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PATENT
A Patent is a grant issued by the government through the Intellectual Property
Office of the Philippines (IP Philippines). It is an exclusive right granted for a
product, process or an improvement of a product or process which is new,
inventive and useful. This exclusive right gives the inventor the right to exclude
others from making, using, or selling the product of his invention during the life
of the patent.
A patent has a term of protection of twenty (20) years providing an inventor
significant commercial gain. In return, the patent owner must share the full
description of the invention. This information is made available to the public in
the form of the Intellectual Property Official Gazette and can be utilized as basis
for future research and will in turn promote innovation and development.
The patent owner may give permission to, or license, other parties to use the
invention on mutually agreed terms. The owner may also sell the right to the
invention to someone else, who will then become the new owner of the patent.
Once a patent expires, the protection ends, and an invention enters the public
domain; that is, anyone can commercially exploit the invention without
infringing the patent.
The first thing we need to know is when an invention patentable or not. Only
when the invention is patented may it be given protection under the Intellectual
Property Law.

1. Purpose of Patent
Threefold Purpose and Ultimate Goal
(1) Patent law seeks to foster and reward invention.
(2) Patent law promotes disclosures of inventions to stimulate further
invention and to permit the public to practice the invention once the
patent expires.
(3) The stringent requirement for patent protection seek to ensure that
ideas in the public domain remain there for the free use of the public
[Pearl & Dean v. SM, 409 SCRA 231 (2003)].
Pearl & Dean v. SM 409 SCRA 231 (2003)
Pear & Dean never secured a patent for the light boxes. There can be no
infringement of a patent until a patent has been issued.

2. Definition of Patentable Invention

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Patentable vs Non-patentable Inventions

Patentable Inventions: Sec. 21
Non-patentable Inventions: Sec. 22

PATENTABLE INVENTIONS
• A Technical Solution to a Problem
• In any field of human activity
• It must be NEW
• It must involve an INVENTIVE STEP
• It must be INDUSTRIALLY APPLICABLE
• May be/may relate to PRODUCT, PROCESS, IMPROVEMENT, or
COMBINATION

Statutory Classes of Invention

• A useful machine
• A product or composition
• A method or process, or
• An improvement of any of the foregoing
• Microorganism
• Non-biological & microbiological process

Non-Patentable Inventions
(1) Discovery, scientific theory, mathematical methods
*This includes:
i. (a) MERE DISCOVERY of a (b) NEW FORM or PROPERTY (c) of
a KNOWN SUBSTANCE (d) which DOES NOT RESULT in the (e)
ENHANCEMENT of the (f) KNOWN EFFICACY of that
substance; OR
ii. (a) MERE DISCOVERY of (b) ANY NEW PROPERTY or NEW USE
(c) of a KNOWN SUBSTANCE; OR
iii. (a) MERE USE of a (b) KNOWN PROCESS (c) unless such
known process results in a new product that employs at least
one new reactant.

(2) Scheme, rule and method of performing mental act, playing games
or doing business, and programs for computer
(3) Method for treatment – human or animal body by surgery or
therapy & diagnostic method
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*This provision shall not apply to PRODUCTS and COMPOSITION for

use in any of these methods.
(4) Plant variety or animal breed or essentially biological processes for
the production of plants and animals
*This provision shall not apply to microorganisms and non-
biological and microbiological processes (PATENTABLE).
(5) Aesthetic creations
(6) Contrary to public order or morality

Elements/Requirements of Patentability
(1) Novelty;
(2) Inventive step; and
(3) Industrial applicability.

Novelty (not prior art)

An invention shall not be considered new if it forms part of a prior art (Sec.
23 in relation to Sec. 24).
There are two classes of prior art:
o Everything that is already available to the public, not only in the
country but anywhere in the world BEFORE the filing date or the
priority date of the application claiming the invention

o Those that are actually subject of application for patent

registration.

 The whole contents of an application for a patent, utility

model, or industrial design registration filed or effective in
the Philippines, with a filing or priority date that is earlier
than the filing or priority date of the application are
considered prior art, subject to certain conditions.
*Conditions:
(1) The application which has VALIDLY CLAIMED the filing
date of an ealier application shall be prior art WITH EFFECT
as of the filing date of such EARLIER APPLICATION; and
(2) The applicant/inventor in both applications are NOT one
and the same.
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*Filing Date
-follows the “First-to-File” rule (Sec. 29), not the “First-to-Invent”
-NOT understood in its ordinary meaning: the day the application was
filed
-TAKEN TO MEAN according to what the law says: when all the
requirements under Section 40 are present
These requirements are:
(1) An express or implicit indication that a Philippine patent is
sought;
(2) Information identifying the applicant; and
(3) Description if the invention and one or more claims in Filipino or
English.
-If any of these elements is not submitted within the period set: The
application shall be considered WITHDRAWN.
-If date of filing cannot be accorded: The applicant shall be given an
opportunity to correct the deficiencies in accordance with the
implementing Regulations.
-If the deficiencies are not remedied within the prescribed time limit, the
application shall be considered WITHDRAWN.

*Priority Date (Sec. 31 Right of Priority)

-also follows the “First-to-File” rule
-comes into play when there is an (1) application for patent for the (2)
same invention that was (3) filed in another country (4) which by treaty,
convention, or law (5) affords the similar privileges to Filipino citizens
 Provided, That: (a) the local application expressly claims
priority; (b) it is filed within twelve (12) months from the date
the earliest foreign application was filed; and (c) 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.
-In case two or more applications for patent over the same invention: An
application with a latter local filing date may still be the preferred
application over a previous local date provided that it has an earlier
foreign application assuming of course that the requirements of Section
31 are all complied with.
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 Right of Priority: Thus, if in case there is an application filed

in the Philippines and another filed in another country, and
the Philippine application was filed earlier than the other
application, it is still possible that the foreign application will
be granted by virtue of this Right of Priority as long as all the
requisites are complied with.

*Non-prejudicial Disclosure
-General Rule: The element of novelty requires that the thing is not yet
known to anyone else besides the inventor. Once it has been made known
to the public through disclosures, this requirement may be in peril.
-Exception: There are disclosures that will not prejudice the application,
i.e the application will not be denied for lack of novelty as long as the
disclosure was:
(1) made during the 12 months preceding the filing date or the priority
date of the application and
(2) made by any of the following persons:
(a) the inventor;
(b) 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
(c) a third party which obtained the information directly or indirectly from
the inventor.
 Third Party: excludes all patent offices as well as the WIPO
which published patent applications field through the PCT

*A disclosure of information that is prejudicial shall have the same

adverse effect on novelty whether made before or after a non-prejudicial
disclosure.
* For the purposes of Subsection 25.1, an "inventor" also means any
person who, at the filing date of application, had the right to the patent.
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Inventive Step (not obvious to a person skilled in the art)

A person skilled in the art is presumed to be an ordinary practitioner
aware of what was common general knowledge in the art of the relevant
date. He is presumed also to have had at his disposal the normal means
and capacity for routine work and experimentation.

OBVIOUSNESS
• Not beyond normal progress of technology
• Follows plainly or logically from the prior art
• Does not require any skill or ability beyond that to be expected of the
person skilled in the art

SKILLED PERSON
• Ordinary practitioner who is Aware of common general knowledge in
specific art
• Has access to everything disclosed as the state of the art
• Observes developments in related technical field

Industrially Applicable if (an invention can be PRODUCED or USED in any

industry)
Verily, an invention will be useless if it will be forever confined in the
sphere of theories and principles. It has to have some practical application
for it to be really useful.

a. Product
Patents may be granted for inventions in any field of technology, from an
everyday kitchen utensil to a nanotechnology chip. An invention can be a
product – such as a chemical compound, or a process, for example – or a
process for producing a specific chemical compound. Many products in
fact contain a number of inventions. For example, a laptop computer can
involve hundreds of inventions, working together.
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b. Process
Patents may be granted for inventions in any field of technology, from an
everyday kitchen utensil to a nanotechnology chip. An invention can be a
product – such as a chemical compound, or a process, for example – or a
process for producing a specific chemical compound. Many products in
fact contain a number of inventions. For example, a laptop computer can
involve hundreds of inventions, working together.

c. Improvement
Aguas v. de Leon 111 SCRA 238 (1982)
De Leon never claimed to have invented the process of tile-making. The
Claims and Specifications of Patent No. 658 show that although some of
the steps or parts of the old process of tile making were described therein,
there were novel and inventive features mentioned in the process. Thus,
there is IMPROVEMENT in the old process of tile making.

d. Combination

3. Who may apply? [ISE]

a. Inventor

b. Successors-in-interest, assignee

c. Employer

My employee has invented a new product or process: Who will own the
rights to the patent?
- In most countries, if an employee has developed an invention in
execution of his/her employment contract – i.e. usually during his/her
working time within the enterprise – the invention (and the related patent
rights) will belong to the enterprise. To avoid confusion and possible
disputes, employers often specify issues of intellectual property
ownership in employment contracts. Depending on the merits of the case,
the employee may, however, have a right to equitable remuneration in
accordance with legislative provisions or the employment contract. In any
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case, the employee will always retain the right to be mentioned as the
inventor, unless he/she expressly renounces this right.

4. Ownership of Patent [IFOEE – AJ]

a. Inventor
Sec. 28 of the IP Code
Sec. 28. 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 shall belong to them jointly. (Sec. 10, R. A.
No. 165a)

b. First-to-file
Sec. 29 of the IP Code
First-to-File Rule
-Naturally, for this rule to apply, there must at least be two persons who
have made the invention separately and independently of each other.
Otherwise, joint-ownership under Section 28 may exist or the situation
may call for the application of Section 67.
-The right to the patent shall belong to the person who filed an application
for such invention who has the earliest filing date or, the earliest priority
date.

c. One who commissions the work

The person who commissions the work shall own the patent, unless
otherwise provided in the contract.

d. Employer – Already discussed previously.

e. Employee – Already discussed previously.

f. Assignees
Sec. 104 of the IP Code
Sec. 104. Assignment of Inventions. (May be ENTIRE or SPECIFIC)
- An assignment may be of the entire right, title or interest in and to the
patent and the invention covered thereby, or of an undivided share of the
entire patent and invention, in which event the parties become joint
owners thereof. An assignment may be limited to a specified territory.
(Sec. 51, R. A. No. 165)
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g. Joint owners
Secs. 104 and 107
-Either by:
(a) Issuance of patent in joint favour;
(b) Assignment of an undivided share in the patent and invention; or
(c) Succession-in-interest
-Effect: EACH joint owner is entitled PERSONALLY to (a) make, (b) use, (c)
sell, or (d) import the invention, PROVIDED that neither may grant nor
assign right/title/interest WITHOUT the CONSENT of the others or
WITHOUT PROPORTIONALLY DIVIDING PROCEEDS with the others.

5. Patentable Subject Matter

State Street Bank v. Signature Financial Group (1998)
The transformation of data, representing discrete dollar amounts,
through a series of mathematical calculations by a machine, into a final
share price constitutes a practical application of a mathematical
algorithm, formula, or calculation because it produces a useful, concrete,
and tangible result. Hence, the transformation is eligible subject matter
because it passes the test for utility.

The utility requirement maintains that certain types of mathematical

subject matter or algorithms, standing alone, represent nothing more
than abstract ideas. Once this subject matter is reduced to some type of
practical application, it becomes patentable.

The standard for this practical application has been, and remains, the
production of "a useful, concrete and tangible result."

The Federal Circuit also held that business methods are subject to the
same legal requirements for patentability as applied to any other process
or method.

Bilski v. Kappos (2010)

Petitioners submitted an application to patent a business method using a

mathematical algorithm to hedge against price changes in the energy
market. The patent examiner rejected the application because it was
related to an abstract idea with no relationship to a specific apparatus.
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The definition of “process” does not exclude business methods.

Petitioners’ process, however, may not be a “process” under § 101
because it claims an abstract idea. Any process that utilizes an abstract
idea is itself unpatentable.

*State Steet Bank and Bilski case distinguished:

o State Street held that an invention should be patent eligible under
35 U.S.C. §101 if it involves some practical application and “it
produces a useful, concrete and tangible result.”
o It is clear that the broad “useful, concrete, and tangible result” test
is dead. The two concurring opinions in Bilski (2010) both explicitly
reject the Useful-Concrete-And-Tangible-Result test of State Street.
o In re Bilksi decision, the Federal Circuit already repudiated State
Street as inadequate and "insufficient to determine whether a
claim is patent-eligible under § 101."

Diamond v. Chakrabarty (1980)

The Plaintiff artificially created an oil-eating bacterium and filed a patent
application with three claims. The first two were method claims regarding
the method of making the bacterium and the application of the bacteria
to oil. Both were approved. The third claim was for the bacterium itself
and the Patent Trademarks Office (Defendant) rejected this on the
grounds that it was living matter and was not included in Title 35. The
appellate court reversed. The Supreme Court granted certiorari.

A live, human-made micro-organism is patentable subject matter under §

101. Respondent's micro-organism constitutes a "manufacture" or
"composition of matter" within that statute.

The “manufacture” and “composition of matter” referred to here is non-

naturally occurring manufacture or composition of matter--- a product of
human ingenuity "having a distinctive name, character [and] use."

Harvard College v. Canada (Commissioner of Patents) (2002)

Harvard College applied for a patent on its invention of “transgenic
animals”. Harvard was seeking patent protection both on the process of
producing “founder” mice and on the “founder” mice themselves.
Harvard College’s sole claim is to have modified the “genetic matter of
which [the oncomouse] is composed”.
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The oncomouse that has been produced by a combination of genetic

engineering and natural gestation is a NOT a “manufacture” or
“composition of matter” that is new, unobvious and useful; if it is, then
the President and Fellows of Harvard University, who funded the
research, are entitled to a patent

A higher life form (mammal) is not patentable because it is not a

“manufacture” or “composition of matter” within the meaning of
“invention” in s. 2 of the Patent Act.

a. Novelty
Sec. 23, 24, 25 of the IP Code
Vargas v. Yaptico (1919)
Under the provisions of the statute, an inventor's creation must not have
been in public use or on sale in the United States (and the Philippine
Islands) for more than two years prior to his application.

To entitle a man to a patent, the invention must be new to the world. As

said by the United States Supreme Court, "it has been repeatedly held by
this court that a single instance of public use of the invention by a
patentee for more than two years before the date of his application for
his patent will be fatal to the validity of the patent when issued."

Thus, there is NO NOVELTY in this case because the invention was made
available to the public two years before the application.

Frank and Gohn v. Kosuyama (1933)

The action was based upon alleged infringement by the defendant of the
rights and privileges acquired by the plaintiffs over the aforesaid patent
through the manufacture and sale by the former of machines similar to
that covered by the aforesaid patent applied in the United Stated and in
the Philippines.

In the light of sound logic, the plaintiffs cannot insist that the "spindle"
was a patented invention on the ground that said part of the machine was
voluntarily omitted by them from their application, as evidenced by the
photographic copy thereof (Exhibit 41) wherein it likewise appears that
the patent on Improved Hemp Stripping Machines was issued minus the
"spindle" in question. Were we to stress to this part of the machine, we
would be giving the patent obtained by the plaintiffs a wider range than
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it actually has, which is contrary to the principles of interpretation in

matters relating to patents.

In the case under consideration, it is obvious that the "spindle" is not an

integral part of the machine patented by the plaintiffs on the ground that
it was eliminated from their patent inasmuch as it was expressly excluded
in their application, as evidenced by the aforesaid Exhibit 41.

The defendant cannot be held civilly liable for alleged infringement of the
patent upon which the present action is based on the ground that there
is no essential part of the machine manufactured and sold by him, which
was unknown to the public in the Province of Davao at the time the
plaintiffs applied for and obtained their patent for improved hemp
stripping machines.

b. Inventive Step
Sec. 26 of the IP Code

c. Industrial applicability
Sec. 27 of the IP Code

d. Enablement/Sufficient disclosure
Sec. 35 of the IP Code
-The application shall disclose the invention SUFFICIENTLY (a) clear and
(b) complete for it to be carried out by a person skilled in the art.
-Where the application concerns:
(1) a microbiological (a) process or the (b) 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
(2) such material is not available to the public
 The application shall be supplemented by a deposit of such
material with an international depository institution.

-Description: The Regulations shall prescribe the contents of the

description and the order of presentation. [CD-OP]
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e. Patentable Subject Matter

Sec. 22 of the IP Code

7. Patent Application
Sec. 32-39 of the IP Code
PATENT APPLICATION
Sec. 32. The Application. [RD-DOA]
-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;
(d) One or more claims; and
(e) An abstract.
-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. 33. Appointment of Agent or 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.

Sec. 34. The Request.

-The request shall contain:
(1) a petition for the grant of the patent;
(2) the name and other data of the applicant,
(3) the inventor and the agent; and
(4) the title of the invention.

Sec. 35. Disclosure and Description of the Invention. – Already discussed

previously.

Sec. 36. The Claims.

-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.
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-The Regulations shall prescribe the manner of the presentation of claims.

(n)

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.
-It must be drafted in a way which allows the clear understanding of the
following:
(a) the technical problem,
(b) the gist of the solution of that problem through the invention, and
(c) the principal use or uses of the invention.
-The abstract shall merely serve for technical information.

Sec. 38. Unity of Invention.

-The application shall relate to one invention only or to a group of
inventions forming a single general inventive concept.
-If several independent inventions which do not form a single general
inventive concept are claimed in one application, the Director may require
that the application be restricted to a single invention. A later application
filed for an invention divided out shall be considered as having been filed
on the same day as the first application: Provided, That the later
application is filed:
(a) within four (4) months after the requirement to divide becomes final,
or
(b) within such additional time, not exceeding four (4) months, as may be
granted: Provided further, That each divisional application shall not go
beyond the disclosure in the initial application.
-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. 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 a 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.
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a. Filing Date/Priority Date – Already discussed previously.

b. Requirements
• Extent of protection and Interpretation of Claims
Sec. 75. Extent of Protection and Interpretation of Claims.
-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.
-(Doctrine of Equivalents) For the purpose of determining the extent of
protection conferred by the patent, due account shall be taken of
elements which are equivalent to the elements expressed in the claims,
so that a claim shall be considered to cover not only all the elements as
expressed therein, but also equivalents.

c. Patent Procedure
The procedure for the grant of patent may be summarized as follows:
(1) Filing of the application
(2) Accordance of the filing date
(3) Formality examination
(4) Classification and search
(5) Publication of the application
(6) Substantive examination
(7) Grant of the patent
(8) Publication upon grant
(9) Issuance of the certificate
[FAF]
[CPS]
[GPI]

Filing of the application

The patent application shall be in Filipino or English and shall contain the
following:
(a) A request for the grant of patent;
(b) A description of the invention;
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(c) Drawing necessary for the understanding of the invention;

(d) One or more claims; and
(e) An abstract.
No patent may be granted unless the patent identifies the inventor. If the
applicant is not the inventor, the Office may require to submit said
authority (Sec. 32).
*Note: Read Secs. 34, 35, 36 & 37.

*Prohibited Matter
-The application shall not contain:
(1) a statement or other matter contrary to “public order” or morality;
(2) statement disparaging the products or processes of any particular
person or other than the applicant, or the merits or validity of applications
or patents of any such person. Mere comparison with the prior art shall
not be considered disparaging per se;
(3) any statement or other matter obviously irrelevant or unnecessary
under the circumstances.
-If an application contains prohibited matter, the Bureau of Patents shall
omit it when publishing the application, indicating the place and number
of words or drawing omitted.

*Unity of Invention – Already discussed previously.

Accordance of the filing date – Already discussed previously.

Formality examination
-After the patent application has been accorded a filing date and the
required fees have been paid on time in accordance with the Regulations,
the applicant shall comply with the formal requirements specified by
Section 32 and the Regulations within the prescribed period, otherwise
the application shall be considered withdrawn.
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-The Regulations shall determine the procedure for the re-examination

and revival of an application as well as the appeal to the Director of
Patents from any final action by the examiner.

Classification and search

An application that has complied with the formal requirement shall be
classified and a search conducted to determine the prior art.

Publication of the application

-The patent application shall be published in the IPO Gazette together
with a search document established by or on behalf of the Office citing
any documents that reflect prior art, after the expiration of eighteen (18)
months from the filing date or priority date.
-After publication of a patent application, any interested party may
inspect the application documents filed with the Office.
-The Director General subject to the approval of the Secretary of Trade
and Industry, may prohibit or restrict the publication of an application, if
in his opinion, to do so would be prejudicial to the national security and
interests of the Republic of the Philippines.

Substantive examination
Request for Substantive Examination
-The application shall be deemed withdrawn unless within six (6) months
from the date of publication under Section 41, a written request to
determine whether a patent application meets the requirements of
Sections 21 to 27 and Sections 32 to 39 and the fees have been paid on
time.
-Withdrawal of the request for examination shall be irrevocable and shall
not authorize the refund of any fee. (n)

Grant of the patent

- If the application meets the requirements of this Act, the Office shall
grant the patent: Provided, That all the fees are paid on time.
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-If the required fees for grant and printing are not paid in due time, the
application shall be deemed to be withdrawn.
-A patent shall take effect on the date of the publication of the grant of
the patent in the IPO Gazette.
*Refusal of the Application (Sec. 51)

Publication upon grant

-The grant of the patent together with other related information shall be
published in the IPO Gazette within the time prescribed by the
Regulations.
-Any interested party may inspect the complete description, claims, and
drawings of the patent on file with the Office.

Issuance of the certificate

The patent shall be issued in the name of the Republic of the Philippines
under the seal of the Office and shall be signed by the Director, and
registered together with the description, claims, and drawings, if any, in
books and records of the Office.

d. Status of Application before Publication

Sec. 45. Confidentiality Before Publication.
-A patent application, which has not yet been published, and all related
documents, shall not be made available for inspection without the
consent of the applicant.

e. Rights conferred after Publication

Sec. 46. Rights Conferred by a Patent Application After Publication.
-The applicant shall have all the rights of a patentee under Section 76
against any person who, without his authorization, exercised any of the
rights conferred under Section 71 of this Act in relation to the invention
claimed in the published patent application, as if a patent had been
granted for that invention:
 Provided, That the said person had:
(a) Actual knowledge that the invention that he was using
was the subject matter of a published application; or
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(b) Received written notice that the invention that he was

using was the subject matter of a published application being
identified in the said notice by its serial number: Provided,
That the action may not be filed until after the grant of a
patent on the published application and within four (4) years
from the commission of the acts complained of.

f. Observation by 3rd Parties (No opposition case)

-Following the publication of the patent application, any person may
present observations in writing concerning the patentability of the
invention.
-Such observations shall be communicated to the applicant who may
comment on them. -The Office shall acknowledge and put such
observations and comment in the file of the application to which it relates.

8. Patent Grant and Effectivity

Sec. 50. Grant of Patent.
-If the application meets the requirements of this Act, the Office shall
grant the patent: Provided, That all the fees are paid on time.
-If the required fees for grant and printing are not paid in due time, the
application shall be deemed to be withdrawn.
-A patent shall take effect on the date of the publication of the grant of
the patent in the IPO Gazette.

9. Term of patent
Sec. 54. Term of Patent.
The term of a patent shall be twenty (20) years from the filing date of the
application.

10. Annual fees

Sec. 55. Annual Fees.
-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.
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-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.
-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)

11. Rights of Patentees

a. Rights conferred by patent (Sec. 71, 78)
-A patent shall confer on its owner the following exclusive rights:
a. Where the subject matter of a patent is a product, to restrain, prohibit
and prevent any unauthorized person or entity from making, using,
offering for sale, selling or importing that product;
b. Where the subject matter of a patent is a process, 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.
-Patent owners shall also have the right to assign, or transfer by
succession the patent, and to conclude licensing contracts for the same.

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, to
determine the process actually used.
-In ordering the defendant to prove that the process to obtain the
identical product is different from the patented process, the court shall
adopt measures to protect, as far as practicable, his manufacturing and
business secrets.

Vargas v. Yaptico supra – Already discussed previously.

Creser Precision Systems v. CA and Floro International Co. (1998)

Respondent was granted by the Bureau of Patents, Trademarks and
Technology Transfer (BPTTT) a Letter of patent for its aerial fuze on
 21

January 23, 1990. Sometime in 1993, respondent discovered that the

petitioner submitted samples of its patented aerial fuze to the AFP for
testing claiming to be his own. To protect its right, respondent sent letter
of warning to petitioner on a possible court action should it proceed its
testing by the AFP. In response the petitioner filed a complaint for
injunction and damages arising from alleged infringement before the RTC
asserting that it is the true and actual inventor of the aerial fuze which it
developed on 1981 under the Self Reliance Defense Posture Program of
the AFP. It has been supplying the military of the aerial fuze since then
and that the fuze of the respondent is similar as that of the petitioner.

Section 42 of the Law on Patent (RA 165) provides that only the patentee
or his successors-in-interest may file an action against infringement. What
the law contemplates in the phrase “anyone possessing any right, title or
interest in and to the patented invention” refers only to the patentee’s
successors-in-interest, assignees or grantees since the action on patent
infringement may be brought only in the name of the person granted with
the patent. There can be no infringement of a patent until a patent has
been issued since the right one has over the invention covered by the
patent arises from the grant of the patent alone.

Therefore, a person who has not been granted letter of patent over an
invention has not acquired right or title over the invention and thus has
no cause of action for infringement. Petitioner admitted to have no patent
over his invention. Respondent’s aerial fuze is covered by letter of patent
issued by the Bureau of Patents thus it has in his favor not only the
presumption of validity of its patent but that of a legal and factual first
and true inventor of the invention.

Pearl & Dean v. SM supra – Already discussed previously.

12. Limitations of Rights

a. Under Sec. 72 , as amended by RA 9502
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:
-(DOCTRINE OF NATIONAL EXHAUSTION) Using a patented product which
has been put on the market in the Philippines by the owner of the product,
 22

or with his express consent, insofar as such use is performed after that
product has been so put on the said market;

-Where the act is done privately and on a non-commercial scale or for a

non-commercial purpose: Provided, That it does not significantly
prejudice the economic interests of the owner of the patent;

-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 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;

-Where the invention is used in any ship, vessel, aircraft, or land vehicle
of any other country entering the territory of the Philippines temporarily
or accidentally: Provided, That such invention is used exclusively for the
needs of the ship, vessel, aircraft, or land vehicle and not used for the
manufacturing of anything to be sold within the Philippines.

*Exhaustion of rights
*Parallel importation

Roma Drug v. RTC of Guagua (2009)

Roma Drug was raided by the NBI and BFAD and seized several important
medicines. It appears that Roma Drug is one of six drug stores which were
raided on or around the same time upon the request of SmithKline which
was the duly registered corporation to distribute such medicines. The
medicines of Roma Drug was purchased directly from abroad and not
through SmithKline.

During preliminary investigation, Rodriguez challenged the

constitutionality of the law on Special Law on Counterfeit Drugs (SLCD)
regarding the distribution of their medicine that were considered
counterfeit although they only bought it directly and not from SmithKline.

Section 7 of Rep. Act No. 9502 unequivocally grants third persons the right
to import drugs or medicines whose patent were registered in the
Philippines by the owner of the product. The unqualified right of private
third parties such as petitioner to import or possess “unregistered
 23

imported drugs” in the Philippines is further confirmed by the

“Implementing Rules to Republic Act No. 9502” promulgated on
November 4, 2008.

It may be that Rep. Act No. 9502 did not expressly repeal any provision of
the SLCD. However, it is clear that the SLCO’s classification of
“unregistered imported drugs” as “counterfeit drugs,” and of
corresponding criminal penalties therefore are irreconcilably in the
imposition conflict with Rep. Act No. 9502 since the latter indubitably
grants private third persons the unqualified right to import or otherwise
use such drugs. Where a statute of later date, such as Rep. Act No. 9502,
clearly reveals an intention on the part of the legislature to abrogate a
prior act on the subject that intention must be given effect.

b. Prior User (Sec. 73)

-Notwithstanding Section 72 hereof, any prior user, who, in good faith was
using the invention or has undertaken serious preparations to use the
invention in his enterprise or business, before the filing date or priority
date of the application on which a patent is granted, shall have the right
to continue the use thereof as envisaged in such preparations within the
territory where the patent produces its effect.
-The right of the prior user may only be transferred or assigned together
with his enterprise or business, or with that part of his enterprise or
business in which the use or preparations for use have been made. (Sec.
40, R.A. No. 165a)

c. Use by Government (Sec. 74)

-A Government agency or third person authorized by the Government
may exploit the invention even without agreement of the patent owner
where:
(a) The public interest, in particular, national security, nutrition, health or
the development of other sectors, as determined by the appropriate
agency of the government, so requires; or
(b) A judicial or administrative body has determined that the manner of
exploitation, by the owner of the patent or his licensee is anti-
competitive.
 24

-The use by the Government, or third person authorized by the

Government shall be subject, mutatis mutandis, to the conditions set
forth in Sections 95 to 97 and 100 to 102.

13. REMEDIES
a. CANCELLATION of patent or claim (Sec. 61)
- 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.
-Where the grounds for cancellation relate to some of the claims or parts
of the claim, cancellation may be effected to such extent only.

ELIGIBILITY
o Who
o When
o Where

GROUNDS [Sec. 61, 67.1 (d), 68]

Sec. 61 – Already discussed previously.

Sec. 67.1 (d)

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, is
declared by final court order or decision as having the right to the patent,
such person may, within three (3) months after the decision has become
final:
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,
 25

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.

Creser Precision Systems v. CA supra

EFFECTS (Sec. 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.
• Termination of rights
• Immediately executory even pending appeal

Damages (Sec. 68) – Already discussed previously.

b. Petition for Declaration as True and Actual Inventor

Patent application under Sec. 29 (Sec. 67)
SECTION 67. Patent Application by Persons Not Having the Right to a
Patent
-If a person referred to in Section 29 other than the applicant, is declared
by final court order or decision as having the right to the patent, such
person may, within three (3) 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.
-The provisions of Subsection 38.2 shall apply mutatis mutandis to a new
application filed under Subsection 67.1(b).

Patent application without consent or through fraud (Sec. 68) – Already

discussed previously.

Time to file action (Sec. 70)

Time to File Action in Court
 26

-The actions indicated in Sections 67 and 68 shall be filed within one (1)
year from the date of publication made in accordance with Sections 44
and 51, respectively.

c. INFRINGEMENT

ELIGIBILITY
o Who
• Patentee
• Successors-in-interest, assignees or grantees
Creser Precision Systems v. CA supra
o When
o Where

GROUNDS [Sec. 61, 67.1 (d), 68] – Already discussed previously.

KINDS of Infringement
• Literal Infringement
Patent infringement is ordinarily understood to mean as the unauthorized
replication or use of a patented invention or process. Technically,
however, patent infringement is committed either literally or by
equivalents. Literal infringement exists when every limitation recited in a
patent claim is found in the infringing device (or process). Infringement
by equivalents, on the other hand, happens when a device (or process)
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. This "function-way-result" equation lies at the heart of
the doctrine of equivalents.

• Doctrine of Mechanical Equivalents

Gsell v. Veloso Yap-Jue 6 Phil 143 (1906)
Gsell v. Veloso Yap-Jue 7 Phil 130 (1906)
Gsell v. Veloso Yap-Jue 12 Phil 519 (1909)

The principal case to which these proceedings are ancillary, was an action
to enjoin infringement of a patented process for manufacture of curved
handles for canes, parasols, and umbrellas. In that case, plaintiff
 27

established his title to a valid patent covering the process in question, and
obtained against this defendant a judgment, granting a perpetual
injunction restraining its infringement, which judgment was affirmed by
this Court on appeal.

The use of a process in all respects identical with a process protected by

a valid patent, save only that a well-known mechanical equivalent is
substituted in lieu of some particular part of the patented process is an
infringement upon the rights of the owner of the patent, which will be
enjoined in appropriate proceeding, and the use of such process, after the
order enjoining its use has been issued, is a “contempt”, under the
provision of section 172 of the Code of Civil Procedure.

The doctrine of “mechanical equivalents”, founded upon sound rules of

reason and logic, and unless restrained or modified by law in particular
jurisdiction, is of universal application, so that it matters not whether a
patent be issued by one sovereignty or another, the doctrine may
properly be invoked to protect the patentee from colorable invasions of
his patent under the guise of a substitution of some part of his invention
by some well-known mechanical equivalent.

• Doctrine of Equivalents
The doctrine of equivalents is an equitable measure to protect patentees
against deliberate efforts of infringers to evade liability for infringement
by making only insubstantial changes to a patented invention. In other
words, it extends protection beyond the specific and literal claims of
patents.

Godines v. CA 226 (1993)

The Supreme Court relied on the doctrine of equivalents when it found
patent infringement against an individual for manufacturing and selling
"power tillers" in substantially the same mold as that of a patented model.

The doctrine as conceived and defined in American jurisprudence, was re-

stated, thus:

Recognizing that the logical fallback position of one in the place of

defendant is to aver that his product is different from the patented one,
courts have adopted the doctrine of equivalents which recognizes that
 28

minor modifications in a patented invention are sufficient to put the item

beyond the scope of literal infringement. Thus, according to this doctrine,
"(a)n infringement also occurs when a device appropriates a prior
invention by incorporating its innovative concept and, albeit with some
modification and change, performs substantially the same function in
substantially the same way to achieve substantially the same result." The
reason for the doctrine of equivalents is that to permit the imitation of a
patented invention which does not copy any literal detail would be to
convert the protection of the patent grant into a hollow and useless thing.
Such imitation would leave room for - indeed encourage - the
unscrupulous copyist to make unimportant and insubstantial changes and
substitutions in the patent which, though adding nothing, would be
enough to take the copied matter outside the claim, and hence outside
the reach of the law.

Smith Kline Beckman Corp. v. CA (2003)

The Supreme Court struck down a patent infringement suit because the
petitioner fell short of substantiating the function-means-and-result
requirement for infringement by equivalents. It nevertheless reiterated
its recognition of the doctrine of equivalents in Pascual Godines:

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.

ELEMENTS

NATURE OF ACTION
o Civil/administrative (Sec. 76)
CIVIL ACTION FOR INFRINGEMENT
-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.
-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
 29

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.
-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.
-The court may, according to the circumstances of the case, award
damages in a sum above the amount found as actual damages sustained:
Provided, That the award does not exceed three (3) times the amount of
such actual damages.
-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.
-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 because of a patented process knowing it to be especially
adopted for infringing the patented invention and not suitable for
substantial non-infringing use shall be liable as a contributory infringer
and shall be jointly and severally liable with the infringer.

• Infringing acts
Parke Davis & Co. v. Doctor’s Pharmaceuticals (1981)
Parke Davies and Company is an owner of a Patent entitled "Process for
the Manufacturing of Antibiotics" (Letters Patent No. 50) which was
issued by the Philippine Patent Office on February 9, 1950. The patent
relates to a chemical compound represented by a formula commonly
called chloramphenicol. The patent contains ten claims, nine of which are
process claims, and the other is a product claim to the chemical substance
chloramphenicol.

Doctors’ Pharmaceuticals Inc. requested that it be granted a voluntary

license to manufacture and produce our own brand of medicine,
containing chloramphenicol, and to use, sell, distribute, or otherwise
dispose of the same in the Philippines under such terms and conditions as
may be deemed reasonable and mutually satisfactory, which Parke Davies
declined.

Doctors’ Pharmaceuticals Inc. filed a petition with the Director of Patents

requesting the Director to grant a compulsory license. After careful
 30

evaluation and hearings, the Director granted the request of Doctors’

Pharmaceuticals.

The decision of the Director of Patents in granting Doctor’s

Pharmaceutical Inc. compulsory license to use the substance
chloramphenicol is valid. The Supreme Court says that patents issued to
foods and medicines are not exclusive so as not to prevent the building
up of patent monopolies. Public benefit is foremost.

• Sanctions

• Damages (Secs. 79, 80)

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

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. It is presumed that the infringer had known of the patent if on the
patented product, or on the container or package in which the article is
supplied to the public, or on the advertising material relating to the
patented product or process, are placed the words "Philippine Patent"
with the number of the patent.

• Contributory infringer (nature of liability) (Sec. 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 because of a patented process knowing it to be especially
adopted for infringing the patented invention and not suitable for
substantial non-infringing use shall be liable as a contributory infringer
and shall be jointly and severally liable with the infringer.