INTELLECTUAL

PROPERTY CODE
OF THE
PHILIPPINES
RA 8293 as amended by RA 9150, 9502 and 10372
INTELLECTUAL PROPERTY
RIGHTS
a) Copyright and Related Rights;
b) Trademarks and Service Marks;
c) Geographic Indications;
d) Industrial Designs;
e) Patents;
f) Layout-Designs (Topographies) of Integrated Circuits; and
g) Protection of Undisclosed Information
COPYRIGHT, TRADEMARKS,
AND PATENTS
Trademark is 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. In relation thereto,
a 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 technical solution of a problem
in any field of human activity which is new, involves an inventive
step and is industrially applicable.
TECHNOLOGY TRANSFER
ARRANGEMENT
refers to contracts or agreements involving the transfer of
systematic knowledge for the manufacture of a 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 except computer
software developed for mass market
THE LAW ON
PATENTS
(SEC. 20 - SEC. 120)
RA 8293 as amended by RA 9150, 9502 and 10372
PATENTABLE INVENTION
(SEC. 21)
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.
NON-PATENTABLE
INVENTION (SEC. 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.

2. Schemes, rules and methods of performing mental acts,

playing games or doing business, and programs for
computers;
NON-PATENTABLE
INVENTION (SEC. 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;
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.
5. Aesthetic creations; and
6. Anything which is contrary to public order or morality.
RIGHT TO A PATENT (SEC. 28)
The right to a patent belongs to the
inventor, his heirs, or assigns. When two (2)
or more persons have jointly made an
invention, the right to a patent shall belong
to them jointly.
FIRST-TO-FILE-RULE (SEC. 29)
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.
INVENTION CREATED PURSUANT
TO A COMMISSION (SEC. 30)
The person who commissions the work shall own the patent, unless
otherwise provided in the contract.
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.
(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.
RIGHT OF PRIORITY (SEC. 31)
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.
(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.
GROUNDS FOR
CANCELLATION OF A PATENT
(SEC. 61)
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.
REMEDIES OF A PERSON WITH
A RIGHT TO A PATENT (SEC.
67)
If a person referred to in Section 29(First to File Rule) other than the
applicant, is declared by final court order or decision as having the
right to the patent, such person may, within three (3) months after the
decision has become final:
(a) Prosecute the application as his own application in place of the
applicant;
(b) File a new patent application in respect of the same invention;
(c) Request that the application be refused; or
(d) Seek cancellation of the patent, if one has already been issued.
REMEDIES OF A PERSON WITH
A RIGHT TO A PATENT (SEC.
68)
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 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 if warranted by the
circumstances.
RIGHTS CONFERRED BY
PATENT (SEC. 71)
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.
Patent owners shall also have the right to assign, or transfer by
succession the patent, and to conclude licensing contracts for the same.
LIMITATIONS OF PATENT
RIGHTS (SEC. 72)
Using a patented product which has been put on the market in the
1.
Philippines by the owner of the product, or with his express consent; with
regard to drugs and medicines, the limitation on patent rights shall apply
after a drug or medicine has been introduced in the Philippines or
anywhere else in the world by the patent owner, or by any party authorized
to use the invention; further, the right to import the drugs and medicines
contemplated in this section shall be available to any government agency
or any private third party;
2. Where the act is done privately and on a non-commercial scale or for a
non-commercial purpose.
LIMITATIONS OF PATENT
RIGHTS (SEC. 72)
3. Where the act consists of making or using exclusively for
experimental use of the invention for scientific purposes or
educational purposes and such other activities directly related to such
scientific or educational experimental use;
4. In the case of drugs and medicines, where the act includes testing,
using, making or selling the invention including any data related
thereto, solely for purposes reasonably related to the development and
submission of information and issuance of approvals by government
regulatory agencies required under any law of the Philippines or of
another country that regulates the manufacture, construction, use or
sale of any product.
LIMITATIONS OF PATENT
RIGHTS (SEC. 72)
5. 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; and
6. 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.
PATENT INFRINGEMENT (SEC.
76.1)
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.
PATENT INFRINGEMENT (SEC.
76.1)
shall not apply to instances covered by:
1. Sections 72.1 and 72.4 (Limitations of Patent Rights);
2. Section 74 (Use of Invention by Government);
3. Section 93.6 (Compulsory Licensing); and
4. Section 93-A (Procedures on Issuance of a Special Compulsory
License under the TRIPS Agreement) of this Code.
TESTS IN PATENT INFRINGEMENT
1. Literal infringement (Sec 75.1)
The extent of protection conferred by the patent shall be determined
by the claims, which are to be interpreted in the light of the
description and drawings.
2. Doctrine of equivalents (Sec 75.2)
For the purpose of determining the extent of protection conferred by
the patent, due account shall be taken of elements which are
equivalent to the elements expressed in the claims, so that a claim
shall be considered to cover not only all the elements as expressed
therein, but also equivalents.
CIVIL ACTION (SEC. 76.2)
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.
CRIMINAL ACTION(SEC. 84)
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 (PhP
100,000) but not more than Three hundred thousand pesos (Php
300,000), at the discretion of the court.
PRESCRIPTIVE PERIOD
Civil Action
no damages can be recovered for acts of infringement committed
more than four (4) years before the institution of the action for
infringement.

Criminal Action
shall prescribe in three (3) years from date of the commission of the
crime.
DEFENSES IN ACTION FOR INFRINGEMENT
(SEC. 81)

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.
VOLUNTARY LICENSING
is the grant by the patent owner to a third person of the right to
exploit a patented invention.
Rights of Licensor - 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)
Rights of Licensee - 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)
COMPULSORY LICENSING
(SEC. 93)
The Director General of the Intellectual Property
Office may grant 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.
COMPULSORY LICENSING
(SEC. 93)
1. National emergency or other circumstances of extreme urgency;
2. 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
3. Where a judicial or administrative body has determined that the
manner of exploitation by the owner of the patent or his licensee is anticompetitive;
4. In case of public non-commercial use of the patent by the patentee, without satisfactory
reason;
5. 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.
6. Where the demand for patented drugs and medicines is not being met to an adequate extent
and on reasonable terms, as determined by the Secretary of the Department of Health.
ASSIGNMENT AND
TRANSMISSION
Transmission of rights (Sec. 103)
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. Inventions and any
right, title or interest in and to patents and inventions covered
thereby, may be assigned or transmitted by inheritance or
bequest or may be the subject of a license contract.
ASSIGNMENT AND
TRANSMISSION
Assignment of Inventions (Sec. 104)
An assignment may be of the entire right, title or interest
in and to the patent and the invention covered thereby, or
of an undivided share of the entire patent and invention,
in which event the parties become joint owners thereof.
An assignment may be limited to a specified territory.
INTELLECTUAL
PROPERTY CODE
OF THE
PHILIPPINES
RA 8293 as amended by RA 9150, 9502 and 10372