Philippines

PhilippinesCapital: Manila
Capital Timezone: GMT + 8
Population: 99,632,700 (est. 2014)
Languages: Tagalog and English
Currency: Philippine pesos (PHP)
Legal System: Mixed legal system of civil, common, Islamic, and customary law

Key issues

• All litigation and prosecution in English
• Ranked 59th in the world for IP protection in the World Economic Forum’s Global Competitiveness Report 2013/2014
• Removed from the United States Trade Representative (USTR) Special 301 Watch List (2014) which identifies countries that do not adequately and effectively protect intellectual property rights after having been on the list since 1994.

Enforcement

• Infringement remedies – damages based on an account of profit, delivery up and injunctions.
• Enforcement through civil court or IP Legal Tribunal
• Potential for alternative dispute resolution in IP matters via mediation
• Limitations period of four (4) years for bringing infringement actions

Prosecution

• National phase entry deadline for PCT applications in Philippines: 30 months
• Patentable subject matter – all subject matter patentable except scientific discoveries, scientific theories and mathematical methods, and in the case of drugs and medicines, the mere discovery of a new form or new property of a known substance which does not result in the enhancement of the known efficacy of that substance, or the mere discovery of any new property or new use for a known substance, or the mere use of a known process unless such known process results in a new product that employs at least one new reactant. Salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy; mathematical methods, schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers, methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body, plant varieties or animal breeds or essentially biological process for the production of plants or animals, aesthetic creations and anything which is contrary to public order or morality
• Voluntary divisional applications possible
• Post-grant amendment possible
• Third party observations must be made within 6 months of publication or request for exam

Other issues

• Protection available for patents and utility models.
• Term of protection for patents – 20 years from filing date; utility models – 7 years from filing date
• No pre or post-grant opposition
• No Patent Term Extension available
• No provisions for the requirement of a foreign filing license
• Data exclusivity is available for the duration of the Bureau of Food and Drugs (BFAD) registration, which is typically between 2 to 5 years depending on the product.
• Declaration of non-infringement is not available
• PPH with USPTO and JPO
• Participant of the ASEAN Patent Examination Co-operation (ASPEC)
• Patent linkage system removed in 2006 allowing the Food and Drugs Authority of the Philippines (FDAP) to accept and consider applications for product registration without an obligation to verify the existence of a patent.
• Compulsory licenses may be granted on certain grounds including a grant of a special compulsory license in situations to ensure access to affordable medicines; and for manufacture and export of medicines to address a serious health problem overseas
• International exhaustion regime – parallel importation of drugs or medicines is allowed in the Philippines as long as the drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent owner, or by any party authorized to use the invention.

For more information contact us on mail@fak.com.au or +61 7 3011 2200.