1 Legal framework

1.1 What are the sources of patent law in your jurisdiction?

The primary source of patent law in the Philippines is the IP Code of the Philippines (RA 8293), as amended. The IP Code should be read in conjunction with the Revised Implementing Rules and Regulations for Patents, Utility Models, and Industrial Designs. In addition, the decisions of the Supreme Court of the Philippines form a part of the legal system of the Philippines.

1.2 Who can register a patent?

The right to a patent belongs to the inventor, the inventor's heirs or the inventor's assigns. When two or more persons have jointly made an invention, the right to a patent shall belong to them jointly.

The following can apply for a patent in the Philippines:

  • a Filipino national, whether natural or legal; and
  • any person that is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law.

Applicants that are not residents of the Philippines must appoint and maintain a resident agent in the Philippines, upon whom notices and processes may be served.

If the applicant is not the inventor, the IP Office of the Philippines (IPOPHL) will require the applicant to submit proof of authority to apply for the patent, such as a deed of assignment.

2 Rights

2.1 What rights are obtained when a patent is registered?

The exclusive rights obtained when a patent is registered are as follows:

  • where the subject matter of a patent is a product, the right to restrain, prohibit and prevent any unauthorised person or entity from making, using, offering for sale, selling or importing the patented product;
  • where the subject matter of a patent is a product, the right to restrain, prevent and prohibit any unauthorised person or entity from performing any of the following acts:
    • using the process; and
    • manufacturing, dealing in, using, selling, offering for sale, or importing any product obtained, directly or indirectly, from such process.

The patent owner also has the right to assign, transfer and license the patent.

2.2 How can a patent owner enforce its rights?

The IP Code provides that the making, using, offering for sale, selling or importing a patented product or a product obtained, directly or indirectly, from a patented process, using a patented process without the authorisation of the patent owner, constitutes patent infringement.

The patent owner can enforce its rights by filing an administrative, civil or criminal case against the patent infringer to:

  • recover damages sustained, attorney's fees and other expenses of litigation; and
  • secure an injunction for the protection of the patent owner's rights.

2.3 For how long are patents enforceable?

The term of a patent is 20 years from the filing date of the application; while the term of a divisional application is 20 years from the filing date of the parent application. For Patent Cooperation Treaty (PCT) national phase entry applications, the 20-year period begins to run from the international filing date of the PCT application. However, a patent shall cease to be in force and effect if the patent is cancelled or the annual fee is not paid within the prescribed time.

3 Obtaining a patent

3.1 Which governing body controls the registration procedure?

The Intellectual Property Office of the Philippines (IPOPHL) is the body that controls the registration procedure in the Philippines; specifically, the Bureau of Patents of IPOPHL is in charge of examining the patent applications and issuing certificates of registration.

3.2 What is the cost of registration?

The fees that IPOPHL charges are as follows:

  • Filing fee: $90.
  • Publication fee: $20.
  • Request for substantive examination: $87.50.
  • Payment of publication of grant of patent: $20.
  • Issuance of certificate of letters patent: $25.

Additional fees will be incurred for the following:

  • for each claim in excess of five;
  • for each sheet in excess of 30; and
  • for a claim of convention priority.

The first annual fee shall be due and payable upon the expiration of four years from the date of publication and on each subsequent anniversary of such date. For PCT national phase entry applications, the first annual fee shall be due and payable upon the expiration of four years from the international publication date.

3.3 What are the grounds to reject a patent application?

The grounds for rejecting a patent application are as follows:

  • The invention is not new;
  • The invention does not involve an inventive step;
  • The invention is not industrially applicable;
  • The invention falls under any of the non-patentable inventions provided by law and the revised rules – namely:
    • discoveries, scientific theories, mathematical methods, a law of nature, a scientific truth or knowledge as such;
    • abstract ideas or theories and fundamental concepts, apart from the means or processes for implementing the concept to produce a technical effect;
    • schemes, rules and methods of performing mental acts and playing games;
    • method of doing business, such as a method or system for transacting business without the technical means for carrying out the method or system;
    • computer programs;
    • methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body. This provision shall not apply to products and compositions for use in any of these methods;
    • plant varieties or animal breeds, or essentially biological processes for the production of plants and animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes;
    • aesthetic creations; and
    • anything contrary to public order, health, welfare or morality, or processes for cloning or modifying the germ line genetic identity of humans or animals or uses of the human embryo; or
  • The application does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?

Once an applicant's claims are determined to be allowable/patentable by a partner IP office, the applicant can accelerate the examination of the patent application by requesting the accelerated examination of the patent application under the Patent Prosecution Highway (PPH) programme. The PPH programme allows select IP offices to share results to reduce duplication of efforts and reduce the workload with regard to patent examination. This allows an IP office to benefit from the work done by other IP offices. A request for accelerated examination under the PPH programme can be filed at any time before the issuance of the substantive examination report by IPOPHL.

To date, the Philippines has PPH agreements with the following IP offices:

  • the Japan Patent Office;
  • the European Patent Office;
  • the Korean Intellectual Property Office; and
  • the US Patent and Trademark Office.

In the same vein, the applicant can request the accelerated examination of the patent application under the Association of Southeast Asian Nations (ASEAN) Patent Examination Cooperation (ASPEC) programme. ASPEC is a regional patent work-sharing programme among nine participating ASEAN member states – Brunei, Cambodia, Indonesia, Laos, Malaysia, Singapore, Thailand and Vietnam.

3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?

Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body are excluded from patent protection. Thus, methods of treatment not falling within the scope of ‘therapy' and ‘surgery' are not excluded from patentability. Moreover, claims to methods of diagnosis are objectionable only if performed directly on the human body or animal body. However, products and compositions for use in any of these methods are patentable.

The first medical use of a known substance whose pharmacological properties are not disclosed may be claimed in the form of a purpose-related product claim, since the technical teaching is the novel and inventive purpose of the known substance. The Swiss-type form of claim is also acceptable when claiming a first medical indication.

For second medical use claims, for the therapeutic application to be construed as a further medical use, this new technical effect of a known substance must lead to a truly new therapeutic application, which is the treatment of a different pathology.

3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?

There are no procedural or legal mechanisms available to extend the term of a patent in the Philippines. The term of a patent is 20 years from the filing date of the application.

3.7 What subject matter is patent eligible?

Any technical solution of a problem in any field of human activity that is new, involves an inventive step, and is industrially applicable is patentable, provided that it is not on the list of non-patentable inventions in the IP Code. It may be a product or process, or an improvement of any of the foregoing.

3.8 If the patent office does not grant a patent, is an appeal available and to whom?

A decision of the examiner to refuse an application may be appealed to the director of patents. The applicant, for purposes of appeal, may consider a second adverse decision by the examiner on the same grounds as final. The appellant must file a notice of appeal and pay the required fees within two months of the mailing date of the decision that is being appealed. The notice of appeal must specify the grounds on which the appeal is taken and must be signed by the appellant or by the attorney of record. Within two months of filing of the notice of appeal, the appellant must file a brief of the authorities and arguments on which it relies to maintain the appeal. Failure to file the brief within this timeframe will result in dismissal of the appeal.

The decision or order of the director reversing the refusal of the examiner shall be immediately final and executory. However, if the decision of the director affirms the refusal of the examiner, the applicant may file a notice of appeal to the director general of the IP Office of the Philippines (IPOPHL) within 30 days of receipt of the director's decision. Otherwise, the refusal of the application shall become final and executory. The decision of the director general reversing the decision of the director and allowing the application shall be immediately final and executory. No motion for reconsideration of the decision or order of the director general shall be allowed.

The decision of the director general of IPOPHL can be appealed to the Court of Appeals by filing a petition for review within 15 days of notification of the decision in accordance with the Rules of Court. The decision of the Court of Appeals can be appealed to the Supreme Court by filing a petition for review on certiorari within 15 days of notification of the decision in accordance with the Rules of Court.

4 Validity/post-grant review and/or opposition procedures

4.1 Where can the validity of an issued patent be challenged?

The validity of an issued patent can be challenged by filing a petition for cancellation of the patent with the Bureau of Legal Affairs of the IP Office of the Philippines (IPOPHL). A defendant can also challenge the validity of a patent as a defence in an infringement action filed with the regular courts.

4.2 How can the validity of an issued patent be challenged?

A patent can be challenged by any interested party by filing a petition to cancel the patent or any claim thereof, or parts of the claim, based on any of the grounds provided in the IP Code. Moreover, in an action for infringement, the defendant, in addition to other defences available to it, may show the invalidity of the patent or any claim thereof. If the court finds the patent or any claim to be invalid, it will cancel the same; and the director of legal affairs, upon receipt of the final judgment of cancellation by the court, will record that fact in the register of the IPOPHL and publish a notice to that effect in the IPOPHL Gazette.

4.3 What are the grounds to invalidate an issued patent?

The grounds to invalidate an issued patent are as follows:

  • The invention is not new or patentable;
  • The patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art;
  • The patent is contrary to public order or morality; or
  • The registrant is declared by final court order or decision as having no right to the patent.

4.4 What is the evidentiary standard to invalidate an issued patent?

Cancellation actions filed with IPOPHL must be supported by substantial evidence. On the other hand, a preponderance of the evidence is required for civil cases handled by the courts.

4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?

Third parties are not allowed to oppose the grant of a patent. However, within six months of the date of publication of the application or the request for substantive examination filed by the applicant, whichever comes later, any person may present observations in writing concerning the patentability of the invention – including matters pertaining to novelty, inventive step and industrial applicability – while citing relevant prior art.

The interested party may request a conference to obtain a better understanding of the application. IPOPHL will acknowledge receipt of any observation or request for conference and may request additional information or clarifications. All observations will be communicated to the applicant, which may comment on them within 30 days of the mailing date of the communication. Copies of any observation filed, comments thereto by the applicant and minutes of the conferences shall form part of the file wrapper of the application.

The observation, comments and discussions in conferences will be taken into consideration when examining the patent application. IPOPHL will notify the parties that have submitted observations or were present during the conferences of the decision involving the patent application if it is granted registration after issuance of the certificate of registration.

4.6 Who can oppose a granted patent?

Third parties are not allowed to oppose the grant of a patent. See question 4.5.

4.7 What are the timing requirements for filing an opposition or post-grant review petition?

Third parties are not allowed to oppose the grant of a patent. See question 4.5.

4.8 What are the grounds to file an opposition?

Third parties are not allowed to oppose the grant of a patent. See question 4.5.

4.9 What are the possible outcomes when an opposition is filed?

Third parties are not allowed to oppose the grant of a patent. See question 4.5.

4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?

Third parties are not allowed to oppose the grant of a patent. See question 4.5.

4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?

Third parties are not allowed to oppose the grant of a patent. See question 4.5.

5 Patent enforceability

5.1 What makes a patent unenforceable?

The term of a patent is 20 years from the filing date of the application. However, a patent shall cease to be in force and effect if the patent is cancelled or the annual fee is not paid within the prescribed time.

The IP Code also provides for limitations of patent rights, whereby the patent owner cannot prevent third parties from performing any of its exclusive rights, such as the following:

  • use of a patented product that has been put on the market in the Philippines by the owner of the product or with the owner's express consent, insofar as such use is performed after that product has been put on the market. 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 authorised to use the invention, provided that the right to import the drugs and medicines is available to any government agency or any private third party;
  • acts done privately and on a non-commercial scale or for a non-commercial purpose that does not significantly prejudice the economic interests of the owner of the patent;
  • the experimental use of the invention exclusively for scientific purposes or educational purposes, and such other activities directly related to such scientific or educational experimental use;
  • in the case of drugs and medicines, use that involves testing, 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;
  • use that involves the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription or use concerning the medicine so prepared;
  • use of the invention 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 for the manufacture of anything to be sold within the Philippines;
  • use by a prior user which, in good faith, was using the invention or has undertaken serious preparations to use the invention in its enterprise or business before the filing date or priority date of the application. The prior user will have the right to continue using the invention as envisaged in such preparations within the territory where the patent produces its effect; and
  • use of the invention by government as provided by law.

5.2 What are the inequitable conduct standards?

There are no inequitable conduct standards provided by law in the Philippines.

5.3 What duty of candour is required of the patent office?

There is no duty of candour required by law or by the IP Office of the Philippines.

6 Patent infringement

6.1 What Constitutes Patent Infringement?

The IP Code provides that the following constitute patent infringement:

  • making, using, offering for sale, selling or importing a patented product or a product obtained directly or indirectly from a patented process; or
  • using a patented process without the authorisation of the patent owner.

6.2 Does your jurisdiction apply the doctrine of equivalents?

Yes, the Philippines recognises the doctrine of equivalents. In Smith Kline Beckman Corporation v Court of Appeals (GR No 126627, 14 August 2003), the Supreme Court of the Philippines held that 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 same function in substantially the same way to achieve substantially the same result. In other words, the principle or mode of operation must be the same or substantially the same. Thus, the doctrine of equivalents requires satisfaction of the ‘function, means and result' test; the patent owner has the burden of proving that all three components of such equivalency test are met.

Moreover, the IP Code provides that, for the purpose of determining the extent of protection conferred by the patent, due account must 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 their equivalents.

6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?

Patent law is territorial in nature. Hence, the IP Code is enforceable only within the Philippines. However, the IP Code provides that importing a patented product or a product obtained directly or indirectly from a patented process constitutes patent infringement. Thus, there is patent infringement if a patented product is imported into the Philippines without the authorisation or consent of the patent owner, even if made or sold outside the Philippines.

However, the limitation on patent rights applies once it has been put on the market in the Philippines by the patent owner or with the owner's express consent. With regard to drugs and medicines, the limitation on patent rights shall apply after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent owner, or by any party authorised to use the invention, provided that the right to import the drugs and medicines shall be available to any government agency or any private third party.

6.4 What are the standards for wilful infringement?

The IP Code provides that damages cannot be recovered for acts of infringement committed before the infringer had known, or had reasonable grounds to know of the patent. However, it is presumed that the infringer had known of the patent if the words ‘Philippine Patent' with the number of the patent are placed on the patented product, its container or packaging, or on the advertising materials relating to the patented product or process.

6.5 Which parties can bring an infringement action?

Any patent owner or anyone possessing any right, title or interest in and to the patented invention may bring an infringement action against the infringer to recover damages, attorney's fees and other expenses of litigation. Moreover, any foreign national or juridical entity not engaged in business in the Philippines that meets the requirements of Section 3 of the IP Code may bring an action for patent infringement in the Philippines.

6.6 How soon after learning of infringing activity must an infringement action be brought?

The IP Code provides that damages can no longer be recovered for any acts of infringement committed more than four years before the institution of the action for infringement.

6.7 What are the pleading standards to initiate a suit?

An administrative complaint for patent infringement is commenced by filing a verified complaint with the Bureau of Legal Affairs (BLA) of the IP Office of the Philippines (IPOPHL). The complaint must contain a concise statement of the ultimate facts constituting the complainant's cause of action and the reliefs sought. The complaint must also include a certification of non-forum shopping. The BLA has original jurisdiction in administrative actions for violations of laws involving IP rights where the total damages claimed are not less than PHP 200,000.

A civil case for patent infringement is commenced by filing a complaint with the proper court. The complaint must be verified and state:

  • the full names of the parties;
  • a concise statement of the ultimate facts; and
  • the relief sought.

The certification of non-forum shopping, judicial affidavits and the relevant evidence must also be made part of the complaint.

A criminal case for patent infringement is commenced by filing a complaint affidavit with the office of the prosecutor. The complaint must state:

  • the name of the accused;
  • the designation of the offence given by the statute;
  • the acts or omissions complained of as constituting the offence;
  • the name of the offended party;
  • the approximate date of the commission of the offence; and
  • the place where the offence was committed.

The prosecutor will then conduct a preliminary investigation to determine whether there are sufficient grounds to engender a well-founded belief that patent infringement has been committed, and that the respondent is probably guilty thereof and should stand trial.

6.8 In which venues may a patent infringement action be brought?

The venues where a patent infringement action may be brought are as follows:

  • A civil case for patent infringement is commenced by filing a verified complaint with the regional trial court where the address or principal office of either the complainant or the defendant is located, at the election of the complainant;
  • An administrative complaint for patent infringement is commenced by filing a verified complaint with the Bureau of Legal Affairs (BLA) of IPOPHL;
  • Without prejudice to the institution of a civil action for damages, a criminal action for patent infringement may be filed if the infringement is repeated by the infringer or by anyone in connivance with the infringer after the finality of the judgment of the court against the infringer. A criminal case for patent infringement is commenced by filing a complaint-affidavit with the office of the prosecutor where the crime was committed or where any of its essential ingredients occurred. The prosecutor will conduct a preliminary investigation to determine whether there are sufficient grounds to engender a well-founded belief that patent infringement has been committed and that the respondent is probably guilty thereof and should stand trial. The criminal action shall prescribe in three years from the date of the commission of the crime.

6.9 What are the jurisdictional requirements for each venue?

A civil action for patent infringement may be filed with the courts or the Bureau of Legal Affairs (BLA) of IPOPHL. The Bureau of Legal Affairs has original jurisdiction in administrative actions for violations of laws involving IP rights where the total damages claimed are not less than PHP 200,000.

A criminal case for patent infringement must be filed with the court where the crime was committed or where any of its essential ingredients occurred.

6.10 Who is the fact finder in an infringement action?

The Philippines does not have a jury system. The fact finder in a civil or criminal action for patent infringement is the judge handling the case. However, the court, on its own or upon motion by a party, may appoint one expert or order the creation of a committee of three experts to provide advice on the technical aspects of the patent in dispute, including the construction of claims. On the other hand, the fact finder for an administrative action for patent infringement is the hearing officer of the Bureau of Legal Affairs of IPOPHL handling the case.

6.11 Does the fact finder change based on venue?

The fact finder does not change based on the venue of the action. It is always the judge, or the hearing officer in case of administrative actions, that hears and decides the case.

6.12 What are the steps leading up to a trial?

For civil actions for patent infringement filed with the courts, once the court receives the verified complaint, it will then serve summons to the respondent, which will have 30 days to file the verified answer. Should the defendant fail to answer the complaint, the court shall render judgment as may be warranted by the allegations in the complaint. A party can avail of any of the modes of discovery not later than 30 calendar days from the joinder of issues.

Within five calendar days of the end of the period for availing of or compliance with any of the modes of discovery, whichever comes later, the handling court will immediately issue a notice setting the case for pre-trial and directing the parties to submit their pre-trial briefs. The parties must file with the court and furnish each other copies of their pre-trial briefs in such a manner as to ensure receipt by the court and the other party at least five calendar days before the date set for the pre-trial. Before the pre-trial, the court will require the marking of documentary or object evidence by the branch clerk of court or any authorised court personnel. The pre-trial will be terminated not later than 30 calendar days after its commencement.

On the day of termination of the pre-trial, the court will issue a pre-trial order to refer the parties for mandatory court-annexed mediation. The period for court-annexed mediation will not exceed 30 calendar days and is non-extendible. If the court-annexed mediation fails and the judge is convinced that settlement is still possible, the case may be referred to another court for judicial dispute resolution. JDR will be conducted within a non-extendible period of 15 calendar days from notice of the JDR court of the failure of the court-annexed mediation. The period for JDR is non-extendible and must not exceed 15 calendar days. If judicial dispute resolution fails, trial before the original court shall proceed.

For administrative actions for patent infringement filed with the Bureau of Legal Affairs of IPOPHL, once the bureau receives the verified complaint, it will serve summons or notice to answer to the respondent. The summons will require the respondent to answer the complaint within 10 days of receipt of the summons.

The respondent must answer the complaint in writing by either specifically denying the material allegations of the complaint or alleging any affirmative defences. If the respondent fails to answer within the time allowed, the hearing officer will declare the respondent in default. The hearing officer will then proceed to render judgment granting the complainant such relief as the complainant's pleading may warrant, unless he or she requires the complainant to submit evidence.

Upon joinder of issues, the hearing officer will set the pre-trial conference immediately. The notice of pre-trial will require the parties to submit their pre-trial briefs. The failure of the complainant to submit its pre-trial brief or to appear at the pre-trial will constitute cause for dismissal of the action with prejudice. On the other hand, failure on the part of the respondent will constitute cause to declare the respondent as in default, to allow the complainant to present evidence ex parte and to allow the hearing officer to render judgment on the basis thereof.

After the pre-trial, the hearing officer will make an order that recites the action taken at the conference, the amendments allowed to the pleadings and the agreements made by the parties as to any of the matters considered. This order will limit the issues for trial to those not disposed of by admissions or agreements of counsel and, when entered, controls the subsequent course of the action.

For criminal actions for patent infringement, the complaint-affidavit must be filed with the Office of the Prosecutor that has jurisdiction over the offence charged. Within 10 calendar days of filing of the complaint, the investigating prosecutor may dismiss the case outright for being patently without basis or merit and order the release of the accused, if in custody, and/or seized articles in custody, if any.

If the complaint is not dismissed, the investigating prosecutor will issue an order to the respondent requiring the respondent to submit the respondent's counter-affidavit. The investigating prosecutor may set a hearing if there are facts and issues to be clarified from a party or a witness. The parties can be present at the hearing, but without the right to examine or cross-examine. They may, however, submit to the investigating prosecutor questions that may be asked to the party or witness concerned. The investigating prosecutor will then determine whether there is sufficient ground to hold the respondent for trial. If there is ground to hold the respondent for trial, an information will be filed with the court that has jurisdiction over the territory in which any of the elements of the offence occurred.

The judge will personally evaluate the information, together with the resolution of the prosecutor and its supporting documents. The judge may immediately dismiss the case if the evidence on record clearly fails to establish probable cause. If the judge finds probable cause, a warrant of arrest will be issued. A commitment order will be issued if the accused has already been arrested. In case of doubt on the existence of probable cause, the judge may order the prosecutor to present additional evidence within five calendar days of notice and the issue must be resolved by the court within 15 calendar days of presentation of the additional evidence.

Once the court has acquired jurisdiction over the person of the accused, the arraignment of the accused and the pre-trial will be set simultaneously. Before the pre-trial, the court will require the marking of documentary or object evidence by the branch clerk of court or any authorised court personnel. The pre-trial will be terminated within 30 calendar days of the date of its commencement. Should a party desire to present additional judicial affidavits as part of its direct evidence, the party must so manifest during the pre-trial stating the purpose thereof. If allowed by the court, the additional judicial affidavits must be submitted to the court and served on the adverse party not later than five calendar days after termination of the pre-trial.

If the prosecution presents additional judicial affidavits, the accused may file its judicial affidavits and serve the same on the prosecution within five calendar days of such service. If the counsel for the accused or the prosecutor does not appear at the pre-trial and does not offer an acceptable excuse, the court is authorised to impose any and all available sanctions and penalties that are allowed under existing and relevant rules of procedure.

On the day of termination of the pre-trial, the court must issue a pre-trial order and the judge must order the parties to appear before the Philippine Mediation Centre for court-annexed mediation on the civil aspect of the criminal action for a non-extendible period of 30 calendar days. After the lapse of the mediation period or if mediation fails, the trial will proceed.

6.13 What remedies are available for patent infringement?

Depending on the type of case filed, the remedies available against a patent infringer are as follows:

  • damages;
  • impoundment of sales invoices and other documents evidencing sales;
  • forfeiture of paraphernalia and all real and personal properties that were used in the commission of the offence;
  • injunction;
  • preliminary injunction;
  • temporary restraining order;
  • preliminary attachment;
  • cancellation or suspension of any permit, licence, authority, or registration that was granted by IPOPHL;
  • destruction or disposal outside channels of commerce of the infringing goods;
  • censure;
  • contempt;
  • imprisonment; and
  • fine.

6.14 Is an appeal available and what are the grounds to appeal?

Yes. The decision of the director of the Bureau of Legal Affairs can be appealed to the director general of IPOPHL. The appeal memorandum shall set forth concisely:

  • a statement of the matters involved;
  • the issues raised;
  • the specification of errors, whether they be errors of law or fact; and
  • the reasons or arguments relied upon for the allowance of the appeal.

The decision of the director general can be appealed to the Court of Appeals, while the decision of the Court of Appeals can be appealed to the Supreme Court.

7 Discovery

7.1 Is discovery available during litigation?

A party can avail of any of the modes of discovery provided in the Rules of Court within 30 calendar days of the joinder of issues.

7.2 What kinds of discovery are available?

The modes of discovery available are as follows:

  • Depositions pending action;
  • Depositions before action or pending appeal; Any person may file a verified petition to perpetuate its testimony or that of another;
  • Interrogatories to parties: A party that wishes to elicit material and relevant facts from any adverse party must file and serve upon the latter written interrogatories to be answered by the party served or, if the party served is a corporation, partnership or association, by any officer competent to testify in its behalf;
  • Admission by adverse party: At any time after issues have been joined, a party may file and serve upon any other party a written request for the admission of the genuineness of any material and relevant document described in and exhibited with the request or of the truth of any material and relevant matter of fact set forth in the request.
  • Production or inspection of documents or things: Upon motion of any party and upon showing good cause, the court in which an action is pending may order any party to do the following:
    • produce and permit the inspection and copying any designated documents, papers, books, accounts, letters, photographs, objects or tangible things, not privileged, which constitute or contain evidence material to any matter involved in the action and which are in the latter's possession, custody or control; or
    • permit entry upon designated land or other property in its possession or control for the purpose of inspecting, measuring, surveying or photographing the property or any designated relevant object or operation thereon. The order shall specify the time, place and manner of making the inspection and taking copies and photographs, and may prescribe such terms and conditions as are just.

7.3 Are there any limitations to the amount of discovery allowed?

There are limitations to the rules of discovery. Such limitations arise in the following circumstances:

  • It can be shown that the examination is being conducted in bad faith;
  • It can be shown that the examination is conducted in such a manner as to annoy, embarrass or oppress the person subject to the inquiry;
  • The inquiry touches upon the irrelevant; or
  • The inquiry encroaches upon the recognised domains of privilege.

8 Claim construction

8.1 When during a patent infringement action are claim terms defined by the tribunal?

The Philippines does not have a separate proceeding for defining and construing the claims of the patent.

8.2 What is the legal standard used to define claim terms?

The IP Code provides that the extent of protection conferred by the patent will be determined by the claims, which are to be interpreted in the light of the description and drawings.

To determine the extent of protection conferred by the patent, due account will be taken of elements which are equivalent to the elements expressed in the claims, so that a claim will be considered to cover not only all the elements as expressed therein, but also their equivalents.

8.3 What evidence does the tribunal consider in defining claim terms?

The judge is the person who decides how claims are to be construed. The IP Code provides that the extent of protection conferred by the patent will be determined by the claims, which are to be interpreted in the light of the description and drawings. To determine the extent of protection conferred by the patent, due account will be taken of elements which are equivalent to the elements expressed in the claims, so that a claim will be considered to cover not only all the elements as expressed therein, but also their equivalents.

In patent infringement cases, the court, on its own or upon motion by a party, may appoint one expert or order the creation of a committee of three experts to provide advice on the technical aspects of the patent in dispute, including the construction of claims.

If the court orders the creation of a committee of three experts, each party will nominate an expert, who will then both be appointed by the court. Thereafter, the court will appoint the third expert from the list submitted by the experts of each side. All fees and expenses relating to the appointment of an expert or committee of experts will be initially equally shouldered by the parties, but may subsequently be adjudicated by the court in favour of the prevailing party. To assist in the trial involving highly technical evidence or matters, the court may also request the IP Office of the Philippines to provide equipment, technical facilities, and personnel.

9 Remedies

9.1 Are injunctions available?

Yes. Both preliminary and final injunctions are available.

9.2 What is the standard to obtain an injunction?

A preliminary injunction may be granted based on the following grounds:

  • The applicant is entitled to the relief demanded and the whole or part of such relief consists in restraining the commission or continuance of the act or acts complained of, or in requiring the performance of an act or acts either for a limited period or perpetually;
  • The commission, continuance or non-performance of the act or acts complained of during the litigation would probably cause injustice to the applicant; or
  • A party is doing, threatening or attempting to do, or is procuring or suffering to be done, some act or acts that are probably in violation of the rights of the applicant regarding the subject of the action or proceeding, and tending to render the judgment ineffectual.

Moreover, jurisprudence provides that the following must be proven first before a writ of preliminary injunction may be issued:

  • The applicant has a clear and unmistakable right to be protected;
  • There is a material and substantial invasion of such right;
  • There is an urgent need for the writ to prevent irreparable injury to the applicant; and
  • No other ordinary, speedy and adequate remedy exists to prevent the infliction of irreparable injury.

If, after the trial of the infringement action, it appears that the applicant is entitled to have the act or acts complained of permanently enjoined, the court will grant a final injunction perpetually restraining the other party from performing the acts complained of.

9.3 Are damages available?

Yes. Any patent owner or anyone possessing any right, title or interest in and to the patented invention whose rights have been infringed may bring an infringement action to recover damages from the infringer.

9.4 What types of damages are available?

The patent owner may recover from the patent infringer such damages sustained by the patent owner, plus attorney's fees and other expenses of litigation.

However, if the damages are inadequate or cannot readily be ascertained with reasonable certainty, the court may award by way of damages a sum equivalent to a reasonable royalty.

The Civil Code of the Philippines also provides for other kinds of damages, as follows:

  • Moral damages include physical suffering, mental anguish, fright, serious anxiety, besmirched reputation, wounded feelings, moral shock, social humiliation and similar injury;
  • Nominal damages are adjudicated so that a right of the plaintiff which has been violated or invaded by the defendant may be vindicated or recognised, and not to indemnify the plaintiff for any loss suffered by it;
  • Temperate damages may be recovered when the court finds that some pecuniary loss has been suffered but its amount cannot, from the nature of the case, be determined with certainty;
  • Liquidated damages are those agreed upon by the parties to a contract, to be paid in case of breach of the contract; and
  • Exemplary damages are imposed by way of example or a correction for the public good, in addition to the moral, temperate, liquidated, or actual damages.

9.5 What is the standard to obtain certain types of injunctions?

See question 9.2.

9.6 Is it possible to increase or multiply damages due to a party's actions?

Yes. Depending on the circumstances of the case, the court may award damages in a sum above the actual damages sustained. However, the award of damages should not exceed three times the amount of the actual damages.

9.7 Are sanctions available?

Yes. Aside from damages, other sanctions are available against the infringer.

9.8 What kinds of sanctions are available?

Depending on the type of case filed, the following sanctions are available against a patent infringer:

  • damages;
  • impoundment of sales invoices and other documents evidencing sales;
  • forfeiture of paraphernalia and all real and personal properties that were used in the commission of the offense;
  • injunction;
  • preliminary injunction;
  • temporary restraining order;
  • preliminary attachment;
  • cancellation or suspension of any permit, licence, authority, or registration that was granted by the IP Office of the Philippines;
  • destruction or disposal outside channels of commerce of the infringing goods;
  • censure;
  • contempt;
  • imprisonment; and
  • fine.

9.9 Can a party obtain attorneys' fees?

Yes. A party can obtain attorney's fees.

9.10 What is the standard to obtain attorneys' fees?

Article 2208 of the Civil Code of the Philippines provides that, in the absence of stipulation, attorney's fees cannot be recovered, except:

  • when exemplary damages are awarded;
  • when the defendant's acts or omissions have compelled the plaintiff to litigate with third parties or to incur expenses to protect its interests;
  • in criminal cases of malicious prosecution against the plaintiff;
  • in case of a clearly unfounded civil action or proceeding against the plaintiff;
  • where the defendant acted in gross and evident bad faith in refusing to satisfy the plaintiff's plainly valid, just and demandable claim;
  • in a separate civil action to recover civil liability arising from a crime;
  • when at least double judicial costs are awarded; and
  • in any other case where the court deems it just and equitable that attorney's fees and expenses of litigation should be recovered.

However, the attorney's fees must be reasonable.

10 Licensing

10.1 What patent rights can a party obtain through a licence?

The patent owner can license any or all of its exclusive rights to a licensee. The licence can be exclusive or non-exclusive, and can be limited as to the territory or duration of the licence.

10.2 What limits can a patent owner impose on a licence?

A patent owner may establish limitations on a licence agreement, provided that they are not contrary to law, morals, good customs, public order or public policy. However, the licence agreement should contain none of the prohibited clauses provided in Section 87 of the IP Code and contain all the mandatory provisions in Section 88 of the IP Code. See also question 11.1.

11 Antitrust

11.1 Are there any limits on patent protection due to antitrust laws?

The IP Code provides for prohibited clauses that shall be deemed prima facie to have an adverse effect on competition and trade, as follows:

  • Tie-in purchase: This obliges the licensee to acquire from a specific source capital goods, intermediate products, raw materials and other technologies, or to permanently employ personnel indicated by the licensor.
  • Price fixing: Under this clause, the licensor reserves the right to fix the sale or resale prices of the products manufactured on the basis of the licence.
  • Restriction on production volume and structure: This imposes restrictions regarding the volume and structure of production.
  • Prohibition on the use of competitive technology in a non-exclusive agreement: This prohibits the use of competitive technologies in a non-exclusive technology transfer agreement.
  • Full or partial purchase option: This establishes a full or partial purchase option in favour of the licensor.
  • Free grant-back: This obliges the licensee to transfer for free to the licensor the inventions or improvements that may be obtained through the use of the licensed technology.
  • Payment for unused patents: This requires payment of royalties to the owners of patents for patents that are not used.
  • Export restriction: This prohibits the licensee from exporting the licensed product unless justified for the protection of the legitimate interest of the licensor, such as exports to countries where exclusive licences to manufacture and/or distribute the licensed products have already been granted.
  • Restriction to use the technology after term: This restricts the use of the technology supplied after the expiration of the licence agreement, except in case of early termination of the licence agreement due to reasons attributable to the licensee.
  • Payment for expired patents: This requires payments for patents and other industrial property rights after the expiration or termination of the licence agreement.
  • Non-contestability of patents: This requires that the technology recipient not contest the validity of any of the patents of the technology supplier.
  • Research and development (R&D) restriction: This restricts the R&D activities of the licensee designed to adapt the transferred technology to local conditions or to initiate R&D programmes in connection with new products, processes or equipment.
  • Adaptation or innovation restriction: This prevents 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.
  • Hold harmless: This exempts the licensor for liability for non-fulfilment of its responsibilities under the licence agreement and/or liability arising from third-party suits brought about through the use of the licensed product or the licensed technology.
  • Other clauses with equivalent effects: These are other anti-competitive clauses or stipulations in restraint of trade, such as post-termination non-compete covenants.

Moreover, the following mandatory provisions must be included in the licence agreement:

  • The laws of the Philippines will govern the interpretation of the same and, in the event of litigation, the venue will be the proper court in the place where the licensee has its principal office;
  • Continued access to improvements in techniques and processes related to the technology will be made available during the period of the licence agreement;
  • If the licence agreement provides for arbitration, the Procedure of Arbitration of the Arbitration Law of the Philippines, the Arbitration Rules of the United Nations Commission on International Trade Law or the Rules of Conciliation and Arbitration of the International Chamber of Commerce will apply, and the venue of arbitration will be the Philippines or any neutral country; and
  • The Philippine taxes on all payments relating to the licence agreement will be borne by the licensor.

In exceptional or meritorious cases where substantial benefits will accrue to the economy – such as high technology content, increased 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, an exemption may be allowed by the Documentation, Information and Technology Transfer Bureau of the IP Office of the Philippines after evaluation on a case-by-case basis.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.