The Philippine legal system provides protection to inventions through patents, utility models and industrial designs. Trade secrets are also protected under Philippine law.

These intellectual property (IP) rights are primarily based on statutory law, ie, Republic Act (RA) No. 8293, or the Intellectual Property Code of the Philippines, as amended (“IP Code”), and its implementing rules and regulations. The IP Code has been amended by the following laws:

• 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 elaborates on the protection afforded by statutory law to inventions.

IP treaties to which the Philippines is a party also serve as bases for 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.

Patents

To secure a patent for an invention, a patent application may be filed either via: (1) the direct route; or (2) the PCT national phase entry route.

Direct route

Under the direct route, a patent application is filed with the Intellectual Property Office of the Philippines (IPOPHL).

Thereafter, the application will undergo a formality examination, followed by classification and search to determine the prior art. Eighteen months after filing, the application will be published for opposition in the IPOPHL e-Gazette. At this stage, any person may present observations in writing concerning the patentability of the invention.

A 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, after which the application will be assigned to a Patent Examiner who will assess whether the application meets the requirements of patentability.

If the application meets the requirements of patentability under the IP Code, it will be allowed and the IPOPHL will issue the Letters Patent. The grant of the patent together with other related information will be published in the IPOPHL e-Gazette within six months upon grant.

PCT national phase entry route

Under the PCT national phase entry route, a request for national phase entry must be filed with the IPOPHL within 30 months (with a grace period of one month) from the earliest priority date or international filing date of the international application.

Once filed, the application will undergo a formality examination where a National Phase Entry Application Report acknowledging its entry into the Philippine national phase and assigning a domestic application number and a national phase entry date will be issued.

The international application number, date of entry, title, applicant and classification of the application will be published in the IPOPHL e-Gazette. Unlike applications via the direct route, the description and claims of the national phase entry applications are not published.

Thereafter, the application will undergo substantive examination. Prior to this, the substantive examination fee must be paid upon entry or within six months from date of entry into the national phase.

If the application meets the requirements of patentability under the IP Code, it will be allowed and the IPOPHL will issue the Letters Patent, which will be published in the IPOPHL e-Gazette.

Utility Models

Utility model applications may be filed either via: (1) the direct route; or (2) the PCT national phase entry route. Unlike patents, utility model applications do not undergo substantive examination and do not require an inventive step element to be registrable. However, the applicant may request for a registrability report to benefit from the determination by the IPOPHL of novelty and industrial applicability elements. The Director of the Bureau of Patents may likewise motu proprio issue a registrability report.

The application will first undergo a formality examination. If the formality requirements are met, the application will be published in the IPOPHL e-Gazette for a period of 30 days for adverse information. If the application meets the requirements of the IP Code, the IPOPHL will grant the registration of the utility model, which will likewise be published in the IPOPHL e-Gazette.

Industrial Designs

Similar to utility model applications, industrial design applications do not undergo substantive examination.

An industrial design application claiming priority from a previous application must be filed within six months from the filing of the priority application. After a formality examination, the application will be published in the IPOPHL e-Gazette for a period of 30 days for public inspection and possible opposition. If unopposed or if opposition is resolved in the applicant’s favour, the IPOPHL will issue a Certificate of Registration.

Timeline

Patent applications generally take two to four years from filing to registration, while utility model and industrial design applications may take six months to two years.

Representation

Inventors who are Philippine residents may file applications themselves, whereas non-resident applicants must appoint a resident agent or authorised representative in the Philippines and submit a copy of the Power of Attorney or Appointment of the Resident Agent to be able to file applications. The IPOPHL issued IPOPHL Memorandum Circular No. 2024-013 establishing a recognition system for patent agents and attorneys and requiring patent agents to complete the requisite training and pass a qualifying examination as prerequisites to appear before the IPOPHL or any of its Bureaus.

Average Costs

For a straightforward application with up to five claims and no claim of priority, the average government fees are:

• Patents:
1. PHP11,756.80 (approximately USD199.68) for direct applications; and
2. PHP10,787.20 (approximately USD183.21) for PCT applications.
• Utility models:
1. PHP6,787.60 (approximately USD115.28) for direct applications; and
2. PHP5,818.00 (approximately USD98.81) for PCT applications.
• Industrial designs: PHP6,787.60 (approximately USD115.28).

Small entities, ie, applicants with assets worth PHP100 million (approximately USD1.7 million) or less, are entitled to a reduction of 50% on government fees, while big entities (applicants with assets over PHP100 million) must pay the full amount.

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

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

The term of a patent is 20 years from its filing date and is non-renewable.

The term of a utility model is seven years from its filing date and is non-renewable.

The term of an industrial design is five years from its filing date and can be renewed twice for an additional five years each time, thus providing protection for a maximum of 15 years.

For PCT national phase applications, the 20-year term for patents and seven-year term for utility models are reckoned from the international filing date.

Rights of a Patentee

A patentee, or any person entitled to the patented invention, has the exclusive right to prevent others from making, using, offering for sale, selling or importing a patented product; from using a patented process; and from manufacturing, dealing in, using, selling, offering for sale or importing any product obtained directly or indirectly from a patented process. Patentees also have the exclusive right to assign, transfer by succession or license their patents.

The unauthorised making, using, offering for sale, selling or importing of a patented product or a product derived from a patented process, or the use of a patented process, constitutes patent infringement. The remedies available to a patentee should there be patent infringement are discussed in 2.1 Actions Available Against Infringement.

Obligations of a Patentee

To maintain registration, the patentee must pay annual fees beginning on the fourth anniversary from the application’s first publication and on each subsequent anniversary until the patent expires. Failure to pay these fees may result in withdrawal of the patent application or lapse of the patent registration.

Public Information

The IPOPHL publishes lists of active patents in the Philippines, but there is no public information linking patents to specific products or processes. There is likewise no patent linkage system that connects drug marketing approval with the resolution of patent disputes in the Philippines.

After the maximum term of a patent or utility model has lapsed, the covered invention or utility model enters the public domain, allowing anyone to use it without permission. In contrast, industrial designs may be renewed twice for an additional period of five years each time.

Supplementary protection certificates are not issued in the Philippines.

Patents

The IP Code allows any individual to submit observations in writing on the patentability of an invention within six months from its first publication date or from the publication date of a PCT national phase entry application. All observations will be communicated to the applicant, who may comment on each observation within 30 days from its mailing date. Interested parties may request a conference with the IPOPHL for a better understanding of the application and patent system.

Utility Models and Industrial Designs

Any person may present written adverse information regarding the registrability of a utility model or an industrial design within one month from its publication date. As with patents, interested parties may request a conference with the IPOPHL, after which parties may file supplemental adverse information to include any new information. All adverse information and comments are relayed to the applicant, who may respond within 30 days of the communication date.

Should the examiner issue a refusal, the applicant may file a written reply and request re-examination. The applicant may also amend the application and explain how the amendments address the prior art references or objections. Thereafter, the examiner may either allow the application or issue subsequent Substantive Examination Report(s).

On second or subsequent considerations, 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 orders of the Director of Patents will become final and executory within 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 will 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.

Prior to the grant or refusal of a patent, an applicant may also convert the application into a utility model application while retaining the original filing date. Conversion is permitted only once.

Should the applicant fail to pay the annual fees within the prescribed period, a notice of non-payment will be published in the IPOPHL e-Gazette and mailed to the patent owner, applicant or resident agent.

The patentee is granted a six-month grace period from the publication of the notice to pay the annual fee, excess claim fee, applicable surcharge for late payment and publication fee.

Failure to pay within the grace period will result in a notice declaring the application forfeited or the patent lapsed, effective the day after the original payment deadline. This notice will be published and recorded in the appropriate IPOPHL register.

Applications deemed forfeited or patents considered lapsed due to non-payment of annual fees cannot be revived.

Once the application is allowed and the Letters Patent issued, the patentee may request the IPOPHL to make administrative corrections, specifically:

• to limit the extent of protection conferred by it through deletion of claim(s);
• to correct clerical errors or obvious mistakes; or
• to correct mistakes or errors made in good faith.

However, changes that would broaden the scope of patent protection cannot be made after two years from the date of grant of the patent. Additionally, any changes must not affect third-party rights based on the published patent.

Claim amendments requiring re-examination of the application will not be accepted, as substantive patent prosecution concludes upon grant.

A patentee, or any party vested with rights over a patented invention, may institute a civil action for infringement before the regular courts or initiate an administrative complaint before the Bureau of Legal Affairs (BLA) of the IPOPHL against any person who, without authority, manufactures, uses, sells or imports the patented product or uses the patented process. Through such action, the patentee may recover reasonable damages, attorneys’ fees and litigation costs, and may likewise obtain injunctive relief to safeguard its rights. The court may further order, at its discretion, the destruction of infringing goods without compensation.

In addition, the patentee may pursue a criminal action for patent infringement against repeat offenders or those in connivance with them, following the finality of a judgment establishing infringement. The criminal action is without prejudice to any simultaneous or subsequent filing of a civil claim for damages.

The patentee 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 a patent or any claim thereof, or parts of such claim, on any of the following grounds:

• and complete for it to be carried out by any person skilled in the art;
• the patent is contrary to public order or morality; or
• the patent includes matters outside the scope of the disclosure contained in the application as filed.

A utility model registration 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;
• a drawing which is necessary for the understanding of the invention has not been furnished;
• the owner of the utility model registration is not the inventor or their successor in title; or
• the utility model registration extends beyond the content of the application as originally filed.

Any person may also petition to cancel an industrial design at any time during the term of its registration 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; or
• 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;
• where a judicial or administrative body has determined that the manner of exploitation by the owner of the patent or their licensee is anti-competitive;
• in case of public non-commercial use without satisfactory reason;
• if the patented invention is not being used in the Philippines on a commercial scale, although capable of being used, without satisfactory reason; or
• where the demand for a patented drug or medicine is not being met to an adequate extent and on reasonable terms, as determined by the Secretary of the Department of Health.

The BLA exercises original jurisdiction over administrative complaints involving violations 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 (approximately USD3,400). Decisions 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.

Meanwhile, the Regional Trial Courts (RTCs) designated by the Supreme Court as Special Commercial Courts have jurisdiction over civil and criminal actions involving IP rights. Judgments rendered by these courts may be elevated 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.

Nonetheless, in order to maintain a civil action for damages, it must be established that the infringer had knowledge of, or reasonable grounds to know of, the patent. Such knowledge is presumed where 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.

With respect to criminal actions, a final judgment in a civil case finding infringement by the same party is required. Further, the criminal complaint must be instituted within three years from the commission of the offence.

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

The provisional remedies of 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 result in injustice to the applicant; or
• 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 with respect to the subject of the action, and tending to render the judgment ineffectual.

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

• there is a clear and unmistakable right that is to be protected;
• there is a material and substantial invasion of such right;
• there exists an urgent need for a 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 in an infringement case may also avail itself of a TRO.

For civil cases, if it appears from the facts that great or irreparable injury would result to the applicant before the case 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 or person to show cause why the preliminary injunction should not be granted, determine whether the injunction will be granted, and if so 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 only 72 hours from issuance. Within said period, a summary hearing will be conducted to determine whether the TRO will be extended until the application for preliminary injunction can be heard, but in no case may the total period of effectiveness exceed 20 days.

For administrative cases before the BLA where a TRO is sought, the respondent will be given a non-extendible period of ten days to file its counter-affidavit and supporting documents. Thereafter, the Hearing Officer will draft the resolution on the application within ten days from receipt of respondent’s counter-affidavits. If it appears that great and irreparable injury would result to the applicant, a TRO may be issued with the approval of the Director of the BLA 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 of the BLA and the Director General of the IPOPHL, may issue ex parte a TRO effective for 72 hours from issuance.

To protect potential opponents from the issuance of a preliminary injunction or TRO, it must be shown why the application for an 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 enjoined party files a bond to cover all damages that the applicant may suffer as a result of 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. Moreover, any criminal action against repeat infringers or those in connivance with them shall prescribe in three years from the date of commission of the crime.

Recoverable damages are also limited to the amount that the complaining party may have profited had there not been any infringement, or to the profit the defendant made out of the infringement.

Finally, a writ of preliminary injunction may only be issued upon a clear showing that 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 joinder of issues:

• Depositions pending action: The testimony of any person may be taken by deposition upon oral examination or written interrogatories, upon the 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 witness.
• Written interrogatories: When a party desires to elicit material and relevant facts from any adverse party, it should, upon ex parte motion, file and serve upon the latter written interrogatories to be answered by such party. A party that has not been 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 this is 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 its 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.       

For IP cases before the Philippine courts, the complaint or initiatory pleading must, among other things:

• be verified and accompanied by a certificate of non-forum shopping;
• contain the full names of the parties and present 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 a summary of the witnesses’ intended testimonies; and
• contain the documentary and object evidence in support of the allegations contained in the pleadings.

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

For cases filed before the BLA, the complaint or initiatory pleadings must:

• be verified and accompanied by a certificate of non-forum shopping;
• contain the names 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 action and the relief sought.

While the IP Code does not provide any specific reference to collective actions such as class action suits, the Rules of Court, which apply suppletorily to IP rights proceedings, explicitly allow such when the subject of the controversy is one of common or general interest to many persons and the parties are so numerous that it is impracticable to bring them all before the court. A number of such persons which the court deems sufficiently numerous may sue or defend for the benefit of all. Any party in interest has the right to intervene to protect its individual interest.

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

• use of a patented product already put on the market by the owner of the patent, or with their express consent, insofar as such use is made 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 exclusively of making experimental use of the invention for scientific or educational purposes.

Any prior user who in good faith was using or undertook serious preparations to use the invention in their enterprise or business before the filing date or priority date of the application on which a patent is granted has 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 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. In this regard, a third party that is not the owner of the patent and does not have any right, title or interest in the patent cannot file such action for infringement.

There are two kinds of patent infringement in the Philippines: direct patent infringement and indirect patent infringement.

Direct patent infringement is the making, use, 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.

On the other hand, 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 by means of a patented process, knowing that said component or product is specially adopted for infringing the patented invention.

The remedies available to a patentee should a 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 certain product, any identical product will be presumed to have been obtained through the use of the patented process if the product is new or there is a 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 of Patents of the IPOPHL must adopt measures to protect, as far as practicable, the defendant’s manufacturing and business secrets.

The Supreme Court has used both the literal infringement test and doctrine of equivalents test 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 stated that “[u]nder the literal infringement test, courts consider the elements of the invention as expressed in the claim(s). If the allegedly infringing product or process falls within the literal meaning of the claim(s), there is patent infringement.” On the other hand, “[u]nder the doctrine of equivalents test, the courts consider whether the elements in the allegedly 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 explained that there are three further tests that may be applied.

Under the insubstantial difference test, “there is patent infringement when the infringer appropriates the patent but makes 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.

Experts may be appointed by the court or by the BLA in IP cases.

The experts in judicial proceedings are tasked 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.

When the subject matter of the case involves 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 relating to the cancellation of patents.

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

Notably, the Supreme Court in Maguan v Court of Appeals, G.R. No. L-45101 (28 November 1986), held that in an action for infringement, the court has jurisdiction to determine the invalidity of the patents at issue, notwithstanding that such invalidity was still pending consideration in 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 [...] are open to judicial examination”.

The court may seek or receive third-party opinions by inviting experienced and impartial attorneys to appear as amici curiae to help in the disposition of issues submitted to it, as provided under Section 36 of Rule 138 of the Rules of Court.

This system’s primary objective is for the amici curiae to assist in the disposition of the issues submitted to the court. However, the Supreme Court in Forest Hills Golf and Country Club, Inc. v Gardpro, Inc., G.R. No. 164686 (22 October 2014), held that the appearance of amici curiae, whether by invitation or by leave, is a matter of judicial discretion and not a matter of right or privilege, which is permitted only when the court deems the information offered to be timely and of assistance. Where matters of public concern are involved, the courts exercise great freedom in granting leave to appear, but where the parties are represented by competent counsel, leave to appear as amicus curiae is typically denied. In general, the courts desist from allowing the intervention as amicus curiae of anyone whose attitude appears to be partisan (eg, a person in the service of those having private interests in the outcome of the litigation). As discussed in National Association of Electricity Consumers for Reforms, Inc. v Energy Regulatory Commission, G.R. No. 226443 (14 January 2025), only the Supreme Court’s sound discretion determines when an amicus curiae may be invited to assist the court.

As discussed in 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property, 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 enumerated therein.

Said petition for cancellation may then be filed before the BLA. In turn, the BLA’s decision is appealable to the BLA Director, whose decision may be appealed before the Director General. Finally, the decision of the Director General may be appealed before the Court of Appeals, and thereafter the Supreme Court.

Partial cancellation of a patent is possible. Should the grounds for cancellation relate to some of the claims or parts of those claims only, cancellation may be effected to such extent only, in which case, the IPOPHL will reissue the amended patent.

Similarly, the partial cancellation of an industrial design may be effected where the grounds for cancellation relate to a part of the industrial design only. The restriction may be in the form of an alteration of the affected features of the design.

Amendments may be made by the patentee during patent cancellation proceedings. Should the IPOPHL find that, taking into consideration the amendments made by the patentee during the cancellation proceedings, the patent and the invention to which they relate meet the requirements of the IP Code, it may decide to maintain the patent as amended. If the patent is amended, the BLA will, at the same time as it publishes the cancellation decision, publish the abstract, representative claims and drawings indicating clearly what the amendments consist of.

The amendment of industrial designs is likewise possible in cancellation proceedings. The restriction of the industrial design is effected in the form of an alteration of the affected features of the design.

Actions for the cancellation of a patent may not be heard together with that for patent infringement, given that these are based on different causes of action. Notwithstanding, the defendant in an action for patent infringement may raise the invalidity of the subject patent as a defence, based on any of the grounds for cancelling patents.

Should the patent or any claim thereof be found to be invalid in a patent infringement case, the BLA Director will record that fact in the register of the IPOPHL and publish a notice to the effect in the IPOPHL e-Gazette, upon receipt of the final judgment of cancellation.

The special procedural provisions governing IP rights proceedings are contained in (1) the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases, which govern civil and criminal complaints for violation of IP rights filed in courts; (2) the Rules and Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights, as amended, which govern administrative complaints filed before the BLA; and (3) the Regulations on Inter Partes Proceedings, which govern cancellation cases.

In turn, appeals to the Director General of the IPOPHL follow the Uniform Rules on Appeal, while appeals to the Court of Appeals or the Supreme Court follow the Rules of Court.

Generally, in infringement cases, a series of hearings is conducted, whether filed in court or with the BLA, with each party having at least 30 days to present its case.

During the trial stage, fact witnesses and experts are typically heard. The affiants/witnesses whose affidavits were submitted must be subject to a cross-examination by the opposing counsel on the basis of their affidavits, direct examination, or related issues. The parties are charged with the responsibility to ensure that their respective witnesses are presented on their scheduled trial dates. The right to cross-examination is absolute in civil cases and applicable to depositions.

The remedies for patent infringement, which include damages, are usually decided at the same time the infringement case is ruled upon. The basis of the court in determining the amount of damages include the amount claimed, the evidence presented, and the other remedies such as injunctive relief, destruction of infringing goods, or equitable measures.

A preliminary conference in cancellation cases is conducted to facilitate the resolution of case through stipulations, clarifications and simplification of issues, and the submission and presentation of affidavits, and other evidence necessary. The parties shall then be required to submit position papers upon the termination of the same and thereafter, the case shall be submitted for decision.

Judges adjudicate IP-related cases filed before the courts. Specifically, RTCs specifically designated or classified as Special Commercial Courts have jurisdiction over IP-related cases.

Despite there being no judges specialising in and exclusively dedicated to IP-related cases, the establishment of Special Commercial Courts allows cases involving complex commercial or technical issues to be heard by judges with expertise and experience. The distribution of the cases to the different RTC branches is done through a raffle system, to minimise the possibility of external influence and bias.

The BLA decides administrative cases for infringement and cancellation. As for cancellation cases involving highly technical issues, the IPOPHL Director may order that the petition be heard and decided by a committee as discussed in 3.6 Role of Experts.

In patent infringement and cancellation cases, the parties are required to undergo mandatory mediation proceedings. Similarly, in criminal actions filed before the court, the parties are mandated to undergo mandatory mediation on the civil aspect of the case.

In civil cases, upon the termination of the pre-trial phase, the parties are referred to court-annexed mediation (CAM), which must not exceed 30 calendar days.

In cases where the judge determines that a settlement is still viable, the case may then be referred to another court for judicial dispute resolution (JDR), which must be completed within a non-extendible period of 15 calendar days. Notably, all matters taken up during the CAM and the JDR are confidential. However, if the JDR fails, the case will proceed to trial before the original court on the dates previously agreed upon.

In administrative complaints for violation of IP rights and inter partes cases filed before the IPOPHL, the parties must likewise undergo mandatory mediation. During the alternative dispute resolution (ADR) conference, the parties are briefed on the mediation process, during which the option to use the World Intellectual Property Organization (WIPO) for mediation will be made available.

Other mediation procedures outside of litigation are also offered by the IPOPHL to encourage the parties to settle their IP dispute even before filing a case before courts or administrative agencies. However, both parties to the dispute must be amenable to undergoing mediation to avail themselves of such services.

Currently, there is no existing rule that expressly addresses the effect of parallel cancellation or infringement proceedings, or foreign anti-suit injunctions, on ongoing patent cases. In contrast, the IP Code contains a provision that explicitly states that the filing of a petition to cancel a trade mark is not prejudicial to an infringement action.

The remedies available to the patentee include the recovery of damages due to the infringement, as well as attorneys’ fees and other expenses of litigation. The patentee may also secure a preliminary and/or permanent injunction to protect its rights.

For actual damages to be granted by the court, they must be proved with a reasonable degree of certainty. While the court may award damages in an amount beyond the sum found as actual damages, the award may not exceed three times such amount. Should the damages proven be inadequate or if they cannot be readily ascertained, the court may instead award a sum equivalent to a reasonable royalty.

In addition, the court has the discretion to order that the infringing goods, materials and implements predominantly used in the infringing acts be disposed of outside the channels of commerce or destroyed, without compensation.

In cases where there is wilful infringement, the infringer will be held criminally liable, without prejudice to the institution of a civil action for damages, and, upon conviction, will 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.

If a defendant does not comply with an order to pay damages and/or the issuance of an injunction, they may be cited for contempt by the court.

A prevailing defendant may recover damages when a counterclaim is asserted in a patent infringement action, as well as attorneys’ fees if provided by agreement or when the court finds such an award just and equitable. Further, where a preliminary injunction was issued, the defendant may recover damages if it is ultimately determined that the applicant was not entitled to the injunction.

Neither the IP Code nor its implementing rules and regulations distinguish between the remedies available for various IP rights. Accordingly, the procedure prescribed for the cancellation of a patent also applies to the cancellation of a utility model registration or an industrial design registration, subject to the necessary adjustments.

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

• an order of destruction, where a motion for reconsideration has been filed; and
• an order releasing seized goods when the search warrant has been quashed.

For administrative cases, the Rules on Inter Partes Proceedings state that, unless otherwise directed by the Director of the IPOPHL, a decision or order cancelling a patent, a claim or any part thereof is immediately executory even while an appeal is pending.

Appeals to the Director General of the IPOPHL are governed by the Uniform Rules on Appeal, while appeals before the regular courts are primarily governed by the Rules of Court.

Under the Uniform Rules on Appeal, an appeal memorandum or a motion for extension of time must be filed exclusively via email. The parties may, at their option, attach a draft decision to their appeal memoranda.

An appeal to the Director General of the IPOPHL or to the Court of Appeals may raise questions of law, questions of fact, or both. In contrast, an appeal to the Supreme Court is generally confined to questions of law.

Before initiating a patent infringement action, an interested party typically incurs several preliminary costs, including:

• engaging private investigators or other professionals to conduct market surveillance, to purchase samples and to document evidence of infringement;
• expenses for preparing and sending formal warning or cease-and-desist letters to notify the alleged infringer and seek voluntary compliance; and
• costs associated with preparing legal documents, filing the complaint and undertaking other initial legal processes, which may include consultations with a patent attorney, engaging experts for potential testimony, and other preparatory steps.

The commencement of a patent infringement action requires the payment of filing fees, which are calculated based on the amount of damages claimed.

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

• when the claim or defence is frivolous or clearly without merit;
• when the losing party acted in bad faith, engaged in fraud or was grossly negligent; or
• when exemplary damages are awarded in actions involving the recovery of sums of money or damages.

ADR is a common mechanism for resolving 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 into a compromise may likewise submit their disputes to one or more arbitrators for resolution.

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

The IPOPHL also offers mediation outside of litigation to encourage parties to resolve their IP disputes even before a case is filed.

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

• be in writing and, if executed in a language other than English or Filipino, accompanied by an English translation;
• be acknowledged before a notary public or other officer authorised to administer oaths or perform notarial acts, and certified under the officer’s hand and official seal;
• be legalised or apostilled;
• include the appointment of a resident agent, if the assignee is not a Philippine resident;
• clearly identify the Letters Patent involved by number, date, name of the patentee and title of the invention, or, in the case of a patent application, the application number, filing date, name of the applicant and title of the invention; and
• be accompanied by the required recordal and publication fees.

The assignment is valid between the parties; however, it is void against any subsequent purchaser or mortgagee for value and without notice unless recorded with the IPOPHL within three months from the date of the instrument or prior to the subsequent sale or mortgage.

For assigning an IP right, recordal with the IPOPHL is required. For such recordal, the IPOPHL requires the submission of the original or certified notarised and apostilled documents evidencing the change of ownership or assignment.

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 must then be paid.

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

The IP Code encourages the transfer and dissemination of technology, and prevents or controls practices and conditions that may, in particular cases, constitute an abuse of IP rights having an adverse effect on competition and trade, provided that all technology transfer arrangements must comply with the provisions of the IP Code, specifically Sections 87 and 88 thereof.

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

• those that impose upon the licensee the obligation to acquire capital goods, intermediate products, raw materials and other technologies from a specific source, 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 (TTA);
• 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 licensed technology; and
• other clauses with equivalent effects.

Section 88 of the IP Code provides mandatory clauses in voluntary licence contracts, namely:

• that 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 that the TTA provides 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; and
• the Philippine taxes on all payments relating to the TTA shall be borne by the licensor.

TTAs that comply with Sections 87 and 88 of the IP Code need not be registered with the Documentation, Information and Technology Transfer Bureau (DITTB) of the IPOPHL. However, if a TTA does not fully meet the requirements of Sections 87 and 88, it must be registered with the DITTB.

A TTA is unenforceable unless it either complies with Sections 87 and 88 or is approved and registered with the DITTB under Section 91 in exceptional cases, such as when the arrangement offers substantial economic benefits, including high-technology content, increased foreign exchange earnings, employment generation, regional industry dispersal, and/or substitution with or use of local raw materials. Registration may also be allowed for companies with pioneer status registered with the Board of Investments.