Requirement of Disclosure in Patent Specification

A patent grants its holder the exclusive right to make, use, sell, or import an invention for a limited period. To secure this valuable right, inventors must disclose their creation in detail within a patent specification. This disclosure serves a critical purpose: it allows others to understand the invention, potentially build upon it, and ensures the public receives the promised benefits of innovation. Let’s delve into the disclosure requirements for patent specifications in the Philippines and the United States, highlighting key similarities and differences.

The Importance of Disclosure

A well-drafted patent specification acts as a blueprint for the invention. It should be clear, concise, and enable a person skilled in the relevant field (a person of ordinary skill in the art) to carry out the invention without undue experimentation. This transparency fosters several benefits:

• Validity: A complete and enabling disclosure strengthens the patent’s validity. If the invention remains shrouded in secrecy, it becomes difficult to assess its novelty and non-obviousness – key requirements for patentability.
• Public Knowledge: Disclosure enriches the public domain with technical knowledge, paving the way for further innovation and advancements.
• Fairness: By revealing the invention’s details, competitors can avoid unknowingly infringing upon the patent holder’s rights.

Disclosure Requirements in the Philippines

The Philippines follows a first-to-file system, where the inventor who files first is generally entitled to the patent. The Intellectual Property Office of the Philippines (IPOPHL) governs patent applications and enforces specific disclosure requirements outlined in the Intellectual Property Code (Republic Act No. 8293).

Here’s a breakdown of the key Philippine disclosure requirements:

• Description of the Invention: The specification must describe the invention in detail, including its technical features, purpose, and how it works. This description should be clear enough for a person skilled in the art to understand and implement it.
• Drawings: When necessary, the specification should include drawings to further illustrate the invention. These drawings must be clear and sufficiently detailed to complement the written description.
• Best Mode: Applicants are required to disclose the “best mode” contemplated for carrying out the invention. This essentially means revealing the most effective way, known to the applicant at the time of filing, to put the invention into practice.
• Claims: The specification must conclude with claims that define the scope of the invention for which patent protection is sought. These claims precisely outline the technical features that are novel and inventive.

Disclosure Requirements in the United States

The United States Patent and Trademark Office (USPTO) administers patents in the US, which also operates under a first-to-file system. Similar to the Philippines, US patent specifications must comply with specific disclosure requirements enshrined in Title 35 of the United States Code and further clarified by USPTO guidelines.

The core US disclosure requirements mirror those of the Philippines:

• Written Description: The specification must include a written description of the invention that is sufficiently clear and complete to enable a person of ordinary skill in the art to make and use the invention.
• Drawings: When necessary, the specification should be accompanied by drawings that illustrate the invention in a clear and detailed manner.
• Best Mode: Similar to the Philippines, the applicant must disclose the “best mode” contemplated for carrying out the invention.
• Enablement: The combined effect of the written description, drawings (if any), and best mode disclosure must enable a person of ordinary skill in the art to practice the invention without undue experimentation.
• Utility: The specification must disclose a new and useful invention.
• Claims: The specification must conclude with one or more claims that define and particularly point out the subject matter which the applicant regards as the invention.

Similarities and Differences

Both the Philippines and the US emphasize the importance of a clear, concise, and enabling disclosure. They require a written description, drawings (if necessary), and disclosure of the best mode. However, there are some subtle differences:

• Terminology: The Philippines uses the term “person skilled in the art,” while the US employs “person of ordinary skill in the art.” This slight variation may lead to minor differences in interpretation by patent offices.
• Utility Requirement: The US explicitly requires disclosure of a useful invention, while the Philippines incorporates this concept within the general definition of an invention.
• Level of Detail: There might be nuanced differences in the expected level of detail within the written description and best mode disclosure between the two jurisdictions. US case law has established a concept of “possession of undue breadth,” which can arise if the disclosure is overly broad and fails to enable the invention.

Conclusion

Disclosure is the cornerstone of a strong patent specification. By adhering to the specific requirements in the Philippines and the US, inventors can ensure their inventions are clearly communicated, fostering a robust patent system that incentivizes innovation and benefits both inventors and the public.

Additional Considerations

• Deposit Requirements: For certain types of inventions, particularly those involving biological materials, the Philippines and the US might require deposit of the material in a recognized depository. This ensures the availability of the material for future reference and enables verification of the invention’s functionality.
• Claim Drafting: While both countries require claims to define the invention, claim drafting strategies can differ. In the US, it’s common to utilize dependent claims that incorporate features from a broader independent claim. Philippine practice may allow for a single broad claim encompassing the invention’s entirety. Patent attorneys experienced in both jurisdictions can advise on the optimal claiming strategy for each specific invention.
• International Filings: Inventors seeking patent protection in both the Philippines and the US, or in multiple countries worldwide, can consider filing a Patent Cooperation Treaty (PCT) application. This international filing system streamlines the initial stages of the patenting process and allows inventors to later convert the PCT application into national applications in various countries, including the Philippines and the US.

Seeking Professional Guidance

Navigating patent disclosure requirements can be intricate. Consulting a qualified patent attorney familiar with the Philippines and/or the US patent systems is highly recommended. An attorney can assist with drafting a comprehensive and compliant specification, ensuring your invention receives the strongest possible patent protection.

By understanding and fulfilling disclosure requirements, inventors can effectively communicate their creations, pave the way for future advancements, and reap the rewards of their ingenuity. Whether you’re filing for a patent in the Philippines, the US, or both, remember: a well-disclosed invention is a powerful invention.