LEGAL BASIS
Patent Laws
  • Intellectual Property Code of the Philippines (Republic Act No. 8293) (1997)
  • Republic Act No. 10372, entitled ‘An Act Amending Certain Provisions of Republic Act No. 8293, otherwise known as the ‘Intellectual Property Code of the Philippines’, and for other purposes’ (2013)
Patent Rules
  • Revised Philippine Rules on Patent Cooperation Treaty (PR-o PCT 2024)
  • Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs (2022)
  • Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs (2011)
  • Implementing Rules and Regulations of the Republic Act No. 9502, otherwise known as the ‘Universally Accessible Cheaper and Quality Medicines Act of 2008′ (2008)
  • Office Order No. 121, Series of 2008, on the Amendment to the Rules and Regulations on Inventions (2008)
  • Rules and Regulations on Inventions (as amended by Office Order No. 121, Series of 2008)  (2008)
  • Philippine Rules on PCT Applications (2004)
  • Implementing Rules and Regulations of the “Philippine Plant Variety Protection Act of 2002” (Administrative Order No. 7, Series of 2003)(2003)
  • Layout-Design (Topographies) of Integrated Circuits Regulations (2002)
  • Office Order No. 13, Series of 2002, Amendment to the Philippines Rules on PCT Applications (2002)
  • Intellectual Property Office Order No. 09 (2000), Amendments to the Rules and Regulations on Utility Models and Industrial Designs of May 12, 2000 (2000)
  • Utility Model and Design Regulations (as amended by Office Order No. 09 of 2000) (2000)
  • Rules and Regulations on Inventions (1998)
Patent Treaties
  • Patent Cooperation Treaty
  • Paris Convention for the Protection of Industrial Property
  • Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
  • Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure
PATENT PROSECUTION
Elements of a Patent
  • Technical solution
  • Inventive step
  • Industrially applicable
Types of Patent
  • Invention
  • Utility Model
  • Industrial Design
Patentable Invention
  • Products
  • Processes
  • Computer-related inventions
  • Improvements
  • Microorganisms
  • Microbiological processes
Non-Patentable Invention
  • Plant variety
  • Computer program/software
  • Business methods
  • Aesthetic creations
Ownership of Patent
  • Inventor
  • Company
  • Assignee
  • Heir
  • Successor
  • Joint owners
Who can file?
  • Resident
  • Non-resident (power of attorney)
Types of Patent Searches
  • Comprehensive
  • Compound per se
  • Equivalent
  • Prior art
  • Collection search (by company/patentee)
Types of Patent Applications
  • Provisional Application – No
  • Divisional Application – Yes
  • Continuation in Part – No
Types of Patent Application Filing
  • Direct filing
  • PCT filing
When to File
  • 12 months from earliest filing date anywhere (convention claim)
  • 12 months from the earliest publication or disclosure (non-convention claim)
  • 30 months from earliest priority date or filing of international application to national phase entry(PCT route)
Time frame Direct Route Application
  • Filing to publication – 18 months
  • Publication to request for substantive examination – 6 months
  • Response to office action – 2 months with 2 month extension available
Time frame PCT Route Application
  • From national phase entry to request for substantive examination – 6 months (if no request was filed during entry)
  • Response to office action – 2 months with 2 month extension available
Timeframe  adverse Information(UM & ID)
  • 30 days from date of publication in the IPO E-Gazette
Key Deadlines After Refusal
  • Appeal to Director of Bureau of Patents (BOP) – 2 months
  • Appeal to Director General after final refusal by Director of BOP – 30 days
  • Appeal to Court of Appeals after Director General refusal – 15 days + 15 days extension
Official Fees(5 claims + 30 pages)
  • Invention patent application with 5 claims, 30 pages of description and priority claim – $257
  • Utility model application with 5 claims, 30 pages of description and priority claim – $130
  • Industrial Design – $130
Patent Term
  • Invention – 20 years from filing date
  • Utility Model – 7 years from filing date without renewal
  • Industrial Design – 5 years from filing date with option to renew 2x for a total of 15 years
Maintenance of Invention Patent
  • Payment of patent annuities – 5th year and every year thereafter
PATENT ENFORCEMENT
Infringement Proceedings
  • Administrative action
  • Criminal action
  • Civil action
Specialized Court
  • For civil action involving “highly technical issues”
  • For patent cancellation action before the Bureau of Legal Affairs
Burden of Proof
  • Administrative action – substantial evidence
  • Criminal action – guilt beyond a reasonable doubt
  • Civil action – preponderance of the evidence
Litigation Timetable
  • Trial court – 1.5 years
  • Appellate court – 1 year
ADR
  • Prior to trial – informal dispute resolution
  • Appellate level – mediation
Remedies
  • Compensatory damages (loss of revenue, profits, reasonable royalty)
  • Injunction
  • Attorneys’ fees and costs
Statute of Limitation 4 years from the commission of the infringing act

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