Patentability Criteria
- Patentable inventions: technical solutions that are new, involve an inventive step, and industrial applicability
- Classes: machines, products, processes (or improvements), microorganisms, non-biological and microbiological processes
- Non-patentable: discoveries, scientific theories, schemes/rules for mental acts/business/games, surgical/therapeutic methods, plant varieties/animal breeds, aesthetic creations, matters against public order or morality
Novelty and Prior Art
- Invention is new if it does not form part of the prior art
- Prior Art defined as any public disclosure pre-filing date or priority date including published applications in the Philippines unless inventor is the same
- Prior use foreign to Philippines not prior art unless documented
- Non-prejudicial disclosures: certain disclosures by inventor or third parties within 12 months before filing do not affect novelty
Inventive Step and Person Skilled in the Art
- Inventive step: invention must not be obvious to a skilled person at filing date
- Only prior art publicly available before filing considered
- Person skilled: ordinary practitioner with common knowledge, access to relevant references, routine experimental means
Industrial Applicability
- Invention must be capable of production and use in any industry
Right to a Patent
- Right belongs to inventor(s), heirs, assigns
- Joint inventors hold the patent jointly
- Applications may be filed by inventor, legal rep, heirs, or assigns
- Commissioned inventions owned by commissioner unless otherwise agreed
- Employment inventions ownership depends on employment duties and agreements
- First to file rule governs ownership if separate independent inventors
- Right of priority for foreign applications under treaty with strict conditions and deadlines
Patent Applications: Content and Requirements
- Must be in English or Filipino
- Must include request for patent, description, claim(s), drawings, abstract
- Filing fees due within one month or application forfeited
- Drawings must meet technical standards for clarity and reproducibility
- Disclosure requirements ensure the invention can be carried out by skilled persons
- Applications involving microorganisms require deposit of culture
- Titles must be short, precise; abstracts concise summary within 150 words
- Prohibited content: contrary to public order/morality or disparaging others
Claims
- Claims define the legal scope of protection
- Multiple dependent claims allowed with additional fees
- Claims must be clear, concise, supported by description, avoid unnecessary references
Amendments
- Applicant can amend during examination but no new matter outside original disclosure
- Amendments post-final rejection require good cause
- Formal requirements for amendments and drawings
Formality and Filing
- Filing date given only when minimum elements are present (request, applicant info, description, claims)
- Missing or late drawings affect filing date
- Formality examination checks compliance including priority documents, proof of authority, fees
- Unity of invention required; divisional applications allowed for distinct inventions
Examination
- Examinations conducted ex parte by examiners who protect public interest
- Initial rejections intended as guidance, encouraging amendments
- Appeals possible to Director on adverse decisions
- Inventions that pass examination and fees paid result in patents granted
Publication and Substantive Examination
- Applications published 18 months after filing or priority date
- Third parties may file observations after publication
- Substantive examination requested by applicant within six months of publication
Patent Term and Renewal
- Patent term is 20 years from filing date
- Annual fees due starting 4 years after publication
- Grace period of 6 months with surcharge for renewal payments
- Non-payment results in lapse or withdrawal
Assignments and Rights
- Assignments must be written, notarized, identified, and recorded to be valid
- Licenses and other instruments similarly recorded
- Joint owners have personal use rights but need consent for licensing or assignments
Surrender and Correction
- Patents may be surrendered with parties' consent, subject to opposition
- Corrections of mistakes by Office or formal clerical mistakes by patentee possible
- Changes to limit or correct patents allowed subject to conditions
Legal Proceedings and Appeals
- Examiners act quasi-judicially with discretion
- Petitions and appeals handled within set periods
- Final decisions become res judicata if unappealed
- Appeals to the Director General and Court of Appeals permitted
Correspondence and Fees
- All transactions must be in writing addressed to Director of Patents
- Fees prepaid; no action without fees
- Inquiries on patentability prior to filing not entertained
Implementation and Effectivity
- Transitional provisions until bureau organization complete
- Repeal of prior inconsistent rules
- Provision for severability of invalid provisions
- Certified copies directed to government offices and law centers
- Rules effective 15 days after publication
This comprehensive outline captures key elements of the Philippines' rules and regulations on inventions under the Intellectual Property Code, facilitating understanding and compliance for inventors, applicants, and practitioners.