Intellectual Property

I. Intellectual Property Office

i. Organizational structure of the IPO
SECTION 6. The Organizational Structure of the IPO. —
6.1. The Office shall be headed by a Director General who shall be
assisted
by two (2) Deputies Director General.
6.2. The Office shall be divided into six (6) Bureaus, each of which shall
be
headed by a Director and assisted by an Assistant Director. These
Bureaus are:
a. The Bureau of Patents;
b. The Bureau of Trademarks;
c. The Bureau of Legal Affairs;
d. The Documentation, Information and Technology Transfer Bureau;
e. The Management Information System and EDP Bureau; and
f. The Administrative, Financial and Personnel Services Bureau.
6.3. The Director General, Deputies Director General, Directors and
Assistant Directors shall be appointed by the President, and the other
officers and employees of the Office by the Secretary of Trade and
Industry, conformably with and under the Civil Service Law .

Director General

Deputy Director Deputy Director

General General

IP Enforcement

Office for AdvoComm IP Academy IPFOU/IPSO

Strategy
Management

Bureau Offices

Bureau of Bureau of Bureau of Bureau of Documentatio Manageme Financial

Legal Patents Trademarks Copyright & n, Information nt management
Affairs Related & Tech Informatio &
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Bureau Services
 ii. Functions:
1. SECTION 8. The Bureau of Patents. — The Bureau of Patents shall
have the
following functions:
8.1. Search and examination of patent applications and the grant of
patents;
8.2. Registration of utility models, industrial designs, and integrated
circuits; and
8.3. Conduct studies and researches in the field of patents in order to
assist
the Director General in formulating policies on the administration and
examination of patents.

2. SECTION 9. The Bureau of Trademarks. — The Bureau of

Trademarks shall
have the following functions:
9.1. Search and examination of the applications for the registration
of
marks, geographic indications and other marks of ownership and the
issuance of the certificates of registration; and
9.2. Conduct studies and researches in the field of trademarks in
order to
assist the Director General in formulating policies on the
administration and examination of trademarks.

3. SECTION 10. The Bureau of Legal Affairs. — The Bureau of Legal

Affairs shall have the following functions:
10.1. Hear and decide opposition to the application for registration of
marks; cancellation of trademarks; subject to the provisions of Section
64, cancellation of patents, utility models, and industrial designs; and
petitions for compulsory licensing of patents;
10.2.a. Exercise original jurisdiction in administrative complaints for
violations of laws involving intellectual property rights: Provided,
That its jurisdiction is limited to complaints where the total
damages claimed are not less than Two hundred thousand pesos
(P200,000): Provided further, That availment of the provisional
remedies may be granted in accordance with the Rules of Court.
The Director of Legal Affairs shall have the power to hold and
punish for contempt all those who disregard orders or writs issued
in the course of the proceedings.
b. After formal investigation, the Director for Legal Affairs may
impose
one (1) or more of the following administrative penalties:
i. The issuance of a cease and desist order which shall
specify the acts that the respondent shall cease and
desist from and shall require him to submit a compliance
report within a reasonable time which shall be fixed in the
order;
ii. The acceptance of a voluntary assurance of compliance or
discontinuance as may be imposed. Such voluntary
assurance may include one or more of the following:
1. An assurance to comply with the provisions of the
intellectual property law violated;
2. An assurance to refrain from engaging in unlawful
and unfair acts and practices subject of the formal
investigation;
3. An assurance to recall, replace, repair, or refund
the money value of defective goods distributed in
commerce; and
4. An assurance to reimburse the complainant the
expenses and costs incurred in prosecuting the
case in the Bureau of Legal Affairs. The Director of
Legal Affairs may also require the respondent to
submit periodic compliance reports and file a bond
to guarantee compliance of his undertaking;
iii. The condemnation or seizure of products which are
subject of the offense. The goods seized hereunder shall
be disposed of in such manner as may be deemed
appropriate by the Director of Legal Affairs, such as by
sale, donation to distressed local governments or to
charitable or relief institutions, exportation, recycling into
other goods, or any combination thereof, under such
guidelines as he may provide;
iv. The forfeiture of paraphernalia and all real and personal
properties which have been used in the commission of the
offense;
v. The imposition of administrative fines in such amount as
deemed reasonable by the Director of Legal Affairs, which
shall in no case be less than Five thousand pesos
(P5,000) nor more than One hundred fifty thousand pesos
(P150,000). In addition, an additional fine of not more
than One thousand pesos (P1,000) shall be imposed for
each day of continuing violation;
vi. The cancellation of any permit, license, authority, or
registration which may have been granted by the Office,
or the suspension of the validity thereof for such period of
time as the Director of Legal Affairs may deem reasonable
which shall not exceed one (1) year;
vii. The withholding of any permit, license, authority, or
registration which is being secured by the respondent
from the Office;
viii. The assessment of damages;
ix. Censure; and
x. Other analogous penalties or sanctions. (Secs. 6, 7, 8,
and 9, Executive Order No. 913 [1983]a)

II. Law on Patents

A. What is the purpose of the Patent Law?
The purpose of the patent law is the balance of the interests of investors
on one hand and the interests of the public on the other hand. The
investors are rewarded with a limited exclusive right on their invention,
for providing technical progress to the public. It gives its owner the legal
right to exclude others from making, using, or selling an invention for a
limited period of years in exchange for publishing an enabling public
disclosure of the invention.

B. What is Patentable Invention?

SECTION 21. Patentable Inventions. — Any technical solution of a
problem in any field of human activity which is new, involves an inventive
step and is industrially applicable shall be patentable. It may be, or may
relate to, a product, or process, or an improvement of any of the
foregoing. (Sec. 7, R.A.No. 165a)

C. What are non-Patentable Inventions?

SECTION 22. Non-Patentable Inventions. — The following shall be
excluded
from patent protection:
22.1. Discoveries, scientific theories and mathematical methods;
22.2. Schemes, rules and methods of performing mental acts,
playing games
or doing business, and programs for computers;
22.3. Methods for treatment of the human or animal body by
surgery or
therapy and diagnostic methods practiced on the human or animal
body. This provision shall not apply to products and composition for
use in any of these methods;
22.4. Plant varieties or animal breeds or essentially biological
process for the
production of plants or animals. This provision shall not apply to
microorganisms and non-biological and microbiological processes.
Provisions under this subsection shall not preclude Congress to
consider the enactment of a law providing sui generis protection of
plant varieties and animal breeds and a system of community
intellectual rights protection:
 22.5. Aesthetic creations; and
22.6. Anything which is contrary to public order or morality. (Sec. 8,
R.A.No. 165a)

D. Define:
1. Novelty (The quality of being new, original, or unusual)
An invention shall be considered new or capable of being patented if it
was known or used by the others in the Philippines before the ionvention
thereof by the inventor named in the application for patent for the
invention; or if it was patented or described in any printed publication in
the Philippines or any foreign country more than one year before the
application for patent therefor, or it had been in public use or on sale in
the Philippines for more than one year before the application for patent
therefor, or if it is subject matter of a validity issued patent in the
Phiulippines granted on an application for patent.

2. Prior Art
SECTION 24. Prior Art. — Prior art shall consist of:
24.1. 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
24.2. 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. (Sec. 9, R.A. No. 165a)

3. Inventive Step
SECTION 26. 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.

4. Industrial Applicability
SECTION 27. Industrial Applicability. — An invention that can be
produced and used in any industry shall be industrially applicable.

5. Non-prejudicial Disclosure
25.1. The disclosure of information contained in the application
during the twelve (12) months preceding the filing date or the priority
date of the application shall not prejudice the applicant on the ground of
lack of novelty if such disclosure was made by:
a. The inventor;
b. A patent office and the information was contained (a) in another
application filed by the inventor and should not have been disclosed
by the office, or (b) in an application filed without the knowledge or
consent of the inventor by a third party which obtained the
information directly or indirectly from the inventor; or
c. A third party which obtained the information directly or indirectly
from the inventor.

E. What are the classes of patentable inventions?

* Machines (devices composed of interoperating parts)
* Manufactured articles (products made from raw materials)
* Compositions of matter (combinations of chemicals)
*Processes (sequences of steps)

F. What are non-patentable inventions?

* A discovery, scientific theory or mathematic method
* An aesthetic creation
* A scheme, rule or method for performing a mental act, playing game or
doing business or a computer program
* A presentation of information
* A procedure for surgical or therapeutic treatment or diagnosis to be
practiced on humans or animals

G. Who are entitled to a patent right?

SECTION 28. Right to 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. (Sec.10, R.A. No. 165a)

 First to File Rule

SECTION 29. First to File Rule. — 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. (3rd sentence, Sec. 10, R.A. No. 165a.)

 Who owns the inventions/created pursuant to a commission?

SECTION 30. Inventions Created Pursuant to a Commission. —
30.1. The person who commissions the work shall own the patent,
unless otherwise provided in the contract. 30.2. In case the employee
made the invention in the course of his employment contract, the patent
shall belong to:
 a. The employee, if the inventive activity is not a part of his regular
duties even if the employee uses the time, facilities and materials
of the employer.
b. The employer, if the invention is the result of the performance of
his regularly-assigned duties, unless there is an agreement, express or
implied, to the contrary

 Right of Priority
SECTION 31. Right of Priority. — An application for patent filed by any
person who has previously applied for the same invention in another
country which by treaty, convention, or law affords similar privileges to
Filipino citizens, shall be considered as filed as of the date of filing the
foreign application: Provided, That:
a. the local application expressly claims priority;
b. it is filed within twelve (12) months from the date the earliest
foreign application was filed; and
c. a certified copy of the foreign application together with an English
translation is filed within six (6) months from the date of filing in
the Philippines. (Sec. 15, R.A. No. 165a)

H. Patent Application
SECTION 32. The Application. —
32.1. 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.
32.2. 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. (Sec. 13, R.A. No. 165a)

I. Procedure for grant of patent

* Filing an application. For a patent to be granted, an eligible person
must file an application in the form prescribed by the patent office
* Divisional Applications. Each patent application may claim protection
only for a single division
* Examination. Once an application has been filed with the patent office,
a number of additional steps must be followed before a patent may be
issued
* Acceptance, publication and sealing. The commissioner of patents must
notify an applicant of the decision to accept or refuse a patent
application, and must publish notice of the decision in the official journal
of patents
  Term of a patent
SECTION 54. Term of Patent. — The term of patent shall begin on a
date when the patent is issued as shown on the face there. The term of a
patent shall be twenty (20) years from the filing date of the application.
(Sec. 21, R.A. No. 165a) However, a patent shall cease to be in force and
effect if the patentee fails to pay the prescribed annual fees within the
prescribed times hereinafter neither provided nor if the patent is
cancelled in accordance with the provisions of this act.

J. Remedies of a person with a right to a patent

SECTION 67. Patent Application by Persons Not Having the Right
to a Patent. —
67.1. If a person referred to in Section 29 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:
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.
67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis
to a new application filed under Subsection 67.1

K. Rights of Patentees and infringement of patents

SECTION 71. Rights Conferred by Patent. —
71.1. A patent shall confer on its owner the following exclusive rights:
a. Where the subject matter of a patent is a product, to restrain,
prohibit and prevent any unauthorized person or entity from
making, using, offering for sale, selling or importing that product;
b. Where the subject matter of a patent is 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.
71.2. Patent owners shall also have the right to assign, or transfer by
succession the patent, and to conclude licensing contracts for the
same. (Sec. 37, R.A. No. 165a

L. Voluntary Licensing
SECTION 85. Voluntary License Contract. — To encourage the
transfer and dissemination of technology, prevent or control practices
and conditions that may in particular cases constitute an abuse of
intellectual property rights having an adverse effect on competition and
trade, all technology transfer arrangements shall comply with the
provisions of this Chapter.

M. Compulsory Licensing
SECTION 93. Grounds for Compulsory Licensing. — The Director of
Legal Affairs may grant a license to exploit a patented invention, even
without the agreement of the patent owner, in favor of any person who
has shown his capability to exploit the invention, under any of the
following circumstances:
93.1. National emergency or other circumstances of extreme
urgency;
93.2. 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; or
93.3. 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; or
93.4. In case of public non-commercial use of the patent by the
patentee, without satisfactory reason;
93.5. If the patented invention is not being worked in the Philippines
on a commercial scale, although capable of being worked, without
satisfactory reason: Provided, That the importation of the patented
article shall constitute working or using the patent. (Secs. 34, 34-A,
34-B, R.A. No. 165a)

N. Registration of Utility Models

SECTION 108. Applicability of Provisions Relating to Patents. —
108.1. Subject to Section 109, the provisions governing patents shall
apply, mutatis mutandis, to the registration of utility models.
108.2. Where the right to a patent conflicts with the right to a utility
model registration in the case referred to in Section 29, the said provision
shall apply as if the word "patent" were replaced by the words
"patent or utility model registration". (Sec. 55, R.A. No. 165a)

O. Industrial Designs and Layout designs of integrated circuits

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. (Sec. 55,
R.A. No. 165a) Any new and original creation relating to the features of
shape, pattern, configuration, ornamental or artistic appearance of an
article or industrial product may be protected as an industrial design by
the author in the same manner and subject to the same provisions and
requirements as relate to patents for invention in so far as they are
applicable except as otherwise hereinafter provided.