PHILIPPINES Law and Practice Contributed by: Mark Leo Bejemino, Maria Patricia Cruz and Edward King Chua, Villaraza & Angangco
prejudice the economic interests of the owner of the patent; • the act consists of making or using the inven ‑ tion exclusively for experimental use, for scientific purposes or educational purposes and such other activities directly related to such scientific or edu ‑ cational experimental use; • the Bolar exception in the case of drugs and medi ‑ cines; • the act consists of the preparation for individual cases, in a pharmacy or by a medical profes ‑ sional, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared; • the invention is used in any ship, vessel, aircraft or land vehicle of any other country entering the terri ‑ tory of the Philippines temporarily or accidentally; • any prior user, who, in good faith was using the invention or has undertaken serious preparations to use the invention in their enterprise or business, before the filing date or priority date of the applica ‑ tion on which a patent is granted; or • any government agency or third person author ‑ ised by the government may exploit the invention even without agreement of the patent owner where doing so in the public interest, as determined by a judicial or administrative body, in case of national emergency, and public non-commercial use by the patentee, or when the demand for the patented drug or medicine is not adequately met by the patentee. 1.16 Stays and Relevance of Parallel Proceedings In the Philippines, an infringement action and validity proceeding may be initiated simultaneously. Nonethe ‑ less, the infringement action can be stayed on the ground that the validity proceeding serves as a preju ‑ dicial question. 1.17 Patent Amendment Patents may be amended during the pendency of liti ‑ gation (after the patent has been granted). However, post-grant patent amendments are limited to: • narrowing the scope of protection; • correcting obvious mistakes or clerical errors; and • correcting errors made in good faith.
In no case may the amendment result in the patent disclosure exceeding what was contained in the origi ‑ nal application. Since patent litigation in the Philippines is relatively sparse, amendments during the pendency of a case are very rare. 1.18 Court Arbiter Generally, cases are decided in the first instance by the trial judge or by the hearing officer of the IPOPHL, as the case may be. In infringement cases filed with the IPOPHL that involve highly technical issues, the Director of Legal Affairs may, in the exercise of discre ‑ tion, constitute a Committee of Three composed of the Director of Legal Affairs as Chair and two mem ‑ bers possessing experience or expertise in the field of technology to which the patent relates. Similarly, in an infringement action filed before the courts, the court may appoint two or more assessors who possess the scientific or technical knowledge necessary to assist in the resolution of the issues involved in the litigation. In general, any unauthorised person who makes, uses, offers for sale, sells or imports a patented product, or who uses a patented process to manufacture, use, deal in, sell, offer for sale or import any product obtained directly or indirectly from such process is liable for patent infringement. In practice, infringe ‑ ment actions involving pharmaceutical products are typically triggered by the actual sale, distribution or importation of the patented product. The securing of market authorisation or product reg ‑ istration with the Food and Drug Administration (FDA) – including approval of the brand name, packaging and labelling – is generally considered a preparatory act and does not, by itself, constitute infringement. At this stage, patentees usually issue cease-and-desist letters to place the applicant on notice of the potential legal consequences of such activities. 2. Generic Market Entry 2.1 Infringing Acts In the Philippines, applications for reimbursement, pricing or listing are not publicly available records, nor
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