“PATENTS PROMOTE THE PROGRESS OF APPLIED SCIENCES,TECHNOLOGY AND OTHER USEFUL ARTS THROUGH LEGALLY PERMISSIBLE MONOPOLIES EXISTING FOR A LIMITED PERIOD IN A GIVEN JURISDICTION OVER LIMITED AREAS OF COMMERCE”
GN&P LAW’s PATENT BROCHURE
*© 2005 by Atty. Greg Nunag
WHAT IS A PATENT?
Patent is a government’s grant of monopoly rights to a person or company for the production, development and commercial exploitation of an invention. A patent in intellectual property law is called an Invention Patent.
WHY ARE THERE PATENTS?
Patents promote the progress of applied sciences, technology and other useful arts through legally permissible monopolies existing for a limited period in a given jurisdiction over limited areas of commerce. These monopolies protect inventors and their investors against free and competitive market forces during the period that they are recovering their research and development expenses and are earning their return of investments for the commercial value of their intellectual creation. Because of this monopolistic protection given by the state, inventors and their investors are bound to the two-pronged duty of: (1) disclosing to the government and the public how to create, replicate and use the invention, and (2) to give up such monopoly rights upon the patent term’s expiration.
WHAT IS THE SCOPE OF PATENT PROTECTION?
The scope of patent protection is limited within the territory of the granting authority.
WHAT ARE PATENTABLE INVENTIONS?
Patent laws are largely internationalized. However, the patentability of an invention still depends on the local laws of various jurisdictions.
In the Philippines, an invention is patentable if it embodies a technical solution to a problem in a field of human activity which is new, involves an inventive step and is industrially applicable involving or relating to a product, a process, or an improvement of a product or process.
WHAT IS MEANT BY “NEW” IN THE REQUIREMENTS FOR PATENTABILITY?
“New” (novelty requirement) means that the invention is not part of any “prior art”.
What is “prior art”?
Prior art pertains to everything which has been made available to the public anywhere in the world before the effective filing date of the patent application. This includes all published patent and non-patent literature worldwide that anticipates the invention in a way that sufficiently teaches how to make and use it.
What is the test of novelty?
The test of an invention’s novelty is its non-equivalence with the prior art.
WHAT IS MEANT BY “INVOLVES AN INVENTIVE STEP” IN THE REQUIREMENTS FOR PATENTABILITY?
“Involves an inventive step” (inventiveness/non-obviousness requirement) means that with reference to the prior art, the invention is not obvious to a person skilled in the art at the time of the effective filing date of the patent application. “Art” includes all forms of methodical disciplines in science, technology and other systematic pursuit of human knowledge.
Who is considered a person skilled in the art?
The person skilled in the art is presumed to be the ordinary practitioner who is aware of what is commonly and generally known in the art within the relevant date. As such, he is presumed to have knowledge of all references sufficiently related to each another and to the pertinent art as well as of all prior arts reasonably pertinent to the particular problems to which the invention is involved, and to have at his disposal all normal means and capacity for routine work and experimentation.
What is the test of inventiveness?
The test of an invention’s inventiveness is its non-obviousness to a person skilled in the art.
WHAT IS MEANT BY “INDUSTRIAL APPLICABILITY” IN THE REQUIREMENTS FOR PATENTABILITY?
“Industrial Applicability” (utility requirement) means that the invention can be produced and used in an industry.
I HAVE COMPLETED AN INVENTION, IS IT NOW RIPE FOR PATENTING?
Not yet, there are still steps to be taken before a decision to patent an invention may be prudently made. These steps include various evaluations covering commercial viability, legal feasibility, and practical considerations.
ASSUMING THAT THE INVENTION IS COMMERCIALLY VIABLE, WHAT ARE THE NEXT STEPS?
The legal steps in patenting are:
(1) Prior Art Search;
(2) Patent Drafting; and,
(3) Patent Filing and Prosecution.
WHAT IS A PRIOR ART SEARCH?
A prior art search is, in principle, a comprehensive report on all patented and non-patented inventions worlwide related to the proposed patent. Its purpose is to approximately rule out patent infringement arising from the equivalence of patent claims and to establish the novelty and non-obviousness of the proposed patent against patented (Detailed Description) and non-patented disclosures.
WHAT IS PATENT DRAFTING?
Patent Drafting is the process of documenting an invention to comply with the legal requirements for patent applications. The major parts in a Patent Draft are the Patent Claims and Detailed Description.
What are Patent Claims?
Patent Claims are statements defining the exclusive rights sought to be associated with the invention.
What is a Detailed Description?
Detailed Description is the disclosure of how the invention is created, replicated and used.
WHAT IS PATENT FILING AND PROSECUTION?
Patent Filing and Prosecution is the legal procedure of applying for and obtaining patent rights from the government.
WHAT ARE GN&P LAW’S REPRESENTATION FEES IN PROSECUTING PHILIPPINE PATENTS?
PHILIPPINE PATENT APPLICATION/PCT APPLICATION: US$300
(a) claiming priority date: US$50
(b) each claim in excess of 5 claims: US$25/claim
(c) each sheet in excess of 30 sheets: US$25/sheet
SUBMITTING FORMAL DOCUMENTS: US$100
REQUESTING SUBSTANTIVE EXAMINATION: US300
RESPONSE TO OFFICIAL ACTION / VOLUNTARY AMENDMENTS: US$300
CONFERENCE WITH THE EXAMINER: US$300
REMITTING THE ISSUANCE AND PUBLICATION FEE: US$300
REVIEWING & FORWARDING THE LETTERS PATENT: US$300
*Atty. Greg Nunag is the Managing Attorney of GN&P Law and may be contacted at firstname.lastname@example.org.