INTELLECTUAL PROPERTY LAW
(R.A. NO. 8293 or the Intellectual Property Code of the Philippines)
o The law on Patents, Utility Model and Industrial Design
• Definition of Patent – it 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.
• Definition of Utility Model – It is a protection option, which is designed
to protect innovations that are not sufficiently inventive to meet the
inventive threshold required for standard patents application. It may be any
useful machine, implement, tools, products, composition, process,
improvement or part of the same, that is of practical utility, novelty and
industrial applicability. It is entitled to seven (7) years of protection from the
date of filing, with no possibility of renewal.
• Definition of Industrial Design – It is any composition of lines or colors
or any three-dimensional form, whether or not associated with lines or
colors; provided that such composition or form gives a special appearance
to and can serve as pattern for an industrial product or handicraft. It shall
be valid for five (5) years from the filing date of the application. It may be
renewed for not more than two (2) consecutive period of five (5) years each,
by paying the renewal fee.
• Mode of creation of right – it must be registered with IPO to be
protected by law (Created by Registration with IPO).
• Term of patent – A patent has a term of protection of twenty (20) years
providing an inventor significant commercial gain. In return, the patent
owner shares the full description of the invention. This information is made
available to the public in the form of Intellectual Property Office Gazette and
can be utilized as basis of future research and will in turn promote
innovation and development.
• Requisites of Patentable Inventions
✓ It must be a technical solution to a problem in any field of human
activity. It may be, or may be relative to, a product, or process, or an
improvement of any of the foregoing.
✓ (Novelty) It must be new. 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.
✓ 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; Provided, that the application
which has validly claimed the filing date of an
earlier application under Section 31 of this Act,
shall be prior art with effect as of the filing date of
such earlier application: Provided further, that the
applicant or the inventor identified din both
applications are not one and the same.
• (Inventive Step) It must involve an 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 priority date of the application claiming the invention.
• (Industrial Applicability) It must be industrially applicable. An invention
that can be produced and used in any industry shall be industrially
applicable.
o Non-Patentable Inventions
• Discoveries, scientific theories and mathematical methods.
• Schemes, rules and methods of performing mental acts, playing games or
doing business, and programs for computers.
• Methods for treatment of the human or animal body by surgery or therapy
and diagnostic methods practiced on the human or animal body. This
provision shall not apply to products and composition for use in any of these
methods.
• Plant varieties or animal breeds or essentially biological process for the
production of plants or animals. This provision shall not apply to
microorganisms and non-biological and microbiological processes. Provisions
under this subsection shall not preclude Congress to consider the enactment
of a law providing sui generis protection of plant varieties and animal
breeds and a system of community intellectual rights protection.
• Aesthetic creations.
• Anything which is contrary to public order or morality.
✓ 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 persons 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.
✓ Right of Priority – an application for patient filed by any person who has
previously applied for the same invention in another country which by
treaty, convention, or laws affords similar privileges to Filipino citizens, shall
be considered as filed of the date of filing the foreign application. 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.
✓ Right to 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.
✓ Inventions Created Pursuant to a Commission. The person who
commissions the work shall own the patent, unless otherwise provided in
the contract.
• In case the employee made the invention in the course of his employment
contract, the patent shall belong to:
✓ 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.
o Patent Infringement refers to the unauthorized making, using, offering
for sale or selling any patented invention or products of the patented
invention without consent from the patent holder.
