Course Code: BAM 242

Module #14

Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

Lesson Title: INTELLECTUAL PROPERTY LAW Part 1: Materials:

Patents Student Activity Sheet
Lesson Objectives:
At the end of this module, I can:
1. Understand the general provisions, patentability and right to References:
patent. Regulatory Framework and
2. Explain the process of application and cancellation of patent. Legal Issues in Business Part 1
3. State the rights of patentees and explain the infringement of by Atty. Andrix Domingo,CPA,MBA
patents.
4. Understand voluntary and compulsory licensing, assignment
and transmission of rights.

Productivity Tip:
We should all be like the players in a professional basketball championship series.
They are determined to finish the game strong no matter what. They prepare, plan
and strategize to deliver the greatest game of their lives. Regardless of what
happened the last game, they still show up for the next game with the same intensity
as if it was the first time. Happy learning!

A. LESSON PREVIEW/REVIEW

1) Introduction (2 mins)

Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines took
effect on January 1, 1998.

The State recognizes that an effective intellectual and industrial property system is vital to the development of
domestic and creative activity, facilitates transfer of technology, attracts foreign investments and ensures market
access for our products.

It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their
intellectual property and creations.

The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of
knowledge and information for the promotion of national development and progress and the common good.

It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and
copyright, to liberalize the registration on the transfer of technology and to enhance the enforcement of
intellectual property rights in the Philippines.
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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

Intellectual property rights have been defined under Section 4 of the Code to consist of:
a. Copyright and related rights
b. Trademarks and service marks
c. Geographic indications
d. Industrial Designs
e. Patents
f. Layout-designs (topographies) of Integrated circuits
g. Protection of Undisclosed Information

In this module, be ready to learn the pertinent provision of patents.

2) Activity 1: What I Know Chart, part 1 (3 mins)

Try answering the questions below by writing your ideas under the first column What I Know.

What I Know Questions: What I Learned

1. Define patent.

2. Give 5 examples of patentable

inventions.

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 Course Code: BAM 242
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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

3. Who has the right to patent?

B. MAIN LESSON

1) Activity 2: Pre-Printed Content Notes (13 mins)

PATENT:

A patent is a monopoly granted only for specific purposes and objectives.

A patent is a form of intellectual property that gives its owner the legal right
to exclude others from making, using, or selling an invention for a limited
period of years in exchange for publishing an enabling public disclosure of
the invention.

Patent has the following purposes:

1. It seek to foster and reward invention.
2. it promotes disclosure of inventions to stimulate further innovation and to permit the public to practice the
invention one the patent expires;
3. The stringent requirements for patent protection seek to ensure that ideas in the public domain remain there
for the free use of the public.

PATENTABILITY:

Patentable Inventions:
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.

A patentable invention may be or may relate to:

a. A product, such as a machine, a device, an article
of manufacture, a composition of matter, a
microorganism;
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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

b. A process, such as a method of use, a method of manufacturing, a non-biological process, a microbiological

process;
c. Computer-related inventions; and
d. An improvement of any of the foregoing.

Non-Patentable Inventions:

The following shall be excluded from patent protection:

Discoveries, scientific theories and mathematical methods;

In case of drugs and medicines,

o the mere discovery of a new form or new property of a
known substance which does not result in the
enhancement of the known efficacy of that substance or
o the mere discovery of any new property or new use for
a known substance or
o the mere use of a known process unless such known
process results in a new product that employs at least one new
reactant.

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.

Aesthetic creations

Anything which is contrary to public order or morality

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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

RIGHT TO PATENT: You maybe the first one

The right to the patent to invent it but I have
belongs to me because more right than you do
The right to a patent belongs to the inventor, his heirs or assigns. I was the first one to because I was the first
. invent it! one to file an application
for such invention!
When two or more persons have jointly made an invention, the right
to a patent shall belong to them jointly.

If two or more persons have made the invention separately and

independently of each other, the right to the patent shall belong to
the person who filed an application for such invention or

Where two or more applications are filed for the same invention, to
the applicant who has the earliest filing date or the earliest priority
date. (First to File Rule)

The person who commissions the work shall own the patent, unless
otherwise provided in the contract.

In case the employee made the invention in the course of his

employment contract, the patent shall belong to:
o The employee, if the inventive activity is not a part of his
regular duties even if the employee uses the time, facilities
and materials of the employer.
o The employer, if the invention is the result of the performance of his regularly-assigned duties,
unless there is an agreement, express or implied to the contrary.

Who May Apply for Patent:

Any person, natural or juridical, may apply for a patent. If the applicant is not the inventor, the Office
shall require him to submit a proof of his authority to apply for the patent.

Unity of Invention:
The application shall relate to one invention only or to a group of invention forming a single general
inventive concept.
If several independent inventions which do not form a single general inventive concept are claimed in
one application, the Director may require that the application be restricted to a single invention. A later
application filed for an invention divided out shall be considered as having been filed on the same day as
the first application, provided:
o That the later application is filed within four months after the requirement to divide becomes final
or within such additional time not exceeding four months, as may be grated:
o Provided further, that each divisional application shall not go beyond the disclosure in the initial
application.
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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

Procedure for Grant of Patent:

Filing Date Requirements - The filing date of a patent application shall be the date of receipt by the
office of at least the following elements:
o An express or implicit indication that a Philippine patent is sought;
o Information identifying the applicant; and
o Description of the invention and one or more claims in Filipino or English.

Formality Examination: After the patent application has been accorded a filing date and the required
fees have been paid on time, the applicant shall comply with the formal requirements of application. The
patent application shall be in Filipino or English and shall contain the following (formal requirement):
o A request for the grant of a patent; (Section 34)
o A description of the invention; (Section 35.2)
o Drawings necessary for the understanding of the invention (Section 35.2);
o One or more claims; (Section 36) and
o An abstract (Article 37)

Classification and Search: An application that has complied

with the formal requirement shall be classified and a search
conducted to determine the prior art.
o Prior art shall consist of everything which has been made
available to the public anywhere in the world, before the
filing date or the priority date of the application claiming
the invention; and
o The whole contents of an application for a patent, utility
model, or industrial design registration, published in
accordance with this Act, filed or effective in the
Philippines, with a filing or priority date that is earlier than
the filing or priority date f the application. (See Section 24)

Publication of Patent Application: The patent application shall be published in the IPO Gazette
together with a search document established by or on behalf of the Office citing any documents that
reflect prior art, after the expiration of 18 months from the filing date or priority date.

Approval: If the application meets the requirements, the Office shall grant the patent. The patent shall
take effect on the date of the publication of the grant of the patent in the IPO Gazette.

Refusal: If the application was refused, the inventor may appeal to the Director.

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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

Term of Patent:
The term of a patent shall be twenty years from the filing date of the application.

CANCELLATION OF PATENTS:
Any interested person may, upon payment of the required fee, petition to cancel the
patent or any claim thereof, or parts of the claim, on any of the following grounds:
a. that what is claimed as the invention is not new or patentable;
b. that the patent does not disclose the invention in a manner sufficiently clear and
complete for it to be carried out by any person skilled in the art; or
c. That the patent is contrary to public order or morality.

RIGHTS OF PATENTEES:
A patent shall confer on its owner the following exclusive rights:
o Where the subject matter of a patent is a product, to restrain, prohibit and prevent any
unauthorized person or entity from making, using, offering for sale, selling or importing that
product;
o Where the subject matter of a patent is a process to restrain, prevent or prohibit any
unauthorized person or entity from using the process and from manufacturing, dealing in, using,
selling or offering for sale, or importing any product obtained directly or indirectly from such
process.
Patent owners shall also have the right to assign, or transfer by succession the patent and to conclude
licensing contracts for the same.

PATENT INFRINGEMENT:
The making, using, offering for sale, selling or importing a patented product or a
product obtained directly or indirectly from a patented process, or the use of a
patented process without the authorization of the patentee constitutes patent
infringement.

VOLUNTARY LICENSE CONTRACT:

To encourage the transfer and dissemination of technology, prevent or control
practices and conditions that may in particular cases constitute an abuse of
intellectual property rights having an adverse effect on competition and trade.

Technology Transfer Arrangements shall mean contracts or agreements involving the transfer of systematic
knowledge for the manufacture of a product, the application of a process or rendering of a service including
management contracts ana the transfer, assignment or licensing of all forms of intellectual property rights,
including licensing of computer software except computer software developed or mass market.

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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

COMPULSORY LICENSING:
The Director of Legal Affairs may grant a license to exploit a patented invention, even without the agreement of
the patent owner, in favor of any person who has shown his capability to exploit the invention.

TRANSMISSION OF RIGHTS:
Inventions and any right, title or interest in and to patents and inventions covered thereby, may be assigned or
transmitted by inheritance or bequest or may be the subject of a license contract.

ASSIGNMENT OF INVENTIONS:
An assignment may be of the entire right, title or interest in and to the patent and the invention covered
thereby, or of an undivided share of the entire patent and invention, in which event the parties become
joint owners thereof. The assignment must be in writing and notarized.

2) Activity 3: Skill-building Activities (with answer key) (18 mins + 2 mins checking)

Exercise I

1. Is the device or process that has been known or used by others prior to its invention or
discovery by the applicant patentable? Explain.

________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________

2. Who owns the patent of an invention created pursuant to a commission? Explain.

________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________

3. What are the content of a request for the grant of patent?

________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________

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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

3) Activity 4: What I Know Chart, part 2 (2 mins)

It’s time to answer the questions in the What I know chart in Activity 1. Log in your answers in the table.

4) Activity 5: Check for Understanding (5 mins)

Exercise I. TRUE or FALSE

__________1. Schemes, rules and methods of performing mental acts, playing games or doing business
and programs for computers are patentable inventions.
__________2. Everything which has been made available to the public anywhere in the world, before the
filing date or the priority date of the application claiming the invention is considered as prior art.
__________3. An invention involves an inventive step if, having regard to prior art, it is not obvious to a
person skilled in the art at the time of the filing date or priority date of the application claiming the
invention.
__________4. The right to a patent exclusively belongs to the inventor only.
__________5. A juridical person may not apply for a patent.
__________6. The patent application shall be in Filipino or English.
__________7. No patent may be granted unless the application identifies the inventor.
__________8. An applicant who is not a resident of the Philippines must appoint and maintain a resident
agent or representative in the Philippines.
__________9. Description shall consist of a concise summary of the disclosure of the invention as
contained in the description, claims and drawing in preferably not more than one hundred fifty words.
__________10. A patent application which has not yet been published and all related documents can be
made available for inspection without the consent of the applicant.

A. LESSON WRAP-UP

Activity 6: Thinking about Learning

Congratulations for finishing this module! Shade the number of the module that you finished

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Module #14

Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

Did you have challenges learning the concepts in this module? If none, which parts of the module helped you
learn the concepts?
________________________________________________________________________________________
________________________________________________________________________________________
______________________________.

Some question/s I want to ask my teacher about this module is/are:

________________________________________________________________________________________
________________________________________________________________________________________
______________________________.

Learning Scores Action Plan

Date
Target/Topic

What module# did you What contributed to the quality of your

What were your
What’s the do? What were the performance today? What will you do next
scores in the
date today? learning targets? What session to maintain your performance or
activities?
activities did you do? improve it?

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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

FAQs

The element of novelty is essential requisite of the patentability of an invention or discovery.

An invention shall not be considered new if it forms part of a prior art.
A strict identity test is required to be applied in assessing novelty.
If a device or process has been known or used by others prior to its invention or discovery by the
applicant, an application for patent should be denied.

Inventor also means any person who, at the filing date of application had the right to the patent.
An application shall not prejudice the applicant on the ground of lack of novelty if such disclosure was
made by the inventor, a patent office, or third party which obtained the information directly or indirectly
from the inventor. (Section 25)

The abstract shall consist of a concise summary of the disclosure of the invention as contained in the
description, claims and drawings in preferably not more than 150 words.
Petition for cancellation shall be in writing, verified by the petitioner or by any person in his behalf who
knows the facts, specify the grounds upon which it is based, include a statement of the facts to be relied
upon and filed with the Office.

Any prior user, who, in good faith was using the invention or has undertaken serious preparations to use
the invention in his enterprise or business, before the filing date or priority date of the application on which
a patent is granted, shall have the right to continue the use thereof as envisaged in such preparations
within the territory where the patent produces its effect.

Doctrine of Equivalents – it provides that an infringement also takes place when a device appropriates a
prior invention by incorporating its innovative concept and although with some modification and change,
performs substantially the same function in substantially the same way to achieve substantially the same
result.

Any technical solution of a problem in any field of human activity which is new and industrially applicable
shall be registrable and known as registrable utility models.

An invention qualifies for registration as a utility model if it is new and industrially applicable.
Industrial design is any composition of lines or colors or any three-dimensional form, whether or not
associated with lines or colors: Provided, that such composition or form gives a special appearance to
and can serve as pattern for an industrial product of handicraft.

Integrated circuit means a product, in its final form or an intermediate form, in which the elements, at
least one of which is an active element and some or all of the interconnections are integrally formed in
and/or on a piece of material and which is intended to perform an electronic function.

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