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REPUBLI C ACT N O. 8 2 9 3

AN ACT PRESCRI BI NG THE I NTELLECTUAL PROPERTY CODE AND

ESTABLI SHI NG THE I NTELLECTUAL PROPERTY OFFI CE, PROVI DI NG FOR I TS

POWERS AND FUNCTI ONS, AND FOR OTHER PURPOSES

PART I

The I ntellectual Property Office

SECTI ON 1. Tit le. This Act shall be known as the " I ntellectual Propert y

Code of the Philippines."

SECTI ON 2. Declarat ion of State Policy. The State recognizes that an

effective intellectual and industrial property system is vital to thedevelopm ent of dom estic and creative activity , facilitates t ransfer of

technology, attracts foreign investm ents, and ensures m arket access for our

products. I t shall protect and secure the exclusive r ights of scientists,

inventors, artists and other gifted cit izens to their intellectual property and

creations, particularly when beneficial to the people, for such periods as

provided in this Act.

The use of intellectual property bears a social function. To this end, the State

shall prom ote the diffusion of knowledge and inform at ion for the prom ot ion

of nat ional developm ent and progress and the com m on good.

I t is also the policy of the State to s tream line adm inistrative procedures of

registering patents, t radem arks and copyright, to liberalize the registrationon the t ransfer of technology, and to enhance the enforcem ent of in tellectual

property r ights in the Philippines. ( n)

SECTI ON 3. I nternational Conventions and Reciprocity. Any person who is

a national or who is dom iciled or has a real and effective indust rial

establishm ent in a count ry which is a party to any convention, t reaty or

agreem ent relating to intellectual proper ty r ights or the repression of unfair

com petition, to which the Philippines is also a party, or extends reciprocal

r ights to nationals of the Philippines by law, shall be entitled to benef its to

the extent necessary to give effect to any provision of such convention,t reaty or reciprocal law, in addition to the r ights to which any owner of an

intellectual property r ight is otherwise entit led by this Act. ( n)

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SECTI ON 4. Defin itions.

4.1. The term " intellectual property r ights" consists of:

a. Copyright and Related Rights;

b. Tradem arks and Service Marks;

c. Geographic I ndications;

d. I ndustrial Designs;

e. Patents;

f. Layout- Designs ( Topographies) of I ntegrated Circuits; and

g. Protect ion of Undisclosed I nform at ion ( n, TRI PS).

4.2. The term " technology t ransfer arrangem ents" refers to contracts or

agreem ents involv ing the t ransfer of system at ic knowledge for the

m anufacture of a product , the appl ication of a process, or rendering of

a service inc luding m anagem ent contracts; and the t ransfer,

assignm ent or licensing of all form s of intellectual property r ights,

including licensing of com puter software except com puter software

developed for m ass m arket .

4.3. The term " Office" refers to the I ntellectual Propert y Office created bythis Act.

4.4. The term " I PO Gazette" refers to the gazet te published by the Office

under this Act. ( n)

SECTI ON 5. Functions of the I ntel lectual Property Off ice ( I PO).

5.1. To adm inister and im plem ent the State policies declared in this Act,

there is hereby created the I ntellectual Propert y Office ( I PO) which

shall have the following functions:

a. Exam ine applicat ions for grant of let ters patent for inventions andregister utilit y m odels and industrial designs;

b. Exam ine applicat ions for the regist ration of m arks, geographic

indication, integrated circuits;

c. Register technology t ransfer arrangem ents and settle disputes

involving technology t ransfer paym ents covered by the provisions

of Part I I , Chapter I X on Voluntary Licensing and deve lop and

im plem ent strateg ies to prom ote and faci litate technology t ransfer ;

d. Prom ote the use of patent inform at ion as a tool for technology

developm ent;

e. Publish regularly in it s own publ ication the patents, m arks, u til ity

m odels and industrial designs, issued and approved, and the

technology t ransfer arrangem ents regis tered; cdasiaf. Adm in istrat ively adjudicate contested proceedings affecting

intellectual property r ights; and

g. Coordinate wi th other governm ent agencies and the priva te sector

effor ts to form ulate and im plem ent plans and policies to streng then

the protection of intellectual property r ights in the count ry.

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5.2. The Office shall have custody of all records, books, drawings,

specifications, docum ents, and other papers and things relating to

intellectual property r ights applications filed with the Office. ( n)

SECTI ON 6. The Organizat ioal Structure of the I PO.

6.1. The Office shall be headed by a Director General who shall be assisted

by two ( 2) Deputies Director General.

6.2. The Office shall be divided into six ( 6) Bureaus, each of which shall be

headed by a Director and assisted by an Assistant Director. These

Bureaus are:

a. The Bureau of Patents;

b. The Bureau of Tradem arks;

c. The Bureau of Legal Affairs;

d. The Docum entation, I nform at ion and Technology Transfer Bureau;

e. The Managem ent I nform at ion System and EDP Bureau; and

f. The Adm inist rati ve, Financial and Personnel Services Bureau.6.3. The Director General, Deputies Director General, Directors and

Assistant Directors shall be appointed by the President , and the other

officers and em ployees of the Office by the Secretary of Trade and

I ndust ry, conform ably wi th and under the Civil Service Law. ( n)

SECTI ON 7. The Director General and Deput ies Director General.

7.1. Functions. The Director General shall exercise the following powers

and functions:

a. Manage and direct all functions and activities of the Office,including the prom ulgation of rules and regu lations to im plem ent

the objectives, policies, plans, program s and projects of the Office:

Provided, That in the exercise of the authority to propose policies

and standards in relation to the following: ( 1) t he effective,

efficient, and econom ical operations of the Office requi ring

statuto ry enactm ent; ( 2) coordination with other agencies of

governm ent in relat ion to the enforcem ent of intellectual property

r ights; ( 3) the recognit ion of at torneys, agents, or other persons

representing appl icants or other parties before the Office; and ( 4)

the establishm ent of fees for the fi ling and processing of an

application for a patent , utilit y m odel or industria l design or m ark

or a collective m ark, geographic indication and other m arks ofownership , and for all other services perform ed and m aterials

furnished by the Office, the Director General shall be subj ect to the

supervision of the Secretary of Trade and I ndust ry;

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b. Exercise exclusive appellate j urisdiction over all decisions rendered

by the Director of Legal Affairs, the Director of Patents, the Director

of Tradem arks, and the Director of the Docum entation, I nform at ion

and Technology Transfer Bureau. The decisions of the Director

General in the exercise of his appel late j urisdiction in respect of the

decisions of the Director of Patents, and the Director of Tradem arks

shall be appealable to the Court of Appeals in accordance with the

Rules of Court; and those in respect of the decisions of the Director

of Docum entation, I nform at ion and Technology Transfer Bureau

shall be appealable to the Secretary of Trade and I ndust ry; and

c. Exercise original j urisdiction to resolve disputes relat ing to the

term s of a license involving the author's r ight to public perform ance

or other com m unication of his work. The decisions of the Director

General in these cases shall be appealable to the Secretary of

Trade and I ndust ry.

7.2. Qualifications. The Director General and the Deputies Director

General m ust be natural born cit izens of the Philippin es, at least thir ty-

five ( 35) years of age on the day of thei r appointm ent, holders of acollege degree, and of proven com petence, integr ity, probit y and

independence: Provided, That the Director General and at least one

( 1) Deputy Director General shall be m em bers of the Philippine Bar

who have engaged in the pract ice of law for at least ten ( 10) years:

Provided further, That in the selection of the Director General and the

Deputies Director General, consideration shall be given to such

qualifications as would result, as far as practicable, in the balanced

representation in the Directorate General of the various fields of

intellectual property.

7.3. Term of Office. The Director General and the Deputies Director

General shall be appointed by the President for a term of five ( 5) yearsand shall be eligible for reappointm ent only once: Prov ided, That the

first Director General shall have a first te rm of seven ( 7) years.

Appointm ent to any vacancy shall be only for the unexpired term of

the predecessor.

7.4. The Office of the Director General. The Office of the DirectorGeneral shall consist of the Director General and the Deputies Director

General, their im m ediate staff and such Offices and Services that the

Director General will set up to support directly the Office of the

Director General. ( n)

SECTI ON 8. The Bureau of Patent s.

The Bureau of Patents shall have thefollowing functions:

8.1. Search and exam ination of patent applications and the g rant ofpatents;

8.2. Registration of ut ilit y m odels, industr ial designs, and integrated circuits; and

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8.3. Conduct studies and researches in the field of patents in order to assist the Director General in form ulating policies on the adm inistration and

exam ination of patents. ( n)

SECTI ON 9. The Bureau of Tradem arks.

The Bureau of Tradem arks shallhave the following functions: cd

9.1. Search and exam ination of the applications for the registration of

m arks, geographic indications and other m arks of ownership and the

issuance of the certificates of registration; and

9.2. Conduct studies and researches in the f ield of t radem arks in order to

assist the Director General in form ulating policies on the

adm inist ration and exam ination of t radem arks. ( n)

SECTI ON 10. The Bureau of Legal Affairs. The Bureau of Legal Affairs

shall have the following functions:

10.1. Hear and decide opposition to the application for registration of m arks;

cancellation of t radem arks; subject to the prov isions of Section 64,

cancellation of patents, utilit y m odels, and industrial designs; and

petit ions for com pulsory licensing of patents;

10.2.

a. Exercise orig inal j urisdict ion in adm inis trat ive com plaints for

violations of laws involving intellectual property r ights: Provided,

That it s j urisdict ion is lim it ed to com plaints where the total

dam ages claim ed are not less than Two hundred thousand pesos

( P200 , 000): Prov ided further, That availm ent of the provisionalrem edies m ay be granted in accordance wi th the Rules of Court.

The Director of Legal Affairs shall have the power to hold and

punish for contem pt all those who disregard orders or wr its issued

in the course of the proceedings. ( n)

b. After form al invest igat ion, the Director for Legal Affairs m ay im pose

one ( 1) or m ore of the following adm inis trat ive penalties:

i. The issuance of a cease and desist order which shall

specify the acts that the respondent shall cease and

desist from and shall require him to subm it a com pliance

report with in a reasonable t im e which shall be fixed in the

order;

ii. The acceptance of a voluntary assurance of com pliance ordiscontinuance as m ay be im posed. Such volun tary

assurance m ay include one or m ore of the following:

1. An assurance to com ply wi th the provis ions of the

intellectual property law violated;

2. An assurance to refrain from engaging in unlawful

and unfai r acts and practices subject of the form al

investigation;

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3. An assurance to recal l, replace, repair, or refund

the m oney value of defective goods dist ributed in

com m erce; and

4. An assurance to reim burse the com plainant the

expenses and costs incurred in prosecuting the

case in the Bureau of Legal Affairs. The Director of

Legal Affairs m ay also require the respondent to

subm it periodic com pliance reports and file a bond

to guarantee com pliance of his undertak ing;

iii. The condem nation or seizure of products which are

subject of the offense. The goods seized hereunder shall

be disposed of in such m anner as m ay be deem ed

appropriate by the Director of Legal Affairs, such as by

sale, donat ion to distressed local governm ents or to

charitable or relief institutions, exportation, recycling into

other goods, or any com bination thereof , under such

guidelines as he m ay provide;

iv. The forfeiture of paraphernalia and all real and personal properties which have been used in the com m ission of the

offense;

v. The im position of adm inistrative fines in such am ount as

deem ed reasonable by the Director of Legal Affairs, which

shall in no case be less than Five thousand pesos

( P5, 000) nor m ore than One hundred fift y thousand pesos

( P150 , 000) . I n addition, an addi tional fine of not m ore

than One thousand pesos ( P1, 000) shall be im posed for

each day of continuing violation;

vi. The cancellation of any perm it , license, au thor ity , or

regis tration which m ay have been granted by the Office,or the suspension of the validity thereof for such period of

t im e as the Director of Legal Affairs m ay deem reasonable

which shall not exceed one ( 1) year;

vii. The withholding of any perm it , license, authori ty, or

registration which is being secured by the respondent

from the Office;

viii. The assessm ent of dam ages;

ix. Censure; and

x. Other analogous penalties or sanctions. ( Secs. 6, 7, 8,

and 9, Executive Order No. 913 [ 1983] a)

10.3. The Director General m ay by Regulations establish the procedure to

govern the im plem entation of this Section. ( n)

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SECTI ON 11. The Docum entation, I nform at ion and Technology Transfer

Bureau. The Docum entation, I nform ation and Technology Transfer Bureau

shall have the following functions:

11.1. Support the search and exam ination activities of the Office through

the following activities:

a. Maintain and upkeep classification system s whether they be

national or international such as the I nternational Patent

Classification ( I PC) system ;

b. Prov ide advisory services for the determ ination of search patterns;

c. Maintain search files and search room s and reference libraries; and

d. Adapt and package industr ial property inform at ion.

11.2. Establish networks or interm ediaries or regional representatives;

11.3. Educate the public and build awareness on intellectual proper ty

through the conduct of sem inars and lectures, and other sim ilar

activities;

11.4. Establish work ing relations with research and developm ent ins titutions

as well as with local and international intellectual property professional groups and the like;

11.5. Perform state- of- the- art searches;

11.6. Prom ote the use of patent inform at ion as an effect ive tool to facilita te

the developm ent of technology in the country;

11.7. Provide technical, advisory, and other services relating to the licensing

and prom ot ion of technology, and carry out an efficient and effect ive

program for technology t ransfer; and

11.8. Register technology t ransfer arrangem ents, and sett le disputes

involving technology t ransfer paym ents. ( n) cdta

SECTI ON 12. The Managem ent I nform at ion Services and EDP Bureau. The

Managem ent I nform at ion Services and EDP Bureau shall:

12.1. Conduct autom at ion planning, research and developm ent, testing ofsystem s, contracts with firm s, contracting, purchase and m aintenance

of equipm ent, design and m aintenance of system s, user consultation,

and the like; and

12.2. Prov ide m anagem ent inform at ion support and service to the Office. ( n)

SECTI ON 13. The Adm inistrative, Financial and Hum an Resource

Developm ent Service Bureau.

13.1. 13.1. The Adm inis tra tive Service shall:

a. Prov ide services relative to procurem ent and allocation of supplies

and equipm ent, t ransportation, m essengerial work , cashiering,

paym ent of salaries and other Office's obligations, office

m aintenance, proper safety and security , and other utilit y services;

and com ply wi th governm ent regulatory requirem ents in the areas

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of perform ance appraisal, com pensation and benefits, em ploym ent

records and reports;

b. Receive all applications filed with the Office and collect fees

therefore; and

c. Publish patent applications and grants, t radem ark applications, and

regis tration of m arks, industr ial designs, utilit y m odels, geographic

indication, and lay- out- designs of integrated circuits registrations.

13.2. The Patent and Tradem ark Adm inistration Services shall perform thefollowing functions am ong others:

a. Maintain registers of assignm ents, m ergings, licenses, and

bibliographic on patents and t radem arks;

b. Collect m aintenance fees, issue cert ified copies of docum ents in it s

custody and perform sim ilar other act ivities ; and

c. Hold in custody all the applications filed with the office, and all

patent grants, certificate of registrations issued by the office, and

the like.

13.3. The Financial Service shall form ulate and m anage a financial program

to ensure availability and proper utilization of funds; provide for aneffect ive m onitoring system of the financial operat ions of the Office;

and

13.4. The Hum an Resource Developm ent Service shall design andim plem ent hum an resource developm ent plans and program s for the

personnel of the Office; provide for present and future m anpower

needs of the organization; m aintain high m orale and favorable

em ployee att it udes towards the organization through the continuing

design and im plem entation of em ployee developm ent program s. ( n)

SECTI ON 14. Use of I ntel lectual Proper ty Rights Fees by the I PO.

14.1. For a m ore effective and expedi tious im plem entation of this Act, theDirector General shall be authorized to retain, without need of a

separate approval f rom any governm ent agency, and subj ect only to

the existing accounting and auditing rules and regulations, all the fees,

fines, royalties and other charges, collected by the Office under this

Act and the other laws that the Off ice will be m andated to adm in ister,

for use in it s operations, like upgrading of it s facilit ies, equipm ent

outlay, hum an resource developm ent, and the acquisition of the

appropr iate office space, am ong others, to im prove the delivery of it s

services to the public. This am ount, which shall be in addition to the

Office's annual budget, shall be deposited and m aintained in a

separate account or fund, which m ay be used or disbursed direct ly by

the Director General.

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14.2. After five ( 5) years from the com ing into force of th is Act, the DirectorGeneral shall, subject to the approval of the Secretary of Trade and

I ndust ry, determ ine if the fees and charges m entioned in Subsection

14.1 hereof that the Office shall collect are sufficient to m eet it s

budgetary requirem ents. I f so, it shall retain all the fees and charges it

shall collect under the sam e conditions indicated in said Subsection

14.1 but shall forthwith, cease to receive any funds from the annual

budget of the National Governm ent; if not, the provisions of said

Subsection 14.1 shall continue to apply unti l such t im e when the

Director General, subject to the approval of the Secretary of Trade and

I ndust ry, certifies that the above- stated fees and charges the Office

shall collect are enough to fund it s operations. ( n) aisadc

SECTI ON 15. Special Technical and Scientif ic Assistance. The Director

General is em powered to obtain the assistance of technical, scientific or other

qualified officers and em ployees of other departm ents, bureaus, offices,

agencies and instrum entalit ies of the Governm ent, including corporat ions owned, controlled or operated by the Governm ent, when deem ed necessary

in the consideration of any m atter subm it ted to the Office relative to the

enforcem ent of the provisions of this Act. ( Sec. 3, R.A. No. 165a)

SECTI ON 16. Seal of Office. The Office shall have a seal, the form and

design of which shall be approved by the Director General. ( Sec. 4, R.A. No.

165a)

SECTI ON 17. Publ icat ion of Laws and Regulations. The Director General

shall cause to be printed and m ake available for distribution, pam phlet copiesof this Act, other pertinent laws, executive orders and inform at ion circulars

relating to m atters within the j urisdiction of the Office. ( Sec. 5, R.A. No.

165a)

SECTI ON 18. The I PO Gazet te. All m atters requi red to be published under

this Act shall be published in the Office's own publication to be known as the I

PO Gazette. ( n)

SECTI ON 19. Disqualif icat ion of Officers and Em ployees of the Office. All

officers and em ployees of the Office shall not apply or act as an attorney orpatent agent of an application for a grant of patent, for the registration of a

utilit y m odel, industrial design or m ark nor acquire, except by hered itary

succession, any patent or ut ilit y m odel, design registration, or m ark or any

r ight, t it le or interest therein during their em ploym ent and for one ( 1) year

thereafter. ( Sec. 77, R.A. No. 165a)

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PART I I

The Law on Pate nt s

CHAPTER I

General Prov isions

SECTI ON 20. Def init ion of Term s Used in Part I I , The Law on Patent s. As

used in Part I I , t he following term s shall have the following m eanings:

20.1. " Bureau" m eans the Bureau of Patent s;

20.2. " Director" m eans the Director of Patents;

20.3. " Regulat ions" m eans the Rules of Pract ice in Patent Cases form ulated

by the Director of Patents and prom ulgated by the Director General;

20.4. " Exam iner" m eans the patent exam iner;

20.5. " Patent application" or " application" m eans an application for a patent

for an invention except in Chapters XI I and XI I I , where " application" m eans an applicat ion for a utilit y m odel and an industrial design,

respectively; and

20.6. " Prior it y date" m eans the date of filing of the foreign app lication for

the sam e invention referred to in Section 31 of this Act. ( n)

CHAPTER I I

Patentability

SECTI ON 21. Patent able I nvent ions.

Any technical solution of a problemin any field of hum an activity which is new, involves an inventive step and is

industr ially applicable shall be patentable. I t m ay be, or m ay relate to, a

product , or process, or an im provem ent of any of the foregoing. ( Sec. 7, R.A.

No. 165a)

SECTI ON 22. Non- Patentable I nventions. The following shall be excluded

from patent protection:

22.1. Discoveries, scientific theories and m athem at ical m ethods;

22.2. Schem es, rules and m ethods of perform ing m ental acts, playing gam es

or doing business, and program s for com puters;

22.3. Methods for t reatm ent of the hum an or anim al body by surgery ortherapy and diagnostic m ethods practiced on the hum an or anim al

body. This provision shall not apply to products and com position for

use in any of these m ethods;

22.4. Plant var ieties or anim al breeds or essentially biological process for theproduct ion of plants or anim als. This provision shall not apply to m icro-

organism s and non- biological and m icrobiological processes.

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Provisions under this subsection shall not preclude Congress to

consider the enactm ent of a law providing sui generis protect ion of

plant varieties and anim al breeds and a system of com m unity

intellectual r ights protection:

22.5. Aesthetic creations; and

22.6. Anything which is contrary to publ ic order or m oralit y. ( Sec. 8, R.A.No. 165a)

SECTI ON 23. Novel ty. An invention shall not be considered new if it form s

part of a prior art . ( Sec. 9, R.A. No. 165a)

SECTI ON 24. Prior Art. Prior art shall consist of:

24.1. Everything which has been m ade available to the public anywhere in

the world, before the filing date or the priority date of the application

claim ing the invention; and24.2. The whole contents of an application for a patent, utilit y m odel, or

industrial design registration, published in accordance with this Act,

filed or effective in the Philippines, with a filing or priority date that is

earlier than the filing or priority date of the application: Provided, That

the application which has validly claim ed the filing date of an earlier

application under Section 31 of this Act, shall be prior art with effect

as of the filing date of such earlier application: Provided further, That

the applicant or the inventor identified in both applications are not one

and the sam e. ( Sec. 9, R.A. No. 165a) cdt

SECTI ON 25. Non- Prej udicial Disclosure.

25.1. The disclosure of inform at ion contained in the application during the

twelve ( 12) m onths preceding the filing date or the pr iori ty date of the

application shall not prejudice the applicant on the ground of lack of

novelt y if such disclosure was m ade by:

a. The inventor;

b. A patent off ice and the inform at ion was contained ( a) in another

application filed by the inventor and should not have been disclosed

by the office, or ( b) in an application filed wi thout the knowledge or

consent of the inventor by a third party which obtained the

inform at ion directly or indirectly from the inven tor; orc. A thi rd party which obtained the inform at ion direct ly or indirect ly

from the inventor.

25.2. For the purposes of Subsection 25.1, " inventor" also m eans any

person who, at the filing date of application, had the r ight to the

patent . ( n)

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a. the local application expressly claim s priorit y;

b. it is filed within twelve ( 12) m onths from the date t he earliest

foreign application was filed; and

c. a certified copy of the foreign application together with an English

t ranslation is filed within six ( 6) m onths f rom the date of fi ling in

the Philippines. ( Sec. 15, R.A. No. 165a)

CHAPTER I V

Patent Application

SECTI ON 32. The Application.

32.1. The patent application shall be in Filipino or English and shall contain

the following:

a. A request for the grant of a patent;

b. A description of the invention;c. Drawings necessary for the understanding of the invention;

d. One or m ore claim s; and

e. An abstract.

32.2. No patent m ay be granted unless the appl ication identifies the

inventor . I f the applicant is not the inventor, the Office m ay require

him to subm it said authori ty. ( Sec. 13, R. A. No. 165a) cdtai

SECTI ON 33. Appointm ent of Agent or Representative. An applicant who

is not a resident of the Philippines m ust appoint and m aintain a resident

agent or representative in the Philippines upon whom notice or process forj udicia l or adm in is trat ive procedure re lating to the appl ication for patent or

the patent m ay be served. ( Sec. 11, R.A. No. 165a)

SECTI ON 34. The Request. The request shall contain a petition for the

grant of the patent, the nam e and other data of the applicant, the inventor

and the agent and the t it le of the invention. ( n)

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SECTI ON 35. Disclosure and Descr iption of the I nvent ion.

35.1. Disclosure. The application shall disclose the invent ion in a m anner

sufficient ly clear and com plete for it to be carried out by a person

skilled in the art . Where the appl ication concerns a m icrobiological

process or the product thereof and involves t he use of a m icro-

organism which cannot be sufficiently disclosed in the application in

such a way as to enable the invention to be carried out by a person

skilled in the ar t, and such m aterial is not available to the public, the

application shall be supplem ented by a deposit of such m aterial with

an international depository institution.

35.2. Description. The Regulations shall prescribe the contents of the

description and the order of presentation. ( Sec. 14, R. A. No. 165a)

SECTI ON 36. The Claim s.

36.1. The applicat ion shall contain one ( 1) or m ore claim s which shall def ine the m atter for which protection is sought. Each claim shall be clear

and concise, and shall be supported by the description.

36.2. The Regulations shall prescribe the m anner of the presentation of

claim s. ( n)

SECTI ON 37. The Abstract. The abstract shall consist of a concise

sum m ary of the disclosure of the invention as contained in the descr iption,

claim s and drawings in preferably not m ore than one hundred fift y ( 150)

words. I t m ust be draf ted in a way which allows the clear understanding of

the technical problem , the gist of the solution of that problem through theinvention, and the principal use or uses of the invention. The abstract shall

m erely serve for technical inform at ion. ( n)

SECTI ON 38. Unity of I nvent ion.

38.1. The application shall relate to one invention only or to a group of

inventions form ing a single general inventive concept.

38.2. I f several independent inventions which do not form a single general

inventive concept are claim ed in one application, the Director m ay

require that the application be restricted to a single invention. A later

application filed for an invention divided out shall be considered ashaving been filed on the sam e day as the f irst application: Prov ided,

That the later app lication is filed within four ( 4) m onths after the

requirem ent to divide becom es final, or with in such addi tional t im e,

not exceeding four ( 4) m onths, as m ay be granted: Prov ided further,

That each divisional application shall not go beyond the disclosure in

the init ial application.

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38.3. The fact that a patent has been granted on an application that did not

com ply with the requi rem ent of uni ty of invention shall not be a

ground to cancel the patent . ( Sec. 17, R.A. No. 165a)

SECTI ON 39. I nform at ion Concerning Corresponding Foreign

Applicat ion for Patents. The applicant shall, at the request of the Director,

furnish him with the date and num ber of any application for a patent filed by

him abroad, hereafter referred to as the " foreign application," relating to the

sam e or essentially the sam e invention as that claim ed in the application filed

with the Office and other docum ents relat ing to the foreign application. ( n)

CHAPTER V

Procedure for Grant of Patent

SECTI ON 40. Filing Date Requirem ents.

40.1. The filing date of a patent application shall be the date of receipt by

the Office of at least the following elem ents:

a. An express or im plicit indication that a Phi lippine patent is sought;

b. I nform at ion ident ifying the applicant; and

c. Description of the invent ion and one ( 1) or m ore claim s in Filipino

or English.

40.2. I f any of these elem ents is not subm it ted with in the period set by the

Regulations, the application shall be considered withdrawn. ( n)

SECTI ON 41. According a Filing Date. The Office shall exam ine whether

the patent application satisfies the requirem ents for the grant of date of filing

as provided in Section 40 hereof. I f the date of filing cannot be accorded, the

applicant shall be given an opportunity to correct the deficiencies in

accordance with the im plem enting Regulations. I f the appl ication does not

contain all the elem ents indicated in Section 40, the f iling date should be that

date when all the elem ents are received. I f the deficiencies are not rem edied

with in the prescribed t im e lim it , the application shall be considered

withdrawn. ( n)

SECTI ON 42. Form ality Exam inat ion.

42.1. After the patent applicat ion has been accorded a f il ing date and the

required fees have been paid on t im e in accordance wi th the

Regulations, the applicant shall com ply wi th the form al requirem ents

specified by Section 32 and the Regulations within the prescribed

period, otherwise the application shall be considered withdrawn.

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42.2. The Regulations shall determ ine the procedure for the re- exam ination

and revival of an application as well as the appeal to the Director of

Patents from any fina l action by the exam iner. ( Sec. 16, R.A. No.

165a)

SECTI ON 43. Classification and Search. An application that has com plied

with the form al requirem ents shall be classified and a search conducted to

determ ine the pr ior art. ( n)

SECTI ON 44. Publicat ion of Patent Appl icat ion.

44.1. The patent application shall be published in the I PO Gazette together

with a search docum ent established by or on behalf of the Office cit ing

any docum ents that ref lect prior art, after the expi ration of eighteen

( 18) m onths from the fi ling date or priority date.

44.2. After publ ication of a patent application, any interested party m ayinspect the application docum ents filed wi th the Office.

44.3. The Director General, subject to the approval of the Secretary of Trade

and I ndust ry, m ay prohibit or restrict the publicat ion of an application,

if in his opinion, to do so would be prejudicial to the national security

and in terests of the Republic of the Philippines. ( n)

SECTI ON 45. Confident iality Before Publicat ion. A patent application,

which has not yet been published, and all related docum ents, shall not be

m ade available for inspection without the consent of the applicant. ( n)

SECTI ON 46. Rights Conferred by a Patent Application Af ter Publ icat ion.

The applicant shall have all the r ights of a patentee under Section 76 against

any person who, without his authorizat ion, exercised any of the r ights

conferred under Section 71 of this Act in relation to the invention claim ed in

the published patent application, as if a patent had been granted for that

invention: Provided that the said person had:

46.1. Actual knowledge that the invent ion that he was using was the subject

m atter of a published application; or

46.2. Received written notice that the invention that he was using was the

subject m atter of a published application being identified in the saidnotice by it s serial num ber: Provided that the action m ay not be filed

until after the grant of a patent on the published application and within

four ( 4) years from the com m ission of the acts com plained of. ( n)

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SECTI ON 47. Observation by Third Part ies. Following the publication of

the patent application, any person m ay present observat ions in writ ing

concerning the patentability of the invention. Such observations shall be

com m unicated to the applicant who m ay com m ent on them . The Office shall

acknowledge and put such observat ions and com m ent in the file of the

application to which it relates. ( n)

SECTI ON 48. Request for Substant ive Exam inat ion.

48.1. The application shall be deem ed withdra wn unless within six ( 6)

m onths from the date of publication under Section 41, a written

request to determ ine whether a patent application m eets the

requirem ents of Sections 21 to 27 and Sections 32 to 39 and the fees

have been paid on t im e.

48.2. Withdrawal of the request for exam ination shall be irrevocable and

shall not authorize the refund of any fee. ( n)

SECTI ON 49. Am endm ent of Application. An applicant m ay am end t he

patent application during exam ination: Prov ided, That such am endm ent shall

not include new m atter outside the scope of the disclosure contained in the

application as filed. ( n)

SECTI ON 50. Grant of Patent .

50.1. I f the application m eets the requirem ents of this Act, the Office shall

grant the patent : Prov ided that all the fees are paid on t im e.50.2. I f the required fees for grant and pr inting are not paid in due t im e, the

application shall be deem ed to be withdrawn. Cdta

50.3. A patent shall take effect on the date of the publication of the grant of

the patent in the I PO Gazette. ( Sec. 18, R. A. No. 165a)

SECTI ON 51. Refusal of the Appl ication.

51.1. The final order of refusal of the exam iner to g rant the patent shall be

appealable to the Director in accordance with this Act.

51.2. The Regulations shall provide for the procedure by which an appeal

from the order of refusal from the Director shall be under taken. ( n)

SECTI ON 52. Publicat ion Upon Grant of Patent .

52.1. The grant of the patent together with other related inform at ion shall

be published in the I PO Gazette with in the t im e prescribed by the

Regulations.

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52.2. Any interested party m ay inspect the com plete descript ion, claim s,

and drawings of the patent on file wi th the Office. ( Sec. 18, R. A. No.

165a)

SECTI ON 53. Contents of Patent . The patent shall be issued in the nam e

of the Republic of the Philippines under the seal of the Office and shall be

signed by the Director, and registered together wi th the description, claim s,

and drawings, if any, in books and records of the Office. ( Secs. 19 and 20,

R.A. No. 165a)

SECTI ON 54. Term of Patent . The term of a patent shall be twenty ( 20)

years from the filing date of the appl ication. ( Sec. 21, R.A. No. 165a)

SECTI ON 55. Annual Fees.

55.1. To m aintain the patent application or patent, an annual fee shall be

paid upon the expirat ion of four ( 4) years from the date the

application was published pursuant to Section 44 hereof, and on each

subsequent anniversary of such date. Paym ent m ay be m ade within

three ( 3) m onths before the due date. The obligation to pay the

annual fees shall term inate should the application be withdrawn,

refused, or cancelled.

55.2. I f the annual fee is not paid, the patent application shall be deem ed

withdrawn or the patent considered as lapsed from the day following

the expiration of the period within which the annual fees were due. A

notice that the application is deem ed withdr awn or the lapse of apatent for non- paym ent of any annual fee shall be published in the

I PO Gazette and the lapse shall be recorded in the Register of the

Office.

55.3. A grace per iod of six ( 6) m onths shal l be granted for the paym ent of

the annual fee, upon paym ent of the prescribed surcharge for delayed

paym ent. ( Sec. 22, R. A. No. 165a)

SECTI ON 56. Surrender of Patent .

56.1. The owner of the patent, with the consent of all persons having grants

or licenses or other r ight, t it le or interest in and to the patent and the invention covered thereby, which have been recorded in the Office,

m ay surrender his patent or any claim or claim s form ing part thereof

to the Office for cancellation.

56.2. A person m ay give not ice to the Off ice of his opposition to the

surrender of a patent under this section, and if he does so, the Bureau

shall notify the proprietor of the patent and determ ine the question.

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56.3. I f the Office is satisfied that the patent m ay properly be surrendered,

he m ay accept the offer and, as from the day when notice of his

acceptance is published in the I PO Gazette, the patent shall cease to

have effect, but no action for infringem ent shall lie and no r ight

com pensation shall accrue for any use of the patented invention

before that day for the services of the governm ent. ( Sec. 24, R. A. No.

165a)

SECTI ON 57. Correction of Mistakes of the Office. The Director shall have

the power to correct , without fee, any m istake in a patent incurred throug h

the faul t of the Office when clearly disclosed in the records thereof, to m ake

the patent conform to the records. ( Sec. 25, R.A. No. 165)

SECTI ON 58. Correction of Mistake in the Application. On request of any

interested person and paym ent of the prescribed fee, the Director is

authorized to correct any m istake in a patent of a form al and clerical nature, not incurred through the fault of the Office. ( Sec. 26, R.A. No. 165a)

SECTI ON 59. Changes in Patent s.

59.1. The owner of a patent shall have the r ight to request the Bureau to

m ake the changes in the patent in order to:

a. Lim it the extent of the protection conferred by it ;

b. Correct obvious m istakes or to correct clerical errors; and

c. Correct m istakes or errors, other than those referred to in let ter

( b), m ade in good faith: Prov ided, That where the change wouldresult in a broadening of the extent of protection conferred by the

patent, no request m ay be m ade after the expirat ion of two ( 2)

years from the grant of a patent and the change shall not affect the

r ights of any third party which has relied on the patent, as

published.

59.2. No change in the patent shall be perm it ted under this section, where

the change would result in the disclosure contained in the patent going

beyond the disclosure contained in the application filed.

59.3. I f, and to the extent to which the Office changes the patent according

to this section, it shall publish the sam e. ( n)

SECTI ON 60. Form and Publ icat ion of Am endm ent. An am endm ent or

correction of a patent shall be accom plished by a cer tificate of such

am endm ent or correct ion, authent icated by the seal of the Office and signed

by the Director, which certificate shall be attached to the patent. Notice of

such am endm ent or correction shall be published in the I PO Gazette and

copies of the patent kept or furnished by the Office shall include a copy of the

certif icate of am endm ent or correct ion. ( Sec. 27, R. A. No. 165)

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CHAPTER VI

Cancellation of Patents and Substitution of Patentee

SECTI ON 61. Cancellat ion of Patents.

61.1. Any interested person m ay, upon paym ent of the required fee, peti tion

to cancel the patent or any claim thereof , or parts of the claim , on any

of the following grounds:

a. That what is claim ed as the invent ion is not new or patentab le;

b. That the patent does not disclose the invention in a m anner

sufficient ly clear and com plete for it to be carried out by any person

skilled in the art; or

c. That the patent is contrary to public order or m oralit y.

61.2. Where the grounds for cancellation relate to som e of the claim s or

parts of the claim , cancellation m ay be effected to such extent only.

( Secs. 28 and 29, R. A. No. 165a)

SECTI ON 62. Requirem ent of the Pet it ion . The petition for cancellation

shall be in writing, verified by the petitioner or by any person in his behalf

who knows the facts, specify the grounds upon which it is based, include a

statem ent of the facts to be relied upon, and filed with the Office. Copies of

printed publications or of patents of other countries, and other supporting

docum ents m entioned in the petition shall be attached thereto, together with

the t ranslat ion thereof in English, if not in the English language. ( Sec. 30,

R.A. No. 165)

SECTI ON 63. Notice of Hear ing. Upon filing of a petition for cancellation,

the Director of Legal Affairs shall forthwith serve notice of the filing thereof

upon the patentee and all persons having grants or licenses, or any other

r ight, t it le or interest in and to the patent and the invention covered thereby,

as appears of record in the Office, and of notice of the date of hearing

thereon on such persons and the petitioner. Notice of the filing of the petition

shall be published in the I PO Gazette. ( Sec. 31, R.A. No. 165a) cd

SECTI ON 64. Com m it tee of Three. I n cases invo lving highly technical

issues, on m ot ion of any par ty, the Director of Legal Affairs m ay order that

the petit ion be heard and decided by a com m it tee com posed of the Directorof Legal Affairs as chairm an and two ( 2) m em bers who have the experience

or expertise in the field of technology to which the patent sought to be

cancelled relates. The decision of the com m it tee shall be appealable to the

Director General. ( n)