16th Apr 2013
When through your own efforts or resources, you subsequently develop an invention, new technology or breakthrough, it is important to have it protected. Such intellectual property can be copied or exploited by others if it is not protected. The usual form of protection is to apply for a patent with the Bureau of Patents of the Philippine Intellectual Property Office (IPO).
Republic Act. No. 8293, otherwise known as the Intellectual Property Code of the Philippines, defines a patentable invention as “any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable shall be patentable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing.”
Once a patent is granted by the IPO, it gives the owner the exclusive right to use the invention and exclude others form using, selling or making such product during the lifetime of the patent. A patent, once granted, is good for twenty (20) years.
Applying for a patent with the IPO is both easy and difficult. Easy because the process is fairly straightforward and simple. Difficult because the requirements may be technical and require specialized knowledge or expertise.
Before you apply for a patent, it is necessary to determine if your product is patentable. The IP Code enunciates that your product must give a technical solution to a problem. Examples of inventions which have been patented are ballpens, televisions, band-aid, etc.
In addition, an invention must meet the following requirements:
1. It must be novel or new (it must not have been made or used before)
2. It must involve an inventive step (it must not be obvious to a person of ordinary skill in the field concerned)
3. It must be industrially applicable (it must be susceptible of use in some way)
Pertinently, not all inventions can be patented. The IP Code enumerates what cannot be patented as follows:
• Discoveries, scientific theories and mathematical methods;
Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;
• 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;
• 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 protection of plant varieties and animal breeds and a system of community intellectual rights protection:
• Aesthetic creations; and
• Anything which is contrary to public order or morality.
Now, if your product satisfies the elements of an invention and is not prohibited above, then you must prepare the necessary documents which will be submitted with the IPO. They are:
1. Request for the Grant of Patent (this is a form provided by the IPO)
2. Description of the Invention (Specifications and Claims)
3. Formal Drawings
4. Filing Fee (Filing Fee=P1,800; Each sheet in excess of 30= P15 per sheet; Each claim in excess of 5= P150 per claim; Request for Substantive Examination= P1,750)
The description of the invention must contain the Abstract, Background of the Invention, Summary of the Invention, description of the drawings, detailed description of the invention and the claims. It must be emphasized that the claims are important because they enumerate the scope of the invention and the protection thereto.
After the application has been filed with the IPO, it will undergo formality examination, search and classification of the field of technology which the invention relates to.
After the expiration of 18 months from the filing date, it will be published in the IPO e-gazette. This will give third persons the opportunity to present observations in writing concerning the patentability of the invention, which can be commented to by the applicant.
The applicant must also file a request for substantive examination within six (6) months from the date publication. If such request is not made, the application is considered as withdrawn. Thereafter, the application will undergo examination wherein the Patent Examiner will evaluate its patentability. If the Patent Examiner refuses the application, he shall notify the applicant, who has the chance to defend or amend the application.
If the Patent Examiner allows the application, he shall issue a decision. The grant of a patent shall be published in the IPO Gazette within six (6) months. Letters Patent will be issued to evidence the grant of the patent.
This is how to get a Philippine Patent.
Nicolas & De Vega Law Offices is a law firm specializing in intellectual property and located at the 16th Flr., Suite 1607 AIC Burgundy Empire Tower, ADB Ave., Ortigas Center, Pasig City, Metro Manila, Philippines.
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