Patent Law

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What are patentable inventions – A patentable invention is any “technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable.”[1] It may be, or may relate to, a product, or process, or an improvement of any of the foregoing.[2]

What are non-patentable inventions – The following cannot be patented and will not be protected:

  • 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;[3]
  • Schemes, rules, and methods of performing mental acts, playing games or doing business, and programs for computers;[4]
  • Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body;[5]
  • Plant varieties or animal breeds or essentially biological process for the production of plants or animals;[6]
  • Aesthetic creations;[7] and
  • Anything which is contrary to public order or morality.[8]

Novelty and prior art – An invention is considered new if it does not form part of a prior art.[9] Prior art consists of:

  • 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;[10] and
  • The whole contents of an application for a patent, utility model, or industrial design registration, published in accordance with the Intellectual Property Code, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application; further, the application which has validly claimed the filing date of an earlier application under Section 31 of the Intellectual Property Code, is considered prior art effective as of the filing date of such earlier application, so long as the applicant or the inventor identified in both applications are not one and the same.[11]

Best Legal Practices

  • Investigate for prior art – With the Internet, it is now easier to investigate whether an invention forms part of a prior art. An inventor should do his due diligence in researching for any possible prior art in existence already. The Intellectual Property Office also has information on patented inventions.

Non-prejudicial disclosure – The disclosure of information contained in the application during the 12 months preceding the filing date or the priority date of the application does not prejudice the applicant on the ground of lack of novelty if such disclosure was made by:[12]

  • The inventor;[13]
  • 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;[14] or
  • A third party which obtained the information directly or indirectly from the inventor.[15]

Inventive step – There is 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.”[16]

Industrial applicability – An industrially applicable invention is an “invention that can be produced and used in any industry.”[17]

Priority date – Priority date means the date of filing of the foreign application for the same invention under the Intellectual Property Code.[18]

Term of patent – The term of a patent is 20 years from the filing date of the application.[19]

Right to a patent

What constitutes a right to a patent –The right to a patent belongs to the inventor, his heirs, or assigns.[20] When two or more persons have jointly made an invention, the right to a patent belongs to them jointly.[21]

First to file rule – If two or more persons have made the invention separately and independently of each other, the right to the patent belongs to the person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or the earliest priority date.[22]

Inventions created pursuant to a commission and employment – Unless otherwise stipulated, the person who commissions the work owns the patent.[23] If the employee made the invention in the course of his employment contract, the patent belongs:[24]

  • To the employee, if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities, and materials of the employer;[25]
  • To 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.[26]

Best Legal Practices

  • Register as soon as possible – Because of the strict application of the first to file rule, it is highly recommended that a patent application should be made as soon as possible.
  • Stipulate in employment contract regarding ownership – To avoid any issues on the ownership of a patent, it is best to stipulate in the employment contract that any and all invention created by the employee arising out of or in connection with his employment belongs to the employer.

Right of priority – An application for patent filed by any person who has previously applied for the same invention in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, is considered as filed as of the date of filing the foreign application.[27] The foreign application is to comply with the following: (a) the local application expressly claims priority; (b) it is filed within 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 months from the date of filing in the Philippines.[28]

Remedies of a Person with a Right to a Patent

When patent application is done by persons not having the right to a patent – Subject to the first to file rule, a person declared by final court order or decision as having the right to the patent may, within three months after the decision has become final:[29]

  • Prosecute the application as his own application in place of the applicant;[30]
  • File a new patent application with respect to the same invention;[31]
  • Request that the application be refused;[32] or
  • Seek cancellation of the patent, if one has already been issued.[33]

Remedies of the true and actual inventor – If a person, who was deprived of the patent without his consent or through fraud, is declared by final court order or decision to be the true and actual inventor, the following may take place: (a) the said court will order for his substitution as patentee, or (b) at the option of the true inventor, the court will order the cancellation of the patent and award actual and other damages in his favor if warranted by the circumstances.[34]

1-year prescription to challenge patent registration – The actions for challenging a patent registration is to be filed within one year from the date of publication made in accordance with the Intellectual Property Code.[35]

Rights of patentees

Rights conferred by patent – A patent confers on its owner the following exclusive rights:[36]

  • If 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;[37]
  • If 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;[38] and
  • To assign, or transfer by succession the patent, and to conclude licensing contracts for the same.[39]

Limitations of patent rights – The owner of a patent does not have the right to prevent third parties from performing, without his authorization, the acts referred to in the earlier paragraph in the following circumstances:[40]

  • 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;[41]
  • If the act is done privately and on a non-commercial scale or for a non-commercial purpose, so long as it does not significantly prejudice the economic interests of the owner of the patent;[42]
  • If the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention;[43]
  • If 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;[44]
  • If 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, so long as 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.[45]

Rights of prior user – Notwithstanding the patent rights mentioned above, 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, has the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect.[46] The right of the prior user may only be transferred or assigned together with his enterprise or business, or with that part of his enterprise or business in which the use or preparations for use have been made. [47]

Use of invention by Government – A government agency or government-authorized third person may exploit the invention even without agreement of the patent owner where: (a) the public interest, in particular, national security, nutrition, health or the development of other sectors, as determined by the appropriate agency of the government, so requires, or (b) a judicial or administrative body has determined that the manner of exploitation, by the owner of the patent or his licensee, is anti-competitive.[48]

Extent of protection and interpretation of claims – The extent of protection conferred by the patent is determined by the claims, which are to be interpreted in light of the descriptions and drawings.[49] For the purpose of determining the extent of protection conferred by the patent, due account is to be taken of elements which are equivalent to those expressed in the claims, so that a claim is to be considered to cover not only all the elements as expressed therein, but also equivalents.[50]

Patent infringement

What constitutes patent infringement – Patent infringement is 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.”[51]

Same; Civil action for damages against infringer 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.[52]

Same; Same; 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.[53] The court may, according to the circumstances of the case, award damages in a sum above the amount found as actual damages sustained, so long as the award does not exceed three times the amount of such actual damages.[54]

Same; Same; Disposal of infringing goods, materials and implements predominantly used in infringement –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.[55]

Same; Same; Liability of 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 is liable as a contributory infringer and is jointly and severally liable with the infringer.[56]

Same; Infringement action by a foreign national – Any foreign national or juridical entity who meets the requirements of reciprocity under the Intellectual Property Code but is not engaged in business in the Philippines, to which a patent has been granted or assigned, may bring an action for infringement of patent, whether or not it is licensed to do business in the Philippines under existing law.[57]

Same; Process patents; Burden of proof – If the subject matter of a patent is a process for obtaining a product, any identical product is to 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.[58] In ordering the defendant to prove that the process to obtain the identical product is different from the patented process, the court is to adopt measures to protect, as far as practicable, his manufacturing and business secrets.[59]

Same; Limitation of action for damages – There is a 4-year prescription for damages that may be recovered for acts constituting patent infringement.[60]

Same; Notice requirement for damages – Damages may only be recovered for acts of infringement committed after the infringer had known, or had reasonable grounds to know of the patent.[61] 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.[62]

Best Legal Practices

  • Provide patent notice in containers or packaging – As notice of patent infringement is required before one may held liable for patent infringement, businesses should place patent notices (Philippine Patent) on their goods or merchandise that are covered by patents. Where no such notice has been placed, a demand letter will be required before initiating an action against the infringer.

Same; Defenses in action for infringement – In addition to other defenses available to him in an action for infringement, the defendant 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 the Intellectual Property Code.[63]

Same; Patent found invalid may be cancelled – In an action for infringement, if the court finds the patent or any claim to be invalid, the following are to be observed: (a) the court is to order the cancellation of the invalid patent, and (b) upon receipt of the final judgment or cancellation by the said court, the Director of Legal Affairs is to record that fact in the register of the Office and publish a notice to that effect in the IPO Gazette.[64]

Assessor in infringement action – The court may appoint at least two assessors, who are possessed of the necessary scientific and technical knowledge required by the subject matter in litigation.[65] Either party may challenge the fitness of any assessor proposed for appointment.[66] Each assessor is to receive a compensation in an amount to be fixed by the court and advanced by the complaining party, which amount is to be awarded as part of his costs if he prevails in the action.[67]

Same; 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 are, without prejudice to the institution of a civil action for damages, criminally liable therefor and, upon conviction, will suffer imprisonment and/or a fine.[68]

Same; Same; 3-year prescription –There is a 3-year prescription for the criminal action that may be brought in the immediately preceding paragraph reckoned from date of the commission of the crime.[69]


[1] Ibid. Section 21.

[2] Ibid.

[3] Ibid. Section 22.1, as amended by R.A. 9502. “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” (Ibid.).

[4] Ibid. Section 22.2.

[5] Ibid. Section 22.3. This provision does not apply to products and composition for use in any of these methods.

[6] Ibid. Section 22.4. This provision does not apply to micro-organisms and non-biological and microbiological processes.

[7] Ibid. Section 22.5.

[8] Ibid. Section 22.6.

[9] Ibid. Section 23.

[10] Ibid. Section 24.1.

[11] Ibid. Section 24.2.

[12] Ibid. Section 25.1.

[13] Ibid. Section 25.1 (a). The inventor referred herein also means any person who, at the filing date of application, had the right to the patent (Section 25.2, Ibid.).

[14] Ibid. Section 25.1 (b).

[15] Ibid. Section 25.1 (c).

[16] Ibid. Section 26.

[17] Ibid. Section 27.

[18] Ibid. Section 20.6.

[19] Ibid. Section 54.

[20] Ibid. Section 28.

[21] Ibid.

[22] INTELLECTUAL PROPERTY CODE. Section 29.

[23] Ibid. Section 30.1.

[24] Ibid. Section 30.2.

[25] Ibid. Section 30.2 (a).

[26] Ibid. Section 30.2 (b).

[27] Ibid. Section 31.

[28] Ibid.

[29] INTELLECTUAL PROPERTY CODE. Section 67.1.

[30] Ibid. Section 67.1 (a).

[31] Ibid. Section 67.1 (b).

[32] Ibid. Section 67.1 (c).

[33] Ibid. Section 67.1 (d).

[34] Ibid. Section 68.

[35] Ibid. Section 69.

[36] Ibid. Section 71.1.

[37] Ibid. Section 71.1 (a).

[38] Ibid. Section 71.1 (b).

[39] Ibid. Section 71.2.

[40] Ibid. Section 72.

[41] Ibid. Section 72.1.

[42] Ibid. Section 72.2.

[43] Ibid. Section 72.3.

[44] Ibid. Section 72.4.

[45] Ibid. Section 72.5.

[46] Ibid. Section 73.1.

[47] Ibid. Section 73.2.

[48] Ibid. Section 74. Such use is subject, mutatis mutandis, to the conditions set forth in the Intellectual Property Code.

[49] Ibid. Section 75.1.

[50] Ibid. Section 75.2.

[51] Ibid. Section 76.1.

[52] Ibid. Section 76.2.

[53] Ibid. Section 76.3.

[54] Ibid. Section 76.4.

[55] Ibid. Section 76.5.

[56] Ibid. Section 76.6.

[57] Ibid. Section 77.

[58] Ibid. Section 78.

[59] Ibid.

[60] INTELLECTUAL PROPERTY CODE. Section 79.

[61] Ibid. Section 80.

[62] Ibid.

[63] INTELLECTUAL PROPERTY CODE. Section 81.

[64] Ibid. Section 82.

[65] Ibid. Section 83.1.

[66] Ibid.

[67] INTELLECTUAL PROPERTY CODE. Section 83.2.

[68] Ibid. Section 84. The imprisonment is for a period of not less than six months but not more than three years and/or a fine of not less than Php100,000.00 but not more than Php300,000.00, at the discretion of the court.

[69] Ibid. Section 84.

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