QuestionsQuestions (Republic Act No. 8293)
RA 8293 declares that an effective intellectual and industrial property system is vital to development, facilitates technology transfer, attracts investments, and ensures market access; it protects exclusive rights of creators for the periods provided in the Code, while also recognizing the social function of IP—promoting diffusion of knowledge for national development and common good. It also aims to streamline registration procedures, liberalize technology transfer registration, and enhance IP enforcement.
Any person who is a national/domiciled/has an industrial establishment in a country party to relevant IP conventions or agreements (and the Philippines is also a party), or who is extended reciprocal rights by law, is entitled to benefits to the extent necessary to give effect to those provisions, in addition to rights under the Code.
Copyright and Related Rights; Trademarks and Service Marks; Geographic Indications; Industrial Designs; Patents; Layout-Designs (Topographies) of Integrated Circuits; and Protection of Undisclosed Information.
Contracts/agreements involving transfer of systematic knowledge for manufacturing a product, applying a process, or rendering a service (including management contracts), and transfer/assignment/licensing of all forms of IP rights, including licensing of computer software except software developed for mass market.
Among others: examine patent applications and register utility models/industrial designs; examine and register marks and geographic indications; register technology transfer arrangements and settle disputes involving technology transfer payments; publish patents/marks/designs/technology transfer arrangements; administratively adjudicate contested IP proceedings; and coordinate with other agencies and the private sector for strengthening IP protection.
The IPO is headed by a Director General assisted by two Deputy Director Generals. It is divided into six bureaus: Bureau of Patents; Bureau of Trademarks; Bureau of Legal Affairs; Documentation, Information and Technology Transfer Bureau; Management Information System and EDP Bureau; and Administrative, Financial and Personnel Services Bureau.
The Director General has exclusive appellate jurisdiction over all decisions of the Directors of Legal Affairs, Patents, Trademarks, and Documentation, Information and Technology Transfer Bureau. Decisions in patents and trademarks are appealable to the Court of Appeals; decisions in documentation/technology transfer are appealable to the Secretary of Trade and Industry.
They must be natural-born Philippine citizens, at least 35 years old, holders of a college degree, and of proven competence, integrity, probity, and independence. At least one Deputy and the Director General must be members of the Philippine Bar with at least 10 years of legal practice. Selection should aim for balanced representation across IP fields.
Appointed by the President for 5 years, eligible for reappointment only once. The first Director General has a first term of 7 years; vacancies are filled only for the unexpired term.
Any technical solution of a problem in any field of human activity that is new, involves an inventive step, and is industrially applicable. It may be a product, process, or improvement.
Discoveries, scientific theories, mathematical methods; schemes/rules/methods of performing mental acts, playing games, or doing business, and computer programs; methods of treatment/therapy/surgery and diagnostic methods practiced on the human or animal body (but not products/compositions for use in those methods); plant varieties/animal breeds or essentially biological processes (with exceptions for microorganisms and non-biological/microbiological processes); aesthetic creations; and anything contrary to public order or morality.
Novelty: an invention is not new if it forms part of prior art. Prior art includes everything made available to the public anywhere in the world before the filing/priority date; and the whole contents of earlier-filed applications published under the Code in the Philippines with earlier filing/priority dates (with special effects for validly claimed earlier priority by the same applicant/inventor not being the same in both).
Disclosures in the 12 months before the filing/priority date do not prejudice novelty if made by the inventor, by a patent office where it appeared in another application filed by the inventor that should not have been disclosed, or by a third party obtaining directly/indirectly from the inventor.
If two or more persons independently make the invention, the patent right belongs to the person who filed first; if multiple applications exist, the earliest filing date or earliest priority date controls.
Filing date is the date of receipt by the Office of at least: (1) an express or implicit indication that a Philippine patent is sought; (2) information identifying the applicant; and (3) description of the invention and one or more claims in Filipino or English. If any is not submitted within the period set by Regulations, the application is considered withdrawn.
The applicant has rights of a patentee against unauthorized persons who, without authorization, exercised rights in relation to the invention as if a patent had been granted—provided the infringer had actual knowledge of the published application or received written notice identifying it by serial number. Action cannot be filed until after grant of a patent and must be filed within 4 years from the commission of the acts complained of.
Any interested person may petition to cancel a patent/claim on grounds that what is claimed is not new/patentable, the patent does not sufficiently disclose for a person skilled in the art, or it is contrary to public order or morality. Petition must be written/verified and include facts and supporting documents (with English translations if needed). Notice is served to patentee and interested parties, and publication of the filing is made. In highly technical issues, Director of Legal Affairs may order a three-member committee decision (appealable to Director General). If cancellation is proven, the patent/claims are cancelled; the office publishes notice of cancellation, and rights terminate with immediate executory effect unless restrained.
Section 71: A product patent holder may restrain/prohibit/prevent unauthorized making, using, offering for sale, selling, or importing; a process patent holder may restrain use of the process and manufacturing/dealing/selling/offering/importing of products obtained directly or indirectly from the process. Section 76: the patentee or rights holder may sue for damages (including attorney’s fees and litigation expenses) and secure injunction; the court may award reasonable royalty, increased damages up to three times actual damages, order destruction/disposal of infringing goods, and hold contributory infringers jointly and severally liable in appropriate cases.
Section 72 limits the patentee’s right to prevent certain acts, such as: (1) using a patented product after it has been put on the market in the Philippines by the owner or with express consent (insofar as use is performed after that); and (2) acts done privately and on a non-commercial/non-commercial purpose scale provided it does not significantly prejudice the owner’s economic interests. Other examples include experiments and acts for individual cases in pharmacies/medical prescriptions.