Answers to Questions on Patents PDF

# Answers to Questions on Patents ## FAQ on Patents **Q. What is a Patent?** 1. A Patent is a grant issued by the Government through the Intellectual Property Office of the Philippines (IP Philippines). 2. It is an exclusive right granted for a product, process or an improvement of a product or p...

# Answers to Questions on Patents ## FAQ on Patents **Q. What is a Patent?** 1. A Patent is a grant issued by the Government through the Intellectual Property Office of the Philippines (IP Philippines). 2. It is an exclusive right granted for a product, process or an improvement of a product or process which is new, inventive and useful. 3. This exclusive right gives the inventor the right to exclude others from making, selling or using the product of his invention during the life of the patent. 4. In return, the patent owner must share the full description of his invention. 5. This information on the patent is available to the public through the IP Philippines Official Gazette & Library. **Q. What rights does a patent owner have?** - May decide who may or may not use the patented invention for the period in which the invention is protected - May give permission to, or license others to use the invention on agreed terms - May sell the right to the patent to others - May prevent others from making, using or selling the product of his invention during the life of the patent **Q. What is the term of a patent?** The term of the patent protection is 20 years from the date of filing. **Q. Why are Patents necessary?** 1. Provides incentives to individuals (recognition and material rewards) 2. Assures the continuous enhancement of the quality of life 3. Can be utilized for as basis for future research and will in turn promote further creativity, innovation and development **Q. What is the Patent Cooperation Treaty (PCT)?** 1. An Agreement for International Cooperation 2. An Alternate Route to the Paris Convention 3. A "Filing System" NOT a "Granting System" 4. Entered into force on January 24, 1978 5. Became operational on June 1, 1978 6. 144 Contracting States as of June 2009 7. Philippines is 112th member **Q. What is the Patent Cooperation Treaty (PCT)?** * **BENEFITS FROM PCT:** 1. Facilitates obtaining protection for inventions in any or all PCT contracting States. 2. It provides for the filing of one patent application (the international application), with effect in several States, instead of filing several separate national and/or regional patent applications. 3. Gives the applicant more time and a better basis for deciding whether and in what countries to further pursue the patent application. 4. Means for evaluating chances of obtaining a patent. 5. Enables assessment of economic value of the invention. * **The PCT Procedure** * **International Phase** - Filing - International Search & Written Opinion - International Publication - International Preliminary Examination * **National Phase** **PRIOR ART - Everything made available to the public by means of:** - Written description - By use - Oral description **First-to-File Rule** The Right to a Patent shall belong to: 1. Person who filed an application 2. Applicant who has the earliest Filing Date or Priority Date **NON-PREJUDICIAL DISCLOSURE** Not Prejudicial to the filing of an Application: 1. Disclosure by the Inventor (Patent) or Maker (Utility Model) (must be filed within one (1) year from the time of disclosure) 2. Disclosure by the Designer (Industrial Design) (must be filed within six (6) months from the time of disclosure) **EINSTEIN PATENTS** - 45 PATENTS with LEO SZILARD (1926 to 1933) Home Refrigeration Technology - Explored practical applications for refrigeration cycles - Patent Rights sold to companies like Electrolux in Sweden - He was a technical assistant at the Swiss Federal Patent Office in Bern (examining patent applications) ## FAQ on Patents **Q. How can I find the patent laws of various countries?** Collection of Laws for Electronic Access (CLEA) provides easy access to intellectual property legislation from different countries as well as to treaties administered in WIPO List of URLs of regional and national of intellectual property offices ### Basic Differences between Patent, Utility Model and Industrial Design | Categories | Subject Matter of Protection | Novelty | Inventive Step | Industrial Applicability | Claim | Ornamental Features of shape, configuration, form, or a combination thereof | Term of Protection | |---|---|---|---|---|---|---|---| | **Patent (Invention)** | Apparatus (Product) & Method (Process) | YES | YES | YES | More than one (1) generic claim is allowed and dependent claims | | Twenty (20) years from the date of filing with payment of annuities | | **Utility Model** | Apparatus | YES | NO | YES | Only one (1) generic claim is allowed. No limit on the number of dependent claims | | Seven (7) years from the date of filing without renewal | | **Industrial Design** | Article of manufacture (Product) & Method (Process) | YES | NO | YES | Omnibus type of claim | YES | Five (5) years from the date of filing with 2 five year term renewals upon payment of fees | ### Basic Differences between Patent, Utility Model and Industrial Design **8. Omnibus Claims** Refer to the description or the drawings without providing any specific limitations. *Simple to write: 1. An apparatus for harvesting corn as described in the description. 2. A juice machine as shown in Figure 4. *Not all patent offices allow omnibus claims. Include an omnibus claim where possible * But pin your strategy on other claim types ## Patentable Inventions ANY TECHNICAL SOLUTION OF A PROBLEM IN ANY FIELD OF HUMAN ACTIVITY WHICH IS NEW, INVOLVES AN INVENTIVE STEP AND IS INDUSTRIALLY APPLICABLE SHALL BE PATENTABLE. ## Example **Problem:** Gripping problems with regards to handles of sports rackets such as tennis rackets greatly affects the performance of the player. **Solution:** A gripping contour is provided on the handle of the racket to allow a firm grip thereon. ### Novelty Issue Prior Art A teaches a tennis racket. Proposed invention appears to be novel over Prior Art A. ### Inventive Step Issue Prior Art A teaches a tennis racket and Prior Art B teaches a gripping contour on the handle of a sports racket. Proposed invention lacks inventive step over the combined features of Prior Arts A & B. ### Inventive Step/Person Skilled in the Art 1. Ordinary practitioner (fictional person) 2. Has access and understanding to all the prior art 3. Aware of common general knowledge in the specific art 4. Observes developments in the related technical field 5. Could be a team 6. No inventive ability ## Example (Selection of known material based on its suitability for the intended use) 1. **Problem:** Abrasion Resistance 2. **Solution to the Problem:** Applying "rigid polyurethane" material to the surface of the golf ball 3. **No Inventive Step:** "Rigid polyurethane" is known to be highly abrasion resistant - Applying the substance to solve the abrasion problems in golf balls would be an obvious matter to a person skilled in art 4. **Might be Inventive, IF:** There is an improved and unexpected result by significantly increasing the flight of the ball (strong evidence of the presence of invention) ## Statutory Classes **Invention/Utility Model** 1. A useful machine 2. A product 3. A Process 4. Improvement of any of the foregoing 5. Microorganism 6. Non-biological or microbiological processes ## Examples of Patentable Inventions * **A useful machine** e.g. biogas digester threshing machine * **A product** e.g. pharmaceutical product (vaccine for bovine coronavirus; chemical substance/composition * **A process or method** e.g. Method for Treating Hoof Infection * **Non-biological process** e.g. A method of treating a plant characterized by the application of growth- stimulating substance or radiation. * **Microbiological process** e.g. A process of isolating the bacteria from the soil.... ## Non-Patentable Inventions 1. Discoveries 2. Scientific theories 3. Mathematical methods 4. Schemes, rules and methods of -performing mental acts -playing games -doing business -programs for computers 5. Methods for treatment of the human or animal body by surgery or therapy & diagnostic methods practised on the human & animal body ## Non-Patentable Inventions 6. Plant varieties or animal breeds or essentially biological processes for the production of plants and animals 7. Aesthetic creations 8. Contrary to public order or morality ## Process Flow for a Grant of Patent **1. APPLICANT(First Party)** - Filing Of: - Request - Description - Fees upon filing or within a 30-day grace period **IP PHILIPPINES(Second Party)** - Receives - Assigns Filing Date - Conducts "FORMALITY "EXAMINATION" - Specification/Claim Format - Contents of the Request Form - Drawings - Appointment of Resident Agent - Other Formal Matters **PUBLIC(Third Party)** -? **2. APPLICANT(First Party)** - Sends Examiner's Action, If necessary, two (2) months to respond, two (2) extensions - Ex Parte Proceedings **IP PHILIPPINES(Second Party)** - Application CLASSIFICATION - Conducts Prior Art SEARCH - PUBLICATION of Application with Search Report after 18 months from the filing date **PUBLIC(Third Party)** - i **3. APPLICANT(First Party)** - Request for SUBSTANTIVE EXAMINATION, if desired **IP PHILIPPINES(Second Party)** - Conducts SUBSTANTIVE EXAMINATION - Industrial Applicability - Novelty; and Inventiveness - Sufficiency of Disclosure, Unity of Invention - Other Issues - Sends Communication, if necessary (Examiner's ACTION) **PUBLIC(Third Party)** **4. APPLICANT(First Party)** - Replies, if required **IP PHILIPPINES(Second Party)** - FINAL REFUSAL - APPEAL - Pays Maintenance Fee - GRANT (Letters Patent) - PUBLICATION of GRANT - Maintains Patent **PUBLIC(Third Party)**