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Process of Grant of a Patent in the Philippines

Khurana and Khurana, Advocates and IP Attorneys Philippines


INTRODUCTION

A patent is a government issued grant that confers an exclusive right of the invention upon its inventor. During the duration of a patent, the inventor has the sole right to prohibit others from creating, using, or selling the patent. Additionally, inventors of a patent may, under mutually agreed-upon conditions, provide permission or licenses to third parties to use their inventions. Furthermore, they may transfer their patent rights to a new owner by selling their invention rights to a third party.

 

DEFINITION OF PATENT

Section 21 of The Act defines a patentable invention asa technical solution to a problem in any field of human activity that is:

  1. Novel i.e. the invention should not form part of any prior art
  2. Involves an inventive stepwhich is not obvious to a person skilled in the art 
  3. Industrial applicability

PROCESS OF GRANT OF A PATENT

The steps involved in the process of grant of patent in the Philippines are as follows:

  1. PATENT APPLICATION

Section 32 of The Act states thata patent application ought to be in Filipino or English and must identify the inventor. Further, the patent application must contain:

  1. A request for the grant of a patent containing a petition for the grant of the patent, the name and other data of the applicant, the inventor and the agent and the title of the invention.
  2. The patent application shall contain a description and disclosureof the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
  3. Drawings necessary for the understanding of the invention;
  4. One or more claims
  5. An abstract consisting of a concise summary of the disclosure of the invention as contained in the description, claims and drawings in preferably not more than one hundred fifty words. It must be drafted in a way that allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention. The abstract shall merely serve as technical information.
  1. FILING DATE

A patent application must contain an express or implicit indication that a Philippine patent is sought, information identifying the applicant and a description of the invention and one or more claims in Filipino or English.

The date of filing the patent application is construed to be the date on which all of the aforementioned elements are received by the Office.

  1. FORMALITY EXAMINATION

Subsequent to the patent application being accorded a filing date, the examiner shall prepare a formality examination report consisting of the informalities and defects in the patent application.

  1. SEARCH

An application that has complied with the formal requirements shall be classified and a search conducted to determine the prior art.

  1. PUBLICATION OF UNEXAMINED APPLICATION IN THE IPO GAZETTE

After eighteen months from the filing date or priority date, the patent application must be published in the IPO Gazette together with a search document prepared by or on behalf of the Office stating any materials that reflect prior art. Any interested person may examine the application materials submitted to the Office following publication of a patent application.

  1. SUBSTANTIVE EXAMINATION

If the applicant chooses to pursue the grant of patent, he may submit a request for substantive examination within six months from the date of publication of the patent application by making a formal request for substantive examination and making full payment of the prescribed fee. The substantive examination is conducted to determine whether a patent application meets the requirement of patentability as provided by the IP Code.Failure of the applicant to file a request for substantive examination and pay the corresponding fees within the prescribed period shall result in the withdrawal of the application. The request for substantive examinations, once filed, shall be irrevocable. Fees paid therefor shall not be refunded.

  1. GRANT OF PATENT

The Office shall grant the patent if the application complies with The Act, provided that all fees are paid on time. The application will be deemed withdrawn if the necessary grant and printing fees are not paid on time. A patent becomes valid on the day it is published in the IPO Gazette as having been granted.

  1. PUBLICATION OF PATENT IN THE IPO GAZETTE

The grant of the patent together with other related information is then published in the IPO Gazette within the time frame outlined by the Regulations.

 

CANCELLATION OF PATENT

Upon payment of the required fee, any interested party may request the cancellation of the patent or any claim, or portions of a claim, on any of the following grounds:

(a) that the invention claimed is not novel or patentable

(b) that the patent does not sufficiently disclose the invention for it to be implemented by any person skilled in the art

(c) that the patent is against public morality or order.

Upon filing of a petition for cancellation, the Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the patentee and all persons having grants or licenses, or any other right, title or interest in and to the patent and the invention covered thereby, as appears of record in the Office, and of notice of the date of hearing thereon on such persons and the petitioner. Notice of the filing of the petition shall be published in the IPO Gazette.Notice of the filing of the petition shall be published in the IPO Gazette.

 

TERM OF PATENT

From the date of filing the application for a patent, the term of the patent extends to twenty years.

 

MAINTENANCE OF A PATENT

All patents must be maintained yearly upon expiration of four years from the date on which the application was punished. This means that, from the fifth year onwards, a yearly maintenance fees or annual fees must be paid three months before the due date. A patent application shall be deemed to be withdrawn or the patent shall be considered as lapsed if the maintenance fee or annual fee is not paid within the prescribed time period. A grace period of six months shall be granted for the payment of the maintenance fee or annual fee on payment of the prescribed surcharge for delayed payment which is fifty per cent of the total annual fee.

 

REFERENCES

  1. https://www.officialgazette.gov.ph/1997/06/06/republic-act-no-8293/ (last visited on 29 September, 2023)
  2. https://www.ipophil.gov.ph/patent/(last visited on 29 September, 2023)
  3. https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_mnl_3_18/wipo_ip_mnl_3_18_p_1.pdf(last visited on 29 September, 2023)

Khurana and Khurana, Advocates and IP Attorneys



About the Firm

Khurana and Khurana, Advocates and IP Attorneys

AddressD-45, UPSIDC, Site IV, Kasna Road, Greater Noida - 201308, National Capital Region, India
Tel91-120-313 2513, 91-120-350 5740
Fax91-120-4516201
Contact PersonTarun Khurana
Emailinfo@khuranaandkhurana.com
Linkwww.khuranaandkhurana.com


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