New IP Rules and Regulations
Ignacio S. Sapalo and Anne Mariae Celeste V. Jumadla
The IPO of the Philippines published a revised Implementing Rules and Regulations (IRR) for Patents, Utility Model and Industrial Designs on April 26, 2011, with further corrections and amendments on July 13, 2011.
Patentable and non-patentable inventions
Under the revised IRR, computer-related inventions are among the statutory classes of patentable inventions, together with products, processes and their improvements. This departs from the enumeration made under Republic Act No. 8293, or the IP Code of the Philippines, that a patentable invention “may be, or may relate to, a product, or process, or an improvement of any of the foregoing”.
Strictly speaking, computer-related inventions do not constitute a separate statutory class. As the law does not treat them as sui generis, computerrelated inventions are evaluated as a product, a process or an improvement of a product or a process. This is in line with the US Supreme Court’s statement in the 1981 Diamond v Diehr case that a process may be patentable irrespective of the particular form of the means used.
As computer programs are expressly excluded from patentability by the IP Code, the Manual of Substantive Examination Practice (MSEP) of the Bureau of Patents provides that a computerrelated invention may be patentable if the computer program used therein, in combination with a computer, causes the computer to operate in a different way, from a technical point of view.
As to the other classes, examples are given. More examples are enumerated under nonpatentable inventions, without technically adding new categories. Lumped together with inventions contrary to public order, health, welfare or morality are processes for cloning or modifying the germ line genetic identity of humans or animals, or uses of the human embryo.
The debate continues as to the “public order, health, welfare or morality” repercussions of cloning or modifying the germ line, the genetic identity of humans, or using human embryos. In the absence of a Supreme Court ruling on the matter, the IPO took a conservative stance.
The patentability of inventions pertaining to animals may be assessed in view of the patentability exclusion of “animal breeds or essentially biological process for the production of animals”. If an invention is not an animal breed or essentially not a biological process, then there should be no reason for withholding patent protection.
Additionally, there is no strong argument against adopting the position of the Technical Board of Appeals of the European Patent Office (EPO) in the public order or morality issue of inventions such as the ‘oncomouse’.
Prior art and equivalents
Expounding on the definition of prior art under the IP Code, the revised IRR expressly provides that information is deemed available to the public when it is not confidential or restricted to the use by a selective group. In addition, prior use and oral disclosure have to be proven with substantial evidence.
The revised IRR also expressly provides that equivalents are to be considered only in assessing inventive step, and not novelty.
It is now required that an enabling disclosure must contain sufficient and clear working examples of the technical features of the invention, including the manner or process of making, performing and using it
This follows from the IP Code requirement that the application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. However, the example need not be the best mode of carrying out the invention, as required in the US.
In the case of chemical and pharmaceutical inventions, the disclosure must include one or more representative embodiments or working examples, and all compounds must include their claimed activity. For pharmaceuticals, there must be a description of the result of the pharmacological test.
Considering that compounds are commonly disclosed in a generic formulation, i.e. the ‘Markush grouping’, where these compounds have a common basic structure and the variable substituents have a common property or activity, the requirement to include the claimed activity of each of the compounds is unnecessary.
The revised IRR will take effect 15 days after the IPO files three certified copies of the revised rules and regulations with the University of the Philippines Law Center.