be drawn to an industrial process for the molding of rubber products, we affirm the
judgment of the Court of Customs and Patent Appeals.

Bilski v. Kappos,130 S.C.P. 3218
http://scholar.google.com/scholar_case?case=2277797231762274855&q=Bilski+v.+Kappos,130+S.+C.
T.+3218&hl=en&as_sdt=2006&as_vis=1

[This is a very lucid and well-written case. Must read. Landmark and most recent case according to Atty.
Medrano.]

The patent application claims a procedure for instructing buyers and sellers how to protect against the risk
of price fluctuations in a discrete section of the economy. Claim 1 describes a series of steps instructing
how to hedge risk. Claim 4 puts the concept articulated in claim 1 into a simple mathematical formula.

Three arguments are advanced for the proposition that the claimed invention is outside the scope of patent
law: (1) it is not tied to a machine and does not transform an article; (2) it involves a method of
conducting business; and (3) it is merely an abstract idea.

The Court of Appeals ruled that the first mentioned of these, the so-called machine-or-transformation test,
was the sole test to be used for determining the patentability of a "process" under the Patent Act, 35
U.S.C. 101.

Section 101 defines the subject matter that may be patented under the Patent Act: "Whoever invents or
discovers any new and useful process, machine, manufacture, or composition of matter, or any new and
33
useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of
this title."

The present case involves an invention that is claimed to be a "process" under 101. Section 100(b)
defines "process" as: "process, art or method, and includes a new use of a known process, machine,
manufacture, composition of matter, or material."

The 101 patent-eligibility inquiry is only a threshold test. Even if an invention qualifies as a
process, machine, manufacture, or composition of matter, in order to receive the Patent Act's
protection the claimed invention must also satisfy "the conditions and requirements of this title."
101. Those requirements include that the invention be novel, see 102, nonobvious, see 103, and
fully and particularly described, see 112.

later authority shows that [machine-or-transformation test] was not intended to be an exhaustive or
exclusive test. See Gottschalk v. Benson.

The term "method," which is within 100(b)'s definition of "process," at least as a textual matter and
before consulting other limitations in the Patent Act and this Court's precedents, may include at least
some methods of doing business. See, e.g., Webster's New International Dictionary 1548 (2d ed.1954)
(defining "method" as "[a]n orderly procedure or process . . . regular way or manner of doing anything;
hence, a set form of procedure adopted in investigation or instruction").

[Bilski and Warsaw] seek to patent both the concept of hedging risk and the application of that concept
to energy markets. [] Rather than adopting categorical rules that might have wide-ranging and
unforeseen impacts, the Court resolves this case narrowly on the basis of this Court's decisions in
Benson, Flook, and Diehr, which show that petitioners' claims are not patentable processes because
they are attempts to patent abstract ideas.

In light of these precedents, it is clear that petitioners' application is not a patentable "process." Claims 1
and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk: "Hedging
is a fundamental economic practice long prevalent in our system of commerce and taught in any
introductory finance class."

[Decision] Chief Judge Michel wrote the opinion of the court. The court rejected its prior test for
determining whether a claimed invention was a patentable "process" under 101whether it produces a
"useful, concrete, and tangible result'"as articulated in State Street Bank & Trust Co., AT & T Corp. v.
Excel Communications, Inc., and In re Bilski. Applying the machine-or-transformation test, the court held
that petitioners' application was not patent eligible. Judge Dyk wrote a separate concurring opinion,
providing historical support for the court's approach.

Three judges wrote dissenting opinions. Judge Mayer argued that petitioners' application was "not eligible
for patent protection because it is directed to a method of conducting business." Id., at 998. He urged the
adoption of a "technological standard for patentability." Id., at 1010. Judge Rader would have found
petitioners' claims were an unpatentable abstract idea. Id., at 1011. Only Judge Newman disagreed with
the court's conclusion that petitioners' application was outside of the reach of 101. She did not say that
the application should have been granted but only that the issue should be remanded for further
proceedings to determine whether the application qualified as patentable under other provisions.

In re Bilski v. Kappos, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008)
http://www.cafc.uscourts.gov/images/stories/opinions-orders/07-1130.pdf

34
[Class notes: Bilski is a controversial and lankmark case. Bilski did not abandon the machine-or-
transformation test, but merely characterized it as a tool, and not the sole test. Process was also
interpreted. Bilski is the latest jurisprudence.]

[Business methods are patentable. Despite taking a broader reading of patent eligibility for
processes, the Court does not preclude the Federal Circuits development of other limiting criteria
that further the Patent Act the are not inconsistent with its text.]

EU Approach vs. US Approach

US
- no express prohibition on US patent law even with the America Invents Act (2011) tk
- american jurisprudence on patentability is variable
- USPTO inssued guidelines on the interpretation of Bilski decision (until the next SC case, haha)

EU
- there is an express exclusion pursuant to the Europeant Patent Code
- Art. 52(2) computer programs with machinery patentable. However Art. 52(3) computer
programs as such not patentable. [computer program by itself are not patentable].

d. Methods of Doing Business

State Street Bank & Trust Co. v. Signature Financial Group, Inc. 927 F.Supp. 502
http://digital-law-online.info/cases/47PQ2D1596.htm

Doctrine: 056 Patent grants Signature a monopoly on its idea of a multi-tiered partnership portfolio
investment structure; patenting an accounting system necessary to carry on a certain type of business is
tantamount to a patent on the business itself. Because such abstract ideas are not patentable, either as
methods of doing business or as mathematical algorithm, the 056 Patent must fail.
Signature Financials Patent at issue. The patent at issue in that case concerned a data processing system
for implementing an investment structure known as a Hub and Spoke system. This system allowed
individual mutual funds (Spokes) to pool their assets in an investment portfolio (Hub) organized as a
partnership. According to the patent, this investment regime provided the advantageous combination of
economies of scale in administering investments coupled with the tax advantages of a partnership. In
addition, it tracked all the relevant data determined on a daily basis for the Hub and each Spoke, so that
aggregate year end income, expenses, and capital gain or loss can be determined for accounting and tax
purposes for the Hub and, as a result, for each publicly traded Spoke.

Among the defenses offered by State Street Bank was that the asserted patent claimed subject matter that
was not within one of the four categories of statutory subject matter, and hence was invalid.

The statute sets out four categories of subject matter -- process, machine, manufacture, and composition
of matter -- that are entitled to patent protection provided that the other requirements of patentability (i.e.,
novelty and non- obviousness under 35 U.S.C. 102-103) are satisfied.

Although the 056 Patent claims do not directly recite a mathematical formula, the data processing system
is an apparatus specifically designed to solve a mathematical problem. These calculations, among others,
include: (1) daily allocating the assets of two or more funds that are invested in the partnership portfolio;
(2) determining each funds percentage share in the partnership entity, taking into consideration
incremental changes in the portfolios investment securities and the amount of each funds assets; (3)
allocating to each fund the portfolios daily income, expenses, and net unrealized gain or loss; and (4)
35
tracking and storing this information for calculating annual tax information. Interpreted in light of the
specification, the 056 Patent claims recite means for solving a series of mathematical problems.

If Signatures invention were patentable, any financial institution desirous of implementing a multi-tiered
funding complex modeled on a Hub and Spoke configuration would be required to seek Signatures
permission before embarking on such a project. This is so because the 056 Patent is claimed sufficiently
broadly to foreclose virtually any computer-implemented accounting method necessary to manage this
type of financial structure. [T]he 056 Patent grants Signature a monopoly on its idea of a multi-tiered
partnership portfolio investment structure; patenting an accounting system necessary to carry on a certain
type of business is tantamount to a patent on the business itself. Because such abstract ideas are not
patentable, either as methods of doing business or as mathematical algorithm, the 056 Patent must fail.
[Personal Note: Thus, it seems that if it goes into the very nature of the business, it may not be patented.]

[Class notes: Court here laid down the USEFUL CONCRETE RESULT TEST. In Diamond, the
used of the computer integrated into the system is a patentable matter. However, in State Street, the
court held that the result should be something concrete or something useful. In 101 of the US law,
no mention was made of computer software or business process. This is basically judicial
legislation.

The first step in a patent application is the patent eligibility inquiry using 22 of IPC.

In another State Street v. Financial case,
District Court applied the 2-step test or the Freeman-Walter-Abele Test)
Step 1: Mathematical Algorithm Test (Gottshack)
Step 2: Physical Transformation Test
the machine transformation test and

But the Federal Court ruled that before even applying the 2-step test, first determine of the subject
matter is patentable. Idea, law of nature, or natural phenomenon is not patentable.
As to the Business Method Exception, it has been abandoned.]

EU Approach vs. US Approach

US
- no express prohibition on US Patent Law, even with the America Invents Act
- Exception is based on case law, American jurisprudence on patentability of business methods is
variable.
- Bilski and State Street decisions re 100(b) defines process which includes method. Business
method is patentable.

EU
- business methods are not eligible by express provisions of law
- no technical element
- do not involve inventive step
- but may patent if in conjunction with a hardware.

e. Medical Procedure

Pallin v. Singer, 36 U.S.P.Q.2d 1050

36
This is action for patent infringement. Dr. Samuel Pallin alleges that Dr. Jack Singer and the Hitchcock
Associates of Randolph are infringing on a patented surgical technique developed by Dr. Pallin for use
during cataract surgery.

Pallin allegedly developed a method for making the surgical incision in the eye in a manner that would
allow the wound to be substantially self-sealing (i.e. requiring no sutures to heal). Pallin obtained patent
number 5,080,111 (111 Patent) for the technique. Pallin alleges that Singer and Hitchcock have carried
out hundreds of operations that infringe on his patent and even taught the technique to other ocular
surgeons.

According to the patent, the configuration of the incision allows it to seal as the eye is inflated following
surgery, eliminating the need for sutures. Pallin, however, was not the only surgeon working towards the
development of a sutureless technique. Drs. Michael McFarland, James Gills and Singer anticipated
(s102g) Pallins patent and rendered it obvious (s103).

The 111 Patent is Presumed Valid. Under 35 USC 282, a US patent is presumed valid. Thus, the party
asserting the invalidity must overcome the presumption by lean and convincing evidence. However,
despite such presumption, summary judgment may be granted in a patent suit when there is no genuine
issue of material fact. In this case, there are complex factual disputes, thus, summary judgment cannot be
granted.

Under 102g, a patent is invalid if it was previously made in this country by another who had not
abandoned, suppressed, or concealed it. The patentee need not have knowledge of the prior art.
Nevertheless, for the prior art to anticipate under 102 a single teaching must anticipate every element of
the claimed invention. Our comparison of the surgical techniques practiced by Drs. McFarland, Bills and
Singer with the asserted claims of the 111 Patent reveals that genuine issues of material fact exist as to
whether the works of any of these doctors fully anticipated Pallins claims. We find complex issues exist
as to the following issues:
(1) WON Dr. McFarlands straight incision and vertical cuts fall within the ambit of Pallins claims,
(2) WON the distance from the limbus of the incisions made by Dr. Gills during the March 1990 surgeries
fall within the 1.5-3.0 millimeter range advocated by Pallins patent, and
(3) WON the incision by Dr. Singer in his March 1990 surgery was capable of self-sealing.

In determining whether an invention would have been obvious at the time it was made,103 requires a
Court to:
(1) determine the scope and content of the prior art;
(2) ascertain the differences between the prior art and the claims at issue; and
(3) resolve the level of ordinary skill in the pertinent art.

We conclude, therefore, that Defendants have failed to meet their burden of proof under the summary
judgment standard to establish that there is genuine issue of material fact as to obviousness.

[Note: IPC, Section 22. Non-Patentable Inventions. - The following shall be excluded from patent
protection: x x x
22.3. 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
composition for use in any of these methods;]

f. Drugs and Medicines

Section 5 Republic Act 9502 amending Section 22 of the IP Code
37

Section 22. Non-Patentable Inventions. - The following shall be excluded from patent protection:
22.1. 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.
For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle
size, isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known
substance shall be considered to be the same substance, unless they differ significantly in
[Class Notes:
(1) E.g. viagra has another use..
(2) In practice, drug companies engage in evergreening whereby the company merely modifies a
part of the drug to enable it be repatented. With the amendment, this is no longer possible.]
22.2. Schemes, rules and methods of performing mental acts, playing games or doing business, and
programs for computers;
22.3. 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
composition for use in any of these methods;
22.4. Plant varieties or animal breeds or essentially biological process for the production of plants or
animals. This provision shall not apply to micro-organisms and non-biological and
microbiological processes.
Provisions under this subsection shall not preclude Congress to consider the enactment of a law
providing sui generis protection of plant varieties and animal breeds and a system of
community intellectual rights protection:
22.5. Aesthetic creations; and
22.6. Anything which is contrary to public order or morality. (Sec. 8, R.A. No. 165a)

[Summary from Bilski:]

Section 101 thus specifies four independent categories of inventions or discoveries that are eligible for
protection: processes, machines, manufactures, and compositions of matter. "In choosing such
expansive terms . . . modified by the comprehensive `any,' Congress plainly contemplated that the
patent laws would be given wide scope." Diamond v. Chakrabarty, 447 U.S. 303, 308, 100 S.Ct. 2204,
65 L.Ed.2d 144 (1980). Congress took this permissive approach to patent eligibility to ensure that
"`ingenuity should receive a liberal encouragement.'" Id., at 308-309, 100 S.Ct. 2204 (quoting 5
Writings of Thomas Jefferson 75-76 (H. Washington ed. 1871)).

The Court's precedents provide three specific exceptions to 101's broad patent-eligibility principles:
"laws of nature, physical phenomena, and abstract ideas." Chakrabarty, supra, at 309, 100 S.Ct. 2204.
While these exceptions are not required by the statutory text, they are consistent with the notion that a
patentable process must be "new and useful." And, in any case, these exceptions have defined the
reach of the statute as a matter of statutory stare decisis going back 150 years. See Le Roy v. Tatham,
14 How. 156, 174-175, 14 L.Ed. 367 (1853). The concepts covered by these exceptions are "part of
the storehouse of knowledge of all men . . . free to all men and reserved exclusively to none." Funk
Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948).

Nov. 29

4. Patentability Criteria
Article 27.1, TRIPS Agreement
38

Patentable Subject Matter
1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether
products or processes, in all fields of technology, provided that they are new, involve an inventive step
and are capable of industrial application.
1
Subject to paragraph 4 of Article 65, paragraph 8 of Article 70
and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without
discrimination as to the place of invention, the field of technology and whether products are imported or
locally produced.

[for reference:

Article 27: Patentable Subject Matter 2. Members may exclude from patentability inventions, the prevention
within their territory of the commercial exploitation of which is necessary to protect ordre public or morality,
including to protect human, animal or plant life or health or to avoid serious prejudice to the environment,
provided that such exclusion is not made merely because the exploitation is prohibited by their law.

Article 65: Transitional Arrangements (4) To the extent that a developing country Member is obliged by this
Agreement to extend product patent protection to areas of technology not so protectable in its territory on the
general date of application of this Agreement for that Member, as defined in paragraph 2, it may delay the
application of the provisions on product patents of Section 5 of Part II to such areas of technology for an
additional period of five years.

Article 70: Protection of Existing Subject Matter 8. Where a Member does not make available as of the date of
entry into force of the WTO Agreement patent protection for pharmaceutical and agricultural chemical products
commensurate with its obligations under Article 27, that Member shall:
(a) notwithstanding the provisions of Part VI, provide as from the date of entry into force of the WTO
Agreement a means by which applications for patents for such inventions can be filed;
(b) apply to these applications, as of the date of application of this Agreement, the criteria for patentability as
laid down in this Agreement as if those criteria were being applied on the date of filing in that Member or,
where priority is available and claimed, the priority date of the application; and
(c) provide patent protection in accordance with this Agreement as from the grant of the patent and for the
remainder of the patent term, counted from the filing date in accordance with Article 33 of this Agreement, for
those of these applications that meet the criteria for protection referred to in subparagraph (b).

Article 27: Patentable Subject Matter
3. Members may also exclude from patentability:
(a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
(b) plants and animals other than micro-organisms, and essentially biological processes for the production of
plants or animals other than non-biological and microbiological processes. However, Members shall provide
for the protection of plant varieties either by patents or by an effective sui generis system or by any
combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry
into force of the WTO Agreement.

a. Novelty (Sections 23-24, IPC)
[Class notes: as highlighted.]

Section 23. Novelty. . - An invention shall not be considered new if it forms part of a prior art. (Sec.
9, R.A. No. 165a)

Section 24. Prior Art. - Prior art shall consist of:

24.1. Everything which has been made available to the public anywhere in the world, before the
filing date or the priority date of the application claiming the invention; and

1
For the purposes of this Article, the terms "inventive step" and "capable of industrial application" may be deemed by a Member
to be synonymous with the terms "non-obvious" and "useful" respectively.
39
24.2. The whole contents of an application for a patent, utility model, or industrial design registration,
published in accordance with this Act, filed or effective in the Philippines, with a filing or priority date
that is earlier than the filing or priority date of the application: Provided, That the application which has
validly claimed the filing date of an earlier application under Section 31 of this Act
2
, shall be prior art
with effect as of the filing date of such earlier application: Provided further, That the applicant or the
inventor identified in both applications are not one and the same. (Sec. 9, R.A. No. 165a)

[Class Notes: Non-prejudicial disclosure. If Inventor A presents the invention in a convention on
Dec. 6, 2013, he has until Dec. 6, 2014 to file the application. See 235 of the IPC.
3
]

prior art application novel?
a,b,c,d, a,b,c,d,e yes
a,b,c,d,e a,b,c,d yes
a,b,c,d,e a,b,c,d,e no

Manzano vs. CA, 278 SCRA 688 (1997)

The element of novelty is an essential requisite of the patentability of an invention or discovery. If a
device or process has been known or used by others prior to its invention or discovery by the applicant, an
application for a patent therefor should be denied; and if the application has been granted, the court, in a
judicial proceeding in which the validity of the patent is drawn in question, will hold it void and
ineffective. It has been repeatedly held that an invention must possess the essential elements of novelty,
originality and precedence, and for the patentee to be entitled to the protection the invention must be new
to the world.

The burden of proving want of novelty is on him who avers it and the burden is a heavy one which is met
only by clear and satisfactory proof which overcomes every reasonable doubt. Hence, a utility model
shall not be considered "new" if [a] before the application for a patent it has been publicly known or
publicly used in this country or [b] has been described in a printed publication or publications circulated
within the country, or [c] if it is substantially similar to any other utility model so known, used or
described within the country.

Scrutiny of Exhs. "D" and "E" readily reveals that the utility model (LPG Burner) is not
anticipated. Not one of the various pictorial representations of burners clearly and
convincingly show that the device presented therein is identical or substantially identical in
construction with the aforesaid utility model. It is relevant and material to state that in
determining whether novelty or newness is negatived by any prior art, only one item of the

2
Section 31. Right of Priority. . - 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 twelve (12) months from the date the earliest foreign application was filed; and (c) a certified copy of the foreign
application together with an English translation is filed within six (6) months from the date of filing in the Philippines. (Sec. 15,
R.A. No. 165a)
3
Section 25. Non-Prejudicial Disclosure. . - 25.1. The disclosure of information contained in the application during the twelve
(12) months preceding the filing date or the priority date of the application shall not prejudice the applicant on the ground of lack
of novelty if such disclosure was made by: (a) The inventor; (b) A patent office and the information was contained [a] in another
application filed by the inventor and should not have been disclosed by the office, or [b] in an application filed without the
knowledge or consent of the inventor by a third party which obtained the information directly or indirectly from the inventor; or
(c) A third party which obtained the information directly or indirectly from the inventor.
25.2. For the purposes of Subsection 25.1, "inventor" also means any person who, at the filing date of application, had the right to
the patent. (n)
40
prior art may be used at a time. [What does this mean?] For anticipation to occur, the prior
art must show that each element is found either expressly or described or under principles of
inherency in a single prior art reference or that the claimed invention was probably known
in a single prior art device or practice. [Please illustrate. E.g. element 1 + 2 + 3 by
descripton, inherency, or knowledge by others in a single art + application element 1 + 2 + 3
= anticipation?] (Kalman v. Kimberly Clark, 218 USPQ 781, 789)

Even assuming gratia arguendi that the aforesaid brochures do depict clearly on all fours
each and every element of the patented gas burner device so that the prior art and the said
patented device become identical, although in truth they are not, they cannot serve as
anticipatory bars for the reason that they are undated. [Prior art must be dated?] The dates
when they were distributed to the public were not indicated and, therefore, they are useless
prior art references.

xxx xxx xxx

Furthermore, and more significantly, the model marked Exh. "K" does not show whether or
not it was manufactured and/or cast before the application for the issuance of patent for the
LPG burner was filed by Melecia Madolaria.

The validity of the patent issued by the Philippine Patent Office in favor of private respondent and the
question over the inventiveness, novelty and usefulness of the improved model of the LPG burner are
matters which are better determined by the Patent Office. The technical staff of the Philippine Patent
Office composed of experts in their field has by the issuance of the patent in question accepted private
respondent's model of gas burner as a discovery. There is a presumption that the Office has correctly
determined the patentability of the model and such action must not be interfered with in the absence of
competent evidence to the contrary.

The rule is settled that the findings of fact of the Director of Patents, especially when affirmed by the
Court of Appeals, are conclusive on this Court when supported by substantial evidence. Petitioner has
failed to show compelling grounds for a reversal of the findings and conclusions of the Patent Office and
the Court of Appeals.

The alleged failure of the Director of Patents and the Court of Appeals to accord evidentiary weight to the
testimonies of the witnesses of petitioner showing anticipation is not a justification to grant the petition.
Pursuant to the requirement of clear and convincing evidence to overthrow the presumption of validity of
a patent, it has been held that oral testimony to show anticipation is open to suspicion and if
uncorroborated by cogent evidence, as what occurred in this case, it may be held insufficient.

Decision

The above findings and conclusions of the Director of Patent were reiterated and affirmed by the Court of
Appeals.

It has been repeatedly held that an invention must possess the essential elements of novelty, originality
and precedence and for the patentee to be entitled to protection, the invention must be new to the world.
Accordingly, a single instance of public use of the invention by a patentee for more than two years (now
for more than one year only under Sec. 9 of the Patent Law) before the date of his application for his
patent, will be fatal to, the validity of the patent when issued. (Frank, et al. v. Kosuyama Vargas v. F.M.
Yaptico & Co. and Vargas v. Chua, et al., supra).

41
WHEREFORE, the Petition is DENIED. The Decision of the Court of Appeals affirming that of the
Philippine Patent Office is AFFIRMED. Costs against petitioner.

Maguan vs. CA, 146 SCRA 107 (1986)

Petitioner, Maguan, doing business under the firm name and style of SWAN MANUFACTURING,"
informed private respondent, Luchan, doing business under the firm name and style of "SUSANA
LUCHAN POWDER PUFF MANUFACTURING," that the powder puffs the latter is manufacturing and
selling to various enterprises particularly those in the cosmetics industry, resemble identical or
substantially identical powder puffs of which the former is a patent holder. [Alleging infringement and
asking for discontinuance.] [Maguan filed for damages and injunction.]

Luchan replied stating that her products are different and countered that petitioner's patents are
(1) void because the utility models applied for were not new and patentable and
(2) the person to whom the patents were issued was not the true and actual author nor were her rights
derived from such author.
for the following reasons:
(a) since years prior to the filing of applications for the patents involved, powder puffs of the
kind applied for were then already existing and publicly being sold in the market; both in the
Philippines and abroad; and
(b) applicant's claims in her applications, of "construction" or process of manufacturing the
utility models applied for, with respect to UM-423 and UM-450, were but a complicated and
impractical version of an old, simple one which has been well known to the cosmetics
industry since years previous to her filing of applications, and which belonged to no one
except to the general public; and with respect to UM1184; her claim in her application of a
unitary powder puff, was but an limitation of a product well known to the cosmetics industry
since years previous to her firing of application, and which belonged to no one except to the
general public; (Answer, Rollo, pp. 93-94).

[Trial court issued the prelimenary injunction.]
[Court of Appeals noticed that contrary to the lower courts position that the court a quo had no
jurisdiction to determine the question of invalidity of the patents, Section 45 and 46 of the Patent Law
allow the court to make a finding on the validity or invalidity of patents and in the event there exists a fair
question of its invalidity, the situation calls for a denial of the writ of preliminary injunction pending the
evaluation of the evidence presented (Rollo, pp. 218-226). Thus, finding the lower court's position to have
been opposed to Patent Law, respondent court considered it a grave abuse of discretion when the court a
quo issued the writ being questioned without looking into the defenses alleged by herein private
respondent.
After a careful review of the evidence consisting of 64 exhibits and oral testimonies of five witnesses
presented by private respondents before the Court of First Instance before the Order of preliminary
injunction was issued as well as those presented by the petitioner, respondent Court of Appeals was
satisfied that there is a prima facie showing of a fair question of invalidity of petitioner's patents on the
ground of lack of novelty.]

Decision
In the same manner, under our jurisprudence, as a general rule because of the injurious consequences a
writ of injunction may bring, the right to the relief demanded must be clear and unmistakable. (Sangki v.
Comelec, 21 SCRA 1392; December 26, 1967) and the dissolution of the writ is proper where applicant
has doubtful title to the disputed property. (Ramos v. C.A., 95 SCRA 359). For failure to determine first
the validity of the patents before aforesaid issuance of the writ, the trial court failed to satisfy the two
requisites necessary if an injunction is to issue, namely: the existence of the right to be protected and the
42
violation of said right. Under the above established principles, it appears obvious that the trial court
committed a grave abuse of discretion which makes certiorari the appropriate remedy.

Private respondent contends that powder puffs Identical in appearance with that covered by petitioner's
patents existed and were publicly known and used as early as 1963 long before petitioner was issued the
patents in question.

PREMISES CONSIDERED, the assailed resolutions of the Court of Appeals are hereby AFFIRMED.
[The preliminary injunction was dissolved.]

[Class Notes: Single public use is sufficient. (Even proof of use once is sufficient.)]

Frank vs. Kosuyama, 59 Phil 206 (1933)

Action brought by Frank and Gohn to order Kosuyama to refrain immediately from the manufacture and
sale of machines similar to the one covered by the patent on improvement in hemp stripping machines.

to render an accounting of the profits realized from the manufacture and sale of the machines in
question; that in case of refusal or failure to render such accounting, the defendants be ordered to pay the
plaintiffs the sum of P60 as profit on each machine manufactured or sold by him that the said
defendant be sentenced to pay the costs and whatever damages the plaintiffs might be able to prove
therein.

action therefore was based upon alleged infringement by Kosuyama

During the trial, both parties presented voluminous evidence from which the trial court arrived at the
following conclusions:

In constructing their machine the plaintiffs did nothing but improve, to a certain degree,
those that were already in vogue and in actual use in hemp producing provinces. It cannot be
said that they have invented the "spindle" inasmuch as this was already known since the year
1909 or 1910. Neither it can be said that they have invented the stripping knife and the
contrivance which controls the movement and pressure thereof on the ground that stripping
knives together with their control sets were already in actual use in the different stripping
machines long before their machine appeared. Neither can it be said that they invented the
fly wheel because that part or piece thereof, so essential in every machine from time
immemorial, was already known and actually employed in hemp stripping machines such as
those of Riesgo (Exhibit 4-A), Crumb (Exhibit 1-A), Icsiar (Exhibit A-Suzara), Browne
(Exhibit 28-A), McFie, etc., all of which were in use for the benefit of hemp long before the
appearance of the plaintiffs' machines in the market. Much less can it be said that they
invented the pedal to raise the knife in order to allow the hemp to be stripped to pass under it,
on the ground that the use of such contrivance has, likewise, been known since the invention
of the most primitive of hemp stripping machines.

On the other hand, although the plaintiffs alleged in their original complaint that "the
principal and important feature of said machine is a spindle upon which the hemp to be
stripped is wound in the process of stripping," nevertheless, in their amended complaint of
March 3, 1928, which was filed after a portion of the evidence therein had already been
submitted and it was known that the use of the spindle was nothing new, they still made the
allegations appearing in paragraph 3 of their said amended complaint and reproduced on
pages 2,3,4 and 5 hereof, copying the same from the application which they filed with the
43
United States Patent Office, under which they obtained their patent in question. The
aforesaid application clearly shows that what they applied for was not a patent for a "pioneer
or primary invention" but only for some "new and useful improvement in hemp stripping
machines."

Decision
We have carefully reviewed the evidence presented and have had the opportunity of ascertaining the truth
of the conclusions above stated. We agree with the trial court that, strictly speaking, the hemp stripping
machine of the plaintiffs does not constitute an invention on the ground that it lacks the elements of
novelty, originality and precedence (48 C.J., sec. 101, p. 97, and 102, p. 98). In fact, before the plaintiffs
herein obtained their patent, they themselves had already publicly used the same kind of machine for
some months, at least, and, various other machines, having in general, the same characteristics and
important parts as that of the said plaintiffs, were known in the Province of Davao. Machines known as
Molo, Riesgo, Crumb, Icsiar, Browne and McFie were already known in that locality and used by the
owners of hemp plantations before the machine of the plaintiffs came into existence. It may also be noted
that Adrian de Icsiar applied for a patent on an invention which resulted in the rejection by the United
States Patent Office of the plaintiffs' original application for a patent on the so called "spindle" or conical
drum which was then in actual use in the Dringman and Icsiar hemp stripping machines.

Wherefore, reiterating that the defendant cannot be held civilly liable for alleged infringement of the
patent upon which the present action is based on the ground that there is no essential part of the machine
manufactured and sold by him, which was unknown to the public in the Province of Davao at the time the
plaintiffs applied for and obtained their patent for improved hemp stripping machines, the judgment
appealed from is hereby affirmed, with the costs against the plaintiffs-appellants. So ordered.

[Class notes: Not novel. Similar machines were already in use.]

Vargas v. F.M. Yaptico, 40 Phil. 195, G.R. No. 14101 (1919)

Angel Vargas, a farmer acquainted with local conditions and alive to the commercial possibilities, took it
upon himself to produce, with the native plow as the model, an improved, adjustable plow.

On the plows there was first stamped the words Patented Mar. 12, 1912." Ninety per cent of the
plows in use in the Visayas (Iloilo and vicinity) are said to be Vargas plows.

During this same period, the firm of F. M. Yaptico & Co. (Ltd.), was engaged in the foundry business in
the City of Iloilo. It openly held itself out as a manufacturer of plow parts. It has in fact produced points,
shares, shoes, and heel pieces in a considerable amount adapted to replace worn-out parts of the Vargas
plow.

The defendant, in addition to a general denial, alleged, as special defenses, that the patent lacked novelty
or invention, that there was no priority of ideas or device in the principle and construction of the plow,
and that the plow, whose manufacture it was sought to have enjoined by the plaintiff, had already been in
public use for more than two years before the application of the plaintiff for his patent.

Lower Court:
The court issued the preliminary injunction as prayed for.
rrial judge, the Honorable Antonio Villareal, in a very exhaustive and learned decision, rendered
judgment in favor of the defendant and against the plaintiff, declaring null and without effect the patent in
question and dismissing the suit with costs against the plaintiff .The preliminary injunction theretofore
issued was dissolved.
44

From this judgment the plaintiff has appealed, specifying five errors. The principal assignment No. 1 is,
that the trial court erred in finding that the patented invention of the plaintiff is lacking in novelty and
invention.

Decision
Act No. 2235 of the Philippine Legislature, enacted on February 10, 1913, in effect makes the United
States Patent Laws applicable in the Philippine Islands.

first line of defenseconcerns the element of novelty, invention, or discovery, that gives existence to the
right to a patent. On this point the trial court reached the conclusion that "the patented plow of the
plaintiff, Exhibit D, is not different from the native plow, Exhibit 2, except in the material, in the form, in
the weight and the grade of the result, the said differences giving it neither a new function nor a new
result distinct from the function and the result obtained from the native plow;consequently, its production
does not presuppose the exercise of the inventive faculty but merely of mechanical skill, which does not
give a right to a patent of an invention under the provisions of the Patent Law." In thus finding, the court
may have been right, since the Vargas plow does not appear to be such a "combination" as contains a
novel assemblage of parts exhibiting invention.

A second line of defense relates to the fact that defendant has never made a complete Vargas plow, but
only points, shares, shoes, and heel pieces, to serve as repairs. Defendant's contention is, that in common
with other foundries, he has for years cast large numbers of plow points and shares suitable for use either
on the native wooden plow, or on the Vargas plow. A difference has long been recognized between
repairing and reconstructing a machine. If, for instance, partial injuries, whether they occur from accident
or from wear and tear, to a machine for agricultural purposes, are made this is only re-fitting the machine
for use, and thus permissible.

The third defense is, that under the provisions of the statute, an inventor's creation must not have been in
public use or on sale in the United States (and the Philippine Islands) for more than two years prior to his
application it has been shown that the invention was used in public at Iloilo by others than Vargas, the
inventor, more than two years before the application for the patent, the patent is invalid.

US Supreme Court: it has been repeatedly held by this court that a single instance of public use of the
invention by a patentee for more than two years before the date of his application for his patent will be
fatal to the validity of the patent when issued."

[various witnesses testified, patent granted in 1910, but Vargas or his Partners, e.g. Araneta, has been
selling plows or parts since 1907] t is hardly believable that five or six witnesses for the defense would
deliberately perjure themselves under oath. One might, but that all together, of different nationalities,
would enter into such a conspiracy, is to suppose the improbable.

for more than two years before the application for the original letters patent, or before July 22, 1908,
there was, by the consent and allowance of Vargas, a public use of the invention covered by them.

Patent invalid. Injunction dissolved. Without prejudice for damages for injunction.

[Class Notes: Two year rule does not apply today. In practice, 18 months confidentiality from
application.]

a.1 Standard for Anticipation
45
i) Identity Requirement
In re Robertson, 169 F.3d 743, 49 U.S.P.Q. 2D 1949 (Fed Cir. 1999)

[Wilson patent was issued before the claim 76 patent.]

This appeal challenges the decision of the Board of Patent Appeals and Interferences (Board) that claim
76 [involving fastening and disposal systems for diapers] in the appellants' patent application was
anticipated by and obvious over United States Patent No. 4,895,569 (the Wilson patent). We reverse.

In both Wilson and claim 76, the body of the diaper features a small front and a larger rear section. The
outer edges of those sections are attached at the wearer's waist in the hip area. Once the diaper is soiled
and then removed, the smaller front section is rolled up into the larger rear section and secured in this
rolled-up configuration by fasteners.

In other words, Wilson [unlike claim 76] does not provide a separate fastening means to be used in
disposing of the diaper. Instead, it suggests that disposal of the used diaper may be "easily accomplished"
by rolling it up and employing the same fasteners used to attach the diaper to the wearer to form "a closed
compact package for disposal."

In holding that the invention claim 76 covers was anticipated by Wilson, the Board found that Wilson
anticipated claim 76 "under principles of inherency." Board summarily affirmed the examiner's
alternative ruling that claim 76 would have been obvious in light of Wilson because "claim 76 lacks
novelty."

Anticipation under 35 U.S.C. 102(e) requires that "each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference."

If the prior art reference does not expressly set forth a particular element of the claim, that reference still
may anticipate if that element is "inherent" in its disclosure. To establish inherency, the extrinsic evidence
"must make clear that the missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill." "Inherency, however, may not
be established by probabilities or possibilities. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient."

Decision:
In finding anticipation by inherency, the Board ignored the foregoing critical principles. The Board made
no attempt to show that the fastening mechanisms of Wilson that were used to attach the diaper to the
wearer also "necessarily" disclosed the third separate fastening mechanism of claim 76 used to close the
diaper for disposal, or that an artisan of ordinary skill would so recognize. It cited no extrinsic evidence so
indicating.

Instead, the Board ruled that one of the fastening means for attaching the diaper to the wearer also could
operate as a third fastening means to close the diaper for disposal and that Wilson therefore inherently
contained all the elements of claim 76. In doing so, the Board failed to recognize that the third mechanical
fastening means in claim 76, used to secure the diaper for disposal, was separate from and independent of
the two other mechanical means used to attach the diaper to the person. The Board's theory that these two
fastening devices in Wilson were capable of being intermingled to perform the same function as the third
and first fastening elements in claim 76 is insufficient to show that the latter device was inherent in
Wilson. Indeed, the Board's analysis rests upon the very kind of probability or possibility--the odd use of
fasteners with other than their mates--that this court has pointed out is insufficient to establish inherency.
[I disagree!!]
46

The decision of the Board of Patent Appeals and Interferences affirming the examiner's rejection of claim
76 as anticipated by and obvious over the Wilson patent is REVERSED. [I dont see it the way the Court
did? Why is it not inherent?! Maybe the Board of Patent Appeals did not explain clearly how it is
inherent.]

RADER, Circuit Judge, concurring.
Robertson asserts that the prior art Wilson patent does not teach three elements of claim 76: a "third
mechanical fastening means," a disposal means on the "outside surface" of the body portion, and end
regions that are "in an overlapping configuration when worn." In reversing the Board, this court relies
solely on the purported failure of Wilson to teach the third fastening means. Because I believe Wilson
teaches such a means, but does not teach the other two limitations at issue, I concur.

ii) Accidental and Unknown Anticipations and the Doctrine of Inherency
Schering Corp. vs. Geneva Pharmaceuticals, 339 F.3d 1371 (Fed. Cir. 2003)

On summary judgment, the United States District Court for the District of New Jersey determined that
claims 1 and 3 of the '716 patent are invalid. Because the district court correctly found that the '233 patent
inherently anticipates claims 1 and 3 of the '716 patent, this court affirms.

Schering Corporation (Schering) owns the '233 and '716 patents on antihistamines. Antihistamines inhibit
the histamines that cause allergic symptoms.

The prior art '233 patent covers the antihistamine loratadine, the active component of a pharmaceutical
that Schering markets as CLARITINTM. Unlike conventional antihistamines when CLARITINTM was
launched, loratadine does not cause drowsiness.

The more recent '716 patent at issue in this case covers a metabolite of loratadine called
descarboethoxyloratadine (DCL). A metabolite is the compound formed in the patient's body upon
ingestion of a pharmaceutical. The ingested pharmaceutical undergoes a chemical conversion in the
digestion process to form a new metabolite compound. The metabolite DCL is also a non-drowsy
antihistamine.

Structurally, loratadine and its metabolite DCL differ only in that loratadine has a carboethoxy group (i.e.,
-COOEt) on a ring nitrogen, while DCL has a hydrogen atom on that ring nitrogen. Claim 1 of the '716
patent covers DCL (for X = Cl), its fluorine analog, and their salts; claim 3 covers only DCL and its salts:

The '233 patent discloses a class of compounds including loratadine. The '233 patent claims loratadine in
claim 7. The '233 patent claims four other compounds in claims 8-11. Examples 6-7 are prophetic
examples of pharmaceutical compositions (a syrup and a tablet), each containing an unidentified "active
compound." The '233 patent does not expressly disclose DCL and does not refer to metabolites of
loratadine.

The numerous defendants-appellees sought to market generic versions of loratadine once the '233 patent
expired. Seeking regulatory approval, each appellee submitted an application to the Food and Drug
Administration (FDA). Because Schering included the '716 patent in the Orange Book listing for
loratadine, the applications also contained a certification that the '716 patent was invalid. The appellees
notified Schering of the FDA filings.

After receiving notice of the FDA filings, Schering filed suit for infringement.

47
District Court:
the district court found that the '233 patent did not expressly disclose DCL. Nonetheless, the district
court also found that DCL was necessarily formed as a metabolite by carrying out the process disclosed in
the '233 patent. The district court concluded that the '233 patent anticipated claims 1 and 3 of the '716
patent. The district court therefore granted the appellees' motions for summary judgment of invalidity.

A patent is invalid for anticipation if a single prior art reference discloses each and every limitation of
the claimed invention. Moreover, a prior art reference may anticipate without disclosing a feature of the
claimed invention if that missing characteristic is necessarily present, or inherent, in the single
anticipating reference.

Decision:
At the outset, this court rejects the contention that inherent anticipation requires recognition in the prior
art. Other precedents of this court have held that inherent anticipation does not require that a person of
ordinary skill in the art at the time would have recognized the inherent disclosure. E.g., In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1351 (Fed.Cir.2002); MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d
1362, 1366 (Fed.Cir.1999) ("Where ... the result is a necessary consequence of what was deliberately
intended, it is of no import that the article's authors did not appreciate the results."); Atlas Powder, 190
F.3d at 1348-49 ("Because `sufficient aeration' was inherent in the prior art, it is irrelevant that the prior
art did not recognize the key aspect of [the] invention.... An inherent structure, composition, or function is
not necessarily known."). Thus, recognition by a person of ordinary skill in the art before the critical date
of the '716 patent is not required to show anticipation by inherency. The district court therefore did not
err in allowing for later recognition of the inherent characteristics of the prior art '233 patent.

cases dealing with "accidental, unwitting, and unappreciated" anticipation also do not show that
inherency requires recognition

("If a product that is offered for sale inherently possesses each of the limitations of the claims, then the
invention is on sale, whether or not the parties to the transaction recognize that the product possesses the
claimed characteristics.")("[A]ppreciation of the invention is not a requirement to trigger the statutory [on
sale] bar.")

In the context of accidental anticipation, DCL is not formed accidentally or under unusual conditions
when loratadine is ingested. The record shows that DCL necessarily and inevitably forms from loratadine
under normal conditions. DCL is a necessary consequence of administering loratadine to patients. The
record also shows that DCL provides a useful result, because it serves as an active non-drowsy
antihistamine. In sum, this court's precedent does not require a skilled artisan to recognize the inherent
characteristic in the prior art that anticipates the claimed invention.

The district court correctly concluded that DCL is inherent in the prior art. Without any genuine issues of
material fact, the district court correctly granted summary judgment that claims 1 and 3 are invalid as
anticipated by the '233 patent.

[Class Notes: That which would literally infringe if later in time, anticipates if earlier.]

iii) Enablement Standard for Anticipation
In re Hafner, 410 F.2d 1403 (C.C.P.A 1969)
See hard copy.

a.2 Known by others
48
National Tractor Pullers Association v. Watkins, 205 U.S.P.Q. 892 (N.D. Ill,
1980)

[What was argued to be the prior art were the tablecloth drawings, but it was not considered as prior art
because it was never made available to the public.]

In order to qualify as prior art under 35 USPQ 102, the art must be art which was known before the
invention by the patentee. Appleton Electric Co. v. Efengee Electrical Supply Co., 412 F.2d 589 (7th Cir.
1969); Deep Welding, Inc. v. Sciaky Bros., Inc., 417 F.2d 1227 (7th Cir. 1969); Graham v. John Deere
Co., 383 U.S. 1 (1965).

Prior knowledge as set forth in 35 U.S.C. 102(a) must be [*66] prior public knowledge, that is
knowledge which is reasonably accessible to the public. Minneapolis-Honeywell Reg. Co. v. Midwestern
Inst., Inc., 296 F.2d 36 (C.A. 7th 1961); Gillman v. Stern, 114 F.2d 28 (2nd Cir. 1940).

The knowledge required by 102(a) involves some type of public disclosure and is not satisfied by
knowledge of a single person, or a few persons working together. Filterite Corp. v. Tate Engineering, Inc.,
318 F.Supp. 584, 167 USPQ 450 (D.C. Md. 1970), aff'd. 447 F.2d 62, 170 USPQ 190 (4th Cir. 1971);
Union Carbide Corp. v. Filtrol Corp., 170 USPQ 482 (C.D. Cal. 1971), aff'd 179 USPQ 209 (9th Cir.
1973). This court finds that the 1963-64 alleged Huls-Harms-Sage activities doe not qualify as prior art as
found by the Patent Office.

In order for alleged prior inventions to qualify s prior art under 35 U.S.C. 102(g), there must be proven,
by clear and convincing evidence, complete conception of a buildable and operable device, diligence to a
reduction to practice of the device, identification between the alleged prior art deice and the claimed
construction and lack of abandonment, and suppression or concealment by the claimed prior inventor. The
Barbed [*67] Wire Patent Cases, 143 U.S. 275 (1892); Clark Thread Co. v. Willimantic Linen Co., 140
U.S. 481 (1891); Westinghouse Electric & Mfg. Co. v. Wadsworth Electric Mfg. Co., 51 F.2d 447 (6th
Cir. 1931).

a.3 Used by others
Rosaire v. Barroid Sales Division and National Lead Co., 218 F.2 (5
th
Cir.
1955)

[Class Notes: Evan an unsuccessful experiment can consist a prior art.]
[I dont agree. The words of the case were as cited in the digest are The court agreed with Rosaire
in that an unsuccessful experiment which is later abandoned does not negate novelty in a new and
successful device. Nevertheless, the existence of a machine abandoned after its completion and
sufficient use to demonstrate its practicability, is evidence that the same ideas incorporated in a
later development does not amount to invention.
Check the case original.]

a.4 Printed Publication
In Re Klofsten, 380 F.3d 1345 (Fed. Cir. 2004)

a.5 Non-prejudicial Disclosure (Sec. 235, IP Code)

Section 25. Non-Prejudicial Disclosure. -
25.1. The disclosure of information contained in the application during the twelve (12) months preceding
the filing date or the priority date of the application shall not prejudice the applicant on the ground of lack
of novelty if such disclosure was made by:
49
(a) The inventor;
(b) A patent office and the information was contained [a] in another application filed by the
inventor and should not have been disclosed by the office, or [b] in an application filed without
the knowledge or consent of the inventor by a third party which obtained the information directly
or indirectly from the inventor; or
(c) A third party which obtained the information directly or indirectly from the inventor.
25.2. For the purposes of Subsection 25.1, "inventor" also means any person who, at the filing date of
application, had the right to the patent. (n)

b) Inventive Step (Section 26, IP Code as amended by RA 9502)

SEC. 6. Section 26 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the
Philippines, is hereby amended to read as follows:
"SEC. 26. Inventive Step. - 26.1. 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. (n)
"26.2. 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, 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."

Aguas vs. De Leon, 111 SCRA 238

Doctrines:
Any invention of a new and useful machine, manufactured product or substance, process, or an
improvement of the foregoing, shall be patentable. Where improvement in tile making is inventive
and different from old process of tile making, improvement is patentable.
The validity of the patent issued by the Philippines Patent Office in favor of the private
respondent and the question over the inventiveness, novelty and usefulness of the improved
process therein specified and described are matters which are better determined by the Philippines
Patent Office. Facts: On April 14, 1962, Conrado G. de Leon filed in the Court of First Instance
of Rizal at Quezon City a complaint for infringement of patent against Domiciano A. Aguas and
F.H. Aquino and Sons alleging that being the original first and sole inventor of certain new and
useful improvements in the process of making mosaic pre-cast tiles, he lawfully filed and
prosecuted an application for Philippine patent, and having complied in all respects with the
statute and the rules of the Philippine Patent Office, Patent No. 658 was lawfully granted and
issued to him; that said invention was new, useful, not known or used by others in this country
before his invention thereof, not patented or described in any printed publication anywhere before
his invention thereof, or more than one year prior to his application for patent thereof, not
patented in any foreign country by him or his legal representatives on application filed more than
one year prior to his application in this country; that plaintiff has the exclusive license to make,
use and sell throughout the Philippines the improvements set forth in said Letters Patent No. 658;
that the invention patented by said Patent No. 658 is of great utility and of great value to plaintiff
and of great benefit to the public who has demanded and purchased tiles embodying the said
invention in very large quantities and in very rapidly increasing quantities; that the defendant
Domiciano A. Aguas infringed Letters of Patent No. 658 by making, using and selling tiles
embodying said patent invention and that defendant F.H. Aquino & Sons is guilty of infringement
by making and furnishing to the defendant Domiciano A. Aguas the engravings, castings and
devices designed and intended for use and actually used in apparatus for the making of tiles
embodying plaintiffs patented invention. Thereafter, an order granting the plaintiffs petition for
50
a Writ of Preliminary Injunction was issued. On May 23, 1962, the defendant Domiciano A.
Aguas filed his answer denying the allegations of the plaintiff and alleging that: the plaintiff is
neither the original first nor sole inventor of the improvements in the process of making mosaic
pre-cast tiles, the same having been used by several tile-making factories in the Philippines and
abroad years before the alleged invention by de Leon; that Letters Patent No. 658 was unlawfully
acquired by making it appear in the application in relation thereto that the process is new and that
the plaintiff is the owner of the process when in truth and in fact the process incorporated in the
patent application has been known and used in the Philippines by almost all tile makers long
before the alleged use and registration of patent by plaintiff Conrado G. de Leon; that the
registration of the alleged invention did not confer any right on the plaintiff because the
registration was unlawfully secured and was a result of the gross misrepresentation on the part of
the plaintiff that his alleged invention is a new and inventive process. The trial court rendered a
decision in favor of the plaintiff. Aguas appealed to the Court of Appeals. The CA affirmed the
decision of the trial court, with the modification that plaintiff-appellees award of moral damages
was reduced. Aguas filed a petition for certiorari to the SC. Issue:
1. Whether the Patent issued to de Leon was legally issued.
Held/Ratio: 1. Yes. The Court finds that Patent No. 658 was legally issued, the process and/or
improvement being patentable.
The petitioner questioned the validity of the patent of the private respondent, Conrado G. de Leon, on the
ground that the process, subject of said patent, is not an invention or discovery, or an improvement of the
old system of making tiles. It should be noted that the private respondent does not claim to be the
discoverer or inventor of the old process of tilemaking. He only claims to have introduced an
improvement of said process. In fact, Letters Patent No. 658 was issued by the Philippine Patent Office to
the private respondent, Conrado G. de Leon, to protect his rights as the inventor of an alleged new and
useful improvement in the process of making mosaic pre- cast tiles. Indeed, Section 7, Republic Act No.
165, as amended provides: Any invention of a new and useful machine, manufactured product or
substance, process, or an improvement of the foregoing, shall be patentable. The Claims and
Specifications of Patent No. 658 show that although some of the steps or parts of the old process of tile
making were described therein, there were novel and inventive features mentioned in the process. Some
of the novel features of the private respondents improvements are the following: critical depth, with
corresponding easement and lip width to such degree as leaves the tile as thin as 1/8 of an inch at its
thinnest portion, ideal composition of cement and fine river sand, among other ingredients that makes
possible.
The production of tough and durable wall tiles, though thin and light; the engraving of deep designs in
such a way as to make the tiles decorative, artistic and suitable for wall ornamentation, and the fact that
the tiles can be mass produced in commercial quantities and can be conveniently stock-piled, handled and
packed without any intolerable incidence of breakages.
The petitioner also contends that the improvement of respondent is not patentable because it is not new,
useful and inventive. This contention is without merit. The records disclose that de Leons process is an
improvement of the old process of tile making. The tiles produced from de Leons process are suitable for
construction and ornamentation, which previously had not been achieved by tiles made out of the old
process of tile making. De Leons invention has therefore brought about a new and useful kind of tile. The
old type of tiles was usually intended for floors although there is nothing to prevent one from using them
for walling purposes. These tiles are neither artistic nor ornamental. They are heavy and massive.
The respondents improvement is indeed inventive and goes beyond the exercise of mechanical skill. He
has introduced a new kind of tile for a new purpose. He has improved the old method of making tiles and
pre-cast articles which were not satisfactory because of an intolerable number of breakages, especially if
deep engravings are made on the tile. He has overcome the problem of producing decorative tiles with
deep engraving, but with sufficient durability. Durability inspite of the thinness and lightness of the tile, is
assured, provided that a certain critical depth is maintained in relation to the dimensions of the tile.
51
The validity of the patent issued by the Philippines Patent Office in favor of the private respondent and
the question over the inventiveness, novelty and usefulness of the improved process therein specified and
described are matters which are better determined by the Philippines Patent Office. The technical staff of
the Philippines Patent Office, composed of experts in their field, has, by the issuance of the patent in
question, accepted the thinness of the private respondents new tiles as a discovery. There is a
presumption that the Philippines Patent Office has correctly determined the patentability of the
improvement by the private respondent of the process in question.

Graham v. John Deere Co., 383 U.S. 1 (1966)

Doctrine:
The only requirements for patentability before were novelty and utility. The Patent Act codified
another requirement non-obviousness which was found only in jurisprudence before.
Section 103 required a determination of the following questions of fact to resolve the issue of
obviousness:
the scope and content of the prior art;
the differences between the claimed invention and the prior art; and
the level of ordinary skill in the prior art.
The Court also recognized that these questions would likely need to be answered on a case-by-
case basis, first by the United States Patent and Trademark Office (USPTO), then by the courts.
Facts:
This is a consolidation of two appealed cases.
Case # 1 Graham v. John Deere, Co.
Graham sued Deere for patent infringement. Graham invented a device that was designed to absorb shock
from chisel plows. He invented this because when chisel plows were used on rocky soil, the plows get
damaged because of all the shock. Graham did this by attaching plow shanks to spring clamps to allow
them to flex freely under the frame of the plow. A patent was granted. He made an improvement by
placing the hinge plate beneath the plow shank rather than above it, in order to minimize the outward
motion of the shank away from the plate. Another patent was granted.
Case # 2 Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical Co.
Calmar was a producer of hold-down sprayers for bottles of chemicals such as insecticides, and
Colgate- Palmolive was a purchaser of these sprayers. Inventor Baxter I. Scoggin, Jr. had assigned his
patent for sprayer design to Cook Chemical Co. The invention patented was a cap to cover insecticide
spray cans that had a rib seal. Although rib seals were used for caps to cover other types of cans, this was
the first time a rib seal was used in the context of an insecticide spray can. Calmar and Colgate-Palmolive
sought a declaration of invalidity and non-infringement of the patent, and Cook Chemical Co. sought to
maintain an action for infringement. The validity of the patent was sustained by the District Court, and the
Eighth Circuit affirmed.
Issue: 1. W/N the patented inventions pass the test of non-obviousness
Held/Ratio:
1. In the Graham case, the '798 (second) patent was originally rejected by the patent examiner as being
insufficiently distinguished from the previous '811 (first) patent. The only two claims which differed
between the two patents were (1) the stirrup and the bolted connection of the shank to the hinge plate do
not appear in '811; and (2) the position of the shank is reversed, being placed in patent '811 above the
hinge plate, sandwiched between it and the upper plate. One argument which Graham raised before the
court, but had not raised before the USPTO, was that in the new '798 design, the flexing of the plow
shank was limited to the points between the spring clamp and the tip of the plow shank, absorbing the
shock of hard objects on the ground more efficiently. The court rejected this argument and invalidated the
'798 patent for two reasons: first, Graham had not raised this flexing argument before the USPTO, and
second, the parts in the '798 patent served the same purposes as those in the prior art.
52
In the matters concerning Cook Chemical, Scoggin, a corporate officer at Cook, had originally based his
design on Calmars previous unpatented design, but later claimed that the integration of the sprayer and
container solved the problem of external leakage during assembly and shipping of insecticide products.
The district court held that Scoggins sprayer was not obvious because even though its individual
elements were not novel, nothing in the prior art would have suggested the combination of elements. After
the initial rejection of his patent, Scoggin drafted claims more carefully to distinguish the prior art,
limiting new claims to the use of a rib seal, rather than a washer or gasket, to maintain a seal, as well as
the existence of a small space between the overcap and the sprayer. Because Scoggin narrowed his claims
to meet the limitations requested by the patent examiner, Cook Chemical could not now claim broader
subject matter and further held that the differences between Scoggins design and the prior art were
simply too minor and non-technical to maintain the validity of Cooks patent.

December 6

Subtests of Non-Obviousness
KSR International v. Teleflex, Inc. , 550 U.S. 398 (2007)
In Re Kubin, 561 F.3d 1351 (Fed. Cir. 2009)

Issue of obviousness based on the "obvious to try" doctrine:

In KSR the Supreme Court stated that if market pressure or design need was present and there
were a finite number of identified, predictable solutions, a person skilled in the art had good
reason to pursue the known options in his technical grasp.

If this led to the anticipated success, then it is likely that the product was not of innovation but of
ordinary skill and common sense. The Supreme Court held that in this situation, the fact that a
combination was obvious to try might give rise to obviousness under Section 103.

Two classes in which "obvious to try" was erroneously equated to obviousness:

The first was where obvious to try was to vary all parameters and try each of them.

The second erroneous use was where obvious to try was to explore a new technology or general
approach where prior art only gave general guidance as to the particular form of the claimed
invention or how to achieve it.

Scope and Content of Prior Art

In re Winslow, 365 F 2d 1017, 177 U.S.P.Q. (BNA) 48 (C.C.P.A)
Hazeltine Research v. Brenner, U.S. 252 (1965)

Non-analogous Arts Limitation
In re Clay, 966 F.2d 656, 23 U.S.P.Q.2D 1058 (Fed. Cir. 1992)

Two criteria has been used to determine whether prior art is analogous: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field
of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved.

Non-obviousness in Chemistry
53

In re Papesch, 137 U.S.P.Q. 43 (C.C.P.A. 1963)
In re Baird, 16 F.3d 380, 29 U.S.P.Q.2D 1550 (Fed. Cir. 1994)

A disclosure of millions of compounds does not render obvious a claim to three compounds, particularly
when that disclosure indicates a preference leading away from the claimed compounds.

Non-obviousness in Biotechnology

In re Deuel, 51 F.3d 1552, 34 U.S.P.Q.2D 1210 (Fed. Cir. 1995)

c) Industrial Application (Section 27, IP Code)

Section 27. Industrial Applicability. - An invention that can be produced and used in any industry shall be
industrially applicable. (n)

[During patent prosecution, the disclosed utility is presumed valid. The patent office bears the
burden to disprove utility. The standard the USPTO uses is whether there is a reasonable doubt
that it would lack utility from the perspective of a person having ordinary skill in the art. If the
examiner shows evidence that the invention is not useful, the burden shifts to the applicant to prove
utility. The applicant can then submit additional data to support a finding of utility. [In re Brana,
51 F.3d 1560 (Fed. Cir. 1995)] The invention must possess utility at the time of application. [
Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed. cir. 2005) Source:
http://en.wikipedia.org/wiki/Utility_(patent)#Burden_of_proof_during_prosecution]

Beneficial Utility

Lowell vs. Lewis, 15 Fed. Cas. 1018 (C.C.D. Mass. 1817)

Facts:
This is an action for an infringement of a patent right. In 1813, Jacob Perkins obtained a patent for a new
and useful invention in the construction of pumps. He assigned his interest to Lowell. In 1817, James
Baker invented a similar improvement and was able to obtain a patent. Lewis became his assignee.
Lowell sued Lewis for infringement of Perkins patent. Defendant Lewis asserts that the invention of
Perkins was neither new nor useful so it is not entitled to a patent. The invention of Baker is not of the
same construction as that of Perkins pumps. He also contends that it is necessary for Lowell to prove that
the invention is of general utility it must supersede the pumps in common use.
Issues:
W/N the term useful means that the invention must be superior to all preceding machines with
the same function
W/N Bakers invention is sufficiently described
W/N Bakers invention violated the patent of Perkins
Held/Ratio:
1. NO. To warrant a patent, the applicant must establish, that his machine is a new and useful
invention. All that the law requires is, that the invention should not be frivolous or injurious to
the well-being, good policy, or sound morals of society. The word "useful," therefore, is
incorporated into the act in contradistinction to mischievous or immoral. For instance, a new
invention to poison people, or to promote debauchery, or to facilitate private assassination, is not
a patentable invention. But if the invention steers wide of these objections, whether it be more or
less useful is a circumstance very material to the interests of the patentee, but of no importance to
54
the public. Usefulness for the purposes of patent eligibility requires only that the claimed
invention performs some non-trivial function. The claimed invention need not be so superior as to
replace generally all preceding devices performing the same function.
2. YES. The specification should be in full, clear, and exact terms, as not only to distinguish the
same from all things before known, but to enable any person skilled in the art or science, of
which it is a branch, or with which it is most nearly connected, to make, compound, and use the
same. It should be expressed in such terms that a person skilled in the art or science would be able
to construct the patented invention.
3. It ruled that it would depend upon whether the pumps of Perkins and Baker are substantially the
same invention. A mere change of the form or proportions of any machine cannot, per se, be
deemed a new invention. If they are the same invention, Perkins, being clearly the first inventor,
is entitled exclusively to the patent right. The manner, in which Mr. Perkins's invention is, in his
specification, proposed to be used, is in a square pump, with triangular valves, connected in the
centre, and resting without any box on the sides of the pump, at such an angle as exactly to fit the
four sides. The pump of Mr. Baker, on the other hand, is fitted only for a circular tube, with
butterfly valves of an oval shape, connected in the centre, and resting, not on the sides of the
pump, but on a metal rim, at a given angle, so that the rim may not be exactly in contact with the
sides, but the valve may be. [The Court left this matter to the sound judgment of the jury.]

Juicy Whip, Inc. v. Orange Bang, Inc. 183 F.3d 1364 (Fed. Cir. 1999)

Doctrine:
The fact that one product can be altered to make it look like another is in itself a specific benefit
sufficient to satisfy the statutory requirement of utility.
Facts:
Juicy Whip, Inc., is the assignee of a Patent entitled "Post-Mix Beverage Dispenser With an Associated
Simulated Display of Beverage." A "post-mix" beverage dispenser stores beverage syrup concentrate and
water in separate locations until the beverage is ready to be dispensed. The syrup and water are mixed
together immediately before the beverage is dispensed, which is usually after the consumer requests the
beverage. In contrast, in a "pre-mix" beverage dispenser, the syrup concentrate and water are pre-mixed
and the beverage is stored in a display reservoir bowl until it is ready to be dispensed. The display bowl is
said to stimulate impulse buying by providing the consumer with a visual beverage display. A pre-mix
display bowl, however, has a limited capacity and is subject to contamination by bacteria. It therefore
must be refilled and cleaned frequently.
The invention claimed is a post-mix beverage dispenser that is designed to look like a pre-mix beverage
dispenser. The claims require the post-mix dispenser to have a transparent bowl that is filled with a fluid
that simulates the appearance of the dispensed beverage and is resistant to bacterial growth. The claims
also require that the dispenser create the visual impression that the bowl is the principal source of the
dispensed beverage, although in fact the beverage is mixed immediately before it is dispensed, as in
conventional post-mix dispensers.
4

4
Claim 1 is representative of the claims at issue. It reads as follows:
In a post-mix beverage dispenser of the type having an outlet for discharging beverage components in predetermined proportions
to provide a serving of dispensed beverage, the improvement which comprises:
a transparent bowl having no fluid connection with the outlet and visibly containing a quantity of fluid; said fluid being resistant
to organic growth and simulating the appearance of the dispensed beverage;
said bowl being positioned relative to the outlet to create the visual impression that said bowl is the reservoir and principal source
of the dispensed beverage from the outlet; and
said bowl and said quantity of fluid visible within said bowl cooperating to create the visual impression that multiple servings of
the dispensed beverage are stored within said bowl.

55
Juicy Whip sued Orange Bang, alleging that they were infringing the claims of the patent. The lower
court granted Orange Bangs motion for summary judgement on the ground that the invention lacked
utility and thus was unpatentable.
The lower court concluded that the invention lacked utility because its purpose was to increase sales by
deception, i.e., through imitation of another product. The court explained that the purpose of the invention
"is to create an illusion, whereby customers believe that the fluid contained in the bowl is the actual
beverage that they are receiving, when of course it is not." Although the court acknowledged Juicy
Whips argument that the invention provides an accurate representation of the dispensed beverage for the
consumers benefit while eliminating the need for retailers to clean their display bowls, the court
concluded that those claimed reasons for the patents utility "are not independent of its deceptive purpose,
and are thus insufficient to raise a disputed factual issue to present to a jury." The court further held that
an invention lacks utility, the court stated, if it confers no benefit to the public other than the opportunity
for making a product more salable. Finally, the court ruled that the invention lacked utility because it is
merely an imitation of the pre- mix dispenser.
Issue:
1. W/N The district court therefor erred in holding that the invention of the 405 patent lacks utility
because it deceives the public through imitation in a manner that is designed to increase product sale?
Held/Ratio:
1. Yes, The patent act provides that "[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful improvement thereof," may
obtain a patent on the invention or discovery. The threshold of utility is not high: An invention is "useful"
under if it is capable of providing some identifiable benefit. The principle that inventions are invalid if
they are principally designed to serve immoral or illegal purposes has not been applied broadly in recent
years. For example, years ago courts invalidated patents on gambling devices on the ground that they
were immoral, but that is no longer the law.
In holding the patent in this case invalid for lack of utility, the district court relied on two Second Circuit
cases, The Rickard case, where the court held invalid a patent on a process for treating tobacco plants to
make their leaves appear spotted. The court noted the only effect, if not the only object, of such treatment,
is to spot the tobacco, and counterfeit the leaf spotted by natural causes. The Aristo Hosiery case held that
the seamless stocking has imitation marks for the purposes of deception, and the idea prevails that with
such imitation the article is more salable, was not enough to render the invention patentable.
We decline to follow Rickard and Aristo Hosiery, as we do not regard them as representing the correct
view of the doctrine of utility under the Patent Act of 1952. The fact that one product can be altered to
make it look like another is in itself a specific benefit sufficient to satisfy the statutory requirement
of utility.
The fact that customers may believe they are receiving fluid directly from the display tank does not
deprive the invention of utility. Orange Bang has not argued that it is unlawful to display a representation
of the beverage in the manner that fluid is displayed in the reservoir of the invention, even though the
fluid is not what the customer will actually receive. Moreover, even if the use of a reservoir containing
fluid that is not dispensed is considered deceptive, that is not by itself sufficient to render the invention
unpatentable. The requirement of "utility" in patent law is not a directive to the Patent and Trademark
Office or the courts to serve as arbiters of deceptive trade practices. As the Supreme Court put the point
more generally, Congress never intended that the patent laws should displace the police powers of the
State.
Of course, Congress is free to declare particular types of inventions unpatentable for a variety of reasons,
including deceptiveness. Until such time as Congress does so, however, we find no basis in section 101 to
hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to
fool some members of the public.
The Case was reversed and remanded.

December 13
56

Practical or Specific Utility

Brenner v. Manson, 383 U.S. 519, 148 U.S.P.Q (BNA) 689 (1966)

Facts:
Howard Ringold and George Rosenkranz applied for a patent on an allegedly novel process for making
certain known steroids. Respondent Manson, a chemist engaged in steroid research, filed an application to
patent precisely the same process described by Ringold and Rosenkranz. He asserted that it was he who
had discovered the process, and that he was the first one to do so. Accordingly, he requested that an
interference be declared in order to try out the issue of priority between his claim and that of Ringold
and Rosenkranz.
A Patent Office examiner denied Manson's application. The ground for rejection was the failure to
disclose any utility for the chemical compound produced by the process. Manson had tried to claim
usefulness because a compound similar to the one produced by his process had proven to be effective in
inhibiting tumors in mice.
Issue:
1. Whether the practical utility of the compound produced by a chemical process is an essential element in
establishing a prima facie case for the patentability of the process.
Held/Ratio: 1. For failing to show utility, respondent may not be granted a patent.
One may patent only that which is useful
Even on the assumption that the process would be patentable were respondent to show that the
steroid produced had a tumor-inhibiting effect in mice, we would not overrule the Patent Office
finding that respondent has not made such a showing.
o The Patent Office held that, despite the reference to the adjacent homologue (I think homologue refers
to a chemical that is similar), respondent's papers did not disclose a sufficient likelihood that the steroid
yielded by his process would have similar tumor-inhibiting characteristics.
o Indeed, respondent himself recognized that the presumption that adjacent homologues have the same
utility has been challenged in the steroid field because of a greater known unpredictability of compounds
in that field.'
In support of his argument, respondent relies on a statement made by Justice Story that a useful
invention is one which may be applied to a beneficial use in society, in contradistinction to an invention
injurious . . . or frivolous and insignificant.
o Justice Story's language sheds little light on our subject. It places such a special meaning on the word
useful that we cannot accept, in the absence of evidence that Congress so intended. There are, after all,
many things in this world which may not be considered useful but which, nevertheless are totally
without a capacity for harm.
A process patent in the chemical field, which has not been developed and pointed to the degree of
specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by
the statute.
Until the process claim has been reduced to production of a product shown to be useful, the metes and
bounds of that monopoly are not capable of precise delineation. It may engross a vast, unknown, and
perhaps unknowable area. Such a patent may confer power to block off whole areas of scientific
development, without compensating benefit to the public.
The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent
monopoly is the benefit derived by the public from an invention with substantial utility. Unless and until
a process is refined and developed to this pointwhere specific benefit existsthere is insufficient
justification for permitting an applicant to engross what may prove to be a broad field.
IN SHORT: In order to be granted a patent, the inventor must be able to specifically show how
his/her invention is useful.

57
Fujikawav. Wattanasin, 93 F.3d 1559 (Fed. Cir. 1996)

Fujikawa appeal from two decisions of the Board of Patent Appeals and Interferences of the United States
Patent & Trademark Office (Board) granting priority of invention in two related interferences to
Sompong Wattanasin, and denying Fujikawa's motion to add an additional sub-genus count to the
interferences. We affirm. [What are interferences? A: an inter partes proceeding to determine priority
based on the pre-2011 first-to-invent system.]

The inventive activity of Fujikawa, the senior party, occurred overseas. Fujikawa can thus rely only on his
effective filing date, August 20, 1987, to establish priority. 35 U.S.C. 102(g) (1994). Whether
Wattanasin is entitled to priority as against Fujikawa therefore turns on two discrete questions. First,
whether Wattanasin has shown conception coupled with diligence from just prior to Fujikawa's effective
filing date until reduction to practice. Id. Second, whether Wattanasin suppressed or concealed the
invention between reduction to practice and filing. Id. []

In the pharmaceutical arts, our court has long held that practical utility may be shown by adequate
evidence of any pharmacological activity. [What is pharmacological activity?]

The case was assigned to a Ms. Geisser, a young patent attorney in the Sandoz patent department with
little experience in the pharmaceutical field. In any event, the draft was completed in November and,
after several turn-arounds with the inventor, ultimately filed in March of 1989. Both Wattanasin and
Fujikawa requested an interference with Picard. The requests were granted and a three-party interference
between Picard, Fujikawa, and Wattanasin was set up. Early in the proceedings, however, Picard filed a
request for an adverse judgment presumably because he could not antedate Fujikawa's priority date. What
remained was a two-party interference between Fujikawa and Wattanasin. Ultimately, for reasons not
significant to this appeal, the interference was divided into two interferences: one relating to the method
count and one relating to the compound count. The Board decided each of these interferences adverse to
Fujikawa. [What is a method count, and a compound count?]

With respect to the compound count, the Board made two alternative findings regarding reduction to
practice. First, it found that the in vitro results in October 1987 showed sufficient practical utility for the
compound so as to constitute a reduction to practice as of the date of those tests [I really dont get it.
What does sufficient practical utility for the compound so as to constitute a reduction to practice
mean?].3 In the alternative, the Board held, the in vivo tests which showed significant activity in the 64-
935 compound at doses of 1.0 and 0.1 mg were sufficient to show practical utility.

We first address Fujikawa's argument that Wattanasin's in vitro and in vivo tests failed to establish a
practical utility for either the compound or method count. The Board held that the in vitro tests
established a practical utility for the compound and that the in vivo tests established a practical utility for
both the compound and method counts. For the reasons set out below, we affirm these findings of the
Board.

For over 200 years, the concept of utility has occupied a central role in our patent system. See Brenner v.
Manson, 383 U.S. 519, 529, 86 S.Ct. 1033, 1039, 16 L.Ed.2d 69, 148 USPQ 689, 693 (1966). Indeed,
"[t]he basic quid pro quo contemplated by the Constitution and the Congress for granting a patent
monopoly is the benefit derived by the public from an invention with substantial utility." Id. at 534, 86
S.Ct.at 1042, 148 USPQ at 695. Consequently, it is well established that a patent may not be granted to an
invention unless substantial or practical utility for the invention has been discovered and disclosed. See
Cross v. Iizuka, 753 F.2d 1040, 1044, 224 USPQ 739, 742 (Fed.Cir. 1985). Similarly, actual reduction to
58
practice, which constitutes in law the final phase of invention, cannot be established absent a showing of
practical utility. See Blicke v. Treves, 44 C.C.P.A. 753, 241 F.2d 718, 720-21, 112 USPQ 472, 474-75
(1957).

In the pharmaceutical arts, our court has long held that practical utility may be shown by adequate
evidence of any pharmacological activity.
5
See, e.g., Nelson v. Bowler, 626 F.2d 853, 856, 206 USPQ
881, 883 (CCPA 1980); In re Krimmel, 48 C.C.P.A. 1116, 292 F.2d 948, 952-53, 130 USPQ 215, 219
(1961). For example, in Campbell v. Wettstein, 476 F.2d 642, 646-47, 177 USPQ 376, 379 (CCPA 1973)
we stated that "[m]oreover, the interference counts contain no limitation relating to intended use or to
discovered properties of the claimed compounds. Accordingly, under well-established precedent,
evidence establishing substantial utility for any purpose is sufficient to show reduction to practice." The
rule in Campbell was applied in Rey-Bellet v. Engelhardt, 493 F.2d 1380, 1383, 181 USPQ 453, 454
(CCPA 1974) ("Since the count contains no limitation related to any utility, evidence which would
establish a substantial utility for any purpose is sufficient to show its reduction to practice.").4 Such
activity constitutes a practical utility because "[i]t is inherently faster and easier to combat illnesses and
alleviate symptoms when the medical profession is armed with an arsenal of chemicals having known
pharmacological activities. Since it is crucial to provide researchers with an incentive to disclose
pharmacological activities in as many compounds as possible, we conclude that adequate proof of any
such activity constitutes a showing of practical utility." Nelson, 626 F.2d at 856, 206 USPQ at 883; see
also Krimmel, 292 F.2d at 952-53, 130 USPQ at 219.

It may be difficult to predict, however, whether a novel compound will exhibit pharmacological activity,
even when the behavior of analogous compounds is known to those skilled in the art. Consequently,
testing is often required to establish practical utility. See, e.g., Blicke, 241 F.2d at 720, 112 USPQ at 475.
But the test results need not absolutely prove that the compound is pharmacologically active. All that is
required is that the tests be "reasonably indicative of the desired [pharmacological] response." Nelson,
626 F.2d at 856, 206 USPQ at 884. (emphasis added). In other words, there must be a sufficient
correlation between the tests and an asserted pharmacological activity so as to convince those skilled in
the art, to a reasonable probability, that the novel compound will exhibit the asserted pharmacological
behavior. See Cross, 753 F.2d at 1050, 224 USPQ at 747.

The ultimate determination of reduction to practice is a question of law which we review de novo. See
Holmwood v. Sugavanam, 948 F.2d 1236, 1238, 20 USPQ2d 1712, 1714 (Fed.Cir.1991). In contrast, we
review the Board's factual findings supporting its legal conclusions about reduction to practice for clear
error. Id. Whether a practical utility has been established for a novel compound is a question of fact. See
Cross, 753 F.2d at 1044 n. 7, 224 USPQ at 742 n. 7. We therefore review the Board's findings with
respect to practical utility for clear error.

The facts in this case are substantially similar to those in Cross v. Iizuka, 753 F.2d 1040, 224 USPQ 739
(Fed.Cir.1985). There, we expressly held that, in appropriate circumstances, evidence of in vitro testing
could adequately establish a practical utility.5 As we there explained:

We perceive no insurmountable difficulty, under appropriate circumstances, in finding that the first link in
the screening chain, in vitro testing, may establish a practical utility for the compound in question....
[U]nder the circumstances of the instant case, where [an application] discloses an in vitro utility, ... and
where the disclosed in vitro utility is supplemented by the similar in vitro and in vivo pharmacological
activity of structurally similar compounds, ... we agree with the Board that this in vitro utility is sufficient
to [establish utility].

5
pharmaco - comb. form relating to drugs: pharmacogenetics. ORIGIN from Greek pharmakon drug, medicine.
59
Id. at 1051, 224 USPQ at 748. Thus, Cross holds that positive in vitro results, in combination with a
known correlation between such in vitro results and in vivo activity, may be sufficient to establish
practical utility.

Fujikawa does not argue that the law as stated in Cross is incorrect. Instead, Fujikawa contends that
Wattanasin has failed to establish an adequate correlation between in vitro and in vivo results in the field
of cholesterol-inhibiting compounds to permit Wattanasin to rely on affirmative in vitro results to
establish a practical utility for the compound.

Of course, it is possible that some compounds active in vitro may not be active in vivo. But, as our
predecessor court in Nelson explained, a "rigorous correlation" need not be shown in order to establish
practical utility; "reasonable correlation" suffices.

As the Board recognized, however, ipsis verbis disclosure is not necessary to satisfy the written
description requirement of section 112. Instead, the disclosure need only reasonably convey to persons
skilled in the art that the inventor had possession of the subject matter in question. In re Edwards, 568
F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978). In other words, the question is whether
Wattanasin's "application provides adequate direction which reasonably [would lead] persons skilled in
the art" to the sub-genus of the proposed count. Id. at 1352, 196 USPQ at 467.

Many years ago our predecessor court graphically articulated this standard by analogizing a genus and its
constituent species to a forest and its trees. As the court explained:
It is an old custom in the woods to mark trails by making blaze marks on the trees. It is no help in finding
a trail ... to be confronted simply by a large number of unmarked trees. Appellants are pointing to trees.
We are looking for blaze marks which single out particular trees. We see none.
In finding that Wattanasin's disclosure failed to sufficiently describe the proposed sub-genus, the Board
again recognized that the compounds of the proposed count were not Wattanasin's preferred, and that his
application contained no blazemarks as to what compounds, other than those disclosed as preferred, might
be of special interest. In the absence of such blazemarks, simply describing a large genus of compounds is
not sufficient to satisfy the written description requirement as to particular species or sub- genuses. See,
e.g., id. 379 F.2d at 994, 154 USPQ at 122 ("Specific claims to single compounds require reasonably
specific supporting disclosure and while ... naming [each species] is not essential, something more than
the disclosure of a class of 1000, or 100, or even 48 compounds is required.").

Before this court, Fujikawa challenges the Board's denial of its motion on two grounds. First, Fujikawa
persists in arguing that its proposed count is disclosed ipsis verbis
6
in Wattanasin's application. The basis
for this contention seems to be that Wattanasin lists cyclopropyl as one possible moiety for R in his
disclosure of the genus. Clearly, however, just because a moiety is listed as one possible choice for one
position does not mean there is ipsis verbis support for every species or sub-genus that chooses that
moiety. Were this the case, a "laundry list" disclosure of every possible moiety for every possible position
would constitute a written description of every species in the genus. This cannot be because such a
disclosure would not "reasonably lead" those skilled in the art to any particular species. We therefore
reject Fujikawa's argument on this point.

6
Ipsis verbis !ps!s w"rb!s . ipsis v#rbis . adv.
In the same words.In the precise words used in the relevant source. E.g., [T]he Community legislatureprohibited, ipsis
verbis ...
60
Second, Fujikawa claims that the Board erred in finding that Wattanasin's disclosure contained
insufficient blazemarks to direct one of ordinary skill to the compounds of its proposed count.
Specifically, Fujikawa points out that with respect to practically every position on the compound, the
proposed count recites at least one of Wattanasin's preferred choices. Even with respect to position R,
Fujikawa further explains, one of ordinary skill would have been moved by Wattanasin's disclosure to
substitute cyclopropyl for isopropyl because the two substituents are isosteric.

While Fujikawa's arguments are not without merit, we cannot say, on this record, that the Board's
decision was clearly erroneous. As the Board pointed out, Fujikawa's proposed sub-genus diverges from
Wattanasin's preferred elements at least with respect to position R. Although, in hindsight, the substitution
of cyclopropyl for isopropyl might seem simple and foreseeable, Wattanasin's disclosure provides no
indication that position R would be a better candidate for substitution than any other. Thus, faced with
Wattanasin's disclosure, it was not clear error to hold that one of ordinary skill would not be led to
Fujikawa's sub-genus in particular.
Were we to extend Ruschig's metaphor to this case, we would say that it is easy to bypass a tree in the
forest, even one that lies close to the trail, unless the point at which one must leave the trail to find the tree
is well marked. Wattanasin's preferred embodiments do blaze a trail through the forest; one that runs close
by Fujikawa's proposed tree. His application, however, does not direct one to the proposed tree in
particular, and does not teach the point at which one should leave the trail to find it. We therefore affirm
the Board's denial of Fujikawa's motion.

In re Brana, 51 F.3d 1560, 34 U.S.P.Q. 2d 1436 (Fed. Cir. 1995)

Doctrine
The Burden is initially on the PTO to raise doubt about alleged utility alleged in disclosure
Usefulness in patent law, and in particular in the context of pharmacological inventions,
necessarily includes the expectation of further research and development. The stage at which an
invention in this field becomes useful is well before it is ready to be administered to humans.

Facts: Miguel Brana, et.al (applicants) filed patent application Serial no. 213,690 (690 application)
directed to non- symmetrically 5-nitrobenzo[de]isoquinoline-1,3-dione compounds, for use as antitumor
substances. The specification stated that non-symmetrical substitutions provide compounds with a better
action spectrum as antitumor substances than known benzo-isoquinolines, namely those in K.D. Paull
et. al, Computer assisted Structure-Activity Correlations, Drug Research. Paull describes a computer
assisted evaluation of benzo[de] isoquinolines- 1,3- diones and related compounds which have been
screened for antitumor activity by testing their efficacy in vivo against two specific implanted murine
(utilizing mice as test subjects) lymphocytic leukemias, P388 and L1210. These two in vivo tests are
widely used by the National Cancer Institute (NCI) to measure the antitumor properties of a compound. In
addition to comparing the effectiveness of the claimed compounds with structurally similar compounds in
Paull, applicants patent specification illustrates the cytotoxicity of the claimed compounds against human
tumor cells, in vitro and concludes that these tests had good action. The examiner initially rejected the
claims as obvious over US Patent 4,614,820 to Zee-Cheng, et al. The reference was cited disclosing
structurally similar symmetrically substituted compounds for use as antitumor agents. In response, the
applicants submitted declaration evidence showing that the claimed non-symmetrically substituted
compounds were far more effective as antitumor agents than the symmetrically substituted compounds
disclosed by Zee-Cheng et al. Furthermore, the applicants urged that even though the differences in
structure were slight, there was no suggestion in the art that the improved results would have been
expected. The examiner withdrew the rejection over prior art but rejected the claims on other grounds.
The claims were finally rejected under 35 USC 112, first paragraph. The basis for rejection was that the
specification failed to describe any specific disease against which the claimed compounds were active.
The examiner also concluded that prior art tests performed by Paull [who is Paull?] (in vivo models) and
61
the tests disclosed in the specification (activity against human tumor cells in vitro) were not sufficient to
establish a reasonable expectation that the claimed compounds had a practical utility (antitumor activity in
humans). The examiner further noted a rejection also could have been made under 35 USC 101 for
failure to disclose a practical utility. During the prosecution of the application [What does prosecution of
the application mean? is this distinguished from litigation of a patent case? does this refer to the process
from filing to grant? Seems so.
7
], the applicants submitted a declaration under 37 CFR 1.132 of Michael
Kluge showing the antitumor activity of several compounds within the scope of the claims. Based
thereon, Kluge concluded that these compounds would likely be clinically useful as anti-cancer agents.
The applicants appealed the final rejection to the Board of Appeals. The Board affirmed the rejection
based on: (1) The applicants specification failed to disclose a specific disease against which the claimed
compounds are useful, and therefore, absent undue experimentation, one of ordinary skill in the art was
precluded from using the invention; (2) even if the specification did allege a specific use, the applications
failed to prove that the claimed compounds are useful. More particularly, the Board found that the tests
offered by the applicants failed to prove utility were inadequate to convince one of ordinary skill in the
art that the claimed compounds were useful as antitumor substances. The applicants appealed the
decision to the Court of Appeals for the Federal Circuit.

Issue:
1. Whether or not the applicant must prove the practical utility or usefulness of an invention for which
patent protection is sought.
Held/Ratio:
1. No. [The disclosed utility is sufficient at the time of application. PTO has burden to prove lack of
utility.] The court found that the applicants favorable comparison (in its specification) to Paulls
symmetrically substituted compounds implicitly asserts that the claimed compounds are highly effective
against lymphocytic leukemia. Based thereon, the court held that in light of the explicit reference to
Paull, the specification does allege a sufficiently specific use.
The court also pointed out that the intial burden is on the PTO to make a prima facie showing that the
claimed invention lacks utility. Only after the PTO provides evidence showing that once of ordinary skill
in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide
rebuttal evidence sufficient to convince such a person of the inventions asserted utility. [The law prefers
utility to encourage disclosure. This makes it easier to apply for a patent. Thus, the burden is placed
against lack of utility and with the Patent Office.]
Also, even if the PTO had met its initial burden thereby shifting the burden to the applicants to offer
rebuttal evidence (even if one skilled in the art would have reasonably questioned the asserted utility), the
applicants submitted sufficient evidence to convince one of ordinary skill in the art of the asserted utility.
The in vivo test results presented in the Kluge declaration (showing that several compounds within the
scope of the claims exhibited significant antitumor activity in a standard murine tumor model) alone
would have been sufficient to rebut a prima facie case of utility.
The Commissioner took the position that such in vivo tests in animals are only preclinical tests to
determine whether a compound is suitable for testing in humans, and that these tests are not reasonably
predictive of the success of the claimed compounds for treating cancer in humans. However, the court
declared that the Commissioner should not confuse the requirements for obtaining government approval
to market a drug testing for safety and effectiveness) with the requirements for obtaining a patent. In this
regard, the court noted as follows:
Usefulness in patent law, and in particular in the context of pharmacological inventions, necessarily
includes the expectation of further research and development. The stage at which an invention in this field

7
In order for the continuation application to be entitled to the priority date of the parent application, several conditions must be
met. The first condition is that the continuation application must be filed while the parent application is pending, that is before the
prosecution of the parent application in the Patent Office has been terminated, either by abandonment of the application or by
issuance of the application into a patent. Source: http://www.yale.edu/ocr/pfg/guidelines/patent/continuation.html
62
becomes useful is well before it is ready to be administered to humans. Were we to require Phase II
testing in order to prove utility, the associated costs would prevent many companies from obtaining
patent protection on promising new inventions, thereby eliminating an incentive to pursue, through
research and development, potential cures in many crucial areas such as the treatment of cancer.
Additionally, the court noted that its predecessor court (the CCPA) had long ago determined that proof of
an alleged pharmaceutical property for a compound by statistically significant tests with standard
laboratory animals is sufficient to establish utility. Namely, one who has taught the public that compound
exhibits some desirable pharmaceutical property in a standard laboratory animal has made a significant
and useful contribution to the art, even though it may eventually appear that the compound is without
value in the treatment of humans.
Moreover, the court took notice that NCI is of the opinion that the tests are statistically significant
because the NCI has explicitly recognized the subject murine tumor models as standard screening tests
for determining whether new compounds may be useful as antitumor agents.

In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005)

Dane K. Fisher and Raghunath Lalgudi (collectively "Fisher") appeal from the decision of the U.S. Patent
and Trademark Office ("PTO") Board of Patent Appeals and Interferences ("Board") affirming the
examiner's final rejection of the only pending claim of application Serial No. 09/619,643 *1367 (the "'643
application"), entitled "Nucleic Acid Molecules and Other Molecules Associated with Plants," as
unpatentable for lack of utility under 35 U.S.C. 101 and lack of enablement under 35 U.S.C. 112, first
paragraph. Ex parte Fisher, App. No.2002-2046 (Bd.Pat.App.Int. Mar. 16, 2004) (" Board Decision ").
This appeal was submitted after oral argument on May 3, 2005. Because we conclude that substantial
evidence supports the Board's findings that the claimed invention lacks a specific and substantial utility
and that the '643 application does not enable one of ordinary skill in the art to use the invention, we
affirm.

We agree with both the government and the amici that none of Fisher's seven asserted uses meets the
utility requirement of 101. Section 101 provides: "Whoever invents ... any new and useful ...
composition of matter ... may obtain a patent therefor ...." (Emphasis added). . The basic quid pro quo
contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived
by the public from an invention with substantial utility. Unless and until a process is refined and
developed to this point where specific benefit exists in currently available form there is insufficient
justification for permitting an applicant to engross what may prove to be a broad field. Courts have
used the labels "practical utility" and "real world" utility interchangeably in determining whether an
invention offers a "substantial" utility. Indeed, the Court of Customs and Patent Appeals stated that
"`[p]ractical utility' is a shorthand way of attributing `real-world' value to claimed subject matter. In other
words, one skilled in the art can use a claimed discovery in a manner which provides some immediate
benefit to the public." Nelson, 626 F.2d at 856 (emphasis added). 4 It thus is clear that an application must
show that an invention is useful to the public as disclosed in its current form, not that it may prove useful
at some future date after further research. [How is this reconciled with the rule in pharmacology that it is
inherent that further research is necessary, and thus to encourage disclosures, a patent is deemed useful at
an earlier state, i.e., in the cases of Fujikawa v. Wattanasin and In Re Brana, pharmacological activity
during in vitro testing taken in conjunction with reasonable connection with pharmacological activity in in
vitro and in vivo testing in similar compounds?] Simply put, to satisfy the "substantial" utility
requirement, an asserted use must show that that claimed invention has a significant and presently
available benefit to the public. Turning to the "specific" utility requirement, an application must
disclose a use which is not so vague as to be meaningless.

As of the filing date of the '643 application, Fisher admits that the underlying genes have no known
functions. Fisher, nevertheless, claims that this fact is irrelevant because the seven asserted uses are not
63
related to the functions of the underlying genes. We are not convinced by this contention. Essentially, the
claimed ESTs [?] act as no more than research intermediates that may help scientists to isolate the
particular underlying protein-encoding genes and conduct further experimentation on those genes. The
overall goal of such experimentation is presumably to understand the maize genome the functions of
the underlying genes, the identity of the encoded proteins, the role those proteins play during anthesis,
whether polymorphisms exist, the identity of promoters that trigger protein expression, whether protein
expression may be controlled, etc. Accordingly, the claimed ESTs are, in words of the Supreme Court,
mere "object[s] of use-testing," to wit, objects upon which scientific research could be performed with no
assurance that anything useful will be discovered in the end. all of Fisher's asserted uses represent
merely hypothetical possibilities, objectives which the claimed ESTs, or any EST for that matter, could
possibly achieve, but none for which they have been used in the real world.

[Prof. Merges of Berkeleys discussion: Source: www.law.berkeley.edu/files/bclt_8-26-2010-
Utility.ppt

- attempt to implement very broadly-worded Supreme Court opinion in Bilski
- 101 - Whoever invents and new AND USEFUL machine, manufacture, . . .
- Main trouble areas
(1) No known utility (perpetual motion machines)
Newman v. Quigg, 877 F.2d 1575 [ 11 USPQ2d 1340] (Fed. Cir. 1989) (claims to a perpetual
motion machine ruled inoperable)
(2) Malicious utility
a "useful" invention is one "which may be applied to a beneficial use in society, in
contradistinction to an invention injurious to the morals, health, or good order of society, or
frivolous and insignificant"
(3) Chemical, pharmaceutical, and biotech-related inventions
- Why? The nature of chemistry-related research. Structures (molecules) and their
uses . . .
- Justice Story View - Appendix, Note on the Patent Laws, 3 Wheat. 13, 24. See also
Justice Story's decisions on circuit in Lowell v. Lewis, 15 Fed. Cas. 1018 (No. 8568)
(C. C. D. Mass.), and Bedford v. Hunt, 3 Fed Cas. 37 (No. 1217) (C. C. D. Mass.).
- Brenner v Manson
- This is not to say that we mean to disparage the importance of
contributions to the fund of scientific information short of the invention of
something "useful," or that we are blind to the prospect that what now
seems without "use" may tomorrow command the grateful attention of the
public.
- But a patent is not a hunting license. It is not a reward for the search, but
compensation for its successful conclusion. "[A] patent system must be
related to the world of commerce rather than to the realm of philosophy. * *
*"
- FDA approval, however, is not a prerequisite for finding a compound
useful within the meaning of the patent laws. Usefulness in patent law, and
in particular in the context of pharmaceutical inventions, necessarily
includes the expectation of further research and development.. Were we to
require Phase II testing in order to prove utility, the associated costs would
prevent many companies from obtaining patent protection on promising
new inventions, thereby eliminating an incentive to pursue, through
research and development, potential cures in many crucial areas such as the
treatment of cancer.

64
-Ex Parte Fisher
- Major case involving expressed sequence tags
- Utility the key issue: did inventors demonstrate patentable utility as of the
filing date of the patent?
- A substantially purified nucleic acid molecule that encodes a maize protein
or fragment thereof comprising a nucleic acid sequence selected from the
group consisting of SEQ ID NO: 1 through SEQ ID NO: 5.
- What utilities are claimed? determining a relationship between a
polymorphism and a plant trait - isolating a genetic region . . . Or
mapping - determining [protein] levels . . .
- Held: Immediate utility is to conduct further experiments. Too attenuated
[or thin] under Brenner and Brana.

Timeline:
<------------------------------------------------------------------------------------------->
1 2 3 4
(1) Project initiation: Pure Concept Stage
(2) Promising Experimental Results: Brenner v. Manson
(3) Promising Clinical Results, e.g., in vitro In Re: Brana
(4) Working Model or Prototype: in vivo effectiveness]

[Neils Analysis:
Case Ruling as to Utility Reason Stage
Brenner v. Manson no steroid that is
claimed to have a
likelihood of inhibiting
tumors
did not disclose a
sufficient likelihood that
the steroid yielded by
his process would have
similar tumor-inhibiting
characteristics
experimental
Fujikawa v. Wattanasin yes compound that is
cholesterol inhibiting
where [an application]
discloses an in vitro
utility, ... and where the
disclosed in vitro utility
is supplemented by the
similar in vitro and in
vivo pharmacological
activity of structurally
similar compounds, ...
we agree with the Board
that this in vitro utility
is sufficient to [establish
utility]
in vitro
In Re Brana yes anti-tumor
substance
applicants favorable
comparison (in its
specification as
asymmetrical) to Paulls
symmetrically
substituted compounds
implicitly asserts that
the claimed compounds
are highly effective
in vitro
65
against lymphocytic
leukemia.
Ex Parte Fisher no exspressed
sequence tags [ESTs]
for maize protein
hypothetical possibility,
too thin for Brenner and
Brana. not real, no
real world utility.
?

5. Disclosure and Enablement

Article 29, TRIPS Agreement

Article 29

Conditions on Patent Applicants

1. Members shall require that an applicant for a patent shall disclose the invention in a manner
sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may
require the applicant to indicate the best mode for carrying out the invention known to the inventor at the
filing date or, where priority is claimed, at the priority date of the application.

2. Members may require an applicant for a patent to provide information concerning the applicants
corresponding foreign applications and grants.

Section 35, IP Code

Section 35. Disclosure and Description of the Invention. - 35.1. Disclosure. - The application shall
disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person
skilled in the art. Where the application concerns a microbiological process or the product thereof and
involves the use of a micro-organism which cannot be sufficiently disclosed in the application in such a
way as to enable the invention to be carried out by a person skilled in the art, and such material is not
available to the public, the application shall be supplemented by a deposit of such material with an
international depository institution.
35.2. Description. - The Regulations shall prescribe the contents of the description and the order of
presentation. (Sec. 14, R.A. No. 165a)

a. Undue Experimentation

The Incandescent Lamp Patent, 159 U.S. 465 (1895)

Ruling: the claims in the letters patent issued May 12, 1880, to the Electro-Dynamic Light Company,
(assignee of Sawyer and Man) for an electric light, are too indefinite to be the subject of a valid
monopoly. to recover damages for the infringement of letters patent

The defendants justified under certain patents to Thomas A. Edison issued January 27, 1880; denied the
novelty and utility of the complainant's patent, and averred that the same had been fraudulently and
illegally procured. The real defendant was the Edison Electric Light Company, and the case involved a
contest between what are known as the Sawyer and Man and the Edison systems of electric lighting. "An
important practical advantage which is secured by the arch form of incandescing carbon is that it permits
the carbon to expand and contract under the varying temperatures to which it is subjected when the
electric current is turned on or off without altering the position of its fixed terminals. Thus, the necessity
66
for a special mechanical device to compensate for the expansion and contraction which has heretofore
been necessary is entirely dispensed with, and thus the lamp is materially simplified in its construction.
Another advantage of the arch form is that the shadow cast by such burners is less than that produced by
other forms of burners when fitted with the necessary devices to support them."

In their application, Sawyer and Man stated that their invention related to The specification further
stated that:
"Another important advantage resulting from our construction of the lamp results from the fact that the
wall forming the chamber of the lamp through which the electrodes pass to the interior of the lamp is
made wholly of glass, by which all danger of oxidation, leakage, or short-circuiting is avoided."

"The advantages resulting from the manufacture of the carbon from vegetable fibrous or textile material
instead of mineral or gas carbon are many. Among them may be mentioned the convenience afforded for
cutting and making the conductor in the desired form and size, the purity and equality of the carbon
obtained, its susceptibility to tempering, both as to hardness and resistance, and its toughness and
durability. We have used such burners in closed or hermetically sealed transparent chambers, in a
vacuum, in nitrogen gas, and in hydrogen gas; but we have obtained the best results in a vacuum or an
attenuated atmosphere of nitrogen gas, the great desideratum being to exclude oxygen or other gases
capable of combining with carbon at high temperatures from the incandescing chamber, as is well
understood."

It is admitted that the lamp described in the Sawyer and Man patent is no longer in use, and was never a
commercial success; that it does not embody the principle of high resistance with a small illuminating
surface; that it does not have the filament burner of the modern incandescent lamp; that the lamp chamber
is defective, and that the lamp manufactured by the complainant, and put upon the market, is substantially
the Edison lamp; but it is said that in the conductor used by Edison (a particular part of the stem of the
bamboo, lying directly beneath the siliceous cuticle, the peculiar fitness for which purpose was
undoubtedly discovered by him), he made use of a fibrous or textile material covered by the patent to
Sawyer and Man, and is therefore an infringer. It was admitted, however, that the third claim -- for a
conductor of carbonized paper -- was not infringed.

The two main defenses [or grounds to assert invalidity] to this patent are (1) that it is defective upon its
face in attempting to monopolize the use of all flbrous and textile materials for the purpose of electric
illuminations, and (2) that Sawyer and Man were not in fact the first to discover that these were better
adapted than mineral carbons to such purposes.

Is the complainant-patentee [Sawyer] entitled to a monopoly of all fibrous and textile materials for
incandescent conductors? Sawyer and Man supposed they had discovered in carbonized paper the best
material for an incandescent conductor. Instead of confining themselves to carbonized paper, as they
might properly have done, and in fact did in their third claim, they made a broad claim for every fibrous
or textile material, when in fact an examination of over 6,000 vegetable growths showed that none of
them possessed the peculiar qualities that fitted them for that purpose. Was everybody, then, precluded by
this broad claim from making further investigation? We think not.

It is required by Rev.Stat. 4888 that the application shall contain
"a written description of the device, and of the manner and process of making constructing, compounding,
and using it in such full, clear, concise, and exact terms as to enable any person skilled in the art or
67
science to which it appertains or with which it is most nearly connected to make, construct, compound,
and use the same."

The object of this is to apprise the public of what the patentee claims as his own, the courts of what they
are called upon to construe, and competing manufacturers and dealers of exactly what they are bound to
avoid. If the description be so vague and uncertain that no one can tell, except by independent
experiments, how to construct the patented device, the patent is void.

So in Tyler v. Boston, 7 Wall. 327, wherein the plaintiff professed to have discovered a combination of
fusel oil with the mineral and earthy oils, constituting a burning fluid, the patentee stated that the exact
quantity of fusel oil which is necessary to produce the most desirable compount must be determined by
experiment. And the Court observed:
"Where a patent is claimed for such a discovery, it should state the component parts of the new
manufacture claimed with clearness and precision, and not leave a person attempting to use the discovery
to find it out 'by experiment.'"

Applying this principle to the patent under consideration, how would it be possible for a person to know
what fibrous or textile material was adapted to the purpose of an incandescent conductor except by the
most careful and painstaking experimentation? If, as before observed, there were some general quality,
running through the whole fibrous and textile kingdom, which distinguished it from every other, and gave
it a peculiar fitness for the particular purpose, the man who discovered such quality might justly be
entitled to a patent; but that is not the case here. An examination of materials of this class carried on for
months revealed nothing that seemed to be adapted to the purpose, and even the carbonized paper and
wood carbons specified in the patent, experiments with which first suggested their incorporation therein,
were found to be so inferior to the bamboo, afterwards discovered by Edison, that the complainant was
forced to abandon its patent in that particular and take up with the material discovered by its rival. Under
these circumstances, to hold that one who had discovered that a certain fibrous or textile material
answered the required purpose should obtain the right to exclude everybody from the whole domain of
fibrous and textile materials, and thereby shut out any further efforts to discover a better specimen of that
class than the patentee had employed, would be an unwarranted extension of his monopoly and operate
rather to discourage than to promote invention.

As these suggestions are of themselves sufficient to dispose of the case adversely to the complainant, a
consideration of the question of priority of invention, or rather of the extent and results of the Sawyer and
Man experiments, which was so fully argued upon both sides and passed upon by the court below,
becomes unnecessary.
For the reasons above stated, the decree of the circuit court is Affirmed.

In re Wands, 858 F.2d 731, 8 U.S.P.Q.2d 14000 (Fed. Cir. 1988)

The rejection under 35 U.S.C. 112, first paragraph, is based on the grounds that appellant's written
specification would not enable a person skilled in the art to make the monoclonal antibodies that are
needed to practice the claimed invention without undue experimentation. Antibodies are a class of
proteins (immunoglobulins) that help defend the body against invaders such as viruses and bacteria.

The claimed invention involves methods for the immunoassay of HBsAg by using high-affinity
monoclonal IgM antibodies. Jack R. Wands and Vincent R. Zurawski, Jr., two of the three coinventors of
the present application, disclosed methods for producing monoclonal antibodies against HBsAg in the
'145 patent, entitled "Process for Producing Antibodies to Hepatitis Virus and Cell Lines Therefor, The
specification of the '145 patent teaches a procedure for immunizing mice against HBsAg, and the use of
68
lymphocytes from these mice to produce hybridomas that secrete monoclonal antibodies specific for
HBsAg. The '145 patent discloses that this procedure yields both IgG and IgM antibodies with high-
affinity binding to HBsAg.

III. Analysis
A. Enablement by Deposit of Microorganisms and Cell Lines.
The first paragraph of 35 U.S.C. 112 requires that the specification of a patent must enable a person
skilled in the art to make and use the claimed invention. "Patents * * * are written to enable those skilled
in the art to practice the invention."*fn3 A patent need not disclose what is well known in the
art.*fn4Although we review underlying facts found by the board under a "clearly erroneous"
standard,*fn5 we review enablement as a question of law.*fn6

Where an invention depends on the use of living materials such as microorganisms or cultured cells, it
may be impossible to enable the public to make the invention (i.e., to obtain these living materials) solely
by means of a written disclosure. One means that has been developed for complying with the enablement
requirement is to deposit the living materials in cell depositories which will distribute samples to the
public who wish to practice the invention after the patent issues.*fn7Administrative guidelines and
judicial decisions have clarified the conditions under which a deposit of organisms can satisfy the
requirements of section 112.*fn8 A deposit has been held necessary for enablement where the starting
materials (i.e., the living cells used to practice the invention, or cells from which the required cells can be
produced) are not readily available to the public.*fn9 Even when starting materials are available, a
deposit has been necessary where it would require undue experimentation to make the cells of the
invention from the starting materials.*fn10

In addition to satisfying the enablement requirement, deposit of organisms also can be used to establish
the filing date of the application as the prima facie date of invention,*fn11 and to satisfy the requirement
under 35 U.S.C. 114 that the PTO be guaranteed access to the invention during pendency of the
application.*fn12 Although a deposit may serve these purposes, we recognized, in In re Lundak,*fn13
that these purposes, nevertheless, may be met in ways other than by making a deposit.

A deposit also may satisfy the best mode requirement of section 112, first paragraph, and it is for this
reason that the 1F8 hybridoma was deposited in connection with the '145 patent and the current
application. Wands does not challenge the statements by the examiner to the effect that, although the
deposited 1F8 line enables the public to perform immunoassays with antibodies produced by that single
hybridoma, the deposit does not enable the generic claims that are on appeal. The examiner rejected the
claims on the grounds that the written disclosure was not enabling and that the deposit was inadequate.
Since we hold that the written disclosure fully enables the claimed invention [Huh? When did you hold
this?], we need not reach the question of the adequacy of deposits.

Although inventions involving microorganisms or other living cells often can be enabled by a
deposit,*fn14 a deposit is not always necessary to satisfy the enablement requirement.*fn15 No deposit is
necessary if [1] the biological organisms can be obtained from readily available sources or [2] derived
from readily available starting materials through routine screening that does not require undue
experimentation.*fn16 Whether the specification in an application involving living cells (here,
hybridomas) is enabled without a deposit must be decided on the facts of the particular case.*fn17

Wands states that application of these methods to make high-affinity IgM anti-HBsAg antibodies
requires only routine screening, and that does not amount to undue experimentation The sole issue is
whether, in this particular case, it would require undue experimentation to produce high-affinity IgM
monoclonal antibodies. Enablement is not precluded by the necessity for some experimentation such as
routine screening.*fn19 However, experimentation needed to practice the invention must not be undue
69
experimentation.*fn20 "The key word is 'undue,' not 'experimentation.'"*fn21 Whether undue
experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached
by weighing many factual considerations. The board concluded that undue experimentation would be
needed to practice the invention on the basis of experimental data presented by Wands. These data are not
in dispute. However, Wands and the board disagree strongly on the conclusion that should be drawn from
that data.

Factors to be considered in determining whether a disclosure would require undue experimentation
have been summarized by the board in In re Forman.*fn24 They include (1) the quantity of
experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or
absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the
relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth
of the claims.*fn25

We conclude that the board's interpretation of the data is erroneous. It is strained and unduly harsh to
classify the stored cell lines (each of which was proved to make high-binding antibodies against HBsAg)
as failures demonstrating that Wands' methods are unpredictable or unreliable.*fn29 At worst, they prove
nothing at all about the probability of success, and merely show that appellants were prudent in not
discarding cells that might someday prove useful. At best, they show that high-binding antibodies, the
starting materials for IgM screening and Scatchard analysis, can be produced in large numbers. The PTO's
position leads to the absurd conclusion that the more hybridomas an applicant makes and saves without
testing, the less predictable the applicant's results become. Furthermore, Wands' explanation that the first
four attempts at cell fusion failed only because they had not yet learned to perform fusions properly is
reasonable in view of the fact that the next six fusions were all successful. The record indicates that cell
fusion is a technique that is well known to those of ordinary skill in the monoclonal antibody art, and
there has been no claim that the fusion step should be more difficult or unreliable where the antigen is
HBsAg than it would be for other antigens.

When Wands' data is interpreted in a reasonable manner, analysis considering the factors enumerated in
In re Forman leads to the conclusion that undue experimentation would not be required to practice the
invention. Wands' disclosure provides considerable direction and guidance on how to practice their
invention and presents working examples. There was a high level of skill in the art at the time when the
application was filed, and all of the methods needed to practice the invention were well known.

The nature of monoclonal antibody technology is that it involves screening hybridomas to determine
which ones secrete antibody with desired characteristics. Practitioners of this art are prepared to screen
negative hybridomas in order to find one that makes the desired antibody. No evidence was presented by
either party on how many hybridomas would be viewed by those in the art as requiring undue
experimentation to screen. However, it seems unlikely that undue experimentation would be defined in
terms of the number of hybridomas that were never screened. Furthermore, in the monoclonal antibody
art it appears that an "experiment" is not simply the screening of a single hybridoma, but is rather the
entire attempt to make a monoclonal antibody against a particular antigen. This process entails
immunizing animals, fusing lymphocytes from the immunized animals with myeloma cells to make
hybridomas, cloning the hybridomas, and screening the antibodies produced by the hybridomas for the
desired characteristics. Wands carried out this entire procedure three times, and was successful each time
in making at least one antibody that satisfied all of the claim limitations. Reasonably interpreted, Wands'
record indicates that, in the production of high-affinity IgM antibodies against HBsAG, the amount of
effort needed to obtain such antibodies is not excessive. Wands' evidence thus effectively rebuts the
examiner's challenge to the enablement of their disclosure.*fn30

70
Considering all of the factors, we conclude that it would not require undue experimentation to obtain
antibodies needed to practice the claimed invention. Accordingly, the rejection of Wands' claims for lack
of enablement under 35 U.S.C. 112, first paragraph, is reversed.

b. Speculation and Prophesy

Janssen's '318 patent claims a method for treating Alzheimer's disease with galanthamine.

Janssen Pharma v. Teva Pharms, 583 F.3d 1317 (Fed. Cir. 2009)

In April 1986 an examiner at the United States Patent and Trademark Office ("PTO") rejected the claims
in the '318 patent's application for indefiniteness and obviousness. The examiner found the patent
application's claim of a method of "diagnosing" Alzheimer's disease to be indefinite, because diagnosing
"has nothing to do with treating" and because the claims thus "fail[ed] to particularly point out and
distinctly claim the subject matter which applicant regards as the invention." J.A. 4108. The examiner
also found the patent application's claim of a method of treating Alzheimer's disease obvious-in light of
the animal studies cited in the specification describing the use of galantamine to treat scopolamine-
induced amnesia and in improving short-term memory. The examiner did not reject the application for
lack of enablement.

In September 1986 the applicant, Dr. Davis, responded to the examiner's indefiniteness rejection by
narrowing the claim language, deleting the words "and diagnosing" from the original application's claim
of "[a] method of treating and diagnosing Alzheimer's disease." Dr. Davis responded to the obviousness
rejection by explaining that, because the brains of the animals in the studies cited in the specification were
"normal" (rather than having "physiological changes" similar to Alzheimer's disease), the studies were
conducted under "circumstances having no relevance to Alzheimer's disease," and that it thus would be
"baseless" to predict from such studies that galantamine would be useful to treat Alzheimer's disease. J.A.
4407.

In addition, Dr. Davis responded by stating that "experiments [are] underway using animal models which
are expected to show that treatment with galanthamine does result in an improvement in the condition of
those suffering from Alzheimer's disease," and that it was "expected that data from this experimental
work will be available in two to three months and will be submitted to the Examiner promptly thereafter."
J.A. 4405. The '318 patent issued on May 5, 1987. Dr. Davis did not learn the results of the animal testing
experiments-which suggested that galantamine could be a promising Alzheimer's disease treatment-until
July 1987, after the '318 patent had issued. These studies required several months and considerable effort
by researchers at the Johns Hopkins University under the supervision of Dr. Joseph T. Coyle. No such
testing results were ever submitted to the PTO.

After the '318 patent issued in May 1987, Dr. Davis licensed the patent in November 1995 to Janssen. In
February 2001 Janssen received approval from the Food and Drug Administration ("FDA") for using
galantamine to treat mild to moderate Alzheimer's disease.

In February 2005 several generic drug manufacturers filed abbreviated new drug applications ("ANDAs")
and so-called "Paragraph IV" certifications with the FDA, and Janssen sued each manufacturer for
infringing the '318 patent.*fn4 The actions were consolidated, the defendants conceded infringement of
claims 1 and 4 of the '318 patent, and a bench trial was held in May 2007 on the invalidity issues of
anticipation, obviousness, and enablement.

The district court found that the '318 patent was neither anticipated nor obvious. However, the district
court concluded that the '318 patent was invalid for lack of enablement on two distinct grounds. The
71
district court found that the specification did not demonstrate utility because relevant animal testing
experiments were "not finished . . . by the time the '318 patent was allowed" and the specification
provided only "minimal disclosure" of utility. '318 Patent Infringement Litig., 578 F. Supp. 2d at 723,
735; see also id. at 736--37 & n.39. The district court alternatively found that the specification and claims
did not "teach one of skill in the art how to use the claimed method" because the application "only
surmise[d] how the claimed method could be used" without providing sufficient galantamine dosage
information. Id. at 736. The district court entered judgment in favor of the defendants that the '318 patent
was invalid for lack of enablement.

Janssen timely appealed. We have jurisdiction

The enablement requirement is stated in 35 U.S.C. 112.*fn5 Enablement is determined as of the
effective filing date of the patent's application. Plant Genetic Sys., N.V. v. DeKalb Genetics Corp., 315
F.3d 1335, 1339 (Fed. Cir. 2003). Enablement is closely related to the requirement for utility.*fn6 As we
noted in Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1358 (Fed. Cir. 1999),

The enablement requirement of 35 U.S.C. 112, 1 requires that the specification adequately discloses
to one skilled in the relevant art how to make, or in the case of a process, how to carry out, the claimed
invention without undue experimentation.

The utility requirement of 35 U.S.C. 101 mandates that any patentable invention be useful and,
accordingly, the subject matter of the claim must be operable. If a patent claim fails to meet the utility
requirement because it is not useful or operative, then it also fails to meet the how-to-use aspect of the
enablement requirement. (emphasis added, citations and footnote omitted). See also 3 Donald A. Chisum,
Chisum on Patents 7.03(6) (2007). The Supreme Court in Brenner v. Manson, 383 U.S. 519 (1966),
discussing the utility requirement, stated that inventions must have "substantial utility" and "specific
benefit exist[ing] in currently available form." Id. at 534-- 35.

The utility requirement prevents mere ideas from being patented. As we noted in Genentech, Inc. v.
Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997), "[p]atent protection is granted in return for an
enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be
workable. . . . Tossing out the mere germ of an idea does not constitute enabling disclosure." See also In
re Fisher, 421 F.3d 1365, 1373 (Fed. Cir. 2005) (inventions fail to meet the utility requirement if their
"asserted uses represent merely hypothetical possibilities, objectives which the claimed [inventions] . . .
could possibly achieve, but none for which they have been used in the real world").
The utility requirement also prevents the patenting of a mere research proposal or an invention
that is simply an object of research. Again as the Supreme Court stated in Brenner, "a patent is not
a hunting license. It is not a reward for the search, but compensation for its successful conclusion."
383 U.S. at 536. A process or product "which either has no known use or is useful only in the sense that it
may be an object of scientific research" is not patentable. Id. at 535. As we observed in Fisher, inventions
do not meet the utility requirement if they are "objects upon which scientific research could be performed
with no assurance that anything useful will be discovered in the end." 421 F.3d at 1373. Allowing ideas,
research proposals, or objects only of research to be patented has the potential to give priority to the
wrong party and to "confer power to block off whole areas of scientific development, without
compensating benefit to the public." Brenner, 383 U.S. at 534 (footnote omitted).

Typically, patent applications claiming new methods of treatment are supported by test results. But it is
clear that testing need not be conducted by the inventor. In addition, human trials are not required for a
therapeutic invention to be patentable. Our predecessor court, the United States Court of Customs and
72
Patent Appeals, held in In re Krimmel that patent applications need not "prove that compounds or other
materials which [the applicant] is claiming, and which [the applicant] has stated are useful for
'pharmaceutical applications' are safe, effective, and reliable for use with humans." 292 F.2d 948, 954
(CCPA 1961). As we observed in In re Brana, "[w]ere we to require Phase II testing [human trials] in
order to prove utility, the associated costs would prevent many companies from obtaining patent
protection on promising new inventions, thereby eliminating an incentive to pursue . . . potential cures."
51 F.3d 1560, 1568 (Fed. Cir. 1995); see also Scott v. Finney, 34 F.3d 1058, 1063--64 (Fed. Cir. 1994).

In this case, however, neither in vitro test results nor animal test results involving the use of galantamine
to treat Alzheimer's-like conditions were provided. The results from the '318 patent's proposed animal
tests of galantamine for treating symptoms of Alzheimer's disease were not available at the time of the
application, and the district court properly held that they could not be used to establish enablement.*fn8

Janssen goes on to argue that the specification here establishes utility by analytic reasoning. Janssen
relies on the testimony of its expert Dr. Coyle, the scientist who later supervised the performance of the
animal studies suggested in the specification. He testified that the specification "connected the dots" for
galantamine as a potential Alzheimer's disease treatment, listing the "dots" as "[g]alanthamine in humans
safe and well tolerated[,] [c]holinesterase inhibitor, selective nicotinic effects, and very modest
muscarinic receptor side effects." J.A. 9057--58. This testimony of Dr. Coyle on which Janssen relies,
however, characterized the use of galantamine to treat Alzheimer's disease as "a proposal that connected
the dots that raised very interesting questions and worth the effort to check it out in a model in which . . .
both nicotinic and muscarinic receptors would come into play." Id. (emphases added).*fn11

Thus, at the end of the day, the specification, even read in the light of the knowledge of those skilled in
the art, does no more than state a hypothesis and propose testing to determine the accuracy of that
hypothesis. That is not sufficient. See Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1325
(Fed. Cir. 2005) ("If mere plausibility were the test for enablement under section 112, applicants could
obtain patent rights to 'inventions' consisting of little more than respectable guesses as to the likelihood
of their success. When one of the guesses later proved true, the 'inventor' would be rewarded the spoils
instead of the party who demonstrated that the method actually worked. That scenario is not consistent
with the statutory requirement that the inventor enable an invention rather than merely proposing an
unproved hypothesis.").

The '318 patent's description of using galantamine to treat Alzheimer's disease thus does not satisfy the
enablement requirement because the '318 patent's application did not establish utility.*fn12

c. Uses of examples in the specification

In re Strahilevitz, 668 F.2d 1229, 212 U.S.P.Q. 561 (C.C.P.A 1982)

Appellant's invention relates to methods and devices for removing a hapten, antigen, or antibody from the
blood of a living mammal.

The examiner rejected the claims as based upon an insufficient disclosure under 35 U.S.C. 112, first
paragraph, stating: The disclosure is essentially an invitation to experiment. No specific examples are
given. No human treatment (in fact no animal treatment) is described. The specification is replete with
statements as to what may be done. No dialysis or adsorption data [have] been presented. . . .
[A]ppellant urges "nearly universal applicability" for selectively removing chemical species. If there is in
fact universal applicability, with selectivity, appellant should have inserted numerous (50 to 100 for
instance) examples into the specification..... Appellant urges that no working example is required and that
instructions to a technician are not required. But it has already been pointed out that appellant believes his
73
device has universal applications (and the claims are just about that broad). Admittedly, one skilled in the
art is a Ph.D., but even with such a high level of skill, such a person would need detailed guidance to
practice the claimed alleged universal invention.

The board took a somewhat different approach: We fail to find in the disclosure adequate instruction
as to how these selections are to be made and in our view such selections would not be readily apparent or
obvious to those of ordinary skill in the related art. Also required in various claims is the use of a matrix
for use in binding the antibodies; however, we see no disclosure adequate to define such production or
even the materials that are compatible in use. The specification also fails to teach or even suggest the
antibodies or antigens that may be used with the appropriate haptens and we see no disclosure that would
lead to or suggest a proper means of selecting the appropriate membranes for use in the removal devices..
In short, it appears that the appellant has developed a concept of how a variety of prior art procedures
may possibly be combined in a single method . . . and then retreated to leave those in the art with the task
of experimentation to see if the method can be made to operate as set forth. . . . Here, appellant has
presented no descriptive material that in our view is sufficient to provide a proper instruction in the
manner of either developing the apparatus as claimed or the method of using same. The wide variety of
variables that are inherent in the process, and for which the disclosure provides no basis for evaluation,
leads us to the conclusion that operation of the method as claimed would involve an undue amount of
experimentation and we will therefore sustain the rejection. Thus, the board questioned whether the
specification enabled selection and preparation of haptens, antigens, and antibodies; preparation of the
matrix; selection of the dialysis membranes; and selection of parameters of the dialysis process.

A threshold issue is whether the PTO met its burden of proof in calling into question the enablement of
appellant's disclosure. This burden required that the PTO advance acceptable reasoning inconsistent
with enablement. Thereupon, the burden would shift to appellant to show that one of ordinary skill in the
art could have practiced the claimed invention without undue experimentation. In re Sichert, 566 F.2d
1154, 1161, 196 USPQ 209, 215 (CCPA 1977).

The examiner reasoned that because of the breadth of the invention, a large number of examples (50 to
100) would be required to enable one of ordinary skill in the art to make and use the invention. 35 U.S.C.
112, first paragraph. We recognize that working examples are desirable in complex technologies and
that detailed examples can satisfy the statutory enablement requirement. Indeed, the inclusion of such
examples here might well have avoided a lengthy and, no doubt, expensive appeal. Nevertheless, as
acknowledged by the board, examples are not required to satisfy section 112, first paragraph. See, e.g., In
re Stephens, 529 F.2d 1343, 188 USPQ 659 (CCPA 1976); In re Borkowski, 57 CCPA 946, 422 F.2d 904,
164 USPQ 642 (1970); In re Gay, 50 CCPA 725, 309 F.2d 769, 135 USPQ 311 (1962). Therefore, the
examiner's statement that the "nearly universal applicability" alleged for the invention necessitated
numerous examples was erroneous. Although the invention is applicable to a large variety of haptens and
antigens, the examiner offered no reason why these different compounds would require different
techniques or process parameters.

However, the examiner (and the board) also reasoned that enablement was not present because no dialysis
or adsorption (of the antibody or antigen to the matrix) data were presented, and we are persuaded that
this was sufficient to shift the burden to appellant to establish that a person of ordinary skill in the art
could have practiced the invention without undue experimentation.

Enablement. The dispositive issue is whether appellant's disclosure, considering the level of ordinary skill
in the art as of the date of appellant's application, would have enabled a person of such skill to make and
use appellant's invention without undue experimentation. [Q: Is disclosure the requirement, and
enablement the standard? Disclosure is to reveal by means of description in an application, which
enablement is the standard of disclosure which requires that it is sufficient to enable a person skilled in
74
the are to make and use that appelants invention without undue experimentation based solely on the
disclosure.]
He then gives a specific example of preparing an antibody to tetrahydrocannabinol, referring to a
method described in Immunologic Methods in Steroid Determination (Peron & Caldwell ed. 1970) for
conjugating the compound to a protein, and detailing the injection of "[r]abbits, sheep or other suitable
animals" with the conjugate, giving concentration, dosage, and frequency of injection data his patent
also teaches a novel method for coupling antigens or antibodies to glass with the use of a silane coupling
agent.

In view of all the foregoing, we hold that appellant's disclosure would have enabled a person of ordinary
skill in the art to make and use appellant's invention without undue experimentation.[fn7]

-----------------------------------------Beginning of Debbie Lims Notes for Feb. 14-----------------------------

Patent Law Notes by Bebbie Lim foi Febiuaiy 14, 2u14

Inuustiial Applicability
A peison of oiuinaiy skill in the ait woulu immeuiately appieciate why the
invention is useful.
0tility is specific, substantial anu cieuible
o Specific - must be foi a paiticulai puipose vs. bioau anu geneial
o Substantial - have "ieal woilu" use
o Cieuible - asseition is believable to a peison skilleu the ait baseu on the
totality of eviuence anu ieasoning pioviueu

Theie must be an immeuiate benefit to the public anu not just a benefit foi the
futuie.
Section 27 IP Coue - piactical anu ieal like benefit in any fileu of human enueavoi
0tility is easiei to establish compaieu to novelty anu inventive step.

Bisclosuie anu Enablement
Bisclosuie must be complete anu it's not just about the quality.
Why is enablement impoitant.
o Because patent applicants will claim a bioau claim to inciease theii scope of
piotection, anu if this happens, innovation will be inhibiteu.
o Because inventois have a piactice of filing a patent even if the iesult is not
yet mey like when the invention is still in the expeiimentation stage.

2 Factois on how the Stanuaiu of Expeiimentation can be fixeu: (!" $% &'"())
1. Natuie of Invention
2. State of the Ait

!" $% &'"(). Nemoiize the 7 Factois of Reasonableness of 0nuue Expeiimentation
Factois to be consiueieu in ueteimining whethei a uisclosuie woulu iequiie unuue
expeiimentation have been summaiizeu by the boaiu in In ie Foiman.*fn24 They
incluue (1) the quantity of expeiimentation necessaiy, (2) the amount of uiiection
75
oi guiuance piesenteu, (S) the piesence oi absence of woiking examples, (4) the
natuie of the invention, (S) the state of the piioi ait, (6) the ielative skill of those in
the ait, (7) the pieuictability oi unpieuictability of the ait, anu (8) the bieauth of the
claims.*fn2S

*'"))%" +,'-.' /')%
The invention was meiely a hypothesis anu a methou to test the accuiacy of that
hypothesis.

------------------------------------------End of Debbie Lims Notes for Feb. 14------------------------------------

d. Written Description Requirement

Vas-Cath, Inc. v. Mahhurkar, 935 F.2d 1555, 19 U.S.P.Q.2d 1111

Doctrine:
The applicant does not have to describe exactly the subject matter claimed, the description must clearly
allow persons of ordinary skill in the art to recognize that applicant invented what is claimed.

The proper test is whether the drawings conveyed with reasonable clarity to those of ordinary skill that
applicant had in fact invented the catheter recited in those claims

In an Office Action mailed June 6, 1985, the Patent and Trademark Office (PTO) examiner noted that
"the prior application is a design application," but did not dispute that the '601 application was entitled to
its filing date. On January 29, 1986, Mahurkar filed Serial No. 823,592 ('592 utility application), again
claiming the benefit of the filing date of the '081 design application (the '592 utility application was
denominated a continuation of the '601 utility application). In an office action mailed April 1, 1987, the
examiner stated that the '592 utility applicati on was "considered to be fully supported by applicant's
parent application SN 356,081 filed March 8, 1982 [the '081 design application]." The '601 and '592
utility applications issued in 1986 and 1987, respectively, as the '329 and '141 patents, the subjects of this
appeal. The independent claims of both patents are set forth in the Appendix hereto.

Vas-Cath sued Mahurkar in June 1988, seeking a declaratory judgment that the catheters it manufactured
did not infringe Mahurkar's '329 and '141 utility patents.

Vas-Cath's complaint alleged, inter alia, that the '329 and '141 patents were both invalid as anticipated
8

under 35 USC 102(b) by Canadian '089. Vas-Cath's anticipation theory was premised on the argument
that the '329 and '141 patents were not entitled under 35 USC 120 4 to the filing date of the '081 design
application because its drawings did not provide an adequate "written description" of the claimed
invention as required by 35 USC 112, first paragraph.

Mahurkar counterclaimed, alleging infringement. Both parties moved for summary judgment on certain
issues, including validity. For purposes of the summary judgment motion, Mahurkar conceded that, if he
could not antedate it, Canadian '089 would represent an enabling and thus anticipating 102(b) reference
against the claims of his '329 and '141 utility patents.

8
Anticipation [i]n patent law, the publication of the existence of an invention that has already been patented or has a patent
pending, which are grounds for denying a patent to an invention that has substantially the same structure and function as the
earlier invention. Source: http://legal-dictionary.thefreedictionary.com/anticipation
76
Vas-Cath conceded that the '081 design drawings enabled one skilled in the art to practice the claimed
invention within the meaning of 35 USC 112, first paragraph. Id. Thus, the question before the district
court was whether the disclosure of the '081 design application, namely, the drawings without more,
adequately meets the "written description" requirement also contained in 112, first paragraph, so as to
entitle Mahurkar to the benefit of the 1982 filing date of the '081 design application for his two utility
patents and thereby antedates Canadian '089.

Concluding that the drawings do not do so, and that therefore the utility patents are anticipated by
Canadian '089, the district court held the '329 and '141 patents wholly invalid under 35 USC 102(b), id. at
524, 17 USPQ2d at 1358, and subsequently granted Mahurkar's motion for entry of a partial final
judgment under Fed.R.Civ.P. 54(b) on the validity issue. This appeal followed.

The "Written Description" Requirement of 112:The first paragraph of 35 USC 112 requires that: the
specification shall contain a written description of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the
art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall
set forth the best mode contemplated by the inventor of carrying out his invention.

To the uninitiated, it may seem anomalous that the first paragraph of 35 USC 112 has been interpreted as
requiring a separate "description of the invention," when the invention is, necessarily, the subject matter
defined in the claims under consideration. See In re Wright, 866 F.2d 422, 424, 9 USPQ2d 1649, 1851
(Fed. Cir. 1989). One may wonder what purpose a separate "written description" requirement
serves, when the second paragraph of 112 expressly requires that the applicant conclude his
specification "with one or more claims particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention."

One explanation is historical: the "written description" requirement was a part of the patent statutes at a
time before claims were required. A case in point is Evans v. Eaton, 20 U.S. (7 Wheat.) 356 (1822), in
which the Supreme Court affirmed the circuit court's decision that the plaintiff's patent was "deficient,"
and that the plaintiff could not recover for infringement thereunder. The patent laws then in effect, namely
the Patent Act of 1793, did not require claims, but did require, in its 3d section, that the patent applicant
"deliver a written description [written description] of his invention, and of the [disclosure and
enablement] manner of using, or process of compounding, the same, in such full, clear and exact terms, as
to distinguish the same from all things before known, and to enable any person skilled in the art or
science of which it is a branch, or with which it is most nearly connected, to make, compound and use the
same...." Id. at 430. In view of this language, the Court concluded that the specification of a patent had
two objects, the first of which was "to enable artizans to make and use [the invention]. ..." Id. at 433.
The second object of the specification was to put the public in possession of what the party claims as
his own invention, so as to ascertain if he claims anything that is in common use, or is already known,
and to guard against prejudice or injury from the use of an invention which the party may otherwise
innocently suppose not to be [page 1115] patented. [In other words, to set the scope of the patent
claim?] It is, therefore, for the purpose of warning an innocent purchaser, or other person using a
machine, of his infringement of the patent; and at the same time, of taking from the inventor the
means of practising upon the credulity or the fears of other persons, by pretending that his invention is
more than what it really is, or different from its ostensible objects, that the patentee is required to
distinguish his invention in his specification.
Id. at 434.

77
A second, policy-based rationale for the inclusion in 112 of both the first paragraph "written
description" and the second paragraph "definiteness" requirements was set forth in Rengo Co. v.
Molins Mach. Co., 657 F.2d 535, 551, 211 USPQ 303, 321 (3d Cir.), cert. denied, 454 U.S. 1055 (1981):
there is a subtle relationship between the policies underlying the description and definiteness
requirements, as the two standards, while complementary, approach a similar problem from different
directions. Adequate description of the invention guards against the inventor's overreaching by
insisting that he recount his invention in such detail that his future claims can be determined to be
encompassed within his original creation. The definiteness requirement shapes the future conduct of
persons other than the inventor, by insisting that they receive notice of the scope of the patented device.

written description (1
st
) [e.g.? description?] definiteness (2nd ) [is this enablement?]
Adequate description of the invention guards
against the inventor's overreaching by insisting
that he recount his invention in such detail that his
future claims can be determined to be encompassed
within his original creation.
What is claimed.
The definiteness requirement shapes the future
conduct of persons other than the inventor, by
insisting that they receive notice of the scope of the
patented device.
What is the how of make and use?

With respect to the first paragraph of 112 the severability of its "written description" provision from
its enablement ("make and use") provision was recognized by this court's predecessor, the Court of
Customs and Patent Appeals, as early as In re Ruschig, 379 F.2d 990, 154 USPQ 118 (CCPA 1967).
Although the appellants in that case had presumed that the rejection appealed from was based on the
enablement requirement of 112, id. at 995, 154 USPQ at 123, the court disagreed: the question is not
whether [one skilled in the art] would be so enabled but whether the specification discloses the compound
to him, specifically, as something appellants actually invented. ... If [the rejection is] based on section
112, it is on the requirement thereof that "The specification shall contain a written description of the
invention * * *." (Emphasis ours.)
Id. at 995-96, 154 USPQ at 123 (first emphasis added). The issue, as the court saw it, was one of fact:
"Does the specification convey clearly to those skilled in the art, to whom it is addressed, in any way, the
information that appellants invented that specific compound [claimed]?" Id. at 996, 154 USPQ at 123.

In a 1971 case again involving chemical subject matter, the court expressly stated that "it is possible for a
specification to enable the practice of an invention as broadly as it is claimed, and still not describe that
invention." In re DiLeone, 436 F.2d 1404, 1405, 168 USPQ 592, 593 (CCPA 1971) (emphasis added). As
an example, the court posited the situation "where the specification discusses only compound A and
contains no broadening language of any kind. This might very well enable one skilled in the art to make
and use compounds B and C; yet the class consisting of A, B and C has not been described." Id. at 1405
n.1, 168 USPQ 593 n.1 (emphases in original). See also In re Ahlbrecht, 435 F.2d 908, 911, 168 USPQ
293, 296 (CCPA 1971) (although disclosure of parent application may have enabled production of
claimed esters having 2-12 methylene groups, it only described esters having 3-12 methylene groups).

The CCPA also recognized a subtle distinction between a written description adequate to support a claim
under 112 and a written description sufficient to anticipate its subject matter under 102(b). The
difference between "claim-supporting disclosures" and "claim-anticipating disclosures" was dispositive in
In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971), where the court held that a U.S. "grandparent"
application did not sufficiently describe the later-claimed invention, but that the appellant's intervening
British application, a counterpart to the U.S. application, anticipated the claimed subject matter. As the
court pointed out, "the description of a single embodiment of broadly claimed subject matter constitutes a
description of the invention for anticipation purposes ..., whereas the same information in a specification
might not alone be enough to provide a description of that invention for purposes of adequate
disclosure...." Id. at 970, 169 USPQ at 797 (citations omitted ).
78

The purpose and applicability of the "written description" requirement were addressed in In re Smith and
Hubin, 481 F.2d 910, 178 USPQ 620 (CCPA 1973), where the court stated:

Satisfaction of the description requirement insures that subject matter presented in the form of a claim
subsequent to the filing date of the application was sufficiently disclosed at the time of filing so that the
prima facie date of invention can fairly be held to be the filing date of the application. This concept
applies whether the case factually arises out of an assertion of entitlement to the filing date of a previously
filed application under 120 ... or arises in the interference context wherein the issue is support for a
count in the specification of one or more of the parties ... or arises in an ex parte case involving a single
application, but where the claim at issue was filed subsequent to the filing of the application....
Id. at 914, 178 USPQ at 623-24 (citations omitted).

The CCPA's "written description" cases often stressed the fact-specificity of the issue. See, e.g., In re
Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976) ("The primary consideration is factual and
depends on the nature of the invention and the amount of knowledge imparted to those skilled in the art
by the disclosure") (emphasis in original); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA
1972) ("Precisely how close the description must come to comply with 112 must be left to case-by-case
development"); DiLeone, 438 F.2d at 1405, 168 USPQ at 593 ("What is needed to meet the description
requirement will necessarily vary depending on the nature of the invention claimed"). The court even
went so far as to state:

It should be readily apparent from recent decisions of this court involving the question of compliance
with the description requirement of 112 that each case must be decided on its own facts. Thus, the
precedential value of cases in this area is extremely limited. In re Driscoll, 562 F.2d 1245, 1250, 195
USPQ 434, 438 (CCPA 1977).

Since its inception, the Court of Appeals for the Federal Circuit has frequently addressed the "written
description" requirement of 112. 6 A fairly uniform standard for determining compliance with the
"written description" requirement has been maintained throughout: "Although [the applicant] does not
have to describe exactly the subject matter claimed, ... the description must clearly allow persons of
ordinary skill in the art to recognize that [he or she] invented what is claimed." In re Gosteli, 872 F.2d
1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (citations omitted). "[T]he test for sufficiency of
support in a parent application is whether the disclosure of the application relied upon 'reasonably
conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.'"
Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed. Cir. 1985)
(quoting In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 198 3)). Our cases also
provide that compliance with the "written description" requirement of 112 is a question of fact, to be
reviewed under the clearly erroneous standard. Gosteli, 872 F.2d at 1012, 10 USPQ2d at 1618; Utter v.
Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed. Cir. 1988).

There appears to be some confusion in our decisions concerning the extent to which the "written
description" requirement is separate and distinct from the enablement requirement. For example, in In re
Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985),
we flatly stated: "The description requirement is found in 35 U.S.C. 112 and is separate from the
enablement requirement of that provision." However, in a later case we said, "The purpose of the
[written] description requirement [of section 112, first paragraph] is to state what is needed to fulfill the
enablement criteria. These requirements may be viewed separately, but they are intertwined." Kennecott
Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 1421, 5 USPQ2d 1194, 1197 (Fed. Cir. 1987), cert. denied,
486 U.S. 1008 (1988). "The written description must communicate that which is needed to enable the
skilled artisan to make and use the claimed invention." Id.
79

[2] To the extent that Kennecott conflicts with Wilder, we note that decisions of a three-judge panel of
this court cannot overturn prior precedential decisions. See UMC Elec. Co. v. United States, 816 F.2d
647, 652 n.6, 2 USPQ2d 1465 , 1468 n.7 (Fed. Cir. 1987), cert. denied, 484 U.S. 1025 (1988). This court
in Wilder (and the CCPA before it) clearly recognized, and we hereby reaffirm, that 35 USC 112, first
paragraph, requires a "written description of the invention" which is separate and distinct from the
enablement requirement. The purpose of the "written description" requirement is broader than to
merely explain how to "make and use"; the applicant must also convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The
invention is, for purposes of the "written description" inquiry, whatever is now claimed.

The District Court's Analysis

We agree with the district court's conclusion that drawings alone may be sufficient to provide the
"written description of the invention" required by 112, first paragraph. Several earlier cases, though
not specifically framing the issue in terms of compliance with the "written description" requirement,
support this conclusion.

For example, we previously stated that "[t]here is no statutory prohibition against an applicant's reliance,
in claiming priority under 35 U.S.C. 120, on a disclosure in a design application if the statutory
conditions are met." KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1574, 228 USPQ 32, 33
(Fed. Cir. 1985). The question whether the applicant's claim to a pocket for athletic shoes was in fact
entitled to the filing date of his earlier design application was not resolved in KangaROOS, however.
Issues of intent to deceive the PTO were involved, as well as an error of law by the district court in
construing the claims of the wrong application. Id. at 1574-75, 228 USPQ at 34-35. The district court's
grant of partial summary judgment of inequitable conduct was vacated and the case remanded for trial.

In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981) involved a claim under 35 USC 120 to the
benefit of the filing date of two earlier design patent applications that included drawings of a carrying and
storage case for tape cartridges and cassettes. The invention claimed in the later-filed utility application
was an "insert" of "compartmented form," adapted for use in the interior of the storage case. Id. at 429,
209 USPQ at 47. The court characterized the dispositive issue as "whether the design applications
sufficiently disclose the invention now claimed in the ... utility application at bar." Id. at 429, 209 USPQ
at 46. While specifically recognizing that "drawings may be used to satisfy the disclosure requirement,"
id. at 429, 209 USPQ at 46-47, the court held that Berkman's design applications "fail[ed] to disclose the
claimed invention sufficiently to comply with the requirements of 112 first paragraph." As the court
explained:

Nowhere in the design applications is the word "insert" used, nor is there any indication that the interiors
of the cases are inserts. The drawings do not disclose how the insert can be used to accommodate either
cassette or cartridge type tape enclosures. Berkman argues that one skilled in the art would readily
recognize that the interiors of the cases illustrated in the design drawings are inserts. We do not agree.
There is nothing shown in the drawings to lead one of ordinary skill to such a conclusion.
Id. at 430, 209 USPQ at 47.

The issue in In re Wolfensperger, 302 F.2d 950, 133 USPQ 537 (CCPA 1962) was whether the
specification of the applicant's utility patent application disclosing a ball valve, and particularly the
drawings thereof, supported a claim limitation that read: "having, in untensioned condition, a mean
diameter corresponding approximately to the mean diameter of said chamber and a radial width smaller
than the radial width of said chamber...." Id. at 952, 133 USPQ at 538. The court did not agree with the
Board's conclusion that the "radial width" relationship was not supported by applicant's figure 5:
80

The board's statement that "drawings alone cannot form the basis of a valid claim" is too broad a
generalization to be valid and is, furthermore, contrary to well [page 1118] settled and long-established
Patent Office practice.... Consider, for one thing, that the sole disclosure in a design patent application is
by means of a drawing. ... For another thing, consider that the only informative and significant disclosure
in many electrical and chemical patents is by means of circuit diagrams or graphic formulae, constituting
"drawings" in the case....
... The practical, legitimate enquiry in each case of this kind is what the drawing in fact discloses to one
skilled in the art. ...
... The issue here is whether there is supporting "disclosure" and it does not seem, under established
procedure of long standing, approved by this court, to be of any legal significance whether the disclosure
is found in the specification or in the drawings so long as it is there.
Id. at 955-56, 133 USPQ at 541-42.

Employing a "new matter" analysis, the court in In re Heinle, 342 F.2d 1001, 145 USPQ 131 (CCPA
1965) reversed a PTO rejection of the applicant's claims to a "toilet paper core" as "including subject
matter having no clear basis in the application as filed." Id. at 1003, 145 USPQ at 133. The claim
limitation said to be without support required that the width of the apertures in the core be "approximately
one-fourth of the circumference of said core." Id. at 1007, 145 USPQ at 136. Having reviewed the
application drawings relied upon for support, the court stated:

it seems to us that [the drawings] conform to the one-fourth circumference limitation almost exactly. But
the claim requires only an approximation. Since we believe an amendment to the specification to state
that one-fourth of the circumference is the aperture width would not violate the rule against "new matter,"
we feel that supporting disclosure exists. The rejection is therefore in error.
Id.

[3] These cases support our holding that, under proper circumstances, drawings alone may provide a
"written description" of an invention as required by 112. Whether the drawings are those of a design
application or a utility application is not determinative, although in most cases the latter are much more
detailed. In the instant case, however, the design drawings are substantially identical to the utility
application drawings.

Although we join with the district court in concluding that drawings may suffice to satisfy the "written
description" requirement of 112, we can not agree with the legal standard that the court imposed for
"written description" compliance, nor with the court's conclusion that no genuine issues of material fact
were in dispute.

With respect to the former, the district court stated that although the '081 design drawings in question
"allowed practice" [i.e., enabled], they did not necessarily show what the invention is, when "the
invention" could be a subset or a superset of the features shown. Is the invention the semi-circular
lumens? The conical tip? The ratio at which the tip tapers? The shape, size, and placement of the inlets
and outlets? You can measure all of these things from the diagrams in serial '081 and so can practice the
device, but you cannot tell, because serial '081 does not say, what combination of these things is "the
invention", and what range of variation is allowed without exceeding the scope of the claims. To show
one example of an invention, even a working model, is not to describe what is novel or important.
745 F.Supp. at 522, 17 USPQ2d at 1356.

[4] We find the district court's concern with "what the invention is" misplaced, and its requirement that
the '081 drawings "describe what is novel or important" legal error. There is "no legally recognizable or
protected 'essential' element, 'gist' or 'heart' of the invention in a combination patent." Aro Mfg. Co. v.
81
Convertible Top Replacement Co., 365 U.S. 336, 345 [ 128 USPQ 354 ] (1961). "The invention" is
defined by the claims on appeal. The instant claims do not recite only a pair of semi-circular lumens, or a
conical tip, or a ratio at which the tip tapers, or the shape, size, and placement of the inlets and outlets;
they claim a double lumen catheter having a combination of those features. That combination invention is
what the '081 drawings show. As the district court itself recognized, "what Mahurkar eventually patented
is exactly what the pictures in serial '081 show." 745 F.Supp. at 523, 17 USPQ2d at 1357.

We find the "range of variation" question, much emphasized by the parties, more troublesome. The
district court stated that "although Mahurkar's patents use the same diagrams, [the claims] contain
limitations that did not follow ineluctably [i.e., inevitably] from the diagrams." Id. at 524, 17 USPQ2d at
1357. As an example, the court stated (presumably with respect to independent claims 1 and 7 of the '329
patent) that the utility patents claim a return lumen that is "substantially greater than one-half but
substantially less than a full diameter" after it makes the transition from semi-circular to circular cross-
section, and the drawings of serial '081 fall in this range. But until the utility application was filed,
nothing established that they had to - for that matter that the utility patent would claim anything other
than the precise ratio in the diagrams.... Id. at 523, 17 USPQ2d at 1357. Mahurkar argues that one of
ordinary skill in this art, looking at the '081 drawings, would be able to derive the claimed range.

The declaration of Dr. Stephen Ash, submitted by Mahurkar, is directed to these concerns. Dr. Ash, a
physician specializing in nephrology (the study of the kidney and its diseases) and chairman of a
corporation that develops and manufactures biomedical devices including catheters, explains why one of
skill in the art of catheter design and manufacture, studying the drawings of the '081 application in early
1982, would have understood from them that the return lumen must have a diameter within the range
recited by independent claims 1 and 7 of the '329 patent. Dr. Ash explains in detail that a return (longer)
lumen of diameter less than half that of the two lumens combined would produce too great a pressure
increase, while a return lumen of diameter equal or larger than that of the two lumens combined would
result in too great a pressure drop. 7 "Ordinary experience with the flow of blood in catheters would lead
directly away from any such arrangement," Ash states.

Although the district court found this reasoning "logical," it noted that later patents issued to Mahurkar
disclose diameter ratios closer to 1.0 (U.S. Patent No. 4,584,968) and exactly 0.5 (U.S. Des. Patent No.
272,651). If these other ratios were desirable, the district court queried, "how does serial '081 necessarily
exclude the[m]?" 745 F.Supp. at 523, 17 USPQ2d at 1357.

[5] The district court erred in taking Mahurkar's other patents into account. Mahurkar's later patenting of
inventions involving different range limitations is irrelevant to the issue at hand. Application sufficiency
under 112, first paragraph, must be judged as of the filing date. United States Steel Corp. v. Phillips
Petroleum Co., 865 F.2d 1247, 1251, 9 USPQ2d 1461, 1464 (Fed. Cir. 1989).

[6] The court further erred in applying a legal standard that essentially required the drawings of the '081
design application to necessarily exclude all diameters other than those within the claimed range. We
question whether any drawing could ever do so. At least with respect to independent claims 1 and 7 of the
'329 patent and claims depending therefrom, the proper test is whether the drawings conveyed with
reasonable clarity to those of ordinary skill that Mahurkar had in fact invented the catheter recited in those
claims, having (among several other limitations) a return lumen diameter substantially less than 1.0 but
substantially greater than 0.5 times the diameter of the combined lumens. Consideration of what the
drawings conveyed to persons of ordinary skill is essential. See Ralston Purina, 772 F.2d at 1575, 227
USPQ at 179 (ranges found in applicant's claims need not correspond exactly to those disclosed in parent
application; issue is whether one skilled in the art could derive the claimed ranges from parent's
disclosure).

82
Mahurkar submitted the declaration of Dr. Ash on this point; Vas-Cath submitted no technical evidence to
refute Ash's conclusions. Although the district court considered Dr. Ash's declaration, we believe its
import was improperly disregarded when viewed through the court's erroneous interpretation of the law. 8
We hold that the Ash declaration and Vas-Cath's non-refutation thereof, without more, gave rise to a
genuine issue of material fact inappropriate for summary disposition. See Hesston Corp. v. Sloop, 1988
U.S. Dist. LEXIS 1573, *13 (D. Kansas) (summary judgment on 112 "written description" issue
inappropriate where resolution of what parent disclosure conveyed to those skilled in the art may require
examination of experts, demonstrations and exhibits).

Mahurkar urges that at least some of the remaining claims do not contain the range limitations discussed
by the district court, and that the presence of range limitations was not a proper basis for invalidating
those remaining claims. For example, claim 8 of the '141 patent requires, inter alia, a smooth conical
tapered tip and "the portion of said tube between said second opening and said conical tapered tip being
larger than said first lumen in the transverse direction normal to the plane of said septum." Vas-Vath
counters that claim 8 of the '141 patent is just as much a "range" claim as claims 1 and 7 of the '329
patent, albeit one having only a lower limit and no upper limit.

Absent any separate discussion of these remaining claims in the district court's opinion, we assume that
the court applied to them the same erroneous legal standard. Summary judgment was therefore
inappropriate as to the remaining claims. Additionally, the possibility that the '081 drawings may provide
an adequate 112 "written description" of the subject matter of some of the claims but not others should
have been considered. See, e.g., In re Borkowski, 422 F.2d 904, 909 n.4, 164 USPQ 642 , 646 n.4 (CCPA
1970) (on review of 112 non-enablement rejection: "A disclosure may, of course, be insufficient to
support one claim but sufficient to support another.") On remand, the district court should separately
analyze whether the "written description" requirement has been met as to the subject matter of each claim
of the '141 and '329 patents.

CONCLUSION

The district court's grant of summary judgment, holding all claims of the '329 and '141 patents invalid
under 35 USC 102(b), is hereby reversed as to all claims, and the case remanded for further proceedings
consistent herewith.

[Class Notes: Disclosure requirement different from written description requirement.]

[The purpose of the "written description" requirement is broader than to merely explain how to
"make and use"; the applicant must also convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the invention. The invention is, for
purposes of the "written description" inquiry, whatever is now claimed.]

[The written description requirement broader than merely to make and use whatever is claimed
now. Enablement requirement how to make use.]

e. Limitations on Amendments

Section 49, IP Code

Section 49. Amendment of Application. - An applicant may amend the patent application during
examination: Provided, That such amendment shall not include new matter outside the scope of the
disclosure contained in the application as filed. (n) [scope of the disclosure = written description
83
requirement. The written description requirement should not be read to mean written in the literal sense.
A drawing is sufficient of it describes the invention or the claim sufficiently. See Vas-cath v. Mahhurkar.]

The Gentry Gallery, Inc. v, The Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998)

Because one can add claims to a pending application directed to adequately described subject matter,
Sproule admitted at trial that he did not consider placing the controls outside the console until he became
aware that some of Gentrys competitors were doing so.

In the present case, because the inventor considered the location of the recliner controls on the console as
an essential element of his invention, his original disclosure served to limit the permissible breadth of his
later-drafted claims

[Applicant may amend his claim to as broad in extent as prior art or his disclosure allows.]

f. Definite Claims

Orthokinetics v. Safety Travel Chairs, Inc. 806 F.2d 1565, 1 U.S.P.Q. 2d 1081 (Fed. Cir.
1986)

The test for definitiveness is not whether there is a better, more specific way to have drafted the claim.
The test is simply whether it is definitive enough so that someone skilled in the art could figure it out.

The claims were intended to cover the use of the invention with various types of automobiles. That a
particular chair on which the claims read may fit within some automobiles and not others is of no
moment. The phrase "so dimensioned" is as accurate as the subject matter permits, automobiles being of
various sizes. As long as those of ordinary skill in the art realized that the dimensions could be easily
obtained, Sec. 112, 2d p requires nothing more.

6. Ownership of Patent and Transfer of Rights

Secs. 28-30, IP Code

CHAPTER III
RIGHT TO A PATENT

Section 28. Right to a Patent. - The right to a patent belongs to the inventor, his heirs, or assigns. When
two (2) or more persons have jointly made an invention, the right to a patent shall belong to them jointly.
(Sec. 10, R.A. No. 165a)

Section 29. First to File Rule. - If two (2) 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. (3rd sentence, Sec. 10, R.A. No. 165a.)

Section 30. Inventions Created Pursuant to a Commission. - 30.1. The person who commissions the work
shall own the patent, unless otherwise provided in the contract.

30.2. In case the employee made the invention in the course of his employment contract, the patent shall
belong to:
84
(a) The employee, if the inventive activity is not a part of his regular duties even if the
employee uses the time, facilities and materials of the employer.
(b) The employer, if the invention is the result of the performance of his regularly-assigned
duties, unless there is an agreement, express or implied, to the contrary. (n)

[Class Notes: See R.A. 10055, Philippine Technology Transfer Act, 6.]
ARTICLE II
INTELLECTUAL PROPERTY OWNERSHIP

Section 6. Ownership of Intellectual Property and Intellectual Property Rights. - The ownership of IPs and
IPRs shall be governed by the following:

(a)In recognition of the fact that RDIs are in a better position to identify the potential for economic
utilization of IPs and IPRs subject to their possession of the right skills and management capability, the
ownership of IPs and IPRs derived and generated from research funded by the GFA, whether such
funding is in whole or in part, shall, in general, be vested in the RDI that actually performed the research,
except in any of the following circumstances:

(1)When the RDI has entered into a public, written agreement sharing, limiting, waiving or assigning its
ownership of the IPs or IPRs generated from its research in favor of the GFA: Provided, That the same
may only be voluntarily executed by the RDI to protect public interest, and in particular involves national
security, nutrition, health, or the development of other vital sectors;

(2)In case of failure of the RDI to disclose potential IPRs to the GFA, whereupon the GFA shall assume
the rights to the potential IPR;

(3)In case of failure of the RDI to initiate the protection of potential IPRs within a reasonable time from
confidential disclosure to the GFA, which shall in no case exceed three (3) months from public disclosure,
whereupon the GFA shall assume the rights to the potential IPR; and

(4)In case the RDI ceases to become a Filipino corporation as defined in Article I, Section 4(i) of this Act.

(b)In case of collaborative research where two (2) or more RDIs conducted the research funded by the
GFA, the RDIs shall own the IPRs jointly or as otherwise stipulated in the research agreement between
them: Provided, That any research agreement between RDIs and other funding entities shall be made with
the full knowledge of the GFA: Provided, further, That the agreement shall strictly be in accordance with
the provisions of this Act.

(c)Nothing in this Article shall modify, amend, derogate or prejudice IPs that will be owned by
employees of the RDIs under the IP Code and other existing laws.]

[This is a contentious issue. GR: 28 EX: 6 of R.A. No. 10055. There are other exceptions in 6.
This may be asked in the finals. Students may not be capable enough to commercialize his
invention. The owner will be the university. The inventor will not be the student. The signature of
the President, may it be construed as consent to waiver? This is what happened with U.P. Manila
as to the Ascoff Lagundi, which licensed it to a corporation.]

[The patent or intellectual property can be owned by a person while the physical property owned
by another person.]

85

CHAPTER VII
REMEDIES OF A PERSON WITH A RIGHT TO A PATENT

Section 67. Patent Application by Persons Not Having the Right to a Patent. . - 67.1. If a person referred
to in Section 29
9
other than the applicant, is declared by final court order or decision as having the right to
the patent, such person may, within three (3) months after the decision has become final:
(a) Prosecute the application as his own application in place of the applicant;
(b) File a new patent application in respect of the same invention;
(c) Request that the application be refused; or
(d) Seek cancellation of the patent, if one has already been issued.

67.2. The provisions of Subsection 38.2
10
shall apply mutatis mutandis to a new application filed under
Subsection 67. 1(b). (n)

Section 68. Remedies of the True and Actual Inventor. - If a person, who was deprived of the patent
without his consent or through fraud is declared by final court order or decision to be the true and actual
inventor, the court shall order for his substitution as patentee, or at the option of the true inventor, cancel
the patent, and award actual and other damages in his favor if warranted by the circumstances. (Sec. 33,
R.A. No. 165a)

[Class Notes: When to use 67 and when to use 68? Sorry, I have a very bad migraine right now. Not
lucid. Didnt hear what she said.]

Section 69. Publication of the Court Order. - The court shall furnish the Office a copy of the order or
decision referred to in Sections 67 and 68, which shall be published in the IPO Gazette within three (3)
months from the date such order or decision became final and executory, and shall be recorded in the
register of the Office. (n)

Section 70. Time to File Action in Court. - The actions indicated in Sections 67 and 68
11
shall be filed
within one (1) year from the date of publication made in accordance with Sections 44
12
and 51
13
, [this is a
typo. this should be 52 on publication of grant of patent.] respectively. (n)

9
Section 29. First to File Rule. - If two (2) 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. (3rd sentence, Sec.
10, R.A. No. 165a.)
10
Section 38. Unity of Invention.
38.1. The application shall relate to one invention only or to a group of inventions forming a single general inventive concept.
38.2. If several independent inventions which do not form a single general inventive concept are 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 four (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.
38.3. The fact that a patent has been granted on an application that did not comply with the requirement of unity of invention
shall not be a ground to cancel the patent. (Sec. 17, R.A. No. 165a)
11
67 Patent Application by Persons Not Having the Right to a Patent.
68 Remedies of the True and Actual Inventor
12
Section 44. Publication of Patent Application. - 44.1. The patent application shall be published in the IPO Gazette together with
a search document established by or on behalf of the Office citing any documents that reflect prior art, after the expiration of
eighteen ( 18) months from the filing date or priority date.
44.2. After publication of a patent application, any interested party may inspect the application documents filed with the Office.
86

Sec. 236, IP Code

Section 236. Preservation of Existing Rights. - Nothing herein shall adversely affect the rights on the
enforcement of rights in patents, utility models, industrial designs, marks and works, acquired in good
faith prior to the effective date of this Act. (n)

Albana vs. Director of Patents, 93 Phil. 113

What Albaa attempted to secure by his motion to intervene is beyond the jurisdiction and
authority of the Director of Patents to grant.

Assignments of patents and inventions be recorded in books and records kept for the purpose in the Patent
Office if presented in due form; but Albaa does not ask for the registration of the alleged agreement
between him and the inventors, and because it is not in due form it cannot be recorded. Under the
provisions of the Patent Law, the Director of Patents has no power and authority to compel the applicant-
inventors to do what Albaa is asking them to perform. What he asked the Director of Patents to do for
him is essentially a judicial function which would require the determination or finding by a court of
competent jurisdiction as to whether there was a meeting of the minds of the contracting parties before it
could compel the applicant-inventors to perform what he prays the court to order them to do.

December 20

9. Applicant


(Sec. 10, R.A. No. 165a)


Section 30. Inventions Created Pursuant to a Commission. - 30.1. The person who commissions the work
shall own the patent, unless otherwise provided in the contract.

belong to:

(a) The employee, if the inventive activity is not a part of his regular duties even if the employee uses
the time, facilities and materials of the employer.

44.3. The Director General subject to the approval of the Secretary of Trade and Industry, may prohibit or restrict the publication
of an application, if in his opinion, to do so would be prejudicial to the national security and interests of the Republic of the
Philippines. (n)
13
Section 51. Refusal of the Application. - 51.1. The final order of refusal of the examiner to grant the patent shall be appealable
to the Director in accordance with this Act.
51.2. The Regulations shall provide for the procedure by which an appeal from the order of refusal from the Director shall be
undertaken. (n)
87

(b) The employer, if the invention is the result of the performance of his regularly-assigned duties,
unless there is an agreement, express or implied, to the contrary. (n)

Sec. 68, IP Code

Section 68. Remedies of the True and Actual Inventor. - If a person, who was deprived of the patent
without his consent or through fraud is declared by final court order or decision to be the true and actual
inventor, the court shall order for his substitution as patentee, or at the option of the true inventor, cancel
the patent, and award actual and other damages in his favor if warranted by the circumstances. (Sec. 33,
R.A. No. 165a)

Sec. 3, IP Code


Secs. 231, 235, IP Code

Section 231. Reverse Reciprocity of Foreign Laws. - Any condition, restriction, limitation, diminution,
requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine
national seeking protection of intellectual property rights in that country, shall reciprocally be enforceable
upon nationals of said country, within Philippine jurisdiction. (n)

Section 235. Applications Pending on Effective Date of Act. - 235.1. All applications for patents pending
in the Bureau of Patents, Trademarks and Technology Transfer shall be proceeded with and patents
thereon granted in accordance with the Acts under which said applications were filed, and said Acts are
hereby continued to be enforced, to this extent and for this purpose only, notwithstanding the foregoing
general repeal thereof: Provided, That applications for utility models or industrial designs pending at the
effective date of this Act, shall be proceeded with in accordance with the provisions of this Act, unless the
applicants elect to prosecute said applications in accordance with the Acts under which they were filed.

235.2. All applications for registration of marks or trade names pending in the Bureau of Patents,
Trademarks and Technology Transfer at the effective date of this Act may be amended, if practicable to
bring them under the provisions of this Act. The prosecution of such applications so amended and the
grant of registrations thereon shall be proceeded with in accordance with the provisions of this Act. If
such amendments are not made, the prosecution of said applications shall be proceeded with and
registrations thereon granted in accordance with the Acts under which said applications were filed, and
said Acts are hereby continued in force to this extent for this purpose only, notwithstanding the foregoing
general repeal thereof (n)

10. Patent Application Process

Secs. 32-39, 8, IP Code

CHAPTER IV
88
PATENT APPLICATION

Section 32. The Application. - 32.1. The patent application shall be in Filipino or English and shall
contain the following:
(a) A request for the grant of a patent;
(b) A description of the invention;
(c) Drawings necessary for the understanding of the invention;
(d) One or more claims; and
(e) An abstract.

32.2. No patent may be granted unless the application identifies the inventor. If the applicant is not the
inventor, the Office may require him to submit said authority. (Sec. 13, R.A. No. 165a)

Section 33. Appointment of Agent or Representative. - An applicant who is not a resident of the
Philippines must appoint and maintain a resident agent or representative in the Philippines upon whom
notice or process for judicial or administrative procedure relating to the application for patent or the
patent may be served. (Sec. 11, R.A. No. 165a)

[Class notes: agent primarily (1) to file, and (2) to prosecute the application.]

Section 34. The Request. - The request shall contain a petition for the grant of the patent, the name and
other data of the applicant, the inventor and the agent and the title of the invention. (n)

Section 35. Disclosure and Description of the Invention. - 35.1. Disclosure. - The application shall
disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person
skilled in the art. Where the application concerns a microbiological process or the product thereof and
involves the use of a micro-organism which cannot be sufficiently disclosed in the application in such a
way as to enable the invention to be carried out by a person skilled in the art, and such material is not
available to the public, the application shall be supplemented by a deposit of such material with an
international depository institution.

35.2. Description. - The Regulations shall prescribe the contents of the description and the order of
presentation. (Sec. 14, R.A. No. 165a)

Section 36. The Claims. - 36.1. The application shall contain one (1) or more claims which shall define
the matter for which protection is sought. Each claim shall be clear and concise, and shall be supported by
the description.

36.2. The Regulations shall prescribe the manner of the presentation of claims. (n)

Section 37. The Abstract. - The abstract shall consist of a concise summary of the disclosure of the
invention as contained in the description, claims and drawings in preferably not more than one hundred
fifty (150) words. It must be drafted in a way which allows the clear understanding of the technical
problem, the gist of the solution of that problem through the invention, and the principal use or uses of the
invention. The abstract shall merely serve for technical information. (n)

Section 38. Unity of Invention. - 38.1. The application shall relate to one invention only or to a group of
inventions forming a single general inventive concept. [single general inventive concept what is this?]

38.2. If several independent inventions which do not form a single general inventive concept are claimed
in one application, the Director may require that the application be restricted to a single invention. A later
89
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 four (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.

38.3. The fact that a patent has been granted on an application that did not comply with the requirement of
unity of invention shall not be a ground to cancel the patent. (Sec. 17, R.A. No. 165a)

Section 39. Information Concerning Corresponding Foreign Application for Patents. - The applicant shall,
at the request of the Director, furnish him with the date and number of any application for a patent filed
by him abroad, hereafter referred to as the "foreign application," relating to the same or essentially the
same invention as that claimed in the application filed with the Office and other documents relating to the
foreign application. (n)

Secs. 108, 109.2, IP Code (Utility Models) (UM)

Section 108. Applicability of Provisions Relating to Patents. - 108.1. Subject to Section 109, the
provisions governing patents shall apply, mutatis mutandis, to the registration of utility models.

108.2. Where the right to a patent conflicts with the right to a utility model registration in the case
referred to in Section 29, the said provision shall apply as if the word "patent" were replaced by the words
"patent or utility model registration". (Sec. 55, R.A. No. 165a)

109.2. Sections 43 to 49
14
shall not apply in the case of applications for registration of a utility model.

[Class notes: no substantive examination in UMs.)

[Routes in filing:
(1) Direct Route
(2) Through the Paris Convention. See 31. Priority date is important for purposes of priority. Note
that the right of priority has three requisites: (1) Expressly claimed in the local application (2) filed
within 12 months, and (3) certified true copy of the foreign application.]

Secs. 114-115, IP Code (Industrial Design)

Section 114. Contents of the Application. - 114.1. Every application for registration of an industrial
design shall contain:
(a) A request for registration of the industrial design;
(b) Information identifying the applicant;
(c) An indication of the kind of article of manufacture or handicraft to which the design shall
be applied;
(d) A representation of the article of manufacture or handicraft by way of drawings,
photographs or other adequate graphic representation of the design as applied to the article of
manufacture or handicraft which clearly and fully discloses those features for which design
protection is claimed; and
(e) The name and address of the creator, or where the applicant is not the creator, a statement
indicating the origin of the right to the industrial design registration.

14
Classification and Search, Publication of Patent Application, Confidentiality Before Publication, Rights Conferred by a Patent
Application After Publication, Observation by Third Parties, Request for Substantive Examination, Amendment of Application.
90

114.2. The application may be accompanied by a specimen of the article embodying the industrial
design and shall be subject to the payment of the prescribed fee. (n)

Section 115. Several Industrial Designs in One Application. - Two (2) or more industrial designs may be
the subject of the same application: Provided, That they relate to the same sub-class of the International
Classification or to the same set or composition of articles. (n)

[Neil Note: The rule in 115 as to IDs is different from the rule for Inventions, i.e., 38 - Unity of
Description.]

10.1. Priority Date, Section 31, IP Code

Section 31. Right of Priority. . - 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 twelve (12) months from the
date the earliest foreign application was filed; and (c) a certified copy of the foreign application together
with an English translation is filed within six (6) months from the date of filing in the Philippines. (Sec.
15, R.A. No. 165a)

Boothe vs. Director of Patents, 95 SCRA 446

In this case, the specification submitted on March 5, 1964 was far from complete, the defect was therefore
one of substance not of form. Boothe's application can only therefore be deemed complete on July 2, 1964
when they submitted the additional nine pages of the specifications and claims.

10.2 Filing Date, Secs. 40-41, IP Code

CHAPTER V
PROCEDURE FOR GRANT OF PATENT

Section 40. Filing Date Requirements. - 40.1. 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; and
(c) Description of the invention and one (1) or more claims in Filipino or English.

40.2. If any of these elements is not submitted within the period set by the Regulations, the application
shall be considered withdrawn. (n)

[Neil Note: Read this with 32.]

Section 41. According a Filing Date. - The Office shall examine whether the patent application satisfies
the requirements for the grant of date of filing as provided in Section 40 hereof. If the date of filing
cannot be accorded, the applicant shall be given an opportunity to correct the deficiencies in accordance
with the implementing Regulations. If the application does not contain all the elements indicated in
Section 40, the filing date should be that date when all the elements are received. If the deficiencies are
not remedied within the prescribed time limit, the application shall be considered withdrawn. (n)

Section 116, IP Code (Industrial Design)
91

Section 116. Examination. - 116.1. The Office shall accord as the filing date the date of receipt of
the application containing indications allowing the identity of the applicant to be established and a
representation of the article embodying the industrial design or a pictorial representation thereof.

116.2. If the application does not meet these requirements the filing date should be that date when all the
elements specified in Section 105 are filed or the mistakes corrected. Otherwise if the requirements are
not complied within the prescribed period, the application shall be considered withdrawn.

116.3. After the application has been accorded a filing date and the required fees paid on time, the
applicant shall comply with the requirements of Section 114 within the prescribed period, otherwise the
application shall be considered withdrawn.

116.4. The Office shall examine whether the industrial design complies with requirements of Section
112 and Subsections 113.2 and 113.3. (n)

10.3. Formality Examination, Section 42, IP Code

Section 42. Formality Examination. - 42.1. After the patent application has been accorded a filing date
and the required fees have been paid on time in accordance with the Regulations, the applicant shall
comply with the formal requirements specified by Section 32
15
and the Regulations within the prescribed
period, otherwise the application shall be considered withdrawn.

42.2. The Regulations shall determine the procedure for the re-examination and revival of an application
as well as the appeal to the Director of Patents from any final action by the examiner. (Sec. 16, R.A. No.
165a)

[Class Notes: As a matter of policy, the Office does not deny filing due to formality requirements.
The Office is liberal in this regard because these are merely formal and not substantive. The
balance is not affected. Of course, so long as the formalities are complied with at a later time.]

10.4 Classification and Search, Section 43, IP Code

Section 43. Classification and Search. - An application that has complied with the formal requirements
shall be classified and a search conducted to determine the prior art. (n)

[Class Notes: The office has various products which they use to search, these include
Thompson Innovation
WHIPs (Korean product)
Total Patents
Online Resources &
WIPO databases]

15
Section 32. The Application. - 32.1. The patent application shall be in Filipino or English and shall contain the following:
(a) A request for the grant of a patent;
(b) A description of the invention;
(c) Drawings necessary for the understanding of the invention;
(d) One or more claims; and
(e) An abstract.
32.2. No patent may be granted unless the application identifies the inventor. If the applicant is not the inventor, the Office may
require him to submit said authority. (Sec. 13, R.A. No. 165a)
92
10.5 Publication

Confidentiality Before Publication, Section 45, IP Code

Section 45. Confidentiality Before Publication. - A patent application, which has not yet been published,
and all related documents, shall not be made available for inspection without the consent of the applicant.
(n)

Publication, Section 44 IP Code

Section 44. Publication of Patent Application. - 44.1. The patent application shall be published in the IPO
Gazette together with a search document established by or on behalf of the Office citing any documents
that reflect prior art, after the expiration of eighteen (18) months from the filing date or priority date.

[Neil Notes: In practice, 18 months]

44.2. After publication of a patent application, any interested party may inspect the application documents
filed with the Office.

44.3. The Director General subject to the approval of the Secretary of Trade and Industry, may prohibit or
restrict the publication of an application, if in his opinion, to do so would be prejudicial to the national
security and interests of the Republic of the Philippines. (n)

Rights Conferred After Publication, Section 46, IP Code

Section 46. Rights Conferred by a Patent Application After Publication. - The applicant shall have all the
rights of a patentee under Section 76
16
against any person who, without his authorization, exercised any of
the rights conferred under Section 71
17
of this Act in relation to the invention claimed in the published
patent application, as if a patent had been granted for that invention: Provided, That the said person had:

16
Section 76. Civil Action for Infringement. - 76.1. The 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 constitutes patent infringement.

76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented invention, whose rights have been
infringed, may bring a civil action before a court of competent jurisdiction, to recover from the infringer such damages sustained
thereby, plus attorney's fees and other expenses of litigation, and to secure an injunction for the protection of his rights.

76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty, the court may award by way of
damages a sum equivalent to reasonable royalty.

76.4. The court may, according to the circumstances of the case, award damages in a sum above the amount found as actual
damages sustained: Provided, That the award does not exceed three (3) times the amount of such actual damages.
17
Section 71. Rights Conferred by Patent. - 71.1. A patent shall confer on its owner the following exclusive rights:

(a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any unauthorized person or entity
from making, using, offering for sale, selling or importing that product;

(b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any unauthorized person or entity from
using the process, and from manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained
directly or indirectly from such process.

71.2. Patent owners shall also have the right to assign, or transfer by succession the patent, and to conclude licensing contracts for
the same. (Sec. 37, R.A. No. 165a)
93

46.1. Actual knowledge that the invention that he was using was the subject matter of a published
application; or

46.2. 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 four (4) years from the
commission of the acts complained of. (n) [prescription for injury to the rights of the plaintiff 4 years
under the civil code.]

10.6. Third Party Observation, Section 47, IP Code

Section 47. Observation by Third Parties. - Following the publication of the patent application, any
person may present observations in writing concerning the patentability of the invention. Such
observations shall be communicated to the applicant who may comment on them. The Office shall
acknowledge and put such observations and comment in the file of the application to which it relates. (n)

10.7 Request for Substantive Examination, Section 48, IP Code

Section 48. Request for Substantive Examination. - 48.1. The application shall be deemed withdrawn
unless within six (6) months from the date of publication under Section 41, a written request to determine
whether a patent application meets the requirements of Sections 21 to 27 and Sections 32 to 39 and the
fees have been paid on time. [written request by the applicant? why is this not automatic? Why does the
applicant need to follow up?]

48.2. Withdrawal of the request for examination shall be irrevocable and shall not authorize the refund of
any fee. (n)

10.8 Amendment, Section 49, IP Code

Section 49. Amendment of Application. - An applicant may amend the patent application during
examination: Provided, That such amendment shall not include new matter outside the scope of the
disclosure contained in the application as filed. (n)

10.9. Issuance or Refusal of Patent


Section 50. Grant of Patent. - 50.1. If the application meets the requirements of this Act, the Office shall
grant the patent: Provided, That all the fees are paid on time.

50.2. If the required fees for grant and printing are not paid in due time, the application shall be deemed to
be withdrawn.

50.3. A patent shall take effect on the date of the publication of the grant of the patent in the IPO Gazette.
(Sec. 18, R.A. No. 165a)

Section 51. Refusal of the Application. - 51.1. The final order of refusal of the examiner to grant the
patent shall be appealable to the Director in accordance with this Act.

94
Section 53. Contents of Patent. - The patent shall be issued in the name of the Republic of the Philippines
under the seal of the Office and shall be signed by the Director, and registered together with the
description, claims, and drawings, if any, in books and records of the Office. (Secs. 19 and 20, R.A. No.
165a)

Secs. 117, 119, IP Code (Industrial Design)

Section 117. Registration.
117.1. Where the Office finds that the conditions referred to in Section 113 are fulfilled, it shall order that
registration be effected in the industrial design register and cause the issuance of an industrial design
certificate of registration, otherwise, it shall refuse the application.

117.2. The form and contents of an industrial design certificate shall be established by the Regulations:
Provided, That the name and address of the creator shall be mentioned in every case.

117.3. Registration shall be published in the form and within the period fixed by the Regulations.

117.4. The Office shall record in the register any change in the identity of the proprietor of the industrial
design or his representative, if proof thereof is furnished to it. A fee shall be paid, with the request to
record the change in the identity of the proprietor. If the fee is not paid, the request shall be deemed not to
have been filed. In such case, the former proprietor and the former representative shall remain subject to
the rights and obligations as provided in this Act.

117.5. Anyone may inspect the Register and the files of registered industrial designs including the files
of cancellation proceedings. (n)

Section 119. Application of Other Sections and Chapters. - 119.1. The following provisions relating to
patents shall apply mutatis mutandis to an industrial design registration:

Section 21 - Novelty:
Section 24 - Prior art: Provided, That the disclosure is contained in printed documents or in
any tangible form;
Section 25 - Non-prejudicial Disclosure;
Section 27 - Inventions Created Pursuant to a Commission;
Section 28 - Right to a Patent;
Section 29 - First to File Rule;
Section 31 - Right of Priority: Provided, That the application for industrial design shall be
filed within six (6) months from the earliest filing date of the corresponding foreign
application;
Section 33 - Appointment of Agent or Representative;
Section 51 - Refusal of the Application;
Sections 56 to 60 - Surrender, Correction of and Changes in Patent;
CHAPTER VII - Remedies of a Person with a Right to Patent;
CHAPTER VIII - Rights of Patentees and Infringement of Patents; and
CHAPTER XI - Assignment and Transmission of Rights.

119.2. If the essential elements of an industrial design which is the subject of an application have been
obtained from the creation of another person without his consent, protection under this Chapter cannot be
invoked against the injured party. (n)

10.10 Publication Upon Grant of Patent
95

Section 52, IP Code

Section 52. Publication Upon Grant of Patent. - 52.1. The grant of the patent together with other related
information shall be published in the IPO Gazette within the time prescribed by the Regulations.

52.2. Any interested party may inspect the complete description, claims, and drawings of the patent on
file with the Office. (Sec. 18, R.A. No. 165a)

11. Annual Fees and Effect of Non-Payment

Section 55, IP Code

Section 55. Annual Fees. - 55.1. To maintain the patent application or patent, an annual fee shall be paid
upon the expiration of four (4) years from the date the application was published pursuant to Section 44
hereof, and on each subsequent anniversary of such date. Payment may be made within three (3) months
before the due date. The obligation to pay the annual fees shall terminate should the application be
withdrawn, refused, or cancelled.

55.2. If the annual fee is not paid, the patent application shall be deemed withdrawn or the patent
considered as lapsed from the day following the expiration of the period within which the annual fees
were due. A notice that the application is deemed withdrawn or the lapse of a patent for non-payment of
any annual fee shall be published in the IPO Gazette and the lapse shall be recorded in the Register of the
Office.

55.3. A grace period of six (6) months shall be granted for the payment of the annual fee, upon payment
of the prescribed surcharge for delayed payment. (Sec. 22, R.A. No. 165a)

[Class Notes: 6 months before the expiration of the license, the Office sends you a reminder. Note
that withdrawal allows for revival, while expiration does not.]

12. Surrender, Correction, Changes and Amendment of Patent

Secs. 56 60, IP Code

Section 56. Surrender of Patent. - 56.1. The owner of the patent, with the consent of all persons having
grants or licenses or other right, title or interest in and to the patent and the invention covered thereby,
which have been recorded in the Office, may surrender his patent or any claim or claims forming part
thereof to the Office for cancellation.

56.2. A person may give notice to the Office of his opposition to the surrender of a patent under this
section, and if he does so, the Bureau shall notify the proprietor of the patent and determine the question.

56.3. If the Office is satisfied that the patent may properly be surrendered, he may accept the offer and, as
from the day when notice of his acceptance is published in the IPO Gazette, the patent shall cease to have
effect, but no action for infringement shall lie and no right compensation shall accrue for any use of the
patented invention before that day for the services of the government. (Sec. 24, R.A. No. 165a)

Section 57. Correction of Mistakes of the Office. - The Director shall have the power to correct, without
fee, any mistake in a patent incurred through the fault of the Office when clearly disclosed in the records
thereof, to make the patent conform to the records. (Sec. 25, R.A. No. 165)
96

Section 58. Correction of Mistake in the Application. - On request of any interested person and payment
of the prescribed fee, the Director is authorized to correct any mistake in a patent of a formal and clerical
nature, not incurred through the fault of the Office. (Sec. 26, R.A. No. 165a)

Section 59. Changes in Patents. - 59.1. The owner of a patent shall have the right to request the Bureau to
make the changes in the patent in order to:

(a) Limit the extent of the protection conferred by it;
(b) Correct obvious mistakes or to correct clerical errors; and
(c) Correct mistakes or errors, other than those referred to in letter (b), made in good faith: Provided,
That where the change would result in a broadening of the extent of protection conferred by the patent, no
request may be made after the expiration of two (2) years from the grant of a patent and the change shall
not affect the rights of any third party which has relied on the patent, as published.

59.2. No change in the patent shall be permitted under this section, where the change would result in the
disclosure contained in the patent going beyond the disclosure contained in the application filed.

59.3. If, and to the extent to which the Office changes the patent according to this section, it shall publish
the same. (n)

Section 60. Form and Publication of Amendment. - An amendment or correction of a patent shall be
accomplished by a certificate of such amendment or correction, authenticated by the seal of the Office
and signed by the Director, which certificate shall be attached to the patent. Notice of such amendment or
correction shall be published in the IPO Gazette and copies of the patent kept or furnished by the Office
shall include a copy of the certificate of amendment or correction. (Sec. 27, R.A. No. 165)

[Class Notes: Published in the E-Gazette website]

13. Cancellation of Patent

a. Grounds
Secs. 61, 82, IP Code

CHAPTER VI
CANCELLATION OF PATENTS AND SUBSTITUTION OF PATENTEE

Section 61. Cancellation of Patents. - 61.1. Any interested person may, upon payment of the required fee,
petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds:
(a) That what is claimed as the invention is not new or Patentable;
(b) That 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
(c) That the patent is contrary to public order or morality.
61.2. Where the grounds for cancellation relate to some of the claims or parts of the claim, cancellation
may be effected to such extent only. (Secs. 28 and 29, R.A. No. 165a)

CHAPTER VII
REMEDIES OF A PERSON WITH A RIGHT TO A PATENT

Section 82. Patent Found Invalid May be Cancelled. - In an action for infringement, if the court shall find
the patent or any claim to be invalid, it shall cancel the same, and the Director of Legal Affairs upon
97
receipt of the final judgment of cancellation by the court, shall record that fact in the register of the Office
and shall publish a notice to that effect in the IPO Gazette. (Sec. 46, R.A. No. 165a)

[Class notes: Impt - Differentiate 56, 61, and 82. (1) Who initiates? Patent Holder v. Any
Interested Person adversarial (2) To whom submitted? Bureau of Patent v. Bureau of Legal
Affairs (3) 82 is in an action for infringment.]

Point of Comparison 56 61 82
What? Surrender Cancellation Infringment Invalidity
Who initiates? owner with consent of
all persons having
grants, licenses or other
right, title or interest in
and to the patent
any interested person,
upon payment of
required fee
the defendant in an
infringment claim
Where or to whom? the Office the Office Court and Director of
Legal affairs
How is the Nature? voluntary adversarial adversarial
Grounds or Why? owners volition (1) novelty or other
criteria for patentability
(2) disclosure and
enabement (3) against
public order or morality
court identifies the
ground for invalidity

Section 56. Surrender of Patent. - 56.1. The owner of the patent, with the consent of all persons having
grants or licenses or other right, title or interest in and to the patent and the invention covered thereby,
which have been recorded in the Office, may surrender his patent or any claim or claims forming part
thereof to the Office for cancellation.

56.2. A person may give notice to the Office of his opposition to the surrender of a patent under this
section, and if he does so, the Bureau shall notify the proprietor of the patent and determine the question.

56.3. If the Office is satisfied that the patent may properly be surrendered, he may accept the offer and, as
from the day when notice of his acceptance is published in the IPO Gazette, the patent shall cease to have
effect, but no action for infringement shall lie and no right compensation shall accrue for any use of the
patented invention before that day for the services of the government. (Sec. 24, R.A. No. 165a)

CHAPTER VI: CANCELLATION OF PATENTS AND SUBSTITUTION OF PATENTEE
(b) That 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

CHAPTER VII: REMEDIES OF A PERSON WITH A RIGHT TO A PATENT
98

Sec. 109.4 , IP Code (Utility Model)

109.4. In proceedings under Sections 61 to 64, the utility model registration shall be canceled on the
following grounds:
(a) That the claimed invention does not qualify for registration as a utility model and does not meet
the requirements of registrability, in particular having regard to Subsection 109.1 [new and industrially
applicable] and Sections 22 [non-patentable inventions], 23[novelty as not part of prior art], 24 [prior arts]
and 27 [industrial applicability];
(b) That the description and the claims do not comply with the prescribed requirements [disclosure
and enablement];
(c) That any drawing which is necessary for the understanding of the invention has not been
furnished [drawing]
(d) That the owner of the utility model registration is not the inventor or his successor in title. (Secs.
55, 56, and 57, R.A. No. 165a)

Sec. 120, IP Code (Industrial Design)

Section 120. Cancellation of Design Registration.
120.1. At any time during the term of the industrial design registration, any person upon payment of the
required fee, may petition the Director of Legal Affairs to cancel the industrial design on any of the
following grounds:
(a) If the subject matter of the industrial design is not registrable within the terms of Sections 112
and 113;
(b) If the subject matter is not new; or
(c) If the subject matter of the industrial design extends beyond the content of the application as
originally filed.

120.2. Where the grounds for cancellation relate to a part of the industrial design, cancellation may be
effected to such extent only. The restriction may be effected in the form of an alteration of the effected
features of the design. (n)

b. Proceedings

Section 62. Requirement of the Petition. - The petition for cancellation shall be in writing, verified by the
petitioner or by any person in his behalf who knows the facts, specify the grounds upon which it is based,
include a statement of the facts to be relied upon, and filed with the Office. Copies of printed publications
or of patents of other countries, and other supporting documents mentioned in the petition shall be
attached thereto, together with the translation thereof in English, if not in the English language. (Sec. 30,
R.A. No. 165)

Section 63. Notice of Hearing. - Upon filing of a petition for cancellation, the Director of Legal Affairs
shall forthwith serve notice of the filing thereof upon the patentee and all persons having grants or
licenses, or any other right, title or interest in and to the patent and the invention covered thereby, as
appears of record in the Office, and of notice of the date of hearing thereon on such persons and the
petitioner. Notice of the filing of the petition shall be published in the IPO Gazette. (Sec. 31, R.A. No.
165a)

99
Section 64. Committee of Three. - In cases involving highly technical issues, on motion of any party, the
Director of Legal Affairs may order that the petition be heard and decided by a committee composed of
the Director of Legal Affairs as chairman and two (2) members who have the experience or expertise in
the field of technology to which the patent sought to be cancelled relates. The decision of the committee
shall be appealable to the Director General. (n)

Section 65. Cancellation of the Patent. - 65.1. If the Committee finds that a case for cancellation has been
proved, it shall order the patent or any specified claim or claims thereof cancelled.

65.2. If the Committee finds that, taking into consideration the amendment made by the patentee during
the cancellation proceedings, the patent and the invention to which it relates meet the requirement of this
Act, it may decide to maintain the patent as amended: Provided, That the fee for printing of a new patent
is paid within the time limit prescribed in the Regulations.

65.3. If the fee for the printing of a new patent is not paid in due time, the patent should be revoked.

65.4. If the patent is amended under Subsection 65.2 hereof, the Bureau shall, at the same time as it
publishes the mention of the cancellation decision, publish the abstract, representative claims and
drawings indicating clearly what the amendments consist of. (n)

Section 66. Effect of Cancellation of Patent or Claim. - The rights conferred by the patent or any specified
claim or claims cancelled shall terminate. Notice of the cancellation shall be published in the IPO Gazette.
Unless restrained by the Director General, the decision or order to cancel by Director of Legal Affairs
shall be immediately executory even pending appeal. (Sec. 32, R.A. No. 165a)

Sec. 230, IP Code

Section 230. Equitable Principles to Govern Proceedings. - In all inter partes proceedings in the Office
under this Act, the equitable principles of laches, estoppel, and acquiescence where applicable, may be
considered and applied. (Sec. 9-A, R.A. No. 165)

14. Rights of a Patentee

a. Rights Conferred by Patent
Sec. 71, IP Code

Section 71. Rights Conferred by Patent. - 71.1. A patent shall confer on its owner the following exclusive
rights:

(a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any
unauthorized person or entity from making, using, offering for sale, selling or importing that product;

(b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any unauthorized
person or entity from using the process, and from manufacturing, dealing in, using, selling or offering for
sale, or importing any product obtained directly or indirectly from such process.

71.2. Patent owners shall also have the right to assign, or transfer by succession the patent, and to
conclude licensing contracts for the same. (Sec. 37, R.A. No. 165a)

Parke Davis & Co. vs. Doctors Pharmaceuticals, 124 SCRA 115

100
In G.R. No. L-22221, 1 which involved the same parties in the instant case, the Court affirmed, in a
decision dated August 31, 1965 respondent Director of Patents decision rendered on November 15, 1963
in Inter Partes Case No. 181 ordering petitioner Parke Davis & Co. to grant respondent Doctor's
Pharmaceuticals, Inc. a license to manufacture. use and sell in the Philippines its own products containing
petitioner's chemical called "chloramphenicol."

Petitioner insists that the fixing of the royalty rate by the Director of Patents is arbitrary and without any
support in evidence pointing out that the prevailing rate for compulsory licensing on the net sales of
medicines containing the patented article is 15% and 18% of the selling price. In asking for a 15% royalty
rate, petitioner alleges that it is the same rate prevailing in two compulsory licenses for patents on
medicine in Great Britain, and that in the case of J.R. Geigy S.A.'s Patent in Canada, the rate of 12 1/2 %
based on net sales was allowed. On the other hand respondent company points out that in a licensing
agreement between Collett & Co. of Norway and Lexal Laboratories of the Philippines, royalties of 5%
on a vitamin preparation and 7%, on a pharmaceutical pellet based on net sales, were agreed upon.

It is settled that findings of fact of administrative bodies will not be interfered with by courts of justice in
the absence of a grave abuse of discretion on the part of said bodies or unless the aforementioned findings
are not supported by substantial evidence. 2

The Court finds no abuse of discretion on the part of respondent Director of Patents considering that in
fixing the royalty rate he made a compromise on the rate proposed by petitioner and those prevailing in
other countries. The 8% royalty rate is midway between the rates in Canada and Norway. In developing
countries like the Philippines, liberal treatment in trade relations should be afforded to local industry for
as reasoned out by respondent company, "it is so difficult to compete with the industrial giants of the drug
industry, among them being the petitioner herein, that it always is necessary that the local drug companies
should sell at much lower (than) the prices of said foreign drug entities." 3

The Court agrees with then Solicitor General, now retired Justice Antonio P. Barredo and then Asst.
Solicitor General Pacifico de Castro, now Justice of the Supreme Court, that the 8% royalty rate is
reasonable "considering that Doctor's Pharmaceutical, Inc. is a small manufacturing venture compared
with Parke, Davis & Company, Inc. which is a subsidiary of the huge mother firm, Parke, Davis &
Company of Michigan, U.S.A." (Annex D, Petition for Review). If Doctor's is making sufficient profit to
justify an increase of royalty later, Parke, Davis & Co., Inc. can easily demand an increase, considering
that the latter has access to the books and records of the former. 4

* For sessions covered by Atty. Sapalo, another syllabus will be prescribed

January 10 Atty. Sapalo

16. Doctrine of Equivalents

January 17 Midterm Exam

January 24 & 31 Atty. Sapalo

------------------------------------------------------Sapalo Outline -----------------------------------------------------

Outline for Infringment of Patents
Atty. Ignacio Sapalo

(1) What are the rights conferred by a patent?
101

Section 71. Rights Conferred by Patent. - 71.1. A patent shall confer on its owner the following exclusive
rights:

(a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any
unauthorized person or entity from making, using, offering for sale, selling or importing that
product;

(b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any
unauthorized person or entity from using the process, and from manufacturing, dealing in, using,
selling or offering for sale, or importing any product obtained directly or indirectly from such
process.

71.2. Patent owners shall also have the right to assign, or transfer by succession the patent, and to
conclude licensing contracts for the same. (Sec. 37, R.A. No. 165a)

[Note that 71 does not include exportation.]

(2) Limitation of Patent Rights

a. Section 72

[Note that 72.4 includes drug testing & medicine but not agriculture.]

"SEC. 72. Limitations of Patent Rights. - The owner of a patent has no right to prevent third parties from
performing, without his authorization, the acts referred to in Section 71 hereof in the following
circumstances:

"72.1. Using a patented product which has been put on the market in the Philippines by the owner
of the product, or with his express consent, insofar as such use is performed after that product has
been so put on the said market: Provided, That, with regard to drugs and medicines, the
limitation on patent rights shall apply after a drug or medicine has been introduced in the
Philippines or anywhere else in the world by the patent owner, or by any party authorized to use
the invention: Provided, further, That the right to import the drugs and medicines contemplated
in this section shall be available to any government agency or any private third party; [Principle of
Exhaustion]

"72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial
purpose: Provided, That it does not significantly prejudice the economic interests of the owner of
the patent;

"72.3. Where the act consists of making or using exclusively for experimental use of the invention
for scientific purposes or educational purposes and such other activities directly related to such
scientific or educational experimental use;

"72.4. In the case of drugs and medicines, where the act includes testing, using, making or selling
the invention including any data related thereto, solely for purposes reasonably related to the
development and submission of information and issuance of approvals by government regulatory
agencies required under any law of the Philippines or of another country that regulates the
manufacture, construction, use or sale of any product: Provided, That, in order to protect the data
submitted by the original patent holder from unfair commercial use provided in Article 39.3 of
the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), the
Intellectual Property Office, in consultation with the appropriate government agencies, shall issue
the appropriate rules and regulations necessary therein not later than one hundred twenty (120)
days after the enactment of this law;

102
72.4. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical
professional, of a medicine in accordance with a medical prescription or acts concerning the
medicine so prepared;

72.6. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other country
entering the territory of the Philippines temporarily or accidentally: Provided, That such
invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not used
for the manufacturing of anything to be sold within the Philippines. (Secs. 38 and 39, R.A. No.
165a)

Roche v. Bolar, 733 F2d 858 (Under US law, preparatory steps taken to comply with the
United States FDA registration requirements constitute infringement but not applicable in the Philippines
per amendment to Section 72.4
18
of the IP Code by R.A. 9502.)

Quanta Computer Inc. v. LG Electronics, 553 US 617, 2008 (applying the Principle of
Exhaustion)

US v. Unives Lens, 316 US 241 (also applying the Principle of Exhaustion)

Amendments to 22, 26, 72, 74, 76, 94, and 95 of the IP Code by R.A. 9502, the Cheaper
Medicines Law


"SEC. 22. Non-Patentable Inventions. - The following shall be excluded from patent protection:

"22.1. 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.

"For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size,
isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known substance shall
be considered to be the same substance, unless they differ significantly in properties with regard to
efficacy;

"22.2. x x x;

"22.3. x x x;

"22.4. x x x;

"22.5. x x x; and

"22.6. x x x."


18
"72.4. In the case of drugs and medicines, where the act includes testing, using, making or selling the invention including any
data related thereto, solely for purposes reasonably related to the development and submission of information and issuance of
approvals by government regulatory agencies required under any law of the Philippines or of another country that regulates the
manufacture, construction, use or sale of any product:
103
"SEC. 26. Inventive Step. - 26.1. 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. (n)

"26.2. 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, 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."


circumstances:

"72.1. Using a patented product which has been put on the market in the Philippines by the owner of the
product, or with his express consent, insofar as such use is performed after that product has been so put
on the said market: Provided, That, with regard to drugs and medicines, the limitation on patent rights
shall apply after a drug or medicine has been introduced in the Philippines or anywhere else in the world
by the patent owner, or by any party authorized to use the invention: Provided, further, That the right to
import the drugs and medicines contemplated in this section shall be available to any government agency
or any private third party;

"72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose:
Provided, That it does not significantly prejudice the economic interests of the owner of the patent;

"72.3. Where the act consists of making or using exclusively for experimental use of the invention for
scientific purposes or educational purposes and such other activities directly related to such scientific or
educational experimental use;

"72.4. In the case of drugs and medicines, where the act includes testing, using, making or selling the
invention including any data related thereto, solely for purposes reasonably related to the development
and submission of information and issuance of approvals by government regulatory agencies required
under any law of the Philippines or of another country that regulates the manufacture, construction, use
or sale of any product: Provided, That, in order to protect the data submitted by the original patent holder
from unfair commercial use provided in Article 39.3 of the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS Agreement), the Intellectual Property Office, in consultation with the
appropriate government agencies, shall issue the appropriate rules and regulations necessary therein not
later than one hundred twenty (120) days after the enactment of this law;

72.4. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical
professional, of a medicine in accordance with a medical prescription or acts concerning the medicine so
prepared;
"74.3. All cases arising from the implementation of this provision shall be cognizable by courts with
appropriate jurisdiction provided by law.

"No court, except the Supreme Court of the Philippines, shall issue any temporary restraining order or
preliminary injunction or such other provisional remedies that will prevent its immediate execution.

"74.4. The Intellectual Property Office (IPO), in consultation with the appropriate government agencies,
shall issue the appropriate implementing rules and regulations for the use or exploitation of patented
inventions as contemplated in this section within one hundred twenty (120) days after the effectivity of
this law."

104

"SEC. 94. Period for Filing a Petition for a Compulsory License. - 94.1. A compulsory license may not be
applied for on the ground stated in Subsection 93.5 before the expiration of a period of four (4) years from
the date of filing of the application or three (3) years from the date of the patent whichever period expires
last.

"94.2. A compulsory license which is applied for on any of the grounds stated in Subsections 93.2, 93.3,
93.4, and 93.6 and Section 97 may be applied for at any time after the grant of the patent. (Sec. 34(1), R.
A. No. 165)"


"SEC. 95. Requirement to Obtain a License on Reasonable Commercial Terms. - 95.1. The license will only
be granted after the petitioner has made efforts to obtain authorization from the patent owner on
reasonable commercial terms and conditions but such efforts have not been successful within a
reasonable period of time.

"95.2. The requirement under Subsection 95.1 shall not apply in any of the following cases:

"(a) Where the petition for compulsory license seeks to remedy a practice determined after judicial or
administrative process to be anti-competitive;

"(b) In situations of national emergency or other circumstances of extreme urgency;

"(c) In cases of public non-commercial use; and

"(d) In cases where the demand for the patented drugs and medicines in the Philippines is not being met
to an adequate extent and on reasonable terms, as determined by the Secretary of the Department of
Health.

"95.3. In situations of national emergency or other circumstances of extreme urgency, the right holder
shall be notified as soon as reasonably practicable.

"95.4. In the case of public non-commercial use, where the government or contractor, without making a
patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for
the government, the right holder shall be informed promptly. (n)

"95.5. Where the demand for the patented drugs and medicines in the Philippines is not being met to an
adequate extent and on reasonable terms, as determined by the Secretary of the Department of Health,
the right holder shall be informed promptly."


applied for on the ground stated in Subsection 93.5 before the expiration of a period of four (4) years from
the date of filing of the application or three (3) years from the date of the patent whichever period expires
last.

A. No. 165)"

105

"SEC. 95. Requirement to Obtain a License on Reasonable Commercial Terms. - 95.1. The license will only
be granted after the petitioner has made efforts to obtain authorization from the patent owner on
reasonable commercial terms and conditions but such efforts have not been successful within a
reasonable period of time.


"(a) Where the petition for compulsory license seeks to remedy a practice determined after judicial or
administrative process to be anti-competitive;



"(d) In cases where the demand for the patented drugs and medicines in the Philippines is not being met
to an adequate extent and on reasonable terms, as determined by the Secretary of the Department of
Health.

"95.3. In situations of national emergency or other circumstances of extreme urgency, the right holder
shall be notified as soon as reasonably practicable.

"95.4. In the case of public non-commercial use, where the government or contractor, without making a
patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for
the government, the right holder shall be informed promptly. (n)

"95.5. Where the demand for the patented drugs and medicines in the Philippines is not being met to an
adequate extent and on reasonable terms, as determined by the Secretary of the Department of Health,
the right holder shall be informed promptly."

(3) What Constitutes Infringment?

SEC. 9. Section 76.1 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the

"SEC. 76. Civil Action for Infringement. - 76.1. The 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 constitutes patent infringement: Provided,
That, this shall not apply to instances covered by Sections 72.1 and 72.4 (Limitations of Patent Rights);
Section 74 (Use of Invention by Government); Section 93.6 (Compulsory Licensing); and Section 93-A
(Procedures on Issuance of a Special Compulsory License under the TRIPS Agreement) of this Code.

76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented invention,
whose rights have been infringed, may bring a civil action before a court of competent jurisdiction, to
recover from the infringer such damages sustained thereby, plus attorney's fees and other expenses of
litigation, and to secure an injunction for the protection of his rights.

76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty, the court
may award by way of damages a sum equivalent to reasonable royalty.

76.4. The court may, according to the circumstances of the case, award damages in a sum above the
amount found as actual damages sustained: Provided, That the award does not exceed three (3) times the
amount of such actual damages.

106
76.5. The court may, in its discretion, order that the infringing goods, materials and implements
predominantly used in the infringement be disposed of outside the channels of commerce or destroyed,
without compensation.

76.6. Anyone who actively induces the infringement of a patent or provides the infringer with a
component of a patented product or of a product produced because of a patented process knowing it to be
especially adopted for infringing the patented invention and not suitable for substantial non-infringing
use shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer.
(Sec. 42, R.A. No. 165a)

a. Who can file?

(Sec. 10, R.A. No. 165a)

Creser Precision v. CA, 286 SCRA 13 (interpretation of section 76.2
19
, funny case)


Section 30. Inventions Created Pursuant to a Commission.

30.1. The person who commissions the work shall own the patent, unless otherwise provided in the
contract.

belong to:

(a) The employee, if the inventive activity is not a part of his regular duties even if the employee uses
the time, facilities and materials of the employer.

(b) The employer, if the invention is the result of the performance of his regularly-assigned duties,
unless there is an agreement, express or implied, to the contrary. (n)

Infringment by a Foreign National


Section 77. Infringement Action by a Foreign National. - Any foreign national or juridical entity who
meets the requirements of Section 3 and not engaged in business in the Philippines, to which a patent has
been granted or assigned under this Act, may bring an action for infringement of patent, whether or not it
is licensed to do business in the Philippines under existing law. (Sec. 41-A, R.A. No. 165a)

19
76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented invention, whose rights have been
infringed, may bring a civil action before a court of competent jurisdiction, to recover from the infringer such damages sustained
thereby, plus attorney's fees and other expenses of litigation, and to secure an injunction for the protection of his rights.
107
Rules of Court apply the rule of real-party-in-interest.

b. Contributory Infringment

especially adopted for infringing the patented invention and not suitable for substantial non-infringing
use shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer.
(Sec. 42, R.A. No. 165a)

Dawson Chemical v. Rohm & Haas Company, 206 USPQ 385 (Supreme Court,
1980); 448 US 176, 100 Supreme Court 2601) (if process, shortcut, reverse burden of
proof)

The contributory infringement doctrine exists to protect patent rights from subversion by those who,
without directly infringing the patent themselves, engage in acts designed to facilitate infringement by
others. This protection is of particular importance in situations, as shown in the Wallace case, where
enforcement against direct infringers would be difficult, and where the technicalities of patent law make it
relatively easy to profit from another's invention without risking a charge of direct infringement. In the
Mercoid Corp. cases, the Court held that any attempt to control the market for unpatented goods would
constitute patent misuse, even if those goods had no use outside a patented invention."

C.R. Bard v. Advance Cardiovascular System, 991 F2d 670

To establish the direct infringement, it requires a two step analysis. First is a determination of the scope of
the claim at issue. Second is an examination of the evidence before the court to ascertain whether use of
the device would infringe the claim as interpreted.

It would appear that three possible fact patterns may arise in the course of using the ACS catheter during
a PTCA. The first pattern involves positioning the catheter such that all of its side openings are located
only in the aorta. This is clearly contemplated by the prior art '725 patent cited by the examiner. In the
second of the possible fact patterns, all of the side openings are located within the coronary artery. This
situation appears to have been contemplated by the '017 patent, the method patent at issue. In this
situation, it correctly can be said that blood flowing through the main lumen will "fluidly connect
locations within [the] coronary artery surrounding [the] proximal and distal portions of [the] tube." In the
third fact pattern, some of the side openings are located in the aorta and some are located in the artery.
The fact that ACS has added extra holes further from the balloon does not affect the conclusion of
infringement, as the patent does not require that all holes be "immediately adjacent" the balloon, nor that
the blood flowing through the balloon come solely from the coronary artery.

Aro Manufacturing Company v. Convertible Top Company, 377 US 476

Doctrine: The reconstruction of a patented entity, comprised of unpatented elements, is limited to such a
true reconstruction of the entity as to "in fact make a new article," after the entity, viewed as a whole, has
become spent.

When a purchaser of a patented product replaces some components of that product (either because they
wore out or became unsatisfactory to the owner) should they have to pay royalties to the patentee? In
other words, is it a permissible repair or an impermissible reconstruction?

This case involves convertible tops found in sports cars and other vehicles. Over time, owners of
convertibles wanted to replace to fabric portion of the top because they became torn or discolored, often
due to bird shit. Rather than buy an entire new top (which would be quite expensive) they just wanted to
replace the fabric part of it. Aro Manufacturing is a corporation which supplies replacement cloth tops
that fit various car models. However, the convertible tops were covered by a patent and because Aro
declined to pay a royalty to the patentee, patent infringement litigation followed.

108
Issues:
1. W/N the replacement of the fabric on a convertible top constituted repair or reconstruction.

Held/Ratio:
1. REPAIR.

The decisions of this Court require the conclusion that reconstruction of a patented entity, comprised of
unpatented elements, is limited to such a true reconstruction of the entity as to "in fact make a new
article," after the entity, viewed as a whole, has become spent. In order to call the monopoly, conferred by
the patent grant, into play for a second time, it must, indeed, be a second creation of the patented entity.
...Mere replacement of individual unpatented parts, one at a time, whether of the same part repeatedly or
different parts successively, is no more than the lawful right of the owner to repair his property. Measured
by this test, the replacement of the fabric involved in this case must be characterized as permissible
"repair," not "reconstruction."

c. Infringement if Process Patent

Section 78. Process Patents; Burden of Proof . - If the subject matter of a patent is a process for obtaining
a product, any identical product shall be presumed to have been obtained through the use of the patented
process if the product is new or there is substantial likelihood that the identical product was made by the
process and the owner of the patent has been unable despite reasonable efforts, to determine the process
actually used. In ordering the defendant to prove that the process to obtain the identical product is
different from the patented process, the court shall adopt measures to protect, as far as practicable, his
manufacturing and business secrets. (n)

d. Criminal Action for Repetition of Infringement

Section 84. Criminal Action for Repetition of Infringement. - If infringement is repeated by the infringer
or by anyone in connivance with him after finality of the judgment of the court against the infringer, the
offenders shall, without prejudice to the institution of a civil action for damages, be criminally liable
therefor and, upon conviction, shall suffer imprisonment for the period of not less than six (6) months but
not more than three (3) years and/or a fine of not less than One hundred thousand pesos (P100,000) but
not more than Three hundred thousand pesos (P300,000), at the discretion of the court. The criminal
action herein provided shall prescribe in three (3) years from date of the commission of the crime. (Sec.
48, R.A. No. 165a)

e. Remedies
i. Injunction


ii. Damages



109

Section 79. Limitation of Action for Damages. - No damages can be recovered for acts of infringement
committed more than four (4) years before the institution of the action for infringement. (Sec. 43, R.A.
No. 165)

Section 80. Damages, Requirement of Notice. - Damages cannot be recovered for acts of infringement
committed before the infringer had known, or had reasonable grounds to know of the patent. It is
presumed that the infringer had known of the patent if on the patented product, or on the container or
package in which the article is supplied to the public, or on the advertising material relating to the
patented product or process, are placed the words "Philippine Patent" with the number of the patent.
(Sec. 44, R.A. No. 165a)

iii. The infringing goods, materials, and implements dominantly used in
the infringement be disposed of outside the channels of commerce or
destroyed without compensation


iv. patent found invalid may be cancelled


(4) Extent of protection and Interpretation of claims

a. Extent of protection shall be determined by the claims and are to be
interpreted in the light of a description and drawings

Section 75. Extent of Protection and Interpretation of Claims. - 75.1. The extent of protection conferred by
the patent shall be determined by the claims, which are to be interpreted in the light of the description
and drawings.

Auto Giro Company of America v. The US, 384 F2d 391

The determination of patent infringement is a two step-process First, the meaning of the claims in issue
must be determined by a study of all relevant patent documents. Second, the claims must be read on the
accused structures.

[The following is interesting to know:

In deriving the meaning of a claim, the felt meaning of the claim shall be reached after all useful
documents are inspected. In seeking this goal, three parts of the patent are used: 1) specification; 2)
drawings; 3) file wrapper.

Specification. Section 112 of the 1952 Patent Act requires the specification to describe the manner and
process of making and using the patent so that any person skilled in the art may utilize it. The
specification sets forth the best mode contemplated by the inventor of carrying out his invention. Claim
interpretation must not make use of the best mode terms inasmuch as the patentee need not guard
against infringement by listing every possible infringing device in the specification.

Drawings. Where a visual representation can flesh out words, drawings may be used in the same manner
and with the same limitations as the specification.

110
File wrapper. The file wrapper contains the entire record of the proceedings in the Patent Office from the
first application papers to the issued patent. One use of the same is file wrapper estoppel, which is thus
illustrated: When the application is rejected, the applicant will insert limitations and restrictions for the
purpose of inducing the Patent Office to grant his patent. When the patent is issued, the patentee cannot
disclaim these alterations and seek an interpretation that ignores them. File wrapper estoppel serves two
functions: the applicants statements not only define terms, but also set the barriers within which the
claims meaning must be kept.]

Smith-Kline Beckman v. CA, 409 SCR 33

When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim
anything beyond them. And so are the courts bound which may not add to or detract from the claims
matters not expressed or necessarily implied, nor may they enlarge the patent beyond the scope of that
which the inventor claimed and the patent office allowed, even if the patentee may have been entitled to
something more than the words it had chosen would include.

When two or more inventions are claimed in a single application but are of such a nature that a single
patent may not be issued for them. The applicant thus is required to divide, that is, to limit the claims to
whichever invention he may elect, whereas those inventions not elected may be made the subject of
separate applications which are called divisional applications.

b. IRR of Patents, Utility Models and Industrial Designs

Rule 204. Prior Art. Prior art shall consist of:
(a) Everything made available to the public anywhere in the world by means of a
written or oral disclosure, by use, or in any other way, before the filing date or the priority date of the
application claiming the invention. Information is deemed available to the public when it is not
confidential or restricted to the use by a selective group. Prior use and oral disclosure, whether within or
outside the Philippines, must be proven with substantial evidence.
(b) The whole contents of an earlier application for a patent, utility model, or industrial design
registration, published by the Intellectual Property Office of the Philippines, filed or effective in the
Philippines, with a filing or priority date that is earlier than the filing or priority date of the application;
Provided, that the application which has validly claimed the filing date of an earlier application under
Section 31 of the IP Code, shall be prior art with effect as of the filing date of such earlier application;
Provided further, that the applicant or the inventor of the invention identified in both applications are not
one and the same (Sec. 24, IP Code).
(c)The whole contents of corresponding foreign applications disclosing substantially the same invention,
or a description thereof, published before the filing date of the application. Inventions are considered
substantially the same if the composition of all important particulars, excluding mere formal,
unimportant or obvious variations, define the invention.
(d) Where two or more applications are independently filed with respect to the same invention, and the
later applications are filed before the first application or earlier application is published, the whole
contents of the first or earliest filed application published in accordance with Section 44 of the IP Code on
or after the filing date or priority date of the later filed application shall be novelty destroying with respect
to the later application filed.
Rule 204.1. Equivalents. A strict identity test is required to be applied in assessing novelty. A single
prior art reference must disclose each and every element of a claimed invention in order to destroy
novelty. Equivalents are considered only in assessing inventive step.

Rule 415. Claims.
(a) The patent application must conclude with a claim, particularly pointing out and
distinctly claiming the part, improvement, or combination which the applicant
regards as his invention.
(b) The application may contain one (1) or more independent claims in the same
category (product, process, apparatus, or use), where it is not appropriate, having regard to the subject
matter of the application, to cover this subject matter by a single claim which shall define the matter for
which protection is sought. Each claim shall be clear, concise, and supported by the description.
111
(c) One (1) or more claims may be presented in dependent form, referring back and further limiting
another claim(s) in the same application. Any dependent claim which refers to more than one other claim
(multiple dependent claim) shall refer to such other claims in the alternative only. A multiple dependent
claim shall not serve as a basis for any other multiple dependent claim.
(d) The claims must conform to the invention as set forth in the description and the terms and phrases
used in the claims must find clear support or antecedent basis in the said description so that the meaning
of the terms may be ascertainable by reference to the description. Claims shall not, except where
absolutely necessary, rely in respect of the technical features of the invention, on reference to the
description or drawings. In particular, they shall not rely on references such as, As described in part xxx
of the description or As illustrated in figure xxx of the drawings.
(e) If the invention relates to an improvement, the claim or claims should specifically point out and
distinctly claim the improvement in combination with a preamble statement indicating the prior art
features which are necessary for the definition of the claimed subject matter.

Rule 416. Form and Contents of the Claims. The claim shall define the matter for which protection is
sought in terms of technical features of the invention. Wherever appropriate, the claims shall contain:
(a) A statement indicating the designation of the subject matter of the invention and those technical
features which are necessary for the definition of the claimed subject matter but which, in combination,
are part of the prior art;
(b) A characterizing portion preceded by the expression, characterized in that or characterized by,
stating the technical features which, in combination with the features stated in subparagraph (a), it is
desired to protect.
(c) If the application contains drawings, the technical features mentioned in the claims shall preferably, if
the intelligibility of the claim can thereby be increased, be followed by reference signs relating to these
features and placed between parentheses. These reference signs shall not be construed as limiting the
claim.

c. Principle of Equivalents

75.2. For the purpose of determining the extent of protection conferred by the patent, due account shall be
taken of elements which are equivalent to the elements expressed in the claims, so that a claim shall be
considered to cover not only all the elements as expressed therein, but also equivalents. (n)

US decisions
Wienam v. Denmead, 56 US 330

for infringement improvement in cars in the transporation of coal
defendants made cars that were octagonal instead of circular Court ruled there was infringement.

Graver Tank Mfg. Co. v. Linde Air Products Co., 339 US 605.

Unionmelt uses silicates of calcium and magnesium. Lincolnweld uses silicates of calcium and
manganese. Linde brought an action for infringement. Issue: 1. Were the differences between manganese
and magnesium really insubstantial enough to justify the application of the Doctrine of Equivalents? YES.
Based on the evidence, the changes which avoid literal infringement are colorable only.

Wener Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17

Respondent Hilton Davis already holds a patent (Patent 746), issued in 1985, for an improved
purification process involving ultrafiltration. The original application encompasses all pH levels.
However, during prosecution, the application was limited to only pH levels 6.0 to 9.0. It was later shown
that the pH level of 9.0 was added to avoid an overlap with a prior patent (the Booth patent) which
covered ultrafiltration for pH levels above 9.0. There was no reason given why the lower limit of pH level
6.0 was added.
In 1986, Petitioner Warner-Jenkinson developed an ultrafiltration process at pH 5.0. When Respondent
Hilton Davis discovered this, it sued Petitioner Warner-Jenkinson for patent infringement. Hilton
conceded that there was no literal infringement, and relied solely on the Doctrine of Equivalents in its
112
suit. Held: The determination of equivalence should be applied objectively, on an element-by-element
basis. It is undisputed that the upper limit of pH 9.0 was added to distinguish the Hilton patent from the
Booth patent, the reason for adding the lower limit of pH 6.0 was unclear. If change was related to
avoiding prior art, the new element may only be infringed literally. If the change was NOT related to
avoiding prior art, the new element may be infringed even by its equivalents. [Why?] Whether or not the
estoppel applies depends on the reason for the amendments. The problem in this case was that there was
no reason mentioned for including the lower limit of pH 6.0. Respondent Hilton has not given a reason.
The case was therefore remanded to the Federal Circuit to determine whether reasons were offered or not
and whether further opportunity to establish such reasons would be proper.

There is no basis for treating an infringing equivalent any differently from a device that infringes the
express terms of the patent. Therefore, application of the Doctrine is like determining literal infringement
and should also not require proof of intent. Intent plays no role in the application of the Doctrine of
Equivalents.

The proper time for evaluating equivalency and the knowledge of interchangeability of elements is at the
time of infringement. Equivalents need not be known nor be actually disclosed in the patent in order for
such equivalents to infringe upon the patent.

The triple identity test focuses on the function of a particular element in a claim, the
way that element serves that function and the result obtained by that element. The
Insubstantial Difference test on the other hand is used to determine whether the
difference between the element of the claim and the element of the accused product or
process are so insubstantial so as to be considered equivalents of each other.

Both tests are actually less important than determining whether the accused product or
process contain elements identical or equivalent to each claimed element of patented
invention. The different frameworks may be applied to different sets of circumstances but
there must be a focus on individual elements and there must be special vigilance against
allowing the concept of equivalence to eliminate completely any such elements.

Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Company Limited
535 US 722 (The Principle of File Wrapper Estoppel)

Petitioner Festo Corporation owns two patents for an improved magnetic rodless cylinder, a piston-driven
device that relies on magnets to move objects in a conveying system, such as that used in the Thunder
Mountain Ride at Disney World. the inventions contain a pair of sealing rings, each having a lip on one
side, which would prevent impurities from getting on the piston assembly.

Festos first patent application on the magnetic rodless cylinder (Stoll Patent) was first rejected because
the exact method of application was unclear. So it was amended to meet these objections and references
to prior art were added. The second application (Carroll Patent) was also amended during the
proceedings, adding further prior art references. Both amended patents added a new limitationthat the
inventions contain a pair of sealing rings, each having a lip on one side, which would prevent impurities
from getting on the piston assembly. The amended Stoll Patent added the further limitation that the outer
shell of the device, the sleeve, be made of a magnetizable material.

After Festo began selling its rodless cylinder, respondents Shoketsu Kinzoku Kogyo Kabushiki Company
Limited (SMC) entered the market with a device similar, but not identical, to the ones disclosed by Festos
patents. SMCs cylinder, rather than using two one-way sealing rings, employs a single sealing ring with a
two-way lip. SMCs device does not fall within the literal claims of either patent, but petitioner contends
that it is so similar that it infringes under the doctrine of equivalents. SMC contends that such
amendments bar Festo from asserting that it infringed on their patent (a complete bar against any claim
of equivalence for the element that was amended).

Issues:
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1. W/N there should be a complete bar against the use of doctrine of equivalents when the
prosecution history shows that amendments to the patent claim were made?

NO, only when the patentee is unable to explain the reason for amendment, estoppel not
only applies but also bar[s] the application of the doctrine of equivalents as to that
element. These words do not mandate a complete bar; they are limited to the
circumstance where no explanation is established. Just as Warner-Jenkinson held that the
patentee bears the burden of proving that an amendment was not made for a reason that would give rise
to estoppel, we hold here that the patentee should bear the burden of showing that the amendment does
not surrender the particular equivalent in question.

The doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not
captured in drafting the original patent claim but which could be created through trivial changes. It is
true that the doctrine of equivalents renders the scope of patents less certain. It may be difficult to
determine what is, or is not, an equivalent to a particular element of an invention.

The case was remanded to for further proceedings. As the amendments were made for a reason relating to
patentability, the question is not whether estoppel applies but what territory the amendments
surrendered. While estoppel does not effect a complete bar, the question remains whether petitioner can
demonstrate that the narrowing amendments did not surrender the particular equivalents at issue.

RP Cases on the Doctrine of Equivalents
Gsell Yapjue, 12 Phil 712

W/N there was infringement of Gsells patent when the defendant substituted alcohol for petroleum or
mineral oil
Held/Ratio:
1. YES. Gsell has established the existence of two facts: (1) That the use of the lamp fed with petroleum or
mineral oil was an unessential part of the patented process the use of which by the defendant was
prohibited by the said judgment; and (2) that alcohol is an equivalent and proper substitute, well known
as such, for mineral oil or petroleum in connection with the said process.
It was clearly proven at the trial, that kerosene and alcohol blast lamps are agencies for producing and
applying heat, well known throughout the world long prior to 1906, the date of the issue of the patent;
that it is and for many years has been known that one may for all ordinary purposes be used in the place
of the other.
It is true that defendant's blast lamp is fed with alcohol, and its shape varies in unimportant details, for
the purpose of accommodating the principle, by which the flame is secured, to the different physical and
chemical composition of the fuel used therein; but the principle on which it works, its mode of
application, and its general design distinguish it in no essential particular from that used by the plaintiff.

The doctrine of mechanical equivalents was also invoked by Gsell and the Court ruled that it is
applicable in this case. The doctrine may properly be invoked to protect the patentee from colorable
invasions of his patent under the guise of substitution of some part of his invention by some well known
mechanical equivalent.

An alteration in a patented combination which merely substitutes another old ingredient for one of the
ingredients in the patented combination, is an infringement of the patent, if the substitute performs the
same function and was well known at the date of the patent as a proper substitute for the omitted
ingredient.

Godinez v. CA, 226 SCRA 338

W/N there was infringement? Held/Ratio:
1. Yes, Tests have been established to determine infringement. These are (a) literal infringement; and (b)
the doctrine of equivalents. In using literal infringement as a test, ". . . resort must be had, in the first
instance, to the words of the claim. If accused matter clearly falls within the claim, infringement is made
out and that is the end of it."
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Samples of the Godines floating power tiller have been produced and inspected by the trial court and
compared with that of the turtle power tiller of SV-Argo. In appearance and form, both the floating power
tillers of the defendant and the turtle power tiller of the plaintiff are virtually the same.11
Also according to the doctrine of equivalents, (a)n infringement also occurs when a device appropriates a
prior invention by incorporating its innovative concept and, albeit with some modification and change,
performs substantially the same function in substantially the same way to achieve substantially the same
result. The reason for the doctrine of equivalents is that to permit the imitation of a patented invention
which does not copy any literal detail would be to convert the protection of the patent grant into a hollow
and useless thing.

In this case, the trial court observed that, between the two power tillers operate on the same fundamental
principles. And it is sufficient to constitute equivalency that the same function can be performed in
substantially the same way or manner, or by the same or substantially the same, principle or mode of
operation; but where these tests are satisfied, mere differences of form or name are immaterial.
Also to establish an infringement, it is not essential to show that the defendant adopted the device or
process in every particular; Proof of an adoption of the substance of the thing will be sufficient. "In one
sense," said Justice Brown, "it may be said that no device can be adjudged an infringement that does not
substantially correspond with the patent. But another construction, which would limit these words to
exact mechanism described in the patent, would be so obviously unjust that no court could be expected to
adopt it.

Del Rosario v. CA, 255 SCRA 152

On 18 January 1993, Roberto del Rosario (Petitioner), holder of two Letters Patent dated 1983 and 1986
for audio equipment commonly known as the sing-along system or karaoke, filed a complaint for patent
infringement against Janito Corporation (Respondent). Respondent allegedly manufactured and sold
sing-along systems bearing the trademark miyata or miyata karaoke substantially similar if not
identical to the sing-along system covered by the patents.

It was shown that Respondents equipment involved substantially the same modes or operation and
produce substantially the same if not identical results when used. Respondent likewise did not present a
comparison of his own and Petitioners equipment to refute such finding.

(5) Defenses in action for infringement

(b) That 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


Section 81. Defenses in Action for Infringement. - In an action for infringement, the defendant, in
addition to other defenses available to him, may show the invalidity of the patent, or any claim thereof, on
any of the grounds on which a petition of cancellation can be brought under Section 61 hereof. (Sec. 45,
R.A. No. 165)

------------------------------------------------------Sapalo Outline -----------------------------------------------------

17. Enforcement of Patent Rights, Patent Infringement

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A. Civil Action for Infringement (Literal and Equivalent)

Sec. 76, IP Code as amended by RA 9502

SEC. 9. Section 76.1 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the

"SEC. 76. Civil Action for Infringement. - 76.1. The 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 constitutes patent infringement: Provided, That,
this shall not apply to instances covered by Sections 72.1 and 72.4 (Limitations of Patent Rights); Section
74 (Use of Invention by Government); Section 93.6 (Compulsory Licensing); and Section 93-A
(Procedures on Issuance of a Special Compulsory License under the TRIPS Agreement) of this Code.





especially adopted for infringing the patented invention and not suitable for substantial non-infringing use
shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer. (Sec.
42, R.A. No. 165a)

Sec. 75, IP Code

Section 75. Extent of Protection and Interpretation of Claims. - 75.1. The extent of protection conferred
by the patent shall be determined by the claims, which are to be interpreted in the light of the description
and drawings.

75.2. For the purpose of determining the extent of protection conferred by the patent, due account shall be
taken of elements which are equivalent to the elements expressed in the claims, so that a claim shall be
considered to cover not only all the elements as expressed therein, but also equivalents. (n)

B. Criminal Action for Repetition of Infringement

Sec. 84, IP Code

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Section 84. Criminal Action for Repetition of Infringement. - If infringement is repeated by the infringer
or by anyone in connivance with him after finality of the judgment of the court against the infringer, the
offenders shall, without prejudice to the institution of a civil action for damages, be criminally liable
therefor and, upon conviction, shall suffer imprisonment for the period of not less than six (6) months but
not more than three (3) years and/or a fine of not less than One hundred thousand pesos (P100,000) but
not more than Three hundred thousand pesos (P300,000), at the discretion of the court. The criminal
action herein provided shall prescribe in three (3) years from date of the commission of the crime. (Sec.
48, R.A. No. 165a)

C. Administrative Proceedings

Sec. 10.2, IP Code

10.2. (a) Exercise original jurisdiction in administrative complaints for violations of laws
involving intellectual property rights: Provided, That its jurisdiction is limited to complaints where the
total damages claimed are not less than Two hundred thousand pesos (P200,000): Provided further, That
availment of the provisional remedies may be granted in accordance with the Rules of Court. The
Director of Legal Affairs shall have the power to hold and punish for contempt all those who disregard
orders or writs issued in the course of the proceedings. (n)

(b) After formal investigation, the Director for Legal Affairs may impose one (1) or more of the
following administrative penalties:

(i) The issuance of a cease and desist order which shall specify the acts that the respondent shall
cease and desist from and shall require him to submit a compliance report within a reasonable time which
shall be fixed in the order;

(ii) The acceptance of a voluntary assurance of compliance or discontinuance as may be imposed.
Such voluntary assurance may include one or more of the following:

(1) An assurance to comply with the provisions of the intellectual property law violated;

(2) An assurance to refrain from engaging in unlawful and unfair acts and practices subject of the
formal investigation;

(3) An assurance to recall, replace, repair, or refund the money value of defective goods distributed
in commerce; and

(4) An assurance to reimburse the complainant the expenses and costs incurred in prosecuting the
case in the Bureau of Legal Affairs.

The Director of Legal Affairs may also require the respondent to submit periodic compliance reports and
file a bond to guarantee compliance of his undertaking;

(iii) The condemnation or seizure of products which are subject of the offense. The goods seized
hereunder shall be disposed of in such manner as may be deemed appropriate by the Director of Legal
Affairs, such as by sale, donation to distressed local governments or to charitable or relief institutions,
exportation, recycling into other goods, or any combination thereof, under such guidelines as he may
provide;

117
(iv) The forfeiture of paraphernalia and all real and personal properties which have been used in the
commission of the offense;

(v) The imposition of administrative fines in such amount as deemed reasonable by the Director of
Legal Affairs, which shall in no case be less than Five thousand pesos (P5,000) nor more than One
hundred fifty thousand pesos (P150,000). In addition, an additional fine of not more than One thousand
pesos (P1,000) shall be imposed for each day of continuing violation;

(vi) The cancellation of any permit, license, authority, or registration which may have been granted by
the Office, or the suspension of the validity thereof for such period of time as the Director of Legal
Affairs may deem reasonable which shall not exceed one (1) year;

(vii) The withholding of any permit, license, authority, or registration which is being secured by the
respondent from the Office;

(viii) The assessment of damages;

(ix) Censure; and

(x) Other analogous penalties or sanctions. (Secs. 6, 7, 8, and 9, Executive Order No. 913 [1983]a)

D. Party Who Can Initiate?

Sec. 77, IP Code

Section 77. Infringement Action by a Foreign National. - Any foreign national or juridical entity who
meets the requirements of Section 3 and not engaged in business in the Philippines, to which a patent has
been granted or assigned under this Act, may bring an action for infringement of patent, whether or not it
is licensed to do business in the Philippines under existing law. (Sec. 41-A, R.A. No. 165a)

E. Presumptions

Sec. 78, IP Code

Section 78. Process Patents; Burden of Proof . - If the subject matter of a patent is a process for obtaining
a product, any identical product shall be presumed to have been obtained through the use of the patented
process if the product is new or there is substantial likelihood that the identical product was made by the
process and the owner of the patent has been unable despite reasonable efforts, to determine the process
actually used. In ordering the defendant to prove that the process to obtain the identical product is
different from the patented process, the court shall adopt measures to protect, as far as practicable, his
manufacturing and business secrets. (n)

F. Damages


Section 79. Limitation of Action for Damages. - No damages can be recovered for acts of infringement
committed more than four (4) years before the institution of the action for infringement. (Sec. 43, R.A.
No. 165)

118
Section 80. Damages, Requirement of Notice. - Damages cannot be recovered for acts of infringement
committed before the infringer had known, or had reasonable grounds to know of the patent. It is
presumed that the infringer had known of the patent if on the patented product, or on the container or
package in which the article is supplied to the public, or on the advertising material relating to the
patented product or process, are placed the words "Philippine Patent" with the number of the patent. (Sec.
44, R.A. No. 165a)

G. Defenses

Sec. 81, IP Code

Section 81. Defenses in Action for Infringement. - In an action for infringement, the defendant, in
addition to other defenses available to him, may show the invalidity of the patent, or any claim thereof, on
any of the grounds on which a petition of cancellation can be brought under Section 61 hereof. (Sec. 45,
R.A. No. 165)

H. Cancellation of Invalidated Patent

Sec. 82, IP Code


I. Assessors

Sec. 83, IP Code

Section 83. Assessor in Infringement Action. - 83.1. Two (2) or more assessors may be appointed by the
court. The assessors shall be possessed of the necessary scientific and technical knowledge required by
the subject matter in litigation. Either party may challenge the fitness of any assessor proposed for
appointment.

83.2. Each assessor shall receive a compensation in an amount to be fixed by the court and advanced by
the complaining party, which shall be awarded as part of his costs should he prevail in the action. (Sec.
47, R.A. No. 165a)

February 7 -

18. Limitations to Patent Rights

Art. 30, TRIPS Agreement

Article 30: Exceptions to Rights Conferred

Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such
exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably
prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third
parties.

119
Sec. 72, IP Code as amended by RA 9502

Section 72 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the

circumstances:

"72.1. Using a patented product which has been put on the market in the Philippines by the owner of the
product, or with his express consent, insofar as such use is performed after that product has been so put on
the said market: Provided, That, with regard to drugs and medicines, the limitation on patent rights




under any law of the Philippines or of another country that regulates the manufacture, construction, use or
sale of any product: Provided, That, in order to protect the data submitted by the original patent holder

"72.5. Where the act consists of the preparation for individual cases, in a pharmacy

or by a medical professional, of a medicine in accordance with a medical




120
under any law of the Philippines or of another country that regulates the manufacture, construction, use or
sale of any product: Provided, That, in order to protect the data submitted by the original patent holder

"72.5. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical
professional, of a medicine in accordance with a medical


Section 73. Prior User. - 73.1. Notwithstanding Section 72 hereof, any prior user, who, in good faith was
using the invention or has undertaken serious preparations to use the invention in his enterprise or
business, before the filing date or priority date of the application on which a patent is granted, shall have
the right to continue the use thereof as envisaged in such preparations within the territory where the patent
produces its effect.

73.2. The right of the prior user may only be transferred or assigned together with his enterprise or
business, or with that part of his enterprise or business in which the use or preparations for use have been
made. (Sec. 40, R.A. No. 165a)

Section 74. Use of Invention by Government. - 74.1. A Government agency or third person authorized by
the Government may exploit the invention even without agreement of the patent owner where:

(a) The public interest, in particular, national security, nutrition, health or the development of other
sectors, as determined by the appropriate agency of the government, so requires; or

(b) A judicial or administrative body has determined that the manner of exploitation, by the owner of
the patent or his licensee is anti-competitive.

74.2. The use by the Government, or third person authorized by the Government shall be subject, mutatis
mutandis, to the conditions set forth in Sections 95 to 97 and 100 to 102. (Sec. 41, R.A. No. 165a)

Readings:

WTO DSB 414: Canada - Pharmaceutical Patents available at
http://www.wto.org/english/tratop_edispu_e/7428d.pdf (Complainant: European
Communities)

Roche Products v. Bolar Pharmaceuticals Co., 733 F.2d 858, U.S.P.Q. (BNA) 937 Fed.
Cir. 1990)

19. Interpreting Claims

Merrill v. Yeomans, 94 U.S. 568 (1877)

121
The Court resolved a problem in construing the scope of a patent claim. The plaintiff held a claim to a
new manufacture of [ ] deodorized heavy hydrocarbon oils. In the infringement dispute, the plaintiff ar-
gued that manufacture referred to the product itself while the defendant argued that the term referred
only to the process for making that product. After reviewing the patent in detail, the Court found that
manufactured meant process.

Philips v. Awh Corporation, 415 F.3d 1303 (2005)

Claims are to be interpreted in the context of the specification. Phillips held a patent on modular wall
panels. The panels, which were made of steel, could be welded together to form barriers that were res-
istant to physical damage and relatively soundproof. A key feature of the panels was the presence of
baffles, internal structures that could deflect bullets and impede the flow of materials used to reinforce
the completed walls. The district court found the claim to be limited to the particular arrangement of
baffles within Phillipss design. The Federal Circuit held this construction to be too narrow and reversed
the district courts finding of non-infringement.
The dissent sharply criticized what it perceived to be the majoritys blind insistence on treating claim
construction as an issue of law. The dissent argued that forcing the courts to construe claims only added
to the confusion of patent litigation.

Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)

The scope of a disputed claim is a question of law. Markman held a patent on an inventory-tracking
system for dry-cleaning establishments. Markmans system used a computer to generate and track bar-
coded tags, which remained attached to individual articles of clothing as they progressed through the dry-
cleaning process. The infringement dispute centered on whether inventory, in the sense used by
Markman, necessitated the ability to track the locations of individual pieces of clothing. Markman wanted
the question to be settled by a jury while Westview wanted it to be settled by the court. Reviewing the
history of infringement suits, the Court found no pattern indicating that the construction of claims
devolved upon the jury. The Court therefore upheld the lower courts understanding of the term
inventory.

- LLM Students Report on Apple-Samsung Patent Wars

February 14 - Patent Search and Patent Drafting

February 21 -

20. TRIPS Flexibilities

WTO Ministerial Declaration on the TRIPS Agreement and Public Health
(WT/MN(01)/DEC/2 (Doha Declaration) adopted November 14, 2001
WTO General Council Decision on the Implementation of Paragraph 6 of the Doha
Declaration on the TRIPS Agreement and Public Health adopted August 30,
2003
WTO General Council Decision on Amendment of the TRIPS Agreement adopted
December 6, 2005

[Class notes: Read the documents. Very important. May be asked in finals.]
[1.
2. flexibilities as to substantive standards of protection e.g. Bolar case exceptions
122
3. flexibilities as to mechanisms of enforcment. These were some of the more contentious provisions
of the the TRIPS agreement.
4. flexibilities as to areas not covered by the TRIPS agreement. because there was no consensus in
these areas, and were not urgent. e.g. UMs, some terms.]

[DOHA declaration on Public Health 2001
Flexibility on on Exhaustion Regime
Exhaustion Principle right owners exclusive right to control the distriibution of a protected item
lapses after the first act of distribution. First Sale Doctrine. After first sale.. exhausted]

Exhaustion Regimes
- national exhaustion put in market in country this applies in the PH
- international exhaistion more competition in international arena -
exception in the PH, for drugs and medicines under the cheaper medicines
act.
- regional exhaustion -

[Parallel importation: - reduces price of pharmaceuticals by introducing competition; TRIPS
agreement in article 6 states that this pratice cannot be challenged under the WTO dispute
settlement system and so is effectively a matter of national discretion.
The Bolar exception. Performing research and tests for preparing for regulatory approval The
principle behind this exception is to avoid delay for generic counterpart manufacturers. Without
the Bolar exception, effectively, the term is extended beyond the 20 years ... 2-3 years to obtain
marketing approval.]

[Exceptions to patent rights seven were enumerated in class. was not able to take it down. I think
this is 72.]

Arts. 30 31, TRIPS Agreement

Article 30: Exceptions to Rights Conferred

Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such
exceptions [1] do not unreasonably conflict with a normal exploitation of the patent and [2] do not
unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate
interests of third parties.

Article 31: Other Use Without Authorization of the Right Holder

Where the law of a Member allows for other use[7] of the subject matter of a patent without the
authorization of the right holder, including use by the government or third parties authorized by the
government, the following provisions shall be respected:

(a) authorization of such use shall be considered on its individual merits;
(b) such use may only be permitted if, prior to such use, the proposed user has made efforts to obtain
authorization from the right holder on reasonable commercial terms and conditions and that such efforts
have not been successful within a reasonable period of time. This requirement may be waived by a
Member in the case of a national emergency or other circumstances of extreme urgency or in cases of
public non-commercial use. In situations of national emergency or other circumstances of extreme
urgency, the right holder shall, nevertheless, be notified as soon as reasonably practicable. In the case of
public non-commercial use, where the government or contractor, without making a patent search, knows
123
or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the
right holder shall be informed promptly;
(c) the scope and duration of such use shall be limited to the purpose for which it was authorized, and in
the case of semi-conductor technology shall only be for public non-commercial use or to remedy a
practice determined after judicial or administrative process to be anti-competitive;
(d) such use shall be non-exclusive;
(e) such use shall be non-assignable, except with that part of the enterprise or goodwill which enjoys such
use; [For the reason that a patent is granted on personal circumstances of the patent licensee, e.g. the
ability to commercialize.]
(f) any such use shall be authorized predominantly for the supply of the domestic market of the Member
authorizing such use; [For the reason that patents are for public purpose. Predominantly was used
because of the reality that there are those that sell outside the authorized jurisdiction, e.g. authorized to
sell to Cagayan, but exported to Indonesia.]
(g) authorization for such use shall be liable, subject to adequate protection of the legitimate interests of
the persons so authorized, to be terminated if and when the circumstances which led to it cease to exist
and are unlikely to recur. The competent authority shall have the authority to review, upon motivated
request, the continued existence of these circumstances;
(h) the right holder shall be paid adequate remuneration in the circumstances of each case, taking into
account the economic value of the authorization;
(i) the legal validity of any decision relating to the authorization of such use shall be subject to judicial
review or other independent review by a distinct higher authority in that Member;
(j) any decision relating to the remuneration provided in respect of such use shall be subject to judicial
review or other independent review by a distinct higher authority in that Member;
(k) Members are not obliged to apply the conditions set forth in subparagraphs (b) and (f) where such use
is permitted to remedy a practice determined after judicial or administrative process to be anti-
competitive. The need to correct anti-competitive practices may be taken into account in determining the
amount of remuneration in such cases. Competent authorities shall have the authority to refuse
termination of authorization if and when the conditions which led to such authorization are likely to recur;
(l) where such use is authorized to permit the exploitation of a patent ("the second patent") which cannot
be exploited without infringing another patent ("the first patent"), the following additional conditions
shall apply:
(i) the invention claimed in the second patent shall involve an important technical advance of
considerable economic significance in relation to the invention claimed in the first patent;
(ii) the owner of the first patent shall be entitled to a cross-licence on reasonable terms to use the
invention claimed in the second patent; and
(iii) the use authorized in respect of the first patent shall be non-assignable except with the
assignment of the second patent.

Art. 31(bis), TRIPS Agreement

(What does bis mean? A: amended.)

Republic Act 9502 Cheaper Medicines Act

19. Voluntary Licensing


CHAPTER IX
VOLUNTARY LICENSING

124
Section 85. Voluntary License Contract. - To encourage the transfer and dissemination of technology,
prevent or control practices and conditions that may in particular cases constitute an abuse of intellectual
property rights having an adverse effect on competition and trade, all technology transfer arrangements
shall comply with the provisions of this Chapter. (n)

Section 86. Jurisdiction to Settle Disputes on Royalties. - The Director of the Documentation, Information
and Technology Transfer Bureau shall exercise quasi-judicial jurisdiction in the settlement of disputes
between parties to a technology transfer arrangement arising from technology transfer payments,
including the fixing of appropriate amount or rate of royalty. (n)

Section 87. Prohibited Clauses. - Except in cases under Section 91
20
, the following provisions shall be
deemed prima facie to have an adverse effect on competition and trade:

87.1. [specific source limitation] Those which impose upon the licensee the obligation to acquire
from a specific source capital goods, intermediate products, raw materials, and other
technologies, or of permanently employing personnel indicated by the licensor;

87.2. [price fixing limitation] Those pursuant to which the licensor reserves the right to fix the
sale or resale prices of the products manufactured on the basis of the license;

87.3. [volume or structure limitation]Those that contain restrictions regarding the volume and
structure of production;

87.4. [competitive tech prohibition when non-exclusive techtrans agreement limitation] Those
that prohibit the use of competitive technologies in a non-exclusive technology transfer
agreement;

87.5. [full or partial purchase option] Those that establish a full or partial purchase option in favor
of the licensor;

87.6. [obligation to transfer inventions obtained through the use of licensed tech] Those that
obligate the licensee to transfer for free to the licensor the inventions or improvements that may
be obtained through the use of the licensed technology;

87.7. [requirement to pay royalties for patents not used] Those that require payment of royalties
to the owners of patents for patents which are not used;

87.8. [prohibition to export unless in the interest of the licensor] Those that prohibit the licensee
to export the licensed product unless justified for the protection of the legitimate interest of the
licensor such as exports to countries where exclusive licenses to manufacture and/or distribute the
licensed product(s) have already been granted;

87.9. [restriction of use after expiration of tech transfer arrangement] Those which restrict the use
of the technology supplied after the expiration of the technology transfer arrangement, except in
cases of early termination of the technology transfer arrangement due to reason(s) attributable to
the licensee;

20
Section 91. Exceptional Cases. - In exceptional or meritorious cases where substantial benefits will accrue to the economy,
such as high technology content, increase in foreign exchange earnings, employment generation, regional dispersal of industries
and/or substitution with or use of local raw materials, or in the case of Board of Investments, registered companies with pioneer
status, exemption from any of the above requirements may be allowed by the Documentation, Information and Technology
Transfer Bureau after evaluation thereof on a case by case basis. (n)
125

87.10. [post-agreement-expiration payments] Those which require payments for patents and
other industrial property rights after their expiration, termination arrangement;

87.11. [prohibition to contest restrictin] Those which require that the technology recipient shall
not contest the validity of any of the patents of the technology supplier;

87.12. [R&D limitations] Those which restrict the research and development activities of the
licensee designed to absorb and adapt the transferred technology to local conditions or to initiate
research and development programs in connection with new products, processes or equipment;

87.13. [restriction on adaptation to local conditions or innovation] Those which prevent the
licensee from adapting the imported technology to local conditions, or introducing innovation to
it, as long as it does not impair the quality standards prescribed by the licensor;

87.14. [no liability provision] Those which exempt the licensor for liability for non-fulfilment of
his responsibilities under the technology transfer arrangement and/or liability arising from third
party suits brought about by the use of the licensed product or the licensed technology; and

87.15. [equivalent effects catch-all provision] Other clauses with equivalent effects. (Sec. 33-C
(2), R.A 165a)

Section 88. Mandatory Provisions. - The following provisions shall be included in voluntary license
contracts:

88.1. [PH law governs interpretation, and court venue at licensees principal place of business]
That the laws of the Philippines shall govern the interpretation of the same and in the event of
litigation, the venue shall be the proper court in the place where the licensee has its principal
office;

88.2. [continued access tech improvements] Continued access to improvements in techniques and
processes related to the technology shall be made available during the period of the technology
transfer arrangement;

88.3. [arbitration] In the event the technology transfer arrangement shall provide for arbitration,
the Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of
the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of
Conciliation and Arbitration of the International Chamber of Commerce (ICC) shall apply and the
venue of arbitration shall be the Philippines or any neutral country; and

88.4. [licensor pays for taxes] The Philippine taxes on all payments relating to the technology
transfer arrangement shall be borne by the licensor. (n)

Section 89. Rights of Licensor. - In the absence of any provision to the contrary in the technology transfer
arrangement, the grant of a license shall not prevent the licensor from granting further licenses to third
person nor from exploiting the subject matter of the technology transfer arrangement himself. (Sec. 33-B,
R.A. 165a)

Section 90. Rights of Licensee. - The licensee shall be entitled to exploit the subject matter of the
technology transfer arrangement during the whole term of the technology transfer arrangement. (Sec. 33-
C (1), R.A. 165a)
126

Section 91. Exceptional Cases. - In exceptional or meritorious cases where substantial benefits will
accrue to the economy, such as [1] high technology content, [2] increase in foreign exchange earnings, [3]
employment generation, [4] regional dispersal of industries and/or [5] substitution with or use of local
raw materials, or in the case of Board of Investments, registered companies with pioneer status,
exemption from any of the above requirements may be allowed by the Documentation, Information and
Technology Transfer Bureau after evaluation thereof on a case by case basis. (n)

Section 92. Non-Registration with the Documentation, Information and Technology Transfer Bureau. -
Technology transfer arrangements that conform with the provisions of Sections 86 and 87
21
need not be
registered with the Documentation, Information and Technology Transfer Bureau. Non-conformance with
any of the provisions of Sections 87 and 88
22
, however, shall automatically render the technology transfer
arrangement unenforceable [not void or voidable], unless said technology transfer arrangement is
approved and registered with the Documentation, Information and Technology Transfer Bureau under the
provisions of Section 91 on exceptional cases. (n)

[Class Notes: To commercialize. E.g., U.P. Manila got P40M as royalties to for the
commercialization of the Lagundi formula. The prohibited clauses may be asked in the finals.
Was asked in the bar. 88 on mandatory provisions was also asked in the the bar. Voluntary
licensing will be asked in the finals. BOI pioneer status.]

20. Compulsory Licensing

Secs. 93-95, IP Code as amended by RA 9502


"SEC. 93. Grounds for Compulsory Licensing. - The Director General of the Intellectual Property Office
may grant a license to exploit a patented invention, even without the agreement of the patent owner, in
favor of any person who has shown his capability to exploit the invention, under any of the following
circumstances:

"93.1. National emergency or other circumstances of extreme urgency; [e.g. during the SARS
epidemic, the tummy flu medicine that was the only remedy.]

"93.2. Where the public interest, in particular, national security, nutrition, health or the
development of other vital sectors of the national economy as determined by the appropriate
agency of the Government, so requires; or

"93.3. Where a judicial or administrative body has determined that the manner of exploitation by
the owner of the patent or his licensee is anti-competitive; or

"93.4. In case of public non-commercial use of the patent by the patentee, without satisfactory
reason;

21
86 - Jurisdiction to Settle Disputes on Royalties; 87 what are deemed to have a prima facie adverse effect on trade and
competition
22
88 Mandatory provisions.
127
"93.5. If the patented invention is not being worked in the Philippines on a commercial scale,
although capable of being worked, without satisfactory reason: Provided, That the importation of
the patented article shall constitute working or using the patent; (Secs. 34, 34-A, 34-B, R.A. No.
165a) and

"93.6. Where the demand for patented drugs and medicines is not being met to an adequate extent
and on reasonable terms, as determined by the Secretary of the Department of Health."

SEC. 11. A new Section 93-A is hereby inserted after Section 93 of Republic Act No. 8293, otherwise
known as the Intellectual Property Code of the Philippines, to read as follows:

"SEC. 93-A. Procedures on Issuance of a Special Compulsory License under the TRIPS Agreement. - 93-
A.1. The Director General of the Intellectual Property Office, upon the written recommendation of the
Secretary of the Department of Health, shall, upon filing of a petition, grant a special compulsory license
for the importation of patented drugs and medicines. The special compulsory license for the importation
contemplated under this provision shall be an additional special alternative procedure to ensure access to
quality affordable medicines and shall be primarily for domestic consumption: Provided, That adequate
remuneration shall be paid to the patent owner either by the exporting or importing country. The
compulsory license shall also contain a provision directing the grantee the license to exercise reasonable
measures to prevent the re-exportation of the products imported under this provision.

"The grant of a special compulsory license under this provision shall be an exception to Sections 100.4
and 100.6 of Republic Act No. 8293 and shall be immediately executory.

"No court, except the Supreme Court of the Philippines, shall issue any temporary restraining order or
preliminary injunction or such other provisional remedies that will prevent the grant of the special
compulsory license.

"93-A.2. A compulsory license shall also be available for the manufacture and export of drugs and
medicines to any country having insufficient or no manufacturing capacity in the pharmaceutical sector to
address public health problems: Provided, That, a compulsory license has been granted by such country or
such country has, by notification or otherwise, allowed importation into its jurisdiction of the patented
drugs and medicines from the Philippines in compliance with the TRIPS Agreement.

"93-A.3. The right to grant a special compulsory license under this section shall not limit or prejudice the
rights, obligations and flexibilities provided under the TRIPS Agreement and under Philippine laws,
particularly Section 72.1 and Section 74 of the Intellectual Property Code, as amended under this Act. It is
also without prejudice to the extent to which drugs and medicines produced under a compulsory license
can be exported as allowed in the TRIPS Agreement and applicable laws."


applied for on the ground stated in Subsection 93.5
23
before the expiration of a period of four (4) years
from the date of filing of the application or three (3) years from the date of the grant of the patent
whichever period expires last.

23
"93.5. If the patented invention is not being worked in the Philippines on a commercial scale, although capable of being
worked, without satisfactory reason: Provided, That the importation of the patented article shall constitute working or using the
patent; (Secs. 34, 34-A, 34-B, R.A. No. 165a)
128

A. No. 165)"


"SEC. 95. Requirement to Obtain a License on Reasonable Commercial Terms.
95.1. The license will only be granted after the petitioner has made efforts to obtain authorization
from the patent owner on reasonable commercial terms and conditions but such efforts have not
been successful within a reasonable period of time.

[Class notes: Because patents is a proprietary right, thus there must be just compensation
or due process.]

"(a) Where the petition for compulsory license seeks to remedy a practice determined after
judicial or administrative process to be anti-competitive;
"(d) In cases where the demand for the patented drugs and medicines in the Philippines is not
being met to an adequate extent and on reasonable terms, as determined by the Secretary of the
Department of Health.
"95.3. In situations of national emergency or other circumstances of extreme urgency, the right
holder shall be notified as soon as reasonably practicable.
"95.4. In the case of public non-commercial use, where the government or contractor, without
making a patent search, knows or has demonstrable grounds to know that a valid patent is or will
be used by or for the government, the right holder shall be informed promptly. (n)
"95.5. Where the demand for the patented drugs and medicines in the Philippines is not being met
to an adequate extent and on reasonable terms, as determined by the Secretary of the Department
of Health, the right holder shall be informed promptly."


Section 96. Compulsory Licensing of Patents Involving Semi-Conductor Technology. - In the case of
compulsory licensing of patents involving semi-conductor technology, the license may only be granted in
case of public non-commercial use or to remedy a practice determined after judicial or administrative
process to be anti-competitive. (n) [Class Notes: for non-semi-conductor technologies, the grounds
previously discussed applied]

Section 97. Compulsory License Based on Interdependence of Patents. - If the invention protected by a
patent, hereafter referred to as the "second patent," within the country cannot be worked without
infringing another patent, hereafter referred to as the "first patent," granted on a prior application or
benefiting from an earlier priority, a compulsory license may be granted to the owner of the second patent
to the extent necessary for the working of his invention, subject to the following conditions:

97.1. The invention claimed in the second patent involves an important technical advance of considerable
economic significance in relation to the first patent;

129
97.2. The owner of the first patent shall be entitled to a cross-license on reasonable terms to use the
invention claimed in the second patent;

97.3. The use authorized in respect of the first patent shall be non-assignable except with the assignment
of the second patent; and

97.4. The terms and conditions of Sections 95, 96 and 98 to 100 of this Act. (Sec. 34-C, R.A. No. 165a)

Section 98. Form and Contents of Petition. - The petition for compulsory licensing must be [1] in writing,
[2] verified by the petitioner and [3] accompanied by payment of the required filing fee. It shall contain
the [4] name and address of the petitioner as well as those of the respondents, [5] the number and date of
issue of the patent in connection with which compulsory license is sought, [6] the name of the patentee,
[7] the title of the invention, [8] the statutory grounds upon which compulsory license is sought, the
ultimate facts constituting the petitioner's cause of action, and the relief prayed for. (Sec. 34-D, R.A. No.
165)

[Class Notes: Atty. Ros
(1) Application - states that after filing, filing fee required one month from the time the patent is
filed. Drawing, four months.
(2) Formal Examination may be extended twice for two months each.
(3) Search classified, mechanical, chemical, etc. - USPTO, EPO, KPO, GOOGLE PATENTS]
(4) Publication of the unexamined application in the IPO Gazette
(5) Request for Substantive Examination (within 6 months from the date of publication) Why must
the applicant have to request for substantive examination when there is already an application?
The reason is that in publication, prior art is also published. The applicant will be apprised of the
prior art. Sometimes, some applicants are also only concerned with prior art.
(6) Approval or Refusal.. see Atty. Ros presentation.]

[UM and ID requires no substantive examination. Only formal. No need for novelty, inventive step,
industrial applicability. See adverse information.]

[Usually, in the PH, the sad case of an application for Invention, the downgraded to UM. This
occurs before filing for refusal.]

[What if the office makes a mistake? missed a patent in a country? See by fault of the office.]

Section 99. Notice of Hearing. - 99.1. Upon filing of a petition, the Director of Legal Affairs shall
forthwith serve notice of the filing thereof upon the patent owner and all persons having grants or
licenses, or any other right, title or interest in and to the patent and invention covered thereby as appears
of record in the Office, and of notice of the date of hearing thereon, on such persons and petitioner. The
resident agent or representative appointed in accordance with Section 33 hereof, shall be bound to accept
service of notice of the filing of the petition within the meaning of this Section.

[Class Notes: The reason for the need for hearing is because this is a derogation from the rights of
the patent holder.]

99.2. In every case, the notice shall be published by the said Office in a newspaper of general circulation,
once a week for three (3) consecutive weeks and once in the IPO Gazette at applicant's expense. (Sec. 34-
E, R.A. No. 165)

130
Section 100. Terms and Conditions of Compulsory License. - The basic terms and conditions including
the rate of royalties of a compulsory license shall be fixed by the Director of Legal Affairs subject to the
following conditions:

100.1. The scope and duration of such license shall be limited to the purpose for which it was
authorized;

100.2. The license shall be non-exclusive;

100.3. The license shall be non-assignable, except with that part of the enterprise or business with which
the invention is being exploited;

100.4. Use of the subject matter of the license shall be devoted predominantly for the supply of the
Philippine market: Provided, That this limitation shall not apply where the grant of the license is based on
the ground that the patentee's manner of exploiting the patent is determined by judicial or administrative
process, to be anti-competitive.

100.5. The license may be terminated upon proper showing that circumstances which led to its grant
have ceased to exist and are unlikely to recur: Provided, That adequate protection shall be afforded to the
legitimate interest of the licensee; and

[Class Notes: Thus, the termination is not automatic. It terminates upon the showing of the
circumstances. There have been very few compulsary licenses granted. The last one was in 1965
under the old law.]

100.6. The patentee shall be paid adequate remuneration taking into account the economic value of the
grant or authorization, except that in cases where the license was granted to remedy a practice which was
determined after judicial or administrative process, to be anti-competitive, the need to correct the anti-
competitive practice may be taken into account in fixing the amount of remuneration. (Sec. 35-B, R.A.
No. 165a)

Section 101. Amendment, Cancellation, Surrender of Compulsory License. - 101.1. Upon the request of
the patentee or the licensee, the Director of Legal Affairs may amend the decision granting the
compulsory license, upon proper showing of new facts or circumstances justifying such amendment.

101.2. Upon the request of the patentee, the said Director may cancel the compulsory license:
(a) If the ground for the grant of the compulsory license no longer exists and is unlikely to recur;
(b) If the licensee has neither begun to supply the domestic market nor made serious preparation
therefor;
(c) If the licensee has not complied with the prescribed terms of the license;

101.3. The licensee may surrender the license by a written declaration submitted to the Office.

101.4. The said Director shall cause the amendment, surrender, or cancellation in the Register, notify
the patentee, and/or the licensee, and cause notice thereof to be published in the IPO Gazette. (Sec. 35-D,
R.A. No. 165a)

Section 102. Licensee's Exemption from Liability. - Any person who works a patented product, substance
and/or process under a license granted under this Chapter, shall be free from any liability for
infringement: Provided however, That in the case of voluntary licensing, no collusion with the licensor is
131
proven. This is without prejudice to the right of the rightful owner of the patent to recover from the
licensor whatever he may have received as royalties under the license. (Sec. 35-E, R.A. No. 165a)

Price vs. United Laboratories, 166 SCRA 133 (1988)

This is a compulsary license case for the Ulcer-medicine which was granted to UNILAB on the ground
that it was the entity able to commercialize the IP. What is the ruling on the single embodiment
24

issue? The Director of Patents did not err in granting a compulsory license over the entire
patented invention for there is no law requiring that the license be limited to a specific
embodiment of the invention, or, to a particular claim. In any event, since the petitioner will be
paid royalties on the sales of any products the licensee may manufacture using any or all of the
patented compounds, the petitioner cannot complain of a deprivation of property rights without
just compensation.

Smith Kline vs. CA, 276 SCRA 224

[Class Notes: Read this case. You skipped it in class.]

Smith Kline vs. CA, 368

[Class Notes: Read this case. You skipped it in class.]

III. Other International Agreements [Class notes: Included in finals exams. Including all other
International agreements.]

A. Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for
the Purpose of Patent Procedure
B. Convention Establishing the World Intellectual Property Organization (WIPO)
[186 contracting parties including the Holy See.]

February 28

IV. Trends and Emerging Issues

A. Harmonization of Patent Laws

[Harmonization of Patent Laws Substantive Patent Law Treaty (SPLT) is a proposed international patent
aw treaty aimed at harmonizing substantive points of patent law. Though realistically, there is yet to be
hope of achieving this.]

B. Patent Work Sharing Initiatives
- maximizing the use of resources of patent offices for the speedy issuance of quality patents
1. Patent Prosecution Highway

- is a set of initiatives for providing accelerated patent prosecution procedures by sharing information
between some patent offices. It also permits each participating patent office to benefit from the work

24
embodiment |em$bd!m%nt, im-| noun
a tangible or visible form of an idea, quality, or feeling: she seemed to be a living embodiment of vitality.
the representation or expression of something in a tangible or visible form: it was in Germany alone that his hope seemed
capable of embodiment.
132
previously done by the other patent office, with the goal of reducing examination workload and
improving patent quality.

2. ASEAN Patent Search and Cooperation Programme

[Is the first regional patent work-sharing programme among 9 participating ASEAN Member
states (AMS), lauched in June 15, 2009.

Realistically, no actual request for this has been filed.]

C. Patent and Biotechnology

Trends and Issues:
- ethics of patenting living organisms
- need to protect R&D in the medical field necessary to develop drugs and
medicines v. moral/

D. Patent and Genetic Resources

- plants and animals and outher derivative traditional knowedge which are
under collective or community ownership by are being patented.
- e.g. ilang-ilang has been patented, this disturbs the international patent
community
- international discussion and attempts to norm-setting to mandate
disclosure of origin of knowledge.

Readings:

1. Bioethics and Patent Law: The Relaxin Case available at
2. Bioethics and Patent Law: The Case of the Oncomouse available at

V. Plant Variety Protection Act (Republic Act No. 9168)

[This will be asked in the finals exam.]

A. Purpose

[(1) hunger (2) R&D high costs.]
Interanational Union for the Protection of New Varieties of Plants, 71 member countries (2013), PH
not one of then. Not in the interest of the PH. Developing country.]

Section 2. Statement of Policies.

a) The State recognizes that an effective intellectual property system in general and the development of
new plant variety in particular is vital in attaining food security for the country. To this end, it shall
protect and secure the exclusive rights of breeders with respect to their new plant variety particularly
when beneficial to the people for such periods as provided for in this Act.

133
b) The use of intellectual property bears a socioeconomic function. To this end, the State shall promote
the diffusion of technology and information for the promotion of national development and progress for
the common good.

c) The State recognizes the indispensable role of the private sector, encourages the participation of
private enterprises and provides incentives to needed investments in the development of new plant
varieties.

d) The State recognizes that science and technology are essential for national development and promotes
the adaptation of technology and knowledge from all sources for the national benefit. The State also
recognizes the need to protect and secure the exclusive rights of scientists and other gifted citizens to their
intellectual property and creations.

e) The State, while recognizing intellectual property rights in the field of agriculture, does so in a manner
supportive of and not inconsistent with its obligation to maintain a healthful ecology in accord with the
rhythm and harmony of nature.

B. Conditions for Protection (4-8)

TITLE III: Conditions for the Grant of the Plant Variety Protection
a) New; [equivalent to novelty in patent]
b) Distinct;
c) Uniform; and
d) Stable.


b) In other countries or territories in which the application has been filed, for more than four (4)
years or, in the case of vines or tress, more than six (6) years before the date of filing of an
application for Plant Variety Protection.


[Class notes: e.g. cube watermelons, not sold in the PH.]


[Class notes: It is apart from what is already out there. e.g. cube watermelons]

134
characteristics.

[Class notes: regardless of location, etc. it will always have a cube-shaped form.]

cycle.

[Class Notes: Even after how many planting cycles, the shape of the watermelon will still be the
same.]

[Principles of first to file, etc. applies to PVs.]

C. Term of Protection (33)

Section 33. Term of Protection. - For trees and vines, the period of protection shall be twenty-five (25)
years from the date of the grant of the Certificate of Plant Variety Protection and twenty (20) years from
the said date for all other types of plants, unless declared void ab initio or cancelled otherwise, as
provided under Section 61 and 62, respectively of this Act.

[Term 25 years from the grant, unlike in patents as to reckoning point.]

D. Rights of Holders (36)

TITLE VII: Rights of Holders

Section 36. Rights of Holders of Plant Variety Protection. - In respect of the propagating materials,
holders of a Certificate of Plant Variety Protection shall have the right to authorize any of the following
acts:
a) Production or reproduction;
b) Conditioning for the purpose of propagation;
c) Offering for sale;
d) Selling or other marketing;
e) Exporting;
f) Importing; and
g) Stocking for any purpose mentioned above.

E. Coverage of Protection (39)

Section 39. Coverage of Protection. - The rights of holder under Sections 36 and 38 of this Act shall also
apply in relation to:
a) Varieties which are essentially derived from the protected variety [e.g. an 8x8x8 cube
watermelon], where the protected variety is not itself an essentially derived variety;
b) Varieties which are not clearly distinct from the protected variety; and [not clearly distinct
from the protected variety, e.g. 18 stripes in cube watermelon v. 20 stripes.]
c) Varieties whose production requires the repeated use of the protected variety. [didnt hear her,
dont understand.]

135
Section 40. Essentially Derived Varieties. - For the purpose of paragraph 39(a), a variety shall be deemed
to be essentially derived from the initial variety when:
a) it is predominantly derived from the initial variety, or from a variety that is itself
predominantly derived from the initial variety, while retaining the expression of the essential
characteristics that result from the genotype or combination of genotypes of the initial variety;
b) It is clearly distinguishable from the initial variety; and
c) Except for the differences which result from the act of derivation, it conforms to the initial
variety in the expression of the essential characteristics that result from the genotype or
combination of genotypes of the initial variety.

F. Exceptions (43)

Section 43. Exceptions to Plant Variety Protection. - The Certificate of Plant Variety Protection shall not
extent to:
a) Acts done for noncommercial purposes;
b)Acts done for experimental purposes;
c) Acts done for the purpose of breeding other varieties, except when Sections 39 and 40 apply;
and
d) The traditional right of small farmers to save, use, exchange, share or sell their farm produce
of a variety protected under this Act, except when a sale is for the purpose of reproduction under
a commercial marketing agreement. The Board shall determine the condition under which this
exception shall apply, taking into consideration the nature of the plant cultivated, grown or sown.
This provision shall also extend to the exchange and sell of seeds among and between said small
farmers: Provided, That the small farmers may exchange or sell seeds for reproduction and
replanting in their own land. [Because it runs against public policy.]

March 7

VI. Claims Analysis

Integration

March 17 Final Exams

Course Requirements & Grading System:

1. JD Students:

Class Recitation - 30%
Midterm Exam - 30%
Final Exam - 30%
Attendance - 10%
Total 100%
Bonus Paper* (+ 1-2 pts. of final grade)

2. LLM Students

Class Recitation - 35%
Class Report - 20%
Paper - 35%
136
Attendance - 10%
Total 100%

Bonus Paper* (+ 1-2 pts. of final grade)

Class Paper: ( 20-30 pages, Times New Roman font size 12, 1.5 space, 1 margin)

*Bonus Paper: Reaction/Reflection Paper on an assigned topic (3-5 pages, Times New Roman font
12, short bond, 1 inch margin on all sides, 1.5 space)

Outline:
Background/Introduction (maximum of 3 paragraphs)
Discussion of Issues/Reflection in relation to two (2) following areas at least 2 pages
1. A feature of the Patent System objective, disclosure principle
2. A limitation of the Patent System
3. A strength of the Patent System
4. Patent system and implications on competition, international trade, public policy, etc.
5. Area for further research
Recommendations (at least 1 page)

-----

"#$%&'( )#%*

Q: Why uo the patent uiawings just not use coloi. oi SB. Q: Because coloi is not necessaiy.
Q: What aie embouiments. A: To covei all possible embouiments. Infiingeis just tweak a
few uetails.
Q: Why uoes Apple anu Samsung have to fight wais pei countiy. Is the ieason because the
IP laws pei countiy is uiffeient. Seems so. Is theie a move to unify all patent aujuuication
unuei WIP0.
Q: e.g. 0P'91S, why multiple inventions in one patent. no unity of invention similai to that
unuei IPC S8.

Reflection Papei - focus on a paiticulai

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