Under Philippine law, what are patentable inventions?
Patentable inventions are any technical solution of a problem in any field of human activity that is new, involves an inventive step, and is industrially applicable. It may be, or may relate to, a product, process or any improvement of 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 shall be industrially applicable.
Can computer software be patented?
No. Section 22.2 of the Intellectual Property Code provides that computer programs are not patentable. Programs for computers are protected by copyright under Section 172(n) of the Intellectual Property Code.
Can plant breeds and animal breeds be patented?
No. Plant breeds and animal breeds or essentially biological processes for the production of plants and animals are not patentable. However, sui generis protection is provided for plant varieties under Plant Variety Protection Act of 2001.
However, microorganisms and non-biological and microbiological processes are excluded from the application of Section 22.4 of the Intellectual Property Code of the Philippines, which proscribes the protection of plant breeds and animal breeds.
Can products originating from nature be patented?
Natural products in exactly the same form as they are found in nature are not patentable. However, it is possible to patent a product originating from nature that is in a form in which it does not occur naturally. For example, an antibiotic separated from a microorganism may be patented.
Can method of treatment be patented?
No. Under existing practice in the Philippines, method for treatment of the human or animal body by surgery or therapy and diagnostic method practiced on the human or animal body is unpatentable. Use claim is however acceptable. Hence, method of treatment claims may be redrafted into acceptable use claims to be able to be patented in the Philippines.
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 a patent belongs to them jointly.
If two (2) or more persons have made the invention separately, and independently of each other, the right to the patent belongs to the person who filed an application for such invention, or where two or more applications are filed for the same invention, the applicant who has the earliest filing date or the earliest priority date.
The person who commissions the work has the right to the patent, unless otherwise provided in the contract.
In case the employee made the invention in the course of his employment, the right to the patent belongs to: (a) the employee, if the inventive activity is not part of his regular duties even if the employee uses the time, facilities and materials of the employer; (b) 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.
Who may file a patent application in the Philippines?
The following may file an application for patent protection in the Philippines:
- Filipino nationals; and
- Any person who is a national or who is domiciled or who 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 any reciprocal rights to nationals of the Philippines by law.
Who may represent the applicant before the Bureau of Patents?
If the applicant is a resident of the Philippines, he by himself may file and prosecute a patent application with the Bureau of Patents. He may also authorize a representative do these for him.
If the applicant is not a resident of the Philippines, he must appoint and appoint a resident agent or representative.
What are the Routes available in filing a patent application in the Philippines?
There are two (2) Routes available in filing a patent application in the Philippines, namely:
- Patent Cooperation Treaty (PCT) Route; and
- Paris Convention/Direct Route.
Patent Cooperation Treaty (PCT) Route
What are the requirements for entering the national phase of a PCT application?
To enter the national phase and get a date of entry, the PCT applicant must furnish the Intellectual Property Office (IPO), not later than thirty (30) months from the priority date under Art. 22 (as amended by IPO Office Order) or Art 39(1)(a), the following:
- Request for National Phase Entry;
- English translation of the international application if it was filed in another language or a copy of the international application in English as filed if the applicant has not yet received Form PCT/IB/308; and
- Copy of the amendments under Article 19 and/or Article 34 (if applicable) in English.
Is there an extension of time for entering the national phase for PCT applications?
Yes. The 30-month deadline for entering the national phase for a PCT application may be extended by one (1) month subject to the payment of an extension fee/late entry fee.
Is payment of the national fee a requisite for getting a date of entry in the national phase?
No. Payment of the national fee is not a requirement for purposes of getting a date of entry. However, payment of the national fee is necessary in order for the international application to proceed to the national phase for processing. Non-payment of the national fee within one (1) month from the date of entry will result in the withdrawal of the international application in the Philippines.
An international application, which claims priority of an earlier filed Philippine application is exempted from the payment of the filing fee and any other fees which were already paid during the earlier application.
What documents must be submitted at the national phase entry?
- Description, including title of the invention (must be in English);
- Claims as filed (must be in English)
- Amendments to the claims under PCT Art. 19, where applicable (must be in English);
- Amendments to the description, claims or drawings under PCT Art. 34, as contained in the annexes to the international preliminary examination report, where applicable (must be in English);
- Drawings, as filed, if any;
- Form PCT/IB/304 (if with right of priority).
What are the important time limits that one needs to observe for PCT applications?
Six (6) months from the date of entry into the national phase
Priority document of a claimed earlier application must be submitted to the International Bureau (IB) within sixteen (16) months from the priority date.
If it has not been submitted to the IB within the said time period, it must be submitted to the Philippine Intellectual Property Office (IPO), together with payment of fee for extension of time to submit priority document plus surcharge provided for in the IPO Fee Structure, within six (6) months from the date of entry into the national phase without need of notice. Failure of the applicant to comply shall be grounds to disregard the priority claim.
Request for substantive examination
The application shall be deemed withdrawn if the request for substantive examination is not made and the substantive examination fee is not paid within six (6) months from the date of entry into the national phase.
Four (4) years from the date of the international publication
Annual fee on a patent shall be due and payable on the expiration of four (4) years from the date of the international publication, and on each subsequent anniversary of such date. The obligation to pay the annual fees shall terminate should the application be withdrawn, refused, or cancelled.
Annual fee of a divisional patent application/registration shall be due and payable on the expiration of four (4) years from the date of the international publication of the parent application, and on each subsequent anniversary of such date. The obligation to pay the annual fees shall terminate should the application be withdrawn, refused, or cancelled.
What should the applicant do if the international application entering the national phase claims priority of an earlier Philippine national application?
The applicant should elect which one of the two applications shall be prosecuted. If applicant does not elect at the date of entry, the IPO will invite the applicant to make the election within two (2) months from the date of the invitation, or within a longer period, but not to exceed six (6) months from the date of entry into the national phase.
Is the submission of priority documents required for purposes of entering into the national phase?
No. The submission of priority documents is not required for purposes of entering into the national phase. The submission of priority documents is required by the IPO in certain cases as provided by the rules.
Can amendments regarding the specification, claims and drawings be done after the patent application has already entered the national phase?
Yes. During the national phase, and at any time before a patent is granted or refused on the international application, the applicant may present amendments to the description, claims and drawings in accordance with the Intellectual Property Code and its implementing rules and regulations.
Is an international application subject to publication in the Intellectual Property of the Philippines (IPOPHL) E-Gazette?
National phase applications based on PCT International Applications are published in the form of listing only (List of PCT cases that entered the national phase) but are NO longer published (entire application) for purposes of laying-open/disclosing the same to the public. A patent application in the Philippines based on a PCT international application is considered published pursuant to Section 44 of the IP Code as of the international publication date.
When should annual fees be paid for international applications?
The first annual fee must be paid on the expiration of four (4) years from the date of publication of the international application regardless of the language of publication. Subsequent annual fees shall be due on each subsequent anniversary of such date.
What law governs the processing of international applications at the national phase?
The applicable provisions of the Intellectual Property Code and its implementing rules and regulations, the applicable provisions of the Patent Cooperation Treaty, PCT Regulations, and PCT Administrative Instructions, govern international applications that have entered the national phase.
What is the term of a patent issued to an application filed through the PCT?
The term is twenty (20) years from the international filing date of the application.
What are the PCT regulations that do not apply in the Philippines?
- Rule 26bis.3 (j), 49ter.1 (g), 49ter.2(h) Restoration of Right of Priority
- Rule 49.6 (f) Reinstatement of Rights after Failure to Perform the Acts referred to in Article 22 (national phase entry)
Paris Convention/Direct Route
How can an applicant obtain a filing date for a patent application filed via Paris Convention/Direct Route?
To obtain a filing date, the applicant must submit the following to the IPOPHL:
- Request for patent;
- Applicant’s name, address and signature. If applicant is a non-resident, the name and address of the resident agent; and
- Description of the invention, one or more claims, and drawings (if any).
If the priority of an earlier filed application is claimed, the details of the claim, i.e., filing date, file number and country of origin, must be submitted.
How can one claim a priority in the Philippine patent application?
A patent application 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 citizens of the Philippines, shall be considered as filed as of the date of filing the foreign application, provided, that:
- The local application expressly claims priority;
- The Philippine application is filed within twelve (12) months from the date when the earliest application was filed; and
- A certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing in the Philippines.
What must be included in the Philippine patent application?
The patent application must contain the following:
- Request for the grant of a patent;
- Description of the invention;
- Drawings necessary for the understanding of the invention (if any);
- One or more claims; and
In what language must the Philippine patent application be presented?
The Philippine patent application must be presented in either the Filipino or English language.
How does one disclose the invention in the Philippine patent application?
The Philippine patent 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 microorganism 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 depositary institution.
Is an application filed via Paris Convention/Direct Route subject to publication in the IPOPHL E-Gazette?
Yes, the application shall be published in the IPOPHL E-Gazette together with a search document established by or on behalf of the Office citing any relevant document or documents that reflect prior art, after the expiration of eighteen (18) months from the filing date.
Is the invention protected prior to publication of the patent application in the IPOPHL E-Gazette?
No, the invention is not protected prior to the publication of the patent application in the IPOPHL E-Gazette. However, the Bureau of Patents is obligated to keep the patent application confidential. An unpublished patent application, and all related documents, cannot be made available for inspection without the consent of the applicant.
What protection is granted to the invention after the publication of the patent application in the IPOPHL E-Gazette and before the grant of a patent?
Section 46 of the Intellectual Property Code of the Philippines provides that the applicant shall have all rights of a patentee against any person who uses the invention without the applicant’s authorization, provided that, such person has actual knowledge that the invention he is using is the subject matter of a published application. However, the action may not be filed until after the grant of the patent and not beyond four (4) years from the commission of the acts complained of.
After publication, is there an automatic substantive examination of the patent application?
There is no automatic process for substantive examination of a patent application. The applicant must make a request for substantive examination within six (6) months from the date of the publication of the application. The application shall be deemed withdrawn if such request is not made and the requisite fees are not timely paid.
When should annual fees be paid?
The first annual fee must be paid on the expiration of four (4) years from the date of publication of the application in the IPOPHL E-Gazette. Subsequent annual fees shall be due on each subsequent anniversary of such date.
When does the patent become effective in the Philippines?
The patent becomes effective upon the date of the publication of the grant of the patent in the IPOPHL Gazette.
What is the term of the patent in the Philippines?
The term of the patent is twenty (20) years from the filing date of the application in the Philippines.
Is there a reinstatement of a lapsed patent in the Philippines?
No, there is no reinstatement of a lapsed patent in the Philippines.
Is it possible for an invention that has been previously disclosed to the public to be patented?
Yes. Under Section 25 of the Intellectual Property Code of the Philippines, the disclosure of information contained in the patent application during the twelve (12) months preceding the filing date or the priority date of such patent application shall not prejudice the applicant on the ground of lack of novelty, if such disclosure was made by:
- The inventor;
- A patent office and the information was contained
- in another application filed by the inventor and should not have been disclosed by the office, or
- in an application filed without the knowledge or consent of the inventor by a third party which obtained the information directly or indirectly from the inventor; or
- A third party, which obtained the information directly or indirectly from the inventor.
Can one patent application cover several different inventions?
No, the Philippine patent application shall cover one invention only or a group of inventions forming a single general inventive concept.
Can one extend the time limit for filing a response to office action?
The time limit to respond to office action may be extended only for good and sufficient cause, and for a reasonable time specified. Any request for such extension must be filed on or before the day on which the response is due. The Examiner may grant a maximum of two (2) extensions of two (2) months each, provided that the aggregate period granted inclusive of the initial period allowed to file the response, shall not exceed six (6) months from the mailing date of the official action requiring such response.
Does the applicant have any remedy if the Philippine Examiner rejects the patent application?
Yes. If the Examiner rejects the patent application, the decision may be appealed to the Director of the Bureau of Patents. Thereafter, if the Director of the Bureau of Patents agrees with the examiner, that decision may be appealed to the Director General of the Intellectual Property Office. The decision of the Director General to reject the application may then be appealed to the Court of Appeals, and ultimately to the Supreme Court of the Philippines.
Is there accelerated examination for patent applications in the Philippines?
Yes. IPOPHL has existing Patent Prosecution Highway (PPH) program/agreement with USPTO, JPO, KIPO, and EPO. Hence, an applicant may request for accelerated examination under the PPH if the corresponding foreign applications in said countries/jurisdictions are indicated to be patentable/allowable.
An applicant may also opt to file a request for accelerated examination under the ASEAN Patent Examination Co-operation (ASPEC) Program in which Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Philippines, Singapore, Thailand, and Viet Nam are participating countries. ASPEC is a program for IP Offices from participating ASEAN member states (AMS) to utilize the search and examination (S&E) results from another participating AMS IP Office as reference in its own S&E work. Hence, applicant may request for accelerated examination under the ASPEC if the corresponding foreign applications in said countries are indicated to be patentable/allowable.
Can one file an opposition proceeding against a Philippine patent application?
No. After the publication of the patent application in the IPOPHL E-Gazette, third parties may only file observations to the Bureau of Patents as to the patentability of the invention that is the subject of the application. The Bureau of Patents will then communicate the observations to the applicant, who can submit his/her comments. The patent examiner will then take note of the third parties’ observations and the applicant’s comments in deciding whether to grant the patent registration.
What are the rights conferred to a patent owner in the Philippines?
Under Section 71 of the Intellectual Property Code of the Philippines, the patent owner has the following exclusive rights:
- Where the subject matter of a patent is a product, the patent owner has the right to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product;
- Where the subject matter of a patent is a process, the patent owner has the right 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; and
- Patent owners shall also have the right to assign, or transfer by succession the patent, and to conclude licensing contracts for the same.
Are there any exceptions to the exclusive rights of a patent owner?
Yes. Section 72 of the Intellectual Property Code of the Philippines provides that the patent owner has no right to prevent third parties from using the invention under the following circumstances:
- Where the patented product has been placed on the market in the Philippines by the owner of the patent or with his authorization, insofar as such use is made after the product has been placed on the market;
- Where the exploitation of the patent is done privately and on a non-commercial scale or for a non-commercial purpose, provided, that such use does not significantly prejudice the economic interests of the patent owner;
- Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention;
- Where the act consists of preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription; and
- Where the patented invention is used on vehicles in transit in the Philippines, provided that such use is exclusively for the needs of the vehicle and not for the manufacturing of anything to be sold within the Philippines.
Will a prior user, who in good faith uses a patented invention, be held liable for patent infringement?
No. Any prior user in good faith, who was using the invention or who has undertaken serious preparations to use the invention in his enterprise or business in the Philippines, 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.
Can the Philippine government use the patented invention without authorization of the patent owner?
Yes. A government agency or a person authorized by the government may exploit the invention even without the consent of the patent owner where:
- The public interest, in particular, national security, health or the development of other sectors, as determined by the appropriate agency of the government, so requires; or
- A judicial or administrative body has determined that the manner of exploitation by the patent owner or the licensee is anti-competitive.
What is the scope of protection conferred by a patent?
Under Section 75 of the Intellectual Property Code of the Philippines, the scope of protection conferred by the patent is determined by the claims, which are to be interpreted in light of the description and drawings. In determining the extent of protection conferred by the patent, the claims shall be considered to cover not only all the elements as expressed therein, but also the equivalents.
Can an interested party file an action for the cancellation of a patent?
Yes. Any interested person may, upon payment of the required fee, file with the Bureau of Legal Affairs of the Intellectual Property Office, a verified Petition to Cancel the patent or any claim thereof, or parts of the claim, based on any of the following grounds:
- The invention is not new and patentable;
- 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
- The patent is contrary to public order or morality.
What are the remedies available to a patent owner in cases of patent infringement?
In case of patent infringement, the patent owner may file any of the following:
- Civil action to recover from the infringer damages sustained plus attorney’s fees and expenses of litigation, and to secure an injunction for the protection of his rights, provided, no damages may be recovered for acts committed more than four (4) years before the execution of the action for infringement. No damages may be recovered for acts of infringement before the infringer knew of the patent or had reasonable grounds to know of the patent;
- Criminal case for patent infringement, which must be filed within 3 years from the date of the commission of the crime; or
- Administrative case before the following agencies: (i) the Department of Trade and Industry pursuant to Department Administrative Order 01, Series of 2000, implementing E.O. 913 and Ministry Order No. 69; or (ii) the Bureau of Legal Affairs of the Intellectual Property Office where the total damages claimed is not less than PhP200,000.00. Provisional remedies may be granted in accordance with the Rules of Court. No damages may be recovered for acts committed more than four (4) years before the execution of the action for patent infringement.