The document discusses the patent document, its form and substance. It begins with a review of patenting concepts such as the definition of a patent, reasons for patenting, and patentability requirements. It then discusses the typical parts of a patent document, including the title, abstract, claims, specifications, and drawings [SECTION 2]. The document explains how to construct a patent document and stresses the importance of a clear disclosure of the invention. Finally, it discusses how to exploit patent document information to learn about the inventor's goals for protection, competitors, markets, and more [SECTION 3].

1. The Patent
Document, Its Form and
Substance
Caezar Angelito E. Arceo
Registered Patent Agent in the Philippines
(Non-chemical field, 2006; Chemical field, 2007)
Mentor, Patent Agent Qualifying Examinations 2011, 2012
Incorporator, Association of PAQE Professionals, Inc.
Training on Invention Spotting, Patent Search, Documentation and Interpretation
Philippine Council for Agriculture, Aquatic, and Natural Resources Research and Development (PCAARRD)
Bulwagang Panday Karunungan, PCAARRD, Los Baños, Laguna (Philippines)
18 December 2012

2. Outline
1.0 Patenting quick review 9 min
2.0 The patent document 10 min
3.0 Exploiting a patent document 10 min
4.0 End 1 min / Free

3. 1.0 Patenting quick review
1.1 What is a patent?
1.2 Why patent?
1.3 What can be patented?
1.4 What cannot be patented?
1.5 What are the requirements of a patent?

4. 1.1 What is a patent?
“A Patent is a grant issued by the
government through the Intellectual
Property Office of the Philippines (IP
Philippines).” “It is an exclusive right
granted for a product, process
or an improvement of a product
or process which is
new, inventive and useful.”
“A patent has a term of protection of twenty (20) years
providing an inventor significant commercial gain.”
Source: http://ipophil.gov.ph/
“A patent is a contract between
the government and the inventor.”
- Dr. Karl Rackette
© 2012 by Caezar AE. Arceo
Claim drafting crash course for the
Sapalo Velez Bundang & Bulilan

5. 1.2 Why patent?
“There is no reason
anyone would want a computer
in their home.”
- Ken Olsen (1977)
Founding Chair, Digital
Equipment Corporation
1.3 What can be patented?
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 - Sec. 21, RA 8293
Patentable. It may be, or may relate to, a product,
or process, or an improvement of any
of the foregoing.

6. 1.4 What cannot be patented?
EXCLUSIONS: An invention shall not be
considered new if it forms part of a
(1) Discoveries, scientific prior art.
theories and mathematical
methods; - Sec. 23, RA 8293
(2) Schemes, rules and methods - Rule 203, Patents IRR
of performing mental acts,
playing games or doing  Made available to the public
business, and programs for anywhere in the world.
computers;  Earlier applications.
(3) Methods for treatment of the - Rule 204, Patents IRR
human or animal body;
(4) Plant varieties or animal
breeds or essentially
biological process for the
Prohibited statements in the application:
production of plants or (1) Contrary to “public order” or morality.
animals. (2) Disparaging other products or
(5) Aesthetic creations; and processes of any person other than the
(6) Anything which is contrary to applicant.
public order or morality. (3) Obviously irrelevant or unnecessary
under the circumstances.
- Sec. 22, RA 8293 - Rule 412, Patents IRR

7. 1.5 What are the requirements of a patent?
Novelty
1
An invention shall not be Inventive step
considered new if it forms
part of a prior art.
2
An invention involves an
- Sec. 23, RA 8293 inventive step if, having
regard to prior art, it is not
obvious to a person skilled in
3 Industrial
the art at the time of the filing
date or priority date of the
application claiming the
applicability invention
- Sec. 26, RA 8293
An invention that can be produced and
used in any industry shall be industrially
applicable.
© 2012 by Caezar AE. Arceo
- Sec. 27, RA 8293 Claim drafting crash course for the
Sapalo Velez Bundang & Bulilan

8. 2.0 The patent document
2.1 What is a patent document?
2.2 What are the parts of a patent document?
2.3 How to construct a patent document?

9. 2.1 What is a patent document?
 A “piece of work” that contains:
 Description of the invention
 Drawings necessary to understand the invention
 One or more claims
 An abstract
 The name(s) of the inventor(s)
 Corresponding foreign applications, if applicable.

10. 2.2 What are the parts of a patent document?
4 Abstract
3 Claims
2 Specifications
1 Request for Grant of
Patent (Application
form)
5 Drawings
© 2012 by Caezar AE. Arceo
Claim drafting crash course for the
Sapalo Velez Bundang & Bulilan

11. 2.2 What are the parts of a patent document?
International Patent Classification Abstract
Claims
Application Number
Publication number and date
Specifications
1 Request for Grant of
Patent (Application
Filing date form)
Priority date Drawings
Name and address of inventor
Name and address of patent agent
Title of invention

12. 2.2 What are the parts of a patent document?
Abstract
Background of invention
Claims
2 Specifications
Field of the invention
Request for Grant of
Patent (Application
form)
Description of related art Drawings
Specifications: “Disclosure of the invention in a
manner sufficiently clear and complete for it to
be carried out by a person skilled in the art”
(Sec. 35.1, IP Code)

13. 2.2 What are the parts of a patent document?
Abstract
3 Claims
Specifications
Request for Grant of
Patent (Application
form)
Drawings
Claims: define the matter for which protection is
sought (Sec. 36.1, IP Code)

14. 2.2 What are the parts of a patent document?
4 Abstract
Claims
Specifications
Request for Grant of
Patent (Application
form)
Drawings
Abstract: concise summary of the disclosure of
the invention (Sec. 37, IP Code)

15. 2.2 What are the parts of a patent document?
Abstract
Claims
Specifications
Request for Grant of
Patent (Application
form)
5 Drawings
Drawings: illustration to show every feature of
the invention and may consist several views
(Rule 413, Revised IRR on Patents)

16. 2.3 How to construct a patent document?
Title Abstract
Authors and Affiliations Contact a Claims
patent agent
Abstract
Specifications
Introduction
Review of Literature
Methodology Request for Grant of
Patent (Application
Results and Discussion form)
Summary, Conclusions, Recommendations
Drawings
Literature cited

17. 3.0 Exploiting a patent document
3.1 Why exploit patent document information?
3.2 How to exploit patent document information?

18. 3.1 Why exploit patent document information?
Key questions why a patent was secured:
 What does the inventor want to protect? Why would he want
to protect it?
 Who are his competitors? Where are they located?
 What are his potential markets? Where are they?
…

19. 3.2 How to exploit patent document information?
Title Abstract
Authors and Affiliations Contact a Claims
patent agent
Abstract
Specifications
Introduction
Review of Literature
Methodology Request for Grant of
Patent (Application
Results and Discussion form)
Summary, Conclusions, Recommendations
Drawings
Literature cited
From patent document construction…

20. 3.2 How to exploit patent document information?
Title Abstract
Authors and Affiliations Contact a Claims
patent agent
Abstract
Specifications
Introduction
Review of Literature
Methodology Request for Grant of
Patent (Application
Results and Discussion form)
Summary, Conclusions, Recommendations
Drawings
Literature cited
…To patent document exploration!

21. 3.2 How to exploit patent document information?
Document part In particular… Possible gains
Request page Name of inventor Potential collaborator, or competitor to watch out.
Filing date A warning sign that your research is so slow and
you need to catch up; OR
A signal for you to abandon your research and to
focus on something else.
Priority date - Ditto -
Specifications Background Good literature source.
Field A good feeling that your research is in a healthy
field and you have company; OR
You are in a crowded field and you might need to
“reinvent” your lab.
Description Protocols; research techniques; innovative insights;
literature review; hope for underfunded projects.
Claims (Ask Mr. Catibog or May need specialized training but at least may allow
your in-house you to keep track of your scientific pursuit; possible
patent agent) patents from your research outputs.
Abstract Good for lazy…err…busy people.
Drawings A way to better understand the invention.

22. 4.0 Any questions?
And...thank you!
© 2012 by Caezar Angelito Estioko Arceo
cangear@yahoo.com
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