IPO JURISDICTION
Substantive check within 6 mos if
Cases under IPO are called Inter Partes cases
Original
1. Director General
Disputes re: authors right to public
performance or other communication of his
work
2. Bureau of Legal Affairs
Application opposition, trademark/patent
cancellation, petition for compulsory licensing,
and administrative complaints for violations
worth PHP200k and above only (+ contempt
powers)
3. Documentation, Information, and Technology
Transfer Bureau
Disputes re: technology transfer payments
4. Regular Courts
Actions under IPC except those under Dir.
General
5. Bureau of Copyright and Other Related Rights
Re: terms of license
Appellate
1. Director General
Over all decisions by bureau directors
2. CA
Over decisions of the DG in his appellate jd over
Dir. of Legal Affairs, Dir. Of Patents, and Dir. of
Trademarks
3. Secretary of Trade and Industry
Over decisions by DG in his appellate jd over
Dir. of Documentation, Information and
Technology Transfer
Over decisions of DG in his original jd re: terms
of license
PATENTS
Application shall be refused IF: person with
ordinary skill can draw the same inferences and
constructs that the supposed inventor drew from
prior art (Prior art: that which had been made
known to the world before the filing OR the
whole contents of a PH application).
1 Application = 1 invention or 1 group forming a
single general inventive step
Applicant may not file 2 applications for same
subject
Term: 20 years from filing date
Patent Application Process
1. Filing with Bureau of Patents
2. Examination of application
a. Formal check if paid fees and Sec
32 is complied with
b.
there is written request to determine
patentability + fees
3. Publication of application
4. Amendment (shall not include new matter
outside scope of disclosure)
5. Grant
a. Granted fees must be paid, if not:
deemed withdrawn
b. Denied appeal to Dir. of Patents
w/in 2 mos of mailing date of refusal.
Decision of Dir. is final and
executory after 15 days after receipt
of decision > MR to Dir. or Appeal to
DG > Appeal to CA > SC
6. Publication of grant
Sec 32 Requirements
1. Application
a. Request
i. Petition to grant
ii. Applicants details
iii. Inventor/agent
iv. Title
v. If claiming priority filing, details
vi. Resident agent and address if
necessary
vii. Signature of applicant
b. Description and disclosure
c. Necessary drawings
d. One or more claims
e. Abstract summary
f. Identification of Inventor
2. Appointment of agent/rep if non resident
3. Request
Divisional application: when 2 or more are
claimed in one application, applicant should divide
application
Deficiencies in requirements may be remedied
within period given; if not, deemed withdrawn
Patentability Requisites
Must be a technical solution to a problem
Inventive step (except if Utility Model or
Industrial Design)
Novelty (Except for Industrial Design)
o Not lack of novelty if public disclosure (12
mos before application) of details is made
by inventor/right holder or by the patent
office or by a 3rd party who got the info
from the inventor himself basically if
kumalat yung pinapatent mo di yun taken
as lack of novelty if in the above context
Industrial applicability (Except for Industrial
Design)
 Not among prohibited:
1. Discoveries re law of nature, scientific truth,
or knowledge (like math equations or theory
of gravity ganun),
2. Abstract ideas or fundamental concepts
(except if technical)
3. Schemes of performing mental acts or
playing games
4. Method of doing business
5. Method for medical treatment for
animals/humans (except if products to be
used or compositions)
6. Anything contrary to public morals, order,
welfare, health
7. Aesthetic creations
8. Computer programs
9. Plant or animal varieties or the biological
process to produce such (except for
microorganisms and non-biological and
microbiological processes)
10. If drugs/medicine mere discovery of new
form of an existing substance which does
not enhance the existing substance,
discovery of new property/use of an existing
substance, or mere use of a known process
(except if process results in an entirely new
product with at least one reactantewan)
i. Patent is contrary to public
order or morality
ii. Insufficient disclosure
iii. Not new or not patentable
d. Statement of facts
e. Copies of necessary docs + English
translation
2. Notice
3. Hearing
If grounds refer to a claim only, only that claim
may be cancelled
Remedies for pending or final grant
1. Sec. 67.1 if person other than applicant is
awarded the right to the patent by the court,
applicant (w/in 3 mos) may:
a. Prosecute the application as his own
b. File new application
c. Request that application be refused
d. Seek cancellation
2. Sec. 68 if true and actual inventor had
been frauded or patent was applied for
without his consent, court shall order his
substitution as patentee or if he chooses,
cancel patent + damages

Status Who is entitled to patent Rights conferred

2 independent and Whoever files first 1. Restraint/prohibit
separate inventors a. If product: any unauthorized person
2 applications for the Earlier filing date/priority to make, use, sell, import
same invention date b. If process: any unauthorized person
Commissioned invention Person commissioned, use the process to manufacture,
unless agreed otherwise deal, sell or import any product
Employee who invented Employee if not within obtained directly or indirectly from
in course of employment scope of his regular such process
duties even if done with 2. To assign/transfer by succession
facilities/time/materials 3. To conclude licensing contracts
of employer
Limitations of rights
Employer if performed 1. General patent owner has no right to
within scope of duties prevent 3rd parties from:
unless stipulated a. Using patented product which has
otherwise been put in PH market by the
owner/consented by owner
b. Private and non-commercial use as
long as it does not prejudice
economic rights of owner
c. Use for sole purpose of scientific
Cancellation and Substitution of Patentee research/experiment
d. if drugs/medicine if for the
1. Petition reasonable development and
a. In writing submission of information with
b. Verified approval by gov regulatory agency
c. Specify grounds concerned
 e. preparation for individual cases in a
pharmacy or by a medical
professional in accordance with a
prescription
f. if use occurs in a vessel in transit
exclusively for the needs of such
vessel
2. Use by a prior user a person who, other
than applicant, used invention in good faith
and took serious preparations to use it
before filing date/priority date shall be
allowed to continue such use (this right may
only be transferred or assigned further with
the persons enterprise)
3. Use by the government gov may
authorized 3rd party to use w/o consent of
owner if
a. Public interest so requires
b. Manner of exploitation by owner is
anti-competitive
c. If drugs/meds national emergency
d. If drugs/meds if patentee uses it in
a public non-commercial way without
satisfactory reason
e. If drugs/meds demand for
patented item is not being
adequately met
The gov use is subject to the following:
i. In c, d, and e right holder is
notified asap
ii. Use shall be non-exclusive
iii. Scope and duration of use is
limited
iv. Right holder shall be paid
adequately
v. Existence of emergency is
determined by president

TRADEMARKS
Mark any visible sign distinguishing the
goods or services of an entrerprise and
shall include the marked container of the
goods
122 Acquisition only through IPO
registration (no need for prior use)