Basic procedure in the registration of a patent

Section 13, Article XIV of the Constitution states that the State shall protect and secure the exclusive rights of inventors to their intellectual property, particularly when beneficial to the people, for such period as may be provided by law.

An invention may be a product, a process or an improvement of any of foregoing and is protected by a "letters patent for invention" or patent. A patent is a contract between the State and the inventor. In return for the inventor’s full disclosure of the invention in the patent and making it available for public exploitation after the term of the patent, the State grants the inventor the monopoly or exclusive right "to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing" the invention during the term of the patent.

A common misconception is that a patent gives its owner, called the patentee, the right to make, use, or sell his invention. In fact, it only gives the patentee the "right of exclusion" which is exercised by filing an action for patent infringement against the alleged infringer.

The Intellectual Property Office (IPO) is the government agency mandated by law to examine and grant applications for patents. Until 1997, the Philippines followed the American first-to-invent system, where a patent is awarded to the first person or persons who invented the invention. Upon the effectivity of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines (IP Code), on Jan. 1, 1998, the Philippines switched to the universal first-to-file system, where a patent is awarded to the first person or persons who filed a patent application for the invention.

The application for a grant of Philippine patent is filed with the Bureau of Patents (BOP) of the IPO. To obtain an effective filing date, which is vital in the current first-to file system, the inventor must remit the requisite fees and submit a filled-out "Request for a Grant of Philippine Patent" form (available at www.ipophil.gov.ph) and a draft patent (known as a specification). The specification consists of the "description" and the "claims" of the invention. The description teaches the public how to make and use the invention. Appropriately, the term "patent" came from the Latin word "pat_ns" meaning "lie open". The claims define the scope or boundaries of the invention and will be interpreted by the court in case of a patent infringement case.

An application that has complied with the formal requirements shall be classified and a search will be conducted by the BOP to determine the relevant prior art. The "relevant prior art" consists of published patent applications, issued patents, or other known references found anywhere in the world that are identical or equivalent to those claimed by the application. After the search report has been completed and after the expiration of 18 months from the filing date, the application, together with the search report, will be published in the IPO Gazette. The publication gives the inventor the right, should the patent be subsequently issued, to recover damages for any act of "infringement" committed between the date of publication and the effectivity date of the granted patent, apart from damages or royalties that may be recovered thereafter. The reason is that, after publication, the inventor has lost the confidentiality of his invention and the public has been warned that a patent may be granted for the invention. On the other hand, a third party may present observations in writing concerning the patentability of the invention but may not file an opposition against the application. Such observations shall be communicated to the applicant who may comment on them. The observations and the comment shall be acknowledged by the BOP and shall form part of the file wrapper of the application. The file in the IPO containing the application and the correspondence between the inventor and the examiner during the prosecution of the patent is called the file wrapper.

Within six months from the date of the publication, the request for substantive examination of the application must be filed or the application will be considered withdrawn. During the substantive examination, the examiner determines if the application has all the elements of patentablility, namely, novelty (not previously disclosed to the public), inventive step (non-obvious to a person skilled in the art) and industrial applicability (can be applied for practical purposes). If the examiner finds that the application is not new, inventive or useful, he will issue an "official action" notifying the inventor of the reason for the rejection, and will give the inventor a chance to defend or amend the application.

If the examiner finds no reason for the refusal of the application or if the rejection has been successfully traversed by the inventor, the examiner will issue a notice of grant of patent. The granted pantent will be published in the IPO Gazette and the "Certificate of Letters Patent" shall be issued in due course.

Under the IP Code, the term of a patent, following the uniform term prescribed by the Agreement on Trade-Related Aspects Intellectual Property Rights (TRIPS Agreement), is 20 years from the date of filing.

Like other forms of property, intellectual property – patent, trademark and copyright – is an appropriable asset that can be sold, assigned, or licensed, in whole or in part. A person has no right to protect an invention unless he is the inventor, or has obtained title to the invention from the inventor as an heir, legal representative, or assign.

Although the inventor himself may apply for a patent, the assistance of an experienced patent agent or attorney would be invaluable in every stage of the patent application, from the drafting of the claim language (which should be broad enough to be of value and narrow enough to exclude prior art), to the prosecution of the application, until the maintenance of the patent, including the monitoring of IPO due dates.

(The author is an Associate of the ANGARA ABELLO CONCEPCION REGALA & CRUZ LAW OFFICES (ACCRALAW). He may be contacted at tel. no: 830-8000;. fax no. 894-4697 or via email at [email protected])