Patents: What You Can Patent

A patent is an inventor's exclusive right to exploit his invention via the production, sale and importation of the product that includes the invention. Technical solutions for problems within any human activity can be patentable if they meet the following requisites:

1.) New

Novelty is the essence of invention. An invention won't be considered new if it forms part of a "prior art" (read: previously-existing invention) in any of the following instances:

a.) It was known/used by others in the Philippines before the filing/priority date of the patent application

b.) It was patented/described in a printed publication (newspaper, magazine, journal, etc.) in the Philippines  or another country before patent application in this country

c.) It was used by the public/sold in the Philippines for more than a year before its patent application (A.K.A. on sale/public use bar)

d.) There was an earlier, valid, patent granted to it in the Philippines

Regarding (c.,) if you file after selling the invention, you're prolonging the patent's life -and that's not allowed. It hampers the development of science and the arts. After a year of not filing your application, sorry, you're barred from filing because it's not new anymore. Also, a mere modification doesn't equal novelty; likewise, discovery doesn't equal invention.

2.) Inventive Step

Also known as "non-obviousness." It mustn't be obvious to a person who is an expert in the field of expertise in question at the time the patent is filed; so the testimonies of ordinary witnesses won't be given credence. Consider the following factors to determine if it's obvious or not:

a.) Coverage of the "prior art"

b.) Difference between the "prior art" and the purported invention

c.) Level of ordinary skill in the invention's field

d.) Secondary factors (copying, commercial success, long-felt need, etc.)

3.) Industrial Applicability

It must have a practical, not theoretical, use/purpose in any industry. A patent belongs to the realm of commerce, not abstract thinking. If the invention in question doesn't have a useful purpose, the application will be denied.

These guidelines are laid down in the Intellectual Property Code, which was enacted to comply with the  agreements of the Paris Convention on patents and trademarks and the Berne Convention on copyrights. As a signatory to the WTO, the Philippines is mandated to abide by both conventions via the TRIPS Agreement, which provides the minimum requirements on intellectual property to be observed by WTO member-countries. What is of note about these conventions is they lay emphasis on application/registration  (first-to-file rule) rather than actual invention, which is observed in other countries like the US.

As a result, in this country, he who first applies gets the patent. So keep your ideas a secret until you apply for a patent at the IPO. You might have end up giving your neighbors ideas of their own... know what I mean?

There are, however, safeguards to protect an inventor against fraud. These are:

1.) A person deprived of a patent without his consent can have the court, not the IPO, declare him the legitimate inventor

2.) A prior user in good faith can continue using the invention in the territory where the patent produces its effects

Right of Priority

A patent filed by someone for an invention in another country will be considered as having applied for the patent in that country if he approaches the IPO for the same purpose. This is available if the country in question provides the same privilege to Filipinos out of reciprocity. The following must be observed to that effect:

1.) There is an express claim for priority in the local application

2.) It is filed within 12 months of the filing of the earliest foreign application

3.) A certified copy of the foreign application, accompanied by an English translation, is filed within 6 months of the Philippine filing date

Utility Models and Industrial Designs

These are exceptions to the requisites for patentability

A utility model is an invention in the mechanical field (read: "useful objects/devices.") It can be patented if it meets the "new" and "industrially applicable" requisites. An "inventive step" isn't necessary. Its registration will expire after the 7th year from its date of application. A new type of corkscrew, for instance, can qualify as a utility model.

An industrial design refers to a 2- or 3-D design made to give a product, whether industrial or not, a special appearance (read: make it stand out.) Basically, it's ornamentation. It doesn't include functional parts (wiring, cooling fans, etc.) This is because some parts of an invention can't be patented because of their commonplace features which they can't do without -like wiring.

The registration of an industrial design expires after 5 years from its date of application. It is renewable for 2 consecutive terms of 5 years each, or a total of 15 years.