Article 158p. 158

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20.1. "Bureau" means the Bureau of Patents;

20.2. "Director" means the Director of Patents;

20.3. "Regulations" means the Rules of Practice in Patent

Cases

formulated

by

the

Director

of

Patents

and

promulgated by the Director General;

20.4. "Examiner" means the patent examiner;

20.5.

"Patent

application"

or

"application"

means an

application

for

a

patent

for an invention except in

Chapters XII and XIII, where "application" means an

application for a utility model and an industrial design,

respectively; and

20.6. "Priority date" means the date of filing of the foreign

application for the same invention referred to in Section

31 of this Act. (n)

CHAPTER II Patentability

SECTION 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. 7, R.A. No. 165a)

SECTION

22.

Non-Patentable

Inventions .

—

The

following shall be excluded from patent protection:

22.1. Discoveries, scientific theories and mathematical

methods, and in the case of drugs and medicines, 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.

For

the

purpose of this clause, salts, esters, ethers,

polymorphs, metabolites, pure form, particle size, isomers,

mixtures of isomers, complexes, combinations, and other

derivatives of a known substance shall be considered to

be the same substance, unless they differ significantly in

properties with regard to efficacy;

(as amended by RA No 9502)

22.2. Schemes, rules and methods of performing mental

acts, playing games or doing business, and programs for

computers;

22.3. 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;

22.4.

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:

22.5. Aesthetic creations; and

22.6.

Anything

which is contrary to public order or

morality. (Sec. 8, R.A. No. 165a)

SECTION

23.

Novelty .

— An invention shall not be

considered new if it forms part of a prior art. (Sec. 9, R.A.

No. 165a)

SECTION 24. Prior Art . — Prior art shall consist of:

24.1. 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

24.2. 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 of the application: Provided , That

the application which has validly claimed the filing date

of an earlier application under Section 31 of this Act, shall

be prior art with effect as of the filing date of such earlier

application: Provided , further , That the applicant or the

inventor identified in both applications are not one and

the same. (Sec. 9, R.A. No. 165a)

SECTION 25. Non-Prejudicial Disclosure . — 25.1. The

disclosure of information contained in the application

during the twelve (12) months preceding the filing date or

the priority date of the application shall not prejudice the

applicant

on the ground of lack of novelty if such

disclosure was made by:

(a) The inventor;

(b) A patent office and the information was contained (a)

in another application filed by the inventor and should

not have been disclosed by the office, or (b) in an

application filed without the knowledge or consent of the

inventor by a third party which obtained the information

directly or indirectly from the inventor; or

(c) A third party which obtained the information directly

or indirectly from the inventor.

25.2. For the purposes of Subsection 25.1, "inventor" also

means any person who, at the filing date of application,

had the right to the patent. (n)

SECTION 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. (n)

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.

(as amended by RA No 9502)

SECTION 27. Industrial Applicability . — An invention that

can be produced and used in any industry shall be

industrially applicable. (n)

CHAPTER III Right to a Patent

SECTION 28. Right to a Patent . — The right to a patent

belongs to the inventor, his heirs, or assigns. When two (2)

or more persons have jointly made an invention, the right

to a patent shall belong to them jointly. (Sec. 10, R.A. No.

165a)

SECTION 29. First to File Rule . — If two (2) 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. (3rd sentence, Sec.

10, R.A. No. 165a)

SECTION

30.

Inventions

Created

Pursuant

to

a

Commission . — 30.1. The person who commissions the

work shall own the patent, unless otherwise provided in

the contract.

30.2. In case the employee made the invention in the

course of his employment contract, the patent shall

belong to:

(a) 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.

© Compiled by RGL

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