7. Remedies of the True and Actual Inventor

Patent Application by Persons Not Having the Right to a Patent.

If a person referred to in Section 29 (First-to-File Rule)¹ 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:

• Prosecute the application as his own application in place of the applicant;
• File a new patent application in respect of the same invention;
• Request that the application be refused; or
• Seek cancellation of the patent, if one has already been issued [Sec. 67, RA 8293]².

REMEDY OF THE TRUE AND ACTUAL INVENTOR

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. (Sec. 68, IP Code)³

The remedies of the true and actual inventor are:

• Substitution as patentee, or
• At the true inventor’s option, cancellation of the patent.

In both remedies, damages may be awarded.

Note: There must first be a final court order declaring that he is the true and actual inventor.

Patent Application by Persons Not Having the Right to a Patent

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:

• Prosecute the application as his own application in place of the applicant;
• File a new patent application in respect of the same invention;
• Request that the application be refused; or (d) Seek cancellation of the patent, if one has already been issued. (Sec. 67, IP Code)⁴