What is a patent?

A patent is a grant by the government of the right to stop others from making, using or selling an invention within its jurisdiction for a limited period of time. A patent is granted to protect an article that is essentially better in some way than what was made before, or for a better way of making it. What can be patented? Machines, articles of manufacture, methods, (processes), compositions of matter (chemicals, cell lines), any field of human activity which is new or involves an inventive step and is industrially applicable is patentable. An invention shall not be considered new if it forms part of prior art. Special kind of patents cover the appearance of useful objects (industrial design) or a technical solution of a problem in any field of human activity that is new and industrially applicable (utility model). What cannot be patented? Discoveries, naturally occurring (unaltered) scientific theories & and mathematical methods, purely mental processes, schemes, playing games, methods of doing business, programs for computers, aesthetic creations, arrangements of printed matter, plant varieties or animal breeds or essentially biological process for the production of plants & animals; inventions solely useful in making atomic weapons or anything contrary to public order or morality, and human beings cannot be patented. How long is a patent valid? In the Philippines, invention patents are valid for a term of twenty (20) years from the filing date of the application. This means that the owner of the invention or process essentially has a 20-year monopoly to exclude others from making, using, selling or importing the invention in return for which the owner fully discloses the information. However, a patent shall cease to be in force and effect if any prescribed annual fee is not paid within the prescribed time or if the patent is cancelled in accordance with the provisions of the Intellectual Property Code. However, for a utility model, the term is seven (7) years without renewal; and for an industrial design, the term is five (5) years plus two (2) renewals of five years each. Who is entitled to a patent? The Philippines follows the first-to-file rule in the granting of patents. Essentially, this means that if two (2) or more persons have made the same invention independently of each other, the right to the patent shall belong to the person who filed for such an invention. In other words, where two or more applications are filed for the same invention, the right of the patent shall belong to the applicant who has the earliest filing date or the earliest priority date. The patent belongs to the inventor, his heir or assigns. When two or more persons have made an invention, they will own the patent proportionately (i.e. if there are two inventors, each one is entitled to one-half share). In case where an employee creates an invention during the course of his employment contract, the patent shall belong to the employee, if the inventive activity was not a part of his regular duties even though he uses the time, facilities and materials of his employer. However, if the invention is the result of

the employees regular duties, it belongs to his employer, unless there was a prior express or implied agreement to the contrary. In the case when an invention is commissioned, the person who commissions the work shall own the patent unless otherwise stipulated in the contract. What are the requirements of filing a patent? Basically, the patent application should be in English or Filipino and shall include the following: 1. Request for a grant of patent 2. Specifications containing the following:

a. Title of the Invention b. Disclosure and description of the invention c. Drawings necessary for the understanding of the invention d. A brief explanation of the drawings, if any e. A distinct and explicit claim or claims of the invention f. An abstract 3. Priority claim, if any 4. Power of Attorney 5. Filing fees

A Patent is a grant issued by the government through the Intellectual Property Office of the Philippines (IP Philippines). It is an exclusive right granted for a product, process or an improvement of a product or process which is new, inventive and useful. This exclusive right gives the inventor the right to exclude others from making, using, or selling the product of his invention during the life of the patent. A patent has a term of protection of twenty (20) years providing an inventor significant commercial gain. In return, the patent owner must share the full description of the invention. This information is made available to the public in the form of the Intellectual Property Official Gazette and can be utilized as basis for future research and will in turn promote innovation and development. Patentable inventions offer a technical solution to a problem in any field of human activity. However, theories, mathematical methods, methods of treatment and artistic creations are NonPatentable inventions.

PATENTABLE INVENTIONS A Technical Solution to a Problem In any field of human activity It must be NEW It must involve an INVENTIVE STEP It must be INDUSTRIALLY APPLICABLE Statutory Classes of Invention A useful machine A product or composition A method or process, or An improvement of any of the foregoing Microorganism Non-biological & microbiological process Non-Patentable Inventions Discovery Aesthetic creation Scientific theory Contrary to public order or morality (Sec. 22, IP Code ) Mathematical methods Scheme, rule and method of performing mental act playing games doing business program for computer Method for treatment human or animal body by surgery or therapy & diagnostic method Plant variety or animal breed or essentially biological processes for the production of plants and animals

REQUIREMENT FOR PATENTABILITY NOVELTY INVENTIVE STEP INDUSTRIAL APPLICABILITY INVENTIVE STEP An invention involves an inventive step, if having regard to prior art it is not obvious to a person skilled in the art OBVIOUSNESS
Not beyond normal progress of technology Follows plainly or logically from the prior art Does not require any skill or ability beyond that to be expected of the person skilled in the art

SKILLED PERSON Ordinary practitioner who is Aware of common general knowledge in specific art Has access to everything disclosed as the state of the art Observes developments in related technical field Who may apply for a Patent? Natural person Juridical person a body of persons, a corporation, a partnership, or other legal entity recognized by law Requirements for Filing a Patent 1. Request for the Grant of Patent 2. Description of the Invention (Specification and Claim/s) 3. Drawings necessary for the Invention (if any) 4. Filing Fee CONTENTS OF THE SPECIFICATION
1. Title of the Invention 2. Abstract of the Disclosure 3. Background of the Invention 4. Summary of the Invention 5. Brief Description of the Drawings 6. Detailed Description 7. Claim/s

Who prepares the Patent Application?

Applicant or Inventor First obtain practical ideas as to how specification and claims are drafted by perusal and study of patents previously granted on related invention in the IPP Library or to any IP website. LAWS & RULE

Philippine Rules on PCT Application or PRo-PCT Patent Cooperation Treaty Regulations under the PCT Administrative Instruction under the PC

ABOUT UTILITY MODELS

A Utility Model is a protection option, which is designed to protect innovations that are not sufficiently inventive to meet the inventive threshold required for standard patents application. It may be any useful machine, implement, tools, product, composition, process, improvement or part of the same, That is of practical utility, novelty and industrial applicability. A utility model is entitled to seven (7) years of protection from the date of filing, with no possibility of renewal. Normal 0 false false false EN-US XNONE X-NONE MicrosoftInternetExplorer4 Utility model registration is intended to accommodate local industries, small businesses or entities by providing an industrial property right that is relatively inexpensive, quick, easy to obtain and suited to innovations having short commercial life. Utility model registration is a useful tool in supporting the first to market place advantage. It promotes progress of technology and encourages innovation among small to medium businesses and the local industry. It is inexpensive and easy to obtain, however it can't be enforced until after examination has been carried out and the registration is certified. A utility model is examined to determine if it meets the requirements embodied in the existing Utility Model law and its Implementing Rules and Regulations (IRR). It need not undergo substantive examination before it is certified. You can apply for Utility Model registration directly with the IP Philippines. An application for registration should contain a duly accomplished request for registration as prescribed by the Bureau, specification or description containing the following: (a). title; (b) technical field; (c). background of the Utility Model; (d) brief description of the several views of the drawings, if any; (e) detailed description; (f) claim or claims; (g) drawings, if any; and (h) abstract of the disclosure.

ABOUT INDUSTRIAL DESIGN An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color. Industrial designs are applied to a wide variety of products of industry and handicraft: from technical and medical instruments to watches, jewelry, and other luxury items; from house wares and electrical appliances to vehicles ; from textile designs to leisure goods. To be protected under most national laws, an industrial design must be non-functional. This means that an industrial design is primarily of an aesthetic nature and any technical features of the article to which it is applied are not protected. When an industrial design is protected, the owner the person or entity that has registered the design is assured an exclusive right against unauthorized copying or imitation of the design by third parties. This helps to ensure a fair return on investment. An effective system of protection also benefits consumers and the public at large, by promoting fair competition and honest trade practices, encouraging creativity, and promoting more aesthetically attractive products. Protecting industrial designs helps economic development, by encouraging creativity in the industrial and manufacturing sectors, as well as in traditional arts and crafts. They contribute to the expansion of commercial activities and the export of national products. Industrial designs can be relatively simple and inexpensive to develop and protect. They are reasonably accessible to small and medium-sized enterprises as well as to individual artists and craftsmen, in both industrialized and developing countries. A patent is a right granted for exclusive ownership for any device, substance, method or process that is new, inventive and useful. It is legally enforceable and gives the owner the exclusive right to commercially exploit the invention for the life of the patent. It is a grant of a property right to the inventor, issued by the Intellectual Property Office (IPO) under the Office of the President. The term of a new patent is 20 years from the date on which the application for the patent was filed, subject to the payment of maintenance fees. Philippine patent grants are effective only within the Philippines. The right conferred by the patent grant is right to exclude others from making, using, offering for sale, or selling the invention in the Philippines or importing the invention into the Philippines. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. If you want to go into business using somebody elses patent, you have two options: Voluntary licensing You may offer to enter into licensing agreement and pay the royalty resulting from the agreement which you and the patent owner reached. Given the free market economy, we encourage you to follow this option.

Compulsory licensing By filing a petition with the IPO provided you have exerted efforts to obtain authorization from the patent owner on reasonable commercial terms and conditions but your efforts were unsuccessful within a reasonable period of time. The procedure in a compulsory license petition is adversarial, which means that you and the patent owner will have opportunity to present your respective evidence before any decision can be made. How to Apply for Patent Registration 1. Submit the following requirements to the Bureau of Patents (BOP) of the Intellectual Property Office (IPO):

Accomplished Request Form Name, address and signature of applicant(s); for non-resident applicant, the name and address of his/her/their resident agent; and Description of the invention and one or more claims. Payment of filing fee (for big or small entities) which may be paid during application filing or within one month from the date of filing Drawing(s) necessary to understand the invention; An abstract; and If the priority of an earlier filed application is being claimed, the details of the claim, (i.e. filing date, file number and country of origin).

Note: It is advised that any drawing/s necessary to understand the subject invention should be submitted at the time of filing so that there would not be a possible change in filing date due to late submission/filing of said drawing/s. 2. If the application satisfies the requirements, then a filing date is granted. The date of filing is very important under the present first-to-file system because it serves to determine who has the right to the patent in case of a dispute with another applicant for the same invention. 3. The application together with the list of published patent applications or issued patents for inventions identical to those claimed by the application, will be published in the IPO Gazette (after the expiration of 18 months from the filing date or priority date). After publication, any person may present observations in writing concerning the patentability of the invention. 4. A request for substantive examination of application must be filed within six (6) months from the date of the publication. The application is considered withdrawn if no request is made within that period. 5. If the examiner finds reason to refuse the registration of the application, i.e. the application is not new, inventive or industrially applicable, the Bureau shall notify the applicant of the reason for refusal/rejection giving the applicant the chance to defend or amend the application. If the examiner finds no reason for refusal of the application, the examiner issues a decision to grant the patent registration.

6. The grant of a patent together with other information shall be published in the IPO Gazette within six (6) months. Any interested party may inspect the complete description, claims, and drawings of the patent on file with the Office. 7. When refused a patent grant, an applicant may appeal to the Director of Patents within two (2) months from the mailing date of the final refusal. Filing Fees (in Philippine pesos) Small Entity* Php 1,380.00 Big Entity** Php 2,760.00 *Small Entity. Any natural or juridical person whose assets are worth Twenty Million Pesos (P20M) or less; or, any entity, agency, office, bureau or unit of the Philippine government including government-owned or controlled corporations, state universities and colleges and government-owned or government-run schools. **Big Entity. Any natural or juridical person other than small entity, is presumed to be a big entity unless a written statement to the contrary is submitted by such natural person or the duly authorized representative of such juridical person. Bureau of Patents Intellectual Property Office of the Philippines (IPO) IPO Building, 351 Sen. Gil Puyat Avenue, Makati City Telephone Numbers (632) 752-5450 to 65 Email:mail@ipophil.gov.ph Web site: www.ipophil.gov.ph Source: Business Line Vol. 2 No. 3 2004