Patents Comparative Guide

1 Legal framework

1.1 What are the sources of patent law in your jurisdiction?

The main source of patent law in the Philippines is the IP Code (Republic Act 8293), as amended.

Complementing this are the Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs, which offer more detailed guidance. Additionally, rulings of the Supreme Court in patent-related cases serve as legal precedents, further clarifying the interpretation and application of the IP Code.

1.2 Who can register a patent?

Under Section 28 of the IP Code, the right to a patent belongs to the inventor or their heirs or assigns. When two or more persons have jointly made an invention, the right to a patent belongs to them jointly.

Furthermore, the following may file an application for patent protection in the Philippines:

• Filipino nationals; and
• any person that is a national or that is domiciled or that has a real and effective industrial establishment in a country which:
• • is a party to any convention, treaty or agreement relating to IP rights or the repression of unfair competition to which the Philippines is also a party; or
  • extends any reciprocal rights to nationals of the Philippines by law.

If the applicant is a resident of the Philippines, it may file and prosecute a patent application with the Bureau of Patents. It may also authorise a representative to do this on its behalf.

If the applicant is not a resident of the Philippines, it must appoint a resident agent or representative.

2 Rights

2.1 What rights are obtained when a patent is registered?

Under Section 71 of the IP Code, the patent holder has the following exclusive rights:

• Where the subject matter of a patent is a product, the patent holder has the right to restrain, prohibit and prevent any unauthorised person or entity from making, using, offering for sale, selling or importing that product.
• Where the subject matter of a patent is a process, the patent holder has the right to restrain, prevent or prohibit any unauthorised person or entity from:
• • using the process; and
  • manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from such process.
• Patent owners also have the right to:
• • assign or transfer by succession the patent; and
  • conclude licensing contracts for the same.

2.2 How can a patent owner enforce its rights?

In the Philippines, a patent holder can enforce their rights by initiating civil, criminal or administrative actions against anyone that infringes on the patent.

2.3 For how long are patents enforceable?

Patents in the Philippines are enforceable for a period of 20 years, counted from:

• the filing date of the application, if filed through the direct route; or
• the international filing date, if filed via the Patent Cooperation Treaty (PCT) route.

This applies as long as:

• the patent is not cancelled; and
• the prescribed annual fees are duly paid within the required period.

In the case of divisional applications, the filing date referred to will be that of the parent application.

3 Obtaining a patent

3.1 Which governing body controls the registration procedure?

The Bureau of Patents of the Intellectual Property Office of the Philippines (IPOPHL) is the governing body responsible for the patent registration procedure in the Philippines.

3.2 What is the cost of registration?

The cost of registration of a patent application in the Philippines varies based on several factors, including but not limited to:

• the size of the entity (big or small);
• the number of claims;
• the number of priority claims; and
• the number of pages.

Provided below are estimates of the applicable fees (for a big entity) based on the current fee schedule. The complete list of fees may be accessed through the IPOPHL website (https://www.ipophil.gov.ph):

• Filing fee: $76
• Each sheet in excess of 30: $0.65
• Each claim in excess of five: $6.50
• Each claim of priority: $38
• Publication fee: $17
• Request for substantive examination: $74
• Request for extension of time to file a response: $13
• Issuance of letters patent certificate: $21

Fees for small entities are lower than the aforementioned estimates.

Maintenance fees likewise vary depending on the year and the number of claims at the time the fee is due.

3.3 What are the grounds to reject a patent application?

A patent application may be rejected if:

• the invention is not new;
• the invention does not involve an inventive step;
• the invention is not industrially applicable;
• the subject matter of the invention is classified as a non-patentable invention, as outlined in the IP Code and further supplemented by the Revised Implementing Rules and Regulations – specifically:
• • discoveries, scientific theories and mathematical methods, and in the case of drugs and medicines, the mere discovery of a new form or new property of a known substance which does not result in the enhancement of the known efficacy of that substance, or the mere discovery of any new property or new use for a known substance, or the mere use of a known process unless such known process results in a new product that employs at least one new reactant;
  • schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;
  • methods for treatment of humans or animals by surgery or therapy and diagnostic methods practised on humans or animals;
  • plant varieties or animal breeds or essentially biological processes for the production of plants or animals;
  • aesthetic creations; and
  • anything which is contrary to public order or morality; or
• the invention is not disclosed in a manner that is sufficiently clear and complete for it to be carried out by a person skilled in the art.

3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?

IPOPHL has existing Patent Prosecution Highway (PPH) programmes/agreements with:

• the US Patent and Trademark Office;
• the Japan Patent Office;
• the Korean Intellectual Property Office; and
• the European Patent Office.

Hence, an applicant may request accelerated examination under the PPH if the corresponding foreign applications in those countries/jurisdictions are indicated to be patentable/allowable.

An applicant may also file a request for accelerated examination under the Association for South East Asian Nations (ASEAN) Patent Examination Co-operation (ASPEC) Programme, in which Brunei Darussalam, Cambodia, Indonesia, Laos, Malaysia, the Philippines, Singapore, Thailand and Vietnam participate. ASPEC is a programme for IP offices from participating ASEAN member states (AMS) to utilise the search and examination results from other participating AMS IP offices as references in its own search and examination work. Hence, an applicant may request accelerated examination under ASPEC if the corresponding foreign applications in those countries are indicated to be patentable/allowable.

3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?

Yes, certain claim formats are not permissible in the Philippines. Under existing practice in the Philippines, methods for the treatment of humans or animals by surgery or therapy and diagnostic methods practised on humans or animals are unpatentable. However, use claims are acceptable. Hence, method of treatment claims may be redrafted into acceptable use claims in order to become patentable in the Philippines.

3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?

There are no procedural or legal mechanisms available to extend the patent term in the Philippines.

3.7 What subject matter is patent eligible?

Subject matter that meets the following criteria is patent eligible:

• It is new;
• It involves an inventive step;
• It is industrially applicable; and
• It does not fall under the category of non-patentable inventions as outlined in the IP Code and further supplemented by the Revised Implementing Rules and Regulations.

The subject matter may be or may relate to:

• a product;
• a process; or
• any improvement to any of the foregoing.

3.8 If the patent office does not grant a patent, is an appeal available and to whom?

Yes, if the examiner rejects the patent application, the decision may be appealed to the director of the Bureau of Patents. If the director of the Bureau of Patents agrees with the examiner, their decision may subsequently be appealed to the director general of IPOPHL. The decision of the director general to reject the application may then be appealed to:

• the Court of Appeals; and
• ultimately, the Supreme Court.

4 Validity/post-grant review and/or opposition procedures

4.1 Where can the validity of an issued patent be challenged?

The validity of an issued patent may be challenged by filing a petition to cancel the patent, any of its claims or portions thereof with the Bureau of Legal Affairs (BLA) of the Intellectual Property Office of the Philippines (IPOPHL). Additionally, the validity of a patent may be raised as a defence or counterclaim in a patent infringement action filed with either:

• the BLA of IPOPHIL; or
• a regional trial court.

4.2 How can the validity of an issued patent be challenged?

An issued patent can be challenged by any interested person through filing a petition to cancel the patent, any of its claims or portions thereof with the BLA. The petition for cancellation must:

• be in writing;
• be verified by the petitioner or by any person on its behalf that knows the facts;
• specify the grounds upon which it is based;
• include a statement of the facts to be relied upon; and
• be filed with IPOPHL.

Copies of printed publications or of patents issued in other countries and other supporting documents mentioned in the petition must be attached thereto, together with a translation into English if they are not in the English language.

In an action for infringement, the defendant, in addition to other defences available to it, may prove the invalidity of the patent, or any claim thereof, on any of the grounds on which a petition of cancellation can be brought. If the court finds the patent or any claim to be invalid, it will cancel the same and the director of legal affairs, upon receipt of the final judgment of cancellation by the court, will:

• record that fact in the register of IPOPHL; and
• publish a notice to that effect in the IPOPHIL Gazette.

4.3 What are the grounds to invalidate an issued patent?

An issued patent or any claim thereof, or parts of a claim, may be invalidated on any of the following grounds:

• What is claimed as the invention is not new or patentable.
• The patent does not disclose the invention in a manner that is sufficiently clear and complete for it to be carried out by a person skilled in the art.
• The patent is contrary to public order or morality.
• The patent holder is declared by final court order or decision as having no right to the patent.

If the grounds for cancellation relate to only some of the claims or parts of a claim, cancellation may be effectuated to that extent only.|

4.4 What is the evidentiary standard to invalidate an issued patent?

The law is silent on the evidentiary standard required to invalidate an issued patent. However, it substantial evidence must be presented in petitions filed with the BLA seeking the cancellation of:

• a patent;
• any of its claims; or
• any portion thereof.

In contrast, a preponderance of the evidence is required for civil actions brought before the courts.

4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?

There are no post-grant reviews or opposition procedures available for third parties to challenge the validity of a patent in the Philippines.

Third parties may file observations with the Bureau of Patents as to the patentability of an invention within six months of the date of publication of:

• the patent application; or
• the Patent Cooperation Treaty national phase entry applications listing in the IPOPHL E-Gazette.

The Bureau of Patents will then communicate the observations to the applicant, which can submit its comments. The patent examiner will take note of the third party's observations and the applicant's comments in deciding whether to grant the patent registration.

4.6 Who can oppose a granted patent?

Not applicable. As mentioned in question 4.5, there are no post-grant reviews or opposition procedures available for third parties to challenge the validity of a patent in the Philippines.

4.7 What are the timing requirements for filing an opposition or post-grant review petition?

Not applicable. As mentioned in question 4.5, there are no post-grant reviews or opposition procedures available for third parties to challenge the validity of a patent in the Philippines.

4.8 What are the grounds to file an opposition?

Not applicable. As mentioned in question 4.5, there are no post-grant reviews or opposition procedures available for third parties to challenge the validity of a patent in the Philippines.

4.9 What are the possible outcomes when an opposition is filed?

Not applicable. As mentioned in question 4.5, there are no post-grant reviews or opposition procedures available for third parties to challenge the validity of a patent in the Philippines.

4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?

Not applicable. As mentioned in question 4.5, there are no post-grant reviews or opposition procedures available for third parties to challenge the validity of a patent in the Philippines.

4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?

Not applicable. As mentioned in question 4.5, there are no post-grant reviews or opposition procedures available for third parties to challenge the validity of a patent in the Philippines.

5 Patent enforceability

5.1 What makes a patent unenforceable?

A patent may be deemed unenforceable under any of the following circumstances:

• The patent has been cancelled.
• The prescribed annual fees have not been paid within the specified period.
• The use occurs after a product has been put on the market in the Philippines by the owner of the patent or with its consent or authorisation.
• The use or exploitation:
• • is done privately and on a non-commercial scale or for a non-commercial purpose; and
  • does not significantly prejudice the economic interests of the patent holder.
• The act consists of making or using the patented invention exclusively for the purpose of experiments that relate to the subject matter of the patented invention.
• The act consists of preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription.
• The patented invention is used in vehicles in transit in the Philippines, provided that such use is made:
• • exclusively for the needs of the vehicle; and
  • not for the manufacture of anything for the purposes of sale within the Philippines.
• The invention is used by the government as permitted under applicable law.

5.2 What are the inequitable conduct standards?

Not applicable. There are no specific provisions governing standards for inequitable conduct in the Philippines.

5.3 What duty of candour is required of the patent office?

Not applicable. There is no duty of candour imposed upon the Intellectual Property Office of the Philippines.

6 Patent infringement

6.1 What constitutes patent infringement?

Making, using, offering for sale, selling or importing a patented product or a product obtained directly or indirectly from a patented process, or using a patented process without the authorisation of the patent holder, constitutes patent infringement. However, this does not apply to instances covered under the following sections of the IP Code:

• Section 72 (limitations of patent rights);
• Section 74 (use of an invention by the government);
• Section 93.6 (compulsory licensing); and
• Section 93-A (procedures for the issuance of a special compulsory licence under the Agreement on Trade-Related Aspects of Intellectual Property Rights).

6.2 Does your jurisdiction apply the doctrine of equivalents?

Yes, the doctrine of equivalents is recognised and applicable under Philippine law. Pursuant to Section 75.2 of the IP Code, for the purpose of determining the extent of protection conferred by the patent, due account will be taken of elements which are equivalent to the elements expressed in the claims, so that a claim will be considered to cover not only all the elements as expressed therein, but also their equivalents.

6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?

A party cannot be held liable for patent infringement in the Philippines if the alleged infringing acts occur entirely outside the Philippines. However, importing a patented product or a product obtained directly or indirectly from a patented process without the authorisation of the patent holder constitutes patent infringement. Despite this protection, the rights of a patent holder do not extend to instances covered under the following sections of the IP Code:

• Section 72 (limitations of patent rights);
• Section 74 (use of an invention by the government);
• Section 93.6 (compulsory licensing); and
• Section 93-A (procedures for the issuance of a special compulsory licence under the Agreement on Trade-Related Aspects of Intellectual Property Rights).

6.4 What are the standards for wilful infringement?

Pursuant to Section 80 of the IP Code, damages cannot be recovered for acts of infringement committed before the infringer knew, or had reasonable grounds to know, of the patent. It is presumed that the infringer knew of the patent if the words "Philippine Patent" together with the patent number were placed on:

• the patented product;
• the container or package in which the product was supplied to the public; or
• advertising materials relating to the patented product or process.

6.5 Which parties can bring an infringement action?

Any patent holder, or anyone possessing any right, title or interest in and to the patented invention, whose rights have been infringed may bring a civil action before a court of competent jurisdiction to:

• recover from the infringer such damages sustained thereby, plus attorneys' fees and other expenses of litigation; and
• secure an injunction for the protection of its rights.

Additionally, any foreign natural or legal entity that meets the requirements of Section 3 (international conventions and reciprocity) of the IP Code and does not engage in business in the Philippines, and which has been granted or assigned a patent under the IP Code, may bring an action for infringement of patent, whether or not it is licensed to do business in the Philippines under existing law.

6.6 How soon after learning of infringing activity must an infringement action be brought?

Pursuant to Section 79 of the IP Code, an infringement action must be brought within four years of institution of the action for infringement.

6.7 What are the pleading standards to initiate a suit?

An administrative complaint for patent infringement is initiated by filing a verified complaint. The complaint must:

• clearly set out:
• • the facts supporting the complainant's cause of action; and
  • the reliefs sought; and
• include certification of non-forum shopping.

A civil action for patent infringement is commenced by filing a verified complaint. The complaint must:

• specify:
• • the full names of the parties;
  • a clear statement of the facts constituting the cause of action; and
  • the reliefs being sought; and
• be accompanied by:
• • certification of non-forum shopping;
  • judicial affidavits; and
  • supporting evidence.

A criminal case for patent infringement begins with the filing of a complaint-affidavit before the Office of the Prosecutor. The complaint must specify:

• the name of the accused;
• a designation of the offence under the law;
• the acts or omissions constituting the offence;
• the name of the infringing party;
• the approximate date of commission of the offence; and
• the location of the offence.

Following this, the prosecutor conducts the preliminary investigation.

6.8 In which venues may a patent infringement action be brought?

An administrative complaint for patent infringement is filed before the Bureau of Legal Affairs (BLA). The BLA exercises original jurisdiction over administrative actions involving violations of IP rights where the total damages claimed amount to at least PHP 200,000.

The regional trial courts (RTCs) designated as special commercial courts have jurisdiction over civil and criminal actions involving patent infringement. In civil actions, the case may be filed before the RTC that has jurisdiction over the residence or principal place of business of the complainant or the defendant, at the option of the complainant.

In criminal actions, proceedings are initiated by submitting a complaint-affidavit to the office of the city or provincial prosecutor in the locality where:

• the offence was committed; or
• any of its essential elements took place.

6.9 What are the jurisdictional requirements for each venue?

In administrative actions, the BLA has original jurisdiction over patent infringement complaints where the total damages claimed amount to at least PHP 200,000.

RTCs designated as special commercial courts have exclusive jurisdiction over civil cases involving patent infringement. The complaint may be filed in the RTC where either the complainant or the defendant resides or has its principal place of business, at the complainant's option.

In criminal actions, proceedings are initiated by submitting a complaint-affidavit to the office of the city or provincial prosecutor in the locality where:

• the offence was committed; or
• any of its essential elements took place.

Once probable cause is determined, the case is filed in the appropriate RTC.

6.10 Who is the fact finder in an infringement action?

The fact finder in a civil or criminal action for patent infringement is the judge handling the case.

However, the court, on its own or upon motion by a party, may appoint two or more assessors with the necessary scientific and technical knowledge required by the subject matter in litigation. Either party may challenge the fitness of any assessor proposed for appointment.

In administrative cases before the BLA, the hearing officer assigned to the case is the primary fact finder.

6.11 Does the fact finder change based on venue?

No. The fact finder does not change based on venue. It is always the judge or the hearing officer that hears and decides the case.

6.12 What are the steps leading up to a trial?

The 2020 Revised Rules of Procedure for Intellectual Property Rights Cases (AM 10-3-1-SC) generally govern civil and criminal actions involving IP rights; while the Rules and Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights govern administrative cases before the BLA.

In administrative cases, once the BLA receives the verified complaint, it will serve a summons on the respondent, requiring the respondent to answer the complaint within 30 days of receipt. The respondent must answer the complaint in writing by either:

• specifically denying the material allegations of the complaint; or
• alleging any affirmative defence.

Upon the joinder of issues, the pre-trial conference is immediately set. The notice of pre-trial is delivered by the process server requiring the parties to submit their pre-trial briefs. After the pre-trial, the hearing officer issues an order which recites:

• the action taken at the conference;
• the amendments allowed to the pleadings; and
• the agreements made by the parties as to any of the matters considered.

This order:

• limits the issues for trial to those not disposed of by admissions or agreements of counsel; and
• once entered, controls the subsequent course of the action, unless modified before trial to prevent manifest injustice.

In civil actions, once the court has received the verified complaint, it will serve a summons on the respondent. Within 30 calendar days of service of the summons, the defendant must file its answer to the complaint. A party can avail of any modes of discovery in accordance with the Rules of Court no later than 30 calendar days from the joinder of issues. Compliance in any mode of discovery is required within 10 calendar days of receipt of:

• the request for discovery; or
• if there are objections, notice of the ruling of the court.

Within five calendar days of the expiry of the period for availing of, or complying with, any of the modes of discovery, whichever is later, the handling court will issue a notice:

• setting the case for pre-trial; and
• directing the parties to submit their respective pre-trial briefs.

On the day of termination of the pre-tria1, the court will refer the parties for mandatory court-annexed mediation. This period must not exceed 30 calendar days. If the court-annexed mediation fails and the judge is convinced that settlement is still possible, the case may be referred to another court for judicial dispute resolution. The judicial dispute resolution must be conducted within a non-extendible period of 15 calendar days. If judicial dispute resolution fails, the trial before the original court will proceed on the agreed dates.

In criminal actions, the complaint-affidavit is filed with the appropriate office of the Department of Justice or the Office of the Prosecutor. The preliminary investigation will be conducted within 10 calendar days of filing of the complaint. The investigating prosecutor:

• may dismiss the case outright for being patently without basis or merit; and
• order the release of the accused if in custody and/or seized articles in custody, if any.

If the complaint is not dismissed, the investigating prosecutor will issue an order requiring the respondent to submit its counter-affidavit. The investigating prosecutor may set a hearing if there are facts and issues to be clarified by a party or a witness. The investigating prosecutor will then determine whether there are sufficient grounds to hold the respondent for trial. If there are grounds to hold the respondent for trial, an information will be filed with the appropriate court.

Within 10 calendar days of filing of the information, the judge will personally evaluate the information, together with the resolution of the prosecutor and its supporting documents. The judge may dismiss the cause or issue a warrant of arrest. Once the court has acquired jurisdiction over the accused, the arraignment of the accused and the pre-trial will be set simultaneously within:

• 10 calendar days of the court's receipt of the case for a detained accused; and
• 30 calendar days of the court acquiring jurisdiction over a non-detained accused.

The above timeframes apply unless a shorter period is provided for by special law or Supreme Court circular.

On the day of termination of the pre-trial:

• the court must issue a pre-trial order; and
• the judge must order the parties to appear before the Philippine Mediation Centre for court-annexed mediation on the civil aspect of the criminal action for a non-extendible period of 30 calendar days.

Once the mediation period has elapsed or if mediation fails, the trial will proceed.

6.13 What remedies are available for patent infringement?

A range of remedies may be pursued against a party that is found to have infringed a patent in the Philippines. These include:

• damages;
• forfeiture of paraphernalia and all real and personal property used in the commission of the offence;
• impoundment of sales invoices and other documents evidencing sales;
• injunctions;
• preliminary injunctions;
• temporary restraining orders;
• cease-and-desist orders;
• preliminary attachment;
• cancellation or suspension of any permit, licence, authority or registration as granted by the Intellectual Property Office of the Philippines;
• destruction or disposal outside channels of commerce of the infringing goods;
• censure;
• contempt;
• imprisonment; and
• fines.

Recovery may extend to:

• all damages sustained by the patent holder; and
• attorneys' fees and expenses of litigation.

6.14 Is an appeal available and what are the grounds to appeal?

The decision in an IP violation case before the BLA can be appealed to the director general of the IPO, whose decision can in turn be appealed to the Court of Appeals on question of law or fact, or both. A Court of Appeals decision can be questioned before the Supreme Court, also on a question of law or fact, or both.

From a civil or criminal court decision, an appeal can be filed – also on a question of law or fact, or both – before the Court of Appeals and then before the Supreme Court.

7 Discovery

7.1 Is discovery available during litigation?

Yes. A party can avail of any of the modes of discovery as provided in the Rules of Court.

7.2 What kinds of discovery are available?

The Rules of Court provide for various modes of discovery, as follows:

• depositions pending action;
• depositions before action or pending appeal;
• interrogatories to parties;
• requests for admission by the adverse party; and
• motions for the production of documents or the inspection of things.

A party can avail of any of the modes of discovery within 30 calendar days of the joinder of issues.

7.3 Are there any limitations to the amount of discovery allowed?

Yes. Any mode of discovery – such as interrogatories and requests for admission, production or inspection of documents or things – may be objected to within 10 calendar days of receipt of the request for discovery on the grounds that:

• the information requested:
• • is manifestly incompetent, immaterial or irrelevant;
  • concerns undisclosed information; or
  • is privileged in nature; or
• the request is for harassment.

While discovery is broad in scope, it should not be used for fishing expeditions.

The requesting party may comment in writing within three calendar days of receipt of the objection. Thereafter, the court will rule on the objection no later than 10 calendar days from:

• receipt of the comment; or
• the expiration of the three-day period.

8 Claim construction

8.1 When during a patent infringement action are claim terms defined by the tribunal?

In the Philippines, there is no formal claim construction hearing as part of patent infringement proceedings. However, the tribunal must interpret the claims in light of the patent's description and drawings.

8.2 What is the legal standard used to define claim terms?

Pursuant to Section 75 of the IP Code, the extent of protection conferred by the patent will be determined by the claims, which are to be interpreted in light of the description and drawings. For the purpose of determining the extent of protection conferred by the patent, due account will be taken of elements which are equivalent to those expressed in the claims, so that a claim will be considered to cover not only all the elements as expressed therein, but also their equivalents.

8.3 What evidence does the tribunal consider in defining claim terms?

The IP Code provides that the extent of protection conferred by the patent will be determined by the claims, which are to be interpreted in light of the description and drawings. For the purpose of determining the extent of protection conferred by the patent, due account will be taken of elements which are equivalent to those expressed in the claims, so that a claim will be considered to cover not only all the elements as expressed therein, but also equivalents.

The court may appoint two or more assessors with the necessary scientific and technical knowledge required by the subject matter in litigation. Either party may challenge the fitness of any assessor proposed for appointment.

In petitions for cancellation that involve highly technical issues, on the motion of any party, the director of the Bureau of Legal Affairs (BLA) may order that the proceedings be heard and decided by a three-person committee, with the director of the BLA as chairman and two members with experience or expertise in the field of technology to which the patent sought to be cancelled relates.

9 Remedies

9.1 Are injunctions available?

Yes. Both preliminary and permanent (final) injunctions are available.

9.2 What is the standard to obtain an injunction?

Injunctions may be issued where it is sufficiently shown that the applicant is entitled to the relief sought – particularly where such relief involves:

• restraining the commission or continuation of the act complained of; or
• requiring the performance of an act or acts either for a limited period or indefinitely.

An injunction may also be granted where:

• the commission, continuance or non-performance of the act or acts complained of during the litigation would probably cause injustice to the applicant; or
• a party is doing, threatening, attempting to do or procuring or suffering to be done some act or acts that:
• • probably violate the rights of the applicant respecting the subject of the action or proceeding; and
  • may render the judgment ineffectual.

Jurisprudence requires that certain conditions be established before a writ of preliminary injunction may be granted. These include the following:

• There is a clear and unmistakable right in favour of the applicant;
• There has been a material and substantial invasion of such right;
• There is an urgent need for the writ to prevent irreparable injury to the applicant; and
• No other plain, speedy and adequate legal remedy to prevent such injury is available.

If, after the trial, the court finds that the applicant has the right to a permanent injunction, it will issue a final order permanently prohibiting the opposing party from committing the acts in question.

9.3 Are damages available?

Yes, damages can be recovered for acts of infringement committed in the four years before institution of the action for infringement.

9.4 What types of damages are available?

The following kinds of damages are available in the Philippines:

• actual or compensatory damages;
• moral damages;
• exemplary or corrective damages;
• liquidated damages;
• nominal damages; and
• temperate or moderate damages.

In IP cases, the damages most commonly awarded are:

• actual damages;
• exemplary damages; and
• attorneys' fees and litigation costs.

The court may, depending on 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 this amount. If the damages are inadequate or cannot readily be ascertained, the court may award a sum equivalent to a reasonable royalty.

The award and calculation of damages differ depending on the specific right infringed.

9.5 What is the standard to obtain certain types of injunctions?

See question 9.2.

9.6 Is it possible to increase or multiply damages due to a party's actions?

Yes, it is possible to increase or multiply damages due to a party's actions. Pursuant to Section 76.4 of the IP Code, the court may, depending on the circumstances of the case, award damages in a sum above the amount found as actual damages sustained, provided that the award does not exceed three times this amount.

9.7 Are sanctions available?

Yes.

9.8 What kinds of sanctions are available?

In addition to the award of damages, various sanctions may be imposed against the infringer. These may include:

• damages;
• forfeiture of paraphernalia and all real and personal property used in the commission of the offence;
• impoundment of sales invoices and other documents evidencing sales;
• injunctions;
• preliminary injunctions;
• temporary restraining orders;
• cease-and-desist orders;
• preliminary attachment;
• cancellation or suspension of any permit, licence, authority or registration as granted by the Intellectual Property Office of the Philippines;
• destruction or disposal outside channels of commerce of the infringing goods;
• censure;
• contempt;
• imprisonment; and
• fines.

9.9 Can a party obtain attorneys' fees?

Yes, a party can obtain attorneys' fees. Pursuant to Section 76.2 of the IP Code, any patent holder or anyone with any right, title or interest in and to the patented invention whose rights have been infringed may bring a civil action before a court of competent jurisdiction to recover from the infringer:

• such damages sustained thereby; and
• attorneys' fees and other litigation costs.

Litigation expenses can be shown through:

• itemised expenses with official receipts; and
• other evidence of payment incurred in pursuing the legal action.

9.10 What is the standard to obtain attorneys' fees?

The Civil Code provides that, in the absence of stipulation, attorneys' fees can be recovered only in the following cases:

• Exemplary damages are awarded.
• The defendant's acts or omissions have compelled the plaintiff to:
• • litigate with third parties; or
  • incur expenses to protect its interests.
• There is a criminal case of malicious prosecution against the plaintiff.
• A clearly unfounded civil action or proceeding has been brought against the plaintiff.
• The defendant acted in gross and evident bad faith in refusing to satisfy the plaintiff's plainly valid, just and demandable claim.
• There is a separate civil action to recover civil liability arising from a crime.
• At least double judicial costs are awarded.
• The court otherwise deems it just and equitable that attorneys' fees and litigation costs be recovered.

10 Licensing

10.1 What patent rights can a party obtain through a licence?

A licensee may be granted the right to exploit the patented invention in accordance with the terms and conditions of the licence agreement. Through a licence, the licensee acquires the legal authority to use the patented technology or process for commercial or industrial purposes during the agreed period.

The patent holder may license any or all of the exclusive rights conferred by the patent, including:

• the right to make, use, offer for sale, sell or import the patented product; or
• in the case of a patented process:
• • the right to use the process; and
  • the right to make, use, sell or import products obtained directly by that process.

These rights may be:

• granted on an exclusive or non-exclusive basis; and
• subject to territorial and temporal limitations as stipulated in the licence agreement.

In addition, the patent holder retains the right to:

• assign or transfer the patent by succession; and
• license it to one or more parties.

10.2 What limits can a patent owner impose on a licence?

The licensor may impose limitations in a licence agreement, including restrictions on:

• scope of use;
• territorial coverage; and
• duration.

However, such limitations must not be contrary to:

• law;
• morals;
• public order; or
• public policy.

Further, the licence agreement must comply with the requirements under the IP Code. Specifically, it must:

• not contain any of the prohibited clauses listed under Section 87, such as those that unreasonably restrain trade or competition; and
• include all the mandatory provisions under Section 88 to ensure its enforceability and conformity with public interest standards.

11 Antitrust

11.1 Are there any limits on patent protection due to antitrust laws?

The IP Code prohibits the inclusion of certain clauses in licensing agreements, as these are prima facie deemed to have an adverse effect on competition and trade. The following prohibited provisions are considered anti-competitive and contrary to the public interest:

• those which oblige the licensee to:
• • acquire capital goods, intermediate products, raw materials and other technologies from a specific source; or
  • permanently employ 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 impose 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 oblige the licensee to transfer for free to the licensor all inventions or improvements that may be obtained through the use of the licensed technology;
• those that require the payment of royalties to the patent holder for a patent which is not used;
• those that prohibit the licensee from exporting the licensed product, unless justified for the protection of the legitimate interest of the licensor, such as exports to countries in which exclusive licences to manufacture and/or distribute the licensed product(s) have already been granted;
• those which restrict the use of technology supplied after the expiry of the technology transfer arrangement, except in case of early termination of the technology transfer arrangement due to reasons attributable to the licensee;
• those which require payments for patents and other industrial property rights after their expiration;
• those which oblige the technology recipient not to contest the validity of any patents of the technology supplier;
• those which restrict the research and development (R&D) activities of the licensee designed to absorb and adapt the transferred technology to local conditions or to initiate R&D programmes in connection with new products, processes or equipment;
• those which prevent the licensee from adapting the imported technology to local conditions or introducing innovation to it, as long as it does not impair the quality standards prescribed by the licensor;
• those which exempt the licensor from:
• • liability for non-fulfilment of its responsibilities under the technology transfer arrangement; and/or
  • liability arising from third-party suits brought about by the use of the licensed product or the licensed technology; and
• other clauses with equivalent effects.

In exceptional or meritorious cases where substantial benefits will accrue to the economy, an exemption may be allowed by the Documentation, Information and Technology Transfer Bureau after evaluation thereof on a case-by-case basis. These could include those involving:

• high technology content;
• an increase in foreign exchange earnings;
• generation of employment;
• regional dispersal of industries;
• substitution with or use of local raw materials; or
• in the case of the Board of Investments, registered companies with pioneer status.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.