INTELLECTUAL PROPERTY LAW that the said Taiwanese manufacturing company

REFERENCE: ESSENTIAL OF INTELLECTUAL PROPERTY LAW BY ERNESTO SALAO

authorized Summerville to register its trade
name Chin Chun Su Medicated Cream with the
R.A. 8293
Philippine Patent Office and Other appropriate
This is the codification of the country’s various
governmental agencies; (3) that KEC Cosmetics
intellectual property laws. It took effect on
Laboratory of the petitioner obtained the
January 1, 1998. The basic law in IPL is RA
copyrights through misrepresentation and
8293 also known as the Intellectual Property
falsification; and, (4) that the authority of
Code of the Philippines.
Quintin Cheng, assignee of the patent
Non-Retroactivity of IPL
registration certificate, to distribute and market
In the case of Mighty Corporation vs. E and J
Chin Chun Su products in the Philippines had
Gallo Winery , GR No. 154342 (2004), the
already terminated by the said Taiwanese
Court hold that the courts a quo erred in
manufacturing company.
retroactively applying the IP Code in that case.
ISSUE: WON Kho has the sole right using the
Intellectual Property Rights
package of Chin Chun Su products.
The term has a statutory definition as that
HELD: Petitioner has no right to support her
consisting of: a) Copyright and related rights b)
claim for the exclusive use of the subject trade
Trademarks and Service Marks c) Geographic
name and its container. The name and container
Indications d) Industrial Design e) Patents f)
of a beauty cream product are proper subjects of
Layout Designs (Topographies) of Integrated
a trademark in as much as the same falls
Circuits and g) Protection of Undisclosed
squarely within its definition. In order to be
Information. This definition merely enumerates.
entitled to exclusively use the same in the sale of
Copyrights, Patent and Trademarks,
the beauty cream product, the user must
Distinctions
sufficiently prove that she registered or used it
Elidad Kho vs. Court of Appeals, GR No.
before anybody else did. The petitioner’s
115758 (2002)
copyright and patent registration of the name
FACTS: Petitioner’s allegations are that they
and container would not guarantee her the right
are doing business under the name and style of
to exclusive use of the same for the reason that
KEC Cosmetics Laboratory, registered owner of
they are not appropriate subjects of the said
Chin Chun Su and oval facial cream
intellectual rights. Consequently, a preliminary
container/case, and alleges that she also has
injunction order cannot be issued for the reason
patent rights on Chin Chun Su and Device and
that the petitioner has not proven that she has a
Chin Chun Su Medicated Cream after
clear right over the said name and container to
purchasing the same from Quintin Cheng, the
the exclusion of others, not having proven that
registered owner thereof in the supplemental
she has registered a trademark thereto or used
register of the Philippine Patent Office and that
the same before anyone did.
Summerville advertised and sold petitioner’s
cream products under the brand name Chin
Pearl and Dean (Phil) Inc v. Shoemart , Inc and
Chun Su, in similar containers that petitioner
North Edsa Marketing Inc. GR No. 148222
uses, thereby misleading the public, and
(2003)
resulting in the decline in the petitioner’s
FACTS: Pearl and Dean (Phil.), Inc. (PDI) is
business sales and income; and, that the
engaged in the manufacture of advertising
respondents should be enjoined from allegedly
display units simply referred to as light boxes.
infringing on the copyright and patents of the
PDI was able to secure a Certificate of
petitioner.
Copyright Registration, the advertising light
boxes were marketed under the trademark
The respondents, on the other hand, alleged as
“Poster Ads”.
their defense that (1) Summerville is the
In 1985, PDI negotiated with defendant-
exclusive and authorized importer, re-packer and
appellant Shoemart, Inc. (SMI) for the lease and
distributor of Chin Chun Su products
installation of the light boxes in certain SM
manufactured by Shun Yi factory of Taiwan, (2)
Makati and SM Cubao. PDI submitted for
signature the contracts covering both stores, but trademark if it is a mere abbreviation of a term
only the contract for SM Makati, however, was descriptive of his goods, services or business?
returned signed. Eventually, SMI’s informed HELD:
PDI that it was rescinding the contract for SM On the issue of copyright infringement
Makati due to non-performance of the terms The CA correctly held that the copyright was
thereof. limited to the drawings alone and not to the light
Years later, PDI found out that exact copies of box itself.
its light boxes were installed at different SM Although petitioner’s copyright certificate was
stores. It was further discovered that SMI’s entitled “Advertising Display Units” (which
sister company North Edsa Marketing Inc depicted the box-type electrical devices), its
(NEMI), sells advertising space in claim of copyright infringement cannot be
lighted display units located in SMI’s different sustained.
branches. Copyright, in the strict sense of the term, is
PDI sent a letter to both SMI and NEMI purely a statutory right. Accordingly, it can
enjoining them to cease using the subject light cover only the works falling within the statutory
boxes, remove the same from SMI’s enumeration or description.
establishments and to discontinue the use of the Even as we find that P & D indeed owned a
trademark “Poster Ads’, as well as the payment valid copyright, the same could have referred
of compensatory damages. only to the technical drawings within the
Claiming that both SMI and NEMI failed to category of “pictorial illustrations”. It could not
meet all its demands, PDI filed this instant case have possibly stretched out to include the
for infringement of trademark and copyright, underlying light box. The light box was not a
unfair competition and damages. literary or artistic piece which could be
SMI maintained that it independently developed copyrighted under the copyright law.
its posters panels using commonly known The Court reiterated the ruling in the case of
techniques and available technology, without Kho vs. CA, differentiating patents, copyrights
notice of or reference to PDI’s copyright. SMI and trademarks, namely:
noted that the registration of the mark “Poster A trademark is any visible sign capable of
Ads” was only for stationeries such letterheads, distinguishing the goods (trademark) or services
envelopes, and the like. Besides, according to (service mark) of an enterprise and shall include
SMI, the word “Poster Ads” is a generic term a stamped or marked container of goods. In
which cannot be appropriated as a trademark, relation thereto, a trade name means the name or
and, as such, registration of such mark is invalid. designation identifying or distinguishing an
On the basis, SMI, aside from praying for the enterprise. Meanwhile, the scope of a copyright
dismissal of the case, also counterclaimed for is confined to literary and artistic works which
moral, actual and exemplary damages and for are original intellectual creations in the literary
the cancellation of PDI’s Certification of and artistic domain protected from the moment
Copyright Registration, and Certificate of of their creation. Patentable inventions, on the
Trademark Registration. other hand, refer to any technical solution of a
The RTC of Makati City decided in favour of problem in any field of human activity which is
PDI, finding SMI and NEMI jointly and new, involves an inventive step and is
severally liable for infringement of copyright industrially applicable.
and infringement of trademark, On the issue of patent infringement
On appeal, however, the CA reverse the trial Petitioner never secured a patent for the light
court. boxes. It therefore acquired no patent rights
ISSUES: 1. Whether the light box depicted in which and could not legally prevent anyone
such engineering drawings ipso facto also from manufacturing or commercially using the
protected by such copyright. corporation. To be able to effectively and legally
2. Whether there was a patent infringement. preclude others from copying and profiting from
3. Whether the owner of a registered trademark the invention, a patent is a primordial
legally prevent others from using such requirement. No patent, no protection.
On the issue of trademark infringement representation of a crocodile/alligator, used on
On the issue of trademark infringement, the clothings and other goods sold in many parts of
petitioner’s president said “Poster Ads” was a the world and which has been marketed in the
contraction of “poster advertising”. P & D was Philippines since 1964.
able to secure a trademark certificate for it, but In 1975, Hemandas & Co., a duly licensed
one where the goods specified were domestic firm applied for and was issued Reg.
“stationeries such as letterheads, envelopes, No. SR-2225 (SR stands for Supplemental
calling cards, and newsletters.” Petitioner Register) for the trademark “CHEMISE
admitted it did not commercially engage in or LACOSTE & CROCODILE DEVICE” by the
market these goods. On the contrary, it dealt in Philippine Patent Office for use on T-shirts,
electrically operated backlit advertising units sportswear and other garment products of the
which, however, were not at all specified in the company. Two years later, it applied for the
trademark certificate. registration of the same trademark under the
Assuming arguendo that “Poster Ads” could Principal Register.
validly qualify as a trademark, the failure of P & Thereafter, Hemandas & Co. assigned to
D to secure a trademark registration for specific respondent Gobindram all rights, title, and
use on the light boxes meant that there could not interest in the trademark “CHEMISE LACOSTE
have been any trademark infringement since & DEVICE”.
registration was an essential element thereof. In 1980, La Chemise Lacoste filed for the
On the issue of unfair competition registration of the “Crocodile device” and
There was no evidence that P & D’s use of “Lacoste”. Games and Garments (Gobindram
“Poster Ads” was distinctive or well-known. As Hemandas, assignee of Hemandas Q.Co.)
noted by the CA, petitioner’s expert witness opposed the registration of “Lacoste”. In 1983,
himself had testified that “Poster Ads” was too La Chemise Lacoste filed with the NBI a letter-
generic a name. So it was difficult to identify it complaint alleging acts of unfair competition
with any company, honestly speaking.” This committed by Hemandas and requesting the
crucial admission that “Poster Ads” could not be agency’s assistance. A search warrant was
associated with P & D showed that, in the mind issued by the trial court. Various goods and
of the public, the goods and services carrying articles were seized upon the execution of the
the trademark “Poster Ads” could not be warrants. Hemandas filed motion to quash the
distinguished from the goods and services of warrants, which the court granted. The search
other entities. warrants were recalled, and the goods ordered to
“Poster Ads” was generic and incapable of being be returned. The search warrants were recalled,
used as a trademark because it was used in the and the goods ordered to be returned. La
field of poster advertising, the very business Chemise Lacoste filed a petition for certiorari.
engaged in by petitioner. “Secondary meaning” ISSUE: WON the trademark “Chemise Lacoste
means that a word or phrase originally incapable and Q Crocodile Device” is registrable.
of exclusive appropriation with reference to an HELD: No. In as much as the goodwill and
article in the market might nevertheless have reputation of La Chemise Lacoste products date
been used for so long and so exclusively by one back even before 1964, Hermandas cannot be
producer with reference to his article that, in the allowed to continue the trademark “Lacoste” for
trade and to that branch of the purchasing public, the reason that he was the first registrant in the
the word or phrase has come to mean that the Supplemental Register of a trademark used in
article was his property. international commerce.
La Chemise Lacoste v. Fernandez 129 SCRA Registration in the Supplemental Register
373, 393 cannot be given a posture as if the registration is
FACTS: La Chemise Lacoste is a French in the Principal Register. It must be noted that
corporation and the actual owner of the one may be declared an unfair competitor even
trademarks “Lacoste”, “Chemise Lacoste”, if his competing trademark is registered. La
“Crocodile Device” and a composite mark Chemise Lacoste is world renowned mark, and
consisting of the word “Lacoste” and a by virtue of the 20 November 1980
Memorandum of the Minister of Trade to the solemn commitments pursuant to international
director of patents in compliance with the Paris conventions and treaties.
Convention for the protection of industrial
property, effectively cancels the registration of TRADEMARK
contrary claimants to the enumerated marks, Any visible sign capable of distinguishing the
which include “Lacoste.” goods (trademark) or services (service mark) of
It is among this Court's concerns that the an enterprise and shall include a stamped or
Philippines should not acquire an unbecoming marked container of goods.
reputation among the manufacturing and trading
centers of the world as a haven for intellectual Illustration:
pirates imitating and illegally profiting from Pedro is a chemist by profession particularly a
trademarks and tradenames which have perfume. A perfumer makes perfume. Pedro
established themselves in international or discovered a certain perfume by combining the
foreign trade. extracts from cellar woods and jasmine. The
It is essential that we stress our concern at the cellar wood was the base tone and the jasmine
seeming inability of law enforcement officials to was the top tone. With respect to perfume there
stem the tide of fake and counterfeit consumer are many ingredients for perfume and the
items flooding the Philippine market or exported perfume consists of 3 levels/bases/tones. The
abroad from our country. The greater victim is first is high tone or the pass tone which is the
not so much the manufacturer whose product is smell when you first apply the perfume to your
being faked but the Filipino consuming public skin. The second one is the medium tone and the
and in the case of exportations, our image last one would be the base tone. He name this
abroad. No less than the President, in issuing perfume, Eternity. Can he register the fragrance
Executive Order No. 913 dated October 7, 1983 of the perfume as trademark? What is the basis
to strengthen the powers of the Minister of in saying that the fragrance of the perfume can
Trade and Industry for the protection of be registered as a trademark?
consumers, stated that, among other acts, the
dumping of substandard, imitated, hazardous, Answer: No, because it is not visible sign.
and cheap goods, the infringement of
internationally known tradenames and Supposing that a person by the name of Juan
trademarks, and the unfair trade practices of compose a music entitled “Nocturna” Can he
business firms has reached such proportions as register his composition as a trademark? What is
to constitute economic sabotage. We buy a the legal basis? Can he register the
kitchen appliance, a household tool, perfume, music/melody as trademark?
face powder, other toilet articles, watches,
brandy or whisky, and items of clothing like Answer: No, because it is not a visible sign.
jeans, T-shirts, neck, ties, etc. — the list is quite
length — and pay good money relying on the That’s why the law has its own definition. You
brand name as guarantee of its quality and don’t ignore or take for granted definitions of
genuine nature only to explode in bitter certain terms in the law because that is very
frustration and genuine nature on helpless anger important. So the fragrance of the perfume as
because the purchased item turns out to be a well as the music of Juan cannot be registered as
shoddy imitation, albeit a clever looking trademark because under the definition provided
counterfeit, of the quality product. Judges all for in IP Code, “MARK” is any visible sign
over the country are well advised to remember capable of distinguishing the goods and services
that court processes should not be used as of enterprise and that includes marked or
instruments to, unwittingly or otherwise, aid stamped container of goods.
counterfeiters and intellectual pirates, tie the
hands of the law as it seeks to protect the Technology Transfer Arrangement
Filipino consuming public and frustrate -Refers to “contracts or agreements involving
executive and administrative implementation of the transfer of systematic knowledge for the
manufacture of a product, the application of a performance or other communication of
process, or rendering of a service including the work, and:
management contracts and the transfer, 2. Exclusive Appellate Jurisdiction overall
assignment or licensing of all forms of decisions rendered by the Director of
intellectual property rights, including licensing Trademarks, and the Director of the
of computer software developed for mass Documentation, Information and
market. Technology Transfer Bureau.
Nature: Licensing Contract, between whom? Jurisdiction over Interlocutory Orders of the
Intellectual Property Right owner (licensor) and Bureau of Legal Affairs
a second party (licensor) who was granted the The Supreme Court explained that only final
authority to commercially exploit the same decisions of the BLA are appealable to the
intellectual property right under special terms Director General.
and conditions. The CA may exercise jurisdiction over
This is a highly regulated contract since its role interlocutory orders of BLA.
in the fulfillment of the State’s desire to bring Phil. Pharmawealth, Inc. vs Pfizer, Inc. and
technologies into the public domain through Pfizer Phil. Inc. GR No. 167715 (2010)
disclosures and also to prevent practices that
have adverse effects on competition and trade. FACTS: Pfizer is the registered owner of a
Required and Prohibited Stipulations: Failure to patent pertaining to Sulbactam Ampicilin. It is
comply with the TTA unenforceable. See marketed under the brand name “Unasyn.”
Sections 87,88,91 and Voluntary Licensing Sometime in January and February 2003, Pfizer
discovered that Pharmawealth submitted bids for
Intellectual Property Office the supply of Sulbactam Ampicilin to several
This office is created under R.A. 8293 which hospitals without the Pfizer’s consent. Pfizer
replaced the Bureau of Patents, Trademarks and then demanded that the hospitals cease and
Technology Transfer. This is headed by the desist from accepting such bids. Pfizer also
Director General and assisted by two (2) demanded that Pharmawealth immediately
Deputies. The office is divided into 6 Bureaus, withdraw its bids to supply Sulbactam
each being headed by a Director and assisted by Ampicillin. Pharmawealth and the hospitals
an Assistant Director. ignored the demands.
Notes:
Presidential Appointees- Director General, Pfizer then filed a complaint for patent
Deputies, Directors and Assistant Directors infringement with a prayer for permanent
DTI Secretary Appointees- Other officers and injunction and forfeiture of the infringing
employees (conformably with the Civil Service products. A preliminary injunction effective for
Law) 90 days was granted by the IPO’s Bureau of
Legal Affairs (IPO-BLA). Upon expiration, a
Functions motion for extension filed by Pfizer was denied.
- Enumerated under Section 5 Pfizer filed a Special Civil Action for Certiorari
Director General in the Court of Appeals (CA) assailing the
Functions (see Section 7.1) denial.
Qualifications (see Section 7.2)
Term of Office (See Section 7.3) While the cases was pending in the CA, Pfizer
Jurisdiction (Section 7, paragraph b and c) filed with the Regional Trial Court of Makati
These two paragraphs define the jurisdiction of (RTC) a complaint for infringement and unfair
the Director General in IP adjudications. In sum, competition, with a prayer for injunction. The
the Director General has: RTC issued a temporary restraining order, and
1. Original Jurisdiction to resolve disputes then a preliminary injunction.
relating to the terms of licenses
involving the author’s right to public Pharmawealth filed a motion to dismiss the case
in the CA, on the ground of forum shopping.
Nevertheless, the CA issued a temporary and Regulations suppletorily. Under the Rules, a
restraining order. Pharmawealth again filed a petition for certiorari to the CA is the proper
motion to dismiss, alleging that the patent, the remedy. This is consistent with the Rules of
main basis of the case, had already lapsed, thus Court. Thus, the CA had jurisdiction.
making the case moot, and that the CA had no
jurisdiction to review the order of the IPO-BLA c) Yes. Forum Shopping is defined as the act of
because this was granted to the Director a party against whom an adverse judgement has
General. The CA denied all the motions. been rendered in one forum, of seeking another
Pharmawealth filed a petition for review on (and possible favorable) opinion in another
Certiorari with the Supreme Court. forum (other than by appeal or the special civil
action of certiorari), or the institution of two (2)
ISSUES: a) Can an injunction relief be issued or more actions or proceedings grounded on the
based on an action of patent infringement when same cause on the supposition that one or the
the patent allegedly infringed has already other court would make a favorable disposition.
lapsed? The elements of forum shopping are: (a) identity
b) What tribunal has jurisdiction to review the of parties, or at least such parties that represent
decisions of the Director of Legal Affairs of the the same interest in both actions; (b) identity of
Intellectual Property Office? rights asserted and relief prayed for, the reliefs
c) Is there forum shopping when a party files being founded on the same facts; (c) identity of
two actions with two seemingly different causes the two preceding particulars, such that any
of action and yet pray for the same relief? judgement rendered in the other action will,
regardless of which party is successful, amount
HELD: a) No. The provision of R.A. 165, from to res judicata in the action under consideration.
which the Pfizer’s patent was based, clearly This instances meets these elements.
states that “the patentee shall have the exclusive The parties are clearly identical. In both the
right to make, use and sell the patented machine, complaints in the BLA-IPO and RTC, the rights
article or product, and to use the patented allegedly violated and the acts allegedly
process for the purpose of industry or violative of such rights are identical, regardless
commerce, throughout the territory of the of whether the patents on which the complaints
Philippines for the term of the patent; and such were based are different. In both cases, the
making, using, or selling by any person without ultimate objective of Pfizer was to ask for
the authorization of the patentee constitutes damages and to permanently prevent
infringement of the patent.” Pharmawealth from selling the contested
products. Relevantly, the Supreme Court has
Clearly, the patentee’s exclusive rights exist decided that the filing of two actions with the
only during the term of the patent. Since the same objective, as in this instance, constitutes
patent was registered on 16 July 2004, Pfizer no forum shopping.
longer possessed the exclusive right to make,
use, and sell the products covered by their Owing to the substantial identity of parties,
patent. The CA was wrong in issuing a reliefs and issues in the IPO and RTC cases, a
temporary restraining order after the cut-off decision in one case will necessarily amount to
date. res judicata in the other action.

b) According to IP Code, the Director General of Decision of the Director General (DG)
the IPO exercise exclusive jurisdiction over The law provides remedies in case of an adverse
decisions of the IPO-BLA. The question in the decision of the Director General. The appeal
CA concerns an interlocutory order, and not a may be made to the Court of Appeals (CA) or
decision. Since the IP Code and the Rules and the Secretary of Department of Trade and
Regulations are bereft of any remedy regarding Industry, as the case may be.
interlocutory orders of the IPO-BLA, the only
remedy available to Pfizer is to apply the Rules Notes:
Decisions of the DG in the exercise of his public to practice the invention once the patent
appellate jurisdiction in respect of the decisions expires
of the Director of Patents and Director of Third, the stringent requirements for patent
Trademarks are appealable to the Court of protection seek to ensure that ideas in the public
Appeals (Rules of Court). domain remain there for the free use of public.
With respect of the decisions of the Director of
Documentation, Information and Technology Ultimate Goal: To bring new designs and
Transfer Bureau are appealable to the DTI technologies into the public domain through
Secretary. Also with the decisions of the DG in disclosure. (Pearl and Dean vs Shoemart)
the exercise of original jurisdiction to resolve
disputes relating to the terms of a license Public – benefits from new ideas
involving the author’s right to public Inventors – to be protected.
performance or other communications of his
work. The law attempts to strike an ideal balance
between the two interest.
Bureaus (Six Divisions) (See Section 8-13)
Patentable (Section 21) and Non-Patentable
Notes: Inventions (Section 22)
The law recognizes the current jurisdiction of
civil courts and the IPO over unfair competition Elements of Patentability
cases. Patentability, Elements
1. Novelty
LAW ON PATENTS 2. Inventive Step
Notes: 3. Industrial Applicability
Only when the invention is patented may it be
given protection under the Intellectual Property First Element of Patentability: Novelty (Section
Law. 23, in relation to 24)
A patent is a valuable asset that must be An invention shall not be considered new if it
protected. forms part of a prior art.
Prior art is defined in Section 24. Under the
Patents (Latin “Patere- To lay open (to make section, there are two (2) classes of prior art.
available for public)
Set of exclusive rights granted by a state to an First Classification
inventor or his assignee for fixed period of time Everything that is already available to the public
in exchange for a disclosure of an invention. not only in the country but anywhere in the
These are grants by the State given to someone world. The requirement that it is already in the
so he will have monopoly right over his public domain must be present before the filing
property. In exchange for a disclosure of an date or the priority date of the application
invention. claiming the invention.
These are grants by the State given to someone Filing date and Priority date are technical terms
so he will have monopoly right over his
property. In exchange for you revealing of Second Classification
something 1) new, 2) useful, and 3) has an Those that are actually subject of application for
inventive step, state gives you protection. patent registration.
Prior Arts- The whole contents of an application
Three fold purpose and ultimate goal for a patent, utility model or industrial design
First, if patent law seeks to foster and reward registration that are published in accordance
invention with law, filed or effective in the Philippines,
Second, it promotes disclosures of inventions to with a filing or priority date that is earlier than
stimulate further invention and to permit the the filing or priority date of application, subject
to certain conditions.
 prejudicial taking into consideration the
Note: FIRST TO FILE RULE meaning of third party.
It has the same adverse effect on novelty
Filing date (Section 41) whether made before or after non-prejudicial
Accorded only when all the Requirements disclosure.
provided under Section 40 are present. Clarifying the Third Party (Section 25, 2.3)
An express or implicit indication that a (Memorandum Circular No. 4 Series of 2002)
Philippine patent is sought; (Done through filing Excludes all patent offices as well as the World
a Patent Application under Section 32) Intellectual Property Office which publishes
Information identifying the applicant; and patent applications filed through the PCT.
Description of the invention and one more
claims in Filipino or English Second Element of Patentability: Inventive Step
Note: If any of these elements are not submitted (Section 26)
within the period set, the application shall be Connotes that the invention should not be
withdrawn. obvious not to the general public but to a
If the date of filing cannot be accorded, the “person skilled in the art” for it to be patented.
applicant shall be given an opportunity to Who is a person skilled in the art?
correct the deficiencies in accordance with the Presumed to be an ordinary practitioner aware of
implementing regulations. what was common general knowledge in the art
If the application does not contain all the at the relevant date.
elements, the filing date should be that date Presumed to have knowledge of all references
when all the elements are received. that are sufficiently related to one another and to
If the deficiencies are not remedied within the the pertinent art and to have knowledge of all
prescribed time limit, the application shall be arts reasonably pertinent to the particular
considered withdrawn. problems with which the inventor was involved.
Graham Factors
Priority Date (Section 31) Factors a count will look at when determining
Comes into play when there is an application for obviousness and non-obviousness in the United
patent for the same invention that was filed in States. (See enumeration)
another country.
Following the “First to File rule, in case of two Third Element of Patentability: Industrially
or more applications for patent over the same Applicable (Section 27)
invention, an application with a latter local filing
date may still be the one preferred application An invention will be useless if it will be forever
over a previous local filing date. confined in the sphere of theories and principles.
Provided, that it has an earlier foreign It has to have some practical application.
application assuming of course that the
requirements of Section 31 are complied with. Right to Patent

Non-Prejudicial Disclosure Ownership of Patent

Note: The element of Novelty requires that the It shall belongs to the inventor.
thing is not yet known to anyone besides the It may be acquired through succession or
inventor. assignment.
There are disclosure however that will not It may also be subject of joint-ownership as
prejudice the application i.e. the application will when two or more persons have jointly made an
not be denied for lack of novelty. invention.
Disclosures of information contained in the
application as long as the disclosure was: (See First to File Rule
Section 25) The Philippine follows this rule and observed by
Any disclosure of information not within the almost all nations in the world.
exceptions under Section 25 shall be considered
Application of the Rule Procedure for the Grant of Patent
There must be at least be two persons who have Summary of Procedure
made the invention, separately and 1. Filing of the Application
independently of each other. Otherwise, joint 2. Accordance of the filing date
ownership under Section 28 may exist or may 3. Formality Examination
call the application of Section 67. 4. Classification and Search
5. Publication of the Application
Inventions Pursuant to Commission 6. Substantive Examination
The person who commissions the work shall be 7. Grant of the Patent
the owner of the patent, unless there was a 8. Publication upon grant
contrary agreement. (Section 30) 9. Issuance of the Certificate

Inventions Pursuant to Employment Filing of the Application

If made by an employee during an employment The patent application shall be in Filipino or
contract, the patent shall belong to: English and shall contain the following:
1. The employees, if the inventive activity (a) A requesting for the grant of a patent;
is not a part of his regular duties even if (b) A description of the invention;
he uses the time, facilities and materials (c) Drawings necessary for the
of the employer. understanding of the invention;
2. The employer, if the invention is the (d) One or more claims; and
result of the performance of his (e) An Abstract.
regularly assigned duties, unless there is
an agreement, express or implied, to the No patent may be granted unless the
contrary. application identifies the inventor. If the
applicant is not the inventor, the Office may
Right of Priority require him to submit said authority.
An application for patent filed by any person
who has previously applied for the same The request shall contain:
invention in another country which by treaty, 1. Petition for the grant of the patent,
convention or law affords similar privileges to 2. The name and other data of the applicant
Filipino citizen shall be considered filed as of 3. The inventor and the agent, and
the date of filing the foreign application. 4. The title of the invention
Provided, that:
1. The local application expressly claims The application shall disclose the invention
priority in a manner sufficiently clear and complete
2. Filed within 12 months from the date the for it to be carried out by a person skilled in
earliest foreign application was filed. the art.
3. Certified copy of the foreign application
together with an English translation is Disclosure and Description
filed within 6 months from the date of Where the application concerns a
filing in the Philippines. (Section 31) microbiological process or the product
thereof and involves the use of a micro-
Illustration: organism which cannot be sufficiently
An application filed in the Philippines and disclosed in the application in such a way as
another filed in Sweden, and the Philippine to enable the invention to be carried out by a
application was filed earlier than the other person skilled in the art, and such material is
application, it is still possible that the not available to the public, the application
foreign application will be granted by virtue shall be supplemented by a deposit such
of the Rights of Priority, as long as all the material with an international depository
requisites are complied with. institution. The Regulations shall prescribe
the contents of the description and the order
of presentation. If several independent inventions which do
not form a single general inventive concept
Claims are claimed in one application, the Director
The application shall contain one (1) or may require that the application be restricted
more claims which shall define the matter to a single invention.
for which protection is sought. Each claim
shall be clear and concise, and shall be A later application filed for an invention
supported by the description. The divided out shall be considered as having
Regulations shall prescribe the manner of been filed on the same day as the first
the presentation of claims. application: Provided, that the later
application is filed within four (4) months
The Abstract after the requirement to divide becomes final
Note: The abstract shall merely serve for or within such additional time, not
technical information. exceeding four (4) months, as may be
The abstract shall consist of: granted: Provided further, that each
1. Concise summary of the disclosure of divisional application shall not go beyond
the invention as contained in the the disclosure in the initial application.
description,
2. Claims and drawings in preferably not The fact that a patent has been granted on an
more than one hundred fifty (15)) application that did not comply with the
words. requirements for the grant of date of filing as
3. It must be drafted in a way which allows provided in Section 40 hereof.
the clear understanding of the technical
problem, the gist of the solution of that Instances:
problem through the invention, and the 1. If the date of filing cannot be
principle user or uses of the invention. accorded, the applicant shall be
given an opportunity to correct the
Prohibited Matters deficiencies in accordance with the
The application shall not contain: implementing regulations.
1. Statement contrary to public order or 2. If the application does not contain
morality. all the elements indicated in Section
2. Statement disparaging the products or 40, the filing date should be that
processes of any particular person or date when all the elements are
other applicant, or the merits or validity received.
of applications or patents of any person. 3. If the deficiencies are not remedied
within the prescribed time limit, the
Note: A mere comparison shall not be application shall be considered
disparaging. withdrawn. (Section 41)
3. Irrelevant or unnecessary matters Formality Examination
After the patent application has been accorded a
Note: If the application contains such, the filing date and the required fees have been paid
Bureau of Patent shall omit it when on time in accordance with the regulations, the
publishing the application, indicating the applicant shall comply with the formal
place and number of words or drawing requirements specified by Section 32 and the
omitted. Regulations within the prescribed period,
otherwise the application shall be considered
Unity of Invention withdrawn.
The application shall relate to one invention
only or to a group of inventions form a The Regulations shall determine the procedure
single general inventive concept. for the re-examination and review of an
application as well as the appeal to the Director c. Drawings necessary for the
of Patents from any final action by the examiner. understanding of the invention;
(Section 42) d. One or more claims; and
e. An abstract
If the formality examination reveals that the No patent may be granted unless the
drawings were filed after the filing date of the application identifies the inventor. If the
application, the Bureau shall send a notice to the applicant is not the inventor, the Office may
applicant that the drawings and the references to require him to submit said authority
the drawing in the application shall be deemed
deleted unless the applicant requests within two Classification and Search
(2) months that the application be granted a new An application that has complied with the
filing date which is the date on which the formal requirements shall be classified and a
drawings were filed. search conducted to determine the prior act.
(Section 43)
If the formality examination reveals that the Note: The patent examiner, at this stage shall
drawings were not filed, the Bureau shall require determine the requirement of novelty. The
applicant to file them within two (2) months and Office uses the International Patent
inform that applicant that the application will be Classification for classifying purposes.
given a new filing date which is the date on
which the drawings are filed, or, if they are not Content of the Intellectual Property Search
filed in due time, any reference to them in the Report
application shall be deemed deleted.
The Intellectual Property Search Report is drawn
The new filing date shall be cited in all up on the basis of the claims, description, and
succeeding correspondences between the Bureau the drawings if there is any:
of the applicant. (Rules and Regulations on
Invention, Rule 602) a. The search report shall mention those
documents available at the Office at the
Such other requirements may relate to the time of drawing up the report, which
following: may be taken into consideration in
a. Contents of the request for grant of a assessing novelty and inventive step of
Philippine patent; the invention.
b. Priority documents if with claim of b. The search report shall distinguish
convention priority (i.e., file number, between cited documents published
date of filing and country of the priority before the date of priority claimed,
applications); between such date of priority and the
c. Proof of authority, if the applicant is not date of filing, and on or after the date of
the inventor; filing.
d. Deed of assignment; c. The search report shall contain the
e. Payment of all fees, (e.g. excess claims); classification of the subject matter of the
f. Signature of the applicants; application in accordance with the
g. Identification of the inventor; and International Patent Classification.
h. Formal drawings (Rules and d. The search report may include
Regulations on Invention, Rule 603 documents cited in a search establish in
the corresponding foreign application
Section 32 dictates:
Publication of Patent Application
The patent application shall be in Filipino or The patent application shall be published in the
English and shall contain the following: IPO Gazette together with a search document
a. A request for the grant of a patent; established by or on behalf of the Office citing
b. A description of the invention; any documents that reflect prior art, after the
expiration of eighteen (18) months from the the rights conferred under Section 71 of this Act
filing date or priority date. (Section 44) in relation to the invention claimed in the
published patent application, as if a patent had
In case the applicant requests for an early been granted for that invention: Provided, that
publication he must: the said person had:
1. Actual knowledge that the invention
1. Submit a written waiver of the: that he was using was the subject matter
 Above-mentioned 18-month period of a published application; or
 Establishment of a search report 2. Received written notice that the
2. Publication shall not be earlier than six invention that he was using was the
months from filing date subject matter of a published application
3. Required fee for early publication is being identified in the said notice by its
paid in full serial number: Provided, that the action
The application will not be published if may not be filed until after the grant of a
it has been finally refuse or withdrawn patent on the published application and
or deemed to be withdrawn before the within four (4) years from the
termination of the technical preparation commission of the acts complained of.
for publication. Note:
The application to be published shall This provision is important since it confers
contain the bibliographic data, any certain rights to the application even before
drawing as filed and the abstract. the actual grant of approval to the
The Office shall communicate to the application.
applicant the date and other information Section 76 refers to the REMEDIES against
regarding the publication of the patent infringement. The remedy is strictly
application and draw his attention to the civil.
period within which the request for Observation by Third Parties
substantive examination must be filed. Following the publication of the patent
After publication of a patent application, any application, any person may present
interest party may inspect the application observation in writing concerning the
documents filed with the office. patentability of the invention. Such
observations shall be communicated to the
The Director General subject to the approval of applicant who may comment on them. The
the Secretary of Trade and Industry, may office shall acknowledge and put such
prohibit or restrict the publication of an observations and comment in the file of the
application, if in his opinion, to do so would be application to which it relates. (Section 47)
prejudicial to the national security and interest
of the Republic of the Philippines. Substantive Examination
The application shall be deemed withdrawn
Confidentiality Before Publication unless within six (6) months from the date
of publication under Section 41, a written
Note: A patent application, which has not yet request to determine whether a patent
been published, and all related documents, shall application meets the requirement of Section
not be made available for inspection without the 21 to 27 and Section 32 to 39 and the fees
consent of the appellant. (Section 45) have been paid on time, withdrawal of the
request for examination shall be irrevocable
Rights Conferred by a Patent Application and shall not authorize the refund of any fee.
After Publication (Section 48)

The applicant shall have all the rights of a The Examination of the Application;
patentee under Section 76 against any person Nature of Proceedings in the examination
who, without his authorization, exercised any of
of an Application for a Patent; General applicant’s claims, that is, the way in which
Considerations the applicant has expressed his invention.
An Examiner will frequently make a blanket
Law Contest rejection on some reference to the prior art
An application is prosecuted ex parte by the just to be helpful to the applicant – just to
applicant; that is, the proceedings are like a give the applicant a chance to explain away
lawsuit in which there is a plaintiff, but no some reference and make a change in his
defendant, the court itself acting as the claims to avoid it, rather than to wait until
adverse party. the patent is granted and is involved in a
An ex parte proceeding in the Bureau is a litigation, when it may be too late to make
law contest between the Examiner, the explanation.
representing the public and trying to get as
much monopoly as possible. Amendment of Application
The Bureau, represented by the examiner, is An applicant may amend the patent
not supposed to look after the interest of an application during examination: Provided,
applicant. that such amendment shall not include new
The Examiners are charged with the matter outside the scope of the disclosure
protection of the interest of the public, and contained in the application as field.
hence must be vigilant to see that no patent (Section 49)
issues for subject matter which is not
patentable, and is already disclosed in prior Grant of Patent
inventions and accessible to the public at If the application meets the requirements of
large. this Act, the office shall grant the patent:
Provided, that all the fees are paid on time.
Tough love case If the required fees for grant and printing are
The positive value of preliminary adverse not paid in due time, the application shall be
actions of the Examiner should be fully deemed to be withdrawn.
appreciated by the applicant and his
attorney. A hard-fought application will A patent shall take effect on the date of the
produce a patent much more likely to stand publication of the grant of the patent in the
in court than a patent which has slid through IPO Gazette. (Section 50)
the Bureau easily. This is so for two reasons:
first, the rejections have given the applicant Refusal of the Application
or his attorney suggestions of strengthening The final order of refusal of the examiner to
amendments so that his claims have been grant the patent shall be appealable to the
made infinitely less vulnerable than would Director in accordance with this Act. The
be otherwise possible; Secondly, every point Regulations shall provide for the procedure
raised by the Examiner and finally decided by which an appeal from the order of refusal
by the Bureau in favor of the applicant will from the Director shall be undertaken.
give him prima facie standing on that point (Section 51)
in court. The Office is empowered by law to
pass upon applications for patents and, Publication Upon Grant of Patent
because of the authority vested in it, its The grant of the patent together with other
decision with respect to the granting of a related information shall be published in the
rejection by the Examiner is never to be IPO Gazette within the time prescribed by
taken literally. An applicant should the Regulations. Any interested party may
remember that the Examiner may not be inspect the complete description, claims and
actually rejecting his invention. The drawings of the patent on file with the
Examiner may in fact be quite prepared to office. (Section 52)
admit the invention over the references to
the prior art. He may be merely rejecting the Content of Patent
The patent shall be issued in the name of the Surrender of Patent
Republic of the Philippines under the seal of The owner of the patent, with the consent of
the Office and shall be signed by the all persons having grants or license or other
Director, and registered together with the right, title or interest in and to the patent and
description, claims, and drawings, if any, in the invention covered thereby, which have
books and records of the Office. (Section been recorded in the Office, may surrender
53) his patent or any claim or claims forming
part thereof to the Office for cancellation.
Term of Patent
The term of a patent shall be twenty (20) A person may give notice to the Office of
years from the filing date of the application. his opposition to the surrender of a patent
(Section 54) under this section, and if he does so, the
Bureau shall notify the proprietor of the
Note: However, a patent shall cease to be in patent and determine the question.
force and effect if any prescribed annual
fees therefor is not paid within the If the Office is satisfied that the patent may
prescribed time or if the patent is cancelled properly be surrendered, he may accept the
in accordance with the provisions of the IP offer and, as from the day when notice of his
Code and these regulations. acceptance is published in the IPO Gazette,
When it expires, the monopoly ceases to the patent shall cease to have effect, but no
exist and the subject matter of patent action for infringement shall lie and no right
becomes part of the public domain. compensation shall accrue for any of the
patented invention before that day for the
Annual Fees services of the government.
To maintain the patent application or patent,
an annual fee shall be paid upon the Correction of Mistakes of the Office
expiration of four (4) years from the date the The Director shall have the power to correct,
application was published pursuant to without fee, any mistake in a patient
Section 44 hereof, and on each subsequent incurred through the fault of the Office
anniversary of such date. Payment may be when clearly disclosed in the records
made within three (3) months before the due thereof, to make the patent conform to the
date. The obligation to pay the annual fees records.
shall terminate should the application be
withdrawn, refused, or cancelled. Correction of Mistake in the Application
On request of any interested person and
If the annual fee is not paid, the patent payment of the prescribed fee, the Director
application shall be deemed withdrawn or is authorized to correct any mistake in a
the patent considered as lapsed from the day patent of a formal and clerical nature, not
following the expiration of the period within incurred through the fault of the Office.
which the annual fees were due. A notice
that the application is deemed withdrawn or Changes in Patents
the lapse of a patent for non-payment of any The owner of a patent shall have the right to
annual fee shall be published in the IPO request the Bureau to make the changes in
Gazette and the Lapse shall be recorded in the patent in order to:
the Register of the Office.
(a) Limit the extent of the protection
A grace period of six (6) months shall be conferred by it;
granted for the payment of the annual fee, (b) Correct obvious mistakes or to correct
upon payment of the prescribed surcharge clerical errors; and
for delayed payment. (Section 55) (c) Correct mistakes or errors, other than
those referred to in letter (b), made in
 good faith: Provided, That where the 2. Verified by the petitioner or by any
change would result in a broadening of person in his behalf who knows the
the extent of protection conferred by the facts,
patient, no request may be made after 3. Specify the grounds upon which it is
the expiration of two (2) years from the based
grant of a patent and the change shall 4. Include a statement of the facts to be
not affect the rights of any third party relied upon, and
which has relied on the patent, as 5. Filed with the office
published. 6. Copies of printed publications or of
patents of other countries, and other
No change in the patent shall be permitted under supporting documents mentioned in the
this section, where the change would result in petition shall be attached thereto,
the disclosure contained in the patent going together with the translation thereof in
beyond the disclosure contained in the English, if not in the English language.
application filed. If, and to the extent to which (Section 62)
the Office changes the patent according to this
section, it shall publish the same. (n) Notice of Hearing
The jurisdiction to hear the petition for
Form and Publication of Amendment cancellation is with the Director of Legal
An amendment or correction of a patent shall be Affairs.
accomplished by a certificate of such
amendment or correction, authenticated by the Upon filing of a petition for cancellation, the
seal of the Office and signed by the Director, Director of Legal Affairs shall forthwith serve
which certificate shall be attached to the patent. notice of the filing thereof upon the patentee and
all persons having grants or licenses, or any
Notice of such amendment or correction shall be other right, title or interest in and to the patent
published in the IPO Gazette and copies of the and the invention covered thereby, as appears of
patent kept or furnished by the Office shall record in the office, and of notice of the date of
include a copy of the certificate of amendment hearing thereon on such persons and the
or corrections. petitioner. Notice of the filing of the petition
shall be published in the IPO Gazette.
Cancellation of Patent
Any interested person may, upon payment of the Committee of Three: Highly Technical Issues
required fees, petition to cancel the patent or any In cases involving highly technical issues, on
claim or parts. motion of any party, the Director of Legal
Affairs may order that the petition be head and
Grounds for Cancellation decided by a committee composed of the
a) The invention is not new or patentable Director of Legal Affairs as chairman and two
b) The patent does not disclose the invention (2) members who have the experience or
in a manner sufficiently clear and complete expertise in the field of technology to which the
for it to be carried out by any person skilled patent sought to be cancelled relates. The
in the art. decision of the committee shall be appealable to
c) Patent is contrary to public order or the Director General. (n)
morality.
If the cancellation was to the parts or claims Cancellation of Patent
only, cancellation may be affected to such extent If the Committee finds that a case for
only. cancellation has been proved, it shall order the
patent or any specified claim or claims thereof
Requirement of the Petition cancelled.
The petition for cancellation shall be:
1. In writing,
If the Committee finds that, taking into by final court order or decision to be the true and
consideration the amendment made by the actual inventor, the court shall order for his
patentee during the cancellation proceedings, the substitution as patentee, or at the option of the
patent and the invention to which it relates meet true inventor, cancel the patent, and award actual
the requirement of this Act, it may decide to and other damages in his favor if warranted by
maintain the patent as amended: Provided, that the circumstances. (Section 68)
the fee for printing of a new patent is paid within
the time limit prescribed in the regulations. Publication of the Court Order
The court shall furnish the Office a copy of the
If the fee for the printing of a new patent is not order or decision referred to in Section 67 and
paid in due time, the patent should be revoked. 68, which shall be published in the IPO Gazette
within three (3) months from the date such order
If the patent is amended under Section 65,2 or decision became final and executory, and
hereof, the Bureau shall, at the same time as it shall be recorded in the register of the Office.
publishes the mention of the cancellation (Section 68)
decision, publish the abstract, representative
claims and drawings indicating clearly what the Time to File Action in Court
amendments consist of. The actions indicated in Sections 67 and 68 shall
be filed within one (1) year from the date of
Effect of Cancellation of Patent or Claim publication made in accordance with Sections 44
The rights conferred by the patent or any and 51, respectively.
specified claim or claims cancelled shall
terminate. Notice of the cancellation shall be Remedies against Infringement
published in the IPO Gazette. Rights Conferred by Patent
The rights conferred by a patent depend on
Unless restrained by the Director General, the whether the subject matter is a product or a
decision or order to cancel by Director of Legal process.
Affairs shall be immediately executory even
pending appeal. A patent shall confer on its owner the following
exclusive rights:
Persons Deprived of Patent Ownership (a) Where the subject matter of a patent is a
Remedies product, to restrain, prohibit and
Patent application by persons not having the prevent any unauthorized person or
Right to a Patent entity from making, using, selling or
If a person referred to in Section 29 other than using the process, and from
the applicant, is declared by final court order or manufacturing, dealing in, using, selling
decision as having the right to the patent, such or offering for sale, or importing;
person may, within three (3) months after the (b) any product obtained directly or
decision has become final: indirectly from such process.
(a) Prosecute the application as his own
application in place of the applicant;
(b) File a new patent application in respect
of the same invention;
(c) Request that the application be refused;
or
(d) Seek cancellation of the patent, if one
has already been issued. (Section 67)

Remedies of the True and Actual Inventor

If a person, who was deprived of the patent
without his consent or through fraud is declared