Patents, Part 1Sec. 21 Patentable Inventions –

Sec. 22 Non-patentable inventions

Prof. Vicente B. Amador

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)

What makes an invention Patentable?

Elements of Patentable Invention

1. Existing problem in any field of human activity

2. Invention provides a technical solution to the problem

3. Solution must new4. It must involve an inventive step5. It must be industrially applicable

Some inventions are less than others

Utility Model – Section 109. An invention qualifies for registration as a utility model if it is new and industrially applicable

•Inventive step not required for UM•Section 109, special provisions relating to UM

Design Registration – Section 112. Any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors but such composition or form …

… must give a special appearance to and can serve as a pattern for an industrial product or handicraft

•excluding designs dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order, health or morals

•Section 119, provisions applicable to industrial design registration

Examples of Inventions from Time Magazine

Angelita Manzano vs. Court of Appeals, and Melecia Madolaria, as Assignor to New United Foundry Manufacturing Corporation, G.R. No. 113388, September 5, 1997

Issues: Patentability and InventorshipFacts: 1. Manzano asked for the cancellation of Letters Patent No. UM-4609 for a gas burner in the name of respondent Madolaria claiming that [1] it was not inventive, new or useful [2] Madolaria was not the original, true and actual inventor [3] the patent was secured by means of fraud or misrepresentation [4] the gas burner had been in public use or on sale in the

Philippines for more than one (1) year before the application for patent therefor was filed.2. A witness testified that he worked as a helper in the Madolaria from 1965 to 1970 where he helped in the casting of LPG burners with the same form, configuration and mechanism as that of the model covered by the Letters Patent issued to Madolaria.3. The BPT denied the petition for cancellation because [a] petitioner was not able to prove that the patented utility model of private respondent was anticipated. Not one of the various pictorial representations of business clearly and convincingly showed that the devices presented by petitioner was identical or

substantially identical with the utility model of the respondent. [b] Even assuming that the brochures depicted clearly each and every element of the patented gas burner device so that the prior art and patented device became identical [although in truth they were not] they could not serve as anticipatory bars for the reason that they were undated. 4. The Supreme Court affirmed [a] petitioner’s claim that the gas burner was identical to those shown in the brochure of Manila Gas and Esso cannot be accepted They cannot serve as anticipatory bars for the reason that they are undated. The dates when they were distributed to the public were not indicated and, therefore, they are useless prior art references.

[b] the model presented 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 [c] the burner petitioner claimed to have manufactured contained no indication of the time or date it was manufactured. 5. 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. Petitioner did not discharge this burden.

FAUSTINO R. MELGAREJO vs. CLODUALDO C. BRION and RODOLFO B. TAN

and CLODUALDO C. BRION and RODOLFO B. TAN vs.

FAUSTINO R. MELGAREJO, Philippine Patent Office Decision No. 19 (PAT), February 27, 1987

Issues: Improvement Patent / CancellationFacts: 1. Melgajero obtained Letters of Patent No. 10657 (First Patent)

for "Processing Standard Hardboard to Oil Tempered and Termite Resistant".

 

2. While employed by Melgajero, Brion learned Melgajero’s formula, the technology and procedure in carrying out his patented process and obtained Letters Patent No. 11603 (Second Patent) for "A Process of Making Oil Tempered and Termite Proof Hardboard."

3. The parties filed petitions for the cancellation of each other’s patents on the following grounds: [1] the invention is not new and patentable [2] the other patentee is not the true and actual inventor [3] patent fraud.

4. The Examiner cited the first patent as a bar to the second patent (prior art), but Brion hurdled the objection.

5. Brion commercially distributed such processed hardboards within Metro Manila and throughout the country without his authority or consent.

6. Brion claimed that he had his own process of making oil tempered and termite-proof hardboard and had taken out a distinct and separate invention patent for it.

7. The following differences were established:

Letters Patent No. 10657 Applying an oil mixture containing one liter of refined used motor oil and 1/8 liter of lumbang, banana or linseed oil or combination on both surfaces

Letters Patent 11603 Applying an oil mixture containing 40% to 60% by volume motor oil, 20% to 30% by volume used oil, 20 to 30% by volume polyglycol sulfate on

Scraping off the excess oil after letting it stand for 2 to 5 minutes

Spreading evenly the oil on the surface of the hard- board

Drying the oil-treated hardboard by means of solar heating for a period of 24 hours

Subjecting the semi-dried oil treated hardboard to oven drying at a temperature of 300 to 450°C for a period 24 hours

24 hours

Scraping off the excess oil

Rubbing the surface with a rag to remove the residue and to produce a pleasant finish Drying the oil-treated hardboard under the sun for 50 minutes

Applying a thin layer ofresin on the smooth surface of the hardboard by means of a brush or cloth

in the oven at a temperature of200°C to 350°C for 2 to 4 hours

Applying wood glue on the edges and corners of the hardboard

Held:1. A reading of the claims above set forth will readily

show that the two patents are directed to the same art, namely, the process for subjecting hardboards to render the same oil-tempered and termite resistant.

2. A more careful analysis of the two patents leads to a finding that Letters Patent No. 10657 is the first or earlier patent which introduced the basic and original idea that a hardboard, when treated with an oil

3. Letters Patent No. 11603 clearly has used the same idea or concept but has introduced certain modifications and, therefore, has improved the process and product described in Letters Patent No. 10657. 4. To grant a patent, as in this case Patent No. 11063, despite the existence of Patent No. 10657 for substantially the same process producing substantially the same product is believed to be in full accord with the language and spirit of the law. The State should reward contributions to science and progress thereof, such as that of Brion and Tan's, even if these contributions are only improvements to existing technology:

5. The owner of the technology improved in the instant case (Patent No. 10657) dominates the improvement patent, in this case Patent No. 10657. It is said that in a situation where a patent is dominated by another earlier issued patent, such a dominated patent infringes on the rights of the owner of the dominant patent.6. Two patents may be both valid when the second is an improvement on the first, in which event, if the second includes the first, neither of the two patentees can lawfully use the invention of the other without the others consent. Therefore, letters patent for an improvement on a patented invention cannot be declared void because they include such patented invention.

7. However, Melgarejo Patent No. 10657 is not new since such process and product were publicly used, are of public knowledge or sold in the Philippines before the application for a patent therefor was filed. 8. By Section 9, therefore, of the Philippine Patent Law, the then Melgarejo patent application filed on August 6, 1976 no longer was new and should not have been allowed to mature into Philippine Patent No. 10657 .9. Petition for Cancellation of Letters of Patent No. 11603 is denied. Letters Patent No. 10657 granted to Melgarejo is hereby CANCELLED by reason of prior knowledge, prior public use or sale in commerce.

‘Pharming’ with Plants

Novelty is determined by the Prior Art

SECTION 23. Novelty. - An invention shall not be considered new if it forms part of a prior art.

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

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, 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)

Relative vs. Absolute Novelty

Prior art includes everything that has been made available to the public anywhere in the world

Rule of absolute novelty under IP Code

Rule of relative novelty under the old Patent Law

First-to-file rule under the IP Code in contrast to first-to-invent rule under the old Patent Law

DR. ANTONIO F. MATEO, petitioner, vs. BEATRIZ CHUA SENG SO, respondent., Inter Partes Case No. 3560, BPTT Decision No. 01 (PAT). January 6, 1993

Issue: Prior Art / Practical UtilityFacts:1. Chua Seng obtained Letters Patent No. UM-6780 on

30 March 1989, entitled Water Meter Coupling Detector.

2. Claiming to be the true and actual maker of the device under Letters Patent No. UM-5258 entitled WATER METER PROTECTOR earlier granted by BPTTT on May 25, 1983, Mateo asked for cancellation of Chua Seng’s patent

on the following grounds: [1] device is not new and was publicly known; [2] Mateo’s own device from which it was derived had been in the market since 1984.3. Chua Seng claims his device is substantially different from Mateo’s product:

Mateo:1. made of either

polyprooylene/polyethylene polyethylene or polybutylene

2. the external shape is circular3. comes in only one (1) color —

black  

Chua Cheng: 1.made of ABS(Accrylonitrile Butadiene Styrene)2. the external shape isHexagonal3. comes in three (3)colors — blue, to indicate that the meter where it is attached is in order;

4. secured by two (2) ordinary screws

5. bound by an alleged tamper-proof seal

yellow to indicate that the meter has once been tampered; and red, to indicate that the meter has been tampered more than once

4. not secured by screws nor by seals but by a special crimping device

4. Prior Art: Chua Seng’s product is very different from Mateo’s in materials used, design structure, construction, features, color and purpose. It is is of substantial practical utility because it acts as a tamper-proof protector for water coupling of various sizes.

5. All it takes to tamper with Mateo’s water meter is the removal of the screw. To conceal such an act, the consumer would just replace the screw after the meter has been tampered with so that a water-meter reader would not notice it.

6. Chua Seng’s water meter coupling protector is protected by a fastener in the form of integrally molded hollow male and female projections to forms rivet-like fasteners which when tampered with becomes useless, hence a positive indication of a tampered meter.

7. The patentable subject matter of Chua Seng’s utility model lies in the construction of the male projection and a female projection on the adjacent end flanges of said upper and lower bodies whereby said male projections snugly fits in the said female projection when pressed together.8. Practical Utility: The introduction of the aforesaid male and female projections in Chua Seng's, water meter reader would facilitate detection of tampering. If the projections are intact, no tampering has If the same had been destroyed, obviously the meter has been tampered.

Not all Prior Art defeats Novelty

Prior art that defeats novelty must be enabling prior art -

If prior art describes the subject matter sufficiently to enable a person of ordinary skill in the art to which said subject matter pertains, the prior art defeats novelty and the claimed invention is not patentable

Prior disclosure that destroys novelty must be enabling disclosure

Some Disclosures do not negate Novelty

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)

Yardstick for Inventive Step

SECTION 26. 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 at the time of the filing date or priority date of the application claiming the invention. (n)

The expression "inventive step" conveys the idea that it is not enough that the claimed invention be new, there must be a clearly noticeable distance between the state of the art and the claimed invention

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

An invention, in order to be patentable, must be of a kind which can be applied for practical purposes. In other words, the invention cannot be purely theoretical, it must be one that can be carried out in practice

Practical Utility

SECTION 22. Non-Patentable Inventions. - The following shall be excluded from patent protection:22.1. Discoveries, scientific theories and mathematical methods;22.2. Schemes, rules and methods of performing mental acts, playing game 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. …

Not all Inventions are Patentable

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; and22.6. Anything which is contrary to public order or morality. (Sec. 8, R.A. No. 165a)

Not Everyone Observes the Rules: Methods of Doing Business

State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F.3d 1368 (Fed. Cir. 1998) • patent on calculated mutual-fund returns •a new test of statutory subject matter for inventions involving mathematical algorithms •algorithm must be applied in a useful way, and that the transformation of data could be sufficient to qualify the algorithm as useful

Amazon.com, Inc. v. Barnesandnoble.com, Inc. 73 F. Supp. 2d 1228 (W.D. Wash. 1999) •a method and system by which a consumer could complete a purchase order for an item via the Internet using a single action (such as a mouse click) •injunction against the Barnesandnoble.com and ordered them to promptly cease using their "Express Lane" •Federal court granted injunction, Court of Appeals reversed

Other examples of such patents include:•U.S. Patent No. 5,918,214 issued to IPF, Inc., reciting a method and system for finding product and service information on the internet•U.S. Patent No. 5,931,901 issued to Robert Wolfe, describing a method for distributing music on demand via a website •U.S. Patent No. 5,855,008 issued to Cybergold, for a method of paying consumers to view advertisements on the Internet•U.S. Patent No. 5,794,207 issued to Priceline.com, with method and apparatus claims encompassing their "name-your-price" buying service

What’s Special about Genes?

Sec. 22. Non-patentable Inventions – The following shall be excluded from patent protection:22.6 Anything which is contrary to public order or morality.