Patentable vs. Non-Patentable Inventions in Philippine Intellectual Property Law

In the Philippines, patent laws are governed by Republic Act No. 8293, known as the Intellectual Property Code of the Philippines (IP Code). The IP Code outlines the criteria for patentability, specifies what types of inventions are patentable, and lists exclusions from patent protection. It is crucial for legal practitioners to understand these distinctions to provide accurate legal advice, file patent applications properly, and defend intellectual property rights effectively.

1. Patentability Criteria under the IP Code

According to Section 21 of the IP Code, an invention must satisfy the following requirements to be patentable:

Novelty: The invention must be new, meaning it has not been disclosed to the public anywhere in the world prior to the filing date or priority date.
Inventive Step: The invention must not be obvious to a person skilled in the relevant field of technology, based on prior art.
Industrial Applicability: The invention must be capable of being used in any industry.

If an invention meets these criteria, it can be considered patentable unless it falls within the list of non-patentable inventions.

2. Patentable Subject Matter

A patentable invention is defined in Section 21 of the IP Code as a “technical solution of a problem in any field of human activity which is new, involves an inventive step, and is industrially applicable.” Patentable subject matter includes:

Products: Machines, devices, compositions of matter, and manufactured items that are new and useful.
Processes: Methods or procedures that lead to a practical application of a concept or a new technical result.
Improvements of Existing Products or Processes: Innovations or advancements to existing patented items or methods that add substantial novelty, inventive steps, and industrial utility.

3. Non-Patentable Inventions (Section 22)

Despite meeting the criteria of novelty, inventive step, and industrial applicability, certain inventions are explicitly excluded from patent protection under Section 22 of the IP Code. Non-patentable inventions include:

Discoveries, Scientific Theories, and Mathematical Methods: Scientific principles, abstract theories, and mathematical methods do not constitute technical solutions and are therefore non-patentable.
Schemes, Rules, and Methods for Performing Mental Acts, Playing Games, or Doing Business, and Programs for Computers: These types of concepts do not provide a technical solution and are thus not patentable. However, computer-implemented inventions that present a new technical effect or process may be patentable, depending on the details of the invention.
Methods for Treatment of the Human or Animal Body: This includes diagnostic, therapeutic, and surgical methods, as these are not considered industrially applicable. However, medical devices or products used in these methods may still be patentable.
Plant Varieties and Animal Breeds or Essentially Biological Processes for the Production of Plants and Animals: This exclusion reflects the distinction between inventions and discoveries in biological sciences. Although plant varieties and animal breeds are non-patentable, inventions related to genetically modified organisms or biological techniques may qualify for patent protection.
Aesthetic Creations: These include works of art, designs, and other forms of creative expressions that serve an ornamental purpose. They are protected under copyright or design laws but do not meet the requirements of patent law.

4. Special Cases and Judicial Interpretations

Over the years, certain cases have helped clarify the distinction between patentable and non-patentable inventions in the Philippines:

Computer Programs and Software-Related Inventions: While programs “as such” are non-patentable, if a computer program is tied to a technical process or results in a technical effect (such as improving computer performance or data processing), it may be patentable. Philippine jurisprudence on this remains limited, but global trends influence local interpretations.
Biotechnology and Genetic Inventions: With advances in biotechnology, there has been significant interest in patenting genetically modified organisms (GMOs) and methods in genetic engineering. While plants, animals, and biological processes are non-patentable, inventions derived from biotechnology that yield a new technical result or industrial application may be considered patentable under Philippine law.

5. Implications and Practical Application of Patentability Rules

Legal practitioners must ensure that inventions fulfill both the formal requirements of patentability and do not fall within the non-patentable categories. Here are essential points to consider:

Patent Drafting and Claiming: Patent claims should be carefully drafted to focus on the technical aspects of the invention. If an invention relates to software or a medical method, claims should emphasize the technical solution or apparatus used, rather than the non-patentable process.
Clear Distinction of Product vs. Process Claims: For inventions involving non-patentable subject matter, separating product claims (patentable) from method claims (non-patentable) can improve the likelihood of obtaining a patent. For example, a drug used for treatment may be patentable, even though the method of treatment itself is not.
Research and Development Documentation: Maintaining robust documentation during the R&D phase is crucial for establishing the novelty and inventive step, especially in cases involving complex technologies such as AI and biotechnology, where boundaries between patentable and non-patentable inventions can blur.

6. Conclusion and Practical Advice

In conclusion, Philippine patent law provides clear criteria for patentable inventions but also includes significant exclusions for inventions that do not provide a technical solution, lack industrial applicability, or involve areas of scientific discovery or biological processes. For practitioners, understanding the boundaries between patentable and non-patentable inventions is essential. Emphasis should be placed on:

Ensuring the invention meets all criteria for patentability.
Drafting claims that focus on the technical aspects of the invention.
Staying informed on global trends and jurisprudence that may affect local interpretations, especially in technology-driven fields.

By following these guidelines, inventors and legal professionals can navigate the complexities of patent law in the Philippines effectively.