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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 67 of the Intellectual Property Code provides that if a person referred to in Section 29 other than the applicant, is declared by final court order or decision as having the right to the patent, such person may, within three (3) months after the decision has become final.

In the world of intellectual property, “minding one’s own business” means respecting the creations and inventions of others. Yet situations may arise where a patent applicant is not the true and actual inventor of the invention being claimed.

Suppose the patent application has already been granted. Who, then, should rightfully own the patent?

The law provides a clear answer. The right to a patent ultimately belongs to the true inventor, and legal remedies exist to ensure that such right is properly recognized and protected.

In Section 28, the right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or more persons have jointly made an invention, the right to patent belongs to them jointly.

The Intellectual Property Code also provides for the First to File Rule. Under Section 29, if two (2) or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest priority date.

But what happens if the patent applicant is not the true and actual inventor?

The law provides a remedy.

Under the Section 68 of the Intellectual Property Code, if a person, who was deprived of the patent without his consent or through fraud is declared by final court order or decision to be the true and actual inventor, the court shall order for his substitution as patentee, or at the option of the true inventor, cancel the patent, and award actual and other damages in his favor if warranted by the circumstances.

Moreover, Section 67 of the Intellectual Property Code provides that if a person referred to in Section 29 other than the applicant, is declared by final court order or decision as having the right to the patent, such person may, within three (3) months after the decision has become final:

1. Prosecute the application as his own application in place of the applicant;
2. File a new patent application in respect of the same invention;
3. Request that the application be refused; or
4. Seek cancellation of the patent, if one has already been issued.

However, the law also imposes a limitation on the period to file.

In case the true and actual inventor opted to file any of the above enumerated action provided for under Section 67 and 68 of the Intellectual Property Code, the same shall be filed within one (1) year from the date of publication made in accordance with Sections 44 on the Publication of Patent Application and 51 on the Refusal of Application, respectively. (Section 70, Intellectual Property Code)

These provisions ensure that while the patent system adheres to the first-to-file principle, it also protects the rights of the true inventor, especially in cases involving fraud, mistake, or misappropriation.

Related Articles:

• SHOULD A PATENT APPLICATION BE PUBLISHED?
• Rights and Limitations of a Patent Owner
• Patentable and Non-Patentable Inventions

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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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