Patent; Non-Patentable Inventions (2006)

Supposing 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? (5%)
SUGGESTED ANSWER:
Yes, the IPO is correct because under the Intellectual Property Code, discoveries, scientific theories and mathematical
methods, are classified to be as "non-patentable inventions." Eintein's theory of relativity falls within the category of
being a non-patentable "scientific theory."
Patents: Gas-Saving Device: first to file rule (2005)
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. Eighteen months later, Cezar filed his application for the registration of his device with the
Bureau of Patents.
1) Is the gas-saving device patentable? Explain.
SUGGESTED ANSWER:
Yes, the gas-saving device is patentable because it provides a technical solution to a problem in a field of human
activity. It is new and involves an inventive step, and certainly industrially applicable. It therefore fulfills the requisites
mandated by the intellectual Property Code for what is patentable.
2) Assuming that it is patentable, who is entitled to the patent? What, if any, is the remedy of the losing party?
SUGGESTED ANSWER:
Cezar is entitled to the patent because he was the real inventor. Francis, copying from the work of Cezar, cannot claim
the essential criteria of an inventor, who must possess essential elements of novelty, originality and precedence to be
entitled to protection. Nevertheless, under the "first to file rule," Francis application would have to be given priority.
Cezar, however, has within three months from the decision, to have it cancelled as the rightful inventor; or within one
year from publication, to file an action to prove his priority to the invention, which has been taken from him and
fraudulently registered by Francis.
3) 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.
SUGGESTED ANSWER:
No, Joab's claim cannot prevail over those of his employees. In the first place, Joab did not commission any of the two
employees to invent the device, and its invention did not fall within their regular duties. What prevails is the provision
of the Intellectual Property Code that holds that the invention belongs to the employee, if the inventive activity is not a
part of his regular duties, even if he uses the time, facilities and materials of the employer
Patents; Infringement (1992)
In an action for infringement of patent, the alleged infringer defended himself by stating 1) that the patent issued by
the Patent Office was not really an invention which was patentable; 2) that he had no intent to infringe so that there
was no actionable case for infringement; and 3) that there was no exact duplication of the patentees existing patent
but only a minor improvement. With those defenses, would you exempt the alleged violator from liability? Why?
SUGGESTED ANSWER:
I would not exempt the alleged violator from liability for the following reasons: 1) A patent once issued by the
Patent Office raises a presumption that the article is patentable; it can, however be shown otherwise (Sec 45 RA 165).
A mere statement or allegation is not enough to destroy that presumption. (Aquas v de Leon 30 Jan 82 L32160)
2) An intention to infringe is not necessary nor an element in a case for infringement of a patent.
3) There is no need of exact duplication of the patentees existing patent such as when the improvement made by
another is merely minor (Frank v Benito, 51p713). To be independently patentable, an improvement of an existing
patented invention must be a major improvement (Aquas v de Leon L-32160 30Jan82)
Patents; Rights over the Invention (1990)
Cheche invented a device that can convert rainwater into automobile fuel. She asked Macon, a lawyer, to assist in
getting her invention patented. Macon suggested that they form a corporation with other friends and have the
corporation apply for the patent, 80% of the shares of stock thereof to be subscribed by Cheche and 5% by Macon. The
corporation was formed and the patent application was filed. However, Cheche died 3 months later of a heart attack.
Franco, the estranged husband of Cheche, contested the application of the corporation and filed his own patent
application as the sole surviving heir of Cheche. Decide the issue with reasons.
SUGGESTED ANSWER:
The estranged husband of Checke cannot successfully contest the application. The right over inventions accrue from
the moment of creation and as a right it can lawfully be assigned. Once the title thereto is vested in the transferee, the
latter has the right to apply for its registration. The estranged husband of Cheche, if not disqualified to inherit, merely
would succeed to the interest of Cheche.
Note: An examinee who answers on the basis of the issue of validity of the transfer of patent as a valid consideration
for subscription of the shares of stocks should be given due credit.
Patent: Non-Patentable; Method ofDiagnosis & Treatment (2010)
No.XIX. Dr. Nobel discovered a new method of treating Alzheimers involving a special method of diagnosing the
disease, treating it with a new medicine that has been discovered after long experimentation and field testing, and
novel mental isometric exercises. He comes to you for advice on how he can have his discoveries protected. Can he
legally protect his new method of diagnosis, the new medicine, and the new method of treatment? If no, why? If yes,
how? (4%)
SUGGESTED ANSWER:

Dr. Nobel can be protected by a patent for the new medicine as it falls within the scope of Sec. 21 of the Intellectual
Property Code (Rep. Act No. 8293, as amended). But no protection can be legally extended to him for the method of
diagnosis and method of treatment which are expressly non-patentable (Sec.22, Intellectual Property Code).