Patent Protection, Enforcement And Court System In Philippines

TOPIC : PATENT PROTECTION, ENFORCEMENT AND COURT SYSTEM IN PHILIPPINES

PROTECTION

Question 1
What is the term of protection of a patent in Philippines?

Answer 1
In Philippines, a Patent last for twenty (20) years counted from the date of filing and for Utility Model, 7 years from the date of filing.

Question 2
Is it possible to extent the lifetime of a patent?

Answer 2
No.

ENFORCEMENT

Question 1
What are the types of patent enforcement action are available in Philippines?

Answer 1
a) Civil action for infringement;
b) Administrative case for infringement; and
c) Criminal action for repetition of infringement.

Question 2
How can the patent owner most effectively make his point to stop an infringement?

Answer 2
Secure a search warrant to seize the infringing goods prior to filing a civil action or an administrative action for infringement.

Question 3
Are protective orders available in Philippines?

Answer 3
Yes.

Question 4
Does the Philippines patent law require the patent owner to send a cease and desist letter to an alleged infringer before a court action can be taken against him?

Answer 4
No.

Question 5
Is it possible to seek a preliminary injunction? If so, how long would this action take?

Answer 5
Yes. Time frame from 2 – 6 months.

Question 6
Is it possible to seek seizures / inspections of suspect goods?

Answer 6
Yes.

Question 7
How long would a patent infringement / patent invalidation case take?

Answer 7
1. Infringement action duration about 36 months.
2. Invalidation action duration about 12 months.
3. Typical cost – this can vary according to complexity of case, whether it is contested and seniority of person handling the case.

Question 8
How are damages / royalties assessed?

Answer 8
Damages sustained, reasonable attorney’s fees and other expenses. The courts may treble the amount of damages awarded to the complainant if bad faith on the part of respondent is proven. Damages cannot be recovered if the infringer had not known of complainant’s patent.

Question 9
Can the alleged infringer sue for damages if the patent owner fails to prove infringement in court of Philippines?

Answer 9
Yes.

COURT SYSTEM

Question 1
Briefly describe any cases of patent invalidation or patent infringement in Philippines?

Answer 1
Smith Kline Beecham Corporation vs. CA and Tryco Pharma Corp., GR No. 126627.

Petitioner sued respondent for infringement of patent and unfair competition. It claimed that its patent covers or includes the substance Albendazole. It claimed that respondent, by manufacturing, selling, using and causing to be sold and used the drug Impregon without its authorization, infringed its patent as well as committed unfair competition for advertising and selling as its own the drug Impregon although the same contained petitioner’s patented Albendazole.

Question 2
How efficient are the courts in disposing IP litigation cases in Philippines?

Answer 2
Reasonably efficient.

Question 3
Are the judges technically qualified?

Answer 3
Yes.

Question 4
Do the courts rely on precedent cases decided in foreign countries?

Answer 4
Yes. US.

Question 5
How are foreigners treated by the courts in Philippines?

Answer 5
Same as locals.

Question 6
What is the time frame for a patent invalidation / patent infringement suit to be decided?

Answer 6
18 – 72 months.

Question 7
What step(s) must be taken to appeal a court decision in Philippines?

Answer 7
Appeal to Director General of the IPO, Court of Appeals, and Supreme Court.