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The Philippines: ODG assesses inventive step in patent case

In the appealed case of Frederick Vital Erum v Integrated Formworks Builder, the Office of the Director General (ODG) of the Intellectual Property Office (IPOPHL) issued its decision on October 19 2018, affirming the decision of the Office of the Bureau of Legal Affairs (BLA) cancelling Erum's letters patent no. 1-2006-00047 (047) entitled "A Table Form Support System for Concrete Forming," on the ground that the claimed invention lacks inventive step and is therefore not patentable. Under Section 21 of the IP Code, for an invention to be given patent protection, it must be new, have an inventive step and be industrially applicable.

The inventor and patentee Erum is a member of the Filipino Inventors Society whose subject patent was granted on October 15 2012. Integrated Formworks Builder is a sole proprietorship engaged in the formwork business and the use of a table form support system for the construction industry. On November 27 2013, Integrated filed a petition to cancel patent 047 on the grounds that the invention is not new or patentable, and that the patent does not disclose the invention sufficiently to be carried out by a person skilled in the art. In his decision, the BLA director ruled that the essential elements of the invention are found in the prior arts US Patent No. 4,787,183 (Johnston Patent), and US Patent No. 4,585,204 (Parker Patent) issued on November 29 1988 and April 29 1986 respectively, and on this basis cancelled patent 047. Dissatisfied with the BLA ruling, Erum appealed to the ODG.

On the issue of novelty, the ODG stated that Erum's patent application was filed on August 31 2006, hence any publication and information about the invention made available to the public anywhere in the world prior to the filing date could negate the novelty of the invention, and that only one item of the prior art may be used at a time. The ODG therefore had to examine whether the prior arts, Parker patent (1986) and the Johnston patent (1988), disclosed each and every element of the claims in Erum's patent 047. In this case, Integrated only maintained that Erum's invention is similar to the cited US patents, and was not able to prove that patent 047 was anticipated by them. The ODG ruled that patent 047 is novel.

On the issue of inventive step, the ODG stated that "as distinct from the assessment of novelty, the subject matter of the claim under examination is compared not with each publication or other disclosure separately, but with the combinations, thereof, insofar as each combination is obvious to the person having ordinary skill in the art." Erum claimed the following improvements embodied in 047 over the Johnston and Parker patents: "(a) chords defined by double walled channels or double-walled channel chords; and (b) upright members having central web section with no flanged bolt slot channels." The ODG held that Integrated correctly argued that the alleged improvements in Erum's invention were not unexpected or are considered obvious to those skilled in the art, e.g. for improvement "a". It is naturally expected that an additional wall to the chords would result in the structure being stronger. The ODG further held that the cited US patents Johnston and Parker should be part of the reference materials of the 047 patent, and, had they been included, patent 047 would not have been issued.

Editha R Hechanova

Hechanova & Co., Inc.
Salustiana D. Ty Tower
104 Paseo de Roxas Avenue
Makati City 1229, Philippines
Tel: (63) 2 812-6561
Fax: (63) 2 888-4290


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