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Chapter IV: Patentability |
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| 1. General | |
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Sec.21
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1.1
There are four basic requirements for patentability: (i)
There must
be an "invention" that can be considered as a “technical (ii)
The
invention must be "industrially applicable". (iii)
The
invention must be "new". (iv)
The
invention must involve an "inventive step". These
requirements will be dealt with in turn in the following sections
IV, 2 and 3, 4, 5 to 8, and 9, respectively. 1.2
In addition to these four basic requirements, the examiner should
be aware of the following two requirements that are implicitly contained
in the IP-code and the Implementing Rules and Regulations: |
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Sec.35.1
R.407(1)(a)
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(i) The
invention must be such that it can be carried out by a person skilled in
the art (after proper instruction by the application); this follows from
Sec.35.1. Instances where the invention fails to satisfy this requirement
are given in C-II, 4.11. (ii)
The
invention must be a “technical solution to a problem”, hence of a
"technical” character", to the extent that it must relate to a
technical field (R.407(1)(a)), must be concerned with a technical problem
(R.407(1)(c)), and must have technical features in terms of which the
matter for which protection is sought can be defined in the claim
(R.416(a)(b)), see also C-III, 2.1). 1.3
Sec.21 of the IP-code Convention does not require explicitly or
implicitly that an invention to be patentable must entail some technical
progress or even any useful effect. Nevertheless, advantageous effects, if
any, with respect to the prior art should be stated in the description
(R.407(1)(c)), and any such effects are often important in determining
"inventive step" (see IV, 9 here below). |
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Sec.21
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2.1
Sec.21 gives a definition of what is meant by "invention", but
Sec.22 contains a non-exhaustive list of things which shall not be
regarded as patentable inventions. It will be noted that the exclusions in
Sec.22.1 and Sec.22.2
are abstract (e.g. discoveries, scientific theories etc.) and the
exclusions in Sec.2.5 are non-technical (e.g. aesthetic creations). In
contrast to this, an "invention" within the meaning of Sec.21
must be of both a concrete and a technical character (see IV, 1.2 (ii)
here above). The
exclusions under Sec.22.1, 22.2 and 22.5 are dealt with under IV, 2.2 and
2.3 here below. The exclusions under Sec.22.4 (inventions in the
biological field) and 22.6 (public order and morality) are dealt with
under IV, 3 here below. The exclusions under Sec.22.3 (inventions in the
medical field) and under Sec.27 (industrial applicability) are dealt with
under IV, 4 here below. |
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Sec.21 R.201 R.415 |
2.1a
Examples of what an invention may be are given in Sec.21, R.201 and
R.415, i.e. a)
a useful
machine; b)
a product; c)
or process
or an improvement of any of the foregoing; d)
microorganism;
and e) non-biological and microbiological processes, or the use of an item in a specific process and/or for a specific purpose. 2.2
In considering whether the subject-matter of an application is an
invention within the meaning of Sec.21, there are two general points the
examiner must bear in mind. Firstly,
any exclusion from patentability under Sec.22.1 or Sec.22.2 will in
general apply only to the extent to which the application relates to the
excluded subject-matter as such. Secondly, the examiner should disregard
the form or kind of claim and concentrate on its content in order to
identify the real contribution which the subject-matter claimed,
considered as a whole, adds to the known art. If this contribution is not
of a technical character, there is no invention within the meaning of
Sec.21. Thus, for example, if the claim is for a known manufactured
article having a painted design or certain written information on its
surface, the contribution to the art is as a general rule merely an
aesthetic creation or presentation of information. Similarly, if a
computer program is claimed in the form of a physical record, e.g. on a
conventional tape or disc, the contribution to the art is still no more
than a computer program. In these instances the claim relates to excluded
subject-matter as such and is therefore not allowable. If, on the other
hand, a computer program in combination with a computer causes the
computer to operate in a different way from a technical point of view, the
combination might be patentable. It
must also be borne in mind that the basic test of whether there is an
invention within the meaning of Sec.22, is separate and distinct from the
questions whether the subject-matter is susceptible of industrial
application, is new and involves an inventive step. 2.3
The items of
Sec.22.1, 22.2 and 22.5 will now be dealt with in turn, and
further examples will be given in order better to clarify the distinction
between what is patentable and what is not. |
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Sec.22.1
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Discoveries If a person finds out a new property of a known material or article, that is a mere discovery and therefore not patentable. If however a person puts that property to practical use, an invention has been made which may be patentable. For example, the discovery that a particular known material is able to withstand mechanical shock would not be patentable, but a railway sleeper made from that material could well be patentable. To find a substance freely occurring in nature is also mere discovery and therefore not patentable. However, if a substance found in nature has first to be isolated from its surroundings and a process for obtaining it is developed, that process is patentable. Moreover, if the substance can be properly characterised either by its structure, by the process by which it is obtained or by other parameters (see III, 4.7a) and it is "new" in the absolute sense of having no previously recognised existence, then the substance per se may be patentable (see also IV, 7.3 here below). An example of such a case is that of a new substance which is discovered as being produced by a micro-organism. |
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Sec.22.1 R.202(a) |
Scientific theories These are a more generalised form of discoveries, and the same principle applies. For example, the physical theory of semiconductivity would not be patentable. However, new semiconductor devices and processes for manufacturing these may be patentable. |
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Sec.22.1 R.202(a) |
Mathematical methods
These are a particular example of the principle that purely abstract or intellectual methods are not patentable. For example, a shortcut method of division would not be patentable but a calculating machine constructed to operate accordingly may well be patentable. A mathematical method for designing electrical filters is not patentable; nevertheless filters designed according to this method could be patentable provided they have a novel technical feature to which a product claim can be directed. |
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Sec.22.2 R.202(b) |
Schemes, rules and
methods for performing mental acts, playing games or doing business These
are further examples of items of an abstract or intellectual character. In
particular, a scheme for learning a language, a method of solving
cross-word puzzles, a game (as an abstract entity defined by its rules) or
a scheme for organising a commercial operation would not be patentable.
However, novel apparatus for playing a game or carrying out a scheme might
be patentable. |
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Sec.22.2 R.202(b) |
Programs for computers The
basic patentability considerations here are exactly the same as for the
other exclusions listed in Sec.22. However a data-processing operation can
be implemented either by means of a computer program or by means of
special circuits, and the choice may have nothing to do with the inventive
concept but be determined purely by factors of economy or practicality.
With this point in mind, examination in this area should be guided by the
following approach: A
computer program claimed by itself or as a record on a carrier, is not
patentable irrespective of its content. The situation is not normally
changed when the computer program is loaded into a known computer. If
however the subject-matter as claimed makes a technical contribution to
the known art, patentability should not be denied merely on the ground
that a computer program is involved in its implementation. This means, for
example, that program-controlled machines and program-controlled
manufacturing and control processes should normally be regarded as
patentable subject-matter. It follows also that, where the claimed
subject-matter is concerned only with the program-controlled internal
working of a known computer, the subject-matter could be patentable if it
provides a technical effect. As an example consider the case of a known
data-processing system with a small fast working memory and a larger but
slower further memory. Suppose that the two memories are organised under
program control, in such a way that a process which needs more address
space than the capacity of the fast working memory can be executed at
substantially the same speed as if the process data were loaded entirely
in that fast memory. The
effect of the program in virtually extending the working memory is of a
technical character and might therefore support patentability. |
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Sec.22.5 R.202(e) |
Aesthetic creations An
aesthetic creation relates to an article (e.g. a painting or sculpture)
having aspects which are other than technical and the appreciation of
which is essentially subjective. If, however, the article happens also to
have technical features, it might be patentable, a tyre tread being an
example of this. The aesthetic effect itself is not patentable, neither in
a product nor in a process claim. For example a book characterised by the
aesthetic or artistic effect of its information contents, of its layout or
of its letterfont, would not be patentable, and neither would a painting
characterised by the aesthetic effect of its subject or by the arrangement
of colours, or by the artistic (e.g. Impressionist) style. Nevertheless,
if an aesthetic effect is obtained by a technical structure or other
technical means, although the aesthetic effect itself is not patentable,
the means of obtaining it may be. For example, a fabric may be provided
with an attractive appearance by means of a layered structure not
previously used for
this purpose, in which case a fabric incorporating such structure might be
patentable. Similarly, a book characterised by a technical feature of the
binding or pasting of the back, may be patentable, even though the effect
thereof is solely aesthetic, similarly also a painting characterised by
the kind of cloth, or by the dyes or binders used. Also a process of
producing an aesthetic creation may comprise a technical innovation and
thus be patentable. For example, a diamond may have a particularly
beautiful shape (not of itself patentable) produced by a new technical
process. In this case, the process may be patentable. Similarly, a new
printing technique for a book resulting in a particular layout with
aesthetic effect, may well be patentable, together with the book as a
product of that process. Again a substance or composition characterised by
technical features serving to produce a special effect with regard to
scent or flavour, e.g. to maintain a scent or flavour for a prolonged
period or to accentuate it, may well be patentable. Presentations of
information Although
there is no corresponding, explicit provision in the IP-code and the IRR,
mere representation of information characterised solely by the content of the information will not usually be
patentable since it cannot be considered as a technical solution to a problem. This applies whether the claim is
directed to the presentation of the information per se (e.g. by acoustical
signals, spoken words, visual displays), to information recorded on a
carrier (e.g. books characterised by their subject), gramophone records
characterised by the musical piece recorded, traffic signs characterised
by the warning thereon, magnetic computer tapes characterised by the data
or programs recorded), or to processes and apparatus for presenting
information (e.g. indicators or recorders characterised solely by the
information indicated or recorded). If, however, the presentation of
information has new technical features there could be patentable
subject-matter in the information carrier or in the process or apparatus
for presenting the information. The arrangement or manner of
representation, as distinguished from the information content, may well
constitute a patentable technical feature. Examples in which such a
technical feature may be
present are: a telegraph apparatus or communication system characterised
by the use of a particular code to represent the characters (e.g. pulse
code modulation); a measuring instrument designed to produce a particular
form of graph for representing the measured information; a gramophone
record characterised by a particular groove form to allow stereo
recordings; or a diapositive with a soundtrack arranged at the side of it.
2.4
Under certain circumstances, protection for non-patentable items
may be sought for by means of a utility model application or an industrial
design application (aesthetic aspects of an article of manufacture) or by
means of the law relating to copyright (computer software as such). Reference
is made to the corresponding provisions in the IP-code and the IRR. |
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Sec.22.6 |
3. Further exclusions
from patent protection – Sec.22.6 and 22.4 3.1
Any invention, the publication or exploitation of which would be
contrary to "public order or morality” is specifically excluded
from patentability. The purpose of this is to exclude from protection
inventions likely to induce riot or public disorder, or to lead to
criminal or other generally offensive behaviour (see also II, 7.1); one
obvious example of subject-matter which should be excluded under this
provision is a letter-bomb. This provision is likely to be invoked only in
rare and extreme cases. A fair test to apply is to consider whether it is
probable that the public in general would regard the invention as so
abhorrent that the grant of patent rights would be inconceivable. If it is
clear that this is the case, objection should be raised under Sec.22.6;
otherwise not. |
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R.412 |
3.2
Exploitation is not to be deemed to be contrary to "public
order" or morality merely because it is prohibited by law or
regulation in the Philippines. For example, a product could still be
manufactured under a Philippine patent for export to states in which its
use is not prohibited. 3.3 In some cases refusal of a patent may not be necessary. This may result when the invention has both an offensive and a non-offensive use: e.g. a process for breaking open locked safes, the use by a burglar being offensive but the use by a locksmith in the case of emergency inoffensive. In such a case no objection arises under Sec.22.6, but if the application contains an explicit reference to a use which is contrary to "public order or morality”, deletion of this reference should be required under the terms of R.412. |
| Sec.22.4 |
3.4
Also excluded from patentability are "plant or animal breeds
varieties or essentially biological processes for the production of plants
or animals". One reason for this exclusion is that, at least for
plant varieties, other means of obtaining legal protection are available
in most countries. The question whether a process is "essentially
biological" or “non-biological” (Sec.22.4, 2nd
sentence) is one of degree depending on the extent to which there is
technical intervention by man in the process; if such intervention plays a
significant part in determining or controlling the result it is desired to
achieve, the process would not be excluded. To take some examples, a
method of crossing, inter-breeding, or selectively breeding, say, horses
involving merely selecting for breeding and bringing together those
animals having certain characteristics would be essentially biological and
therefore not patentable. On the other hand, a process of treating a plant
or animal to improve its properties or yield or to promote or suppress its
growth e.g. a method of pruning a tree, would not be essentially
biological since although a biological process is involved, the essence of
the invention is technical; the same could apply to a method of treating a
plant characterised by the application of a growth-stimulating substance
or radiation. The treatment of soil by technical means to suppress or
promote the growth of plants is also not excluded from patentability (see
also IV, 4.3). |
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Sec.22.4 2nd sentence
Sec.27 |
3.5
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. 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
micro-organism 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. 3.6
In the case of microbiological processes, particular regard should
be had to the requirement of repeatability referred to in II, 4.11. As for
biological material to be deposited under the terms of R.408 and R.409,
repeatability is assured by the possibility of taking samples, and there
is thus no need to indicate another process for the production of the
biological material.
4. Industrial
application Sec.27 - Medical inventions Sec.22.3 4.1
An invention shall be considered “industrially applicable” if
it can be produced and used in any kind of industry. Agriculture is in
general considered as an industry as well. "Industry" should be
understood in its broad sense as including any physical activity of
"technical character" (see IV, 1.2 here above), i.e. an activity
which belongs to the useful or practical arts as distinct from the
aesthetic arts; it does not necessarily imply the use of a machine or the
manufacture of an article and could cover e.g. a process for dispersing
fog, or a process for converting energy from one form to another. Thus,
Sec.27 excludes from patentability very few "inventions" which
are not already excluded by the list in Sec.22 (see IV, 2.1 here above).
One further class of "invention" which would be excluded,
however, would be articles or processes alleged to operate in a manner
clearly contrary to well-established physical laws, e.g. a perpetual
motion machine. Objection could arise under Sec.27 only in so far as the
claim specifies the intended function or purpose of the invention, but if,
say, a perpetual motion machine is claimed merely as an article having a
particular specified construction then objection should be made under
Sec.35.1 (see II, 4.11). |
| Sec.22.3 |
4.2
"Methods for treatment of the human or animal body by surgery
or therapy and diagnostic methods practised on the human or animal body”
are excluded from patent protection. Moreover, they will not in general be
regarded as inventions which are industrially applicable.
“Products and composition for use in any of these methods” are not
excluded from patent protection. Patents
may, however, also be obtained for surgical, therapeutic or diagnostic
instruments or apparatus for use in such methods. Also the manufacture of
prostheses or artificial limbs, as well as taking measurements therefor on
the human body, would be patentable, so that a method of manufacturing a
prosthetic tooth which involves making a model of a patient's teeth in the
mouth would not be excluded from patentability either, provided the
prosthetic tooth is fabricated outside of the body. Patents
may also be obtained for new products for use in these methods of
treatment or diagnosis, particularly substances or compositions. However
in the case of a known substance or composition, this may only be patented
for use in these methods if the known substance or composition was not
previously disclosed for use in surgery, therapy or diagnostic methods
practised on the human or animal body ("first medical use"). The
same substance or composition cannot subsequently be patented for any
other use of that kind. A claim to a known substance or composition for
the first use in surgical, therapeutic and/or diagnostic methods should be
in a form such as: "substance or composition X" followed by the
indication of the use, for instance"... for use as a
medicament", "... as an antibacterial agent " or "...
for curing disease Y". In contrast to what is stated in III, 4.8
these types of claims will be regarded as restricted to the substance or
composition when presented or packaged for the specified use. This
constitutes an exception from the general principle that product claims
can only be obtained for (absolutely) novel products. However this does
not mean that product claims for the first medical use need not fulfil all
other requirements of patentability, especially that of inventive step. A
claim in the form "Use of substance or composition X for the
treatment of disease Y..." will be regarded as relating to a method
for treatment explicitly excluded from patentability by Sec.22.3 and
therefore will not be accepted. If
an application discloses for the first time a number of distinct surgical,
therapeutic or diagnostic uses for a known substance or composition,
normally in the one application independent claims each directed to the
substance or composition for one of the various uses may be allowed; i.e.
objection should not, as a general rule, be raised that there is lack of
unity of invention. A
claim in the form "Use of a substance or composition X for the
manufacture of a medicament for therapeutic application Z" is
allowable for either a first or "subsequent" (second or further)
such application, if this application is new and inventive. The same
applies to claims in the form "Method for manufacturing a medicament
intended for therapeutic application Z, characterised in that the
substance X is used" or the substantive equivalents thereof. In cases
where an applicant simultaneously discloses more than one
"subsequent" therapeutic use, claims of the above type directed
to these different uses are allowable in the one application, but only if
they form a single general inventive concept (Sec.38). 4.3
It should be noted that Sec.22.3 excludes only methods of treatment
by surgery or therapy and diagnostic methods. It follows that other
methods of treatment of live human beings or animals (e.g. treatment of a
sheep in order to promote growth, to improve the quality of mutton or to
increase the yield of wool) or other methods of measuring or recording
characteristics of the human or animal body are patentable provided that
(as would probably be the case) such methods are of a technical, and not
essentially biological character (see IV, 3.4 here above) and provided
that the methods are industrially applicable. The latter proviso is
particularly important in the case of human beings. For
example an application with a claim for a method of contraception, which
is to be applied in the private and personal sphere of a human being, may
not be considered “industrial applicable”. However, an application
containing claims directed to the purely cosmetic treatment of a human by
administration of a chemical product could be considered as
“industrially applicable”. A cosmetic treatment involving surgery or
therapy would not however be patentable (see below). A
treatment or diagnostic method, to be excluded, would generally have to be
carried out on the living human or animal body. A treatment of or
diagnostic method practised on a dead human or animal body would therefore
not be excluded from patentability by virtue of Sec.. Treatment of body
tissues or fluids after they have been removed from the human or animal
body, or diagnostic methods applied thereon, are not excluded from
patentability in so far as these tissues or fluids are not returned to the
same body. Thus the treatment of blood for storage in a blood bank or
diagnostic testing of blood samples is not excluded, whereas a treatment
of blood by dialysis with the blood being returned to the same body would
be excluded. Regarding
methods which are carried out on, or in relation to, the living human or
animal body, it should be borne in mind that the intention of Sec.22.3 is
to free from restraint non-commercial and non-industrial medical and
veterinary activities. Interpretation of the provision should avoid the
exclusions from going beyond their proper limits. However,
in contrast to the subject-matter referred to e.g. Sec.22.1 and Sec.22.2,
which are in general only excluded from patentability if claimed as such,
a claim is not allowable under Sec.22.3 if it includes at least one
feature defining a physical activity or action that constitutes a method
step for treatment of the human or animal body by surgery or therapy or a
diagnostic method step to be exercised on the human or animal body. In
that case, whether or not the claim includes or consists of features
directed to a technical operation performed on a technical object is
legally irrelevant. Taking
the three exclusions in turn: Surgery defines the nature of the treatment rather than
its purpose. Thus, e.g. a method of treatment by surgery for cosmetic
purposes is excluded, as well as surgical treatment for therapeutic
purposes. Therapy implies the curing of a disease or malfunction of
the body and covers prophylactic treatment, e.g. immunisation against a
certain disease or the removal of plaque. Diagnostic methods likewise do not cover all methods related to
diagnosis. Methods for obtaining information only (data, physical
quantities) from the living human or animal body may not necessarily
excluded by Sec.22.3, if the information obtained merely provides
intermediate results which on their own do not enable a decision to be
made on the treatment necessary. Examples of such methods include X-ray
investigations, NMR studies, and blood pressure measurements. 4.4
Methods of testing
generally should be regarded as inventions susceptible of industrial
application and therefore patentable if the test is applicable to the
improvement or control of a product, apparatus or process which is itself
susceptible of industrial application. In particular, the utilisation of
test animals for test purposes in industry, e.g. for testing industrial
products (for example for ascertaining the absence of pyrogenetic or
allergic effects) or phenomena (for example for determining water or air
pollution) would be patentable. 4.5 It should be noted that "susceptibility of industrial application" is not a requirement that overrides the restriction of Sec.22, e.g. an administrative method of stock control is not patentable, having regard to Sec.22.2 , even though it could be applied to the store of spare parts of a factory. On the other hand, although an invention must be industrially applicable and the description must indicate, where this is not obvious, the way in which the invention is so industrially applicable (see II, 4.12), the claims need not necessarily be restricted to the indicated industrial application(s). |
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Sec.21 |
5.1
Sec.21 requires an invention to be new in order to be patentable.
Sec.23 gives a negative definition of novelty, i.e. that “an invention
shall not be considered new if it forms part of a prior art”. The
"prior art" is defined in Sec.24.1 as
consisting of "everything which has been made available to the public
anywhere in the world, before the filing date or the priority date of the
Philippine application claiming the invention”. |
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R.204(a),
R.204(a),
R.204(a),
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The
width of this definition should be noted. R.204(a), 1st
sentence indicates that there are no restrictions whatever as to the
geographical location
where, or the language or manner (e.g. by means of a written or oral
description, by use, or in any other way) in which the relevant
information was made available to the public; also no age limit is
stipulated for the documents or other sources of the information. There
are however certain specific exclusions (see IV, 8 here below). A prior
use in a foreign country must however by disclosed in printed documents or
in a tangible form. However, since the "prior art" available to
the examiner will mainly consist of the documents listed in the search
report, the following section IV, 5.2 deals with the question of public
availability only in relation to written description (either alone or in
combination with an earlier oral description or use). Other kinds of prior
art are discussed in section IV, 5.4 here below. 5.2
A written description, i.e. a document, should be regarded as made
available to the public if, at the relevant date, it was possible for
members of the public to gain knowledge of the content of the document and
there was no bar of confidentiality restricting the use or dissemination
of such knowledge. For instance, German utility models ("Gebrauchsmuster")
are already publicly available as of their date of entry in the Register
of utility models ("Eintragungstag"), which precedes the date of
announcement in the Patent Bulletin ("Bekanntmachung im Patentblatt").
The search report also may cite documents in which doubts with regard to
the fact of public availability and doubts concerning the precise date of
publication of a document have not, or not fully, been removed.
If the applicant contests the public availability or assumed date
of publication of the document the examiner should consider whether to
investigate the matter further. If the applicant shows sound reasons for
doubting whether the document forms part of the "prior art" in
relation to his application and any further investigation does not produce
evidence sufficient to remove that doubt the examiner should not pursue
the matter further. The only other problem likely to arise for the
examiner is where: (i)
a document
reproduces an oral description (e.g. a public lecture) or gives an account
of a prior use (e.g. display at a public exhibition); and (ii)
only the
oral description or lecture was publicly available before the "date
of filing" of the European application, the document itself being
published on or after this date. In
such cases, the examiner should start with the assumption that the
document gives a true account of the earlier lecture, display or other
event and should therefore regard the earlier event as forming part of the
"prior art". If, however, the applicant gives sound reasons for
contesting the truth of the account given in the document then again the
examiner should not pursue the matter further. 5.3
It should be noted that the relevant date for establishing whether
a piece of prior art belongs to the state of the art is the date of
filing, or where a priority date has been validly claimed, the priority
date (Sec.24). If a
priority date has not been validly claimed (subject-matter claimed not
disclosed in priority document), the filing date will become the relevant
date for this purpose. For details, see V. It
should be remembered that different claims, or different alternatives
claimed in one claim, may have different relevant dates, depending on the
validity of the priority for the subject-matter concerned . The question
of novelty must be considered against each claim (or part of a claim where
a claim specifies a number of alternatives) and the prior art in relation
to one claim or one part of a claim may include matter which cannot be
cited against another claim or part of a claim because the latter has an
earlier relevant date. Of
course if all the matter in the prior art was made available to the public
before the date of the earliest priority document, the examiner need not
(and should not) concern himself with the allocation of priority dates. 5.4
In determining whether other kinds of prior art (which could be
introduced into the proceedings e.g. by a third party under Sec.47) have
been made available to the public, the following issues will need to be
considered, depending on the circumstances and the type of prior art: Prior
use which is not present in the Philippines, even if widespread in a
foreign country, cannot form part of the prior art if such prior use is
not disclosed in printed documents or in any tangible form. 5.4a
Prior art made available to the public by use or in any other way Types
of use and instances of prior art made available in any other way Use
may be constituted by producing, offering, marketing or otherwise
exploiting a product, or by offering or marketing a process or its
application or by applying the process. Marketing may be effected, for
example, by sale or exchange. The prior art may also be made available to
the public in other ways, as for example by demonstrating an object or
process in specialist training courses or on television. Availability to
the public in any other way also includes all possibilities which
technological progress may subsequently offer of making available the
aspect of the prior art concerned. Matters
to be determined as regards use: When
dealing with an allegation that an object or process has been used in such
a way that it is comprised in the prior art, the following details will
need to be checked: Is
the alleged use relevant at all? The
date on which the alleged use occurred, i.e. whether there was any
instance of use before the relevant date (prior use). What
has been used, in order to determine the degree of similarity between the
object used and the subject-matter claimed. All
the circumstances relating to the use, in order to determine whether and
to what extent it was made available to the public, as for example the
place of use and the form of use. These factors are important in that, for
example, the details of a demonstration of a manufacturing process in a
factory or of the delivery and sale of a product may well provide
information as regards the possibility of the subject-matter having become
available to the public. 5.4b
Ways in which subject-matter may be made available General
principles Subject-matter
should be regarded as made available to the public by use or in any other
way if, at the relevant date, it was possible for members of the public to
gain knowledge of the subject-matter and there was no bar of
confidentiality restricting the use or dissemination of such knowledge
(see also IV, 5.2 with reference to written descriptions). This may, for
example, arise if an object is unconditionally sold to a member of the
public, since the buyer thereby acquires unlimited possession of any
knowledge which may be obtained from the object. Even where in such cases
the specific features of the object may not be ascertained from an
external examination, but only by further analysis, those features may
nevertheless to be considered as having been made available to the public. If,
on the other hand, an object could be seen in a given place (a factory,
for example) to which members of the public not bound to secrecy,
including persons with sufficient technical knowledge to ascertain the
specific features of the object, had access, all knowledge which an expert
was able to gain from a purely external examination is to be regarded as
having been made available to the public. In such cases, however, all
concealed features which could be ascertained only by dismantling or
destroying the object will not be deemed to have been made available to
the public. Agreement
on secrecy The
basic principle to be adopted is that subject-matter has not been made
available to the public by use or in any other way if there is an express
or tacit agreement on secrecy which has not been broken (concerning the
particular case of a non-prejudicial disclosure arising from an evident
abuse in relation to the applicant, see IV, 8 below), or if the
circumstances of the case are such that such secrecy derives from a
relationship of good faith or trust. Good faith or trust are factors which
may occur in contractual or commercial relationships. Use
on non-public property As
a general rule, use on non-public property, for example in factories and
barracks, is not considered as use made available to the public, because
company employees and soldiers are usually bound to secrecy, save in cases
where the objects or processes used are exhibited, explained or shown to
the public in such places, or where specialists not bound to secrecy are
able to recognise their essential features from the outside. Clearly the
above-mentioned "non-public property" does not refer to the
premises of a third party to whom the object in question was
unconditionally sold or the place where the public could see the object in
question or ascertain features of it. Example
of the accessibility of objects used A
press for producing light building (hard fibre) boards was installed in a
factory shed. Although the door bore the notice "Unauthorised persons
not admitted", customers (in particular dealers in building materials
and clients who were interested in purchasing light building boards), were
given the opportunity of seeing the press although no form of
demonstration or explanation was given. An obligation to secrecy was not
imposed as, according to witnesses, the company did not consider such
visitors as a possible source of competition. These visitors were not
genuine specialists, i.e. they did not manufacture such boards or presses,
but were not entirely laymen either. In view of the simple construction of
the press, the essential features of the invention concerned were bound to
be evident to anyone observing it. There was therefore a possibility that
these customers, and in particular the dealers in building materials,
would recognise these essential features of the press and, as they were
not bound to secrecy, they would be free to communicate this information
to others. Example
of the inaccessibility of a process The
subject of the patent concerns a process for the manufacture of a product.
As proof that this process had been made available to the public by use, a
similar already known product was asserted to have been produced by the
process claimed. However, it could not be clearly ascertained, even after
an exhaustive examination, by which process it had been produced. 5.4c
Prior art made available by means of oral description Cases
of oral description The
prior art is made available to the public by oral description when facts
are unconditionally brought to the knowledge of members of the public in
the course of a conversation, a lecture, a conference, or by means of
radio, television or sound reproduction equipment (tapes and records). Non-prejudicial
oral description The
prior art will not be affected by oral descriptions under the
circumstances referred to in Sec.25 and in IV, 8 here below. Matters
to be determined in cases of oral description Once
again, in such cases the following details will have to be determined: When
the oral description took place, what was described orally, whether the
oral description was made available to the public ; this will also depend
on the type of oral description (conversation, lecture) and on the place
at which the description was given (public meeting, factory hall. 5.4d Prior art made available to the public in writing
or by any other means
For this prior art, the details such as those referred to above might have to be determined, if they are not clear from the written or otherwise made available disclosure itself. |
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Sec.24.2 |
6. Conflict with other
Philippines applications 6.1 The prior art in addition comprises the whole content of other applications for a patent, utility model or industrial design published under Republic Act NO. 8293 (Sec.44 for patents), filed or effective in the Philippines, with a filing date or a validly claimed priority date that is earlier than the filing or priority date of the application under examination, even if the earlier patent, utility model or industrial design publication is published on or after the date of filing or the priority date of the application being examined. This does not apply when the applicant or the inventor identified in both applications is one and the same. Concerning this case, see however IV, 6.4 here below. |
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R.204(b), 2nd sentence |
Hence,
where two or more applications are independently filed with respect to the
same invention, and the later applications are filed before the first
application or earlier application is published, the whole contents of the
first or earliest filed application published
in accordance with Sec. 44 on or after the filing date or priority date of
the later filed application shall be
novelty destroying with respect to the later filed application. Whether a piece of prior art has to be taken into consideration or not may depend on whether the priority dates of the application under examination and of the earlier application have been validly claimed (see Chapter V). |
| R.206(b) |
According
to R.206(b) such earlier applications are part of the prior art only when
considering novelty and not when considering inventive step. By
the whole content of a Philippines application is meant the whole disclosure,
i.e. the description, drawings and claims, including: (i)
any matter
explicitly disclaimed (with the exception of disclaimers for unworkable
embodiments), (ii)
any matter
for which an allowable reference (see II, 4.18, penultimate paragraph) to
other documents is made or (iii)
prior art
insofar as explicitly described. However,
the "content" does not include any priority document (the
purpose of such document being merely to determine to what extent the
priority date is valid for the disclosure of the Philippines application
(see V, 1.2)) nor, in view of Sec.37,
last sentence, the abstract. 6.1a
Whether a published Philippine application can be a conflicting
application under Sec.24.2 is determined firstly by its filing date and
the date of its publication, which have to be before, respectively on or
after the filing date of the application under examination. If such an
application validly claims priority (see first proviso in Sec.24.2) , the
priority date replaces the filing date for that subject-matter in the
application which corresponds to the priority application. If a priority
claim was abandoned or otherwise lost with effect from a date prior to the
publication, the filing date and not the priority date of such an
application is relevant, irrespective of whether or not the priority claim
might have conferred a valid priority right. Further
it is required that the conflicting application was still pending at its
publication date. If the application has been withdrawn or otherwise lost
before the date of publication, but published because the Office could not
stop its publication, the publication has no effect under Sec.24.2
pursuant to Sec.25(b)(a). 6.2
Earlier application(s) not yet published In cases where the application under examination is ready for grant before the search for conflicting applications could be finalised (e.g. because some of the potentially interferring applications have not yet been published), see C-VI, 8.4. |
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Sec.24.2
R.204(b)
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6.3 The second proviso in Sec.24.2 specifies that an application otherwise meeting the definitions given in Sec.24.2 does not belong to the prior art to be taken into consideration if in this application and in the application under examination one and the same. Further, the IP-code does not deal explicitly with the case of co-pending Philippines applications of the same effective date. |
| R.915 |
However,
it is an accepted principle in most patent systems that two patents shall
not be granted to the same applicant for one invention. This principle is
e.g. reflected in R.915. It is permissible to allow an applicant to proceed
with two applications having the same description where the claims are
quite distinct in scope and directed to different inventions. However, in
the rare case in which there are two or more Philippines applications of
the type referred to here above, from the same applicant, and the claims
of those applications relate to the same invention (the claims conflicting
in the manner explained in VI, 9.6), the applicant should be told that he
must either amend one or more of the applications in such a manner that
they no longer claim the same invention, or choose which one of those
applications he wishes to proceed to grant. |
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R.304(b), 2nd paragraph |
6.4
Concerning applications of the same effective date and received
from two different applicants, see R.304, 2nd paragraph
7.1
It should be noted that in considering novelty (as distinct from
inventive step), it is not permissible to combine separate items of prior
art together (see IV, 9.7). However, if a document (the
"primary" document) refers explicitly to another document as
providing more detailed information on certain features, the teaching of
the latter may be regarded as incorporated into the document containing
the reference, if the document referred to was available to the public on
the publication date of the document containing the reference. For
conflicting applications, see III,
6.1 here above and II, 4.18.
The
same principle applies to any matter explicitly disclaimed (except
disclaimers which exclude unworkable embodiments) and to prior art insofar
as explicitly described. It is further permissible to use a dictionary or
similar document of reference in order to interpret a special term used in
the primary document. The effective date for novelty purposes (see IV, 7.3
here below) is always the date of the primary document. 7.2
A document takes away the novelty of any claimed subject-matter
derivable directly and unambiguously from that document including any
features implicit to a person skilled in the art in what is expressly
mentioned in the document, e.g. a disclosure of the use of rubber in
circumstances where clearly its elastic properties are used even if this
is not explicitly stated takes away the novelty of the use of an elastic
material. The limitation to subject-matter "derivable directly and
unambiguously" from the document is important. Thus,
when considering novelty, it is not correct to interpret the teaching of a
document as embracing well-known equivalents which are not disclosed in
the documents; this is a matter of obviousness. 7.3
In determining novelty a prior document should be read as it would
have been read by a person skilled in the art on the effective date of the
document. By "effective" date is meant the publication date in
the case of a
previously published document and the date of filing (or priority date,
where appropriate) in the case of a document according to Sec.24.2. However,
it should be noted that a chemical compound, the name or formula of which
was mentioned in a document, is not considered as known unless the
information in the document, together, where appropriate, with knowledge
generally available on the effective date of the document, enable it to be
prepared and separated or, for instance in the case of a product of
nature, only to be separated. 7.4
In considering novelty it should be borne in mind that a generic
disclosure does not usually take away the novelty of any specific example
falling within the terms of that disclosure, but that a specific
disclosure does take away the novelty of a generic claim embracing that
disclosure, e.g. a disclosure of copper takes away the novelty of metal as
a generic concept, but not the novelty of any metal other than copper, and
one of rivets takes away the novelty of fastening means as a generic
concept, but not the novelty of any fastening other than rivets. 7.5
In the case of a prior document, the lack of novelty may be
apparent from what is explicitly stated in the document itself.
Alternatively, it may be implicit in the sense that, in carrying out the
teaching of the prior document, the skilled person would inevitably arrive
at a result falling within the terms of the claim. An objection of lack of
novelty of this kind should be raised by the examiner only where there can
be no reasonable doubt as to the practical effect of the prior teaching
(for a second non-medical use, however, see IV, 7.6 here below).
Situations of this kind may also occur when the claims define the
invention, or a feature thereof, by parameters (see III, 4.7a). It may
happen that in the relevant prior art a different parameter, or no
parameter at all, is mentioned. If the known and the claimed products are
identical in all other respects (which is to be expected if, for example,
the starting products and the manufacturing processes are identical), then
in the first place an objection of lack of novelty arises. If the
applicant is able to show, e.g. by appropriate comparison tests, that
differences do exist with respect to the parameters, it is questionable
whether the application discloses all the features essential to
manufacture products having the parameters specified in the claims
(Sec.35.1). 7.6
In determining novelty of the subject-matter of claims the examiner
should have regard to the guidance given in III, 4.4 to 4.13. He should
remember that, particularly for claims directed to a physical entity,
non-distinctive characteristics of a particular intended use, should be
disregarded (see III, 4.8 to 4.9). For example, a claim to a substance X
for use as a catalyst would not be considered to be novel over the same
substance known as a dye, unless the use referred to implies a particular
form of the substance (e.g. the presence of certain additives) which
distinguishes it from the known form of the substance. That is to say,
characteristics not explicitly stated, but implied by the particular use, should
be taken into account (see the example of a "mold for molten
steel" in III, 4.8). It
should further be borne in mind that a claim to the use of a known
compound for a particular purpose (second non-medical use), which is based
on a technical effect, should be interpreted as including that technical
effect as a functional technical feature, and is accordingly not open to
objection under Sec.23 and 24.1, provided that such technical feature has
not previously been made available to the public. For claims to a second
or further medical use, see IV, 4.2, here above. |
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Sec.25.1 |
8. Non-prejudicial
disclosures 8.1
There are three specified instances in which a prior disclosure of
the information contained in the application during the twelve months
preceding the filing date or the priority date of the application shall
not prejudice the applicant on the ground of lack of novelty, viz. if such
disclosure was made by |
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Sec.25.1(a)
Sec.25.1(b)
Sec.25.1(c) Sec.25.2
Sec.67 |
(a)
The inventor; (b)
A foreign patent office, the Bureau or the Office, and the
information was contained (a) in another application filed by the inventor
and should not have been disclosed by the office, or (b) 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
(c)
A third party which obtained the information directly or indirectly
from the inventor. For
the purposes of Sec.25.1, “inventor”
also means any person who, at the filing date of application, had the
right to the patent according to Sec.28.
(i)
an evident abuse in relation to the applicant or his legal
predecessor - e.g. the invention was derived from the applicant and
disclosed against his wish; or 8.2
An essential condition in all instances is that the disclosure in
point must have taken place not earlier than twelve months preceding the
filing date or the priority date of the application. 8.3
Regarding the cases addressed in Sec.25.1(a) and (c) , the
disclosure might be made in a published document or at a conference or in
any other way. 8.4
Regarding
the cases addressed in Sec.25.1(b), they might occur -
whenever a
patent office publishes an application by mistake (e.g. after the
application has been explicitly been withdrawn, or publication before the
date foreseen by the law), or - for example, when a person B who has been told of A's invention in confidence, applies for a patent for this invention. If so, the disclosure resulting from the publication of B's application will not prejudice A's rights provided that A has already made an application, or applies within six months of such publication. In any event, having regard to Sec.67, B may not be entitled to proceed with his application (see VI, 9.7 to 9.11). |
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