(Republic Act 8293, IP Code)

Historical Background of patents

The Romans introduced the concept of ownership of movable or immovable property but rarely recognized the exclusive rights of authors or inventors with respect to their creations or inventions.  It took the Venetians to enact in 1474 the first statute providing for patents for inventions.

England enacted the landmark Statute of Monopolies in 1624 which took away from the Monarchy the exclusive rights to exploit inventions and lodged them on the first inventor.

The United States adopted a patent system based on the Statute of Monopolies which was in turn adopted by the Philippines later on.

Republic Act No. 165,  the Patent Law, Which Took effect on June 20, 1947, established an independent  patent system for the country.  The Philippines acceded to the Paris Convention for the protection of industrial property as revised in Lisbon on September 27, 1965.  On December 14, 1994, the Philippines ratified the WTO Agreement On the Trade Related Aspects of intellectual Property Rights (TRIPS) On January 1, 1998, Republic Act 8293 (The IP Code) took effect.

Definitions

What are the purposes of the patent law?

A patent is granted to protect an article that is essentially better in same way than what was made before, or for a better way of making it.  The monopoly a patent gives can also extend to any other improved article or process which is better for the same reasons as that on which the patent is based.  In an extreme case, a patent can be wide enough and represent a big enough advance over earlier  ideas to give its owner a complete monopoly of an industry.  For instance, there have been patents giving, for a time, a monopoly of telephones, a monopoly of pneumatic tyres or a monopoly of transistors.  Very few patents are as important as that, but the existence of almost any patent will make it necessary for a competitor to do costly design work or even major research of his own rather than copy the actual product he wishes to imitate.

A patent is granted to protect an article that is essentially better in same way than what was made before, or for a better way of making it.  The monopoly a patent gives can also extend to any other improved article or process which is better for the same reasons as that on which the patent is based.  In an extreme case, a patent can be wide enough and represent a big enough advance over earlier  ideas to give its owner a complete monopoly of an industry.  For instance, there have been patents giving, for a time, a monopoly of telephones, a monopoly of pneumatic tyres or a monopoly of transistors.  Very few patents are as important as that, but the existence of almost any patent will make it necessary for a competitor to do costly design work or even major research of his own rather than copy the actual product he wishes to imitate.

The Paris Convention for the Protection of Industrial Property (Paris Convention) came into force in 1883.  It lays down certain provisions to which each member must conform (154 countries are members as of April 1, 1999)

6.1   Pursuant to the national treatment principle, Filipinos, as regards industrial property rights, enjoy the same rights and remedies granted by a member country of the Paris Convention to its nationals.  

6.2   A Filipino inventor who files an application for a patent in the Philippines, for example, on December 12, 1997, and also files within twelve (12) months from December 12, 1997 a second application for the same invention in a member-country of the Paris Convention, for example, on December 1, 1998, may claims as the priority date of the second application the filing date of his Philippine application which is December 12, 1997.  A publication or use of the invention that takes place within twelve (12) months from December 12, 1997 does not destroy the novelty of the second application.

6.3  Using the example in the preceding paragraph, pursuant to the principle of independence of patents, if the second application is rejected in that country, it does not affect the validity of the patent granted in the Philippines.

The TRIPS Agreement, one of the many agreements concluded during the Uruguay Round of Negotiations of the World Trade Organization (WTO), provides minimum standards for intellectual property rights, including patents, which each member of the WTO must incorporate into its national laws (the Philippines has until January 1, 2000 to do this).  It also mandates those set by the Paris Convention (1967) as regards patents and trademarks and the Berne Convention (1971) as regards copyright.  The WTO came into effect on January 1, 1995.  With the enactment of the IP Code, the Philippines complied with its commitments under the TRIPS as regards the protection of patents, industrial designs, trademarks and copyright.

For one, considering that the Philippines has in place one of the more comprehensive IP regimes in the Asia-Pacific region before the WTO Agreement came into force, the adoption by Asian countries of TRIPS norms and standards would contribute to bringing about a level playing field in our trade relations with them because their IP laws are now (or soon will be) at par with the IP Code.  Indonesia, for example, will have until January 1, 2000 to enact a legislation protecting industrial designs which will benefit many of our exports to that country.

No. They are basic principles in science and mathematics with a broad range of applications which cannot be appropriated by one individual enterprise because of its high costs and its fundamental interest to the entire community. It becomes appropriable only once it has been reduced to a specific practical application,  that is, to the invention of a specific technological teaching which is industrially applicable.

Computer programs are, in general copyright.  In other countries, programming techniques, as distinct from actual programs, are also not supposed to be patentable, but there are ways in which they can be made patentable.

12.1     Micro organisms

In the Chakrabarty case (1980), the U.S. Supreme Court had to decide the patentability of certain micro-organisms (which Dr. Chakrabarty had engineered to give them an appetite for eating oil slicks).  By a majority decision the Court held that a patent could be granted, stating that "anything under the sun that is made by man" was potentially patentable.  Accordingly, while there is no denying that living material can be patented, the fundamental principle, which holds equally true in Philippines is that one cannot patent "nature": one can only patent a product of human invention.

12.2     Animal varieties

The "oncomouse" (a mouse into which has been introduced a cancer-forming gene, making it a valuable experimental animal for testing anti-cancer drugs)  is "man-made"  and is clearly patentable under U.S. law.  Our IP Code, however, has the so-called "morality provision" and also a provision which bars the patenting of animal breeds per se, which should make the oncomouse unpatentable here.

12.3      Plant varieties

In the Philippines, they are not patentable but will be the  subject of sui generis protection. At present, the proposed plant varieties legislation is pending consideration by the Philippine Congress.

A question that often arises in the biotechnology is whether a natural molecule can be patented.  The answer is "no"! it is not possible to patent a molecule in exactly the same form in which it is known in nature - as the product would then lack novelty.  However, a long history of patent case law in Europe and the U.S., which is consistent with Philippine law, shows that it is possible to patent a product originating from natural sources in a form in which it does not occur naturally for example, in a highly purified form.  Thus, an antibiotic isolated from a micro-organism present in a soil sample is regarded as novel and, provided it exhibits a technical effect capable of industrial application', is not regarded as an unpatentable 'discovery' either.

An invention is not new if it has been disclosed or used in public, or sold in the market before the patent application for the market before the patent application for the invention is filed.  Most often, written disclosures of inventions are found in earlier filed and published patent applications or issued patents, utility models or industrial designs.  Patent examiners carry out a search of these disclosures to determine if the invention is new.

The most common mistake is to be unaware that premature disclosure or use of an invention before the filing of any patent application would destroy the novelty of an invention and thus completely  prejudice the chances of obtaining valid protection.

What disclosures do not prejudice the invention?

The IP Code provides that the following disclosures done within twelve (12) months preceding the filing date or priority date of the application will not prejudice the novelty of the invention:

• disclosure or use by the inventor (e.g. demonstrating the use of the invention in a trade fair), or

• when a Patent Office publishes the application by mistakes, or

• where the application that was published was filed without the consent of the inventor.

Even if the invention is new, to be patentable, it should meet the requirement of inventive step.  It should meet the requirement of inventive step.  It should not be obvious to a person who is familiar with (not a special knowledge of) the technology taught by the application at the time the application is filed.  It does not have to be a product of genius.  Our courts, for example considered patentable an improvement in the process of tile-making which has overcome the problem of producing decorative tiles with deep engraving but with sufficient durability.

To determine if the invention involves an inventive step, patent examiners compare it with related inventions disclosed in earlier filed and published applications.

When it can be applied for practical purposes.  The invention cannot be purely theoretical.  If the invention is intended to be a product, the product must be capable of being made.  And if the invention is intended to be a process, that process must be capable of being carried out-"used", as it is generally said - in practice.

19.1      In general.

The patent belongs to the inventor, his heir or assigns.  When two or more persons have made an invention, they will own the patent proportionately (i.e. if there are two inventors, each is entitled to one-half share).

19.2     If two (2) or more persons have made the invention separately and independently of each other (i.e. one did not copy the invention of the other)...

...the right to the patent shall belong to the person who files an application for such invention, or where two or more applications are filed for the same invention, to the application who has the earliest filing date (please refer to paragraph 35) or, the earliest priority date (please refer to paragraph 6.2).  This is known as the first to file rule.

19.3     Inventions pursuant to a commission

The person who commissions the work shall own the patent unless otherwise provided in the contract.

19.4    Employee's inventions

In case the employee made the invention in the course of his employment contract, the patent shall belong to:

     19.4.1   the employee, if the inventive activity is not a part of his regular duties even if he uses the time, facilities and materials of the employer.

     19.4.2   the employer, if the invention is the result of the performance of the employee's regularly-assigned duties, unless there is an agreement, express or implied, to the contrary.

Is the first to file system unfair to the true inventor?  If he was cheated of his right to a patent, what are his remedies?

The objective of the first to file system is to encourage inventors to file system is to encourage inventors to file an application for a patent as early as possible.  Coupled with the fact that the IP Code also mandates the publication of the application in the IPO Gazette eighteen (18) months from its filing date, this system facilitates the earlier transfer of technology.  Until an application for the invention is filed and published, the invention does not enjoy any protection and society is unaware of its importance and benefits.  Another objective of this system is to simplify resolving a dispute between two or more applicants claiming the same invention on the basis of determining which application has the earlier filing date.

While the true inventor who was cheated of his right to a patent under the system may not enjoin the IPO from processing the questioned application, he may ask the court, once the application granted, either to substitute him as patentee or to cancel the patent and ask for damages.

24.1    as to nationality

-   Filipino nationals

-   Foreign nationals or those domiciled or have a real and effective commercial establishment in a country which is bound establishment in a country which is bound by treaty (such as the Paris Convention and the TRIPS Agreement) to grant Filipinos the same rights it grants its own nationals

-   Foreign nationals whose country also accepts the patent applications of Filipinos

24.2    as to the legal personality of the applicant

-   the inventor or his attorney-in-act

-   the assignee of the inventor

25.1   If the applicant is a Philippine resident.

The applicant himself.  He may also delegate this task to an authorized representative.  Considering that he prosecution of patent applications constitutes "practice of law", only lawyers are authorized to represent applications to do this.

25.2   If the applicant is not a Philippine resident.

An applicant who is qualified to file a patent application in the Philippines but is not a resident of the Philippines must appoint and maintain a resident agent or representative, usually a legal practitioner.

26.1   In general

He should disclose in the "description" the title of the invention relates, the technical field to which the invention relates, and the background art.  The description must state solution to a technical problem and must clearly show the novel features of the invention compared with the background art.  It should be sufficiently clear and complete for it to be carried out by a person skilled in the art without extensive experimentation.  It usually indicates the experiments conducted and their results.  The presentation of models of the inventions is not essential.  He may provide drawings for a better understanding of the invention.

26.2   Micro-organisms

Where the application concerns a microbiological process or the products thereof involves the use of a micro-organism, because a written disclosure may not be enough to enable a person skilled in the art to carry out this kind of invention, the application should be supplemented by a deposit of such material with an international depositary institution.

On receipt of the application, an examiner checks if the application includes the following requirements to get the filing date:  the request for a Philippine patent; name and address of the applicant; description and claims of the invention in Filipino or English.  Note: payment of the filing fee is not included.

The date of filing is very important under the current "first to file system" because it serves to determine, in case of a dispute with another applicant for the same invention, who has the right to the patent.

The application, together with the results of the search (which contains a list of published patent applications or issued patents for inventions, which are identical or equivalent to those claimed by the application), will then be published in the IPO Gazette.  Making the invention known to the public serves several purposes viz:

(a)  Enable R&D institutions to re-orient or avoid unnecessary research activities on similar technology;

(b)   Allow the public to submit observations on the patentability of the invention (which will be noted by the Bureau of Patent).

None. It is however the obligation of the BP to keep it confidential.  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.

The inventor may indicate in the product that incorporates the invention a notice to the public that the application for a patent for it is still pending by the use of the words "Patent Pending".  This does not, however, confer any exclusive right to the applicant.

After its publication, is the application examined automatically to determine if it is patentable?

No.  Within six (6) months from the date of the aforesaid publication, the applicant must decide whether to request for examination of the application to determine patentability.  Usually, his decision would depend on the existence of patent applications or issued patents for similar inventions indicated in the search report published in the IPO Gazette.

The application is considered withdrawn if no request is made within that period.

Under the IP Code, these exclusive rights consist of:

(a)  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.

(b)  to assign or transfer by succession the patent and to conclude licensing contracts for the sale.

First, where the exploitation of the patent is done privately and on a non-commercial scale or for a non-commercial purposes.

Second, where the act of making or using the patent is for the sole purpose of scientific research and experiment.

Third, where the patented product was put on the market in the Philippines by the owner of the patent or with his authorization.  Putting on the market means sale (includes renting and gift).  By this sale, the buyer may use the product or possibly resell it within the Philippines without violating the exclusive right of the owner of the patent.  Sale outside of the Philippines of the patented product does not "exhaust" the patent rights in the Philippines.  Therefore, the owner of the patent may prohibit the importation into the country of the patented products (known as parallel imports).

Fourth, 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.

Fifth, where the use of the patented product occurs in vehicles in transit in the country.

Yes, subject to the same conditions for the grant of a compulsory license (please refer to paragraphs 69 to 73):

(i) on public interest grounds; for example, importation under the Generics Act by the Department of Health of the raw materials for the manufacture of pharmaceuticals during periods of critical shortage and absolute necessity for use of Filipino-owned drug establishments to be sold under generic nomenclature; or

(ii) where the manner of exploitation by the owner of the patent is anti-competitive.

No. The exclusive rights of a patentee have effect only within the territorial limits of the country which granted the patent.

To obtain protection in other countries, an application for a patent must be filed in each country.

Term of patent

Any interested person may file with the Bureau of Legal Affairs of the IPO a verified petition to cancel the patent on any of the following grounds:

(a)   The invention is not a patentable subject matter; 

(b)   That what is claimed as the invention is not new, does not involve an inventive step or is not industrially applicable;

(c)   That the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;

(d)   That the patent is contrary to public order or morality; or

(e)   The patent already lapsed for no-payment of annual fees.

In cases involving highly technical issues, any party may request that the case be heard by a committee chaired by the Director of Legal Affairs and two (2) members (who can be from the private sector)  who have expertise in the field of technology to which the patent sought to be cancelled relates.

54.1     Civil action for infringement

He may bring a civil action with an appropriate Regional Trial Court to recover from the infringer the damages he sustained because of the infringement, plus attorney's fees and other expenses of litigation, and to secure an injunction for the protection for the protection of his rights.

54.1.1  Damages; Requirement of Notice

Damages cannot be recovered for acts of infringement committed before the infringer had known 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 "Philippine Patent" with the number of the patent.

54.1.2  Limitation of Action for Damages

No damages can be recovered for acts of infringement committed more than four (4) years before the institution of the action for infringement.

54.2     Criminal action for repetition of infringement

If the infringement is repeated, the infringer shall be criminally liable therefore, and upon conviction, shall suffer imprisonment of not less than six (6) months but not more than three (3) years and/or a fine not less than P100,000.00 but not more than P300,000.00.  The criminal action shall prescribed in three (3) years from the commission of the crime.

54.3     Administrative Remedy

If the amount of damages claimed is not less than P200,000.00, the patentee may choose to seek redress against the infringer by filing an administrative action against the infrigner with the BLA.

The patentee may likewise ask the BLA for an order directing the infringer to immediately stop the manufacture and administrative case is being heard.  The finding that infringement has been the patentee damages and to permanently stop from using the infringing mark.  In addition, the BLA may also impose a fine which the infringer will pay to the government.

Unlike the courts, the BLA may not issue search and seizure warrants or warrants of arrest.

To answer the question as to whether the patent is infringed, the claims should be broken down into its individual elements, and then compared with the elements alleged in the infringing structure.  In making this comparison, the following questions have to be answered:

(a)   Are all the elements of the claim present in the infringing structure?

(b)   Do all the elements have the same form?

(c)   Do all the elements perform the same function?

(d)   Do all the elements have the same relationship to the other elements?

(e)   Would the combination of these elements in the infringing structure produce the same result as that of the patented invention?

If all the answers are "yes" - there is an infringement, notwithstanding that there are differences in form, non-essential elements, sequence of steps, the location or position of parts, number of minor parts, etc.

62.1    Is a TTA between Filipino nationals covered by the IP Code?

Yes.  The nationality of the parties to the agreement is no longer relevant in determining if an agreement is a TTA that is covered by the IP Code.

62.2    Does the TTA to be registered with IPO or any government agency?

No. The IP Code no longer requires the registration of TTAs.

62.3    Does this mean that the parties to the agreement are not subject to any restriction in fixing the terms of the TTA?

The IP Code has liberalized the regulations of TTAs. It no longer imposes any restriction of the TTA.  It, however, provides that the TTA will be considered unenforceable if it contains any "prohibited" clause or one which is inconsistent with the provisions mandated by law to be included in the agreement.

• Those which impose upon the licensee the obligation to acquire from a specific source capital goods, intermediate products, raw materials, and other technologies, or of permanently employing personnel indicated by the licensor;

• Those pursuant to which the licensor reserves the right to fix the sale or resale prices of the products manufactured on the basis of the license;

• Those that establish a full or partial purchase option in favor of the licensor;

• Those that oblige the licensee to transfer for free to the licensor the inventions or improvements that may be obtained through the use of the licensed technology;

• Those that prohibit the licensee to export the licensed product unless justified for the protection of the legitimate interest of the licensor;

• Those which restrict the use of the technology supplied after the expiration of the technology transfer arrangement, except in cases of early termination of the technology transfer arrangement due to reason(s) attributable to the licensee;

• Those which require that the technology recipient shall not contest the validity of any of the patents of the technology supplier;

• Those which exempt the licensor for liability for non-fulfillment of his responsibilities under the technology transfer arrangement and/or liability arising from third party suits brought about by the use of the licensed products or the licensed technology.

• That the laws of the Philippines shall govern the TTA and the venue of litigation shall be the proper court in the place where the licensee has its principal office;

• Licensee shall have access to improvements to the licensed technology;

• Any arbitration Law of the Philippines or the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules on Conciliation and Arbitration of the International Chamber of Commerce (ICC) and the venue shall be the Philippines or any neutral country;

• The Philippine taxes on all payments relating to the TTA shall be borne by the licensor.