PATENT

A Patent is a grant issued by the government through the Intellectual Property Office of the
Philippines. It is an exclusive right granted for a product, process or an improvement of a
product or process which is new, involves an inventive step and is industrially applicable.
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.

The threefold purpose of patent:

1. Patent law seeks to foster and reward invention;
2. It promotes disclosures of inventions to stimulate further innovation and to permit the
public to practice the invention once the patent expires; and
3. The stringent requirements for patent protection seek to ensure that ideas in the public
domain remain there for the free use of the public.

What are the 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. It may be, or may relate to, a
product, or process, or an improvement of any of the foregoing. (Sec. 21, IPC)

Conditions for patentability?

1. Novelty – An invention shall not be considered new if it forms part of a prior art. (Sec. 23,
IPC)

2. 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.

3. Industrially Applicable – An invention that can be produced and used in any industry, shall
be industrially applicable (Sec. 27, IPC).

What is prior art?

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
2. The whole contents of a published application, 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 the IPC, there shall be a 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. 24, IPC)

What is Industrially applicable?

An invention that can be produced and used in any industry meets the industrial
application requirement of patent registrability. This means an invention is not merely
theoretical, but also has a practical purpose. If the invention is a product, it should be able to
produce a product and if the invention is a process, it should be able to lay out a process
(WIPO, IP Handbook 2nd Edition, Chapter 2: “Fields of Intellectual Property Protection”
Publication No. 489 (E), p. 18.)

What is 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. (Sec. 26, IPC)

Except In the case of drugs and medicines, there is no inventive step if the invention
results from the mere 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. (Sec. 26.2, as
amended by R.A. 9502)

What is the test of non‐obviousness?

If any person possessing ordinary skill in the art was able to draw the inferences
and he constructs that the supposed inventor drew from prior art, then the latter did not
really invent.

Who is a person skilled in the art?

A person skilled in the art is a person with ordinary skills in a certain art or field who is
aware of what is a common general knowledge in the field at the time of the application.
“He is presumed to have knowledge of all references that are sufficiently related to one
another and to the pertinent art and to have knowledge of all arts reasonably pertinent to
the particular problems with which the inventor was involved. He is presumed also to have
had at his disposal the normal means and capacity for routine work and experimentation”
(Revised IRR for R.A. No. 8293, Rule 207).
What are the non patentable inventions?

1. Discoveries, scientific theories and mathematical methods

2. In the case of Drugs and medicines, mere discovery of a new form or new
property of a known substance which does not result in the
enhancement of the efficacy of that substance

3. Schemes, rules and methods of performing mental acts, playing games or

doing business, and programs for computers

4. Methods for treatment of the human or Animal body

5. Plant varieties or animal breeds or essentially biological process for the

production of plants or animals. This provision shall not apply to micro‐
organisms and non‐biological and microbiological processes

6. Aesthetic creations

7.Anything which is Contrary to public order or morality. (Sec. 22, IPC as amended by
R.A. 9502)
Supposing Albert Einstein were alive today and he filed with the Intellectual Property
Office an application for patent for his theory of relativity expressed in the formula
E=mc2. The IPO disapproved Einstein's application on the ground that his theory of
relativity is a non patentable invention. Is the IPO's action correct?

Yes, the IPO is correct because the Intellectual Property Code provides that, discoveries,
scientific theories and mathematical methods are considered as a non-patentable
inventions. Einstein's theory falls within the category of being a non-patentable scientific
theory.

DOCTRINE OF PREJUDICIAL DISCLOSURE

The right to patent arises from application date. If the inventor voluntarily discloses his
creation, such as by offering it for sale, the world is free to copy and use it with impunity.
Ideas, once disclosed to the public without the protection of a valid patent, are subject to
appropriation without significant restraint. (Pearl & Dean {Phil.|, Incorporated v. Shoemart,
Incorporated, 409 SCRA 231, August 15, 2003).
DOCTRINE OF NON-PREJUDICIAL DISCLOSURE

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 officer and the information was contained (a) in another publication 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 who obtained the
information directly or indirectly from the inventor; or

c. A third party who obtained the information directly or indirectly from the inventor. (IPC,
Sec. 25)

Who is entitled to a patent?

A. Inventor, his heirs, or assigns.

B. Joint invention – Jointly by the inventors. (Sec. 28, IPC)

C. 2 or more persons invented separately and independently of each other – To the person
who filed an application;

D. 2 or more applications are filed – the applicant who has the earliest filing date or, the
earliest priority date. (Sec. 29, IPC)

E. Inventions created pursuant to a commission – Person who commissions the work, unless
otherwise provided in the contract. (Sec. 30.1, IPC)

F. Employee made the invention in the course of his employment contract:

1.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.

2. 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. (Sec. 30.2, IPC)

Who may apply for a patent?

Any person who is a national or who is domiciled or has a real and effective
industrial establishment in a country which is a party to any convention, treaty or
agreement relating to intellectual property rights or the repression of unfair
competition, to which the Philippines is also a party, or extends reciprocal rights to
nationals of the Philippines by law. (Sec. 3, IPC)

Who is an inventor? An inventor means any person who, at the filing date of
application, had the right to the patent. (Sec. 25.2, IPC)

What is the Filing Date of a patent?

The filing date of a patent application shall be the date of receipt by the Office of at least
the following elements:

(a) An express or implicit indication that a Philippine patent is sought;

(b) Information identifying the applicant; and

(c) Description of the invention and one (1) or more claims in Filipino or English.(Sec. 40 40.1,
IPC)

If any of these elements is not submitted within the period set by the Regulations, the
application shall be considered withdrawn.(Sec. 40.2, IPC)

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 which has the earliest filing date. (Sec. 29, IPC)

Priority date:

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.

Conditions in availing the priority date:

1. The local application expressly claims priority;

 2. It is filed within 12 months from the date the earliest foreign application
was filed; and

3. A certified copy of the foreign application together with an English

translation is filed within 6 months from the date of filing in the
Philippines. (Sec. 31, IPC)

What are the steps in the registration of a patent?

The procedure for the grant of patent may be summarized as follows:

1. Filing of the application
2. Accordance of the filing date
3. Formality examination
4. Classification and Search
5. Publication of application
6. Substantive examination
7. Grant of Patent
8. Publication upon grant
9. Issuance of certificate (Salao, 2008)

What must be included in the patent application?

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.(Sec. 32.1, IPC)
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. 32.2, IPC)

How is disclosure made?

The application shall disclose the invention in a manner sufficiently clear and
complete for it to be carried out by a person skilled in the art.(Sec. 35.1, IPC)
What is a claim?

Defines the matter for which protection is sought. Each claim shall be clear and
concise, and shall be supported by the description. (Sec. 36, IPC)

What is an abstract?

A concise summary of the disclosure of the invention as contained in the

description, claims and merely serves as technical information.(Sec. 37, IPC)

What is unity of invention:

The application shall relate to one invention only or to a group of inventions forming a single
general inventive concept. (Sec. 38.1) If several independent inventions which do not form a
single general inventive concept are claimed in one application, the application must be
restricted to a single invention. (Sec. 38.2, IPC)

Concept of divisional applications:

When two or more inventions are claimed in a single application but are of such a nature
that a single patent may not be issued for them. The applicant, is thus required to divide,
that is, to limit the claims to whichever invention he may elect, whereas those inventions
not elected may be made the subject of separate applications which are called divisional
applications. (Smith‐Kline Beckman Corp. v. CA, GR No. 126627, Aug. 14,2003)

Formality Examination.

After the patent application has been accorded a filing date and the required fees have
been paid on time in accordance with the Regulations, the applicant shall comply with the
formal requirements specified by Section 32 and the Regulations within the prescribed
period, otherwise the application shall be considered withdrawn. (Sec. 42.1, IPC)

Publication of Patent Application.

The patent application shall be published in the IPO 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 ( 18) months from the filing date or priority date. (Sec.
44.1, IPC)
 After publication of a patent application, any interested party may inspect the
application documents filed with the Office.(Sec. 44.2, IPC)

The Director General subject to the approval of the Secretary of Trade and Industry,
may prohibit or restrict the publication of an application, if in his opinion, to do so would be
prejudicial to the national security and interests of the Republic of the Philippines. (Sec. 44.3,
IPC)

Confidentiality Before Publication:

A patent application, which has not yet been published, and all related documents, shall
not be made available for inspection without the consent of the applicant. (Sec. 45, IPC)

What are the rights conferred by a patent application after the first
publication?
The applicant shall have all the rights of a patentee under Section 76 against
any person who, without his authorization, exercised any of the rights conferred
under Section 71 of this Act in relation to the invention claimed in the published
patent application, as if a patent had been granted for that invention: Provided,
That the said person had:

1. Actual knowledge that the invention that he was using was the subject matter of a
published application; (Sec. 46.1, IPC)or

2. Received written notice that the invention that he was using was the subject matter
of a published application being identified in the said notice by its serial number: Provided,
That the action may not be filed until after the grant of a patent on the published application
and within four (4) years from the commission of the acts complained of (Sec. 46.2, IPC).

When shall the patent take effect?

A patent shall take effect on the date of the publication of the grant of the patent in the
IPO Gazette. (Sec. 50.3, IPC).

Annual Fees.
To maintain the patent application or patent, an annual fee shall be paid upon
the expiration of four (4) years from the date the application was published,
Payment may be made within three (3) months before the due date. (Sec.
55.1, IPC).

If the annual fee is not paid, the patent application shall be deemed
withdrawn. (Sec. 55.2, IPC).
 A grace period of six (6) months shall be granted for the payment of the annual
fee, upon payment of the prescribed surcharge for delayed payment.(Sec. 55.3, IPC).

Surrender of Patent. -

The owner of the patent, with the consent of all persons having grants or licenses or
other right, title or interest in may surrender his patent or any claim or claims forming part
thereof to the Office for cancellation (Sec. 56.1, IPC).

If the Office is satisfied that the patent may properly be surrendered, he may accept the
offer and, as from the day when notice of his acceptance is published in the IPO Gazette,(Sec.
56.3, IPC)

The patent shall cease to have effect, no action for infringement shall lie and no right
compensation shall accrue for any use of the patented invention before that day for the
services of the government (Sec. 56.3, IPC).

Changes in Patents:

The owner of a patent shall have the right to request the Bureau to make the changes in
the patent in order to:

(a) Limit the extent of the protection conferred by it;

(b) Correct obvious mistakes or to correct clerical errors; and

(c) Correct mistakes or errors, other than those referred to in letter (b), made in good faith:
Provided, That where the change would result in a broadening of the extent of protection
conferred by the patent, no request may be made after the expiration of two (2) years from
the grant of a patent and the change shall not affect the rights of any third party which has
relied on the patent, as published (Sec. 59.1, IPC).

No change in the patent shall be permitted under this section, where the change would
result in the disclosure contained in the patent going beyond the disclosure contained in the
application filed (Sec. 59.2, IPC).

If, and to the extent to which the Office changes the patent according to this section, it
shall publish the same (Sec. 59.3, IPC).

Cancellation of Patents:

Any interested person may, upon payment of the required fee, petition to cancel the
patent or any claim thereof, or parts of the claim, on any of the following grounds:

(a) That what is claimed as the invention is not new or Patentable;

(b) 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; or
(c) That the patent is contrary to public order or morality (Sec. 61.1, IPC).

Where the grounds for cancellation relate to some of the claims or parts of the claim,
cancellation may be effected to such extent only (Sec. 61.2, IPC).

The petition for cancellation shall be:

-In writing;
-Verified by the petitioner or by any person in his behalf who knows the facts;
-Specify the grounds upon which it is based
-Include a statement of the facts to be relied upon;
-Filed with the Office (Sec. 62, IPC).
-The Director shall serve notice of the filing of the petition and the date of hearing upon
the patentee and all persons having grants, licenses, other right, title, or interest to the
patent or invention covered thereby. The notice is published in the IPO Gazette (Sec. 63,
IPC).

Committee of Three:
In cases involving highly technical issues, the Director of Legal Affairs may order that the
petition be heard and decided by a committee composed of the Director of Legal Affairs as
chairman and two (2) members who have the experience or expertise in the field of
technology to which the patent sought to be cancelled relates. The decision of the
committee shall be appealable to the Director General (Sec. 64, IPC).

REMEDIES OF THE TRUE AND ACTUAL OWNER:

1. Person other than the applicant who was declared as having the right to patent may
within 3 months after the final court order or 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;
d. Seek the cancellation of the patent, if one has already been issued (Sec. 67.1,
IPC.

2. If a person was deprived of the patent without his consent or through fraud and he
was declared by final court order or decision as the true or actual inventor:

a. The court shall order for his substitution as patentee.

b. Cancel the patent at the option of the true inventor;
c. The court shall order award of actual and other damages if warranted by the
circumstances (Sec. 68, IPC).
 Cezar works in a car manufacturing company owned by Joab. Cezar is quite
innovative and loves to tinker with things. With the materials and parts of the car, he was
able to invent a gas‐ saving device that will enable cars to consume less gas. Francis, a co‐
worker, saw how Cezar created the device and likewise, came up with a similar gadget, also
using scrap materials and spare parts of the company. Thereafter, Francis filed an
application for registration of his device with the Bureau of Patents. Eighteen months later,
Cezar filed his application for the registration of his device with the Bureau of Patents.

1. Is the gas‐saving device patentable?

Yes because it is new, it involves an inventive step and it is industrially applicable.

2. Assuming that it is patentable, who is entitled to the patent? What, if any, is the remedy
of the losing party?

Francis is entitled to the patent, because he had the earlier filing date. The remedy
of Cezar is to file a petition in court for the cancellation of the patent of Francis on the
ground that he is the true and actual inventor, and ask for his substitution as patentee.
(2005 Bar Question)

3. Supposing Albert Einstein were alive today and he filed with the Intellectual Property
Office (IPO) an application for patent for his theory of relativity expressed in the formula
E=mc2. The IPO disapproved Einstein's application on the ground that his theory of
relativity is not patentable. Is the IPO's action correct?

Yes, the IPO’s action is correct. Section 22 of the Intellectual Property Law
expressly states that discoveries, scientific theories and mathematical methods are among
those matters which are not patentable. (2006 Bar Question)

Rights of a Patent owner: -

A patent shall confer on its owner the following exclusive rights:

1. 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;

2. 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 (Sec. 71.1, IPC).
3. Patent owners shall also have the right to assign, or transfer by succession the patent, and
to conclude licensing contracts for the same (Sec. 71.2, IPC).

Limitations of patent rights:

1. The owner of a patent has no right to prevent third parties from performing, without his
authorization, the acts referred to in Section 71 hereof in the following circumstances

A. If put on the market in the Philippines by the owner of the product, or with his
express consent.Except Drugs and medicines ‐ introduced in the Philippines or anywhere
else in the world by the patent owner, or by any party authorized to use the invention
(Sec. 72.1, as amended by R.A. 9502)

B. Where the act is done privately and on a non‐commercial scale or for a non‐
commercial purpose. (Sec. 72.2, IPC)

C. Exclusively for experimental use of the invention for scientific purposes or educational
purposes (experimental use provision). (Sec. 72.3, IPC)

D. In the case of drugs and medicines, where the act includes testing, using, making or
selling the invention including any data related thereto, solely for purposes reasonably
related to the development and submission of information and issuance of
approvals by government regulatory agencies required under any law of the
Philippines or of another country that regulates the manufacture, construction, use or
sale of any product.(Sec. 72.4, IPC)

E. 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. (Sec. 72.5, IPC)

F. 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.
(Sec. 72.5, IPC)

2. Prior user – Person other than the applicant, who in good faith, started using
the invention in the Philippines, or undertaken serious preparations to use
the same, before the filing date or priority date of the application shall have
the right to continue the use thereof, but this right shall only be transferred
or assigned further with his enterprise or business. (Sec. 73, IPC)
3. Use by Government – A government agency or third person authorized by the
government may exploit invention even without agreement of a patent
owner where:

a. Public interest, as determined by the appropriate agency of the

government, so requires; or

b. A judicial or administrative body has determined that the manner of

exploitation by owner of patent is anti‐competitive. (Sec. 74, IPC)

What constitutes infringement of patent?

Making, using, offering for sale, selling or importing a patented product or a product
obtained directly or indirectly from a patented process; or Use of a patented process
without authorization of the owner of the patent (Sec. 76, IPC)

Doctrine of Equivalents:
There is infringement where a device appropriates a prior invention by incorporating its
innovative concept and, although with some modification and change, performs
substantially the same function in substantially the same way to achieve substantially the
same result.

What is meant by equivalent device?

It is such as a mechanic of ordinary skill in construction of similar machinery,

having the forms, specifications and machine before him, could substitute in the place of the
mechanism described without the exercise of the inventive faculty.

Who are liable for infringement?

Aside from the infringer, anyone who actively induces the infringement of a
patent or provides the infringer with a component of a patented product or of a
product produced because of a patented process knowing it to be especially
adapted for infringing the patented invention and not suitable for substantial
non‐infringing use is liable jointly and severally with the infringer as a
contributory infringer.
 It must be proven that the product can only be used for infringement
purposes. If it can be used for legitimate purposes, the action shall not prosper.

Remedies of the owner of the patent against infringers:

Civil action for infringement – The owner may bring a civil action with the
court of competent jurisdiction to recover from infringer the damages sustained by
the former, plus attorney’s fees and other litigation expenses, and to secure an
injunction for the protection of his rights (Sec. 76.2, IPC).

Criminal action for infringement – If the infringement is repeated after

finality of the judgment of the court against the infringer, the infringer shall be
criminally liable and upon conviction, shall suffer imprisonment of not less than six
(6) months but not more than three (3) years and/or a fine not less than
P100,000.00 but not more than P300,000.00 (Sec. 84., IPC).

-No damages can be recovered for acts of infringement committed more

than four (4) years before the filing of the action for infringement. (Sec. 79, IPC)

-The criminal action prescribes in three years from the commission of the crime.
(Sec. 84, IPC)

Process Patents; Burden of Proof:

If the subject matter of a patent is a process for obtaining a product, any identical
product shall be presumed to have been obtained through the use of the patented process if
the product is new or there is substantial likelihood that the identical product was made by
the process and the owner of the patent has been unable despite reasonable efforts, to
determine the process actually used. In ordering the defendant to prove that the process to
obtain the identical product is different from the patented process, the court shall adopt
measures to protect, as far as practicable, his manufacturing and business secrets (Sec. 78,
IPC)

Who can file an action for infringement?

1. The patentee or his successors‐in‐ interest may file an action for infringement.
2. Any foreign national or juridical entity who meets the requirements of Sec. 3 and not
engaged in business in the Philippines, to which a patent has been granted or assigned,
whether or not it is licensed to do business in the Philippines. (Sec. 77, IPC).

Defenses in an action for infringement?

1. Invalidity of the patent; (Sec. 81, IPC);

2. Any of the grounds for cancellation of patents:

A.That what is claimed as the invention is not new or patentable

B. 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; or

C. That the patent is contrary to public order or morality. (Sec. 61, IPC)