Application Proper 30.2.

In case the employee made the

invention in the course of his employment

The Patent Application. – An application for
contract, the patent shall belong to:
a patent shall be in writing. It may be

written in Filipino or English, and shall be a. The employee, if the inventive activity
filed by post or directly with the Bureau. is not a part of his regular duties
Filing in electronic format or through the even if the employee uses the time,
internet may also be done, if and when facilities and materials of the
facilities therefor are made available by the employer.
Office. All applications shall be addressed to b. The employer, if the invention is the
the Director. The application shall contain result of the performance of his
the following: regularly-assigned duties, unless

there is an agreement, express or

(a) A duly accomplished request for the
implied, to the contrary. (Section 30)
grant of patent; (b) A description of the

invention; (c) Drawing(s) necessary for the

RIGHT OF PRIORITY
understanding of the invention; (d) One or

more claims; and (e) An abstract. Except for An application for patent filed by any
the request for grant, the documents person who has previously applied for the
making up the application filed in writing same invention in another country which
shall be in four (4) copies. by treaty, convention, or law affords similar

privileges to Filipino citizens, shall be

Right to a Patent. — The right to a patent
considered as filed as of the date of filing
belongs to the inventor, his heirs, or assigns.
the foreign application: Provided, That:
When two (2) or more persons have jointly

made an invention, the right to a patent

a. the local application expressly claims
shall belong to them jointly. (Section 28)
priority;

First-to-file rule b. it is filed within twelve (12) months

from the date the earliest foreign

If two (2) or more persons have made the
application was filed; and
invention separately and independently of
c. a certified copy of the foreign
each other, the right to the patent shall
application together with an English
belong to the person who filed an
translation is filed within six (6)
application for such invention, or where two
months from the date of filing in the
or more applications are filed for the same
Philippines. (Section 31)
invention, to the applicant who has the

earliest filing date or, the earliest priority CANCELLATION OF PATENT

date. (Section 29)

61.1. Any interested person may, upon

OWNERSHIP OF COMMISSIONED WORK payment of the required fee, petition to

cancel the patent or any claim thereof, or

30.1. The person who commissions the work
parts of the claim, on any of the following
shall own the patent, unless otherwise
grounds:
provided in the contract.
 a. That what is claimed as the invention the patent, and award actual and other

is not new or Patentable; damages in his favor if warranted by the

b. That the patent does not disclose the circumstances. (Section 68)

invention in a manner sufficiently

Rights Conferred by Patent: (RAC)
clear and complete for it to be
1. To restrain, prohibit and prevent;
carried out by any person skilled in
a. where the subject matter of a patent is a
the art; or
product: any unauthorized person or entity
c. That the patent is contrary to public
from making, using, offering for sale,
order or morality.
selling or importing that product.

61.2. Where the grounds for cancellation b. where the subject matter of a patent is a

relate to some of the claims or parts of the process: any unauthorized person or entity
claim, cancellation may be effected to such from using the process, and from

extent only. (Section 61) manufacturing, dealing in, using, selling

or offering for sale, or importing any

NON-PREJUDICIAL DISCLOSURE
product obtained directly or indirectly from

The disclosure of information contained in such process.

the application during the twelve (12)
2. To assign or transfer by succession the
months preceding the filing date or the
priority date of the application shall not patent; and
prejudice the applicant on the ground of
3. To conclude licensing contracts.
lack of novelty if such disclosure was made
by:

Cancellation of Patent
a. The inventor;
b. A patent office and the information was
contained (a) in another application Any interested person may, upon payment of
filed by the inventor and should not the required fee, petition to cancel the
have been disclosed by the office, or (b) patent or any claim thereof, or parts of the
in an application filed without the claim, on any of the following grounds:
knowledge or consent of the inventor by
a third party which obtained the a. That what is claimed as the invention
information directly or indirectly from is not new or Patentable;
the inventor; or b. Insufficient disclosure;
c. A third party which obtained the c. That the patent is contrary to public
information directly or indirectly from order or morality.
the inventor. (Section 25.1)
61.2. Where the grounds for cancellation
25.2. For the purposes of Subsection 25.1, relate to some of the claims or parts of the
"inventor" also means any person who, at claim, cancellation may be effected to such
the filing date of application, had the right extent only. (Section 61)
to the patent. (n)
Formalities:
REMEDY OF INVENTOR
1. Petition

a. in writing;
If a person, who was deprived of the patent
b. verified;
without his consent or through fraud is
c. specify grounds upon which it is based;
declared by final court order or decision to
d. include a statement of facts; and
be the true and actual inventor, the court
e. attach copies of printed publications, or
shall order for his substitution as patentee,
of patents of other countries, together with
or at the option of the true inventor, cancel
their translations in English.
2. Notice Reason: Is to permit the imitation of a

3. Hearing patented invention which does not copy any

Effect: termination of rights conferred by the literal detail would be to convert the

patent. (Sec 66) protection of the patent grant into a hollow

and useless thing. (Godines vs CA)

Time to File Action in Court

-the action indicated in Sec 67 and 68 shall

be filed within 1 year from the date of CIVIL LIABILITY

publication of the application. (Sec 70) 1. Action for damages plus atty’s fees and

other expenses for litigation (and to secure

INFRINGEMENT injunction for the protection of his rights)

- The making, using, offering for sale, 2. Injunction

selling or importing a patented product or 3. Disposal/ destruction

a product obtained directly or indirectly CRIMINAL LIABILITY

from patented process, or the use of a If infringement is repeated by the infringer

patented process without the authorization. or by anyone in connivance with him after

finality of judgment of the court, the

How made- when there is piracy or offenders shall, without prejudice to the

substantial reproduction. If so much is institution of a civil action for damages, be

taken that the value of the original work is criminally liable therefore and, upon

substantially diminished or the labors of conviction, shall suffer imprisonment for

the original author are substantially and 6months to 3years and/or a fine of Php

to an injurious extent appropriated by 100,000 to 300,000, at the discretion of the

another. court.

i. Doctrine of Equivalents A.M NO. 10-3-10-SC

-an infringement also takes place when a CIVIL PROCEDURE

device appropriates a prior invention by Rule 2 NATURE OF PROCEEDINGS

incorporating its innovative concept and, SEC 1. Scope. — Rules 2 to 9 shall apply to all

although with some modification and civil actions for violations of intellectual

change, performs substantially the same property rights provided for in Republic Act

way to achieve the same result (functions- 8293 or the Intellectual Property Code, as

means-and-result test). In other words, the amended, including civil actions for

principle or mode of operation must be the infringement of Patent (Section 76), Utility

same or substantially the same. The Model (Section 108) and Industrial Design

doctrine thus requires satisfaction of the (Section 119), Trademark Infringement

function-means-and-result test, the (Section 155 in relation to Section 163),

patentee having the burden to show all the Unfair Competition (Section 168 in relation

three components of such equivalency test to Section 163), actions concerning

are met. trademark license contracts (Section 150 in

relation to Section 163), actions concerning

imported merchandise or goods bearing

infringing marks or trade names (Section Republic Act 8293 or the Intellectual

166 in relation to Section 163), actions for Property Code, as amended, including

cancellation of the registration of a Repetition of Infringement of Patent

collective mark (Section 167 in relation to (Section 84), Utility Model (Section 108)

Section 163), False Designations of Origin; and Industrial Design (Section 119),

False Description or Representation (Section Trademark Infringement (Section 155 in

169 in relation to Section 163), Breach of relation to Section 170), Unfair Competition

Contract (Section 194), civil actions for (Section 168 in relation to Section 170),

infringement of copyright, moral rights, False Designations of Origin; False

performers' rights, producers' rights, and Description or Representation (Section

broadcasting rights (Sections 177, 193, 203, 169.1 in relation to Section 170),

208, 211, and 216), and other violations of infringement of copyright, moral rights,

intellectual property rights as may be performers' rights, producers' rights, and

defined by law. SEC. 2. Special Commercial broadcasting rights (Section 177, 193, 203,

Courts in the National Capital Judicial 208 and 211 in relation to Section 217),

Region with authority to issue writs of and other violations of intellectual property

search and seizure enforceable nationwide. rights as may be defined by law. SEC. 2.

— Special Commercial Courts in Quezon Special Commercial Courts in the National

City, Manila, Makati, and Pasig shall have Capital Judicial Region with authority to

authority to act on applications for the issue search warrants enforceable

issuance of writs of search and seizure in nationwide. Special Commercial Courts in

civil actions for violations of the Quezon City, Manila, Makati, and Pasig

Intellectual Property Code, which writs shall shall have authority to act on applications

be enforceable nationwide. The issuance of for the issuance of search warrants

these writs shall be governed by the rules involving violations of the Intellectual

prescribed in Re: Proposed Rule on Search Property Code, which search warrants shall

and Seizure in Civil Actions for be enforceable nationwide. Within their

Infringement of Intellectual Property Rights respective territorial jurisdictions, the

(A.M. No. 02-1-06-SC, which took effect on Special Commercial Courts in the judicial

February 15, 2002). Within their respective regions where the violation of intellectual

territorial jurisdictions, the Special property rights occurred shall have

Commercial Courts in the judicial regions concurrent jurisdiction to issue search

where the violation of intellectual property warrants. Accordingly, the Executive Judges

rights occurred shall have concurrent are hereby relieved of the duty to issue

jurisdiction to issue writs of search and search warrants involving violations of the

seizure. Intellectual Property Code in criminal cases

as stated in Sec. 12, Chapter V of A.M. No. 03-

CRIMINAL PROCEDURE 8-02-SC (Guidelines on the Selection and

Rule 10 NATURE OF PROCEEDINGS Appointment of Executive Judges and

SEC 1. Scope. — Rules 10 to 15 shall apply to Defining their Powers, Prerogatives and

all criminal actions for violations of Duties).

intellectual property rights provided for in

(Section 72) Limitations of Patent Rights. — preparations for use have been made.
The owner of a patent has no right to (Section 73)
prevent third parties from performing,
without his authorization, the acts referred USE BY GOV’T
to in Section 71 hereof in the following
circumstances: The gov’t or a third person authorized by it
may use the patent without authority of the
72.1. (DOCTRINE OF NATIONAL patent owner if: (PAN-PD)
EXHAUSTION) Using a patented product
which has been put on the market in the 1. Public interest so requires;
Philippines by the owner of the product, or
with his express consent, insofar as such use 2. The manner of exploitation by the owner
is performed after that product has been so is Anti-competitive;
put on the said market;
3. In case of drugs and medicines, there is a
72.2. Where the act is done privately and on National emergency or other circumstance
a non-commercial scale or for a non- of extreme urgency requiring the use of
commercial purpose: Provided, That it does invention;
not significantly prejudice the economic
interests of the owner of the patent; 4. In case of drugs and medicines, there is a
Pulic non-commercial use of the patent by
72.3. Where the act consists of making or the patentee, without satisfactory reason
using exclusively for the purpose of (RA 9502, Sec 8)
experiments that relate to the subject matter
of the patented invention; 5. In case of drugs and medicines, the
Demand for the patented article in the PH
72.4. Where the act consists of the is not being met to an adequate extent and
preparation for individual cases, in a under reasonable terms (RA 9502. Sec 8).
pharmacy or by a medical professional, of a
medicine in accordance with a medical -Unless otherwise provided by IPC, the use of
prescription or acts concerning the Gov’t shall be subject to the ff:
medicine so prepared;
1. In the above situations, the right holder
72.5. Where the invention is used in any shall be notified as soon as practicable;
ship, vessel, aircraft, or land vehicle of any
other country entering the territory of the 2. Scope and duration of such use shall be
Philippines temporarily or accidentally: limited to the purpose for which it was
Provided, That such invention is used authorized;
exclusively for the needs of the ship, vessel,
aircraft, or land vehicle and not used for 3. Use shall be non-exclusive;
the manufacturing of anything to be sold
within the Philippines. (Secs. 38 and 39, R.A. 4. Right holder shall b paid adequate
No. 165a) remuneration in the circumstances of each
case; and
PRIOR USER
5. Existence of national emergency or other
73.1. Notwithstanding Section 72 hereof, circumstances of extreme urgency in
any prior user, who, in good faith was using situation no. 3 shall be subject to the
the invention or has undertaken serious determination by the President of the PH.
preparations to use the invention in his
enterprise or business, before the filing date
or priority date of the application on which
a patent is granted, shall have the right to
continue the use thereof as envisaged in
such preparations within the territory where
the patent produces its effect.

73.2. The right of the prior user may only be

transferred or assigned together with his
enterprise or business, or with that part of
his enterprise or business in which the use or