Patents of Invention
– The Intellectual Property Code of the Philippines, and Implementing Rules and Regulations, effective January 1, 1998.
– Decisions of Philippine Courts.
– Republic Act (R.A.) No. 9168, otherwise known as the Philippine Plant Variety Protection Act of 2002.
Membership in International Conventions
– Paris Convention, since September 27, 1965, Lisbon Act and Stockholm Act, with the exception of Art. 1 to 12, since July 16, 1980.
– Convention Establishing the World Intellectual Property Organization (WIPO), since July 16, 1980.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (1977, modified in 1980), since October 21, 1981.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Patent Cooperation Treaty, since August 17, 2001.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since May 14, 2019.
Applicant: the inventor, his heirs or assignee. When two or more persons have jointly made an invention, the right to a patent shall belong to them jointly. If two or more persons have made the invention separately and independently of each other, the right to a patent shall belong to the person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or the earliest priority date. Unless otherwise provided by contract, the person who has commissioned a work shall own the patent. If an employee has made the invention in the course of his employment contract, the patent shall belong to the employee, if the inventive activity was not part of his regular duties even if the employee used the time, facilities and materials of the employer; the patent shall belong to the employer, if the invention was the result of the performance of the employee’s regularly assigned duties unless there was an agreement, express or implied, to the contrary.
Foreigners: non-resident inventors must appoint an agent or representative in the Philippines upon whom notices or processes relating to the application for a patent may be served. In the event of the death, absence or inability of the agent or representative, a new agent or representative must be appointed.
Definition of inventions: a patentable invention is any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable. It may be, or may relate to a useful machine or a product or process or an improvement of any of the foregoing; microorganisms, non-biological and microbiological processes.
Novelty: an invention shall not be considered new if it forms part of a prior art. Prior art shall consist of: (1) everything which has been made available to the public anywhere in the world, before the filing date or the priority date of the application claiming the invention; and (2) the whole content of an application for a patent, utility model, or industrial design registration, published in accordance with law, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application, provided that the applicant or inventor identified in both applications are not one and the same.
Unpatentable: the following shall be excluded from patent protection: discoveries, scientific theories and mathematical methods; schemes, rules and methods of performing mental acts, playing games or doing business and programs for computers; methods of treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body (products and compositions for use in any of these methods are patentable); plant varieties or animal breeds or essentially biological process for the production of plants or animals (microorganisms and non-biological and micro-biological processes are patentable); aesthetic creations; and anything which is contrary to public order or morality. (Computer-related inventions are now a statutory class of patentable inventions).
Priorities: as the Philippines is a member of the Paris Convention, a foreign applicant who has previously filed a similar application in a Paris Convention country is entitled to claim priority rights in the Philippines with respect to the date on which the foreign application was filed. Said priority rights may be claimed if (a) the application in the Philippines expressly claims priority; (b) it is filed within twelve months from the earliest date on which the foreign application was filed; and (c) a certified copy of the foreign application together with a translation thereof in English is filed within six months from the date of filing the Philippine application.
Filing requirements for an application (to be sent to resident agent):
1. A request for the grant of a patent (which may be signed by the agent or representative), containing a petition for the grant of the patent, the name and other data of the applicant, inventor and agent, and the title of the invention;
2. A description of the invention;
3. Drawings necessary for the understanding of the invention;
4. One or more claims;
5. An abstract;
6. Certified copy of the foreign application, with an English translation, if priority is claimed (may be filed within six months from the filing date).
Note: the application must be in English or Filipino. It must identify the inventor. If the applicant is not the inventor, an authority from the inventor may be required to be submitted.
Electronic filing: available.
Electronic signatures: are accepted.
Disclosure: where the application concerns a microbiological process or the product thereof and involves the use of a microorganism which cannot be sufficiently disclosed in the application in such a way as to enable the invention to be carried out by a person skilled in the art, and such material is not available to the public, the application shall be supplemented by a deposit of such material with an international depositary institution.
PCT applications: time limit for entering the national phase under both Chapter I and Chapter II: 30 months. An extension of one month is available if the applicant pays an additional fee for late entry into the national phase (see more at: www.ipophil.gov.ph/patent-cooperation-treaty-international-application).
Examination of application: after the formal examination, a search is conducted to determine the prior art. Prior art: it also encompasses the content of foreign applications disclosing substantially the same invention published before the filing date of the application. The Rules also mandate a strict identity test in identifying the novelty of a patent, and limit the use of equivalents to assessing the inventive steps. Enabling disclosure: the Rules substantiate for an “enabling disclosure”, a sufficiently clear and complete description of an invention for it to be carried out by a person skilled in the art. The disclosure must be made by way of working examples. Before publication, the application and all related documents are kept confidential and not made available for inspection without the consent of the applicant. During examination, the applicant is notified of any action taken by the patent Examiner so that the applicant may reply thereto. If the applicant fails to request reconsideration of any adverse action or decision of the Intellectual Property Office, or if he fails to remedy the defects indicated to him by the Office within the time fixed, or within such additional time as may be granted, the application shall be rejected. Any final action by the patent Examiner is appealable to the Director General.
Publication: in the Intellectual Property Office Gazette, together with a search document established by or on behalf of the Office citing any documents that reflect prior art, after the expiration of eighteen months from the filing date or priority date. After publication, any interested party may inspect the documents filed with the Office.
Grant of patent: the patent takes effect on the date of publication in the Intellectual Property Office Gazette.
Right of applicant after publication: standing right to bring an action for infringement, provided the alleged infringer has actual knowledge of the published application and has received written notice of the published application. Said action for infringement may not be filed until after the grant of a patent on the published application and must be filed within four years from commission of the acts complained of.
Observations by third parties: after publication, any person may present observations in writing concerning the patentability of the invention. Such observations shall be communicated to the applicant who may comment on them. The Office shall acknowledge and put such observations and comments in the related application file.
Joint U.S.-Philippines examination program: the Philippines and the United States have an existing joint examination program which may be availed of whenever a similar patent application has been filed in the United States Patent Office. Under this program, an allowance of the application by the United States Patent Office may bring about, as a rule, a similar allowance by the Philippine Intellectual Property Office and vice versa.
Amendment of application: the application may be amended during examination, provided that such amendment does not include new matter outside the scope of the disclosure contained in the application as filed.
Request for substantive examination: within six months from the date of publication, a written request for substantive examination must be filed, otherwise the application is deemed withdrawn.
Division: the application shall relate to one invention only or to a group of inventions forming a single general inventive concept. If several independent inventions are claimed in a single application, the Director of Patents may require that the application be restricted to a single invention. This action is known as division. A later application filed for an invention divided out shall be considered as having been filed on the same day as the first application, provided that the later is filed within four months after the requirement to divide becomes final, or within such additional time, not exceeding four months, as may be granted. Each divisional application shall not go beyond the disclosure in the initial application.
Issue and publication: if the application meets the requirements of the Intellectual Property Code, the patent is issued provided all the fees are paid on time. The grant of the patent together with other related information is published in the Intellectual Property Office Gazette, and the patent takes effect on the date of such publication.
Conversion of a patent into a utility model: at any time before the grant or refusal of a patent, an applicant for a patent may, upon payment of the prescribed fee, convert his application into an application for registration of a utility model, which shall be accorded the filing date of the initial application. An application may be converted only once. An applicant may not file two applications for the same subject, one for utility model registration and the other for the grant of a patent whether simultaneously or consecutively.
Duration: twenty years from the filing date.
Annual fees: to maintain the application or the patent, an annual fee must be paid upon the expiration of four years from the date of publication in the Gazette (eighteen months after filing or priority date), and on each subsequent anniversary of the such date.
Rights conferred by patent: a patentee has the exclusive right, where the subject matter of a patent is (a) a product, to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product; and (b) a process, to restrain, prevent or prohibit any unauthorized person or entity from using the process, and from manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from such process.
Limitation of patent rights: the owner of a patent shall not have the aforedescribed rights against third persons in the following circumstances: (1) using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar as such use is performed after that product has been so put on the market; (2) where the act is done privately and on a non-commercial scale for a non-commercial purpose provided that it does not significantly prejudice the economic interests of the owner of the patent; (3) where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention; (4) where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared; (5) where the invention is used in any ship, vessel, aircraft or land vehicle of any other country entering the territory of the Philippines temporarily or accidentally, provided that such invention is used exclusively for the needs of the said ship, vessel, aircraft, or land vehicle and not used for the manufacturing of anything to be sold within the Philippines. Any prior user who, in good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business before the filing date or priority date of the application on which a patent is granted, shall have the right to continue the use thereof as envisaged in such preparation within the territory where the patent produces its effect. A government agency or third person authorized by the government may exploit the invention even without agreement of the patent owner where the public interest so requires; or a judicial or administrative body has determined that the manner of exploitation, by the owner of the patent or his licensee, is anti-competitive.
Marking: no provision.
Assignment: the patentee may assign his patent, and such an assignment, to be acceptable for recording, must: (1) be in writing and in English; (2) be acknowledged before a Notary Public or other officer authorized to administer oaths or perform notarial acts; (3) be certified by same officers (authentication by a Philippine consular representative is not required).
Voluntary licensing: possible; clauses of the contract are strictly regulated by the law. Agreements that contain the mandatory provisions need not be registered. Otherwise, agreements shall be unenforceable unless approved and registered by the Documentation, Information and Technology Transfer Bureau after evaluation in exceptional cases.
Infringement: the making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process in the Philippines, without the authorization of the patentee constitutes patent infringement. The infringer may be liable civilly or criminally or both. In a civil action for infringement, damages may be claimed and the infringer enjoined from further acts of infringement. Damages cannot be recovered for acts of infringement committed before the infringer had known or had reasonable grounds to know of the patent. It is presumed that the infringer has knowledge of the patent if, on the patented product or on the container or package in which the article is supplied to the public, or on the advertising material relating to the patented product or process, are placed the words “Philippine Patent” with the number of the patent. If infringement is repeated after finality of the judgment of the court, a criminal action may likewise be filed against the infringer or anyone in connivance with him, both of whom may be imprisoned or fined, or both, at the discretion of the court.
Lapsed patent: the patent ceases to be in force and effect either by failure to pay the annual fees or by its cancellation. If the patentee fails to pay the annual fee within the time prescribed, a notice of the non-payment is published in the Intellectual Property Office Gazette and the patentee will have six months from the date of publication to pay the fees. Notice of the lapse of a patent for non-payment of any annual fee is published in the Gazette and the lapse shall be recorded in the Register of the Office.
Cancellation of patent: may be instituted by any interested person, under the following grounds: (1) that what is claimed as the invention is not new or patentable; (2) that the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art; and (3) that the patent is contrary to public order or morality.
Compulsory licensing – working: any person may apply to the Director of Legal Affairs for the grant of a license under a particular patent at any time, under any of the following grounds: (1) national emergency or other circumstances of extreme urgency; (2) where the public interest, in particular, national security, nutrition, health or the development of other vital sectors of the national economy as determined by the appropriate agency of the government, so requires; (3) where a judicial or administrative body has determined that the manner of exploitation by the owner of the patent or his licensee is anti-competitive; (4) in case of public non-commercial use of the patent by the patentee, without satisfactory reason; (5) if the patented invention is not being worked in the Philippines on a commercial scale, although capable of being worked, without satisfactory reason. In the last instance however, a license may not be applied for before the expiration of four years from the date of filing or three years from the date of grant of the patent whichever period expires last. The term “worked” or “working” means the manufacture and sale of the patented article, of the patented machine, or the application of the patented process for production, in or by means of a definite and substantial establishment or organization in the Philippines and on a scale which is reasonable and adequate under the circumstances. The importation of the patented article constitutes working or using the patent. As a rule, the license will only be granted after it has been shown that efforts to obtain authorization from the patentee on reasonable commercial terms and conditions have been made but such efforts have not been successful within a reasonable period of time. If after hearing, the Director of Legal Affairs finds the application for compulsory licensing to be meritorious, he will grant the appropriate license, which shall be non-exclusive and non-assignable, and shall be limited to the purpose for which it was authorized. The basic terms and conditions including the rate of royalties shall be fixed by the Director of Legal Affairs. Except in cases where the license was granted to remedy a judicially -or administratively- determined anti-competitive practice, the patentee shall be paid adequate remuneration taking into account the economic value of the grant or authorization.