LAW ON INTELLECTUAL PROPERTY
CHAPTER 1  Failure to comply with the mandatory and prohibited clause would
1. RA No. 8293
 Non-Retroactivity
 State Policies on Intellectual and Industrial Property System
 International Conventions and Reciprocity
- Any person who is a national or who is domiciled or has
a real and 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 reciprocal rights to nationals of the
Philippines by law, shall be entitled to benefits to the
extent necessary to give effect to any provision of such
convention, treaty or reciprocal law, in addition to the
rights to which any owner of an intellectual property right
is otherwise entitled by the law. (Sec. 3)
2. Intellectual Property Rights
 Definition – the term “intellectual property rights” has a statutory
definition as that consisting of:
- Copyright and Related Rights
- Trademarks and Service Marks
- Geographic Indications
- Industrial Designs
- Patents
- Layout Designs (Topographies) of Integrated Circuits
- Protection of Undisclosed Information
 TRADEMARK – any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall
include a stamped or marked container of goods.
- Trade Name means the name or designation identifying
or distinguishing an enterprise
 COPYRIGHT – is confined to literary and artistic works which are
original intellectual creations in the literary and artistic domain
protected from the moment of their creation
 PATENTABLE INVENTIONS – refer to any field of human activity
which is new, involves an inventive step and is industrially applicable
3. Technology Transfer Arrangement
 Definition – refers to contracts of agreements involving transfer of
systematic knowledge for the manufacture of product, the
application of a process, or rendering of a service including
management contracts; and the transfer, assignment or licensing of
all forms of intellectual property rights, including licensing of computer
software developed for mass market
 Contract between intellectual property right owner (as licensor) and
2nd party (as the licensee) who was granted the authority to
commercially exploit the same intellectual property right under
specified terms and conditions
automatically render the Technology Transfer Agreement
unenforceable.
- Section 92. Non-Registration with the Documentation,
Information and Technology Transfer Bureau. -
Technology transfer arrangements that conform with the
provisions of Sections 86 and 87 need not be registered
with the Documentation, Information and Technology
Transfer Bureau. Non-conformance with any of the
provisions of Sections 87 and 88, however, shall
automatically render the technology transfer arrangement
unenforceable, unless said technology transfer
arrangement is approved and registered with the
Documentation, Information and Technology Transfer
Bureau under the provisions of Section 91 on exceptional
cases. (n)
 Exceptional cases: TTA may still be valid even if it contains a
prohibited clause or it does not stipulate a mandatory clause if the
same is APPROVED and REGISTERED with the Documentation,
Information and Technology Transfer Bureau
CHAPTER II
4. Intellectual Property Office
 created under RA 8293, replaced the Bureau of Patents, Trademarks
and Technology Transfer
 Organization
- Headed by a Director General, assisted by two Deputies
Director General
- Office is divided into seven bureaus each of which is
headed by a Director and assisted by an Assistant
Director
1. Bureau of Patents
2. Trademarks
3. Legal Affairs
4. Documentation, Information and Technology
Transfer Bureau
5. Management Information System and EDP
Bureau
6. Administrative, Financial and Personnel Services
Bureau
7. Bureau of Copyright and Other Related Rights
- DG, Deputies DG, Directors & Assistant Directors – all
appointed by the President
- Other officers – appointed by the Secretary of DTI under
Civil Service Law
5. Director General
 Manages and directs all functions and activities of the office
 Qualifications (DG & Deputies DG)
- The Director General and the Deputies Director General
must be natural born citizens of the Philippines, at
least thirty-five (35) years of age on the day of their
appointment, holders of a college degree, and of
proven competence, integrity, probity and
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independence: Provided, That the Director General
and at least one (1) Deputy Director General shall be
members of the Philippine Bar who have engaged in
the practice of law for at least ten (10) years: Provided
further, That in the selection of the Director General and
the Deputies Director General, consideration shall be
given to such qualifications as would result, as far as
practicable, in the balanced representation in the
Directorate General of the various fields of intellectual
property.
 Term of Office - The Director General and the Deputies Director
General shall be appointed by the President for a term of five (5)
years and shall be eligible for reappointment only once: Provided,
That the first Director General shall have a first term of seven (7)
years. Appointment to any vacancy shall be only for the unexpired
term of the predecessor.
 Jurisdiction – DG retains exclusive appellate jurisdiction over all
decisions rendered by the Director of Legal Affairs, Director of
Patents, Director of Trademarks, Director of the Documentation,
Information and Technology Transfer Bureau and now the Director of
Copyright and Other Related Rights
 Jurisdiction Over Interlocutory Orders of the Bureau of Legal Affairs
- ONLY final decisions of the Bureau of Legal Affairs
are appealable to the Director General
- COURT OF APPEALS may exercise jurisdiction over
interlocutory orders of the Bureau of Legal Affairs
 Where to Appeal the Decision of the Director General
- Court of Appeals or Secretary of Department of Trade
and Industry (DTI)
- Certiorari (65) mode of appeal
6. The Bureaus
7. Enforcement and Visitorial Power – check book (not discussed in class)
CHAPTER III – Law on Patents
8. Patent – 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
 Three-fold purpose and Ultimate Goal
1. Patent law seeks to foster and reward invention
2. It promotes disclosures of inventions to stimulate
further invention and to permit the public to
practice the invention once the patent expires
3. The stringent requirements for patent protection
seek to ensure that ideas in the public domain
remain there for the free use of the public
9. Patentable and Non-Patentable Inventions
 Section 21. 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.
 Section 22. Non-Patentable Inventions. - The following shall be
excluded from patent protection:
22.1. Discoveries, scientific theories and mathematical
methods;
22.2. Schemes, rules and methods of performing mental
acts, playing games or doing business, and programs for
computers;
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;
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:
22.5. Aesthetic creations; and
22.6. Anything which is contrary to public order or morality.
10. Elements of Patentability – Novelty, Inventive Step & Industrial applicability
 Novelty
- An invention shall not be considered new if it forms part
of a prior art
Filing date – First to file rule
1. Express or implicit indication that a Philippine
patent is sought
2. Information identifying the applicant
3. Description of the invention and one or more
claims is Filipino or English
- If any of the elements is not submitted within the period
set, the application shall be considered withdrawn.
Priority Date
Section 31. 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, 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.
- When there is an application for patent for the same
invention that was filed in another country.
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Non-Prejudicial Disclosure
- Novelty require that the thing is not yet known to anyone
besides the inventor
 Inventive Step
Section 26. 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.
- Connotes that the invention should not be obvious
not to the general public but to a “person skilled in
the art” for it to be patented.
Graham Factors – factors a court will look at when determining
obviousness and non-obviousness in the US were outlined by their
SC; by looking at –
1. the scope and content of the prior art
2. the level of ordinary skill in the art
3. the differences between the claimed invention
and the prior art
4. objective evidence of non-obviousness
a. commercial success
b. long-felt but unsolved needs
c. failure of others
 Industrial applicability
Section 27. Industrial Applicability. - An invention that can be
produced and used in any industry shall be industrially applicable.
11. Right to a Patent
 Right to a patent belongs to the inventor
 May be acquired through succession or assignment
 May also be subject of joint ownership as when two or more persons
have jointly made an invention
First to File Rule
Section 29. First to File Rule. - 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, 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.
 There must at least be two persons who have made the invention
separately and independently of each other
Inventions Pursuant to Commission or Employment
 When an invention is made by an employee in the course of his
employment contract, the patent shall belong to:
o Employee, if the inventive activity is not a part of his
regular duties even if the employees uses the time, facilities
and materials of the employer
o 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
Right of Priority
Section 31. 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, 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
12. Procedure for the Grant of Patent
 Filing of the Application
 Accordance of the filing date
 Formality examination
 Classification and Search
 Publication of application
 Substantive examination
 Grant of the patent
 Publication upon grant
 Issuance of the Certificate
Filing of the Application (in Filipino or English)
 A request for the grant of a patent
 A description of the invention
 Drawings necessary for the understanding of the invention
 One or more claims; and
 An abstract
o No patent may be granted unless the application identifies
the inventor. If the applicant is not the inventor, the Office
may require him to submit said authority.
o Abstract shall consist of a concise summary of the
disclosure of the invention as contained in the description,
claims and drawings
Unity of Invention
 Always relate to one invention only or to a group of inventions forming
single general inventive concept
 Several independent inventions not form a single general inventive
concept are claimed in one application – Director may require that the
application be restricted to a single invention.
 Section 38. Unity of Invention. - 38.1. The application shall relate to
one invention only or to a group of inventions forming a single general
inventive concept.
 38.2. If several independent inventions which do not form a single
general inventive concept are claimed in one application, the Director
may require that the application be restricted to a single invention. A
later application filed for an invention divided out shall be considered
as having been filed on the same day as the first application:
Provided, That the later application is filed within four (4) months after
the requirement to divide becomes final or within such additional time,
not exceeding four (4) months, as may be granted: Provided further,
That each divisional application shall not go beyond the disclosure in
the initial application.
 38.3. 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. 17, R.A. No. 165a)
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Confidentiality Before Publication  The patent is contrary to public order or morality

 Patent application, which has not yet been published shall not be made
available for inspection without the consent of the applicant Jurisdiction
o Only confidential before its publication.  Director of Legal Affairs
o Confidentiality not absolute since a party may already intervene after  Involving highly technical issues, on motion of any party the DLA may order
the publication of the application that the petition be heard and decided by a committee composed of DLA and 2
members who have the experience and expertise in the field of technology to
. which the patent sought to be cancelled relates
 Decision appealable to the Director General
Rights Conferred after Publication

Section 46. Rights Conferred by a Patent Application After Publication. - 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 invention: Provided, That the said person had:

46.1. Actual knowledge that the invention that he was using was the subject matter of a
published application; or

46.2. Received written notice that the invention that he was using was the subject matter
of a published application being identified in the said notice by its serial number: Provided,
That the action may not be filed until after the grant of a patent on the published
application and within four (4) years from the commission of the acts complained of.

Law Contest – an application is prosecuted ex parte by the applicant

Amendment of the Application – may amend during the examination provided that such
amendment will not include new matter outside the scope of the disclosure contained in
the application.

Grant of Patent – granted if the application meets the requirements of both the law and
the implementing rules and regulations, including timely payment of fees. Patent shall take
effect on the date of the application of the grant of the patent in the IPO Gazette

Refusal of Application – remedy is to appeal the decision of the examiner to the Director
of Bureau of Patents; subject to appeal within 4 months from the mailing date of the notice
of decision

Term of Patent – 20 years from the filing date of the application; not absolute since
patent may cease to be in force and effect if annual fees is not paid within prescribed time
or if patent is cancelled

Annual Fees
 Due and payable on the expiration of 4 yrs from the date the application is
published
 May be paid within 3 months before the due date
 Terminate payment of annual fees – application withdrawn, refused or cancelled
 Grace period of 6 months from due date

Grounds Cancellation of Patent

 The invention is not new or patentable;
 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;