QuestionsQuestions (Republic Act No. 8293)
Section 2 recognizes that an effective intellectual and industrial property system is vital for development, creative activity, technology transfer, and market access; it protects the exclusive rights of creators, but also provides that the use of intellectual property bears a social function. Thus, the State shall promote diffusion of knowledge and information for national development and the common good.
Any person who is a national or is domiciled or has a real and effective industrial establishment in a country party to relevant IP conventions/treaties (or extends reciprocal rights to Philippine nationals by law) is entitled to benefits to the extent necessary to give effect to those treaty provisions, in addition to rights already granted 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.
Technology transfer arrangements are contracts/agreements involving transfer of systematic knowledge for manufacture/application of processes/rendering of services, including management contracts; and transfer/assignment/licensing of all forms of IP rights, including licensing of computer software except computer software developed for mass market.
Among others: examine applications for patents and register utility models/industrial designs; examine and register marks, geographic indications, and integrated circuits; register technology transfer arrangements and settle disputes on technology transfer payments; promote patent information use; publish in the IPO Gazette; administratively adjudicate contested IP proceedings; and coordinate with other agencies/private sector for strengthening IP protection.
The IPO is headed by a Director General assisted by two Deputies. It is divided into six Bureaus (Patents; Trademarks; Legal Affairs; Documentation/Information/Technology Transfer; Management Information System and EDP; Administrative/Financial/Personnel). The Director General, Deputies, Directors, and Assistant Directors are appointed by the President; other officers/employees are appointed by the Secretary of Trade and Industry under Civil Service rules.
The Director General has exclusive appellate jurisdiction over decisions of the Directors of Legal Affairs, Patents, Trademarks, and the Documentation/Information/Technology Transfer Bureau. Decisions in appeals from Patents/Trademarks are appealable to the Court of Appeals; those involving the Documentation Bureau are appealable to the Secretary of Trade and Industry. The Director General also has original jurisdiction to resolve disputes relating to license terms involving an author’s right to public performance or other communication.
They must be natural-born 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 law practice.
Any technical solution of a problem in any field of human activity that is (1) new, (2) involves an inventive step, and (3) is industrially applicable shall be patentable.
Excluded are: discoveries/scientific theories/mathematical methods; schemes/rules/methods of performing mental acts/playing games/doing business, and programs for computers; methods of treatment/therapy/diagnosis practiced on the human or animal body (but not products/compositions for use in such methods); plant varieties/animal breeds or essentially biological processes (with micro-organisms and non-biological/microbiological processes not covered by the exclusion); aesthetic creations; and anything contrary to public order or morality. Notably, “programs for computers” are excluded.
Prior art includes everything made available to the public anywhere in the world before the filing/priority date, and the whole contents of earlier applications published/under the Act filed/effective in the Philippines with an earlier filing/priority date. Novelty fails if the invention forms part of prior art.
Disclosure in the 12 months preceding the filing/priority date does not prejudice novelty if made by the inventor; or by a patent office where disclosure appears in another application filed by the inventor that should not have been disclosed by the office; or by a third party that obtained the information directly or indirectly from the inventor without knowledge/consent.
At least: an express/implicit indication a Philippine patent is sought; information identifying the applicant; and a description of the invention plus one or more claims in Filipino or English. If any element is not submitted within the period set by regulations, the application is considered withdrawn.
Publication occurs in the IPO Gazette with a search document after 18 months from filing/priority. Before publication, the application and related documents are not available for inspection without applicant consent. After publication, the applicant has rights of a patentee under Section 76 against certain unauthorized acts, but suit timing/eligibility is subject to conditions: infringement actions cannot be filed until after grant of the patent and within 4 years from commission of acts, and the infringer must have actual knowledge or received written notice identifying the published application by serial number.
The application is deemed withdrawn unless within 6 months from the date of publication a written request for substantive examination is filed and the required fees are paid, to determine whether requirements of patentability and formal matters are met.
Under Section 71, a patent grants exclusive rights: for products—prevent unauthorized making/using/offering for sale/selling/importing; for processes—prevent unauthorized use of the process and manufacturing/dealing in/using/selling/offering for sale/importing products obtained directly or indirectly from it. Section 72 limits these rights, such as for post-sale use in the Philippines by the owner or with express consent, private/noncommercial use not significantly prejudicing economic interests, experimental use, preparation of medicines for individual cases by pharmacies/medical professionals, and temporary/accidental use in foreign ships/vessels/aircraft/land vehicles.
A prior user who in good faith used the invention or made serious preparations before the filing/priority date has the right to continue use within the territory where the patent takes effect, as envisaged in those preparations. The prior-user right may only be transferred/assigned together with the enterprise/business (or the part) in which the use/preparations were made.
Any interested person may petition to cancel a patent or any claim (upon payment of required fee) on grounds that the claimed invention is not new/patentable; the patent does not disclose the invention clearly and completely; or it is contrary to public order/morality. The petition must be written, verified, specify grounds/facts, and include supporting documents (with translations). The Director of Legal Affairs serves notice to patentee and recorded right holders and sets a hearing; notice of filing is published in the IPO Gazette. For highly technical issues, a committee of three may be formed. Cancellation terminates rights, and decisions/orders may be immediately executory unless restrained by the Director General.