Law on Patents - Intellectual Property Code of the Philippines PDF

Paten THE LAW ON INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES CHAPTER II: Patentibility Three-Fold Purppose of Patent 1. To foster and reward inventions 2. Promotes disclosure of invetions to stimulate further innovation and permit public use of the invention once...

Paten THE LAW ON INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES CHAPTER II: Patentibility Three-Fold Purppose of Patent 1. To foster and reward inventions 2. Promotes disclosure of invetions to stimulate further innovation and permit public use of the invention once the patent expires 3. Stringent requirements for patent protection prevent people from claiming ownership of already public ideas. Requisites of Patentable Inventions (Sec. 21) 1. Novelty - does not form part of prior art (Sec. 23) 2. Inventive Step- it is not obvious to a person skilled in the art at the time of filing/priority date of the application claiming the invention. (Sec. 26) 3. Industrial Applicability- Invention that can be produced and used in any industry.(Sec. 27) If new and industrially applicable but does not invlove inventive step:  UTILITY MODEL- refers to an invention in the mechanical field, cannot be patented but may be registered for a period of 7 years from the date of filing without possibility of renewal. CHAPTER II: Patentibility If new and not industrially applicable, and does not invlove inventive step:  INDUSTRIAL DESIGN- any 3 dimensional form provided that such form gives a special appearance to and can serve as a pattern for an industrial product or handicraft. Registered with a period of 5 years from the application date, renewable not more than 2 times thereafter each with a term of 5 years. NON- PATENTABLE INVENTIONS (Sec. 22) Discoveries, scientific theories and mathematical methods. (Sec. 22.1) Schemes, rules and methods of performing acts, playing games or doing business, and programs for computers. (Sec. 22.2) Methods for treatment of the human and animal body by surgery or therapy and diagnostic methods practiced on the human body. (Sec. 22.3) Plants varieties or animal breeds or essentially biological process for the production of plants or animals. (Sec. 22.4) Aesthetic creations (Sec. 22.5) Anything contrary to public order or morality. (Sec. 22.6) CHAPTER III:Right to a Patent To Whom Does the Right to a Patent Belong? (Sec. 28)  Inventor, heir, assigns INVENTOR RIGHT TO A PATENT 2 or more persons have jointly made an The right to a patent shall belong to them jointly. invention. (Sec. 28) 2 or more persons have made the The right to a patent shall belong to the person who filed an invention separately and independent of application each other. (Sec.) 2 or more applications are filed for the First to file rule- the applicant with the earliest filing/priority date same invention. (Sec. 29) Inventions created pursuant to a General rule: The person who commisions own the patent commission. (Sec. 30) Exeption: Provided in the contract The employee made the invention in the The employee, if the inventive activity is not part of his regular course of his employment contract. duties even if he uses the time, facilities and materials of the (Sec. 30.1, 30.2) empployer. The employer, if the invention is the result of the performance of his regularly-assigned duties Exeption: There is an agreement (express or implied) to the contrary. CHAPTER IV: Patent Application Who may apply for a patent? Any person, natural or juridical, may apply for a patent. If the applicant is not the inventor, The Office shall require him to submit a proof of his authority to apply for the patent Juridical Person: is a body of persons, a corporation, a partnership, or any legal entity that is recognized by law which grants a juridical personality separate and distinct from that of a shareholder, partner or member. When the applicant dies, becomes insane or incapacitated  In case of this scenario, the legally appointed administrator, executor, guardian, conservator, or the representative of the applicant may sign the application papers and other documents. Assigned Invention and Patents  In case the whole interest in the invention is assigned, the application may be filed by or in name of the assignee who may sign the application. Sec. 32. The Application 32.1 The patent application shall be in Filipino or English and shall contain the following: (a) A request for the grant of a patent; (b) A description of the invention; (c) Drawings necessary for the understanding of the invention; CHAPTER IV: Patent Application (d) One or more claims; and (e) An abstract. 32.2. No patent may be granted unless the application identifies the inventor. If the applicant is not the inventor, the Office may require him to submit said authority. (Sec. 13, R.A. No. 165a) Sec. 33. Appointment of Agent or Representative.- An applicant who is not a resident of Philippines must appoint and maintain a resident agent or representative in the Philippines upon whom notice or process for juridical or administrative procedure relating to the application for patent or the patent may be served. (Sec.11, R.A. No. 165a) Sec. 34. The Request- The request shall contain a petition for the grant of the patent, the name and other data of the applicant, the inventor and the agent and the title of the invention. (n) The request shall contain the following: (a) Petition for the grant of a patent; (b) Applicant’s name or address; (c) Title of the Invention; (d) Inventor’s name (e) If with the claim for convention priority, it shall contain the file number, country of origin, and the date of filing in the said country where the application was first filed; (f) Name and address of the resident agent/representative (if any) and; CHAPTER IV: Patent Application (g) Signature of the applicant or resident agent/representative. Sec. 35. Disclosure and Description of the Invention. 35.1. Disclosure.- 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. Test for Enabling Disclosure The test for enabling disclosure is whether the person to whom it is directions therein, put the practice. Enabling Disclosure: The enabling disclosure shall contain a clear and detailed description of at least one way of doing the invention using working examples. In case of chemical substance and pharmaceutical subject matter, the disclosure must include one or more representative embodiments or working examples, a description of the result of the pharmacological test in the case of pharmaceutical subject matter, and all compounds must include their claimed activity. CHAPTER IV: Patent Application Requirements of Application relating to Biological Materials and Microorganisms (a) A culture of the microorganism has been deposited in a depositary institution before filing the application; (b) The depositary institution and the file number of the culture deposit are stated in the application. If this information is not yet available at the time of filing the application, the said information shall be submitted within 2 months from the request of the Examiner. Publication of the application under Section 44 of the IP Code shall be held pending until submission of the information; and (c) The application as filed gives relevant information as is available to the applicant on the characteristics of the microorganism. Requirements of Application relating to Biological Materials and Microorganisms before Allowance (a) A deposit was made in a recognized international depositary authority; (b) Proof of such deposit together with the proper identification or deposit number assigned by the depositary; and (c) That the depositary should be under the contractual obligation to place the culture in permanent collection and to provide access to persons who shall have interest therein with regard to matters relating to the patent application as published. CHAPTER IV: Patent Application 35.2. Description. - The Regulations shall prescribe the contents of the description and the order of presentation. (Sec. 14, R. A. No. 165a) CONTENTS OF THE DESCRIPTION: (a) Specify the technical field to which the invention relates; (b) Indicate the background art which, as far as known to the applicant, can be regarded as useful for understanding the invention, for drawing up the search report and for the examination, and preferably, cite the documents reflecting such art; (c) Disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state any advantageous effects of the invention with reference to the background art; (d) Where appropriate, refer to the different elements involved in the invention by the use of reference letters or numerals (preferably the latter). (e) Briefly describe the figures in the drawings, if any; (f) Describe in detail at least one way of carrying out the invention claimed using examples where appropriate and referring to the drawings, if any; and (g) Indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in the industry. CHAPTER IV: Patent Application Title of Invention The title of the invention shall be as short and specific as possible. It shall appear as a heading on the first page of the description. General Requisites for the Drawings: (a) The drawing must be signed by the applicant or his name may be on the drawing by his attorney or agent. (b) When the invention relates to an improvement of the prior art, the drawing must exhibit, in one or more views, the Novel or inventive improvement in relation with the old structure presented in dotted lines. (c) Each element of each figure shall be in proper proportion to each of the other elements in the figure except where the use of a different proportion is indispensable for the clarity of the figure. (d) If the same part of the invention appears in more than one view of the drawing, it must always be represented by the same character and the same character must never be used to designate different parts. Uniform Standard of Excellence required of Drawings The character of each original drawing must be brought as nearly as possible to a uniform standard of excellence suited for a good and clear visualization of the invention CHAPTER IV: Patent Application Working Models of the Invention, when Required: A working model may be required for purposes of demonstration, to enable the Office to fully and readily understand the precise operation of the machine if the invention sought to be patented cannot be sufficiently described in the application. Plant Visit and Inspection In cases where the presentation of a working model is not possible due to the physical features of the invention, the applicant may file a request for a plant visit and inspection for a clear assessment of the workability of the invention. Sec. 36. The Claims 36.1. The application shall contain one (1) or more claims which shall define the matter for which protection is sought. Each claim shall be clear and concise, and shall be supported by the description. Claims (a) The patent application must conclude with a claim, particularly pointing out and distinctly claiming the part, improvement, or combination which the applicant regards as his invention. (b) The application may contain 1 or more independent claims in the same category, where it is not appropriate, having regard to the subject matter of the application, to cover this subject matter by a single claim which shall define the matter for which protection is sought. CHAPTER IV: Patent Application (c) One or more claims may be presented in dependent form, referring back and further limiting another claim(s) in the same application. Any dependent claim which refers to more than one other claim (multiple dependent claim) shall refer to such other claims in the alternative only. (d) The claims must conform to the invention as set fourth in the description and the terms and phrases used in the claims must find clear support or antecedent basis in the said description. (e) If the invention relates to an improvement, the claims or claim shall specifically point out and distinctly claim the improvement in combination with a preamble statement indicating the prior features. 36.2. The Regulations shall prescribe the manner of the presentation of claims. (n) Forms and Contents of Claims A statement indicating the designation of the subject matter of the invention and those technical features which are necessary for the definition of the claimed subject matter. A characterizing portion preceded by the expression, “characterized in that” or “ characterized by that, stating the technical features which, in combination with the features stated in subparagraph (a) it is desired to protect. If the application contains drawings, the technical features mentioned in the claims shall preferably, if the intelligibility of the claim can thereby be increased, be followed by reference signs relating to these features and placed between parentheses. CHAPTER IV: Patent Application Employment of Attorney-at-Law or Patent Agent Recommended An applicant or an assignee of the entire interest may prosecute his own case, but he is advised, unless familiar with such matters, to employ a competent attorney-at-law or patent agent, as the value of patents depends largely on the skillful preparation of the description of claims. Sec.37. The Abstract- The abstract shall consist of a concise summary of the disclosure of the invention as contained in the description, claims and drawings in preferably not more than one hundred fifty (150) words. Sec. 38. Unity of Invention. 38.1. The application shall relate to one invention only or to a group of inventions forming a single general inventive concept. 38.2. If several independent inventions which do not form a single general inventive concept are claimed in one application, the Director may require that the application be restricted to a single invention. 38.3. The fact that a patent has been granted on an application that did not comply with the requirement of unity of invention shall not be a ground to cancel the patent. (Sec. 17, R.A. No. 165a) CHAPTER IV: Patent Application Requirements for Unity of Invention (a) The requirement of invention shall be fulfilled only when there is a technical relationship among these inventions involving one or more of the same or corresponding special technical features. (b) The determination whether a group of inventions is linked as to form a general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternative within a single claim (c) Plurality of independent claims in different categories (d) Different specific combination of claims in different categories are permissible in some cases with certain additions. Reconsideration for Requirement If the applicant disagrees with the requirement of division, he may request reconsideration and withdrawal or modification of the requirement, giving the reason thereof. The requirement for division will be reconsidered on such a request , if the requirement is repeated and made final, the Examiner will act on the claims of the invention elected. Appeal for Requirement for Division After a final requirement for division, the applicant, in addition to making any response due on the remainder of the action, may appeal from the requirement together with the full payment of the prescribed fee. CHAPTER IV: Patent Application Sec.39. Information Concerning Corresponding Foreign Application for Patents- The applicant shall, at the request of the Director, furnish him with the date and number of any application for patent filed by him abroad, hereafter referred to as the “foreign application” relating to the same or essentially the same invention as that claimed in the application filed with the Office and other documents relating to the foreign application. Non Compliance- The application is considered withdrawn if the applicant fails to comply with the requirement to furnish information concerning the corresponding foreign application within the specified period. Appointment of Resident Agent and Representative- An applicant who is not a resident of the Philippines must appoint and maintain a resident agent or representative in the Philippines upon whom notice or process for Judicial or administrative procedure relating to the application for patent or the patent may be served. CHAPTER V:Procedure for Grant of Patent SECTION 40. Filing Date Requirements. 40.1. The filing date of a patent application shall be the date of receipt by the Office of at least the following elements: a. An express or implicit indication that a Philippine patent is sought; b. Information identifying the applicant; and c. Description of the invention and one (1) or more claims in Filipino or English. SECTION 41. According a Filing Date The office checks if the application is complete. If not, the applicant can fix it within a given time. The filing date is set only once everything is complete. If not fixed on time, the application is withdrawn. SECTION 42. Formality Examination Once the filing date is set and fees are paid, the applicant must fulfill formal requirements on time. If the applicant doesn't comply within the given time, the application will be withdrawn. The process for re-examination, revival, and appeals will be defined by the Regulations. SECTION 43. Classification and Search Once a patent application complies with the formal requirements, it will be classified. A search will then be conducted to identify any prior art (existing patents or knowledge) that may affect the novelty of the application. CHAPTER V:Procedure for Grant of Patent SECTION 44. Publication of Patent Application 44.1: After 18 months from the filing date or priority date, the patent application will be published in the IPO Gazette, along with a search document that cites any prior art found during the search. 44.2: After the publication, any interested party can inspect the application documents filed with the IPO. 44.3: The Director General, with approval from the Secretary of Trade and Industry, can prohibit or restrict the publication of an application if it is deemed harmful to the national security or interests of the Republic of the Philippines. SECTION 45. Confidentiality Before Publication If the application hasn't been published yet, it remains confidential, and no one can access it unless the applicant agrees. SECTION 46. Rights Conferred by a Patent Application After Publication Rights after Publication: Applicant has rights like a granted patent once the application is published (Section 71 rights) Conditions for Enforcement: 1. The infringer must have actual knowledge of the published application. 2. Or, the infringer must have received written notice identifying the application by serial number. Time Limit for Action: Legal action can be taken after the patent is granted and within 4 years of the infringement. CHAPTER V:Procedure for Grant of Patent SECTION 47. Observation by Third Parties Written observations submitted to the Office. Applicant notified and may provide comments. Observations and comments are filed in the application’s record. SECTION 48. Request for Substantive Examination Request for Substantive Examination: The application is deemed withdrawn unless a written request for examination is made within 6 months of publication (Section 41). Requirements for Request: The request must confirm compliance with Sections 21-27 and 32- 39, and fees must be paid on time. Irrevocable Withdrawal: Once the request is withdrawn, it is final and no fees will be refunded. SECTION 49. Amendment of Application Amendment During Examination: The applicant may amend the patent application while it is being examined. No New Matter: The amendment cannot introduce new matter that was not originally disclosed in the filed application. SECTION 50. Grant of Patent Grant of Patent: The patent will be granted if the application meets all requirements and fees are paid on time. CHAPTER V:Procedure for Grant of Patent Failure to Pay Fees: If the grant and printing fees are not paid on time, the application will be deemed withdrawn. Effective Date: The patent takes effect on the date of publication of the grant in the IPO Gazette SECTION 51. Refusal of the Application Appeal of Refusal: If the examiner refuses to grant the patent, the applicant can appeal to the Director. Appeal Procedure: The Regulations will outline the procedure for appealing the Director's refusal. SECTION 52. Publication Upon Grant of Patent Patent Grant Publication: The grant of the patent, along with related details, will be published in the IPO Gazette. Inspection by Interested Parties: After publication, any interested party can inspect the full patent description, claims, and drawings. SECTION 53. Contents of Patent Issuance: The patent is issued in the name of the Republic of the Philippines under the seal of the Office. Signature: The patent is signed by the Director. Registration: The patent, along with the description, claims, and drawings (if any), is registered in the books and records of the Office. SECTION 54. Term of Patent Duration: The term of a patent is 20 years from the filing date of the application. CHAPTER V:Procedure for Grant of Patent SECTION 55. Annual Fees. 55.1. To maintain the patent application or patent, an annual fee shall be paid upon the expiration of four (4) years from the date the application was published pursuant to Section 44 hereof, and on each subsequent anniversary of such date. Payment may be made within three (3) months before the due date. The obligation to pay the annual fees shall terminate should the application be withdrawn, refused, or cancelled. 55.2. If the annual fee is not paid, the patent application shall be deemed withdrawn or the patent considered as lapsed from the day following the expiration of the period within which the annual fees were due. A notice that the application is deemed withdrawn or the lapse of a patent for non- payment of any annual fee shall be published in the IPO Gazette and the lapse shall be recorded in the Register of the Office. 55.3. A grace period of six (6) months shall be granted for the payment of the annual fee, upon payment of the prescribed surcharge for delayed payment. (Sec. 22, R.A. No. 165a) SECTION 56. Surrender of Patent. 56.1. The owner of the patent, with the consent of all persons having grants or licenses or other right, title or interest in and to the patent and the invention covered thereby, which have been recorded in the Office, may surrender his patent or any claim or claims forming part thereof to the Office for cancellation. CHAPTER V:Procedure for Grant of Patent 56.2. A person may give notice to the Office of his opposition to the surrender of a patent under this section, and if he does so, the Bureau shall notify the proprietor of the patent and determine the question. 56.3. If the Office is satisfied that the patent may properly be surrendered, he may accept the offer and, as from the day when notice of his acceptance is published in the IPO Gazette, the patent shall cease to have effect, but no action for infringement shall lie and no right compensation shall accrue for any use of the patented invention before that day for the services of the government. (Sec. 24, R.A. No. 165a) SECTION 57. Correction of Mistakes of the Office The Director shall have the power to correct, without fee, any mistake in a patent incurred through the fault of the Office when clearly disclosed in the records thereof, to make the patent conform to the records. (Sec. 25, R.A. No. 165) SECTION 58. Correction of Mistake in the Application On request of any interested person and payment of the prescribed fee, the Director is authorized to correct any mistake in a patent of a formal and clerical nature, not incurred through the fault of the Office. (Sec. 26, R.A. No. 165a) CHAPTER V:Procedure for Grant of Patent SECTION 59. Changes in Patents. 59.1. The owner of a patent shall have the right to request the Bureau to make the changes in the patent in order to: a. Limit the extent of the protection conferred by it; b. Correct obvious mistakes or to correct clerical errors; and c. Correct mistakes or errors, other than those referred to in letter (b), made in good faith: Provided, That where the change would result in a broadening of the extent of protection conferred by the patent, no request may be made after the expiration of two (2) years from the grant of a patent and the change shall not affect the rights of any third party which has relied on the patent, as published. 59.2. No change in the patent shall be permitted under this section, where the change would result in the disclosure contained in the patent going beyond the disclosure contained in the application filed. 59.3. If, and to the extent to which the Office changes the patent according to this section, it shall publish the same. (n) SECTION 60. Form and Publication of Amendment. — An amendment or correction of a patent shall be accomplished by a certificate of such amendment or correction, authenticated by the seal of the Office and signed by the Director, which certificate shall be attached to the patent. Notice of such amendment or correction shall be published in the IPO Gazette and copies of the patent kept or furnished by the Office shall include a copy of the certificate of amendment or correction. (Sec. 27, R.A. No. 165) CHAPTER VI:Cancellation of Patents and Substitution of Patentee SECTION 61. Cancellation of Patents. 61.1. Any interested person may, upon payment of the required fee, petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds: a. That what is claimed as the invention is not new or patentable; b. That 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 c. That the patent is contrary to public order or morality. 61.2. Where the grounds for cancellation relate to some of the claims or parts of the claim, cancellation may be effected to such extent only. (Secs. 28 and 29, R.A. No. 165a) SECTION 62. Requirement of the Petition. — The petition for cancellation shall be in writing, verified by the petitioner or by any person in his behalf who knows the facts, specify the grounds upon which it is based, include a statement of the facts to be relied upon, and filed with the Office. Copies of printed publications or of patents of other countries, and other supporting documents mentioned in the petition shall be attached thereto, together with the translation thereof in English, if not in the English language. (Sec. 30, R.A. No. 165) CHAPTER VI:Cancellation of Patents and Substitution of Patentee SECTION 63. Notice of Hearing. — Upon filing of a petition for cancellation, the Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the patentee and all persons having grants or licenses, or any other right, title or interest in and to the patent and the invention covered thereby, as appears of record in the Office, and of notice of the date of hearing thereon on such persons and the petitioner. Notice of the filing of the petition shall be published in the IPO Gazette. (Sec. 31, R.A. No. 165a) SECTION 64. Committee of Three. — In cases involving highly technical issues, on motion of any party, the Director of Legal Affairs may order that the petition be heard and decided by a committee composed of the Director of Legal Affairs as chairman and two (2) members who have the experience or expertise in the field of technology to which the patent sought to be cancelled relates. The decision of the committee shall be appealable to the Director General. (n) SECTION 65. Cancellation of the Patent. 65.1. If the Committee finds that a case for cancellation has been proved, it shall order the patent or any specified claim or claims thereof cancelled. 65.2. If the Committee finds that, taking into consideration the amendment made by the patentee during the cancellation proceedings, the patent and the invention to which it relates meet the requirement of this Act, it may decide to maintain the patent as amended: Provided, That the fee for printing of a new patent is paid within the time limit prescribed in the Regulations. CHAPTER VI:Cancellation of Patents and Substitution of Patentee 65.3. If the fee for the printing of a new patent is not paid in due time, the patent should be revoked 65.4. If the patent is amended under Subsection 65.2 hereof, the Bureau shall, at the same time as it publishes the mention of the cancellation decision, publish the abstract, representative claims and drawings indicating clearly what the amendments consist of. (n) SECTION 66. Effect of Cancellation of Patent or Claim. — The rights conferred by the patent or any specified claim or claims cancelled shall terminate. Notice of the cancellation shall be published in the IPO Gazette. Unless restrained by the Director General, the decision or order to cancel by Director of Legal Affairs shall be immediately executory even pending appeal. (Sec. 32, R.A. No. 165a) CHAPTER VII: REMEDIES OF A PERSON WITH A RIGHT TO A PATENT Sec.67. Patent Application by Persons Not Having the Right to a Patent- 67.1. If a person referred to in Section 29 other than the applicant declared by final court order or decision as having the right to the patent, such person may , within three months after the decision has become final: (a) Prosecute the application as his own application in place of the applicant; (b) File a new patent application in respect of the same invention; (c) Request that the application be refused; or (d) Seek cancellation of the patent, if one has already been issued. Sec.68. Remedies of the true and actual inventor- If a person who was deprived of the patent without his consent or through fraud is declared by final court order or decision to be the true and actual inventor, the court shall order for his substitution as patentee, or at the option of the true inventor, cancel the patent, and award actual and other damages in his favor if warranted by the circumstances. (Sec.33, R.A. No. 165a) Section 67.1 vs. Section 68 Section 67.1: 2 or more persons have made the invention separately and independently of each other Section 68: A person who was deprived of the patent without his consent or through fraud and is declared by final court order or decision to be true and actual inventor. CHAPTER VII: REMEDIES OF A PERSON WITH A RIGHT TO A PATENT Sec.69. Publication of the Court Order Sec.70. Time to File Action in Court Rights of Patentees and Infringement of Patents It is elementary that a patent may be infringed where the essential or substantial features of the patented invention are taken or appropriated, or the device , machine or other subject matter alleged to infringe is substantially identical with the patented invention. Rights conferred by Patent- 71.1 A patent shall confer to its owner the following exclusive rights: (a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any authorization and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product, (b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any unauthorized person or entity from using the process, from manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from such process 71.2: Patent owners shall also have the right to assign, or transfer by succession the patent, and to conclude licensing contracts for the same. (Sec. 37, R.A. No. 165a) CHAPTER VII: REMEDIES OF A PERSON WITH A RIGHT TO A PATENT Sec. 72. Limitations of Patent Rights 72.1: Using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express content, insofar as such use is performed after that product has been so put on the said market: 72.2: Where the act is done privately and on a non-commercial scale or a non-commercial purpose: 72.3: Where the act consists of making or using exclusively for experimental use of the invention for scientific purposes: 72.4: In case of drugs and medicines, where the act includes testing, using, making or selling the invention including any data related thereto: 72.5: 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; and 72.6: Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other country entering the territory of Philippines temporarily or accidentally Sec. 73: The Prior User: who in good faith, was using the invention or has undertakes serious preparations to use the invention in his business or enterprise, before the filling date shall have the right to continue the use of the invention within it’s territory where the patent produces its effect. CHAPTER VII: REMEDIES OF A PERSON WITH A RIGHT TO A PATENT 73.2: The right of the prior user may only be transferred or assigned together with his enterprise or business. Sec.74. Use of Invention by Government 74.1: A government agency or third person authorized by the Government may exploit the invention even without the agreement of the patent owner where: (a) The public interest, so requires (b) A judicial or administrative body has determined the manner of exploitation, by the owner of the patentor his licensee, is anti-competitive; or (c) In case of drugs and medicines, there is a national emergency or other circumstances requiring the use of the invention (d) In case of drugs or medicines, there is a public non-commercial use of the patent by the patentee, without satisfactory reason. (e) In case of drugs and medicines, the demand for the patented article in the Philippines is not being met to an adequate extent and o n reasonable terms, as determined by the Secretary of Department of Health. 74.2. Unless otherwise provided herein, the use by the Government, or third person authorized by the Government shall be subject, where applicable, to the following provisions: CHAPTER VII: REMEDIES OF A PERSON WITH A RIGHT TO A PATENT (a) In situations of national emergency or other circumstances of extreme urgency as provided under Section 74.1 (b) In the case of public non-commercial use of the patent by the patentee, without satisfactory reason, as provided under Section 74.1 (c) If the demand for the patented article in the Philippines is not being met to an adequate extent and on reasonable terms as provided under Section 74.1 (e), the right holder shall be informed promptly; (d) The scope and duration of such use shall be limited to the purpose for which it was authorized; (e) Such use shall be non-exclusive (f) The right holder shall be paid adequate remuneration in the circumstances of each case (g) The existence of a national emergency or other circumstances of extreme emergency, referred to under Section 74.1 74.3. All cases arising from the implementation of this provision shall be cognizable by courts with appropriate jurisdiction provided by law. No court, except the Supreme Court of the Philippines, shall issue any temporary restraining order or preliminary injunction or such other provisional remedies that will prevent its immediate execution. CHAPTER VII: REMEDIES OF A PERSON WITH A RIGHT TO A PATENT 74.5. The Intellectual Property Office (IPO), in consultation with the appropriate government agencies, shall issue the appropriate implementing rules and regulations for the use or exploitation of patented inventions as contemplated in this section within one hundred twenty (120) days after the effectivity of this law. Sec. 75. Extent of Protection and Interpretation of Claims. 75.1. The extent of protection conferred by the patent shall be determined by the claims, which are to be interpreted in the light of the description and drawings. 75.1. The extent of protection conferred by the patent shall be determined by the claims, which are to be interpreted in the light of the description and drawings. Sec. 76. Civil Action for Infringement. 76.1. The making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorization of the patentee constitutes patent infringement. The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept and, although with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result. CHAPTER VII: REMEDIES OF A PERSON WITH A RIGHT TO A PATENT 76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented invention, whose rights have been infringed, may bring a civil action before a court of competent jurisdiction, to recover from the infringer such damages sustained thereby, plus attorney's fees and other expenses of litigation, and to secure an injunction for the protection of his rights. 76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty, the court may award by way of damages a sum equivalent to reasonable royalty. 76.4. The court may, according to the circumstances of the case, award damages in a sum above the amount found as actual damages sustained: 76.5. The court may, in its discretion, order that the infringing goods, materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed, without compensation. 76.6. Anyone who actively induces the infringement of a patent or provides the infringer with a component of a patented product or of a product produced. Sec 77. Infringement by a Foreign National Sec. 78. Process Patents; Burden of Proof. If the subject matter of a patent is a process for obtaining a product, any identical product shall be presumed to have been obtained through the use of the patented process if the product is new or there is substantial likelihood that the identical product was made by the process and the owner of the patent has been unable despite reasonable efforts, CHAPTER VII: REMEDIES OF A PERSON WITH A RIGHT TO A PATENT Sec. 79. Limitation of Action for Damages. No damages can be recovered for acts of infringement committed more than four (4) years before the institution of the action for infringement. (Sec. 43, R. A. No. 165) Sec. 80. Damages; Requirement of Notice. Damages cannot be recovered for acts of infringement committed before the infringer had known; or had reasonable grounds to know of the patent. Sec. 81. Defenses in Action for Infringement defenses action for infringement, the defendant, in addition to other defenses available to him, may show the invalidity of the patent, or any claim thereof, on any of the grounds on which a petition of cancellation can be brought under Section 61 hereof. (Sec. 45, R. A. No. 165) Sec. 82. Patent Found Invalid May be Cancelled. In an action for infringement, if the court shall find the patent or any claim to be invalid, it shall cancel the same, and the Director of Legal Affairs upon receipt of the final judgment of cancellation by the court, shall record that fact in the register of the Office and shall publish a notice to that effect in the IPO Gazette. (Sec. 46, R. A. No. 165a) Sec. 83. Assessor in Infringement Action. - 83.1. Two (2) or more assessors may be appointed by the court. The assessors shall be possessed of the necessary scientific and technical knowledge required by the subject matter in litigation. CHAPTER VII: REMEDIES OF A PERSON WITH A RIGHT TO A PATENT 83.2. Each assessor shall receive a compensation in an amount to be fixed by the court and advanced by the complaining party, which shall be awarded as part of his costs should he prevail in the action. (Sec. 47, R. A. No. 165a) Sec. 84. Criminal Action for Repetition of Infringement. - If infringement is repeated by the infringer or by anyone in connivance with him after finality of the judgment of the court against the infringer, the offenders shall, without prejudice to the institution of a civil action for damages, be criminally liable therefor and, upon conviction, shall suffer imprisonment for the period of not less than six (6) months but not more than three (3) years and/or a fine of not less than One hundred thousand pesos (P100,000) but not more than Three hundred thousand pesos (P300,000), at the discretion of the court. The criminal action herein provided shall prescribed in three (3) years from date of the commission of the crime. (Sec. 48, R. A. No. 165a) CHAPTER VIII:RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS Rights Conferred by Patents (Section 71) Exclusive Rights of Patent Owners: For Products: Prevent unauthorized making, using, selling, offering for sale, or importing. (Sec. 71.1-a) For Processes: Prevent unauthorized use of the process or sale/import of products derived from it. (Sec. 71.1-b) Other Rights: Assign or transfer patents and create licensing agreements. (Sec. 71.2) Limitations and Exceptions to Patent Rights Limitations (Section 72) The owner of a patent has no right to prevent third parties from performing, without his authorization, the acts referred to in section 71 hereof in the following circumstances: 1. Market Use: Using a product sold in the Philippines with the owner's consent. Provided, the limitations are post-conditioned for medicine and drug patents. (Sec. 72.1) 2. Private/Non-commercial Use: Activities without significant economic impact. (Sec. 72.2) 3. Experimental Use: Scientific or educational purposes. (Sec. 72.3) 4. Regulatory Testing: For approvals in the Philippines, granted by the Intellectual Property Office, in consultation with relevant government agencies. (Sec. 72.4) CHAPTER VIII:RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS 5.Medical Preparation: Compounding medicine per prescription. (Sec. 72.5) 6.Transport Vehicles: Temporary use in foreign ships, aircraft, or vehicles—provided that the use is necessary for the ship, vehicle, vessel, or aircrafts sake. (Sec. 72.6) Prior User Rights (Section 73): Good Faith Use: Rights for prior users before the patent filing date. (Sec. 73.1) Transferability: Tied to the user's business or its relevant part. (Sec. 73.2) Government Use of Patents (Section 74) Circumstances for Use Without Owner's Consent (Sec. 74.1—a-e): 1.Public Interest: National security, health, nutrition, etc. 2.Anti-competitive Behavior: By the patent owner/licensee. 3.National Emergency: Urgent need for drugs/medicines. 4.Public Non-commercial Use: Without adequate reason. 5.Unmet Demand: Patent product not reasonably available. Conditions: Notification to patent owner. Limited, non-exclusive use. Adequate remuneration. CHAPTER VIII:RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS Infringement and Legal Actions (Sections 75-81) Infringement (Section 76): Unauthorized making, using, selling, or importing patented products/processes. Excludes acts under Sections 72, 74, and specific licensing provisions. Legal Actions: Civil Action: Damages, attorney fees, and injunctions (Section 76). Defenses: Invalidity of the patent as a defense (Section 81). Burden of Proof: On the defendant in process patent cases (Section 78). Damage Limitations: Acts committed over 4 years before filing (Section 79). Infringer's awareness of patent required for damages (Section 80). Additional Provisions (Sections 82-84) Invalid Patents (Section 82): Cancellation if court finds invalidity. Notice published in the IPO Gazette. CHAPTER VIII:RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS Role of Assessors (Section 83): Experts appointed by the court in technical matters. Costs borne by the complainant. Criminal Liability (Section 84): Repeated infringement punishable by: Imprisonment: 6 months to 3 years. Fines: PHP 100,000 to PHP 300,000. Criminal action prescribes in 3 years. CHAPTER IX:Voluntary Licensing Sec.85 Voluntary License Contract  What is technology transfer arrangements?  What is computer software developed for mass market? Sec.86 Jurisdiction to settle disputes on royalties Sec.87.prohibited clauses.- except in cases under section 91, the following provisions shall be deemed prima facie to have an adverse on competition and trade: Sec. 88. Mandatory Provisions The following provisions shall be included in voluntary license contracts: Section 88.1. Section 88.2. Section 88.3. Section 88.4. Sec. 89. Rights of Licensor Sec. 90. Rights of Licensee REGISTRATION OF EXEMPT TECHNOLOGY TRANSFER ARRANGEMENTS  Application for exemption  Who may file?  When to file? CHAPTER IX:Voluntary Licensing  Filing date  Notice of additional Requirements  Scope of Evaluation Exemption from the Prohibited Clauses and Mandatory Provisions of the IP Code will be granted in exceptional or meritorious cases where substantial benefits will accrue to the economy, such as: (a) high technology content; (b) increase in foreign exchange earnings; (c) employment generation; (d) regional dispersal of industries; (e) substitution with or use of local raw materials; (f) pioneer status registration with the Board of Investments.  Recognition of Valid Intellectual Property Rights Section 92 Non-Registration with the Documentation Information and Technology Transfer Bureau  CERTIFICATE OF COMPLIANCE AND APPROVAL FOR LEGAL PURPOSES CHAPTER X:Compulsory Licensing CONDITIONS FOR COMPULSORY LICENSING (Sec. 93) a) Non-Use or Insufficient Use: If the patented product or process is not being produced or utilized in the Philippines at all, or if its production is insufficient to meet public demand. b) Public Interest: The issuance of a compulsory license must serve the public interest, particularly in cases of public health emergencies or extreme urgency. c) Previous Attempt to Obtain License: A request for voluntary licensing must first be attempted by the interested party, but without success over a reasonable period, unless the circumstances do not allow it. Procedure for Granting Compulsory Licenses (Sec. 94) 1. Application with the Intellectual Property Office (IPO) 2. Demonstrate compliance with the grounds for compulsory licensing 3. IPO will then consider the merits of the application and make a determination. Rights and Obligations of the Licensee (Sec. 95-98) Non-Exclusive License: Compulsory licenses are typically non-exclusive, meaning the original patent holder retains their rights and can continue to exploit the patent themselves. Fair Remuneration: The patent holder is entitled to receive adequate remuneration from the licensee for the use of the patented invention, reflecting its economic value. Duration and Review: The initial grant of a compulsory license is limited in duration and may be subject to review or revocation under certain conditions. CHAPTER XI: ASSIGNMENT AND TRANSMISSION OF RIGHTS Patent Assignment Definition:  Patent Assignment is the process by which a patent holder transfers their rights, title, and interest in a patent to another party. Types of Assignment: Full Assignment: Transfer of all rights, including the right to license, sell, or enforce the patent. Partial Assignment: Transfer of specific rights, such as territorial rights (e.g., licensing rights for certain countries) or time-bound rights. CHAPTER XI: ASSIGNMENT AND TRANSMISSION OF RIGHTS Requirements for a Valid Patent Assignment Written Agreement: - The assignment must be documented in writing, signed by both parties (assignor and assignee). Consideration: - An exchange of value is typically required, whether monetary or other forms of compensation. Registration: - To protect the assignee’s rights against third parties, the assignment must be registered with the relevant patent office (e.g., USPTO or EPO). Clear Terms: - The agreement should clearly specify the patent being assigned, the scope of the rights transferred, and any limitations (territorial, temporal, etc.). CHAPTER XI: ASSIGNMENT AND TRANSMISSION OF RIGHTS Patent Transmission Definition:  Patent Transmission refers to the legal transfer of patent rights due to specific legal circumstances such as: -Inheritance: Rights are passed down to heirs upon the death of the patent holder. - Bankruptcy: Patent rights may be assigned to creditors or other parties as part of debt settlement. - Court Orders: Patent rights can be transferred under legal orders or judgments. CHAPTER XI: ASSIGNMENT AND TRANSMISSION OF RIGHTS Procedure for Assignment of a Patent Step 1: Agreement Drafting and Negotiation - The assignor and assignee must agree on the terms of the assignment (financial terms, territorial rights, etc.). Step 2: Execution of Assignment Document - Both parties sign the assignment document, ensuring clarity in the scope of rights being transferred. Step 3: Notarization (if required) - Some jurisdictions may require notarization or witness signatures for the assignment to be legally binding. Step 4: Filing with Patent Office - Submit the assignment document to the relevant patent office for recordation (e.g., USPTO or EPO). This formalizes the transfer. Step 5: Transfer of Rights to Assignee - Once registered, the assignee can now fully enforce the rights, including licensing, selling, or defending the patent. CHAPTER XI: ASSIGNMENT AND TRANSMISSION OF RIGHTS Legal Considerations for Transmission Transmission of Rights Due to Death: Inheritance: If a patent holder dies, their rights pass to their heirs, typically according to the will. If there is no will, the rights will be passed according to the laws of inheritance (e.g., intestate succession). Legal Process: In some jurisdictions, the heirs must file the necessary documentation (e.g., probate, letters of administration) with the patent office to confirm the transmission. Transmission Due to Insolvency or Bankruptcy: Transfer to Creditors: If the patent holder is declared bankrupt, their rights may be transferred to a bankruptcy trustee, who may sell or license the patent to settle debts. Court Orders: In certain cases, courts can order the transfer of patent rights as part of a settlement or judgment in a lawsuit. CHAPTER XI: ASSIGNMENT AND TRANSMISSION OF RIGHTS Legal Considerations for Transmission Transmission of Rights Due to Death: Inheritance: If a patent holder dies, their rights pass to their heirs, typically according to the will. If there is no will, the rights will be passed according to the laws of inheritance (e.g., intestate succession). Legal Process: In some jurisdictions, the heirs must file the necessary documentation (e.g., probate, letters of administration) with the patent office to confirm the transmission. Transmission Due to Insolvency or Bankruptcy: Transfer to Creditors: If the patent holder is declared bankrupt, their rights may be transferred to a bankruptcy trustee, who may sell or license the patent to settle debts. Court Orders: In certain cases, courts can order the transfer of patent rights as part of a settlement or judgment in a lawsuit. CHAPTER XII: REGISTRATION OF UTILITY MODELS  A utility model is a technical solution to a problem in any field of human activity which is new and industrially applicable.  Utility model is a form of intellectual property protection. It is similar to a patent but typically has a shorter term.  Utility models are often referred to as “petty patents” or “innovation patents”. They are intended to protect minor invention or incremental improvement. Unlike patents, utility models are often not subject to substantive examination The advantages of an invention patent are that: a) it has a longer period of protection for 20 years from the application date, and b) it is a more stable right as it is substantively examined. However, the time taken for examination is relatively long. An invention patent is usually not granted until 2-4 years after filing. Utility model is only valid for 10 years from the application date and is deemed as lower inventiveness compared with an invention patent. However, it can be obtained quickly, usually within 1 year from filing, as there is no substantive examination for it. The protection granted by utility model can prevent others from using the invention without permission The term of protection for a utility model usually between 7 to 10 years CHAPTER XII: REGISTRATION OF UTILITY MODELS  Utility model are not available in every country. Only Countries like Germany, China, and Japan offer utility model protection. The protection granted by utility model can prevent others from using the invention without permission. The term of protection for a utility model usually between 7 to 10 years.  However the lack of examination may make utility models easier to challenge. Utility models are particularly useful for industries with fast innovation cycles. CHAPTER XIII: INDUSTRIAL DESIGN AND LAYOUT DESIGNS( TOPOGRAPHIES) OF INTEGRATED CIRCUITS 1. An Industrial Design is any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors: Provided, That such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft 2. Integrated Circuit means a product, in its final form, or an intermediate form, in which the elements, at least one of which is an active element and some or all of the interconnections are integrally formed in and/or on a piece of material, and which is intended to perform an electronic function 3. Layout-Design is synonymous With 'Topography' and means the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture.