PATENTS

Intellectual Property Code of the Philippines

(Republic Act No. 8293)
Revised Implementing Rules and Regulations for Patents, Utility Models
and Industrial Designs (“Rules”)
Definition

• A patent 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.
Patentable Inventions (Sec. 21)

• Any technical solution of a problem in any field of human activity

which is:
– New (novelty),
– Involves an inventive step and
– Industrially applicable

shall be patentable.

• It may be, or may relate to, a product, or process, or an

improvement of any of the foregoing.
Patentable Inventions (Sec. 21)

• Statutory Classes of Patentable Inventions:

(a) A product, such as a machine, a device, an article of
manufacture, a composition of matter, a microorganism;
(b) A process, such as a method of use, a method of manufacturing,
a non-biological process, a microbiological process;
(c) Computer-related inventions; and
(d) An improvement of any of the foregoing.
Novelty (Sec. 23)
An invention shall not be considered new if it forms part of a prior art.

Prior art shall consist of:

• 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 application for a patent, utility model, or
industrial design registration, published in accordance with this Act, filed
or effective in the Philippines, with a filing or priority date that is earlier
than the filing or priority date of the application: xxx (Sec. 24)
Inventive Step (Sec. 26)

• An invention involves an 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.

• A person skilled in the art is a person presumed to be an ordinary

practitioner aware of what is common general knowledge in the art at the
relevant date. He is presumed to have knowledge of all references that are
sufficiently related to one another and to the pertinent art and to have
knowledge of all arts reasonably pertinent to the particular problems with
which the inventor was involved. He is presumed also to have had at his
disposal the normal means and capacity for routine work and
experimentation. (Rule 207, Rules)
Industrially Applicable (Sec. 27)

• An invention that can be produced and used in any

industry shall be industrially applicable.
Exclusions (Rule 202)
The following shall be excluded from patent protection:

(a) Discoveries, scientific theories, and mathematical methods, a law of nature, a scientific truth, or knowledge as such;
(b) Abstract ideas or theories, fundamental concepts apart from the means or processes for carrying the concept to
produce a technical effect;
(c) Schemes, rules, and methods of performing mental acts and playing games;
(d) Method of doing business, such as a method or system for transacting business without the technical means for
carrying out the method or system;
(e) Programs for computers;
(f) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the
human or animal body.
(g) Plant varieties or animal breeds or essentially biological process for the production of plants and animals. This
provision shall not apply to microorganisms and non-biological and microbiological processes;
(h) Aesthetic creations; and
(i) Anything which is contrary to public order, health, welfare, or morality, or process for cloning or modifying the germ
line genetic identity of humans or animals or uses of the human embryo.
RIGHT TO A PATENT
Owner; Generally (Sec. 28)

• 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.
Commissioned Work (Sec. 30)

• Person who commissions the work shall own the

patent, unless otherwise provided in the contract.
In the Course of Employment Contract

• 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.
• The employer, if the invention is the result of the
performance of his regularly-assigned duties, unless
there is an agreement, express or implied, to the
contrary.
First to File Rule (Sec. 29)
• 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 who has the earliest filing date or, the earliest
priority date.
• “Priority date" means the date of filing of the foreign
application for the same invention
Term of Patent
The term of a patent shall be twenty (20) years from
the filing date of the application.

Lapse of Patent Right (Sec. 55)

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.
Rights Conferred (Sec. 71)

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
Rights Conferred (Sec. 71)

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.
Limitations of Rights; Generally. (Sec. 72)
The owner of a patent has no right to prevent third parties from performing, without his authorization,
in the following circumstances:
• Using a patented product which has been put on the market in the Philippines by the owner of the
product, 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.
Voluntary Licensing (Sec. 85)
• It refers to the grant by the patent owner to a third person of the right to
exploit a patented invention.

Rights of the Licensor:

Unless prohibited in the technology transfer agreement,
a. Grant further licenses to third person;
b. Exploit the subject matter of the technology transfer agreement

Rights of the Licensee:

a. To exploit the subject matter of the technology transfer agreement
Compulsory Licensing (Sec. 93 aab Sec. 4, RA 9502)

• It refers to the grant by the Director of Legal Affairs of

a license to exploit a patented invention without the
permission of the patent holder.
Grounds for Compulsory Licensing (Sec. 93)
Grounds for Compulsory Licensing. — The Director of Legal Affairs may grant a license to exploit a
patented invention, even without the agreement of the patent owner, in favor of any person who has
shown his capability to exploit the invention, under any of the following circumstances:

• National emergency or other circumstances of extreme urgency;

• Where the public interest, in particular, national security, nutrition, health or the development of
other vital sectors of the national economy as determined by the appropriate agency of the
Government, so requires; or
• Where 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
• In case of public non-commercial use of the patent by the patentee, without satisfactory reason;
• If the patented invention is not being worked in the Philippines on a commercial scale, although
capable of being worked, without satisfactory reason: Provided, That the importation of the
patented article shall constitute working or using the patent.
• Where the demand for the patented drugs and medicines is not being met to tan adequate extend
and on reasonable terms.
Angelita Manzano v. Court of Appeals
G.R. No. 113388, 5 September 1997
Purpose of Patent System

• The primary purpose of the patent system is not the reward of the individual but the advancement
of the arts and sciences. The function of a patent is to add to the sum of useful knowledge and one
of the purposes of the patent system is to encourage dissemination of information concerning
discoveries and inventions.

Requisites of Patentability

• The element of novelty is an essential requisite of the patentability of an invention or discovery. If a

device or process has been known or used by others prior to its invention or discovery by the
applicant, an application for a patent therefor should be denied; and if the application has been
granted, the court, in a judicial proceeding in which the validity of the patent is drawn in question,
will hold it void and ineffective. It has been repeatedly held that an invention must possess the
essential elements of novelty, originality and precedence, and for the patentee to be entitled to the
protection the invention must be new to the world.
Findings of Philippine Patent Office Is Given Great Weight

• The validity of the patent issued by the Philippine Patent Office in

favor of private respondent and the question over the
inventiveness, novelty and usefulness of the improved model of the
LPG burner are matters which are better determined by the Patent
Office. The technical staff of the Philippine Patent Office composed
of experts in their field has by the issuance of the patent in question
accepted private respondent's model of gas burner as a discovery.
There is a presumption that the Office has correctly determined the
patentability of the model and such action must not be interfered
with in the absence of competent evidence to the contrary.
END