patent law - atty. medrano - neil notes

1 Jesse Neil Cruz Eustaquio; Atty. Lolibeth Medrano; Notes for Patent Law 2014; Ateneo Law Jesse Neil Cruz Eustaquio; Atty. Lolibeth Medrano; Notes for Patent Law 2014; Ateneo Law

Course Syllabus PATENT LAW, INDUSTRIAL DESIGN AND PLANT VARIETY PROTECTION

Attys. Ferdinand M. Negre, Lolibeth R. Medrano & Ignacio S. Sapalo

Reference: Robert Patrick Merges and John Fitzgerald Duffy, PATENT LAW AND POLICY: CASES AND MATERIALS (Fifth Edition 2011) Nov 15 I. Introduction

A. Framework and General Principles of Intellectual Property System B. History of the Patent System

Reading: Chapter 1 : Introduction, Patent Law and Policy: Cases and Materials , pp. 1-13, Robert

Merges & John F. Duffy, 5th edition (2011) See hard copy.

C. History and Development of the Philippine Patent System D. Sources of Patent Law

1. 1987 Philippine Constitution Article XII, Secs. 6, 14

Section 6. The use of property bears a social function, and all economic agents shall contribute to the common good. Individuals and private groups, including corporations, cooperatives, and similar collective organizations, shall have the right to own, establish, and operate economic enterprises, subject to the duty of the State to promote distributive justice and to intervene when the common good so demands. Section 14. The sustained development of a reservoir of national talents consisting of Filipino scientists, entrepreneurs, professionals, managers, high-level technical manpower and skilled workers and craftsmen in all fields shall be promoted by the State. The State shall encourage appropriate technology and regulate its transfer for the national benefit. The practice of all professions in the Philippines shall be limited to Filipino citizens, save in cases prescribed by law.

Article XIV, Secs. 10 - 18 SCIENCE AND TECHNOLOGY Section 10. Science and technology are essential for national development and progress. The State shall give priority to research and development, invention, innovation, and their utilization; and to science and technology education, training, and services. It shall support indigenous, appropriate, and self-reliant scientific and technological capabilities, and their application to the country's productive systems and national life. Section 11. The Congress may provide for incentives, including tax deductions, to encourage private participation in programs of basic and applied scientific research. Scholarships, grants-in-aid, or other


forms of incentives shall be provided to deserving science students, researchers, scientists, inventors, technologists, and specially gifted citizens. Section 12. The State shall regulate the transfer and promote the adaptation of technology from all sources for the national benefit. It shall encourage the widest participation of private groups, local governments, and community-based organizations in the generation and utilization of science and technology. Section 13. The State shall protect and secure the exclusive rights of scientists, inventors, artists, and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such period as may be provided by law. ARTS AND CULTURE Section 14. The State shall foster the preservation, enrichment, and dynamic evolution of a Filipino national culture based on the principle of unity in diversity in a climate of free artistic and intellectual expression. Section 15. Arts and letters shall enjoy the patronage of the State. The State shall conserve, promote, and popularize the nation's historical and cultural heritage and resources, as well as artistic creations. Section 16. All the country's artistic and historic wealth constitutes the cultural treasure of the nation and shall be under the protection of the State which may regulate its disposition. Section 17. The State shall recognize, respect, and protect the rights of indigenous cultural communities to preserve and develop their cultures, traditions, and institutions. It shall consider these rights in the formulation of national plans and policies. Section 18. The State shall ensure equal access to cultural opportunities through the educational system, public or private cultural entities, scholarships, grants and other incentives, and community cultural centers, and other public venues. The State shall encourage and support researches and studies on the arts and culture.

2. International Agreements Agreement on Trade-Related Aspects of the Intellectual Property Rights (TRIPS Agreement)

Reading: Introduction to the TRIPS Agreement, pp. 8 14, 16-18, A Handbook on the WTO TRIPS

Agreement, Antony Taubman, Hannu Wager and Jayashree Watal (2012) See hard copy.

Paris Convention for the Protection of Industrial Property

[relate this to the principle of reciprocity.] [3 options for fiing patent application (1) (2) right to priority this is the contribution of the Paris Convention


(3) ]

Patent Cooperation Treaty [Provides a unified procedure for filing patent applications to protect invenstions in each of its contracting states.]

International Conventions and Reciprocity (Section 3, Republic Act No. 8293, IP Code of the Philippines

Section 3. International Conventions and Reciprocity. - Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act. (n)

Reverse Reciprocity of Foreign Laws (Section 231, IP Code) Section 231. Reverse Reciprocity of Foreign Laws. - Any condition, restriction, limitation, diminution, requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine national seeking protection of intellectual property rights in that country, shall reciprocally be enforceable upon nationals of said country, within Philippine jurisdiction. (n) elements reciprocity reverse reciprocity framework convention treaty or law of fc foreign law parties ph and fc ph and fc actions of a foreign country extends reciprocal rights condition restriction, limitation,

diminution, requirement, penalty to ph nationals

ph actions extends benefits the give effect treaty and convention extends rights under ip code

can impose condition restriction, limitation, diminution, requirement, penalty to foreign nationals

objects national, domiciliary, industrial establishment of a fc

ph (fc) and foreign nationtals (in ph)

2. Laws a. Civil Code of the Philippines Arts. 712, 521

BOOK III: DIFFERENT MODES OF ACQUIRING OWNERSHIP Preliminary Provision Article 712. Ownership is acquired by occupation and by intellectual creation. Ownership and other real rights over property are acquired and transmitted by law, by donation, by testate and intestate succession, and in consequence of certain contracts, by tradition.


They may also be acquired by means of prescription. (609a) TITLE IV: SOME SPECIAL PROPERTIES CHAPTER 3: Trade-marks and Trade-names Article 520. A trade-mark or trade-name duly registered in the proper government bureau or office is owned by and pertains to the person, corporation, or firm registering the same, subject to the provisions of special laws. (n) Article 521. The goodwill of a business is property, and may be transferred together with the right to use the name under which the business is conducted. (n) Article 522. Trade-marks and trade-names are governed by special laws. (n)

b. Republic Act 8293 - Intellectual Property Code (IPC) of the Philippines c. Republic Act 9150 - Protection of Lay-Out Designs of Integrated Circuits Act

Section 1, Sections 112, 113, 114, 116, 117, 118, 119 and 120 under Chapter XIIl of R.A. No. 8293 are hereby amended to read as follows: "CHAPTER XIII "INDUSTRIAL DESIGN AND LAYOUT DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS "SEC. 112. Definition of Terms:"

"1. An Industrial Design is any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors: Provided, That such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft; "2. Integrated Circuit means a product, in its final form, or an intermediate form, in which the elements, at least one of which is an active element and some or all of the interconnections are integrally formed in and/or on a piece of material, and which is intended to perform an electronic function; and "3. 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 interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture."

d. Republic Act 9168 - Philippine Plant Variety Protection Act

TITLE III: Conditions for the Grant of the Plant Variety Protection Section 4. The Certificate of Plant Variety Protection shall be granted for varieties that are: a) New; b) Distinct; c) Uniform; and d) Stable. Section 5. Newness. - A variety shall be deemed new if the propagating or harvested material of the variety has not been sold, offered for sale or otherwise disposed of to others, by or with the consent of the breeder, for purposes of exploitation of the variety;


a) In the Philippines for more than one (1) year before the date of filing of an application for plant variety protection; or b) In other countries or territories in which the application has been filed, for more than four (4) years or, in the case of vines or tress, more than six (6) years before the date of filing of an application for Plant Variety Protection.

However, the requirement of novelty provided for in this Act shall not apply to varieties sold, offered for sale or disposed of to others for a period of five (5) years before the approval of this Act. Provided, That application for PVP shall be filed within one (1) year from the approval of this act. Section 6. Distinctness. - A variety shall be deemed distinct if it is clearly distinguishable from any commonly known variety. The filing of an application for the granting of a plant variety protection or for the entering of a new variety in an official register of variety in the Philippines or in any country, shall render the said variety a matter of public knowledge from the date of the said application: Provided, That the application leads to the granting of a Certificate of Plant Variety Protection or the entering of the said other variety in the official register of variety as the case may be. Section 7. Uniformity. - The variety shall be deemed uniform if, subject to the variation that may be expected from the particular features of its propagation, it is sufficiently uniform in its relevant characteristics. Section 8. Stability. - The variety shall be deemed stable if its relevant characteristics remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of each such cycle.

e. Republic Act 9502 Cheaper Medicines Act II. Patents

A. General Principles of Patents a. Territoriality - IP rights can be protected only if registered in a jurisdiction b. Exclusivity - IP rights grant the holder the right to exclude others from using (TM),

copying (copyright), making, using, selling (patents) c. Limited Rights - IP rights granted are subject to limitations on account of public policy,

public health patent rights granted are subject to limitations on account of public policy, public health

d. Conditional - IP rights are subject to compliance with conditions/criteria for registration patent is granted only when application complies with the patentability criteria and validity is subject to post-grant conditions

e. Reciprocity - A [foreign] national or a domiciliary who has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to IP rights or the repression of unfair competition, to which the Philippines is a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled under the IP Code.

f. First-to-File - law recognizes the first applicant who filed the application g. Disclosure - patent applications must be published or disclosed; balances inventors

rights to exclusive use and exploitation of his creation, as well as the social function of intellectual property which is to democratize knowledge.

B. Types of Patents 1. Invention (Sec. 21, IPC)

CHAPTER II: PATENTABILITY


Section 21. Patentable Inventions. - Any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable shall be Patentable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing. (Sec. 7, R.A. No. 165a)

2. Utility Model (Section 109.1, IPC) Section 109. Special Provisions Relating to Utility Models. 109.1. (a) An invention qualifies for registration as a utility model if it is new and industrially applicable. (b) Section 21, "Patentable Inventions", shall apply except the reference to inventive step as a condition of protection. 109.2. Sections 43 to 49 shall not apply in the case of applications for registration of a utility model. 109.3. A utility model registration shall expire, without any possibility of renewal, at the end of the seventh year after the date of the filing of the application. 109.4. In proceedings under Sections 61 to 64, the utility model registration shall be canceled on the following grounds: (a) That the claimed invention does not qualify for registration as a utility model and does not meet the requirements of registrability, in particular having regard to Subsection 109.1 and Sections 22, 23, 24 and 27; (b) That the description and he claims do not comply with the prescribed requirements; (c) That any drawing which is necessary for the understanding of the invention has not been furnished; (d) That the owner of the utility model registration is not the inventor or his successor in title. (Secs. 55, 56, and 57, R.A. No. 165a)

3. Industrial Design (Secs. 112, 113, 119.1, IPC) CHAPTER XIII: INDUSTRIAL DESIGN Section 112. Definition of Industrial Design. - An industrial design is any composition of lines or colors or any three-dimensional form, whether or not associated-with lines or colors: Provided, That such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft. (Sec. 55, R.A. No. 165a) Section 113. Substantive Conditions for Protection. 113.1. Only industrial designs that are new or original shall benefit from protection under this Act. 113.2. Industrial designs dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order, health or morals shall not be protected. (n) Section 119. Application of Other Sections and Chapters. - 119.1. The following provisions relating to patents shall apply mutatis mutandis to an industrial design registration: Section 21 - Novelty:

Section 24 - Prior art: Provided, That the disclosure is contained in printed documents or in any tangible form;

Section 25 - Non-prejudicial Disclosure;


Section 27 - Inventions Created Pursuant to a Commission; Section 28 - Right to a Patent; Section 29 - First to File Rule; Section 31

-

Right of Priority: Provided, That the application for industrial design shall be filed within six (6) months from the earliest filing date of the corresponding foreign application;

Section 33 - Appointment of Agent or Representative; Section 51 - Refusal of the Application; Sections 56 to 60 - Surrender, Correction of and Changes in Patent; CHAPTER VII - Remedies of a Person with a Right to Patent; CHAPTER VIII - Rights of Patentees and Infringement of Patents; and CHAPTER XI - Assignment and Transmission of Rights.

4. Lay-Out Designs Republic Act 9150 (Topographies of Integrated Circuits RA 9150

amending RA 8293) "CHAPTER XIII - "INDUSTRIAL DESIGN AND LAYOUT DESIGNS (TOPOGRAPHIES) OF

INTEGRATED CIRCUITS "SEC. 112. Definition of Terms:" "1. An Industrial Design is any composition of lines or colors or any three-dimensional form, whether or

not associated with lines or colors: Provided, That such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft;

"2. Integrated Circuit means a product, in its final form, or an intermediate form, in which the elements,

at least one of which is an active element and some or all of the interconnections are integrally formed in and/or on a piece of material, and which is intended to perform an electronic function; and

"3. 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 interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture."

C. Term of Protection Article 33, TRIPS Agreement (Invention) Article 33: Term of Protection The term of protection available shall not end before the expiration of a period of twenty years counted from the filing date.[8] [8] It is understood that those Members which do not have a system of original grant may provide that the term of protection shall be computed from the filing date in the system of original grant.

Sec. 54, IP Code (Invention)


Section 54. Term of Patent. - The term of a patent shall be twenty (20) years from the filing date of the application. (Sec. 21, R.A. No. 165a)

Section 109.3, IP Code (Utility Model) 109.3. A utility model registration shall expire, without any possibility of renewal, at the end of the seventh year after the date of the filing of the application.

Article 26.3, TRIPS Agreement (Industrial Design) Article 26: Protection 1. The owner of a protected industrial design shall have the right to prevent third parties not having the owners consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes. 2. Members may provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties. 3. The duration of protection available shall amount to at least 10 years.

Section 118, IP Code (Industrial Design) Section 118. The Term of Industrial Design Registration. - 118.1 The registration of an industrial design shall be for a period of five (5) years from the filing date of the application. 118.2. The registration of an industrial design may be renewed for not more than two (2) consecutive periods of five (5) years each, by paying the renewal fee. 118.3. The renewal fee shall be paid within twelve (12) months preceding the expiration of the period of registration. However, a grace period of six (6) months shall be granted for payment of the fees after such expiration, upon payment of a surcharge [Class: Utility Model is not the TRIPS. TRIPS provides a minimum duration of 10 years. The reason why utility models was given seven years, was to give it less protection, to promote invention instead of utility models.] [Compare Invention, Utility Model, and Industrial Design by (1) subject matter {product and process v. product only} (2) novelty (3) inventive step (4) industrial applicability (4) features protected {technical elevement v. aesthetic feature} (5) Term of protection]

Section 118, IP Code (Layout-Design) " 118.5. Registration of a layout-design shall be valid for a period often (10) years, without renewal, and such validity to be counted from the date of commencement of the protection accorded to the layout-design. The protection of a layout-design under this Act shall commence: "a) on the date of the first commercial exploitation, anywhere in the world, of the layout-design by or with the consent of the right holder: Provided, That an application for registration is filed with the Intellectual Property Office within two (2) years from such date of first commercial exploitation; or


"b) on the filing date accorded to the application for the registration of the layout-design if the layout-design has not been previously exploited commercially anywhere in the world." D. IP Code Provisions on Patents 1. Patentable Inventions (Section 21, IPC) CHAPTER II: PATENTABILITY Section 21. Patentable Inventions. - Any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable shall be Patentable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing. (Sec. 7, R.A. No. 165a) 2. Purpose Manzano vs. Court of Appeals, 278 SCRA 688 The primary purpose of the patent system is not the reward of the individual but the advancement of the arts and sciences. The function of a patent is to add to the sum of useful knowledge and one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions. Presumption. The issuance of such patent creates a presumption which yields only to clear and cogent evidence that the patentee was the original and first inventor. The burden of proving want of novelty is on him who avers it and the burden is a heavy one which is met only by clear and satisfactory proof which overcomes every reasonable doubt. Pearl & Dean v. Shoemart, 409 SCRA 231 (2003) The patent system embodies a carefully crafted bargain for encouraging the creation and disclosure of new useful and non-obvious advances in technology and design, in return for the exclusive right to practice the invention for a number of years. The inventor may keep his invention secret and reap its fruits indefinitely. In consideration of its disclosure and the consequent benefit to community, the patent is granted. The patent law has a three-fold purpose: (1) Patent law seeks to foster and reward invention; (2) Promotes disclosures of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires; (3) The stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the free use of the public. There can be no infringement of a patent until a patent has been issued, since whatever right one has to the invention covered by the patent arises alone from the grant of patent. Readings:

Report on the International Patent System, pp. 7 22, WIPO Standing Committee on the Law of Patents 12th Session (2008) available http://www.wipo.int/edocs/mdocs/scp/en/scp_12/scp_12_3.pdf

See hard copy.


The first section will highlight the economic basis of the patent system. Second part contains statistical evidence on use of the international and national patent system. 28. Technology and knowledge are classified by economists as public goods. Public goods are those that are non-rival (they can be used simultaneously by many people) and non-excludable (people cannot be excluded from freely using the public good). Public goods distort the normal cost-benefit dynamics that regulate the efficient production and use of goods in a competitive market, and are prone to under-provision (e.g. public radio) or to over-use (e.g. roads, fishing resources). This is known as market failure. 29. The fundamental role of the patent system from an economists perspective is to address market failure and restore the incentives to invest in production of knowledge Patents provide the owner with an exclusive rights for a limited time period, which would increase his/her incentive to iinovate. However, where the exlusive right allows the firms to establish a monopoly position, it may lead to market distortions. See also http://www.wipo.int/pct/en/faqs/faqs.html on Patent Cooperation Treaty

The Nature and Function of the Patent System, Edmund Kitsch, The Journal of Law and Economics, pp. 265 -291

See Reading Nov. 22 3. Non-Patentable Inventions (Section 22, IPC as amended by Republic Act 9502, Cheaper

Medicines Act) Section 22. Non-Patentable Inventions. - The following shall be excluded from patent protection: 22.1. Discoveries, scientific theories and mathematical methods, and in the case of drugs and medicines,

the mere discovery of a new form or new property of a known substance which does not result in the enhancement of the known efficacy of that substance, or the mere discovery of any new property or new use for a known substance, or the mere use of a known process unless such known process results in a new product that employs at least one new reactant.

For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;

22.2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;

22.3. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. This provision shall not apply to products and composition for use in any of these methods;

22.4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes.


Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis protection of plant varieties and animal breeds and a system of community intellectual rights protection:

22.5. Aesthetic creations; and 22.6. Anything which is contrary to public order or morality. (Sec. 8, R.A. No. 165a) [Class notes: For 22.4 and 22.3 of the IPC is in conformity with Article 27(3)(a-b). Plants and animals is

imbued with public interest, i.e., food security. See R.A. No. 9168. Q: What is a discovery under 22.1? Q: Under 22.1, the ultimate test seems to be efficacy.

Article 27, TRIPS Agreement Article 27: Patentable Subject Matter 1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.[5] Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced. 2. Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law. 3. Members may also exclude from patentability: (a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals; (b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement. [5] For the purposes of this Article, the terms "inventive step" and "capable of industrial application" may be deemed by a Member to be synonymous with the terms "non-obvious" and "useful" respectively. [Class Note: Discrimination under Article 27 of the TRIPS does not refer to Article 3 or 4 of the TRIPS which refer to discrimination as to nationals and nationals of entire States. It is, rather, discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.] Non-patentable Subject Matter A. 27 of TRIPS 21 IP Code (a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals;

yes (3)(a) 22.3

(b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either

yes (3)(b) 22.4


by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement. necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.

yes; (2) 22.6

Discoveries, scientific theories and mathematical methods, and in the case of drugs and medicines, the mere discovery of a new form or new property of a known substance which does not result in the enhancement of the known efficacy of that substance, or the mere discovery of any new property or new use for a known substance, or the mere use of a known process unless such known process results in a new product that employs at least one new reactant.

For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known substance 2shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;

no 22.1

Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;

no 22.2

Aesthetic creations; and no 22.5 Article 3 and 4 of the TRIPS Agreement

Article 3 National Treatment

1. Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection[3] of intellectual property, subject to the exceptions already provided in, respectively, the Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the Treaty on Intellectual Property in Respect of Integrated Circuits. In respect of performers, producers of phonograms and broadcasting organizations, this obligation only applies in respect of the rights provided under this Agreement. Any Member availing itself of the possibilities provided in Article 6 of the Berne Convention (1971) or paragraph 1(b) of Article 16 of the Rome Convention shall make a notification as foreseen in those provisions to the Council for TRIPS. 2. Members may avail themselves of the exceptions permitted under paragraph 1 in relation to judicial and administrative procedures, including the designation of an address for service or the appointment of an agent within the jurisdiction of a Member, only where such exceptions are necessary to secure compliance with laws and regulations which are not inconsistent with the provisions of this Agreement and where such practices are not applied in a manner which would constitute a disguised restriction on trade.


Article 4 Most-Favoured-Nation Treatment

With regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members. Exempted from this obligation are any advantage, favour, privilege or immunity accorded by a Member: (a) deriving from international agreements on judicial assistance or law enforcement of a general nature and not particularly confined to the protection of intellectual property; (b) granted in accordance with the provisions of the Berne Convention (1971) or the Rome Convention authorizing that the treatment accorded be a function not of national treatment but of the treatment accorded in another country; (c) in respect of the rights of performers, producers of phonograms and broadcasting organizations not provided under this Agreement; (d) deriving from international agreements related to the protection of intellectual property which entered into force prior to the entry into force of the WTO Agreement, provided that such agreements are notified to the Council for TRIPS and do not constitute an arbitrary or unjustifiable discrimination against nationals of other Members.

Republic Act No. 9168, Plant Variety Protection Act Section 4. The Certificate of Plant Variety Protection shall be granted for varieties that are: a) New; b) Distinct; c) Uniform; and d) Stable. Section 5. Newness. - A variety shall be deemed new if the propagating or harvested material of the variety has not been sold, offered for sale or otherwise disposed of to others, by or with the consent of the breeder, for purposes of exploitation of the variety;

a) In the Philippines for more than one (1) year before the date of filing of an application for plant variety protection; or b) In other countries or territories in which the application has been filed, for more than four (4) years or, in the case of vines or tress, more than six (6) years before the date of filing of an application for Plant Variety Protection.

However, the requirement of novelty provided for in this Act shall not apply to varieties sold, offered for sale or disposed of to others for a period of five (5) years before the approval of this Act. Provided, That application for PVP shall be filed within one (1) year from the approval of this act. Section 6. Distinctness. - A variety shall be deemed distinct if it is clearly distinguishable from any commonly known variety. The filing of an application for the granting of a plant variety protection or for the entering of a new variety in an official register of variety in the Philippines or in any country, shall render the said variety a matter of public knowledge from the date of the said application: Provided, That the application leads to the granting of a Certificate of Plant Variety Protection or the entering of the said other variety in the official register of variety as the case may be.


Section 7. Uniformity. - The variety shall be deemed uniform if, subject to the variation that may be expected from the particular features of its propagation, it is sufficiently uniform in its relevant characteristics. Section 8. Stability. - The variety shall be deemed stable if its relevant characteristics remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of each such cycle.

Section 32 and 34 of the Indigenous Peoples Right Act Section 32. Community Intellectual Rights. - ICCs/IPs have the right to practice and revitalize their own cultural traditions and customs. The State shall preserve, protect and develop the past, present and future manifestations of their cultures as well as the right to the restitution of cultural, intellectual, religious, and spiritual property taken without their free and prior informed consent or in violation of their laws, traditions and customs. Section 34. Right to Indigenous Knowledge Systems and Practices and to Develop own Sciences and Technologies. - ICCs/IPs are entitled to the recognition of the full ownership and control and protection of their cultural and intellectual rights. They shall have the right to special measures to control, develop and protect their sciences, technologies and cultural manifestations, including human and other genetic resources, seeds, including derivatives of these resources, traditional medicines and health practices, vital medicinal plants, animals and minerals, indigenous knowledge systems and practices, knowledge of the properties of fauna and flora, oral traditions, literature, designs, and visual and performing arts. [Class note: It is difficult to regulate communal intellectual property rights of indigeous people. Thus, a special provision is made for it. Even at the international level, there is a special efforts to protect the intellectual property rights of indigeous people. [Class notes: Patent claim sets boundaries, patent fences.

(1) invention mental construct inside the mind of the inventor and has no physical substanct (abstract)

(2) embodiment is the physical form of the invention in the real world (3) claim e.g. an apparatues for Types of claims:

1. Apparatus or Device Claims protect embodiments of an invention in the form of a physical apparatus, system or device, e.g. rice cooker.

2. Method Claims or Process Claims recite a sequence of steps which together complete a task such as making an article of some sort. e.g. method of making tea.

a. Discoveries, scientific theories and mathematical methods [Class notes: Reasons why discovery is not patentable: (a) the utility requirement is not complied with, and (b) it lacks the inventive contribution. Scientific theory and mathematical process are building blocks to inventions. Thus patents are not granted for it. It is natures library fiction. OReilly v. Morse, U.S. 62 (1854) Gist:


The Supreme Court clarified the limits on the breadth of a claim. Morse applied for a patent on his recently invented telegraph. One of the claims in the patent attempted to cover the use of the motive power of the electric or galvanic current . . . however developed for marking or printing intelligible characters, signs, or letter, at any distances . . . . The Court disallowed the claim on the ground that it was impossible to understand [its] extent. In the Courts view, the claim represented an attempt to obtain a monopoly over the electromagnetic force itself rather than any device which made use of the force. The dissent criticized the majority for insisting that every claim had to be tied to a machine. Notes: The first seven inventions, set forth in the specifications of his claims, are not subject to exception. The eighth is too broad and covers too much ground. It is this. "I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for making or printing intelligible characters, signs or letters at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer." The complainants, in their bill, allege that Samuel F. B. Morse, one of them, was the true and original inventor of the Electro-Magnetic Telegraph, worked by the motive power of electro-magnetism, and of the several improvements thereon, by which intelligence which is in one place is transmitted to other distant places, and that by the letters patent of the United States, duly issued to him, Samuel F. B. Morse, and by his partial assignments to F. O. J. Smith and Alfred Vail, the other complainants, they together are lawfully invested with the exclusive right of constructing and employing such telegraph for such purpose, throughout the United States, for the terms in the letters patent mentioned, and which have not yet expired, and they exhibit the letters patent. They state that they had been thus in the successful and uninterrupted exercise of the rights granted to them by the letters patent of the United States, and had been in nowise disturbed therein, until, by the operations of the defendant, O'Reilly, and the committing of the wrongs presently mentioned, by him and his co-defendants. This defendant, O'Reilly, they state, had, as early as 1845, entered into a contract with the complainants, and another, then having an interest in the patent, whereby he, O'Reilly, acknowledged their right, and that he had afterwards, in various ways and for a long period of time, manifested his acquiescence in and admissions of the rights and privileges of them, the complainants, and even insisted on his right to the use of them himself, under his contract with them; that he had, under this contract and his claims under it, in fact, used and employed the improved telegraph of the complainants, and persisted in such, his claim, to employ it on all the lines embraced by his contract, without questioning the validity of their patents. he and his co-defendants had worked and employed upon said line, a telegraph substantially the same with the Electro-Magnetic Telegraph, invented by the complainant, Morse, and in his patents mentioned, against the will and without any authority from them, the complainants They [Morse et al.]show that the terms of the contract, under which O'Reilly claimed their right to the use of the telegraph, on certain other lines where he employed it, did not extend to any country north of the Ohio River so upon the principle and plan of the said several improvements patented by the complainant


the complainants, by the use of their patented improvements, or the principle and essential parts thereof, They state that they are informed that the defendants sometimes give out in speeches, that the patents of the complainant, Morse, are void, and at other times, give out and pretend that the machinery and apparatus which they use for the transmission and the reception of the intelligence upon the said line, is a distinct and separate invention, which they, the complainants, are informed the defendants call the Columbian Telegraph: They allege that the defendants had received, and were then receiving, considerable sums of money for transmitting intelligence caused a great diminution of the business of them, the complainants, on their line of telegraph, which they had caused to be constructed defendants refuse to desist from such violation The complainants [Morse] pray that the defendants [OReilly], by an order, and the process of the court, may be enjoined from hereafter using or employing such telegraphs in the violation and infringement of the rights of them, the complainants, within the District of Kentucky; that they may be compelled to account for the money received by them in consideration of their unlawful operations and wrongful exercise of the rights, privileges, and property of the complainants; and that on due proceeding and final hearing, such order of injunction may be made final and effectual; and that the complainants may have such other relief as their case may require. And, The respondent [OReilly] admits the contract with the complainants, of 1845, stated in the bill, and seems to admit that he had used, under it, portions of the "machine or combinations" described in the patent to Mr. Morse, of 1840, but denies he had used others under this contract. He says he was not scientific, and had not seen the patent until after the complainants had alleged he had forfeited his contract, and instituted a suit to have it vacated, and insists that he is not estopped to deny the validity of the patents. He sets up no defense under this contract, and disclaiming any license from the complainants in respect to the line of telegraph in question, answers, that he believes, on grounds which he sets forth, that Mr. Morse is not the original and first inventor of the telegraph described in his patents, and insists that his patents are, on that ground, and upon their face, and for other causes he states, null and void. He admits the construction and operation of the lines of telegraph in Kentucky and elsewhere by himself and others, but denying that the instruments employed on them are within the description of the complainants' patents, even on the supposition of their validity, denies the infringement The grounds of defense presented by the answer of O'Reilly, and assumed on the proofs, will be comprehended under these heads of primary division: I. The complainant, Morse, was not the true and original inventor of this telegraph. II. The letters patent to him are null and void upon their face, and for other causes dehors [other than] . III. The telegraph constructed and employed by them, the defendants, is substantially and in law, different from the telegraph described in the letters patent, to Morse, and of which he can lawfully claim the exclusive employment, and therefore, on the supposition of the validity of the patents to any extent, there has been no infringement. IV. The case on the pleadings and proofs, is not one, whatever might be considered of it on a final hearing of the bill, which will justify an order for injunction presently.


Is Mr. Morse the original inventor of this telegraph, and of the several improvements thereon described in his letters patent? It is necessary that we now ascertain and settle, what is the thing which was invented; and to this end it will be most convenient to begin at its conception, and accompany it in its progress down to its present state of apparent maturity and completeness. [Morse were on a ship with a few other intelligent men. Their conversations led to the invention of the electro-magnetic telegraph technology] it occurred to him that by means of electricity, signs representing figures, letters, or words, might be legibly written down at any distance, and that the same effect might be produced by bringing the current in contact with paper saturated with some saline solution. These ideas took full possession of his mind, and during the residue of the voyage he occupied himself, in a great measure, in devising means of giving them practical effect. Before he landed in the United States, he had conceived and drawn out in his sketch book "His chief concern, therefore, in his subsequent experiments was to ascertain at what distance from the battery, sufficient magnetism could be obtained to vibrate a piece of metal to be used for that purpose, knowing that if he could obtain the least motion at the distance of eight or ten miles, the ultimate object was within his grasp." "It was early a question between Professor Morse and myself, where was the limit of the magnetic power to move a lever? I expressed a doubt whether a lever could be moved by this power at the distance of 20 miles, and my settled conviction was that it could not be done with sufficient force to mark characters on paper at 100 miles distance But in the spring of this year he appears to have been excited by the publication of an account of the invention of a telegraph by two French gentlemen, M. Gonon and Servel, which it was at first apprehended, from the terms of its announcement, was no other than the Electro-Magnetic Telegraph; but which afterwards turned out to be only a form of the common telegraph formerly in use, and he consented to a notice being taken in one of the newspapers of New York, of his invention, and renewed and increased his exertions to perfect and demonstrate its great superiority and value In the meantime, on the ___ day of October, 1837, in order to protect his right to his invention, he filed his caveat in the Patent Office. It is in these words:

"To the Commissioner of Patents" "The petition of Samuel F. B. Morse, . . . represents:" "That your petitioner has invented a new method of transmitting and recording intelligence by means of electro-magnetism, which he denominates The American Electro-Magnetic Telegraph, and which he verily believes has not been known or used prior to the invention thereof by your petitioner. Your petitioner further states that the machinery for a full, practical display of his new invention is not yet completed, and he therefore prays protection of his right till he shall have matured the machinery, and desires that a caveat for that purpose may be filed in the confidential archives of the Patent Office and preserved in secrecy according to the terms and conditions expressed in the act of Congress in that


case made and provided, he having paid twenty dollars into the Treasury and complied with other provisions of the said act." "New York, Sept. 28th, 1837" These are the specifications annexed to the caveat: "The nature of my invention consists in laying an electric or galvanic circuit or conductors of any length to any distance. These conductors may be made of any metal, such as copper or iron wire, or strips of copper or iron, or of cords or twine, or other substances, gilt, silvered, or covered with any metal leaf, properly insulated in the ground, or through or beneath the water, or through the air, and by causing the electric or galvanic current to pass through the circuit, by means of any generator of electricity, to make use of the visible signs of the presence of electricity in any part of the said circuit, to communicate any intelligence from one place to another." "To make the said visible signs of electricity available for the purpose aforesaid, I have invented the following apparatus, namely: " "First. A system of signs by which numbers, and consequently words and sentences, are signified. " [Thus, the Morse code!]

Page 56 U. S. 76 "Second. A set of type adapted to regulate and communicate the signs, with cases for convenient keeping of the type, and rules in which to set up the type." "Third. An apparatus called a Port Rule, for regulating the movement of the type rules, which rules, by means of the type, in their turn regulate the times and intervals of the passage of electricity." "Fourth. A register, which records the signs permanently." "Fifth. A dictionary or vocabulary of words, numbered and adapted to this system of telegraph." "Sixth. Modes of laying the conductors to preserve them from injury." Here is a description of each of the articles of the invention, after which he concludes in these words: "What I claim as my invention and desire to secure by letters patent and to protect for one year is a method of recording permanently electrical signs, which, by means of metallic wires or other good conductors of electricity, convey intelligence between two or more places."

The new instrument, which Mr. Morse was enabled to have constructed by his arrangement with Mr. Vail, was completed in the latter end of this year, and in the succeeding February, 1838, it was exhibited in the Franklin Institute at Philadelphia, where it operated with success through a circuit of ten miles of wire, and a committee of the Institute made a report of its success. [Morse applies for a letters patent.] Here he gives the several parts of which his invention consisted, and adds a long description of each of them, and then sums up what he had affirmed he had himself invented in these words:

"What I claim as my invention and desire to secure by letters patent is as follows: "


"1st. The formation and arrangement of the several parts of mechanism constituting the type rule, the straight port rule, the circular port rule, the two signal levers, and the register lever, and alarm lever with its hammer, as combining, respectively with each of said levers, one or more armatures of an electromagnet, and as said parts are severally described in the foregoing specification." "2ndly. The combination of the mechanism constituting the recording cylinder, and the accompanying rollers and train wheels, with the formation and arrangement of the several parts of mechanism, the formation and arrangement of which are claimed as above, and as described in the foregoing specification." "3dly. The use, system, formation, and arrangement of type and of signs, for transmitting intelligence between distant points, by the application of electro-magnetism, and metallic conductors combined with mechanism, described in the foregoing specification." "4thly. The mode and process of breaking, by mechanism, currents of electricity or galvanism in any circuit of metallic conductors, as described in the foregoing specification." "5thly. The mode and process of propelling and connecting currents of electricity or galvanism in and through any desired number of circuits of metallic conductors, from any known generator of electricity or galvanism, as described in the foregoing specification." "6th. The application of electro-magnets by means of one or more circuits of metallic conductors, from any known generator of electricity or galvanism, to the several levers in the machinery described in the foregoing specification, for the purpose of imparting motion to said levers and operating said machinery Page 56 U. S. 78 and for transmitting, by signs and sounds, intelligence between distant points, and simultaneously to different points." "7thly. The mode and process of recording or marking permanently signs of intelligence transmitted between distant points and simultaneously to different points, by the application and use of electro-magnetism or galvanism, as described in the foregoing specification." "8th. The combination and arrangement of electro-magnets, in one or more circuits of metallic conductors, with armatures of magnets, for transmitting intelligence by signs and sounds, or either, between distant points, and to different points simultaneously." "9th. The combination and mutual adaptation of the several parts of the mechanism and system of type and of signs, with and to the dictionary or vocabulary of words, as described in the foregoing specification."

It appears that no objection was found to the issuing of the patent immediately, except that there had not been filed with the specifications a duplicate set of the drawings, and that the Commissioner wrote in answer to an application for it, to this effect, on the 1st of May. But Mr. Morse had conceived a hope that he might secure a consideration for the use of his invention in foreign countries as well as in the United States, and on the 15th of May he returned this answer to the Commissioner, and departed the next day for Liverpool: "New York City University, May 15, 1838" "HON. HENRY L. ELLSWORTH."


"DEAR SIR -- Excuse the delay in answering your letter of the 1st instant, relative to a duplicate set of drawings for my letters patent. May I ask the favor of you to delay issuing the letters patent until you hear from me in Europe, as I fear issuing them here will at present interfere with my plans abroad." "I sail tomorrow in the ship Europe for Liverpool. Farewell." In England, a patent was refused to the American inventor on the ground that some description of his invention -- the substance of which will appear hereafter -- had been published in the London Magazine. But he was otherwise received in France. (Here is given the account of Mr. Rives and Captain Pell, already set out. After which the account proceeds:) "The idea of applying galvanism to the construction of telegraphs is not new "Since the period to which the invention of Mr. Morse's telegraph goes back, other arrangements founded on the same principles have been announced, of which the most celebrated are those of Mr. Steinheil of Munich, and of Mr. Wheatstone of London. They differ very much in mechanism." exclusive right to every improvement where the motive power is the electric current and the result is the marking or printing intelligible characters, signs, or letters at a distance. Whoever discovers that a certain useful result will be produced in any art, machine, manufacture, or composition of matter by the use of certain means is entitled to a patent for it, provided he specifies the means he uses in a manner so full and exact that anyone skilled in the science to which it appertains can, by using the means he specifies, without any addition to or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. Morse has been able, by a new combination of known powers (including electro-magnetism), to discover a method by which intelligible marks or signs may be printed at a distance but he has not discovered that the electro-magnetic current, in any other method and combinations, will do as well. The law requires that a specification be made as part of the patent and such patent will only be issued for the invention described in the specification. He thus prevents others from attempting to improve upon the manner and process described and deters the public from using it, even if discovered. He must describe the manner and process as above mentioned and the end it accomplishes. And anyone may lawfully accomplish the same end without infringing the patent if he uses means substantially different from those described. [In OReilly v. Morse, it was decided that a claim in broad terms for the use of the motive power of the electric or galvanic current called electromagnetism, however developed, for making or printing intelligible characters, letters, or signs at any distances, although a new application of that power first made by Morse, was void, because it was a claim for a patent for an effect produced by the use of electromagnetism, distinct from the process or machinery necessary to produce it;] [Important distinction: effect v. process or machinery.] [Class notes: During the time, the Patent system was only for registration, i.e., no requisite for novelty, inventive step, and industrial applicability. Two years prior to the case, the patent system evolved into one that is administrative. The patent system would have to evaluate the application.


Morse is a landmarkcase; a precursor to all the mobile communication cases. Morse invented the repeaters which enforce the electric force over distance.] [Class notes: Justice Grier Dissent - The mere discovery of a new element or law or principle of nature, without any valuable application of it to the arts, is not the subject of a patent. But he who takes this new element or power, as yet useless, from the laboratory of the philosopher and makes it the servant of man; who applies it to the perfecting of a new and useful art or to the improvement of one already known, is the benefactor to whom the patent law tenders its protection. The devices and machines used in the exercise of it may or may not be new, yet, by the doctrine against which I contend, he cannot patent them, because they were known and used before.] [Class note: Grier talks about utility.] The Telephone Cases, 126 U.S. 1 (1888) http://supreme.justia.com/cases/federal/us/126/1/case.html The law does not require that a discoverer or inventor, in order to get a patent for a process, must have succeeded in bringing his art to the highest degree of perfection; it is enough if he describes his method with sufficient clearness and precision to enable those skilled in the matter to understand what the process is, and if he points out some practicable way of putting it into operation. In order to procure a patent for a process, the inventor must describe his invention with sufficient clearness and precision to enable those skilled in the matter to understand what his process is, and must point out some practicable way of putting it into operation; but he is not required to bring the art to the highest degree of perfection. The main issues in this respect argued by counsel were issues of fact whether Drawbaughs instruments were made prior to Bells discovery and were practically operative, and whether the Drawbaugh witnesses to these points were to be believed. The Supreme Court clarified the line dividing permissible claims from those that were too broad under the Morse rule. Alexander Graham Bell applied for a patent on the telephone. Fifth claim covered

The method of and apparatus for transmitting vocal or other sounds telegraphically, as herein described, by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sounds, substantially as set forth. It is contended that this embraces the art of transferring to or impressing upon a current of electricity the vibrations of air produced by the human voice in articulate speech, in a way that the speech will be carried to and received by a listener at a distance on the line of the current.

Bells claim, said the Court, differed from Morses claim because Bell claimed only the use of electric current for transmitting the human voice. The Court noted that it may be that electricity cannot be used at all for the transmission of speech except in the way Bell has discovered. The court held that the patent claimed but one method of transmitting vocal and other sounds, which method converted the energy of sound-waves into magnetic energy and then into vibratory currents of electricity. The court reversed the decree against the manufacturer regarding the fifth claim, holding that the battery, primary circuit, transmitter diaphragm, its electrodes, and the coil and magnet in the primary


or transmitter circuit of the manufacturers apparatus, did not involve the patent method described in claim five. [So, it was substantially different? How?] Bell's fifth claim under his patent of March 7, 1876, No. 174,465, is not confined to the magneto instrument, or to such modes of creating electrical undulations as could be produced by that form of apparatus. Bell's fifth claim under his patent of March 7, 1876, also covered his invention of an apparatus to make useful his discovery of an art or process for electrical transmission of speech, and this invention was patentable under the laws of the United States. Bell Telephone Patents The two patents thus alleged to have come into the ownership of the complainants and to have been infringed were: 1. No. 174,465, dated March 7, 1876, granted to Alexander Graham Bell for new and useful improvements in telegraphy, and 2. No. 186,787, dated January 30, 1877, granted to the same inventor for new and useful improvements in electric telephony. [The cases in the circuit courts upheld the validity of both patents.] In this art or, what is the same thing under the patent law, this process, this way of transmitting speech -- electricity, one of the forces of nature -- is employed, but electricity, left to itself, will not do what is wanted. The art consists in controlling the force as to make it accomplish the purpose. Thus, his art was put in a condition for practical use. In doing this, both discovery and invention, in the popular sense of those terms, were involved -- DISCOVERY in finding the art, and INVENTION in devising the means of making it useful. For such discoveries and such inventions the law has given the discoverer and inventor the right to a patent, as discoverer, for the useful art, process, method of doing a thing, he has found, and as inventor for the means he has devised to make his discovery one of actual value. Other inventors may compete with him for the ways of giving effect to the discovery, but the new art he has found will belong to him and those claiming under him during the life of his patent. If another discovers a different art or method of doing the same thing, reduces it to practical use, and gets a patent for his discovery, the new discovery will be the property of the new discoverer, and thereafter the two will be permitted to operate each in his own way, without interference by the other. The only question between them will be whether the second discovery is in fact different from the first. [Dictionary: To discover is to find (something or someone) unexpectedly or in the course of a search; To invent is to create or design (something that has not existed before)] The patent for the art does not necessarily involve a patent for the particular means employed for using it. Indeed, the mention of any means in the specification or descriptive portion of the patent is only necessary to show that the art can be used, for it is only useful arts -- arts which may be used to advantage -- that can be made the subject of a patent.

In the present case, the claim is not for the use of a current of electricity in its natural state as it comes from the battery, but for putting a continuous current, in a closed circuit, into a certain specified condition suited to the transmission of vocal and other sounds, and using it in that condition for that purpose. [Class notes: Highlighted during class.]


But it is insisted that the claim cannot be sustained because, when the patent was issued, Bell had not in fact completed his discovery. It is quite true that when Bell applied for his patent, he had never transmitted telegraphically spoken words so that they could be distinctly heard and understood at the receiving end of his line; but in his specification he did describe accurately, and with admirable clearness, his process -- that is to say, the exact electrical condition that must be created to accomplish his purpose -- and he also described, with sufficient precision to enable one of ordinary skill in such matters to make it, a form of apparatus which, if used in the way pointed out, would produce the required effect, receive the words, and carry them to and deliver them at the appointed place. will operate successfully The law does not require that a discoverer or inventor, in order to get a patent for a process, must have succeeded in bringing his art to the highest degree of perfection; it is enough if he describes his method with sufficient clearness and precision to enable those skilled in the matter to understand what the process is, and if he points out some practicable way of putting it into operation. This Bell did. It is again said that the claim, if given this broad construction, is virtually "a claim for speech transmission by transmitting it, or in other words, for all such doing of a thing as is provable by doing it." It is true that Bell transmits speech by transmitting it, and that long before he did so, it was believed by scientists that it could be done by means of electricity, if the requisite electrical effect could be produced. Precisely how that subtle force operates under Bell's treatment, or what form it takes, no one can tell. All we know is that he found out that by changing the intensity of a continuous Page 126 U. S. 539 current so as to make it correspond exactly with the changes in the density of air caused by sonorous vibrations, vocal and other sounds could be transmitted and heard at a distance. This was the thing to be done, and Bell discovered the way of doing it. No one before him had found out how to use electricity with the same effect. Surely a patent for such a discovery is not to be confined to the mere means he improvised to prove the reality of his conception. We come now to consider the alleged anticipation of Philipp Reis. Reis discovered how to reproduce musical tones, but he did no more. He could sing through his apparatus, but he could not talk. It was left for Bell to discover that the failure was due not to workmanship, but to the principle which was adopted as the basis of what had to be done. He found that what he called the "intermittent current" -- one caused by alternately opening and closing the circuit -- could not be made under any circumstances to reproduce the delicate forms of the air vibrations caused by the human voice in articulate speech, but that the true way was to operate on an unbroken current by increasing and diminishing its intensity. This he called a "vibratory or undulatory current," not because the current was supposed to actually take that form, but because it expressed with sufficient accuracy his idea of a current which was subjected to gradual changes of intensity, exactly analogous to the changes of density in the air occasioned by its vibrations. Such was his discovery, and it was new. The patents of Cromwell Fleetwood Varley, of London, England it is apparent that he uses the terms "undulations" and "waves" in an entirely different sense from Bell, for his patent implies operation on the principle of the electric telegraph -- that is to say, by making and breaking the circuit. In short, there is nothing in any part of the specification to indicate that the patentee had in his mind "undulations" resulting "from gradual changes of intensity exactly analogous to the changes in the density of air occasioned by simple pendulous vibrations," which was Bell's discovery and on which his art rests.


Another alleged anticipation is that of Daniel Drawbaugh. Bell got his patent March 7, 1876, and the fortunate accident which led to his discovery occurred June 2, 1875. Active litigation to enforce against Richard Dowd. This suit was defended by the Western Union Telegraph Company and vigorously contested. but before a decision was reached, the case was compromised and a decree entered by consent. It was claimed by the People's Company that Drawbaugh's inventions and the inventions covered by Bell's patents were for substantially the same thing. The main issues in this respect argued by counsel were issues of fact (1) whether Drawbaugh's instruments were made prior to Bell's discovery and were practically operative, and (2) whether the Drawbaugh witnesses to these points were to be believed. The next contested suit was brought in the same court on the 28th of July, 1880, against Albert Spencer and others Each and all of their interests in said improvements and inventions, and the letters patent to be issued therefor, shall be merged and consolidated as common stock in a corporate body, under the laws of either of the States of Ohio For the assignment from Drawbaugh to Klemm, Marx, Loth, and Wolf, $20,000 was paid in money to Chellis, Jacobs, Hill and Drawbaugh, and they were also to have a certain amount of the stock of the proposed corporation when formed. At this time, and in this way, the attention of the general public was called for the first time to the fact that Drawbaugh claimed to have anticipated Bell in the discovery of the telephone. Bell's success had been proclaimed more than four years before at the Centennial Exposition in Philadelphia. In the meantime, inventions in aid of his discovery had been multiplied. The People's Company either began or threatened to begin operations under its charter, and on the 20th of October, 1880, the Bell Company brought suit against it If his present claim is true, his experiments began almost as far back as those of Reis, and he had in his shop at Eberly's Mills, within three miles of Harrisburg, telephones that were substantially perfect months before Bell, on the second of June, 1875, got the clue to his subsequent discoveries. It is conceded that "D" and "E", made, as is claimed, in February, 1875, are substantially as good magneto instruments as any Bell had used before December, 1881, and "L", "M", "G", "O", and "H", all of which it is claimed were constructed by August, 1876, and some in February, 1875 are as good, or nearly as good, microphones as those of Blake, which were not invented until 1878. The claim is that the discovery of the process was complete, and that perfect telephones had been made and were in a condition for use, a year and more before Bell got his patent. The Centennial Exposition was opened at Philadelphia in May, 1876, and Drawbaugh visited it on the 17th of October, 1876, remaining four or five days. That was all he did during his entire visit to ascertain whether anyone besides himself had actually entered upon this then new and interesting field of invention and discovery. He spoke to no one about what he had done himself, and he made no special effort to find out whether that which was on exhibition was in any respect like what he had at home. Neither did he when he got home, so far as the records show, say anything to his neighbors or visiting friends about what he had seen or heard. He had apparently lost all interest in "talking machines." It is impossible to believe, if Drawbaugh had in his shop, when he reached home from the Centennial, Exhibits "D", "E", "L", "M", "G", "O", and "H", or even "D" and "E" alone, that he would have set himself to work in the first instance at developing his clock enterprise or perfecting his former conception of a measuring faucet instead of making some effort to call the attention of his friends to his great discovery of the telephone, which he was in danger of losing by the patent which had been issued to another and which he could not but have known was even then attracting the greatest attention. Chellis was told that Drawbaugh had "a phonograph and a telephone that he had invented", he gave it no attention, because, to use his own language, "I was interested in the faucet and motor business, and


wished to push them, and I did not think we could do much with the telephone, as Bell had a patent, and I did not know that he could antedate them." And again, when speaking of a conversation he had with Drawbaugh, he said: "I advised him to drop it -- the telephone -- as he could not antedate Bell. He said he did not know about that; that he had been working on it a good while. It was his way of expressing himself. When I would say, 'You can't antedate Bell', he would say, 'I don't know about that; I have been working at it a good while. This, it must be remembered, was in 1879, after the telephone had become a success and after it had been a year or more in use in Harrisburg, where Chellis lived. It is impossible to believe that either Chellis or Drawbaugh was ignorant of the approximate time of Bell's invention, which had been the subject of frequent newspaper comment from the time of its exhibition at the Centennial. If Drawbaugh had at that time in his shop the machines which it is now claimed were all complete as they now are by August, 1876, and most of them before, there cannot be a doubt that he would have taken them to someplace where they could be tried and show that they would do what he had all along claimed for them. All he had to do at any time after he came back from the Centennial was to take any pair of his little instruments to his friend Zeigler or his friend Stees at Harrisburg, attach them to a line wire, and show what he had. They were men who could appreciate his achievement and help him if it was, as he now says it was, a success. It would certainly have been easier then, within two years of the time the first of them were made and within a year of the date of Bell's patent, to show that he "antedated" Bell, than it was three years afterwards, when he was brought into the controversy through the instrumentality of his associates, not, as must be evident to all, to get a patent for himself, but to defeat that of Bell. But there is another fact in this case equally striking. As has already been seen, "F", "B", "C", and "I" were in no condition for use when they were produced and put in evidence. To our minds, the result of the second experiments conclusively showed that the original instruments could not have done what the witnesses supposed they did, and that what they saw and heard was produced by some other means than an electric speaking telephone. Without pursuing the subject further, we decide that the Drawbaugh defense has not been made out. Another objection to Bell's patent Bell's application was filed February 14, 1876, and afterwards, during the same day, Elisha Gray filed a caveat The precise charge now made in the printed brief of Mr. Hill is that "Mr. Bell's attorneys had an underground railroad in operation between their office and Examiner Wilbur's room in the Patent Office, by which they were enabled to have unlawful and guilty knowledge of Gray's papers as soon as they were filed in the Patent Office," and "that an important invention and a claim therefor were bodily interpolated into Bell's specification between February 14, 1876, and February 19, 1876, by Pollok in consequence of the guilty knowledge which the latter already had of the contents of Gray's caveat before the declaration of interference with Gray on February 19th." differences has been explained in the most satisfactory manner Not a shadow of suspicion can rest on anyone growing out of the misprint of the specification in the Dowd case Bell says in his testimony that he began writing his specification in September or October, 1875, and wrote and rewrote it a number of times, finally adopting that mode of expression which seemed to him the best to explain his invention and the relation which one portion bore to another At any rate, the bare fact that the difference exists under such circumstances is not sufficient to brand Bell and his attorneys, and the officers of the Patent Office, with that infamy which the charges made against them imply. We therefore have no hesitation in rejecting the argument. The variable resistance method is introduced only as showing another mode of creating electrical undulations. That Bell had had his mind upon the effect of such a method is conclusively established by a letter which he addressed to Mr.


Hubbard on the 4th of May, 1875, and which is found in the Dowd record, introduced into the Overland case by stipulation It remains only to consider the patent of January 30, 1877, about which but little has been said either in the oral or printed arguments. In the Dolbear case it was, by consent, excluded from the decree, and of course is not presented by that record in this Court. In all the other cases, the patent was sustained, From the decree in favor of the Molecular Company as to the fifth claim, the Bell Company has appealed. The claim is not for these several things in and of themselves, but for an electric telephone, in the construction of which these things, or any of them, are used; hence the fifth claim is not anticipated by the Schellen magnet, as was decided in the Molecular case below. The patent is not for the magnet, but for the telephone of which it forms but part. To that extent, the decree in that case was erroneous. It follows that the decree in each of the cases, so far as it is in favor of the Bell Company and those claiming under it, must be affirmed, and that the decree in the Molecular case, so far as it is against that company on the fifth claim of the patent of January 30, 1877, must be reversed, and a decree directed to that extent in its favor. DISSENT BY JUSTICE BRADLEY some forty or fifty witnesses were produced, many of whom saw it and heard speech through it, and others either saw it or heard it talked about in such a manner as to fix the time when it was in existence There are two modes (as yet discovered) by which these undulations may be thus produced. In one, they are produced by interposing in the circuit a substance whose electrical conductivity may be varied by the concussions or vibrations of the air produced by the voice. This is called the "variable resistance process" because the electrical current is subjected to the variable resistance (or conductivity) of the substance thus interposed. By the other mode, the undulations are produced by the inductive effect of an armature (or small, flat piece of iron) attached to the membrane spoken against and placed near to the poles of an electromagnet situated in the circuit. In both cases, the undulations impart the vibrations which caused them to another diaphragm at a distance (called the receiver) by means of an electromagnet in the circuit placed near to an armature affixed to such diaphragm [variable resistance process v. electromagnet with membrane] As it would serve no useful purpose to repeat the testimony of these witnesses, we shall refrain from doing so. We will only add that nearly all the original instruments used by Drawbaugh were produced on the trial, and identified by the witnesses. Some of them were broken and in a dilapidated condition, but sufficiently perfect to be accurately reproduced. Their very form and principle of construction showed that they were intended for speaking telephones and nothing else. Drawbaugh certainly had the principle, and accomplished the result. Perhaps without the aid of Mr. Bell, the speaking telephone might not have been brought into public use to this day, but that Drawbaugh produced it there can hardly be a reasonable doubt. A common astronomer, by carefully sweeping the sky, might have been first in discovering the planet Neptune; while no one but a Leverrier, or an Adams, could have ascertained its existence and position by calculation. So it was with Bell and Drawbaugh. The latter invented the telephone without appreciating the importance and completeness of his invention. Bell subsequently projected it on the basis of scientific inference, and took out a patent for it. But, as our laws do not award a patent to one who was not the first to make an invention, we think that Bell's patent is void by the anticipation of Drawbaugh. [Not novel by virtue of Drawbaughs anticipation!]


[Class notes: Morse use of magnetism without regard to particular process to which it is connected cannot be claimed. Bell use of magnetism + particular process to which it is connected valid claim.] must couple apparatus, method, means.] Thus,

Morse, use + no particular proces = broad, void. Bell, use + particular proces = valid.

b. Living Things [Class notes: Living things are divided into plants and animals. Plants and animals may be distinguished by its reaction to oxygen and carbon-dioxide, and by its mobility. The characteristics of living things: (1) use energy (2) composed of cells (3) respond to the environtment (4) growth (5) reproduction.] Diamond v. Chakrabarty, 447 U.S. 303 http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=447&invol=303 This human-made, genetically engineered bacterium is capable of breaking down multiple components of crude oil. This bacterium does not occur naturally, and therefore, is believed to have significant value for the treatment of oil spills. Chakrabartys patent claims were of three types: first, process claims for the method of producing the bacteria; second, claims for an inoculum comprised of a carrier materi

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