What are the requirements to patent an invention in the Philippines?

For an invention to be patentable, it must be a technical solution to a problem in any field of human activity.  The invention must also be new, involves an inventive step, and is industrially applicable.

Can one obtain a patent on computer software or program in the Philippines?

Section 22.2 of the Intellectual Property Code of the Philippines provides that computer software or programs are not patentable. Computer software or programs are protected by copyright under Section 172(n) of the IP Code.

Can one obtain a patent on plant breeds and animal breeds in the Philippines?

Plant breeds, animal breeds or any biological processes for the production of plants and animals are not patentable in the Philippines. However, sui generis protection is provided for plant varieties under the Plant Variety Protection Act of 2001.

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 one obtain a patent on products originating from nature?

Natural products in exactly the same form as they are found in nature are not patentable in the Philippines. However, it is possible to patent a product originating from nature that is in a form that does not occur naturally. For example, an antibiotic separated from a microorganism may be patentable.

Who has a right to a patent?

The right to a patent belongs to the inventor, his heirs or assigns. When two or more persons have jointly made an invention, the right to a patent belongs to the inventors jointly.

If two 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. If an employee creates the invention in the course of his employment, the right to the patent belongs to:

  1. 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; or
  2. the employer if the invention is the result of the performance of the employee’s regularly assigned duties, unless there is an agreement, express or implied, to the contrary.

Who may file a patent application in the Philippines?

  • A natural person;
  • A juridical person; or
  • A body of persons, a corporation, a partnership, or other legal entity recognized by law

Who may represent a patent applicant before the Bureau of Patents?

If the patent applicant is a resident of the Philippines, he himself may file and prosecute a patent application with the Bureau of Patents. He may also appoint a representative.

If the patent applicant is not a resident of the Philippines, then he must appoint a resident agent or representative in the Philippines.

Can one claim priority in a Philippine patent application?

Yes. 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:

  1. The local application expressly claims priority;
  2. The Philippine application is filed within twelve (12) months from the date when the earliest application was filed; and
  3. 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.

How does an applicant obtain a filing date on a patent application?

The applicant must submit the following to the Bureau of Patents:

  • 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.

What are the official filing fees for invention patents?

Small Entities:

  • Filing fee: Php1,800.00
  • Fee for each claim in excess of five: Php 150.00
  • Fee for each sheet in excess of thirty: Php 15.00

Big Entities:

  • Filing fee: Php3,600.00
  • Fee for each claim in excess of five : Php 300.00
  • Fee for each sheet in excess of thirty: Php 30.00

The filing fees may be paid at the time of filing or within one (1) month from the filing date.

To be considered a small entity, the patent applicant must meet the following requirements:

  1. any natural or juridical person whose assets are worth One Hundred Million Pesos (Php100M) or less; or
  2. any entity, agency, office, bureau or unit of the Philippine government including government-owned or controlled corporations, state universities and colleges and government-owned or government-run schools.

A big entity is any natural or juridical person other than a small entity as defined above.

Any natural or juridical person is presumed to be a big entity unless a written statement to the contrary is submitted by such natural person or the duly authorized representative of such juridical person.

What must be included in a Philippine patent application?

A 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
  • Abstract.

No patent may be granted unless the application identifies the inventor. If the applicant is not the inventor, the Intellectual Property Office of the Philippines may require the applicant to submit authority to file the patent application.

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 a 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 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:

  1. The inventor;
  2. 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
  3. 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.

Is the invention protected prior to publication of the patent application in the Intellectual Property Office (IPO) Gazette?

No, the invention is not protected prior to the publication of the patent application in the IPO 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 IPO 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.

Can one file an opposition proceeding against a Philippine patent application?

No. After the publication of the patent application in the IPO 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.

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.

Does the applicant have any remedy if the examiner rejects the patent application?

Yes. If the examiner rejects the patent application, then 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.

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 IPO 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.

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:

  1. 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;
  2. 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
  3. 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:

  1. 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;
  2. 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;
  3. Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention;
  4. 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
  5. 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:

  1. 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
  2. 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.

What is required to maintain a patent application or a patent registration?

An annual fee must be paid upon the expiration of four (4) years from the date the application was published and on each subsequent anniversary of such date. Otherwise, the application is deemed withdrawn or the patent considered lapsed.

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:

  1. the invention is not new and patentable;
  2. 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
  3. 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:

  1. 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;
  2. Criminal case for patent infringement, which must be filed within 3 years from the date of the commission of the crime; or
  3. 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 Php 200,000.00.  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.

 

Suites 2004 & 2005, 88 Corporate Center Valero corner Sedeño Streets, Salcedo Village, Makati City 1227, Philippines   Telephone: +632 8896197  Facsimile: +632 8896132
© Copyright 2013 Federis & Associates Intellectual Property Firm. All rights reserved. Home | Site Map | Disclaimer | A PaperStreet Web Design