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%)
Suggested answer only. Not an official answer and not legal advice.
(a) No, Yosha's invention remains patentable. (b) No, Yosha cannot prevent possessors of earlier models from using them. Under Section 25 of the Intellectual Property Code (IP Code), disclosure made by the inventor within twelve months
Unlock the full Commercial and Tax Law answers365 days of full access. GCash, Maya and card accepted.
This is not an official scoring system and carries no weight with the Supreme Court or any bar review provider. It measures how much of the suggested answer's wording your response covers, not whether your reasoning is correct. For practice only.
Quick check
Under Section 25 of the Intellectual Property Code, within what period prior to filing may an inventor disclose his invention without destroying its novelty?
Disclosures made by the inventor within twelve months prior to filing are non-prejudicial and do not destroy novelty.
What is the legal effect of the Doctrine of Patent Exhaustion under Section 72.1 of the IP Code?
Patent exhaustion prevents the owner from enjoining the use or resale of specific units lawfully placed on the market.
Why is Yosha's invention still patentable despite selling several models prior to filing his application?
Disclosures made by the inventor within twelve months preceding filing are non-prejudicial under Section 25.
Can Yosha prevent possessors of the earlier models he sold from using them after obtaining his patent?
Choices available with full access.
Which primary statute governs patentability, non-prejudicial disclosure, and patent exhaustion in the Philippines?
Choices available with full access.
Learn more about these topics
1. Non-Prejudicial Disclosure
Under Section 25 of the Intellectual Property Code of the Philippines (Republic Act Number 8293), a disclosure of information contained in a patent application shall not prejudice the applicant on the ground of lack of novelty if such disclosure was made within twelve months preceding the filing date of the application, provided it was made by the inventor himself. Commercial sales or public disclosures made by the inventor during this statutory twelve-month grace period do not destroy the novelty of the invention, thereby allowing the inventor to validly seek patent protection with the Intellectual Property Office.
2. Patent Rights Exhaustion
Under Section 72.1 of the Intellectual Property Code, patent rights shall not extend to acts in relation to goods which have been put on the market in the Philippines by the owner of the product, or with his express consent. Known as the Doctrine of Patent Exhaustion or First Sale Doctrine, once a patented article is lawfully sold or disposed of by the patent owner, the owner's exclusive rights over that specific article are exhausted. Consequently, the patentee cannot subsequently prevent or enjoin purchasers or subsequent possessors from using, selling, or enjoying those specific units.
3. Patent Novelty Requirement
Under Section 23 of Republic Act Number 8293, an invention shall be considered new if it does not form part of the prior art. Prior art consists 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. While public use or sale generally places an invention in the public domain as prior art, Section 25 creates a specific statutory exception for disclosures made directly by the inventor within the twelve-month non-prejudicial disclosure window.