Patent System in the Philippines

LEGAL BASIS
Patent Laws	Intellectual Property Code of the Philippines (Republic Act No. 8293) (1997) Republic Act No. 10372, entitled ‘An Act Amending Certain Provisions of Republic Act No. 8293, otherwise known as the ‘Intellectual Property Code of the Philippines’, and for other purposes’ (2013)
Patent Rules	Revised Philippine Rules on Patent Cooperation Treaty (PR-o PCT 2024) Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs (2022) Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs (2011) Implementing Rules and Regulations of the Republic Act No. 9502, otherwise known as the ‘Universally Accessible Cheaper and Quality Medicines Act of 2008′ (2008) Office Order No. 121, Series of 2008, on the Amendment to the Rules and Regulations on Inventions (2008) Rules and Regulations on Inventions (as amended by Office Order No. 121, Series of 2008) (2008) Philippine Rules on PCT Applications (2004) Implementing Rules and Regulations of the “Philippine Plant Variety Protection Act of 2002” (Administrative Order No. 7, Series of 2003)(2003) Layout-Design (Topographies) of Integrated Circuits Regulations (2002) Office Order No. 13, Series of 2002, Amendment to the Philippines Rules on PCT Applications (2002) Intellectual Property Office Order No. 09 (2000), Amendments to the Rules and Regulations on Utility Models and Industrial Designs of May 12, 2000 (2000) Utility Model and Design Regulations (as amended by Office Order No. 09 of 2000) (2000) Rules and Regulations on Inventions (1998)
Patent Treaties	Patent Cooperation Treaty Paris Convention for the Protection of Industrial Property Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure
PATENT PROSECUTION
Elements of a Patent	Technical solution Inventive step Industrially applicable
Types of Patent	Invention Utility Model Industrial Design
Patentable Invention	Products Processes Computer-related inventions Improvements Microorganisms Microbiological processes
Non-Patentable Invention	Plant variety Computer program/software Business methods Aesthetic creations
Ownership of Patent	Inventor Company Assignee Heir Successor Joint owners
Who can file?	Resident Non-resident (power of attorney)
Types of Patent Searches	Comprehensive Compound per se Equivalent Prior art Collection search (by company/patentee)
Types of Patent Applications	Provisional Application – No Divisional Application – Yes Continuation in Part – No
Types of Patent Application Filing	Direct filing PCT filing
When to File	12 months from earliest filing date anywhere (convention claim) 12 months from the earliest publication or disclosure (non-convention claim) 30 months from earliest priority date or filing of international application to national phase entry(PCT route)
Time frame Direct Route Application	Filing to publication – 18 months Publication to request for substantive examination – 6 months Response to office action – 2 months with 2 month extension available
Time frame PCT Route Application	From national phase entry to request for substantive examination – 6 months (if no request was filed during entry) Response to office action – 2 months with 2 month extension available
Timeframe adverse Information(UM & ID)	30 days from date of publication in the IPO E-Gazette
Key Deadlines After Refusal	Appeal to Director of Bureau of Patents (BOP) – 2 months Appeal to Director General after final refusal by Director of BOP – 30 days Appeal to Court of Appeals after Director General refusal – 15 days + 15 days extension
Official Fees(5 claims + 30 pages)	Invention patent application with 5 claims, 30 pages of description and priority claim – $257 Utility model application with 5 claims, 30 pages of description and priority claim – $130 Industrial Design – $130
Patent Term	Invention – 20 years from filing date Utility Model – 7 years from filing date without renewal Industrial Design – 5 years from filing date with option to renew 2x for a total of 15 years
Maintenance of Invention Patent	Payment of patent annuities – 5th year and every year thereafter
PATENT ENFORCEMENT
Infringement Proceedings	Administrative action Criminal action Civil action
Specialized Court	For civil action involving “highly technical issues” For patent cancellation action before the Bureau of Legal Affairs
Burden of Proof	Administrative action – substantial evidence Criminal action – guilt beyond a reasonable doubt Civil action – preponderance of the evidence
Litigation Timetable	Trial court – 1.5 years Appellate court – 1 year
ADR	Prior to trial – informal dispute resolution Appellate level – mediation
Remedies	Compensatory damages (loss of revenue, profits, reasonable royalty) Injunction Attorneys’ fees and costs
Statute of Limitation	4 years from the commission of the infringing act