VIII.

INTELLECTUAL PROPERTY CODE (RA 8293)

A. Patents
1. Patentable vs. non-patentable inventions
2. Ownership of a patent
3. Grounds for cancellation of a patent
4. Remedy of the true and actual inventor
5. Rights conferred by a patent
6. Limitations on patent rights
7. Patent infringement

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one
another. A 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. Meanwhile, the scope of a 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, on the other hand, 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.” (Kho vs. CA, G.R. No.
115758, [2002])

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PATENT

BASIC PATENT PRINCIPLES

1. TERRITORIALITY - patents are only valid in the country or region in which they have been granted
2. FIRST-TO-FILE –applicant who files first will get the patent
3. DISCLOSURE –applicant shall disclose the invention in a manner sufficiently clear and complete
- Quid pro quo principle – protection in exchange for disclosure
4. CONDITIONAL – patents are granted only upon compliance with the criteria of patentability
5. LIMITED RIGHTS…

1. Patentable vs. non-patentable inventions

Section 21. Patentable Inventions. – Any technical solution of a problem (problem-solution approach) 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 23. An invention shall not be considered new if it forms part of a prior art.

NOVELTY ANALYSIS
How much information from prior art is sufficient?
“The defense of lack of novelty (i.e. 'anticipation') can only be established by a single prior art reference which
discloses each and every element of the claimed invention.

Inventor’s OWN DISCLOSURE

Rule: If you publish your inventions in a journal, demonstrate, sell or discuss your invention in public before you file a
patent application, you cannot get a patent BUT…

Grace Period
Non-Prejudicial Disclosure
If you have already disclosed or published your inventions in a journal, demonstrate, sell or discuss your invention in
public, you can still file a patent application within 12 months (1 year) from the date of disclosure or publication. (Sec.
25)

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26.2. In the case of drugs and medicines, there is no inventive step if the invention results from 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.

The Graham Test

• Scope and content of the prior art
• Difference between the prior art and the claims at issue
• Level of ordinary skill in the pertinent art

Secondary considerations
• Commercial success
• Long felt need
• Failure of others

PERSON SKILLED IN THE ART

1. Ordinary practitioner (fictional person)
a. Has access and understanding of all the prior art
b. Aware of common general knowledge in the specific art
c. Observes developments in the related technical field
2. Could be a team
3. Need not have inventive ability

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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.

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;

1. they already exist by nature

2. no technicity involved
3. by reason of policy

2. Ownership of a patent

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DISCLOSURES and CLAIMS
SECTION 35. Disclosure and Description of the Invention. - 35.1. Disclosure. - The application shall disclose the
invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

SECTION 36. The Claims. - 36.1. The application shall contain one (1) or more claims which shall define the matter
for which protection is sought. Each claim shall be clear and concise, and shall be supported by the description.

Mandatory Publication
SECTION 44. Publication of Patent
Application. - 44.1. The patent application shall be published in the IPO Gazette together with a search document
established by or on behalf of the Office citing any documents that reflect prior art, after the expiration of eighteen (18)
months from the filing date or priority date.

44.2. After publication of a patent application, any interested party may inspect the application documents filed with
the Office.

Term of Patent
SECTION 54. Term of Patent. - The term of a patent shall be twenty (20) years from the filing date of the application.

3. Grounds for cancellation of a patent

SECTION 61. Cancellation of Patents
61.1. 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.
61.2. Where the grounds for cancellation relate to some of the claims or parts of the claim, cancellation may be
effected to such extent only. (Secs. 28 and 29, R.A.No. 165a)

4. Remedy of the true and actual inventor

SECTION 68. 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 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.
(Sec.33, R.A. No. 165a)

5. Rights conferred by a patent

SECTION 71. Rights Conferred by Patent
71.1. 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; NEGATIVE RIGHT TO
PREVENT COMPETITORS
In patent, negative rights unlike TM & C which is a positive right.
Why? For example w/regard to medicines, one would need a CPR and FDA approval. You may get a patent
for medicine however there might be issues with toxicity thus a CPR & FDA approval is needed.

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 (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.
71.2.Patent owners shall also have the right to assign, or transfer by succession the patent, and to conclude licensing
contracts for the same. (Sec. 37, R.A. No. 165a)

6. Limitations on patent rights

SECTION 72. Limitations of Patent Rights
The owner of a patent has no right to prevent third parties from performing, without his authorization, the acts referred
to in Section 71 hereof in the following circumstances:
72.1. 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; Provided, That, 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: Provided, further, That the right to import the drugs
and medicines contemplated in this section shall be available to any government agency or any private third
party;
Also known as National Exhaustion of Rights
72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose:
Provided, That it does not significantly prejudice the economic interests of the owner of the patent;
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;
72.4. 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: Provided, That, in order to protect the data submitted by the original patent holder from unfair
commercial use provided in Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS Agreement), the Intellectual Property Office, in consultation with the appropriate government
agencies, shall issue the appropriate rules and regulations necessary therein not later than one hundred
twenty (120) days after the enactment of this law;
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;
72.5. 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. (Secs. 38 and 39, R.A. No. 165a)

SECTION 74. Use of Invention by Government

74.1. A Government agency or third person authorized by the Government 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

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 (b) A judicial or administrative body has determined that the manner of exploitation, by the owner of the patent
or his licensee is anticompetitive.
(c) In the case of drugs and medicines, there is a national emergency or other circumstance of extreme
urgency requiring the use of the invention; or
(d) In the case of drugs and medicines, there is public noncommercial use of the patent by the patentee,
without satisfactory reason; or
(e) In the case of drugs and medicines, the demand for the patented article in the Philippines is not being met
to an adequate extent and on reasonable terms, as determined by the Secretary of the Department of Health.
74.2. Unless otherwise provided herein, the use by the Government, or third person authorized by the Government
shall be subject, where applicable, to the following provisions:
(a) In situations of national emergency or other circumstances of extreme urgency as provided under Section
74.1(c), the right holder shall be notified as soon as reasonably practicable;
(b) In the case of public non-commercial use of the patent by the patentee, without satisfactory reason, as
provided under Section 74.1 (d), the right holder shall be informed promptly: Provided, That, the Government
or third person authorized by the Government, without making a patent search, knows or has demonstrable
ground to know that a valid patent is or will be used by or for the Government;
(c) If the demand for the patented article in the Philippines is not being met to an adequate extent and on
reasonable terms as provided under Section 74.1 (e), the right holder shall be informed promptly;
(d) The scope and duration of such use shall be limited to the purpose for which it was authorized;
(e) Such use shall be non-exclusive;
(f) The right holder shall be paid adequate remuneration in the circumstances of each case, taking into
account the economic value of the authorization; and
(g) The existence of a national emergency or other circumstances of extreme urgency, referred to under
Section 74.1 or other exploitation, which shall be immediately executory.
74.3. All cases arising from the implementation of this provision shall be cognizable by courts with appropriate
jurisdiction provided by law. No court, except the Supreme Court of the Philippines, shall issue any temporary
restraining order or preliminary injunction or such other provisional remedies that will prevent its immediate execution.
74.4. The Intellectual Property Office (IPO), in consultation with the appropriate government agencies, shall issue the
appropriate implementing rules and regulations for the use or exploitation of patented inventions as contemplated in
this section within one hundred twenty (120) days after the effectivity of this law.

7. Patent infringement
SECTION 76. Civil Action for Infringement
76.1. 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
constitutes patent infringement. Provided, That, this shall not apply to instances covered by Sections 72.1 and 72.4
(Limitations of Patent Rights); Section 74 (Use of Invention by Government); Section 93.6 (Compulsory Licensing);
and Section 93-A
(Procedures on Issuance of a Special Compulsory License under the TRIPS Agreement) of this Code.
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.
76.3. 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.
76.4. The court may, according to the circumstances of the case, award damages in a sum above the amount found
as actual damages sustained: Provided, That the award does not exceed three (3) times the amount of such actual
damages.
76.5. 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.
76.6. 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 shall be liable as a contributory
infringer and shall be jointly and severally liable with the infringer. (Sec. 42, R.A. No. 165a)

Extent of Protection
SECTION 75. Extent of Protection and Interpretation of Claims. - 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.
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.

Doctrine of Equivalents provides that an infringement also takes place when a device appropriates a prior invention by
incorporating its innovative concept and, although with some modification and change, performs substantially the

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same function in substantially the same way to achieve substantially the same result. This doctrine requires the
satisfaction of the function-means-result test.

A patent maybe infringed either:

1. Literally, or
2. By equivalents

Literal infringement
Literal infringement exists if an accused device falls directly within the scope of properly interpreted claims.

Infringement by Equivalents
Functions-Means-Results test:
If two devices do the same work in substantially the same way and accomplish substantially the same result, they are
the same, even though they differ in name, form or shape. WWR (Smith Kline Beckman vs. CA, G.R. No. 126627
[2003])

Section 78. Process Patents; Burden of Proof . - If the subject matter of a patent is a process for obtaining a product,
any identical product shall 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. In ordering the defendant to
prove that the process to obtain the identical product is different from the patented process, the court shall adopt
measures to protect, as far as practicable, his manufacturing and business secrets.

SECTION 81. Defenses in Action for Infringement. - 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.”

SECTION 84. 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 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 (P100,000) but not more than Three hundred thousand pesos (P300,000), at
the discretion of the court. The criminal action herein provided shall prescribe in three (3) years from date of the
commission of the crime. (Sec. 48, R.A. No. 165a)

E.I. DUPONT V. IPO, G.R. NO. 174379 [31 August 2016]

• On July 10, 1987, E.I. Dupont filed a Patent Applicant for medicine for hypertension (Losartan)
• On December 19, 2000, Dupont’s new counsel sent IPO a request that action be taken on its Patent Application
• The IPO responded stating that it already took action and mailed notice on July 19, 1988, or 13 years earlier and the
Application was deemed abandoned for Applicant’s failure to respond. [only 4 months to revive]
• On May 29, 2002, Dupont replied stating that its then counsel died in 1996
• IPO denied revival; on appeal, CA reversed on ground that lawyer’s death was sufficient justification.
• Therapharma then moved to intervene, arguing that the CA decision directly affected its “vested rights to sell its own
product.”
• CA allowed Therapharma to intervene, stating that it had an interest as a competitor in the revival of Dupont’s Patent
Application.
• Upon reconsideration, the CA ruled that the public interest would be prejudiced by the revival of Dupont‘s application.
• Losartan was used to treat hypertension, "a chronic ailment afflicting an estimated 12.6 million Filipinos," and noted
that the presence of competition lowered the price for losartan products.
SC:
“A patent is granted to provide rights and protection to the inventor after an invention is disclosed to the public. It also
seeks to restrain and prevent unauthorized persons from unjustly profiting from a protected invention. However, ideas
not covered by a patent are free for the public to use and exploit. Thus, there are procedural rules on the application
and grant of patents established to protect against any infringement. To balance the public interests involved, failure to
comply with strict procedural rules will result in the failure to obtain a patent.”

“Dupont was inexcusably negligent in the prosecution of its patent application; there was a correlative duty on its part
to be diligent in keeping itself updated on the progress of its Patent Application. Its failure to be informed of the
abandonment of its Patent Application was caused by its own lack of prudence.”

“The patent law has a three-fold purpose: (1) patent law seeks to foster and reward invention; (2) it promotes
disclosures of inventions to stimulate further innovation 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.

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“A patent is a monopoly granted only for specific purposes and objectives. Thus, its procedures must be complied with
to attain its social objective.”

Phil PharmaWealth vs. Pfizer 635 SCRA 140 (2010)

Facts:
• Pfizer filed a Complaint for patent infringement against Phil Pharmawealth with Bureau of Legal Affairs of the
Intellectual Property Office (BLA)
• Pharmawealth submitted bids for the supply of Sulbactam Ampicillin in several hospitals without consent of Pfizer,
who had patent rights over the substance
• BLA issued PI but denied an Extension;
• Pfizer filed Special Civil Action for Certiorari with CA
•Meantime, Pfizer filed another complaint with RTC of Makati for patent infringement involving another patent but
covering the same Sulbactam Ampicillin

• Issue #1:
• Can an injunctive relief be issued based on an action of patent infringement when the patent allegedly infringed has
already lapsed?
• No. The “exclusive right to monopolize the subject matter of the patent exists only within the term of the patent.”
• “It is clear from the above-quoted provision of law that the exclusive right of a patentee to make, use and sell a
patented product, article or process exists only during the term of the patent.”

Does the filing of separate patent infringement actions before the IPO and the RTC for different patents constitute
forum shopping?
Yes. “It is clear from the foregoing that the ultimate objective which respondents seek to achieve in their separate
complaints filed with the RTC and the IPO, is to ask for damages for the alleged violation of their right to exclusively
sell Sulbactam Ampicillin products and to permanently prevent or prohibit petitioner from selling said products to any
entity. Owing to the substantial identity of parties, reliefs and issues in the IPO and RTC cases, a decision in one case
will necessarily amount to res judicata in the other action.

ROMA DRUG vs. RTC Guagua, et al., G.R. No. 149907, 16 April 2009
-raiding team seized several imported medicines, including Augmentin tablets, Orbenin capsules, Amoxil and
Ampiclox
-seized medicines were manufactured by SmithKline but imported directly from abroad and not purchased through the
local SmithKline, the authorized Philippine distributor of these products
-NBI filed a criminal complaint against Rodriguez for of R.A. No. 8203 (Special Law on Counterfeit Drugs)
-“Counterfeit” – includes an “unregistered imported drug product”
o"Unregistered imported drug product” shall refer to unregistered imported drug product without a registered
counterpart brand in the Philippines. If the unregistered imported drug product has a registered counterpart
brand in the Philippines, their product shall be considered counterfeit. (IRR)
o“registered” – contemplates registration with FDA
SC: SLCD's classification of "unregistered imported drugs" as "counterfeit drugs” in conflict with Rep. Act No. 9502
which grants private third persons the unqualified right to import or otherwise use such drugs.

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