TOPIC 4: The Law on Patents

1.I PATENTABILITY

- Patent is a set of exclusive rights granted by a state to an inventor or his assignee for a
fixed period of time in exchange for a disclosure of an invention. This is the simplest
definition of patent.

- If you noticed in the given definition. A patent holder is given exclusive rights by a state
to an inventor or his assignee. It made mentioned of the word assignee. In other words,
the right to a patent can actually be sold, assigned or transferred to another by the
original inventor just like any other property.

- This is because patent along with the rest of the intellectual property rights still belongs
to a broader concept of property rights. Although this is not discussed extensively in your
subject property because your subject property law is governed primarily by the New Civil
Code, but you can still find in your Civil Code that intellectual creation is one of the modes
of acquiring ownership.

- Notice also that under the given definition the set of exclusive rights given by the state to
the inventor is not in perpetuity. In other words, it is only granted to the inventor for a
number of years. Under RA 8293 the Patent is valid for twenty years from the time of its
application. Remember from the date of application and not from the time of approval of
the application. So if the inventor applied a patent in 2019 and it was approved only in
2024, the counting for the 20-year validity of the patent is from 2019 and not 2024. That
is why if you’re aware, coca cola’s formula for Coke is claimed to be the world’s most
closely guarded secret. It has been said that the secret formula is locked in a purpose-
built vault in their headquarters in Atlanta. This is because their secret formula is
unpatented, and this was done purposely by the company. It is because they would stand
to lose more if they chose to have the secret formula patented. Why? Because under their
law, just like here in the Philippines. The patent is valid for only 20 years. After the patent
period expires, they will lose their exclusive right, and anyone may use it anywhere.
(discussion)

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. (Sec. 21, IPC)

THE ELEMENTS OF PATENTABILITY ARE AS FOLLOWS:

FIRST ELEMENT: it must be new (novel) –

An invention shall not be considered new if it forms part of a prior art. (Sec. 23, IPC)

Question: What is prior art?

Answer: Prior art shall consist of:

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 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
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. (Sec. 24, IPC)

Question: What is Non-prejudicial disclosure?

Answer:

The type of disclosure to the public that will not affect or prejudice the novelty
requirement of a particular invention. The law states that 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:

1. The inventor;

2. 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

3. A third party which obtained the information directly or indirectly from the
inventor. (Sec. 25, IPC)

SECOND ELEMENT: involves an 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. (Sec. 26.1, IPC)

Question: What does a person skilled in the art mean?

Ans: Rule 207. Person Having Ordinary Skills in the Art. – The person having ordinary
skills in the art is presumed to be an ordinary practitioner aware of what is common general
knowledge in the art at the relevant date. He is presumed to have knowledge of all references
that are sufficiently related to one another and to the pertinent art and to have knowledge of
all arts reasonably pertinent to the particular problems with which the inventor was involved.
He is presumed also to have had at his disposal the normal means and capacity for routine
work and experimentation. (The Revised IRR for Patents, Utility models and Industrial Designs)

In the case of drugs and medicines, there is no inventive step if the invention results from the
mere discovery of a new form or new property of a known substance which does not result in
the enhancement of the efficacy of that substance, or the mere discovery of any new property
or new use for a known substance, or the mere use of a known process unless such known
process results in a new product that employs at least one new reactant. (Sec. 26.2, IPC)

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 -Section 26.2 is an amendment to RA. 8293 brought about by the passage of RA No. 9502
otherwise known as the Universally Accessible Cheaper and Quality Medicines Act of 2008.
Section 26.2 mentions of mere discovery of a new form or new property of a known substance.
Say for example the ordinary tablet of paracetamol, if it is discovered that paracetamol can be
produced in gas form. So instead of the tablet (solid form), a scientist discovered that
paracetamol can be taken in its gas form say through an inhaler. The mere discovery of a new
form of paracetamol will not amount to an inventive step unless of course it enhances the efficacy
of paracetamol say the relief from pain comes faster if paracetamol is taken in gas form rather
than solid form. (discussion)

-Section 26.2 also mentioned of mere discovery of any new property or new use for a
known substance. Same example, if it was discovered that paracetamol aside from being a good
pain reliever is also found to be an effective medicine to treat COVID 19, it will not also amount
to an inventive step unless the process results in a new product that employs at least a new
reactant. (discussion)

THIRD ELEMENT: industrially applicable –

An invention that can be produced and used in any industry shall be industrially
applicable. (Sec. 27, IPC)

An invention is industrially applicable when it can be produced and used in any industry.
Thus, under the law, the applicant of a patent shall disclose the invention in a manner
sufficiently clear and complete for it to be carried out by a person skilled in the art.

These criteria (ELEMENTS) may apply to:

(a) products
(b) processes
(c) improvements of either products and processes

-The invention must not remain in the realm of theoretical possibility. Like a space ship
that travels faster than the speed of light that you see on science fiction movies. A space
ship that travels faster than the speed of light will remain in the movies unless and until
someone actually replicates the same with tangible result. (discussion)

NON-PATENTABLE INVENTIONS

The following shall be excluded from patent protection:

22.1. Discoveries, scientific theories and mathematical methods, and in the case of
drugs and medicines, the mere discovery of a new form or new property of a known
substance which does not result in the enhancement of the known efficacy of that
substance, or the mere discovery of any new property or new use for a known
substance, or the mere use of a known process unless such known process results
in a new product that employs at least one new reactant.
-Discoveries such as when a scientist discovers a new element that is not found on your
table of elements, say for example vibranium.

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 -Scientific theories such as the theory of relativity. No matter how intelligent Albert
Einstein is he cannot apply for a patent over the theory of relativity. (discussion)

For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites,
pure form, particle size, isomers, mixtures of isomers, complexes, combinations,
and other derivatives of a known substance shall be considered to be the same
substance, unless they differ significantly in properties with regard to
efficacy; 2009
ACCESSLAW
22.2. Schemes, rules and methods of performing mental acts, playing games or doing
business, and programs for computers;

-Schemes, rules and methods of performing mental acts- so if you found a method or way of
memorizing places or faces without actually being certified as having photographic memory, you
cannot have that patented

-playing games or doing business – so you cannot patent a game of shatong, or tumba lata, or
basketball and boxing

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;

-This provision of the law made mention of methods in other words this does not
refer to a thing but a procedure. While the procedure itself is not patentable, the
equipment or medicine used in the method for treatment can of course be patented
provided that it meets the 3 essential elements of patentability

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:
-You cannot secure a patent if you manage to produce an offspring of a carabao
and a horse. Even the process of producing a hybrid offspring of carabao and horse is also
not patentable. A new variety of plant which is a product of genetic modification or other
farming technique, say for example a rambutan as big as a watermelon or an orange fruit
that taste like banana cannot also be patented.

-However, if you manage to create Covid 2021 or if you created a robot or nano
machines, you can have the process of making such things patented since section 22.4 is
clear that the said provision of the law shall not apply to micro-organism and non to
micro-organisms and non-biological and microbiological processes. (discussion)

22.5. Aesthetic creations; and

-obviously because these are subject of another intellectual property right
either copyright or utility model, or industrial design. (discussion)

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 22.6. Anything which is contrary to public order or morality. (Sec. 22, IPC)

-I leave this to your imagination.

The element of novelty is an essential requisite of the patentability of an invention or

discovery. If a device or process has been known or used by others prior to its
application or discovery by the applicant, an application for a patent therefore should
be denied, and if the application has been granted, the court, in a judicial proceeding
in which the validity of the patent is drawn in question, will hold it void and
ineffective. It has been repeatedly held that an invention must possess the essential
elements of novelty, originality and precedence, and for the patentee to be entitled to
the protection the invention must be new to the world. (Manzano vs. CA, G.R. No.
113388, September 5, 1997)

It has been repeatedly held that an invention must possess the essential elements of
novelty , originality and precedence and for the patentee to be entitled to protection,
the invention must be new to the world. Accordingly, a single instance of public use of
the invention by a patentee for more than two years (now for more than one year only
under Sec. 9 of the Patent Law) before the date of his application for his patent, will be
fatal to, the validity of the patent when issued. (Maguan vs. CA, 146 SCRA 107 [1986])

1.II RIGHT TO PATENT

The right to patent belongs to the inventor, his heirs or assigns. (Sec. 28, IPC).

The First-to-file Rule - In case two or more inventors of the same invention, the patent shall
belong to the person who first filed an application. If there are two or more
applications, the patent shall belong to the applicant who has the earliest filing date or the
earliest priority date. (Sec. 29, IPC)

Filing Date - The filing date of a patent application shall be the date of receipt by the
Office of at least the following elements:

(a) An express or implicit indication that a Philippine patent is sought;

(b) Information identifying the applicant; and
(c) Description of the invention and one (1) or more claims in Filipino or English.
If any of these elements is not submitted within the period set by the Regulations, the
application shall be considered withdrawn. (Sec. 40, IPC)

When the law says filing date it is not enough that the patent application is filed before
the intellectual property office, but the actual filing must conform with the provisions of
Section 40 and 41 of RA 8293. In short, aside from the fact of physical filing, the applicant
must be able to satisfy the Intellectual property office of the existence of the following
elements:
a) An express or implicit indication that a Philippine patent is sought;
b) Information identifying the applicant;
c) Description of the invention and one (1) or more claims in Filipino or English

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 If you look at all of these elements class, you will notice that these are all basic
information. So if these elements could not be found on the application to the
sanctification of the Intellectual Property Office then the application will be deemed as
having been filed.

Understanding filing date is very important because under our existing laws, we now
follow the First to file rule thereby abandoning the First to invent system under RA 165.
In other words, even if you were the one to invent a time machine but if you failed to
have it patented and your neighbor somehow managed to get a hold of your invention,
managed to recreate it and have it patented then your neighbor for all legal intents and
purposes will be considered as the original inventor who is entitled to the exclusive rights
to the patent. (discussion)

The Priority right - 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:

(a) the local application expressly claims priority;

(b) it is filed within twelve (12) months from the date the earliest foreign application
was filed; and

(c) 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. (Sec. 31, IPC)

The other terminology used is what the law coins as priority date which is found on your
Section 31. Priority date class is relevant only if there is an application for a patent
covering the same invention filed by an inventor in another state, and then this inventor
comes to the Philippines and filed for patent in our country over the same invention. If it
was found out class that a Filipino inventor who was able to replicate the invention
managed to file an application in the Philippines before the original foreign inventor. The
original foreign inventor will still be considered as the one who filed a patent in the
Philippines provided that the requirements in Section 31 are complied. (discussion)

Commissioned invention – The person who commissions the work shall own the patent
unless otherwise provided in the contract. (Sec. 30.1)

-NOTE that in copyright, in the case of a work commissioned by a person other than an
employer of the author and who pays for it, the copyright remains with the creator unless
there is written stipulation to the contrary [see Sec. 178.4, IPC]. (discussion)

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

(a) 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.

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 (b) 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. (Sec.30.2, IPC)

1.III PATENT APPLICATION

The Application - The patent application shall be in Filipino or English and shall contain the
following:

(a) A request for the grant of a patent; (Sec. 34)

(b) A description of the invention; (Sec. 35)
(c) Drawings necessary for the understanding of the invention;
(d) One or more claims; (Sec. 36) and
(e) An abstract. (Sec. 37)

▪ Unity of invention - The application shall relate to one invention only or to a group of
inventions forming a single general inventive concept. (Sec. 38.1,IPC) 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
▪ . (Sec. 38.3)

1.IV PROCEDURE FOR GRANT OF PATENT

1. Where to File

The application for registration of a Philippine Patent is filed with the Bureau of
Patents (BOP) of the Intellectual Property Office (IPO) through the Receiving
Section/Counter of the Administrative, Financial and Human Resource Development
Services Bureau (AFHRDSB) located at the ground floor of the IPO Building.

2.What to File

To obtain a filing date, a Request Form for a Grant of Philippine Patent must be
filed, containing the name, address and signature of the applicant. If the applicant is a non-
resident, the name and address of its resident agent must also be indicated. A description of
the invention and one or more claims must accompany the application, including any
drawings explaining the invention. THE SUBMISSION OF THE FOREGOING
REQUIREMENTS ALREADY ENTITLES THE APPLICANT TO OBTAIN A FILING DATE.

However, there are still additional formal requirements for the application, such as the
payment of the filing fee which may be paid during application filing or within one month
from the date of filing. Filing fees shall be P1,380 for Small Entities and P2,760 for Big Entities
Although the payment of filing fees is not necessary to obtain a filing date, the application
shall be deemed automatically cancelled/withdrawn in case it is not paid on time. The
abstract of the invention must also be submitted and, in case the priority of an earlier filed
application is being claimed, the filing date, file number and country of origin of the claim
must also be indicated.

3.Examination Process

(a) Formal Examination

The purpose of this examination is to determine if the application satisfies the formal
requirements for the grant of a filing date. During examination, the examiner shall check
if proper fees have been paid and shall proceed to classify the invention as to the field

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of technology it belongs. A search is conducted to determine prior art and identify similar
or identical inventions pending with the IPO.

(b) Publication of Application

The application is published in the IPO Gazette after 18 months from the filing or
priority date, in order to allow the public to inspect the application documents and
submit their written observations and comments regarding the patentability of the
invention. The applicant is given the opportunity to defend the patentability of his against
these comments and objections. 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. (Sec. 46, IPC) 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 inventionThe 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. (Sec. 46)

(c) Substantive Examination

The applicant should request for a substantive examination within six (6) months from
the date of publication, otherwise the application shall be deemed withdrawn and all
fees shall be forfeited. During the substantive examination, the examiner determines if the
application meets the requirements of Sections 21 - 27 and Sections 32 – 39 of the Intellectual
Property Code. The right to substantial examination is only available for inventions and
NOT for application for utility model and industrial design.

(d) Amendment of Application

Based on the findings of the examiner, the applicant is allowed to amend his
application in order to comply with requirements of, or clarify patentability issues
with, the examiner.

(e) Grant of Patent

If the application meets all the requirements and there is no reason for the examiner to
deny the application, the examiner issues a decision to grant the patent registration.

(f) Publication of Patent

The grant of a patent including related information shall be published in the IPO Gazette
within six (6) months. Any interested party may inspect the complete description, claims,
and drawings of the patent on file with the Office.

4. Contents of Patent

The patent is issued in the name of the Republic of the Philippines under the seal of
the IPO and shall be signed by the Director and registered together with the description,
claims and drawings in the records of the IPO.

5.Annual Fees

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An annual fee shall be paid upon expiration of four (4) years from the date the
application was published and on each subsequent anniversary of such date, otherwise
the patent application or the patent, as the case may be, shall be deemed withdrawn or
cancelled, respectively. (Sec. 55.1; 55.2)

6.Patent Term

The term of a patent shall be twenty (20) years from the filing date of the application.
(Sec. 54)
(reminder: take note of the term because this is very important)

7.Appeals

Appeals may be directed to the Director of Patents within two (2) months from the
mailing date of the final refusal by the examiner to grant the patent. The decision or
order of the Director shall become final and executory fifteen (15) days after receipt of a
copy by the appellant unless within the same period, a motion for reconsideration is filed
with the Director or an appeal to the Director General is filed. The decision of the Director
General may be appealed to the Court of Appeals and finally to the Supreme Court.

1.V CANCELLATION OF PATENTS; SUBSTITUTION OF PATENTEE

Grounds for cancellation - 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:

(a) That what is claimed as the invention is not new or Patentable;

(b) 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
(c) That the patent is contrary to public order or morality. (Sec. 61, IPC)
(d) In the case provided under Sec. 67 & 68 of IPC

Where the grounds for cancellation relate to some of the claims or parts of the claim,
cancellation may be effected to such extent only. (Sec. 61.2, IPC)

Petition for cancellation must be filed with the IPO particularly with the Bureau of Legal
Affairs. (Sec. 10.1, IPC)

The rights conferred by the patent or any specified claim or claims cancelled shall terminate.
Notice of the cancellation shall be published in the IPO Gazette. Unless restrained by the
Director General, the decision or order to cancel by Director of Legal Affairs shall be
immediately executory even pending appeal. (Sec. 66,IPC)

Cancellation of Patent in an Infringement Action - In an action for infringement, if the court

shall find the patent or any claim to be invalid, it shall cancel the same, and the Director of
Legal Affairs upon receipt of the final judgment of cancellation by the court, shall record that
fact in the register of the Office and shall publish a notice to that effect in the IPO
Gazette. (Sec. 82, IPC)

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1.VI RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS

Rights conferred by Patent - 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. (Sec. 71, IPC)

A person or entity who has not been granted patent over an invention and has not acquired
any right or title thereto either as assignee or as licensee, has no cause of action for
infringement which depends on the existence of the patent. (Creser Precision Systems vs. CA,
286 SCRA 13 [1998]).

When a patent is sought to be enforced, "the questions of invention, novelty, or prior use,
and each of them, are open to judicial examination." The burden of proof to substantiate
a charge of infringement is with the plaintiff. Where, however, the plaintiff introduces the
patent in evidence, if it is the due form, it affords a prima facie presumption of its correctness
and validity. The decision of the Commissioner of Patents in granting the patent is
always presumed to be correct. The burden then shifts to the defendant to overcome
by competent evidence this legal presumption. With all due respects, therefore, for the
critical and expert examination of the invention by the United States Patent Office, the
question of the validity of the patent is one for judicial determination, and since a patent has
been submitted, the exact question is whether the defendant has assumed the burden of
proof as to anyone of his defenses. (Vargas vs. Chua, G.R. No. L-36650, January 27, 1933).

Patents or applications for patents and invention to which they relate, shall be protected in
the same way as the rights of other property under the Civil Code. (Sec. 103.1, IPC)

Patent owners shall also have the right to assign, or transfer by succession the patent, and
to conclude licensing contracts for the same. (Sec. 71.2, IPC)

Assignment of inventions or any rights and interests pertaining must be in writing and
must be properly recorded with the IPO in order to be binding to third persons. (Sec.
105, IPC)

Joint-owners - If two (2) or more persons jointly own a patent and the invention covered
thereby, either by the issuance of the patent in their joint favor or by reason of the assignment
of an undivided share in the patent and invention or by reason of the succession in title to
such share, each of the joint owners shall be entitled to personally make, use, sell, or import
the invention for his own profit: Provided, however, That neither of the joint owners shall
be entitled to grant licenses or to assign his right, title or interest or part thereof
without the consent of the other owner or owners, or without proportionally dividing
the proceeds with such other owner or owners. (Sec. 107, IPC)

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:

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(a) 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;
(b) 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;
(c) Where the act consists of making or using exclusively for the purpose of experiments
that relate to the subject matter of the patented invention;
(d) 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;
(e) 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. (Sec. 72, IPC)
(f) Prior user - 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. (Sec. 73, IPC)

(g) Use of invention by Government - A Government agency or third person authorized by

the Government may exploit the invention even without agreement of the patent owner where:

1. 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
2. A judicial or administrative body has determined that the manner of exploitation,
by the owner of the patent or his licensee is anti-competitive. (Sec. 74, IPC)

1.VII Remedies of Person with Patent

Application by persons not having right to patent – If a person referred to in Sec. 29 other
than the applicant, is declared by final court order or decision as having the right to the
patent, such person may, within three months after the decision has become final:

(a) prosecute application as his own in place of applicant;

(b) file new patent application in respect of the same invention;
(c) request that application be refused; or
(d) seek cancellation of patent, if already been issued. (Sec. 67, IPC)

Remedies of True and Actual Inventor – When true and actual inventor is deprived of patent
without his consent or through fraud, and so declared by final court order, 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 as warranted. (Sec. 68, IPC)

The actions indicated in Secs. 67 and 68 shall be filed within one year from date of
publication. (Sec. 70, IPC)

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1.VIII Infringement of Patent

Question: What constitutes Patent Infringement?

Answer: 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. (Sec.
76.1, IPC)

Protection against infringement - The law will protect a patentee against imitation of his
patent by other forms and proportions. If two devices do the same work in substantially
the same way, and accomplish substantially the same result, they are the same, even
though they differ in name, form, or shape. (Godines vs. CA, 226 SCRA 338)

Proof of Infringement - To establish an infringement, it is not essential to show that the

defendant adopted the device or process in every particular; Proof of an adoption of the
substance of the thing will be sufficient. (Godines vs. CA, 226 SCRA 338).

Civil Action for Infringement - 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. (Sec. 76.2, IPC)

Damages - 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. (Sec. 76.3, IPC) 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. (Sec. 76.4, IPC)

Limitation on Damages - No damages can be recovered for acts of infringement

committed more than four (4) years before the institution of the action for
infringement. (Sec. 79, IPC).

In other words class what will prescribe are only claims for damages earlier than four
years prior to the filing of the action for infringement. So for example if the complainant
filed for action for infringement on January 2015, he can only ask for payment of damages
commensurate to the damage suffered by him from 2011 to 2015 or the day of filing. He
cannot anymore claim for payment of damages of the years beyond the 4 year
prescriptive period or fir the period earlier than 2011. (discussion)

Requirement of Notice - 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. (Sec. 80, IPC)

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Other relief - 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. (Sec. 76.5, IPC)

Contributory Infringer - 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. 76.6,
IPC)

Infringement Action by Foreign National - Any foreign national or juridical entity who meets
the requirements of Section 3 and not engaged in business in the Philippines, to which a
patent has been granted or assigned under this Act, may bring an action for infringement of
patent, whether or not it is licensed to do business in the Philippines under existing
law. (Sec. 77, IPC)

Defenses in Action for Infringement - In an action for infringement, the defendant, in addition
to other defenses available to him, may show the invalidity of the patent, or any claim thereof,
on any of the grounds on which a petition of cancellation can be brought under Section 61
hereof. (Sec. 81, IPC)

-Take note of this because this was asked in a previous Bar exam.

Patent Found Invalid for Infringement - In an action for infringement, if the court shall find
the patent or any claim to be invalid, it shall cancel the same, and the Director of Legal Affairs
upon receipt of the final judgment of cancellation by the court, shall record that fact in the
register of the Office and shall publish a notice to that effect in the IPO Gazette. (Sec. 82,
IPC)

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. (Sec. 84, IPC)

Question: What is the doctrine of patent exhaustion?

Answer: The doctrine of patent exhaustion holds that once a patent owner has sold a patented
product for the first time, they no longer have control over it: the buyer can use, sell, license,
or destroy it as they wish (Impression Products, Inc. v. Lexmark International, Inc., 581 U.S.
___ (2017)

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Question: What is the doctrine of equivalents

Answer: It provides that an alteration in a patented combination which merely substitutes

another old ingredient for one of the ingredients in the patented combination is an
infringement of the patent if the substitute performs the same function as well known
at the date of the patent as a proper substitute for the omitted ingredient. (Godines vs. CA,
226 SCRA 338).

Burden of proof on Process Patents - If the subject matter of a patent is a process for obtaining
a product, any identical product shall be presumed to have been obtained through the use
of the patented process if the product is new or there is substantial likelihood that the
identical product was made by the process and the owner of the patent has been unable
despite reasonable efforts, to determine the process actually used. In ordering the defendant
to prove that the process to obtain the identical product is different from the patented
process, the court shall adopt measures to protect, as far as practicable, his manufacturing
and business secrets. (Sec. 78, IPC)

Administrative action for Infringement – Before the Bureau of Legal Affairs (Sec. 10.2, IPC)

1. IX VOLUNTARY LICENSING

SECTION 85. Voluntary License Contract. — To encourage the transfer and dissemination of
technology, prevent or control practices and conditions that may in particular cases constitute
an abuse of intellectual property rights having an adverse effect on competition and trade, all
technology transfer arrangements shall comply with the provisions of this Chapter (Sec. 85,IPC) |||

-The law does not define what voluntary licensing is but since it is a contract it is just like
any other contract which is governed by the agreement of the parties in accordance with
the laws relating to contracts in general. Aside from the provisions of the Civil Code, in a
voluntary licensing or voluntary license contract there are mandatory provisions that
must be found on the contract and these mandatory provisions can be found on Sec 88
of the IPC. Additionally, there are prohibited clauses, and these are enumerated 87 of the
IPC

The law requires certain provisions to be stated in voluntary license contracts, as follows:

(a) That Philippine law shall govern the interpretation of the contract.
(b) That in the event of litigation, the venue shall be the proper court in the place where
the licensee has it principal office;
(c) That continued access to improvements in the licensed technology shall be made
available to the licensee during the term of the contract;
(d) That arbitration, if stipulated, shall be conducted in accordance with the procedure
provided in the Arbitration law of the Philippines, or the rules of the United Nations
Commission on International Trade Law (UNCITRAL), or the rules of conciliation and
arbitration of the International Chamber of Commerce (ICC);
(e) That the place of arbitration shall be the Philippines or any neutral country; and
(f) That Philippine taxes due on all payments under the contract shall be borne by the
licensor. (Sec. 88, IPC)

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Certain clauses are also prohibited in voluntary license because they are deemed prima facie
to have an adverse effect on competition and trade. Examples are:

(a) Obliging the licensee to acquire goods, materials and other technology only from a specific
source;
(b) Obliging the licensee to permanently employ personnel indicated by the licensor;
(c) Where the right to fix the selling prices of the licensed products is reserved by the licensor;
(d) Where the volume and structure of production of the licensed products are
restricted. (Sec. 87, IPC)

Effect of non-conformity of the provisions of Secs. 87 & 88 – It will automatically render the
technology transfer arrangement unenforceable, unless the same is approved and registered
with the Documentation, Information and Technology Transfer Bureau as an exceptional or
meritorious case under Section 91 (when substantial benefits will accrue to the economy).

Voluntary license contracts are not required to be registered with DITT unless they do
not conform with Secs. 87 & 88.

In the absence of any provision to the contrary in the technology transfer arrangement, the
grant of a license shall not prevent the licensor from granting further licenses to third person
nor from exploiting the subject matter of the technology transfer arrangement himself. (Sec.
89, IPC)

The licensee shall be entitled to exploit the subject matter of the technology transfer
arrangement during the whole term of the technology transfer arrangement. (Sec. 90, IPC)

1.X COMPULSORY LICENSING

Compulsory Licensing is the grant by the Director of Legal Affairs of a license to exploit
a patented invention, even without the agreement of the patent owner, in favor of any
person who has shown his capability to exploit the invention, under any of the following
circumstances:

(a) When there is a national emergency or other circumstances of extreme urgency; or

(b) Where the public interest, in particular, national security, nutrition, health or the
development of other vital sectors of the national economy as determined by the appropriate
agency of the Government, so requires; or
(c) Where a judicial or administrative body has determined that the manner of exploitation
by the owner of the patent or his licensee is anti-competitive; or
(d) In case of public non-commercial use of the patent by the patentee, without satisfactory
reason;
(e) If the patented invention is not being worked in the Philippines on a commercial scale,
although capable of being worked, without satisfactory reason: Provided, That the
importation of the patented article shall constitute working or using the patent. Or
(f) Grounds of compulsory license based on interdependence of patents - If the invention
protected by a patent within the country (the “second patent”) cannot be worked without
infringing another patent (the “first patent”) granted on a prior application or benefiting from
an earlier priority, subject to certain conditions. (Sec. 93 and 97, IPC)

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The legislative intent in the grant of a compulsory license was not only to afford others an
opportunity to provide the public with the quantity of the patented product, but also to
prevent the growth of monopolies. (Smith Kline vs. CA, G.R. No. 12167, October 23, 2001)

Compulsory license is not tantamount to deprivation of property without just compensation

- Even if other entities like private respondent are subsequently allowed to manufacture, use
and sell the patented invention by virtue of a compulsory license, petitioner as owner of
the patent would still receive remuneration for the use of such product in the form of
royalties. (Smith Kline vs. CA, G.R. No. 12167, October 23, 2001)

Requirement to Obtain a License on Reasonable Commercial Terms. - The license will only
be granted after the petitioner has made efforts to obtain authorization from the patent
owner on reasonable commercial terms and conditions but such efforts have not been
successful within a reasonable period of time. (Sec. 95.1, IPC). However, this requirement
shall not apply in the following cases:

(a) Where the petition for compulsory license seeks to remedy a practice determined after
judicial or administrative process to be anti-competitive;
(b) In situations of national emergency or other circumstances of extreme urgency;
(c) In cases of public non-commercial use. (Sec. 95.2, IPC)

Licensee’s Exemption from Liability – Any person who works a patented product, substance
and/or process under a compulsory license, shall be free from any liability for infringement;
Provided: That in case of voluntary licensing, no collusion with licensor is proven. This is
without prejudice to rightful patent owner to recover from licensor whatever he may receive
as royalties under the license. (Sec. 102, IPC)

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