Vision Statement: “An Intellectual Property-conscious Philippines in a Demystified, Development-oriented, and Democratized IP System by 2020” 1

“BASIC REQUIREMENTS OF PATENTABLE INVENTION” 2 CHAMLETTE D. GARCIA, R.M.E. INTELLECTUAL PROPERTY RIGHTS SPECIALIST III Bureau of Patents

A temporary monopoly granted to an inventor by the government in return for disclosing an invention. The exclusive right to exploit the invention for 20 years from the filing date,i.e. to make, use sell or import an invention. PATENT PATENT 3

4 A NEW TECHNICAL SOLUTION TO A PROBLEM IN ANY FIELD OF HUMAN ACTIVITY NEW or NOVEL (NOT PREVIOUSLYPUBLISHED OR DISCLOSED in any form, anywhere in the world) INVENTIVE STEP (Not obvious to a person skilled the art) PRACTICAL USE IN THE INDUSTRY (Real Life Benefit)

Statutory Classes of Inventions:  Useful Machine  Improvement of any of the foregoing  Process  Product  Microorganism  Non-biological and microbiological processes

Non-Patentable Inventions:  Discoveries, scientific theories, and mathematical methods.  Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers.  Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body.  Articles or processes that operate contrary to established physical laws. Ex. PERPETUAL MOTION MACHINE  Plant varieties or animal breeds or essentially biological process for the production of plants or animals.  Anything which is contrary to public order or morality.  Aesthetic creations.

3 BASIC REQUIREMENTS OF PATENTABLE INVENTION 7 NOVELTY - NEWNESS INVENTIVE STEP – INVENTIVENESS/ NOT OBVIOUS INDUSTRIAL APPLICABILITY - USAGE

NEW (NOVEL) 8 Section 21 of R.A Requires that an invention be:

Sec. 23, R.A.8293) ( Sec. 23, R.A.8293) An invention shall not be considered new if it forms part of a prior art. 9 TEST OF NOVELTY

everything made available to the public by means of: 10 PRIOR ART What is a “prior art”?

DISCLOSURES considered as PRIOR ART Everything made available to the public before the date of filing Filing date 10/27/ year grace period (non-prejudicial disclosure) 11

- If you publish your inventions in a journal, newspaper, library, internet or demonstrate, sell or discuss your invention in public before you file a patent application, you cannot get a patent for lacking novelty. 12

GRACE PERIOD or NON PREJUDICIAL DISCLOSURE - If you have already disclosed or published your inventions in a journal, demonstrate, sell or discuss your invention in public, you can still file a patent within One (1) year from the date of disclosure or publication. 13

NON-PREJUDICIAL DISCLOSURE  A third party and the information is obtained directly or indirectly from the inventor 14 A disclosure during the 12 months period prior to the filing date or priority date, and the disclosure was made by:  The inventor  A foreign Patent Office and the information was published by mistake

Why do we examine for novelty? 15 Is it logical to grant a patent for something which is already known? An application filed yesterday A light bulb as it has been known and used

What does “new” mean? 16 KNOWN INVENTION PRIOR ART PATENT APPLICATION KNOWN INVENTION PRIOR ART PATENT APPLICATION

What does “new” mean? 17 KNOWN INVENTION PRIOR ART NEW APPLICATION

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Prior Art Application 19 Novelty X   GENERIC DISCLOSURES 1. metal 2. Aluminum 3. Car-jack 1. Aluminum 2. metal 3. supporting means deg.C deg.C  SPECIFIC DISCLOSURES ARE NOVEL OVER GENERIC DISCLOSURES!

EQUIVALENTS  A watering can made of zinc 20  A watering can made of aluminum If something is equivalent to what is claimed, it clearly is not the same thing. To employ an equivalent to what is disclosed would, be a matter of obviousness, not a question of novelty.

 NOVEL 21  INVENTIVE STEP Section 21 of R.A Requires that an invention be:

TEST OF INVENTIVE STEP An invention involves an inventive step, if having regard to prior art 22  it is not obvious to a person skilled in the art. (Sec. 26, R.A.8293)

 Does not go beyond the normal progress of technology 23  Follows plainly or logically from the prior art  Does not involve the exercise of any skill or ability beyond that to be expected of a person skilled in the art OBVIOUS  The term “obvious” is used as equivalent to the expression “lacking an inventive step”

Fictional person 24  Aware of common general knowledge in specific art  Has access to everything disclosed as the state of the art  Can observe developments in related technical field PERSON SKILLED IN THE ART EUROPEAN PATENT ACADEMY with no inventive ability

 Developed in order to have a decision making procedure more objective in view of the risk that the invention (after examining the application) may appear simple, trivial and obvious. 25  Problem-solution approach DETERMINATION OF INVENTIVE STEP INVENTIVE STEP

 Determining the closest prior art; 26  Establishing the technical problem to be solved by the invention with respect to the prior art;  Deciding whether invention is obvious THREE MAIN STAGES (PROBLEM-SOLUTION APPROACH

27  Deciding whether invention is obvious THREE MAIN STAGES (PROBLEM-SOLUTION APPROACH Making the decision involves answering the question: What would a person skilled in the art do, when faced with that objective technical problem and being aware of the state-of- the-art or prior art?

HYDRAULIC RAM APPLICATIONPRIOR ART 90º LONG RADIUS ELBOW Examples of Test for INVENTIVE STEP Obvious ba? 28

Problem: The ear-like handles of coffee cups are often quite slippery. You can therefore easily drop the cup. The result can be a stained carpet, table cloth, wooden floor… Such coffee stains are usually very difficult or impossible to remove completely. Coffee Cup 29

Claim: Coffee cup with an ear-like handle characterized in that the handle is made of rubber. Solution: Rubber is used as material for the handle. This increases the friction between the handle and the fingers of the user. EXAMPLE 30

COFFEE CUP WITH EAR- SHAPED HANDLE PRIOR ARTS SAUCE PAN WITH EAR- LIKE RUBBER HANDLES THAT REDUCES ITS TEMP. THERMOS BOTTLE WITH A RUBBER-COVERED HANDLE Obvious ba?

SUB-TESTS IN EVALUATING INVENTIVE STEP INVENTIVE STEP 1.) Aggregation or collocation NEGATIVE POINTERS Example: machine for producing sausages consists of a known mincing machine and a known filling machine disposed end-to-end (independent to each other)

SUB-TESTS IN EVALUATING INVENTIVE STEP INVENTIVE STEP NEGATIVE POINTERS 2.) A choice of size, form or proportion Example: The claimed invention relates to a process for carrying out a known reaction and is claimed by a specified rate flow of an inert gas. The prescribed rates are merely those which would necessarily be arrived at by a person skilled in the art.

SUB-TESTS IN EVALUATING INVENTIVE STEP INVENTIVE STEP NEGATIVE POINTERS 3.) An exchange of material (analogous substitution) Example: an electric cable comprises a polyethylene sheath bonded to a metallic shield by an adhesive. The claimed invention lies in the use of a particularly newly developed adhesive known to be suitable for polymer-metal bonding.

SUB-TESTS IN EVALUATING INVENTIVE STEP INVENTIVE STEP NEGATIVE POINTERS 4.) Use of well-known material Example: A washing composition containing a detergent a known compound having the known property of lowering the surface tension of water, this property being known to be an essential one for detergents.

SUB-TESTS IN EVALUATING INVENTIVE STEP INVENTIVE STEP NEGATIVE POINTERS 5.) Analogous use – application of known technique Example: A washing composition containing a detergent with a known compound having the known property of lowering the surface tension of water, this property being known to be an essential one for detergents.

SUB-TESTS IN EVALUATING INVENTIVE STEP INVENTIVE STEP NEGATIVE POINTERS  6. ) Use of well-known technical equivalents  Example: The claimed invention relates to a pump- motor combination which differs from a known pump-motor combination solely in that the motor is hydraulic instead of an electric motor.

SUB-TESTS IN EVALUATING INVENTIVE STEP INVENTIVE STEP 7. ) Filling a gap in the prior art NEGATIVE POINTERS  Example: The claimed invention relates to building structure made from aluminum. A prior document discloses the same structure and says that it is of lightweight material but fails to mention the use of aluminum. Aluminum is a lightweight material that is well known in the art to be useful as a building material.

OBVIOUS CREATIONS THE CREATOR IS A BEER DRINKER WHO ALWAYS FIND IT HARD TO OPEN A BOTTLE OF LIQUOR DURING DRINKING SESSIONS.

OBVIOUS CREATIONS NEXT CREATION WAS CONCEIVED BY AN OFFICE WORKER WHO ALWAYS FIND IT HARD TO CARRY A SAUCER OR BISCUIT DISPENSER DURING COFFEE BREAK.

OBVIOUS CREATIONS NEXT CREATION WAS CONCEIVED PROBABLY BY A MAN WHO WAS VICTIMIZED BY THIEVES.

OBVIOUS CREATIONS NEXT CREATION WAS CONCEIVED BY A COMPANY TO PROTECT THEIR HEADPHONES OR THEIR CUSTOMER.

OBVIOUS CREATIONS NEXT CREATION IS AN ECONOMICAL KITCHEN UTENSILS INTENDED TO BE USED BY PEOPLE ON-THE-GO

OBVIOUS CREATIONS NEXT CREATION IS FOR PIZZA LOVERS.

OBVIOUS CREATIONS NEXT CREATION IS FOR THOSE WHO ARE INTO WEIGHT LOSS OR DIETING.

OBVIOUS CREATIONS NEXT CREATION IS FOR THOSE WHO LOVES TO LISTEN TO MUSIC WHILE IN THE COMFORT ROOM.

INDUSTRIAL APPLICABILITY An invention that can be produced and used in any industry shall be industrially applicable. (Sec. 27 R.A. 8293) 47

“PATENT SYSTEM ADDS FUEL OF INTEREST TO THE FIRE OF GENIUS” 48 - ABRAHAM LINCOLN

SALAMAT PO! 49