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.

Patent Infringement | Patents | INTELLECTUAL PROPERTY

Patent Infringement in Philippine Mercantile and Taxation Law

Introduction to Patent Infringement

Patent infringement in the Philippines is primarily governed by the Intellectual Property Code of the Philippines (Republic Act No. 8293), which outlines the rights of patent holders, the nature of patent infringement, and the remedies available. Patent infringement occurs when a third party, without permission or authorization from the patent holder, makes, uses, sells, offers for sale, or imports a patented invention within the Philippines. This infringement disrupts the patent holder’s exclusive rights to their invention, potentially leading to legal recourse.

Key Elements of Patent Infringement

1. Patent Holder's Exclusive Rights: The patent holder has the right to exclude others from:

   • Making the patented product,
   • Using the patented process,
   • Selling or offering for sale the patented invention,
   • Importing the patented product or any product made using the patented process.

2. Acts Constituting Infringement: Infringement can occur through direct or indirect means:

   • Direct Infringement: Occurs when an entity manufactures, uses, or sells the patented invention without permission.
   • Contributory Infringement: When a party knowingly provides components or materials used to infringe on the patent, especially if the components have no substantial non-infringing use.

3. Territorial Limitation: Patent rights are territorial, meaning the protection is enforceable within the Philippines. Importing infringing goods into the Philippines constitutes infringement, as it infringes on the patent holder's rights within the country.

4. Types of Infringing Products or Processes:

   • Literal Infringement: Direct and identical copying or usage of the patented claim.
   • Doctrine of Equivalents: Extends to cases where a product or process performs substantially the same function in substantially the same way to achieve substantially the same result as the patented invention.

Defenses Against Patent Infringement

Certain defenses are available for those accused of patent infringement:

1. Invalidity of Patent: An accused infringer may challenge the validity of the patent by arguing that it fails to meet patentability requirements (novelty, inventive step, industrial applicability).
2. Experimental Use Exception: Allows the use of patented inventions for experimental purposes related to scientific research without infringing on the patent.
3. Prior Use: If a party can prove they were using or exploiting the invention prior to the filing date, they may avoid infringement claims.
4. Non-Infringing Use: If the use falls outside the patented claims or does not utilize the patented process, it may not constitute infringement.

Remedies for Patent Infringement

1. Injunctive Relief: The court may issue an injunction to prevent the infringing party from continuing their infringing activities. This can include temporary restraining orders or permanent injunctions.
2. Damages: Patent holders may be entitled to monetary damages, which can include:
   • Actual Damages: Based on losses suffered by the patent holder due to infringement.
   • Reasonable Royalty: When actual damages are difficult to quantify, the court may award a reasonable royalty.
   • Punitive Damages: In cases of willful infringement, the court may award damages to deter future infringing behavior.
3. Seizure and Destruction of Infringing Goods: Courts can order the seizure and destruction of infringing products and materials used in the production of infringing goods.
4. Attorney's Fees and Costs: The infringer may be required to cover the patent holder’s legal fees, particularly if the infringement is proven to be willful.

Jurisdiction and Enforcement in the Philippines

1. Intellectual Property Office (IPO): The Intellectual Property Office of the Philippines (IPO) provides administrative recourse for patent holders, including mediation services and issuance of cease-and-desist orders.
2. Regional Trial Courts (RTC): In cases of patent infringement, the RTC holds jurisdiction, and decisions can be appealed to higher courts.
3. Border Enforcement: The IPO collaborates with the Bureau of Customs to prevent the importation of infringing products into the country.

Procedural Requirements for Patent Infringement Cases

To initiate a patent infringement case, the complainant must:

1. Prove Ownership: Present a valid and enforceable patent registered with the IPO.
2. Provide Evidence of Infringement: Detailed proof of the alleged infringing acts, including comparative analysis of the infringing product/process against the patent claims.
3. Notification: In some cases, particularly with contributory infringement, it may be necessary to notify the infringer of the patent and demand they cease their infringing activities.

Penalties and Fines

The penalties for patent infringement can include civil liabilities (damages and injunctions) as well as criminal penalties, especially in cases of willful or repeated infringement. Criminal sanctions may include imprisonment and fines based on the value of the infringement, although civil remedies are generally pursued.

Key Precedents and Interpretations

The Philippines aligns its patent laws with international treaties like the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights), affecting how local courts interpret patent infringement cases. Recent jurisprudence in Philippine courts has highlighted several key aspects:

1. Interpretation of Claims: Courts prioritize the "claims" section of a patent when determining infringement, applying either literal interpretation or the doctrine of equivalents based on context.
2. Good Faith Defense: Some decisions have considered the infringer's good faith, though it does not necessarily absolve liability; it may impact the severity of damages.
3. Exhaustion Doctrine: Once a patented product is sold, the patent holder’s rights to control its subsequent resale or use are "exhausted."

Conclusion

In the Philippines, patent infringement law seeks to balance the rights of patent holders with the need for public access to technological advancements. Patent holders are provided comprehensive protection against unauthorized use, manufacturing, or selling of patented inventions, with avenues to enforce their rights administratively and judicially. However, defenses like experimental use and non-infringing uses limit these rights, ensuring innovation and access to technology are not unduly hindered. The remedies for patent infringement, including injunctive relief, damages, and destruction of infringing goods, are designed to provide robust protection while deterring infringement.

Rights and Limitations of Patent Owner | Patents | INTELLECTUAL PROPERTY

Mercantile and Taxation Laws > Intellectual Property > Patents > Rights and Limitations of Patent Owners

---

I. Introduction to Patent Ownership Rights in the Philippines

In the Philippines, patent rights are governed by the Intellectual Property Code (IPC), codified in Republic Act No. 8293. The Philippine Intellectual Property Office (IPO) grants patents to inventors for novel, inventive, and industrially applicable inventions. A patent owner is granted exclusive rights over the patented invention, enabling them to prevent others from using, manufacturing, or selling the patented invention without permission. However, these rights come with certain limitations and are balanced by public interest considerations.

---

II. Rights of the Patent Owner

1. Exclusive Rights to Use and Exploit (Sec. 71, IPC)

   • The patent owner holds the exclusive right to:
     • Prevent unauthorized persons from producing, using, offering for sale, selling, or importing the patented product.
     • For process patents, they can prevent unauthorized use of the process, as well as the importation, sale, or distribution of products obtained directly by the patented process.
   • This exclusive right enables the patent owner to commercialize the invention and maintain a competitive advantage.

2. Right to License and Transfer (Sec. 103-105, IPC)

   • The patent owner has the right to grant licenses to third parties, permitting them to use the patent in exchange for royalties or other payments.
   • The patent owner may assign or transfer ownership of the patent to another entity, effectively transferring exclusive rights over the invention.
   • Licensing can be voluntary, but it can also be subject to government-imposed compulsory licenses under certain circumstances (discussed under Limitations).

3. Right to Remedies for Infringement (Sec. 76-77, IPC)

   • Patent owners may seek legal remedies for infringement, including injunctions, damages, or accounts of profits.
   • The patent owner may also request the seizure or destruction of infringing goods, providing additional protection against unauthorized use.

4. Right to Importation

   • Patent rights also cover imported products that embody the patented invention, enabling the patent owner to control not just local manufacturing and sales but also the entry of infringing imports into the country.

5. Right to Secrecy and Protection of Information

   • During the application process, the applicant can request confidentiality regarding sensitive information related to the patent. This helps maintain the confidentiality of technical details until the patent is published.

---

III. Limitations on the Rights of the Patent Owner

1. Doctrine of Exhaustion

   • Once a patented product is sold by or with the consent of the patent owner, the owner’s control over that specific product is “exhausted.” Subsequent resale or use of the product is not subject to the patent owner’s exclusive rights, limiting the owner's power over previously sold products.

2. Compulsory Licensing (Sec. 93-100, IPC)

   • The Philippine government may issue a compulsory license if:
     • The invention is not available to the public at a reasonable cost.
     • The invention is needed for public health, national security, or other critical issues.
     • Anti-competitive practices are suspected.
   • This measure ensures public access to essential technologies, especially in cases like pharmaceuticals or public utilities.

3. Parallel Importation

   • Under specific conditions, a patented product legally sold in another jurisdiction may be imported into the Philippines without the patent owner’s consent. This concept aligns with the doctrine of international exhaustion, promoting access to affordable products and preventing monopolistic pricing.

4. Government Use (Sec. 74, IPC)

   • The Philippine government has the right to use patented inventions without the patent owner’s consent for non-commercial, governmental purposes. This is especially applicable during emergencies or in the interest of public welfare.
   • Compensation must be paid to the patent owner, but the government’s use bypasses typical patent rights for a limited scope and duration.

5. Research and Experimental Use Exception (Sec. 72.4, IPC)

   • This exception permits the use of a patented invention for research and experimental purposes without infringing on the patent.
   • Non-commercial use by researchers, educators, or scientists is permissible, provided it is intended for knowledge advancement and not for direct profit.

6. Bolar Provision (Sec. 72.3, IPC)

   • The Bolar Provision permits third parties to use a patented invention, without infringement, for regulatory approval purposes. This is particularly relevant in the pharmaceutical industry, where companies may develop generic versions of a drug during the patent term to be ready for market release immediately after patent expiration.

7. Use of the Invention in Foreign Vessels or Aircrafts Temporarily in the Philippines (Sec. 72.1, IPC)

   • Foreign vessels, aircraft, or vehicles entering Philippine jurisdiction temporarily may use patented inventions without permission if these inventions are utilized as part of their operations, provided such use is non-commercial and incidental.

8. Regulatory Approval Exception (Sec. 72.5, IPC)

   • Inventions requiring regulatory approval, like pharmaceuticals or biotechnologies, may be used for the purpose of securing government clearance without constituting patent infringement.

9. Limitations Under Competition Law

   • Philippine law restricts the use of patents to prevent anti-competitive practices. Abusive licensing, monopolistic practices, or price manipulation by the patent owner may subject them to legal action or mandatory licensing provisions.
   • Competition law ensures that patent rights do not unduly stifle market competition or harm consumer welfare.

---

IV. Duration and Expiration of Patent Rights

1. Patent Term (Sec. 54, IPC)

   • The standard duration of a patent in the Philippines is 20 years from the filing date. Upon expiration, the invention enters the public domain, and anyone can use, manufacture, or sell it without infringing on former patent rights.

2. Renewal and Maintenance Fees (Sec. 55, IPC)

   • Patent owners are required to pay periodic maintenance fees to retain the enforceability of their patent. Failure to pay these fees may result in the lapse of the patent, placing the invention in the public domain before the 20-year term.

3. Revocation and Nullification of Patents (Sec. 61-66, IPC)

   • A patent may be challenged on grounds of invalidity, such as lack of novelty, inventiveness, or industrial applicability. Courts or the IPO may revoke patents that do not meet statutory requirements, nullifying the patent owner’s rights.

---

V. Conclusion

Patent rights in the Philippines provide inventors with significant control and exclusivity over their inventions, promoting innovation and economic growth. However, these rights are not absolute. Limitations such as compulsory licensing, government use, parallel importation, and other statutory exceptions ensure a balance between protecting inventors and safeguarding public welfare. The Philippine IP framework thus aims to encourage innovation while providing mechanisms to prevent patent abuse and ensure public access to essential technologies.

Ownership of a Patent | Patents | INTELLECTUAL PROPERTY

Ownership of a Patent in the Philippines: A Comprehensive Guide

1. Introduction to Patent Ownership in Philippine Law Patent ownership in the Philippines is governed primarily by Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines (IPC). The IPC establishes rights, responsibilities, and regulations regarding patents, including who may own a patent and the nature of patent ownership.

2. Definition of a Patent and Ownership Rights A patent is an exclusive right granted for an invention, providing the patent owner with the right to exclude others from making, using, selling, or importing the invention without consent. Patent ownership, therefore, entitles the owner to control how the invention is used, while also providing legal recourse to enforce these rights.

3. Who Can Own a Patent?

• The Inventor(s): By default, the inventor or inventors of a patentable invention are the initial owners of the patent, provided they apply for the patent themselves.
• Legal Successors or Assignees: Ownership may also extend to legal successors or assignees if the inventor(s) transfer ownership through an assignment. Such assignment must be documented in writing and recorded with the Intellectual Property Office of the Philippines (IPOPHL) to be enforceable.
• Employers: In certain cases, employers may claim ownership if the invention was made as part of the inventor’s employment. The extent of employer rights to ownership depends on whether the invention was created within the scope of employment and the specific terms of the employment contract.

4. Rules on Patent Ownership for Employed Inventors

• Contractual Provisions: Employment contracts play a crucial role in determining patent ownership. If a contract explicitly assigns invention rights to the employer, ownership typically vests in the employer.
• Presumption of Ownership: Under the IPC, an employer generally has rights over an invention if:
  • The invention was made as part of the employee's duties.
  • The invention pertains to the employer’s line of business.
  • The resources or materials of the employer were used in the invention process.
• Inventor's Right to Royalties: Even if the employer owns the patent, the inventor-employee may have a right to receive royalties or other compensation if stipulated in the employment contract.

5. Joint Ownership of a Patent

• Rights of Co-Owners: If multiple individuals jointly own a patent, each co-owner has equal rights to use the invention and receive income from its exploitation unless otherwise agreed upon.
• Transfer of Ownership in Joint Patents: Each co-owner may transfer or assign their share in the patent, but it generally requires notification to other co-owners, and consent may be needed depending on any co-ownership agreement in place.

6. Transfer and Assignment of Patent Ownership

• Written Agreement Requirement: An assignment or transfer of patent rights must be in writing and must identify the parties, the patent, and any agreed-upon terms for the transfer.
• Recording with IPOPHL: Assignments, transfers, or any changes in patent ownership must be recorded with IPOPHL to establish legal standing. Failure to record may result in unenforceability against third parties who acquire interests in the patent.
• Conditions and Limitations: Ownership transfers can be subject to conditions, limitations, or restrictions, which may include royalty arrangements, limited rights, or retention of certain rights by the original owner.

7. License Agreements vs. Ownership Transfer A license does not transfer ownership but grants a licensee the right to use the patent within specified limitations. Ownership remains with the patent holder, but the licensee may exercise certain rights under the scope of the license agreement. Licenses may be exclusive or non-exclusive:

• Exclusive License: Only the licensee has the right to use the patent, barring even the patent owner from making, selling, or otherwise using the invention within the license’s scope.
• Non-Exclusive License: The licensee gains permission to use the patent, but the patent holder retains the right to use the invention and may grant additional licenses to others.

8. Infringement and Enforcement Rights of Patent Owners

• Right to Sue: A patent owner can bring an action for patent infringement in the courts to enforce their exclusive rights. Such actions can seek damages, injunctions, or other reliefs.
• Preliminary Injunctions: Patent owners can file for preliminary injunctions to prevent potential infringers from exploiting the patent while the case is pending.
• Relief Options: The patent owner can seek relief, including actual damages, lost profits, and in certain cases, statutory damages. If infringement is willful, the court may impose additional penalties.

9. Ownership Term and Renewal

• Ownership Duration: A patent’s exclusive rights generally last 20 years from the filing date, provided the patent owner pays the necessary maintenance fees.
• Maintenance Fees: Failure to pay these fees may lead to the patent lapsing, thereby placing the invention in the public domain unless the lapse is corrected within prescribed periods.

10. Succession and Heirship

• Inheritance of Patent Rights: Patent rights are considered personal property, and upon the death of a patent owner, these rights can be inherited according to the Philippine Civil Code, provided that a will or intestate succession is followed.
• Transfer upon Death: The patent right may be assigned through testamentary or intestate succession, allowing heirs or designated successors to assume ownership.

11. Ownership in Cases of Government Contracts or Public Interest

• Government Ownership: If the invention was created under a government contract or is of significant public interest, the government may claim ownership or license the patent for broader use.
• Compulsory Licensing: In certain circumstances, such as public health crises, the government may issue compulsory licenses, which permit others to use the patented invention without the patent owner's consent. Compensation to the patent owner is generally mandated in these cases.

12. IP Policy Updates and Compliance with International Agreements The Philippines, as a member of the World Trade Organization (WTO) and party to the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, has aligned its patent laws with international standards. This alignment reinforces protection for patent owners and supports fair international trade practices.

Conclusion Ownership of a patent in the Philippines is a robust, multifaceted right governed by the Intellectual Property Code. The law outlines clear guidelines for inventors, employers, and third parties regarding ownership, transfer, licensing, and enforcement. Understanding these aspects is essential for inventors, businesses, and entities involved in innovation and intellectual property management in the Philippines.

Patentable vs. Non-patentable Inventions | Patents | INTELLECTUAL PROPERTY

Patentable vs. Non-Patentable Inventions in Philippine Intellectual Property Law

In the Philippines, patent laws are governed by Republic Act No. 8293, known as the Intellectual Property Code of the Philippines (IP Code). The IP Code outlines the criteria for patentability, specifies what types of inventions are patentable, and lists exclusions from patent protection. It is crucial for legal practitioners to understand these distinctions to provide accurate legal advice, file patent applications properly, and defend intellectual property rights effectively.

1. Patentability Criteria under the IP Code

According to Section 21 of the IP Code, an invention must satisfy the following requirements to be patentable:

• Novelty: The invention must be new, meaning it has not been disclosed to the public anywhere in the world prior to the filing date or priority date.
• Inventive Step: The invention must not be obvious to a person skilled in the relevant field of technology, based on prior art.
• Industrial Applicability: The invention must be capable of being used in any industry.

If an invention meets these criteria, it can be considered patentable unless it falls within the list of non-patentable inventions.

2. Patentable Subject Matter

A patentable invention is defined in Section 21 of the IP Code as a “technical solution of a problem in any field of human activity which is new, involves an inventive step, and is industrially applicable.” Patentable subject matter includes:

• Products: Machines, devices, compositions of matter, and manufactured items that are new and useful.
• Processes: Methods or procedures that lead to a practical application of a concept or a new technical result.
• Improvements of Existing Products or Processes: Innovations or advancements to existing patented items or methods that add substantial novelty, inventive steps, and industrial utility.

3. Non-Patentable Inventions (Section 22)

Despite meeting the criteria of novelty, inventive step, and industrial applicability, certain inventions are explicitly excluded from patent protection under Section 22 of the IP Code. Non-patentable inventions include:

• Discoveries, Scientific Theories, and Mathematical Methods: Scientific principles, abstract theories, and mathematical methods do not constitute technical solutions and are therefore non-patentable.

• Schemes, Rules, and Methods for Performing Mental Acts, Playing Games, or Doing Business, and Programs for Computers: These types of concepts do not provide a technical solution and are thus not patentable. However, computer-implemented inventions that present a new technical effect or process may be patentable, depending on the details of the invention.

• Methods for Treatment of the Human or Animal Body: This includes diagnostic, therapeutic, and surgical methods, as these are not considered industrially applicable. However, medical devices or products used in these methods may still be patentable.

• Plant Varieties and Animal Breeds or Essentially Biological Processes for the Production of Plants and Animals: This exclusion reflects the distinction between inventions and discoveries in biological sciences. Although plant varieties and animal breeds are non-patentable, inventions related to genetically modified organisms or biological techniques may qualify for patent protection.

• Aesthetic Creations: These include works of art, designs, and other forms of creative expressions that serve an ornamental purpose. They are protected under copyright or design laws but do not meet the requirements of patent law.

4. Special Cases and Judicial Interpretations

Over the years, certain cases have helped clarify the distinction between patentable and non-patentable inventions in the Philippines:

• Computer Programs and Software-Related Inventions: While programs “as such” are non-patentable, if a computer program is tied to a technical process or results in a technical effect (such as improving computer performance or data processing), it may be patentable. Philippine jurisprudence on this remains limited, but global trends influence local interpretations.

• Biotechnology and Genetic Inventions: With advances in biotechnology, there has been significant interest in patenting genetically modified organisms (GMOs) and methods in genetic engineering. While plants, animals, and biological processes are non-patentable, inventions derived from biotechnology that yield a new technical result or industrial application may be considered patentable under Philippine law.

5. Implications and Practical Application of Patentability Rules

Legal practitioners must ensure that inventions fulfill both the formal requirements of patentability and do not fall within the non-patentable categories. Here are essential points to consider:

• Patent Drafting and Claiming: Patent claims should be carefully drafted to focus on the technical aspects of the invention. If an invention relates to software or a medical method, claims should emphasize the technical solution or apparatus used, rather than the non-patentable process.

• Clear Distinction of Product vs. Process Claims: For inventions involving non-patentable subject matter, separating product claims (patentable) from method claims (non-patentable) can improve the likelihood of obtaining a patent. For example, a drug used for treatment may be patentable, even though the method of treatment itself is not.

• Research and Development Documentation: Maintaining robust documentation during the R&D phase is crucial for establishing the novelty and inventive step, especially in cases involving complex technologies such as AI and biotechnology, where boundaries between patentable and non-patentable inventions can blur.

6. Conclusion and Practical Advice

In conclusion, Philippine patent law provides clear criteria for patentable inventions but also includes significant exclusions for inventions that do not provide a technical solution, lack industrial applicability, or involve areas of scientific discovery or biological processes. For practitioners, understanding the boundaries between patentable and non-patentable inventions is essential. Emphasis should be placed on:

• Ensuring the invention meets all criteria for patentability.
• Drafting claims that focus on the technical aspects of the invention.
• Staying informed on global trends and jurisprudence that may affect local interpretations, especially in technology-driven fields.

By following these guidelines, inventors and legal professionals can navigate the complexities of patent law in the Philippines effectively.

Patents | INTELLECTUAL PROPERTY

Mercantile and Taxation Laws: Intellectual Property - Patents in the Philippines

---

The field of intellectual property law in the Philippines is governed by the Intellectual Property Code of the Philippines (Republic Act No. 8293, as amended). The law covers various aspects of intellectual property, including patents, trademarks, copyrights, trade secrets, and other related rights. In the context of patents, the following comprehensive outline presents the key aspects of patent law in the Philippines:

---

1. Definition and Purpose of Patents

• Patent: A patent is an exclusive right granted for an invention, a product, or a process providing a new and inventive solution to a problem.
• Purpose: Patents incentivize inventors by granting them temporary monopoly rights, fostering innovation and technological progress in exchange for the public disclosure of the invention.

2. Patentable Inventions

• Under Section 21 of RA 8293, a patentable invention must satisfy three criteria:
  1. Novelty: The invention must be new and not part of prior art.
  2. Inventive Step: The invention must not be obvious to a person skilled in the art.
  3. Industrial Applicability: The invention must be capable of being used in any industry.
• Non-Patentable Inventions (Section 22):
  • Discoveries, scientific theories, and mathematical methods
  • Schemes, rules, and methods for performing mental acts or playing games
  • Methods for treatment of the human or animal body
  • Plants and animals (except for microorganisms and non-biological processes)
  • Aesthetic creations
  • Inventions contrary to public order, morality, health, or welfare

3. Filing a Patent Application

• Requirements for Application (Sections 32–34):

  • Who Can Apply: Any inventor or their assignee can file a patent application.
  • Where to Apply: Application is submitted to the Intellectual Property Office of the Philippines (IPOPHL).
  • Content of Application: The application must contain a request for grant, a description, claims, an abstract, and drawings (if necessary).
  • Formal Examination: IPOPHL conducts a formal examination to check compliance with formal requirements.

• Examination Process:

  • Substantive Examination (Section 48): Ensures the invention meets patentability requirements.
  • Publication and Opposition (Sections 44–47): Upon acceptance, the application is published, allowing third-party opposition within 6 months.

4. Grant and Term of Patent

• Grant of Patent: Once the examination is complete and requirements met, IPOPHL issues a patent, conferring exclusive rights to the inventor.
• Duration: Patents are valid for 20 years from the filing date, subject to the payment of annual fees.
• Extension: Patent term extension is generally not allowed, except under special conditions, such as compensating for delays in granting the patent.

5. Rights Conferred by Patents

• The patentee has the exclusive right to prevent third parties from:
  • Making, using, offering for sale, or importing the patented product.
  • Using the patented process and dealing with products obtained directly from the process.
• Exhaustion of Rights: Once the product is sold by or with the consent of the patentee, they cannot control further sale or distribution of that product.
• Compulsory Licensing (Sections 93–102): In certain cases, such as national emergency or public interest, the government can grant compulsory licenses to third parties to use the patent without the owner’s consent.

6. Patent Infringement and Remedies

• Infringement:
  • Unauthorized use, production, sale, or importation of a patented invention constitutes infringement.
• Remedies for Infringement:
  • Civil Remedies: The patentee can file a civil suit for damages and injunctive relief. Actual and moral damages can be awarded, including attorney's fees and costs.
  • Criminal Remedies: Under certain conditions, patent infringement can also be subject to criminal penalties.
• Burden of Proof: The patentee generally has the burden to prove infringement, but certain defenses are allowed, including:
  • Prior use by another party before the patent application.
  • Experimental use for scientific research without commercial purposes.

7. Taxation on Patents

• Income Tax: Income derived from patents, such as royalties or license fees, is generally subject to income tax. The income tax rate will depend on whether the patentee is an individual or corporation.
• Value-Added Tax (VAT): Licensing and royalty payments are subject to VAT if they qualify as a sale of services.
• Donor’s and Estate Tax: Patents form part of a patent holder’s estate upon death and are subject to estate tax. Transfers of patents via donation are also subject to donor’s tax.

8. Patent Licensing and Assignment

• Licensing:
  • Patentees can grant licenses for others to use their invention while retaining ownership.
  • Licenses can be exclusive (one licensee) or non-exclusive (multiple licensees).
  • Licensing agreements must be registered with IPOPHL to be enforceable.
• Assignment:
  • Patents are assignable property rights, and assignment (transfer of ownership) must be registered with IPOPHL to be enforceable against third parties.

9. Patent Cooperation Treaty (PCT)

• The Philippines is a member of the PCT, allowing Filipino inventors to file international patent applications with a streamlined process.
• Process:
  • A PCT application filed in the Philippines acts as a placeholder for national filings in other PCT member states, preserving the filing date.
  • This enables Filipino inventors to secure patents internationally with reduced procedural steps.

10. IPOPHL Services and Assistance

• Assistance Programs:
  • IPOPHL offers patent drafting assistance and access to patent information databases to help inventors and businesses.
• Patent Prosecution Highway (PPH):
  • Through PPH agreements, IPOPHL expedites examination of patents that have already been approved in certain foreign jurisdictions.

11. Notable Jurisprudence in Philippine Patent Law

• The Supreme Court has issued landmark decisions clarifying various aspects of patent law:
  • Patentability Standards: Courts have defined standards for novelty and inventive step.
  • Patent Infringement: Landmark cases address the interpretation of infringement and defenses.
  • Compulsory Licensing: Courts have clarified the grounds for and limitations of compulsory licensing.

---

Conclusion

Patent law in the Philippines provides a robust framework for protecting and commercializing inventions, balancing inventors' rights with public interest. By enforcing patent rights and fostering innovation, the Philippines aligns with international IP standards, including the TRIPS Agreement and the PCT.