INTELLECTUAL PROPERTY

(LAW ON PATENTS)

Intellectual property defined:

Intangible assets resulting from the creative work of an individual or organization
• Creations of the mind, such as:
➤Inventions;
➤Literary and artistic works;
➤Symbols, names, images and designs used in commerce.
• The legal rights which result from intellectual activities in the industrial, scientific, literary and artistic fields
Constitutional basis
• Article 14, Section 13, 1987 Constitution
"The State shall protect and secure the exclusive rights of scientists, inventors, artists, and other gifted citizens to their intellectual property and creations,
particularly when beneficial to the people, for such period as may be provided by law."
Coverage of intellectual property rights:
1. Copyright and Related Rights;
2. Trademarks and Service Marks;
3. Geographic indications;
4. Industrial designs;
5. Patents;
6. Layout designs (Topographies) of Integrated Circuits;
7. Protection of Undisclosed Information (TRIPS).
PATENTS
BASIC PATENT PRINCIPLES
1. TERRITORIALITY - patents are only valid in the country or region in which they have been granted
2. FIRST-TO-FILE -applicant who files first will get the patent
3. DISCLOSURE -applicant shall disclose the invention in a manner sufficiently clear and complete
Quid pro quo principle - protection in exchange for disclosure
4. CONDITIONAL - patents are granted only upon compliance with the criteria of patentability
5. LIMITED RIGHTS
Patentable inventions
• any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable. It may be, or may
relate to, a product, or process, or an improvement of any of the foregoing.(Sec. 21, IPC)
Criteria for patentability
1. Novelty- An invention shall not be considered new if it forms part of a prior art
2. Inventive Step- if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the
application claiming the invention.
3. Industrially applicable- An invention that can be produced and used in any industry. This means an invention is not merely theoretical, but also has
practical purpose.
PRIOR ART

• Everything which has been made available to the public anywhere in the world, before the filing date or the priority date of the application claiming the
invention; and
• The whole contents of an earlier published Philippine application or application with earlier priority date of a different inventor.
Rule: When a work has already been made available to the public, it shall be non-patentable for absence of novelty.
Exception: Doctrine of Non-Prejudicial Disclosure
 the disclosure of information contained in the application during the 12-month period before the filing date or the priority date of the application if such
disclosure was made by:
1. The inventor;
2. A patent office and the information was contained:
a. In another application filed by the inventor and should have not have been disclosed by the office, or
b. 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;
3. A third party who obtained the information directly or indirectly from the inventor (IPC, sec(25))
Test of Non-Obviousness
• If any person possessing ordinary skill in the art was able to draw the inferences and he constructs that the supposed inventor drew from prior art, then the latter
did not really invent it
• Person skilled in the art-Ordinary practitioner (fictional person)
a. Has access and understanding of all the prior art
b. Aware of common general knowledge in the specific art
c. Observes developments in the related technical field-could be a team; need not have inventive ability
Non-patentable inventions
1. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-
organisms and non-biological and microbiological processes;
2. Aesthetic creations;
3. Discoveries, scientific theories and mathematical methods;
4. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;
5. Anything which is contrary to public order or morality (IPC as amended by R.A. 9502, Sec. 22);
6. Methods for treatment of the human or animal body; and
7. In the case of drugs and medicines, mere discovery of a new form or new property of a known substance which does not result in the enhancement of
the efficacy of that substance
OWNERSHIP OF PATENTS
SECTION 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.
May patent rights be assigned or transferred?
YES. For a valid assignment of patent rights, the assignment must be in writing and must be duly notarized. (IPC, Sec. 105)
FIRST-TO-FILE RULE
• If two (2) or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the person who filed an
application for such invention, or
• Where two or more applications are filed for the same invention, to the applicant which has the earliest filing date (IPC, Sec. 29).
INVENTIONS CREATED PURSUANT TO A COMMISSION
Pursuant to a commission: The person who commissions the work shall own the patent, unless otherwise provided in the contract.
Pursuant to employment: In case the employee made the invention in the course of his employment contract, the patent shall belong to:
 a. The employee, if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer;
b. The employer, if the inventive activity is the result of the performance of his regularly-assigned duties, unless there is an agreement, express or
implied, to the contrary (IPC, Sec. 30).
Patent registration
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 application
6. Substantive examination
7. Grant of Patent
8. Publication upon grant
9. Issuance of certificate
Patent application
SECTION 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;
(d) One or more claims; and
(e) An abstract.
Grounds for cancellation of patent
Any interested party may petition to cancel any patent or any claim or parts of a claim any of the following grounds:
1. The invention is not new or patentable;
2. The patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art; or
3. Contrary to public order or morality (IPC, Sec. 61.1);
4. Patent is found invalid in an action for infringement (IPC, Sec. 82); and
5. The patent includes matters outside the scope of the disclosure contained in the application. (IPC, Sec 21, Regulations on Inter Partes Proceeding,
Sec.1)
Patent Application by Persons Not Having the Right to a Patent
Remedies of persons with a right to a patent:
If a person other than the applicant is declared by final court order or decision as having the right to a patent, he may within 3 months after such decision has
become final:
1. Prosecute the application as his own
2. File a new patent application
3. Request the application to be refused; or
4. Seek cancellation of the patent (IPC, Sec. 67.1).
Time to file action: within one (1) year from the date of publication
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 in his favor if warranted by the
circumstances.
Time to file action: within one (1) year from the date of publication
Rights conferred by patent
1. In case of Product - Right to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or
importing(MUOSI) the product.
2. In case of Process - Right to restrain prohibit and prevent any unauthorized person or entity from manufacturing, dealing in, using, offering for sale,
selling or importing any product obtained directly or indirectly from such process. (IPC, Sec. 71)
3. Right to assign the patent, to transfer by succession, and to conclude licensing contracts. (IPC, Sec. 71.2)
The rights conferred by a patent application take effect after publication in the Official Gazette. (IPC, Sec 46)
LIMITATIONS OF PATENT RIGHTS
The owner of a patent has no right to prevent third parties from making, using, offering for sale, selling or importing a patented product in the following
circumstances:
a. Using a patented product after it has been put on the market in the Philippines by the owner of the product, or with his express consent.
• In case of drugs or medicines, the said limitation applies after a drug or medicine has been introduced in the Philippines or anywhere else in the world
by the patent owner, or by any party authorized to use the invention. This allows parallel importation for drugs and medicines.
• The right to import the drugs and medicines shall be available to any government agency or any private third party (IPC, Sec. 72.1, as amended by RA
No. 9502)
b. Where the act is done privately and on a non-commercial scale or for a non- commercial purpose (IPC, Sec. 72.2).
c. Exclusively for experimental use of the invention for scientific purposes or educational purposes. (IPC, Sec. 72.3).
d. In the case of drugs and medicines, where the act includes testing, using, making or selling the invention including any data related thereto, solely for
purposes reasonably related to the development and submission of information and issuance of approvals by government regulatory agencies required
under any law of the Philippines or of another country that regulates the manufacture, construction, use or sale of any product.
e. 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 (Sec. 72.5, IPC).
f. 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 (IPC, Sec. 72.5).
OTHER LIMITATIONS...
Prior user
Person other than the applicant, who in good faith, started using the invention in the Philippines, or undertaken serious preparations to use the same, before the
filing date or priority date of the application shall have the right to continue the use thereof, but this right shall only be transferred or assigned further with his
enterprise or business (IPC, Sec. 73).
Q: X invented a device which, through the use of noise, can recharge a cellphone battery. He applied for and was granted a patent on his device, effective within
the Philippines. As it turns out, a year before the grant of X's patent, Y, also an inventor, invented a similar device which he used in his cellphone business in
Manila. But X files an injunctive suit against Y to stop him from using the device on the ground of patent infringement. Will the suit prosper? (2011 Bar)
A: NO, since Y is a prior user in good faith.
Other limitations: Use by government
74.1. 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; or
(c) In the case of drugs and medicines, there is a national emergency or other circumstance of extreme urgency requiring the use of the invention; or
 (d) In the case of drugs and medicines, there is public non-commercial use of the patent by the patentee, without satisfactory reason; or
(e) In the case of drugs and medicines, the demand for the patented article in the Philippines is not being met to an adequate extent and on reasonable
terms, as determined by the Secretary of the Department of Health.
Doctrine of Exhaustion
Also known as the doctrine of first sale, it provides that the patent holder has control of the first sale of his invention. He has the opportunity to receive the full
consideration for his invention from his sale. Hence, he exhausts his rights in the future control of his invention.
Patent 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. (Sec. 76)
A patent maybe infringed either:
1. Literally, or
2. By equivalents
Literal infringement
Literal infringement exists if an accused device falls directly within the scope of properly interpreted claims.
Doctrine of equivalents
An infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and, despite some modification and change,
performs substantially the same function in substantially the same way to achieve substantially the same result.
REMEDIES OF THE OWNERS OF THE PATENT AGAINST INFRINGERS
• Civil action for infringement
• Criminal action for infringement - If the infringement is repeated; The criminal action prescribes in three (3) years from the commission of the crime
• Administrative remedy - Where the amount of damages claimed is not less than P200,000.00
• Destruction of Infringing material-upon court order
DEFENSES IN ACTION FOR INFRINGEMENT
1. Invalidity of the patent (IPC, Sec. 81);
2. Any of the grounds for cancellation of patents:
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 (IPC, Sec * 0.61)
3. Prescription
PATENT
Intellectual Rights: Technical solution of a problem in any field of human activity which is new (novel invention) and industrially applicable.
Term of Protection: 20 years from filing date of application
Office where Registered: Bureau of Patents, Intellectual Property Office

For april 5, 2024

INTELLECTUAL PROPERTY OFFICE
• Creation
• Organization
• Functions
• The bureaus

LAW ON PATENTS
• Nature and Definition of patents
• Goals or purpose of patents
• Patentable and non-patentable inventions
• Elements of patentability
• Right to a patent
• Procedure for grant of patent
• Cancellation of patent’
• Remedies of persons deprived of patent ownership
• Patent infringement
• Remedies against infringement
• Limitations on patent rights
• Voluntary and involuntary licensing
Utility models
• Distinguished from patentable inventions
Industrial designs
• Definition