Introduction:

A Patent is a grant issued by the government through the Intellectual Property Office of the
Philippines (IPO). It is an exclusive right granted for a product, process or an improvement of a
product or process which is new, inventive and useful. This exclusive right gives the inventor
the right to exclude others from making, using, or selling the product of his invention during the
life of the patent.

A patent has a term of protection of twenty (20) years providing an inventor significant
commercial gain. In return, the patent owner must share the full description of the invention.
This information is made available to the public in the form of the Intellectual Property Official
Gazette and can be utilized as basis for future research and will in turn promote innovation and
development.

Patentable inventions offer a technical solution to a problem in any field of human activity.
However, theories, mathematical methods, methods of treatment and artistic creations are
Non-Patentable inventions.

Utility Models

A utility model is a patent-like intellectual property right to protect inventions. This type of right
is only available in some countries. Although a utility model is similar to a patent, it is generally
cheaper to obtain and maintain, has a shorter term (generally 6 to 15 years), shorter grant lag,
and less stringent patentability requirements.

A Utility Model is a protection option, which is designed to protect innovations that are not
sufficiently inventive to meet the inventive threshold required for standard patents application.
It may be any useful machine, implement, tools, product, composition, process, improvement or
part of the same, that is of practical utility, novelty and industrial applicability. A utility model is
entitled to seven (7) years of protection from the date of filing, with no possibility of renewal.

Utility model registration is intended to accommodate local industries, small businesses or

entities by providing an industrial property right that is relatively inexpensive, quick, easy to
obtain and suited to innovations having short commercial life. Utility model registration is a
useful tool in supporting the first to market place advantage. It promotes progress of
technology and encourages innovation among small to medium businesses and the local
industry.

It is inexpensive and easy to obtain, however it can't be enforced until after examination has
been carried out and the registration is certified. A utility model is examined to determine if it
meets the requirements embodied in the existing Utility Model law and its Implementing Rules
and Regulations (IRR). It need not undergo substantive examination before it is certified.

You can apply for Utility Model registration directly with the IP Philippines. An application for
registration should contain a duly accomplished request for registration as prescribed by the
Bureau, specification or description containing the following: (a). title; (b) technical field; (c).
background of the Utility Model; (d) brief description of the several views of the drawings, if
any; (e) detailed description; (f) claim or claims; (g) drawings, if any; and (h) abstract of the
disclosure.
Conversion of Patent to 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.1

At any time before the grant or refusal of a utility model registration, an applicant for a utility
model registration may, upon payment of the prescribed fee, convert his application into a
patent application, which shall be accorded the filing date of the initial application.2

Industrial Design

An industrial design is any composition of lines or colors or any three-dimensional form,

whether or not associated-with lines or colors: provided that such composition or form gives a
special appearance to and can serve as pattern for an industrial product or handicraft.

An industrial design is the ornamental or aesthetic aspect of an article. The design may consist
of three-dimensional features, such as the shape or surface of an article, or of two-dimensional
features, such as patterns, lines or color. Industrial designs are applied to a wide variety of
products of industry and handicraft: from technical and medical instruments to watches,
jewelry, and other luxury items; from house wares and electrical appliances to vehicles ; from
textile designs to leisure goods. To be protected under most national laws, an industrial design
must be non-functional. This means that an industrial design is primarily of an aesthetic nature
and any technical features of the article to which it is applied are not protected.

When an industrial design is protected, the owner – the person or entity that has registered the
design – is assured an exclusive right against unauthorized copying or imitation of the design by
third parties. This helps to ensure a fair return on investment. An effective system of protection
also benefits consumers and the public at large, by promoting fair competition and honest trade
practices, encouraging creativity, and promoting more aesthetically attractive products.

Protecting industrial designs helps economic development, by encouraging creativity in the

industrial and manufacturing sectors, as well as in traditional arts and crafts. They contribute to
the expansion of commercial activities and the export of national products. Industrial designs
can be relatively simple and inexpensive to develop and protect. They are reasonably accessible
to small and medium-sized enterprises as well as to individual artists and craftsmen, in both
industrialized and developing countries.

The protection granted lasts for five years, extendible twice for the same duration.

What are Patentable?

1
Sec. 110.1, R.A. 8293, as amended
2
Sec. 110.2, ibid
Under Sec. 21 of the Intellectual Property Code3, “any technical solution of a problem in any
field of human activity which is new (novelty), involves an inventive step, and is industrially
applicable shall be Patentable.”

Novelty - Sec. 23 of the Intellectual Property Code4 explicitly states that an invention shall not
be considered new if its forms part of a prior art. Under the said Code5, prior art shall consist
of:

“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

The whole contents of an application for a patent, utility model, or

industrial design registration, published in accordance with this
Act, 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 application which has validly
claimed the filing date of an earlier application under Section 31 of
this Act, shall be prior art with effect as of the filing date of such
earlier application: Provided further, That the applicant or the
inventor identified in both applications are not one and the same.”

Inventive Step - An invention involves an inventive step if, having regard to prior art, it is not
obvious to a person skilled in the art at the time of the filing date or priority date of the
application claiming the invention.6

Industrial Application - An invention that can be produced and used in any industry shall be
industrially applicable.7

Ownership of a Patent

The right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or more
persons have jointly made an invention, the right to a patent shall belong to them jointly.8

If two (2) or more persons have made the invention separately and independently of each
other, the right to the 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.9

If a person referred to in the preceding paragraph other than the applicant, is declared by final
court order or decision as having the right to the patent, such person may, within three (3)
months after the decision has become final:

3
R.A. 8293, as amended
4
Ibid
5
Sec. 24 of R.A. 8293
6
Sec. 26, ibid
7
Sec. 27, ibid
8
Sec. 28, ibid
9
Sec. 29, ibid
(a) Prosecute the application as his own application in place of the applicant;
(b) File a new patent application in respect of the same invention;
(c) Request that the application be refused; or
(d) Seek cancellation of the patent, if one has already been issued.10

If a person, who was deprived of the patent without his consent or through fraud is declared by
final court order or decision to be the true and actual inventor, the court shall order for his
substitution as patentee, or at the option of the true inventor, cancel the patent, and award
actual and other damages in his favor if warranted by the circumstances.11

Application of Patents

There are two (2) Routes available in filing a patent application in the Philippines, namely:

- Patent Cooperation Treaty (PCT) Route; and

- Paris Convention/Direct Route.

Patent Cooperation Treaty (PCT) Route

The PCT route is divided into two phases, namely the national phase and the international
phase.

To enter the national phase and get a date of entry, the PCT applicant must furnish the
Intellectual Property Office (IPO), not later than thirty (30) months from the priority date under
Art. 22 (as amended by IPO Office Order) or Art 39(1)(a), the following:

- Request for National Phase Entry;

- English translation of the international application if it was filed in another language or a
copy of the international application in English as filed if the applicant has not yet
received Form PCT/IB/308; and
- Copy of the amendments under Article 19 and/or Article 34 (if applicable) in English.

The 30-month deadline for entering the national phase for a PCT application may be extended
by one (1) month subject to the payment of an extension fee/late entry fee.

The patent application shall be in Filipino or English and shall contain the following:

(a) A request for the grant of a patent;

(b) A description of the invention;
(c) Drawings necessary for the understanding of the invention;
(d) One or more claims; and
(e) An abstract.12

No patent may be granted unless the application identifies the inventor. If the applicant is not
the inventor, the Office may require him to submit said authority.13

10
Sec. 67, ibid
11
Sec. 68, ibid
12
Sec. 32, ibid
13
Sec. 33, ibid
The Philippines follows the first-to-file rule. Upon receipt of a request form for the granting of a
Philippine patent containing the name and address of the applicant and the resident agent, the
specification and claim and drawings, if any, the Intellectual Property Office (IPO) issues an
acknowledgment receipt containing the application number and official filing date.

Priority date may be claimed based on a previous application for the same invention filed in
another country, which by treaty, convention or law affords similar privileges to Filipino citizens.
The priority date is the date when the foreign application was first filed.

Once the acknowledgment receipt is issued and the required fee has been paid, compliance
with the other requirements, also listed below, will be checked. Upon compliance, the
application will be classified and a search will be conducted to determine the prior art. The
application will then be published electronically in the IPO’s e-Gazette, with a search document
citing prior art documents after 18 months from the filing date or priority date. For urgent
cases, advance publication may be requested for a fee.

Within six months of the date of publication, a request for substantive examination may be
filed, in order to determine whether a patent application meets the requirements of
patentability.14 If the application meets the requirements, and no adverse information is filed by
a third party, a patent may be granted, and this grant will be published in the e-Gazette.

In addition, the Philippines is a PCT signatory so the applicant may designate the country in an
international PCT application. Upon entry to the national phase, the application, received by the
IPO as a designated office will have the same filing or priority date as the international
application.

The additional documents for a formality examination are an abstract, the details of the priority
claim including the filing date, file number, country of origin, the authority to file such as the
assignment document, or proof of authority if the applicant is not the inventor, and the power
of attorney for the resident agent.

14
Sec. 48, ibid