Under the Philippine legal system, inventions are granted statutory protection through patents, utility models, and industrial designs. Trade secrets are also entitled to protection.

These protections are primarily based on the Intellectual Property Code of the Philippines, as amended (IP Code), along with its implementing rules and regulations. The IP Code was further amended by the following laws:

• Republic Act (RA) No 9150 or An Act Providing for Protection of Layout-Designs (Topographies) of Integrated Circuits;
• RA No 9502 or An Act Providing for Cheaper and Quality Medicines; and
• RA No 10372 or An Act Amending Certain Provisions of RA No 8293.

Case law further expounds on the protection granted by statutory law to inventions.

The Philippines is also a member of several IP treaties, which serve as bases for the protection of inventions, including, among others:

• the Patent Cooperation Treaty (PCT);
• the Agreement on Trade-Related Aspects of Intellectual Property Rights; and
• the Paris Convention for the Protection of Industrial Property.

Patent

Patent applications may be filed by direct application or via the PCT national phase entry route.

Direct application (which may be with claim of priority under the Paris Convention)

To obtain a patent right to an invention, a patent application must be filed with the Intellectual Property Office of the Philippines (IPOPHL).

A patent application shall first go through a formality examination. Thereafter, the application shall undergo classification and search to determine the prior art. After 18 months from filing, the application shall be published in the IPOPHL E-Gazette.

The written request for substantive examination must be filed either at the time of filing of the application or within six months from the date of publication. During substantive examination, the patent examiner will assess whether the application meets the requirements of patentability.

If the requirements are met, the IPOPHL shall grant the patent and issue the corresponding certificate of letters patent. The grant of the patent shall be published in the IPOPHL E-Gazette within six months upon grant.

PCT national phase entry (which may be with claim of priority under the Paris Convention)

The request for national phase entry must be made within 30 months (with a grace period of one month) from the earliest priority date or international filing date of the international application.

Upon filing the application, it will undergo a formality examination. Thereafter, a national phase entry application report shall be issued, acknowledging the entry into the Philippine national phase of the subject application and according the same a domestic application number and a national phase entry date.

Unlike direct applications, national phase entry applications are not published with the description and claims before substantive examination. Instead, only the following are published: the international application number, date of entry, title, applicant, and classification. Thereafter, the application shall undergo substantive examination, the fee for which must be paid upon filing of the application or within six months from date of entry into the national phase.

If the application meets the requirements of the IP Code, the IPOPHL shall grant the patent and issue the corresponding certificate of letters patent, which shall be published in the IPOPHL E-Gazette.

Utility Model

Like patent applications, utility model applications may also be filed by direct application or via the PCT national phase entry route. The major differences are that utility model applications do not undergo substantive examination, and do not require the inventive step.

Once an application is filed, the IPOPHL shall conduct a formality examination. If deemed compliant, the application will be published in the IPOPHL E-Gazette for 30 days for adverse information. If the application meets the requirements of the IP Code, the IPOPHL shall grant the registration of the utility model, which shall likewise be published in the IPOPHL E-Gazette.

Industrial Design

An application for industrial design must be filed within six months from the filing of the priority application, should it claim priority over a previous application. Once filed, the application shall undergo a formality examination. Thereafter, it will be published in the IPOPHL E-Gazette to allow for public inspection and possible opposition for a period of 30 days. If there is no opposition or if the opposition is resolved in favour of the applicant, a certificate of registration will be issued.

Like utility model applications, industrial design applications shall be registered without substantive examination.

Patent applications may take an average of three to four years from the filing date before they are registered. Meanwhile, it may take six months to two years to register a utility model and an industrial design.

Resident applicants may initiate grant proceedings on their own by filing the application themselves, while non-resident applicants shall appoint a resident agent or an authorised representative in the Philippines who shall file the applications on their behalf. In such a case, a copy of the power of attorney or appointment of the resident agent must be submitted.

The average government costs that an applicant can expect to incur for a straightforward application with no more than five claims and no claim of priority are:

• Patents:
1. PHP11,756.80 (or approximately (USD202.00) for direct applications; and
2. PHP10,787.20 (or approximately (USD184.60) for PCT applications.
• Utility models:
1. PHP6,787.60 (or approximately USD117.00) for direct applications; and
2. PHP5,818.00 (or approximately USD99.56) for PCT applications.
• Industrial design: PHP6,787.60 (or approximately USD117.00).

Moreover, the government filing fees are assessed based on whether the applicant is a small or a big entity. Applicants with assets worth PHP100 million (or approximately USD1.7 million) or less – ie, small entities, shall pay 50% of the aforementioned fees while applicants with assets over PHP100 million – ie, big entities, shall pay the full amount of the aforementioned fees.

As for the professional fees, the estimated average costs that an applicant can expect to incur for a straightforward application with no more than five claims and no claim of priority are:

• Patents: around USD820.00 to USD965.00;
• Utility models: around USD690.00 to USD835.00; and
• Industrial designs: around USD835.00.

Patent protection lasts for 20 years from the filing date and cannot be renewed. Utility models have a seven-year protection period from the date of application, with no option for renewal. Industrial designs are initially valid for five years from the filing date and can be extended twice for an additional five years each, thus having a maximum of 15 years of protection. For PCT national phase applications, the 20-year term is based on the international filing date.

A patent holder or any person with a right to the patented invention is granted the exclusive right to restrain, prohibit, and prevent others from making, using, offering for sale, selling, or importing a patented product, from using the process and from manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained through a patented process. Patent holders also have the exclusive right to assign, transfer by succession, or license their patents.

The making, using, offering for sale, selling, or importing of a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorisation of the patentee constitutes patent infringement.

The remedies available to a patentee should the patent be infringed are discussed in 2.1 Actions Available Against Infringement.

To be able to exercise these rights, patent owners must maintain their patents by paying annual fees starting on the fourth year from the date of the application’s first publication and on each subsequent anniversary until the patent expires. Failure to pay these fees can result in the withdrawal of the patent application or the lapse of the patent registration.

The IPOPHL publishes lists of active patents in the Philippines but there is no public information listing applicable patents in relation to certain products or processes.

As discussed in 1.4 Term of Each Intellectual Property Right, the duration of protection for patents and utility models is fixed. Once the protection period expires, the covered invention or model enters the public domain, allowing anyone to use it without permission. In contrast, industrial designs may be renewed twice for an additional five years each. Supplementary protection certificates are not issued in the Philippines.

For patents, any individual may submit observations in writing on the patentability of inventions within six months from their first publication date, or from the publication date of a PCT national phase entry application. All observations shall be communicated to the applicant who may comment on the same within 30 days from the mailing date of the communication. Interested parties may request a conference with the IPOPHL for a better understanding of the application and patent system.

For utility model and industrial design applications, any person may present written adverse information regarding their registrability within one month from their publication date. Similarly, interested parties may request a conference with the IPOPHL. After the conference, parties may file supplemental adverse information to include any new information. All adverse information and comments are relayed to the applicant, who can respond within 30 days of the communication date.

After an adverse action by the examiner, the applicant may reply and request re-examination in writing, pointing out the specific errors in the examiner’s action.

An applicant may also amend the application by pointing out the novel and inventive features that he/she thinks the claims present and explaining how the amendments overcome the prior art references or objections.

After the applicant’s response, the application will be re-examined.

On second or subsequent consideration, the examiner may declare a final refusal which the applicant can appeal to the Director of Patents of the IPOPHL within two months from the mailing date of the Notice of Final Refusal.

The decisions or final orders of the Director of Patents shall become final and executory 30 days after receipt thereof by the appellant unless, within the same period, a motion for reconsideration is filed with the Director of Patents or an appeal to the Director General has been perfected. The decision or order of the Director General shall be final and executory 15 days after receipt thereof by the parties unless appealed to the Court of Appeals. The applicant may then appeal the Court of Appeals’ decision to the Supreme Court.

Before the grant or refusal of a patent, an applicant may convert an application into a utility model application, maintaining the initial filing date. Conversion may be allowed only once.

If the annual fees and excess claims are not paid within the prescribed time, a notice of non-payment shall be published in the IPOPHL E-Gazette and mailed to the patent owner, applicant, or resident agent.

The patentee shall be given a six-month grace period from the publication of the notice to pay the annual fee, the excess claim fee, the applicable surcharge for delayed payment, and the publication fee.

Upon failure to pay the required fees within the grace period, a notice that the application is deemed forfeited or that the patent is considered lapsed as of the date following the expiration of the original period within which the annual fee was due, shall be issued and published and recorded in the appropriate register of the IPOPHL.

An application that is deemed forfeited or a patent that is considered lapsed due to non-payment of annual fees cannot be revived.

Patent owners can request the IPOPHL to make administrative corrections in their patents, specifically to:

• limit the extent of protection conferred by it through deletion of claim/s;
• correct clerical errors or obvious mistakes; and
• correct mistakes or errors made in good faith; however, changes that would broaden the protection cannot be made after two years from the grant of a patent (moreover, the change should not affect third-party rights based on the published patent).

Claim amendments that require the re-examination of the application shall not be accepted since the patent prosecution on the merits was already concluded when the patent was granted.

A patent holder or any person with a right to the patented invention may file a civil action for patent infringement before the courts or an administrative complaint before the Bureau of Legal Affairs (BLA) of the IPOPHL against one who makes, sells, or imports patented products or processes without authorisation to recover from the infringer a reasonable amount of damages, plus attorney’s fees and other expenses of litigation and to secure an injunction for the protection of his rights. The court may also, in its discretion, order the destruction of the infringing goods, without compensation.

The patentee can also file a criminal case for patent infringement against any repeat offenders or those in connivance with him/her after finality of the judgment of the court against the infringer. The filing of a criminal action is without prejudice to the institution of a civil action for damages.

A patent holder can also apply for a writ of preliminary attachment or preliminary injunction even before receiving a ruling on the merits.

Cancellation Action

Any interested person may petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds:

• 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.
• The patent includes matters outside the scope of the disclosure contained in the application as filed.

Utility model registrations may also be cancelled on the following grounds:

• The invention does not qualify for registration as a utility model and does not meet the requirements of registrability.
• The description and the claims do not comply with the prescribed requirements.
• Any drawing that is necessary for the understanding of the invention has not been furnished.
• The owner of the utility model registration is not the inventor or his successor in title.
• The utility model registration extends beyond the content of the application as originally filed.

Any person may also petition to cancel the industrial design at any time during the term of its registrations on any of the following grounds:

• The industrial design does not give a special appearance to and cannot serve as a pattern for an industrial product or handicraft.
• The industrial design is not new or original.
• The industrial design is dictated essentially by technical or functional consideration to obtain a technical result.
• The industrial design is contrary to public order, health or morals.
• The subject matter of the industrial design extends beyond the content of the application originally filed.

Compulsory Licensing

The Director General of the IPOPHL may grant a licence to exploit a patented invention, even without the agreement of the patent owner, in favour of any person who has shown capability to exploit the invention, under any of the following circumstances:

• national emergency or other circumstances of extreme urgency;
• where the public interest, in particular, national security, nutrition, health or the development of other vital sectors of the national economy so requires; or
• where a judicial or administrative body has determined that the manner of exploitation by the owner of the patent or his/her licensee is anti-competitive; or
• in the case of public non-commercial use without satisfactory reason;
• if the patented invention is not being worked in the Philippines on a commercial scale, although capable of being worked, without satisfactory reason; and
• where the demand for patented drugs and medicines is not being met to an adequate extent and on reasonable terms, as determined by the Secretary of the Department of Health.

The BLA shall have original jurisdiction on administrative complaints for violation of IP rights, including petitions for cancellation and petitions for compulsory licensing of patents provided that the total damages claimed are not less than PHP200,000.00 (or approximately USD3,400.00). The decision of the BLA may be appealed to the Director and thereafter to the Director General, and then to the Court of Appeals and then finally to the Supreme Court.

The regional trial courts (RTC) designated by the Supreme Court as special commercial courts shall have jurisdiction over civil and criminal actions involving IP rights. Their decisions shall be appealable to the Court of Appeals and thereafter to the Supreme Court.

As discussed in 2.3 Courts With Jurisdiction, certain RTCs are designated by the Supreme Court to serve as special commercial courts for the resolution of IP disputes. The BLA also handles administrative complaints involving IP rights disputes.

Generally, there are no prerequisites specifically required for filing an IP lawsuit.

However, to be able to file a civil action for damages, it must be shown that the infringer had known or had reasonable grounds to know of the patent. This is presumed if the words “Philippine Patent” with the number of the patent are placed on the patented product, or on the container in which it is supplied to the public.

For criminal actions, there must have already been a final judgment of infringement in a previous civil action against the same accused. Moreover, the criminal action must be brought within three years from its commission.

Parties in IP matters, whether filed before the court or before the BLA, need to be represented by lawyers.

Preliminary injunction and temporary restraining order (TRO) may be availed of by the patentee.

A preliminary injunction may be granted by the court in civil cases and by the BLA in administrative cases when it is established that:

• the applicant is entitled to the relief demanded;
• the commission, or non-performance of the act or acts complained of would probably work injustice to the applicant; or
• that a party or any person is doing, threatening, or attempting to do, or is procuring or suffering to be done some act or acts probably in violation of the rights of the applicant respecting the subject of the action, and tending to render the judgment ineffectual.

Jurisprudence also provides four requisites for the issuance of preliminary injunction, namely:

• clear and unmistakable right to be protected;
• there is a material and substantial invasion of such right;
• there exists 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.

The patentee to an infringement case may also avail themselves of a TRO.

For civil cases, if it appears from the facts that great or irreparable injury would result to the applicant before the matter can be heard on notice, the court may immediately issue a TRO effective only for a period of 20 days from service on the party or person sought to be enjoined. Within this period, the court must order said party to show cause why the injunction should not be granted, determine whether the preliminary injunction shall be granted, and accordingly issue the corresponding order.

If the matter is of extreme urgency and the applicant will suffer grave injustice and irreparable injury, the judge may issue ex parte a TRO effective for 72 hours from its issuance. Within this period, a summary hearing shall be conducted to determine whether the TRO shall be extended until the application for preliminary injunction can be heard but in no case shall the total period of effectiveness exceed 20 days.

For administrative cases before the BLA where a TRO is sought, the respondent shall be given a non-extendible period of ten days to file its counter-affidavit and supporting documents. Thereafter, the Hearing Officer shall draft the resolution on the application within ten days from receipt of the respondent’s counter-affidavits. If it shall appear that great and irreparable injury would result to the applicant, a TRO may be issued with the approval of the Director to be effective only for 20 days from service on the party or person sought to be enjoined.

However, if the matter is of extreme urgency and the applicant will suffer grave injustice and irreparable injury, the Hearing Officer, with the approval of the Director and with the concurrence of the Director General, may issue ex parte a TRO effective for 72 hours from its issuance.

To protect potential opponents from the issuance of a preliminary injunction or TRO, it must be shown why the application for injunction or TRO should be denied or dissolved if already granted.

The grounds for objection include:

• insufficiency;
• other grounds, upon affidavits of the party or person enjoined; or
• if it appears that the applicant is entitled to the injunction or TRO, but its issuance or continuance would cause irreparable damage to the party enjoined while the applicant can be fully compensated for such damages, and the former files a bond to cover all damages that the applicant may suffer by the denial or the dissolution of the injunction or TRO.

The collection of damages in an IP suit is limited such that no damages may be recovered for acts of infringement committed more than four years before the institution of the action. Furthermore, any criminal action against repeat infringers or those acting in connivance with them must be initiated within three years from the date the offence was committed.

The amount of recoverable damages is also restricted to either the profit the complainant would have earned had the infringement not occurred or the profit gained by the defendant as a result of the infringement.

Finally, a preliminary injunction shall only be issued if there exists an urgent need for the writ to prevent irreparable injury to the applicant.

For cases filed before the courts, the following modes of discovery may be availed of by any party not later than 30 days from the joinder of issues:

• Depositions Pending Action: The testimony of any person may be taken by deposition upon oral examination or written interrogatories, upon ex parte motion of a party. At the trial, any deposition may be used by any party for the purpose of contradicting or impeaching the testimony of the deponent as a witness.
• Written Interrogatories: When a party desires to elicit material and relevant facts from any adverse party, it shall, upon an ex parte motion, file and serve upon the latter written interrogatories to be answered by the party served. A party not served with written interrogatories may not be compelled by the adverse party to give testimony in open court, or to give a deposition pending appeal, unless thereafter allowed by the court for good cause shown and to prevent failure of justice.
• Request for Admission: A party may file and serve upon any other party a written request for admission by the latter of the genuineness of any material or 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 showing good cause, the court may order any party to produce and permit the inspection and copying or photographing of any designated documents, objects or tangible things that are not privileged, which constitute or contain evidence material to any matter involved in the action in his or her possession.

For administrative complaints filed before the BLA, any party may, by leave of the Hearing Officer, take the testimony of any person by deposition upon written interrogatories.

In IP cases before the courts, the complaint must:

• be verified and accompanied by a certificate of non-forum shopping;
• contain the full names of the parties and shall aver facts showing the capacity of a party to sue or be sued, or the authority of a party to sue or be sued in a representative capacity;
• state the names of witnesses who will be presented to prove its claim;
• state the summary of the witnesses’ intended testimonies; and
• contain the documentary and object evidence in support of the allegations contained in the pleadings, among others.

Supplemental pleadings may be permitted upon motion, upon reasonable notice and upon such terms as are just but must only set forth the transactions or events that transpired since the filing of the complaint.

For cases filed before the BLA, the complaint or petition must:

• be verified and accompanied by a certificate of non-forum shopping;
• contain the name and addresses of the petitioner and the other parties, including the respondent;
• contain the registration number, the name of the registrant, and the date of registration of the IP sought to be cancelled (for cancellation cases); and
• contain the ultimate facts constituting the petitioner’s causes of actions and the relief sought.

For infringement cases filed before the BLA, the complaint must be filed within four years from the date of commission of the violation.

While the IP Code does not give specific reference to collective actions such as class suits, the Rules of Court, which apply suppletorily to IP rights proceedings, explicitly allow such. In such cases, the subject of the controversy must be of common or general interest to a large group of people, and the number of parties must be so extensive that it would be impracticable to bring them all before the court. A representative group, deemed sufficiently numerous by the court, may sue or defend on behalf of the entire class. Additionally, any interested party retains the right to intervene in order to protect their individual interests.

Owners of IP rights cannot assert such rights against others in the following instances, among others:

• using a patented product already put on the market by the owner of the patent, or with his/her express consent, insofar as such use is done after that product has been put on the market;
• where the act is done privately and on a non-commercial scale or for a non-commercial purpose and provided it does not significantly prejudice the economic interest of the owner of the patent; and
• where the act consists of making or using exclusively for experimental use the invention for scientific purposes or educational purposes.

Any prior user, who, in good faith, was using the invention or has undertaken serious preparations to use the invention in his/her enterprise or business before the filing date or priority date of the application on which a patent is granted, shall have the right to continue the use thereof within the territory where the patent produces its effect.

Finally, any government agency or third person authorised by the government may exploit the invention even without agreement of the patent owner in the following instances discussed in 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property.

An action for infringement may be filed by any patentee or any person with a right, title, or interest in the patent whose rights have been infringed.

Direct patent infringement is the making, using, offering for sale, selling, or importing of a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorisation of the patentee.

Indirect or contributory infringement occurs when one actively induces the infringement of a patent or provides the infringer with a component of a patented product or of a product produced because of a patented process, knowing it to be especially adopted for infringing the patented invention and not suitable for substantial non-infringing use.

The remedies available to a patentee should the patent be infringed are discussed in 2.1 Actions Available Against Infringement.

If the subject matter of a patent is a process for obtaining a product, any identical product shall be presumed to have been obtained through the use of the patented process if the product is new or there is substantial likelihood that the identical product was made by the process and the owner of the patent has been unable, despite reasonable efforts, to determine the process actually used. In ordering the defendant to prove that the process to obtain the identical product is different from the patented process, the Director shall adopt measures to protect, as far as practicable, his/her manufacturing and business secrets.

The Supreme Court has previously used the literal infringement test and doctrine of equivalents in determining the existence of patent infringement.

In Phillips Seafood Philippines Corporation v Tuna Processors, Inc. G.R. No 214148 (06 February 2023), the Court discussed that “[u]nder the doctrine of equivalents test, the courts consider whether the elements in the alleged-infringing product or process are equivalent to the elements expressed in the patent’s claim(s). There is patent infringement if the allegedly-infringing product or process appropriates the innovative concept of the patent, and despite the modifications introduced in the infringing product or process, it still performs substantially the same functions, in the same way, to produce the same result.”

The court further discussed that there are three tests that may be applied. Under the Insubstantial Difference Test, “there is patent infringement when the infringer appropriates the patent but adopts insubstantial changes”. Under the Triple Identity Test, “there is patent infringement if the allegedly-infringing device or process performs substantially the same function and accomplishes substantially the same result by using substantially the same means.” Finally, under the All Elements Test, “courts consider the individual elements in a patent claim to define the scope of the patented invention, rather than considering the invention as a whole.”

In addition to other defences available to the defendant in an action for infringement, the defendant may show:

• the invalidity of the patent, or any claim thereof, on any of the grounds on which a petition of cancellation can be brought under Section 61 of the IP Code, as enumerated in 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property;
• the restrictions on the assertion of patent rights discussed in 2.13 Restrictions on Assertion of an Intellectual Property Right;
• good faith if the defendant or the accused claims to be a prior user as discussed in 2.13 Restrictions on Assertion of an Intellectual Property Right; and
• non-essentiality of a patent in cases where the patent is alleged to be a standard essential patent.

The role of experts in judicial proceedings is to provide their opinion on matters requiring special knowledge, skill, experience, or education. Under the Rules on Evidence, such opinions may be admitted as evidence to aid the court in resolving technical or specialised issues.

For patents, the IP Code allows the appointment of two or more assessors with the requisite scientific and technical expertise in the subject matter under litigation in proceedings before the RTC. These assessors assist the court in resolving issues of a technical or scientific nature.

Additionally, in proceedings before the IPOPHL, the IP Code allows the formation of a committee in cases involving highly technical issues. Upon the motion of any party, the Director of Legal Affairs may convene such a committee, composed of the Director of Legal Affairs and two members with expertise in the relevant field. This committee is empowered to hear and decide petitions, such as those related to the cancellation of patents.

There is no separate procedure for construing the terms of the patent’s claims. When an infringement or cancellation case is filed, the issue on the interpretation of the scope of the patent claims shall be addressed in the same proceedings.

Notably, in Maguan v Court of Appeals, G.R. No L-45101, (28 November 1986), the Supreme Court held that in an action for infringement, the court has jurisdiction to determine the invalidity of the patents at issue, notwithstanding that such invalidity remains pending consideration before the patent office. In this regard, the Supreme Court ruled that “[w]hen a patent is sought to be enforced, the questions of invention, novelty or prior use, and each of them, are open to judicial examination.”

Section 36 of Rule 138 of the Rules of Court provides that experienced and impartial attorneys may be invited by the court to appear as amici curiae to help in the disposition of issues.

Nonetheless, in Forest Hills Golf and Country Club, Inc. v Gardpro, Inc., G.R. No 164686, (22 October 2014), the Supreme Court held that the appearance of amici curiae is a matter of judicial discretion and not a matter of right, which is permitted only when the court deems the information offered to be timely and of assistance. However, where the parties are represented by competent counsel, leave to appear as amici curiae is typically denied. Moreover, the courts generally refrain from allowing the intervention of individuals whose interests are partisan or aligned with private entities that stand to benefit from the litigation’s outcome.

Any interested person may petition to cancel a patent or any claim thereof, or parts of the claim, a utility model or an industrial design on the grounds discussed in 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property.

The petition for cancellation may be filed before the BLA which is appealable to the BLA Director, whose decision is appealable to the Director General. The decision of the Director General may be appealed before the Court of Appeals, and thereafter the Supreme Court.

Partial revocation or cancellation of a patent is possible where the grounds for cancellation relate to some of the claims or parts of the claim. Cancellation may be effected to such an extent only and the IPOPHL shall reissue the amended patent.

Partial revocation or cancellation is likewise applicable to industrial designs where the grounds for cancellation relate to a part of the industrial design only. In such a case, restriction may be effected in the form of an alteration of the affected features of the design.

Amendment is possible in patent cancellation proceedings. If the IPOPHL finds that the patent and the invention to which it relates meet the requirement of the IP Code – taking into consideration the amendment made by the patentee during the cancellation proceedings – it may decide to maintain the patent as amended.

Amendment is also possible in industrial design cancellation proceedings. The restriction of the industrial design is effected in the form of an alteration of the affected features of the design.

A patent cancellation proceeding and an action for infringement are based on different causes of action and, as a result, cannot be heard together. However, in an action for patent infringement, the defendant may raise as a defence the invalidity of the subject patent, based on the grounds upon which a petition for cancellation can be brought.

If the patent or any claim is found to be invalid in a patent infringement case, the Director of Legal Affairs shall record that fact in the register of the IPOPHL and shall publish a notice to that effect in the IPOPHL E-Gazette, upon receipt of the final judgment of cancellation.

The 2020 Revised Rules of Procedure for Intellectual Property Rights Cases (Rules for IP Rights Cases) primarily govern civil and criminal complaints for violation of IP rights filed in courts. The Rules and Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights govern administrative complaints filed before the BLA. Finally, the Rules on Inter Partes Proceedings govern cancellation cases.

When cases are appealed, the Uniform Rules on Appeal (Uniform Rules) govern appeals to the Director General of the IPOPHL while the Rules of Court govern appeals to the Court of Appeals or the Supreme Court.

Infringement cases, whether filed in court or with the BLA, are generally conducted through a series of hearings, giving each party at least 30 days to present its case.

Fact and expert witnesses are typically heard during the trial stage. Parties are responsible for ensuring their witnesses are presented on scheduled dates within their allotted trial period.

Cross-examination is an absolute right in civil cases. After direct examination, the adverse party may cross-examine the witness on matters raised in direct testimony or related issues. The right to cross-examination also applies to depositions.

Remedies, including damages, are typically resolved at the same time as the infringement case is decided. The court shall determine damages, based on the amount claimed and the evidence presented, and other remedies such as injunctive relief, destruction of infringing goods, or equitable measures.

For cancellation cases, preliminary conference is conducted to facilitate the resolution process through stipulations, clarifications and the simplification of issues, and the submission and presentation of affidavits, and other necessary evidence. Upon termination of the same, the parties will be required to submit position papers and the case shall be submitted for decision.

Cases filed in court are adjudicated by judges. Jurisdiction over such matters lies with the RTCs, designated as special commercial courts. However, not all RTCs are classified as special commercial courts.

While there are no judges exclusively dedicated to IP cases, the establishment of special commercial courts ensures that cases involving complex commercial or technical issues, including IP matters, are heard by judges with expertise. The assignment of cases to the various branches of the RTC is governed by a raffle system, ensuring no external influence or bias.

Administrative cases for infringement and cancellation are decided by the BLA. For cancellation cases that involve highly technical issues, the Director of the IPOPHL may order that the petition be heard and decided by a committee as discussed in 3.6 Role of Experts.

Parties to patent infringement and cancellation suits are required to undergo mandatory mediation procedures. For criminal actions filed before the court, the parties shall likewise undergo mandatory mediation on the civil aspect of the case.

For civil cases, after the pre-trial stage and once the issues have been joined, the court is mandated to refer the parties to court-annexed mediation (CAM), which shall not exceed 30 calendar days.

If the judge determines that settlement remains a viable option, the case may be referred to another court for judicial dispute resolution (JDR). This must be completed within a non-extendable period of 15 calendar days.

Should this also fail, the case will proceed to trial before the original court on the dates previously agreed upon. All proceedings conducted during both the CAM and JDR are confidential.

For administrative complaints for violation of IP rights and inter partes cases filed before the IPOPHL, parties are also required to undergo mandatory mediation. During the alternative dispute resolution (ADR) conference, parties are briefed on the mediation process, including the option to use the WIPO option for mediation.

The IPOPHL likewise offers mediation outside litigation to encourage parties to settle their IP dispute even before filing a case in court or an administrative agency. To avail of the said service, both parties to the dispute must be willing to undergo mediation.

For patents, there is no explicit rule that directly addresses the effect of parallel revocation or infringement proceedings, or foreign anti-suit injunctions, on ongoing patent cases, unlike for trade marks where the IP Code specifically states that the filing of a petition to cancel a mark does not constitute a prejudicial question to an infringement action.

The patentee can recover from the infringer such damages sustained because of the infringement, plus attorney’s fees and other expenses of litigation, and secure an injunction for the protection of his/her rights.

The court may, according to the circumstances of the case, award damages in a sum above the amount found as actual damages, provided that the award does not exceed three times such amount. If the damages are inadequate or cannot be readily ascertained, the court may award a sum equivalent to a reasonable royalty.

Furthermore, the court may, in its discretion, order that the infringing goods, materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed, without compensation.

For wilful infringement, the offenders shall, without prejudice to the institution of a civil action for damages, be criminally liable and, upon conviction, shall suffer imprisonment for not less than six months but not more than three years and/or a fine of not less than PHP100,000 but not more than PHP300,000, at the discretion of the court.

Should an order to pay damages and/or injunction be issued, non-compliant defendants may be cited in contempt by the court.

A prevailing defendant may recover damages should a counterclaim be asserted during a patent infringement action and attorney’s fees if stipulated or where the court deems it just and equitable. Moreover, in cases where preliminary injunction is availed of, the defendant may recover damages if it is finally decided that the applicant was not entitled to such.

Neither the IP Code nor the applicable rules and regulations distinguish between the remedies that may be availed of for different IP rights. The procedure prescribed by the regulations in the cancellation of a patent shall be applied, with the necessary adjustments, to the cancellation of a utility model registration and a design registration.

For cases filed before the courts, the Rules for IP Rights Cases provide that any order issued by the court shall be immediately executory, unless restrained by the Supreme Court or the Court of Appeals, except in the following instances:

• order of destruction where a motion for reconsideration is filed; and
• order of release of seized goods where a search warrant is quashed.

The Rules on Inter Partes Proceedings provide that, unless restricted by the Director of the IPOPHL, the decision or order to cancel the patent, claim or part of a claim shall be immediately executory even pending appeal.

Appeals before the IPOPHL Director General are governed by the Uniform Rules while the appeal proceedings before the courts are primarily governed by the Rules of Court.

Under the Uniform Rules, the filing of an appeal memorandum or a motion for extension of time must be done exclusively via email. Further, it is optional for the parties to attach a draft decision to their memoranda.

An appeal before the Director General of the IPOPHL, and the Court of Appeals, may cover questions of laws or facts, or both. An appeal before the Supreme Court is generally limited to questions of law.

Before filing a patent infringement case, the interested party typically incurs several costs, such as:

• hiring private investigators or other professionals to gather evidence of infringement through market surveillance, sample purchases, and documentation;
• the costs involved in drafting and sending formal warning letters (also known as cease-and-desist letters) to the alleged infringer to notify them of the infringement and seek voluntary compliance; and
• expenses for preparing legal documents, filing the complaint, and other initial legal processes; these costs may also cover consultations with a patent attorney for advice and strategy, retaining experts to provide testimony, and other preparatory steps.

The initiation of a patent infringement lawsuit requires the payment of filing fees, which are computed based on the value of damages claimed.

Court fees, expenses, and attorney’s fees are generally borne by each party involved. However, the court, in its discretion, may order the losing party to reimburse the prevailing party’s attorney’s fees and litigation expenses under specific circumstances:

• when the court deems the case to be frivolous or without merit;
• if the losing party acted in bad faith, fraudulently, or with gross negligence; or
• when the court grants exemplary damages, in cases involving the recovery of sums of money or damages.

ADR is a common mechanism for settling IP disputes. IP rights cases filed in courts include mandatory CAM and, in certain instances, JDR. Under Article 2042 of the Civil Code, the same persons who may enter a compromise may also submit their controversies to one or more arbitrators for decision.

For cases filed before the IPOPHL, parties are required to undergo mandatory mediation. During the ADR conference, parties are briefed on the mediation process, including the option to use the WIPO option for mediation or to submit the dispute to arbitration.

The IPOPHL likewise offers mediation outside litigation to encourage parties to settle their IP dispute even before filing a case.

To be acceptable, an assignment of a patent or an application for a patent must:

• be in writing and accompanied by an English translation, if in a language other than English or Filipino;
• be acknowledged before a notary public or other officer authorised to administer oath or perform notarial acts, and be certified under the hand and official seal of the notary or such other officer;
• be legalised or apostilled;
• be accompanied by an appointment of a resident agent, if the assignee is not a resident of the Philippines;
• identify the letters patent involved by number, date, name of the patentee, and title of the invention indicated in the patent; in the case of an application for patent, the application number, the filing date of the application, name of the applicant, and title of the invention in the application, shall be stated; and
• be accompanied by the required recordal and publication fees.

The assignment is valid between the parties, but it shall be void against any subsequent purchaser or mortgager for a valuable consideration and without notice, unless the assignment is recorded in the IPOPHL within three months from the date of the instrument, or prior to the subsequent sale or mortgage.

For recordal with the IPOPHL, the instrument evidencing the assignment must be notarised and legalised/apostilled. Its original, together with a signed duplicate, shall be submitted. If the original is not available, an authenticated copy in duplicate may be submitted instead. The power of attorney signed by an authorised representative of the assignee must likewise be submitted to the IPOPHL. The recordal and publication fee shall then be paid.

If presented in due form for registration, the IPOPHL shall record the assignment in its books and records. The date of its receipt by the IPOPHIL in proper form, accompanied by full payment of the required fees, shall be the date of its recording.

To encourage transfer and dissemination of technology, prevent or control practices and conditions that may constitute an abuse of IP rights causing anti-competitive effects, all licences involving technology transfer arrangements (TTA) shall comply with the provisions of the IP Code.

Section 87 of the IP Code provides a list of prohibited clauses for licence agreements, including, among others:

• those which impose upon the licensee the obligation to acquire from a specific source capital goods, intermediate products, raw materials, and other technologies, or of permanently employing personnel indicated by the licensor;
• those pursuant to which the licensor reserves the right to fix the sale or resale prices of the products manufactured on the basis of the licence;
• those that contain restrictions regarding the volume and structure of production;
• those that prohibit the use of competitive technologies in a non-exclusive technology transfer agreement;
• those that establish a full or partial purchase option in favour of the licensor;
• those that obligate the licensee to transfer for free to the licensor the inventions or improvements that may be obtained using the licenced technology; and
• other clauses with equivalent effects.

Section 88 of the IP Code provides mandatory clauses in voluntary licence contracts.

• The laws of the Philippines shall govern the interpretation of the same and in the event of litigation, the venue shall 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 shall be made available during the period of the TTA.
• In the event the TTA shall provide for arbitration, the Procedure of Arbitration of the Arbitration Law of the Philippines or 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 shall apply and the venue of arbitration shall be the Philippines or any neutral country.
• The Philippine taxes on all payments relating to the TTA shall be borne by the licensor.

TTAs that conform with the provisions of Sections 87 and 88 need not be registered with the Documentation, Information and Technology Transfer Bureau (DITTB) of the IPOPHL. However, if the agreement with the TTA is not fully compliant with Sections 87 and 88, the agreement must be registered with the DITTB.

The TTA will be unenforceable unless it complies with Sections 87 and 88 or is approved and registered with the DITTB under Section 91 for exceptional cases, such as where substantial benefits will accrue to the economy, such as high technology content, increase in foreign exchange earnings, employment generation, regional industry dispersal and/or substitution with or use of local raw materials, or in the case of the Board of Investments, registered companies with pioneer status.