What does a Patent Examiner do?

A patent examiner assesses, evaluates, and examines the patentability of an application. Patent examiner performs a quasi-judicial function by evaluating and deciding the patentability of inventions. The examiner issues appropriate objections and reasoned rejections based on legal bases such as the MPEP, Revised IRR, and RA 8293.The examiner checks whether the application complies with all legal and formal requirements (formality examination) and determines whether the invention is new, inventive, and industrially applicable (substantive examination). During examination process, patent examiner must reads and understands the invention set forth from the specification. Patent examiner also determine the scope of the claim, and must understand and assess the patentability of the claim, conduct prior art searches. Moreover, it writes an office action which identifies and analyzes all issues in the application, responds completely to applicant’s reply, issues notice of allowance or notice of withdrawn application. Lastly, it ensures that all procedural steps necessary for obtaining a patent are complied.

What does it mean to have a quasi-judicial function?

Mock Exam and preparation for revalida Quasi-judicial function is the authority of non-judicial individuals to make decisions based on evidence and legal principles. In other words, it means the power to decide like a judge, even if the person is not a judge. In IPO, a patent examiner performs a quasi-judicial function by evaluating and deciding the patentability of inventions. They make an appropriate objection and make reasonable rejections based on legal bases such as the MPEP, Revised IRR, and RA 8293. Quasi-judicial function is the authority of non-judicial individuals to make decisions based on evidence and legal principles. In other words, it means the power to decide like a judge, even if the person is not a judge. In IPO, a patent examiner performs a quasi-judicial function by evaluating and deciding the patentability of inventions. They make an appropriate objection and make reasonable rejections based on legal bases such as the MPEP, Revised IRR, and RA 8293. Turn on screen reader support To enable screen reader support, press Ctrl+Alt+Z To learn about keyboard shortcuts, press Ctrl+slash

As an examiner, what should you consider in analyzing a patent application assigned to you?

As an examiner, the first aspect I will analyze is the claim, since it defines the scope of protection that the applicant seeks. I will assess whether the claim demonstrates unity of invention, is clear and concise, and is properly supported by the description. After reviewing the claim, I must examine the clarity and completeness of the description, ensuring that the invention is disclosed in sufficient detail so that a person skilled in the art can understand and reproduce it. It is essential to confirm that the application fully discloses the invention and that the claims are consistent with this disclosure. Finally, I will determine whether the invention meets the three substantive requirements of patentability: novelty, inventive step or non‑obviousness , and industrial applicability

What is the rationale of the Patent System?

The rationale of the patent system is to encourage innovation by giving inventors temporary exclusive rights that last for 20 years, in exchange for the full disclosure of their inventions to the public, thereby promoting technological progress and benefits society.

What is the purpose of the TRIPS Agreement?

The TRIPS or the Trade-Related Aspects of Intellectual Property Rights Agreement is a WTO agreement that sets minimum rules for how countries should protect and enforce intellectual property rights. Its goal is to make IP protection fair and consistent worldwide. TRIPS gives patent owners the right to stop others from making, using, selling, or importing their inventions without permission. However, it also protects the public interest, especially public health. Therefore, countries may allow compulsory licenses or import medicines during health emergencies. The agreement covers different types of intellectual property, such as patents, copyrights, trademarks, industrial designs, and trade secrets, and aims to balance the rights of creators with the public’s need for access to knowledge and technology.

Discuss briefly the Doha Declaration on the TRIPS Agreement and Public Health.

The Doha Declaration on the TRIPS Agreement and Public Health explains that patent rules should not prevent countries from protecting and prioritizing public health. It makes clear that governments are allowed to take steps, such as issuing compulsory licenses or importing cheaper medicines from other countries, to make medicines more affordable, especially during serious health problems like HIV/AIDS, tuberculosis, and malaria. In simple terms, the declaration says that saving lives and protecting public health is more important than strictly enforcing patent rights.

Give 3 differences between R.A. 165 and R.A. 8293.

Coverage of Intellectual Property R.A. 165 (Philippine Patent Law) focused mainly on patents, utility model, and industrial designs. R.A. 8293 (IP Code of the Philippines) covers patents, trademarks, copyrights, industrial designs, utility models, layout-design (topographies) of integrated circuits, and trade secrets. Government Agency/Office R.A. 165 was administered by the Bureau of Patents, Trademarks, and Technology Transfer (BPTTT) R.A. 8293 created the Intellectual Property Office of the Philippines (IPOPHL) the predecessor of BPTTT Term of Protection R.A. 165 - the term of protection for patents was 17 years from the date of grant. R.A. 8293 - the term of protection for patents is 20 years from the filing date, in line with the TRIPS Agreement. Reinstatement of Rights R.A 165 - the law is more lenient and it allowed the recovery of lost patent right under certain condition. RA 8293 - it is more strict and it does not allow reinstatement of rights FIling RA 165 - First-to-invent RA 8293 - First-to-file

What is a patent infringement?

Patent infringement happens when someone makes, uses, sells, offers to sell, or imports a product or process that is covered by another person’s valid patent without permission from the patent holder. In other words, it is the unauthorized exploitation of a patented invention.

Prior art is everything that is made available to the public anywhere in the world by means of written or oral disclosure, by use, or any other means, before the date of filing or the priority date of the application.

Describe a person skilled in the art.

A person skilled in the art is a person who is a skilled practitioner in a relevant technical field.

What are the three main criteria in assessing a patent application? Define each criterion and provide a legal basis.

The three main criteria in assessing a patent applications are novelty, inventiveness and industrially applicable. 1. Novelty - under Section 23 of RA 8293 or the IP Code of the Philippines, invention must be new and novel. It shall not be considered new if it forms part of a prior art. 2. Inventiveness - Section 26, Republic Act No. 8293 (Philippine IP Code) stated that 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. 3. Industrially applicable - Section 27, Republic Act No. 8293 (Philippine IP Code), states that an invention that can be produced and used in any industry shall be industrially applicable.

What is the principle of Exhaustion?

Exhaustion, also called first sale doctrine, when the first authorized sale of an IP-protected product, the IP owner cannot prevent the subsequent uses or transfer of that particular item. The IP holder’s right of that particular item is exhausted. In other words, after the first authorized sale, the IP holder can no longer dictate how that product is used, resold, or imported.

Define the kinds of exhaustion

National Exhaustion – IP rights are exhausted only within the country where the product was first sold legally. The IP right’s holder may still restrict or block the importation of the same product from other countries. Regional Exhaustion – IP rights are exhausted within a group of countries that share a common market or legal framework, such as the European Union. Once a product is sold in one member state, it can be freely resold or imported into other member states within the region. However, the IP holder can still restrict imports from outside the region. International Exhaustion – IP rights are exhausted worldwide after the first authorized sale, regardless of where it occurs. This means the rights holder cannot prevent the resale or importation of the product into other countries once it has been lawfully sold anywhere in the world.

Explain the principle of “territoriality” in the context of intellectual property.

The principle of territoriality means that IP rights are created, recognized, acknowledged and enforced only within the country that grants them. Each country has different IP laws, and protection. They created their Intellectual Property system according to their cultural values, economic priority and local policy goals. Moreover, the intellectual property protection that is granted in one country does not necessarily mean that it will be granted in another.

What does National Treatment mean and why is it important?

National Treatment means treating foreign applicants the same way as local or domestic to prevent discrimination to other nationals. Therefore, it is about fairness between foreign and local applicants. It is important because it prevents countries from discrimination against foreign applicants, it promotes sharing knowledge without fear of discrimination.

Differentiate National Treatment and Most Favored Nation Treatment.

National Treatment means treating foreign applicants the same way as local or domestic to prevent discrimination to other nationals. Therefore, it is about fairness between foreign and local applicants. Most Favored Nation (MFN) Treatment means any advantage or favor given to a member state shall be accorded to all other Member states.

What is IPRA and what are the four rights under it?

The Indigenous Peoples’ Right Act (IPRA) or Republic Act No. 8371, recognizes, protects, and promotes the rights of Indigenous Cultural Communities/ Indigenous Peoples (ICC/IPs) The law recognizes four rights of ICC/IPs: 1. Right to Ancestral Domain and Lands - The law recognize that indigenous people have the right to ownership and control over ancestral territories. This includes the right to manage natural resources, develop land, and benefit from its use. 2. Right to Self Governance and Empowerment - Recognition of indigenous political, customary laws, and justice systems. 3. Social Justice and Human Rights - Law acknowledge that IPs still have basic human rights, such as right to education, health and employment. And IPs should be protected against discrimination and exploitation. 4. Right to Cultural Integrity - Preservation and promotion of their culture, traditions and beliefs. Protection also for their cultural heritage, traditional knowledge and practices.

What is FPIC and why is it important?

FPIC is an acronym for Free, Prior and Informed Consent. FPIC is the right of indigenous peoples to decide whether or not to allow projects or activities on their ancestral lands. It means their consent must be given freely without pressure. FPIC is important because it protects indigenous communities from exploitation, ensures respect for their culture and traditions, and protects their environment.

Define traditional knowledge based on the IRR of R.A. 10055.

Traditional Knowledge refers to knowledge, wisdom, ideas, practices, skills, and innovations developed and passed down by indigenous peoples and local communities. This includes knowledge about medicinal plants, medicinal techniques, agricultural techniques, cultural expressions, and ecological management. Traditional Knowledge is intangible.

What is the difference between Traditional Knowledge and Genetic Resource?

Traditional Knowledge refers to knowledge, wisdom, ideas, practices, skills, and innovations developed and passed down by indigenous peoples and local communities. This includes knowledge about medicinal plants, medicinal techniques, agricultural techniques, cultural expressions, and ecological management. Traditional Knowledge is intangible. Genetic Resources, on the other hand, are the actual biological materials that contain genetic information, such as plants, animals, seeds, microorganisms, or their parts. These resources are tangible and can be used in research, breeding, biotechnology, and medicine. In short, Traditional Knowledge is the wisdom and practices about how to use resources, while Genetic Resources are the physical materials themselves.

As an examiner, what should you look out for in a patent application when it is based on Genetic Resource (GR) or Traditional Knowledge (TK)?

When a patent application is based on Genetic Resources (GR) or Traditional Knowledge (TK), an examiner should check where the IKSP came from (its source or geographical origin). The examiner also check the discloser of IKSP and the application must also show proof that the indigenous community gave their free and prior informed consent (FPIC) to use their knowledge.

Which types of IP rights would you consider if you wanted to protect your new topical cream product for eczema? It is a novel composition with significant advantage over available products in the market and is packaged in a uniquely shaped bottle? (Identify the IP Rights with the correct reasons).

For my new topical cream product for eczema, I would consider three types of intellectual property rights; patent, industrial design, and trademark. By definition, a patent is an intellectual property right that safeguards or protects inventions, which can be a product or process, provided it is new, inventive, and industrially applicable. In this case, I could apply for patent protection for both the cream’s composition or the product itself and the process or method of its preparation. Moreover, the aforementioned product meets the criteria for patentability; it is novel, as described in the question; it is inventive, because it states that the product has a significant advantage over the available products in the market; and it is industrially applicable, as it is used to cure eczema. In addition, because the cream is packed in a uniquely shaped bottle, I would also seek industrial design protection. By definition of industrial design, it protects the ornamental and aesthetic appearance of an article. By registering the unique and distinctive shape of the packaging, I can prevent others, especially competitors from imitating it and ensure that the product’s packaging and visual identity remains exclusive. And lastly, I would also pursue a trademark protection. Defining trademark, it is a sign or visual element that is capable of distinguishing a product or service from others. The shape of the bottle packaging could function as a trademark, serving as a distinguishing element of the product’s identity in the market.

what is the full title of RA 8293 or the IP Code

AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE AND ESTABLISHING THE INTELLECTUAL PROPERTY OFFICE, PROVIDING FOR ITS POWERS AND FUNCTIONS, AND FOR OTHER PURPOSES

When was RA 8293 signed into law? and who was the president at that time? Who was the author of it? and when was the law enacted or took effect?

June 6, 1997 Pres. Fidel V. Ramos Senator Raul S. Roco January 1, 1998

Enumerate the IP cycle

Creation Protection Commercialization/ Utilization Enforcement

Give the different types of IP

Patent UM ID Trademarks Copyright GI Layout Design (Topographies) of Integrated Cicuit Trade Secrets

it is a sign that is capable of distinguishing the goods and services of one enterprise from those of other enterprises and shall include a stamped or marked container of goods the certificate of registration shall remain in force for 10 years, provided declaration of actual use is filed within 1 year from the 5th anniversary of the date of registration

Copyright and Related rights

describe the rights that creators have over their literary and artistics works the rights of an author shall last during his lifetime and 50 years after his death (Sec 213 of IP Code)

Geographic Indication

any indication which identifies a good as originating in a territory, region and locality, where a given quality, reputarion or other characteristics of the goods is essentially attributed to its geographic origin and/or human factor the registered geographic indication is protected for unlimited term until or unless revoked with finality

Layout-Design of Integrated Circuit

Layout-design is synonymous with topography and means the three dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnection of an integrated circuit registration of a layout-design shall be valid for a period of 10 years without renewal

are IP rights on confidention information which may be sold or licensed. The information must be - commercially valuable because it is a secret - be known only to a limited group of individual - be subject to a reasonable steps taken by the rightful holder of the information to keep it a secret

What is the purpose of patent examination?

Ensure that the application and the invention to which it relates, meet the requirements set out in the relevant Sections of the IP Code and in the IRR so that the patent can be granted

Patent examination requires?

uniqure combination of - scientific expertise - analytical thinking - language skills - interest in IP law

What is patent examiner

Patent examiner is an employee, usually a civil servant with a scientific and engineering background, working in a patent office deal with the latest and most challenging technical innovations and they get to see the latest developments in technology.

why patent examiner a civil servant, not a private employee?

Because 1. A patent is not a private contract—it is a state-granted monopoly. Only the government has the power to confer this right, and examiners act as its official agents. 2. their decision affects the public interest 3. their role is regulatory not commercial

Roles of a patent examiner

Judge on patentability Advocate/protector of public interest with respect to IP

Module 1-4

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World Languages

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1st Grade

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Ruth Canchela

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44 questions

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FLASHCARD QUESTION

Front

An applicant wants to protect the shape of their tumbler but is unsure about the appropriate type of protection to apply for. As a patent expert, what form of intellectual property protection would you recommend? Explain your answer.

Back

Industrial Design is the appropriate intellectual property protection to be pursued. Since the applicant wants to protect the shape of their tumbler, and by definition of ID protection it protects the aesthetic features and ornamental of the article such as shapes, colors, configuration, constitutes and patterns.

FLASHCARD QUESTION

Front

What is (are) Trade Secrets?

Back

Trade secrets refers to the confidential business information that has a commercial value and competitve advantage. The company must take a reasonable measures or step in order for this trade secrets to remain confidential.

FLASHCARD QUESTION

Front

What is IP and why is it important?

Back

Intellectual property (IP) refers to creations of the mind, such as inventions, songs, poems, artistic works, logos, designs, and other creative expressions. IP is important because it protects these creations, allowing creators to gain recognition and earn commercial or financial benefits from their work.

FLASHCARD QUESTION

Front

Give three different types of IP and differentiate them.

Back

alam na yan

FLASHCARD QUESTION

Front

What is a patent?

Back

A patent is an intellectual property that protects an invention, which may be a product, process, or an application of a product, provided it must be new, inventive, and industrially applicable. It grants the inventor the exclusive right to use, control, or temporarily monopolize the invention for a term of 20 years from the filing date, in exchange of the full disclosure of the invention to the public (QUID PRO QUO principle.)

FLASHCARD QUESTION

Front

Which types of IP rights would you consider if you wanted to protect your new machine that converts the kinetic energy of water into useful electrical energy?

Back

The primary intellectual property protection I would seek for my invention is a patent or a utility model. A patent is an intellectual property right that safeguards inventions, whether products or processes, provided they are new, inventive, and industrially applicable. In this case, I could apply for patent protection both for the machine itself and for the process it uses to convert the kinetic energy of water into electrical energy. If the invention does not fully meet the requirements for patentability, I would instead pursue a utility model, which protects technical innovations that may involve only minor improvements and do not meet the full inventive step required and demanded for a patent.

FLASHCARD QUESTION

Front

Describe the following: (1) Invention (2) Utility Model (3) Industrial Design. What is the difference between Patent and Utility Model

Back

1) Invention is any process or product that is a technical solution to a technical problem. It must be new, inventive, and indutrially applicable. The term of protection of patent is 20 years from the filing date.

2) Utility model - is also referred as "petty patent." It protects technical inventions that is new and industrially applicable. It doesn't required higher level of inventiveness that is required to the patent. The term of protection for the utility model is 7 years from the filing date without possible of renewal.

3) Industrial Design - it protects the ornamental and aesthetic features of the article such as shapes, colors, configuration, constitutes and patterns which appeals to our sense of signt not the technical funtions. The term of protection of industrial design is 5 years from the filing date and it may be renew not more than 2 consecutive periods of 5 years each.

The main difference between a patent and a utility model lies in the level of inventiveness and the scope of protection. A patent requires a higher inventive step and may protect both products and processes, and a substantive examination must be conducted during the examination process. A utility model, on the other hand, protects minor improvements to products only, and it doesn't required higher level of inventiveness that is demanded to a patent, therefore it does not require substantive examination.

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