By Siesta-friendly
Would Einstein have been granted a patent for his mass–energy equivalence formula, E = mc2, under our Patent Law? Remember that patentable works involve any technical solution of a problem in any field of human activity. Remember too that the mass–energy equivalence formula was used in the development of the atomic bomb. What do you think? Need clues? Okay. There are 3 basic requirements for a work to be patentable: It should be 1) new, 2) involves an inventive step, and 3) is industrially applicable.[1]
Need more help? You’d better be able to answer now after reading that the following works are excluded from patent protection[2]
1. Discoveries, scientific theories and mathematical methods;
2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;
3. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. This provision shall not apply to products and composition for use in any of these methods;
4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes.
Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis (read: exclusive) protection of plant varieties and animal breeds and a system of community intellectual rights protection.5.Aesthetic creations; and
6. Anything which is contrary to public order or morality.
Care for another example? An alleged invention was found to produce the following tile improvements: 1) the tiles produced were suitable for construction and ornamentation being made with the ideal composition of ingredients, that produces tough and durable wall tiles, though thin and light; 2) the ability to engrave deep designs to make the tiles decorative, artistic and suitable for wall ornamentation, and 3) the tiles can be mass produced and can be conveniently handled and packed without any intolerable incidence of breakages. The old types of tiles were usually intended for floors as they were heavy and massive and were neither artistic nor ornamental. Naturally, this improved process of tile-making was found to be patentable having met all the requirements. [3];
3 basic requirements for patentability
1. New vs. Prior Art - To determine what exactly comprises “new” work, the law says a product is not considered new if it forms part of a prior art[4] And prior art are defined as[5]
1) everything which has been made available to the public anywhere in the world, before the filing date or the priority date of the application claiming the invention. (Note that “Priority Date” is the filing date of a foreign patent application for the same invention by the same applicant.), or
2) the whole contents of an application, published, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application by a different applicant.
2. Inventive Step - An invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the application filing date or priority date.[6]
3. Industrial Applicability - An invention that can be produced and used in any industry shall be industrially applicable.[7]
Utility Model Registrations
But what if the work is only new and useful (read: industrially applicable) and not really an invention, like the Side Tilting-Dumping Wheelbarrow? Wheelbarrows of different kinds have been around for maybe decades or even hundreds of years so making any new kind of wheelbarrow is not really inventive. However, the Side Tilting-Dumping Wheelbarrow which has been so constructed as to allow easy tilting and dumping on either side was deemed subject to registration.[8] This despite a previous registration given for the Dumping and Detachable Wheelbarrow which was also so constructed as to allow for easy dumping. Both wheelbarrows were thus registered as utility models.
Utility model registrations are granted for “any technical solution of a problem in any field of human activity which is new and industrially applicable”.[9] Note the absence of “inventive step” which is required of patented inventions. They’re very similar to patented inventions which is why with certain exceptions, the patent provisions - including the patent exclusions earlier mentioned - also apply to utility models.[10]
Patent Rights
The right to a patent belongs to the inventor, his heirs, or assigns. When 2 or more persons jointly make an invention, the right to a patent belong to them jointly.[11] If 2 or more persons made the invention separately and independently of each other, the right to the patent belongs to the person who filed an application for such invention, or to the applicant who has the earliest filing date or, the earliest priority date.[12]
As regards commissioned inventions[13]
1. Unless otherwise provided in the contract, the person who commissions the work owns the patent.
2. In case the employee made the invention in the course of his employment contract, the patent belongs to:
(a) the employee, if the invention is not a part of his regular duties even if the employee uses the employer’s time, facilities and materials.
(b) 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.
A patent confers on its owner the following exclusive rights[14]
a) If a product - to restrain, prohibit and prevent any unauthorized making, use, offering for sale, selling or importation of the product;
b) If a process, to restrain - to prevent or prohibit any unauthorized use of the process, and unauthorized manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from such process.
The patent shall be for twenty (20) years from the application filing date.[15] A utility model registration shall expire, without any possibility of renewal, at the end of the 7th year after the application filing date.
Patent Infringement
For this, it’s best to provide an example. And we’ve got a recent and local “David and Goliath” classic. In 1990, Edgardo Vazquez filed a patent application for his invention: a construction method for a prefabricated modular housing unit made up of pre-cast concrete wall (using column panels) and roofing assembly, more popularly known as “Vazbuilt”. His patent application pending, beginning 1992 Vazquez Building Systems Corp. was awarded by Avida Land Corp. construction projects in Laguna and Batangas using the invention. In 1994, the patent was granted to Edgardo who assigned it to Vazquez Corp. 5 years into their business relationship, Vazquez Corp. learned that Avida Corp. had used, without consent, the Vazbuilt method in construction projects in other provinces.
Against Vazquez Corp’s eventual patent infringement suit, Avida claimed that they used a foreign method for which they had obtained a license agreement with a Texas company. The court did not buy Avida’s claims and found that the construction methods used - which included columns with H-shaped panels and grooves for installation - were “substantially similar or identical in appearance and construction with the [Vazbuilt] process of building concrete columns [with] H-shaped section with … opposed grooves … [T]he claim of [Avida Corp.] of differences or dissimilarities can hardly be noticed.”[16] Local inventors thus claimed victory in the court’s judgment awarding P96M++ in actual damages in favor of Vazquez Corp and enjoining Avida from committing acts of infringement against Vazquez Corp. However in this story, Goliath survives and is appealing.
Patent Rights Limitations
With rights there are of course limitations. The patent owner has no right to prevent third parties from making, using, dealing, offering for sale, selling or importing his work, without his authorization, in the following circumstances[17]
1. Using a patented product which has been put on the Philippine market by the owner, or with his express consent, insofar as such use is performed after that product has been so put on said market;
2. If done privately and on a non-commercial scale or for a non-commercial purpose; provided, that it does not significantly prejudice the patent owner’s economic interests;
3. Making or using the product exclusively for the purpose of experiments that relate to the subject matter of the patented invention;
4. Preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared;
5. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other country entering Philippine territory temporarily or accidentally; provided, that such invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not used for the manufacturing of anything to be sold within the Philippines.
In addition, any prior user, who, in good faith was using the invention or has undertaken serious preparations to use it in his enterprise or business, before the patent application filing date or priority date, shall have the right to continue such use within the territory where the patent produces its effect.[18]
Compulsory Licensing
The most significant patent right limitation deserves special mention, especially in light of the exploitative (if not inhumane) practices of patent owners, like pharmaceutical companies charging excessive prices for critically-needed medicines. You see, the Director of Legal Affairs of the Intellectual Property Office may grant a license to exploit a patented invention, even 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[19]
1. National emergency or other circumstances of extreme urgency;
2. Where the public interest, in particular, national security, nutrition, health or the development of other vital sectors of the national economy as determined by the appropriate agency of the government, so requires or
3. Where a judicial or administrative body has determined that the manner of exploitation by the patent owner or his licensee is anti-competitive; or
4. In case of public non-commercial use of the patent by the patentee, without satisfactory reason;
5. If the patented invention is not being worked in the Philippines on a commercial scale, although capable of being worked, without satisfactory reason.
With our people barely able to survive on a day-to-day basis let alone afford to get sick, why hasn’t the government stepped in to break the patents over excessively priced and critically-needed medicines? It’s been done by other governments like those of South Africa, Thailand and Brazil. Why hasn’t our government? Ah, well, maybe that’s another post altogether.
In the meantime, Good Luck with your invention!
[1] Sec. 21, R.A. No. 8293 as amended, ‘Intellectual Property Code Of The Philippines”.
[2] Sec. 22, supra.
[3] DOMICIANO A. AGUAS vs. CONRADO G. DE LEON and COURT OF APPEALS, G.R. No. L-32160, January 30, 1982.
[4] Sec. 23, ibid.
[5] Sec. 24, ibid.
[6] Sec. 26, ibid.
[7] Sec. 27, ibid.
[8] GERARDO SAMSON, JR.vs. FELIPE TARROZA and DIRECTOR OF PATENTS, G.R. No. L-20354, July 28, 1969.
[9] Sec. 109, ibid.
[10] Sec. 108, ibid.
[11] Sec. 28, ibid.
[12] Sec. 29, ibid.
[13] Sec. 30, ibid.
[14] Sec. 71, ibid.
[16] VAZQUEZ BUILDING SYSTEMS CORPORATION, et al. vs. AVIDA LAND CORP, Quezon City Regional Trial Court Civil Case No. Q-99-39485, December 18, 2007.
[17] Sec. 72, ibid.
[18] Sec. 73, ibid.
[19] Sec. 93, ibid.
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