PATENTS

WHAT IS A PATENT?
The LAWS on PATENT would relate to patents for INVENTION, and the
registrations of UTILITY MODEL, and INDUSTRIAL DESIGN.
A Patent is a grant issued by the government through the Intellectual
Property Office (IPO) of the Philippines.
A Patent to an INVENTION, is an exclusive right granted for:
a.)
Product,
b.)
Process
c.)
Improvement of a product or process which is new, inventive and
useful.
This exclusive right gives the inventor or the owner of the patent to the
invention, the right to exclude others from making, using, or selling the
product or process, invented during the life of the patent.
HOW IS A PATENT TO INVENTION DIFFERENT FROM UTILITY MODEL AND
DESIGN REGISTRATIONS?
A patent to inventions is different from utility models or designs.
1.)AS TO TERM OR PERIOD OF PROTECTION:

o INVENTION - has a period of protection of 20 years from filing

date; thereafter this will be part of public domain.
o UTILITY MODEL x x x 7 years from filing date, without renewal.
o INDUSTRIAL DESIGN 5 yrs. from filing date, subject of 2
consecutive renewals of 5-yr. to be filed within 12 mos. before
expiration of registration
An INDUSTRIAL DESIGN is the ornamental or aesthetic aspect of an
article. The design may consist of three-dimensional features, such as the
shape or surface of an article, or of two-dimensional features, such as
patterns, lines or color.
A UTILITY MODEL is a form of an innovation which is new and industrially
applicable, but is lacking the inventive step. It may be any useful machine,
implement, tools, product, composition, process, improvement or part of the
same, that is of practical utility.

An INVENTION offers a technical solution to a problem in any field of

human activity which is new, involves an inventive step and industrially
applicable.

WHAT CANNOT BE SUBJECT OF PATENT:

Discovery
Scientific theory
Mathematical methods
Scheme, rule and method of
Performing mental act
Playing games
Doing business
Program for computer
Method for treatment human or animal body by surgery or therapy &
diagnostic method
Plant variety or animal breed or essentially biological processes for the
production of plants and animals
Aesthetic creation
Contrary to public order or morality (Sec. 22, IP Code )
PATENTABLE INVENTIONS - a Technical Solution to a Problem, in any
field of human activity
WHAT ARE THE REQUISITES for INVENTION TO BE PATENTABLE?
1. It must be NEW (NOVELTY)
2. It involves an INVENTIVE STEP
3. It is INDUSTRIALLY APPLICABLE or useful
Sec. 21. 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 shall be patentable. It may be, or may relate to, a
product, or process, or an improvement of any of the foregoing.

What is NOVELTY (NEW)?

An invention shall not be considered new if it forms part of a prior art. (Sec.
23, RA 8293; Prior Art Sec. 24: everything known or made available to the
public, world, before filing date or priority date)

What is an INVENTIVE STEP?

An invention involves an inventive step, if having regard to a prior art,
it is not obvious to a person skilled in the art at the time of filing date or
priority date.
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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
Who may apply for a Patent?
Natural person
Juridical person
a body of persons, a corporation, a partnership, or other legal entity
recognized by law
Requirements for Filing a Patent
1. Request for the Grant of Patent
2. Description of the Invention (Specification and Claim/s)
3. Drawings necessary for the Invention (if any)
4. Filing Fee

WHO HAS THE RIGHT TO THE PATENT IF THERE TWO OR MORE PERSONS
WHO MADE THE SAME INVENTION, SEPARATELY OR INDENPENDENTLY?
Sec. 29. 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 who has the earliest
filing date or, the earliest priority date.

WHO OWNS THE RIGHT TO A PATENT? (Secs. 28 30, RA 8293)

I.

The INVENTOR/s, or his Heirs or Assigns (Sec. 28, RA 8293)

II.

Sec. 30. Inventions Created Pursuant to a Commission.

30.1. The person who commissions the work shall own the patent, unless
otherwise provided in the contract.
30.2. 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 invention is the result of the performance of his
regularly assigned duties, unless there is an agreement, express of
implied, to the contrary.

RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS

Sec. 71. Rights Conferred by Patent. 71.1. 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.
71.2. Patent owners shall also have the right to assign, or transfer by
succession the patent, and to conclude licensing contracts for the same.
Limitations on the monopoly or exclusive rights of a Patentee
See: Sections. 72, 73, 74 and their subsections, RA 8293.

Sec. 76. Civil Action for Infringement. 76.1. 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.
76.2. 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 infringer such
damages sustained thereby, plus attorneys fees and other expenses of litigation,
and to secure an injunction for the protection of his rights.
76.3. 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.
76.4. The court may, according to the circumstances of the case, award
damages in a sum above the amount found as actual damages sustained:
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Provided, That the award does not exceed three (3) times the amount of such
actual damages.
76.5. 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.
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.
Sec. 77. Infringement Action by a Foreign National. Any foreign national or
juridical entity who meets the requirements of Section 3 and not engaged in
business in the Philippines, to which a patent has been granted or assigned
under this Act, may bring an action for infringement of patent, whether or not it is
licensed to do business in the Philippines under existing law.
Sec. 78. 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.
Sec. 79. 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.
Sec. 80. Damages; Requirement of Notice. Damages cannot be recovered for
acts of infringement committed before the infringer had known, or had
reasonable grounds to know 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.
SEC.

81. Defenses in Action for Infringement. In an action for infringement, the

defendant, in addition to other defences available to him, may show the invalidity
of the patent, or any claim thereof, on any of the grounds on which a petition of
cancellation can be brought under Section 61 hereof. (Sec. 45,R.A. No. 165)
SEC. 82. Patent Found Invalid May be Cancelled. In an action for infringement, if
the court shall find the patent or any claim to be invalid, it shall cancel the same,
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and the Director of Legal Affairs upon receipt of the final judgment of cancellation
by the court, shall record that fact in the register of the Office and shall publish a
notice to that effect in the IPO Gazette. (Sec. 46,R.A. No. 165a)
SEC. 84. Criminal Action for Repetition of Infringement. If infringement is
repeated by the infringer or by anyone in connivance with him after finality of the
judgment of the court against the infringer, the offenders shall, without prejudice
to the institution of a civil action for damages, be criminally liable therefor and,
upon conviction, shall suffer imprisonment for the period of not less than six (6)
months but not more than three (3) years and/or a fine of not less than One
hundred thousand pesos (P100,000) but not more than Three hundred thousand
pesos (P300,000), at the discretion of the court. The criminal action herein
provided shall prescribe in three (3) years from the date of the commission of the
crime. (Sec. 48, R.A. No. 165a)
WHAT IS THE DOCTRINE OF EQUIVALENTS IN PATENT?
The rule of law for determining equivalency as laid down by the Supreme Court is quite
simple: "If two devices do the same work in substantially the same way, and
accomplish substantially the same result, they are the same, even though they
differ in name, form, or shape."
REFERENCES:
1.
2.

R.A. 8293, Intellectual Property Code

www.ipophil.gov.ph