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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

In order to be patentable, an invention must:

  • be a technical solution to a problem;
  • be new;
  • involve an inventive step; and
  • have industrial applicability.

An invention is considered to be new if it does not form part of the prior art.

An invention involves an inventive step if, with regard to the prior art, it is not obvious to a person skilled in the art at the time of the filing date or the priority date of the application claiming the invention.

An invention that can be produced and used in any industry shall be industrially applicable.

What are the limits on patentability?

Patent protection does not extend to:

  • scientific discoveries;
  • laws of nature;
  • abstract ideas;
  • schedules;
  • business methods;
  • computer programs;
  • methods for treatment of humans, animals, plant varieties or animal breeds;
  • aesthetic creations; and
  • anything contrary to public health and welfare, including cloning or use of a human embryo.

To what extent can inventions covering software be patented?

Section 22.2 of the IP Code expressly provides that computer programs are not patentable. 

To what extent can inventions covering business methods be patented?

Business methods are not patentable.

To what extent can inventions relating to stem cells be patented?

Inventions relating to stem cells are patentable, provided that they meet the criteria for patentability. 

Are there restrictions on any other kinds of invention?

The following shall be excluded from patents protection:

  • discoveries, scientific theories and mathematical methods, laws of nature, scientific truths or knowledge as such;
  • abstract ideas or theories and fundamental concepts other than the means or processes for using the concept to produce a technical effect;
  • schemes, rules and methods of performing mental acts and playing games;
  • methods 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 the treatment of humans or animals by surgical, therapeutic or diagnostic methods practised on the human or animal body (this provision does not apply to products and compositions for use in any of these methods);
  • plant varieties, animal breeds or essentially biological processes for the production of plants and animals (this provision does not apply to micro-organisms and non-biological and microbiological processes);
  • aesthetic creations; 
  • anything which is contrary to public order, health, welfare or morality; and
  • the process of cloning or modifying the germ line genetic identity of humans or animals or uses of the human embryo.

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

A grace period is available for non-prejudicial disclosure. The disclosure of information contained in the application during the 12-month period preceding the filing date or the priority date of the application shall not prejudice the applicant on the grounds of lack of novelty if such disclosure was made by:

  • the inventor or any person who, at the filing date of the application, held the right to the patent;
  • the Intellectual Property Office (IPO), the Bureau of Patents or a foreign patent office, where such information was contained in:
    • another application filed by the inventor which should not have been disclosed by the IPO; or
    • an application filed without the inventor’s knowledge or consent by a third party which obtained the information directly or indirectly from the inventor; or
  • a third party which obtained the information directly or indirectly from the inventor, provided that all foreign patent offices that publish pending patent applications and the World Intellectual Property Office are excluded therefrom.

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

Previously, there was no mechanism for opposing the grant of an invention patent. In the case of utility model and industrial design patents, a third party could file written adverse information to oppose the grant of the patent.

However, the Intellectual Property Office (IPO) has recently launched the Community Review Process (CRP). Under the CRP, the IPO maintains a list of industry associations, government agencies, schools, universities and other stakeholders. These groups are notified and given bibliographic information when an invention patent, utility model or industrial design application is published. In the case of a utility model or industrial design application, a stakeholder may file written adverse information within 30 days of publication. With respect to an invention patent application, a concerned stakeholder has six months from publication or from the date of request for substantive examination, whichever is later, to file a third-party observation. If adverse information or a third-party observation is filed, the director of the Bureau of Patents can refuse registration, require that the application be amended or recommend registration.

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

The Intellectual Property Office (IPO) has recently launched the Community Review Process (CRP). Under the CRP, the IPO maintains a list of industry associations, government agencies, schools, universities and other stakeholders. These groups are notified and given bibliographic information when an invention patent, utility model or industrial design application is published. In the case of a utility model or industrial design application, a stakeholder may file written adverse information within 30 days of publication. With respect to an invention patent application, a concerned stakeholder has six months from publication or from the date of request for substantive examination, whichever is later, to file a third-party observation. If adverse information or a third-party observation is filed, the director of the Bureau of Patents can refuse registration, require that the application be amended or recommend registration.

Further, a petition to cancel a patent may be filed before the IPO Bureau of Legal Affairs. 

How can patent office decisions be appealed in your jurisdiction?

A decision of the director general of the Intellectual Property Office may be appealed to the Court of Appeals, and a Court of Appeals decision may be appealed to the Supreme Court.

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

It takes approximately three to four years from the filing date for a patent to issue. Where a local firm receives a complete patent application in English and in a form ready for filing, the cost will be approximately $750 (for an application consisting of five claims only and no more than 30 pages of description of invention). The cost increases if the attorney must assist the inventor in writing parts of the patent application (eg, the description of invention, specification and claims). Additional costs are incurred if the examiner issues an office action.

For an industrial design and utility model application, it takes approximately six to eight months from the filing date for the patent to issue. 

Enforcement through the courts

Strategy
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

In case of infringement, the patent owner may initiate:

  • a civil action to recover from the infringer the damages sustained and litigation fees and to secure an injunction to protect its rights – no damages may be recovered for acts committed more than four years before the infringement or for acts of infringement committed before the infringer knew or had reasonable grounds to know of the patent;
  • a criminal case for infringement, which can be brought up to three years after commission of the crime; or
  • an administrative action with:
    • the Department of Trade and Industry pursuant to Department Administrative Order 1/2000 implementing Executive Order 913 and Ministry Order 69; or
    • the Intellectual Property Office Bureau of Legal Affairs where the total damages claimed is not less than Ps200,000.

Provisional remedies may be granted in accordance with the Rules of Court, and no damages may be recovered for acts committed more than four years before the infringement action.

What scope is there for forum selection?

A plaintiff can choose the forum in which it wishes to file an action, bearing in mind the remedies that it seeks. The plaintiff should factor into this decision the type of evidence available to support the action. Administrative and civil actions require preponderance of evidence, while criminal action requires proof beyond reasonable doubt.

Pre-trial
What are the stages in the litigation process leading up to a full trial?

Unlike in other jurisdictions, no discovery stage precedes a full trial in the Philippines. An action is initiated by the plaintiff filing a written complaint, followed by a written response from the defendant. In some forums a written reply may be filed by the plaintiff and a rejoinder may be filed by the defendant.

Once all of the pleadings have been filed, a trial follows at which the plaintiff and defendant present their evidence. Both parties can cross-examine the witnesses and present rebuttal evidence.

In administrative actions, testimonial evidence is presented in affidavit form with supporting documents. In criminal and civil actions the affidavit form is in a question-and-answer format, while in administrative actions the affidavit is in an ordinary narrative format.

The affidavits will contain the direct testimony of witnesses. Upon identification of the affidavit and supporting documents by the witness on the stand, the other party conducts cross-examination. The following must be borne in mind:

  • The rules governing administrative actions state that they must be summary proceedings. However, since patent infringement claims are contentious, parties can demand the right to cross-examine witnesses. If this happens, the summary proceedings become a full-blown trial.
  • Instead of a witness testifying on the stand, a witness not present in the Philippines can identify his or her affidavit through deposition on oral or written interrogatories before the Philippine consul in his or her country of residence. He or she can also be cross-examined by oral deposition or written questions.

In a cancellation action, cross-examination is not required and the parties can argue their case through their position papers.

Experts can be called as witnesses and the judge can form a committee of three, in which the two other members are experts. The Philippines has no jury system.

A trial in an administrative, criminal or civil action where both sides have at least two witnesses can take more than 18 months.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

It is fairly easy for defendants to delay proceedings. For example, if a defendant files a petition to cancel the patent, the petition must be resolved before the infringement action is decided. Thus, the plaintiff and its counsel should ensure that such delays are avoided.

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

The validity of a patent can be challenged through patent cancellation proceedings before the Intellectual Property Office Bureau of Legal Affairs. The grounds for challenging the validity are:

  • a lack of novelty;
  • a lack of industrial applicability;
  • a failure to disclose the invention clearly and completely so that it can be carried out by a person skilled in the art; and
  • breach of public order or morality.

At trial
What level of expertise can a patent owner expect from the courts?

The court hearing the civil action will be a specialised court if highly technical questions are involved. A party may request the court to appoint two or more assessors with the necessary scientific and technical knowledge required.

In certain cases the Intellectual Property Office Bureau of Legal Affairs may allow a case to be decided by a committee of three experts. 

Are cases decided by one judge, a panel of judges or a jury?

Cases are decided by one judge or a panel of judges.  

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

The Philippines has no jury system. 

What role can and do expert witnesses play in proceedings?

Experts can appear as witnesses during trials.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

The Philippine courts apply strictly the doctrine of equivalents. A party claiming under this doctrine must satisfy the ‘function, means, result’ test – that is, the infringing modification must be shown to perform substantially the same function, in substantially the same way, to achieve substantially the same result under the patent claimed to be infringed.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Yes – preliminary injunctions are available. The plaintiff must prove that it will suffer irreparable injury if the alleged infringing acts continue during trial. In regard to suppliers, if a conspiracy can be proven or a single transaction exists which connects all of the suppliers to the infringer, the suppliers can be joined in the action and any injunction will also be binding on them.

In regard to customers, a separate infringement action can be filed to stop the customer’s infringing use. If a conspiracy can be proven or a single transaction exists which connects the customer to the infringer and its suppliers, the customer can be joined in the action and any injunction issued will also be binding on it. However, if the customer’s use is carried out privately and on a non-commercial scale or for a non-commercial purpose, there is no infringement.

How are issues around infringement and validity treated in your jurisdiction?

The validity of the patent is a prejudicial question in the infringement action. Thus, if the validity of the patent is challenged and a patent infringement action is filed, the validity issue should be resolved first.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Yes – decisions issued in other jurisdictions involving similar issues have probative value.

Damages and remedies
Can the successful party obtain costs from the losing party?

Yes – the party seeking the recovery of costs and attorneys’ fees must prove that there is an agreement between the lawyer and the client for attorneys’ fees. It must be shown that the plaintiff was compelled to hire the services of the lawyer as a result of the act or omission of the defendant. Further, the lawyer must justify the amount claimed.

Litigation expenses must be proven in an itemised list with official receipts and other evidence of payment incurred.

What are the typical remedies granted to a successful plaintiff?

The typical remedies granted are monetary remedies and injunctions.

How are damages awards calculated? Are punitive damages available?

Recovery may extend to all damages sustained by the patent owner, plus attorneys’ fees and litigation expenses. The court can increase the amount of actual damages proven, but the final award should not exceed three times the amount of such actual damages.

If damages are inadequate or cannot readily be ascertained with reasonable certainty, the award is equivalent to a reasonable royalty. However, no damages can be recovered for acts committed more than four years before institution of the action.

No damages can be recovered if the infringer proves that it had no knowledge of the patent. However, an infringer will be presumed to have knowledge if the patented product, its packaging or advertising materials relating to the patented product bear the words ‘Philippine patent’ with the patent registration number.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

The courts commonly grant permanent injunctions to successful plaintiffs. Permanent injunctions issued in favourable decisions are generally worded.

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

Where each party has two witnesses, the trial can take up to 18 months. More witnesses result in a longer trial period. On appeal, a decision can take up to one year.

How much should a litigant plan to pay to take a case through to a first-instance decision?

A patent infringement action usually costs between $4,000 and $6,000 before trial. The cost of a trial is between $6,000 and $8,000. The cost of bringing an appeal at each appeal stage is approximately $6,000 to $8,000.

Appeal
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

The losing party in an IP infringement action filed with the Bureau of Legal Affairs may appeal to the director general of the IP Office. A party which loses an appeal before the director general may appeal such decision to the Court of Appeal on a question of law, fact or both. A Court of Appeal decision can be appealed to the Supreme Court, also on a question of law, fact or both.

Following a civil or criminal court decision, an appeal can be filed before the Court of Appeal based on a question of law, fact or both, and then to the Supreme Court on the same grounds.

It takes around one year for an appeal decision to be issued.

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

Philippine law requires the parties to attempt alternative dispute resolution before going to trial. Even if the parties do not arrive at an amicable resolution, the judge will encourage them to reach an amicable settlement while the trial is ongoing and sometimes even after the case has been submitted for a decision. Before the Court of Appeal, the parties are required to go through mediation before the appeal is heard.

Arbitration is also made available to the parties.