PHILIPPINES Law and Practice Contributed by: Susan D. Villanueva, Patricia A. O. Bunye, Rowanie A. Nakan and Ritz Angelica R. Alejandro, Cruz Marcelo & Tenefrancia
posed of the Director of Legal Affairs and two members with expertise in the relevant field. This committee is empowered to hear and decide petitions, such as those related to the cancel- lation of patents. 3.7 Procedure for Construing the Terms of the Patent’s Claim There is no separate procedure for constru- ing the terms of the patent’s claims. When an infringement or cancellation case is filed, the issue on the interpretation of the scope of the patent claims shall be addressed in the same proceedings. Notably, in Maguan v Court of Appeals, G.R. No L-45101, (28 November 1986), the Supreme Court held that in an action for infringement, the court has jurisdiction to determine the invalid- ity of the patents at issue, notwithstanding that such invalidity remains pending considera- tion before the patent office. In this regard, the Supreme Court ruled that “[w]hen a patent is sought to be enforced, the questions of inven- tion, novelty or prior use, and each of them, are open to judicial examination.” 3.8 Procedure for Third-Party Opinions Section 36 of Rule 138 of the Rules of Court pro- vides that experienced and impartial attorneys may be invited by the court to appear as amici curiae to help in the disposition of issues. Nonetheless, in Forest Hills Golf and Country Club, Inc. v Gardpro, Inc., G.R. No 164686, (22 October 2014), the Supreme Court held that the appearance of amici curiae is a matter of judi- cial discretion and not a matter of right, which is permitted only when the court deems the infor- mation offered to be timely and of assistance. However, where the parties are represented by competent counsel, leave to appear as amici
curiae is typically denied. Moreover, the courts generally refrain from allowing the intervention of individuals whose interests are partisan or aligned with private entities that stand to benefit from the litigation’s outcome.
4. Revocation/Cancellation 4.1 Reasons and Remedies for Revocation/Cancellation
Any interested person may petition to cancel a patent or any claim thereof, or parts of the claim, a utility model or an industrial design on the grounds discussed in 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property . The petition for cancellation may be filed before the BLA which is appealable to the BLA Direc- tor, whose decision is appealable to the Director General. The decision of the Director General may be appealed before the Court of Appeals, and thereafter the Supreme Court. 4.2 Partial Revocation/Cancellation Partial revocation or cancellation of a patent is possible where the grounds for cancellation relate to some of the claims or parts of the claim. Cancellation may be effected to such an extent only and the IPOPHL shall reissue the amended patent. Partial revocation or cancellation is likewise applicable to industrial designs where the grounds for cancellation relate to a part of the industrial design only. In such a case, restriction may be effected in the form of an alteration of the affected features of the design.
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