only the invention is patented may it be given "filing date" is accorded only when all the

protection under the Intellectual Property Law. "requirements" provided under Section 40 are present.
A patent is a valuable asset that must be protected.
-Patent is a set of exclusive rights granted by a state
to an inventor or his assignee for a fixed period of
time in exchange for a disclosure of an invention.
-the ultimate goal however of a patent system is
to bring new designs and technologies into the
public domain through disclosure.
-The patent system thus embodies a carefully
crafted bargain for encouraging the creation and
disclosure of new useful and non-obvious advances in
technology and design, in return for the exclusive
right to practice the und
invention for a number of years.

Three-fold Purpose and Ultimate Goal

-patent law seeks to foster and reward invention;
-it promotes disclosure of inventions to stimulate
further invention and to permit the public practice
-the string requirements for patent protection seek to
ensure that ideas in public domain remain there for the
free use of the public

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.

Non-Patentable Inventions. - The following shall

be excluded from patent protection:
◦ 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
◦ Schemes, rules and methods of performing
mental acts, playing games or doing business, and
programs for computers
◦ Methods for treatment of the human o animal
body by surgery or therapy and diagnostic methods
practiced on the human or animal body.
◦ Plant varieties or animal breeds or essentially
biological process for the production of plants
or animals
◦ Aesthetic creations;
◦ Anything which is contrary to public order
or morality.
Elements
The law prescribes the following elements
of patentability, viz.:
1. Novelty;
2. Inventive step; and
3. Industrial applicability
Novelty-invention shall not be considered new if it
forms part of a prior art.

Filling Date- RA 8293 follows the “first to file” rule and

not the first to invent system
These requirements are:
1. An express or implicit indication that a
Philippine patent is
sought:
2. Information identifying the applicant; and
3.Description of the invention and one or more claims
in Filipino or English.

Priority Date
-Priority date therefore comes into play when there is
an application for patent for the same invention that
was filed in another country.
-The right of priority given to a patent applicant is only
relevant when there are two or more conflicting patent
applications on the same invention.

(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.

Non-Prejudicial Disclosure
-The element of novelty requires that the thing is not yet
known to anyone besides the inventor.
These are disclosure of information contained in the
application as long as the disclosure was:
1. Made during the 12 months preceding the
filing date or the priority date of the application;
2. made by any of the following person:
• 2.1. The inventor;
• A Patent Office and the information was
contained (a) in another application filed by the
inventor application filed without the knowledge or
consent of the inventor by a third party which
obtained the information directly or indirectly from the
inventor;
• A third party which obtained the
information directly or indirectly from the
inventor.

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 inventions

Graham Factors
-The factors a court will look at when
determining obviousness and non-obviousness
by looking at
1. the scope and content of the prior art;
2. the level of ordinary skill in the art;
3. the differences between the claimed invention
and the prior art; and
4. objective evidence of non-obviousness.

Industrial Applicability. - An invention that can be

produced and used in any industry shall be industrially
applicable.
Ownership of Patent Formality Examination
-The right to a patent belongs to the inventor. -The
right to a patent may also be subject of joint- Such other requirements may relate to the following:
ownership as when two a more persons have jointly • Contents of the request for grant of a
made an invention. Philippine patent;
• Priority documents if with claim of convention
Inventions Pursuant to Commission or Employment priority (i.e., file number, date of filing and country of
the priority applications);
In cases where invention is made pursuant to a • Proof of authority, if the applicant is not the
commission, the person who commissions the work inventor;
shall be the owner of the patent unless there was • Deed of assignment;
an agreement to the contrary. • Payment of all fees (e.g., excess claims) ;
• Signatures of the applicants;
Procedure Outline • Identification of the inventor; and
The procedure for the grant of patent may • Formal drawings.
be summarized as follows:
1. Filing of the application If the formality examination reveals that the drawings
2. Accordance of the filing date were filed,the Bureau of Patents shall require the
3. Formality examination applicant to file within two months
4. •Classification and Search
5. Publication of the application the patent examiner shall determine the requirement of
6. Substantive examination novelty. The Office uses the International Patent
7. Grant of the patent Classification for the purpose of classification.
8. Publication upon grant
9. Issuance of the certificate The Intellectual Property Search Report is drawn up
on the basis of the claims, description, and the
Filing of the Application drawings if there is any:
The patent application shall be in Filipino or
English and shall contain the following: • The search report shall mention those
• A request for the grant of a patent; documents, available at the Office at the time of
• A description of the invention; drawing up the report, which may be taken into
• Drawings necessary for the understanding of consideration in assessing novelty and inventive step of
the invention; the invention.
• One or more claims; and • The search report shall distinguish between
• An abstract. cited documents published before the date of priority
No patent may be granted unless the application claimed, between such date of priority and the date of
identifies the inventor. If the applicant is not the filing, and on or after the date of filing.
inventor, the Office may require to submit said • The search report shall contain the classification
authority. of the subject matter of the application in accordance
with the International Patent Classification.
Prohibited Matter • The search report may include documents
-a statement or other matter contrary to "public cited in a search established in the corresponding
order" or morality; foreign application.
-statement disparaging the products or processes of
any particular person or other than the applicant, or The application shall be published in the IPO Gazette
the merits or validity of applications or patents of any together with a search document established by or on
such person. behalf of the Office citing any document after the
-any statement or other matter obviously irrelevant or expiration of 18 months from the filing date or priority
unnecessary under the circumstances. date.

Unity of Invention However, the applicant may request for the early
publication of is application provided that the:
-The application should always relate to one 1. applicant submits a written waiver of the: (a)
invention only or to a group of inventions forming a above-mentioned 18-month period, and (b)
single general inventive concept. establishment of a search report;
2. publication shall not be earlier than six
months from filing date; and
3. required fee for early publication is paid in full.
Confidentiality Before Publication Amendment of Application

patent application, which has not yet been An applicant may amend the patent application during
published, and all relate documents, shall not be the examination provided that such amendment will
made available for inspection without the consent of not include new matter outside the scope of the
the applicant. only confidential befor its publication. disclosure contained in the application as filed.
The confidentiality in patent applications under the Should amendments touching the merits of the
Intellectual Property Code is not absolute since a application be presented after final rejection, or after
party may alread intervene after the publication of the appeal has been taken, or when such amendment
application. might not otherwise be proper,

Rights Conferred after Publication Grant of patent

-ultimate objective of the patent application.
The applicant shall have all the rights of a patentee Patent of course is granted if the application meets
under Section 76 against any person who, without his the requirements of both the law and the
authorization, exercised any of the rights implementing rules and regulations
-shall take effect on the date of the publication of the
Note also the persons liable under Section 46. grant of the patent in the IPO Gazette
. They should have
either actual knowledge that the invention he was Refusal of the Application
using was a subject matter of a published application -In case of refusal or denial of the application, the
or at least received written notice that the invention he remedy is to appeal the decision of the examiner
was using was a subject matter of a published to the Director of Bureau of Patents.
application subject to certain conditions.
Publication of Grant of Patent
Observation by Third Parties -It shall be published in the IPO Gazette within the
Any person may present observations in writing time prescribed by the Regulations. Any interested
concerning the patentability of the invention. party may inspect the complete descriptions, claims,
and drawings of the patent on file with the Office.
Substantive Examination
It is the duty of the applicant to file a written request Issuance of the Certificate or Letters Patent
for substantive examination within six months from -The patent shall be issued in the name of the
the date of publication Republic of the Philippines. under the seal of the
Payment of fees which is an integral part of the Office and shall be signed by the Director, and
process will also be a factor in the examination. registered together with the description, claims, and
Withdrawal of the request for examination shall be drawings, if any, in books and records of the Office.
irrevocable and shall not authorize the refund of any
fee. Term of Patent
-The term of a patent shall be 20 years from the filing
Law Contest date of the application.
-is not absolute however since a patent shall cease
An application is prosecuted ex parte by the to be in force and effect if any prescribed annual
applicant; that is, the proceedings are like a lawsuit in fees therefor is not paid within the prescribed time or
which there is a plaintiff, but no defendant, if the patent is cancelled in accordance with the
provisions of the law and implementing rules and
Case of "Tough Love" regulations.After the expiration of the patent, the
monopoly ceases to exist and the subject matter of
A hard: fought application will produce a patent patent becomes part of public domain.
much more likely to stand in court than a patent
which has slid through the Bureau easily. Annual Fees
-The first annual fee on a patent shall be due and
first, the rejections have given the applicant or his payable on the expiration of four years from the date
attorney suggestions of strengthening amendments -The obligation to pay the annual fees shall terminate,
so that his claims have been made infinitely less should the application be withdrawn, refused or
vulnerable than would be otherwise possible; cancelled.
secondly, every point raised by the Examiner and -a graced of six months from the due date shall
finally decided by the Bureau in favor of the applicant be granted upon payment of prescribed surcharge
will give him a prima facie standing on that point in for delayed payment.
court.
Surrender of Patent
-the owner of the patent may surrender his patent -If the fee for the printing of a new patent is not paid in
to the office of cancellation. If another person give due time, the patent should be revoked.
notice for the cancellation of the patent, the bureau -If the patent is amended, the Bureau shall, at the
shall notify the proprietor of the patent. same time as it publishes the mention of the
cancellation decision, publish the abstract,
Correction of mistakes representative claims and drawings indicating clearly
-The Director of Patent has the power to correct, what the amendments consist
without fee, any mistake in a patent incurred through
the fault of the Office Effect of Cancellation of Patent or Claim
-This is done upon written petition of the patentee or -The rule is that the decision or order to cancel the
assignee of record and upon tender to the Office of patent or claim by the Director of Legal Affairs shall be
the copy of the patent issued. immediately executory even pending appeal unless this
decision is restrained by the Director General
Changes in Patents
The owner of a patent shall have the right to Person Declared by Final Court Order as Having Right
request the Bureau to make the changes in the to the Patent
patent in order to: -If a person declared by final court order or decision
• Limit the extent of the protection conferred as having the right to the patent, such person may,
by it; within three months after the decision has become
• Correct obvious mistakes or to final:
correct clerical errors; and • Prosecute the application as his
• Correct mistakes or errors, other than own application in place of the applicant;
those referred to in letter (b), made in good faith • File a new patent application in respect of the
same invention;
The grounds for cancellation are the following: • Request that the application be refused; or
• The invention is not new or patentable; • Seek cancellation of the patent, if one
• The patent does not disclose the has already been issued
invention in a manner sufficiently clear and
complete for it to be carried out by any person True and Actual Inventor
skilled in the art; or -If a person, who was deprived of the patent without
• The patent is contrary to public order or his consent or through fraud is declared by final court
morality order or decision to be the true and actual inventor, the
Petition for Cancellation court shall order for his substitution as patentee, or at
-The petition for cancellation shall be in writing, the option of the true inventor, cancel the patent, and
verified by the petitioner award actual and other damages in his favor if
-include a statement of the facts to be relied upon, warranted by the circumstances.
and filed with the Office. Copies of printed Publication of the Court Order
publications or of patents of other countries, and -In both instances referred above, the court shall
other supporting documents mentioned in the furnish the Office a copy of the order or decision
petition shall be attached thereto, together with the
translation thereof in English, if not in English Time to File Action in Court
language. -shall be filed within one year from the date of
Jurisdiction and Notice of Hearing publication made in accordance with Sections 44 and
-The jurisdiction to hear the petition for cancellation 51, respectively.
is with the Director of Legal Affairs.
-Notice of the filing of the petition shall be published Rights Conferred by Patent
in the IPO Gazette.
-In cases involving highly technical issues, -If a product, the patent owner shall have the exclusive
committee composed of the Director of Legs right to restrain, prohibit and prevent any unauthorized
Affairs as chairman and two members who have person or entity from making, using, offering for sale,
the experience & expertise in the field of selling or importing that product.
technology -If a process, the patent owner shall have the exclusive
-The decision of the Committee shall be appealabe right to restrain, prevent or prohibit any unauthorized
to the Director General. person or entity from using the process,
Cancellation of the Patent
-If the Committee finds that a case for cancellation
has been proven, it shall order the patent or any
specified claim or claims thered cancelled.
-If the Committee finds that, it may decide to
maintain the patent as amended provided that the
fee for printing of a new patent is paid
Civil Action for Infringement -Using a patented product which has been put on the
market in the Philippines by the owner of the product, or
the use of a patented process without the with his express consent, insofar as such use is
authorization of the patentee constitutes patent performed after that product has been so put on the
infringement. said market: shall be available to any government
agency or any private third party;
Any patentee, or anyone possessing any right, title or -Where the act is done privately and on a non-
interest in and to the patented invention, whose rights commercial scale or for a non-commercial purpose:
have been infringed, may bring a civil action before a -Where the act consists of making or using exclusively for
court of competent jurisdiction experimental use of the invention for scientific purposes
-solely for purposes reasonably related to the
Infringement Action by a Foreign National development and submission of information and issuance
of approvals by government
international conventions and reciprocity-extends -Where the act consists of the preparation for individual
reciprocal rights to nationals of the Philippines by law, cases, in a pharmacy or by a medical professional,
shall be entitled to benefits to the extent necessary to -Where the invention is used in any ship, vessel, aircraft,
give effect to any provision of such convention or land vehicle of any other country entering the territory
of the Philippines and not used for manufacturing of
Presumptions in Patent Infringement Actions anything to be sold within the PH.
-In ordering the defendant to prove that the The Doctrine of Equivalents provides that an infringement
process to obtain the identical product is different also takes place when a device appropriates a prior
from the patented process, the court shall adopt invention by incorporating its innovative concept and,
business secrets. although with some modification and change, performs
-Damages cannot be recovered for acts of substantially the same function in substantially the same
infringement commited before the infringer had way to achieve substantially the same result.
known; Or had resonable grounds to know of the
patent. Voluntary License Contract
A presumption that the infringer had wown the
existence of the patent and therefore provides -There are therefore two objectives of the law, first is to
valuable asistance to the patent owner in his encourage transfer and dissemination of technology and
action against the person being sued for second is to prevent practices that may have an adverse
infringement. effect on competition and trade. In order to achieve these
objects, the law imposes certain restrictions on the
Prescription in Action for Infringement contracts and the stipulations thereto that will be entered
-No damages can be recovered for acts of into by the licensor and the licensee.
infringement committed more than four years before
the institution of the action for infringement. Prohibited Clauses
-Those that contain restrictions regarding the volume
Defenses in Action for Infringement and structure of production;
-the defendant, in addition to other defenses available -Those that establish a full or partial purchase option in
to him, may show the invalidty of the patent, or any favor of the licensor;
claim thereof, on any of the grounds on which a -Those which require payments for patents and other
petition of cancellation can be brought industrial property rights after their expiration,
termination arrangement
Criminal Action for Infringement
Mandatory Provisions
lf infringement is repeated, the infringer be criminally -That the laws of the Philippines shall govern the
liable therefor and, upon conviction, shall suffer interpretation of the same and in the event of litigation,
imprisonment for the period of not less than 6 the venue shall be the proper court in
months and not more than 3 years, fine of not less -Continued access to improvements in techniques and
than 100,000 but not more than 300,000. processes related to the technology shall be made
available
limitations on patent rights -Arbitration Rules of the United Nations Commission on
-The owner of a patent has no right to prevent third International Trade Law (UNCITRAL) or the Rules of
parties from performing without his authorization, the Conciliation and Arbitration of the International Chamber
acts referred to in Section 72 of R.A. 8293 as of Commerce (ICC) shall apply and the venue of
amended by R.A. 9502 or the Universally Accessible arbitration shall be the Philippines or any neutral country;
Cheaper and Quality Medicines Act of 2008. -The Philippine taxes on all payments relating to the
technology transfer arrangement shall be borne by the
licensor.
Rights Reserved to Licensor and Licensee
-the grant of a license shall not prevent the licensor
from granting further licenses to third person nor from
exploiting the subject matter of the technology transfer
arrangement himself.
-The licensee shall be entitled to exploit the subject
matter of the technology transfer arrangement

COMPULSOrY LICENSING
-licenses are awarded against the will of the patent
owner.
-Director of Legal Affairs has original jurisdiction over
petitions for compulsory licensing of patents.
-may grant a license to exploit patented invention
under the grounds

GROUNDS
-National emergency or other circumstances of
extreme urgency;
-public interest, in particular, national security,
outrtion, healt or dine dev eletermined by the
appropriate nutrition, health or the development of
other vital sectors agency of the Government, so
requires;
-judicial or administrative body has determined that
the manner of exploitation by the owner of the patent
or his licensee is anti-competitive;
-public non-commercial use of the patent by the
patentee, without satisfactory reason;
-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; and
-Where the demand for patented drugs and medicines
is not being met to an adequate extent and on
reasonable terms, as determined by the Secretary of
the Department of Health.