PHILIPPINES Law and Practice Contributed by: Mark Leo Bejemino, Maria Patricia Cruz and Edward King Chua, Villaraza & Angangco
Villaraza & Angangco V&A Law Center 11th Avenue corner 39th Street Bonifacio Triangle Bonifacio Global City 1634 Metro Manila Philippines Tel: +632.8988.6088 Fax: +632.8988.6000 Email: ip.department@thefirmva.com Web: www.thefirmva.com
1. Life Sciences and Pharma/ Biopharma Patent Litigation 1.1 Claimants/Plaintiffs to an Action
• be a national of, domiciled in, or maintain a real and effective industrial establishment in a coun ‑ try that is a party to any convention, treaty or agreement on intellectual property rights or unfair competition to which the Philippines is also a party, or one that provides reciprocal rights to Philippine nationals; and • not be engaged in business in the Philippines. For nullity/revocation actions, the standing require ‑ ment is significantly relaxed. Under the IP Code, any interested person may institute the action. Aside from regular courts, actions for patent infringe ‑ ment and patent cancellation may also be filed with the IPOPHL, whose decisions carry the same weight and legal effect as court decisions. 1.2 Defendants/Other Parties to an Action Under the IP Code, any unauthorised person who makes, uses, offers for sale, sells or imports a pat ‑ ented product, or who uses a patented process to manufacture, deal in, use, sell, offer for sale or import any product obtained directly or indirectly from such process, is liable for infringement. Likewise, anyone who actively induces patent infringement or provides the infringer with a component of a patented product – or a product produced by a patented process – while knowing that it is especially adapted for infringing the patent and is not suitable for substantial non-infringing use is liable as a contributory infringer, and is jointly and severally liable with the infringer.
Republic Act No 8293, also known as the Intellectual Property Code of the Philippines (IP Code), establish ‑ es the statutory framework for the protection of intel ‑ lectual property rights in the Philippines. Under the IP Code, the right to a patent belongs to the inventor, their heirs or their assigns. When two or more persons have jointly made an invention, the right to a patent shall belong to them jointly. Consequently, any paten ‑ tee – or anyone possessing a right, title or interest in a patented invention – whose rights have been infringed may institute an action against the infringer. This may include a licensee or any person with a legally trace ‑ able right or interest to the patented invention, pro ‑ vided that such action is not prohibited by the paten ‑ tee. In such a case, the patentee is not required to be included as a party if he or she does not consent to participate in the action. For a licensee, the licence must be recorded with the Intellectual Property Office of the Philippines (IPOPHL). If the licence arises from a technology transfer agree ‑ ment, the agreement must further comply with the prohibited and mandatory clauses set forth in the IP Code; otherwise, the agreement is unenforceable. Foreign nationals or entities not licensed to do busi ‑ ness in the Philippines must:
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