INTELLECTUAL PROPERTY

WHAT IS PATENT?
A statutory grant which confers
to an inventor or his legal
successor, in return for the
disclosure of the invention to the
public, the right for a limited
period of time to exclude others
from making, using, selling or
importing the invention within
the territory of the country that
grants the patent.
What are the 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.
It may be, or may relate to,
a product, or process, or an
improvement of any of the
foregoing. (Sec. 21)
 What are the conditions for
patentability?

[Link] – An invention shall

not be considered new if it
forms part of a prior art. (Sec.
23, IPC)
What is prior art?
1. 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.

2. The whole contents of a published application, filed or

effective in the Philippines, with a filing or priority date
that is earlier than the filing or priority date of the
application. Provided, that the application which has
validly claimed the filing date of an earlier application
under Section 31 of the IPC, there shall be a prior art
with effect as of the filing date of such earlier
application: Provided further, that the applicant or the
What is meant by “made available to
the public” and what are its effects?

To be “made available to the

public” means at least one
member of the public has
been able to access
knowledge of the invention
without any restriction on
passing that knowledge on to
GR: When a work has
already been made available
to the public, it shall be non‐
patentable for absence of
novelty.
XPN: Non‐prejudicial disclosure – the disclosure of
information contained in the application during the
12‐month period before the filing date or the
priority date of the application if such disclosure
was made by:
1. The inventor;
2. A patent office and the information was
contained:
a. In another application filed by the inventor
and should have not have been disclosed by the
office, or
b. 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; 3. A third party
 What are the conditions for
patentability?

2. Involves an inventive step – if, having

regard to prior art, it is not obvious to a
person skilled in the art at the time of
the filing date or priority date of the
application claiming the invention.
 What are the conditions for
patentability?

3. Industrially Applicable – An
invention that can be produced and
used in any industry, shall be
industrially applicable (Sec. 27, IPC).
Other Forms of Patentable
Inventions

1. Industrial design – Any composition

of lines or colors or any three‐
dimensional form, whether or not
associated with lines or colors.
Provided that such composition or
form gives a special appearance to
and can serve as pattern for an
industrial product or handicraft. (Sec.
2. Integrated circuit – A product, in
its final form, or an intermediate
form, in which the elements, at
least one of which is an active
elements and some of all of the
interconnections are integrally
formed in and or on a piece of
material, and in which is intended
to perform an electronic function.
3. Layout design/topography – The three-
dimensional disposition, however
expressed, of the elements, at least one of
which is an active element, and of some or
all of the interconnections of an integrated
circuit, or such a three‐ dimensional
disposition prepared for an integrated
circuit intended for manufacture.
Registration is valid for 10 years without
renewal counted from date of
commencement of protection.
4. Utility model – A name
given to inventions in the
mechanical field.
When does an invention qualify
as a utility model?

If it is new and industrially

applicable. A model of implement or
tools of any industrial product even
if not possessed of the quality of
invention but which is of practical
utility. (Sec. 109.1, IPC)
What is the term of a utility
model?

 7 years from date of filing

of the application (Sec.
109.3, IPC).
What are not patentable
inventions?
[Link], scientific theories and mathematical
methods.

[Link] 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 that substance.

[Link], rules and methods of performing

mental acts, playing games or doing business,
and programs for computers.
 What are not
patentable inventions?
4. Methods for treatment of the human or Animal body.

5. 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 microbiological
processes.

6. Aesthetic creations.

7. Anything which is Contrary to public order or

morality. (Sec. 22, IPC as amended by R.A. 9502)
Are computer programs patentable?

GR: Computer programs are not

patentable but are copyrightable.

XPN: They can be patentable if they are

part of a process (e.g. business process
with a step involving the use of a
computer program).
OWNERSHIP OF
PATENT
Who is entitled to a patent?
1. Inventor, his heirs, or assigns.
2. Joint invention – Jointly by the
inventors. (Sec. 28, IPC)
3. 2 or more persons invented
separately and independently of each
other – To the person who filed an
application;
4. 2 or more applications are filed
– the applicant who has the
earliest filing date or, the earliest
priority date. First to file rule.
(Sec. 29, IPC)
5. Inventions created pursuant to
a commission – Person who
commissions the work, unless
otherwise provided in the
contract. (Sec. 30.1, IPC)
6. Employee made the invention in the
course of his employment contract:
[Link] 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.
[Link] employer, if the invention is the
result of the performance of his
regularly‐assigned duties, unless there
is an agreement, express or implied,
to the contrary. (Sec. 30.2, IPC)
What is the “first to file” rule?
1. 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
2. Where two or more applications are
filed for the same invention, to the
applicant which has the earliest filing
date. (Sec. 29, IPC)
Q: Cheche invented a device that can convert rainwater
into automobile fuel. She asked Macon, a lawyer, to
assist in getting her invention patented. Macon
suggested that they form a corporation with other
friends and have the corporation apply for the patent,
80% of the shares of stock thereof to be subscribed by
Cheche and 5% by Macon. The corporation was formed
and the patent application was filed. However, Cheche
died 3 months later of a heart attack. Franco, the
estranged husband of Cheche, contested the application
of the corporation and filed his own patent application
as the sole surviving heir of Cheche. Decide the issue
with reasons.
 The estranged husband of Cheche cannot successfully
contest the application. The right over inventions accrue from
the moment of creation and as a right it can lawfully be
Who may apply for a patent?
 Any person who is a national or
who is domiciled or has a real and
effective industrial establishment
in a country which is a party to any
convention, treaty or agreement
relating to intellectual property
rights or the repression of unfair
competition, to which the
Philippines is also a party, or
extends reciprocal rights to
nationals of the Philippines by law.
The procedure for the grant of patent
may be summarized as follows:

[Link] of the application

[Link] of the filing
date
[Link] examination
[Link] and Search
5. Publication of application
6. Substantive examination
7. Grant of Patent
8. Publication upon grant
9. Issuance of certificate (Salao,
Essentials of Intellectual
Property Law: a Guidebook on
Republic Act No. 8293 and
Related Laws., 2008)
How is disclosure made?

The application shall disclose the

invention in a manner sufficiently
clear and complete for it to be
carried out by a person skilled in
the art.
What is a claim?

Defines the matter for which

protection is sought. Each claim
shall be clear and concise, and
shall be supported by the
description.
What is an abstract?

A concise summary of the

disclosure of the invention as
contained in the description,
claims and merely serves as
technical information.
What is unity of invention?

 The application shall relate to one

invention only or to a group of
inventions forming a single general
inventive concept. (Sec. 38.1) If
several independent inventions
which do not form a single general
inventive concept are claimed in
one application, the application
must be restricted to a single
invention. (Sec. 38.2, IPC)
What is the concept of divisional
applications?
 Divisional applications come into play
when two or more inventions are claimed
in a single application but are of such a
nature that a single patent may not be
issued for them. The applicant, is thus
required to “divide”, that is, to limit the
claims to whichever invention he may
elect, whereas those inventions not
elected may be made the subject of
separate applications which are called
What is priority date?
 An application for patent filed
by any person who has
previously applied for the same
invention in another country
which by treaty, convention, or
law affords similar privileges to
Filipino citizens, shall be
considered as filed as of the
date of filing the foreign
application. (Sec. 31, IPC)
What are the conditions in availing of
priority date?
1. The local application expressly claims
priority;
2. It is filed within 12 months from the
date the earliest foreign application
was filed; and
3. A certified copy of the foreign
application together with an English
translation is filed within 6 months
from the date of filing in the
Leonard and Marvin applied for Letters Patent claiming the right of
priority granted to foreign applicants. Receipt of petitioners’
application was acknowledged by respondent Director on March 6,
1954. Their Application for Letters Patent in the US for the same
invention indicated that the application in the US was filed on March
16, 1953. They were advised that the "Specification" they had
submitted was "incomplete" and that responsive action should be
filed with them four months from date of mailing, which was August
5, 1959. On July 3, 1962, petitioners submitted two complete copies
of the Specification. Director of patents held that petitioners'
application may not be treated as filed. Is the director correct?

Yes, it is imperative that the application be complete in order that it may be

accepted. It is essential to the validity of Letters Patent that the specifications
be full, definite, and specific. The purpose of requiring a definite and accurate
description of the process is to apprise the public of what the patentee claims
as his invention, to inform the Courts as to what they are called upon to
construe, and to convey to competing manufacturers and dealers information
What are the rights conferred by a patent
application after the first publication?

 The applicant shall have all the rights

of a patentee against any person who,
without his authorization, exercised
any of the rights conferred under
Section 71 in relation to the invention
claimed in the published patent
application, as if a patent had been
granted for that invention, provided
that the said person had:
1. Actual knowledge that the invention
that he was using was the subject
matter of a published application; or
2. Received written notice that the
invention was the subject matter of a
published application being identified
in the said notice by its serial number

Note: That the action may not be filed

until after the grant of a patent on the
published application and within four (4)
years from the commission of the acts
complained of (Sec. 46, IPC).
When shall the patent take effect?

A patent shall take effect on the

date of the publication of the
grant of the patent in the IPO
Gazette. (Sec. 50.3, IPC)
What is the duration of a patent, utility
model and industrial design?

[Link] – 20 years from date of filing of

application without renewal. (Sec. 54,
IPC)
[Link] Model – 7 years from the filing date
of the application without renewal. (Sec.
109.3, IPC)
[Link] Design – 5 years from the filing
date of the application, renewable for not
more than two (2) consecutive periods of
five (5) years each. (Sec. 118.2, IPC)
RIGHTS OF A PATENT
OWNER
RIGHTS OF A PATENT
OWNER
RIGHTS OF A PATENT
OWNER
[Link] Rights to Use and Exploit (Sec. 71,
IPC)
o The patent owner holds the exclusive right to:
 Prevent unauthorized persons from producing,
using, offering for sale, selling, or importing
the patented product.
 For process patents, they can prevent
unauthorized use of the process, as well as the
importation, sale, or distribution of products
obtained directly by the patented process.
o This exclusive right enables the patent owner to
commercialize the invention and maintain a
2. Right to License and Transfer (Sec. 103-
105, IPC)
o The patent owner has the right to grant
licenses to third parties, permitting them to
use the patent in exchange for royalties or
other payments.
o The patent owner may assign or transfer
ownership of the patent to another entity,
effectively transferring exclusive rights over
the invention.
3. Right to Remedies for
Infringement (Sec. 76-77, IPC)
o Patent owners may seek legal
remedies for infringement,
including injunctions, damages, or
accounts of profits.
o The patent owner may also request
the seizure or destruction of
infringing goods, providing
additional protection against
unauthorized use.
4. Right to Secrecy and Protection
of Information
o During the application process, the
applicant can request
confidentiality regarding sensitive
information related to the patent.
This helps maintain the
confidentiality of technical details
until the patent is published.
 Limitations on the
Rights of the Patent
Owner
[Link] of Exhaustion
o Once a patented product is sold by
or with the consent of the patent
owner, the owner’s control over that
specific product is “exhausted.”
Subsequent resale or use of the
product is not subject to the patent
owner’s exclusive rights, limiting the
owner's power over previously sold
products.
2. Compulsory Licensing (Sec. 93-100, IPC)
o The Philippine government may issue a
compulsory license if:
 The invention is not available to the public at
a reasonable cost.
 The invention is needed for public health,
national security, or other critical issues.
 Anti-competitive practices are suspected.
3. Parallel Importation
o Under specific conditions, a patented
product legally sold in another jurisdiction
may be imported into the Philippines
without the patent owner’s consent. This
concept aligns with the doctrine of
international exhaustion, promoting
access to affordable products and
preventing monopolistic pricing.
4. Government Use (Sec. 74, IPC)
o The Philippine government has the
right to use patented inventions
without the patent owner’s consent for
non-commercial, governmental
purposes. This is especially applicable
during emergencies or in the interest of
public welfare.
o Compensation must be paid to the
patent owner, but the government’s
use bypasses typical patent rights for a
limited scope and duration.
5. Research and Experimental Use
Exception (Sec. 72.4, IPC)
o This exception permits the use of a
patented invention for research and
experimental purposes without
infringing on the patent.
o Non-commercial use by researchers,
educators, or scientists is permissible,
provided it is intended for knowledge
advancement and not for direct profit.
6. Bolar Provision (Sec. 72.3, IPC)
o The Bolar Provision permits third
parties to use a patented invention,
without infringement, for regulatory
approval purposes. This is particularly
relevant in the pharmaceutical
industry, where companies may
develop generic versions of a drug
during the patent term to be ready for
market release immediately after
6. Use of the Invention in Foreign
Vessels or Aircrafts Temporarily in
the Philippines (Sec. 72.1, IPC)
o Foreign vessels, aircraft, or vehicles
entering Philippine jurisdiction
temporarily may use patented
inventions without permission if
these inventions are utilized as part
of their operations, provided such
use is non-commercial and
incidental.
7. Regulatory Approval
Exception (Sec. 72.5, IPC)
oInventions requiring regulatory
approval, like pharmaceuticals or
biotechnologies, may be used for
the purpose of securing
government clearance without
constituting patent infringement.
8. Limitations Under Competition Law
o Philippine law restricts the use of
patents to prevent anti-competitive
practices. Abusive licensing,
monopolistic practices, or price
manipulation by the patent owner may
subject them to legal action or
mandatory licensing provisions.
o Competition law ensures that patent
rights do not unduly stifle market
competition or harm consumer
Creser Precision Systems Inc. v CA and Floro International Co. GR NO.
118708, February 2, 1998

FACTS:
Respondent was granted by the Bureau of Patents, Trademarks and
Technology Transfer (BPTTT) a Letter of Patent for its aerial fuze on January 23,
1990. Sometime in 1993, the respondent discovered that the petitioner
submitted samples of its patented aerial fuze to the AFP for testing, claiming
be his own. To protect its rights, respondent sent a letter of warning to
petitioner on a possible court action should it proceed with its testing by the
AFP.
In response, the petitioner filed a complaint for injunction and damages
arising from alleged infringement before the RTC asserting that it is the true
and actual inventor of the aerial fuze which it developed in 1981 under the
Self Reliance Defense Posture Program of the AFP.
It has been supplying the military with the aerial fuze since then, and
the fuze of the respondent is similar to that of the petitioner. Petitioner
prayed for a restraining order and injunction from marketing, manufacturing,
and profiting from the said invention by the respondent. The trial court ruled
in favor of the petitioner, citing the fact that it was the first to develop the
aerial fuze since 1981, thus concluding that it is the petitioner’s
aerial fuze that was copied by the respondent.

Moreover, the claim of the respondent is solely based on its letter of patent,
which validity is being questioned.
On appeal, respondent argued that the petitioner has no cause of
action since he has no right to assert that there being no patent issued
to his aerial fuze. The Court of Appeals reversed the decision of the
trial court dismissing the complaint of the petitioner.

The petitioner contended that it can file under Section 42 of the

Patent Law an action for infringement not as a patentee but as an
entity in possession of a right, title, or interest to the patented
invention. It theorizes that while the absence of a patent prevents one
from lawfully suing another for infringement of said patent, such
absence does not bar the true and actual inventor of the patented
invention from suing another in the same nature as a civil action for
infringement.
ISSUE:
Whether or not the petitioner has the right to assail the
validity of the patented work of the respondent?
RULING:
The court finds the argument of the petitioner untenable. Section 42 of the
Law on Patents (RA 165) provides that only the patentee or his successors-
in-interest may file an action against infringement. What the law
contemplates in the phrase “anyone possessing any right, title or interest in
and to the patented invention” refers only to the patentee’s successors-in-
interest, assignees, or grantees since the action on patent infringement may
be brought only in the name of the person granted the patent. There can be
no infringement of a patent until a patent has been issued since the right
one has over the invention covered by the patent arises from the grant of
the patent alone.
Therefore, a person who has not been granted a letter of patent over
an invention has not acquired right or title over the invention and
thus has no cause of action for infringement. Petitioner admitted to
having no patent over his invention.

Respondent’s aerial fuze is covered by a letter of patent issued by the

Bureau of Patents thus, it has in its favor not only the presumption of
validity of its patent but that of a legal and factual first and true
inventor of the invention.
Thank you