Patents in the Philippines

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Republic Act No. 8293, otherwise known as The Intellectual Property Code of the Philippines lays down the rules and regulations that grant, and enforce patents in the Philippines. Patents may be granted to technical solutions such as an inventions, machines, devices, processes, or an improvement of any of the foregoing. The technical solution must be novel, innovative, and industrially useful. In order for a technical solution to be granted a patent, the inventor must file an application to the Bureau of Patents, which will examine, and in some cases, grant its approval. The law is designed as to foster domestic creativity, to attract foreign investors, and to motivate inventors to release their products for public access.

Contents

Types of Patents

Invention

An invention must be a technical solution to issues in any field of human activity. It may come in may forms such as a product, a device, a machine, or a process. The invention must meet the following criteria in order to be considered as a patentable invention the solution:

Products, processes, or an improvement of the foregoing, may relate to the technical solution. However, not all technical solutions may be considered as patentable inventions (Part 2, Rule 202 of the Philippine Republic Act No. 8293). Examples of these are the following:

  1. Aesthetic creations
  2. Abstract Ideas
  3. Discoveries, and other scientific theories
  4. Methods of treatment for the animal body or human body
  5. Animal breeds or plant varieties
  6. Computer programs
  7. Anything that is against public morality

Utility Model

Similar to a patent, a utility model is a technical solution to issues present in any field of human activity. Utility models must also meet the criteria needed for inventions to be patentable. Furthermore, Utility models must be of practical utility through its form, configuration or composition. Novel tools, and products are common examples of objects that can be considered as utility models. The provisions that regulate the type of patentable inventions are also the provisions used to regulate utility models (Part 2, Rule 202 of the Philippine Republic Act No. 8293).

Industrial Design

An industrial design gives a product or handicraft a distinct look. It may be 2-Dimensional (lines and colours), 3-Dimensional (shapes) or a combination of both. There are however industrial designs that are not patentable. Examples of these are the following:

  1. Mere schemes or decorations that are not part of the product or handicraft
  2. Designs that are only present to obtain technical results
  3. Anything that is against public morality, order and health

Philippine Law

Within the Philippines, multiple laws have been passed towards maintaining the integrity and order of patents. The main law in the Philippines is Republic Act No. 8293 or the "Intellectual Property Code of the Philippines", however there exists multiple amendments towards certain articles in this law. Listed below are the major Philippine Laws directed towards patents and patentability in the country:

Republic Act No. 8293

Republic Act No. 8293 or the "Intellectual Property Code of the Philippines" is the primary law with regards to the copyright law of the Philippines as well as the establishment of the Intellectual Property Office of the Philippines. [1] Republic Act No. 8293 is an amendment of the Revised Penal Code of the Philippines and was legislated in 1997. The Intellectual Property Code of the Philippines encompasses Copyright and Related Rights, Enforcement of IP and Related Laws, Geographical Indications, Industrial Designs, Industrial Property, IP Regulatory Body, Layout Designs of Integrated Circuits, Patents of Inventions, Trade Names, Trademarks, Transfer of Technology, Undisclosed Information (Trade Secrets), and Utility Models. [2]

Major Amendments to Republic Act No. 8293

Republic Act No. 9502

Republic Act No. 9502 or the "Universally Accessible and Quality Medicines Act of 2008" is an act that aims to provide cheaper and better quality medicines to the Filipino people. It is an amendment of Republic Act No. 8293, or the "Intellectual Property Code of the Philippines", Republic Act No. 6675, or the "Generics Act of 1988", and Republic Act No. 5921, or the "Pharmacy Law". [3] The aim of Republic Act No. 9502 is to protect public health and public interest on circumstances of extreme urgency by adopting appropriate measures to promote and ensure access to affordable quality drugs and medicines for all. [3] The Universally Accessible and Quality Medicines Act of 2008 also ensures that the Philippine Government will be able to regulate the prices of drugs and medicines, in the event that there is no longer an effective competition in the supply and demand of quality affordable drugs and medicines. [3]

Republic Act No. 10055

Republic Act No. 10055, also known as the "Philippine Technology Transfer Act of 2009" is an act providing the framework and support system for the ownership, management and commercialization of the intellectual property generated from research and development funded by government and for other purposes. [4] Republic Act No. 10055 was implemented in recognition of the fact that science, technology and innovation are essential for national development and progress. This act gives priority to research and development, invention, innovation and their utilization. It shall also encourage the widest and most systematic participation of all stakeholders in policy-making related to science and technology, and in the generation, transfer and utilization of intellectual property, especially for the benefit of the general public. [5]

Due to this act, the Philippine Government shall facilitate the transfer and promote the utilization of intellectual property for the national benefit and shall call upon all research and development institutes and/or institutions that perform government-funded research and development to take on technology transfer as their strategic mission and to effectively translate results of government-funded R&D into useful products and services that will redound to the benefit of Filipinos, notwithstanding the income generated from intellectual property rights (IPRs) and technology transfer activities. This act also ensures on the proper management of intellectual property, development of capacity by RDIs to become self-sustaining and competitive, and on enhancing interaction and cooperation with the private sector, particularly small and medium enterprises through collaborative and contract research based on equitable, fair access, and mutual benefit for all involved partners. This is all to establish the means to ensure greater public access to technologies and knowledge generated from government-funded R&D while enabling, where appropriate, the management and protection of related intellectual property [5]

Republic Act No. 10372

Republic Act No. 10372, also entitled as "An Act Amending Certain Provisions of Republic Act No. 8293, otherwise known as the ‘Intellectual Property Code of the Philippines', and for other purposes." [6] This act was approved on February 28, 2013 and is a comprehensive amendment of certain articles and sections in Republic Act No. 8293.

International Law

The Philippines is an active participant in international trade. The country is a member of the international trade organizations such as the World Trade Organization [7] and the World Intellectual Property Organization. [8] [9] The country subscribes to a number of multilateral, regional, and bilateral treaties that facilitate the process of trade between multiple nations as well as to observe and uphold Intellectual property rights. Some of the notable treaties that the country participates in are the following: [10]

Multilateral

TRIPS Agreement

The TRIPS Agreement is a multilateral trade agreement mediated by the World Trade Organization that came into effect on 1 January 1995, on the same day the Philippines became a member of the WTO. [7] It was borne out of the desire of the member states to "reduce distortions and impediments to international trade, taking into account the need to promote effective intellectual property rights (IPRs), and to ensure that measures to enforce IPRs do not themselves become barriers to legitimate trade. [11] " The agreement provides a framework of principles, rules and disciplines dealing with international trade as well as resolving trade related disputes among nations. The treaty also takes into account the needs of less developed member nations among others. It is recognized as one of the most comprehensive multilateral agreements on intellectual property. [12]

Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) of 1970 is an international treaty participated upon by 148 member nations [13] that allows applicants to simultaneously apply for patent protection for an invention within the participating countries. The Philippines was bound to the treaty on August 17, 2001. [13] The international patent application is available to citizens or residents of the participating states by accomplishing the application at their respective national patent office or at the WIPO International Bureau. Accomplishing the application "has the effect of automatically designating all Contracting States bound by the PCT on the international filing date. The effect of the international application is the same in each designated State as if a national patent application had been filed with the national patent office of that State." [14]

The WIPO Copyright Treaty of 1996 is a special agreement enacted by the members of the World Intellectual Property Organization that is concerned with new intellectual property issues that are not covered by predating treatises due to coming of the digital age. [15] The treaty also concerns itself with the addition of subjects to be protected by copyright such as computer programs, databases, as well the rights to distribute these intellectual property. The treaty came into force in 2002. [15]

For Specific Intellectual Property

The Philippines is also a signatory in numerous other international treaties that are concerned with intellectual property within specific fields such as literature, art, music, industry, biology, and the licensing and distribution of multimedia, to name a few. [10]

Regional

ASEAN Framework Agreement on Intellectual Property Cooperation

The ASEAN Framework Agreement on Intellectual Property Cooperation is a treaty devised among the member nations of the Association of Southeast Asian Nations. The treaty was ratified in Bangkok, Thailand on December 15, 1995. The treaty seeks to foster cooperation among the member states to facilitate synergy and growth in the region however the treaty has yet to be implemented in force. [20]

Bilateral

Economic Partnership Agreement between Japan and the Philippines

The Economic Partnership Agreement between Japan and the Philippines was adopted on September 9, 2006 and went into force on December 11, 2008. It is a trade agreement between the countries of Japan and the Philippines with the aim of "liberalizing and facilitating trade in goods and services between both nations as well as to increase investment opportunities and strengthen protection for investments and investment activities." [21]

Agreement between the Government of Canada and the Government of the Republic of the Philippines for the Promotion and Reciprocal Protection of Investments

The economic treaty between the states of Canada and the Philippines was adopted on November 9, 1995 and put into effect on November 13, 1996. The treaty strives to increase cooperation between the two countries by increasing the opportunities for mutual economic growth by promoting and facilitating investment opportunities. [22]

Conditions on Patentability

WIPO's policies and laws state that for an invention to be eligible for patenting, it must fulfill several criteria. Generally, the invention must be within patentable subject matter, must have industrial use or applicability (utility), it must be new (novel) and must exhibit a sufficient "inventive step" (non-obviousness). [23]

Patentable Subject Matter

Patentable subject matter is usually defined in terms of exceptions to patentability. Some examples of fields not within the scope of patentable subject matters are: [24]

Utility

For an invention to be patentable, the invention must have practical applicability and not purely theoretical. If an invention is a product or a part of a product, then it should be possible to make that product and if the invention is a process or a part of a process then the process should be executable or it should be possible to use the process in practice. Here, "applicability" and "industrial applicability" refers to the possibility of making or producing in practice, or carrying out or using in practice. The term "industrial" should be referred to in its broadest sense, which includes any kind of industry recognized by the country.

Novel

Novelty is a fundamental requirement of patentability, however it cannot be proven or established; only its absence can be proved. For an invention to be considered "novel", it must not have been anticipated by the knowledge that existed prior to relevant filing or priority date of a patent application whether it existed by the way of written or oral disclosure. This disclosure can come in the form of:

In considering novelty, it's not permissible to combine separate items of prior knowledge/inventions together.

Non-obviousness

Inventive step is perhaps the most difficult of the standards to determine patentability as it asks the question "would it have been obvious to a person having ordinary skill in the art?" [25] The inclusion of this requirement works under the premise that anything of obvious consequence of prior knowledge is in itself part of prior knowledge. While novelty considers whether there is a difference between the invention and prior knowledge, "inventive step" is concerned with how different is the invention to prior knowledge. There must be some significant or identifiable difference/advance/progress between the invention and prior knowledge. Also, this advance or progress must be essential to the invention. Unlike the assessment of novelty which looks at the difference between the invention and prior knowledge as a whole, inventive step is assessed through combinations of prior knowledge. In most cases, it is useful to assess the inventive step in relation to 3 aspects: the problem to be solved; the solution to that problem; and the advantageous effects, if any, of the invention with reference to the background art. If the problem is obvious, the examination will bear on the originality of the solution claimed.

Process of acquiring a patent

Procedure [26]

Application

The application must be filed at the Intellectual Property Office or through the IPOPHL TM eFile online. The forms and fees can be accessed at the Philippine IPO Website. The process begins with obtaining a filing date by submitting the following documents:

  • Properly filled-out Request Form for a Grant of Philippine Patent;
  • Name, address and signature of applicant(s); for non-resident applicant, the name and address of his/her/their resident agent; and
  • Description of the invention and one or more claims

Other formal requirements, which are not needed to obtain a filing date, but may be included at the time of filing are:

  • A filing fee (for big or small entities which may be paid during application filing or within one month from the date of filing).
  • Drawing(s) necessary to understand the invention;
  • An abstract and
  • If the priority of an earlier filed application is being claimed, the details of the claim, i.e. filing date, file number and country of origin.

Formality of Examination

An examiner checks if the applicant has fulfilled all the formal requirements needed for the grant of a filing date. A filing date is important because it serves to determine, in case of a dispute, who has the right to the patent based on a "first-to-file" system.

Publication of Unexamined Application

The application will be published in the IPO Gazette for 18 months where any person may present observations in writing concerning the patentability of the invention. The applicant may be able to respond through writing.

Request for Substantive Examination

This must be filed within six (6) months from the date of publication. The application is considered withdrawn if no request is made within that period. If the examiner finds reason to refuse the registration of the application, i.e. the application is neither new, inventive nor industrially applicable, the Bureau shall notify the applicant of the reason for refusal/rejection giving the applicant the chance to defend or amend the application.

Decision to Grant Patent or Refusal

if the examiner finds the application satisfactory with no reason for refusal, or the reason for refusal has been properly amended or corrected, the examiner issues a decision to grant the patent registration. If not, the examiner refuses the application.

Inspection of Records

The grant of a patent together with other information shall be published in the IPO Gazette within six (6) months.

Appeal

(a) Every applicant may appeal to the Director of Patents the final refusal of the examiner to grant the patent within two (2) months from the mailing date of the final refusal. 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 together with the payment of the required fee. (b) The decision of the Director General may be appealed to the Court of Appeals. If the applicant is still not satisfied with the decision of the Court of Appeals, he may appeal to the Supreme Court.

IPOPHL TM eFile

The IPOPHL TM eFile is the new electronic filing system for patents launched as part of the World IP Day Celebrations on April 23, 2016. It allows the online filing of new trademark applications 24/77 and is linked to three different payment applications. It removes the need for applicants and IP agents to go to the IPOPHL to file trademark applications.

It is linked to two other tools - ASEAN TMclass which makes the classification of goods and services much easier, and National IPOPHL TMview that allows the generation of preliminary search reports that applicants may use as reference prior to filling. But its most important feature is the ease of uploading documents together with the online application.

It is expected to go on production in June 2016. As of now, the IPOPHL eTMfile is accessible to all trademark stakeholders. [27]

Offices involved

Intellectual Property Office of the Philippines

The Intellectual Property Code of the Philippines, Republic Act No. 8293, created the Intellectual Property Office of the Philippines (IPOPHL) that serves to administer and implement the laws regarding intellectual property rights as stated in the Act. Under the IPOPHL, the Bureau of Patents handles the screening of patent applications and the subsequent granting of these patents. It also handles the registration of utility model, industrial design, and integrated circuit, and the publications of these patents. The bureau assists the Director General of the IPOPHL, who has the authority to formulate policies on the administration and examination of patents, by conducting studies and researches in the field. [1]

Court of Appeals

If the application of a patent is refused by the Director General of IPOPHL, the decision may be appealed to the Court of Appeals. The Court of Appeals is composed of a Presiding Justice and 68 Associate Justices. It reviews the decisions of all Regional Trial Courts as well as the Office of the Ombudsman, and those of the Department of Justice and other agencies exercising quasi-judicial functions, including the Office of the President. [28] The court can reverse, affirm, or modify the judgement that was previously made. It can also remand the case to the regional trial courts for a new trial or a retrial, or dismiss the case entirely. [29]

Supreme Court

If the applicant is still not satisfied with the decision of the Court of Appeals, then the decision on application of the patent may be appealed to the Supreme Court. The Supreme Court has the duty to "settle actual controversies involving rights which are legally demandable and enforceable, and to determine whether or not there has been a grave abuse of discretion amounting to lack or excess of jurisdiction on the part of any branch or instrumentality of the Government." It has both original and appellate jurisdiction and can review, revise, reverse, modify, or affirm on appeal or certiorari , and may provide a final judgement. In the event that the application for the patent is still not approved by the Supreme Court, then the application has been completely refused and has no chance of appeal. [30]

Related Research Articles

<span class="mw-page-title-main">Patent</span> Type of legal protection for an invention

A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention. In most countries, patent rights fall under private law and the patent holder must sue someone infringing the patent in order to enforce their rights.

<span class="mw-page-title-main">World Intellectual Property Organization</span> Specialised agency of the United Nations

The World Intellectual Property Organization is one of the 15 specialized agencies of the United Nations (UN). Pursuant to the 1967 Convention Establishing the World Intellectual Property Organization, WIPO was created to promote and protect intellectual property (IP) across the world by cooperating with countries as well as international organizations. It began operations on 26 April 1970 when the convention entered into force. The current Director General is Singaporean Daren Tang, former head of the Intellectual Property Office of Singapore, who began his term on 1 October 2020.

<span class="mw-page-title-main">Industrial design right</span> Intellectual property rights

An industrial design right is an intellectual property right that protects the visual design of objects that are purely utilitarian. An industrial design consists of the creation of a shape, configuration or composition of pattern or color, or combination of pattern and color in three-dimensional form containing aesthetic value. An industrial design can be a two- or three-dimensional pattern used to produce a product, industrial commodity or handicraft.

The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.

The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on 20 March 1883, was one of the first intellectual property treaties. It established a Union for the protection of industrial property. The convention is still in force in 2024. The substantive provisions of the Convention fall into three main categories: national treatment, priority right and common rules.

In patent law, industrial design law, and trademark law, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application. When filing the subsequent application, the applicant must claim the priority of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.

<span class="mw-page-title-main">Industrial property</span> Intellectual property applied to industry

Industrial property is one of two subsets of intellectual property, it takes a range of forms, including patents for inventions, industrial designs, trademarks, service marks, layout-designs of integrated circuits, commercial names and designations, geographical indications and protection against unfair competition. In some cases, aspects of intellectual creation, although present, are less clearly defined. The object of industrial property consists of signs conveying information, in particular to consumers, regarding products and services offered on the market. Protection is directed against unauthorized use of such signs that could mislead consumers, and against misleading practices in general.

The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, or Budapest Treaty, is an international treaty signed in Budapest, Hungary, on April 28, 1977. It entered into force on August 19, 1980, and was later amended on September 26, 1980. The treaty is administered by the World Intellectual Property Organization (WIPO).

A copyright is the legal protection extended to the owner of the rights in an original work. Original work refers to every production in the literary, scientific, and artistic domains. The Intellectual Property Office (IPOPHL) is the leading agency responsible for handling the registration and conflict resolution of intellectual property rights and to enforce the copyright laws. IPOPHL was created by virtue of Republic Act No. 8293 or the Intellectual Property Code of the Philippines which took effect on January 1, 1998, under the presidency of Fidel V. Ramos.

<span class="mw-page-title-main">Utility model</span> Patent-like intellectual property right

A utility model is a patent-like intellectual property right to protect inventions. This type of right is available in many countries but, notably, not in the United States, United Kingdom or Canada. Although a utility model is similar to a patent, it is generally cheaper to obtain and maintain, has a shorter term, shorter grant lag, and less stringent patentability requirements. In some countries, it is only available for inventions in certain fields of technology and/or only for products. Utility models can be described as second-class patents.

Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, defines a trademark as “any visible sign capable of distinguishing goods”. Early jurisprudence has taken it to mean “a sign, device or mark by which the articles produced or dealt in by a particular person or organization are distinguished or distinguishable from those produced or dealt in by others, and must be affixed to goods or articles”.

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or their successor in rights in exchange to a public disclosure of the invention.

<span class="mw-page-title-main">Canadian patent law</span>

Canadian patent law is the legal system regulating the granting of patents for inventions within Canada, and the enforcement of these rights in Canada.

<span class="mw-page-title-main">Organisation Africaine de la Propriété Intellectuelle</span>

The Organisation Africaine de la Propriété Intellectuelle or OAPI is an intellectual property organization, headquartered in Yaoundé, Cameroon. The organisation was created by Bangui Agreement of March 2, 1977. The Bangui Agreement was subsequently amended in 1999.

World Intellectual Property Indicators (WIPI) is an annual statistical report published by the World Intellectual Property Organization (WIPO). The publication provides an overview of the activity in the areas of patents, utility models, trademarks, industrial designs, microorganisms, plant variety protection, geographical indications and the creative economy.

<span class="mw-page-title-main">Intellectual property in Iran</span>

Iran is a member of the WIPO since 2001 and has acceded to several WIPO intellectual property treaties. Iran joined the Convention for the Protection of Industrial Property in 1959. In December 2003 Iran became a party to the Madrid Agreement and the Madrid Protocol for the International Registration of Marks. In 2005 Iran joined the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, which ensures the protection of geographical names associated with products. As at February 2008 Iran had yet to accede to The Hague Agreement for the Protection of Industrial Designs.

Patent law in modern mainland China began with the promulgation of the Patent Law of the People's Republic of China, in 1984. This law was modeled after patent systems of other civil law countries, particularly Germany and Japan.

<span class="mw-page-title-main">WIPO Lex</span>

WIPO Lex is an online global database launched in 2010, which provides free public access to intellectual property laws, treaties and judicial decisions from around the world. The World Intellectual Property Organization (WIPO) maintains and develops the database.

References

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  22. "IP-relevant Bilateral Treaties: Agreement between the Government of Canada and the Government of the Republic of the Philippines for the Promotion and Reciprocal Protection of Investments". www.wipo.int. Retrieved April 21, 2016.
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  27. "IPOPHL Launches New Electronic Filing System". Intellectual Property Office of the Philippines.
  28. "Court of Appeals". Court of Appeals. Retrieved April 26, 2016.
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