How to Get a Patent
Some people confuse patents, copyrights, and trademarks. Although there may be some similarities among these kinds of intellectual property protection, they are different and serve different purposes. This issue focuses on patent rights and how you can go about getting one.
A patent is a right granted for exclusive ownership for any device, substance, method or process that is new, inventive and useful. It is legally enforceable and gives the owner the exclusive right to commercially exploit the invention for the life of the patent.
It is a grant of a property right to the inventor, issued by the Intellectual Property Office (IPO) under the Office of the President. The term of a new patent is 20 years from the date on which the application for the patent was filed, subject to the payment of maintenance fees. Philippjne patent grants are effective only within the Philippines.
The right conferred by the patent grant is “right to exclude others from making, using, offering for sale, or selling” the invention in the Philippines or “importing” the invention into the Philippines. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.
If you want to go into business using somebody else’s patent, you have two options: Voluntary licensing — You may offer to enter into licensing agreement and pay the royalty resulting from the agreement which you and the patent owner reached. Given the free market economy, we encourage you to follow this option.
Compulsory licensing — By filing a petition with the IPO provided you have exerted efforts to obtain authorization from the patent owner on reasonable commercial terms and conditions but your efforts were unsuccessful within a reasonable period of time.
The procedure in a compulsory license petition is adversarial, which means that you and the patent owner will have opportunity to present your respective evidence before any decision can be made.
How to Apply for Patent Registration
1. Submit the following requirements to the Bureau of Patents (BOP) of the Intellectual Property Office (IPO):
• Accomplished Request Form
• Name, address and signature of applicant(s); for non-resident applicant, the name and address of his/her/their resident agent; and
• Description of the invention and one or more claims.
• Payment of filing fee (for big or small entities) which may be paid during application filing or within one month from the date of filing
• Drawing(s) necessary to understand the invention;
• An abstract; and
• If the priority of an earlier filed application is being claimed, the details of the claim, (i.e. filing date, file number and country of origin).
Note: It is advised that any drawing/s necessary to understand the subject invention should be submitted at the time of filing so that there would not be a possible change in filing date due to late submission/filing of said drawing/s.
2. If the application satisfies the requirements, then a filing date is granted. The date of filing is very important under the present “first-to-file” system because it serves to determine who has the right to the patent in case of a dispute with another applicant for the same invention.
3. The application together with the list of published patent applications or issued patents for inventions identical to those claimed by the application, will be published in the IPO Gazette (after the expiration of 18 months from the filing date or priority date). After publication, any person may present observations in writing concerning the patentability of the invention.
4. A request for substantive examination of application must be filed within six (6) months from the date of the publication. The application is considered withdrawn if no request is made within that period.
5. If the examiner finds reason to refuse the registration of the application, i.e. the application is not new, inventive or industrially applicable, the Bureau shall notify the applicant of the reason for refusal/rejection giving the applicant the chance to defend or amend the application. If the examiner finds no reason for refusal of the application, the examiner issues a decision to grant the patent registration.
6. The grant of a patent together with other information shall be published in the IPO Gazette within six (6) months. Any interested party may inspect the complete description, claims, and drawings of the patent on file with the Office.
7. When refused a patent grant, an applicant may appeal to the Director of Patents within two (2) months from the mailing date of the final refusal.
Filing Fees (in Philippine pesos)
Small Entity* Php 1,380.00
Big Entity** Php 2,760.00
Small Entity. Any natural or juridical person whose assets are worth Twenty Million Pesos (P20M) or less; or, any entity, agency, office, bureau or unit of the Philippine government including government-owned or controlled corporations, state universities and colleges and government-owned or government-run schools.
Big Entity. Any natural or juridical person other than small entity, is presumed to be a big entity unless a written statement to the contrary is submitted by such natural person or the duly authorized representative of such juridical person.
Bureau of Patents
Intellectual Property Office of the Philippines (IPO)
IPO Building, 351 Sen. Gil Puyat Avenue, Makati City
Telephone Numbers (632) 752-5450 to 65
Web site: http://www.ipophil.gov.ph/
Source: Business Line Vol. 2 No. 3 2004