SALAO SAMPLE BAR QUESTIONS: PATENT

1. X invented a method of improving the tenderness of meat by injecting an enzyme

solution into the live animal shortly before a slaughter. Is the invention patentable?

Answer:

To be patentable, the invention must be new and should consist in a useful machine,
manufactured product or process. Among those that cannot be patented are processes which are
not directed to making or improving a commercial product. Viewed from the above light, X may
lawfully patent his invention. (BAR 1989) Nota Bene: As an alternative answer, a process or
improvement of process that related to any field of human activity, requires an inventive activity
and is industrially applicable may be patented. It is submitted that all the elements of patent are
present in this case.

2. Cezar works in a car manufacturing company owned by Joab. Cezar is quite innovative
and loves to tinker with things. With the materials and parts of the car, he was able to
invent a gas-saving device that will enable cars to consume less gas. Francis, a co-
worker, saw how Cezar created the device and likewise, came up with a similar gadget,
also using scrap materials and spare parts of the company. Thereafter, Francis filed an
application for registration of his device with the Bureau of Patents. 18 months later,
Cezar filed an application for registration his device with the Bureau of Patents. Is the
gas-saving device patentable? Explain.

Answer:

It is patentable because it is new, it involves an inventive step and it is industrially

applicable. (BAR 2005) Under the elements of patentability.

3. Supposing that Albert Einstein were alive today and he filed with the Intellectual
Property Office (IPO) an application for patent for his theory of relativity expressed in
the formula E=mc2. The IPO disapproved Einstein’s application on the ground that his
theory of relativity is not patentable. Is the IPO’s action correct?

Answer:

Yes. The IPO’s action is correct that the theory of relativity is not patentable. Under Section 22.1
of the Intellectual Property Code (RA 8293), “Discoveries, scientific theories and mathematical
methods” are not patentable. (BAR 2006) 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.
 4. Yosha was able to put together a mechanical water pump in his garage consisting of
suction systems capable of drawing water from the earth using less human effort than what
was then required by existing models. The water pump system provides for a new system
which has the elements of novelty and inventive steps. Yosha, while preparing to have his
invention registered with the IPO, had several models of his new system fabricated and sold
in his province.

(a) Is Yosha's invention no longer patentable by virtue of the fact that he had sold several
models to the public before the formal application for registration of patent was filed with
the IPO? (2.5%)

(b) If Yosha is able to properly register his patent with the IPO, can he prevent anyone
who has possession of the earlier models from using them? (2.5%)

Answer:
a. Yosha’s invention is still patentable despite the fact he had sold several models to the
public before the formal application for registration of the patent was filed with the IPO.
It is true that an invention shall not be considered new if it forms part of a prior art and
that 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. This, however, presupposes that the one who has made available
the patentable invention to the public is a person other than the applicant for patent.

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)
b. Yosha can no longer prevent anyone who has possession of the earlier models from using
them even if Yosha is able to properly register the patent with the IPO. One of the
limitations of patent rights is the use of the patented product which has been put on the
market in the Philippines by the owner of the product insofar as such use is performed
after the product has been so put on the said market ( Section 172 of the IP Code )

5. Cezar works in a car manufacturing company owned by Joab. Cezar is quite innovative
and loves to tinker with things. With the materials and parts of the car, he was able to
invent a gas-saving device that will enable cars to consume less gas. Francis, a co-
worker, saw how Cezar created the device and likewise, came up with a similar gadget,
also using scrap materials and spare parts of the company. Thereafter, Francis filed an
application for registration of his device with the Bureau of Patents. 18 months later,
Cezar filed an application for registration his device with the Bureau of Patents.

a. Assuming that it is patentable, who is entitled to the patent? What, if any, is the
remedy of the losing party?

Answer:

Francis is entitled to the patent, because he had the earlier filing date. The remedy of
Cezar is to file a petition in Court for the cancellation of the patent of Francis on the
ground that he is the true and actual inventor, and ask for his substitution as patentee.
(BAR 2005).

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)

b. Supposing Joab got wind of the inventions of his employees and also laid claim to
the patents, asserting that Cezar and Francis were using his materials and
company time in making the devices, will his claim prevail over those of his
employees? Explain.

Answer:

The claim of Joab will not prevail over those of his employees, even if they used his
materials and company time in making the gas-saving device. The invention of the gas-
saving device is not part of their regular duties as employees. (BAR 2005) Under Sec 30

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.

(b) 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. (n)

6. X works as a research computer engineer with the Institute of Computer Technology, a

government agency. When not busy with his work, but during office hours, he developed a
software program for law firms that will allow efficient monitoring of the cases, which software
program is not at all related to his work. Assuming the program is patentable, who has the right
over the patent?
a) X;
b) Institute of Computer Technology;
c) Neither X nor the Institute Computer Technology can claim patent right over the invention;
d) X and the employer of X will jointly have the rights over the patent.

Answer:
a) X. (BAR 2012)

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.

(b) 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. (n)

6. Ferdie is a patent owner of a certain invention. He discovered that his invention is being
infringed by Johann. What are the remedies available to Ferdie against Johann?

Answer: The following are the remedies available to Ferdie against Johann:
a. Seize and destroy
b. Injunction
c. Damages in such amount may have been obtained from the use of the invention if
properly transacted which can be more than what the infringer (Johann) received.
d. Attorney’s fees and costs. (BAR 1993)
Nota Bene:

The better answer in lieu of # c is as follows.

a. He may file with the court an action for damages to recover the profits which he
would have made without the infringement and if the same can not determined,
reasonable royalty. Whenever the circumstances warrant, the court may award Other
damages provided that it does not exceed 3x the amount of actual damages.

Items a, b and d should be maintained

If you were the lawyer of Johann in the infringement suit, what are the defenses that your
client can assert?

Answer:

These are the defenses that can be asserted in an infringement suit:

a. Patent is invalid
b. Patent is not new or patentable
c. Specification of the invention does not comply with Sec.14
d. Patent was issued not to the true and actual inventor, designer or author of the utility
model or the plaintiff did not derive his rights from the true and actual inventor, designer
or author of the utility model. (BAR 1993)

SECTION 14. Use of Intellectual Property Rights Fees by the IPO. - 14.1. For a more
effective and expeditious implementation of this Act, the Director General shall be
authorized to retain, without need of a separate approval from any government agency,
and subject only to the existing accounting and auditing rules and regulations, all the fees,
fines, royalties and other charges, collected by the Office under this Act and the other
laws that the Office will be mandated to administer, for use in its operations, like
upgrading of its facilities, equipment outlay, human resource development, and the
acquisition of the appropriate office space, among others, to improve the delivery of its
services to the public. This amount, which shall be in addition to the Office’s annual
budget, shall be deposited and maintained in a separate account or fund, which may be
used or disbursed directly by the Director General.

14.2. After five (5) years from the coming into force of this Act, the Director General
shall, subject to the approval of the Secretary of Trade and Industry, determine if the fees
and charges mentioned in Subsection 14.1 hereof that the Office shall collect are
sufficient to meet its budgetary requirements. If so, it shall retain all the fees and charges
it shall collect under the same conditions indicated in said Subsection 14.1 but shall
forthwith, cease to receive any funds from the annual budget of the National
Government; if not, the provisions of said Subsection 14.1 shall continue to apply until
such time when the Director General, subject to the approval of the Secretary of Trade
and Industry, certifies that the above-stated fees and charges the Office shall collect are
enough to fund its operations. (n)