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 file 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
THREE-FOLD PATENT
a. Foster Invention
b. Promote disclosure of those invention
c. To be available to the public
Patentable Inventions

- Any TECHNICAL SOLUTIONS 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)
Elements/Criteria of Patentability
a. Novelty – an invention shall not be considered new if it forms part of a prior art.
- 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 different inventor.
b. 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
c. Industrially Applicable – an invention that can be produced and used in any industry. This
means an invention is not merely theoretical, but also has a practical purpose.
GENERAL 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 PRIORITY DATE OF THE APPLICATION if such disclosure was made by:
a. The inventor;
b. A patent office and the information were contained;
1. In another application filed by the inventor and should not have been disclosed by the office,
or;
2. 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;
c. A third party who obtained the information directly or indirectly from the investor (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 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; 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 micro-
biological 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 contract 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 the 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.

- Question: 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)
INVENTION CREATED PURSUANT TO A COMMISSION
Pursuant to a commission: The person who commission 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).
RIGHT OF PRIORITY

- An application for patent filed by any person who has previously applied from the same
invention in another country which by treaty, convention, or law affords similar privileges to
Filipino citizens, shall be considered as filed as the date of filing the foreign application:
provided, that:
a. The local application expressly claims priority;
b. It is filed with in 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
PATENT REGISTRATION
The procedure for the grant of patent may be summarized as follows:
a. Filing of the application
b. Accordance of the filing date
c. Formality examination
d. Classification and Search
e. Publication of Application
f. Substantive Examination
g. Grant of Patent
h. Publication upon grant
i. 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:
a. The invention is not new or patentable;
b. 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. Contrary to public order or morality (IPC, Sec 61.1)
d. Patent is found invalid in an action for infringement (IPC, Sec 82); and
 e. The patent includes matters outside the scope of the disclosure contained in the application. (IPC,
Sec 21, Regulation 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
PANTENTEE, 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.
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 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).
LIMITATION OF PATENT RIGHTS
The owner of a patent has no right to prevent third parties from making, using, offering for sales, 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 part authorized to use the invention. This allows parallel importation for drugs and
medicines.
 The right to import the drugs and medicine 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 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 of sales 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 (IPC Sec. 72.5)
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 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).
OTHER LIMITATIONS: USE BY GOVERNEMENT
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
CIRCUMSTANCES 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 medicine, 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 sales 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
LITERALLY 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.
FUNCTION-MEANS-AND-RESULT TEST

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. The patent is contrary to public order or morality (IPC, Sec 61)
3. Prescription