Philippine Intellectual Property Code

Intellectual Property Office and structure

The Intellectual Property Office (IPO) is created to administer and implement State policies under the Code (Section 5).
The IPO’s principal functions include:
- Examining patent applications and granting letters patent for inventions, and registering utility models and industrial designs (Section 5.1).
- Examining and registering marks, geographic indications, and integrated circuits (Section 5.1).
- Registering technology transfer arrangements and settling disputes involving technology transfer payments covered in Part II, Chapter IX on voluntary licensing, and developing strategies to promote technology transfer (Section 5.1).
- Promoting patent information use, publishing issued/approved patents, marks, utility models, industrial designs, and registered technology transfer arrangements in the IPO’s publication (Section 5.1).
- Administratively adjudicating contested proceedings affecting intellectual property rights (Section 5.1).
- Coordinating with other government agencies and the private sector to strengthen intellectual property protection (Section 5.1).
The IPO keeps custody of all records, books, drawings, specifications, documents, and other papers and things relating to applications filed with the Office (Section 5.2).
The IPO is headed by a Director General assisted by two (2) Deputies Director General (Section 6.1).
The IPO is divided into six (6) Bureaus:
- Bureau of Patents
- Bureau of Trademarks
- Bureau of Legal Affairs
- Documentation, Information and Technology Transfer Bureau
- Management Information System and EDP Bureau
- Administrative, Financial and Personnel Services Bureau (Section 6.2).
The Director General, Deputies Director General, Directors, and Assistant Directors are appointed by the President; other officers and employees are appointed by the Secretary of Trade and Industry under the Civil Service law (Section 6.3).

Director General powers, qualifications, term

The Director General manages and directs all IPO functions and activities, including promulgating implementing rules and regulations (Section 7.1).
The Director General is subject to the supervision of the Secretary of Trade and Industry when proposing policies and standards requiring statutory enactment, coordinating with government agencies on enforcement, recognizing attorneys/agents or representatives before the Office, and establishing IPO fees for filing/processing applications and services/materials furnished (Section 7.1).
The Director General has exclusive appellate jurisdiction over decisions of:
- the Director of Legal Affairs, Director of Patents, Director of Trademarks, and the Director of Documentation, Information and Technology Transfer Bureau (Section 7.1).
Appeals from the Director General’s decisions are governed by:
- Court of Appeals for decisions in respect of the Director of Patents and Director of Trademarks (Section 7.1).
- Secretary of Trade and Industry for decisions in respect of the Director of Documentation, Information and Technology Transfer Bureau (Section 7.1).
The Director General has original jurisdiction to resolve disputes relating to the terms of a license involving the author’s right to public performance or other communication of the work, with decisions appealable to the Secretary of Trade and Industry (Section 7.1).
The Director General and Deputies Director General must be:
- natural born citizens of the Philippines
- at least thirty-five (35) years of age on appointment day
- holders of a college degree
- of proven competence, integrity, probity, and independence (Section 7.2).
At least the Director General and at least one (1) Deputy Director General must be members of the Philippine Bar with at least ten (10) years of law practice (Section 7.2).
Their selection must consider balanced representation across intellectual property fields as far as practicable (Section 7.2).
The Director General and Deputies are appointed by the President for a term of five (5) years, eligible for reappointment only once (Section 7.3).
The first Director General’s first term is seven (7) years; appointments to vacancies are only for the unexpired term of the predecessor (Section 7.3).

IPO bureaus and administrative functions

The Bureau of Patents searches and examines patent applications, grants patents, registers utility models and industrial designs and integrated circuits, and conducts studies/research to assist patent policy formulation (Section 8).
The Bureau of Trademarks searches and examines mark and geographic indication applications and issues certificates of registration, and conducts studies/research to assist trademark policy formulation (Section 9).
The Bureau of Legal Affairs:
- Hears and decides opposition to mark registration applications, cancellation of trademarks, cancellation of patents/utility models/industrial designs subject to Section 64, and petitions for compulsory licensing of patents (Section 10.1).
- Exercises 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 may grant provisional remedies in accordance with the Rules of Court (Section 10.2(a)).
- Can hold and punish for contempt those who disregard orders or writs issued in the course of proceedings (Section 10.2(a)).
After formal investigation, the Director for Legal Affairs may impose administrative penalties including, among others:
- a cease and desist order with a compliance report deadline (Section 10.2(b))
- acceptance of voluntary assurance of compliance/discontinuance (including assurances to comply, refrain from unlawful/unfair acts, recall/replace/repair/refund defective goods, and reimburse complainant expenses and costs) (Section 10.2(b))
- requiring periodic compliance reports and a bond to guarantee compliance (Section 10.2(b))
- condemnation or seizure of infringing products with disposal options (sale, donation to distressed local governments or charitable/relief institutions, exportation, recycling, or combinations) under Director guidelines (Section 10.2(b))
- forfeiture of paraphernalia and properties used in the offense (Section 10.2(b))
- administrative fines: not less than Five thousand pesos (P5,000) nor more than One hundred fifty thousand pesos (P150,000), plus an additional fine of not more than One thousand pesos (P1,000) for each day of continuing violation (Section 10.2(b))
- cancellation or suspension (not exceeding one (1) year) of permits/licenses/authorities/registrations; withholding permits/licenses/authorities/registrations being secured; assessment of damages; censure; and other analogous penalties/sanctions (Section 10.2(b)).
The Director General may establish by regulations the procedure for implementing Section 10 (Section 10.3).

Fees, publications, and integrity rules

The Director General may retain, without separate approval, all fees, fines, royalties, and other charges collected by the IPO under laws it administers, subject only to existing accounting and auditing rules, for IPO operations; the retained amount is in addition to the IPO’s annual budget and is deposited and maintained in a separate account or fund disbursable by the Director General (Section 14.1).
After five (5) years from the Act’s coming into force, the Director General must, subject to approval of the Secretary of Trade and Industry, determine if collected fees and charges are sufficient to meet the IPO’s budget; if sufficient, the IPO ceases to receive National Government annual budget funds; otherwise retention continues until certified sufficiency (Section 14.2).
The Director General may obtain technical, scientific, and qualified personnel from other government departments, bureaus, offices, agencies, instrumentalities, and government-owned or controlled corporations when necessary for matters submitted to the IPO for enforcement of the Act (Section 15).
The IPO has a seal whose form and design are approved by the Director General (Section 16).
The Director General must print and make available for distribution pamphlet copies of the Code and pertinent laws, executive orders, and information circulars relating to IPO jurisdiction (Section 17).
Matters required to be published under the Code are published in the IPO’s official publication called the IPO Gazette (Section 18).
IPO officers and employees may not apply or act as attorneys or patent agents for patent/utility model/industrial design/mark registration, and may not acquire any patent/utility model/design registration/mark or right, title, or interest therein (except by hereditary succession) during employment and for one (1) year thereafter (Section 19).

Patents: core standards and patentability

A patent is available for patentable inventions, meaning technical solutions of problems in any field of human activity that are:
- new
- involve an inventive step
- industrially applicable (Section 21).
Patentable subject matter may relate to a product, process, or improvement of any of them (Section 21).
The following are excluded from patent protection:
- discoveries, scientific theories, and mathematical methods (Section 22.1)
- schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers (Section 22.2)
- methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body; the exclusion does not apply to products and compositions for use in those methods (Section 22.3)
- plant varieties or animal breeds or essentially biological process for production of plants or animals; the exclusion does not apply to micro-organisms and non-biological and microbiological processes (Section 22.4)
- aesthetic creations (Section 22.5)
- anything contrary to public order or morality (Section 22.6).
An invention is not considered new if it forms part of prior art (Section 23).
Prior art consists of:
- everything made available to the public anywhere in the world before the filing date or priority date (Section 24.1)
- the whole contents of earlier-filed applications for a patent, utility model, or industrial design in the Philippines that are published under the Code, with an earlier filing/priority date; provided a valid earlier claim of filing date under Section 31 gives prior-art effect as of the earlier application’s filing date, and the applicant/inventor in both applications are not the same (Section 24.2).
Non-prejudicial disclosure: disclosure of application information during the twelve (12) months preceding the filing date or priority date does not prejudice novelty if made by:
- the inventor (Section 25.1(a)), or
- a patent office for another application filed by the inventor that should not have been disclosed, or for an application filed without the inventor’s knowledge or consent by a third party who obtained the information directly or indirectly from the inventor (Section 25.1(b)), or
- a third party who obtained the information directly or indirectly from the inventor (Section 25.1(c)).
For non-prejudicial disclosure, “inventor” includes any person who had the right to the patent at the filing date (Section 25.2).
Inventive step exists when, considering prior art, the invention is not obvious to a person skilled in the art at the filing date or priority date (Section 26).
Industrial applicability exists when the invention can be produced and used in any industry (Section 27).

Right to a patent and priority rules

The right to a patent belongs to the inventor, his heirs, or assigns; if jointly made, the right belongs to the joint inventors (Section 28).
Under the first to file rule, if multiple persons independently made the invention, the right belongs to the person who filed the application, or if multiple applications are filed, to the applicant with the earliest filing date or earliest priority date (Section 29).
For inventions created pursuant to a commission:
- the person who commissions the work owns the patent unless the contract provides otherwise (Section 30.1).
- for employee inventions made in the course of an employment contract, patent ownership depends on whether the inventive activity is part of regular duties:
  - employee owns if inventive activity is not part of regular duties even if time/facilities/materials are used (Section 30.2(a))
  - employer owns if invention results from performance of regularly-assigned duties unless there is an agreement (express or implied) to the contrary (Section 30.2(b)).
Priority claim: an application filed in the Philippines by a person who previously filed the same invention in another country (with treaty/convention/law affording similar privileges to Filipino citizens) is considered filed as of the foreign filing date if:
- the local application expressly claims priority
- it is filed within twelve (12) months from the earliest foreign filing
- a certified copy of the foreign application with an English translation is filed within six (6) months from Philippine filing (Section 31).

Patent application: required contents and formalities

“Patent application” means an application for a patent for an invention except in the Chapters where “application” means utility model and industrial design, respectively (Section 20.5).
“Priority date” is the foreign filing date of the application for the same invention referred to in Section 31 (Section 20.6).
A patent application must be in Filipino or English and contain:
- a request for grant of a patent
- a description of the invention
- drawings necessary for understanding the invention
- one or more claims
- an abstract (Section 32.1).
No patent may be granted unless the application identifies the inventor; if the applicant is not the inventor, the IPO may require submission of authority (Section 32.2).
If the applicant is not a resident of the Philippines, the applicant must appoint and maintain a resident agent or representative in the Philippines for service of notice or process in judicial or administrative matters relating to the application/patent (Section 33).
The request must contain a petition for grant, the applicant’s name and data, the inventor and the agent, and the title of the invention (Section 34).
Disclosure must be clear and complete enough for a person skilled in the art to carry it out; where the application concerns a microbiological process or product involving a micro-organism that cannot be sufficiently disclosed and such material is not available to the public, the application must be supplemented by a deposit with an international depository institution (Section 35.1).
The regulations prescribe the contents and order of the description (Section 35.2).
Claims must define the matter for which protection is sought, be clear and concise, and be supported by the description; regulations prescribe the manner of presenting claims (Section 36.1–36.2).
The abstract must summarize the disclosure and must be preferably not more than one hundred fifty (150) words; it must be drafted to allow clear understanding of the technical problem, gist of the solution, and principal uses; it serves for technical information (Section 37).
Unity of invention:
- the application must relate to one invention or a group of inventions forming a single general inventive concept (Section 38.1).
- if independent inventions are claimed without a single general inventive concept, the Director may require restriction to a single invention (Section 38.2).
- if division is required, a divisional application is treated as filed on the same day as the first application, provided it is filed within four (4) months after the division requirement becomes final or within additional time not exceeding four (4) months, and no divisional application may go beyond the initial disclosure (Section 38.2).
- grant of a patent on an application that did not comply with unity of invention is not ground to cancel the patent (Section 38.3).
On request of the Director, the applicant must furnish the filing date and number of any corresponding foreign patent application for the same or essentially same invention and other documents relating to that foreign application (Section 39).

Patent procedure: filing date, exams, publication, and examination request

A filing date is accorded only when the IPO receives at least:
- an express or implicit indication that a Philippine patent is sought
- information identifying the applicant
- a description of the invention and one or more claims in Filipino or English (Section 40.1).
If these elements are not submitted within the period set by the regulations, the application is considered withdrawn (Section 40.2).
The IPO examines whether the application satisfies filing date requirements; if filing date cannot be accorded, the applicant is allowed to correct deficiencies per implementing regulations; if all elements are not present, the filing date is when all are received; if deficiencies are not remedied within the prescribed time limit, the application is deemed withdrawn (Section 41).
After filing date and required fees are timely paid, the applicant must comply with formal requirements specified by Section 32 and regulations within the prescribed period; otherwise the application is deemed withdrawn (Section 42.1).
Regulations determine procedures for re-examination and revival of an application and appeal to the Director of Patents from any final examiner action (Section 42.2).
After compliance with formal requirements, the application is classified and a search is conducted to determine prior art (Section 43).
Publication:
- the application is published in the IPO Gazette with a search document after eighteen (18) months from the filing date or priority date (Section 44.1).
- after publication, any interested party may inspect application documents filed with the IPO (Section 44.2).
- the Director General (subject to approval of the Secretary of Trade and Industry) may prohibit or restrict publication if prejudicial to national security and the interests of the Republic (Section 44.3).
Confidentiality before publication: an unpublished application and related documents are not available for inspection without the applicant’s consent (Section 45).
Rights after publication (provisional rights):
- the applicant has all rights of a patentee under Section 76 against any person who, without authorization, exercised rights conferred under Section 71 in relation to the invention claimed in the published application, as if a patent had been granted, provided the person had actual knowledge or received written notice identifying the invention by serial number (Section 46.1–46.2).
- such action may not be filed until after the grant of a patent and within four (4) years from the commission of the acts (Section 46).
Observations: after publication, any person may present written observations on patentability; the IPO communicates observations to the applicant, acknowledges and places them in the file, and allows applicant comments (Section 47).
Substantive examination request:
- the application is deemed withdrawn unless, within six (6) months from the date of publication under Section 41, the applicant files a written request to determine whether the application meets patentability requirements under Sections 21 to 27 and Sections 32 to 39 and pays required fees on time (Section 48.1).
- withdrawing the request is irrevocable and does not authorize refund of any fee (Section 48.2).
Amendments:
- an applicant may amend during examination, but amendments cannot include new matter outside the scope of disclosure in the filed application (Section 49).
Grant of patent:
- if requirements are met, the IPO grants the patent provided all fees are paid on time (Section 50.1).
- if grant and printing fees are not paid on time, the application is deemed withdrawn (Section 50.2).
- a patent takes effect on the date of publication of the grant in the IPO Gazette (Section 50.3).
Refusal and appeal:
- final examiner refusal is appealable to the Director (Section 51.1).
- regulations provide the procedure for appeal from Director refusal action (Section 51.2).
Publication upon grant:
- grant plus related information is published in the IPO Gazette within time prescribed by regulations (Section 52.1).
- interested parties may inspect the complete description, claims, and drawings of the patent on file (Section 52.2).
Patent form and registration:
- patents are issued in the name of the Republic under the IPO seal, signed by the Director, and registered with the description/claims/drawings in IPO books and records (Section 53).
Patent term and fees:
- term is twenty (20) years from the filing date (Section 54).
- annual fees must be paid upon expiration of four (4) years from the publication date under Section 44 and on each subsequent anniversary; payment may be made within three (3) months before due date (Section 55.1).
- obligation ends if the application is withdrawn, refused, or cancelled (Section 55.1).
- non-payment makes the application withdrawn or the patent lapsed from the day following expiration of the period due (Section 55.2).
- notice of withdrawal/lapse is published in the IPO Gazette and recorded in the register (Section 55.2).
- a six (6) months grace period applies for annual fee payment upon payment of the prescribed surcharge for delayed payment (Section 55.3).

Patent rights, limitations, and infringement remedies

Exclusive rights conferred by a patent include:
- for patented products: restrain/prohibit/prevent unauthorized making, using, offering for sale, selling, or importing (Section 71.1).
- for patented processes: restrain/prevent/prohibit unauthorized use of the process and unauthorized manufacturing, dealing in, using, selling, offering for sale, or importing products obtained directly or indirectly from such process (Section 71.1).
Patentees also have rights to assign/transfer by succession and conclude licensing contracts (Section 71.2).
Limitations:
- patent owners cannot prevent third parties from doing the Section 71 acts when:
  - the patented product is put on the Philippines market by the owner or with the owner’s express consent, insofar as use occurs after that market placement (Section 72.1)
  - acts are private and on a noncommercial scale or noncommercial purpose, provided no significant prejudice to the owner’s economic interests (Section 72.2)
  - acts are for experiments relating to the patented invention (Section 72.3)
  - preparation for individual cases of medicine in a pharmacy or by a medical professional according to medical prescription, or acts concerning the prepared medicine (Section 72.4)
  - use in a ship, vessel, aircraft, or land vehicle of any other country entering the Philippines temporarily or accidentally, exclusively for the needs of the vehicle and not for manufacturing anything to be sold within the Philippines (Section 72.5).
Prior user rights:
- a prior user who in good faith used the invention or made serious preparations before the filing or priority date may continue use within the territory where the patent produces effect (Section 73.1).
- the prior user right may be transferred/assigned only together with the enterprise or business, or the part where use/preparations were made (Section 73.2).
Government use without agreement:
- government agencies or authorized third persons may exploit a patent even without agreement where public interest requires exploitation (notably national security, nutrition, health, or development of other sectors as determined by the appropriate government agency) or where a judicial/administrative body determines the patentee/licensee’s manner of exploitation is anti-competitive (Section 74.1).
- government use is subject to conditions set forth in Sections 95 to 97 and 100 to 102 (Section 74.2).
Claim scope:
- extent of protection is determined by the claims and interpreted in light of description and drawings (Section 75.1).
- equivalents are considered such that claims cover not only expressed elements but also equivalents (Section 75.2).
Civil action for infringement:
- making/using/offering for sale/selling/importing a patented product, or a product obtained from a patented process, or using a patented process without authorization constitutes infringement (Section 76.1).
- a patentee or person with right/title/interest may sue in a competent court to recover damages (including attorney’s fees and other litigation expenses) and secure injunction (Section 76.2).
- if damages are inadequate or cannot be ascertained with reasonable certainty, the court may award damages equivalent to reasonable royalty (Section 76.3).
- courts may award damages above actual damages up to three (3) times actual damages (Section 76.4).
- courts may order infringing goods/materials/implements predominantly used in infringement be disposed of outside channels of commerce or destroyed without compensation (Section 76.5).
- contributory infringement: anyone who actively induces infringement or provides components especially adopted for infringement and not suitable for substantial non-infringing use is jointly and severally liable (Section 76.6).
Infringement actions by foreign nationals:
- a foreign national or juridical entity meeting Section 3 and not engaged in business in the Philippines may bring an infringement action whether or not licensed to do business under existing law (Section 77).
Process patent burden and product presumption:
- identical new products are presumed obtained by the patented process if there is substantial likelihood and the patent owner cannot determine the process used despite reasonable efforts; court orders defendant to prove difference while adopting measures to protect manufacturing and business secrets (Section 78).
Damages limitation:
- no damages are recoverable for infringement acts committed more than four (4) years before institution of the infringement action (Section 79).
- damages cannot be recovered for acts committed before the infringer knew or had reasonable grounds to know the patent; knowledge is presumed if the words “Philippine Patent” with the patent number are placed on the product, container/package, or advertising material relating to the patented product or process (Section 80).
Defenses in infringement action:
- defendant may