LAW ON PATENTS Statutory Classes of Patentable Inventions/Utility Models:

1. Useful machine (e.g. threshing floor)

Patent – a set of exclusive rights granted by a state to an 2. Product (e.g. pharmaceutical product - vaccine)
inventor or his assignee for a fixed period of time in exchange 3. Process (e.g. process of using column panels)
for a disclosure of an invention. 4. Improvement of any of the foregoing
5. Microorganism (e.g. treating a plant)
Ultimate goal of a patent system 6. Non-biological or microbiological processes (e.g.
- To bring new designs and technologies into the isolating bacteria from soil)
public domain through disclosure
Elements of Patentability:
Threefold Purposes of the Patent Law: 1. Novelty or New
1. Patent law seeks to foster and reward invention. 2. Inventive Step
2. It promotes disclosures of inventions to stimulate 3. Industrial applicability
further invention and to permit the public to practice
the invention once the patent expires *Inventive step – differentiates patents from utility models
3. The stringent requirements for patent protection
seek to ensure that ideas in the public domain Prior art – everything that is already available to the public
remain there for the free use of the public. anywhere in the world prior to the filing date or priority date
of the application
Patentable Inventions – any technical solution of a problem
in any field of human activity which is new, involves an Filing Date – accorded only when all the requirements
inventive step and is industrially applicable shall be provided under Sec. 40 are present
patentable.
Requirements:
Non-Patentable Inventions: 1. An express or implicit indication that a Philippine
1. Discoveries, scientific theories and mathematical patent is sought
methods 2. Information identifying the applicant
- In the case of drugs and medicines – the mere 3. Description of the invention and one or more claims
discovery of a new form or new property of a in Filipino or English
known substance which does not result in the
enhancement of the known efficacy of that *If any of these elements is not submitted within the period
substance set – application shall be considered withdrawn
- Or the mere discovery of any new property or
new use for a known substance Priority Date – comes into play when there is an application
- Or the mere use for a known substance for patent for the same invention that was filed in another
- Or the mere use of a known process – unless country.
such known process results in a new product
that employs at least one new reactant Non-Prejudicial Disclosure:
2. Schemes, rules and methods of performing mental 1. Made during the 12 months preceding the filing date
acts, playing games or doing business, and programs or the priority date of the application
for computers 2. The disclosure was made by any of these persons:
3. Methods for treatment of the human or animal body a. The inventor
by surgery or therapy and diagnostic methods b. A Patent Office and information should not
practiced on the human or animal body have been disclosed by the office or
- Shall not apply to products and composition for information was directly or indirectly obtained
use in any of these methods (patentable) from the inventor
4. Plant varieties or animal breeds or essentially c. Third party which obtained information
biological process for the production of plants or directly or indirectly from the inventor
animals
- Shall not apply to microorganisms and non- *Disclosures that will not prejudice the application
biological and microbiological processes - Application will not be denied for lack of novelty
5. Aesthetic creations
6. Anything which is contrary to public order or Ownership of Patent:
morality 1. Inventor
2. Heirs
3. Assigns

*Patent is a property – it may be acquired through succession

or assignment
*Patent may also be subject of joint-ownership – two or more - Director General
persons have jointly made an invention - Court of Appeals

Inventions Pursuant to a Commission or Employment *Different with decisions of Director of Documentation,

Patent shall belong to: Information and Technology Transfer Bureau – exclusive
1. Employee – if the inventive activity is not a part of appellate jurisdiction
his regular duties – even if employee uses the time, *And decisions of the Director General in the exercise of
facilities and materials of the employer original jurisdiction to resolve disputes relating to the terms
2. Employer – of the invention is the result of the of a license involving the author’s right to public performance
performance of his regularly-assigned duties – unless or other communication of his work
an agreement, express or implied, to the contrary - Appealable to the Secretary of Trade and Industry

Shop Right – employee must accord his master or employer a Term of Patent – 20 years from the filing date of the
non-exclusive right to practice the invention application

First to File Rule – If 2 or more persons have made the *Not absolute – patent shall cease to be in force and effect if
invention separately and independently of each other, the any prescribed annual fees is not paid within the prescribed
right to the patent shall belong to the person who filed an time or if patent is cancelled
application for such invention
- Or where 2 or more applications are filed for the Annual Fees
same invention, to the applicant who has the earliest - First annual fee – due and payable on the expiration
filing date or earliest priority date. of 4 years from the date of application is published
- On each subsequent anniversary of such date
Procedure for the Grant of Patent:
1. Filing of the application *If annual fee is not paid within the prescribed time –
2. Accordance of the filing date application shall be deemed withdrawn or patent considered
3. Formality examination as lapsed.
4. Classification and Search
5. Publication of the application Surrender of Patent:
6. Substantive examination - Owner of the patent, with consent of all persons
7. Grant of the patent having grants or licenses or other right, title or
8. Publication upon grant interest in and to the patent and invention covered –
9. Issuance of the certificate may surrender his patent of any claim/s gorming
part thereof to the Office for cancellation
Patent Application Filing Requirements: - A person may give notice to the Office of his
1. Request for the grant of a patent opposition to the surrender of patent, and if he does
2. Description of the invention so, the Bureau shall notify the proprietor of the
3. Drawings necessary for the understanding of the patent and determine the question
invention
4. One or more claims Correction of Mistakes:
5. Abstract - Director of Patent – has the power to correct,
without a fee, any mistake in a patent incurred
Unity of Invention – an application should always relate to through the fault of the Office when clearly disclosed
one invention only or to a group of inventions forming a in the records
single general inventive step - This is done upon written petition of the patentee or
assignee of record and upon tender to the Office of
Grant of Patent – ultimate objective of the patent application the copy of the patent issued
- Patent is granted if application meets the
requirements of both the law and the implementing
rules and regulations, including timely payment of
fees
- Patent shall take effect on the date of the
publication of the grant of patent in the IPO Gazette
- Grant of patent is NOT a matter of right

Appeal – decision of the Examiner

- Director of Bureau of Patents (within 4 months from
the mailing date of the notice of the decision)
Grounds for Cancellation of Patents: 1. Using a patented product which has been put on the
1. The invention is not new or patentable market in the Philippines by the owner of the
2. The patent does not disclose the invention in a product or with his express consent
manner sufficiently clear and complete for it to be 2. Act is done privately and on a non-commercial scale
carried out by any person skilled in the art or for a non-commercial purpose
3. The patent is contrary to public order or morality 3. Act consists of making or using exclusively for
experimental use of the invention for scientific or
Who may file? Any interested person educational purposes
4. In case of drugs and medicines, act includes testing,
Who has jurisdiction? Bureau of Legal Affairs using, making or selling the invention including any
- Decision is immediately executory even pending date related thereto, solely for purposes reasonably
appeal unless decision is restrained by the Director related to the development and submission of
General information and issuance of approvals by
government regulatory agencies
Remedies of Persons Deprived of Patent: 5. Act consists of the preparation for individual cases,
1. Substitution in a pharmacy or by a medical professional, of a
2. File new application medicine in accordance with a medical prescription
3. Request refusal of application or acts concerning the medicine so prepared
4. Cancellation 6. Invention is used in any ship, vessel, aircraft or land
vehicle of any other country entering the territory of
Remedies of the True and Actual Owner: the Philippines temporarily or accidentally
1. Substitution
2. Damages Prior User – Any user, who, in good faith was using the
invention or has undertaken serious preparations to use the
*Time to file an action in court – Within 1 year from the date invention in his enterprise or business, before the filing date
of publication or priority date of application on which patent is granted –
shall have the right to continue the use
Patent Infringement – making, using, offering for sale or - Prior user cannot assign the right to use the
importing a patented product or a product obtained directly patented product or process without giving up
or indirectly from a patented process or the use of a patented entirely his enterprise
process without the authorization of the patentee
Use of Invention by Government:
Contributory infringer – anyone who actively induces the 1. Public interest
infringement of a patent or provides the infringer with a 2. Judicial or administrative body has determined that
component of patented product. that the manner of exploitation, by the owner of the
patent or his license, is anti-competitive
Remedies against Infringement: (Case: Pascual Godinez)
1. Give notice to the infringer Doctrine of Equivalents – provides that an infringement also
2. File for a civil action against infringement and takes place when a device appropriates a prior invention by
damages incorporating its innovative concept and, although with some
3. File for injunction to stop acts modification and change, performs substantially the same
4. Destruction of infringement items function in substantially the same way to achieve
5. Forfeiture and confiscation substantially the same result

*Civil action prescribes in 4 years from time of infringement Doctrine of File Wrapper Estoppel
“File wrapper” – protection covering by which US Patent
Criminal Action for Repetition of Infringement – if Office kept documents of patent applications
infringement is repeated by the infringer or by anyone in
connivance with him after finality of the judgment of the Defenses in Action for Infringement:
court against the infringer – infringers shall be criminally 1. Non-infringement
liable 2. Invalid based on prior art
3. Failure to meet statutory limits (laches)
*Criminal action prescribes in 3 years from date of the 4. Failure to meet requirements
commission of the crime 5. Invalid claims
6. No knowledge or notice
Exclusive Rights Exercised by a Patent Holder: 7. File wrapper estoppel
- Right to make, use, sell, import or offer for sale the
patented product
Limitations on Patent Rights: