MALACAÑANG
M a n i l aPRESIDENTIAL DECREE No. 1263
AMENDING PORTIONS OF REPUBLIC ACT NO. 165 OTHERWISE KNOWN AS THE PATENT LAW
WHEREAS, certain provisions of Republic Act No. 165, otherwise known as the Patent Law, have become obsolete and are inadequate to meet the demands of our primordial goal of industrial and overall national economic development;
WHEREAS, this goal can, to a significant extent, be promoted through the licensing of patents;
NOW, THEREFORE, I, FERDINAND E. MARCOS, President of the Philippines, by virtue of the powers vested in me by the Constitution, do hereby order and decree the following:
Section 1. Chapter VIII of republic Act Numbered 165 is hereby amended to read as follows:
"CHAPTER VIII Licensing
"ARTICLE ONE. Voluntary Licensing
"Sec. 33-A. Voluntary License Contracts. (1) All voluntary license contracts as well as renewals thereof involving payment of royalty for the use of patents, transfer of technology, or furnishing of services respecting patents of technology, or furnishing of services respecting patents shall, whenever entered into between residents and...
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Presidential Decrees
Amending Portions Of Republic Act No. 165 Otherwise Known As The Patent Law
Presidential Decree No. 1263
Summary of Presidential Decree No. 1263 Amending the Philippine Patent Law
Voluntary Licensing
- All voluntary license contracts involving payment of royalties, technology transfer, or services related to patents between residents and non-residents must be submitted to the Technology Resource Center for approval and registration. (Sec. 33-A.1)
- Royalties in manufacturing license contracts between an alien licensor and Filipino licensee shall not exceed 5% of the net wholesale price, distributed equally among patentees if multiple patents are involved. (Sec. 33-A.2)
- "Net wholesale price" is defined as the gross amount billed less discounts, credits/allowances, and taxes. (Sec. 33-A.3)
- Unapproved and unregistered license contracts cannot be filed with investment bodies and have no effect against third parties. (Sec. 33-A.4)
- The licensor can grant further licenses and exploit the invention themselves unless the contract states otherwise for an exclusive license. (Sec. 33-B)
- The licensee has the right to exploit the invention nationwide during the patent term through any application, subject to certain prohibited contract clauses. (Sec. 33-C)
Compulsory Licensing
- After 2 years from patent grant, anyone can apply for a compulsory license if the invention is not worked commercially in the Philippines without satisfactory reason, demand is not adequately met, the patent prevents establishment of new industry, or importation prevents working of the invention. (Sec. 34.1)
- The applicant must prove capability to work the patented invention. (Sec. 34.2)
- "Worked" means manufacture and sale on a reasonable scale in the Philippines; importation does not constitute working. (Sec. 34.3)
- Compulsory licenses can be granted before the 2-year period for products/processes vital to national defense, economy, or health. (Sec. 34-A)
- Products/processes in Board of Investment-approved projects are deemed vital, allowing compulsory licenses without the usual requirements. (Sec. 34-B)
- Compulsory licenses can be granted for interdependent patents to the extent necessary for working the later invention if it is a noteworthy technical progress. (Sec. 34-C)
- The petition for compulsory license must state details like patent number, grounds, and relief sought, with notices published in newspapers. (Secs. 34-D, 34-E)
- The Director shall grant the compulsory license within 180 days, or 120 days for Board of Investment cases, stating the terms and royalty rates. (Sec. 35)
- Compulsory licenses are non-exclusive, with royalties not exceeding 5% of net wholesale price (3% for Board of Investment cases), distributed among patentees if multiple patents are involved. (Sec. 35-B.3)
- Compulsory licenses can be transferred with the undertaking using the patented invention upon Director's authorization. (Sec. 35-C)
- Compulsory license terms can be amended, and licenses can be canceled if the licensee does not comply with terms. (Sec. 35-D)
- Licensees are free from infringement liability, and no injunction can interfere with their right to work the invention. Violators face fines of ₱5,000-30,000 or 1-5 years imprisonment. (Sec. 35-E)
Patent Fees
- Fees are specified for filing applications, issuing patents, annual fees, petitions, copies, assignments, appeals, renewals, and other services. (Sec. 75)
- The Director can set higher fees for nationals from developed countries. (Sec. 75)
- The Philippine Investors Commission is exempt from fees for applications filed on behalf of indigent inventors. (Sec. 75)
Other Provisions
- The Director can use up to 50% of the Office's total income for improving facilities, services, equipment, and international cooperation activities. (Sec. 82-A)
Voluntary Licensing
- All voluntary license contracts involving payment of royalties, technology transfer, or services related to patents between residents and non-residents must be submitted to the Technology Resource Center for approval and registration. (Sec. 33-A.1)
- Royalties in manufacturing license contracts between an alien licensor and Filipino licensee shall not exceed 5% of the net wholesale price, distributed equally among patentees if multiple patents are involved. (Sec. 33-A.2)
- "Net wholesale price" is defined as the gross amount billed less discounts, credits/allowances, and taxes. (Sec. 33-A.3)
- Unapproved and unregistered license contracts cannot be filed with investment bodies and have no effect against third parties. (Sec. 33-A.4)
- The licensor can grant further licenses and exploit the invention themselves unless the contract states otherwise for an exclusive license. (Sec. 33-B)
- The licensee has the right to exploit the invention nationwide during the patent term through any application, subject to certain prohibited contract clauses. (Sec. 33-C)
Compulsory Licensing
- After 2 years from patent grant, anyone can apply for a compulsory license if the invention is not worked commercially in the Philippines without satisfactory reason, demand is not adequately met, the patent prevents establishment of new industry, or importation prevents working of the invention. (Sec. 34.1)
- The applicant must prove capability to work the patented invention. (Sec. 34.2)
- "Worked" means manufacture and sale on a reasonable scale in the Philippines; importation does not constitute working. (Sec. 34.3)
- Compulsory licenses can be granted before the 2-year period for products/processes vital to national defense, economy, or health. (Sec. 34-A)
- Products/processes in Board of Investment-approved projects are deemed vital, allowing compulsory licenses without the usual requirements. (Sec. 34-B)
- Compulsory licenses can be granted for interdependent patents to the extent necessary for working the later invention if it is a noteworthy technical progress. (Sec. 34-C)
- The petition for compulsory license must state details like patent number, grounds, and relief sought, with notices published in newspapers. (Secs. 34-D, 34-E)
- The Director shall grant the compulsory license within 180 days, or 120 days for Board of Investment cases, stating the terms and royalty rates. (Sec. 35)
- Compulsory licenses are non-exclusive, with royalties not exceeding 5% of net wholesale price (3% for Board of Investment cases), distributed among patentees if multiple patents are involved. (Sec. 35-B.3)
- Compulsory licenses can be transferred with the undertaking using the patented invention upon Director's authorization. (Sec. 35-C)
- Compulsory license terms can be amended, and licenses can be canceled if the licensee does not comply with terms. (Sec. 35-D)
- Licensees are free from infringement liability, and no injunction can interfere with their right to work the invention. Violators face fines of ₱5,000-30,000 or 1-5 years imprisonment. (Sec. 35-E)
Patent Fees
- Fees are specified for filing applications, issuing patents, annual fees, petitions, copies, assignments, appeals, renewals, and other services. (Sec. 75)
- The Director can set higher fees for nationals from developed countries. (Sec. 75)
- The Philippine Investors Commission is exempt from fees for applications filed on behalf of indigent inventors. (Sec. 75)
Other Provisions
- The Director can use up to 50% of the Office's total income for improving facilities, services, equipment, and international cooperation activities. (Sec. 82-A)