1. Patentable vs. Non-Patentable Inventions

Patentable Invention

A patentable invention is any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing [Sec. 21, RA 8293]¹.

Standards or requirements for registrability

• It must be novel;
• It must be inventive; and
• Industrially applicable.
• Novelty: An invention is not new if it forms part of prior art under Sec. 24 of RA 8293, which includes certain earlier-filed applications; the relevant date is the filing date or, where applicable, the priority date, subject to the non-prejudicial disclosures under Sec. 25.
• Inventive Step: The invention must not be obvious to a person skilled in the relevant field of technology.
• Industrial Applicability: The invention must be capable of being produced and used in any industry.

Novelty

An invention shall not be considered new if it forms part of a prior art [Sec. 23, RA 8293²].

Prior Art

This 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 [Sec. 24.1, RA 8293]³;
• 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 Act⁴, shall be prior art with effect as of the filing date of such earlier application
• The applicant or the inventor identified in both applications are not one and the same [Sec. 24.2, RA 8293]⁵.

Non-prejudicial Disclosures

This is an exception to the General Rule on Prior Art under Sec. 24⁶.

• It provides that the disclosure of the information contained in the application during the 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:
• The inventor
• A patent office and the information was contained
• In another application filed by the inventor and should not have been disclosed by the office, OR
• 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
• A third party which obtained the information directly or indirectly from the inventor [Sec. 25, RA 8293]⁷.

Inventive Step (Inventiveness)

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 [Sec. 26.1, RA 8293, as amended by RA 9502]⁸.

Cheaper Medicines Act

In 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 enhancement of the known efficacy of that substance;
• 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. 26.2, RA 8293 as amended by RA 9502]⁹.

Industrial Applicability

An invention that can be produced and used in any industry shall be industrially applicable [Sec. 27, RA 8293]¹⁰.

Utility Model

A technical solution of a problem in any field of human activity is registrable as a utility model if it is new and industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing.

A utility model may or may not involve an inventive step [Cf. Sec. 109.1(a)–(b) in relation to Sec. 21, RA 8293¹¹].

Note: RA 8293 also removed substantive examination of utility models.

Patentable subject matter [Sec. 22]

The invention shall not be covered by the subject matter specified under Sec. 22 of RA 8293¹².

Non-Patentable Inventions

The following shall be excluded from patent protection:

• 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. 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 [Sec. 22.1, RA 8293 as amended by RA 9502]¹³;
• Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers [Sec. 22.2, RA 8293]¹⁴;
• 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 [Sec. 22.3, RA 8293]¹⁵;
• Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to microorganisms and non-biological and microbiological processes [Sec. 22.4, RA 8293]¹⁶;
• Aesthetic creations [Sec. 22.5, RA 8293]¹⁷;
• Anything which is contrary to public order or morality [Sec. 22.6, RA 8293]¹⁸.

In addition to discoveries, scientific theories and mathematical methods, the IP Code now includes (as non-patentable for having no inventive step), in 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
• The mere discovery of any new property or new use of a known substance
• The mere use of a known process unless such known process results in a new product that employs at least one new reactant [Sec. 26.2, RA 8293 as amended by RA 9502]¹⁹.