AN ACT CREATING A PATENT OFFICE

Case Overview and Summary

Summary of Republic Act No. 165 (Patent Law of the Philippines)

Creation and Organization of the Patent Office
- Creates a "Patent Office" under the Department of Justice to handle patent-related matters (Section 1)
- Outlines the appointment, qualifications, and duties of the Director and Assistant Director of the Patent Office (Section 2)
- Allows the Director to obtain technical assistance from other government agencies (Section 3)
- Establishes the official seal of the Patent Office (Section 4)
- Requires the publication of laws, rules, and other information related to patents (Sections 5-6)

Patentable Inventions
- Defines patentable inventions as new and useful machines, products, substances, processes, or improvements thereof (Section 7)
- Excludes inventions contrary to public order, morals, health, or welfare, mere ideas or scientific principles, and processes not directed to making commercial products (Section 8)
- Specifies conditions under which an invention is not considered new or patentable (Section 9)

Application for Patent
- Grants the right to a patent to the true and actual inventor, heirs, legal representatives, or assigns (Section 10)
- Requires non-residents to appoint a resident agent for service of notices (Section 11)
- Specifies who can apply for a patent (Section 12)
- Outlines the requirements for a patent application, including specification, drawings, power of attorney, assignment, inventor's statement, resident agent appointment, and fees (Section 13)
- Describes the contents of the specification, including title, description, drawings explanation, and claims (Section 14)
- Allows for priority filing based on earlier foreign applications within 12 months (Section 15)

Issuance of Patent
- Requires formal examination of the application and notification of defects (Section 16)
- Allows for division of an application claiming multiple inventions (Section 17)
- Outlines the process for issuing a patent if the application is in order (Sections 18-20)

Term of Patent
- Sets the term of a patent at 17 years from the issue date (Section 21)
- Requires payment of annual fees starting from the 5th year, with provisions for delayed payment, surcharges, and reinstatement of lapsed patents (Sections 22-23)

Surrender, Correction, and Amendment of Patent
- Allows for the surrender of a patent or claims by the patentee with consent of interested parties (Section 24)
- Permits correction of mistakes by the Patent Office or patentee, with provisions for publication and certification (Sections 25-27)

Cancellation of Patents
- Specifies grounds for cancellation of a patent or claims, including lack of novelty, insufficient specification, or incorrect inventorship (Section 28)
- Allows the Solicitor General to petition for cancellation at any time (Section 29)
- Outlines the requirements for a cancellation petition and the notice and hearing process (Sections 30-32)
- Provides for the issuance of a new patent to the true inventor in cases of fraud (Section 33)

Compulsory Licensing
- Allows for the grant of a compulsory license under certain circumstances, such as non-working, inadequate supply, prevention of new industries, or public health/safety concerns (Section 34)
- Requires notice and hearing for compulsory license petitions (Section 35)
- Empowers the Director to grant compulsory licenses and set terms and conditions (Section 36)

Rights of Patentees and Infringement
- Grants patentees the exclusive right to make, use, and sell the patented invention, with unauthorized acts constituting infringement (Section 37)
- Allows for experimental use and temporary presence in the country without infringement (Sections 38-39)
- Protects the rights of third parties who acquired or used the invention prior to the application (Section 40)
- Permits government use of patented inventions for public purposes with reasonable compensation (Section 41)

Actions and Remedies for Infringement
- Allows patentees to bring civil actions for infringement, with provisions for damages, injunctions, and reasonable royalties (Section 42)
- Limits the recovery of damages to acts within 4 years before the infringement action (Section 43)
- Requires notice or marking to recover damages, unless the infringer had actual notice (Section 44)
- Allows the defendant to challenge the validity of the patent as a defense (Section 45)
- Requires the cancellation of invalid patents or claims found in infringement actions (Section 46)
- Provides for the appointment of technical assessors in infringement actions (Section 47)
- Establishes criminal penalties for repeated infringement after a final judgment (Section 48)
- Allows for appeals from infringement judgments (Section 49)

Assignment and Transmission of Rights
- Recognizes patents and inventions as property rights that can be assigned, transmitted, or inherited (Section 50)
- Allows for the assignment of entire or undivided interests in patents and inventions (Section 51)
- Specifies the form and recording requirements for assignments and other instruments related to patent rights (Sections 52-53)
- Outlines the rights of joint owners of patents and inventions (Section 54)

Designs
- Provides for the protection of new and original industrial designs in the same manner as patents, with some exceptions (Section 55)
- Shortens the publication period for designs to 6 months (Section 56)
- Requires publication of design registrations (Section 57)
- Sets the term of design registration at 5 years, renewable for two additional 5-year periods (Section 58)
- Specifies the marking requirements for registered designs (Section 59)
- Defines infringement of design registrations as unauthorized copying for trade or industry (Section 60)

Review of Director's Orders or Decisions
- Allows for appeals to the Supreme Court from final orders or decisions of the Director (Section 61)
- Provides for the stay of certain orders or decisions during the appeal process (Section 62)
- Outlines the procedure for perfecting an appeal, including notice, petition, fees, and record elevation (Sections 63-66)
- Requires the Solicitor General to represent the Director in appeals (Section 69)
- Establishes the briefing schedule and oral argument procedures for appeals (Sections 70-72)
- Applies the Rules of Court to matters not covered by the law (Section 73)

Penalty for False Marking
- Imposes fines and/or imprisonment for falsely representing a product as patented or design-registered (Section 74)

Fees
- Specifies the fees for various patent and design-related services, including application filing, annual fees, petitions, copies, certifications, and assignments (Section 75)

Miscellaneous Provisions
- Extends the priority period for filing applications due to World War II until July 1, 1948 (Section 76)
- Prohibits Patent Office officers and employees from acquiring patents or design registrations during and for one year after employment (Section 77)
- Authorizes the Director to promulgate rules and regulations for the Patent Office (Section 78)
- Allows public inspection and certified copying of Patent Office records (Section 79)
- Repeals inconsistent laws and preserves rights acquired under prior laws (Sections 80-81)
- Appropriates funds for the initial expenses of the Patent Office (Section 82)
- Sets the effective date of the law (Section 83)