INTELLECTUAL

PROPERTY CODE OF
THE PHILIPPINES
RA 8293
PATENT
I. DEFINITION
II. NON-PATENTABLE INVENTIONS
III. HOW RIGHT TO A PATENT ACQUIRED
IV. RIGHTS CONFERRED BY A PATENT
V. PATENT INFRINGEMENT
DEFINITION
Sec. 21 Patentable Inventions
o Technical solution of a problem in any field of human activity
o new
o involves an inventive step
o industrially applicable

It may be, or may relate to:

Product
Process
improvement of a product or process (Sec. 7, R.A. No. 165a)
New – does not form part of a prior art
*prior art means everything which has been made available to the
public anywhere in the world and the whole contents of a published
application

Inventive step – having regard to prior art, it is not obvious to a person

skilled in the art (person with an average level of skill)

Industrially applicable – can be produced and used in any industry

Problem
Cezar works in a car manufacturing company owned by Joab.
Cezar is quite innovative and loves to tinker with things. With the
materials and parts of the car, he was able to invent a gas-saving device
that will enable cars to consume less gas.

Is the gas-saving device patentable? Explain.

Answer
Yes, it is patentable because it is new, it involves an inventive step, and it is
industrially applicable.

New – does not form part of a prior art

*prior art means everything which has been made available to the public anywhere
in the world and the whole contents of a published application

Inventive step – having regard to prior art, it is not obvious to a person skilled in the
art (person with an average level of skill)

Industrially applicable – can be produced and used in any industry

Examples of recently patented
inventions:
• Drone
• iPhone
• Locomotion assisting device
• 3D Printer
• Retinal prosthesis
• Global position system
• CRISPR Gene Editing
• Brain implant
• Bluetooth
• Self-driving car
• Solar panel
• 3G wireless mobile communications
• Virtual reality generator
NON-PATENTABLE INVENTIONS (Sec.
22)
o discoveries, scientific theories and mathematical methods
- in case of drugs and medicines, mere discovery of a new form
or new property of a known substance
o Schemes, rules and methods of performing mental acts, playing
games or doing business, and programs for computers
o Methods for treatment of the human or animal body
o Plant varieties or animal breeds
o Aesthetic creations
o Contrary to public order
Problem
Supposing Albert Einstein were alive today and he filed with the
Intellectual Property Office (IPO) an application for patent
for his theory of relativity expressed in the formula E = mc2 .
The IPO disapproved Einstein's application on the ground that his
theory of relativity is not patentable.
Is the IPO's action correct?
Answer
Yes. The IPO's action is correct because the theory of relativity is not
patentable. Under Section 22.1 of the IPC, "discoveries, scientific
theories and mathematical methods" are non-patentable.
Problem
X Pharmaceuticals, Inc. has been manufacturing the antibiotic ointment
Marvelopis, which is covered by a patent expiring in the year 2020. In
January 2019, the company filed an application for a new patent for
Disilopis, which although constituting the same substance as
Marvelopis, is no longer treated as an antibiotic but is targeted and
marketed for a new use, i.e., skin whitening.
Should X Pharmaceuticals, Inc's patent application for
Disilopis be granted? Explain.
Answer
No, the patent application for Disilopis should not be granted.
The use of the existing patent although for a different purpose will not
satisfy the elements of novelty and inventive step.
Moreover, under Section 22 of the Intellectual Property Code, as amended,
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, are non-patentable inventions.
HOW RIGHT TO A PATENT ACQUIRED
Sec. 29 First to File Rule
Two or more persons have made the invention separately and
independently

The right to the patent shall belong to:

Who filed an application
Where two or more applications are filed – who has the earliest filing
date or earliest priority date
Problem
Cezar works in a car manufacturing company owned by Joab.
Cezar is quite innovative and loves to tinker with things. With the materials
and parts of the car, he was able to invent a gas-saving device that will enable
cars to consume less gas.
Francis, a co-worker, saw how Cezar created the device and likewise came up
with a similar gadget, also using scrap materials and spare parts of the
company. Thereafter, Francis filed an application for registration of his device
with the Bureau of Patents. Eighteen months later, Cezar filed his application
for the registration of his device with the Bureau of Patents.
Assuming that it is patentable, who is entitled to the patent?
What, if any, is the remedy of the losing party?
Answer
Francis is entitled to the Patent, because he had the earlier filing date
under the "First to File Rule."

The remedy of Cezar is to file a petition in court for the cancellation of

the patent of Francis on the ground that he is the true and actual
inventor, and ask for his substitution as patentee. (Sec. 68)
RIGHTS CONFERRED BY A PATENT
Sec. 71
Exclusive Rights
Product – restrain, prohibit and prevent any unauthorized person or entity from
making, using, offering for sale, selling or importing that product

Process – 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

Right to assign or transfer by succession the patent, and to conclude licensing

contracts
Sec. 30 Inventions Created Pursuant
to a Commission
Inventor Right to A Patent
Inventions created pursuant to a The person who commissions the work shall own the patent, unless
Commission otherwise provided in the contract.
The employee made the invention in The employee, if the inventive activity is not part of his regular duties
the course of his employment contract even if he uses the time, facilities and materials of the employer

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
Term of a Patent
20 years from the filing date of the application
Problem
Supposing in the same question above, Joab got wind of the inventions
of his employees and also laid claim to the patents, asserting that Cezar
and Francis were using his materials and company time in making the
devices, will his claim prevail over those of his employees? Explain.
Answer
No. The claim of Joab will not prevail over those of his employees, even
if they used his materials and company time in making the gas-saving
device. The invention of the gas-saving device is not part of their
regular duties as employees of a car manufacturing company.
Sec. 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)
Problem
”I" has invented a certain device, which when attached to the engine of
a motor vehicle would cut the consumption of gasoline by 50%.
Without securing a patent therefor, he started manufacturing the
gadget in large quantities and promoted its sales. An ingenious ”J"
bought one gadget, dismantled and studied it, and in due time was
himself manufacturing an identical device. Before offering it for sale, "J"
secured a patent for his device which he called "Gasopid" "' learns of
the patent and desires to secure his own patent but fearing that he
might be sued for infringement of patents, seeks your legal advice.
How can you help him? Explain briefly.
Answer
”I", being the first, true and actual inventor, may file an action in court
to be declared as the one entitled to the patent and upon finality of the
favorable judgment, ask the IPO to have the patent granted to "J"
cancelled and ”I" be issued the patent. I may also ask for actual and
other damages as may be warranted under the circumstances.
PATENT INFRINGEMENT
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 authorization of the
patentee.
Civil Action
Criminal Action for Repetition of Infringement
Trade-Related Aspects of Intellectual
Property Rights (TRIPS) Agreement
The first-to-file system required citizens of foreign countries to register
their patents in the Philippines before they can sue for infringement.
Problem
The patent involved in this case is issued to M on July 15, 1976. It is a hand
tractor or power tiller.
The above-mentioned patent was acquired by s, Inc., from M, its chairman and
president, by virtue of a Deed of Assignment executed by the latter in its favor.
In accordance with the patent, S, Inc. manufactured and sold the patented
power tillers with the patent imprinted on them. In 1979, S, Inc. suffered a
decline of more than 50% in sales in its Molave, Zamboanga del Sur branch.
Upon investigation, it discovered that power tillers similar to those patented by
S, Inc. were being manufactured and sold by P.
Consequently, S, Inc. notified P about the existing patent and demanded that
the latter stop selling and manufacturing similar power tillers. Upon P's failure
to comply with the demand, S, Inc. filed a complaint for infringement of patent.
Did petitioner's product infringe upon the patent of private respondent?
Answer
Yes. The Court pronounces P liable for infringement.
Tests have been established to determine infringement. These are
(a) literal infringement - resort must be had, in the first instance, to the
words of the claim. If accused’s matter clearly falls within the claim,
then there is infringement; exact identity of all material elements.
(b) the doctrine of equivalents – 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
- In appearance and form – both the power tillers are virtually the
same
- Th power tillers are identical and similar in form, configuration, design
and appearance
- Operate in similar manner and on the same principles