Any technical solution of a problem in any field of human activity that is new, involves an inventive step and is industrially applicable is patentable. It may be, or may relate to, a product, process or any improvement thereof. _{(Sec. 21, IP Code)}

An invention is considered new if it does not form part of a prior art. _{(Sec. 23, IP Code)}

An invention involves an inventive step if, having regard to a 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, IP Code)}

An invention that can be produced and used in any industry shall be industrially applicable. _{(Sec. 27, IP Code)}

Discoveries, scientific theories and mathematical methods are not patentable. (Sec. 22.1, IP Code)

Computer programs and software are not patentable. Instead, computer programs and software are protected by copyright. _{(Sec. 22.2, IP Code)}

Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body may not be protected by patents. Products and compositions for use in any of these methods for treatment are however, patentable. _{(Sec. 22. 3, IP Code)}

Generally, plant breeds, animal breeds and biological processes for the production of plants and animals cannot be patented. A sui generis protection, however, may be afforded to plant varieties under the Plant Variety Protection Act of 2001. On the other hand, micro-organisms and non-biological and microbiological processes may be covered by patent. _{(Sec. 22.4, IP Code)}

The right to a patent belongs to the inventor, his heirs or assigns. When two (2) or persons have jointly made an invention, the right to a patent shall belong to them jointly. _{(Sec. 28, IP Code).}

If two (2) or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the person who filed an application for such invention, to the applicant who has the earliest filing date or, the earliest priority date. _{(Sec. 29, IP Code)}

If the invention patent was commissioned, the right to the patent belongs to the person who commissioned it, unless otherwise stated in the contract. In cases where the employee made the invention in the course of his employment, the patent shall belong to the employee if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer. On the other hand, if the invention is the result of the performance of his regularly-assigned duties, the right to the patent shall belong to the employee unless there is an express or implied agreement to the contrary. _{(Sec. 30, IP Code)}

A Filipino national may file a patent application in the Philippines. Also, any person who is a national or who is domiciled or who has real or effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition to which the Philippines is also a party, or extends any reciprocal rights to nationals of the Philippines by law.

A resident agent or representative must be appointed if the applicant is not a resident of the Philippines. If the patent applicant is a Philippine resident, the application may be filed by the applicant himself or he may also appoint another person to represent him.

The applicant may choose between the following routes available in filing a patent application in the Philippines.

1. Patent Cooperation Treaty Route (PCT); and
2. Paris Convention/Direct Route.

A. Frequently Asked Questions Concerning the Patent Cooperation Treaty

What are the requirements for filing a national phase entry application in the Philippines?

The requirements for filing national phase entry application and securing a date of entry are:

1. Request for national phase entry;
2. English translation of the international application if it was filed in another language or a copy of the international application in English as filed if the applicant has not yet received Form PCT/IB/308; and
3. Copy of the amendments under Article 19 and/or Article 34 in English.

The above-mentioned requirements must be submitted no later than thirty (30) months from the priority date.

Can the thirty (30)-month deadline form the priority date be extended?

Yes. The thirty (30)-month deadline for entering the national phase for a PCT application may be extended by one (1) month subject to the payment of an extension fee/late entry fee.

What documents are required to be submitted at the national phase entry?

The following documents must be submitted:

1. Description including title of the invention in English;
2. Claims as filed in English;
3. Abstract;
4. Amendments to the claims pursuant to PCT Art. 19, if applicable, in English;
5. Amendments to the description, claims, drawings under PCT Art. 34, as contained in the annexes to the international preliminary report where applicable, must be in English;
6. Drawings; and
7. Form PCT/IB/304, if with right of priority.

What are the important deadlines the applicant should take note for PCT applications?

1. Six (6) months from national phase entry date
   1. Priority Document
      The priority document of a claimed earlier application must be submitted to the International Bureau within sixteen (16) months from the priority date. If it has not been submitted within sixteen (16) months from priority date, it must be submitted to the IPO within six (6) months from the national phase entry date together with the payment of the corresponding extension fee.
   2. Request for substantive examination
      The request for substantive examination and payment of the substantive examination fee must be made within six (6) months from the date of entry into the national phase. Otherwise, the application shall be deemed withdrawn.
2. Four years from date of international publication
   1. Annual Fees
      The annual fee on patent shall be due and payable on the expiration of four (4) years from the date of the international publication, and on each subsequent anniversary of such date. The obligation to pay the annual fees shall terminate should the application be withdrawn, refused, or cancelled.
      The annual fee of a divisional patent application or registration shall be due and payable on the expiration of four (4) years from the date of the international publication of the parent application, and on each subsequent anniversary of such date. The obligation to pay the annual fees shall terminate should the application be withdrawn, refused or canceled.

What is required from the applicant if the international application entering the national phase claims priority based on an earlier Philippine national application?

If the international application entering into the national phase claims priority on an earlier Philippine national application, the applicant should choose which one of the two applications shall be prosecuted. If the application does not choose at the date of entry, the IPO will invite the applicant to make the election within two (2) months from the date of the invitation, or within a longer period, but not to exceed six (6) months from the date of entry into the national phase.

Is it necessary to submit the priority documents upon entering into the national phase?

No. It is not necessary to submit the priority document for purposes of entering into the national phase. The submission of priority documents is required by the IPO in certain cases as provided by the rules.

Can the applicant amend specifications, claims and drawings after the patent application has already entered the national phase?

Yes. During the national phase, and at any time before a patent is granted or refused on the international application, the applicant may present amendments to the description, claims and drawings in accordance with the Intellectual Property Code and its implementing rules and regulations.

Are international applications published on the IPO E-Gazette?

National phase entry applications filed through the PCT Route are published by listing only. The applications are not published in their entirety for purposes of disclosing the same to the public.

A national phase entry application filed through the PCT route, is considered published as of the international publication date. _{(Sec. 44, IP Code)}

What is the term of an issued patent based on an application filed through the PCT?

The term of an issued patent filed through the PCT route is twenty (20) years from the international filing date of the application.

What are the PCT regulations that do not apply in the Philippines?

The following PCT regulations do not apply in the Philippines:

1. 1. Rule 26bis.3 (j), 49ter.1(g) and 49ter.2 (h) concerning the Restoration of Right of Priority; and
   2. Rule 49.6 (f) concerning Reinstatement of Rights after Failure to Perform Acts referred to in Article 22 (National Phase Entry)

Frequently Asked Questions Concerning the Paris Convention/ Direct Route

What are the requirements to secure a filing date for a patent application filed through the Paris Convention/ Direct Route?
The following requirement should be submitted to obtain a filing date:

1. 1. 1. Request for a patent;
      2. Applicant’s name, address and signature. If the applicant is a non-resident of the Philippines, the name, address and signature of the resident agent;
      3. Abstract, description, claims and drawings.

If the priority date of an earlier filed application is claimed, the details of the claim i.e. filing date, the file number and country of origin, must be submitted.

What is required to claim a priority in patent application the Philippine patent application?

A patent application filed by an applicant who has earlier filed an application for the same invention in another country which by treaty, convention, or law affords similar privileges to citizens of the Philippines, shall be considered as filed as of the date of filing of the earlier foreign application, provided:

1. 1. 1. The Philippine application expressly claims priority;
      2. The Philippine application is filed within twelve (12) months from the date when the application was filed; and
      3. 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.

Is there a required language required?

The Philippine patent application must be in Filipino or English language.

What is the disclosure requirement for a Philippine patent application?

The patent application shall disclose the invention in a complete and sufficiently cleared manner that can be carried out by a person skilled in the art.
Where the patent application involves a microbiological process or product thereof, and involves the use of a microorganism which cannot be sufficiently disclosed in the application in such a way as to enable the invention to be carried out by a person skilled in the art, and such material is not available to the public, the application shall be supplemented by a deposit of such material with an international depository institution.

Will an application filed through the Paris Convention/ Direct Route be published on the IPO’s E-Gazette?

Yes. The application shall be published on the IPO’s E-gazette together with a search document established by or on behalf of the Office citing any relevant document or documents that reflect prior art, after the expiration of eighteen (18) months from the filing date.

Is the application afforded protection prior to its publication in the IPO’s E-Gazette?

The invention is not afforded protection prior to the publication of the patent application in the IPO’s E-Gazette. The Bureau of Patents, however, is obliged to keep the patent application confidential. An unpublished patent application, including all related documents, cannot be accessed by the public or any third party for inspection, without the consent of the applicant.

After the patent application is published in the IPO’s E-Gazette, what kind of protection is it afforded?

The applicant shall have all the rights of a patentee against any person who uses the invention without the applicant’s authorization, provided that, such person has actual knowledge that the invention he is using is the subject matter of a published patent application. However, any action may not be filed until after the grant of the patent and not beyond four (4) years from the commission of the acts complained of.

Is substantive examination of a patent application filed through the Paris Convention/ Direct Route automatic?

No. Substantive examination is not automatic. The applicant must file a request for substantive examination and pay the corresponding substantive examination fee within six (6) months from the date of publication of the application. The application shall be withdrawn if such request is not made and corresponding fees not paid.

When should annual fees for a patent application/registration filed through the Paris Convention/Direct Route be paid?

The first annual fee must be paid on the expiration of four (4) years from the date of publication of the application in the IPO’s E-Gazette. Subsequent annual fees shall be due on each subsequent anniversary of such date.

When does a patent become effective in the Philippines?

The patent becomes effective upon the date of publication of the grant of the patent in the IPO’s E-Gazette.

What is the term of a patent in the Philippines?

The patent is effective for a term of twenty (20) years from the filing date of the application.

Is reinstatement of a lapsed patent allowed?

Reinstatement of a lapsed patent is now allowed.

The disclosure of information contained in the patent application during the twelve (12) months preceding the filing date or the priority date of such patent 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 in another application filed by the inventor and should have not been disclosed by the office, or 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 information directly or indirectly from the inventor.

Under the rules, a patent application can only cover one invention or group of inventions forming a single general inventive concept.

Generally, the applicant has two (2) months from the mailing date of an office action to file a response thereto.

The deadline to file a response to an office action may be extended only for good and sufficient cause, and for a reasonable time specified. The request for extension of time must be filed on or before the deadline. The examiner may grant a maximum of two (2) extensions of two (2) months each, provided that the aggregate period granted including the initial period to file the response shall not exceed six (6) months from the mailing date of the official action.

The decision of the examiner to reject the application may be appealed to the Director of the Bureau of Patents. The decision of the Director of Patents to reject the patent application may be appealed to the Director General of the Intellectual Property Office. Further, the decision of the Director General may be appealed to the Court of Appeals and the decision of the Court of Appeals may be appealed to the Supreme Court.

The Patent Prosecution Highway program (PPH) and agreement with the USPTO, JPO, KIPO and EPO may be availed by an applicant if the corresponding foreign application in said countries/jurisdictions are indicated to be patentable/allowable.

Another option for the applicant is to request for accelerated examination under the ASEAN Patent Examination Co-operation (ASPEC) Program in which Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Philippines, Singapore, Thailand, and Vietnam are participating countries. The ASPEC is a program for IP Offices of participating ASEAN member states to use the search and examination results from another participating ASEAN member state’s IPO Office as reference in its own search and examination work. Thus, the applicant may request for an accelerated examination of its patent application under the ASPEC if the corresponding foreign applications in said countries are indicated to be patentable/allowable.

Oppositions against patent applications are not available. However, third parties may file observations to the Bureau of Patents as to the patentability of the invention after the publication of a patent application in the IPO’s E-Gazette. The Bureau of Patents will then inform the applicant about the observation for the applicant to submit his/her comments. The examiner will then consider both the third party’s observations and the applicant’s comments thereto in deciding whether or not to grant the patent.

A patent shall confer on its owner the following exclusive rights:

1. 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;
2. Where the subject matter of the patent is a process, to restrain, prevent or prohibit any unauthorized person or entity from sing the process, and from manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from such process.

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, IP Code)}

Yes. The owner of a patent has no right to prevent third parties from using the invention under the following circumstances:

1. using the 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;
2. where the act is done privately and on a non-commercial purpose provided, that it does not significantly prejudice the economic interests of the owner of the patent.
3. where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention;
4. where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared;
5. where the invention is used on any ship, vessel, aircraft, or land vehicles 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, IP Code)}

Yes. Any interested person may file a petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds:

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1. 1. lack of novelty;
   2. patent fails to disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art; or
   3. that the patent is contrary to public order or morality.

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, IP Code)}

The patent owner may at his option file a civil, criminal or administrative case for patent infringement.
An administrative complaint for patent infringement may be filed with the Bureau of Legal Affairs of the Intellectual Property Office if the amount claimed is not less than Two Hundred Thousand Pesos (Php 200,000). If the amount claimed is less than Two Hundred Pesos (Php 200,000), the administrative complaint shall be filed with the Department of Trade and Industry.
A civil action for patent infringement may be field to recover damages sustained. If the damages sustained cannot be ascertained with reasonable certainty, the court may award by way of damages a sum equivalent to reasonable royalty. They court may also award damages in a sum above the amount found as actual damages sustained provided that the amount does not exceed three (3) times the amount of the actual damages. Attorney’s fees and legal costs incurred are also awarded. _{(Sec. 76, IP Code)}
A criminal action for patent infringement may be filed if the infringement is repeated by the infringer or anyone in connivance with him after the final judgement. The criminal penalty of repeat infringement is imprisonment for not less than six (6) months but no more than three (3) years and/or a fine of not less than One Hundred Thousand Pesos (Php 100,000) but not more than Three Hundred Thousand Pesos (Php 300,000) at the discretion of the court. _{(Sec. 84, IP Code)}