Patents Slides
Patents Slides
Patents Slides
Ownership is acquired by
occupation and intellectual creation.
1
What is IP?
Intellectual Property
describes ideas, inventions,
technologies, artworks, music and
literature, that are intangible
when first created, but become
valuable in tangible form as
products
4
Intellectual property is a set of legal
rights that results from intellectual
activity in the industrial, literary, scientific
and artistic fields; they do not apply to
the physical object but instead to the
intellectual creation as such.
5
Republic Act No. 8293
“Intellectual Property Code of the Philippines”
as amended by RA 9150 and RA 10372
took effect on January 1, 1998
• Industrial Designs
Pearl & Dean vs. Shoemart, et al. , GR No. 148222, Aug. 15, 2003
Protected IP Rights
• Layout-Designs
(Topographies) of
Integrated Circuits
•Trademarks, Service
Marks, Collective Marks
Pearl & Dean vs. Shoemart, et al. , GR No. 148222, Aug. 15, 2003
Protected IP Rights
• Geographical Indications
TRADE SECRET
• Secret
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Patentable Invention
MAKE
CREATE
INNOVATE
STATUTORY CLASSES
Of Invention/Utility Model
1. A useful machine
2. A product
3. A Process
4. Improvement of any of the foregoing
5. Microorganism
6. Non-biological or microbiological
processes
Examples of Patentable Inventions
• A useful machine
e.g. biogas digester
threshing machine
• A product
e.g. pharmaceutical product ( vaccine for bovine
coronavirus; chemical substance/composition
• A process or method
e.g. process of using column panels and roofing assembly
to build a house
AN IMPROVEMENT
• Non-biological process
e.g. A method of treating a plant characterized by the
application of growth- stimulating substance or
radiation.
• Microbiological process
e.g. A process of isolating the bacteria from the
soil….
NON-PATENTABLE INVENTIONS
1. Discoveries
2. Scientific theories
3. Mathematical methods
4. Schemes, rules and methods of
-performing mental acts
-playing games
-doing business
-programs for computers
5. Methods for treatment of the human or animal body
by surgery or therapy & diagnostic methods practised
on the human & animal body
NON-PATENTABLE INVENTIONS
6. Plant varieties or animal breeds or essentially
biological processes for the production of plants and
animals
7. Aesthetic creations
8. Contrary to public order or morality
Requirements for Patent Protection
NOVELTY REQUIREMENT
PRIOR
ART
(E.I.Dupont De Nemours And Co. Vs. Dir. Francisco, Dir.Evasco And Therapharma,
Inc., G.R. No. 174379, August 31, 2016 ]
Ideas not covered by a patent are free for the public to use and exploit.
NON-PREJUDICIAL DISCLOSURE
• Drawings, if any
• Filing fee:
Small Entity Big Entity
(Asset: P 100M or less) (Asset: More than
P100M)
Invention P 1,818.00 max. of 5 P 3,636.00 max. of 5
claims claims
Claims in excess P 152.00/claim P 303.00/claim
Request for early
publication P 5,605.50
Unity of Invention
“B” files same application “C” files same application “A” filed in the Philippines
in Japan OCTOBER 2021 DECEMBER 2021
in the Philippines on
MARCH 7, 2021
1. PROCESS FLOW FOR A GRANT OF PATENT
PUBLICATION of
Application
with Search Report after 18
months from the filing date
3. PROCESS FLOW FOR A GRANT OF PATENT
Industrial Applicability’
Novelty; and Inventiveness
Sufficiency of Disclosure,
Unity of Invention
Other Issues
Sends Communication,
if necessary (Examiner’s
ACTION)
4. PROCESS FLOW FOR A GRANT OF PATENT
Replies, if required
FINAL REFUSAL
_______
_______
APPEAL _______
GRANT (Letters Patent) _______
_______
Maintains Patent
Surrender of Patent
Patent
Cancellation of Patents
GROUNDS:
SHOP RIGHT is that where a servant during his hours of employment, working
with his master’s materials and appliances, conceives and perfects an
invention for which he obtains a patent, he must accord his master a non-
exclusive right to practice the invention.
Assignment of Rights
Written
Notarized
Recorded with IPO
Published
Remedies of Persons Deprived of Patent
Sec 67
a. substitution
b. file new application
c. request refusal of application
d. cancellation
(Declared by final court order as having the right to patent under Sec
29, on First to file rule; file within 3 months from finality of
order/decision)
Penalty:
six (6) months to 3 years imprisonment
and/or
P100,000 to P300,000 fine
Non infringement
Invalid based on prior art
Failure to meet statutory limits (laches)
Failure to meet the statutory requirements
Invalid claims
No knowledge or notice
File wrapper estoppel
Voluntary Licensing
To encourage the transfer and dissemination of
technology, prevent or control practices and
conditions that may in particular cases constitute
an abuse of intellectual property rights having an
adverse effect on competition and trade
Disputes under the jurisdiction of the Director of the
Documentation, Information and Technology Transfer
Bureau
Voluntary Licensing
Prohibited Clauses
87.1Those which impose upon the licensee the obligation
to acquire from a specific source capital goods,
intermediate products, raw materials, and other
technologies, or of permanently employing personnel
indicated by the licensor;
87.2. Those pursuant to which the licensor reserves the
right to fix the sale or resale prices of the products
manufactured on the basis of the license;
87.3. Those that contain restrictions regarding the volume
and structure of production;
Voluntary Licensing
Prohibited Clauses
87.4 Those that prohibit the use of competitive
technologies in a non-exclusive technology transfer
agreement;
87.5. Those that establish a full or partial purchase option
in favor of the licensor;
87.6. Those that obligate the licensee to transfer for free
to the licensor the inventions or improvements that may
be obtained through the use of the licensed technology;
87.7. Those that require payment of royalties to the
owners of patents for patents which are not used;
Voluntary Licensing
Prohibited Clauses
87.8 Those that prohibit the licensee to export the
licensed product unless justified for the protection of the
legitimate interest of the licensor such as exports to
countries where exclusive licenses to manufacture and/or
distribute the licensed product(s) have already been
granted;
87.9. Those which restrict the use of the technology
supplied after the expiration of the technology transfer
arrangement, except in cases of early termination of the
technology transfer arrangement due to reason(s)
attributable to the licensee;
Voluntary Licensing
Prohibited Clauses
87.10. Those which require payments for patents and other
industrial property rights after their expiration, termination
arrangement;
87.11 Those which require that the technology recipient shall
not contest the validity of any of the patents of the technology
supplier;
87.12. Those which restrict the research and development
activities of the licensee designed to absorb and adapt the
transferred technology to local conditions or to initiate
research and development programs in connection with new
products, processes or equipment;
Voluntary Licensing
Prohibited Clauses
87.13 Those which prevent the licensee from adapting the
imported technology to local conditions, or introducing
innovation to it, as long as it does not impair the quality
standards prescribed by the licensor;
87.14. Those which exempt the licensor for liability for
non-fulfillment of his responsibilities under the technology
transfer arrangement and/or liability arising from third
party suits brought about by the use of the licensed
product or the licensed technology; and
87.15. Other clauses with equivalent effects.
Voluntary Licensing
Mandatory Provisions
88.1. That the laws of the Philippines shall govern the
interpretation of the same and in the event of litigation,
the venue shall be the proper court in the place where
the licensee has its principal office;
88.2. Continued access to improvements in techniques
and processes related to the technology shall be made
available during the period of the technology transfer
arrangement;
Voluntary Licensing
Mandatory Provisions
88.3. In the event the technology transfer arrangement
shall provide for arbitration, the Procedure of Arbitration
of the Arbitration Law of the Philippines or the Arbitration
Rules of the United Nations Commission on International
Trade Law (UNCITRAL) or the Rules of Conciliation and
Arbitration of the International Chamber of Commerce
(ICC) shall apply and the venue of arbitration shall be the
Philippines or any neutral country; and
88.4. The Philippine taxes on all payments relating to the
technology transfer arrangement shall be borne by the
licensor.
Voluntary Licensing
Sec. 91. Exceptional Cases. - In exceptional or meritorious
cases where substantial benefits will accrue to the economy,
such as high technology content, increase in foreign
exchange earnings, employment generation, regional
dispersal of industries and/or substitution with or use of
local raw materials, or in the case of Board of Investments,
registered companies with pioneer status, exemption from
any of the above requirements may be allowed by the
Documentation, Information and Technology Transfer Bureau
after evaluation thereof on a case by case basis.
Compulsory Licensing
• “Innovation Patent”
• New