INTERNATIONAL

and REGIONAL
PATENT SYSTEMS

Atty. Rowanie A. Nakan

Partner
CRUZ MARCELO & TENEFRANCIA
 Scope

• Preliminary matters
• Philippine Setting – brief review for context
• The Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS Agreement)
• The Hague System
• Paris Convention for the Protection of Industrial Property
(Paris Convention)
• Patent Cooperation Treaty (PCT)
• Patent Prosecution Highway (PPH)
• ASEAN Patent Cooperation (ASPEC)
 1.1 Preliminary Matters: Scenarios
June 03, 2021

Dear U. R. Infringing,

It has come to our attention that you are selling face masks made of fabric that is
covered by our Japan Patent No. 12345 without our consent. The said invention is
also the subject of International PCT Application No. 678910.

Your unauthorized use of our patented fabric makes you liable for patent
infringement under Philippine law. Unless you stop from using the same, we will be
constrained to file the appropriate case immediately.

Sincerely yours,

Will Sue You

 1.2 Preliminary Matters: Scenarios

1. As a patent expert, what do you think are the important

information or details that you may gather from the demand
letter?

2. From the said information, how do you propose to reply?

 1.3 Preliminary Matters: For Emphasis

• There is no such thing as an international patent, just

international or regional patent filing systems.
 1.4 Preliminary Matters: For Emphasis

• To secure patent protection in the Philippines, one must

file a patent application in the Philippines and comply
with national requirements on patentability

 International or regional patent systems are tools

to facilitate the process of securing patent
protection in different countries.
1.5 Preliminary Matters: Overview
Paris Convention PCT Hague System TRIPS
Subject Patents patents patents including the
Matter protection of new
utility models *If to be used as varieties of plants
basis for a utility
model in the
national phase,
you should
normally
indicate your --
choice of
protection to
that Office when
performing the
acts necessary
for entering the
national (or
regional) phase
(see PCT Rule
49bis.1(a).

industrial designs -- industrial designs industrial designs

trademarks, -- -- trademarks and

service marks, service marks
and tradenames
-- -- -- copyright and related
rights
geographical -- -- geographical
indications indications
-- -- -- the layout-designs of
integrated circuits
the repression of -- -- undisclosed
unfair information including
competition trade secrets and test
data.
 2.1 Philippine Setting
• Article XIV, Section 13 of the 1987 Philippine Constitution

 Protect and secure the exclusive rights of scientists, inventors,

artists, and other gifted citizens to their IP and creations,
particularly when beneficial to the people, for such period as
may be provided by law.
 2.2 Philippine Setting
• RA 8293, otherwise known as the Intellectual Property Code of
the Philippines (IP Code)

 The primary law which governs IP protection and enforcement

in the Philippines
 which was enacted to comply with the country’s commitments
under the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS).
 2.3 Philippine Setting
• 2008 – The Universally Accessible Cheaper and Quality
Medicines Act (Cheaper Medicines Act) amended the IP
Code to:

(1) allow, prior to the expiration of a drug patent, the testing,

production, and Food and Drug Administration (FDA)
registration of generic versions so that these could be sold
immediately upon the expiration of the patents;
(2) to prevent the evergreening of patents by establishing the
nonpatentability of new uses for known substances; and
(3) to allow parallel importation of patented medicines from
other countries.
 3.1 TRIPS Agreement
• The Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS) Agreement Took effect in the
Philippines on 01 January 1995.

– copyright and related rights;

– trademarks and service marks;
– geographical indications;
– industrial designs;
– patents including the protection of new varieties of plants;
– the layout-designs of integrated circuits; and
– undisclosed information including trade secrets and test data.
 3.2 TRIPS Agreement
• Main features:

1. Standards
o Minimum standards of protection
o Subject-matter, the rights to be conferred,
permissible exceptions, and minimum duration of
protection
 3.3 TRIPS Agreement
• Main features:

2. Enforcement
o The procedures and remedies that must be
available so that right holders can effectively
enforce their rights
 3.4 TRIPS Agreement
• Main features:

3. Dispute Settlement
o The Agreement makes disputes between WTO
Members about the respect of the TRIPS
obligations subject to the WTO's dispute settlement
procedures.
 3.5 TRIPS Agreement

• With respect to Patents:

 Requirements of patentability: novelty,
inventiveness and industrial applicability
 Products or processes
 Patent rights available without discrimination as to
the place of invention and whether products are
imported or locally produced
 3.6 TRIPS Agreement
• General provisions with respect to Patents:
 3 permissible exceptions:
o Contrary to ordre public or morality, including to
protect human, animal or plant life or health or to
avoid serious prejudice to the environment
o Diagnostic, therapeutic and surgical methods for
the treatment of humans or animals
o plants and animals other than micro-organisms and
essentially biological processes for the production
of plants or animals other than non-biological and
microbiological processes. However, any country
excluding plant varieties from patent protection
must provide an effective sui generis system of
protection.
 4.1 The Hague System
• The Philippines has already committed to accede to the Hague
Agreement but has not yet done so.

• The Hague System allows you to secure design protection

simultaneously in multiple countries or regions through one
international application, in one language with one set of fees.

• The first step is to file an international application with WIPO. After

submission, your application will be checked for compliance with form
and content (formal requirements), including payment of the
required fees.
 4.2 The Hague System
• A “closed system” because only those who have connection with
the Contracting Parties may use it: an applicant of an
international design registration must have a connection, through
an establishment, domicile, and nationality or (under the 1999
Act), habitual residence, with a Contracting Party.

• Term of protection: five (5) years, renewable once for another

five (5) years under the 1960 Act or twice for another five (5)
years under the 1999 Act.
Source: https://www.wipo.int/export/sites/www/hague/en/docs/hague_schema.pdf
 5.1 Paris Convention
• Adopted in 1883

• Philippines acceded on 12 August 1965

• Industrial property including patents, trademarks, industrial

designs, utility models, service marks, trade
names, geographical indications and the repression of
unfair competition.

• This international agreement was the first major step taken

to help creators ensure that their intellectual works were
protected in other countries.
5.2 Paris Convention
• 3 main categories of substantive provisions are:
1. National treatment - Each Contracting State must grant
the same protection to nationals of other Contracting
States that it grants to its own nationals. Nationals of non-
Contracting States are also entitled to national treatment
under the Convention if they are domiciled or have a real
and effective industrial or commercial establishment in a
Contracting State.
5.3 Paris Convention
• 3 main categories of substantive provisions are:
2. Right of priority - On the basis of a regular first
application filed in one of the Contracting States, the
applicant may, within a certain period of time (12 months
for patents and utility models; 6 months for industrial
designs and marks), apply for protection in any of the
other Contracting States. These subsequent applications
will be regarded as if they had been filed on the same day
as the first application.
5.4 Paris Convention
• 3 main categories of substantive provisions are:
3. Common rules
- Patents granted in different Contracting States for the
same invention are independent of each other.
- The inventor has the right to be named as such in the
patent.
- Conditions for the grant of compulsory licensing.
6.1 Patent Cooperation Treaty (PCT)
• Senate ratification on 05 February 2001

• Entered into force on 17 August 2001

6.2 PCT
• Makes it possible to seek patent protection for an invention
simultaneously in each of a large number of countries by filing
an "international" patent application.

• Such an application may be filed by anyone who is a

national or resident of a PCT Contracting State. It may
generally be filed with the national patent office of the
Contracting State of which the applicant is a national or
resident or, at the applicant's option, with the International
Bureau of WIPO in Geneva.
6.3 PCT
• Non-PCT Patent Applications
 Local patent application followed within 12 months by
multiple foreign applications claiming priority
 multiple formality requirements
 multiple searches
 multiple publications
 multiple examination/prosecution
 translations and national fees required at 12 months
6.4 PCT
• PCT Applications
- International and national phases
1. International phase (PCT International Application
No. PCT/PH2020/xxxxxx)
Uniform formality and centralized international
publication
International search report
International preliminary examination report (if
demanded)
6.5 PCT
• PCT Applications
2. National phase
Translations and national fees required at 30
months (or 31 months), and only if applicant
wishes to proceed
6.6 PCT
• Patent “filing system” not a patent “granting” system,
no “PCT” or “international” patent

• Decision on granting patent exclusively by national

or regional offices in the national phase
6.7 PCT
Overview of procedure
• File PCT Request with IPO
• IPO conducts formality exam
• IPO transmits application to WIPO and ISA
• ISA conducts search/issues ISR
• WIPO publishes application (with ISR) within 18 months
from priority date/filing date
• Optional: applicant files demand for PE
 IPEA conducts preliminary sub exam/issues IPER
• Applicant enters the national phase (generally within 30
months)
7.1 Patent Prosecution Highway (PPH)
• Patent applicants whose applications have been
determined allowable by a Patent Office are entitled
to request, through a simple procedure, for
accelerated examination of the
corresponding applications in another Patent Office.
• The IPOPHL currently operates the PPH on bilateral
basis with the Japan Patent Office (JPO), United
States Patent & Trademark Office
(USPTO), Korean Intellectual Property
Office (KIPO), and European Patent Office (EPO).
8.1 ASEAN Patent Examination Cooperation
(ASPEC)

Eligibilities
• A corresponding application exists in any other
participating ASEAN Member States (AMS) IP
Offices, and that the IPOPHL application and
corresponding application are linked by a Paris
Convention priority claim, and
• A patent is already granted or search and
examination results, stating that at least one claim is
allowable/patentable, is/are already issued by any
one of the participating AMS IP Offices
 Scenarios
1. Your client, a Filipino agritech startup, has come up with a
device that allows the user identify with accuracy what kind of
crops can be planted in a certain location to maximize yield
without damaging the soil. They asked for your advice on how
to secure patent protection within the ASEAN region as well as
Taiwan, Brazil, the USA, China and Japan.

2. A USA company not yet registered to do business in the

Philippines invented a drug to cure those with severe COVID-
19 symptoms. They would like to ask your advice whether they
can file a patent application in the Philippines.
• Questions:
 What filing strategy will you advise the Filipino
agritech startup?
 Can a US company not doing business in the
Philippines file a patent application for a drug to cure
COVID-19 with the IPOPHL?
 Can a Philippine company file a patent application in
Taiwan?
 What are the grace periods?
 What to look out for?