OVERVIEW

Victorian Aboriginal prior British

Invasion
Government Policies
Indigenous Response to Government
Policies
Removal of Children

VICTORIAN ABORIGINALS
around 500 different tribes occupied Australian
landmass
survived through efficient and sustainable systems

SCOPE of the
REPORT
History of
Patent

Identify
Patent

The
Philippine
Patent Law

Patent
Cooperatio
n Treaty

Patent Trolls

PATENT
vs
other IP rights

Intellectual Property
Rights

R
Y
P
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C

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M
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PATENT vs other IP rights

Copyright
protection of creative expression of an
idea

Trademark

image that distinguishes a business from

others

Patent

protection of functional expressions of

an idea

PATENT
exclusive rights granted to an inventor
prevent others from manufacturing or
selling
inventors maintain monopoly for a
limited time

HISTORY OF PATENTS

Renaissance Period
Early

1420s

informal system of patent

Venetian glass blowers

We have among us men of great genius,

apt to invent and discover ingenious devices;
and in view of the grandeur and virtue of our
city, more men come to us everyday from
diverse parts. Now, if provision were made for
the works and devices discovered by such
persons, so that others who may see them
could not build them and take the inventors
honor away, more men would then apply their
genius, would discover, and would build

John of Utynam

first recorded patent in England

a master glass-maker

new method to make stained g

received a 20-year monopoly

1449

required to teach the process

First Patent Act of U.S. Congress

An Act to promote the progress of Useful
Arts
passed on April 10, 1790

Samuel Hopkins

granted the first patent on July 31, 1790

method of producing potash

Patent Cooperation Treaty (PCT)

signed in June of 1970
became operational in June of 1978

Philippine Patent Law

enshrined in RA 8293
IPOPHL was created
signed by Fidel V. Ramos on June 6,
1997
Philippines became a member of PCT on August
17, 2001

PATENTABILITY

Requirements for Patentability

1. PATENTABLE
product, process,
machine, or an
improvement
anything under the Sun
that is made by human
beings

NON laws of nature

PATENTABLE
scientific theories and
mathematical model
abstract ideas

Requirements for Patentability

2. USEFUL
identifiable benefit and capable of being used
a person skilled in the art

3. NEW or NOVEL
an invention must be original

Requirement for Patentability

4. INVENTIVE
innovation is non-obvious to a person with
STEP
ordinary skilled in the art

5. ENABLEMENT
commercially viable
clear and concise to recreate

TYPES of PATENT

Different types of Patent

Utility Patent
product, process or improvement
thereof

Industrial Design Patent

ornamental design not affecting the

function
Plant
Patents
grafting or cloning of plants resulting with
distinct characteristics

OUTLINE of PHILIPPINE
PATENT LAW

Right to a Patent
belongs to the inventor, his heirs, or assigns
patent with two or more inventors belongs to
them jointly (Section 28)

First-to-file rule
An invention belongs to:
the one who filed an application
the one with the earliest filing (Section 29)

Right to a Patent
Ownership
Patent to an invention belongs to:

a. Person who commissions the work

b. Employee

if inventive activity is not a part of his regular duti

c. Employer

if inventive activity result of the performance

of regularly-assigned duties

Patent Application
a. A request for the grant of patent
b. A description of the invention

c. Drawing(s) necessary for the understanding of the invent

d. One or more claims
e. An abstract

Patent Application
Payment of Fee
Fees are required after filing date of application and
must accomplish within a month. Available fees are:
a. Filing Fee
b. Search Fee
c. Publication Fee
Failure to pay these fees will cause void of the
application

Patent Application

Who may apply for Patent?

Any person, natural or juridical
If not the inventor, a proof with
authority is required by the Office
If decease or ill, a representative
may substitute to sign the
application papers and other
documents

Substantive Examination
carried out to check patentability of invention
withdrawal of the request for examination shall be
irrevocable
no refund of any fee
application is withdrawn after six months if :
1. no submission of application status letter
2. fees not yet paid

Amendment of Application
patent can be amended during
examination
amendment should not include
outside the scope of filed
application

Grant of Patent & Term of Patent

A Patent shall be:
effective on the date of the publication
issued in the name of the Republic of the Philippines
published in the IPO Gazette within 6 months.
protection of 20 years from the filing date of the
application
ceased if any prescribed annual fees are not paid

Cancellation of patent
A patent is cancelled if it is:
a. not new or not patentable
b. not clear and complete enough
to be
carried out by a person skilled in
the art
c. contrary to public order or

Patent Rights and its Limitations

Exclusive Rights:
a. sole owner of his invention
in a period of time
b. profits by monopoly of his
invention
c. has the right to assign or
transfer the patent

Patent Rights and its Limitations

Limitations
Rights on patented product is nullified in the ff
circumstances:
a. usage with owners permission
b. purpose of experiments
c. medical purposes

Criminal Action for Infringement

Punishment for infringement includes both/either
Imprisonment
for 6 months to 3 years
of
the
ff:
a fine of P100,000 to P300,000

PATENT COOPERATION
TREATY

Patent Cooperation Treaty

provides facility to the applicant to file a single
patent
application
designate the countries where his IP rights shall be
applicable
simultaneous protection in a large number of
countries

Purpose of PCT
To simplify the process of filing foreign patent
applications
To give every regional and national patent Office the
benefit of
a. a search by a major patent Office
b. an optional examination by a major patent Office

Traditional Patent System vs PCT

Fees for:

(months)

Traditional

-translation
s
--Office
fees
File
--local
applications
agents
abroad
12

Fees for:
--translations
--Office fees
--local agents

File local
application

(months)

PCT

12

File
local
applica
tion

File PCT
application

Internationa
l
16 publication
18
22
Internation
al
search
report &
written
opinion

(optional)
File
demand for
International
preliminary
examination

Enter
national
phase

28

30

(optional)
Internation
al
preliminar
y report on
patentabili
ty

Traditional Patent System vs PCT

(months)
0
File local
applicatio
n

Typically a
national patent
application in the
home country of
the applicant

Enter
national
phase

International
publication
12

16

File PCT International

applicatio search report
n
& written
opinion

18

22

(optional)
File
demand for
International
preliminary
examination

28

30

(optional)
International
preliminary
report on
patentability

Traditional Patent System vs PCT

(months)
0

Enter
national
phase

International
publication
12

16

18

File local
File PCT International
application applicationsearch report
& written
opinion
Typically filed in same
national patent office-one set of fees, one
language, one set of
formality requirements-and legal effect in all PCT
States

22

28

30

(optional)
File
demand for
International
preliminary
examination

(optional)
International
preliminary
report on
patentability

Traditional Patent System vs PCT

(months)
0
File local
application

Enter
national
phase

International
publication
12

16

18

22

File PCT International (optional)

applicationsearch report
File
& written
demand for
opinion
International
preliminary
examination
Report on state of
the art (prior art
documents and their
relevance) + initial
patentability opinion

28

30

(optional)
International
preliminary
report on
patentability

PCT International Searching Authorities

The ISAs are the following 18 offices:
1.
2.
3.
4.
5.
6.
7.
8.
9.

10.Israel
Australia
11.Japan
Austria
12.Republic of Korea
Brazil
13.Russian Federation
Canada
14.Spain
China
Chile (not yet operating)15.Sweden
16.United States of
Egypt
America
Finland
India (October 15, 2013)17.European Patent Office
18.Nordic Patent Institute

Prior Art for International Search

Prior art:
everything which has been made available to the
public,
anywhere in the world,
by means of written disclosure,
which is capable of being of assistance in determining
that the claimed invention is or is not new and that it
does or does not involve an inventive step,
provided the making available to the public occurred
prior to the international filing date.

PCT Minimum Documentation (Rule 34)

Ex: Prior Art for International Search

Symbols
indicating
which aspect of
patentability
the document
cited is
relevant to (for
example, novelty,
inventive step,
etc.)

Documents
relevant to
whether or not
your invention
may be
patentable

The claim
numbers
in your
application to
which the
document is
relevant

Ex: PCT written opinion of ISA

Reasoning
supporting
the
assessmen
t

Patentabili
ty
assessmen
t
of claims

The PCT System

Disclosing to world
content of
application in
standardized way

(months
)
0
File local
applicatio
n

International
publication
12
16
1
22
8
File PCT International
(optional)
applicatio search report
File
n
& written
demand for
opinion
International
preliminary
examination

Enter
nationa
l
phase
28
30
(optional)
International
preliminary
report on
patentability

The PCT System

(months)
0
File local
application

12

International
publication
16
18

Enter
national
phase
22

28

30

File PCT International

(optional)
(optional)
applicationsearch report &
File
International
written opinion demand for
preliminary
International
report on
preliminary patentability
examination
Request an additional
patentability analysis on basis
of amended application

The PCT System

(months
)
0
File local
applicatio
n

12

Enter
nationa
l
phase
28
30

International
publication
16
18
22

File PCT International

applicatio search report
n
& written
opinion

(optional)
File
demand for
International
preliminary
examination

(optional)
Internation
al
preliminary
report on
patentabilit
y
Additional patentability
analysis, designed to
assist in national phase
decision-making

The PCT System

Express intention
and take steps to
pursue to grant in
various states

(months)
0
File local
application

12

International
publication
16
18
22

File PCT International

application search report
& written
opinion

(optional)
File
demand for
International
preliminary
examination

Enter
nationa
l
phase
28
30
(optional)
International
preliminary
report on
patentability

The PCT in 1978

The PCT Coverage Today

Countries not yet in PCT

Afghanistan Djibouti
Andorra
Eritrea
Argentina Ethiopia
Bahamas Fiji
Bangladesh Guyana
Bhutan
Haiti
Bolivia
Iraq
Burundi
Jamaica
Cambodia Jordan
Cape Verde Kiribati
Congo
Kuwait

Lebanon
Maldives
Marshall
Islands
Mauritius
Micronesia
Myanmar
Nauru
Nepal
Pakistan
Palau

Samoa
Yemen
Solomon Islands
Somalia
South Sudan
Suriname
Timor-Leste
Tonga
Tuvalu
Uruguay
Vanuatu
Venezuela

PCT Advantages
1. reduces major costs
2. provides a strong basis for patenting decisions
3. harmonizes formal requirements
4. protects applicant from certain inadvertent
errors
5. evolves to meet user needs
6. used by the worlds major corporations,
universities and research institutions when they
seek international patent protection

PCT Challenges
Improving the quality of PCT international phase work
products
Building trust between patent offices, so that duplicative
international phase and national phase processing can be
reduced
Language issues
33% of applications filed in Chinese, Japanese and
Korean
Helping developing countries benefit from the PCT
15 countries responsible for 92.1% of IAs published in
2011

PATENT TROLLS

Patent Trolls
people that misuse patents as
a business strategy
obtains the patents being sold
at auctions by bankrupt
companies
attempts to liquidate their
assets

Patent Trolls
launch lawsuits against infringing companies
simply hold the patent without planning to
practice the idea in an attempt to keep other
companies productivity at a standstill.

Patent Trolls
The ultimate patent troll: GOOGLE vs
MOTOROLA

Google :
worlds largest patent troll

https://www.youtube.com/watch?v=Il9nXHoprs

TEST
your
KNOWLEDGE
http://primaryschoolict.com/random-name-selector/?
timer=3&font=1&save=FIewpgtmBOBQwEMB2SCWBjBsBKIl
YBEFpoBPAG1gFkFUxqMALWAYQQlXPPoEFypUSeolJR6ABQQB
reCADOjAK5YAyo3oA5QTDmwCYJOlQh4CUntQQADt1gAVQffU
mAMqSEAXDxISL4BpHMNRQArUwhYADVkemxUAHMwSiA

Give 5 countries that

were included in the
pct.

What are the 5

requirements for
Patentability?

Give the 3 major

types of Patent

If inventive activity result

of the performance of
regularly-assigned duties,
to whom does the patent
of an invention belong
to?

What are the fees

required after the filing
date?

END
REFERENCES

No. 2002: Patent History. (n.d.). Retrieved January 31, 2016, from
http://uh.edu/engines/epi2002.htm
Introduction to the Patent Cooperation Treaty. (n.d.). Retrieved January 31, 2016,
from http://www.uspto.gov/video/cbt/GIPA-English/PCT/
Brown & Michaels. (n.d.). Retrieved January 31, 2016, from
http://www.bpmlegal.com/pct.html#notus
World Intellectual Property Organization. (n.d.). Retrieved January 31, 2016, from
http://www.wipo.int/wipolex/en/text.jsp?file_id=224714#LinkTarget_483
Republic Act 8293: Protecting the Intellectual Property in the Philippines. (n.d.).
Retrieved January 31, 2016, from http://ap.fftc.agnet.org/ap_db.php?id=94