C.
Programs for Computer
C.1. Definition of a Computer Program
Section 171.4, IPC
Section 171. Definitions. - For the purpose of this Act,
the following terms have the following meaning:
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171.4. A "computer" is an electronic or similar device
having information-processing capabilities, and a
"computer program" is a set of instructions expressed
in words, codes, schemes or in any other form, which
is capable when incorporated in a medium that the
computer can read, of causing the computer to perform
or achieve a particular task or result;
1. Gottschalk v. Benson
2. Parker v. Flook
3. Diamond v. Diehr
4. In re Bilsi v. Kappos
5. Bilsi v. Kappos
6. Alice Corp v. CLS Bank International
C.2. Patentability of Computer Program and Computer
Related Inventions
EU Approach vs. US Approach
Art. 52, European Patent Convention
Article 52
Patentable Inventions
(1) European patents shall be granted for any
inventions, in all fields of technology,
provided that they are new, involve an
inventive step and are susceptible of
industrial application.
(2) The following in particular shall not be
regarded as inventions within the meaning of
paragraph 1:
a. Discoveries, scientific theories and
mathematical methods;
b. Aesthetic creations;
c. Schemes, rules and methods for
performing mental acts, playing
games or doing business, and
programs for computers;
d. Presentations of information.
(3) Paragraph 2 shall exclude the patentability of
the subject-matter or activities referred to
therein only to the extent to which a European
patent application or European patent relates
to such subject-matter or activities as such.
35 US Code § 101 – Inventions Patentable
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof,
may obtain a patent therefor, subject to the conditions
and requirements of this title.
IPOPHL Revised Guidelines
See separate file
D. Methods of Doing Business
1. State Street Bank v. Signature Financial
Group
E. Medical Procedure
1. Pallin v. Singer
F. Drugs and Medicine
Sec. 5., R.A. 9502 amending Sec. 22 of the IP Code
SEC. 5. Section 22 of Republic Act No. 8293,
otherwise known as the Intellectual Property Code of
the Philippines, is hereby amended to read as follows:
"SEC. 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. x x x;

"22.3. x x x;

"22.4. x x x;

"22.5. x x x; and

"22.6. x x x."

Sec. 3(d), Indian Patent Law

Section 3. What are not inventions – The following are

not inventions within the meaning of this Act, --

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(d) the mere discovery of a new form 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 of the mere use of a known process,
machine or apparatus unless such known process
results in a new product or employs at least one new
reactant.

Explanation. – For the purposes of this clause, salts,

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

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