Discovered the next water car? Make sure you protect it. But before proceeding to the patent office, take note of the law.
1. PATENTABLE MATTERS
Patentable Inventions. — Any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable shall be Patentable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing. (Section 21)
Non-Patentable Inventions. — The following shall be excluded from patent protection:
22.1. Discoveries, scientific theories and mathematical methods;
22.2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;
22.3. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. This provision shall not apply to products and composition for use in any of these methods;
22.4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes.
Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis protection of plant varieties and animal breeds and a system of community intellectual rights protection:
22.5. Aesthetic creations; and
22.6. Anything which is contrary to public order or morality. (Section 22)
2. NOVELTY REQUIREMENT
Novelty. — An invention shall not be considered new if it forms part of a prior art. (Section 23)
Prior Art. — Prior art shall consist of:
24.1. Everything which has been made available to the public anywhere in the world, before the filing date or the priority date of the application claiming the invention; and
24.2. The whole contents of an application for a patent, utility model, or industrial design registration, published in accordance with this Act, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application: Provided, That the application which has validly claimed the filing date of an earlier application under Section 31 of this Act, shall be prior art with effect as of the filing date of such earlier application: Provided further, That the applicant or the inventor identified in both applications are not one and the same. (Section 24)
3. NON-PREJUDICIAL DISCLOSURE
The disclosure of information contained in the application during the twelve (12) months preceding the filing date or the priority date of the application shall not prejudice the applicant on the ground of lack of novelty if such disclosure was made by:
A patent office and the information was contained (a) in another application filed by the inventor and should not have been disclosed by the office, or (b) in an application filed without the knowledge or consent of the inventor by a third party which obtained the information directly or indirectly from the inventor; or
A third party which obtained the information directly or indirectly from the inventor. (Section 25.1)
25.2. For the purposes of Subsection 25.1, “inventor” also means any person who, at the filing date of application, had the right to the patent. (n)
4. INVENTIVE STEP
Inventive Step. — An invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention. (Section 26)
5. INDUSTRIAL APPLICABILITY REQUIREMENT
Industrial Applicability. — An invention that can be produced and used in any industry shall be industrially applicable. (n)
6. RIGHT TO A PATENT
Right to a Patent. — The right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or more persons have jointly made an invention, the right to a patent shall belong to them jointly. (Section 28)
7. FIRST-TO-FILE RULE
If two (2) or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest priority date. (Section 29)
8. OWNERSHIP OF COMMISSIONED WORK
30.1. The person who commissions the work shall own the patent, unless otherwise provided in the contract.
30.2. In case the employee made the invention in the course of his employment contract, the patent shall belong to:
The employee, if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer.
The employer, if the invention is the result of the performance of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary. (Section 30)
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9. RIGHT OF PRIORITY
An application for patent filed by any person who has previously applied for the same invention in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing the foreign application: Provided, That:
- the local application expressly claims priority;
- it is filed within twelve (12) months from the date the earliest foreign application was filed; and
- a certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing in the Philippines. (Section 31)
10. UNITY OF INVENTION
38.1. The application shall relate to one invention only or to a group of inventions forming a single general inventive concept.
38.2. If several independent inventions which do not form a single general inventive concept are claimed in one application, the Director may require that the application be restricted to a single invention. A later application filed for an invention divided out shall be considered as having been filed on the same day as the first application: Provided, That the later application is filed within four (4) months after the requirement to divide becomes final or within such additional time, not exceeding four (4) months, as may be granted: Provided further, That each divisional application shall not go beyond the disclosure in the initial application.
38.3. The fact that a patent has been granted on an application that did not comply with the requirement of unity of invention shall not be a ground to cancel the patent. (Section 38)
11. PUBLICATION OF PATENT APPLICATIONS
44.1. The patent application shall be published in the IPO Gazette together with a search document established by or on behalf of the Office citing any documents that reflect prior art, after the expiration of eighteen ( 18) months from the filing date or priority date.
44.2. After publication of a patent application, any interested party may inspect the application documents filed with the Office.
44.3. The Director General subject to the approval of the Secretary of Trade and Industry, may prohibit or restrict the publication of an application, if in his opinion, to do so would be prejudicial to the national security and interests of the Republic of the Philippines. (Section 44)
12. STATUS BEFORE PUBLICATION
A patent application, which has not yet been published, and all related documents, shall not be made available for inspection without the consent of the applicant. (Section 45)
13. RIGHTS CONFERRED BY PUBLICATION
(Section 46) The applicant shall have all the rights of a patentee under Section 76 against any person who, without his authorization, exercised any of the rights conferred under Section 71 of this Act in relation to the invention claimed in the published patent application, as if a patent had been granted for that invention: Provided, That the said person had:
46.1. Actual knowledge that the invention that he was using was the subject matter of a published application; or
46.2. Received written notice that the invention that he was using was the subject matter of a published application being identified in the said notice by its serial number: Provided, That the action may not be filed until after the grant of a patent on the published application and within four (4) years from the commission of the acts complained of. (n)
14. THIRD PARTY OBSERVATION
Following the publication of the patent application, any person may present observations in writing concerning the patentability of the invention. Such observations shall be communicated to the applicant who may comment on them. The Office shall acknowledge and put such observations and comment in the file of the application to which it relates. (Section 47)
15. SUBSTANTIVE EXAMINATION
SECTION 48. Request for Substantive Examination.
48.1. The application shall be deemed withdrawn unless within six (6) months from the date of publication under Section 41, a written request to determine whether a patent application meets the requirements of Sections 21 to 27 and Sections 32 to 39 and the fees have been paid on time.
48.2. Withdrawal of the request for examination shall be irrevocable and shall not authorize the refund of any fee. (n)
16. AMENDMENT OF APPLICATION
An applicant may amend the patent application during examination: Provided, That such amendment shall not include new matter outside the scope of the disclosure contained in the application as filed. (Section 49)
17. EFFECTIVE DATE OF PATENT
50.1. If the application meets the requirements of this Act, the Office shall grant the patent: Provided, That all the fees are paid on time.
50.2. If the required fees for grant and printing are not paid in due time, the application shall be deemed to be withdrawn.
50.3. A patent shall take effect on the date of the publication of the grant of the patent in the IPO Gazette. (Section 50)
18. TERM OF PATENT
Term of Patent. — The term of a patent shall be twenty (20) years from the filing date of the application. (Section 54)
19. CANCELLATION OF PATENT
61.1. Any interested person may, upon payment of the required fee, petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds:
That what is claimed as the invention is not new or Patentable;
That the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art; or
That the patent is contrary to public order or morality.
61.2. Where the grounds for cancellation relate to some of the claims or parts of the claim, cancellation may be effected to such extent only. (Section 61)
20. REMEDY OF INVENTOR
If a person, who was deprived of the patent without his consent or through fraud is declared by final court order or decision to be the true and actual inventor, the court shall order for his substitution as patentee, or at the option of the true inventor, cancel the patent, and award actual and other damages in his favor if warranted by the circumstances. (Section 68)
RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS
21. PATENT RIGHTS
Rights Conferred by Patent (Section 71)
71.1. A patent shall confer on its owner the following exclusive rights:
(a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product;
(b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any unauthorized person or entity from using the process, and from manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from such process.
71.2. Patent owners shall also have the right to assign, or transfer by succession the patent, and to conclude licensing contracts for the same. (Sec. 37, R.A. No. 165a)
22. LIMITATION OF PATENT RIGHTS
(Section 72) Limitations of Patent Rights. — The owner of a patent has no right to prevent third parties from performing, without his authorization, the acts referred to in Section 71 hereof in the following circumstances:
72.1. (DOCTRINE OF NATIONAL EXHAUSTION) Using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar as such use is performed after that product has been so put on the said market;
72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose: Provided, That it does not significantly prejudice the economic interests of the owner of the patent;
72.3. Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention;
72.4. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared;
72.5. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other country entering the territory of the Philippines temporarily or accidentally: Provided, That such invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not used for the manufacturing of anything to be sold within the Philippines. (Secs. 38 and 39, R.A. No. 165a)
23. PRIOR USER
73.1. Notwithstanding Section 72 hereof, any prior user, who, in good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business, before the filing date or priority date of the application on which a patent is granted, shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect.
73.2. The right of the prior user may only be transferred or assigned together with his enterprise or business, or with that part of his enterprise or business in which the use or preparations for use have been made. (Section 73)
24. USE OF INVENTION BY GOVERNMENT
SECTION 74. Use of Invention by Government.
74.1. A Government agency or third person authorized by the Government may exploit the invention even without agreement of the patent owner where:
(a) The public interest, in particular, national security, nutrition, health or the development of other sectors, as determined by the appropriate agency of the government, so requires; or
(b) A judicial or administrative body has determined that the manner of exploitation, by the owner of the patent or his licensee is anti-competitive.
74.2. The use by the Government, or third person authorized by the Government shall be subject, mutatis mutandis, to the conditions set forth in Sections 95 to 97 and 100 to 102. (Sec. 41, R.A. No. 165a)
25. DOCTRINE OF EQUIVALENTS
For the purpose of determining the extent of protection conferred by the patent, due account shall be taken of elements which are equivalent to the elements expressed in the claims, so that a claim shall be considered to cover not only all the elements as expressed therein, but also equivalents. (Section 75.2)
26. CIVIL ACTION FOR INFRINGEMENT
SECTION 76. CIVIL ACTION FOR INFRINGEMENT.
76.1. The making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorization of the patentee constitutes patent infringement.
76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented invention, whose rights have been infringed, may bring a civil action before a court of competent jurisdiction, to recover from the infringer such damages sustained thereby, plus attorney’s fees and other expenses of litigation, and to secure an injunction for the protection of his rights.
76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty, the court may award by way of damages a sum equivalent to reasonable royalty.
76.4. The court may, according to the circumstances of the case, award damages in a sum above the amount found as actual damages sustained: Provided, That the award does not exceed three (3) times the amount of such actual damages.
76.5. The court may, in its discretion, order that the infringing goods, materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed, without compensation.
76.6. Anyone who actively induces the infringement of a patent or provides the infringer with a component of a patented product or of a product produced because of a patented process knowing it to be especially adopted for infringing the patented invention and not suitable for substantial non-infringing use shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer. (Sec. 42, R.A. No. 165a)
27. CRIMINAL ACTION FOR INFRINGEMENT
Criminal Action for Repetition of Infringement. — If infringement is repeated by the infringer or by anyone in connivance with him after finality of the judgment of the court against the infringer, the offenders shall, without prejudice to the institution of a civil action for damages, be criminally liable therefor and, upon conviction, shall suffer imprisonment for the period of not less than six (6) months but not more than three (3) years and/or a fine of not less than One hundred thousand pesos (P100,000) but not more than Three hundred thousand pesos (P300,000), at the discretion of the court. The criminal action herein provided shall prescribe in three (3) years from date of the commission of the crime. (Section 84)
28. NOTICE TO INFRINGER
Damages cannot be recovered for acts of infringement committed before the infringer had known, or had reasonable grounds to know of the patent. It is presumed that the infringer had known of the patent if on the patented product, or on the container or package in which the article is supplied to the public, or on the advertising material relating to the patented product or process, are placed the words “Philippine Patent” with the number of the patent. (Section 80)
Proceed With the Patent
Now, if your product satisfies the elements of an invention and is not prohibited above, then you must prepare the necessary documents which will be submitted with the IPO. They are:
1. Request for the Grant of Patent (this is a form provided by the IPO)
2. Description of the Invention (Specifications and Claims)
3. Formal Drawings
4. Filing Fee (Filing Fee=P1,800; Each sheet in excess of 30= P15 per sheet; Each claim in excess of 5= P150 per claim; Request for Substantive Examination= P1,750)
The description of the invention must contain the Abstract, Background of the Invention, Summary of the Invention, description of the drawings, detailed description of the invention and the claims. It must be emphasized that the claims are important because they enumerate the scope of the invention and the protection thereto.
For a quick view of the process, click here