Intellectual Property Code of the Philippines

Defined terms and IPO Gazette

Section 4.1 defines “intellectual property rights” as consisting of: Copyright and Related Rights; Trademarks and Service Marks; Geographic Indications; Industrial Designs; Patents; Layout-Designs (Topographies) of Integrated Circuits; and Protection of Undisclosed Information.
Section 4.2 defines “technology transfer arrangements” as contracts or agreements involving transfer of systematic knowledge for manufacture, application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market.
Section 4.3 defines “Office” as the Intellectual Property Office created by the Act.
Section 4.4 defines “IPO Gazette” as the gazette published by the Office under the Act.

IPO powers, functions, records

Section 5.1 creates the Intellectual Property Office (IPO) and assigns functions including: examining patent applications and granting letters patent; registering utility models and industrial designs; examining registration applications for marks, geographic indications, and integrated circuits; and registering technology transfer arrangements and settling disputes involving technology transfer payments covered by Part II, Chapter IX on Voluntary Licensing.
Section 5.1 requires the IPO to promote patent information use as a tool for technology development and to publish regularly in its publication the patents, marks, utility models and industrial designs issued and approved, and the technology transfer arrangements registered.
Section 5.1 requires the IPO to administratively adjudicate contested proceedings affecting intellectual property rights.
Section 5.1 requires coordination with other government agencies and the private sector to formulate and implement plans and policies to strengthen intellectual property protection in the country.
Section 5.2 mandates that the Office shall have custody of all records, books, drawings, specifications, documents, and other papers and things relating to applications filed with the Office.

IPO organization and leadership

Section 6.1 provides that the Office shall be headed by a Director General assisted by two (2) Deputies Director General.
Section 6.2 provides for six (6) Bureaus, each headed by a Director with an Assistant Director, namely: 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.
Section 6.3 provides that the Director General, Deputies Director General, Directors, and Assistant Directors are appointed by the President, while other officers and employees are appointed by the Secretary of Trade and Industry under the Civil Service law.
Section 7.1 requires the Director General to manage and direct all functions and activities of the Office, including promulgating rules and regulations to implement Office objectives, policies, plans, programs and projects.
Section 7.1 subjects the Director General’s authority to propose policies and standards requiring statutory enactment, and related categories enumerated in Section 7.1(1)–(4), to supervision of the Secretary of Trade and Industry.
Section 7.1 grants the Director General exclusive appellate jurisdiction over decisions of specified bureau directors, with further appeal lines: decisions in respect of patents and trademarks are appealable to the Court of Appeals under the Rules of Court, while decisions in respect of the Documentation, Information and Technology Transfer Bureau are appealable to the Secretary of Trade and Industry.
Section 7.1 grants original jurisdiction to resolve disputes relating to the terms of a license involving the author’s right to public performance or other communication of work, with appeal to the Secretary of Trade and Industry.

Director General qualifications and terms

Section 7.2 requires the Director General and Deputies Director General to be natural born citizens of the Philippines, at least thirty-five (35) years of age on the appointment date, holders of a college degree, and of proven competence, integrity, probity and independence.
Section 7.2 requires that the Director General and at least one (1) Deputy Director General be members of the Philippine Bar who have engaged in the practice of law for at least ten (10) years.
Section 7.2 requires that selection be given to qualifications resulting, as far as practicable, in balanced representation across various fields of intellectual property.
Section 7.3 provides a five (5) year term for the Director General and Deputies Director General, eligible for reappointment only once.
Section 7.3 provides that the first Director General has a first term of seven (7) years.
Section 7.3 provides that appointment to a vacancy is only for the unexpired term of the predecessor.

Bureau functions and enforcement adjudication

Section 8.1–8.3 assigns the Bureau of Patents functions of search and examination and grant of patents; registration of utility models, industrial designs, and integrated circuits; and studies and researches to assist in formulating policies on administration and examination of patents.
Section 9.1–9.2 assigns the Bureau of Trademarks functions of search and examination of applications for registration of marks, geographic indications and other marks of ownership; issuance of certificates of registration; and studies and researches to assist in formulating policies on administration and examination of trademarks.
Section 10.1 assigns the Bureau of Legal Affairs authority to hear and decide: opposition to mark registration; cancellation of trademarks; cancellation of patents, utility models, and industrial designs subject to Section 64; and petitions for compulsory licensing of patents.
Section 10.2(a) grants the Bureau of Legal Affairs original jurisdiction in administrative complaints for violations of intellectual property rights where total damages claimed are not less than Two hundred thousand pesos (P200,000), and states provisional remedies may be granted according to the Rules of Court.
Section 10.2(a) grants the Director of Legal Affairs power to hold and punish for contempt those who disregard orders or writs issued in the course of proceedings.
Section 10.2(b) authorizes the Director for Legal Affairs, after formal investigation, to impose one or more administrative penalties including: a cease and desist order with compliance report; voluntary assurance of compliance/discontinuance with specified types of undertakings; periodic compliance reports and bond requirements; condemnation or seizure of products subject of the offense; forfeiture of paraphernalia and properties used; administrative fines between P5,000 and P150,000, plus an additional fine of not more than P1,000 for each day of continuing violation; cancellation or suspension (for a period not exceeding one (1) year) of permits/licenses/authorizations/registrations; withholding of permits/licenses/authorizations/registrations being secured; assessment of damages; censure; and other analogous penalties or sanctions.
Section 10.3 allows the Director General to establish by regulations the procedure to govern implementation of Section 10.

Technology information services and administration

Section 11.1–11.8 assigns the Documentation, Information and Technology Transfer Bureau functions including maintaining and updating classification systems (including International Patent Classification (IPC)), providing advisory services for search patterns, maintaining search files and reference libraries, adapting and packaging industrial property information, establishing networks/intermediaries/regional representatives, educating the public through seminars and lectures, building relations with research and development institutions and intellectual property professional groups, performing state-of-the-art searches, promoting patent information as a tool for technology development, and providing technical/advisory services for technology licensing and technology transfer programs.
Section 12.1–12.2 assigns the Management Information System and EDP Bureau to conduct automation planning, research and development, testing of systems, contracting and equipment procurement/maintenance, design and maintenance of systems, user consultation, and related activities, and to provide management information support and service to the Office.
Section 13.1 assigns the Administrative service functions including procurement and allocation of supplies and equipment; transportation; messengerial work; cashiering; payment of salaries and other Office obligations; office maintenance; safety and security; utility services; and compliance with government regulatory requirements on performance appraisal, compensation and benefits, employment records and reports; receiving all applications filed and collecting fees; and publishing patent applications and grants and trademark/registration publications.
Section 13.2 assigns Patent and Trademark Administration Services to maintain registers of assignments/mergings/licenses and bibliographic data for patents and trademarks; collect maintenance fees; issue certified copies; and hold in custody applications filed and grants/registrations issued by the Office.
Section 13.3–13.4 assigns the Financial Service to formulate and manage the Office financial program, ensure monitoring of financial operations, and ensures availability and proper utilization of funds; and assigns Human Resource Development Service to design and implement human resource development plans/programs, maintain manpower needs planning, and design/implement employee development programs for morale and favorable employee attitudes.

IPO fees and funding mechanisms

Section 14.1 authorizes the Director General to retain without separate approval of any government agency all fees, fines, royalties and other charges collected by the Office under this Act and other laws mandated to be administered by the Office, subject only to existing accounting and auditing rules and regulations, for Office operations such as upgrading facilities, equipment outlay, human resource development, and acquisition of appropriate office space, in addition to the annual budget.
Section 14.1 requires that retained amounts be deposited and maintained in a separate account or fund, which the Director General may use or disburse directly.
Section 14.2 provides that after five (5) years from the coming into force of the Act, the Director General must determine (subject to approval of the Secretary of Trade and Industry) whether fees and charges collected are sufficient to meet budgetary requirements.
Section 14.2 provides that if sufficient, the Director General retains the fees and charges on the same conditions and must cease to receive funds from the National Government annual budget; if not sufficient, Section 14.1 continues to apply until the Director General (with approval of the Secretary of Trade and Industry) certifies sufficiency.

IPO seal, publication duties, Gazette use

Section 15 empowers the Director General to obtain technical, scientific, or other qualified government personnel assistance when necessary for matters submitted to the Office relating to enforcement of the Act.
Section 16 requires the Office to have a seal whose form and design are approved by the Director General.
Section 17 directs the Director General to print and make available pamphlet copies of the Act, other pertinent laws, executive orders, and information circulars relating to matters within the Office’s jurisdiction.
Section 18 provides that all matters required to be published under the Act are published in the Office’s publication known as the IPO Gazette.
Section 19 prohibits Office officers and employees from applying or acting as an attorney or patent agent for applications and from acquiring patents/utility models/design registrations/marks or rights/interest therein (except by hereditary succession) during employment and for one (1) year thereafter.

Patentability standards and exclusions

Section 21 provides that any technical solution of a problem in any field of human activity that is new, involves an inventive step, and is industrially applicable shall be patentable, and it may be a product, process, or improvement of either.
Section 22 excludes from patent protection: discoveries, scientific theories and mathematical methods; schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers; methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body (with protection for products and compositions used in such methods); plant varieties or animal breeds or essentially biological process for production of plants or animals (with protection for micro-organisms and non-biological and microbiological processes); aesthetic creations; and anything contrary to public order or morality.
Section 23 provides that an invention is not new if it forms part of the prior art.
Section 24.1 defines prior art as everything made available to the public anywhere in the world before the filing date or priority date.
Section 24.2 defines prior art as the whole contents of applications for patents, utility models, or industrial designs published/available under this Act and filed or effective in the Philippines with earlier filing/priority dates, with the proviso that validly claimed earlier-filed applications under Section 31 become prior art effective as of that earlier filing date, and with the proviso that the applicant or inventor identified in both applications are not one and the same.

Non-prejudicial disclosure and requirements

Section 25.1 provides that disclosure of information contained in the application during the twelve (12) months preceding filing date or priority date does not prejudice novelty if made by: the inventor; a patent office (in circumstances specified); or a third party who obtained the information directly or indirectly from the inventor.
Section 25.2 defines “inventor” for purposes of Section 25.1 to include any person who, at the filing date, had the right to the patent.
Section 26 provides that an invention involves an inventive step if, considering prior art, it is not obvious to a person skilled in the art at the filing date or priority date.
Section 27 provides industrial applicability where the invention can be produced and used in any industry.

Right to a patent and priority rules

Section 28 provides that the right to a patent belongs to the inventor, heirs, or assigns, and where two or more jointly make an invention, the right belongs to them jointly.
Section 29 establishes the first to file rule: if two or more persons independently made the invention, the right belongs to the person who filed first, or the applicant with the earliest filing date or earliest priority date if multiple applications are filed.
Section 30.1 provides that the person who commissions the work owns the patent unless otherwise provided in the contract.
Section 30.2 provides ownership rules for employee inventions: the employee owns if inventive activity is not part of regular duties even if time/facilities/materials of employer are used; the employer owns if invention results from performance of regularly-assigned duties, unless there is an agreement express or implied to the contrary.
Section 31 grants right of priority for foreign first filings: a local application that expressly claims priority and is filed within twelve (12) months from the earliest foreign application filing date is considered filed as of the foreign filing date, provided a certified copy of the foreign application with an English translation is filed within six (6) months from filing in the Philippines.

Patent application contents and agent

Section 32.1 requires a patent application in Filipino or English and containing: request for grant of patent; description; drawings necessary for understanding; one or more claims; and an abstract.
Section 32.2 forbids grant of any patent unless the application identifies the inventor, and authorizes the Office to require submission of authority if the applicant is not the inventor.
Section 33 requires applicants not resident in the Philippines to appoint and maintain a resident agent or representative in the Philippines for service of notice or process for judicial or administrative procedure relating to the application or patent.
Section 34 requires the request to include petition, applicant name and other data, inventor, agent, and title of the invention.
Section 35.1 requires disclosure sufficiently clear and complete for a person skilled in the art to carry out the invention; where the application concerns a microbiological process/product using a micro-organism that cannot be sufficiently disclosed in the application and is not available to the public, the application must be supplemented by a deposit of such material with an international depository institution.
Section 36.1 requires one or more claims defining the matter for protection, each clear and concise and supported by the description.
Section 37 requires an abstract of preferably not more than one hundred fifty (150) words, summarizing disclosure and drafted to allow clear understanding of technical problem, gist of solution and principal uses; the abstract serves for technical information.
Section 38.1 requires unity of invention: one invention only or group forming a single general inventive concept.
Section 38.2 allows restriction when independent inventions are not a single general inventive concept; it provides for divisional applications treated as filed on the same day as the first application if filed within four (4) months after the division requirement becomes final, or within additional time not exceeding four (4) months, and divisional applications must not go beyond disclosure in the initial application.

Filing date, formalities, search, publication

Section 40.1 defines patent filing date as the date the Office receives at least: an express or implicit indication seeking a Philippine patent; information identifying the applicant; and a description of the invention and one or more claims in Filipino or English.
Section 40.2 requires that if any element in Section 40.1 is not submitted within the period set by the Regulations, the application is considered withdrawn.
Section 41 requires the Office to examine whether requirements for grant of filing date are satisfied; if the filing date cannot be accorded, the applicant must be given opportunity to correct deficiencies under implementing Regulations; if all elements are received later, filing date is the date when all elements are received; if deficiencies are not remedied within the prescribed time limit, the application is considered withdrawn.
Section 42.1 provides that after filing date is accorded and required fees are paid on time, the applicant must comply with formal requirements under Section 32 and the Regulations within the prescribed period, otherwise the application is considered withdrawn.
Section 42.2 provides that Regulations determine the procedure for re-examination and revival of an application and appeal to the Director of Patents from any final action by the examiner.
Section 43 requires classification and search once formal requirements are complied with, to determine prior art.
Section 44.1 requires publication in the IPO Gazette together with a search document citing prior art after expiration of eighteen (18) months from filing date or priority date.
Section 44.2 provides that after publication, any interested party may inspect application documents filed with the Office.
Section 44.3 authorizes the Director General, subject to approval of the Secretary of Trade and Industry, to prohibit or restrict publication if prejudicial to national security and interests of the Republic of the Philippines.
Section 45 requires confidentiality before publication: unpublished patent applications and related documents must not be made available for inspection without the applicant’s consent.
Section 46 confers provisional rights after publication: the applicant has rights of a patentee under Section 76 against a person who, without authorization, exercises rights conferred under Section 71 in relation to the invention in the published application, if the person had actual knowledge of the published application or received written notice identifying the invention by serial number; an action cannot be filed until after patent grant and within four (4) years from the acts complained of.
Section 47 allows third parties after publication to present written observations on patentability; the Office communicates observations to the applicant, acknowledges them, and puts them in the application file.
Section 48.1 deems an application withdrawn unless within six (6) months from publication date, a written request for substantive examination is filed and fees are paid on time to determine whether requirements of Sections 21 to 27 and 32 to 39 are met.
Section 48.2 provides that withdrawal of the request for examination is irrevocable and does not authorize refund of any fee.
Section 49 permits amendment during examination only if it does not include new matter outside disclosure scope of the application as filed.

Grant, refusal, patent effect, term, and renewal

Section 50.1 requires grant if the application meets Act requirements, subject to all fees paid on time.
Section 50.2 deems applications withdrawn if required fees for grant and printing are not paid in due time.
Section 50.3 provides that a patent takes effect on the date of publication of the grant in the IPO Gazette.
Section 51.1 provides that final refusal by the examiner is appealable to the Director under this Act.
Section 51.2 requires Regulations to provide the procedure for appeal from Director’s refusal action.
Section 52.1 requires publication of the patent grant with other related information in the IPO Gazette within time prescribed by Regulations.
Section 52.2 provides that interested parties may inspect complete description, claims, and drawings on file.
Section 53 requires that the patent be issued in the name of the Republic of the Philippines under the Office seal, signed by the Director, and registered with relevant description, claims and drawings in the Office records.
Section 54 fixes patent term at twenty (20) years from the filing date of the application.
Section 55.1 requires annual fees to maintain the application or patent: payable upon expiration of four (4) years from the date the application was published under Section 44 and each subsequent anniversary; payment may be made within three (3) months before due date; and obligation terminates if application is withdrawn, refused, or cancelled.
Section 55.2 provides that non-payment renders application withdrawn or patent lapsed from the day following expiration of the period in which annual fees were due; notice is published in IPO Gazette and lapse recorded in the Register.
Section 55.3 grants a grace period of six (6) months upon payment of prescribed surcharge for delayed payment.
Section 56.1 allows surrender of a patent by the owner with consent of all persons with recorded grants/licenses/other rights in and to the patent and covered invention, for cancellation.
Section 56.3 provides that if the Office accepts surrender, the patent ceases to have effect as from publication of notice of acceptance in IPO Gazette; however, no infringement action lies and no right to compensation accrues for any use before that day for government services.
Section 57 allows the Director to correct without fee mistakes in a patent incurred through fault of the Office when clearly disclosed in Office records.
Section 58 allows correction on request of an interested person and payment of prescribed fee for formal and clerical mistakes not incurred through Office fault.
Section 59.1 gives the patent owner right to request changes to limit protection, correct obvious mistakes or clerical errors, and correct other good-faith mistakes/errors; it prohibits requests after two (2) years from grant where change would broaden protection, and it preserves rights of third parties who relied on the patent as published.
Section 59.2 forbids patent changes that would result in disclosure beyond disclosure contained in the application filed.
Section 59.3 requires publication of the changed patent by the Office to the extent of changes made.
Section 60 requires amendments/corrections by certificate authenticated by Office seal and signed by the Director attached to the patent; notice of amendment/correction published in the IPO Gazette and the Office copies must include a copy of the certificate.

Cancellation proceedings and effects

Section 61.1 allows any interested person, upon payment of required fee, to petition to cancel a patent or claims (or parts) on grounds that: what is claimed is not new or patentable; the patent does not disclose the invention clearly and completely for a person skilled in the art to carry out it; or the patent is contrary to public order or morality.
Section 61.2 allows cancellation to the extent only of the affected claims or parts when grounds relate to some claims/parts.
Section 62 requires petitions for cancellation to be written, verified by petitioner (or person in his behalf who knows facts), specify grounds and facts relied upon, and be filed with the Office; it also requires attachment of supporting printed publications/patents of other countries and supporting documents mentioned, with English translation if not in English.
Section 63 requires that upon filing a cancellation petition, the Director of Legal Affairs serve notice to the patentee and all persons with recorded grants/licenses or other rights, title or interest, with notice of date of hearing and publication in IPO Gazette of the petition filing.
Section 64 provides that in highly technical issues, the Director of Legal Affairs may order, on motion of any party, that a committee of the Director of Legal Affairs (as chairman) plus two members with technology expertise hear and decide; committee decisions are appealable to the Director General.
Section 65.1 requires that if the committee proves a case for cancellation, it shall order cancellation of the patent or specified claims.
Section 65.2 allows maintenance as amended if, considering amendments made during proceedings, requirements are met, subject to payment of printing fee within time limits prescribed by Regulations.
Section 65.3 provides that failure to pay the printing fee leads to revocation.
Section 65.4 requires publication, when patent is amended under Section 65.2, of abstract, representative claims, and drawings indicating amendments at the same time as publication of mention of the cancellation decision.
Section 66 states that rights conferred by cancelled patent or claims terminate; notice of cancellation is published in the IPO Gazette; and cancellation decisions/orders by Director of Legal Affairs are immediately executory even pending appeal unless restrained by the Director General.

Patentee rights, infringement, limitations

Section 71.1 grants exclusive rights to the patent owner: for patented products, to restrain/prohibit/prevent unauthorized making, using, offering for sale, selling, or importing; for patented processes, to restrain/prevent/prohibit unauthorized use of the process and unauthorized manufacturing, dealing in, using, selling or offering for sale, or importing products obtained directly or indirectly from such process.
Section 71.2 recognizes patent owner rights to assign/transfer by succession and to conclude licensing contracts.
Section 72 limits patent rights by allowing third parties to perform acts without authorization under specified circumstances, including