PHILIPPINES Law and Practice Contributed by: Susan D. Villanueva, Patricia A. O. Bunye, Rowanie A. Nakan and Ritz Angelica R. Alejandro, Cruz Marcelo & Tenefrancia
tion of the original period within which the annu- al fee was due, shall be issued and published and recorded in the appropriate register of the IPOPHL. An application that is deemed forfeited or a pat- ent that is considered lapsed due to non-pay- ment of annual fees cannot be revived. 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights Patent owners can request the IPOPHL to make administrative corrections in their patents, spe- cifically to: • limit the extent of protection conferred by it through deletion of claim/s; • correct clerical errors or obvious mistakes; and • correct mistakes or errors made in good faith; however, changes that would broaden the protection cannot be made after two years from the grant of a patent (moreover, the change should not affect third-party rights based on the published patent). Claim amendments that require the re-exami- nation of the application shall not be accepted since the patent prosecution on the merits was already concluded when the patent was granted.
or processes without authorisation to recover from the infringer a reasonable amount of dam- ages, plus attorney’s fees and other expenses of litigation and to secure an injunction for the protection of his rights. The court may also, in its discretion, order the destruction of the infringing goods, without compensation. The patentee can also file a criminal case for pat- ent infringement against any repeat offenders or those in connivance with him/her after finality of the judgment of the court against the infringer. The filing of a criminal action is without prejudice to the institution of a civil action for damages. A patent holder can also apply for a writ of pre- liminary attachment or preliminary injunction even before receiving a ruling on the merits. 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property Cancellation Action Any interested person may petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds: • The invention is not new or patentable. • The patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art. • The patent is contrary to public order or morality. • The patent includes matters outside the scope of the disclosure contained in the application as filed. Utility model registrations may also be cancelled on the following grounds:
2. Initiating a Lawsuit 2.1 Actions Available Against Infringement
A patent holder or any person with a right to the patented invention may file a civil action for patent infringement before the courts or an administrative complaint before the Bureau of Legal Affairs (BLA) of the IPOPHL against one who makes, sells, or imports patented products
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