Sources of Patent Law in The Philippines

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Introduction
• Report on International Patent System ACCORDING TO THE WIPO COMMITTEE :

➢ The fundamental role of the patent system from an economist’s perspective is to address market failure and restore the incentives to invest
in production of knowledge. The patent system is intended to correct market failure and under-provision of innovative activities by
providing innovators with exclusive rights to prevent others from exploiting their inventions without the patentee’s consent.
i) Incentives to Innovate
ii) Disclosure of Knowledge in the Public Domain
iii) Technology Transfer, Commercialization, and Diffusion of Knowledge
➢ There are 139 member states of the PCT (as of April 10, 2008)
• GET HISTORY OF PATENT SYSTEM
MISSING- FRAMEWORK ANG GENERAL PRINCIPLES GET FROM JJ REVIEWER
Sources of Patent Law in the Philippines
• Constitution ARTICLE 12
➢ Section 6. The use of property bears a social function
i) Economic enterprises are subject to the duty of the State to promote distributive justice and to intervene when the common good
so demands.
➢ Section 14. The sustained development of a reservoir of national talents is priority of State
i) The practice of all professions in the Philippines shall be limited to Filipino citizens, save in cases prescribed by law.
• Constitution ARTICLE 14
➢ Section 10. Science and technology are essential for national development and progress and support indigenous people
➢ Section 11 The Congress may provide for incentives, including tax deductions, to encourage private participation in programs of
basic and applied scientific research
➢ Section 12. The State shall regulate the transfer and promote the adaptation of technology from all sources for the national benefit
➢ Section 13. The State shall protect and secure the exclusive rights of scientists etc. to their IPC particularly when beneficial to the
people
➢ Section 14. The State shall foster national culture based on the principle of unity in diversity
➢ Section 15. Arts and letters shall enjoy the patronage of the State.
SHOFY PATENT MEDRANO 2018

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➢ Section 16. All the country's artistic and historic wealth constitutes the cultural treasure of the nation and shall be under the
protection of the State
➢ Section 17. The State shall recognize, respect, and protect the rights of indigenous cultural communities
➢ Section 18. The State shall ensure equal access to cultural opportunities through the educational system
International Agreements Agreement on Trade-Related Aspects of the Intellectual Property Rights
Introduction of the TRIPS:
• Part I of the TRIPS Agreement sets out general provisions and basic principles of the Agreement, such as national treatment and most-
favoured-nation treatment, and exhaustion of intellectual property rights.
• Part II of the Agreement sets out the minimum standards of IP protection to be provided by each Member
• The TRIPS Agreement then adds a substantial number of additional obligations on matters where the pre-existing conventions were silent or
were seen as being inadequate. The TRIPS Agreement is thus sometimes referred to as a "Berne-plus" and "Paris-plus" agreement.
• As discussed above, the TRIPS Agreement sets out minimum standards of protection to be provided by each Member. Article 1.1 makes it
clear that Members may, but are not obliged to, implement in their law more extensive protection than required by the Agreement, provided
that such protection does not contravene its provisions.
➢ For example, Members may provide for longer terms of protection than that mandated by the TRIPS Agreement but they are not required
to do so
• A key principle in the WTO is that of non-discrimination. It applies to trade in goods, trade in services and intellectual property rights. It has
two components:
➢ national treatment - forbids discrimination between a Member's own nationals and the nationals of other Members
➢ most-favoured-nation (MFN) treatment- forbids discrimination between the nationals of other Members
• An important exception to national treatment is the so-called "comparison of terms" for copyright protection
➢ For example if Member A provides its own nationals with a copyright term of 70 years, instead of 50 years as required by Article 12 of the
TRIPS Agreement, while Member B provides for 50 years, Member A need not protect works from Member B for more than 50 years
• Exceptions can be allowed to the national treatment principle for judicial and administrative procedures – for instance, foreign applicants for
IP protection may be required to provide an address for service or a local agent in that jurisdiction
• The term "exhaustion" refers to the generally accepted principle in IP law that a right owner's exclusive right to control the distribution of a
protected item lapses after the first act of distribution. In many countries, once the item has been put on the market by or with the consent of
the right owner, the exclusive distribution right is "exhausted" (which is why the principle is referred to in some jurisdictions as the "first-sale
doctrine") and further circulation of that item can no longer be controlled by the right holder. In simple terms, exhaustion describes the fact
that once one has legitimately obtained an item incorporating protected IP, for instance a copyright-protected DVD or a patented mobile
phone, one is then free to further sell it.

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• The TRIPS Agreement gave all Members transition periods so that they can meet their obligations under it
➢ Developed countries and non-discrimination : since 1 January 1996
➢ Developing countries and economies in transition: the general transition period was five years, i.e. until 1 January 2000
➢ Least developed countries: until 1 January 2006 but for pharmaceuticals up until 2016
• The TRIPS Agreement provided special transition rules in the situation where a developing country did not provide product patent protection
in a given area of technology on 1 January 2000. This provision was especially relevant to pharmaceutical and agricultural chemical
inventions.
➢ However, in the situation where a country did not provide patent protection for pharmaceutical and agricultural chemical products
commensurate with the TRIPS provisions on scope of patentable subject matter as of January 1995, some additional transitional
arrangements apply. In accordance with the "mail-box" provision contained in Article 70.8, the country concerned is required to provide a
means by which patent applications for such inventions can be filed. These applications do not need to be examined for their patentability
until the country starts applying product patent protection in that area. However, when that time comes, the application has to be examined
by reference to the prior art that had been disclosed when the application was first filed (i.e. the invention has to be assessed whether it was
"new" as of that earliest date). If the application is successful, product patent protection would then have to be granted for the remainder of
the patent term counted from the filing date of the application.
Article 1 of the TRIPS
• Nature and Scope of Obligations

➢ Members may, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement
➢ free to determine the appropriate method of implementing this under their own legal system and practice
➢ Members shall accord the treatment provided for in this Agreement to the nationals of other Members
i) the nationals of other Members shall be understood as those natural or legal persons that would meet the criteria for eligibility for
protection under Paris agreement; Rome Convention
Summary of the Paris Convention for the Protection of Industrial Property (1883)
• The substantive provisions of the Convention fall into three main categories:
➢ national treatment,
➢ right of priority

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➢ common rules.
• Under the provisions on national treatment,
➢ as regards the protection of industrial property,
➢ each Contracting State must grant the same protection to nationals of other Contracting States that it grants to its own nationals.
➢ Nationals of non-Contracting States are also entitled to national treatment under the Convention
i) if they are domiciled or have a real and effective industrial or commercial establishment in a Contracting State.
• the right of priority in the case of patents (and utility models where they exist), marks and industrial designs.
➢ on the basis of a regular first application filed in one of the Contracting States, the applicant may, within a certain period of time (12
months for patents and utility models; 6 months for industrial designs and marks), apply for protection in any of the other
Contracting States.
➢ regarded as if they had been filed on the same day as the first application.
➢ In other words, they will have priority (hence the expression "right of priority") over applications filed by others during the said period of
time for the same invention, utility model, mark or industrial design. (3) The Convention lays down a few common rules that all
• Patents. (INDEPENDENCE PRINCIPLE) Article 4bis
➢ Patents granted in different Contracting States for the same invention are independent of each other:
i) the granting of a patent in one Contracting State does not oblige other Contracting States to grant a patent;
ii) a patent cannot be refused, annulled or terminated in any Contracting State on the ground that it has been refused or annulled or has
terminated in any other Contracting State.
• WHAT DOES THIS MEAN? Patents: Patentability in Case of Restrictions of Sale by Law The grant of a patent may not be refused, and
a patent may not be invalidated, on the ground that the sale of the patented product, or of a product obtained by means of the patented process,
is subject to restrictions or limitations resulting from the domestic law.
➢ Hofi interpretation: kapag sa domestic law bawal ung prior sale, it shall not be denied merely on that ground.
Patent Cooperation Treaty (WHY IS PCT IMPORTANT? SABI NI DDG LALUCES WE JUST GOT ACCREDITED AS THE
FIRST PCT SEARCH AUTHORITY IN ASIA. MALAMANG SI ATTY MEDRANO ANG ISA SA MGA SPEARHEAD

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• What is the effect of an international patent application?

➢ In general terms, your international patent application, provided that it complies with the minimum requirements for obtaining an
international filing date, has the effect of a national patent application (and certain regional patent applications) in or for all PCT
Contracting States.
• Who has the right to file an international patent application under the PCT?
➢ You are entitled to file an international patent application if you are a national or resident of a PCT Contracting State
• What does it mean to “claim priority” of an earlier patent application?
➢ Generally, patent applicants who wish to protect their invention in more than one country usually first file a national or regional patent
application with their national or regional patent Office, and within 12 months from the filing date of that first application (a time limit
set in the Paris Convention, see Question 2), they file their international application under the PCT.
➢ The effect of claiming the priority of an earlier patent application is that a patent shall not be invalidated by reasons of any acts
accomplished in the interval, such as another filing, the publication or sale of the invention.
• What is a PCT international search?

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➢ A PCT international search is a high quality search of the relevant patent documents and other technical literature in those languages in
which most patent applications are filed
• What is an international search report?
➢ The international search report consists mainly of a listing of references to published patent documents and technical journal articles which
might affect the patentability of the invention disclosed in the international application
• What is the PCT supplementary international search?
➢ Supplementary international search permits the applicant to request, in addition to the international search (the “main international
search”), one or more supplementary international searches each to be carried out by an ISA other than the ISA which carried out the main
international search.
• What is international preliminary examination?
➢ International preliminary examination is a second evaluation of the potential patentability of the invention, using the same standards on
which the written opinion of the ISA was based
• What are the advantages of the Patent Cooperation Treaty?
➢ (a) you have up to 18 months more than if you had not used the PCT to reflect on the desirability of seeking protection in foreign
countries, to appoint local patent agents in each foreign country, to prepare the necessary translations and to pay the national fees;
➢ (b) if your international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by any PCT
Contracting State patent Office during the national phase of the processing of the application;
➢ (c) the international search report and written opinion contain important information about the potential patentability of your
invention, providing a strong basis for you to make business decisions about how to proceed;
➢ (d) you have the possibility during the optional international preliminary examination to amend the international application, enter
into dialogue with the examiner to fully argue your case and put the application in order before processing by the various national patent
Offices;
➢ (f) you may be able to fast-track examination procedures in the national phase in Contracting States that have PCT-Patent Prosecution
Highway (PCT-PPH) agreements or similar arrangements;
➢ (g) since each international application is published together with an international search report, third parties are in a better position to
evaluate the potential patentability of the claimed invention;
➢ (j) if your invention appears to be not patentable at the end of the international phase, you may abandon the PCT application and
you will have saved the costs you would otherwise have incurred by directly seeking protection in foreign countries, appointing local
patent agents in each foreign country, preparing the necessary translations and paying the national fees.
International Conventions and Reciprocity (Section 3, Republic Act No. 8293, IP Code of the Philippines
• Section 3. International Conventions and Reciprocity

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➢ Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country
i) which is a party to any convention on IPR OR
ii) the repression of unfair competition
➢ To which the Philippines is a
i) Party of the convention OR
ii) extends reciprocal rights to PH citizens
➢ Shall be entitled to:
i) benefits to the extent necessary to give effect to any provision of such convention
ii) in addition to the rights in the IPC
Reverse Reciprocity of Foreign Laws (Section 231, IP Code)
• Section 231. Reverse Reciprocity of Foreign Laws

➢ Any
i) condition,
ii) restriction,
iii) limitation,
iv) diminution,
v) requirement,
vi) penalty or
vii) any similar burden
➢ imposed by the law of a foreign country on a Philippine national (for IPR)
➢ shall reciprocally be enforceable upon nationals of said country
Civil Code of the Philippines
• Article 712. Ownership is acquired by occupation and by intellectual creation. (REMEMBER OLDTIPS)
➢ Intellectual creation is an ORIGINAL MODE OF ACQUIRING OWNERSHIP
• Article 521. The goodwill of a business is property, and may be transferred together with the right to use the name under which the
business is conducted.
Other Laws- Intellectual Property Code & Layout designs and Integrated Circuits Acts (See other sections)
Philippine Plant Variety Protection Act

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• Plants
➢ Algae and macro fungi are plants but NOT bacteria
• Section 4. The Certificate of Plant Variety Protection shall be granted for varieties that are: (NUDS)
➢ New;
➢ Distinct;
➢ Uniform; and
➢ Stable.
• SEC. 5. Newness.
• A variety shall be deemed new if it has not been sold, offered for sale or disposed with consent of breeder for its exploitation:
➢ a) In the Philippines for more than one (1) year before the date of filing of application
➢ b) In other countries or territories in which the application has been filed,
i) all others types: for more than four (4) years or,
ii) vines or trees, more than six (6) years before the date of filing of an application.
• SEC. 6. Distinctness. —
➢ variety shall be deemed distinct if it is clearly distinguishable from any commonly known variety.
• SEC. 7. Uniformity. —
➢ to the variation that may be expected from the particular features of its propagation, it is sufficiently uniform in its relevant characteristics.
• SEC. 8. Stability. —
➢ if its relevant characteristics remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of
each such cycle.
• SEC. 36. Rights of Holders of Plant Variety Protection
➢ Production or reproduction;
➢ Conditioning for the purpose of propagation;
➢ Offering for sale;
➢ Selling or other marketing;
➢ Exporting;
➢ Importing; and
➢ Stocking for any purpose mentioned above.
• Term of protection
➢ Trees and vines: 25 years
➢ All others: 20 years

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Cheaper Medicines Act

• "Drugs and medicines"
➢ refers to any chemical compound or biological substance, other than food, intended for use in the treatment, prevention or diagnosis of
disease in humans or animals
• For non-patentable inventions please see the discussions under Novartis case
• SEC. 26. Inventive Step.
➢ 26.2. In the case of drugs and medicines, there is no inventive step if the invention results from 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."
• SEC. 72. Limitations of Patent Rights (patent holder has NO RIGHT to stop anyone from)
➢
72.1. Using a patented product which has been put on the market in the Philippines by the owner of the product
i) with regard to drugs and medicines, the limitation on patent rights shall apply after a drug or medicine has been introduced
(1) in the Philippines or
(2) anywhere else in the world by the patent owner, or by any party authorized to use the invention
ii) That the right to import the drugs and medicines contemplated in this section shall be available to any government agency or
any private third party; (PARALLEL IMPORTATION)
➢ 72.4 In the case of drugs and medicines, where the act includes testing, using, making or selling the invention including any data related
thereto, solely for purposes reasonably related to the development and submission of information and issuance of approvals by government
regulatory agencies required under any law of the Philippines or of another country (CAN USE THE DRUG FOR R&D of OTHER
DRUGS)
➢ "72.5. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in
accordance with a medical shall apply after a drug or medicine has been introduced in the Philippines.
• SPECIAL (NOT REGULAR) Compulsory license for drugs
➢ 93-A.2. A compulsory license shall also be available for the manufacture and export of drugs and medicines to any country having
insufficient or no manufacturing capacity in the pharmaceutical sector to address public health problems
➢ Granted by the IPO upon recommendation of the DOH secretary
i) The special compulsory license for the importation contemplated under this provision shall be an additional special alternative
procedure to ensure access to quality affordable medicines
ii) adequate remuneration shall be paid to the patent owner either by the exporting or importing country.

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I. Patents
A. General Principles of Patents
a. Territoriality - IP rights can be protected only if registered in a jurisdiction
b. Exclusivity - IP rights grant the holder the right to exclude others from using (TM), copying (copyright), making, using,
selling (patents)
c. Limited Rights - IP rights granted are subject to limitations on account of public policy, public health … patent rights
granted are subject to limitations on account of public policy, public health
d. Conditional - IP rights are subject to compliance with conditions/criteria for registration
… patent is granted only when application complies with the patentability criteria and validity is subject to post-grant
conditions
e. Reciprocity - A [foreign] national or a domiciliary who has a real and effective industrial establishment in a country
which is a party to any convention, treaty or agreement relating to IP rights or the repression of unfair competition, to
which the Philippines is a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to
benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to
the rights to which any owner of an intellectual property right is otherwise entitled under the IP Code.
f. First-to-File - law recognizes the first applicant who filed the application
g. Disclosure - patent applications must be published or disclosed; balances inventor’s rights to exclusive use and
exploitation of his creation, as well as the social function of intellectual property which is to democratize knowledge.
B. TRIPS AGREEMENT GENERAL PROVISIONS
Article 3 National Treatment

• Members shall accord the treatment provided for in this Agreement to the nationals of other Members.
• the nationals of other Members shall be understood as those natural or legal persons that would meet the criteria for eligibility for protection
provided for in the
➢ Paris Convention (1967),
➢ the Berne Convention (1971),
➢ the Rome Convention and the
➢ Treaty on Intellectual Property in Respect of Integrated Circuits, were all Members of the WTO members of those conventions.

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• Members may avail themselves of the exceptions permitted under paragraph 1 in relation to judicial and administrative procedures, including
the designation of an address for service or the appointment of an agent within the jurisdiction of a Member,
➢ only where such exceptions are necessary to secure compliance with laws and regulations which are not inconsistent with the provisions
of this Agreement
• Who are the subjects of this?
➢ Members of the states
➢ You need 2 nationals.
➢ Extend the benefits to Filipino Nationals to other nationals of other countries
Article 4 Most-Favoured-Nation Treatment for IP RIGHTS

• any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and
unconditionally to the nationals of all other Members.
• Exempted
➢ (a) deriving from international agreements on judicial assistance or law enforcement of a general nature and not particularly confined
to the protection of intellectual property;
➢ (b) granted in accordance with the provisions of the Berne Convention (1971) or the Rome Convention
➢ (c) in respect of the rights of performers, producers of phonograms and broadcasting organizations not provided under this Agreement;
➢ (d) deriving from international agreements related to the protection of intellectual property which entered into force prior to the entry
into force of the WTO Agreement provided it is not discriminatory
Type Coverage Requirements Term

Invention Patent Any technical solution of a 1. New (No-Prior Art) 20 years from filing date under
problem in any field of human 2. Inventive Step (Non- IPC.
activity which is new, involves Obvious)
an inventive step and is 3. Industrially applicable 20 years under TRIPS Art. 33
industrially applicable shall be (Utility)
Patentable. It may be, or may
relate to, a product, or process,
or an improvement of any of the
foregoing (Sec. 21)

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Utility Model 1. New 7 years without renewal . No

2. Industrially applicable substantive examination
INDUSTRIAL DESIGN • is any composition of lines 1. new or original (sec 5 -5-5
or colors or any three- 113)
dimensional form, 2. That are NOT 5 years protection from date of
a. dictated filing. Extendible by 2 periods of
• whether or not associated essentially by 5 years each (pay fee on 4th year
with lines or colors: technical or or 6mos after 5th year)
• Provided, That such functional
composition or form gives a considerations Under TRIPS Art. 26. The
special appearance to and can b. are contrary to duration is 10 years for industrial
serve as pattern for an public order, design.
health or morals
industrial product or
(HOM)
handicraft;
Layout-Design of Integrated • the three-dimensional A layout-design shall be shall be valid for a period often
Circuit disposition, however considered original if it is the (10) years, without renewal
expressed, of the elements result of its creator's own FROM DATE OF
intellectual effort and is not COMMENCEMENT OF
• at least one of which is an
commonplace among creators of PROTECTION.
active element, layout-designs and manufacturers
• and of some or all of the of integrated circuits at the time It commences from: on date of
interconnections of an of its creation. first commercial exploitation and
integrated circuit, or such a filed within 2 years from such.
three-dimensional disposition
Or on the filing date if not yet
prepared for an integrated
exploited.
circuit intended for
manufacture
NOTE:
Integrated Circuit
• means a product, in its final form, or an intermediate form, in which the elements,

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• at least one of which is an active element and some or all of the interconnections are integrally formed in and/or on a piece of material,
and which is intended to perform an electronic function; and
• intended to perform an electronic function
PROHIBITED ON PARALLEL FILING SEC 111

• may not file two (2) applications for the same subject (patent of utility model)
• whether simultaneously or consecutively
IP CODE PROVISIONS ON PATENTS
• Patentable Inventions
➢ See table.
Purpose of the Patent Law
Manzano v. CA
• The primary purpose of the patent system is not the reward of the individual but the advancement of the
arts and sciences.
• The function of a patent is to add to the sum of useful knowledge and one of the purposes of the patent system
is to encourage dissemination of information concerning discoveries and inventions
• It has been held that the question on priority of invention is one of fact. Novelty and utility are likewise questions of
fact.
Pearl and Dean v. • The patent system embodies a carefully crafted bargain for encouraging the creation and disclosure of new
Shoemart useful and non-obvious advances in technology and design, in return for the exclusive right to practice the
invention for a number of years.
• The patent law has a three-fold purpose:
➢ Patent law seeks to foster and reward invention;
➢ Promotes disclosures of inventions to stimulate further innovation and to permit the public to practice
the invention once the patent expires;
➢ The stringent requirements for patent protection seek to ensure that ideas in the public domain

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remain there for the free use of the public.
The Nature and Function of the Patent System – Kitsch

• This tepid endorsement reflects a literature that has seen the patent system as a trade-off between the gains of the patent incentive and the
output constraints of existing patents.
➢ In assessing the incentive effects, the literature has been troubled by the fact that the incentive is dissipated by the competition for it and
that some patents are awarded for information that would have been developed anyway.
➢ The output constraints of the system have been seen as important, first, because the transmission of information between firms has been
viewed as costless-the copying of a product available in the market involving no production know-how seems to be the implicit paradigm-
and, second, because the reward theory has suggested that valuable patents must be the important class, implicitly assumed to have a
demand curve with a negative slope.
• The conventional view of the patent system as a device that enables an inventor to capture the returns from his investment in the invention will
be called the reward theory. The reward theory is not questioned on its own terms. Rather, it is argued that the reward theory offers an
incomplete view of the functions of the patent system.
• First, a patent "prospect" increases the efficiency with which investment in innovation can be managed. As already noted, Barzel pointed out
that technological information is a resource which will not be efficiently used absent exclusive ownership.
• Second, the patent owner has an incentive to make investments to maximize the value of the patent without fear that the fruits of the
investment will produce unpatentable information appropriable by competitors.
• In addition, a patent system provides a return based upon the economic value of the technology rather than speculation on its wealth
distribution effects.
MEMORIZE
Article 27: Patentable Subject Matter
Xxx
1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all
fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.
Xxx
[5] For the purposes of this Article, the terms "inventive step" and "capable of industrial application" may be deemed by a Member to
be synonymous with the terms "non-obvious" and "useful" respectively.

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Sec. 21 IP CODE A. 27 of TRIPS

Methods for treatment of the human or animal body by surgery or therapy and diagnostic, therapeutic and surgical methods for the
diagnostic methods practiced on the human or animal body. This provision shall treatment of humans or animals;
not apply to products and composition for use in any of these methods;
Plant varieties or animal breeds or essentially biological process for the production plants and animals other than micro-organisms, and
of plants or animals. This provision shall not apply to micro-organisms and non- essentially biological processes for the production of plants or
biological and microbiological processes. animals other than non-biological and microbiological
processes. However, Members shall provide for the
Provisions under this subsection shall not preclude Congress to consider the
protection of plant varieties either by patents or by an
enactment of a law providing sui generis protection of plant varieties and animal
effective sui generis system or by any combination thereof.
breeds and a system of community intellectual rights protection:
The provisions of this subparagraph shall be reviewed four
years after the date of entry into force of the WTO
Agreement
Anything which is contrary to public order or morality. (Sec. 8, R.A. No. 165a) necessary to protect ordre public or morality, including to
protect human, animal or plant life or health or to avoid
serious prejudice to the environment, provided that such
exclusion is not made merely because the exploitation is
prohibited by their law
Discoveries, scientific theories and mathematical methods, and in the case of drugs No similar provision
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.
For the purpose of this clause, salts, esters, ethers, polymorphs,
metabolites, pure form, particle size, isomers, mixtures of isomers,
complexes, combinations, and other derivatives of a known substance
2shall be considered to be the same substance, unless they differ
significantly in properties with regard to efficacy;

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22.1. Schemes, rules and methods of performing mental acts, playing games No similar provision
or doing business, and programs for computers;
Aesthetic creations; and No similar provision
Non Discrimination clause under Art. 27.1 of TRIPS
• Discrimination under Article 27 of the TRIPS does not refer to Article 3 or 4 of the TRIPS which refer to discrimination as to nationals
and nationals of entire States. It is, rather, “discrimination as to the place of invention, the field of technology and whet her products are
imported or locally produced.”]
Special Note on the TRIPS
• provided that such exclusion is not made merely because the exploitation is prohibited by their law
➢ Example, the PH bans logging completely. A new machine to cut trees cannot be rejected for patent application simply because logging is
banned.
On Plant variety Act
• See discussion on NUDS (refer to earlier parts)
• Section 43. Exceptions to Plant Variety Protection. - The Certificate of Plant Variety Protection shall not extent to:
➢ a) Acts done for noncommercial purposes;
➢ b)Acts done for experimental purposes;
➢ c) Acts done for the purpose of breeding other varieties, except when Sections 39 and 40 apply; and
➢ d) The traditional right of small farmers to save, use, exchange, share or sell their farm produce of a variety protected under this Act, except
when a sale is for the purpose of reproduction under a commercial marketing agreement.
• Section 39. Coverage of Protection.
➢ a) Varieties which are essentially derived from the protected variety, where the protected variety is not itself an essentially derived variety
(EDV):
i) NOTE EDV: it is predominantly derived from the initial variety and characteristics conform to initial variety.
➢ b) Varieties which are not clearly distinct from the protected variety; an

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➢ c) Varieties whose production requires the repeated use of the protected variety
Section 32 and 34 of the Indigenous People’s Right Act
Section 32. Community Intellectual Rights. –

➢ ICCs/IPs have the right to practice and revitalize their own cultural traditions and customs.
➢ The State shall preserve, protect their culture and IP rights.
➢ Cannot be used without their free and prior informed consent or in violation of their laws, traditions and customs.
Section 34. Right to Indigenous Knowledge Systems and Practices and to Develop own Sciences and Technologies. –
➢ ICCs/IPs are entitled to the recognition of the full ownership and control and protection of their cultural and intellectual rights.
➢ They shall have the right to special measures to control, develop and protect their sciences, technologies and cultural manifestations.
Class Notes (From last year)

• It is difficult to regulate communal intellectual property rights of indigeous people. Thus, a special provision is made for it. Even at the
international level, there is a special efforts to protect the intellectual property rights of indigeous people
• Patent claim – sets boundaries, “patent fences.”

(1) invention – mental construct inside the mind of the inventor and has no physical substanct (abstract)
(2) embodiment – is the physical form of the invention in the real world
(3) claim – e.g. “an apparatues for …”
• Types of claims: (NOTE THAT THERE ARE ALSO use/product/method/process claims)

1. Apparatus or Device Claims –protect embodiments of an invention in the form of a physical apparatus, system or device,
e.g. rice cooker.
2. Method Claims or Process Claims – recite a sequence of steps which together complete a task such as making an article
of some sort. e.g. method of making tea.
• Discoveries, scientific theories and mathematical methods Reasons why discovery is not patentable:
➢ (a) the utility requirement is not complied with, and
➢ (b) it lacks the inventive contribution. Scientific theory and mathematical process are building blocks to inventions. Thus
patents are not granted for it. It is “nature’s library fiction.”

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Name Facts Patentable? Doctrine

Le Roy v. Tatham • The patentees state in their No. It focused on the issue of A principle, in the abstract, is a
specification, that the invention consists NOVELTY and not w/n the fundamental truth; an original
in certain improvements upon and subject matter was patentable. cause; a motive; these cannot be
additions to machinery for making The Court expressly stated that it patented, as no one can claim in
pipes of metal capable of being pressed was not considering the issue of either of them an exclusive
• What we do claim as our invention patentable subject matter: "The right. Nor can an exclusive
and desire to secure is the combination newly discovered principle, to- right exist to a new power,
of the following parts above described, wit, that lead could be forced by should one be discovered in
to-wit, the core and bridge or guide extreme pressure, when in a set or addition to those already known
piece, with the cylinder, the piston, the solid state, to cohere and form a
chamber and the die, when used to form pipe was not in the patent, and the A new property discovered in
pipes of metal under heat and pressure question whether it was or was matter, when practically
in the manner set forth or in any other not the subject of a patent was not applied in the construction of a
manner in the case." useful article of commerce or
manufacture, is patentable
NOTES: the machine or apparatus in this case was already old and obvious and the patentees merely wanted to patent a
new improvement. That improvement was basically a PRINCIPLE of physics that when incorporated to the OLD
machine would result to NEW and STRONGER products. Basically, it turns out that what the patentees wanted to patent
in this case was the PRINCIPLE which gave rise to the improvement, hence it was not patentable
Rubber-Tip Pencil • I, J. B. Blair, have invented a new and No. It was not for the • A patent may be obtained for
Company v. useful cap or rubber head to be applied combination of the head with the a useful art, machine,
Howard to lead pencils, for the purpose of pencil, but for a head to be manufacture, or composition
rubbing out pencil marks attached to a pencil or something of matter, or any new and
• Blair, however, does not limit his else of like character. Not a patent useful improvement
invention to the precise forms shown in for Rubber for it had long been

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his patent. So long as it is made as to known and has been combined • An idea itself it not patentable
encompass the pencil and present an with other substances to increase but a new device by which it
erasive surface upon the sides of the its naturally erasive qualities may be made practically
same, any form can be made.NO useful is
patent for a specific form, it was for • That is why this became an
all forms. Essential element of the IDEA. What if it was limited
patent is the idea of attachment. for a specific form?
O Reilly v. Morse • Morse applied for a patent on his No. Court disallowed the claim Whoever discovers that a
recently invented telegraph. One of on the ground that it was certain useful result will be
the claims in the patent attempted to “impossible to understand [its] produced in any art, machine,
cover “the use of the motive power extent. the claim represented an manufacture, or composition of
of the electric or galvanice current . attempt to obtain a monopoly matter by the use of certain
. . however developed for marking over the electromagnetic means is entitled to a patent for
or printing intelligible characters, force itself rather than any device it, provided he specifies the
signs, or letter, at any distances . . . which made use of the force. means he uses in a manner so
.” full and exact that anyone
skilled in the science to which it
appertains can, by using the
means he specifies, without any
addition to or subtraction from
them, produce precisely the
result he describes.
Class notes:
Class notes: During the time, the Patent system was only for registration, i.e., no requisite for novelty, inventive step,
and industrial applicability
Justice Grier Dissent - The mere discovery of a new element or law or principle of nature, without any
valuable application of it to the arts, is not the subject of a patent. But he who takes this new element or
power, as yet useless, from the laboratory of the philosopher and makes it the servant of man; who applies it
to the perfecting of a new and useful art or to the improvement of one already known, is the benefactor to
whom the patent law tenders its protection. The devices and machines used in the exercise of it may or may

20
not be new, yet, by the doctrine against which I contend, he cannot patent them, because they were known
and used before
Telephone Cases • Bell’s claim, said the Court, Yes, It was limited to certain uses
The law does not require that a
(1888) differed from Morse’s claim and purposes. discoverer or inventor, in
because Bell claimed only the order to get a patent for a
use of electric current for process, must have succeeded
transmitting the human voice in bringing his art to the
The method of and apparatus for transmitting highest degree of perfection; it
vocal or other sounds telegraphically, as is enough if he describes his
herein described, by causing electrical method with sufficient
undulations, similar in form to the vibrations clearness and precision to
enable those skilled in the
of the air accompanying the said vocal or
matter to understand what the
other sounds, substantially as set forth. It is
process is, and if he points out
contended that this embraces the art of some practicable way of
transferring to or impressing upon a current putting it into operation.
of electricity the vibrations of air produced by
the human voice in articulate speech, in a way
that the speech will be carried to and received
by a listener at a distance on the line of the
current.
Class notes: In the present case, the claim is not for the use of a current of electricity in its natural state as it comes from
the battery, but for putting a continuous current, in a closed circuit, into a certain specified condition suited to the
transmission of vocal and other sounds, and using it in that condition for that purpose.
Morse, use + no particular process = broad, void.Bell, use + particular process = valid.
a. Living Things
• Class notes: Living things are divided into plants and animals. Plants and animals may be distinguished by its reaction
to oxygen and carbon-dioxide, and by it’s mobility.
• The characteristics of living things:
o (1) use energy

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o (2) composed of cells

o (3) respond to the environment
o (4) growth
o (5) reproduction
Case Facts Patentable Doctrine

22
This human-made, genetically Yes, The micro-organism • The Court has read the term
Diamond v. Chakrabarty (1980)
engineered bacterium is plainly qualifies as patentable “manufacture” in
capable of breaking down subject matter. His claim is not accordance with its
to an unknown natural dictionary definition to
multiple components of crude
mean “the production of
oil. This bacterium does not phenomenon, but to a non-
articles for use from raw
occur naturally, and therefore, naturally occurring manufacture or prepared materials by
is believed to have significant or composition of matter — a giving to these materials
value for the treatment of oil product of human ingenuity new forms, qualities,
spills. “having a distinctive name, properties, or
character, and use combinations, whether by
patent claims were of three hand-labor or by
types: first, process claims for machinery.” Similarly,
the method of producing the “composition of matter”
bacteria; second, claims for an has been construed
consistent with its common
inoculum comprised of a carrier
usage to include “all
material floating on water, such compositions of two or
as straw, and the new bacteria; more substances
and third, claims to the bacteria
themselves • The only limit is that laws
of nature, physical
phenomena, and abstract
ideas are not patentable.
•
Thus, mircoorganisms are patentable in the PH. Thus

Chakrabarty applies in the PH. US does not have a negative list like the PH
i) Natural Products and Substances

-Naturally Occurring but Artificially Packaged

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Funk v. Kalo Kalo sought to enforce a patent on an No. The Court, however, The concurrence stated that a
inoculum containing multiple strains of invaliated the claim on the multiple-strain inoculum might
nitrogen-fixing bacteria. ground that Kalo had merely dis- be patentable, but only if the
covered a natural phenomenon particular combination of
In perfecting its inoculum, Kalo had strains resulted in
overcome an obstacle which had been The Court observed that “[t]he some useful property that did
impeding the production of multiple-strain combination of species produces not exist in each strain
inocula. Previous inocula could contain only no new bacteria, no change in the individually.
a single strain of bacteria because different six species of bacteria, and no
strains of bacteria tended to have an enlargement in their utility” and
inhibitive effect one each other when placed that “[e]ach species had the same
in the same inoculum. Kalo solved this effect it always had
problem by identifying combina-
tions of strains that that the properties of inhibition
suffered from no such or of noninhibition in the bacteria
inhibitory effect. were “the work of nature.,” and
therefore not subject to being
patented. Patents cannot issue for
the discovery of the phenomena
of nature.
Bond merely invented a commercial advantage. – packaging
Class note: Q: Compare the ruling in Funk and Chakrabarty. Both microorganism, one valid, one not.
A: In Charkabary – inventive step in the form of a non-naturally occurring organism. In Funk
– no inventive step, the bacteria has always behaved the same way
Case Facts Patentable? Doctrine

Parke Davis v. Takamine (an employee of Parke-Davis) Yes. Taking a pragmatic view of a person could obtain a patent for
Mulford obtained a patent on purified adrenaline that Takamine’s achievement, the isolation of a purified substance
was “practically free from inert and associated court upheld the claim on the even if that is a naturally
gland tissue.” ground that Takamine’s purified occurring product of nature. Even
The crucial step which Takamine discovered adrenaline was suitable for certain if it were merely an extracted
was that the base could be directly precipitated therapeutic uses whereas previous product without change, there is
by an addition of ammonia or strictly caustic forms of adrenaline were not. no rule that such are not
alkali and ammonium chloride patentable.

24
Association for Myriad Genetics was able to Sind precise No – Natural creation of a new product in a lab
Molecular location and sequence of BRCA1 and BRCA2 Yes- Synthetic exempts that product from being
Pathology v. through isolation method a product of nature. Therefore,
Myriad Genetics Before Myriad’s discovery of the BRCA1 and naturally occurring segment of gene sequences refined by
BRCA2 genes, scientists knew that heredity DNA is NOT patent eligible by synthetic processes to create
played a role in establishing a woman’s risk of virtue of its isolation from the rest molecules that do not occur
developing breast and ovarian cancer, but they of the naturally are patent eligible.
did not know which genes were associated with human genome
those cancers. GR: Laws of nature, natural
phEnomena, and abstract ideas
are not patentable
E: We must apply this well-

established standard to determine
whether Myriad’s patents claim
any “new and useful . . .
composition of matter or instead
claim naturally occurring
phenomena (diamond case)
Programs for Computer Art. 171.4 of IPC
• "computer" is an
➢ electronic or similar device having information-processing capabilities
• "computer program" is a
➢ set of instructions expressed in words, codes, schemes or in any other form,
➢ which is capable when incorporated in a medium
➢ will achieve a particular task or result
• In the Philippines Computer programs are not patentable. See 22.2 of IPC. However, they are subject to copyright
What Copyright Patent

When moment of creation moment of filing

25
Duration of Protection 50 years after death of creator x from date of filing

Requisites originality or independent novelty, inventive step, industrial
creation application
Rights not to be copied, but may be assigned, etc. right to exclude others from
manufacturing, using, selling,
offering to sell
READ: https://en.wikipedia.org/wiki/State_Street_Bank_%26_Trust_Co._v._Signature_Financial_Group,_Inc.
Case Invention Patentable Ruling Test Proposed

Gottschalk faster and more efficient No, The mathematical formula involved here Machine Transformation Test.
v. Benson mathematical procedure for has no substantial practical application But NOT sole test
transforming the normal except in connection with a digital
“decimal” type of numbers (base computer, which means that, if the

26
10) into true “binary” numbers. It judgment below is affirmed, the patent Transformation and reduction
is A procedure for solving a given would wholly preempt the mathematical of an article “to a different
type of mathematical problem is formula and, in practical effect, would state or thing” is the clue to the
be a patent of the algorithm itself.
known as an “algorithm”. It is a patentability of a process claim
PROCESS claim that does not include particular
machines. So it is that a patent
in the process of
“manufacturing fat acids and
glycerine from fatty bodies by
the action of water at a high
temperature and pressure” was
sustained in Tilghman v.
Proctor.
Parker v. Alarm limit with 3 steps: No. Limit coverage of formula +
Flook • an initial step which merely new and useful process =
measures the present value of Patentable
the process variable;
• an intermediate step which uses Discovery + meet requirements
an algorithm to calculate an of patentability = patentatble1
updated alarm limit value;
•and a final step in which the actual The process itself, not merely the
alarm limit is mathematical algorithm, must be
adjusted to the updated value. new and useful. Indeed, the
novelty of the mathematical
Use of formula for updating alarm algorithm is not a determining
limit in conversion of hydrocarbons factor at all. Whether the
algorithm was in fact known or
unknown at the time of the
claimed invention, as one of the
"basic tools of scientific and
technological work, it is treated

27
as though it were a familiar part

of the prior art.
Diamond v. claiming invention for a process Yes A “process” is “an act, or a series of Computers are patentable
Diehr for molding raw, uncured acts, performed upon the subject- when in FORMS part of a
synthetic rubber into cured matter to be transformed and reduced Patentable process. In this
precision products. This Involves to a different state or thing. If new and case, they do NOT seek patent
a computer which forms part of a useful, it is just as patentable as is a of algorithm but rather the
process piece of machinery. ...... The machinery process as a whole.
pointed out as suitable to perform the
process may or may not be new or While a mathematical formula,
patentable like a law of nature, cannot be
the subject of a patent,
respondents do not seek to
patent a mathematical formula,
but instead seek protection for
a process of curing synthetic
rubber. Although their process
employs a well-known
mathematical equation, they do
not seek to preempt the use of
that equation, except in
conjunction with all of the
other steps in their claimed
process
State Street Data processing System Transforms an existing process.
The best test for determining the
v. Signature patentability of computer Useful Concrete Test.
software remains the
mathematicalalgorithm/physical Whether or not the process will
transformation test. result into a concrete object or
something which is very useful

28
The transformation of data by a

Step One: Mathematical Algorithm
Test machine through a series of
mathematical calculations into a
• deciding whether it recites, final share price, constitutes a
directly or indirectly, a
practical application of a
mathematical algorithm (a
procedure for solving a given mathematical algorithm,
type of mathematical problem). formula, or calculation, because
Under this definition, any it produces a useful concrete and
series of mathematical tangible result - a final share
operations or calculations price momentarily fixed for
recite a mathematical
recording and reporting purposes
algorithm
and even accepted and relied
Step Two: Physical Transformation upon
Test
by regulatory authorities and in
The second step under the Freeman- subsequent trades
Walter-Abele test is determining
whether the claimed invention is
applied to or limited by physical
elements or process steps. Regardless
of whether the invention performs
mathematical operations, if it
transforms or reduces subject matter to
a different state or thing, it is statutory
under §10
Research v. digital image halftoning, which is Yes. the Supreme Court's admonition Abstract Ideas when connected
Microsoft the process of generating electronic in Bilski not to provide a rigid formula or to machine or invention and
display and print images using only definition for abstractness. Rather, "the adds something new or
a small number of pixel colors Supreme Court invited this court to beneficial is patentable Hence,
Algorithm not absolutely
develop 'other limiting criteria that ineligible for patent,.
further the purpose of the Patent Act and
are not inconsistent with its text

29
"[I]nventions with specific

Note: basically it states that In Re: bilski applications or improvements to
is NOT the absolute criteria. technologies in the marketplace
are not likely to be so abstract
that they override the statutory
language and framework of the
Patent Act"; and
The incorporation of algorithms

and formulas does not prevent
patent eligibility
In Re Bilski Process or method patent for No. manipulations simply of public or
Overturn State Street. The
managing the consumption risk private legal obligations or relationships,
Machine or Transformation
costs of a commodity sold by a business risks, or other such abstractions
Test is the Sole Test. (later
commodity provider at a fixed cannot meet the test because they are not
overturned by Bilski v.
price. physical objects or substances, and they
Kappos)
are not representative of physical objects
or substances
the claim entirely fails the
machine-or-transformation test
and is not drawn to patent-
eligible subject matter. The
claim produces "useful, concrete
and tangible results is
insufficient to establish patent-
eligibility.
Technological Arts Test – A

patent-eligible advancement
must be "technological" in nature

30
Freeman-Walter-Abele test had

two steps: (1) determining
whether the claim recites an
"algorithm" within the meaning
of Benson, then (2) determining
whether that algorithm is
"applied in any manner to
physical elements or process
steps. However, it is inadequate.
Bilski v. Same No MTT is not the sole test of
The concept of hedging, described in
Kappos patentability. Business methods
claim 1 and reduced to a mathematical
may be patented provided they
formula in claim 4, is an unpatentable
are novel, inventive, and
abstract idea, just like the algorithms at
industrially applicable.
issue in Benson and Flook. Allowing
petitioners to patent risk hedging would
MTT + New, inventive, or
pre-empt use of this approach in all
useful
fields, and would effectively grant a
monopoly over an abstract idea.
The patent-eligibility inquiry is
only a threshold test. Even if an
invention qualifies as a process,
machine, manufacture, or
composition of matter, in order
to receive the Patent Act's
protection the claimed invention
must also satisfy "the conditions
and requirements of this title
Mayo v. set forth processes embodying No. steps in the claimed processes here are
Prometheus researchers’ findings that identify not themselves natural laws but neither
correlations between metabolite are they sufficient to transform the
levels and likely harm or nature of the claims

31
ineffectiveness with precision.

Each claim recites (1) an
“administering” step—instructing a
doctor to administer the drug to his
patient—(2) a “determining”
step—telling the doctor to measure
the resulting metabolite levels in
the patient’s blood—and (3) a
“wherein” step—describing the
metabolite concentrations above
which there is a likelihood of
harmful side-effects
Alice Corp The specification provides that: (a) No. First step: Whether the patent is
v. CLS Bank the invention “enabl[es] the directed to a patent-ineligible
management of risk relating to concept. YES
specified, yet unknown, future
events;” (b) the “invention relates Second step: Search for an
to methods and apparatus, inventive concept
including electrical computers and
data processing systems applied to
financial matters and risk
management.”
the risk that only one party to an

agreed-upon financial exchange
will satisfy its obligation. In
particular, the claims are designed
to facilitate the exchange of
financial obligations between two
parties by using a computer
system as a third-party
intermediary.

32
US EU
no express prohibition on US patent law even with the America there is an express exclusion pursuant to the European Patent Code
Invents Act (2011) There is no negative list
american jurisprudence on patentability is variable Art. 52(2) computer programs with machinery patentable.
However Art. 52(3) computer programs as such not patentable
USPTO inssued guidelines on the interpretation of Bilski
decision
PHILIPPINES APPROACH - Examination Guidelines for Information Communications Technology and Computer Implemented Inventions
(2018)
• A claim directed to computer program per se is an ineligible subject matter under Section 22 of the IP Code
• To fall within categories of invention patentable under Section 21 of the IP Code as a product (article of manufacture),
➢ a claim directed to a computer program should be drafted in manner wherein the program instructions are (e.g. embodied in a
tangible computer readable recording medium/data carrier) cooperatively working with a programmable device
• Example:
➢ Claim: A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected
samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from
the sample corresponding to the given encoding process.
i) A transitory, propagating signal like the claim above likewise does not fall within meaning of the two statutory categories of
invention, namely "an invention of a product" nor "an invention of a product". The transient electric or electromagnetic
transmission is man-made and physical. It exists in the real world and has tangible causes and effects -but does not qualify as a
product (article of manufacture), or as any of the other statutory categories stipulated in section 21 of the IP Code.
ii) If a claim fall within at least one of the statutory classes, proceed to the assessment of whether the claim falls under non-
statutory classes of inventions.
• For inventions concerning the field of ICT and CII, especial considerations are conferred to the non-statutory subject matters set forth
hereunder. In the following chapters "Abstract Ideas" is used under the following definition:
➢ Abstract Ideas - includes fundamental concepts apart from the means or processes for carrying the concept to produce a technical effect;
Schemes, rules, and methods of performing mental acts xxx
• Subject Matter Eligibility Determination Test of Inventions in the Field of ICT/CI
➢ Step 1: Is the claim involving the field of ICT/CII?

33
i) No - Perform eligibility determination using criteria/method applied for other subject matters (General Criteria)
ii) Yes – Proceed
(1) A claim is said to be directed to the field of ICT/CII when it involves the following:
(a) ICT - the totality of electronic means to access, create, present and disseminate information.
(b) CII - an invention which includes computers, computer networks or other programmable apparatus whereby prima facie one
or more of the features of the claimed invention are realized by means of a program or program
➢ Step 2: Is the claim directed to a product or process within the meaning of the IP Code?
i) No - Ineligible Subject Matter
ii) Yes – Proceed
➢ Step 3: Does the claim involved an abstract idea**?
i) No - eligible subject matter, i.e. the claim has technical character (i.e. directed to technical elements and excludes feature/s relating to
an abstract idea)
ii) Yes – Proceed
➢ Step 4: Does the claim constitutes technical character wherein a technical solution to a problem is evident after weighing all the factors?
i) • No - ineligible subject matter
ii) Yes – Proceed
➢ Factors that suggest technical character and weight towards eligibility of a Product Claim:
i) A man-made tangible embodiment (device, apparatus, port, memory, processor, circuit boards, computer etc.) with a real world use
can be evidence of technical character
ii) If a computer program produces a "further technical effect" when carried out in a computer, a product which involves the computer
program shall be regarded as providing substantial contribution in carrying out the abstract idea.
(1) The normal technical effect like flow of electrical current is not sufficient.
➢ Factors that Points Against Eligibility of a Product Claim
i) The claim is a mere statement of a general concept.
➢ Factors that suggest technical character and weigh towards eligibility of a Process Claim
i) Recitation of a machine (either express or inherent).
(1) Machine implements the claimed steps
(2) used for a technical purpose and application in such a manner that implementation constitutes a technical solution
(3) The claim is more than a mere statement of a concept.
(a) If a computer program produces "further technical effect" when carried out in a computer, the process claim which is
implemented by the computer program shall be regarded as providing substantial contribution
➢ Factors that Points Against Eligibility of a Process Claim

34
i) No Recitation of a machine(either express or inherent) or the machine plays an insignificant role in the invention.
ii) Machine is generically recited such that it covers any machine capable of performing the claimed step(s).
Examples of Abstract Ideas:
• Methods of Doing Business (e.g. Concepts relating to economy and commerce; Business relations; Hedging; Processing loan information;
Managing and insurance policy; and Mitigating settlement risk)
• Idea, Concepts, Plan or Scheme, and Mental Process (e.g. Collecting and comparing known information; Comparing risk data to determine
risk level; Obtaining and comparing intangible data; Comparing new and stored information and using rules; Using categories to organize store
and transmit information; Data recognition and storage; Organizing information through mathematical correlations; and Displaying an
advertisement in exchange for access to copyrighted media
• Method of Organizing Human Activity (e.g. Arbitration; Meal planning; A mental process that a doctor should follow when testing a patient;
Computing a price for the sale of a fixed income asset and generating a financial analysis output; and Managing a game of bingo)

35
• Mathematical Methods (e.g. A mathematical formula for hedging; A formula for computing an alarm limit; An algorithm for converting
binary coded decimal to pure binary; Calculating the difference between actual and average data values; Managing a stable value protected life
insurance policy by performing calculations and manipulating the results; An algorithm for determining the optimal number of visits by a
business representative to a client; and An algorithm for calculating parameters indicating an abnormal condition)
C. Methods of Doing Business
• Business method shall mean a method of doing business wherein the term “method” in this sense shall mean an “orderly procedure or process .
. . regular way or manner of doing anything; hence, a set form of procedure adopted in investigation or instruction” (IPO DEFINITION
BASED ON BILSKI v. KAPPOS)
State Street v. Signature Financial

Facts Patentable Doctrine
implementing an investment structure Business `plans’ and `systems’ are not
No. patenting an accounting system
known as a “Hub and Spoke” system. This patentable. Whereas an apparatus or system
necessary to carry on a certain type of
system allowed individual mutual funds capable of performing a business function
business is tantamount to a patent on the
(“Spokes”) to pool their assets in an business itself. Because such abstract ideas
may comprise patentable subject matter, the
investment portfolio (“Hub”) organized as a are not patentable, either as methods of
law remains that a method of doing
partnership. doing business or as mathematical
business whether or not generated by an
algorithm, the ‘056 Patent must fail
apparatus or system does not constitute
patentable subject matter.
Patenting an accounting system necessary
to carry on a certain type of business is
tantamount to a patent on the business itself
Class notes: Court here laid down the USEFUL CONCRETE RESULT TEST. In Diamond, the used of the computer
integrated into the system is a patentable matter.
However, in State Street, the court held that the result should be something concrete or something useful. In §101 of the US
law, no mention was made of computer software or business process. This is basically judicial legislation.

36
The first step in a patent application is the patent eligibility inquiry using §22 of IPC. In another State Street
financial case,
District Court applied the 2-step test or the Freeman-Walter-Abele Test)

Step 1: Mathematical Algorithm Test (Gottshack)
Step 2: Physical Transformation Test the machine transformation
test and
But the Federal Court ruled that before even applying the 2-step test, first determine of the subject matter is patentable. Idea,
law of nature, or natural phenomenon is not patentable. As to the Business Method Exception, it has been abandoned
Amazon v. Canada
Amazon’s solution to this problem is “one- It was Patentable The Court quoted the Federal Court’s decision: including the test in
click” internet shopping. During a customer’s Progressive Games that to be patentable:
first online contact with a merchant, the 1. The method must have a practical application;
2. It must be a new and inventive method of applying skill and
customer supplies the necessary personal
knowledge; and
information, which is stored in the merchant’s 3. The method must be commercially useful.
computer. The merchant’s computer assigns
that information a unique identifier (a cookie) So, in addition to the bullets above, to be patentable, a method, process
and sends the identifier to the customer’s or art must also meet this “physicality” requirement, by:
computer, where it is stored. If the same 4. Physical existence; or
customer makes a subsequent online visit to 5. Manifestation of a discernible change or effect; or
the same merchant, the merchant’s computer 6. Some change to interpretation of the foregoing as a result of advances
in knowledge. But:
identifies the customer by means of the cookie
stored in the customer’s computer.
Physicality is not established merely by the presence of a practical
application; and if an abstract idea is an essential element of a claim
following a purposive construction, then there must be some other
essential element in novel combination with the abstract idea which
satisfies the physicality requirement.

37
EU Approach vs. US Approach
US
- no express prohibition on US Patent Law, even with the America Invents Act
- Exception is based on case law, American jurisprudence on patentability of business methods is variable.
- Bilski and State Street decisions re §100(b) defines “process” which includes “method.” Business method is patentable.
EU
- business methods are not eligible by express provisions of law
- no technical element
- do not involve inventive step
- but may patent if in conjunction with a hardware.

Pallin v. • Dr. Pallin was granted a • No pronouncement, • for prior art to anticipate under Sec. 102, a single teaching must
Singer patent for his self-healing remand to determine anticipate every element of the claimed invention
incision. if there is prior art. • Patent invalid if there is prior art by one who has not abandoned,
• Substantially self-seals suppressed, or concealed it.
• Is located 1.5 to 3.0mm
from the limbus, and Factors of obviousness in determining whether an invention would have
• Diverges from the limbus been obvious at the time it was made
from a central location to • Determine the scope and content of prior art
form a shape resembling a • Ascertain the differences between the prior art and the claims at issue
chevron or frow • Resolve the level of ordinary skill in the pertinent art
• Pallin sued Singer for patent • Secondary considerations such as commercial success, long felt but
infringement. unsolved needs, failure of others, etc., might be utilized to give light
to the circumstances
• Significant because of Section 287 amendment – wrt to a medical
practitioners of a medical activity no infringement if a related health

38
care entity with respect to such medical activity. Can get patent but
cannot file infringement case.
• What if clearly in the pallin case, the existing procedure is already being used or part of prior art.
➢ What is use of patent if you cannot enforce it?
i) You have right to exclude (but look at section 287 amendment)
ii) Commercial Instrument (subject of contract or license agreement)
iii) Use/sell/ import or offer to sell
➢ Would pallin apply? No. Since non-patentable.
➢ Section 287 Amendment – With respect to a MEDICAL PRACTITIONER'S performance of a medical activity that constitutes an
infringement shall NOT apply against the medical practitioner or against arelated health care entity with respect to such medical activity.
➢ Q: Is there still value to a patent if it is not enforceable
i) Enforcement – Right to Exclude
ii) Commercial Instrument – Subject of contract or licensing agreement; royalties
Drugs and Medicine
• Sec 22 Excluded from patent protection in the case of drugs and medicines,
o new form or new property of a known substance not result in the enhancement of the known efficacy of that substance (what
are the elements?)
o new property or new use for a known substance, or
o mere use of a known process
▪ unless such known process results in a new product
▪ that employs at least one new reactant.
• For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers,
complexes, combinations, and other derivatives of a known substance shall be considered to be the same substance,
o unless they differ significantly in properties with regard to efficacy;
NOTES:
• Does it cover only therapeutic efficacy? Not limited to therapeutic efficacy here in the Philippines. CONTRA: Novartis case not apply here
in the Philippines.
➢ Vit C
➢ Is Vit C + Salt patentable? Note this lessens hyperacidity. It may or may not be. (BUT NOTE IT IS SAME SUBSTANCE UNDER LAST
PARAGRAPH – if not fall under enumeration, then it is new form etc)

39
➢ Enhancement of Efficacy (In PH LAW) – Covers the following: (a) Bioavailability – Easily absorbed by the body (b) Chemical Stability
– Ingredients do NOT deteriorate (c) Lower neurotoxicity – Lesser side effects, higher potency of the drug (d) Therapeutic Efficacy -
Ability to produce a desired or intended result
• FRAMEWORK
➢ Is it a new form/property of a known substance?
➢ Does it result in Enhancement of Efficacy?
• How about if only 1 dose instead of 3 doses?
➢ Patent
• How about shelf life longer?
➢ No daw since therapeutic efficacy
• How about temperature?
➢ No
• Not patentable
➢ Enhancement of efficacy
• Don’t fall into the trap to equate subject matter to criteria for patentatbility.
• First case
➢ Product claim
➢ UNLESS it results to efficacy
➢ Not talking about same substance since new form
• Second Case ( new property or new use)
➢ Aspirin – originally for allergies – now for blood clot = not patentable
➢ Why is enhancement of efficacy not a factor here?
➢ Medical Use Claim
➢ Talking about same substance
➢ Property example = solubility/malleability/density
• Third Case
➢ Process claim
➢ Thought process
i) Known process?
ii) New product?
iii) New Reactant?
➢ Purification of adrenaline = 90% (existing 80%) + New reactant = Patentable Subject Matter?
i) IT MUST be a NEW reactant? Not known reactants of that matter.
➢

40
• Indian patent Law

➢ What are not inventions
i) new form of a known substance which does not result in the enhancement of efficacy of such (NOVARTIS CASE – there was a new
form but no efficacy)
ii) new property or new use for a known substance or
iii) the mere use of a known process, machine or apparatus
(1) unless such known process results in a new product or
(2) employs at least one new reactant.
➢ DIFFERENCE WITH PH LAW

i) First case – only form and not form or property
ii) Third case – OR at least employs one new reactant
Section 3(d) says that the mere discovery of a new form 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 of the mere use of a known process, machine or
apparatus unless such known process results in a new product or employs at least one new reactant, is not patentable.
• NOTES
➢ Before TRIPS India DID NOT grant product patent claims so India amended their law
• Evergreening
➢ various legal, business and technological strategies by which producers extend their patents over products that are about to expire, in order
to retain royalties from them
➢ by either taking out new patents , or by buying out, or frustrating competitors, for longer periods of time than would normally be
permissible under the law.
➢ Practices that have developed wherein a "trifling change" is made to an existing product and claimed as a new invention. The coverage
afforeded by teh alleged new invention is then used to extend the patentees' exclusive rights over the product,preventing competition

41
Novartis v. Union • Novartis’ claim for patent No. The substance that • In MEDICINE that claims to cure a disease, the
of India application was directed to Novartis sought to patent was efficiacy test can only be therapeutic efficacy –
claim as protected the final a modification of a known How well it cures.
form of “Gleevec”, the beta drug made of the raw form of • Efficacy – Ability to produce a desired or
crystalline form of imatinib intended result.
imatinib. They failed to
mesylate. • The test would depend upon the function, utility,
• This is used for the treatment show that there is a or purpose of the product under consideration.
of leukemia difference in therapeutic • Test for Enhanced Efficacy must be strict and
efficacy between the final based on properties related to efficacy, not
form of Gleevec and merely form
Imatinib. Application for • What are the differences? Solubility, Better
Patent + Label on Gleevec Flow, etc. are merely FORMS, but nothing to do
Capsules reveal that IM-BCF with "Efficacy. These forms, unless they differ
significantly in property with regard to efficacy,
is already covered by the
are expressly excluded from the definition of
Zimmerman Patent invention. Hence, the mere change of form with
properties inherent to that form would not
qualify as enhancement of efficacy of a known
substance. In other words, the explanation is
meant to indicate what is not to be considered as
therapeutic efficacy.
• As the Zimmermann patent contains no mention
of polymorphism or crystalline structure, the
relevant crystalline form that was synthesized
needed to be invented. There was no way of
predicting that the beta crystalline form of
imatinib mesylate would possess the
characteristics that would make it orally
administrable to humans without going through
the inventive steps.
• The first invention lies in selecting example 21
out of the 37 examples given in the
Zimmermann patent and then choosing
methanesulfonic acid to produce the
methanesulfonic acid addition salt of the free
base Imatinib, called Imatinib Mesylate. It was

42
emphasized by both Mr. Gopal Subramanium

and Mr. Andhyarujina, Senior Advocates
appearing for the appellant, that the
Zimmermann patent did not teach or suggest to
a person skilled in the art to select example 21
in preference to other compounds of which
examples were given in the Zimmermann
patent. Further, even if example 21 was
selected, the Zimmermann patent did not teach a
person to select one particular salt. The
Zimmermann patent did not teach a person how
to prepare Mesylate salt of example 21. Hence,
the coming into being of Imatinib Mesylate
from Imatinib in free base was the result of an
invention that involved technical advance as
compared to the existing knowledge and
brought into existence a new substance.
• First application – no form disclosed but the
process of adding salt was disclosed and there
was no mention of specific salts
• Second application – disclosed a solid form and
there was salt (Beta crystalline form)
NOTES:
• Our term of efficacy is much broader . Includes even bioavailability etc. we do not follow the ruling in Novartis that it is limited only to
therapeutic efficacy.
• Rationale for RA 9502 – more costly to buy medicine here in the Philippines
• Hence India have cheaper medicines
Patentability Criteria
Article 27.1, TRIPS Agreement (Trips does NOT have definition of novelty but we have a NEGATIVE definition of novelty)
• Patentable Subject Matter
➢ any inventions, whether products or processes, in all fields of technology

43
➢ that they are (NII)

i) new,
ii) involve an inventive step and are
iii) capable of industrial application.
➢ patents shall be available and patent rights enjoyable without discrimination as to
i) the place of invention,
ii) the field of technology and
iii) whether products are imported or locally produced.
• Section 23. Novelty-

➢ not new if it forms part of a prior art
• Section 24. Prior Art.
➢ Everything which has been made available to the public anywhere in the world,
i) before the filing date or the priority date of the application
➢ The whole contents of an application for a patent, utility model, or industrial design registration, published in accordance with this Act
i) with a filing or priority date that is earlier than the filing or priority date of the application
ii) if availed of date of an earlier application under Section 31 shall be prior art with effect as of the filing date of such earlier application
(1) Provided further, That the applicant or the inventor identified in both applications are not one and the same
• NOTES:
➢ Prior Art does it have to be public or known to the public? Yes.
➢ These are the forms of prior art:
i) Published
ii) Dissertations
iii) Oral presentations
iv) Does it require to be fixated to a medium? Can included non-written or oral.
v) Written description
vi) Oral description
vii) Internet publication yes
viii) Love letters? Depends on circumstances (i.e. if given to everyone)
➢ What is your criterion? Number of people? (NOT SOLELY)
➢ What if put in library and only one can access per given time? Yes prior art.

44
• Non-Prejudicial Disclosure (Sec. 235)

➢ If Inventor A presents the invention in a convention on Dec. 6, 2013, he has until Dec. 6, 2014 to file the application
➢ 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:
i) The inventor;
ii) A patent office and the information was contained
(1) in another application filed by the inventor and should not have been disclosed by the office, or
(2) 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
iii) A third party which obtained the information directly or indirectly from the inventor. (Section 25.1)
prior art application novel?

a,b,c,d, a,b,c,d,e yes
a,b,c,d,e a,b,c,d yes
a,b,c,d,e a,b,c,d,e no
• Negre Note: for it to be considered prior art, there must be a one is to one correspondence between the patent application and prior art
disclosures/claims.
• NOVELTY AND PRIORITY (FROM LAST YEAR NOTES)
➢ New novelty statute goes into effect march 16, 2013 – old statute continues to matter, litigation on older-style patents will continue into 2020s
➢ Basic inquiry – is what you’re claiming in the patent known or published in the world at the relevant time? At the time of the application
➢ 3 questions –
i) Is what you’re comparing the patent against relevant? (will talk about next class and the one after)
ii) Is the timing of the prior reference sufficient that the prior reference predates the current invention? (big change with new patent act)
iii) Does reference cover the subject matter of the patent? (today – law of anticipation)
➢ 35 USC 102 – Anticipation
i) Basic rule – to anticipate, a single prior art reference must disclose every element of the claim
ii) If it does, then the patent is invalid
iii) (this is the same standard we use for infringement – “that which infringes, if later, would anticipate, if earlier”)
iv) -importance of claim chart – however, the entirety of the prior art matters, not just the claims (if it is a patent)
Class notes:
• Standard
➢ Anyone in the world NOT need to be PHOSITA
• What is the process?

45
➢ Search all patent literature such as WIO, EPOQUEnet (ABSOLUTE NOVELTY). Anywhere else in the world. There is a higher
standard in place.
• PCT guidelines
➢ Evaluate elements of invention
➢ See if it forms part of prior art
➢ Assess whether each and every element or step of the claimed invention was explicitly or inherently disclosed
➢ Determine the differences (similarity of elements)
• Paper clip =/= paper clip with plastic coating
• Pencil (round shape) =/= pencil with edged corners
• Paper clip with C shape =/= Paper clip with S shape
• How many prior art should we be looking at to establish novelty?
➢ Only 1 prior art at a time. Look at the single CLOSEST prior art.
➢ But look at all the prior art anywhere in the world

Vargas v. • Vargas holder of No. the plow of the plaintiff • Burden of proof of infringment
Yaptico the patent for the is not different from the lies with the plaintiff but the grant
vargas plow sued native plow, except in the of the patent is usually presumed
Yaptico for material, in the form, in that the patent is valid. Burden is
producing spare the weight and the grade shifted to defendant to show
parts. of the result, the said otherwise
differences giving it • There must have been no public
neither a new function nor use of the invention prior the
a new result distinct from patent application
the function and the result • a single instance of public use of
obtained from the native the invention by a patentee for
plow. Several testimonies more than two years before the
prove that the Vargas plow date of his application for his
has been publicly used for patent will be fatal to the validity
more than 2 years prior to of the patent when issued."
its patent Application. • The novelty and prior use of the
invention is subject to judicial
determination.
• Class notes: in novelty you do not

46
talk about functionality or a new

result. But in this case the court
talked about that because this is a
patent infringement case so look at
the novelty and invention.
Frank v. • Frank has patent on No. Thus, it cannot be said • The hemp stripping machine of the
Kosuyama new and useful that they invented the plaintiffs does not constitute an
1
improvement in “spindle” as it was already invention on the ground that it
hemp stripping known in 1909 or 1910. lacks the elements of novelty,
machines. They could have not also originality and precedence.
• prayed for a invented the stripping knife • In fact, plaintiffs, before obtaining
judgment against as they were already used in their patent, had already publicly
the defendant to different stripping machines used the same kind of machine for
order him to refrain before their machine some months ago
immediatelyfrom appeared. They could have
the manufacture of not also invented the fly What is prior art in this case?
machines similar wheel because that part is so • The form is prior use just like the
1
IMPORTANT FACTUAL DIFFERENCES
First. Under Utility Model 5269, the unit is a substantially cubical casing with a window at its rear and upper corner fitted with s lightly inclined control panel, while
the miyata equipment is a substantially rectangular casing with panel vertically positioned.
Second. Under Utility Model 5269, the cubical casing has a vertical partition wall defining a rear compartment and a front compartmen t serving as a speaker baffle, while
the miyata equipment has no rear compartment and front compartment in its rectangular casing; it has only a front compartment horizontally divided into 3 compartments like a 3-storey
building, the 1st compartment being a kit, the 2nd also the speaker, and the 3rd are kits.
Third. Under Utility Model No. 5269, a transistorized amplifier circuit with an echo section wired in at least 2 printed circuit boa rds is placed inside the rear compartment of the
casing and attached to the vertical partition wall, the printed circuit board having 1 amplifier and 1 echo, while in the miyata equipment the amplifier is mainly IC (Integrated Circuit) -
powered with 8 printed circuit boards almost all of which are IC controlled, with 1 amplifier with power supply, 1 main tuner, 1 equalizer (3-band), 1 IC controlled volume control, 1 echo
IC, 1 tape pream, 1 instrument and 1 wireless microphone.
Fourth. Under Utility Model 5269, 4 printed circuits are placed inside the compartment of its casing attached to the vertical partition wall, while in the miyata, the 7 printed circuit
boards (PCB) are attached to the front panel and 1 attached to the horizontal divider.
Fifth. Under Utility Model 5269, there are various controls mounted on the control panel of the casing, while in miyata, the various controls are all separated from the printed circuit
boards and the various controls are all attached thereto.
Sixth. Under Utility Model 5269, a loud speaker fitted inside the front compartment of the casing is connected to the output of the main audio amplifier section of the transistorized
amplifier circuit, while in miyata, there is no other way but to use 2 loud speakers connected to the amplifier.
Seventh. Under Utility Model 5269, a tape player is mounted on the top wall of the casing, while in miyata, 2 tape players are used mounted side by side at the front.

47
essential in every machine vargas case

from time immemorial.
Lastly, they could not have
invented the pedal to raise
the knife
Del • del Rosario alleged Yes, entitled to protection • The Patent Law expressly
Rosario v. that he was a due to utility model. There acknowledges that any new model
CA patentee of an audio was failure to overturn the of implements or tools of any
equipment and presumption of validity of industrial product even if not
improved audio patent. Witness said that he possessed of the quality of
equipment only know of product but invention but which is of practical
commonly known did not present the (prior art) utility is entitled to a patent for
as the sing-along product nor the utility model.[10] Here, there is no
system or karaoke advertisements thereof. dispute that the letters patent
• He described his issued to petitioner are for utility
sing-along system • Compare the prior art models of audio equipment.
as a handy multi- and this case • Under Sec. 55 of The Patent Law
purpose compact a utility model shall not be
machine which considered new if before the
incorporates an application for a patent it has
amplifier speaker, been publicly known or publicly
one or two tape used in this country or has been
mechanisms, described in a printed publication
optional tuner or or publications circulated within
radio and the country, or if it is substantially
microphone mixer similar to any other utility model
with features to so known, used or described
enhance ones voice, within the country.
such as the echo or
reverb to stimulate
an opera hall or a
studio sound, with
the whole system
enclosed in one

48
cabinet casing.
• Del Rosario sued
respondent for
infringement for
producing the same
machines.
Manzano • Manzano filed and Yes, failure to prove by • The element of novelty is an
v. CA action for petitioner that there was essential requisite of the
cancellation of prior art. Scrutiny of patentability of an invention or
patent granted for a brochures readily reveals discovery. If a device or process
gas burner that the utility model (LPG has been known or used by others
registered in the Burner) is not prior to its invention or discovery
name of respondent anticipated. Not one of the by the applicant, an application for
Melecia Madolaria various pictorial a patent therefor should be denied;
representations of burners and if the application has been
clearly and convincingly granted, the court, in a judicial
show that the device proceeding in which the validity of
presented therein is identical the patent is drawn in question,
or substantially identical in will hold it void and ineffective
construction with the • a utility model shall not be
aforesaid utility. considered new if before the
application for a patent it has been
CLASS NOTES: ➢ publicly known or
• The brochure did NOT ➢ publicly used in this country or
have date ➢ described in a printed
publication or publications
circulated within the country,
or
➢ if it is substantially similar to
any other utility model so
known, used or described
within the country
• For anticipation to occur, the prior
art must show that each element is

49
found either expressly or

described or under principles of
inherency in a single prior art
reference or that the claimed
invention was probably known in
a single prior art device or
practice.
• Even if brochures anticipated the
prior art, The dates when they
were distributed to the public were
not indicated and, therefore, they
are useless prior art references.
Standard for Anticipation

• Identity Requirement
In Re Robertson
Facts Patentable? Doctrine
• Both claim 76 (the appellant’s Yes. • Anticipation under 35 U.S.C. § 102(e) requires that "each
patent claim) and Wilson’s patent and every element as set forth in the claim is found, either
involve fastening and disposal expressly or inherently described, in a single prior art
systems for diapers reference.
• Wilson does not provide a • If the prior art reference does not expressly set forth a
separate fastening means to be particular element of the claim, that reference still may
used in disposing of the diaper anticipate if that element is "inherent" in its disclosure
• The Wilson patent does not • To establish inherency, the extrinsic evidence "must make
expressly include a third clear that the missing descriptive matter is necessarily
fastening means for disposal of present in the thing described in the reference, and that it
the diaper, as claim 76 requires would be so recognized by persons of ordinary skill."
• The Board's theory that the two • The mere fact that a certain thing may result from a given
fastening devices in Wilson were set of circumstances is not sufficient.
capable of being intermingled to • “Inherency,” said the court, “may not be established by
perform the same function as the probabilities or possibilities. The mere fact that a certain
third and first fastening elements thing may result from a given set of circumstances is not

50
in claim 76 is insufficient sufficient

• the Board's analysis rests upon
the very kind of probability or
possibility—the odd use of
fasteners with other than their
mates
All elements must be in the prior art in order for an invention to infringe.
• Disposable diaper with fastening and disposal system (in both present application and prior art)
Elements Robertson’s claim Prior art (Wilson)
Closure member with first X X
fastening element
Landing member with second X X
fastening element engageable with
first fastening element
Disposal means with… X X
…third fastening element X Nope (according to majority), yes
engageable with first fastening (according to concurrence)
element
Other things X ?( according to majority), no
(according to concurrence)
• Prior art – says you can roll up diaper, but there is no separate third fastening element; can use the first two fastening means to roll it up
• Issue – majority says that Robertson’s claim requires separate fastening element, concurrence says no
• (if Wilson were invented later – Wilson would not infringe because it doesn’t have the third element)
• You can actually get anticipation from fields other than the field where the invention is from – see In re Schreiber (popcorn/oil dispensing tip)
• Inherent invention – can be anticipated by something if the prior art inherently discloses your invention, even if your invention isn’t
claimed or described fully
• US DISCCUSSION
➢ The key question is whether the Wilson diaper teaches a “third fastening element” that attaches to the “first fastening element.” That
question cannot be answered simply by comparing the language in Wilson’s patent to the claim language in Robertson’s application

51
because different language could describe the same thing. Instead, the correct comparison is between Robertson’s language and all of
Wilson’s disclosure.
• Class notes:
➢ What are the limitations of the prior art?
i) Only 2 fasteners
ii) Form of the diaper
“That which infringes, if later, would anticipate if earlier.”
• Accidental and Unknown anticipation and the doctrine of inherency
Schering Corp v. Geneva

• Petitioner owns two patents (’233 No. 716 is • Because inherency places subject matter in the public
and ‘716) anticipated domain as well as an express disclosure, the inherent
• 233 covers the prior art patent of by 233. disclosure of the entire claimed subject matter
the antihistamine loratadine and it anticipates as well as inherent disclosure of a single
did not cause drowsiness feature of the claimed subject matter. The extent of the
• ‘716, which is at issue, covers a inherent disclosure does not limit its anticipatory effect.
metabolite of loratadine called • In the context of accidental anticipation, DCL is not
descarboethoxyloratadine (DCL) formed accidentally or under unusual conditions
a chemical process occurs in the when loratadine is ingested. The record shows that
patient’s body that forms the new DCL necessarily and inevitably forms from loratadine
metabolite. under normal conditions. DCL is a necessary
• The record shows that the consequence of administering loratadine to patients
metabolite of the prior art • In general, a limitation or the entire invention is inherent
loratadine is the same compound and in the public domain if it is the "natural result flowing
as the claimed invention. from" the explicit disclosure of the prior art
• the record shows that a patient • this court's precedent does not require a skilled artisan to
ingesting loratadine would recognize the inherent characteristic in the prior art that
necessarily metabolize that anticipates the claimed invention.”
compound to DCL • The accidental production of a substance generally does
not anticipate any later patent on that substance.
• “Anticipation,” said the court, “does not require the

52
actual creation or reduction to practice of the prior art

subject matter; anticipation requires only an enabling
disclosure.”
• NOTES:
➢ Inherent in the properties and in the product or its
characteristics.
• Schering Corp v. Geneva Pharmaceuticals (CAFC 2003) – p. 384 – If patenting a metabolite (or something else) would essentially take
something upstream out of the public domain, it may not be patented, as it is anticipated by the public domain thing.
➢ Schering produced Claritin – compound was loretadine; extremely valuable, but was expiring; Schering then gets a patent on the first
metabolite of loretadine, DCL (“evergreening”)
➢ Held – second patent was anticipated by the first patent – first patent necessarily involved DCL because all of the loretadine would become
DCL; during pharmaceutical testing, they saw there was DCL in the body. →Distinguishes Seaborg – on quantity term
➢ Also – by patenting DCL you would prohibit public from practicing loretadine – this is against policy, removing something from public domain
➢ the court stated that a mere possibility of inherency is not sufficient for anticipation. (Citing Schering Corp.).
• That which infringes if later, anticipates if earlier
➢ BEFORE---FILING DATE --- AFTER
• If I1 filed after FD, if it will infringe then it is anticipation.
• Enablement Standard for Anticipation
In Re Hafner
• appellant filed two German No, it was • A foreign patent application may anticipate an invention
applications, one relating to already during a subsequent application for an American patent
certain fulvene derivatives and anticipated. • NOTE: In manzano, it must be within the country BUT IP
the other to certain code says anywhere in the world.
cyclopentadiene derivatives. By • a disclosure lacking a teaching of how to use a fully
appellant's admission, neither disclosed compound for a specific, substantial utility or of

53
German application contained how to use for such purpose a compound produced by a
any disclosure of utility, such fully disclosed process is, under the present state of the law,
disclosure having been entirely adequate to anticipate a claim to either the product
unnecessary in Germany or the process and, at the same time, entirely inadequate to
• But now , holder filed a patent in support the allowance of such a claim.
the US. Board ruled that applicant • In other words, there can be anticipation in disclosure in one
is not entitled to benefit of patent even if such disclosure was not sufficient to be
priority date since there was no granted patent protection.
disclosure in German Patent • However, when considered in light of the specific
Application provisions of § 102, and § 112 as it has been interpreted, it
• Timeline is seen to be untenable — § 112 provides that the
➢ 1959: Klaus Hafner files specification must enable one skilled in the art to "use" the
German patent applications on invention whereas § 102 makes no such requirement as to
new chemicals; no use is an anticipatory disclosure.
described. • to be entitled to the benefits provided by that section, the
➢ 1960: Hafner files in the U.S.; invention disclosed in the "previously filed" application
no use is disclosed. must be described therein in such a manner as to
➢ 1961: Hafner’s applications satisfy all the requirements of the first paragraph of § 112
are published in Germany, and as the courts have construed it, including that which
another publication describes requires the description to be sufficient to enable one skilled
the chemicals. in the art to use the same for a legally adequate utility
➢ 1964: Hafner refiles in the • Note: Hafner’s published German applications qualify as
U.S. after the PTO rejects his prior art under the statutory bar provisions of 102(b)). The
first application for failing to 1961 publication enables for purposes of anticipation even
satisfy § 112 because no use is though it does not enable for purposes of § 112.
disclosed for the chemicals.
• In re Hafner (CCPA 1969) – p. 391 – “The standard for what constitutes proper enablement of a prior art reference for purposes of
anticipation…differs from the enablement standard under 112.”
➢ a disclosure inadequate for enablement may be sufficient to anticipate.
➢ a disclosure of a product does not necessarily anticipate a process
➢ Why do things have to be novel?
i) incentive to create new works – granting a monopoly on existing works doesn’t incentivize anything
➢ US DISCUSSION:

54
i) The key point of this case is that enablement for anticipation does NOT require a known use, even though section 112 does. If this
asymmetry between 112 and the enablement standard for anticipation purposes did not exist, Hafner would have received a patent.
ii) The holding in Hafner is consistent with theory (2) set forth above—that anticipation does not require any appreciation of the subject
matter (or its usefulness) but merely requires that the claimed subject matter had some significant existence prior to the applicant’s date
of invention. Thus, anticipation prevents any “backsliding” for the public domain
➢ Threshold for enabling disclosure in US is HIGHER than the one in Germany. Even if it does NOT meet the standards of sufficiency of
• Known by others
National Tractor Pullers Association v. Watkins

• Watkins sought to defend his Yes. NO prior art • Only publicly disclosed
patent on a tractor pulling sled knowledge may serve as prior art
• The Association contended that Class notes: • The court upheld Watkins’s
a device designed by three other • Prior knowledge must be prior patent because the tablecloth did
inventors (the Huls device) public not constitute public disclosure of
anticipated Watkins’s sled the Huls device.
• outlined in a diagram drawn on a • “The [now-lost] tableclothing
tablecloth, but it could not drawings, “said the court, “were
produce the tablecloth itself. never available to the public.
• 1963-64: Huls, Harms and Sage They were drawn on the
allegedly draw the invention at underside of the tablecloth and
issue on the back of a tablecloth remained in the kitchen of Mr.
in Huls’ mother’s kitchen. Huls mother’s home and were
• Sometime later: Watkins invents never printed nor otherwise
and patents. published before being destroyed.
• Sometime later: Watkins invents • Prior knowledge as set forth in 35 U.S.C.
and patents. § 102(a) must be [*66] prior public
knowledge, that is knowledge which is
reasonably accessible to the public.
DISCUSSION FROM US SOURCES: Significance for Trade Secrets: Students should be aware of one significant implication of limiting

55
§ 102(a)’s knowledge requirement to public knowledge: Existing trade secrets that are known and used by
others can be patented if independently discovered by another inventor
• Used by Others
Rosalie v. Barroid
• Horvitz have a patent for No. Prior art, Trial Court found that • An unsuccessful experiment which is
prospecting for oil or other Gulf Oil had been using such process later abandoned does not negative
hydrocarbons for more than a year out in the field. novelty in a new and successful device.’
• taking a number of samples, And was already anticipated by an Novelty is ascribed to new things,
treating each sample, to cause experiment that was unsuccessful. without regard to the successful and
entrained or absorbed continued use of old things.
hydrocarbons therein to evolve • Rosaire claims that Gulf Corp.’s
as a gas, quantitatively measuring experiment was unsuccessful and
them they had abandoned their
invention.
• Teplitz conceived of the idea of
extracting and quantitatively • Unsuccessful experiment, later
measuring entrained or absorbed abandoned cannot invalidate
gas from the samples of rock, subsequent patent and does not
rather than relying upon the free negate novelty in that. Though
gas in the samples. this proposition is true the court
held that nevertheless, the
• Plaintiff contends that defendant
existence and operation of a
began infringing in 1947.
machine, abandoned after its
• COUNTER: prior art
completion and sufficient use to
anticipated the two patents;
demonstrate its practicability, is
second is that work carried on
evidence that the same ideas
by one Teplitz for the Gulf Oil
incorporated in a later
Corporation
development along the same line
• The relevant timeline for this case
do not amount to invention.
is:
• If the prior machine does not
➢ 1935 to early 1936: Gulf Oil
anticipate, it would not have done
uses the method at issue. Gulf

56
Oil later stops using the so if it had been neither

method. unsuccessful nor abandoned.
➢ Later in 1936: Horvitz Novelty is ascribed to new things,
conceives of the method. He without regard to the successful
later patents it and assigns the and continued use of old things.
patent to Rosaire. Correlatively, it is denied to old
➢ Gulf Oil Corporation things, without regard to the
employees had used the circumstances which caused their
prospecting method "in the earlier applications to be
field under ordinary unsatisfactory or their use to be
conditions without any abandoned
deliberate attempt at • The Fifth Circuit held that where
concealment or effort to “work was done openly and in the
exclude the public and without ordinary course of the activities
any instructions of secrecy to of the employer,” the work
the employees performing the qualifies as a prior use for
work." purposes of § 102(a) even though
Gulf had discontinued use of the
method and had not made any
“affirmative act to bring the work
to the attention of the public at
large.
Why doesn’t this court follow National Tractor Pullers? Even though Gulf Oil’s practice does not seem much better known than the
tablecloth drawings in National Tractor Pullers, the court found that Gulf Oil’s prior practice constituted “public use” based on at least three
factors:
• 1) Because Gulf Oil has benefited by using its prospecting method in its business, there is at least some public benefit from Gulf Oil’s
use.
• 2) From a fairness perspective, it would seem unfair to enjoin Gulf Oil from practicing a method that the company has already used in
a nonsecret manner. Even though the patent is not being enforced here against Gulf Oil
• 3) Information about Gulf Oil’s method was accessible to the public in the sense that its employees were not prohibited from discussing
the company’s method. Those employees can spread information about the method to coworkers who can then spread the knowledge
to subsequent companies where they work.

57
SRI International v. Internet Security

• SRI International, Inc. (“SRI”) Yes. NOT Prior art even if there are published Important Argument of SRI:
owns U.S. Patent owns 4 papers of SRI in its website. Disputes over • The prior art qualification for the
patents All four patents relate to patent validity were focused on the existence Live Traffic paper centered on the
cyber security and intrusion of two papers on SRI's website. EMERALD public accessibility of a document
detection 1997 and Live Traffic Paper. Applying these available on a FTP server. SRI
principles, the Court noted that the ’212
• outlined a computer-automated method argued that the FTP site was not
patent and the EMERALD paper included
for network monitoring and analysis, publicly accessible because one
similar sections explaining statistical
for detecting spyware, computer would need the complete FTP
detection and identical figures
monitoring address to view the paper.
• Thus, the LOWER Court concluded that
• SRI attempted to license these Additionally, the posting was
the 1997 EMERALD paper with its
patents to Symantec and Internet not indexed and could only be
similarities in technical scope and
Security Systems (ISS) description to the specification of the ’212 found by an ordinary skilled user
(Defendants). Something went patent met the enablement hurdle. through “dumb luck”.
wrong with the negotiations and • FINAL DECISION: this court finds that • The Court explained that the standard for
SRI just decided to file a lawsuit the pre-publication Live Traffic paper, enablement of a prior art reference for
against Symantec for though on the FTP server, was not purposes of anticipation under section 102
infringement catalogued or indexed in a meaningful way differs from the enablement standard
and not intended for dissemination to the under section 112. It observed that
public.” “[s]ignificantly,... anticipation does not
• Thus, the Court found that there was no require actual performance of
suggestion that people who had suggestions in a disclosure. Rather,
previously accessed the FTP site to anticipation only requires that those
obtain papers would unprompted—look suggestions be enabled to one skilled in the
there for an unpublicized paper with a art.”
relatively obscure filename • a] given reference is ‘publicly
accessible’ upon a satisfactory
Class Notes: showing that such document has
• It is in the server. And sufficiently been disseminated or otherwise
accessible to the employees of the made available to the extent that
corporation. Hence Atty. persons interested and ordinarily
skilled in the subject matter or art

58
Medrano does not agree with this exercising reasonable diligence,

case. can locate it
• Unlike the posters at a
conference, however, existence
of the Live Traffic paper was not
publicized or put in a location in
which it could be viewed by
interested people.
• But unlike Klopfenstein, the
Live Traffic paper was not
publicized or placed in front of
the interested public and “was
most closely analogous to
placing posters at an
unpublicized conference with
no attendees.”
In Re Hall
• Hall was seeking for reissuance No. Barred by prior art. The Library replied : • Relying on In re Bayer, appellant
of his patent application. Our dissertations, thus also the Foldi argues that the Foldi thesis was
• Foldi thesis was written in dissertation, are indexed in a special not shown to be accessible
Germany for Foldi’s doctorate dissertations catalogue, which is part of the because Dr. Will's affidavits do
degree, available at Freiburg general users' catalogue. In the stacks they are not say when the thesis was
likewise set apart in a special dissertation indexed in the library catalog and
University.
section, which is part of the general stacks.
• which included the appendix, a do not chronicle the procedures
copy of the dissertation “1,4- CLASS NOTES:
for receiving and processing a
alpha-Glucanlukohydrolase ein thesis in the library. In Bayer, it
What do you do with this now? In line with the
amylotylis ches Enzym …” SRI ruling? was shown that it took months
1) What if the thesis are not indexed? before the thesis could be made
2) NOTE that in tractor case, 3 people was available to the public.
NOT sufficient. For ateneo law, is it • The statutory phrase "printed
already sufficient to be public? Remember publication" has been interpreted
that you need to have an ID for ateneo law to give effect to ongoing
library. Remember there was NO advances in the technologies of
data storage, retrieval, and

59
restriction to access in SRI case but in this dissemination.

case you have restriction to access • It is resolved on a case-to-case
3) Note that in the SRI case, look at the basis.
intention of the publication (in that case it • The proponent of the publication
was NOT intended to be disseminated to bar must show that prior to the
the public.) but in this case the thesis is put critical date the reference was
in the library.
sufficiently accessible, at least to
the public interested in the art, so
that such a one by examining the
reference could make the claimed
invention without further
research or experimentation
• Because there are many ways in
which a reference may be
disseminated to the interested
public, "public accessibility" has
been called the touchstone in
determining whether a reference
constitutes a "printed publication"
bar
In Re Klopfenstein
• Carol Klopfenstein and John • NO. The ones below constituted • the key to establishing that a
Brent applied for a patent (‘950 prior publication already. reference constitutes a "printed
patent application) for a method • the applicants, together with their publication" is if a.) it is
of preparing animal food made colleague M. Liu, presented a disseminated by the
out of soy cotyledon fiber (SCF) printed slide presentation (“Liu distribution of copies and/or;
aimed to lower the serum Reference”) b.) indexed in a library or
cholesterol levels but raise the • It was displayed continuously for database. They base their
HDL cholesterol levels two and a half days at the AACC arguments on these cases: In re
meeting Cronyn, In re Hall, MIT v. AB
• the same slide presentation was Fortia, and In re Wyer
put on display for less than a • In Hall: The court determined
day at an Agriculture that a thesis filed and indexed in

60
Experiment Station ("AES") a university library counted as

The “Liu Reference” presented to a "printed publication." But the
the AACC and at the AES in 1998 court did not only rely on the fact
disclosed every limitation of the that it was indexed, more so, it
invention disclosed in the '950 highlighted that: "public
patent application accessibility" has been called the
touchstone in determining
whether a reference constitutes a
"printed publication"
• Thus, throughout case law, public
accessibility has been the
criterion by which a prior art
reference will be judged. Courts
rely on distribution and indexing
as proxies for public accessibility
but not to the exclusion of all
other measures of public
accessibility. In other words,
distribution and indexing are not
the only factors to be considered
a "printed publication".
• The factors relevant to the facts of
this case are
➢ the duration of the exhibit
➢ the expertise of the target
audience
➢ reasonable expectations that
the material displayed would
not be copied
➢ the simplicity or ease with
which the material displayed
could have been copied. (in
the age today, where you can
just search in your phone, is

61
this still relevant?)
• NOTES FROM LAST YEAR

➢ prior art does not always need to be distributed through formal publication to count as “published”. Various factors determine if something is
published widely enough.
i) Reference comes from poster presentation at a conference - Printed out slides and put on posterboard, available for 3 days. This counts as
something that’s printed, because the slides were posted and available for everybody to see/copy/write notes about.
ii) Just standing up and talking doesn’t count
iii) (DISPUTABLE) What about talking, using powerpoint slides? No – transient slides don’t count
iv) Why should it matter if you distribute slides or not?
v) Ephemeral presentation doesn’t enable?
(1) IN THE US: In considering this defense, the Second Circuit found that even a publication with an ephemeral existence, such as a
catalogue, could constitute a “printed publication” for the purposes of foreclosing novelty
(2) IN THE PH: [disputable] no.
➢ Much easier to admit printed presentation into evidence
➢ Publication – basic standard is “public accessibility”.
i) “accessibility” –
ii) Duration of display
iii) Consider distribution and indexing
iv) Can other person obtain the info
v) What can a person do with the info?
➢ An obscure publication is accessible, even if nobody would know where it is (indexing is important) (see discussion of Cronyn and Hall)
i) In re Cronyn: Where a public billboard describing all limitations of an invention was displayed to the public for months was
neither “distributed” nor “indexed” but was still found to be “printed publication” for having been sufficiently accessible to the
public
ii) In Hall: The court determined that a thesis filed and indexed in a university library counted as a "printed publication."
➢ “public”
i) What factors here suggest that it was sufficiently public?
(1) out in the open
(2) specialist audience (that would be more receptive to it)
(3) no request for nondisclosure (or maybe a norm of nondisclosure [Aluminum Co. v. Reynolds])
(4) Generally context sensitive
• Later cases hold that a single copy is enough if the copy is indexed by subject (In re Hall) but not if indexed by author and kept in a
shoebox (In re Cronyn).

62
• Non-Prejudicial Disclosure Section 25.

• The disclosure in the application during (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 disclosed by:
i) The inventor;
ii) A patent office and the information was contained (NOTE: the information WAS PUBLISHED BY MISTAKE; Note
18 months confidential from filing)
(1) in another application filed by the inventor and should not have been disclosed by the office, or
(2) 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;
iii) A third party which obtained the information directly or indirectly from the inventor.
➢ "inventor" at the filing date of application, had the right to the patent. (n)
Notes In JGP Santos Reviewer that are Important:
SOURCES OF LAW FOR PATENTS

• Constitution
• International Agreement
• IP Code
• PATENT – Exclusive right granted for an invention, product, or process that provides a new way of doing something or offers a new
technical solution to a problem
• UTILITY MODELS – Technical solution to problem in any field of human activity which must be NEW and INDUSTRIALLY
APPLICABLE (not inventive)

63
General Principles:
• Territoriality – Protected only in jurisdiction registered in
• Exclusivity – Grant holder the right to exclude others from making, using, selling, offer to sell
• Limited Rights – Granted for limited period subject to limitations on account of public policy and public health
• Conditional – Subject to compliance with criteria for registration and post registration requirements
• Reciprocity – Contracting party to a convention or treaty will extend reciprocal rights to a national or domiciliary of another contracting
party. (N or D that has a real and effective est.)
• First-to-File – Law recognizes the first applicant who filed the application
• Disclosure Principle
➢ Quid Pro Quo – State grants protection in exchange for disclosure of the technology, process, or produc
➢ Others may use the knowledge and subsequently enhance or improve thereon, in the process leading to more knowledge being
developed thus, greatly contributing to progress and development
PATENT CLAIM – Theory of Patent Claim

• Claims mark the boundaries of the protection provided by a patent, function like a technical description of a land title
• "Patent Fences" – Define the scope of protection provided by a patent
• Patent Agent – Provide large scope, cover as much as possible but clear enough to be able to enforce the patent

64
TYPES OF CLAIMS
• Apparatus or Device Claims – Protect embodiments of an invention in the form of a physical apparatus, system, or device.
• Method Claims or Process Claims – Recite a sequence of steps which together complete a task such as making an article
IRR: In fact, there are only two basic kinds of claim, viz,
• claims to a physical entity (product, apparatus) and
➢ The first basic kind of claim ("product claim") includes a substance or compositions (e.g. chemical compound or a mixture of
compounds) as well as any physical entity (e.g. object, article, apparatus, machine, or system of co-operating apparatus) which is
produced by man's technical skill. Examples are: "a steering mechanism incorporating an automatic feed-back circuit...” "a woven
garment comprising...” "an insecticide consisting of X, Y, Z"; or "a communication system comprising a plurality of transmitting
and receiving stations".
• claims to an activity (process, use).
➢ he second basic kind of claim ("process claim") is applicable to all kinds of activities in which the use of some material product for
effecting the process is implied; the activity may be exercised upon material products, upon energy, upon other processes (as in
control processes) or upon living things (see however IV, 3.4 and 4.3).
Principle of Non-Discrimination –
• Must be able to enjoy Patent rights w/o discrimination as to:
➢ (a) Place of invention
➢ (b) Field of Technology
➢ (c) Whether the products are imported or locally produced
• NOTE – Under the TRIPS Agreement, it is not required to impose prohibition on medical treatments and plant varieties. TRIPS provide
merely a minimum standard.
Q: Can they give plant variety patent protection AND sui generis protection at the same time?
• YES – Art. 27 provides "By any combination thereof…
Q: What about micro-organisms?

• NO. Microorganisms are the building blocks of science and research; hence, no protection. (JGSP notes)
• BUT NOTE RULE 201 of IRR: Patentable inventions relate to: A product such as a a machine device, xxx a MICRO ORGANISM.
➢ As expressly stated in Sec.22.4, 2nd sentence, the exclusion from patentability referred to in the preceding paragraph does not apply
to microorganisms and non-biological and microbiological processes.

65
➢ The term "microbiological process" is to be interpreted as covering not only industrial processes using micro-organisms but also
processes for producing new micro-organisms, e.g. by genetic engineering. The product of a microbiological process may also be
patentable per se (product claim).
➢ A micro-organism can also be protected per se (Sec.22.4, 2nd sentence). The term microorganism in general includes not only
bacteria and yeasts, but also fungi, algae, protozoa and human, and possibly animal and plant cells, i.e. all generally unicellular
organisms with dimensions beneath the limits of vision which can be propagated and manipulated in a laboratory, including plasmids
and viruses.
Notes Under Funk Bros And Diamond:
Notes on IRR of ICT/CPI in the Philippines

• COMPUTER PROGRAM AS SUCH OR IN ITSELF = Not patentable
• CP + hardware/device (system) = Not patentable
• CP + Hardware/Device + Technical effect = PATENTABLE
• CPs Not Patentable; Why? - Abstract creations and lacking in technical character. They derive the technical character elsewhere.

66
SAMPLEX NOTES:
Theory of the Patent Claim
• Patent Claims- Define the patent’s scope of protection and Set the boundaries of the invention. Represent the written approximation
of the abstract inventive concept created by the inventor.
• An “invention” is a mental construct inside the inventor’s mind & has no physical reality.
• An “embodiment” of an invention is a specific physical form of the invention in the real world
• The “claims” must protect at least an “embodiment” of the invention – but the best claims protect the “invention” – such that all
physical embodiments infringe the claims
• Nonobviousness is, in this sense, "the final gatekeeper of the patent system” – IN the Philippines NON-OBVIOUSNESS is
INVENTIVE STEP. (Hotchkiss v. Greenwood)
• Bedrock principle??
• Patent search???
• TSM test is the Teaching, Suggestion and Motivation test. It simply means, when analysing the obviousness of an invention while comparing it
with prior art, these are the three questions that have to be asked:
➢ Is the prior art quoted instrumental in teaching the reader the method of producing the invention?
➢ Does the prior art or any of its contents suggest any method of producing the invention in question
➢ Does the prior art talk about problems related to a particular technology motivating an invention in a particular manner?
• Reciprocity v. Reverse reciprocity
POST MIDTERMS
• Inventive Step (Section 26, IP Code as amended by RA 9502)

➢ SEC. 26. Inventive Step. - 26.1. An invention involves an inventive step if:
i) having regard to prior art,
ii) it is not obvious to a person skilled in the art at the time of the filing date or priority date
➢ "26.2. In the case of drugs and medicines, there is no inventive step
i) if the invention results from the mere discovery of a new form or new property of a known substance (FPKE)
(1) which does not result in the enhancement of the known efficacy of that substance, or
ii) the mere discovery of any new property or new use for a known substance, (PUK) or
iii) the mere use of a known process (UKP)
(1) unless such known process results in a new product that employs at least one new reactant
Class Notes:

67
• who is a person ordinarily skilled in the art?

➢ Masters degree ba or PhD?
i) What if he does not have a degree but then engaged in research in that field?
• Person skilled in the art – ordinary practitioner aware of what is common knowledge in the art at that date and have access to prior art
as well as normal means and capacity for routine work and experimentation (WIPO PCT guidelines)
➢ Don’t just look at educational background but rather if he has a research or knowledge in the art.
• Obvious – does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art
➢ Does not involve exercise of any skill beyond that is expected of a person skilled in the art
➢ INVENTIVE STPE- FINAL GATEKEEPER of the patent system
➢ Concerns with technical inquiry
➢ Like it STILL PERFORMS the same function
i) Is added functionality necessarily imply inventive step? NO.
• How does novelty differ from obviousness?
➢ Novelty – 1:1 correspondence with a single prior art. Look for closest prior art
➢ Obviousness – 2 or more prior arts. Take them ALL and put tehm together and if the result is logical or plainly follows from that.
• Inventive step: 2 or more prior art ahd if it is obvious to PHOSITA
➢ Mere change in material/ new use of machine / combined use of implements = obvious
• Problem solution approach
➢ Objective test to asses
i) Determine the closest prior art
ii) Establish the technical problem to be solved by the invention with respect to prior art
iii) Decide if it is obvious
• TEST FOR INVENTIVE STEP: what would a PHOSITA do when faced with that objective technical problem and being aware of the
state of the prior art?
• Patent examiners: considered PHOSITA
• For inventive Step
➢ Search for prior art
➢ Look at problem
➢ Prior art 1 + prior art 2 = invention – NOT inventive
• NOTE GOLF BALL
➢ If increase flight of ball it MIGHT be inventive.
Aguas v. De Leon

68

• complaint for infringement of Yes. It was innovative. Some of the • Any invention of a new and
patent against Domiciano A. novel features of De Leon's useful machine, manufactured
Aguas improvements are the following: product or substance, process,
• for new and useful critical depth, with corresponding or an improvement of the
improvements in the process of easement and lip width to such foregoing, shall be patentable.
making mosaic pre-cast tiles, degree it leaves the tile as thin as Where improvement in tile
• Contention: the plaintiff is 1/8 of an inch at its thinnest making is inventive and
neither the original first nor sole portion; ideal composition of different from old process of
inventor of the improvements in cement and fine river sand, among tile making, improvement is
the process of making mosaic other ingredients that makes patentable
pre-cast tiles it has been used in possible the production of tough • He has improved the old
the PH for so long and durable, but at the same time, method of making tiles and
thin and light wall tiles; the pre-cast articles which were
engraving of deep designs in such not satisfactory
a way as to make the tiles • He has overcome the problem
decorative, artistic and suitable for of producing decorative tiles
wall ornamentation; and the fact with deep engraving, but with
that the tiles can be mass produced sufficient durability.
in commercial quantities and can
be conveniently stockpiled,
handled NOTES:
• What is functional improvement?
RESULT: The production of tough Lighter and stronger and cannot
and durable wall tiles, though thin be subjected to engraving
and light • Compare the new and old art.
• Was it inventive?
• SIDE NOTE: The only
significant difference between De
Leon's mould and that engraved
by Aquino for Aguas is that, De
Leon's mould turns out tiles 4 x 4
inches in size while Aguas's
mould is made

69
• to 4 and 1/4 inch by 4 and 1/4-

inch tile
Graham v. John Deere
• Graham had Chisel plows, as NO. Already disclosed by Prior Art. • Section 103 required a determination
they are called, were developed If free-flexing is the crucial of the following questions of fact to
for plowing in areas where the difference above the prior art, then resolve the issue of obviousness:
ground is relatively free from it appears evident that the desired ➢ the scope and content of the prior
rocks or stones. Originally, the result would be obtainable by not art;
shanks were rigidly attached but boxing the shank within the ➢ the differences between the
graham worked on a spring confines of the hinge. The only claimed invention and the prior
clamp other effective place available in the art; and
• This involves a combination of arrangement was to attach it below ➢ the level of ordinary skill in the
old mechanical elements, as a the hinge plate and run it through a prior art
device designed to absorb shock stirrup or bracket that would not • What standard does the Graham
from plow shanks as they plow disrupt its flexing qualities. Court apply?
• Under § 103, the scope and content of
through a rocky soil,
the prior art are to be determined;
preventing damage to the plow The Court held the patent invalid
differences between the prior art and
• Problem with the old plow: As as obvious on the ground that the
the claims at issue are to be
the shank pivoted under strain, features in the Graham patent were
ascertained; and the level of
it would slide against and present in a similar structure
ordinary skill in the pertinent art
damage the spring rod. created by Glencoe, which was
resolved. Against this background,
• The patent at issue in Graham prior art that was not before the
the obviousness or nonobviousness of
claims an invention that solves examiner during prosecution the subject matter is determined.
these problems by (1) moving Such secondary considerations as
the hinge plate above the shank commercial success, long felt but
so that the shank does not touch unsolved needs, failure of others,
the fixed upper plate and (2) etc., might be utilized to give light
securing the shank to the hinge to the circumstances surrounding
plate by a nut and bolt the origin of the subject matter
arrangement at the forward end sought to be patented. As indicia of
and a stirrup at the rear. obviousness or nonobviousness, these
inquiries may have relevancy.

70
Lecture Notes:
• You need a shock absorber
• Why was the 2nd patent violated?
What was the prior art? (the Glencoe
Patent)
• What about the free flexing?
• What factors do you consider?
(MOST IMPORTANT THING)
scope, difference, skill, secondary
considerations. THE FINAL STEP
IS to determine whether subject
matter claimed is obvious.
• Graham v. John Deere (USPQ 1966) - p. 638- based on the factors of scope/content of prior art, the differences between the prior art and the
patent at issue, and the level of ordinary skill in the prior art, it was obvious to make the improvement present in the patent at issue compared to
the prior art.
➢ Changing position of plow shank and hinge plate to allow for greater flexing of plow shank when plow chisel hits a rock (see page 650 for pic,
or powerpoints)
➢ Factual inquiry – 3 things to examine
i) Scope/content of prior art
ii) Differences between prior art and patent at issue
iii) Level of ordinary skill of the prior art
➢ Based on these facts, ask if a PHOSITA could have made the leap from prior art to the invention – mixed question of law and fact – judgment
call.
➢ Danger of hindsight bias – easy to take what you have and say “sure, this makes sense, they could have figured it out”
i) Once you figure out prior art, differences, and level of skill, THEN what?
➢ First test: Teaching, suggestion, and motivations test (TSM) – articulated by CAFC in early 80s, then followed until 2007 when SC decided
KSR
Obviousness
• Does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art.

71
• Invention is effectively covered by multiple inventions, not just one (or by just one invention, modified by what a PHOSITA would have known to
do)
• Under what circumstances can you assume that an inventor would take all the pieces and put them together?
• What is rationale?
➢ Gets at technical innovativeness, not commercial innovativeness; it is possible that a tiny improvement could make something marketable
➢ Don’t want to encourage trivial stuff
➢ Commercial novelty – market should produce enough incentives
➢ Ex: Selden patent - attaching combustion engine to car chassis – patent wasn’t necessary to bring out the invention (“inducement standard” – if
invention is obvious, inducement of a patent is not necessary; would be invented anyway)
• Nonobviousness is a higher bar because it is focused on technical triviality, NOT economic triviality.
• The Selden case illustrates the importance of nonobviousness. Selden’s claims cover nearly every car on the road. Selden’s combination may have
been novel, since gasoline engines were relatively new, and Selden may have been the first to mount one on a car. However, the development was
trivial – many individuals independently thought to use gasoline engines for cars. Granting a patent would impose an unnecessary output
constraint and decrease royalties to inventors
Hotchkins v Greenwood
• patent for a new and useful Not patentable. All these were well known, • The test was that: if no more ingenuity and
improvement in making door and in common use, and the only thing new skill was necessary to construct the new
and other knobs of all kinds of is the substitution of a knob of a different knob
clay and porcelain. Such as: material from that heretofore used. “the than was possessed by an ordinary
➢ Making the knobs of either clay or improvement is the work of a skillful mechanic acquainted with the business,
porcelain mechanic, not that of the inventor the patent was
➢ Fitting them for application to doors, void, and this was a proper question for the
locks, and furniture, and various other At the time of the alleged invention, both jury. The mere substitution of one
uses, porcelain knobs and the dovetailed material for another does not make a
➢ Having the cavity in the knob in structure for attaching a shank to knobs of non-obvious invention. – obviousness is
which the screw or shank is inserted metal or wood were in the prior art. The defined by ingenuity or skill possessed by
➢ Such is fastened to the knob, largest at only difference between the prior art and an ordinary mechanic acquainted with
the bottom and in the form of dovetail, the claimed invention was the combination the business
or wedge reversed. of those two elements. • Establishes a doctrine of “invention” as a
➢ A screw is formed therein by pouring general requirement of patentability. The
in metal in a fused state. decision uses as a benchmark of invention
the “ingenuity or skill … possessed by an

72
• The plaintiffs explained that while clay ordinary mechanic acquainted with the
knobs have existed before, and that business.
shanks and spindles have been attached • What standard does the Hotchkiss
this way before, they have never been articulate for determining whether an
fastened in such way as plaintiffs have innovation is patentable? The Court holds
and that it takes skill and invention to that: “[U]nless [there is proof of] more
attach in this mode to a knob of potter’s ingenuity and skill … than were possessed
clay by an ordinary mechanic acquainted with
the business, there was an absence of that
degree of skill and ingenuity which
constitute essential elements of every
invention. In other words, the
improvement is the work of the skilful
mechanic, not that of the inventor.” Is
this different from an “obviousness”
standard?(ORDINARY MECHANIC
TEST)
Lecture Notes:
• What is the ordinary mechanic
test?
• What was the advantage of the
new device? Cheaper and better.
Is this argument tenable? No.
• ASKED IN CLASS :DISSENT Justice Woodberry dissented He considered the "ordinary mechanic" test incorrect for determining whether
the claimed invention was patentable, and insisted that the test of its being patentable was, if the invention was new, and better and cheaper
than what preceded it.
• Invention is a doorknob made of clay and porcelain – cavity is filled by metal to make a screw
➢ Prior art –
i) 1. doorknobs made of clay
ii) 2. doorknobs made of metal, with a screw mechanism
➢ Held - obvious to take the design of the metal doorknob, with the screw, and apply it to the clay doorknob?

73
i) PHOSITA is objective, not clear that this standard is, however after Hotchkiss – court struggled with this – how do you determine that an
invention is inventive enough?
➢ First set of cases – dealt with how the invention occurred (like Atlantic works v. Brady) – if inventor used trial and error, this is obvious
In Re: Peterson
• Mr. Peterson filed U.S. Patent No. Prior art’s range was 12% Chronium while • There is a prima facie case of obviousness
Application 08/365,392, which is peterson’s claim was 14%. Peterson failed to when the claimed range and the prior art
directed to a nickel-base single- show that the addition of rhenium results in range do not overlap but are close enough
crystal super alloy used in the unexpected improvements in alloy strength. such that one skilled in the art would have
manufacture of industrial gas The Shah prior art does not discourage the use expected them to have the same
turbine engines exposed to high of rhenium as an ingredient in the alloy- properties.
making, it merely provides a preferred alloy • Another way of overcoming the
temperatures
free from rhenium. prima facie case of obviousness
• Includes rhenium which increase
mechanical strength without is by showing that the prior art
reducing its hot corrosion teaches away from the claimed
resistance invention.
• Peterson claims: a skilled artisan • We therefore conclude that a prior
would not have assumed based art reference that discloses a
from the prior art that using the range encompassing a somewhat
claimed amounts of rhenium and narrower claimed range is
chromium would improve alloy sufficient to establish a prima
strength – this is so because the facie case of obviousness.
prior art only states a broad range
and sets rhenium as an optional Lecture Notes:
ingredient • What is technical problem?
Strengthen alloy.
• The normal desire of scientist or
artisans to improve… (LOOK
FOR THIS QUOTE IN THE

74
ORIGINAL CASE)
IN RE HARRIS and WAHL

• Application claiming a nickel- No. There was substantial overlap. • The ultimate determination of
based superalloy for turbine obviousness under 35 U.S.C. §
engine blades that experience 103 is a legal conclusion based
high temperatures. It on underlying findings of fact.
consisted of nickel and 12 There is the substantial
other alloys defined by a evidence standard.
range of weight percentages • A prima facie case of
obviousness arises when the
ranges of a claimed
composition overlap the
ranges disclosed in the prior
art
• Harris points to Peterson to
advance his position that
Yoshinari’s ranges are too
broad . Peterson discussed that
a disclosed range might
become too broad to teach a
subset range
• In Peterson, the ranges of the
prior art were simply too
broad. Some of them did not
even have an upper limit,
unlike here. Also, the patent
sought in Peterson was exact
in amount (“around 9.5%”)
instead of the range we have
here.
• With respect to unexpected
results, PTO disagrees with

75
Harris. While there was an 30-

40% improvement, Court says
that it does not represent the
“difference in kind” needed for
unexpected results.
Lecture Notes:
• Note that these 2 cases only talk
about presumptions! If the
presumption do not apply, the
application can still be
OBVIOUS in light of in re
Peterson!
Summary.
Range of Invention withint range of prior art – prima facie obvious

Range of Invention outside range of prior art but CLOSE to range of prior art – prima facie obvious
Range of invention outside of range of prior art and FAR from it – test whether or not it is obvious to a PHOSITA! Not automatic non-
obvious.
Scope and Content of Prior Art
Cas Facts Patentable? Ratio

e
In • Apparatus for and Method of Not patentable. While the patent to The proper way to apply the 103
Re Opening, Filling and Closing Rhoades does not disclose the use of obviousness test to a case like this
Win Thermoplastic Bags an air blast, it does disclose the use of is to first picture the inventor as
slo • relating to an apparatus for a clamping pin for maintaining a working in his shop with the prior
w opening and filling flexible plurality of bags in position while the art references— which he is
plastic bags by supplying jet of uppermost bag is being opened and presumed to know— hanging on
removed. The patents to Hellman and the walls around him
air to uppermost bag of a stack
Rhoades would render obvious to one

76
of bags to open it to permit skilled in the art a modification of the Section 103 requires us to
insertion of article Gerbe apparatus wherein pins would be presume full knowledge by the
• An article is then inserted, provided passing through openings in inventor of the prior art in the
either automatically or the bag flaps in the manner claimed by field of his endeavor. We see no
manually, through the mouth appellant. The pins in appellant's ‘hindsight reconstruction’ here,
which is kept open by machine and the rod in Hellman but only selection and application
continuing the blast. The bag perform the very same function— bag by the examiner of very pertinent
holding during air blast— almost in art. That is his duty
is then pulled longitudinally in
the very same way.
a direction parallel to and
Lecture Notes:
away from the air blast One then notes that what applicant
• Then it was sealed and heated • The court referred to
Winslow built here he admits is visualization of prior
• Claims 1 and 3 require but basically a Gerbe bag holder having art, how was it
one depending pin. Remaining air-blast bag opening to which he has
presented? Represented
claims 11-18 are patterned added two bag retaining pins. If there
in a way .. “inventor in
after certain claims in a patent were any bag holding problem in the
Gerbe machine when plastic bags a room and the prior art
of one Altman
were used, their flaps being gripped is in his room”…. The
only by spring pressure between the proper was to apply
top and bottom plates, Winslow would (look for this in case)
have said to himself, ‘Now what can I
do to hold them more securely?’
Looking around the walls, he would
see Hellman's envelopes with holes in
their flaps hung on a rod. He would
then say to himself, ‘Ha. I can punch
holes in my bags and put a little rod
(pin) through the holes. That will hold
them. After filling the bags, I'll pull
them off the pins as does Hellman.
Scoring the flap should make tearing
easier.’

77
Hazeltine • Robert Regis filed an Not patentable. a co-pending Moreover (in relation to the
Research, application for a patent on a new patent application constitutes carlson patent) When a
Inc. v. and useful improvement on a part of “prior art..” patent is issued, the
Brenner microwave switch disclosures contained in
• There were disclosures in the the patent become a part
Carlson and Wallace patents of the prior art as of the
which constitutes prior art time the application was
• The Carlson patent had been issued on 20 filed and not at the time
December 1949 (eight years prior Regis' the patent is issued
application) while the Wallace patent
application was pending since March Lecture Notes:
1954 and had only been granted on 5 • When was the
February 1958 (43 days after Regis filed invention filed? NOTE
his application). the DATES
• Regis – Dec 23 1957,
Rejected June1959
• Carlson – 1959
• In Ph law, confidential
until 18th month ang
application to protect
the inventor
• Up until the 18th month
the effect is as if the
patent office did not
receive it.
Iron Grip • Iron Grip manufactured a Not patentable. there is prima In determining obviousness, we
Barbell weight plate with three facie obviousness because employ the four-part test set forth
Company Inc elongated handle openings for ‘015 patent of three grips falls in Graham vs John Deere. Aside
vs USA easier grasp within the range of the prior from that, For instance, the court
Sports Inc • weight plates with one art of one, two and four grips. has held that the following
secondary factors are relevant
elongated grip (‘140 patent). In the case at bar, the range
indications of nonobviousness:
with two elongated grips (‘502 was not disclosed in just one
commercial success (of the patent in
patent) other prior art with four prior art but in multiple prior
openings art references. Under the

78
• Iron Grip sued for circumstances of the case issue), satisfaction of a long-felt
infringement, while USA however, this distinction does need and copying
Sports countered that ‘015 not make any difference. The
patent was invalid as obvious prior art suggested that a Where an invention is
in light of prior art larger number of elongated contended to be obvious
grips are beneficial based upon a
Lecture Notes: combination of elements
• If you were counsel of iron grip, Since Iron Grip failed to present across different
what theory will you forward? evidence of commercial success, references, there must be
• What were the prior art? satisfaction of a long-felt need or a “suggestion, motivation
copying, it can be concluded that there is or teaching to those
• There is a rebuttable
no objective evidence to rebut the strong skilled in the art. This
presumption --- if you have showing of obviousness based on prior
justifications that it teaches requirement prevents the
art. use of of the inventor’s
away from that prior art.
disclosure as blueprint for
• Novelty is FACTUAL.
piecing together the prior
art to defeat patentability -
the essence of hindsight
Iron Grip argues that USA
Sports’ act of copying their
invention manifests
nonobviousness.
While copying is a
relevant consideration,
not every competing
product is evidence of
copying otherwise every
infringement suit will
confirm nonobviousness.

79
NOTES LECTURE FOR HAZELTINE CASE:

• First scenario: Wallace filed ahead of regis and Wallace application is still covered by 18th (Wallace covered )- wallace
application is NOT prior art since it is not yet published.
• Second scenario: Wallace application filed 19 months prior of regis, and it was published – Wallace is prior art.
• Note: Until the application is published you do not have the rights in the patent.
• NOTE:
➢ Invention – once published you have rights but you cannot bring infringement until you have patent
➢ Utility model and Industrial Design – date of publication is date of registration?? (CHECK THIS)
• IRR RULE 204(b) --- The whole contents of earlier application for a patent… (GET THIS FROM CODE)
➢ If it is the same inventor, it is covered by the principle of non-prejudicial disclosure.
Subtests of Non-Obviousness
QUIZ START
Case Facts Patentability Doctrine

KSR a driver wishing to be NOT patentable, it was obvious. Yes. In order to determine the
INTERNATIO closer or farther from it obviousness of a patent claim, the
NAL CO. V. must either reposition The court found “little difference” courts must consider the prior art, the
TELEFLEX himself in the seat or between the prior art’s teachings differences between the prior art and
INC. move the seat, both of and claim 4: Asano taught the subject matter of the claim, and the
which can be imperfect everything contained in the claim ordinary skill level required of a
solutions for smaller except using a sensor to detect the person in the subject matter of the
pedal’s position and transmit it to a claim before considering secondary
drivers in cars with
computer controlling the throttle.
deep footwells. This factors and the test for teaching,
prompted inventors to suggestion, or the patentee"s
KSR provided convincing evidence
design and patent that mounting an available sensor motivation.
pedals that could be on a fixed pivot point of the Asano
adjusted to change pedal was a design step well within
their locations. the grasp of a person of ordinary The district court then had to apply the
• Teleflex (Plaintiff) skill in the relevant art and that the TSM test and found Defendant
sued KSR benefit of doing so would be satisfied it because the industry
(Defendant) for obvious. Its arguments, and the inevitably led to combining electronic

80
patent infringement record, demonstrate that the sensors and adjustable pedals in
based on an Engelgau patent’s claim 4 is addition to prior art suggesting the
electronic sensor that obvious. combination. The court of appeals
was added to an reversed on the ground that the district
existing pedal design The court then held that KSR court was not strictly applying the
by satisfied the TSM test, reasoning (1) TSM test.
Defendant. Defenda the state of the industry would lead
nt argued the inevitably to combinations of The appellate court examined the
Plaintiff"s patent electronic sensors and adjustable
purpose of the two pedal designs and
claim was invalid pedals, (2) Rixon provided the basis
determined they were different.
for these developments, and (3)
because the addition
Smith taught a solution to Rixon’s In determining whether the subject matter of a
was obvious.
chafing problems by positioning the patent claim is obvious, neither the particular
sensor on the pedal’s fixed structure, motivation nor the avowed purpose of the
which could lead to the combination patentee controls. What matters is the objective
LECTURE NOTES: of a pedal like Asano with a pedal reach of the claim. If the claim extends to what
• What is the position sensor. is obvious, it is invalid under §103. One of the
improvement here? ways in which a patent's subject matter can be
The electronic sensor proved obvious is by noting that there existed at
pedals. the time of invention a known problem for
• What are the tests? which there was an obvious solution
• TSM- Ordinary encompassed by the patent's claims.[1]
mechanic – However, when the standard was applied to the
facts before the Court, the Court stated:
The proper question to have asked was whether
a pedal designer of ordinary skill, facing the
wide range of needs created by developments in
the field of endeavor, would have seen a benefit
to upgrading [a prior art patent] with a sensor
In Re The invention at hand Not patentable, it is obvious. (1) APPELLANTS USED

Kubin involves the isolation and TECHNIQUES TAUGHT BY
sequencing of a human Prior Art: VALIANTE AND SAMBROOK -
gene that encodes a ppellants themselves provided in their

81
particular domain of a Sambrook: provides detailed disclosure that their isolation were
protein. Encoding of instructions on cloning done by standard
NAIL which activates materials and techniques. biochemical methods
Natural Killers to fight
tumors and virus. Mathew reference discloses MATTHEW’S TEACHING DOES
a cell surface receptor NOT TEACH AWAY FROM
They claim a genus of protein called 2B4 COMBINING ITS TEACHINGS
isolated polynucleotides “expressed on all NK ... WITH VALIANTE Mathew
polynucleotides encoding cells.” “exemplifies how the cDNA encoding
a protein that binds 2B4, the mouse version of Valiante's
CD48 and is at least 80% Valiante: the Valiante p38 expressed on all NK cells, can be
identical to amino acids reference discloses the very isolated and sequenced.”
22–221 of SEQ ID protein of appellants'
NO:2—the disclosed interest—“p38” as per ... “Obvious to try” has long been
amino acid sequence for Valiante. Moreover, held not to constitute obviousness. A
the CD48– Valiante cites to the very general incentive does not make
binding region of NAIL same cloning manual, obvious a particular result, nor does
Sambrook, cited by Kubin the existence of techniques by which
and Goodwin those efforts can be carried
out.
reasonable expectation of
success” for obtaining a OBVIOUS TO TRY; WHEN
polynucleotide within the APPROPRIATE (IMPORTANT!!!)
scope of claim 73, which, This court observed that an
for obviousness obviousness finding was appropriate
under § 103 is all that is where the prior art contained
required detailed enabling methodology for
practicing the claimed invention, a
suggestion to modify the prior art to
LECTURE: proper obvious practice the claimed invention, and
if there is DETAILED evidence suggesting that it would be
enabling methodology. successful.
What is required is
REASONALBE expectation THUS, THERE ARE PROPER AND

82
of success. Skilled IMPROPER APPLICATIONS OF

ARTISAN test. Prior art THE OBVIOUS TO TRY TEST;
disclosed all essential HERE ARE
elements THE ERRONEOUS SITUATIONS
(EXCEPTIONS)
FIRST CLASS: What would have

been “obvious to try” would have been
to vary all parameters or try each of
numerous possible choices until one
possibly arrived at a successful
result,
SECOND CLASS: What was

“obvious to try” was to explore a new
technology or general approach that
seemed to be a
promising field of experimentation
Perfect Web The 400 patent claims Not Patentable, it was Obviousness is a question of law based on
Technologies v. revolve around obvious underlying findings of fact. The underlying
Info USA methods of managing factual inquiries are (1) the scope and
bulk e-mail distribution InfoUSA moved for content of the prior art (2) the differences
to groups of targeted summary judgment of between the prior art and the claims at issue
consumers patent invalidity because (3) the level of ordinary skill in the pertinent
steps A-C (refer to footnote art, and (4) secondary considerations of
nonobviousness.
Perfect Web developed an “opt-in 1) of the claimed methods
bulk e-mailing services” where: appear in the prior art
• Matching a target recipient It found that the prior art and 400
profile with a group of target patent specification showed that
Prior Art:
recipients steps A-C of the claim 1 method
EmailChannel, which
• Transmitting a set of bulk e- were previously known. The
allegedly performed the
mails to said target question then became whether e-mail
claimed method in pubic marketers of ordinary skill would
recipients in said match
before the patent’s critical have repeated the first three steps (A-
group
date

83
• Calculating a quantity of e- C) to deliver a prescribed quantity of

mails in said set of bulk e- LECTURE: e-mail to targeted recipients as called
mails which have been Even if you employ KSR, for in step D. Thus, this step, which
successfully received by said you may also include comprises the whole claim, simply
target recipients and; common sense logic and recites repetition of a known
• If said calculated quantity judgment. procedure until success is achieved
does not exceed a prescribed
minimum quantity of Tests applied to decide obviousness
Obvious to try formulation:
successfully received e-mails,
problem is sending too few
repeating steps A-C until said
calculated quantity exceeds or too man. Common sense”: In rejecting the
said prescribed minimum rigid application of the TSM
quantity Did NOT abandon the TSM (teaching, suggestion, motivation)
test. test for obviousness, SC has
previously ruled that common sense
can be a source of reasons to
combine or modify prior art
references to achieve the patented
invention.
Long Felt Need”: Evidence that an

invention satisfied a long-felt and
unmet need that existed on the patent's
filing date is a secondary consideration
of non-obviousness. (no evidence that
there is long-felt need due to
drawbacks of oversending)
BUT Moreover, as we have often held,

evidence of secondary
considerations does not always
overcome a strong prima facie
showing of obviousness

84
Non-analogous Arts Limitation

In Re Clay (FAVE process for storing refined liquid YES. Not obvious, non-analogous A prior art is similar if it is the
CASE NI MAM ITO) hyrdocarbon product in a storage tank art same area of undertaking or if it is
having a dead volume between the tank still reasonably significant to the
bottom and ist outlet port Prior Art particular problem the inventor is
(Hetherington’s) involved an involved in.
preparing a gelation solution which gels apparatus for displacing dead
after it is placed in the tank’s dead volume space liquid using impervious Whether a reference in the prior
bladders art is "analogous" is a fact
question. Two criteria have
LECTURE: (Sydansk’s), which was also evolved for determining whether
There is a reasonably significant to the assigned to Marathon Oil, prior art is analogous:
particular problem the inventor is involved involves a process for reducing
in. the permeability of hydrocarbon- (1) whether the art is from the
bearing formations same field of endeavor, regardless
of the problem addressed, and
Sydansk cannot be considered to
be within Clay's field of endeavor (2) if the reference is not within
merely because both relate to the the field of the inventor's
petroleum industry. Sydansk endeavor, whether the reference
teaches the use of a gel in still is reasonably pertinent to the
unconfined and irregular volumes particular problem with which the
within generally underground inventor is involved.
natural oil-bearing formations
to channel flow in a desired A reference is reasonably
direction pertinent if, even though they may
be from a different field from the
A person having ordinary skill in inventor’s endeavor, it is one
the art would not reasonably have which because of the matter with

85
expected to solve the problem of which it deals, logically would

dead volume in tanks for storing have commended itself to an
refined petroleum by considering inventor’s attention in
a reference dealing considering the problem
with plugging underground
formation anomalies
Non-obviousness to Chemistry

In Re Papesch Papesch (appellant) applied for a Patentable. Not Obvious Pharmacological properties go
patent, containing 3 claims over a into obviousness and patentability
series of chemical compounds Citing several cases, the courts
(Triethyl compound) which is LECTURE: have determined the
said to possess unexpectedly Why inventive? There is active unobviousness and patentability
potent anti-inflammatory activity inhibitory effect. Particular to of new chemical compounds by
chemistry – same structures. taking into consideration their
Appellant responded by filing the Patentability not determined on biological or pharmacological
affidavit of Dr. Francis J. basis of obviousness alone. properties. Patentability has not
Saunders. The affidavit reports been determined on the basis of
comparative tests of the trimethyl GR: prima facie if same structure the obviousness of structure
compound and appellant's triethyl E: if there is unexpected or new alone.
compound which show that the property – no prima facie
latter is an active anti- obviouisness ( chemical The graphic formulae, the
inflammatory agent while the obviousness) chemical nomenclature, the
prior art compound is systems of classification and
completely inactive in that study such as the concepts of
respect. homology, isomerism, etc., are
mere symbols by which
compounds can be
identified, classified, and
compared.
Similarity in formula does not

necessarily result in obviousnes

86
In Re Baird Baird's application is directed to a No. The invention: Flash Fusible [A] reference must be considered
flash fusible toner comprising a Toner Resins,” is unpatentable on not only for what it expressly
polyester of bisphenol A and an ground of obviousness was teaches, but also for what it fairly
aliphatic dicarboxylic acid. affirmed by the Board of Patent suggests. Given the vast number
Appeals and Interferences of diphenols encompassed by the
LECTURE: Flash Fusible Toner. generic diphenol formula in
In the instant case, the generic Knapp, and the fact that the
PRESUMPTION OF diphenol formula disclosed in diphenols that Knapp specifically
OBVIOUSNESS: Knapp contains a large number of discloses to be “typical,”
RANGE; SAME variables, and we estimate that it “preferred,” and “optimum” are
STRUCTURE; encompasses more than 100 different from and more complex
million different diphenols, only than bisphenol A, the court
In this case, the prior art teaches one of which is bisphenol A. concludes that Knapp does not
away plus covered a generic While the Knapp formula teach or fairly suggest the
formula. unquestionably encompasses selection of bisphenol A.
bisphenol A when specific
variables are chosen, there is
nothing in the disclosure of
Knapp suggesting that one should
select such variables. Indeed,
Knapp appears to teach away
from the selection of bisphenol A
by focusing on more complex
diphenols. None of them, or any
of the other preferred phenols
recited in Knapp’s, is or suggests
bisphenol A.
Non-Obviousness in Biotechnology
In Re Deuel isolated a cDNA molecule Patentable. A prima facie case of
Deuel encoding HBGF from bovine obviousness regarding a
uterine tissue and human placental PRIOR ART: Bohlen did chemical entity that is
cells. His patent application not provide any teachings structurally new does require
predicted the complete amino acid regarding DNA coding of that the teachings of a prior art
sequence of bovine uterine and HBBMs. Maniatis provided suggest the claimed

87
human placental HBGF. Examiner a way of gene cloning used compounds to a person of
rejected claims 4 to 7 on the by Deuel. ordinary skill in the art. In this
ground that it is obvious from the case, the prior art did not
combined teachings of the Bohlen reveal any complementary
and Maniatis patents. Bohlen Here, the prior art does not DNA molecules that were
discloses a similar protein called disclose any relevant cDNA relevant, let alone any close
HBBM, which is useful for molecules, let alone close relatives.
treating burns and repairing neutral relatives of the specific,
tissues, but stated that these are structurally-defined cDNA Normally a prima facie case of
brain-specific. Maniatis describes molecules of claims 5 and 7 obviousness is based upon
a method of isolating DNAs or that might render them structural similarity, i.e., an
cDNAs by screening a DNA or obvious. established structural
cDNA library with a gene probe relationship between a prior
(gene-cloning method). A prior art disclosure of art compound and the claimed
the amino acid sequence of compound. In all of these
a protein does not cases, however, the prior art
Bohlen claimed the proteins to be necessarily render teaches a specific,
brain specific, which actually particular DNA molecules structurally-definable
taught against Deuel. In Maniatis, encoding the protein compound and the question
the existence of a general method obvious because the becomes whether the prior art
of isolating DNA is irrelevant to redundancy of the genetic would have suggested making
the question of whether the code permits one to the specific molecular
specific molecules would have hypothesize an enormous modifications necessary to
been obvious. number of DNA sequences achieve the claimed
coding for the protein. invention.
LECTURE: two prior arts. structural similarity between
claimed and prior art subject
We today reaffirm the matter, ․ where the prior art
principle, stated in Bell, that gives reason or motivation to
the existence of a general make the claimed
method of isolating cDNA compositions, creates a prima
or DNA molecules is facie case of obviousness”
essentially irrelevant to the
question whether the

88
specific molecules
themselves would have been
obvious, in the absence of
other prior art that suggests
the claimed DNAs.
4.3 Industrial Application
Sec. 27 IP CODE
Section 27. Industrial Applicability. –
• An invention that can be produced and used in any industry shall be industrially applicable
NOTES:
• During patent prosecution, the disclosed utility is presumed valid. The patent office bears the burden to disprove utility
• If the examiner shows evidence that the invention is not useful, the burden shifts to the applicant to prove utility. The applicant
can then submit additional data to support a finding of utility.
Article 27 Patentable Subject Matter TRIPS (TRIPS also say that IA = non-obvious and Utility)
• Subject to the provisions of paragraphs 2 and 3

➢ Note that par. 2 and 3 talks about the exclusions from patentatbility
• patents shall be available for any inventions, whether products or processes,
➢ in all fields of technology,
➢ provided that they are
i) new, involve an
ii) inventive step and are
iii) capable of industrial application.
• Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights
enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.
LECTURE:
• Article 57 of the EPC – can either be made or used in industry.
• Industrial applicability DOES NOT refer to mass production

89
• Can have even if non industrial environment.

• USPTO guidelines
o PHOSITA can appreciate it
o Utility is specific, substantial, and credible
• UTILITY
o Specific- particular purpose
o Substantial – real world use
o Credible – believable to a PHOSITA based on totality of evidence
• Simpler to establish than novelty and inventive step.
• Ratio: innovation and creation
• Operable utility - your machine gotta work” – can’t patent a perpetual motion machine, or warp drive. However, don’t want this to be too strict a
screen – don’t want to prevent unforeseen inventions from being patented
➢ PTO has the initial burden of producing evidence that those skilled in the art would not find the claim credible. If it does, inventor has to
provide proof of operability at the time of application
➢ bar is not “it must work as you say, in every instance” but that PHOSITA would find claim not to be credible
➢ Functionally – PTO doesn’t challenge this very much
• Beneficial Utility

Lowell Jacob Perkins obtained a patent Lowell’s patent is valid.the W/N the term “useful”
v. for construction of pumps. Gave one by Lewis is referred means that the invention
Lewis to Lowell. 4 years later, baker back to the jury to see must be superior to all
got a patent and assigned it to whether or not it is the same preceding machines with the
Lewis. The invention of Baker or different invention. same function” NO.
is not of the same construction
as that of Perkins’ pumps. He A mere change of the form the applicant must establish,
also contends that it is necessary or proportions of any that his machine is a new
for Lowell to prove that the machine cannot, per se, be and useful invention. All that
invention is of general utility – deemed a new invention. If the law requires is, that the
it must supersede the pumps in they are the same invention should not be
common use. This is a wrong invention, Perkins, being frivolous or injurious to the
contention. clearly the first inventor, well-being, good policy, or

90
is entitled exclusively to sound morals of society.

the patent righ The word "useful,"
therefore, is incorporated
Perkins – Square and into the act in
triangular pump. contradistinction to
mischievous or immoral
Baker- circular tube.
Usefulness” for the purposes of
patent eligibility requires only that
LECTURE: very low the claimed invention performs some
standard of utility. non-trivial function. The claimed
invention need not be so superior as
to replace generally all preceding
devices performing the same
function.
Juicy Juicy Whip, Inc., is the assignee Yes. Patentable. The fact that one product
Whip, of a Patent entitled "Post-Mix can be altered to make it
Inc. v. Beverage Dispenser With an The fact that customers look like another is in itself a
Orange Associated Simulated Display may believe they are specific benefit sufficient to
Bang of Beverage." Post-mix = receiving fluid directly satisfy the statutory
contained separately until from the display tank does requirement of utility.
needed. Pre-mix = mixed even not deprive the invention
before it is needed. The of utility. Orange Bang The threshold of utility is
invention claimed is a post-mix has not argued that it is not high: An invention is
beverage dispenser that is unlawful to display a "useful" under if it is
designed to look like a pre-mix representation of the capable of providing
some
beverage dispenser. beverage in the manner identifiable benefit.
that fluid is displayed in
Juicy Whip sued Orange Bang, the reservoir of the Of course, Congress is free
alleging that they were invention, even though the to declare particular types of
infringing the claims of the fluid is not what the inventions unpatentable for a
patent customer will actually variety of reasons, including
receive deceptiveness. Until such

91
Juicy Whip Claim: a transparent time as Congress does so,

bowl having no fluid connection Lecture: however, we find no basis in
with the outlet and visibly section 101 to hold that
containing a quantity of fluid; inventions can be ruled
said fluid being resistant to unpatentable for lack of
organic growth and simulating utility simply because they
the appearance of the dispensed have the capacity to fool
beverage (premix) some members of the public
• Lowell v. Lewis (MA 1817) – P. 216 – An invention need not be an improvement on all technology to have utility. It merely must be functional
and “non-injurious to moral fabric over society.
➢ Pump – not much of an improvement in pump technology. Still ok - Does not need to improve on prior art
• Juicy Whip, Inc. v. Orange Bang, Inc. (CAFC 1999) – p. 218 – Even a misleading use may have utility, and the fact that something is
misleading does not automatically strip it of utility; as long as there’s “some identifiable benefit,” you’re good.
➢ Drink machine made to look like there is a reservoir of liquid prevent – people are more likely to buy if they think liquid circulating is the
product. OK - deceptive trade practice does not render it unpatentable –
Practical or Specific Utility

Bren Rosenkranz applied for a No. For failing to show One may patent only that which is
ner v. patent on an allegedly novel utility. Respondent's papers “useful”.
Mans process for making certain did not disclose a sufficient
on known steroids. Respondent likelihood that the steroid A process patent in the chemical
Manson, a chemist engaged in yielded by his process field, which has not been developed
steroid research, filed an would have similar tumor- and pointed to the degree of specific
application to patent precisely inhibiting characteristics. utility, creates a monopoly of
the same process as There is a greater known knowledge which should be granted
Rosenkranz. Tested in MICE unpredictability of only if clearly commanded by the

92
compounds in that field. statute.

LECTURE: not tested in human
beings. NOTE: there is Unless and until a process is Until the process claim has been
difference of utility since higher refined and developed to this reduced to production of a product
degree of utility for sciences point—where specific benefit shown to be useful, the metes and
since it tends to monopolize exists—there is insufficient bounds of that monopoly are not
knowledge. justification for permitting an capable of precise delineation. It may
applicant. IN SHORT: In order engross a vast, unknown, and
to be granted a patent, the perhaps unknowable area
inventor must be able to
specifically show how his/her
invention is useful.
Fujik In August 1987, Yoshihiro Yes. There was Utility. In the pharmaceutical arts,
awav. Fujikawa (plaintiff) received our court has long held that
Watt patents for: (1) certain chemical Since the count contains no practical utility may be shown
anasi compounds that inhibit the limitation related to any utility, by adequate evidence of any
n body’s synthesis of cholesterol evidence which would establish a pharmacological activity.
and (2) the method of using substantial utility for any purpose
those chemical compounds to is sufficient to show its reduction "[t]he basic quid pro quo
treat people with high to practice.").4 Such activity contemplated by the
cholesterol. constitutes a practical utility Constitution and the Congress
because "[i]t is inherently faster for granting a patent
Both Fujikawa and Wattanasin and easier to combat illnesses and monopoly is the benefit
asked the Board of Patent alleviate symptoms when the derived by the public from an
Appeals and Interferences of the medical profession is armed with invention with substantial
United States Patent & an arsenal of chemicals having utility."
Trademark Office (Board) for an known pharmacological activities.
interference. An interference is Since it is crucial to provide Consequently, it is well
an administrative proceeding to researchers with an incentive to established that a patent may
determine which party should disclose pharmacological not be granted to an invention
be awarded priority of activities in as many compounds unless substantial or practical
invention. The Board found that as possible, we conclude that utility for the invention has
Wattanasin had priority for adequate proof of any such been discovered and
activity constitutes a showing of

93
both patents. Fujikawa practical utility. disclosed.

appealed.
In other words, there must Similarly, actual reduction
We first address Fujikawa's be a sufficient correlation t o practice, which constitutes
argument that Wattanasin's in between the tests and an in law the final phase of
vitro and in vivo tests failed to asserted pharmacological invention, cannot be
establish a practical utility for activity so as to convince established absent a showing
either the compound or method those skilled in the art, to a of practical utility
count. The Board held that the reasonable probability, that
in vitro tests established a the novel compound will Of course, it is possible that some
practical utility for the exhibit the asserted compounds active in vitro may not
compound and that the in pharmacological behavior be active in vivo. But, as our
vivo tests established a predecessor court in Nelson
practical utility for both the LECTURE: FDA approval explained, a "rigorous
compound and method not requisite for utility. Even correlation" need not be shown in
counts. For the reasons set out before it reaches human order to establish practical utility;
below, we affirm these findings clinical trial phase, can "reasonable correlation" suffices.
of the Board establish usefulness.
[U]nder the circumstances of the

instant case, where [an application]
discloses an in vitro utility, ... and
where the disclosed in vitro utility is
supplemented by the similar in vitro
and in vivo pharmacological activity
of structurally similar compounds, ...
we agree with the Board that this in
vitro utility is sufficient to [establish
utility].
In Re filed patent application Serial Yes it is patentable. The Burden is initially on the PTO to
Brana no. 213,690 (‘690 application) Adequate showing of Utility. raise doubt about alleged utility
directed to non- symmetrically alleged in disclosure.
5-nitrobenzo[de]isoquinoline-

94
1,3-dione compounds, for use The court found that the applicants’ Usefulness in patent law, and in
as antitumor substances. The favorable comparison (in its particular in the context of
specification stated that non- specification) to Paull’s pharmacological inventions,
symmetrical substitutions symmetrically substituted necessarily includes the expectation of
provide compounds with “a compounds implicitly asserts that further research and development. The
better action spectrum as the claimed compounds are highly stage at which an invention in this field
antitumor substances. effective against lymphocytic becomes useful is well before it is
leukemia. Based thereon, the court ready to be administered to humans.
held that in light of the explicit If Were we to require Phase II testing
In addition to comparing the
reference to Paull, the specification in order to prove utility, the associated
effectiveness of the claimed does allege a sufficiently specific costs would prevent many companies
compounds with structurally use from obtaining patent protection on
similar compounds in Paull, promising new inventions, thereby
applicants’ patent specification Moreover, the applicants eliminating an incentive to pursue,
illustrates the cytotoxicity of submitted sufficient through research and development,
the claimed compounds evidence to convince one of potential cures in many crucial areas
against human tumor cells, in ordinary skill in the art of such as the treatment of cancer
vitro and concludes that these the asserted utility. The in
tests “had good action” vivo test results presented The court also pointed out that the intial
in the Kluge declaration burden is on the PTO to make a prima
LECTURE: facie showing that the claimed invention
(showing that several
lacks utility. Only after the PTO
compounds within the
provides evidence showing that once of
scope of the claims
ordinary skill in the art would
exhibited significant reasonably doubt the asserted utility
antitumor activity does the burden shift to the applicant to
provide rebuttal evidence sufficient to
convince such a person of the
invention’s asserted utility.
In Re Fisher (Plaintiff) stated that his No. Courts have used the labels
Fisher claimed invention, relating to "practical utility" and "real
five purified nucleic acid the claimed ESTs do no world" utility interchangeably
sequences (genes), also known more than assist in research in determining whether an
as expressed sequence tags that may help scientists to invention offers a
(ESTs), that encoded proteins isolate the particular "substantial" utility.

95
and protein fragments in maize underlying protein-encoding

plants, had a specific and genes and conduct further "`[p]ractical utility' is a
substantial utility and that his experimentation on those shorthand way of attributing
patent application made it genes. The overall goal of `real-world' value to claimed
possible for someone of ordinary such experimentation is subject matter. In other
skill in the art to use the presumed to understand the words, one skilled in the art
invention. MOLECULAR maize genome. Therefore, can use a claimed discovery in
MARKER the claimed ESTs are only a manner which provides
"objects of use-testing," some immediate benefit to
As of the filing date of the '643 meaning scientific research the public."
application, Fisher admits could be performed on the
that the underlying genes objects with no assurance It thus is clear that an application
have no known functions. that anything useful will be must show that an invention is useful
Fisher, nevertheless, claims discovered in the end. to the public as disclosed in its
that this fact is irrelevant current form, not that it may prove
because the seven asserted uses Plaintiff"s comparison of the useful at some future date after
are not related to the functions ESTs to a patentable further research. [How is this
of the underlying genes microscope is also not reconciled with the rule in
convincing. A microscope pharmacology that it is inherent that
LECTURE: claim only to the can immediately reveal an further research is necessary, and
sequence and structure. No objects structure, but the thus to encourage disclosures, a
information as to genetic claimed ESTs can only be patent is deemed useful at an earlier
information. used to detect the presence state, i.e., in the cases of Fujikawa v.
of genetic material which Wattanasin and In Re Brana,
has the same structure as pharmacological activity during in
the EST itself. It is not vitro testing taken in conjunction
able to provide any with reasonable connection with
information about the pharmacological activity in in vitro
overall structure let alone and in vivo testing in similar
the function of the compounds?] Simply put, to satisfy
underlying gene. So while the "substantial" utility requirement,
a microscope can give an an asserted use must show that that
immediate, real-world claimed invention has a significant
benefit in a variety of and presently available benefit to the

96
applications, the claimed public. … Turning to the "specific"

ESTs cannot. The claimed utility requirement, an application
ESTs themselves are not an must disclose a use which is not so
end of Plaintiff"s research vague as to be meaningless.
effort, but only tools to be
used along the way while DISSENT: Even though a
searching for a practical research tool may not provide
utility. Plaintiff"s claimed immediate benefit to the public
ESTs may add a noteworthy at large, Judge Radar points out,
contribution to and other scholars agree, that
biotechnology research, but the incremental benefit offered
their utility is not sufficient to researchers should count as
to be eligible for patent utility that deserves patent
because Plaintiff does not protection. As it stands, the
identify the function for the utility benefit is narrowly
underlying protein-encoding applied.
genes
• Brenner v. Manson (USPQ 1966) – p. 226 – a novel process for making a known steroid did not satisfy the utility requirement because the patent
applicants did not show that the steroid served any practical function. The Court ruled, "… a process patent in the chemical field, which has not
been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded
by the statute."
➢ no patent because potential uses not enough, the chemical steroid's specific purpose must be identified
➢ Problem – even though somebody else came along and found a use, the prior inventor didn’t
➢ Between the two inventors, the one who found a use at the time of filing wins
➢ Court says “patent isn’t a hunting license”
• In re Brana (CAFC 1995) – p. 234 – Invention was patentable because the specification presented a specific disease against which the claimed
compounds were alleged to be effective. Therefore, their spec does allege a sufficiently specific use.
• In re Fisher (CAFC 2005) – p. 244- Uses for specific ESTs were not specific to the claimed ESTs, but were applicable to all ESTs. Therefore,
there was insufficient utility. Also, there was insufficient utility because there was no known use for the proteins produced by the process
described in the patent.
➢ Holding – uses are too general – lack of specific utility – are uses that any EST could be used for

97
➢
Evaluation of the end you put it towards – avoid the “red spider” problem (you have a big vat of chemicals; don’t know what to do with it, but
you know that if you put a red spider in it, it dies; can’t claim that the product is a good spider-killing agent) (also – landfill option)pure
research
• Fujikawav v. Wattanasi
➢ ACS – Abandonment, Concealment, or Suppression
i) Fujikawa v. Wattanasin (Fed Cir 1996) pg 506 – 2 types of ACS:
(1) deliberate suppression or concealment, or;
(2) inference of ACS from long delay in filing
ii) Look for evidence of spurring – first inventor is moved to disclose only b/c of second inventor’s activity
• LECTURE:
➢ Article 29 TRIPS – sufficiently clear and complete and best mode. And may require MORE information on foreign application.
➢ Disclosure is SUFFICIENTLY CLEAR AND COMPLETE.
➢ Enablement for quid pro quo.
i) Dangers- if there is stringent requirements = less profitable + trade secret
➢ Disclosure – broader than merely to make and use. Whatever is claimed now
➢ Enablement – more specific and use
➢ Can meet disclosure and fail enablement and not other way around
➢ Best mode is not requirement in IP code but is requirement in TRIPS .
Case Ruling as to Utility Reason Stage

Brenne no – steroid that is claimed to have a did not disclose a sufficient likelihood that experimental
r v. likelihood of inhibiting tumors the steroid yielded by his process would
Manso have similar tumor-inhibiting
n characteristics

98
Fujika yes – compound that is cholesterol where [an application] discloses an in vitro in vitro
wa v. inhibiting utility, ... and where the disclosed in vitro
Wattan utility is supplemented by the similar in
asin vitro and in vivo pharmacological activity
of structurally similar compounds, ... we
agree with the Board that this in vitro utility
is sufficient to [establish
utility]
In Re yes – anti-tumor substance applicants’ favorable comparison (in in vitro

Brana its specification as asymmetrical) to
Paull’s symmetrically substituted compounds
implicitly asserts that the claimed compounds
are highly effective against leukemia
Ex no – exspressed sequence tags [ESTs] for hypothetical possibility, too thin for Brenner
Parte maize protein and Brana. not “real,” no real world utility.
Fisher

99
Disclosure and Enablement (DISCLOSURE – needs ENABLEMENT and BEST METHOD)
• DISCLOSURE – 4 doctrines
➢ enablement – requires invention be described clearly enough so that PHOSITA could make/use/sell
i) The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such
full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected,
to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
➢ written desc – is spec sufficiently detailed to match the scope of the claim
➢ Definiteness – has to do with the claim itself – claim must be definite
➢ Best mode (gone in a year) – must disclose what you think is most effective means for practicing the invention
i) still intact, but no longer a basis for finding patent invalid
TRIPS Article 29 Conditions on Patent Applicants
• Par 1: Members shall require that an applicant for a patent shall disclose the invention in a
➢ manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and
➢ may require the applicant to indicate the best mode for carrying out the invention known to the inventor
i) at the filing date or,
ii) where priority is claimed, at the priority date of the application.
• Par 2: Members may require an applicant for a patent to
➢ provide information concerning the applicant’s corresponding foreign applications and grants.
• Section 35, IP CODE Disclosure and Description of the Invention. –

➢ 35.1. Disclosure. - The application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out
by a person skilled in the art.
i) Where the application concerns a microbiological process or the product thereof and involves the use of a micro-organism
which cannot be sufficiently disclosed in the application in such a way as to enable the invention to be carried out by a
person skilled in the art, and such material is not available to the public,
(a) the application shall be supplemented by a deposit of such material with an international depository institution.
➢ 35.2. Description. –
i) The Regulations shall prescribe the contents of the description and the order of presentation. (Sec. 14, R.A. No. 165a)

100

Incandescent The Electric Light Company No. Not entitled to patent. a written description of the
lamp patent (Plaintiff) filed suit to recover Too broad. device, and of the manner and
damages allegedly incurred for process of making constructing,
infringement of their letters of compounding, and using it in
the claims in the letters
patent.
patent issued May 12, such full, clear, concise, and exact
1880, to the Electro- terms as to enable any person
The Electric Company
(Plaintiff) filed suit against Dynamic Light Company, skilled in the art or science to
McKeesport (Defendant) to which it appertains or with which
(assignee of Sawyer and
recover damages for the it is most nearly connected to
Man) for an electric light,
infringement of letters patent make, construct, compound, and
are too indefinite to be
issued to the Electro-Dynamic use the same."
Light Company, assignee of the subject of a valid
Sawyer and Man, for an monopoly…. to recover The object of this is to apprise
electric light. The defendants damages for the the public of what the patentee
justified their actions under infringement of letters claims as his own, the courts of
certain patents issued to patent
Thomas Edison, denied their what they are called upon to
novelty and utility and claimed construe, and competing
that they had been fraudulently manufacturers and dealers of
and illegally obtained. The It is admitted that the exactly what they are bound to
circuit court held the patent to lamp described in the avoid. If the description be so
be invalid and dismissed. Sawyer and Man patent is vague and uncertain that no
Plaintiff appealed. no longer in use, and was one can tell, except by
never a commercial independent experiments, how
involved a contest between success; that it does not to construct the patented
what are known as the embody the principle of device, the patent is void.
Sawyer and Man and the high resistance with a
Edison systems of electric small illuminating surface Applying this principle to the
lighting.
patent under consideration,
Is the complainant- how would it be possible for a
In their application, Sawyer and patentee [Sawyer] person to know what fibrous or
Man stated that their invention entitled to a monopoly of textile material was adapted to
related to… The specification all fibrous and textile the purpose of an incandescent

101
further stated that: materials for conductor except by the most

"Another important incandescent conductors? careful and painstaking
advantage resulting from our … Sawyer and Man experimentation? If, as before
construction of the lamp supposed they had observed, there were some
results from the fact that the discovered in carbonized general quality, running through
wall forming the chamber of paper the best material the whole fibrous and textile
the lamp through which the for an incandescent kingdom, which distinguished it
electrodes pass to the conductor. from every other, and gave it a
interior of the lamp is made peculiar fitness for the particular
wholly of glass Instead of confining purpose, the man who
themselves to carbonized discovered such quality might
paper, as they might justly be entitled to a patent; but
LECTURE: what if narrow properly have done, and that is not the case here
down to bamboo species? Still in fact did in their third
no since hundreds will be claim, they made a broad
undue experimentation. claim for every fibrous or
textile material, when in
fact an examination of
over 6,000 vegetable
growths showed that
none of them possessed
the peculiar qualities that
fitted them for that
purpose
In Re Wands Antibodies are a class of Yes patentable. No undue The first paragraph of 35
(Favorite ni proteins (immunoglobulins) experimentation. U.S.C. § 112 requires that
ma’m) that help defend the body Since we hold that the written the specification of a
against invaders such as disclosure fully enables the patent must enable a
viruses and bacteria claimed invention [Huh? When person skilled in the art
did you hold this?], we need not to make and use the
The claimed invention reach the question of the claimed invention. A
involves methods for the adequacy of deposits. patent need not disclose

102
immunoassay of HBsAg by When Wands' data is what is well known in the

using high-affinity interpreted in a art.Although we review
monoclonal IgM antibodies reasonable manner, underlying facts found by
analysis considering the the board under a "clearly
The specification of the '145 patent factors enumerated in In erroneous" standard,*fn5
teaches a procedure for immunizing re Forman leads to the we review enablement as
mice against HBsAg, and the use of conclusion that undue a question of law
lymphocytes from these mice to experimentation would
produce hybridomas that secrete not be required to Where an invention
monoclonal antibodies specific for
practice the invention. depends on the use of
HBsAg. The '145 patent discloses
Wands' disclosure living materials such as
that this procedure yields both IgG
provides considerable microorganisms or
and IgM antibodies with high-
affinity binding to HBsAg. direction and guidance on cultured cells, it may be
how to practice their impossible to enable the
invention and presents public to make the
… Wands states that application of working examples invention (i.e., to obtain
these methods to make high-affinity these living materials)
IgM anti-HBsAg antibodies requires solely by means of a
only routine screening, and that does In addition to satisfying written disclosure. One
not amount to undue experimentation the enablement means that has been
… The sole issue is whether, in this
requirement, deposit of developed for complying
particular case, it would require undue
organisms also can be with the enablement
experimentation to produce high-
affinity IgM monoclonal antibodies. used to establish the filing requirement is to deposit
date of the application as the living materials in cell
Enablement is not precluded by the the prima facie date of depositories which will
necessity for some experimentation invention distribute samples to the
such as routine screening.*fn19 public who wish to
However, experimentation needed to Although inventions practice the invention
practice the invention must not be after the patent issues
involving microorganisms
undue experimentation.*fn20 "The
or other living cells often
key word is 'undue,' not
can be enabled by a Administrative guidelines and
'experimentation
deposit,*fn14 a deposit is judicial decisions have clarified

103
Factors to be considered in not always necessary to the conditions under which a

determining whether a disclosure satisfy the enablement deposit of organisms can satisfy
would require undue requirement.*fn15 No the requirements of section 112.
experimentation have been deposit is necessary if [1]
summarized by the board in In re the biological organisms A deposit has been held
Forman.*fn24 They include (1) the can be obtained from necessary for enablement
quantity of experimentation readily available sources where the starting materials
necessary, (2) the amount of or [2] derived from readily (i.e., the living cells used to
direction or guidance presented, (3) available starting practice the invention, or cells
the presence or absence of working materials through routine from which the required cells
examples, (4) the nature of the screening that does not can be produced) are not readily
invention, (5) the state of the prior require undue available to the public.
art, (6) the relative skill of those in experimentation
the art, (7) the predictability or Even when starting materials
unpredictability of the art, and (8) Lecture: no standard on are available, a deposit has
the breadth of the claims.*fn25 what is undue been necessary where it would
experimentation. Dependent require undue experimentation
of the invention. to make the cells of the
invention from the starting
materials.
• In re Wands (CAFC 1988) – p. 277 – 3 categories of factors to look at when determining the sufficiency of disclosure/whether undue
experimentation is required: the THREE WANDS FACTORS
➢ -what others had to do (how many experiments required to figure out)
➢ -nature of patent/invention/field (skill of those in field)
➢ -what patentee did disclose (guidance/working examples)
i) claim has to be enabled AS OF THE TIME OF THE APPLICATION (like utility)
ii) PTO says – your success rate is too low – somebody else will require too much experimentation – 2.8%
iii) pplicant (and court) – you can’t count the things we didn’t test – we had a 44% success rate

104
• The Incandescent Lamp Patent (US 1895) – p. 266 – “Carbonized fibrous or textile material” is too indefinite; not every material fitting this
description was a suitable filament.
➢ Sawyer patent – contains “all carbonized fibrous or textile material” as filament – spec included only carbonized filament of paper. Edison
comes along and does search of 6000 types of fiber – finds one type of bamboo that works best. Held that Sawyer claimed too broadly.
➢ Broad patents are ok, if the applicant actually enables the broad field
➢ What could patentees have done differently?
i) -narrow claims (avoid claiming theories)
ii) -provide lots of examples so you can try to generalize up
iii) Suppose they’d tested several hundred fibrous materials and they all worked just about as well as the carbonized paper – could they have
patented all of them? (probably, as long as he identified a class characteristic that bound all of them together)
2. Speculation and prophesy (OR, speculation vs. prophesy)

Janssen Examiner found that The enablement
Pharmaceutical application's claim of a requirement is stated in 35
v Teva Pharms method of "diagnosing" DISTRICT COURT: U.S.C. § 112.Enablement is
Alzheimer's disease to specification did not determined as of the
be indefinite, because demonstrate utility effective filing date of the
diagnosing "has nothing because relevant animal patent's application.
to do with treating" and testing experiments were
because the claims thus "not finished . . . by the The enablement
"fail[ed] to particularly time the '318 patent was requirement of 35 U.S.C. §
point out and distinctly allowed" and the 112, ¶ 1 requires that the
claim the subject matter specification provided specification adequately
only "minimal disclosure" discloses to one skilled in the
The examiner also did not "teach one of skill relevant art how to make,
found the patent in the art how to use the or in the case of a process,
application's claim of a claimed method" how to carry out, the
method of treating because the application claimed invention without
Alzheimer's disease "only surmise[d] how the undue experimentation
obvious-in light of the claimed method could be

105
animal studies used" without providing The utility requirement of 35

sufficient galantamine U.S.C. § 101 mandates that
The examiner did not reject the dosage information any patentable invention be
application for lack of useful and, accordingly, the
enablement. SC DECISION: subject matter of the claim
In this case, however, must be operable. If a patent
Later she obtained a patent In claim fails to meet the utility
neither in vitro test
February 2005 several generic
results nor animal test requirement because it is not
drug manufacturers filed
results involving the use useful or operative, then it
abbreviated new drug
of galantamine to treat also fails to meet the how-
applications ("ANDAs") and
so-called "Paragraph IV" Alzheimer's-like to-use aspect of the
certifications with the FDA, and conditions were enablement requirement
Janssen sued each manufacturer provided
for infringing the '318 patent The utility requirement
Thus, at the end of the prevents mere ideas from
day, the specification, being patented
LECTURE: Specification even read in the light of
only 1 page in length. the knowledge of those p]atent protection is granted
Contained only summary skilled in the art, does no in return for an enabling
and did not show any more than state a disclosure of an invention,
connection to substance hypothesis and propose not for vague intimations of
and effects. testing to determine the general ideas that may or
accuracy of that may not be workable
Is utility same as
hypothesis. That is not
enablement? NO. There is The utility requirement also
sufficient
just CLOSE connection.
prevents the patenting of a
Testing not required to be
mere research proposal or
done by inventor nor
an invention that is simply
require tests on human.
The tests here were only an object of research. Again
available AFTER the as the Supreme Court
patent application and not stated in Brenner, "a patent
presented in litigation. is not a hunting license. It is

106
Why are those tests not not a reward for the search,
required? IP CODE but compensation for its
minimum requirements successful conclusion."
such as filled up form ..
need not submit clinical If mere plausibility were the
trials after submission 18 test for enablement under
months for confidentiality
section 112, applicants could
after publication then 6
obtain patent rights to
months to request for
'inventions' consisting of
substantive examination.
little more than respectable
guesses as to the likelihood
of their success. When one
of the guesses later proved
true, the 'inventor' would be
rewarded the spoils instead
of the party who
demonstrated that the
method actually worked.
That scenario is not
consistent with the statutory
requirement that the
inventor enable an invention
rather than merely
proposing an unproved
hypothesis
Janssen Pharmaceutica v Teva Pharms (CAFC 2009) – p. 287 - “The utility requirement also prevents the patenting of a mere research proposal or an
invention that is simply an object of research. …a patent is not a hunting license. It is not a reward for the search, for compensation for its successful
conclusion.’ A process or product ‘which either has no known use or is useful only in the sense that it may be an object of scientific research’ is not
patentable… inventions do not meet the utility requirement if they are ‘objects upon which scientific research could be performed with no assurance that
anything useful will be discovered in the end.’”

107
• Generally, you don’t need a working model on hand, as long as you can provide enough detail that a PHOSITA will be able to (constructive
reduction to practice)
• This case suggests – there is a limit – some unrelated data + logical reasoning is insufficient to convince PHOSITA that invention will work
• After Janssen – extent to which courts will differentiate
• “prophesies” are ok – laying out a series of logical steps explaining why your invention will work is OK
• This is differentiated from ‘speculation”
• Tension here – enablement vs. nonobviousness
Doctrine of Sound Prediction

Apotex v. Wellcom Elements:
1. Factual basis for the prediction
2. Inventor must have at the date of the patent application an articulable and “sound” line of reasoning from wh
the desired result can be inferred from the factual basis
3. Proper disclosure
- Presupposes that further work remains to be done
In vitro testing on mouse cells revealed that AZT was potentially effective against AIDS. Glaxo Wellcome was not
equipped to do testing of the drug on human cell lines, so it contracted with the National Institutes of Health for this
work. In February 1985, the NIH reported the positive results of their screening to Glaxo Wellcome, and, on March
16, 1985, Glaxo Wellcome filed a patent application for a new use of AZT in the United Kingdom.
While allowing a patent based on speculation would have been unfair to the public, requiring Glaxo/Wellcome to
demonstrate AZT’s efficacy through the clinical tests required for approval of a new drug for medical prescription woul
have been unfair to Glaxo/Wellcome. The disclosure made in the patent was and is of real use and benefit and
Glaxo/Wellcome, by making the disclosure, fulfilled its side of the bargain with the public. It was therefore entitled to
legal protection for what it disclosed.
Uses of examples in the Specifications

108
In re Strahilevitz • A hapten is a small molecule which does not by itself produce antibodies but which, when conjugated to a
carrier protein or other macro-molecular carrier, induces in a recipient animal or human the production of
antibodies that are specific to the small molecule.
• Invention resides in combining the known prior art techniques of hemodialysis or hemoperfusion with
immunochemical dialysis and immunochemical adsorption.
• Invention relies on literature citations to establish both the level of ordinary skill in the art and the fact the
techniques necessary to practice his invention were known in the art
• In view of all the foregoing, we hold that appellant's disclosure would have enabled a person of ordinary skill
in the art to make and use appellant's invention without undue experimentation
• It is clear from this disclosure that selection and preparation of related haptens, antigens, and antibodies involve
routine and well-known techniques.
• Techniques for preparing antibodies to specific haptens and antigens were known in the art.
written REQUIREMENT
• Section. 35. Disclosure and Description of the Invention. –

➢ “The application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.”

109
Gsell v. Yap • Patent for the manufacture of industrial product "cane handles for walking sticks and umbrellas, curved by means of
a small lamp or blowpipe, fed by petroleum or mineral fuel."
• Defendant manufactures curved cane handled for walking sticks and umbrellas by a process in all respects identic
with that used by the plaintiff under his patent, except only that he be substituted for a lamp fed with petroleum or
mineral oil, lamp fed with alcohol
Doctrine of Equivalents
A claim for the particular means and mode of operation described in the specification extends, by operation of law, to the
equivalent of such means — not equivalent simply because the same result is thereby produced — but equivalent as being
substantially the same device in structure, arrangement and mode of operation.
Language in the descriptive statement applies to the operation of applying heat for the purpose of curving handles or
canes and umbrellas by means of a blast lamp fed with alcohol, as well as by means of a blast lamp fed with petroleum
mineral oil
Defendant applied heat for the purpose of curving handles for canes and umbrellas by means of a blast lamp fed
with alcohol thus, he has infringed on the patented process
• Instead of alcohol they used mineral oil

Godines vs. CA • Tests on Infringement:
➢ Literal Infringement
i) Resort to the words of the claim. If accused matter clearly falls within the claim, there is infringement.
ii) Compare the claims of the patent and the accused product within the overall context of the claims and
specifications, to determine whether there is exact identity of all material elements
➢ Doctrine of Equivalents (WRF)
i) Infringement also occurs when 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 floating power tillers of the defendant and the turtle power tiller of the plaintiff are
virtually the same.
Viewed from any perspective or angle, the power tiller of the defendant is identical and similar to that of the turtle power
tiller of plaintiff in form, configuration, design and appearance. The parts or components thereof are virtually the same. In
operation, the floating power tiller of the defendant operates also in similar manner as the turtle power tiller of plaintiff.

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To permit the imitation of a patented invention which does not copy any literal detail would be to convert the protection
of the patent grant into a hollow and useless thing.
Such imitation would leave room for — indeed encourage — the unscrupulous copyist to make unimportant and
insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied
matter outside the claim, and hence outside the reach of the law
Frank v. In fact, before the plaintiffs herein obtained their patent, they themselves had already publicly used the same kind of
Kosuyama machine for some months, at least, and, various other machines, having in general, the same characteristics and
important parts as that of the said plaintiffs, were known in the Province of Davao.
In the case under consideration, it is obvious that the "spindle" is not an integral part of the machine patented by the
plaintiffs on the ground that it was eliminated from their patent inasmuch as it was expressly excluded in their
application, as evidenced by the aforesaid Exhibit 41.
Wherefore, reiterating that the defendant cannot be held civilly liable for alleged infringement of the patent upon
which the present action is based on the ground that there is no essential part of the machine manufactured
and sold by him, which was unknown to the public in the Province of Davao at the time the plaintiffs applied for
and obtained their patent for improved hemp stripping machines, the judgment appealed from is hereby affirmed,
with the costs against the plaintiffs-appellants. So ordered.
Vas Cath v.
Mahurkar

111
• Written Description Requirement Test :

➢ Sufficiency of support is whether the disclosure of the application relied upon ‘reasonable conveys to the
artisan that the inventor had possession at that time of the latter claimed subject matter
• Under proper circumstances drawings alone may be sufficient to provide written description of the invention
➢ Written Description Requirement part of the requirement under patent statutes at a time before claims were required
• Specifications:
➢ 1. enable artisans to make and use the invention
➢ 2. inform the public of what is know, used, warning
• Written description and definiteness as distinct requirements
• Description requirement – complied w/ if subject matter is presented in the form of a claim subsequent to the
filing date of the application was sufficiently disclosed at the time of filing so that the prima facie date of invention
can fairly be held to be the date of application
• Disclosure vs. Enablement

➢ Disclosure Requirement
i) broader than merely to make and use
ii) “whatever is claimed now”
➢ Enablement Requirement
i) how to make and use
• 5.6 Limitations on Amendments
• Section. 49. Amendment of Application. –

➢ An applicant may amend the patent application during examination:
➢ Provided, That such amendment shall not include
i) new matter outside the scope of the disclosure contained in the application as filed.
EXAMPLES:

112
i) Element C is not a valid addition.
Gentry Gallery . Berkline

ALLEGED invention that infringed: In the allegedly infringing sofas, the recliners were separated by a seat
which has a back cushion that may be pivoted down onto the seat, so that the seat back may serve as a tabletop
between the recliners
An applicant complies with the written description requirement by describing the invention, with all its claimed
limitations
• The original disclosure clearly identifies the console as the only possible location for the controls. Control
“may be mounted on top or side surfaces of the console rather than on the front wall ...”
• No similar variation beyond the console is even suggested
• Purpose: “provide a console positioned between [the reclining seats] that accommodate the controls for
both the reclining seats
• Locating the controls anywhere but on the console is outside the stated purpose of the invention
• The precise location of the lockout was not considered an element of the invention
An applicant is entitled to claims as broad as the prior art and his disclosure will allow. In this case
No infringement since Berkline did not mention of the word console, just produced the sofas.
In this case, the original disclosure clearly identifies the console as the only possible location for the controls.
It provides for only the most minor variation in the location of the controls, noting that the control
“may be mounted on top or side surfaces of the console rather than on the front wall without departing from this
invention.” ‘244 patent, col. 2, line 68 to col. 3, line 3. No similar variation beyond the console is even suggested.

113
• Definite Claims
Orthokinetics vs. Safety Travel Chairs

• Plaintiff sued for infringement. Defendant argued that the patent was not valid since the language in the claim did not particularly
point and distinctly claim the invention. Specifically, the claim stated, "wherein said front leg portion is so dimensioned as to be
insertable through the space between the doorframe of an automobile and one of the seats thereof."
➢ In a wheel chair having a seat portion, a front leg portion, and a rear wheel assembly, the improvement wherein said front leg portion is so
dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof....
• Claims require that one desiring to build and use a travel chair must measure the space between the selected automobile's doorframe and its
seat and then dimension the front legs of the travel chair so they will fit in that particular space in that particular automobile.
• claim is valid if a person skilled in the art would understand what is claimed when the claim is read in light of the specification. In this
case, the district court incorrectly required the claim "describe" the invention.
• The disclosure portion of the specification covers this, not the claims. In addition, the "full, clear, concise, and exact requirement"
applies only to the disclosure portion, not the claims. Plaintiff"s witnesses, who were skilled in the art, testified that a person skilled in
the art could easily ascertain the dimensions, and the jury had the right to credit that testimony.
• Patent law does not require that all possible vehicle lengths that correspond to the spaces in hundreds of different
automobiles be listed in the patent, let alone the claims.
• Ownership of Patent Rights
• Section 28. Right to a Patent.

➢ The right to a patent belongs to the inventor, his heirs, or assigns.
i) When 2 or more persons have jointly made an invention, the right to a patent shall belong to them jointly.
• RA 10055 – Philippine Technology Transfer Act

➢ Section 6 ..... Ownership of IPs and IPRs derived and generated from research funded by the Government Funding Agency (GFA), whether
such funding is in whole or in part, shall, in general be vested in the RDI that actually performed the research
• Sec. 29 First to File Rule.

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➢ If 2 or more persons have made the invention separately and independently of each other,
i) the right to the patent shall belong to the person who filed an application for such invention, or
ii) where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest priority
date.
• Section 30. Inventions Created Pursuant to a Commission.

➢ 30.1. The person who commissions the work shall own the patent,
i) unless otherwise provided in the contract.
➢ 30.2. In case the employee made the invention in the course of his employment contract, the patent shall belong to:
i) The employee, if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities and materials of
the employer.
ii) 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.
• SEC. 67. Patent Application by Persons Not Having the Right to a Patent. –
➢ 67.1. If a person referred to in Section 29 other than the applicant, is declared by final court order or decision as having the right to the patent,
such person may, within three (3) months after the decision has become final:[R-N-R-C]
i) (a) Prosecute the application as his own application in place of the applicant;
ii) (b) File a new patent application in respect of the same invention;
iii) (c) Request that the application be refused; or
iv) (d) Seek cancellation of the patent, if one has already been issued.
• 67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis to a new application filed under Subsection 67.1(b). (n)
• Section 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, t
i) he court shall order for his substitution as patentee, or
ii) at the option of the true inventor, cancel the patent,
iii) and award actual and other damages in his favor if warranted by the circumstances.
• Section 69. Publication of the Court Order. –

115
➢The court shall furnish the Office a copy of the order or decision referred to in Sections 67 and 68, which shall be published in the IPO Gazette
within three (3) months from the date such order or decision became final and executory, and shall be recorded in the register of the
Office.
• Section 70. Time to File Action in Court. –
➢ The actions indicated in Sections 67 and 68 shall be filed within one (1) year from the date of publication made in accordance with Sections
44 and 51, respectively. (n)
i) RELATE: SEC. 44. Publication of Patent Application. - 44.1. The patent application shall be published in the IPO Gazette together with a
search document established by or on behalf of the Office citing any documents that reflect prior art, after the expiration of eighteen (18)
months from the filing date or priority date.
• Section. 236 Preservation of Existing Rights. –
➢ Nothing herein shall adversely affect the rights on the enforcement of rights in patents, utility models, industrial designs, marks and works,
acquired in good faith prior to the effective date of this Act. (n)
• CASE: Albana vs. Director of Patents

➢ Appellant does not ask for the registration of the alleged agreement between him and the inventors, because as it is not in due form it
cannot be recorded, but prays that the Director of Patents compel applicant-inventor Maximo B. Tapinio to sign the other applicant-inventor
Dolorito M. Feliciano) and both applicant-inventors to acknowledge it... And to have both documents recorded in the Patent Office and in the
office of the Registrar of Deeds. Under the provisions of the Patent Law (Republic Act No. 165).
➢ Director of Patent has no power and authority to compel the applicant-inventors to do what the appellant is asking them to perform.
➢ What the appellant asked the Director Patents to do for him is essentially a judicial function which would require the determination or
finding by a court of competent jurisdiction as to whether there was a meeting of the minds of the contracting parties before it could compel
the applicant-inventors to perform what the appellant prays the court to order them to do.
----SAPALO START----
RIGHTS OF PATENTEES
• Section 71 - Rights conferred by patent.
(1) Section 71. Rights Conferred by Patent. –
71.1. A patent shall confer on its owner the following exclusive rights:

116
(a) Where the subject matter of a patent is a product,

• to restrain, prohibit and prevent any unauthorized person or entity from
• making,
• using,
• offering for sale,
• selling or
• importing that product;
(b) Where the subject matter of a patent is a process,

• to 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.
71.2. Patent owners shall also have the right
➢ to assign, or
➢ transfer by succession the patent, and
➢ to conclude licensing contracts for the same. (Sec. 37, R.A. No. 165a)
Note
• that 71 does not include exportation.
LIMITATIONS OF PATENT RIGHTS
SEC. 72. Limitations of Patent Rights. - The owner of a patent has no right to prevent third parties from performing, without his
authorization, the acts referred to in Section 71 hereof in the following circumstances
• Section 72.1 – Exhaustion of patent rights. (TAKE NOTE OF THE DIFFERENCES between drugs and medicines and regular patents)
o 72.1. Using a patented product which has been

117
▪ put on the market in the Philippines by the owner of the product, or with his express consent,
• insofar as such use is performed after that product has been so put on the said market:
o Provided, That, with regard to drugs and medicines, the limitation on patent rights shall apply
• after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent owner, or by
any party authorized to use the invention:
o Provided, further, That the right to import the drugs and medicines contemplated in this section shall be available to
▪ any government agency or
▪ any private third party;
Notes:
• exhaustion qualify it as to whether it was put in the market here
Case Facts Issue Doctrine

US v. Corporation licenses the Whether or not the resale An incident to the purchase of any
Univis Lens Company to provision of the licensing article, whether patented or
manufacture lens blanks system is valid unpatented, is the right to use and sell
and to sell them to it, and, upon familiar principles, the
designated licensees of Patentee’s monopoly authorized sale of an article which is
the Corporation, upon the remains so long as he capable of use only in practicing the
Lens Company's payment retains the ownership of the patent is a relinquishment of the
to the Corporation of an patented article. But sale of patent monopoly with respect to the
agreed royalty of 50 cents it exhausts the monopoly in article sold.
a pair. Has three kinds of that article, and the
licenses to wholesalers, patentee may not Sale of a lens blank by the patentee or
finishing, prescription. thereafter, by virtue of his by his licensee is thus, in itself, both a
patent, control the use or complete transfer of ownership of the
disposition of the article. blank, which is within the protection
Hence, the patentee cannot of the patent law, and a license to
control the resale price of practice the final stage of the patent
patented articles which he procedure
has sold. He has thus parted
with his right to assert the
patent monopoly with

118
respect to it and is no
longer free to control the
price at which it may be
sold, either in its unfinished
or finished form
• 72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose:
o Provided, That it does not significantly prejudice the economic interests of the owner of the patent;
• Sections 72.3 and 72.4
72.3. Where the act consists of making or using exclusively

(1) for experimental use of the invention for scientific purposes or
(2) educational purposes and such other activities
(3) directly related to such scientific or educational experimental use;
72.4. In the case of drugs and medicines, where the act includes testing, using, making or selling the invention including any
data related thereto,
• solely for purposes reasonably related to the development and submission of information and
• issuance of approvals by government regulatory agencies required under any law of the Philippines or of
another country that regulates the manufacture, construction, use or sale of any product:
o Provided, That, in order to protect the data submitted by the original patent holder from unfair
commercial use provided in Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement), the Intellectual Property Office, in consultation with the
appropriate government agencies, shall issue the appropriate rules and regulations necessary therein
not later than one hundred twenty (120) days after the enactment of this law;
o Read: Roche vs. Bolar Pharmaceuticals, 773 F2d 858, April 23, 1984.

119

Roche vs. Bolar - Roche Products, a large research Was it a valid use? 1) On ‘expermintal
Pharmaceuticals oriented pharmaceutical company, use’: This started in
was the assignee of US Patent ‘053 Tests, demonstrations, Whittimore v Cutter
One of the chemical compounds and experiments, where Justice Story
found in said patent is flurazepam which are in keeping said that an infringer
hydrochloride for Dalamane. Bolar, with the legitimate must have an intent to
however, to ensure commercial business of the alleged use a pantented
success, immediately began its infringer are invention for profit.
effort to obtain federal approval to infringements for The principle evolved.
market its generic version of which experimental use An experiment with a
Dalmane (even if patent ‘053 hasn’t is not a defense. patented article for the
expired yet) sole purpose of
The experimental use gratifying a
rule cannot be philosophical taste, or
construed broadly as to curiosity, or for mere
allow a violation of the amusement was held
patent laws in the guise not an infringement of
of "scientific inquiry," the rights of the
when that inquiry has patentee
definite, cognizable,
and not insubstantial There is no act of
commercial purposes. infringement unless it
affects the pecuniary
interest of the owner
of the patented
invention. The interest
to be promoted by the
wrongful employment
of the invention must
be hostile to the
interest of the

120
patentee
• Important samplex: Under US law, preparatory steps taken to comply with the United States FDA registration requirements
constitute infringement but not applicable in the Philippines per amendment to Section 72.418 of the IP Code by R.A. 9502
➢ In case of drugs and medicines Cheaper Medicine Law the testing, using, making of selling the invention for the purpose related to the
development and submission of information and issuance of government approvals required by law will not be deemed a violation of the
rights of the patentee. (Section 72.4, Rep. Act 8293 as amended by Rep. Act 9502).
• Section 72.5 – Preparation for individual cases in pharmacy, etc.
72.5. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine
(1) in accordance with a medical prescription or acts concerning the medicine so prepared;
• Section 72.6 – Use in transit.
72.6. Where the invention is used in

➢ any ship, vessel, aircraft, or land vehicle
➢ of any other country entering the territory of the Philippines temporarily or accidentally:
➢ Provided, That such invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and
i) not used for the manufacturing of anything to be sold within the Philippines. (Secs. 38 and 39, R.A. No. 165a)
OTHER LIMITATIONS
• Section 73 – Prior user.

• Sections 73.1 and 73.2.
SEC. 73. Prior User. –

73.1. Notwithstanding Section 72 hereof:

121
• any prior user, who, in

• good faith was
➢ using the invention or has
➢ undertaken serious preparations to use the invention in his enterprise or business,
• before the filing date or priority date of the application on which a patent is granted,
• shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect.
73.2. The right of the prior user

• may only be transferred or assigned
• together with his enterprise or business, or with that part of his enterprise or business in which the use or preparations for use have been
made. (Sec.40, R.A. No. 165a)
• Sections 74.1 to 74.4 – Use of invention by government.

• Term
o TERM: 20 years from date of filing; not renewable
• Territoriality
o TERRITORIALITY: those rights have force and effect only within Philippine territory
SEC. 74. Use of Invention by Government. - 74.1. A Government SEC. 93. Grounds for Compulsory Licensing. - The
agency or third person authorized by the Government may Director General of the Intellectual Property Office may
exploit the invention even without agreement of the patent owner grant a license to exploit a patented invention, even
where: without the agreement of the patent owner, in favor of
any person who has shown his capability to exploit the
invention, under any of the following circumstances:

122
(a) The public interest, in particular, national security, nutrition, 93.2. Where the public interest, in particular, national
health or the development of other sectors, as determined by the security, nutrition, health or the development of other
appropriate agency of the government, so requires; or vital sectors of the national economy as determined by
the appropriate agency of the Government, so requires;
or
(b) A judicial or administrative body has determined that the 93.3. Where a judicial or administrative body has
manner of exploitation, by the owner of the patent or his licensee, determined that the manner of exploitation by the owner
is anti-competitive; or of the patent or his licensee is anti- competitive; or
(c) In the case of drugs and medicines, there is a national 93.1. National emergency or other circumstances of
emergency or other circumstance of extreme urgency requiring extreme urgency
the use of the invention; or

123
(d) In the case of drugs and medicines, there is a public non- 93.4. In case of public non-commercial use of the patent
commercial use of the patent by the patentee, without by the patentee, without satisfactory reason;
satisfactory reason;
(e) In the case of drugs and medicines, the demand for the 93.6. Where the demand for patented drugs and
patented article in the Philippines is not being met to an medicines is not being met to an adequate extent and on
adequate extent and on reasonable terms, as determined by the reasonable terms, as determined by the Secretary of the
Secretary of the Department of Health. Department of Health.
93.5. If the patented invention is not being worked in
the Philippines on a commercial scale, although
capable of being worked, without satisfactory reason:
Provided, That the importation of the patented article
shall constitute working or using the patent.
Compulsory License

124
• Patents may be exploited without the authority of the patentee through a compulsory license (filed with the IPO after exhausting attempts
to obtain a voluntary license)
➢ [Class Notes: To commercialize. E.g., U.P. Manila got P40M as royalties to for the commercialization of the Lagundi formula. The
“prohibited clauses” may be asked in the finals. Was asked in the bar. §88 on mandatory provisions was also asked in the the bar.
Voluntary licensing will be asked in the finals. BOI pioneer status.]
Special Compulsory License
• Under the amendment, a special compulsory license can be issued by the Director General upon recommendation of the Secretary
of Health for the import of drugs and medicines.
• Such shall be through a special procedure and be intended primarily for domestic consumption.
• Adequate remuneration shall be paid by the exporting or importing country and shall grant the licensee to exercise reasonable
measure to stop the re-export of the patented drugs.
• Such an order is immediately executory and only the Supreme Court has the power to issue any temporary restraining order or
other remedies that can delay the grant of such special compulsory license.
Compulsory license for export
• 93-A.2. A compulsory license shall also be available for the manufacture and EXPORT OF DRUGS and medicines
➢ to any country having insufficient or no manufacturing capacity in the pharmaceutical sector to address public health problems:
➢ Provided, That, a compulsory license has been granted by such country or such country has, by notification or otherwise, allowed
importation into its jurisdiction of the patented drugs and medicines from the Philippines in compliance with the TRIPS Agreement
INFRINGEMENT OF PATENTS
• Section 76 – Civil action for infringement; What constitutes infringement of patent.

o the making, using offering for sale, selling or importing:
▪ a patented product,
▪ or a product obtained from a patented process
o without the authorization of the patentee

125
SEC. 76. Civil Action for Infringement. –

76.1. It is the
• making,
• using,
• offering for sale,
• selling, or
• importing
The Following:
• a patented product or a
• product obtained directly or indirectly from a patented process, or
• the use of a patented process
• without the authorization of the patentee constitutes patent infringement.
Provided, That, this shall not apply to

• (Limitations of Patent Rights);
• (Use of Invention by Government);
• (Compulsory Licensing);
• (Procedures on Issuance of a Special Compulsory License under the TRIPS Agreement)
76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented invention, whose rights have been infringed,
• may bring a civil action before a court of competent jurisdiction,
• to recover from the infringer such
➢ damages sustained thereby,
➢ plus attorney’s fees and
➢ other expenses of litigation, and to
➢ secure an injunction for the protection of his rights.
• Who may bring the action for infringement – Creser vs. Court of Appeals, 286 SCRA 1

126

Creser Floro International Corp., is a WON petitioner may The phrase "anyone
vs. domestic corporation engaged in the validly file an action possessing any right,
Court of manufacture, production, distribution for infringement title or interest in and
Appeals and sale of military armaments got against private to the patented
patent for Letters Patent covering respondent. invention" upon which
an aerial fuze. respondent discovered petitioner maintains its
that petitioner, Creser Precision person or entity who present suit, refers
System Inc., submitted samples of its has not been granted only to the patentee's
patented aerial fuze to the AFP for letters patent over an successors-in-interest,
testing petitioner was claiming the invention and has not assignees or grantees
aforesaid aerial fuze as its own. acquired any light or since actions for
petitioner filed on a complaint for title thereto either as infringement of patent
injunction and damages arising from assignee or as licensee, may be brought in the
the alleged infringement. has no cause of action name of the person or
for infringement persons interested,
whether as patentee,
assignees, or as
grantees, of the
exclusive
right. 12 Moreover,
there can be no
infringement of a
patent until a patent
has been issued
• Sections 76.3 to 76.4 – Damages that may be awarded.

127
76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty,
• Award a sum equivalent to reasonable royalty.
• Can be awarded as actual damages as long as not exceed 3x the amount of such actual damages (Sec. 76.4)
Section 76.5 – Disposal

76.5. The court may, in its discretion,
• order that the
➢ infringing goods,
➢ materials and
➢ implements predominantly used in the infringement
• be disposed of outside the channels of commerce or destroyed,
➢ without compensation; and
• Section 76.6 – Contributory infringement
76.6. Anyone who

• actively induces the infringement of a patent or
• provides the infringer with a component of a patented product or of a product produced because of a patented process
➢ knowing it to be especially adopted for infringing the patented invention and not suitable for substantial non-infringing use
➢ shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer. (Sec. 42, R.A. No. 165a)
• Read the following cases:

(i) Aro Manufacturing Co. vs. Convertible Top Replacement Co., Inc., 337 US 476.
(ii) Bard Inc. vs. Advance Cardiovascular Systems, 911 F2d 760.
(iii) Dawson Chemical Co., et. al. vs. Rohm & Haas Co., 448 US 176
Case Facts Issue? Doctrine

128
Aro Convertible Top Company is an Whether or not Aro is petitioners (Aro) know
Manufacturing assignee of a patent originally liable for contributory that the purchasers
Co. vs. owned by Automatic Body infringement with intend to use the fabric
Convertible Research Corporation. The patent respect to its for replacement
Top covers a top structure for manufacture and sale of purposes on automobile
Replacement automobile “convertibles. Ford’s replacement fabrics for convertible tops which
manufacture of cars using the the Ford cars. YES are covered by the
said top structure infringed on claims of respondents
AB’s patent. In a previous combination patent, and
decision, the court ruled that such manufacture and
there was no infringement and sale with that
that the creation of Aro of such knowledge might well
fabric portions (abric components constitute contributory
designed as replacements for infringement under §
worn-out fabric portions of 271.
convertible tops )are considered
as mere “repair.” Whoever sells a
component of a
patented machine,
manufacture,
combination or
composition, or a
material or apparatus
for use in practicing a
patented process,
constituting a material
part of the invention
knowing the same to be
especially made or
especially adapted for
use in an infringement
of such patent, and not

129
a staple article or
commodity of
commerce suitable for
substantial
noninfringing use, shall
be liable as a
contributory infringer
Bard Inc. vs. Defendant ACS was marketing the Case was Remanded. A A person induces
Advance only perfusion catheter. person induces infringement under Sec.
Cardiovascular Defendant ACS was marketing the infringement under Sec. 271(b) by actively and
Systems only perfusion catheter . The '017 271(b) by actively and knowingly aiding and
patent relates to a method for knowingly aiding and abetting another's direct
using a catheter in coronary abetting another's direct infringement
angioplasty ACS denied both infringement. Bard
charges and challenged the argues that ACS induced Whether the ACS
validity of the Bard patent Lower infringement under Sec. catheter "has no use
Court ruled with Bard. NOTE: THIS 271(b) by: 1) providing except through practice
WAS A SUMMARY JUDGMENT detailed instructions and of the patented
other literature on how method," is thus a
to use its catheter in a critical issue to be
manner which would decided in this case.
infringe claim 1; and 2) Whether the ACS
having positioned the catheter "has no use
inlets near the balloon's except through practice
proximal end so as to of the patented
allow a user of the ACS method," is thus a
catheter to infringe critical issue to be
claim. decided in this case.
Viewing the evidence in
this case in a light most
favorable to the
nonmoving party, and

130
resolving reasonable
inferences in ACS's
favor, it cannot be said
that Bard is entitled to
judgment as a matter of
law. The grant of
summary judgment
finding ACS a
contributory infringer
under Sec. 271(c) is not
appropriate
Dawson Respondent chemical Respondent has not "[w]hoever sells a
Chemical Co., manufacturer obtained a patent engaged in patent component of a
et. al. vs. Rohm on the method or process for misuse, either by its patented machine,
& Haas Co applying propanil, a chemical method of selling manufacture,
compound herbicide, to inhibit propanil or by its combination or
the growth of undesirable refusal to license composition, or a
plants in rice crops. Propanil is others to sell that material or apparatus
a nonstaple commodity that commodity. for use in practicing a
has no use except through patented process,
practice of the patented The relevant constituting a material
method. Petitioners legislative materials, part of the invention,
manufactured and sold especially the knowing the same to
propanil for application to rice extensive be especially made or
crops, with directions to congressional especially adapted for
purchasers to apply the hearings that led up to use in an infringement
propanil in accordance with the final enactment of of such patent, and
respondent's patented § 271 in 1952, not a staple article or
Petitioners did not cease reinforce the commodity of
manufacture and sale of propanil conclusion that § commerce suitable for
after that patent issued, despite 271(d) was designed substantial
knowledge that farmers to immunize from the noninfringing use,
purchasing their products would charge of patent shall be liable as a
misuse behavior contributory infringer.

131
infringe on the patented method similar to that in which

by applying the propanil to their respondent has done. Section 271 (c) identifies
crops. method. the basic dividing line
The approach that between contributory
Congress took toward infringement and patent
the codification of misuse. It adopts a
contributory restrictive definition of
infringement and patent contributory
misuse reveals a infringement that
compromise between distinguishes between
those two doctrines and staple and nonstaple
their competing policies articles of commerce. It
patentees to exercise also defines the class of
control over nonstaple nonstaple items
articles used in their narrowly. In essence,
inventions. this provision places
materials like the dry ice
of the Carbice case
outside the scope of the
contributory
infringement doctrine.
As a result, it is no
longer necessary to
resort to the doctrine of
patent misuse in order
to deny patentees
control over staple
goods used in their
inventions
• Section 77 – Infringement action by a foreign national.

132
• Any foreign national or juridical entity

➢ who meets the requirements of Section 3 and
➢ not engaged in business in the Philippines,
➢ to which a patent has been granted or assigned under this Act,
• may bring an action for infringement of patent, whether or not it is licensed to do business in the Philippines under existing law. (Sec. 41-A, R.A.
No. 165a)
• Section 78 - Process patents; burden of proof.
• If the subject matter of a patent is a process for obtaining a product,

➢ any identical product
➢ shall be presumed to have been obtained through the use of the patented process
• if the product is new or there is substantial likelihood that the
➢ identical product was made by the process and
➢ the owner of the patent has been unable despite reasonable efforts, to determine the process actually used.
• In ordering the defendant to prove that the process to obtain the identical product is different from the patented process,
➢ the court shall adopt measures to protect, as far as practicable, his manufacturing and business secrets. (n)
• Section 79 – Limitation of action for damages.

➢ No damages can be recovered for acts of infringement committed more than four (4) years before the institution of the action for
infringement.
• Section 80 – Damages; requirement of notice.

o Damages cannot be recovered for acts of infringement committed
▪ before the infringer had known, or had reasonable grounds to know of the patent
o It is presumed that the infringer had known of the patent
▪ if on the
• patented product, or
• on the container or package in which the article is supplied to the public, or
• on the advertising material relating to the patented product or process, are
▪ placed the words "Philippine Patent" with the number of the patent. (Sec. 44, R.A. No. 165a)

133
• Section 81 – Defenses in action for infringement.
➢ In an action for infringement, the defendant, in addition to other defenses available to him,
i) may show the invalidity of the patent, or
ii) any claim thereof, on any of the grounds on which a petition of cancellation can be brought under Section 61 hereof. (Sec.
45, R.A. No. 165)
NOTES:
• Defenses against patent infringement
➢ Use of the patent is covered by any of the limitations of rights of patentees (Sec 72)
➢ Grounds for cancellation of the patent
i) the invention is not new or patentable
ii) insufficient and incomplete disclosure of the invention thus failing to enable the person skilled in the art to carry out the invention
iii) the patent is contrary to public order or morality
• What are the remedies against infringers?
➢ Civil action for infringement for injunction and damages
➢ Criminal action for infringement
➢ Administrative remedy
• Section 84 – Criminal action for repetition of infringement.

➢ If infringement is repeated by
i) the infringer or
ii) by anyone in connivance with him
➢ after finality of the judgment of the court against the infringer
➢ The offenders shall be
i) Criminally liable
ii) Civilly liable for damages
➢ Criminal Liability:
i) Imprisonment: 6m – 3y
ii) Fine: 100k-300k
➢ Prescription: 3 years from comisison of crime

134
• Administrative remedy
• Instead of filing the infringement action with the Court it may be filed with Bureau of Legal Affairs (BLA) of the IPO if the amount of damages
claimed is not less than P200.000. The Department of Trade and Industrys Office of legal affairs and its Regional Offices have also jurisdiction
to try this case regardless of the amount of damages claimed.
SCOPE OF PATENT PROTECTION
• Section 35 – Disclosure and description of the invention.
35.1. Disclosure. - The application shall disclose the invention in a

• manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
• Where the application concerns a microbiological process or the product thereof and involves the use of a micro-organism
➢ which cannot be sufficiently disclosed in the application in such a way as to enable the invention to be carried out by a person skilled in the
art, and such material is not available to the public,
➢ the application shall be supplemented by a deposit of such material with an international depository institution.
35.2. Description. –
• The Regulations shall prescribe the contents of the description and the order of presentation. (Sec. 14, R.A. No. 165a)
• Section 36 – The claims.
36.1. The application shall contain one (1) or more claims which shall define the matter for which protection is sought.
➢ Each claim shall be clear and concise, and shall be supported by the description.
36.2. The Regulations shall prescribe the manner of the presentation of claims. (n)
• Section 75 – Extent of protection and interpretation of claims
75.1. The extent of protection conferred by the patent shall be determined by the
• claims, which are to be
• interpreted in the light of the description and drawings.
75.2. For the purpose of determining the extent of protection conferred by the patent, (INCLUDES EQUIVALENTS!)

135
• due account shall be taken of elements which are

• equivalent to the elements expressed in the claims,
➢ so that a claim shall be considered to cover not only all the elements as expressed therein, but also equivalents. (n)
(i) Wienam vs. Denmead, 56 US (15 How) 330
Facts Issue Date

A patent was taken out for making the This is a suit brought by the patentee Remand. The structure, the mode of
body of a burden railroad car of sheet against persons who had constructed operation, and the result attained were
iron, the upper part being cylindrical, octagonal and pyramidal cars, the same in both, and the specification
and the lower part in the form of a claimed in the patent covered the
frustum of a cone. This patent was not rectilinear cars. With this explanation of
for merely changing the form of a the patent, it should have been left to the
machine, but by means of such change jury to decide the question of
to introduce and employ other infringement as a question of fact.
mechanical principles or natural powers,
or a new mode of operation, and thus
attain a new and useful result.
DOCTRINE OF EQUIVALENTS
• Please read:
(i) Gselle vs. Yap, G.R. No. L-4720, January 19, 2009

In the manufacture of The question presented Finding that alcohol is a well-known equivalent to petroleum
canes and umbrella with by this appeal is or mineral oil the defendant was held liable for infringement
a curved handle by whether or not the use
means of a lamp or of a patented process the doctrine may properly be invoked to protect the
blowpipe, the defendant by a third person, patentee from colorable invasions of his patent under the
fed the lamp with without license or guise of substitution of some part of his invention by
alcohol in place of authority therefor, some well-known mechanical equivalent
mineral oil or petroleum constitutes an

136
which the patentee, infringement when the

used and cited that alleged infringer has
change of fuel as substituted in lieu of
defense against the case some unessential part
for infringement. of the patented
process a well-known
mechanical equivalent
(ii) Godinez vs. Court of Appeals, G.R. No. 97343, September 13, 1993

SV Agro had a decline WON petitioner's product Tests have been established to determine infringement.
of more than 50% sales infringe upon the patent of These are (a) literal infringement; and (b) the doctrine of
in a Zamboanga private respondent. YES equivalents. In using literal infringement as a test, ". . .
branch, when they resort must be had, in the first instance, to the words of
found similar power The reason for the doctrine of the claim.
tillers being sold by equivalents is that to permit the
petitioner Godines. imitation of a patented the doctrine of equivalents which recognizes that minor
Case for infringement + invention which does not copy modifications in a patented invention are sufficient to
Unfair competition any literal detail would be to put the item beyond the scope of literal infringement.
convert the protection of the "(a)n infringement also occurs when a device appropriates
patent grant into a hollow and a prior invention by incorporating its innovative concept
useless thing
and, albeit with some modification and change, performs
substantially the same function in substantially the same
way to achieve substantially the same result."
More specifically, it is necessary and sufficient to

constitute equivalency that the same function can be
performed in substantially the same way or manner, or by
the same or substantially the same, principle or mode of
operation;

137
(iii) Smith Kline Beckman vs. Court of Appeals, G.R. 126627, August 2003

In action for While both compounds have the Identity of result by itself does to prove that the two
infringement Smith Kline effect of neutralizing parasites in compound are equivalent.
claims that the active animals, identity of result does
ingredient albendazole not amount to infringement of When the language of its claims is clear and distinct, the
patent unless Albendazole
of defendent drug patentee is bound thereby and may not claim anything
operates in substantially the
imjoregnon is equivalent same way or by substantially beyond them. And so are the courts bound which may
to its patented the same means as the patented not add to or detract from the claims matters not
compound, both being compound, even though it expressed or necessarily implied, nor may they enlarge
sold to combat worm or performs the same function and the patent beyond the scope of that which the inventor
parasite infestation in achieves the same result. In other claimed and the patent office allowed, even if the
animals. The court words, the principle or mode of patentee may have been entitled to something more
dismissed the case operation must be the same or than the words it had chosen would include
substantially the same.
because apart from
showing that both are When two or more inventions are claimed in a single
The doctrine of equivalents thus
anthelmintic agents, requires satisfaction of the application but are of such a nature that a single patent may
Smith Kline did not function-means-and-result test, not be issued for them. The applicant thus is required to divide,
substantiate the method the patentee having the burden that is, to limit the claims to whichever invention he may elect,
or means by which to show that all three whereas those inventions not elected may be made the subject
albendazole weeds out components of such equivalency of separate applications which are called divisional applications.
parasites in animals thus test are met.
giving no information on The burden of proof to substantiate a charge for patent
whether that method infringement rests on the plaintiff
works in substantially,
the same way as Smith
Klines compounds.
(iv) Graver Tank and Manufacturing Co. vs. Linde Air Products Co., 339 US Supreme Court, 605 (1950)

138

Unionmelt uses On the record is this 1. The essence of the doctrine of equivalents is that
silicates of calcium and case, for infringement, one may not practice a fraud on a patent. P. 339 U.S.
magnesium. involving a claim for an 608
Lincolnweld uses electric welding process 2. The doctrine of equivalents is founded on the theory
silicates of calcium and and for fluxes consisting that, if two devices do the same work in
manganese. Linde of a combination of substantially the same way and accomplish
brought an action for alkaline earth metal substantially the same result, they are the same,
infringement silicate and calcium even though they differ in name, form or shape Pp.
fluoride, 339 U.S. 608-609.
the trial court was 3. In determining equivalents, consideration must be
justified in finding that An infringement takes given to the purpose for which an ingredient is used
the substitution in the place when a device in a patent, the qualities it has when combined with
accused composition of appropriates a prior other ingredients, the functions which it is intended
manganese silicate invention by to perform, and whether persons reasonably skilled
(which is not an alkaline incorporating its in the art would have known of the
earth metal. In place of innovative concept, and interchangeability of an ingredient not contained in
silicate for magnesium although with some the patent with one that was, P. 339 U.S. 609.
silicate (which is an modification and 4. A finding of equivalence is a determination of fact to
alkaline earth metal change, performs be made by the trial court, and the trial courts
silicate), where the two substantially the same decision should not be disturbed unless clearly
compositions were function in substantially erroneous. Pp. 339 U.S. 609-610.
substantially identical in the same way to achieve
operation and result, substantially the same
was so insubstantial, in result.
view of the technology
and the prior art, that
the patent was infringed
under the doctrine of
equivalents. Pp. 339 U.S.
610-612.

139
• Limitations to the doctrine of equivalents:

o Prosecution history estoppel
▪ Please read:
(i) Festo Corporation vs. Shoketsu Konzoku Kogyo, 535 US 722

Petitioner Festo W/N there should be a The doctrine of patent history estoppel bars a patent holder
Corporation owns two complete bar against the use from applying the principle of equivalents to expand the
patents for an of doctrine of equivalents scope of the claims to include those claims which were
improved magnetic when the prosecution history surrendered during the process of the prosecution of the
rodless cylinder, a shows that amendments to patent.
piston-driven device the patent claim were made?
that relies on magnets Our conclusion that prosecution history estoppel arises
to move objects in a when a claim is narrowed to comply with § 112 gives rise to
conveying system. No. only when the patentee is the second question presented: Does the estoppel bar the
unable to explain the reason inventor from asserting infringement against any equivalent
Festo’s first patent for amendment, estoppel not to the narrowed element or might some equivalents still
application on the only applies but also “bar[s] infringe?
magnetic rodless the application of the
cylinder (Stoll Patent) doctrine of equivalents as to Though prosecution history estoppel can bar challenges to a
was first rejected that element.” wide range of equivalents, its reach requires an examination
because the exact of the subject matter surrendered by the narrowing
method of application amendment. The complete bar avoids his inquiry by
was unclear. So it was establishing a per se rule; but that approach is inconsistent
amended to meet with the purpose of applying the estoppel in the first place -
these objections and -- to hold the inventor to representations made during the
references to prior art application process and to the inferences that may
were added. reasonably be drawn from the amendment. By amending
the application, the inventor is deemed to concede that the
The second application patent does not extend as far as the original claim.
(Carroll Patent) was

140
also amended during

the proceedings,
adding further prior art
references.
Both amended patents

added a new
limitation–that the
inventions contain a
pair of sealing rings,
each having a lip on
one side, which would
prevent impurities
from getting on the
piston assembly
(ii) Werner Jenkinson vs. Hilton Davis Chemicals, 520 US 17 (1997)
Facts Infringement Doctrine
Respondent Hilton Davis already No. We think the better rule is to place
holds a patent (Patent ‘746), issued The “triple identity test” focuses on the burden on the patent holder to
in 1985, for an improved the function of a particular element in establish the reason for an
purification process involving a claim, the way that element serves amendment required during patent
“ultrafiltration”. that function and the result obtained prosecution. The court then would
by that element. The “Insubstantial decide whether that reason is

141
The original application Difference test” on the other hand is sufficient to overcome prosecution
encompasses all pH levels. used to determine whether the history estoppel as a bar to
difference between the element of application of the doctrine of
The inventors added the phrase at a the claim and the element of the equivalents to the element added by
pH from approximately 6.0 to accused product or process are so that amendment.
9.0during patent prosecution. At a insubstantial so as to be considered
minimum, this phrase was added to equivalents of each other. Where no explanation is
distinguish a previous patent (the established, however, the court
Boothpatent) that disclosed an Both tests are actually less important should resume that the PTO had a
ultrafiltration process operating at a than determining whether the substantial reason related to
pH above 9.0 accused product or process contain patentability for including the
elements identical or equivalent to limiting element added by
each claimed element of patented amendment. In those circumstances
The lower limit certainly did not
invention. The different frameworks prosecution history estoppel would
serve to distinguish the Booth
patent, which said nothing about pH may be applied to different sets of bar the application of the doctrine
circumstances but there must be a equivalents as to the element.
level below 6.0. Thus, while a lower
focus on individual elements and
limit of 6.0 by its mere inclusion,
there must be special vigilance Today we adhere to the doctrine of
became a material element of the
against allowing the concept of equivalents. The determination of
claim, that did not necessarily
equivalence to eliminate completely equivalence should be applied as an
preclude the application of the
any such elements. objective inquiry on an element by
doctrine of equivalents as to that
element. element basis. Prosecution history
estoppels continues to be available
as a defense to infringement, but if
the patent holder demonstrates
that an amendment required during
prosecution had a purpose
undrelated to patentabilty, a court
must consider that purpose in order
to decide whether an estoppel is
precluded. Where the holder is
unable to establish such a purpose, a

142
court should presume that the

purpose behind the required
amendment is such that prosecution
history estoppel would apply.
• APPLICANT: (SEE WHO IS AN OWNER)

➢ SEC. 3. International Conventions and Reciprocity. - Any person who is a national or who is domiciled or has a real and effective industrial
establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of
unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be
entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights
to which any owner of an intellectual property right is otherwise entitled by this Act. (n)
PLEASE SEE ATTACHMENT POWERPOINT OF MA’M

143
• SEC. 117. Registration. - 117.1. Where the Office finds that the conditions referred to in Sec. 113 are fulfilled, it shall order that registration
be effected in the industrial design or layout-design register and cause the issuance of an industrial design or layout-design certificate of
registration; otherwise, it shall refuse the application.
• SEC. 119. Application of Other Sections and Chapters. - 119.1. The following provisions relating to patents shall apply mutatis mutandis to
an industrial design registration:
• SEC. 52. Publication Upon Grant of Patent. –

➢ 52.1. The grant of the patent together with other related information shall be published in the IPO Gazette within the time prescribed by
the Regulations. 52.2.

144
➢ Any interested party may inspect the complete description, claims, and drawings of the patent on file with the Office. (Sec. 18, R.A. No.
165a)
SEC. 45. Confidentiality Before Publication. –
• A patent application, which has not yet been published, and all related documents, shall not be made available for inspection without the
consent of the applicant.
SEC. 48. Request for Substantive Examination. –
• 48.1. The application shall be deemed withdrawn unless within six (6) months from the date of publication under Section 41, a written
request to determine whether a patent application meets the requirements of Sections 21 to 27 and Sections 32 to 39 and the fees have
been paid on time.
• 48.2. Withdrawal of the request for examination shall be irrevocable and shall not authorize the refund of any fee. (n)
Annual fees and effect of Non-payment (sec 55)
• annual fee shall be paid upon the expiration of four (4) years from the date the application was published
• on each subsequent anniversary of such date.
How made
• within three (3) months before the due date.

• No fee if the application be withdrawn, refused, or cancelled.
Effect
• Non- payment - withdrawn or the patent considered as lapsed from the day following the expiration of the period
➢ be published in the IPO Gazette and register of office
• grace period of six (6) months shall be granted for the payment of the annual fee,
➢ upon payment of the prescribed surcharge for delayed payment.
• NOTES: what is the difference between withdraw or lapsed?

145
Surrender of Patent. (Sec56)

• may surrender his patent or any claim or claims forming part thereof to the Office for cancellation.
➢ With consent of all parties having grants or license / or interest
➢ Owner of patent may surrender
• There can be opposition by any person by giving notice
• If patent can be surrendered
➢ as from the day when notice of his acceptance is published in the IPO Gazette, the patent shall cease to have effect,
i) but no action for infringement shall lie and no right compensation shall accrue for any use of the patented invention
ii) before that day for the services of the government.
Correction of Mistakes of the Office. (Sec 57)

• The Director shall have the power to correct,
➢ without fee,
➢ any mistake in a patent incurred through the fault of the Office
➢ when clearly disclosed in the records thereof,
i) to make the patent conform to the records.
SEC. 58. Correction of Mistake in the Application.

• On request of any interested person and payment of the prescribed fee,
• the Director is authorized to correct any mistake in a patent of a
➢ formal and clerical nature, not incurred through the fault of the Office.
SEC. 59. Changes in Patents.

The owner of a patent shall have the right to request the Bureau to make the changes in the patent in
order to:
1. Limit the extent of the protection conferred by it;
2. Correct obvious mistakes or to correct clerical errors; and
3. Correct mistakes or errors, other than those referred to in letter (b), made in good faith:
a. Provided, That where the change would result in broadening of the extent of protection conferred by the patent, no
request may be made after the expiration of two (2) years from the grant of a patent and the change shall not affect
the rights of any third party which has relied on the patent, as published.
• No change in the patent shall be permitted under this section,

146
➢ where the change would result in the disclosure contained in the patent going beyond the disclosure contained in the
application filed.
• Office shall publish the changes made in the patent
• NOTES:
➢ Can you amend the disclosure? NO.
➢ But you can amend to broaden disclosure.
i) Example: it is up to 10% in disclosure but your first claim is from 3-5% you can amend to say 3-7% but still subject to
SUBSTANTIVE examination.
SEC. 60. Form and Publication of Amendment. –

• An amendment or correction of a patent shall be accomplished by a certificate of such amendment or correction,
➢ authenticated by the seal of the Office and signed by the Director,
➢ which certificate shall be attached to the patent.
➢ Notice of such amendment or correction shall be published in the IPO Gazette and copies of the patent kept or furnished by the
Office shall include a copy of the certificate of amendment or correction.
PATENT Utility Mode; Industrial Design

Any interested person may, In proceedings under Section 61 (any At any time
upon payment of the required fee, person) during the term of the industrial
petition to cancel the patent OR in In design registration, any person upon
an action for infringement, if the payment of the required fee,
court shall find the patent or any
claim to be invalid, it shall cancel the
same,
(a) That what is claimed as the (a) That the claimed invention does (a) If the subject matter of the
invention is not new or patentable; not qualify for registration as a industrial design is not registrable
utility model and does not meet the within the terms of Sections 112 and
(b) That the patent does not disclose requirements of registrability, in 113;
the invention in a manner particular having regard to
sufficiently clear and complete for Subsection 109.1 and Sections 22, (b) If the subject matter is not new;
it to be carried out by any person 23, 24 and 27; or
skilled in the art; or (b) That the description and the

147
claims do not comply with the (c) If the subject matter of the
(c) That the patent is contrary to prescribed requirements; industrial design extends beyond the
public order or morality. content of the application as
(c) That any drawing which is originally filed.
NOTES: is this an exclusive necessary for the understanding of
enumeration? No. the invention has not been
furnished;
(d) That the owner of the utility
model registration is not the
inventor or his successor in title.
If to some of the claims or parts or
the claim, cancellation may be
effected to such extent only.
• Sec. 230. Equitable Principles to Govern Proceedings.

➢ In all inter partes proceedings, equitable principles of laches, estoppel, and acquiescence where applicable, may be considered and
applied.
Proceedings (Sec 62-66)

• Requirement of the Petition.
➢ Verified
➢ In writing
➢ Statement of facts and grounds
➢ Attach necessary documents + English translation
• Notice upon filing of petition
➢ Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the patentee and all persons
➢ shall be published in the IPO Gazette.
• Committee of three
➢ In cases involving highly technical issues, on motion of any party,
➢ Decision by Dir. BLA plus 2 technical experts
➢ Appealable to the Dir-Gen
• Cancellation
➢ If proved shall order the patent

148
➢ If there is amendment, can maintain the patent as long as publication and fees are paid
i) at the same time as it publishes the mention of the cancellation decision, publish the abstract, representative claims and
drawings indicating clearly what the amendments consist of.
ii) If fees are not paid, it will be revoked
• Effect of Cancellation of Patent or Claim.
➢ The rights conferred are revoked
➢ Notice of the cancellation shall be published in the IPO Gazette.
➢ IMMEDIATELY executory decision of Dir. BLA
i) UNLESS restrained by Dir-Gen
• NOTES:
➢ What if there is a court order? What is the procedure
i) To whom shall the court address the order?
SEC. 230. Adoption of Intellectual Property (IP) Policies. – Schools and universities shall adopt intellectual property policies that would
govern the use and creation of intellectual property with the purpose of safeguarding the intellectual creations of the learning institution
and its employees, and adopting locally-established industry practice fair use guidelines. These policies may be developed in relation to
licensing agreements entered into by the learning institution with a collective licensing organization.
Patent Drafting
NOTES:
• Prosecution history considered helpful
• What are extrinsic evidence (expert testimony, dictionaries, treaties)
➢ Court has no obligation to use extrinsic evidence but may use it if it believes that it is helpful

Merrill v. LETTER PATENT WAS It is a process claim and NOT a PATENT LAW REQUIRES
Yeomans ISSUED IN FAVOR OF product claim OF THE APPLICANT A
JOSHUA MERRILL or DISTINCT AND SPECIFIC
improved manufacture of In his claim “"In carrying on my STATEMENT OF WHAT
two deodorized heavy new manufacture of deodorizing HE CLAIMS TO BE NEW
hydrocarbon oils. heavy oils with this apparatus, I AND
defendants have not place the oil to be deodorized in TO BE HIS INVENTION
infringed the patent, the

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because they never used still, “ The word "manufacture" in

that process, or any other, this sentence is one which is
for they manufactured Here the word "manufacture" is used with equal propriety to
none of the oils which they used in the sense of the word express the process of
bought and sold. "process" -- a word which could making an article, or the
be substituted for it without a article so made. "The
NOTES: shade of change in the meaning. manufacture of hydrocarbon
• Is it directed toward As it can here mean nothing else oils" means primarily the
products or process? but process, we have a definition making of
• Using the specification of the meaning to be attached to it hydrocarbon oils. It may
then it was clearly in other parts of the same mean the thing made, also.
established that paper if that meaning were
inventor calls his otherwise doubtful.
invention as the thing
that produces the oil.
Teva The basic dispute in this Whether an appellate court should The clear error standard is
Pharma case concerns the meaning use a clear error standard of applied to the review of the
v. Sandoz of the words ‘molecular review or a de novo standard when resolution of subsidiary
weight’ as it appears in a reviewing a district court's factual matters in the course
patent claim. The drug’s resolution of an underlying factual of patent claim construction.
active ingredient dispute in the It is applied when the
‘copolymer-1’ is made up construction of a patent claim? district court had to
of molecules of varying Clear error standard. consult extrinsic evidence
sizes. The relevant claim and was required to make
describes ‘copolymer-1’ as Therefore, while an appellate court subsidiary factual findings
having a molecular weight may still review a lower court's about that extrinsic evidence
of 5 to 9 kilodaltons construction of a claim de novo, to in
overturn the lower court's ruling, order to make the proper
Sandoz, Inc tried to market the appellate court must find that interpretation of a patent
a generic version of the lower court has made a clear claim.
Copaxone. Teva sued error with respect to the findings
Sandoz for patent of fact The U.S. Supreme Court has
infringement. Sandoz’ used the term “question of

150
defense is that molecular De Novo ONLY WHEN law” while pointing out that
weigh can mean 3 When the district court reviews a judge, in construing a
different things hence only evidence intrinsic to the patent claim, is engaged in
patent is not sufficient patent (the patent claims and much the same task as the
description specifications, along with the judge would be in construing
patent’s prosecution history), other written instruments,
NOTES: the judge’s determination will such as deeds,
• Question of claim amount solely to a contracts, or tariffs.
construction is for the determination of law, and the
JUDGE and not for court of appeals will review
the jury but not create that construction de novo.
exception for review
of factual matters.
• Construction of patent
certificates is purely a
question of law.
• The ultimate
construction of a claim
is a legal conclusion –
the appellate court
must find that it is
clearly erroneous.
Philipps The patents at issue were • Invoking the principle that
v. AWH for modular steel shell “claims should be so
panels that could be construed, if possible, as to
arranged into vandalism sustain their validity,” Rhine v.
resistant walls. The panels Casio, Inc., 183 F.3d 1342,
1345 (Fed.Cir.1999), AWH
interlocked by means of
argues that the term “baffles”
steel baffles - internal should be given a restrictive
barriers meant to create meaning because if the term is
fillable compartments or to not construed restrictively, the
deflect projectiles that asserted claims would be
penetrate the outer wall. invalid
Defendant AWH • [C]laims can only be

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Corporation distributed construed to preserve their

similar modular panels, validity where the proposed
and Plaintiff, Phillips, sued claim construction is
‘practicable,’ is based on
AWH for patent
sound claim construction
infringement. AWH
principles, and does not revise
asserted that its panels did or ignore the explicit language
not meet all of the of the claims
limitations of Phillips' • having concluded that the
patent claims amended claim is susceptible
of only one reasonable
construction, we cannot
construe the claim differently
from its plain meaning in
order to preserve its validity
•
Markman Markman v. Westview Construction of a patent,
v. Instruments, Inc., 517 U.S. including terms of art within its
Westview 370 (1996), is a United claim, is exclusively within the
States Supreme Court case province of the court.
on whether the Accordingly, the court held that
interpretation of patent the interpretation of the word
claims is a matter of law “inventory”� in this case was
or a question of fact. An an issue for the judge, not the
issue designated as a jury and affirmed the decision
matter of law is resolved of the Court of Appeals for the
by the judge, and an issue Federal Circuit.
construed as a question of
fact is determined by the
jury

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Assessors:
• SEC. 83. Assessor in Infringement Action. –
➢ 83.1. Two (2) or more assessors may be appointed by the court. The assessors shall be possessed of the necessary scientific
and technical knowledge required by the subject matter in litigation. Either party may challenge the fitness of any assessor
proposed for appointment.
➢ 83.2. Each assessor shall receive a compensation in an amount to be fixed by the court and advanced by the complaining party,
which shall be awarded as part of his costs should he prevail in the action. (Sec. 47, R.A. No. 165a)
Voluntary Licensing [very important in the bar]

• Jurisdiction is with the director of documentary, information, tech transfer bureau
➢ Exercise quasi judicial jurisdiction in the settlement of disputes between parties to a technology transfer arrangement arising from
a TT payment including the fixing of appropriate amount
• SEC. 85. Voluntary License Contract. –
➢ 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, all technology transfer
arrangements shall comply with the provisions of this Chapter. (n)
• SEC. 86. Jurisdiction to Settle Disputes on Royalties. –
➢ The Director of the Documentation, Information and Technology Transfer Bureau
i) shall exercise quasi-judicial jurisdiction in the settlement of disputes
ii) between parties to a technology transfer arrangement arising from technology transfer payments,
iii) including the fixing of appropriate amount or rate of royalty. (n)
• SEC. 87. Prohibited Clauses. - Except in cases under Section 91, the following provisions shall be deemed prima facie to have an
adverse effect on competition and trade:
➢ 87.1. Those 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;
➢ 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;
➢ 87.8. Those that prohibit the licensee to export the licensed product unless justified for the protection of the legitimate interest of

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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;
➢ 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;
➢ 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.
• SEC. 88. Mandatory Provisions. – The following provisions shall be included in voluntary license contracts:
➢ 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;
➢ 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.
• SEC. 89. Rights of Licensor. –
➢ In the absence of any provision to the contrary in the technology transfer arrangement,
➢ the grant of a license
i) shall not prevent the licensor from granting further licenses to third person
ii) nor from exploiting the subject matter of the technology transfer arrangement himself. (Sec. 33-B, R.A. 165a)
• SEC. 90. Rights of Licensee. - The licensee shall be entitled to exploit the subject matter of the technology transfer arrangement

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during the whole term of the technology transfer arrangement.

• 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,
i) 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
• SEC. 92. Non-Registration with the Documentation, Information and Technology Transfer Bureau. –
➢ Technology transfer arrangements that conform with the provisions of Sections 86 and 87 need not be registered with the
Documentation, Information and Technology Transfer Bureau.
➢ Non-conformance with any of the provisions of Sections 87 and 88, however, shall automatically render the technology transfer
arrangement unenforceable,
i) unless said technology transfer arrangement is approved and registered with the Documentation, Information and Technology
Transfer Bureau under the provisions of Section 91 on exceptional cases.
FOR GROUNDS OF COMPULSORY LICENSE PLEASE SEE PART OF SAPALO
Compulsory Licensing
• SEC. 93-A. Procedures on Issuance of a Special Compulsory License under the TRIPS Agreement. –
➢ 93-A.1. The Director General of the Intellectual Property Office, upon the written recommendation of the Secretary of the
Department of Health, shall, upon filing of a petition,
i) grant a special compulsory license for the importation of patented drugs and medicines.
➢ The special compulsory license for the importation contemplated under this provision shall be an additional special alternative
procedure to ensure access to quality affordable medicines and shall be primarily for domestic consumption:
i) Prouided, That adequate remuneration shall be paid to the patent owner
(1) either by the exporting or importing country.
➢ The compulsory license shall also contain a provision directing the grantee the license to exercise reasonable measures to
prevent the re-exportation of the products imported under this provision.
➢ The grant of a special compulsory license under this provision shall be an exception to Sections 100.4 and 100.6 of Republic Act
No. 8293 and shall be immediately executory.
• No court, except the Supreme Court of the Philippines, shall issue any temporary restraining order or preliminary injunction or
such other provisional remedies that will prevent the grant of the special compulsory license.

155
• 93-A.2. A compulsory license shall also be available for the manufacture and export of drugs and medicines to any country
having insufficient or no manufacturing capacity in the pharmaceutical sector to address public health problems:
➢ Provided, That, a compulsory license has been granted by such country or such country has, by notification or otherwise, allowed
importation into its jurisdiction of the patented drugs and medicines from the Philippines in compliance with the TRIPS
Agreement.
• 93-A.3. The right to grant a special compulsory license under this section shall not limit or prejudice the rights, obligations and
flexibilities provided under the TRIPS Agreement and under Philippine laws, particularly Section 72.1 and Section 74 of the
Intellectual Property Code, as amended under this Act. It is also without prejudice to the extent to which drugs and medicines
produced under a compulsory license can be exported as allowed in the TRIPS Agreement and applicable laws.
• SEC. 94. Period for Filing a Petition for a Compulsory License. –

➢ 94.1. A compulsory license may not be applied for on the ground stated I Subsection 93.5 before the expiration of a period of
four (4) years from the date of filing of the application
i) or three (3) years from the date of the patent whichever period expires last.
➢ 94.2. A compulsory license which is applied for on any of the ground stated in Subsections 93.2, 93.3, 93.4 and 93.6 and Section
97 may b applied for at any time after the grant of the patent. (Sec. 34(1), R.A. No. 165)
• SEC. 95. Requirement to Obtain a License on Reasonable Commercial Terms. –
➢ 95.1. The license will only be granted after the petitioner has
i) made efforts to obtain authorization from the patent owner on reasonable commercial terms and conditions but such
efforts have
ii) not been successful within a reasonable period of time.
➢ 95.2. The requirement under Subsection 95.1 shall not apply in any of the following cases:
i) Where the petition for compulsory license seeks to remedy a practice determined after judicial or administrative process to be
anti- competitive;
ii) In situations of national emergency or other circumstances of extreme urgency;
iii) In cases of public non-commercial use;
iv) In cases where the demand for the patented drugs and medicines in the Philippines is not being met to an adequate extent
and on reasonable terms, as determined by the Secretary of the Department of Health.
➢ 95.3. In situations of national emergency or other circumstances of extreme urgency, the right holder shall be notified as soon as
reasonably practicable.
➢ 95.4. In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or
has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be
informed promptly. (n)
➢ Where the demand for the patented drugs and medicines in the Philippines is not being met to an adequate extent and on

156
reasonable terms, as determined by the Secretary of the Department of Health, the right holder shall be informed promptly.
• SEC. 96. Compulsory Licensing of Patents Involving Semi-Conductor Technology. –
➢ the license may only be granted in case of
i) public non-commercial use or
ii) to remedy a practice determined after judicial or administrative process to be anti-competitive.
• SEC. 97. Compulsory License Based on Interdependence of Patents.-
➢ If the invention protected by a patent, hereafter referred to as the "second patent," within the country cannot be worked without
infringing another patent, hereafter referred to as the "first patent," granted on a prior application or benefiting from an earlier
priority,
➢ a compulsory license may be granted to the owner of the second patent to the extent necessary for the working of his
invention, subject to the following conditions:
i) The invention claimed in the second patent involves an important technical advance of considerable economic significance
in relation to the first patent;
ii) The owner of the first patent shall be entitled to a cross-license on reasonable terms to use the invention claimed in the
second patent;
iii) The use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent;
• SEC. 98. Form and Contents of Petition. –
➢ The petition for compulsory licensing must be in writing, verified by the petitioner and accompanied by payment of the required
filing fee. It shall contain the name and address of the petitioner as well as those of the respondents, the number and date of issue
of the patent in connection with which compulsory license is sought, the name of the patentee, the title of the invention, the
statutory grounds upon which compulsory license is sought, the ultimate facts constituting the petitioner's cause of action, and the
relief prayed for. (Sec. 34-D, R.A. No. 165)
• SEC. 99. Notice of Hearing. –
➢ 99.1. Upon filing of a petition, the Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the patent
owner and all persons having grants or licenses, or any other right, title or interest in and to the patent and invention covered
thereby as appears of record in the Office, and of notice of the date of hearing thereon, on such persons and petitioner. The
resident agent or representative appointed in accordance with Section 33 hereof, shall be bound to accept service of notice of the
filing of the petition within the meaning of this Section.
➢ 99.2. In every case, the notice shall be published by the said Office in a newspaper of general circulation, once a week for three (3)
consecutive weeks and once in the IPO Gazette at applicant’s expense. (Sec. 34-E, R.A. No. 165)
• SEC. 100. Terms and Conditions of Compulsory License. – The basic terms and conditions including the rate of royalties of a
compulsory license shall be fixed by the Director of Legal Affairs subject to the following conditions:
➢ The scope and duration of such license shall be limited to the purpose for which it was authorized;

157
➢The license shall be non-exclusive;

➢The license shall be non-assignable, except with that part of the enterprise or business with which the invention is being
exploited;
➢ Use of the subject matter of the license shall be devoted predominantly for the supply of the Philippine market: Provided,
i) That this limitation shall not apply where the grant of the license is based on the ground that the patentee’s manner of
exploiting the patent is determined by judicial or administrative process, to be anti-competitive.
• SEC. 101. Amendment, Cancellation, Surrender of Compulsory License. –
➢ 101.1. Upon the request of the patentee or the licensee, the Director of Legal Affairs may amend the decision granting the
compulsory license,
i) upon proper showing of new facts or circumstances justifying such amendment.
➢ 101.2. Upon the request of the patentee, the said Director may cancel the compulsory license:
i) (a) If the ground for the grant of the compulsory license no longer exists and is unlikely to recur;
ii) if the licensee has neither begun to supply the domestic market nor made serious preparation therefor;
iii) if the licensee has not complied with the prescribed terms of the license;
• SEC. 102. Licensee’s Exemption from Liability. –
➢ Any person who works a patented product, substance and/or process under a license granted under this Chapter,
i) shall be free from any liability for infringement:
ii) Provided however, That in the case of voluntary licensing no collusion with the licensor is proven. This is without prejudice
to the
iii) right of the rightful owner of the patent to recover from the licensor whatever he may have received as royalties under the
license. (Sec. 35-E, R.A. No. 165a)
PRICE v. US
• The terms and conditions of the compulsory license were fixed by the Director of Patents after a hearing and careful
consideration of the evidence of the parties and in default of an agreement between them as to the terms of the license. This
he is authorized to do under Section 36 of Republic Act No. 165
• The patented invention in this case relates to medicine and is necessary for public health as it can be used as component in
the manufacture of anti-ulcer medicine. The Director of Patents did not err in granting a compulsory license over the entire
patented invention for there is no law requiring that the license be limited to a specific embodiment of the invention, or, to a
particular claim. The invention in this case relates to new aminoalkyl derivatives which have histamine H2 blocking activity,
having the general formula (I) and physiologically acceptable salts, Noxides and dehydrates thereof. The compound ranitidine
hydrochloride named in Claim 45 is also covered by General Claim I and several other sub-generic claims. Therefore, a license
for Claim 45 alone would not be fully comprehensive.
• In any event, since the petitioner will be paid royalties on the sales of any products the licensee may manufacture using any or
all of the patented compounds, the petitioner cannot complain of a deprivation of property rights without just compensation.

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Smith Kline v. CA
• This issue has already been resolved by this Court in the case of Smith Kline & French Laboratories, Ltd. vs. Court of Appeals,[27]
where petitioner herein questioned the BPTTTs grant of a compulsory license to Doctors Pharmaceuticals, Inc. also for the
manufacture, use and sale of Cimetidine. We found no inconsistency between Section 34 and the Paris Convention and held that:
➢ It is thus clear that Section A(2) of Article 5 [of the Paris Convention] unequivocally and explicitly respects
the right of member countries to adopt legislative measures to provide for the grant of compulsory licenses
to prevent abuses which might result from the exercise of the exclusive rights conferred by the patent. An
example provided of possible abuses is failure to work; however, as such, is merely supplied by way of an
example, it is plain that the treaty does not preclude the inclusion of other forms of categories of abuses.
• the legislative intent in the grant of a compulsory license was not only to afford others an opportunity to
provide the public with the quantity of the patented product, but also to prevent the growth of
monopolies[Congressional Record, House of Representatives, 12 May 957, 998]. Certainly, the growth of
monopolies was among the abuses which Section A, Article 5 of the Convention foresaw, and which our
Congress likewise wished to prevent in enacting R.A. No. 165
DOHA DECLARATION
Accordingly and in the light of paragraph 4 above, while maintaining our commitments in the TRIPS Agreement, we recognize that these
flexibilities include:
a. In applying the customary rules of interpretation of public international law, each provision of the TRIPS Agreement shall be read in
the light of the object and purpose of the Agreement as expressed, in particular, in its objectives and principles.
b. Each member has the right to grant compulsory licences and the freedom to determine the grounds upon which such licences are
granted.
c. Each member has the right to determine what constitutes a national emergency or other circumstances of extreme urgency, it being
understood that public health crises, including those relating to HIV/AIDS, tuberculosis, malaria and other epidemics, can represent a
national emergency or other circumstances of extreme urgency.
d. The effect of the provisions in the TRIPS Agreement that are relevant to the exhaustion of intellectual property rights is to leave each
member free to establish its own regime for such exhaustion without challenge, subject to the MFN and national treatment provisions
of Articles 3 and 4.

159
We recognize that WTO members with insufficient or no manufacturing capacities in the pharmaceutical sector could face difficulties in
making effective use of compulsory licensing under the TRIPS Agreement. We instruct the Council for TRIPS to find an expeditious
solution to this problem and to report to the General Council before the end of 2002
IMPLEMENTATION OF PAR. 6 OF DOHA
The obligations of an exporting Member under Article 31(f) of the TRIPS Agreement shall be waived with respect to the grant by it of a
compulsory licence to the extent necessary for the purposes of production of a pharmaceutical product(s) and its export to an eligible
importing Member(s) in accordance with the terms set out below in this paragraph:
(a) the eligible importing Member(s) (4) has made a notification (2) to the Council for TRIPS, that:
(i) specifies the names and expected quantities of the product(s) needed (5);
(ii) confirms that the eligible importing Member in question, other than a least developed country Member, has established that it has
insufficient or no manufacturing capacities in the pharmaceutical sector for the product(s) in question in one of the ways set out in the Annex to
this Decision; and
(iii) confirms that, where a pharmaceutical product is patented in its territory, it has granted or intends to grant a compulsory licence in
accordance with Article 31 of the TRIPS Agreement and the provisions of this Decision (6);
(b) the compulsory licence issued by the exporting Member under this Decision shall contain the following conditions:
(i) only the amount necessary to meet the needs of the eligible importing Member(s) may be manufactured under the licence and the
entirety of this production shall be exported to the Member(s) which has notified its needs to the Council for TRIPS;
(ii) products produced under the licence shall be clearly identified as being produced under the system set out in this Decision through
specific labelling or marking. Suppliers should distinguish such products through special packaging and/or special colouring/shaping of the
products themselves, provided that such distinction is feasible and does not have a significant impact on price; and
(iii) before shipment begins, the licensee shall post on a website (7) the following information:
- the quantities being supplied to each destination as referred to in indent (i) above; and
- the distinguishing features of the product(s) referred to in indent (ii) above;
(c) the exporting Member shall notify (8) the Council for TRIPS of the grant of the licence, including the conditions attached to it (9). The
information provided shall include the name and address of the licensee, the product(s) for which the licence has been granted, the quantity(ies)

160
for which it has been granted, the country(ies) to which the product(s) is (are) to be supplied and the duration of the licence. The notification
shall also indicate the address of the website referred to in subparagraph (b)(iii) above.
3. Where a compulsory licence is granted by an exporting Member under the system set out in this Decision, adequate remuneration
pursuant to Article 31(h) of the TRIPS Agreement shall be paid in that Member taking into account the economic value to the
importing Member of the use that has been authorized in the exporting Member. Where a compulsory licence is granted for the same
products in the eligible importing Member, the obligation of that Member under Article 31(h) shall be waived in respect of those
products for which remuneration in accordance with the first sentence of this paragraph is paid in the exporting Member.
4. In order to ensure that the products imported under the system set out in this Decision are used for the public health
purposes underlying their importation, eligible importing Members shall take reasonable measures within their means,
proportionate to their administrative capacities and to the risk of trade diversion to prevent re-exportation of the products
that have actually been imported into their territories under the system.
5. Members shall ensure the availability of effective legal means to prevent the importation into, and sale in, their territories
of products produced under the system set out in this Decision and diverted to their markets inconsistently with its
provisions, using the means already required to be available under the TRIPS Agreement.
ROMA DRUG v. RTC [there can be parallel importation of drugs and medicines]
• The unqualified right of private third parties such as petitioner to import or possess unregistered
imported drugs in the Philippines is further confirmed by the Implementing Rules to Republic Act No.
9502 promulgated on 4 November 2008
• Section 7 of Rep. Act No. 9502 amends Section 72 of the Intellectual Property Code in that the later
law unequivocally grants third persons the right to import drugs or medicines whose patent were
registered in the Philippines by the owner of the product:
• Had the Court proceeded to directly confront the constitutionality of the assailed provisions of the
SLCD, it is apparent that it would have at least placed in doubt the validity of the provisions. As written,
the law makes a criminal of any person who imports an unregistered drug regardless of the purpose,
even if the medicine can spell life or death for someone in the Philippines. It does not accommodate the

161
situation where the drug is out of stock in the Philippines, beyond the reach of a patient who urgently
depends on it. It does not allow husbands, wives, children, siblings, parents to import the drug in behalf
of their loved ones too physically ill to travel and avail of the meager personal use exemption allotted
by the law. It discriminates, at the expense of health, against poor Filipinos without means to travel
abroad to purchase less expensive medicines in favor of their wealthier brethren able to do so. Less
urgently perhaps, but still within the range of constitutionally protected behavior, it deprives Filipinos
to choose a less expensive regime for their health care by denying them a plausible and safe means of
purchasing medicines at a cheaper cost.
Merck KGAA v. Integra

• Integra Lifesciences sued Merck for supplying an Integra patented compound to other drug companies for use in preclinical research.
In response, Merck claimed its actions were allowed under the federal law that said it was not an act of patent infringement to use or
import a patented invention into the United States, if the invention was used only in ways related to the development and submission
of information under a federal drug law (such as the law governing submission of data to the FDA).
• Did federal law allow the use of patented inventions in preclinical research, the results of which were not ultimately included in a
submission to the FDA?
• Yes. Justice Antonin Scalia delivered the Court's unanimous opinion that federal law allowed the use of patented compounds in
preclinical studies, as long as there was a reasonable basis to believe the compound could be the subject of an FDA submission.
The Court reasoned that federal law provided "a wide berth for the use of patented drugs in activities related to the federal regulatiory
process" and that "this necessarily included preclinical studies." Because federal law required only a "reasonable relation" to FDA
submission, information gathered on the patented invention (a compound in this case) did not necessarily need to be submitted to the
FDA to be exempt from patent protection.
Budapest treaty on deposit of Micro Organism

• The main feature of the Treaty is that a contracting State which allows or requires the deposit of microorganisms for the purposes of
patent procedure must recognize, for such purposes, the deposit of a microorganism with any "international depositary authority",
irrespective of whether such authority is on or outside the territory of the said State.
• It is in order to eliminate the need to deposit in each country in which protection is sought, that the Treaty provides that the deposit of
a microorganism with any "international depositary authority" suffices for the purposes of patent procedure before the national patent
offices of all of the contracting States and before any regional patent office (if such a regional office declares that it recognizes the

162
effects of the Treaty). The European Patent Office (EPO), the Eurasian Patent Organization (EAPO) and the African Regional
Intellectual Property Organization (ARIPO) have made such declarations.
WIPO CONVENTION
• The WIPO Convention, the constituent instrument of the World Intellectual Property Organization (WIPO), was signed at Stockholm
on July 14, 1967, entered into force in 1970 and was amended in 1979. WIPO is an intergovernmental organization that became in
1974 one of the specialized agencies of the United Nations system of organizations.
• WIPO's two main objectives are
➢ (i) to promote the protection of intellectual property worldwide; and
➢ (ii) to ensure administrative cooperation among the intellectual property Unions established by the treaties that WIPO administers.
• Membership in WIPO is open to any State that is a member of any of the Unions and to any other State satisfying one of the
following conditions:
➢ (i) it is a member of the United Nations, any of the specialized agencies brought into relationship with the United Nations, or the
International Atomic Energy Agency;
➢ (ii) it is a party to the Statute of the International Court of Justice; or
➢ (iii) it has been invited by the General Assembly of WIPO to become a party to the Convention. There are no obligations arising
from membership of WIPO concerning other treaties administered by WIPO. Accession to WIPO is effected by means of the
deposit with the Director General of WIPO of an instrument of accession to the WIPO Convention.
• In order to attain these objectives, WIPO, in addition to performing the administrative tasks of the Unions, undertakes a number of
activities, including:
➢ (i) normative activities, involving the setting of norms and standards for the protection and enforcement of intellectual property
rights through the conclusion of international treaties;
➢ (ii) program activities, involving legal and technical assistance to States in the field of intellectual property;
➢ (iii) international classification and standardization activities, involving cooperation among industrial property offices concerning
patent, trademark and industrial design documentation; and
➢ (iv) registration and filing activities, involving services related to international applications for patents for inventions and for the
registration of marks and industrial designs.
Patent and Unfair Competition

• Exclusive right is not per se anti-competitive
➢ What is anti-competitive is you abuse the IP to maintain dominant position

Illinois v. Petitioners manufactured W/N there is a presumption of TYING

163
Independent printers with unpatented market power in a patented product ARRANGEMENTS

Ink ink. It had a deal with where a seller conditions its sale of CONSIDERED
manufacturers that the a patented product (the “tying” INVALID UNDER 4
latter will only buy product) on the purchase of a LAWS BEC OF
ink from petitioners. second product (the RESTRAIN TO TRADE
“tied” product). [NO, must be BUT COURT
Petitioners Trident, and its supported by evidence.] EVENTUALLY
parent Illinois Tool Works, DISAPPROVED OF
manufacture and market NOTES: SUCH PRESUMPTION
printing systems including:
(1) patented ink jet In all cases involving a
printhead, (2) patented ink tying arrangement, the
container attached to the plaintiff must prove that
printhead, (3) unpatented the defendant has market
ink. They sell their power in the
systems to original tying product.
equipment manufacturers
(OEMs). These OEMs
agree that they will only
purchase the ink
exclusively from
petitioners.
FTC v. Solvay files application for Whether a reverse payment Company A sues
Actavis Andro-Gel (brand-name settlement agreement regarding a Company B for patent
drug). Solvay sues under patent is violative of anti-trust law? infringement. The two
Par. IV Route against – It CAN companies settle under
Actavis and Paddock. BE, hence, the FTC complaint terms that require (1)
FDA approves Actavis should PROCEED. Company B, the claimed
first-to-file. RPSA entered. infringer, not to produce
Factors to consider if RPSA is anti- the patented product
competitive. Rather than measure until the patent's term
the length or amount of a restriction expires, and (2)
solely against the length of the Company A, the
patent's term or its earning patentee, to

164
potential, as the Court of Appeals pay B many millions of

apparently did here, this Court dollars.
answered the antitrust question by
considering traditional antitrust Because the settlement
factors such as likely requires the patentee to
anticompetitive effects, pay the alleged infringer,
redeeming virtues, market power, rather than the other way
and potentially offsetting legal around, this kind of
considerations present in the settlement agreement is
circumstances, often called a "reverse
such as here those elated to payment" settlement
patents. agreement.
Philippine Plant Variety Protection Act

• Plants
➢ Algae and macro fungi are plants but NOT bacteria
• Section 4. The Certificate of Plant Variety Protection shall be granted for varieties that are: (NUDS)
➢ New;
➢ Distinct;
➢ Uniform; and
➢ Stable.
• SEC. 5. Newness.
• A variety shall be deemed new if it has not been sold, offered for sale or disposed with consent of breeder for its exploitation:
➢ a) In the Philippines for more than one (1) year before the date of filing of application
➢ b) In other countries or territories in which the application has been filed,
i) all others types: for more than four (4) years or,
ii) vines or trees, more than six (6) years before the date of filing of an application.
• SEC. 6. Distinctness. —
➢ variety shall be deemed distinct if it is clearly distinguishable from any commonly known variety.
• SEC. 7. Uniformity. —

165
➢ to the variation that may be expected from the particular features of its propagation, it is sufficiently uniform in its relevant characteristics.
• SEC. 8. Stability. —
➢ if its relevant characteristics remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of
each such cycle.
• SEC. 36. Rights of Holders of Plant Variety Protection
➢ Production or reproduction;
➢ Conditioning for the purpose of propagation;
➢ Offering for sale;
➢ Selling or other marketing;
➢ Exporting;
➢ Importing; and
➢ Stocking for any purpose mentioned above.
• Term of protection [ it is from the DATE of GRANT and NOT filing date]
➢ Trees and vines: 25 years
➢ All others: 20 years
NOTES:
• Why? Food security
• Conditions
➢ NUDS
• Newness
➢ Like novelty
➢ Purple strawberries are new
• Patent principles applicable
➢ First to file etc.
• Coverage of protection
➢ What if cross purple and red strawberries and produce – a pinking one- yes it is protected because it is a derived variety
➢ Protected:
i) Essentially derived varieties
ii) Verities not clearly distinct from variety
iii) Verities that require the repeated use of the protected variety
• Infringement here is also protected (sec. 47) and defenses (Sec. 50)
➢ Which office administers – Department of agriculture

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1

• Report on International Patent System ACCORDING TO THE WIPO COMMITTEE :

Sources of Patent Law in the Philippines

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Introduction of the TRIPS:

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Article 1 of the TRIPS

• Nature and Scope of Obligations

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• What is the effect of an international patent application?

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• Section 231. Reverse Reciprocity of Foreign Laws

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Cheaper Medicines Act

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B. TRIPS AGREEMENT GENERAL PROVISIONS

Article 3 National Treatment

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Article 4 Most-Favoured-Nation Treatment for IP RIGHTS

Type Coverage Requirements Term

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Utility Model 1. New 7 years without renewal . No

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PROHIBITED ON PARALLEL FILING SEC 111

IP CODE PROVISIONS ON PATENTS

Purpose of the Patent Law

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remain there for the free use of the public.

The Nature and Function of the Patent System – Kitsch

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Sec. 21 IP CODE A. 27 of TRIPS

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Aesthetic creations; and No similar provision

Non Discrimination clause under Art. 27.1 of TRIPS

Special Note on the TRIPS

On Plant variety Act

• See discussion on NUDS (refer to earlier parts)

SHOFY PATENT MEDRANO 2018

Section 32 and 34 of the Indigenous People’s Right Act

Section 32. Community Intellectual Rights. –

Class Notes (From last year)

• Patent claim – sets boundaries, “patent fences.”

• Types of claims: (NOTE THAT THERE ARE ALSO use/product/method/process claims)

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Name Facts Patentable? Doctrine

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o (2) composed of cells

Case Facts Patentable Doctrine

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Thus, mircoorganisms are patentable in the PH. Thus

i) Natural Products and Substances

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Case Facts Patentable? Doctrine

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E: We must apply this well-

Programs for Computer Art. 171.4 of IPC

What Copyright Patent

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