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Intellectual Property Law; Novelty as essential elements of Invention; and Cancellation of Patent. - An invention is “a patentable device or process created through independent effort and characterized by an extraordinary degree of skill or ingenuity; a newly discovered art or operation.” (Black’s Law Dictionary, Seventh Edition, P. 830.)

If the invention has been previously patented, described in a publication, or known or used by others, it is not novel. (35 USCA 102 Cf. Non-Obviousness; Black’s Law Dictionary, Seventh Edition, p. 1092.)

In the case of Maguan vs. Court of Appeals (146 SCRA 107 [1986]), the Philippines Supreme Court ruled that “an invention, to be patentable, must possess the essential elements of novelty, originality and precedence and for the patentee to be entitled to protection, the invention must be new to the world. A single instance of public use for more than one year before the date of his application for a patent precludes its being patented or, if patent is issued, is fatal to its validity.”

It is of no moment that variations, modifications, innovation and/or enhancement were introduced in design or utility model. It cannot be considered as an invention lacking the essential elements of novelty.

The case of Hotchkiss vs. Greenwood is quite instructive: “the Principle of the Hotchkiss case applies to the adaptation or combination of old or well-known devices for new uses. That is to say, the new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. It if fails, it has not established its right to a private grant on the public domain.” (Amador: Patent Under the Intellectual Property Code, 2001 Edition, p 69.)

In other words, the device must not only be “new and useful,” it must be an “invention” or “discovery”. The case is obviously within the principle, so often declared, that a mere carrying forward of the original thought – a change only in form, proportions, or degree, doing the same thing in the same way, by substantially the same means, with better results – is not such an invention as will sustain a patent.

Under Section 109.1 of Republic Act No. 8293, otherwise known as the Intellectual Property Code, “an invention qualifies for registration as utility model if it is new and industrially applicable.” However, the utility model registration may be cancelled under Section 109.4, among others, “when the claimed invention does not qualify for registration as a utility model and does not meet the requirements of registratibility.”