Patents, Part 1 Sec. 21 Patentable Inventions – Sec. 22 Non-patentable inventions

1. Patents, Part 1 Sec. 21 Patentable Inventions – Sec. 22 Non-patentable inventions Prof. Vicente B. Amador

2. What makes an invention Patentable? 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)

3. 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 new 4. It must involve an inventive step 5. It must be industrially applicable

4. 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 …

5. … 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

6. Examples of Inventions from Time Magazine

24. 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 Inventorship Facts: 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

25. Philippines for more than one (1) year before the application for patent therefor was filed. 2. A witnesstestified 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

26. 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.

27. [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.

28. 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 / Cancellation Facts: 1. Melgajero obtained Letters of Patent No. 10657 (First Patent) for "Processing Standard Hardboard to Oil Tempered and Termite Resistant".

29. 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." • 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. • The Examiner cited the first patent as a bar to the second patent (prior art), but Brion hurdled the objection. • Brion commercially distributed such processed hardboards within Metro Manila and throughout the country without his authority or consent.

30. 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. • The following differences were established: Letters Patent No. 10657 Applying an oil mixturecontaining one liter ofrefined used motor oil and1/8 liter of lumbang, bananaor linseed oil or combination on both surfaces Letters Patent 11603 Applying an oil mixturecontaining 40% to 60% byvolume motor oil, 20% to 30% byvolume used oil, 20 to 30% byvolume polyglycol sulfate on

31. Scraping off the excessoil after letting it stand for2 to 5 minutes Spreading evenly the oilon the surface of the hard-board Drying the oil-treatedhardboard by means of solarheating 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 pleasantfinish Drying the oil-treatedhardboard under the sun for50 minutes Applying a thin layer of resin on the smoothsurface of the hardboard bymeans of a brush or cloth

32. in the oven at a temperature of 200°C to 350°C for 2 to 4 hours Applying wood glue on the edges and corners of the hardboard • Held: • 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

33. 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:

34. 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.

35. 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.

37. ‘Pharming’ with Plants

41. 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

42. 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

43. 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)

44. 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

45. 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 Utility • Facts: • 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

46. 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: Chua Cheng: 1.made of ABS(Accrylonitrile Butadiene Styrene) 2. the external shape is Hexagonal 3. comes in three (3) colors — blue, to indicate that the meter where it is attached is in order; • Mateo: • made of either polyprooylene/polyethylene polyethylene or polybutylene • 2. the external shape is circular • 3. comes in only one (1) color — black

47. 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.

48. 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.

49. 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.

50. 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