SECTION 20

This section gives the meaning of important words that will be used throughout the second part of the
law, which is all about patents. Understanding these words will help you follow the rules and processes
better.
Here are the key terms defined:
●​ 20.1. "Bureau" – This refers to the Bureau of Patents, which is the government office that
handles everything related to patent applications in the Philippines.
●​ 20.2. "Director" – This is the Director of Patents, the person who leads the Bureau of Patents.
●​ 20.3. "Regulations" – These are the official rules that explain how to handle patent-related
matters. They are made by the Director of Patents and approved by the Director General.
●​ 20.4. "Examiner" – A patent examiner is a person who reviews and checks patent applications
to decide if an invention should be given a patent.
●​ 20.5. "Patent application" or "application" – This means the request filed by someone to get a
patent for their invention. However:
○​ In Chapters XII and XIII of the law, this word will mean something a little different:
■​ In Chapter XII: It means an application for a utility model (a simpler kind of
invention).
■​ In Chapter XIII: It means an application for an industrial design (a design or look
of a product).
●​ 20.6. "Priority date" – This is the date when the patent application was first filed in another
country. This date is important if the inventor applies for a patent in the Philippines for the
same invention. It helps decide who invented something first.

💡 Key Terms (for Section 20):

●​ Patent: A legal right that gives an inventor exclusive control over their invention for a certain
time.
●​ Patent Application: A formal request submitted to get a patent.
●​ Utility Model: A simpler kind of patent, usually for small technical inventions.
●​ Industrial Design: The look or design of a product (e.g., shape, pattern).
●​ Patent Examiner: A person who checks if an invention qualifies for a patent.
●​ Priority Date: The original filing date of an invention in another country, which helps determine
who has the right to the patent.
●​ Bureau of Patents: The government office in charge of handling patents in the Philippines.

SECTION 21 – Patentable Inventions (What Can Be Patented)

You can get a patent for something if it meets all three of these conditions:
1.​ It solves a technical problem in any field (like medicine, farming, electronics, etc.),
 2.​ It is new (no one else has invented it before),
3.​ It has an inventive step (it’s not an obvious idea to people who know the field), and
4.​ It can be used in industry (meaning it can be made and used in real-life businesses or factories).​

✅ The invention could be:

●​ A product (something you can touch or use),
●​ A process (a method or way of doing something), or
●​ An improvement of either a product or a process.​

💡 Key Terms (Section 21):

●​ Patent: A legal right that gives you ownership of an invention.
●​ Invention: A new and useful idea or creation that solves a problem.
●​ Technical solution: A smart way to fix a problem using science or technology.
●​ Inventive step: The invention must be something not obvious to experts.
●​ Industrially applicable: The invention can be used in businesses or factories.

SECTION 22 – Non-Patentable Inventions (What Cannot Be Patented)

These things cannot be patented:
22.1. Discoveries and Theories
●​ You can’t patent facts, theories, or math formulas.
●​ For medicines: If you only discover a new form, property, or use of an already known drug and
it doesn't work better, you can’t patent that either.​

22.2. Mental Acts or Computer Programs

●​ You can’t patent ideas like ways to play games, do business, or purely computer software.​

22.3. Medical Methods

●​ You can’t patent methods of treating humans or animals (like surgeries or therapies), but you
can patent the medicine or tools used.​

22.4. Plants and Animals

●​ You can’t patent animal breeds or plant types or natural ways to breed them.
●​ But you can patent microorganisms (like bacteria) or man-made breeding methods.​
22.5. Artistic Creations
●​ You can’t patent artwork, music, or other creative works (these fall under copyright).​

22.6. Morally Wrong or Illegal Ideas

●​ Anything against morals or public rules can’t be patented.​
💡 Key Terms (Section 22):
●​ Discovery: Finding something that already exists in nature.
●​ Scientific theory: A well-tested explanation of how something works (like gravity).
●​ Mathematical method: A formula or calculation.
●​ Efficacy: How well a drug works.
●​ Sui generis: A unique or special kind of law (not from usual categories).
●​ Public order or morality: Things considered acceptable by society.​

SECTION 23 – Novelty (The Invention Must Be New)

An invention is not new (and can’t be patented) if it’s already part of what’s called “prior
art”—meaning it was already made public before you filed your patent.

SECTION 24 – Prior Art (What’s Already Known)

Prior art includes:
●​ Anything already made public, anywhere in the world, before your filing date.​
Other patent applications filed earlier in the Philippines and published, even if they haven’t
been approved yet—as long as the inventor isn’t the same person as you.

💡 Key Terms (Sections 23–24):

●​ Novelty: Being new and never before seen or known.
●​ Prior art: Anything already made public or already filed as a patent before your invention.

SECTION 25 – Non-Prejudicial Disclosure (Safe Period for Sharing Your Invention)

If you accidentally share your invention (like by showing it at a science fair or talking about it
publicly), you still have 12 months to file for a patent without losing novelty, if:
●​ You were the one who shared it,
●​ A patent office mistakenly released the info,
●​ Someone else shared it but got the info from you.​

Note: In this case, “inventor” also includes anyone who legally owns the rights to the invention at the
time.

💡 Key Terms (Section 25):

●​ Disclosure: Sharing or revealing information.
●​ Non-prejudicial: Won’t harm your chance of getting a patent.
●​ Filing date: The date you submitted your patent application.
SECTION 26 – Inventive Step (Not Obvious)
Your invention must be more than just a simple or obvious improvement. It must show creativity
beyond what experts already know.
If it’s a drug or medicine, just finding a new form or new property of an existing drug isn’t enough,
unless it works better (has better efficacy) or involves a new chemical reaction.

💡 Key Terms (Section 26):

●​ Inventive step: A smart or clever improvement that’s not obvious.
●​ Obvious: Something simple or predictable that an expert would easily think of.
●​ Reactant: A substance used in a chemical reaction.

SECTION 27 – Industrial Applicability (Can Be Used in Real Life)

To get a patent, your invention must be something that can actually be made and used in an industry
or business.
It can’t be just a cool idea—it has to be something practical and useful in real life.

💡 Key Terms (Section 27):

●​ Industrial applicability: The invention can be made and used in work or business.
●​ Industry: Any business or manufacturing activity.​

SECTION 28 – Right to a Patent (Who Owns the Invention?)

The person who created the invention (called the inventor) is the one who has the right to apply for a
patent.
●​ If the inventor dies, their heirs (family members who legally inherit) can apply.
●​ If the inventor transfers the rights to someone else (called an assign), that person can apply too.
●​ If two or more people made the invention together, they share the right and will co-own the
patent.

💡 Key Terms (Section 28):

●​ Inventor: The person who made or created the invention.
●​ Heirs: Family members who legally inherit the rights of a person who passed away.
●​ Assigns: People who receive rights from the inventor (through a legal transfer).
●​ Jointly: Shared ownership between two or more people.

SECTION 29 – First to File Rule (Who Gets the Patent First?)

If two or more people independently invent the same thing, the patent goes to the person who files
their patent application first.
●​ If both people apply for a patent for the same invention, the one with the earliest filing date (or
priority date, if from a foreign application) wins the right.
💡 Key Terms (Section 29):
●​ First to file: The first person to submit a patent application gets the right.
●​ Independently: Made without knowing about each other’s invention.​
Priority date: The original filing date from another country, if the invention was first filed
abroad.

SECTION 30 – Inventions Created for Someone Else (Commissioned or Employee Inventions)

This section explains who owns the patent if the invention was made for someone else:
30.1. If the invention was commissioned (meaning someone paid another person to create it):
●​ The person who paid for the work (the commissioner) owns the patent — unless the contract
says otherwise.​

30.2. If the invention was made by an employee:

●​ The employee owns the patent if the invention was not part of their regular job, even if they
used the company’s time or tools.
●​ The employer owns the patent if the invention was made as part of the employee’s usual duties
— unless they have an agreement that says otherwise.

💡 Key Terms (Section 30):

●​ Commission: When someone is hired or paid to do work.
●​ Contract: A legal agreement.
●​ Employee: A person who works for someone else (the employer).
●​ Regular duties: The normal tasks or responsibilities assigned to an employee.

SECTION 31 – Right of Priority (Using Your Foreign Patent Application Date)

If you first applied for a patent in another country, you can use that earlier date when filing in the
Philippines, as long as:
1.​ The other country has an agreement or treaty with the Philippines that allows Filipinos to do
the same.
2.​ Your Philippine application claims priority (says that you filed it first in another country).
3.​ You file the Philippine application within 12 months of the first foreign filing.
4.​ You submit a certified copy of the foreign application (and an English translation) within 6
months of your Philippine filing.​

This gives you an advantage because it protects you from others trying to patent the same invention
during that time.
💡 Key Terms (Section 31):
●​ Right of priority: The right to use an earlier filing date from another country.
●​ Treaty/Convention: Agreements between countries to follow common rules.
●​ Certified copy: An official, stamped copy that proves the foreign filing is real.
●​ Translation: A version of the document written in English.​

SECTION 32 – The Application (What You Need to Submit)

When you apply for a patent, your application must be written in either Filipino or English, and it
must include:
1.​ A request asking for a patent to be granted.
2.​ A description that explains the invention clearly.
3.​ Drawings if needed to help understand how the invention works.
4.​ One or more claims, which say exactly what part of the invention you want to protect.
5.​ An abstract, which is a short summary of the invention.​

Also, the application must say who the inventor is. If the applicant is not the inventor, the Patent
Office can ask for proof (like written permission) showing the applicant is allowed to apply.

💡 Key Terms (Section 32):

●​ Patent application: A set of documents requesting legal protection for an invention.
●​ Description: A full explanation of how the invention works.​
Claims: Statements in the application that define exactly what is being protected.
●​ Abstract: A short summary of the invention.
●​ Inventor: The person who created the invention.
●​ Applicant: The person filing the application (could be the inventor or someone authorized by
them).​

SECTION 33 – Appointment of Agent or Representative (For Foreign Applicants)

If the person applying for a patent is not living in the Philippines, they must choose a local
representative (called a resident agent) in the country.
●​ This agent will receive notices or legal documents related to the patent application.

💡 Key Terms (Section 33):

●​ Resident agent: A local person or lawyer in the Philippines who acts on behalf of a foreign
applicant.
●​ Notice or process: Official letters or legal documents about the application.
SECTION 34 – The Request (Basic Info Needed in the Application)
The request part of the patent application must include:
●​ A formal petition asking for a patent,
●​ The name and information of the applicant, inventor, and agent (if any),
●​ The title of the invention.

💡 Key Terms (Section 34):

●​ Petition: A formal written request to the government office.

SECTION 35 – Disclosure and Description of the Invention (Explain Clearly and Fully)
35.1 Disclosure​
You must explain the invention clearly and completely so that a person with knowledge in the field
can recreate or use it.​
If your invention involves a microorganism (like bacteria) that can’t be fully described on paper, you
must deposit a sample of it at an international depository, so others can access it if needed.

35.2 Description​
The law will give specific rules (called regulations) on what to include and how to organize the
description.

💡 Key Terms (Section 35):

●​ Disclosure: Sharing enough details so others can understand and use the invention.
●​ Microbiological process: A process using tiny living things (like bacteria).
●​ Depository institution: A special place where biological samples are stored safely.

SECTION 36 – The Claims (What Exactly You Want to Protect)

36.1 The application must have at least one claim, clearly stating what part of the invention you want
to protect.
●​ Claims must be clear, short, and based on your description.​

36.2 The rules will give more details on how to write the claims.

💡 Key Terms (Section 36):

●​ Claim: A statement that defines what parts of your invention are protected by the patent.
●​ Concise: Short and direct.
SECTION 37 – The Abstract (Quick Summary of the Invention)
The abstract is a short summary (preferably no more than 150 words) that gives:
●​ A clear idea of the technical problem,
●​ How the invention solves that problem, and
●​ The main use of the invention.​

👉 The abstract is only for technical information—not for legal protection.

💡 Key Terms (Section 37):
●​ Technical problem: A problem the invention is trying to fix.
●​ Gist: The main point or summary.
●​ Principal use: The main way the invention will be used.

SECTION 38 – Unity of Invention (Stick to One Main Idea)

38.1 Your application should cover only one invention or a group of inventions that are closely
connected under a single main idea.

38.2 If you try to include several unrelated inventions, the Director can ask you to split them into
separate applications (called “divisional applications”).
●​ If you file the divisional application within 4 months, it will keep the same filing date as the
original one.
●​ Each divisional application must still be based on the original invention description.​

38.3 If a patent is granted even though the rule about one invention wasn’t followed, it won’t be
canceled just because of that.

💡 Key Terms (Section 38):

●​ Unity of invention: One patent application should focus on one invention or related inventions.
●​ Divisional application: A new application split from the original.
●​ Filing date: The date when the application was officially submitted.

SECTION 39 – Information on Foreign Patent Applications (Tell About Related Applications

Abroad)
If the Director asks, the applicant must give:
●​ The date and number of any foreign applications (patent applications filed in other countries)
for the same or similar invention,
●​ And other related documents from those foreign applications.
💡 Key Terms (Section 39):
●​ Corresponding foreign application: A patent application for the same invention filed in another
country.
●​ Director: The head of the Bureau of Patents.
●​ Relating to the same invention: Similar or identical inventions in both the local and foreign
applications.​

CHAPTER V – PROCEDURE FOR GRANT OF PATENT

This chapter explains how to apply for a patent, the steps involved, and what happens at each stage. A
patent is a legal right given to an inventor to stop others from using their invention without
permission for a certain number of years.

SECTION 40 – Filing Date Requirements

To officially start a patent application, the government (through the Intellectual Property Office) must
receive these three things:
●​ A request showing that you want a Philippine patent
●​ Your name or other identifying info
●​ A description of the invention and at least one claim, written in English or Filipino​

If any of these are missing and not fixed in time, the application is considered withdrawn (cancelled).
💡 Key Terms:
●​ Filing date: The official date the application is accepted.
●​ Claim: A statement that defines what the invention is and what it protects.​

SECTION 41 – According a Filing Date

The patent office checks if the application has all required parts (from Section 40).
●​ If something is missing, you’ll be asked to fix it.
●​ If you don't fix it on time, your application will be considered withdrawn.

SECTION 42 – Formality Examination

After your application gets a filing date and you pay the necessary fees:
●​ The office checks if your application follows all the formal rules (based on Section 32).
●​ If you fail to meet these rules, your application is considered withdrawn.
●​ You can re-examine or revive your application, or appeal a denial (rejection) by the examiner.​

💡 Key Terms:
 ●​ Formality Examination: A basic review to check if all documents are properly filled out and
submitted.​

SECTION 43 – Classification and Search

Once the application is complete:
●​ The invention is classified (grouped by type)
●​ The office searches for prior art (any existing inventions or public documents that are similar to
yours)​

💡 Key Term:
●​ Prior art: Any earlier invention or published idea that is similar to your invention.

SECTION 44 – Publication of Patent Application

●​ The application will be published in the IPO Gazette (official government publication) 18
months after your filing or priority date.
●​ Anyone can inspect the application after publication.
●​ If the invention could harm national security, the government can stop or limit the
publication.​

SECTION 45 – Confidentiality Before Publication

Before the 18-month publication, no one can see your patent application unless you say it’s okay.

SECTION 46 – Rights After Publication

After your patent application is published:
●​ You can already protect your invention as if the patent was granted.
●​ But only if the person using it knew about your application or was officially notified.
●​ You can only sue them after your patent is officially granted, and within 4 years from when the
violation happened.​

SECTION 47 – Observation by Third Parties

After publication, anyone can send written comments to the office about why your invention should or
shouldn't be patented.
●​ You get a copy and can respond.
 ●​ These comments go in your file.​

SECTION 48 – Request for Substantive Examination

●​ Within 6 months of publication, you must request a detailed review (called substantive
examination) and pay the required fee.
●​ If you don’t, your application is withdrawn permanently.
●​ If you withdraw your request, you cannot get a refund.​
💡 Key Term:
●​ Substantive examination: A deep review of your invention to see if it meets all patent rules (e.g.,
it must be new, useful, and inventive).

SECTION 49 – Amendment of Application

You can change (amend) your application during the examination process, but:
●​ You can’t add anything new that wasn’t in your original description.

SECTION 50 – Grant of Patent

●​ If everything is okay and you pay the fees on time, the patent will be granted.
●​ If you miss the payment deadline, your application is considered withdrawn.
●​ The patent becomes effective on the date it is published in the IPO Gazette.

SECTION 51 – Refusal of the Application

●​ If your application is finally rejected, you can appeal the decision.
●​ The rules for appeal are written in the Regulations.

SECTION 52 – Publication Upon Grant of Patent

●​ Once your patent is granted, it is published in the IPO Gazette.
●​ Anyone can inspect the full patent documents.

SECTION 53 – Contents of Patent

The official patent document will:
●​ Be issued under the name of the Philippine government
●​ Be signed by the Director
●​ Be registered in the IPO’s official records, along with the invention description and drawings.

SECTION 54 – Term of Patent

A patent is valid for 20 years from the filing date of the application.

SECTION 55 – Annual Fees

●​ You must pay a yearly fee starting 4 years after your application is published, and every year
after that.
●​ If you don’t pay on time, the patent is considered lapsed or the application withdrawn.
●​ A 6-month grace period is given to pay, with a penalty (surcharge).​

💡 Key Term:
 ●​ Lapsed patent: A patent that is no longer valid because fees were not paid.​

SECTION 56 – Surrender of Patent

●​ The owner can give up (surrender) the patent, but only with permission from anyone else who
has rights to it (like license holders).
●​ If someone disagrees, they can notify the office and the Bureau will decide.
●​ Once surrendered, the patent is cancelled and no one can sue based on past violations.

SECTION 57 – Correction of Office Mistakes

The Director can fix any mistake made by the patent office for free if the error is clearly shown in their
records.

SECTION 58 – Correction of Applicant’s Mistake

If the applicant made a clerical or small mistake, they can request a correction by paying a fee.

SECTION 59 – Changes in Patents

Patent owners can request to:
●​ Limit the patent’s protection
●​ Fix clear or honest mistakes​

But:
●​ They can’t broaden the patent after 2 years from grant
●​ They can’t make changes that go beyond what was in the original application
●​ If changes are allowed, they will be published

SECTION 60 – Form and Publication of Amendment

If a change or correction is made, a certificate will be attached to the patent.
●​ It will be published in the IPO Gazette
●​ All future copies of the patent will include the correction.

💡 Chapter V – Key Terms Summary:

●​ Patent: Legal protection for an invention.
●​ Filing date: The official start date of a patent application.
●​ Prior art: Existing inventions or public information related to your invention.
●​ Substantive examination: A detailed check to make sure the invention meets legal standards.
●​ Lapsed patent: A patent that loses protection due to missed fee payments.
●​ IPO Gazette: Official publication where patent information is shared.
SEC. 61. Cancellation of Patents
In simple terms:
Anyone who has a reason to care (called an "interested person") can ask the government (IPO) to cancel
a patent or part of it, if they pay a fee and have a valid reason. Valid reasons include:
●​ (a) The invention is not new or not something that can be patented.
●​ (b) The patent is not explained clearly enough for experts in the field to understand and use it.
●​ (c) The invention is against public order or morality (e.g., harmful to society or unethical).​

If the issue is only with some parts of the patent, only those parts can be cancelled—not the entire
patent.

Key Terms:
●​ Patent – A legal right that gives an inventor control over their invention.​
Interested person – Anyone who may be affected by the patent or its cancellation.
●​ Patentable – Something that can be legally protected as a patent (must be new, useful, and
inventive).
●​ Public order or morality – Things that affect peace, safety, ethics, and basic values of society.

SEC. 62. Requirement of the Petition

In simple terms:
The request to cancel a patent (called a petition) must:
●​ Be written and sworn (verified) by the person making the request or someone who knows the
facts.
●​ Clearly say the reasons why the patent should be cancelled.
●​ Include the facts and documents that support the reasons.
●​ Attach any publications or foreign patents being used as proof, with English translations if
needed.​

Key Terms:
●​ Petition – A formal request to do something (here, to cancel a patent).
●​ Verified – Sworn as true, usually through an oath or notarization.
●​ Supporting documents – Proof, like scientific papers or other patents.

SEC. 63. Notice of Hearing

In simple terms:
Once a cancellation petition is filed:
●​ The Director of Legal Affairs must notify the patent holder (patentee) and anyone who has
rights to the patent (like license holders).
●​ A hearing (meeting to discuss the issue) is scheduled.
●​ The public is informed about the petition by publishing it in the IPO Gazette.​
Key Terms:
●​ Director of Legal Affairs – The official in charge of handling legal matters about patents.
●​ IPO Gazette – An official publication of the Intellectual Property Office used to announce
important matters.

SEC. 64. Committee of Three

In simple terms:
If the case is very technical (hard to understand without expert knowledge), one of the parties can ask
for a special committee to handle it. This committee will have:
●​ The Director of Legal Affairs as chairperson.
●​ Two experts in the field of technology involved.​

The committee’s decision can be appealed to the Director General.

Key Terms:
●​ Highly technical issues – Complicated matters needing expert understanding.
●​ Appeal – Asking a higher authority to review a decision.
●​ Director General – The head of the Intellectual Property Office.​

SEC. 65. Cancellation of the Patent

In simple terms:
●​ 65.1 If the committee agrees that cancellation is valid, it will cancel the patent or parts of it.​

●​ 65.2 If the patent holder makes corrections during the hearing, and the corrected version follows
the law, the patent may be kept in its amended form—as long as a new printing fee is paid on
time.​

●​ 65.3 If the fee is not paid, the patent is revoked.​

●​ 65.4 If the patent is amended, the updated details must be published (summary, drawings,
changes, etc.).​

Key Terms:
●​ Amended – Corrected or changed.
●​ Revoked – Officially cancelled.
●​ Abstract – A short summary of the invention.
●​ Representative claims – Main claims that show what the invention is about.​
SEC. 66. Effect of Cancellation of Patent or Claim
In simple terms:
If a patent or any part of it is cancelled:
●​ The inventor loses the rights over the cancelled part.
●​ This cancellation is announced in the IPO Gazette.
●​ The cancellation takes effect immediately unless the Director General says otherwise, even if
someone appeals the decision.​

Key Terms:
●​ Executory – Can be enforced right away.
●​ Terminate – To end.
●​ Appeal – Asking for a higher review of a decision.

Section 67. Patent Application by Persons Not Having the Right to a Patent
🔍 What it says:​
If someone applies for a patent but they are not the rightful inventor (for example, they copied the
invention), and the court decides that another person actually has the right to it (based on the
First-to-File Rule in Section 29), then that rightful person has 3 months (after the court's final
decision) to choose one of the following:
They can:
●​ (a) Continue the patent application as their own (replace the original applicant)
●​ (b) File a new application for the same invention
●​ (c) Ask the IPO to reject the original application
●​ (d) Ask to cancel the patent if it was already approved and granted​

📘 Extra Note: If they choose to file a new application (Option b), the same rules in Section 38.2 (about
filing dates and correcting applications) will apply to them.

Section 68. Remedies of the True and Actual Inventor

🛡️ What it says:​
If someone stole your invention or got a patent without your permission, and the court later decides
that you are the real inventor, the court can:
●​ Make you the official patent holder (replace the other person)
●​ Or, if you prefer, the court can cancel the patent completely
💰 Also, if what happened caused you harm or loss, the court can order the other party to pay you
damages (money).
Section 69. Publication of the Court Order
📢 What it says:​
After the court makes a final decision (either under Section 67 or 68), a copy of the decision will be:
●​ Sent to the IPO
●​ Published in the IPO Gazette within 3 months
●​ Recorded in the official patent register​

📝 This makes the decision public and official.

Section 70. Time to File Action in Court
⏰ What it says:​
You only have 1 year to file the actions under Sections 67 and 68. The 1-year countdown starts from
the date the patent application or grant is published (under Sections 44 and 51).

🧠 Important Definitions
●​ Patent – A legal right given to an inventor to stop others from using or selling their invention
without permission.
●​ IPO (Intellectual Property Office) – The government agency that handles patents and other
intellectual property.
●​ IPO Gazette – A public bulletin where official IPO decisions and patent applications are
published.
●​ Court Order/Decision – A final legal judgment made by a judge that must be followed.​

Section 71 – What Rights Do You Get From a Patent?

If you have a patent, you have exclusive rights to your invention.
●​ If it’s a product: You can stop others from making, using, selling, or importing it without your
permission.
●​ If it’s a process: You can stop others from using the process and from dealing in products made
with it.
●​ You can also sell, transfer, or license your patent to others.​

Limits to Patent Rights

Section 72 – When Others Can Use Your Patent Without Permission
Your rights don’t apply in these cases:
1.​ ✅ First sale rule: If you or someone you authorized sells the product, anyone can use it.
 ○​ For drugs and medicines, this applies even if first sold abroad.​

2.​ 🧪 Private or non-commercial use: If it's for personal, small-scale, or non-profit purposes.​
3.​ 🔬 Experiments or education: If it’s used in research, science, or education.​

4.​ 💊 Regulatory testing: Use of patented drugs for regulatory approval is allowed.​

5.​ 👨‍⚕️ Prescription preparation: Medicine made by a doctor or pharmacist for a specific patient.​

6.​ 🚢 Temporary foreign use: If a foreign ship, plane, or vehicle enters the Philippines and uses
your invention only for its own needs, that’s allowed.

👷 Special Cases
Section 73 – Prior User Rights
If someone already used or was about to use the invention before the patent was filed:
●​ They can continue using it in their business.
●​ This right can only be transferred with the business, not separately.

Section 74 – Government Use Without Permission

The government (or a third party it authorizes) can use your patent without your consent if:
1.​ 🛡️ For public interest – e.g., national security, health, nutrition​
2.​ ⚖️ The patent is used in an anti-competitive way​

3.​ 🚨 In case of emergency or urgent need (especially for medicines)​

4.​ 💊 If the patent owner isn’t using it for public, non-commercial purposes​

5.​ ⚖️ If there's insufficient supply of a patented drug at fair prices​

Even in these cases:

●​ The patent owner should be notified
●​ Use must be limited, non-exclusive, and compensated
●​ Only the Supreme Court can stop this kind of use with a restraining order

🔍 Patent Scope and Interpretation

Section 75 – What Is Covered by the Patent?
The claims in your patent define the scope of your protection. But courts also consider:
●​ Your drawings
●​ Description
●​ Equivalents of the claimed features are also protected.​
⚖️ Patent Infringement
Section 76 – What Counts as Infringement?
It's infringement if someone:
●​ Makes, uses, sells, offers for sale, or imports your patented product or uses your patented process
without your permission​

🚫 EXCEPTIONS: No infringement if it falls under:

●​ Section 72 (limitations),
●​ Section 74 (government use),
●​ Section 93.6 or 93-A (compulsory licenses)​

What Can You Do?

You can file a civil case to:
●​ Get damages (money)
●​ Ask for an injunction to stop the infringement
●​ Get up to 3x actual damages if the violation is serious
●​ Ask the court to destroy or dispose of infringing items
●​ Sue others who helped or encouraged the infringer (they are equally liable)

🌍 Foreign Patent Owners

Section 77 – Can Foreigners Sue for Infringement?
Yes. Even if a foreign patent owner is not doing business in the Philippines, they can still file an
infringement case here.

🧪 Special Case: Process Patents

Section 78 – Burden of Proof
If your patent is for a process, and someone is selling the same product:
●​ The court assumes they used your process unless they can prove otherwise.
●​ The court will try to protect the business secrets of the accused party.​

⏳ Time Limits and Requirements

Section 79 – Deadline to Sue
You can only claim damages for infringement that happened within the last 4 years before filing the
case.
Section 80 – Notice Requirement
You can’t claim damages if the infringer didn’t know about the patent — unless the product had clear
markings like:
“Philippine Patent No. _____”

🛡️ Defenses in Infringement Cases

Section 81 – What Can the Accused Say?
The accused can argue that:
●​ The patent is invalid for the same reasons it could be canceled (e.g., lack of novelty)​

Section 82 – What If Patent Is Invalid?

If the court finds the patent invalid:
●​ It can cancel the patent or specific claims
●​ This will be recorded and published by the IPO

👩‍⚖️ Other Provisions

Section 83 – Use of Technical Experts
The court may appoint scientific experts (called assessors) to help decide the case.
●​ Either side can challenge their appointment
●​ The complainant pays the fee (which can later be recovered if they win)​

🚔 Criminal Action for Repeated Infringement

Section 84 – What Happens if Infringement Is Repeated?
If the infringer does it again after losing a previous case:
●​ It becomes a criminal offense
●​ Penalty: 6 months to 3 years imprisonment and/or ₱100,000 to ₱300,000 fine
●​ Must be prosecuted within 3 years from the repeat offense​

CHAPTER IX – VOLUNTARY LICENSING

(When a person or company willingly gives permission to another to use their technology or patent)

SECTION 85 – Voluntary License Contract (What It Is and Why It Matters)

A voluntary license is a legal agreement where the owner of a technology or patent (the licensor) gives
someone else (the licensee) permission to use it.
The government wants to:
●​ Encourage the sharing of technology.
●​ Make sure that these agreements don’t unfairly limit competition or trade.
●​ Protect the rights of both parties.​
SECTION 86 – Who Settles Disputes About Royalties?
If there's a disagreement about how much should be paid (royalties), the Director of the
Documentation, Information, and Technology Transfer Bureau will decide, like a judge.​
This applies to disputes within technology transfer agreements.

SECTION 87 – Prohibited Clauses (What Can’t Be in the Contract)

Some contract terms are not allowed because they hurt competition or treat one party unfairly.
Here are examples of prohibited terms:
1.​ You must buy materials or machines only from the licensor.​

2.​ The licensor decides how much you sell your product for.​

3.​ You're limited in how much or what type of product you can make.​

4.​ You can’t use other competing technologies.​

5.​ The licensor can force you to sell the business or technology back to them.​

6.​ You must give the licensor any new improvements you create, for free.​

7.​ You pay for patents that are not even used.​

8.​ You’re not allowed to export the product unless the licensor says so.​

9.​ You can’t use the technology after the contract ends, unless you caused the early termination.​

10.​You must keep paying after the patent or contract has expired.​

11.​You can’t question the patent’s validity.​

12.​You’re restricted from doing R&D to improve or customize the technology.​

13.​You’re not allowed to change or improve the technology to fit local needs.​

14.​The licensor says they are not responsible for any problems or lawsuits caused by the
technology.​
15.​Other similar unfair terms.​
SECTION 88 – Mandatory Clauses (What Must Be in the Contract)
The law requires these terms to be included in technology transfer contracts:
1.​ The Philippine laws apply, and if there’s a legal issue, it must be settled in the Philippines
where the licensee’s office is.​

2.​ The licensee must be given access to future improvements in the technology.​

3.​ If the contract uses arbitration to solve disputes:

○​ It must follow rules from Philippine law, UNCITRAL, or ICC.
○​ Arbitration must happen in the Philippines or a neutral country.​

4.​ The licensor must pay all required Philippine taxes related to the agreement.

SECTION 89 – Rights of the Licensor (Patent Owner)

Unless the contract says otherwise:
●​ The licensor can still use the technology.
●​ The licensor can give the license to others as well.

SECTION 90 – Rights of the Licensee (User)

The licensee has the right to use the technology for the entire duration of the agreement.

SECTION 91 – Exceptional Cases (When the Rules Can Be Broken)

In special situations that greatly benefit the economy (like:
●​ bringing in high-level technology,
●​ boosting exports,
●​ creating jobs,
●​ using local materials, or
●​ investing in less-developed areas),
…the Bureau may allow exceptions to the normal rules, case-by-case.

SECTION 92 – Registration Rules

●​ If your contract follows all the rules in Sections 86 and 87 → No need to register with the
Bureau.
●​ If your contract breaks any rules in Sections 87 or 88 → The contract will be unenforceable
(legally invalid) unless it is approved and registered as an exceptional case under Section 91.​
💡 Key Terms (For This Chapter)
●​ Voluntary License: A contract where the owner of a technology or invention gives someone
permission to use it.​

●​ Technology Transfer: Sharing knowledge, tools, or methods (usually patented) from one party to
another.​

●​ Licensor: The person or company who owns the technology and gives permission to use it.​

●​ Licensee: The person or company who gets the right to use the technology.​

●​ Royalty: A payment made to the licensor for using the technology.​

●​ Quasi-judicial: Having the power to make legal decisions like a judge.

CHAPTER X: COMPULSORY LICENSING

Section 93: Grounds for Compulsory Licensing

Summary:
This section explains when the government may allow someone else to use a patented invention
without the patent owner's permission, provided that the user can show they are capable of using the
invention effectively.

Situations where this is allowed:

1.​ National emergency or urgent situations (e.g., pandemics, disasters).​

2.​ Public interest concerns like national security, health, or nutrition.​

3.​ When a court or agency finds the patent owner is using the patent unfairly (anti-competitive
behavior).​

4.​ If the patent is only being used by the government, and there’s no good reason.​

5.​ If the patented invention is not being used in the Philippines, even though it can be.​

6.​ When essential medicines aren’t available in sufficient quantity or at reasonable prices.​
Key Terms:
●​ Compulsory license – Government authorization to use a patent without the owner's consent.
●​ Anti-competitive – Business behavior that limits fair competition (e.g., monopolizing the
market).
●​ Worked – Actively used or sold in the country.​

Section 93-A: Special Compulsory License (TRIPS Agreement)

Summary:
A special type of compulsory license can be granted to import patented drugs and medicines into the
Philippines for public health reasons. This ensures access to affordable medicines.

Key provisions:
●​ Initiated upon request by the Secretary of Health.​

●​ The license is for domestic use, not for resale abroad.​

●​ Patent owner must be paid fairly.​

●​ Export of medicines is allowed to countries that can’t manufacture their own but have allowed
such importation.

Key Terms:
●​ TRIPS Agreement – A global agreement setting rules on intellectual property rights.​

●​ Remuneration – Payment to the patent holder.​

●​ Re-exportation – Selling imported products to another country (usually restricted).

Section 94: When Can You Apply for a Compulsory License?

Summary:
●​ You must wait 4 years from patent filing or 3 years from its grant (whichever is longer) if your
reason is that the patent is not being used in the Philippines.​

●​ But you can apply anytime for reasons like public interest, unfair practices, or lack of affordable
medicines.​
Section 95: Effort to Get Permission First
Summary:
Before getting a compulsory license, you must try to get permission from the patent owner under fair
terms.

Exceptions (no need to ask first):

●​ Emergency​

●​ Anti-competitive practices​

●​ Government use​

●​ Lack of drug supply

Section 96: Semiconductor Patents

Summary:
For semiconductor technology (used in electronics), a compulsory license can only be granted for:
●​ Public non-commercial use, or​

●​ To fix anti-competitive behavior.

Section 97: Dependent Patents

Summary:
If your invention (with its own patent) can’t be used without using someone else’s earlier patent, you
can get a compulsory license for the earlier one. But:
●​ Your invention must be a significant technical improvement.​

●​ The first patent owner must get a license to use your invention too (cross-license).

Key Terms:
●​ Cross-license – An agreement allowing each party to use the other's patented invention.
Section 98: Filing a Petition
Summary:
To apply for a compulsory license, submit a written and verified petition with:
●​ Your and the patent owner’s info​

●​ Patent details (number, date, invention title)​

●​ Reasons and facts​

●​ What relief you want

Section 99: Notice and Hearing

Summary:
●​ The IPO (Intellectual Property Office) must notify the patent owner and interested parties about
the petition and the hearing date.​

●​ It must also publish the notice in a newspaper and the IPO Gazette.

Section 100: Rules of a Compulsory License

Summary:
A compulsory license must follow these rules:
1.​ Only for the specific reason it was given.​

2.​ Non-exclusive (others may be licensed too).​

3.​ Non-assignable (can’t be sold, except with the business).​

4.​ Primarily for the Philippine market (except for anti-competitive cases).​

5.​ It can end if the reason for granting it no longer exists.​

6.​ The patent owner must be paid fairly based on the invention’s value.​
Section 101: Changing or Ending the License
Summary:
●​ The patent owner or licensee can request amendment or cancellation if circumstances change.​

●​ The licensee can also voluntarily give up the license.​

●​ Changes are officially recorded and announced.

Section 102: Protection of the Licensee

Summary:
A person using the invention under a compulsory license cannot be sued for patent infringement.​
But if a voluntary license was done in bad faith (collusion), the rightful patent owner can still recover
money from the original licensor.

Key Terms:
●​ Collusion – Secret or illegal cooperation, especially to deceive others.
●​ Infringement – Unauthorized use of a patented invention.

SEC. 103. Transmission of Rights

➤ What It Says (Simplified):
103.1 – A patent (or an application for one) is treated like personal property under the law. This means
it can be protected, owned, and transferred just like other types of property (e.g., land or a car),
according to the Civil Code.
103.2 – A person can pass on ownership or rights to a patent or invention in several ways:
●​ By selling it (assignment),​

●​ By inheriting it when someone dies (inheritance or bequest),​

●​ Or by allowing others to use it under certain terms (license contract).​

➤ Key Terms:
●​ Patent: Legal right given to inventors to stop others from making, using, or selling their
invention without permission.​

●​ Transmission: The legal transfer of ownership or rights.​

 ●​ Bequest: Giving something (like a patent) through a will.​

➤ Example:
If Juan invents a new solar panel design and gets a patent for it, he can sell it to Maria, allow Pedro to
use it for a fee (license), or pass it on to his child when he dies.

SEC. 104. Assignment of Inventions

➤ What It Says (Simplified):
An inventor can transfer:
●​ All of their rights to someone else (called a full assignment), or​

●​ Only part of it (called an undivided share), making both people co-owners (joint owners).​

Assignments can also be limited to specific locations (e.g., only for the Visayas region).
➤ Key Terms:
●​ Assignment: The legal transfer of rights or ownership.​

●​ Undivided share: A portion of ownership, not a specific part (like sharing ownership of the
whole invention).​

●​ Joint owners: People who share ownership rights.​

➤ Example:
If Ana assigns 50% of her patented water filter to Ben, they both become joint owners. If she says Ben
can only sell it in Mindanao, then his rights are limited to that area.

SEC. 105. Form of Assignment

➤ What It Says (Simplified):
To be valid, the assignment must:
●​ Be written,​

●​ Be notarized (signed before a notary public),​

●​ And be certified by the notary or an official who can do notarizations.​

➤ Why This Matters:

This protects both the assignor (person giving the rights) and the assignee (person receiving the rights)
and prevents disputes about whether a transfer really happened.

SEC. 106. Recording

➤ What It Says (Simplified):
106.1 – If you want your assignment, license, or any transfer of patent rights to be officially
recognized, you must record it with the Patent Office (IPOPhil). You need to submit:
●​ The original or authenticated copy of the document,​

●​ A duplicate copy,​

●​ And the Office will keep one copy and return the original.​

Details of the recording will be published in the IPO Gazette (the official publication).
106.2 – If you don’t record the transfer within 3 months, and someone else buys or gets rights to the
patent without knowing about your earlier unrecorded deal, your rights will not be protected against
them.
➤ Key Terms:
●​ IPO Gazette: Official publication where patent-related announcements are made.​

●​ Authenticated copy: A copy certified as true by an official.​

●​ Void against: Not valid when challenged by someone else.​

➤ Example:
If Leo sells his patent to Mico but doesn’t record the assignment, and later sells it again to Paula (who
doesn’t know about Mico), Paula’s rights might be stronger—unless Mico recorded his assignment
within 3 months.

SEC. 107. Rights of Joint Owners

➤ What It Says (Simplified):
If two or more people jointly own a patent:
●​ Each one can use, make, sell, or import the invention on their own for profit.​

●​ BUT, they cannot license or sell their share of the invention without:​
 ○​ Getting the other owners’ consent, or​

○​ Sharing the profits fairly with them.​

➤ Why This Matters:

It prevents one joint owner from making money from the invention without informing or
compensating the other owner(s).
➤ Example:
Carlos and Dana co-own a patented cooking device. Carlos can sell it himself, but if he wants to license
it to a restaurant or sell his share to someone else, he must ask Dana first or split the money with her.
Chapter XII – Registration of Utility Models

Section 108. Applicability of Provisions Relating to Patents

Simple Explanation:
●​ Most of the rules that apply to patents also apply to utility models, but with some changes (this
is what "mutatis mutandis" means).​

●​ If there’s a conflict between someone applying for a patent and someone applying for a utility
model for the same invention (like who owns it), the same rule will apply—just replace the word
“patent” with “patent or utility model registration”.​

Key Terms:
●​ Utility Model: A type of intellectual property protection similar to a patent but usually for
simpler or less inventive creations. It’s faster and easier to get than a full patent.​

●​ Mutatis Mutandis: A Latin phrase meaning "with necessary changes." In short, apply the patent
rules to utility models, adjusting the details as needed.​

Section 109. Special Provisions Relating to Utility Models

109.1(a) - What qualifies as a utility model?
●​ To be protected as a utility model, the invention must be:​

○​ New (no one has made it before)​

○​ Industrially applicable (can be used in a practical way in an industry)​

 ●​ It does NOT need to be inventive (unlike patents). This means it doesn’t need to be very original
or a big improvement.​

109.1(b) - Reference to Section 21:

●​ The same rule about what kinds of inventions can be protected (Section 21) applies, but ignore
the part about “inventive step”.​

109.2 - What rules don’t apply to utility models?

●​ Sections 43 to 49 (which deal with examination, publication, and oppositions in patents) don’t
apply to utility model applications.​

109.3 - How long does a utility model last?

●​ It lasts 7 years from the date you filed the application.​

●​ No renewals allowed.​

109.4 - When can a utility model be cancelled?

A utility model can be cancelled if:
●​ (a) It isn’t really new or doesn’t meet the basic rules (based on Sections 22, 23, 24, and 27).​

●​ (b) The description or claims are not written correctly.​

●​ (c) Important drawings needed to understand the invention are missing.​

●​ (d) The wrong person filed for registration (not the actual inventor or rightful owner).​

Example:​
If someone copies your design and registers it as a utility model before you do, you can request
cancellation if you’re the true inventor.

Section 110. Conversion of Applications

110.1 - From Patent to Utility Model
●​ If you applied for a patent, but later realize it’s better suited as a utility model, you can convert
it (before it’s approved or denied).​

●​ You have to pay a fee, and the new utility model application will have the same filing date as
your original patent application.​
 ●​ Can only convert once.​

110.2 - From Utility Model to Patent

●​ The reverse is also allowed: you can convert a utility model application into a patent
application, also with the same original filing date and for a fee.​

Section 111. No Double Applications Allowed

Simple Explanation:
●​ You cannot file two applications for the same invention—one for a patent and one for a utility
model.​

●​ That means no applying twice for the same thing, either at the same time or one after the other.​

Why this matters:

●​ This rule prevents people from trying to get multiple protections for the same invention and
possibly abusing the system.

Topic Utility Model vs. Patent

Inventive Step ❌ No (utility model just needs to be new

Required? and useful)

Filing Process Easier and faster than a patent

Duration 7 years, no renewal

Can be Converted? Yes, either way (patent ↔ utility model), once

only

Can File Both? ❌ No double applications for the same

invention

SECTION 112 – Definition of Terms (What the Law is About)

This section defines the important terms used in this chapter:
1.​ Industrial Design – It’s how a product looks. This includes the shape, pattern, or color of a
product. It's protected if it gives the product a unique appearance and can be used as a model for
making similar products or handicrafts.​
 2.​ Integrated Circuit – A small electronic device that performs functions in things like computers
or phones. It has tiny electronic components and connections built into a small chip.​

3.​ Layout-Design (Topography) – This is like a map of how the parts of an integrated circuit are
arranged in 3D space. It must include at least one active part (like a transistor) and how
everything is connected.​

💡 Key Terms:
●​ Industrial design: Visual design of a product (e.g., shape or pattern).​

●​ Integrated circuit: Small chip that performs electronic tasks.​

●​ Layout-design/Topography: 3D layout of elements inside a chip.​

SECTION 113 – What Can Be Protected (Eligibility Rules)

This section explains what kinds of designs or layouts can get legal protection:
1.​ Industrial designs must be:​

○​ New (never been seen before).​

○​ Ornamental (for appearance, not function).​

2.​ Designs that exist only for technical or functional reasons, or are immoral or harmful, cannot
be protected.​

3.​ Layout-designs (for integrated circuits) must be:​

○​ Original, meaning they are the creator’s own idea and not common in the industry.​

4.​ Even if the design uses common parts, the combination as a whole can still be protected if it’s
unique.​

💡 Key Terms:
●​ New: Not previously disclosed or known.​

●​ Ornamental: Related to appearance, not function.​

 ●​ Original: Created from one’s own mind; not copied or usual.​

SECTION 114 – What You Need to Apply (Application Requirements)

When applying for registration, you must submit:
1.​ A request for registration.​

2.​ Your name and details.​

3.​ A description of what product the design or layout is for.​

4.​ A picture or drawing showing the design clearly.​

5.​ The name of the creator, and if you’re not the creator, explain how you got the rights.​

You can also submit a sample of the product, and you must pay a fee.
💡 Key Terms:
●​ Applicant: Person applying for protection.​

●​ Representation: Drawing or photo of the design.​

●​ Specimen: Sample product with the design.​

SECTION 115 – Grouped Applications (Multiple Designs in One Go)

You can include two or more designs in one application only if they:
●​ Belong to the same category or type of product, or​

●​ Are part of a matching set (like a tea set).​

💡 Key Terms:
●​ Sub-class: A category used to classify similar designs.​

●​ Composition of articles: A group/set of items designed to go together.​

SECTION 116 – How Applications Are Checked (Examination)

 1.​ The filing date is when the application is received, as long as it:​

○​ Identifies who is applying, and​

○​ Has a drawing or image of the design/layout.​

2.​ If some requirements are missing, the filing date is moved to when all parts are complete.​

3.​ If requirements aren’t met within the given time, the application is withdrawn.​

4.​ The office will check if the application meets the rules in Sections 112 (definitions) and 113 (what
can be protected).​

💡 Key Terms:
●​ Filing date: Official date when your application is accepted.​

●​ Withdrawn: Application is considered cancelled or no longer active.​

SECTION 117 – Registration Process (When Approved)

1.​ If the design meets the rules, the office will:​

○​ Approve it,​

○​ Register it, and​

○​ Give you a certificate of registration.​

2.​ The certificate includes your name and address.​

3.​ The registration will be published so others are aware.​

4.​ If the design is transferred or sold to someone else, the change must be recorded, and a fee must
be paid.​

5.​ Anyone can inspect the register (public record) of registered designs and layouts.​

💡 Key Terms:
 ●​ Certificate of registration: Official proof of ownership.​

●​ Register: Public record of registered designs.​

●​ Proprietor: The legal owner of the design.​

SECTION 118 – Duration (How Long Protection Lasts)

For Industrial Designs:
1.​ Protected for 5 years from filing.​

2.​ Can be renewed twice for 5 years each (up to 15 years total).​

3.​ Renewal must be done before expiration, but there’s a 6-month grace period (with a late fee).​

For Layout-Designs:
1.​ Protected for 10 years, no renewals allowed.​

2.​ Protection starts either:​

○​ On the first commercial use (anywhere in the world), if you file within 2 years, or​

○​ On the filing date, if not used commercially before filing.​

💡 Key Terms:
●​ Renewal: Extending the protection period.​

●​ Grace period: Extra time to meet a deadline with a penalty.​

●​ Commercial exploitation: Using the design to make money.​

SECTION 119 – Other Applicable Laws (What Other Rules Apply)

1.​ Several patent-related laws also apply to industrial designs and layout-designs, such as:​

○​ Rules about novelty, prior art, priority, and ownership.​

 ○​ Rules about errors, surrender, and changes.​

2.​ If you copied someone else’s design without permission, you can’t use the law to protect
yourself against them.​

3.​ The same patent rules also apply to layout-designs.​

4.​ Rights of the Owner:​

○​ Reproduce the layout-design.​

○​ Sell or distribute products using it.​

5.​ Limitations (when others can use it legally):​

○​ For private or educational use.​

○​ For analysis or creating a new, original layout.​

○​ If it was already sold with the owner’s permission.​

○​ If someone unknowingly bought a copied chip (they must pay a royalty if they keep selling
it after being informed).​

○​ If someone created the same design independently.​

💡 Key Terms:
●​ Mutatis mutandis: Apply the same rules, with necessary changes.​

●​ Prior art: Existing knowledge or designs before your filing date.​

●​ Royalty: Payment for the right to use a design or invention.​

SECTION 120 – Cancellation of Registration (Removing Rights)

1.​ Anyone can ask for cancellation of a design if:​
 ○​ It doesn’t meet the rules in Sections 112 or 113.​

○​ It’s not new.​

○​ It goes beyond what was originally filed.​

2.​ If the issue is only with part of the design, only that part is canceled.​

3.​ A layout-design can be cancelled if:​

○​ It doesn’t qualify for protection.​

○​ The wrong person got the registration.​

○​ It wasn’t registered within 2 years of being used commercially.​

4.​ Cancelled designs are considered void from the beginning and will be removed from records
and published.​

💡 Key Terms:
●​ Cancellation: Legal removal of registration.​

●​ Null and void: Treated as if it never existed.​

●​ IPO Gazette: Official publication of the Intellectual Property Office.​