While a patent gives the inventor the exclusive right to the inventor of making, using, or selling his/her invention, it is worth emphasizing that not all inventions are patentable. According to the Supreme Court in the case of Kho v. CA,1 to be patentable, an invention should be a technical solution to a problem in any field of human activity which is new, involves an innovative step, and is industrially applicable.
To be able to patent your invention successfully, it must fulfill three (3) basic criteria:
- That it must be a technical solution to any field of human activity;
- That it be a novel invention; and
- That it must be industrially applicable.
Technical Solution
To comply with the element of technical solution to any field of human activity, your invention should be able to address a specific problem or need in any area of human activity. It must also use technical means, e.g., a method, process, device, machine, or system.
An example of this is a machine that purifies water through solar energy.2 This invention addresses an area of human activity, i.e., the need for purified water. It solves such a problem by using a technical means, i.e., purification through renewable energy generated by solar panels.
Novelty
Another element of a patentable invention is that it must be novel. An invention is considered novel when it does not form part of a prior art3 and it involves an inventive step.4
Prior art, in turn, means that your invention should not have been made available to the public anywhere in the world before the filing date/priority date of the patent application. An invention is made available to the public when, among others, (a) it has already been made available for sale; (b) it has already been made available for commercial use; (c) when there is a prejudicial disclosure, i.e., the inventor voluntarily discloses the invention to the public without applying for patent;5 and (d) when there is a non-prejudicial disclosure, i.e., the inventor files for a patent application.6
Another requirement for novelty is that there must be an inventive step. An invention involves an inventive step if, taking into account prior art, the innovative aspect of your invention is not obvious to a “person skilled in the art” at the date of patent application.7 A person skilled in the art refers to one who is presumed to be an ordinary practitioner aware of what is common or general knowledge relevant to the invention.
Industrial Applicability
The last criterion of patentability is that your invention should be industrially applicable. The Word Intellectual Property Organization has defined industrial applicability as an invention that can be manufactured or used in any kind of industry.8 Accordingly, the Intellectual Property Code of the Philippines (IP Code) provide that an invention is industrially applicable when it can be produced and used in any industry.9
Thus, to be industrially applicable, your invention: (a) must be feasible, i.e., it can be reproduced; (b) must have a known utility – otherwise, it would not have a practical application; and (c) must be of a technical nature – otherwise, it would not relate to industry.
Non-Patentable Inventions
As mentioned earlier, not all inventions are patentable. Aside from compliance with the elements of patentability, the Intellectual Property Code of the Philippines including the Revised Implementing Rules and Regulations for Patents, Utility Models, and Industrial Designs of the World Intellectual Property Organization (WIPO) enumerate certain inventions that are excluded from patent protection. These are:
- Discoveries, scientific theories, and mathematical methods, a law of nature, a scientific truth, or knowledge as such;10
- Abstract ideas or theories, fundamental concepts apart from the means or processes for carrying the concept to produce a technical effect;
- Schemes, rules, and methods of performing mental acts and playing games;
- Method of doing business, such as a method or system for transacting business without the technical means for carrying out the method or system;
- 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;
- Plant varieties or animal breeds or essentially biological process for the production of plants and animals. This provision shall not apply to microorganisms and non-biological and microbiological processes;
- Aesthetic creations; and
- Anything which is contrary to public order, health, welfare, or morality, or process for cloning or modifying the germ line genetic identity of humans or animals or uses of the human embryo.
Drugs and Medicines
In the case of drugs and medicines, there is no patentable invention in the following instances:11
1) Mere discovery of a new form or new property of a known substance that does not result in the enhancement of the known efficacy of that substance;
2) Mere discovery of any new property or new use for a known substance; or
3) Mere use of a known process.
Conclusion
Securing a patent provides certain rights and benefits,12 yet before you can exercise these rights, you must first apply for a patent. In applying for a patent, you must first be able to determine whether your invention is patentable. It is patentable when it overcomes two (2) crucial hurdles, namely: (a) that it complies with all the elements of patentability; and (b) that it does not fall within the ambit of any of the non-patentable-inventions as enumerated under the Intellectual Property Code of the Philippines.
To learn more about patents, book a consultation with an experienced attorney. You may also email your queries to admin@pinollaw.com.
1 Elidad Kho V. Hon. Court of Appeal, Summerville General Merchandising and Company, and Ang Tiam Chay, G.R. No. 115758, 19 March 2002.
2 https://aim2flourish.com/innovations/water-purification-with-solar-energy
3 Section 23 of the Intellectual Property Code of the Philippines [Hereinafter, IPC]
4 Section 26 of the IPC
5 Pearl & Dean v. Shoemart, Inc., et al, citing Creser Precision Systems, INC. v. CA, 286 SCRA 13.
6 Section 25.1 of the IPC
7 Section 26 of the IPC.
8 “INDUSTRIAL APPLICABILITY” AND “UTILITY” REQUIREMENTS: COMMONALITIES ANDDIFFERENCES. SCP/9/5, Ninth Session Geneva, 12 to 16 May 2003.
9 Section 27, IPC
10 In the case of drugs and medicines involving known substances, please refer to the Implementing Rules and Regulations of Republic Act 9502, otherwise known as the “Universally Accessible Cheaper and Quality Medicines Act of 2008
11 Section 22 of the IPC as amended by R.A. No. 9502 - An Act Providing for Cheaper And Quality Medicines, Amending For The Purpose Republic Act No. 8293 Or The Intellectual Property Code, Republic Act No. 6675 Or The Generics Act Of 1988, And Republic Act No. 5921 Or The Pharmacy Law, And For Other Purposes.
12 https://www.ipophil.gov.ph/help-and-support/patent/
