FREQUENTLY ASKED QUESTIONS ON PATENT
Is there a system for grant of patents and registration of utility models, industrial designs and layout-designs of integrated circuits in the Philippines?
Yes. The Intellectual Property Office of the Philippines (IPO) is mandated under Section 5.1 (a), (b) of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines (IP Code), to examine applications for grant of letters patent for inventions and register utility models, industrial designs and integrated circuits.
What inventions are patentable under Philippine law?
Any technical solution of a problem in any field of human activity that is new, involves an inventive step and is industrially applicable is patentable. It may be, or may relate to, a product, process or any improvement thereof.
An invention is considered new if it does not form part of a prior art.
An invention involves an inventive step if, having regard to a 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.
An invention that can be produced and used in any industry is considered industrially applicable.
Can a computer software be covered by a patent?
Computer programs and software are not patentable. Programs for computers and software are however protected by copyright (Sec. 22.2, IP Code).
Can plant breeds and animal breeds be patented?
Generally, plant breeds, animal breeds and biological processes for the production of plants and animals cannot be patented. A sui generis protection, however, may be afforded to plant varieties under the Plant Variety Protection Act of 2001. On the other hand, micro-organisms and non-biological and microbiological processes may be covered by patent (Sec. 22.4, IP Code).
Who has a right to a patent?
The right to a patent belongs to the inventor, his heirs or assigns. When two (2) or more persons have jointly made an invention, the right to the patent shall belong to them jointly (Sec. 28, IP Code).
Who has right to the patent in case 2 or more persons made the invention separately and independently of each other?
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, to the applicant who has the earliest filing date or, the earliest priority date (Sec. 29, IP Code).
Who has the right to the patent if the invention was commissioned or was made by an employee?
If the invention patent was commissioned, the right to the patent belongs to the person who commissioned it, unless otherwise stated in the contract. In cases where the employee made the invention in the course of his employment, the patent shall belong to 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. On the other hand, if the invention is the result of the performance of his regularly-assigned duties, the right to the patent shall belong to the employee unless there is an express or implied agreement to the contrary (Sec. 30, IP Code).
Who may file a patent application in the Philippines?
A Filipino national may file a patent application in the Philippines. Also, any person who is a national or who is domiciled or who has real or 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 any reciprocal rights to nationals of the Philippines by law, may file a patent application in the Philippines.
Is a patent applicant required to appoint a Philippine resident agent?
A resident agent or representative must be appointed if the applicant is not a resident of the Philippines. If the patent applicant is a Philippine resident, the application may be filed by the applicant himself or he may also appoint another person to represent him.
How can one claim right of priority in a patent application?
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 of the foreign application provided that (a) the local application expressly claims priority; (b) it is filed within twelve (12) months from the date of the earliest foreign application was filed; and (c) a certified true copy of the foreign application together with an English translation is filed within the six (6) months from the date of filing in the Philippines.
How does the applicant secure the filing date for a patent application?
The following formal requirements must be submitted to the Bureau of Patents of the Intellectual Property Office before one can secure the filing date of a patent application:
(a) Request for patent
(b) Applicant’ s name, address and signature. In case the applicant is not a resident of the Philippines, the name, address of the resident agent must be submitted.
(c) Description of one or more claims.
If the application claims priority over a foreign application, the details of the priority claim, i.e., filing date, file number, and country of origin, must also be submitted.
What are required in a patent application?
A patent application must include the following:
(a) Request for the grant of patent
(b) Description of the invention
(c) Drawings, if any
What language should be used in the patent application?
The patent application should be in English or in Filipino.
What is the required manner of the disclosure and description of the invention?
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. Where the application concerns a microbiological process or the product thereof and involves the use of a micro-organism which cannot be sufficiently disclosed in the application in such a way as to enable the invention to be carried out by a person skilled in the art, and such material is not available to the public, the application shall be supplemented by a deposit of such material with an international depository institution.
Is a patent application allowed to cover several inventions?
No. The application shall relate to one invention only or to a group of inventions forming a single general inventive concept (Sec. 38.1, IP Code).
What happens if an application claims several inventions which do not form a single general inventive concept?
If several independent inventions which do not form a single general inventive concept are claimed in one application, the Director of the Bureau of Patents may require that the application be restricted to a single invention. A later application filed for an invention divided out shall be considered as having been filed on the same day as the first application, provided that the later application is filed within four (4) months after the requirement to divide becomes final, or within such additional time, not exceeding four (4) months, as may be granted; provided further, that each divisional application shall not go beyond the disclosure in the initial application (Sec. 38.2, IP Code).
Is the patent application given protection even before it is published in the IPO Gazette?
The patent application is not given protection prior to the publication of the patent application in the IPO Gazette. However, the patent application shall be kept confidential by the Bureau of Patents and an unpublished patent application including all related documents, cannot be made available for inspection without the consent of the applicant (Sec. 45, IP Code).
What are the rights given to the patent applicant after publication of the patent application in the IPO Gazette?
The application shall have all the rights of a patentee against any person who, without authorization, uses the published patent application, as if a patent had been granted for that invention provide that the person had actual knowledge that the invention that he was using was the subject matter of a published application or that he received written notice that the invention he was using was the subject matter of a published application being identified in the said notice by its serial number. The action however 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, IP Code).
How can third parties question the patent application?
After the publication of the patent application, any person may present observations in writing concerning the patentability of the invention. The third party observations are communicated to the applicant who may comment on them. The Bureau of Patents will acknowledge and put such observations and comment in the file wrapper of the patent application (Sec. 47, IP Code).
Should the patent applicant request for the substantive examination after the publication of the patent application?
Yes. Substantive examination of the patent application is not automatic. The patent applicant should file a written request for substantive examination within six (6) months from the date of the publication of the application. The application shall be deemed withdrawn if the patent applicant fails file the written request for substantive examination (Sec. 48, IP Code).
Can a patent application be converted to a utility model application and vice versa?
At any time before the grant of a patent, an applicant for a patent may, upon payment of the prescribed fee convert his application into an application for registration of a utility model or vice versa, which shall be accorded the filing date of the initial application. An application may be converted only once.
What are the available remedies to the applicant if the patent application is rejected?
The decision of the Director of Patents to reject the patent application may be appealed to the Director General of the Intellectual Property Office. Further, the decision of the Director General may be appealed to the Court of Appeals and the decision of the Court of Appeals may be appealed further to the Supreme Court.
What are the rights given to the patent owner if the patent application is granted?
A patent confers on its owner the following exclusive rights:
(a) 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.
(b) Where the subject matter of the patent is a process, to restrain, prevent or prohibit any unauthorized person or entity from sing the process, and from manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from such process.
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, IP Code).
What is the term of the patent?
A patent has a term of twenty (20) years from the filing date of the application.
Are there limitations on patent rights?
Yes. The owner of a patent has no right to prevent third parties from using the invention under the following circumstances:
(a) Using the patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar as such use is performed after that product has been so put on the said market
(b) Where the act is done privately and on a non-commercial purpose provided, that it does not significantly prejudice the economic interests of the owner of the patent
(c) Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention
(d) 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 or acts concerning the medicine so prepared
(e) Where the invention is used on any ship, vessel, aircraft, or land vehicles of any other country entering the territory of the Philippines temporarily or accidentally provided, that such invention is used exclusively for the needs of the ship, vessel, aircraft or land vehicle and not used for the manufacturing of anything to be sold within the Philippines (Sec. 72, IP Code).
Can a patent be cancelled?
Yes. Any interested person may file a petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds:
(a) Lack of novelty
(b) The patent fails to disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art
(c) The patent is contrary to public order or morality
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, IP Code).
What are the remedies available to the patent owner in case of patent infringement?
The patent owner may at his option file a civil, criminal or administrative case for patent infringement.
An administrative complaint for patent infringement may be filed with the Bureau of Legal Affairs of the Intellectual Property Office if the amount claimed is not less than Two Hundred Thousand Pesos (Php 200,000). If the amount claimed is less than Two Hundred Pesos (Php 200,000), the administrative complaint shall be filed with the Department of Trade and Industry.
A civil action for patent infringement may be field to recover damages sustained by the patent owner. If the damages sustained cannot be ascertained with reasonable certainty, the court may award by way of damages a sum equivalent to reasonable royalty. They court may also award damages in a sum above the amount found as actual damages sustained provided that the amount does not exceed three (3) times the amount of the actual damages. Attorney’s fees and legal costs incurred are also awarded (Sec. 76, IP Code).
A criminal action for patent infringement may be filed if the infringement is repeated by the infringer or anyone in connivance with him after the final judgement (Sec. 84, IP Code).
Can a prior user in good faith be liable for patent infringement?
Any prior user, who, in good faith, was using the invention or has undertaken serious preparations to use the invention in his enterprise or business, before the filing date or priority date of the application on which the patent is granted, shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect. However, the right of the prior user may only be transferred or assigned together w or preparations for use have been made (Sec 73, IP Code).
Can the Philippine government exploit or use the patented invention without permission from the patent owner?
Yes, but only in specific instances provided by the IP Code. A government agency or even a third person authorized by the government may exploit the invention even without agreement of the patent owner when (a) the public interest, in particular, national security, nutrition, health or the development of other sectors, as determined by the appropriate agency of the government, so requires; or (b) when a judicial or administrative body has determined the manner of exploitation, by the owner of the patent or his license, is anti-competitive. The use of the government however, is subject to certain conditions provided by law (Sec. 74, IP Code).
What is the extent of protection of a patent and how are claims interpreted?
The extent of protection of a patent shall depend on the claims which are to be interpreted in the light of the description and drawings. For the purpose of determining the extent of protection conferred by the patent, due account shall be taken of elements expressed in the claims, so that a claim shall be considered to cover not only all the elements as expressed therein, but also equivalents (Sec. 75, IP Code).
How does one maintain a patent application or a patent?
To maintain a patent application or a patent, an annual fee (annuity) must be paid upon the expiration of four (4) years from the date of application was published and on each anniversary of such date, otherwise, the patent application is deemed withdrawn or the patent considered lapsed (Sec. 55, IP Code).