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This article was originally published on June 1, 2022 and has been updated to reflect recent legal developments.

The following post does not create a lawyer-client relationship between Alburo Alburo and Associates Law Offices (or any of its lawyers) and the reader. It is still best for you to engage the services of a lawyer or you may directly contact and consult Alburo Alburo and Associates Law Offices to address your specific legal concerns, if there is any.

Also, the matters contained in the following were written in accordance with the law, rules, and jurisprudence prevailing at the time of writing and posting, and do not include any future developments on the subject matter under discussion.

AT A GLANCE:

Section 61.1 of the Intellectual Property Code states that any interested person may, upon payment of the required fee, petition to cancel the patent or any claim thereof, or parts of the claim, on any of the grounds provided.

Morality is likewise taken into consideration by the law when it comes to the cancellation of patents. 

This is reflected in the grounds for cancellation of a patent. But what are these grounds?

The law provides clear guidance. 

Under Section 61.1 of the Intellectual Property Code states that any interested person may, upon payment of the required fee, petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds:

1. That what is claimed as the invention is not new or patentable;
2. That 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; or
3. That the patent is contrary to public order or morality.

However, where the grounds for cancellation relate to some of the claims or parts of the claim, cancellation may be effected to such extent only. (Section 61.2, Intellectual Property Code )

Requirements of a Petition for Cancellation

The petition for cancellation shall be in writing, verified by the petitioner or by any person in his behalf who knows the facts, specify the grounds upon which it is based, include a statement of the facts to be relied upon, and filed with the Office. Copies of printed publications or of patents of other countries, and other supporting documents mentioned in the petition shall be attached thereto, together with the translation thereof in English, if not in the English language. (Section 62, Intellectual Property Code)

Decision of the Committee

Section 65.1 of the Intellectual Property Code states that if the Committee finds that a case for cancellation has been proved, it shall order the patent or any specified claim or claims thereof cancelled.

However, the law also allows the patentee to amend the patent during the cancellation proceedings.

Under Section 65.2 of the Intellectual Property Code, if the Committee finds that, taking into consideration the amendment made by the patentee during the cancellation proceedings, the patent and the invention to which it relates meet the requirement of this Act, it may decide to maintain the patent as amended: Provided, That the fee for printing of a new patent is paid within the time limit prescribed in the Regulations.

If the fee for the printing of a new patent is not paid in due time, the patent should be revoked. (Section 65.3, Intellectual Property Code)

Furthermore, when a patent is amended under Subsection 65.2 hereof, the Bureau shall, at the same time as it publishes the mention of the cancellation decision, publish the abstract, representative claims and drawings indicating clearly what the amendments consist of. 

If the case for cancellation has been proved, the patent or any specified claim or claims shall be cancelled. Take note that an amendment is allowed, thus, may be made by the patentee during the cancellation proceedings. (Section 65.4, Intellectual Property Code)

Effect of Cancellation of Patent or Claim

Section 66 of the Intellectual Property CodeThe rights conferred by the patent or any specified claim or claims cancelled shall terminate. Notice of the cancellation shall be published in the IPO Gazette. Unless restrained by the Director General, the decision or order to cancel by Director of Legal Affairs shall be immediately executory even pending appeal.

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Alburo Alburo and Associates Law Offices specializes in business law and labor law consulting. For inquiries regarding legal services, you may reach us at info@alburolaw.com, or dial us at (02)7745-4391/ 09175772207/ 09778050020.

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