JOHN ROMMEL V. RAFAEL, 4B

ASSIGNMENT NO. 3: FACEBOOK ASSIGNMENT

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1. Are Patent Utility and Nonobviousness principles that find their place in Philippine law? If so, what provisions of the IP Code talk about them?

Yes. In order to have a balanced and stable patent system, it is necessary to have safeguards that will protect not only the inventors but also the state insofar as their creations are concerned. Having principles like patent utility and nonobviousness will definitely ensure that only those inventions which deserve patent protection will be protected. However, the requirements may be relaxed as the Bureau of Patents may deem proper in order to fit to the standards of our society specially since we are still a developing country, and we need to encourage more inventors to help us in improving the lives of the people. Notwithstanding the lack of support of the government to inventors because of lack of funds, as always, we have ample provisions in the IP Code regarding patent utility and nonobviousness. These are the following provisions under the IP Code:

Sec.21 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.

Sec.26 Inventive Step - 26.1 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.

26.2. In the case of drugs and medicines, there is no inventive step if the invention results from 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 the mere discovery of any new property or new use for a known substance, or the mere use of a known process unless such known process results in a new product that employs at least one new reactant.

Sec. 27 Industrial Applicability. — An invention that can be produced and used in any industry shall be industrially applicable. (n)

JOHN ROMMEL V. RAFAEL, 4B

ASSIGNMENT NO. 3: FACEBOOK ASSIGNMENT

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Patent Utility

In the United States, in order for an invention to be patentable there are several requirements/criteria that must be met. In simple terms they are called the utility requirement. These are essential to the application since the examiner needs to evaluate the documentary evidence submitted based on the utility requirement above-mentioned.

What is patent utility all about?

Patent utility can easily be defined by enumerating the several factors which it is composed of. They are operability, beneficial utility and practical/substantial utility. Understanding them is equivalent to understanding patent utility so I will start by defining each one of them. Operability in its simplest sense means that the product to be patented must somehow have a chance of working or functioning. The applicants for patent need not however worry since there is a presumption that the inventions are operable as described. However if the United States Patent and Trademark Office (USPTO) finds that there are reasonable doubts as to operability such that it is inherently unbelievable or base on implausible scientific principles then the burden shifts to the applicant. The second factor is beneficial utility. It is best explained with the words of Justice Joseph Story himself in the leading case of Lowell v. Lewis (1817). To wit:

“All that the law requires is, that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society.”

The third requirement is practical (substantial) utility. This simply means that the invention must have identifiable, specific benefit that’s directed to its purpose. General hopeful statements, general disclosures of possible uses is not enough, it must show some specific purpose. In the 2001 UPSTO Utility Guidelines, in order for the practical utility to be satisfied it must have specific and substantial utility.

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Non obviousness

Non obviousness is one of the many requirements of patentability of an invention. It is also called inventive step. This requirement is found in 35 U.S. Code § 103, to wit:

JOHN ROMMEL V. RAFAEL, 4B

ASSIGNMENT NO. 3: FACEBOOK ASSIGNMENT

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“A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.”

Simply stated, it means that the invention must not be obvious to a person with ordinary skill in the art, before the filing date.

This requirement is also found under Sec. 26 of R.A. 8293, as amended or also known as Intellectual Property Code of the Philippines, to wit:

“Sec. 26. Inventive Step - 26.1 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.

26.2. In the case of drugs and medicines, there is no inventive step if the invention results from 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 the mere discovery of any new property or new use for a known substance, or the mere use of a known process unless such known process results in a new product that employs at least one new reactant. “

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4. What is the rationale behind the need to make claims in a patent?

The claims in the patent is important because it describes the subject matter of the invention claimed and it is the content of such claim the the law seeks to protect. However since the Patent Law Treaty Implementation Act was enacted the patent claims and drawings are no longer required in order to obtain a filing date for non-provisional patent application. Still the purpose is the same, it is for the subject matter of the invention to be described clearly and distinctly in such a way by the inventor which he regards as his own so that the law may be able to protect it.