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 It is the right granted to an inventor by the

State, or by the regional office acting for


several States, which allows the inventor to
exclude anyone else from commercially
exploiting his invention for a limited period.
(WIPO, Understanding Industrial Property)

 It is a statutory monopoly which protects


against unlicensed use of the patented device
or process even by the one who discovered it
through independent research.
1. to foster and reward invention;

2. It promotes disclosures of inventions to


stimulate further innovation and to permit
the public to practice the invention once the
patent expires

3. seek to ensure that ideas in the public


domain remain there for the free use of
the public (Pearl & Dean (Phil), Inc. v Shoemart, G.R.
No. 148222, August 15, 2003)
1. Test of Non-obviousness
If any person possessing ordinary skill in the art was
able to draw the inference that the supposed inventor
drew from prior art, then the patent shall be refused

2. Unity of Invention
The application shall relate to one invention only or to
a group of inventions forming a single general inventive
concept.

3. Parallel Application Prohibited


An applicant may not file 2 applications for the same
subject, one for utility model registration and the other for
the grant of a patent, whether simultaneously or
consecutively.
4.) Whatever right one has to the
invention covered by the patent arises
alone from the grant of patent

5.) Patents or application for patents and


invention to which they relate, shall be
protected in the same way as the rights
of other property under the Civil Code
 20years from the filing
date of the application
1.) Filing of the application form (Bureau of Patents of the IPO)

2.) Examination of the Application

a.) Formal examination – must comply with the


formal requirements in Sec. 32 and the Regulations within the
prescribed period, otherwise the application shall be
considered withdrawn (IPC, Sec. 42.1)

B.) Substantive examination - application shall be


deemed withdrawn unless within 6 months from the date
of the publication under Sec. 41, a written request to
determine whether a patent application meets the
requirements of patentability and the fees have been paid
on time (Sec. 48.1)

 Note. No refund in case of withdrawal


3.) Publication of Patent Application (IPC, Sec.
44.1)
The application shall be published in the
IPO Gazette together with a search
document established by or on behalf of
the IPO citing any documents that reflect
prior art, after the expiration of 18
months from the filing date or priority
date”
4.) Amendment of Application
5.) Grant of Patent
6.) Publication Upon Grant of Patent
1.) The patent application shall be written in
Filipino or English and shall consist of:

a.) Request
 Petition to grant the patent
 Applicant’s name and other data;
 Inventor and the agent
 Title of the invention
 If with 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
 Signature of the applicant
b.) Description and Disclosure of the
Invention
c.) Drawings necessary for the
understanding of the invention
d.) One or more claims
e.) Abstract
f.) Identification of the Inventor

2.) Appointment of Agent or


Representative

3.) Unity of Invention


 When 2 or more inventions are claimed in a
single application but are such of a nature
that a single patent may not be issued for
them, the applicant is required “to divide” or
limit the claims to whichever the invention he
may elect, whereas those inventions not
elected may be made the subject of a
separate applications which are called
“divisional applications” (Smith Kline
Beckam Corp. v. CA, G.R. No. 126627, August
14, 2003)
 An applicant may not file two
applications for the same subject,
one for utility model registration
and the other for the grant of a
patent whether simultaneously or
consecutively.
 Itrefers to any technical
solution of a problem in any
field of human activity which is
new, involves an inventive step,
and is industrially applicable.
 A technical solution of a problem in any field
of human activity
that which does
 Novelty -
not form part of
the prior art (Sec.
23, ICP).

an invention that
can be produced
 Industrial Applicability and used in any
industry
1.) Novel - that which does not form part of
the prior art (Sec. 23, ICP).

2.) "Prior art" –


i) that which has been made available to
the public anywhere in the world before the
filing date or the priority date of application;
(ii) that which forms part of an application
whether for patent, utility model or industrial
designed, effective in the Philippines: Provided,
a.) That the inventor or applicants
are not the same

b.) the contents of the application


are published in accordance with the
requirements of patent application
rules and the filing date of prior art is
earlier
3.) Inventive step - 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 (Sec. 26,IPC).

 Note: In the case of drugs and medicines, there is no


inventive step if invention results from:

◦ Mere discovery of a new form or new property of a


known substance which does not result in the
enhancement of the known efficacy of that substance;
◦ Mere discovery of any new property or new use of a
known substance; or
◦ Mere use of a known process unless such known
process results in a new product that employs at least
one new reac.alrrt (Sec. 22, IpC as amended W R.A.
No.9502).
4.) Person skilled in the Art – one presumed
to;
(i) an ordinary practitioner aware of what
was common general knowledge in the art at
the relevant date.
(ii) 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.
(iii) have at his disposal the normal
means and capacity to routine work and
experimentation (Rule . 207).
5) Industrial applicability - an
invention that can be produced and
used in any industry
 It is a technical solution to a problem
in any field of human activity which is
new and industrially applicable; it may
relate to a product, or process, or an
improvement of any of the aforesaid.
Essentially, it refers to an invention
on the medical field. It is sometimes
described as a device or useful object.
 UTILITY MODEL INDUSTRIAL DESIGN

composition of lines or colors or


Any new model of implements
any three-dimensional form whether or
or tools of any industrial not associated with lines or colors
product even if do not provided that such composition or
possessed of the quality of form gives a special appearance to and
invention but which is of can serve as pattern for an industrial
“practical utility” product or handicraft. (IPC, Sec 112.1)

Usually invention in the


Ornamental or aesthetic aspect of
mechanical field a useful article but without a
functional characteristics
Patent Utility Industrial
Model Design
As to If not inventive, Maybe Maybe
conversion may be converted converted into registered as
to a utility model a patent copyright work
application application if
it complies
with all the
requisites.
As to term 20 years 7 years 5 years

As to Secs. 108-107 Secs. 108- Secs. 112-120


Applicable 111
Rules
1.) A product, such as machine, a device, an
article of manufacture, a composition of
matter, a microorganism;

2.) A process, such as a method of use, a


method of manufacturing, a non-biological
process, a micro-biological process

3.) Computer-related inventions; and

4.) An improvement of any of the foregoing


 Discoveries, scientific theories, and
mathematical methods, a law of nature, a
scientific truth, or knowledge;

 Abstract ideas or theories, fundamental


concepts apart from the means or processes
for carrying the concept to produce a technical
effect ;

 Schemes, rules, and methods of performing


mental acts and plating games;

 Method of doing business, such a method or


system for transacting business without the
technical means for carrying out the method
or system;
 Methods for the treatment of the human or
animal body by surgery or therapy and
diagnostic methods practiced on the human or
animal body. The non-patentability shall not
apply to products and compositions for use in
any of these methods;

 Anything which is contrary to public order,


health, welfare, or morality, or process of
cloning or modifying the germ line genetic
identity of humans or animals or uses of the
human embryo;

 Aesthetic creations;
 Programs for computers; and

 Plant varieties or animal breed or essentially


biological process for the production of
plants and animals. This provision shall not
apply to microorganisms and non-biological and
microbiological processes.
The disclosure of information contained in
the application during the 12 months
preceding the filing date or the priority date
of application shall not prejudice the
applicant on the ground of lack of novelty, if
such disclosure was made by:

1.) The inventor; including any person,


who, at the filing date of application, had the
right to the patent;
2.) Patent office and the information was
contained:
(i) In another application filed by
the inventor and should not have been
disclosed by the office;

(ii) 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

(iii) A third party who obtained the


information directly or indirectly from the
Inventor (IPC, Sec. 25.1)
1.) Belongs to the inventor, his heirs or assigns
(IPC, Sec. 28)

2.) When 2 or more persons have jointly made an


invention – the right to patent belong to them
jointly

3.) to person who first files a patent application


(First-to-File Rule )

4.) To the first true and actual inventor, his heirs,


legal representatives or assigns. (First-to-Invent
Rule )
Note: Philippines adheres to First-to-File Rule
Status Persons Entitled to Patent
2 or more persons invent He who first files.
separately and
independently.
2 or more applications filed earliest filing
Application who has the
for the same invention date or earliest priority date.

Inventions created pursuant Person who commissioned the work,


to a commission. unless agreed otherwise.

Employee makes the Employee: If invention is not part of his


invention in the course of regular duties even if he uses the time,
the employment. facilities and materials of the employer.

Employer: If the invention is the result


of the performance of his regularly
assigned duties unless agreed otherwise.
(IPC, Sec. 30)
A.) As to Nationality:

i) Filipino Nationals;

ii) Foreign Nationals or those domiciled or


have a real and effective commercial establishment
in a country which is bound by treaty (such as the
Paris Convention and the TRIPS Agreement) to grant
Filipinos the same rights it grants to its own
nationals; or

ii) Foreign Nationals whose country also


accepts the patent application of Filipinos
B.) As to the legal personality of the
Applicant

i) Inventor or his attorney-in-


fact; and

ii) Assignee of the inventor


 The ultimate goal of a patent system is to
bring new designs and technologies
into the public domain through
disclosure. Ideas, once disclosed to the
public without the protection of a valid
patent, are subject to appropriation without
significant restraint (Pearl & Dean (Phil), Inc.
v. Shoemart )
“The applicant shall have all the rights of a
patentee against any person who, without
his authorization, exercised any of the rights of
a patentee in relation to the invention claimed
in the published application, as if a patent had
been granted for that invention.”

Provided that the latter has:


a.) Actual knowledge that the
invention was the subject matter of a
published application; or
b.) Received written notice that the
invention was the subject matter of a published
application.

c.) The action may not be filed until after the


grant of a patent on the published
application and within 4 years from the
commission of the acts complained of (IPC,
Sec. 46)
“The grant of the patent together
with other related information shall
be published in the IPO Gazette
within 6 months (IPC, Sec 52.1)”
“A patent shall take effect on
the date of the publication of
the grant of the patent in the
IPO Gazette”
 shall be paid upon the expiration of 4 years
from the date of the application was
published, and of its subsequent anniversary
of such date.

 Payment may be made within 3 months before


the due date (IPC, Sec. 55)

 A period of 6 months shall be granted for the


payment of annual fees. (Sec. 55)
 The patent application shall be deemed
withdrawn;

 The patent considered as lapsed from


the day following the expiration of the
period within which the annual fees were
due. (sec. 55)
 It is the failure to disclose material
information, or

 the submission of false material


information, with intent to deceive.

Effect/consequence: “A patent holder cannot


enforce his rights if he has committed
inequitable conduct in the prosecution of his
patent application.
 The patentee is precluded from
claiming a part of the patented
product that which he had to excise
or modify in order to avoid patent
office rejection, and he may omit any
additions he was compelled to add by
patent office regulations. It balances
the doctrine of equivalents.
 applies when an applicant during patent
application narrows a claim to avoid
the prior art, or otherwise to address a
specific concern that arguably should have
rendered the claimed subject matter
unpatentable.

 It precludes a patentee from obtaining


under the doctrine of equivalents coverage
of subject matter that has been relinquished
during the process of patent application.
 If contrary to public order or morality

 Insufficient Disclosure; and

 What is claimed as the invention in not


new or patentable
 Applicability: When 2 or more persons have made an
invention “separately and independently of each
other.”

“ If a person other than the applicant is


declared by final court order or decision as
having the right to the patent, he may, within
3 months after such decision has become final”

a.) Prosecute the application as his own;


B.) File a new patent application;
c.) Request that the application be refused;
d) Seek cancellation of the patent (IPC, Sec.
67.1)
 Applicability: Deprivation is without his consent or
through fraud and has been declared entitled to the patent by
final court order or decision.

“ If the 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:
a.) order for his substitution as patentee,
b.) 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. (IPC, Sec. 68)”
 Within1 year from the date of
publication of the application
RIGHTS OF PATENTEES
AND
INFRINGEMENT OF
PATENTS
A.) To restrain, prohibit and prevent;
(i)Where the subject matter of a patent is a
product: any unauthorized person or entity
from making, using, offering for sale,
selling or importing that product;

(ii) Where the subject matter of a patent is a


process: 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
B.) To assign or transfer by
succession the patent

C.) To conclude licensing contract


 “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 patented process without
the authorization of the patentee.”
 He 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 and not suitable for substantial
non-infringing.

He is jointly and severally liable with the


infringer
 patentee who
It espouses that the
has already sold his invention and
has received all the royalty and
consideration for the same will be
deemed to have release the invention from
his monopoly.

 The invention thus becomes open to the


use of the purchaser without further
restriction.
a.) Determine if there is literal infringement.

b.) If there is no literal infringement, then the


doctrine of equivalents should be applied

c.) Literal Infringement. There is infringement


of patent under this test if one makes, uses or
sells an item that contains all the elements of
the patent claim.
 This test is satisfied in either of the
following:

(1) Exactness rule: The item that is being


sold, made or used conforms exactly to
the patent claim of another;

(2) Addition rule: One makes, uses, or


sells an item that has all the elements of the
patent claim of another plus other elements.
 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.

 In other words, the principle or mode of operation


must be the same or substantially the same.

 Doctrine thus requires satisfaction of the function-


means-and-result test,

 the patentee having the burden to show that all three


components of such equivalency test are met.
 Action for damages plus attorney’s fees
and other expenses for litigation

 Injunction

 Disposal or Destruction

 Criminal action for repetition of


infringement
 grant by the patent owner to a third
person of the right to exploit a
patented invention.

 encourages the transfer and dissemination


of technology, prevents or control practices
and conditions that may in particular cases
constitute an abuse of intellectual property
rights having an adverse effect on
competition and trade (IPC. Sec. 85).
 The Philippine taxes on all payments relating to
the technology transfer arrangement shall be
borne by the lessor;

 the procedure of arbitration of the Arbitration


Law of the Philippines, or the Arbitration Rules
on the United Nations Commission on
International Trade Law (UNCITRAL) or the
Rules on Conciliation and Arbitration of the
International Chamber of Commerce shall apply
and the venue of arbitration shall be the
Philippines or any neutral country;
 Continued access to improvements in
techniques and process related to the
technology shall be made available
during the period of the technology
transfer arrangement; and

 That the law of the Philippines shall govern:


- the interpretation of the agreement
 Venue: the proper court in the place where
the licensee has its principal office (IPC. Sec.
88)
Unless otherwise provided in the technology transfer
agreement, the licensor shall have the right to:

1.) Grant further licenses to third persons;


and

2.) Exploit the subject matter of the


technology transfer arrangement during the
whole term of the agreement. (IPC. Sec 900
 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,
either by manufacture or
through parallel importation
(IPC, as amended, Sec. 93)
 It
is the importation of drugs and
medicines by a government
agency or any third party(IPC, as
amended, Sec 72.1 & 72.5)

 Privateparties must first secure a


license to import from BFAD.
1.) May be terminated of the circumstances
which led to its grant have ceased;

2.) Non-exclusive license;

3.) Non-assignable license;

4) The patentee shall be paid adequate


remuneration;
5) The scope and duration of such
license shall be limited to the purpose
for which it was authorized; and

6) Use of the subject matter of the


license shall be devoted predominantly
to the supply of the Philippine market.
1.) National Emergency or other
circumstances of extreme emergency;

2.) When public interest requires;

3.) Manner of exploitation of patent is


anti-competitive;

4.) Public non-commercial use of the


patent without satisfactory reason;
 Patented invention is not being
worked in the Philippines on a
commercial scale although capable
of being worked; and

 Where the demand of the patented


drugs and medicines is not being
met to an adequate extent and on
reasonable terms (IPC, as
amended, Sec. 93)
Voluntary Compulsory
Licensing Licensing
As to Patent Owner Director of
grantor Legal Affairs
As to No specific Those
grounds grouds mentioned
under Sec.
10 of RA No.
9502.
ASSIGNMENT
AND
TRANSMISSION OF
RIGHTS
 Inventions and any right, title, or
interest in and to patents and
inventions covered thereby, may
be assigned or transmitted by
inheritance or bequest or may be
the subject of a license contract.
(IPC, Sec. 103.2)
 Such instrument shall be void as against
subsequent purchaser or mortgagee for
valuable consideration and without notice
unless, it is so recorded in the Office,
within 3 months from the date of
said instrument, or prior to the
subsequent purchase or mortgage.

 Note: Even if not recorded, the instruments


are binding upon the parties. (IPC, Sec. 106.2)
 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. (IPC, Sec. 104)
1.) In writing;

2) Notarized; and

3) Certified under the hand and official


seal of the notary or such other officer
(IPC, Sec. 105)
 Each of the joint owners shall be entitled to
personally make, use, sell, or import the
invention for his own profit. However, neither
of the joint owners shall be entitled to grant
licenses or to assign his right, title or interest
or part thereof without the consent of the
other owner or owners, or without
proportionally dividing the proceeds with
such other owner or owners (IPC, Sec. 107).