PART II
THE LAW ON PATENTS
Chapter I
GENERAL PROVISIONS
Sec. 20. Definition
of Terms Used in Part II, The Law on Patents.
-- As used in Part II, the following terms shall have the following
meanings:
20.1. Bureau means
the Bureau of Patents;
20.2. Director
means
the Director of Patents;
20.3. Regulations
means the Rules of Practice in Patent Cases formulated by the Director
of Patents and promulgated by the Director General;
20.4. Examiner
means
the patent examiner;
20.5. Patent
application
or application means an application for a patent for an invention
except
in Chapters XII and XIII, where application means an application for a
utility model and an industrial design, respectively; and
20.6. Priority
date
means the date of filing of the foreign application for the same
invention
referred to in Section 31 of this Act. (n)
Chapter II
PATENTABILITY
Sec. 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.
(Sec.
7, R. A. No. 165a)
Sec. 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. (Sec. 8, R. A.
No.
165a)
Sec. 23. Novelty.
-
An invention shall not be considered new if it forms part of a prior
art.
(Sec. 9, R. A. No. 165a)
Sec. 24. Prior
Art. - Prior art shall consist of:
24.1. 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;
and
24.2. The whole
contents of an application for a patent, utility model, or industrial
design
registration, published in accordance with this Act, filed or effective
in the Philippines, with a filing or priority date that is earlier than
the filing or priority date of the application: Provided, That the
application
which has validly claimed the filing date of an earlier application
under
Section 31 of this Act, shall be prior art with effect as of the filing
date of such earlier application: Provided further, That the applicant
or the inventor identified in both applications are not one and the
same.
(Sec.
9, R. A. No. 165a)
Sec. 25. Non-Prejudicial
Disclosure. -
25.1. The
disclosure
of information contained in the application during the twelve (12)
months
preceding the filing date or the priority date of the application shall
not prejudice the applicant on the ground of lack of novelty if such
disclosure
was made by:
(b) 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; or
(c) A third
party
which obtained the information directly or indirectly from the inventor.
25.2. For the
purposes
of Subsection 25.1, "inventor" also means any person who, at the filing
date of application, had the right to the patent. (n)
Sec. 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. (n)
Sec. 27. Industrial
Applicability. - An invention that can
be produced and used in any industry shall be industrially applicable.
(n)
Chapter III
RIGHT TO A PATENT
Sec. 28. Right
to a Patent. - 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.
(Sec.
10, R. A. No. 165a)
Sec. 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. (3rd Sentence, Sec. 10, R. A.
No.
165a.)
Sec. 30. Inventions
Created Pursuant to a Commission. -
30.1. The person
who commissions the work shall own the patent, unless otherwise
provided
in the contract.
30.2. 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.
(n)
Sec. 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. (Sec.
15, R. A. No. 165a)
Chapter IV
PATENT APPLICATION
Sec. 32. The Application.
-
32.1. The patent
application shall be in Filipino or English and shall contain the
following:
(a) A request
for
the grant of a patent;
(b) A
description
of the invention;
(c) Drawings
necessary
for the understanding of the invention;
(d) One or more
claims; and
32.2. 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.
(Sec.
13, R. A. No. 165a)
Sec. 33. Appointment
of Agent or Representative. - An
applicant
who is not a resident of the Philippines must appoint and maintain a
resident
agent or representative in the Philippines upon whom notice or process
for judicial or administrative procedure relating to the application
for
patent or the patent may be served. (Sec. 11, R. A.
No. 165a)
Sec. 34. The Request.
- The request shall contain a petition for the grant of the patent, the
name and other data of the applicant, the inventor and the agent and
the
title of the invention. (n)
Sec. 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. Where the application concerns a microbiological process or the
product
thereof and involves the use of a micro-organism 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.
35.2.
Description.
- The Regulations shall prescribe the contents of the description and
the
order of presentation. (Sec. 14, R. A. No. 165a)
Sec. 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.
36.2. The
Regulations
shall prescribe the manner of the presentation of claims. (n)
Sec. 37. The Abstract.
- The abstract shall consist of a concise summary of the disclosure of
the invention as contained in the description, claims and drawings in
preferably
not more than one hundred fifty (150) words. It must be drafted in a
way
which allows the clear understanding of the technical problem, the gist
of the solution of that problem through the invention, and the
principal
use or uses of the invention. The abstract shall merely serve for
technical
information. (n)
Sec. 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)
Sec. 39. Information
Concerning Corresponding Foreign Application for Patents. -
The applicant shall, at the request of the Director, furnish him with
the
date and number of any application for a patent filed by him abroad,
hereafter
referred to as the "foreign application," relating to the same or
essentially
the same invention as that claimed in the application filed with the
Office
and other documents relating to the foreign application. (n)
Chapter V
PROCEDURE FOR GRANT
OF PATENT
Sec. 40. Filing
Date Requirements. -
40.1. The filing
date of a patent application shall be the date of receipt by the Office
of at least the following elements:
(a) An express
or
implicit indication that a Philippine patent is sought;
(b) Information
identifying the applicant; and
(c) Description
of the invention and one (1) or more claims in Filipino or English.
40.2. If any of
these elements is not submitted within the period set by the
Regulations,
the application shall be considered withdrawn. (n)
Sec. 41. According
a Filing Date. - The Office shall
examine
whether the patent application satisfies the requirements for the grant
of date of filing as provided in Section 40 hereof. If the date of
filing
cannot be accorded, the applicant shall be given an opportunity to
correct
the deficiencies in accordance with the implementing Regulations. If
the
application does not contain all the elements indicated in Section 40,
the filing date should be that date when all the elements are received.
If the deficiencies are not remedied within the prescribed time limit,
the application shall be considered withdrawn. (n)
Sec. 42. Formality
Examination. -
42.1. After the
patent application has been accorded a filing date and the required
fees
have been paid on time in accordance with the Regulations, the
applicant
shall comply with the formal requirements specified by Section 32 and
the
Regulations within the prescribed period, otherwise the application
shall
be considered withdrawn.
42.2. The
Regulations
shall determine the procedure for the re-examination and revival of an
application as well as the appeal to the Director of Patents from any
final
action by the examiner. (Sec. 16, R. A. No. 165a)
Sec. 43. Classification
and Search. - An application that has
complied with the formal requirement shall be classified and a search
conducted
to determine the prior art. (n)
Sec. 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.
44.3. The Director
General, subject to the approval of the Secretary of Trade and
Industry,
may prohibit or restrict the publication of an application, if in his
opinion,
to do so would be prejudicial to the national security and interests of
the Republic of the Philippines. (n)
Sec. 45. Confidentiality
Before Publication. - A patent
application,
which has not yet been published, and all related documents, shall not
be made available for inspection without the consent of the applicant.
(n)
Sec. 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. (n)
Sec. 47. Observation
by Third Parties. - Following the
publication
of the patent application, any person may present observations in
writing
concerning the patentability of the invention. Such observations shall
be communicated to the applicant who may comment on them. The Office
shall
acknowledge and put such observations and comment in the file of the
application
to which it relates. (n)
Sec. 48. Request
for Substantive Examination. -
48.1. The
application
shall be deemed withdrawn unless within six (6) months from the date of
publication under Section 41, a written request to determine whether a
patent application meets the requirements of Sections 21 to 27 and
Sections
32 to 39 and the fees have been paid on time.
48.2. Withdrawal
of the request for examination shall be irrevocable and shall not
authorize
the refund of any fee. (n)
SEC. 49. Amendment
of Application. - An applicant may
amend
the patent application during examination: Provided, That such
amendment
shall not include new matter outside the scope of the disclosure
contained
in the application as filed. (n)
Sec. 50. Grant
of Patent. -
50.1. If the
application
meets the requirements of this Act, the Office shall grant the patent:
Provided,
That all the fees are paid on time.
50.2. If the
required
fees for grant and printing are not paid in due time, the application
shall
be deemed to be withdrawn.
50.3. A patent
shall
take effect on the date of the publication of the grant of the patent
in
the IPO Gazette. (Sec. 18, R. A. No. 165a)
Sec. 51. Refusal
of the Application. -
51.1. The final
order of refusal of the examiner to grant the patent shall be
appealable
to the Director in accordance with this Act.
51.2. The
Regulations
shall provide for the procedure by which an appeal from the order of
refusal
from the Director shall be undertaken. (n)
Sec. 52. Publication
Upon Grant of Patent. -
52.1. The grant
of the patent together with other related information shall be
published
in the IPO Gazette within the time prescribed by the Regulations.
52.2. Any
interested
party may inspect the complete description, claims, and drawings of the
patent on file with the Office. (Sec. 18, R. A. No.
165a)
Sec. 53. Contents
of Patent. - The patent shall be
issued
in the name of the Republic of the Philippines under the seal of the
Office
and shall be signed by the Director, and registered together with the
description,
claims, and drawings, if any, in books and records of the Office. (Secs.
19 and 20, R. A. No. 165a)
Sec. 54. Term
of Patent. - The term of a patent
shall
be twenty (20) years from the filing date of the application. (Sec.
21, R. A. No. 165a)
Sec. 55. Annual
Fees. -
55.1. To maintain
the patent application or patent, an annual fee shall be paid upon the
expiration of four (4) years from the date the application was
published
pursuant to Section 44 hereof, and on each subsequent anniversary of
such
date. Payment may be made within three (3) months before the due date.
The obligation to pay the annual fees shall terminate should the
application
be withdrawn, refused, or cancelled.
55.2. If the
annual
fee is not paid, the patent application shall be deemed withdrawn or
the
patent considered as lapsed from the day following the expiration of
the
period within which the annual fees were due. A notice that the
application
is deemed withdrawn or the lapse of a patent for non-payment of any
annual
fee shall be published in the IPO Gazette and the lapse shall be
recorded
in the Register of the Office.
55.3. A grace
period
of six (6) months shall be granted for the payment of the annual fee,
upon
payment of the prescribed surcharge for delayed payment. (Sec.
22, R. A. No. 165a)
Sec. 56. Surrender
of Patent. -
56.1. The owner
of the patent, with the consent of all persons having grants or
licenses
or other right, title or interest in and to the patent and the
invention
covered thereby, which have been recorded in the Office, may surrender
his patent or any claim or claims forming part thereof to the Office
for
cancellation.
56.2 A person may
give notice to the Office of his opposition to the surrender of a
patent
under this section, and if he does so, the Bureau shall notify the
proprietor
of the patent and determine the question.
56.3. If the
Office
is satisfied that the patent may properly be surrendered, he may accept
the offer and, as from the day when notice of his acceptance is
published
in the IPO Gazette, the patent shall cease to have effect, but no
action
for infringement shall lie and no right compensation shall accrue for
any
use of the patented invention before that day for the services of the
government.
(Sec.
24, R. A. No. 165a)
Sec. 57. Correction
of Mistakes of the Office. - The
Director
shall have the power to correct, without fee, any mistake in a patent
incurred
through the fault of the Office when clearly disclosed in the records
thereof,
to make the patent conform to the records. (Sec. 25,
R. A.
No. 165)
Sec. 58. Correction
of Mistake in the Application. - On
request
of any interested person and payment of the prescribed fee, the
Director
is authorized to correct any mistake in a patent of a formal and
clerical
nature, not incurred through the fault of the Office. (Sec.
26, R. A. No. 165a)
Sec. 59. Changes
in Patents. -
59.1. The owner
of a patent shall have the right to request the Bureau to make the
changes
in the patent in order to:
(a) Limit the
extent
of the protection conferred by it;
(b) Correct
obvious
mistakes or to correct clerical errors; and
(c) Correct
mistakes
or errors, other than those referred to in letter (b), made in good
faith:
Provided,
That where the change would result in a broadening of the extent of
protection
conferred by the patent, no request may be made after the expiration of
two (2) years from the grant of a patent and the change shall not
affect
the rights of any third party which has relied on the patent, as
published.
59.2. No change
in the patent shall be permitted under this section, where the change
would
result in the disclosure contained in the patent going beyond the
disclosure
contained in the application filed.
59.3. If, and to
the extent to which the Office changes the patent according to this
section,
it shall publish the same. (n)
Sec. 60. Form and
Publication of Amendment. - An
amendment
or correction of a patent shall be accomplished by a certificate of
such
amendment or correction, authenticated by the seal of the Office and
signed
by the Director, which certificate shall be attached to the patent.
Notice
of such amendment or correction shall be published in the IPO Gazette
and
copies of the patent kept or furnished by the Office shall include a
copy
of the certificate of amendment or correction. (Sec.
27,
R. A. No. 165)
Chapter VI
CANCELLATION OF
PATENTS
AND SUBSTITUTION
OF PATENTEE
Sec. 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)
Sec. 62. Requirement
of the Petition. - The petition for
cancellation
shall be in writing, verified by the petitioner or by any person in his
behalf who knows the facts, specify the grounds upon which it is based,
include a statement of the facts to be relied upon, and filed with the
Office. Copies of printed publications or of patents of other
countries,
and other supporting documents mentioned in the petition shall be
attached
thereto, together with the translation thereof in English, if not in
English
language. (Sec. 30, R. A. No. 165)
Sec. 63. Notice
of Hearing. - Upon filing of a
petition
for cancellation, the Director of Legal Affairs shall forthwith serve
notice
of the filing thereof upon the patentee and all persons having grants
or
licenses, or any other right, title or interest in and to the patent
and
the invention covered thereby, as appears of record in the Office, and
of notice of the date of hearing thereon on such persons and the
petitioner.
Notice of the filing of the petition shall be published in the IPO
Gazette.
(Sec.
31, R. A. No. 165a)
Sec. 64. Committee
of Three. - In cases involving highly
technical issues, on motion of any party, the Director of Legal Affairs
may order that the petition be heard and decided by a committee
composed
of the Director of Legal Affairs as chairman and two (2) members who
have
the experience or expertise in the field of technology to which the
patent
sought to be cancelled relates. The decision of the committee shall be
appealable to the Director General. (n)
Sec. 65. Cancellation
of the Patent. -
65.1. If the
Committee
finds that a case for cancellation has been proved, it shall order the
patent or any specified claim or claims thereof cancelled.
65.2. If the
Committee
finds that, taking into consideration the amendment made by the
patentee
during the cancellation proceedings, the patent and the invention to
which
it relates meet the requirement of this Act, it may decide to maintain
the patent as amended: Provided, That the fee for printing of a
new patent is paid within the time limit prescribed in the Regulations.
65.3. If the fee
for the printing of a new patent is not paid in due time, the patent
should
be revoked.
65.4. If the
patent
is amended under Subsection 65.2 hereof, the Bureau shall, at the same
time as it publishes the mention of the cancellation decision, publish
the abstract, representative claims and drawings indicating clearly
what
the amendments consist of. (n)
Sec. 66. Effect of
Cancellation of Patent or Claim. - The
rights conferred by the patent or any specified claim or claims
cancelled
shall terminate. Notice of the cancellation shall be published in the
IPO
Gazette. Unless restrained by the Director General, the decision or
order
to cancel by Director of Legal Affairs shall be immediately executory
even
pending appeal. (Sec. 32, R. A. No. 165a)
Chapter VII
REMEDIES OF A PERSON
WITH A RIGHT TO A PATENT
Sec. 67. Patent
Application by Persons Not Having the Right to a Patent. -
67.1. If a person
referred to in Section 29 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.
67.2. The
provisions
of Subsection 38.2 shall apply mutatis mutandis to a new application
filed
under Subsection 67.1(b). (n)
Sec. 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)
Sec. 69. Publication
of the Court Order. - The court shall
furnish the Office a copy of the order or decision referred to in
Sections
67 and 68, which shall be published in the IPO Gazette within three (3)
months from the date such order or decision became final and executory,
and shall be recorded in the register of the Office. (n)
Sec. 70. Time
to File Action in Court. - The actions
indicated in Sections 67 and 68 shall be filed within one (1) year from
the date of publication made in accordance with Sections 44 and 51,
respectively.
(n)
Chapter VIII
RIGHTS OF PATENTEES
AND INFRINGEMENT OF PATENTS
Sec. 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;
(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)
Sec. 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;
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 the purpose of
experiments
that relate to the subject matter of the patented invention;
72.4. 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;
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)
Sec. 73. Prior User.
-
73.1.
Notwithstanding
Section 72 hereof, 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, shall have the right to continue the use
thereof as envisaged in such preparations within the territory where
the
patent produces its effect.
73.2. 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. (Sec.
40, R. A. No. 165a)
Sec. 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
(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.
74.2. The use by
the Government, or third person authorized by the Government shall be
subject,
mutatis mutandis, to the conditions set forth in Sections 95 to 97 and
100 to 102. (Sec. 41, R. A. No. 165a)
Sec. 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. (n)
Sec. 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.
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)
Sec. 77. Infringement
Action by a Foreign National. - Any
foreign
national or juridical entity who meets the requirements of Section 3
and
not engaged in business in the Philippines, to which a patent has been
granted or assigned under this Act, may bring an action for
infringement
of patent, whether or not it is licensed to do business in the
Philippines
under existing law. (Sec. 41-A, R. A. No. 165a)
Sec. 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. (n)
Sec. 79. Limitation
of Action for Damages. - No damages
can
be recovered for acts of infringement committed more than four (4)
years
before the institution of the action for infringement.
(Sec.
43, R. A. No. 165)
Sec. 80. Damages;
Requirement of Notice. - Damages
cannot
be recovered for acts of infringement committed before the infringer
had
known; or had reasonable grounds to know of the patent. 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. (Sec. 44, R. A. No. 165a)
Sec. 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. (Sec. 45, R. A. No. 165)
Sec. 82. Patent
Found Invalid May be Cancelled. - In
an
action for infringement, if the court shall find the patent or any
claim
to be invalid, it shall cancel the same, and the Director of Legal
Affairs
upon receipt of the final judgment of cancellation by the court, shall
record that fact in the register of the Office and shall publish a
notice
to that effect in the IPO Gazette. (Sec. 46, R. A. No.
165a)
Sec. 83. Assessor
in Infringement Action. -
83.1. Two (2) or
more assessors may be appointed by the court. The assessors shall be
possessed
of the necessary scientific and technical knowledge required by the
subject
matter in litigation. Either party may challenge the fitness of any
assessor
proposed for appointment.
83.2. Each
assessor
shall receive a compensation in an amount to be fixed by the court and
advanced by the complaining party, which shall be awarded as part of
his
costs should he prevail in the action. (Sec. 47, R. A.
No.
165a)
Sec. 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 prescribed in three (3) years from date of the
commission
of the crime. (Sec. 48, R. A. No. 165a) Chapter IX
Voluntary Licensing
Sec. 85. Voluntary
License Contract. - To encourage the
transfer
and dissemination of technology, prevent or control practices and
conditions
that may in particular cases constitute an abuse of intellectual
property
rights having an adverse effect on competition and trade, all
technology
transfer arrangements shall comply with the provisions of this Chapter.
(n)
Sec. 86. Jurisdiction
to Settle Disputes on Royalties. - The
Director of the Documentation, Information and Technology Transfer
Bureau
shall exercise quasi-judicial jurisdiction in the settlement of
disputes
between parties to a technology transfer arrangement arising from
technology
transfer payments, including the fixing of appropriate amount or rate
of
royalty. (n)
Sec. 87. Prohibited
Clauses. - Except in cases under
Section
91, the following provisions shall be deemed prima facie to have an
adverse
on competition and trade:
87.1. Those which
impose upon the licensee the obligation to acquire from a specific
source
capital goods, intermediate products, raw materials, and other
technologies,
or of permanently employing personnel indicated by the licensor;
87.2. Those
pursuant
to which the licensor reserves the right to fix the sale or resale
prices
of the products manufactured on the basis of the license;
87.3. Those that
contain restrictions regarding the volume and structure of production;
87.4 Those that
prohibit the use of competitive technologies in a non-exclusive
technology
transfer agreement;
87.5. Those that
establish a full or partial purchase option in favor of the licensor;
87.6. Those that
obligate the licensee to transfer for free to the licensor the
inventions
or improvements that may be obtained through the use of the licensed
technology;
87.7. Those that
require payment of royalties to the owners of patents for patents which
are not used;
87.8. Those that
prohibit the licensee to export the licensed product unless justified
for
the protection of the legitimate interest of the licensor such as
exports
to countries where exclusive licenses to manufacture and/or distribute
the licensed product(s) have already been granted;
87.9. Those which
restrict the use of the technology supplied after the expiration of the
technology transfer arrangement, except in cases of early termination
of
the technology transfer arrangement due to reason(s) attributable to
the
licensee;
87.10. Those which
require payments for patents and other industrial property rights after
their expiration, termination arrangement;
87.11. Those which
require that the technology recipient shall not contest the validity of
any of the patents of the technology supplier;
87.12. Those which
restrict the research and development activities of the licensee
designed
to absorb and adapt the transferred technology to local conditions or
to
initiate research and development programs in connection with new
products,
processes or equipment;
87.13. Those which
prevent the licensee from adapting the imported technology to local
conditions,
or introducing innovation to it, as long as it does not impair the
quality
standards prescribed by the licensor;
87.14. Those which
exempt the licensor for liability for non-fulfillment of his
responsibilities
under the technology transfer arrangement and/or liability arising from
third party suits brought about by the use of the licensed product or
the
licensed technology; and
87.15. Other
clauses
with equivalent effects. (Sec. 33-C[2], R. A. 165a)
Sec. 88. Mandatory
Provisions. - The following
provisions
shall be included in voluntary license contracts:
88.1. That the
laws
of the Philippines shall govern the interpretation of the same and in
the
event of litigation, the venue shall be the proper court in the place
where
the licensee has its principal office;
88.2. Continued
access to improvements in techniques and processes related to the
technology
shall be made available during the period of the technology transfer
arrangement;
88.3. In the event
the technology transfer arrangement shall provide for arbitration, the
Procedure of Arbitration of the Arbitration Law of the Philippines or
the
Arbitration Rules of the United Nations Commission on International
Trade
Law (UNCITRAL) or the Rules of Conciliation and Arbitration of the
International
Chamber of Commerce (ICC) shall apply and the venue of arbitration
shall
be the Philippines or any neutral country; and
88.4. The
Philippine
taxes on all payments relating to the technology transfer arrangement
shall
be borne by the licensor. (n)
Sec. 89. 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. 33-B, R. A. 165a)
Sec. 90. 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.
33-C (1), R. A. 165a)
Sec. 91. Exceptional
Cases. - In exceptional or
meritorious
cases where substantial benefits will accrue to the economy, such as
high
technology content, increase in foreign exchange earnings, employment
generation,
regional dispersal of industries and/or substitution with or use of
local
raw materials, or in the case of Board of Investments, registered
companies
with pioneer status, exemption from any of the above requirements may
be
allowed by the Documentation, Information and Technology Transfer
Bureau
after evaluation thereof on a case by case basis. (n)
Sec. 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)
Chapter X
COMPULSORY LICENSING
Sec. 93. Grounds
for Compulsory Licensing. - The
Director
of Legal Affairs 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, under any of the
following
circumstances:
93.1. National
emergency
or other circumstances of extreme urgency;
93.2. 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
93.3. Where a
judicial
or administrative body has determined that the manner of exploitation
by
the owner of the patent or his licensee is anti-competitive; or
93.4. In case of
public non-commercial use of the patent by the patentee, without
satisfactory
reason;
93.5. 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. (Secs. 34, 34-A, and 34-B, R. A. No.
165a)
Sec. 94. Period for
Filing a Petition for a Compulsory License. -
94.1. A compulsory
license may not be applied for on the ground stated in Subsection 93.5
before the expiration of a period of four (4) years from the date of
filing
of the application or three (3) years from the date of the patent
whichever
period expires last.
94.2. A compulsory
license which is applied for on any of the grounds stated in
Subsections
93.2, 93.3, and 93.4 and Section 97 may be applied for at any time
after
the grant of the patent. (Sec. 34[1], R. A. No. 165)
Sec. 95. Requirement
to Obtain a License on Reasonable Commercial Terms. -
95.1. The license
will only be granted after the petitioner has made efforts to obtain
authorization
from the patent owner on reasonable commercial terms and conditions but
such efforts have not been successful within a reasonable period of
time.
95.2. The
requirement
under Subsection 95.1 shall not apply in the following cases:
(a) Where the
petition
for compulsory license seeks to remedy a practice determined after
judicial
or administrative process to be anti-competitive;
(b) In
situations
of national emergency or other circumstances of extreme urgency;
(c) In cases of
public non-commercial use.
95.3. In
situations
of national emergency or other circumstances of extreme urgency, the
right
holder shall be notified as soon as reasonably practicable.
95.4. In the case
of public non-commercial use, where the government or contractor,
without
making a patent search, knows or has demonstrable grounds to know that
a valid patent is or will be used by or for the government, the right
holder
shall be informed promptly. (n)
Sec. 96. Compulsory
Licensing of Patents Involving Semi-Conductor Technology. -
In the case of compulsory licensing of patents involving semi-conductor
technology, the license may only be granted in case of public
non-commercial
use or to remedy a practice determined after judicial or administrative
process to be anti-competitive. (n)
Sec. 97. Compulsory
License Based on Interdependence of Patents. -
If the invention protected by a patent, hereafter referred to as the
"second
patent," within the country cannot be worked without infringing another
patent, hereafter referred to as the "first patent," granted on a prior
application or benefiting from an earlier priority, a compulsory
license
may be granted to the owner of the second patent to the extent
necessary
for the working of his invention, subject to the following conditions:
97.1. The
invention
claimed in the second patent involves an important technical advance of
considerable economic significance in relation to the first patent;
97.2. The owner
of the first patent shall be entitled to a cross-license on reasonable
terms to use the invention claimed in the second patent;
97.3. The use
authorized
in respect of the first patent shall be non-assignable except with the
assignment of the second patent; and
97.4. The terms
and conditions of Sections 95, 96 and 98 to 100 of this Act. (Sec.
34-C, R. A. No. 165a)
Sec. 98. Form and
Contents of Petition. - The petition
for
compulsory licensing must be in writing, verified by the petitioner and
accompanied by payment of the required filing fee. It shall contain the
name and address of the petitioner as well as those of the respondents,
the number and date of issue of the patent in connection with which
compulsory
license is sought, the name of the patentee, the title of the
invention,
the statutory grounds upon which compulsory license is sought, the
ultimate
facts constituting the petitioner's cause of action, and the relief
prayed
for. (Sec. 34-D, R. A. No. 165)
Sec. 99. Notice
of Hearing. -
99.1. Upon filing
of a petition, the Director of Legal Affairs shall forthwith serve
notice
of the filing thereof upon the patent owner and all persons having
grants
or licenses, or any other right, title or interest in and to the patent
and invention covered thereby as appears of record in the Office, and
of
notice of the date of hearing thereon, on such persons and petitioner.
The resident agent or representative appointed in accordance with
Section
33 hereof, shall be bound to accept service of notice of the filing of
the petition within the meaning of this Section.
99.2. In every
case,
the notice shall be published by the said Office in a newspaper of
general
circulation, once a week for three (3) consecutive weeks and once in
the
IPO Gazette at applicant’s expense. (Sec. 34-E, R. A.
No.
165)
Sec. 100. Terms and
Conditions of Compulsory License. -
The
basic terms and conditions including the rate of royalties of a
compulsory
license shall be fixed by the Director of Legal Affairs subject to the
following conditions:
100.1. The scope
and duration of such license shall be limited to the purpose for which
it was authorized;
100.2. The license
shall be non-exclusive;
100.3. The license
shall be non-assignable, except with that part of the enterprise or
business
with which the invention is being exploited;
100.4. Use of the
subject matter of the license shall be devoted predominantly for the
supply
of the Philippine market: Provided, That this limitation shall not
apply
where the grant of the license is based on the ground that the
patentee’s
manner of exploiting the patent is determined by judicial or
administrative
process, to be anti-competitive.
100.5. The license
may be terminated upon proper showing that circumstances which led to
its
grant have ceased to exist and are unlikely to recur: Provided, That
adequate
protection shall be afforded to the legitimate interest of the
licensee;
and
100.6. The
patentee
shall be paid adequate remuneration taking into account the economic
value
of the grant or authorization, except that in cases where the license
was
granted to remedy a practice which was determined after judicial or
administrative
process, to be anti-competitive, the need to correct the
anti-competitive
practice may be taken into account in fixing the amount of
remuneration.
(Sec.
35-B, R. A. No. 165a)
Sec. 101. Amendment,
Cancellation, Surrender of Compulsory License.
101.1. Upon the
request of the patentee or the licensee, the Director of Legal Affairs
may amend the decision granting the compulsory license, upon proper
showing
of new facts or circumstances justifying such amendment.
101.2. Upon the
request of the patentee, the said Director may cancel the compulsory
license:
(a) If the
ground
for the grant of the compulsory license no longer exists and is
unlikely
to recur;
(b) If the
licensee
has neither begun to supply the domestic market nor made serious
preparation
therefor;
(c) If the
licensee
has not complied with the prescribed terms of the license;
101.3. The
licensee
may surrender the license by a written declaration submitted to the
Office.
101.4. The said
Director shall cause the amendment, surrender, or cancellation in the
Register,
notify the patentee, and/or the licensee, and cause notice thereof to
be
published in the IPO Gazette. (Sec. 35-D, R. A. No.
165a)
Sec. 102. Licensee’s
Exemption from Liability. - Any person
who works a patented product, substance and/or process under a license
granted under this Chapter, shall be free from any liability for
infringement:
Provided
however, That in the case of voluntary licensing, no collusion
with
the licensor is proven. This is without prejudice to the right of the
rightful
owner of the patent to recover from the licensor whatever he may have
received
as royalties under the license. (Sec. 35-E, R. A. No.
165a)
Chapter XI
ASSIGNMENT AND
TRANSMISSION
OF RIGHTS
Sec. 103. Transmission
of Rights. -
103.1 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.
103.2. 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. (Sec. 50, R. A.
No.
165a)
Sec. 104. Assignment
of Inventions. - 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. (Sec. 51, R. A.
No.
165)
Sec. 105. Form
of Assignment. - The assignment must
be
in writing, acknowledged before a notary public or other officer
authorized
to administer oath or perform notarial acts, and certified under the
hand
and official seal of the notary or such other officer. (Sec.
52, R. A. No. 165)
Sec. 106. Recording.
-
106.1. The Office
shall record assignments, licenses and other instruments relating to
the
transmission of any right, title or interest in and to inventions, and
patents or application for patents or inventions to which they relate,
which are presented in due form to the Office for registration, in
books
and records kept for the purpose. The original documents together with
a signed duplicate thereof shall be filed, and the contents thereof
should
be kept confidential. If the original is not available, an
authenticated
copy thereof in duplicate may be filed. Upon recording, the Office
shall
retain the duplicate, return the original or the authenticated copy to
the party who filed the same and notice of the recording shall be
published
in the IPO Gazette.
106.2. Such
instruments
shall be void as against any subsequent purchaser or mortgagee for
valuable
consideration and without notice, unless, it is so recorded in the
Office,
within three (3) months from the date of said instrument, or prior to
the
subsequent purchase or mortgage. (Sec. 53, R. A. No.
165a)
Sec. 107. Rights
of Joint Owners. - If two (2) or more
persons jointly own a patent and the invention covered thereby, either
by the issuance of the patent in their joint favor or by reason of the
assignment of an undivided share in the patent and invention or by
reason
of the succession in title to such share, each of the joint owners
shall
be entitled to personally make, use, sell, or import the invention for
his own profit: Provided, however, That neither of the joint owners
shall
be entitled to grant licenses or to assign his right, title or interest
or part thereof without the consent of the other owner or owners, or
without
proportionally dividing the proceeds with such other owner or owners. (Sec.
54, R. A. No. 165)
Chapter XII
REGISTRATION OF
UTILITY MODELS
Sec. 108. Applicability
of Provisions Relating to Patents. -
108.1. Subject to
Section 109, the provisions governing patents shall apply, mutatis
mutandis,
to the registration of utility models.
108.2. Where the
right to a patent conflicts with the right to a utility model
registration
in the case referred to in Section 29, the said provision shall apply
as
if the word patent were replaced by the words "patent or utility
model
registration."(Sec. 55, R. A. No. 165a)
Sec. 109. Special
Provisions Relating to Utility Models. -
109.1 (a) An
invention
qualifies for registration as a utility model if it is new and
industrially
applicable.
(b) Section 21,
"Patentable Inventions", shall apply except the reference to inventive
step as a condition of protection.
109.2. Sections
43 to 49 shall not apply in the case of applications for registration
of
a utility model.
109.3. A utility
model registration shall expire, without any possibility of renewal, at
the end of the seventh year after the date of the filing of the
application.
109.4. In
proceedings
under Sections 61 to 64, the utility model registration shall be
canceled
on the following grounds:
(a) That the
claimed
invention does not qualify for registration as a utility model and does
not meet the requirements of registrability, in particular having
regard
to Subsection 109.1 and Sections 22, 23, 24 and 27;
(b) That the
description
and the claims do not comply with the prescribed requirements;
(c) That any
drawing
which is necessary for the understanding of the invention has not been
furnished;
(d) That the
owner
of the utility model registration is not the inventor or his successor
in title. (Secs. 55, 56, and 57, R. A. No. 165a)
Sec. 110. Conversion
of Patent Applications or Applications for Utility Model Registration.
-
110.1. At any time
before the grant or refusal of a patent, an applicant for a patent may,
upon payment of the prescribed fee, convert his application into an
application
for registration of a utility model, which shall be accorded the filing
date of the initial application. An application may be converted only
once.
110.2. At any time
before the grant or refusal of a utility model registration, an
applicant
for a utility model registration may, upon payment of the prescribed
fee,
convert his application into a patent application, which shall be
accorded
the filing date of the initial application. (Sec. 58,
R.
A. No. 165a)
Sec. 111. Prohibition
against Filing of Parallel Applications.
- An applicant may not file two (2)_ applications for the same subject,
one for utility model registration and the other for the grant of a
patent
whether simultaneously or consecutively. (Sec. 59, R.
A.
No. 165a)
Chapter XIII
Industrial Design
and Layout Designs (Topographies) of Integrated Circuits
(Note:
This entire Chapter was amended by Republic
Act No. 9150 which was approved on August 06, 2001)
Sec. 112. Definition
of Terms:
1.An
Industrial Design is any composition of lines or colors or any
three-dimensional
form, whether or not associated with lines or colors: Provided, That
such composition or form gives a special appearance to and can serve as
pattern for an industrial product or handicraft;
2. Integrated
Circuit means a product, in its final form, or an intermediate
form,
in which the elements, at least one of which is an active element and
some
or all of the interconnections are integrally formed in and/or on a
piece
of material, and which is intended to perform an electronic function;
and
3. Layout-Design
is
synonymous with 'Topography' and means the three-dimensional
disposition,
however expressed, of the elements, at least one of which is an active
element, and of some or all of the interconnections of an integrated
circuit,
or such a three-dimensional disposition prepared for an integrated
circuit
intended for manufacture. chanrobles virtual law library
Sec. 113. Substantive
Conditions/or Protection.-
113.1.
Only industrial designs that are new or ornamental shall benefit from
protection
under this Act.
113.2. Industrial
designs dictated essentially by technical or functional considerations
to obtain a technical result or those that are contrary to public
order,
health or morals shall not be protected.
113.3. Only layout
-designs of integrated circuits that are original shall benefit from
protection
under this Act. A layout-design shall be considered original if it is
the
result of its creator's own intellectual effort and is not commonplace
among creators of layout-designs and manufacturers of integrated
circuits
at the time of its creation.
113.4. A layout-design
consisting of a combination of elements and interconnections that are
commonplace
shall be protected only if the combination, taken as a whole, is
original.
Sec. 114. Contents
of the Application. - 114.1.
Every
application for registration of an industrial design or layout-design
shall
contain:
(a) A request for
registration of the industrial design or layout-design;
(b) Information
identifying
the applicant;
(c) An
indication
of the kind of article of manufacture or handicraft to which the
industrial
design or layout-design shall be applied;
(d) A
representation
of the article of manufacture or handicraft by way of drawings,
photographs
or adequate graphic representation of the industrial design or of the
layout-design
as applied to the article of manufacture or handicraft which clearly
and
fully discloses those features for which protection is claimed;
and chanrobles virtual law library
(e) The name
and
address of the creator, or where the applicant is not the creator, a
statement
indicating the origin of the right to the industrial design or
layout-design
registration.
114.2. The
application
may be accompanied by a specimen of the article embodying the
industrial
design or layout-design and shall be subject to the payment of the
prescribed
fee.
Sec. 116. Examination.
-
116.1. The Office shall accord as the filing date the date of receipt
of
the application containing indications allowing the identity of the
applicant
to be established and a representation of the article embodying the
industrial
design or the layout -design or a pictorial representation thereof.
116.2. If the application
does not meet these requirements, the filing date should be that date
when
all the elements specified in Sec. 114 are filed or the mistakes
corrected.
Otherwise, if the requirements are not complied within the prescribed
period,
the application shall be considered withdrawn.
116.3. After the
application has been accorded a filing date and the required fees paid
on time, the applicant shall comply with the requirements of Sec. 114
within
the prescribed period, otherwise the application shall be considered
withdrawn.
116.4. The Office
shall examine whether the industrial design or layout-design complies
with
requirements of Sec. 112 (Definitions) and Sec. 113 (Substantive
Conditions
for Protection).
Sec. 117, Registration.
-
117.1. Where the Office finds that the conditions referred to in Sec.
113
are fulfilled, it shall order that registration be effected in the
industrial
design or layout-design register and cause the issuance of an
industrial
design or layout-design certificate of registration; otherwise, it
shall
refuse the application.
117.2. The
form and contents of an industrial design or layout-design certificate
shall be established by the Registrations: Provided, That the
name
and address of the creator shall be mentioned in every case.
117.3. Registration
shall be published in the form and within the period fixed by the
Regulations.
117.4. The
Office shall record in the register any change in the identity of the
proprietor
of the industrial design or layout design or his representative, if
proof
thereof is furnished to it. A fee shall be paid, with the request to
record
the change in the identity of the proprietor, if the fee is not paid,
the
request shall be deemed not to have been filed. In such case, the
former
proprietor and the former representative shall remain subject to the
rights
and obligations as provided in this Act.
117.5. Anyone
may inspect the Register and the files of registered industrial designs
or layout-designs including files of cancellation proceedings. chanrobles virtual law library
Sec. 118. The
Term of Industrial Design or Layout-Design Registration. -
118.1. The registration of an industrial design shall be for a period
of
five (5) years from the filing date of the application.
118.2. The
registration of an industrial design may be renewed for not more than
two
(2) consecutive periods of five (5) years each, by paying the renewal
fee.
118.3. The renewal
fee shall be paid within twelve (12) months preceding the expiration of
the period of registration. However, a grace period of six (6) months
shall
be granted for payment of the fees after such expiration, upon payment
of a surcharge.
118.4. The Regulations
shall fix the amount of renewal fee, the surcharge and other
requirements
regarding the recording of renewals of registration.
118.5. Registration
of a layout-design shall be valid for a period often (10) years,
without
renewal, and such validity to be counted from the date of commencement
of the protection accorded to the layout-design. The protection of a
layout-design
under this Act shall commence:
a) on the date of
the first commercial exploitation, anywhere in the world, of the
layout-design
by or with the consent of the right holder: Provided, That an
application
for registration is filed with the Intellectual Property Office within
two (2) years from such date of first commercial exploitation; or
b) on the
filing
date accorded to the application for the registration of the
layout-design
if the layout-design has not been previously exploited commercially
anywhere
in the world.
Sec. 119. Application
of Other Sections and Chapters. -
119.1.
The following provisions relating to patents shall apply mutatis
mutandis
to
an industrial design registration.
SECTION 21. - Novelty;
SECTION 24 - Prior
art: Provided, That the disclosure is contained in printed
documents
or in any tangible form;
SECTION 25 - Non
prejudicial Disclosure;
SECTION 28 - Right
to a Patent;
SECTION 29 - First
to File Rule;
SECTION 30 - Inventions
Created Pursuant to a Commission;
SECTION 31 - Right
of Priority: Provided, That the application for industrial
design
shall be filed within six (6) months from the earliest filing date of
the
corresponding foreign application;
SECTION 33 - Appointment
of Agent or Representative;
SECTION 51 - Refusal
of the Application; chanrobles virtual law library
SECTION 56 to 60
- Surrender, Correction of and Changes in Patent;
CHAPTER VII - Remedies
of a Person with a Right to Patent;
CHAPTER VIII - Rights
of Patentees and Infringement of Patents; and
CHAPTER XI - Assignment
and Transmission of Rights
119.2. If the essential
elements of an industrial design which is the subject of an application
have been obtained from the creation of another person without his
consent,
protection under this Chapter cannot be invoked against the injured
party.
119.3. The following
provisions relating to patents shall apply mutatis mutandis to
a
layout -design of integrated circuits registration:
SECTION 28 - Right
to a Patent;
SECTION 29 - First
to File Rule;
SECTION 30 - Inventions
Created Pursuant to a Commission;
SECTION 33 - Appointment
of Agent or Representative;
SECTION 56 - Surrender
of Patent;
SECTION 57 - Correction
of Mistakes of the Office;
SECTION 58 - Correction
of Mistakes in the Application;
SECTION 59 - Changes
in Patents;
SECTION 60 - Form
and Publication of Amendment;
CHAPTER VII - Remedies
of a Person with a Right to Patent;
CHAPTER VIII - Rights
of Patentees and Infringement of Patents: Provided, That the
layout-design
rights and limitation of layout-design rights provided hereunder shall
govern:
CHAPTER X - Compulsory
Licensing; chanrobles virtual law library
CHAPTER XI - Assignment
and Transmission of Rights
119.4. Rights
Conferred to the Owner of a Layout-Design Registration. - The owner
of a layout-design registration shall enjoy the following rights:
(1) to reproduce,
whether by incorporation in an integrated circuit or otherwise, the
registered
layout-design in its entirety or any part thereof, except the act of
reproducing
any part that does not comply with the requirement of originality; and
(2) to sell or
otherwise
distribute for commercial purposes the registered layout design, an
article
or an integrated circuit in which the registered layout-design is
incorporated.
119.5. Limitations
of Layout Rights. - The owner of a layout design has no right to
prevent
third parties from reproducing, selling or otherwise distributing for
commercial
purposes the registered layout-design in the following circumstances:
(1) Reproduction
of the registered layout-design for private purposes or for the sole
purpose
of evaluation, analysis, research or teaching;
(2) Where the
act
is performed in respect of a layout-design created on the basis of such
analysis or evaluation and which is itself original in the meaning as
provided
herein;
(3) Where the
act
is performed in respect of a registered lay-out-design, or in respect
of
an integrated circuit in which such a layout-design is incorporated,
that
has been put on the market by or with the consent of the right holder;
(4) In respect
of
an integrated circuit where the person performing or ordering such an
act
did not know and had no reasonable ground to know when acquiring the
integrated
circuit or the article incorporating such an integrated circuit, that
it
incorporated an unlawfully reproduced layout-design: Provided,
however,
That
after the time that such person has received sufficient notice that the
layout-design was unlawfully reproduced, that person may perform any of
the said acts only with respect to the stock on hand or ordered before
such time and shall be liable to pay to the right holder a sum
equivalent
to at least 5% of net sales or such other reasonable royalty as would
be
payable under a freely negotiated license in respect of such
layout-design;
or chanrobles virtual law library
(5) Where the
act
is performed in respect of an identical layout-design which is original
and has been created independently by a third party.
Sec. 120. Cancellation
of Design Registration. - 120.1. At
any
time during the term of the industrial design registration, any person
upon payment of the required fee, may petition the Director of Legal
Affairs
to cancel the industrial design on any of the following grounds:
(a) If the subject
matter of the industrial design is not registerable within the terms of
Sections 112 and 113;
(b) If the
subject
matter is not new; or
(c) If the
subject
matter of the industrial design extends beyond the content of the
application
as originally filed.
120.2. Where the grounds
for cancellation relate to a part of the industrial design,
cancellation
may be effected to such extent only. The restriction may be effected in
the form of an alteration of the effected features of the design.
120.3. Grounds
for Cancellation of Layout-Design of Integrated Circuits.- Any
interested
person may petition that the registration of a layout-design be
canceled
on the ground that:
(i) the
layout-design
is not protectable under this Act;
(ii) the right
holder
is not entitled to protection under this Act; or
(iii) where the
application
for registration of the layout-design, was not filed within two (2)
years
from its first commercial exploitation anywhere in the world.
Where the grounds for
cancellation are established with respect only to a part of the
layout-design,
only the corresponding part of the registration shall be canceled.
Any canceled layout-design
registration or part thereof, shall be regarded as null and void from
the
beginning and may be expunged from the records of the Intellectual
Property
Office. Reference to all canceled layout-design registration shall be
published
in the IPO Gazette. |