Cancellation | Patents | INTELLECTUAL PROPERTY

Cancellation of Patents in the Philippines

Overview

In the Philippines, the cancellation of patents is governed by the Intellectual Property Code (Republic Act No. 8293), particularly under Title II, which deals with patents. The cancellation of a patent can occur for several reasons, typically relating to the validity of the patent itself. This process is essential to maintain the integrity of the patent system, ensuring that only valid patents confer exclusive rights to their holders.

Grounds for Cancellation

The primary grounds for cancellation of patents under Philippine law include:

1. Lack of Novelty: A patent may be cancelled if the invention is not novel, meaning it has been publicly disclosed before the filing date of the patent application. This can include prior art references that demonstrate the invention was already known.

2. Non-Patentability: If the invention does not meet the criteria for patentability, including lack of industrial applicability, non-obviousness, or if it falls under non-patentable subject matter (e.g., scientific principles, abstract ideas), it may be grounds for cancellation.

3. Failure to Comply with Formal Requirements: If the patent was granted without meeting the procedural requirements set by the Intellectual Property Office (IPO), such as proper filing, the inclusion of required documentation, or payment of fees, it can be annulled.

4. Fraud or Misrepresentation: If the patent applicant committed fraud or misrepresented material facts during the patent application process, this can lead to cancellation.

5. Public Interest: In some instances, patents can be cancelled on grounds of public policy or public interest, particularly if the patented invention is detrimental to public health or safety.

Cancellation Procedures

The procedure for cancelling a patent involves several steps:

1. Filing a Petition: An interested party, such as a competitor or anyone with a legitimate interest, may file a petition for cancellation. This petition must be filed with the Bureau of Legal Affairs (BLA) of the IPO.

2. Contents of the Petition: The petition should contain:

   • The name and address of the petitioner.
   • The name of the patent holder and the patent number.
   • A clear statement of the grounds for cancellation.
   • Evidence supporting the claims made in the petition.

3. Notification: Upon receipt of the petition, the IPO will notify the patent holder, who will then have the opportunity to respond to the allegations.

4. Hearing: A hearing may be scheduled where both parties can present their arguments and evidence. The IPO may also allow for the submission of additional documents.

5. Decision: After considering the evidence and arguments from both sides, the IPO will issue a decision. If the patent is cancelled, the decision will specify the grounds and the effective date of cancellation.

6. Appeal: If a party is dissatisfied with the decision, they can appeal to the Court of Appeals within a specified timeframe.

Effects of Cancellation

When a patent is cancelled, the following effects occur:

• The patent is rendered null and void from the date of cancellation.
• The rights granted to the patent holder cease to exist, allowing others to use the previously patented invention without infringement concerns.
• Any licenses granted under the cancelled patent may also be voided, depending on the terms of the license agreement.

Important Considerations

• Timeframe for Filing: There is typically no statute of limitations for filing a cancellation petition; however, it should be done promptly to ensure the integrity of the patent system.
• Burden of Proof: The burden of proof lies with the petitioner to establish the grounds for cancellation.
• Legal Representation: It is advisable for parties involved in a cancellation proceeding to seek legal representation, as the process can be complex and requires a thorough understanding of intellectual property laws.

Conclusion

The cancellation of patents in the Philippines is a vital aspect of maintaining a fair and effective intellectual property system. It ensures that only valid patents that truly meet the requirements of novelty, non-obviousness, and utility are upheld. Understanding the grounds for cancellation and the procedural steps involved is crucial for both patent holders and those seeking to challenge the validity of a patent.