INTELLECTUAL PROPERTY LAW AMADOR SUMMARY CHAPTER 1 TRADEMARKS Intellectual Property code adopted a hybrid system of registration in that

t while actual use of the mark is not required at the time of filing of the application, use of the mark in commerce must actually commence within 3 years from the filing date of the application; otherwise, the application will be refused or the registration will be cancelled if it has been issued. -adopted multiple class applications so that trademark owner can include as many classes of goods or services as he wants to cover with his application even before he has actually commenced commercial use of the mark in the Philippines on such classes of goods or services. -a trademark owner need only file a single application for the registration of the mark covering several classes of goods or services whether they belong to one class or to several classes of the Nice Classification. National Treatment Principle as regards the protection of industrial property, each country party to the Paris Convention must grant the same protection to nationals of the other member country as it grants to its own nationals The same principle must be granted to nationals of countries which are not party to the Paris Convention if they are domiciled in a member country or if they have a real and effective industrial commercial establishment in such a country. GR: National Treatment Principle XPN: Judicial and Administrative procedures, this may be invoked against foreigners who are nationals of member countries. Example: 1|Page deposit of sum of money for security or as a bail for costs of litigation Right of Priority on the basis of a regular application for an industrial property filed by a given applicant in one of the member countries, the same applicant may apply for protection in all the other member countries. These later applications will then be regarded as if they had been filed on the same day as the earliest application o Right of priority may be transferred to a successor in title without transferring at the same time the first application itself. This allows in particular also the transfer of the right of priority to different persons for different countries, a practice quite common. Withdrawal, abandonment or rejection of the first application does not destroy its capacity to serve as a priority basis. The right subsists even where the first application generating that right no longer exists.

Length of priority periods: 1. Patents for invention and utility models 12 months 2. Industrial designs and trademarks 6 months Main features of the Trade-Related Intellectual Property Rights: 1. Standards sets out the minimum standards of protection to be provided by each Member to the nationals of other members. Subject matter, rights and duration are explained

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY 2. Enforcement deals with procedures and remedies for the enforcement of intellectual property rights 3. Dispute settlement procedural aspect of settling disputes explained sThe TRIPS Agreement is a minimum standards agreement, which allows Members to provide more extensive protection if they so wish o National Treatment Clause forbids discrimination between a Members own nationals and the nationals of other Members, while the mostfavored-nation-clause forbids discrimination between nationals of other members

CHAPTER 1 TRADEMARKS IN GENERAL

Mark any visible sign capable of distinguishing the goods or services of an enterprise and shall include a stamped or marked container of goods Tradename name or designation identifying or distinguishing an enterprise IP Code does not provide for registration of trade names, however, it shall still be protected against unlawful act committed by third parties Collective Mark any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark Functions of Trademarks: 1. Economic Function trademarks serve as an essential means of distinguishing the products of one manufacturer or dealers from those of others 2. Source-indicating Function to indicate the source or origin of the goods on which it is used. Its immediate object is to distinguish the goods of one manufacturer from those of his competitors through the association of goods thus marked with a particular producer 3. Guarantee Function trademark serve to guarantee that the product to which it is affixed comes up to a certain standard of quality BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

Trademarks any sign, or any combination of signs, capabale of distinguishing the goods and services of one undertaking from those other undertakings, must be eligible for registration as a trademark, provided that it is visually perceptible. Where signs are not inherently capable of distinguishing the relevant goods or services, there is another requisite, distinctiveness should have been acquired through use. Proof of actual use should be filed within 3 years. Geographical Indications indications which identify a good as originating in the territory of a Member, or a region or locality in that territory where a given quality, reputation or other characteristic of a good is essentially attributable to its geographical origin.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY 4. Advertisement Function the more widely advertised the product is, the more readily may courts concede that it has become distinctive of its proprietors goods o A trademark proprietor must ensure that the trademark he is opting to register is registrable and that it will receive the broadest protection that the law can grant. To be registrable, the trademark must have a visible sign capable of distinguishing the goods or services of an enterprise It conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it or does not know it exists. Example: The word Lyceum for an educational institution is merely descriptive of its purpose and its first user may not prohibit others from using the word to apply to their school of learning Fanciful or Arbitrary Marks word or picture that is in common linguistic use but which, when used in connection with certain goods or services neither suggests nor describes any quality or characteristic of those particular goods or services. They are inherently distinctive and need no proof of secondary meaning. It is not only the safest but also the strongest mark, since every infringer is suspected of attempting to capitalize upon the reputation and goodwill of another Suggestive Marks a word, picture, or other symbol that suggests, but does not directly describe something about the goods or services in connection with which it is used as a mark. It requires imagination, thought or perception to reach a conclusion as to the nature of the goods or services. They are registrable without proof of secondary meaning. Immoral and Scandalous Marks
123.1. A mark cannot be registered if it: (a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; (m) Is contrary to public order or morality.

Generic Marks
123.1. A mark cannot be registered if it: (h) Consists exclusively of signs that are generic for the goods or services that they seek to identify;

A generic work is unregistrable because it totally lask distinctiveness. The mark of a product is said to be generic when it tells the buyer what the product is. It is generic when the same is the actual name of the product. It is regarded by law as free for all to use. When a generic term is made part of an otherwise registrable mark, it must be disclaimed before the composite mark may be registered. The basic purpose of the disclaimer it to make a record that a significant element of a composite mark is not being exclusively appropriated by itself apart from the composite. Descriptive Marks
123.1. A mark cannot be registered if it: (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services;

Scandalous means shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation. BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY Disparaging Marks

123.1. A mark cannot be registered if it: (a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;

of a person or an institution, and that it would be recognized as such 2. It must be clear that such person or institution is not connected with the goods sold or services performed by the applicant under mark 3. It must be shown that the fame or reputation of the person or institution is such that, when the mark is used with the applicants goods or services, a connection with the person would be presumed National Flag or Coat of Arms
123.1. A mark cannot be registered if it: (b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof;

A party acquires a protectable interest where the name or equivalent designation is unmistakable associated with, and points uniquely to that partys personality or persona. Persons refer to real persons not fictitious persons. It also includes juridical persons. For natural persons, it may be applicable for living and dead. However, there shall be no one to assert when a person is already dead. As to juridical persons, it need not be well known to assert the right of protection. National Symbol subject matter of unique and special significance which, because of its meaning, appearance and/or sound, immediately suggests or refers to the country for which it stands Elements of Disparagement: 1. The communication reasonably would be understood as referring to the plaintiff 2. Communication is disparaging and would be considered offensive or objectionable by a reasonable person of ordinary sensibilities False suggestion of a connection: 1. The examining attorney must show that the mark is the same as, or a close approximation of, the name or identity

These symbols should be reserved for their respective nations use. They are excluded from commercial use. Name, Portrait and Signature Marks
123.1. A mark cannot be registered if it: (c) Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow;

Written consent should be obtained to register as well as to use. Conflict with Marks with Filing Dates
123.1. A mark cannot be registered if it: (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: (i) The same goods or services, or (ii) Closely related goods or services, or (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY Confusing Similarity If the competing trademarks contain the main or essential or dominant features of another, and the confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate. The ordinary customer does not scrutinize details of the label; he forgets and overlooks these, but retains a general impression, or a central figure, or a dominant characteristic. Consent Agreement agreement in which a party, such as a prior registrant, consents to the use and/or registration of a mark by another party, like an applicant for registration of the same mark or a similar mark. An applicant must submit a consent agreement to overcome a bar to registration under the IP Code or in anticipation of such refusal to register. o Goods or services do not need to be identical or competitive to justify a determination that there is likelihood of confusion Similarity in appearance is one consideration in determining whether there is a likelihood of confusion between marks. Marks may be confusingly similar in appearance notwithstanding the addition, deletion or substitution of letters or words
other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark; (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use;

A member state is not obliged to protect well known marks which have not been used in its territory but will be free to do so In a trademark litigation between Shangri-la International chain of hotels and a small restaurant in QC, the local user prevailed based on its earlier use of Shangri-law as a mark for its restaurant before the Shangri-la constructed its first hotel in the Philippines in 1987 Well-known marks are entitled to broader protection under the regime of IP code than the former Trademark Law Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark

Confusing Similarity with Well-Known Marks

123.1. A mark cannot be registered if it: (e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person

Nonfunctional design feature serves no utilitarian purpose. If a trademark examiner determines that a configuration is nonBETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY functional, he or she should proceed with the analysis regarding distinctiveness. Merely De Facto Functional product, container or feature of either the product or its container is directed to the performance of a function De Jure Functional configuration is functional as a matter of law (legal conclusion). That which provides a competitive advantage to the user. Color Marks
123.1. A mark cannot be registered if it: (l) Consists of color alone, unless defined by a given form

If the color itself is functional, it cannot be considered part of a protectable trade dress of a product and will not be considered in determining whether unfair competition has been committed by the defendant. Secondary Meaning

Deceptive Marks
123.1. A mark cannot be registered if it: (g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;

They are absolutely not registrable because they defeat the principal purpose of trademarks of indicating the origin of its use. Customary Indications
123.1. A mark cannot be registered if it: (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services;

123.1. A mark cannot be registered if it: (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services; (k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value; (l) Consists of color alone, unless defined by a given form

The provisions cited may still be registered provided that it has been use for a long period of time and with exclusivity. It is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article of the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in the trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product. CHAPTER 1 ACQUISITION OF RIGHT IN MARKS Since it is trade and not the mark that is to be protected, a trademark acknowledges no territorial boundaries of municipalities or states or nations, but extends to every market where

Functional Marks
123.1. A mark cannot be registered if it: (k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value

First issue is functionality and the second issue is distinctiveness. Levels of Functionality: non-functional, merely de facto functional, and de jure functional 6|Page

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY the traders goods have become known and identified by the use of the mark. o o In determining whether a trademark is well known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark Prior use must be trademark use in the legal and protectable sense A certificate of registration is a prima facie proof of the validity of the registration, the registrants ownership of the mark, and of the registrants exclusive right to use the same in connection with the goods and services and those that are related thereto specified in the certificate In determining whether a trademark registration should be a bar to the registration of the identical or similar trademark, the courts have formulated the doctrine of related goods. They are related when they belong to the same class or have the same descriptive properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality Well-known marks are entitled to protection in the Philippines whether or not they are registered in this State The actual use is not necessary for wellknown trademarks. As opposed to a o local trademark that needs registration first Non-use of a mark may be excused if caused by circumstances arising independently of the will of the trademark owner. Lack of funds shall not excuse non-use of trademarks Trademark owners who fail to exercise necessary control over its licensees or franchises may be found to have abandoned its right in its mark Use of the mark by related company to the registrant is a proof of use. When an applicant exercises appropriate control, the use of the mark by a related company inures to the applicants benefit and the mark may be registered in the name of the applicant

Related company includes any person whose use of the mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used o The only proper party to apply for registration is the owner of the mark The only marks that may abandon registration of marks are well-known marks Failure to commence the use of the mark within 3 years from the filing date of the application amounts to abandonment, which allows other parties to apply for the same mark To work on an abandonment, it must be intentional and voluntary

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY CHAPTER 4 REGISTRATION OF RIGHTS FIRST-TO-FILE AND FIRST-TO-USE
Section 122. How Marks are Acquired. - The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. (Sec. 2-A, R A. No. 166a) interests of the owner of the registered mark are likely to be damaged by such use;

Mere registration without actual use does not lead to acquisition of trademark rights since the applicant or registrants failure to use the mark in commerce within three years from the filing date of the application leads to the rejection of the application or to the cancellation of the registration if the certificate has been issued. A mark cannot be registered if it is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: o The same goods or services, or o Closely-related goods or services, or o If it nearly resembles such a mark as to be likely to deceive or cause confusion.
123.1. A mark cannot be registered if it: (e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark; (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the

Account shall be taken of the knowledge of the relevant sector of the public If the well-known mark that the first applicant copied is registered in the Philippines, his application will be rejected even if he is using the mark on goods or services which are not similar to those with respect to which registration is applied for. The owner of the well-known mark need only show that: o Use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark and o That his interests are likely to be damaged by such use

CONTENTS OF DECLARATION OF USE The declaration shall be: o Under oath; o Must refer to only one application or registration; o Must contain the name and address of the applicant or registrant declaring that the mark is in actual use in the Philippines; o List the goods where the mark is attached; o List the name/s and the exact locations of the outlet/s where the products are being sold or where the services are being rendered; o Recite sufficient facts to show that the mark described in the application or registration is being actually used in the Philippines; o Specifying the nature of such use. SINGLE REGISTER UNDER THE IPC The single register of marks under the IPC accommodates application for the registration of which are ordinarily precluded for lack of distinctiveness, once they have acquired secondary meaning. BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY OWNERSHIP AS BASIS OF REGISTRATION The term owner does not include the importer of the goods bearing the trademark, trade name, service mark, or other mark of ownership, unless such importer is actually the owner thereof in the country from which the goods are imported. There is nothing in the statute which remotely suggests that who merely sells a manufacturers goods bearing the manufacturers mark acquires any rights in the mark; nor is there anything in the statute which suggests that such a person may register a mark which his supplier has adopted and used to identify his goods. Since the IPC seeks to implement, among others, the TRIPS Agreement, the notion of registered owner does not mean that ownership is established by mere registration but that such registration establishes merely a presumptive right of ownership that cannot, under the TRIPS Agreement, prejudice any existing prior rights. EX: an exclusive distributor does not acquire any proprietary interest in the principals trademark and cannot register it in his own name unless it has been validly assigned to him. REQUIREMENTS FOR APPLICATION
Section 124. Requirements of Application. 124.1. The application for the registration of the mark shall be in Filipino or in English and shall contain the following: (a) A request for registration; (b) The name and address of the applicant; (c) The name of a State of which the applicant is a national or where he has domicile; and the name of a State in which the applicant has a real and effective industrial or commercial establishment, if any; (d) Where the applicant is a juridical entity, the law under which it is organized and existing; (e) The appointment of an agent or representative, if the applicant is not domiciled in the Philippines; (f) Where the applicant claims the priority of an earlier application, an indication of: i) The name of the State with whose national office the earlier application was filed or if filed with an office other than a national office, the name of that office, ii) The date on which the earlier application was filed, and iii) Where available, the application number of the earlier application; (g) Where the applicant claims color as a distinctive feature of the mark, a statement to that effect as well as the name or names of the color or colors claimed and an indication, in respect of each color, of the principal parts of the mark which are in that color; (h) Where the mark is a threedimensional mark, a statement to that effect; (i) One or more reproductions of the mark, as prescribed in the Regulations; (j) A transliteration or translation of the mark or of some parts of the mark, as prescribed in the Regulations; (k) The names of the goods or services for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the said Classification to which each group of goods or services belongs; and (l) A signature by, or other selfidentification of, the applicant or his representative.

A non-resident foreigner may apply for trademark registration if he is a national of a national of a member country of the Paris Convention. An applicant may base its claim of ownership of a trademark or a service mark on: o Its own exclusive use of the mark; o Use of the mark entirely by a related company whose use inures to the applicants benefit; o Use of the mark both by the applicant and by a related company whose use inures to the applicants benefit. BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY In all franchise and license situations the key to ownership is the nature and extent of the control by the applicant of the goods or services to which the mark is applied. The trademark owner who fails to exercise necessary control over its licensees or franchisees may be found to have abandoned its rights in its mark. The name of the state with whose national office the earlier application was filed or if filed with an office other than a national office, the name of that office; o The date on which the earlier application was filed; o Where available, the application number of the earlier application An application with claim of priority right must be filed within 6months from the date the earliest foreign application was filed. The owner of a registration with a claim of priority cannot sue acts committed prior to the date on which his mark was registered in this country.
131.2. No registration of a mark in the Philippines by a person described in this section shall be granted until such mark has been registered in the country of origin of the applicant. 131.3. Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country: Provided, That, notwithstanding the foregoing, the owner of a well-known mark as defined in Section 123.1(e) of this Act, that is not registered in the Philippines, may, against an identical or confusingly similar mark, oppose its registration, or petition the cancellation of its registration or sue for unfair competition, without prejudice to availing himself of other remedies provided for under the law. 131.4. In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country: Provided, That any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority. (Sec. 37, R.A. No. 166a)

STATE OR DOMICILE OF APPLICANT AND ITS REAL AND EFFECTIVE COMMERCIAL ESTABLISHMENT If the applicant is a national of a member country of any convention, treaty or agreement relating to intellectual property rights, to which the Philippines also adheres, or extends reciprocal rights to Philippine nationals by law, he shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, of an intellectual property right is otherwise entitled to this Act. If the law of that country imposes any condition, restriction, limitation, diminution, requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine national seeking protection of intellectual property rights in that country, it shall reciprocally be enforceable upon nationals of said country, within Philippine jurisdiction. LAW OF INCORPORATION Where the applicant is a juridical entity, the law under which it is organized and existing must be contained in the application. APPOINTMENT OF AGENT The appointment of an agent or representative, if the applicant is not domiciled in the Philippines is necessary. CLAIM OF PRIORITY Where the applicant claims the priority of an earlier application, a declaration claiming the priority of that earlier application, together with an indication of: 10 | P a g e

CLAIM OF COLOR Where color is a material feature of the mark as used or intended to be used, the color/s employed may be actually reproduced in the drawings and facsimiles. BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY Otherwise, a statement must be made giving the name/s of the color/s claimed indicating the principal part/s of the mark which are in such color/s. Color can function as a trademark if it is used on the goods in the manner of a trademark and if the purchasing public perceives it as identifying and distinguishing the goods or services on which it is used and indicating their sources. Translation is an act, process or instance of translating as rendering from one language or representational system into another. Where the primary difference between marks is the transposition of the elements which compose the marks and where this transpositions does not change the overall commercial impression, there may be a likelihood of confusion.

TRI-DIMENSIONAL MARK Where the mark is a 3D mark, a statement to that effect must be addressed to the Director. 3D marks are those that have depth as well as height and breadth when they are used. Ex: 3D display or structure at or near the place, such as a restaurant, where the service is performed. NOTE: a slogan can function as a trademark. However, slogans that were considered to be merely informational in nature or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry were found unregistrable. REPRODUCTION AND FACSIMILLEE OF MARK If colors are not claimed, all drawings must be made with pen only or by a process which will give them satisfactory reproduction characteristics. TRANSLITERATION OR TRANSLATION OF THE MARK A translation or transliteration of the mark or of some parts of the mark must accompany the application if the mark or of some parts of the mark is/are foreign word/s, letter/s and character/s, or foreign sounding. Transliteration is an act, process or instances of representing or spelling of words, letters or characters of one language in the letters and characters of another language or alphabet. 11 | P a g e

GOODS AND SERVICES CLAIMED The names of the goods or services for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the said Classification to which each group of goods or services belongs. COLLECTIVE MARK Collective mark any visible designated as such in the application for registration and capable of distinguishing the origin or any other common characteristics, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark. SIGNATURE AND SELF-IDENTIFICATION
130.3. No attestation, notarization, authentication, legalization or other certification of any signature or other means of selfidentification referred to in the preceding paragraphs, will be required, except, where the signature concerns the surrender of a registration. (n)

POWER OF ATTORNEY Application shall contain a power of attorney if the filing is through a representative. It shall contain a sworn statement that the applicant is a small entity if such be the fact. APPLICATION SERVICES FOR SEVERAL GOODS AND

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY One application may relate to several goods and/or services, whether they belong to one class or to several classes of the Nice Classification. Where goods and/or services belonging to several classes of the Nice Classification have been included in one application, such an application shall result in one registration.
152.3. The use of a mark in connection with one or more of the goods or services belonging to the class in respect of which the mark is registered shall prevent its cancellation or removal in respect of all other goods or services of the same class. 133.4. An abandoned application may be revived as a pending application within three (3) months from the date of abandonment, upon good cause shown and the payment of the required fee.

PROSECUTION OF APPLICATION An application for registration is prosecuted ex parte by the applicant. No attention shall be paid to ex parte statements or protests of persons concerning pending applications to which they are not parties, unless information of the pendency of the application shall have been voluntarily communicated by the applicants. MANNER OF EXAMINATION OF AN APPLICATION FOR REGISTRATION Applications shall be examined for registrability in the order in which the complete requirements for grant of filing date are received by the office. DISCLAIMERS
Section 126. Disclaimers. - The Office may allow or require the applicant to disclaim an unregistrable component of an otherwise registrable mark but such disclaimer shall not prejudice or affect the applicant's or owner's rights then existing or thereafter arising in the disclaimed matter, nor such shall disclaimer prejudice or affect the applicant's or owner's right on another application of later date if the disclaimed matter became distinctive of the applicant's or owner's goods, business or services. (Sec. 13, R.A. No. 166a)

FILING DATE
Section 127. Filing Date. - 127.1. Requirements. The filing date of an application shall be the date on which the Office received the following indications and elements in English or Filipino: (a) An express or implicit indication that the registration of a mark is sought; (b) The identity of the applicant; (c) Indications sufficient to contact the applicant or his representative, if any; (d) A reproduction of the mark whose registration is sought; and (e) The list of the goods or services for which the registration is sought. 127.2. No filing date shall be accorded until the required fee is paid. (n)

EXAMINATION OF APPLICATION
124.4. If during the examination of the application, the Office finds factual basis to reasonably doubt the veracity of any indication or element in the application, it may require the applicant to submit sufficient evidence to remove the doubt. (Sec. 5, R.A. No. 166a) 133.3. If after the examination, the applicant is not entitled to registration for any reason, the Office shall advise the applicant thereof and the reasons therefor. The applicant shall have a period of four (4) months in which to reply or amend his application, which shall then be reexamined. The Regulations shall determine the procedure for the re-examination or revival of an application as well as the appeal to the Director of Trademarks from any final action by the Examiner.

PURPOSE: to make of record, that a significant element of a composite mark is not being exclusively appropriated apart from the composite. The following portions of a mark when forming part of the composite mark, must be disclaimed to permit registration, namely: a) A generic term; b) A descriptive matter in the composite mark; and BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY c) A matter which does not function as a trademark, or service mark or a trade name. A disclaimer does not remove the disclaimed matter from the mark. The mark must still be regarded as a whole, including the disclaimed matter, in evaluating similarity to other marks. An Examiners action, which is awaiting a response by the applicant, shall not be subject to suspension. PUBLICATION FOR OPPOSITION
133.2. Where the Office finds that the conditions referred to in Subsection 133.1 are fulfilled, it shall upon payment of the prescribed fee, forthwith cause the application, as filed, to be published in the prescribed manner. Section 134. Opposition. - Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application. Such opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts, and shall specify the grounds on which it is based and include a statement of the facts relied upon. Copies of certificates of registration of marks registered in other countries or other supporting documents mentioned in the opposition shall be filed therewith, together with the translation in English, if not in the English language. For good cause shown and upon payment of the required surcharge, the time for filing an opposition may be extended by the Director of Legal Affairs, who shall notify the applicant of such extension. The Regulations shall fix the maximum period of time within which to file the opposition. (Sec. 8, R.A. No. 165a)

INTERVIEW WITH THE EXAMINER Interview with the Examiners concerning applications pending before the office can be held only upon written request specifying the query he would want to propound and after payment of the required fee, but in respect of which the Examiner has thee discretion to grant the interview or instead a reply to the query in writing. Interviews for the discussion of pending applications shall not be held prior to the first official action thereon. ABANDONMENT If an applicant fails to respond within the period given counted from the mailing date of an action of the Examiner, the application shall be deemed abandoned as of the day immediately following the last day of the aforesaid period. A request to revive an abandoned application must be accompanied by a statement of the causes of the delay in submitting the complete response and by the proposed response, unless the same has been previously filed. Any application not revived within the specified time will be deemed forfeited upon the expiration of the 3-month revival period. SUSPENSION AND PROVISIONAL ALLOWANCE Action by the Bureau may be suspended upon written request of the applicant for good and sufficient cause, for a reasonable time specified and upon payment of the required fee. 13 | P a g e

CERTIFICATE OF REGISTRATION
Section 138. Certificates of Registration. - A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and of the registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. (Sec. 20, R.A. No. 165) Section 139. Publication of Registered Marks; Inspection of Register. - 139.1. The Office shall publish, in the form and within the period fixed by the Regulations, the marks registered, in the order of their registration, reproducing all the particulars referred to in Subsection 137.2. 139.2. Marks registered at the Office may be inspected free of charge and any person may obtain copies thereof at his own expense. This provision shall also be applicable to transactions recorded in respect of any registered mark. (n)

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registration that requires republication of the mark. (n)

VOLUNTARY CANCELLATION
Section 140. Cancellation upon Application by Registrant; Amendment or Disclaimer of Registration. - Upon application of the registrant, the Office may permit any registration to be surrendered for cancellation, and upon cancellation the appropriate entry shall be made in the records of the Office. Upon application of the registrant and payment of the prescribed fee, the Office for good cause may permit any registration to be amended or to be disclaimed in part: Provided, That the amendment or disclaimer does not alter materially the character of the mark. Appropriate entry shall be made in the records of the Office upon the certificate of registration or, if said certificate is lost or destroyed, upon a certified copy thereof (Sec. 14, R.A. No. 166)

RENEWAL OF REGISTRATION
Section 146. Renewal. - 146.1. A certificate of registration may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of a request. The request shall contain the following indications: (a) An indication that renewal is sought; (b) The name and address of the registrant or his successor-in-interest, hereafter referred to as the "right holder"; (c) The registration number of the registration concerned; (d) The filing date of the application which resulted in the registration concerned to be renewed; (e) Where the right holder has a representative, the name and address of that representative; (f) The names of the recorded goods or services for which the renewal is requested or the names of the recorded goods or services for which the renewal is not requested, grouped according to the classes of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the said Classification; and (g) A signature by the right holder or his representative. 146.2. Such request shall be in Filipino or English and may be made at any time within six (6) months before the expiration of the period for which the registration was issued or renewed, or it may be made within six (6) months after such expiration on payment of the additional fee herein prescribed. 146.3. If the Office refuses to renew the registration, it shall notify the registrant of his refusal and the reasons therefor. 146.4. An applicant for renewal not domiciled in the Philippines shall be subject to and comply with the requirements of this Act. (Sec. 15, R.A. No. 166a)

CORRECTION OF IP OFFICE MISTAKE

Section 142. Correction of Mistakes Made by the Office. - Whenever a material mistake in a registration incurred through the fault of the Office is clearly disclosed by the records of the Office, a certificate stating the fact and nature of such mistake shall be issued without charge, recorded and a printed copy thereof shall be attached to each printed copy of the registration. Such corrected registration shall thereafter have the same effect as the original certificate; or in the discretion of the Director of the Administrative, Financial and Human Resource Development Service Bureau a new certificate of registration may be issued without charge. All certificates of correction heretofore issued in accordance with the Regulations and the registration to which they are attached shall have the same force and effect as if such certificates and their issuance had been authorized by this Act. (n)

CORRECTION OF MISTAKE OF REGISTRANT

Section 143. Correction of Mistakes Made by Applicant. - Whenever a mistake is made in a registration and such mistake occurred in good faith through the fault of the applicant, the Office may issue a certificate upon the payment of the prescribed fee: Provided, That the correction does not involve any change in the

RENEWAL BY THE OWNER The application renewal must be executed and filed by the person who is the owner of the registration. BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY registrant both the original registrant and a person who has acquired ownership through proper transfer of title: registrants successor-in-interest or the right holder. CHANGE FROM MARK AS REGISTERED The mark in connection with which the application for renewal is filed must be essentially the same as the mark that appears in the registration. A material alteration of the mark will result in refusal of the application on the ground that the mark currently in use is a new mark and that the registered mark is no longer in use. RIGHTS OF REGISTRANT
Section 147. Rights Conferred. - 147.1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. 147.2. The exclusive right of the owner of a wellknown mark defined in Subsection 123.1(e) which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use. (n) Section 148. Use of Indications by Third Parties for Purposes Other than those for which the Mark is Used. - Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of their goods or services: Provided, That such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services. (n) Section 149. Assignment and Transfer of Application and Registration. - 149.1. An application for registration of a mark, or its registration, may be assigned or transferred with or without the transfer of the business using the mark. (n) 149.2. Such assignment or transfer shall, however, be null and void if it is liable to mislead the public, particularly as regards the nature, source, manufacturing process, characteristics, or suitability for their purpose, of the goods or services to which the mark is applied. 149.3. The assignment of the application for registration of a mark, or of its registration, shall be in writing and require the signatures of the contracting parties. Transfers by mergers or other forms of succession may be made by any document supporting such transfer. 149.4. Assignments and transfers of registrations of marks shall be recorded at the Office on payment of the prescribed fee; assignment and transfers of applications for registration shall, on payment of the same fee, be provisionally recorded, and the mark, when registered, shall be in the name of the assignee or transferee. 149.5. Assignments and transfers shall have no effect against third parties until they are recorded at the Office. (Sec. 31, R.A. No. 166a)

ISSUANCE OF CERTIFICATE OF REGISTRATION

Section 136. Issuance and Publication of Certificate. - When the period for filing the opposition has expired, or when the Director of Legal Affairs shall have denied the opposition, the Office upon payment of the required fee, shall issue the certificate of registration. Upon issuance of a certificate of registration, notice thereof making reference to the publication of the application shall be published in the IPO Gazette. (Sec. 10, R.A. No. 165)
137.2. The registration of a mark shall include a reproduction of the mark and shall mention: its number; the name and address of the registered owner and, if the registered owner's address is outside the country, his address for service within the country; the dates of application and registration; if priority is claimed, an indication of this fact, and the number, date and country of the application, basis of the priority claims; the list of goods or services in respect of which registration has been granted, with the

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indication of the corresponding class or classes; and such other data as the Regulations may prescribe from time to time.

NOTICE OF REGISTRATION
Section 158. Damages; Requirement of Notice. In any suit for infringement, the owner of the registered mark shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is likely to cause confusion, or to cause mistake, or to deceive. Such knowledge is presumed if the registrant gives notice that his mark is registered by displaying with the mark the words '"Registered Mark" or the letter R within a circle or if the defendant had otherwise actual notice of the registration. (Sec. 21, R.A. No. 166a)

DURATION OF CERTIFICATE OF REGISTRATION\ A certificate of registration shall remain in force for ten (10) years; Provided, That, without need of any notice from the Office, the registrant shall file a declaration of actual use and evidence to that effect, or shall show valid reasons based on the existence of obstacles to such use, within 1 year from the 5th anniversary of the date of the registration of the mark. Otherwise, the Office shall remove the mark from the Register. CHANGE OF OWNER If the present owner is a different person or entity from the registrant of record, the owner must establish its ownership of the registration by: a) Recording papers evidencing each change of ownership and specifying where such evidence is recorded in the office; or b) Submitting other proof of the change/s of ownership (ie, material showing the transfer of title), so that the record will show that the title is the entity that has filed the affidavit.

JUSTIFIABLE NON-USE OF MARK Special circumstance may excuse non-use of the mark if caused by circumstances arising independently of the will of the trademark owner. Lack of funds shall not excuse non-use of a mark. These circumstances shall not be expected unless they are clearly beyond the control of the registrant such as the prohibition of sale imposed by government regulation. If the mark is still not in used in commerce but the registrant nevertheless believes the registration should not be cancelled, the affidavit must show the following: a) That non-use is dues to special circumstances which excuse such non-use; and b) That non-use is not due to any intention to abandon the mark. ASSIGNMENT OF MARKS
Section 149. Assignment and Transfer of Application and Registration. - 149.1. An application for registration of a mark, or its registration, may be assigned or transferred with or without the transfer of the business using the mark. (n) 149.2. Such assignment or transfer shall, however, be null and void if it is liable to mislead the public, particularly as regards the nature, source, manufacturing process, characteristics, or suitability for their purpose, of the goods or services to which the mark is applied.

FORM OOF ASSIGNMENT OF ANY OTHER INSTRUMENT AFFECTING THE TITLE AND OF THE LICENSE
149.3. The assignment of the application for registration of a mark, or of its registration, shall be in writing and require the signatures of the contracting parties. Transfers by mergers or other forms of succession may be made by any document supporting such transfer. 149.4. Assignments and transfers of registrations of marks shall be recorded at the Office on payment of the prescribed fee; assignment and transfers of applications for registration shall, on payment of the same fee, be provisionally

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recorded, and the mark, when registered, shall be in the name of the assignee or transferee. requirements of Section 127, the Office shall examine whether the application meets the requirements of Section 124 and the mark as defined in Section 121 is registrable under Section 123. 133.2. Where the Office finds that the conditions referred to in Subsection 133.1 are fulfilled, it shall upon payment of the prescribed fee, forthwith cause the application, as filed, to be published in the prescribed manner. 133.3. If after the examination, the applicant is not entitled to registration for any reason, the Office shall advise the applicant thereof and the reasons therefor. The applicant shall have a period of four (4) months in which to reply or amend his application, which shall then be reexamined. The Regulations shall determine the procedure for the re-examination or revival of an application as well as the appeal to the Director of Trademarks from any final action by the Examiner. 133.4. An abandoned application may be revived as a pending application within three (3) months from the date of abandonment, upon good cause shown and the payment of the required fee. 133.5. The final decision of refusal of the Director of Trademarks shall be appealable to the Director General in accordance with the procedure fixed by the Regulations. (Sec. 7, R.A. No. 166a)

A NEW CERTIFICATE OF REGISTRATION A recorded assignee iss considered owner on record and therefore will be recognized in actions before the Patent office. An assignee has the legal capacity to initiate a complaint for trademark infringement. REGISTRATION OF TRADE NAMES AND CORPORATE NAMES A name or designation may not be used as a trade name if by its nature or the use to which such name or designation may be put, it is contrary to public order or morals and if, in particular, it is liable to deceive trade circles or the pubic as to the nature of the enterprise indentifies by that name. A corporations right to use its corporate and trade name is a property right, a right in rem, which it may assert and protect against the world in the same manner as it may protect its tangible property, real or personal, against trespass or conversion.

CHAPTER 5 PROTECTION OF TRADEMARKS INTRODUCTION A prudent trademark proprietor who has carefully selected his trademark would find it necessary to protect his trademark and its goodwill against erosion through unauthorized uses by others. This chapter deals with the legal and practical steps to protect his investment. It will deal first with the proper use of trademarks and consider legal remedies available to a trademark proprietor. OPPOSITION PROCEEDING
Section 133. Examination and Publication. 133.1. Once the application meets the filing

-under section 133, when the application meets the requirements under section 127 and 124, upon payment of the prescribed fee, be published in the manner prescribed. -first stage is publication after its allowance, such decision of the Director ordering publication cannot have finality, such decision is merely provisional -second step: hearing and trial where the public may take part
Section 134. Opposition. - Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application. Such opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts, and shall specify the grounds on which it is based and include a statement of the facts relied upon. Copies of certificates of registration of marks registered in

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other countries or other supporting documents mentioned in the opposition shall be filed therewith, together with the translation in English, if not in the English language. For good cause shown and upon payment of the required surcharge, the time for filing an opposition may be extended by the Director of Legal Affairs, who shall notify the applicant of such extension. The Regulations shall fix the maximum period of time within which to file the opposition. (Sec. 8, R.A. No. 165a)

-under section 134, any person who believs that he would be damaged by the registration of a mark may, upon payment of the required fee and within 30 days after the publication, file with the office an opposition to the application. -section 133, subjects an application for registration of a mark to certain conditions of register ability, including the issue of confusing similarity with other registered trademarks EXISTING PRIOR RIGHTS Section 236. Preservation of Existing Rights. Nothing herein shall adversely affect the rights on the enforcement of rights in patents, utility models, industrial designs, marks and works, acquired in good faith prior to the effective date of this Act. (n) -this section precludes any adverse effect arising from the enforcement of rights in marks that have been acquired in good faith prior to the effective date of the act *case: Developers' Group of Companies, Inc. vs. Shangri-la international hotel management, inc. upheld the rights acquired by a local restaurant to the mark shangrila against the hotels and the certificate of registration of the restaurant is a prima facie evidence of the validity of the registration, the registtrant's ownership of the mark or trade name -prior mark must also be trademark us win the legal and protectable sense, prior use by one will controvert a claim of legal appropriation, by subsequent users. RIGHTS ARE ACQUIRED ON THE BASIS OF USE 18 | P a g e

The TRIPS Agreement reaffirms the continuing applicability of the Paris Convention, which recognizes that trademark rights are available on the basis of actual use. Prior use under the agreement is used in the context of an express recognition that member countries may make "rights available on the basis of use". The requirement that such prior rights must be existing to be entitled to protection necessarily imports the notion of unabandoned trademark rights. Prior user may file an opposition to the registration of a mark in the name of another. OPPOSER AS PARTY DAMAGED -see section 134 above -the element of damage must be understood in light of the corollary provision tha the opposed must consist of a similar mark that is registered in the Philippines FOREIGN TRADEMARKS AS BASIS FOR OPPOSITION Any foreign national or juridical person who meets the requirements under sects 3 and does not engage in business in the Philippines may bring a civil or administrative action for opposition, cancellation, I fringment, unfair competition, or false designation of origin and false description whether or not it is licensed to do business in the Philippines under existing laws - the court will determine the right to registration, order cancellation or rectify the register -a recurring issue in inter parties and trademark litigation is whether a person who has not used his trademark in commerce in the Philippines would be damaged by the use of his trademark by another. PERIOD FOR OPPOSITION -see section 134 -opposition must be filed within 30 days after the publication of the trademark

BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY -regulations will fix the maximum period of the time within which to file the opposition -however, in no case shall the period within which to file the verified opposition exceed four months from the date of release of the IPO gazette the mark being opposed -if filing of notice falls on a Saturday, Sunday or holiday, non-working holiday as may be declared by the president of the Philippines or on the day the office is closed, it shall be moved to the immediately. Following working day SERVICE OF NOTICE OF OPPOSITION, RULES OF PROCEDURE -upon filing of the opposition, the office shall serve topics of the filing on the applicant, and of the date of the hearing thereof upon the applicant and opposer -rules of procedure primarily apply in the conduct of hearing of interprets cases, rules of court apply suppletorily OPPOSITION AND EVIDENCE -everything shall be filed with the bureau of legal affairs provided that in the case of public document certified copies shall be allowed in Lieu of originals -the bureau shall MOTU PROPRIO dismiss the case outright due to lack of jurisdiction, improper venue, and failure to state cause of action ANSWER -within 3 days from receipt of the petition or opposition, the bureau shall issue an order FRO the respondent to file an answer together with the affidavitsof witnesses and originals of documents, and shall notify all parties required -respondent shall file an answer within 30 days from receipt of the notice to answer together with duly marked affidavits and other documents PRELIMINARY CONFERENCE -shall be conducted within 45 days but not less than 30 days from receipt of the lastpleading for the following purposes: A) submission of the case for mediation under applicable laws, rules and regulations on mediation B) possibility of an amicable settlement C) clarification of issues SUBMISSION FOR DECISION -after the lapse of the reglementary period provided in section 14.3, hearin officer shall order for it to be submitted for decision, decision shall be made by the director within 45 days from the date on which the case was submitted for decision. APPEAL TO THE DIRECTOR GENERAL -the decision or order of the director of the committee of three shall become final and executory 30 days after receipt of a copy thereof by the appellant or appellants unless, within the said period, a motion for reconsideration is filed with the director or an appeal has been perfected -provided that only 1 motion for reconsideration shall be allowed, if denied the appellant or appellants has or have the balance of the period prescribed above within which to file the appeal -the decision or order of the director general shall be final and executory 15 days after receipt of a copy thereof by parties unless appealed to the court of appeals in ccordance with the rules of court -appeal shall not stay the decision -no motion for reconsideration for order or decision of director general will be allowed CANCELLATION PROCEEDINGS
Section 151. Cancellation. - 151.1. A petition to cancel a registration of a mark under this Act may be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark under this Act as follows: (a) Within five (5) years from the date of the registration of the mark under this Act. (b) At any time, if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the

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provisions of this Act, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used. (n) (c) At any time, if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer. 151.2. Notwithstanding the foregoing provisions, the court or the administrative agency vested with jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall likewise exercise jurisdiction to determine whether the registration of said mark may be cancelled in accordance with this Act. The filing of a suit to enforce the registered mark with the proper court or agency shall exclude any other court or agency from assuming jurisdiction over a subsequently filed petition to cancel the same mark. On the other hand, the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall not constitute a prejudicial question that must be resolved before an action to enforce the rights to same registered mark may be decided. (Sec. 17, R.A. No. 166a)

PETITIONER IN CANCELLATION PROCEEDING -petitioner can be any person who believs that he will be damaged by a trademark registration -the issue is whether or not the aggrieved trademark owner would be damaged by the registration of amark in the name of another requires the court to determine whhethr the trademark involved are confusingly similar. THE REGISTERED MARK HAS BECOME THE COMMON DESCRIPTIVE NAME OF AN ARTICLE -see section 151.1 b -a registered mark shall not be deemed generic name of goods or services solely because suck mark is also used as a name of or to identify a unique product or service THE TRADEMARK HAS BEEN ABANDONED -see section 151 THE REGISTRATION WAS OBTAINED FRAUDULENTLY OR CONTRARY TO THE PROVISIONS OF THE ACT -see section 151 THE REGISTERED MARK HAS BEEN ASSIGNED, AND IS BEING USED BY THE ASSIGNEE TO MISREPRESENT THE SOURCE OF THE GOODS ON WHICH THE MARK IS USED -see section 151 CANCELLATION IS AUTHORIZED BY OTHER PROVISIONS OF THIS ACT -see section 151 -although section 145 provides that a certificate of registration shall remain in force for 10 years, it shall be cancelled by the director if the registrant ails to file a declaration of actual use and evidence to that effect or show valid reasons based on the existence of obstacles to such use, within one year from the fifth anniversary of the date of registration of the mark PERIOD FOR FILING CANCELLATION PETITION

REQUIREMENTS FOR PETITION -name and address of the petitioner as well as those of the necessary party or parties respondent -state the registration number and date of the registration sought to be cancelled -name of the registrant -statutory ground or grounds upon which cancellation is sought -ultimate acts constituting the petitioners cause or causes of action -relief sought 20 | P a g e

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY -within 5 years from the date of the registration of the mark under the act LACHES, ESTOPPEL AND ACQUIESENCE -defense of laches when interposed to an action for an injunction against unfair competition should be specially pleaded in the answer, but the authorities seem to be uniform to the effect that the defense of laches is available at the hearing without having been pleaded in any form -reason for publication is to give opportunity to third persons to oppose its registration to prevent damage or INFRINGMENT to be caused -these equitable principles cannot be invoked if person is in good faith RECONSIDERATION AND APPEALS -GR: decision or orders are final and executory 15 days after receipt of a copy thereof by party -EXCEPT: a MR is filed or an appeal has been perfected -interlocutory orders are not appealable EXECUTION OF DECISIONS PENDING APPEAL On motion of the prevailing party with notice to the adverse party, and upon filing of the approved bind, the director may, in his discretion, order execution to issue even before the expiration of the time to appeal, upon good reasons to be stated in the order. Such execution, however may be stayed by filing of an approved counter bond. JUDGMENTS, FINAL ORDERS AND ENTRY THEREOF -shall be in writing, stating clearly and distinctly the facts and the law on which it is based, signed by the director and filed with the appropriate register of the office -no motion for reconsideration was taken, the order or decision shall become final and executory NATURE OF PROCEEDINGS -inter parties proceedings are merely administrative actions we trademark INFRINGMENT and unfair competition proceedings are essentially court actions for 21 | P a g e enforcement of right or prevention or redress of a wrong -inter parties proceedings are governed by the rules in practice in inter parties case DEGREE OF PROOF In inter parties proceedings, a party need only prove his case by substantialevidence. In a civil action for trademark INFRINGMENT, a party must prove his case by preponderance of evidence AVAILABLE REMEDIES -inter partes case:available remedies are either rejection of the rival application or the cancellation of a trademark registration, application may be refused -trademark registration or INFRINGMENT: the court has statutory power to order cancellation of registrations, or restore such TRADEMARK INFRINGMENT Section 155. Remedies; Infringement. - Any person who shall, without the consent of the owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or 155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether

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there is actual sale of goods or services using the infringing material. (Sec. 22, R.A. No 166a) induce the false belief that such person is offering the services of another who has identified such services in the mind of the public; or (c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods, business or services of another. 168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis. (Sec. 29, R.A. No. 166a)

TEST OF DOMINANCY -the test of DOMINANCY is adopted over the holistic approach (section 155.1) -DOMINANCY test: focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion -holistic test: requires the court to consider the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity UNFAIR COMPETITION
Section 168. Unfair Competition, Rights, Regulation and Remedies. - 168.1. A person who has identified in the mind of the public the goods he manufactures or deals in, his business or services from those of others, whether or not a registered mark is employed, has a property right in the goodwill of the said goods, business or services so identified, which will be protected in the same manner as other property rights. 168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor. 168.3. In particular, and without in any way limiting the scope of protection against unfair competition, the following shall be deemed guilty of unfair competition: (a) Any person, who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose; (b) Any person who by any artifice, or device, or who employs any other means calculated to

IMITATION OF PRODUCT FEATURES - imitating product features is a more insidious form of unfair competition where the unauthorized user copies the features of the product that attract consumers while employing a distinguishable mark ELEMENTS OF TRADEMARK INFRINGMENT -use in commerce any reproduction, counterfeit, copy of COLORABLE imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive or -reproduce, counterfeit or copy or COLORABLE imitate a registered mark, or a dominant feature thereof and apply such reproduction to labels, signs, prints, etc. (section 155) THE TRADEMARK INFRINGED HAS BEEN REGISTERED -section 155 and 147 - in ase the registered is a well known mark, under section 123, the exclusive right of the owners hall extend to goods or services which are not similar to those in respect of which the mark is registered:provided that use of that mark in relation to those goods and services and the owner of the registered trademark: provided further, that the interests of the owner of the registered mark are likely to be damaged by such use.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY THE INFRINGER HAS NOT OBTAINED THE CONSENT OF THE REGISTERED OWNER OF THE MARK -section 155 of the intellectual property code retains the element of absence of consent of the registrant -the statutory definition of INFRINGMENT implies that only registered trade marks, trade names and service marks are protected against INFRINGMENT or unauthorized, hence, actionable, if it is done, without the consent of the owner of the registered trademark THE INFRINGING MARK IS REPRODUCTION, COUNTERFEIT, COPY OR COLORABLE IMITATION OF THE TRADEMARK INFRINGED -a close resemblance between the two trademarks would be sufficient to constitute INFRINGMENT under the law -COLORABLE imitation is deemed sufficient for an INFRINGMENT THE REPRODUCTION OR COLORABLE IMITATION OF THE REGISTERED MARK OR TRADE NAME IS USED IN CONNECTION WITH THE SALE, OFFERING FOR SALE OR ADVERTISING OF ANY GOODS, BUSINESS OR SERVICE -mere fact that a merchant owns a trademark, which he uses in selling goods of a certain kind, does not in any wise incapacitate him from maintains an action for unfair competition in respect of the sale of similar goods by a competitor; andofcourse one who fails to establish the exclusive property right which is necessary to the validity of a trademark may yet in an appropriate case obtain relief on the ground of unfair competition. THE USE OR APPLICATION OF THE INFRINGING MARK OR TRADE NAME IS LIKELY TO CAUSE CONFUSION OR MISTAKE OR DECEIVE PURCHASERS -when section 155 speaks of confusion, it could refer either to confusion of goods or confusion of origin. FILTRATION APPROACH In actions for infringemtn or unfair competition, the courts first filter or screen out the unregistrable elements of trademarks before applying the tests in determining confusing similarity of marks -these elements of trademarks must be eliminated because they are either nondistinctive or incapable of exclusive appropriation GENERIC MARKS -- mark that totally lacks distinctiveness -regarded by law as free for all to use COLOR -color alone unless displayed in a distinct or arbitrary design does not function as a trademark -however, where color is itself functional, it cannot be considered part of a protectable trade dress of a product and will not be considered in determining whether unfair competition has been committed by the defendant ORDINARY WORKS Ordinary works used in their dictionary sense may not function as trademarks and must be filtered out in determining confusing similarity of trademarks DESCRIPTIVE TRADEMARKS -descriptive terms must also be filtered out since they may be used by everyone to describe the product adequately and cannot be monopolized by a single user. SUGGESTIVE TRADEMARKS Descriptive trademark serves to tell what the product is, a sa ggestive trademark gives a hint as to the quality or nature of the product, therefore can be distinctive and registrants WORD-ANALYSIS ALIKES APPROACH AND SOUND

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY Although in determining whether the trademarks are confusingly similar a comparison of the words is not the only determinant factor, the supreme court has taken it into account together with other relevant factors in concluding that trademarks are or are not confusingly similar. NATURE OF THE GOODS AND CHANNELS OF TRADE Another factor that shows that the goods involved are non-competitive and non-related is the fact that the goods bearing the trademark flow through different channels of trade -there is a marked distinction between oil and tobacco, as well as between petroleum and cigarettes PURCHASER'S ATTITUDE -true test of unfair competition is whether certain goods have been intentionally clothed with an appearance which is likely to deceive the ordinary purchaser exercising ordinary care, and not whether a certain limited class of purchasers with special knowledge not possessed by the ordinary purchaser could avoid mistake by the exercise of this special knowledge CLASS OF GOODS Although two non-competing articles maybe classified under two different classes by the patents drive because they are deemed not to possess the same descriptive properties, they would nevertheless, be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trademarks, would be likely to cause confusionas to origin, personal source,mof the second users goods. UNFAIR COMPETITION -consist in passing off or attempting to pass off upon the public the goods or business in such a manner that there is either an express or implied representation to that effect FORMS OF UNFAIR COMPETITION 24 | P a g e -see section 168 ELEMENTS OF UNFAIR COMPETITION 1. Person complained of shall have given to his goods the general appearance of the goods of the complaining party, either in the wrapping of the packages in which they are contained, or the devices or words thereon or in any other feature of their appearance which would be likely to influence purchasers to believe that the goods offered are those of the complaining party 2. That the person complained of should have clothed the goods with such appearance for the purpose of deceiving the ubic and defrauding the complaining party of his legitimate trade REPUTATION OF PLAINTIFF'S GOODS A plaintiff in an unfair competition action must show that his goods have acquired goodwill and reputation among consumers. Goodwill is easily damaged, and is easily vulnerable to assault, through the brand that symbolizes it THE ELEMENT OF PASSING OFF In order to prove a case of unfair competition, it is sufficient to show that such deception will be the natural and probable result of defendants acts. JUDGUNG PROBABLE CONFUSION The true test of unfair completion is whether certain goods have been intentionally clothed with an appearance which is likely to deceive the ordinary purchaser exercising ordinary care, and not whether a certain limited class of purchasers with special knowledge not possessed by the ordinary purchaser could avoid mistake Blythe exercise of this special knowledge ACTUAL COMPETITIVE SITUATION AND RELATED ISSUES Unfair competition presupposes competition of some kind

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY The doctrine is invoked when there is an actual market competition between the analogous products of plaintiff and defendant and so it has been natural enough to speak of it as the doctrine of unfair competition -there must be actual competition FALSE DESIGNATION OF ORIGIN
Section 169. False Designations of Origin; False Description or Representation. - 169.1. Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which: (a) Is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person; or (b) In commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable to a civil action for damages and injunction provided in Sections 156 and 157 of this Act by any person who believes that he or she is or is likely to be damaged by such act. 169.2. Any goods marked or labelled in contravention of the provisions of this Section shall not be imported into the Philippines or admitted entry at any customhouse of the Philippines. The owner, importer, or consignee of goods refused entry at any customhouse under this section may have any recourse under the customs revenue laws or may have the remedy given by this Act in cases involving goods refused entry or seized. (Sec. 30, R.A. No. 166a)

ENFORCEMENT OF RIGHTS AND LITIGATION NEFARIOUS EFFECT OF COUNTERFEITING The infringement is always invasive and destructive of the proprietors property right in their registered trademarks because: o Plaintiffs undeniable right to the exclusive use of their registered trademarks is effectively removed by defendants use of a confusingly similar trademark; o Plaintiffs would lose control of the reputation of their products as their reputation will depend on defendants commercial activities and the quality of defendants products; o The market in the Philippines for plaintiffs products will be preempted; o Purchasers will think that defendants goods are approved or sponsored by plaintiff; o Defendant will be allowed to benefit from the reputation of the plaintiffs goods and trademarks; o Defendant will be effectively authorized to continually invade plaintiffs property rights, for which invasion no fair and reasonable redress can be had in a court of law; and o Plaintiffs will lose their goodwill and trade and the value of their registered trademarks will be irreparably diluted and their damages to be suffered by plaintiff cannot be redressed fairly in terms of money. IDENTIFICATION OFF INFRINGING PRODUCTS The licensee or distributor has a financial interest in undertaking this duty since counterfeit products also represent a loss to him.

CRIMINAL ACTIONS
Section 170. Penalties. - Independent of the civil and administrative sanctions imposed by law, a criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging from Fifty thousand pesos (P50,000) to Two hundred thousand pesos(P200,000), shall be imposed on any person who is found guilty of committing any of the acts mentioned in Section 155, Section 168 and Subsection 169.1. (Arts. 188 and 189, Revised Penal Code)

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY Another means of identification of infringing products is for the trademark proprietor engaged in direct selling of its own products bearing the trademark to require its sales employees in their employment contracts to report immediately any instance of counterfeit product that they may encounter in the market. the court may require the allegedly aggrieved intellectual property rights holder to post a bond, conditioned upon the payment of damages which the defendant suffers as a result of the issuance of the preliminary injunction should it be eventually declared that the intellectual property rights holder is not entitled to it. EXCLUSION REGISTRATION THROUGH CUSTOMS

SEARCH WARRANT IN CRIMINAL CASES Under the TRIPS Agreement, Members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity. Under the TRIPS Agreement, in order to create an effective deterrent to infringement, the judicial authorities shall have the authority to order that goods that they have found to be infringing be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or, unless this would be contrary to existing constitutional requirements, destroyed. SEARCH AND SEIZURE ORDER IN CIVIL CASES The Supreme Courts issuance of a new circular authorizing search and seizure of infringing products in pending and intended civil cases may provide a preferred provisional remedy. This is better than a writ of preliminary injunction, which allows the defendant to retain possession of the infringing products and only prohibits their further distribution. For the protection of the defendant against a preliminary injunction or other provisional remedy that has been wrongfully obtained, 26 | P a g e

Section 166. Goods Bearing Infringing Marks or Trade Names. - No article of imported merchandise which shall copy or simulate the name of any domestic product, or manufacturer, or dealer, or which shall copy or simulate a mark registered in accordance with the provisions of this Act, or shall bear a mark or trade name calculated to induce the public to believe that the article is manufactured in the Philippines, or that it is manufactured in any foreign country or locality other than the country or locality where it is in fact manufactured, shall be admitted to entry at any customhouse of the Philippines. In order to aid the officers of the customs service in enforcing this prohibition, any person who is entitled to the benefits of this Act, may require that his name and residence, and the name of the locality in which his goods are manufactured, a copy of the certificate of registration of his mark or trade name, to be recorded in books which shall be kept for this purpose in the Bureau of Customs, under such regulations as the Collector of Customs with the approval of the Secretary of Finance shall prescribe, and may furnish to the said Bureau facsimiles of his name, the name of the locality in which his goods are manufactured, or his registered mark or trade name, and thereupon the Collector of Customs shall cause one (1) or more copies of the same to be transmitted to each collector or to other proper officer of the Bureau of Customs. (Sec. 35, R.A. No. 166)

COMPLAINT It is enough that foreign corporation are allowed by law to seek redress in our courts under certain conditions; the interpretation of the law should not go so far as to include, in effect, an inference that those conditions had been met from the mere fact that the party suing is a foreign corporation. BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY To entitle an owner of a registered trademark to restrain the use of his trademark upon goods manufactured or dealt in by another, and to ask for accounting or recover damages for such infringement, the following elements must concur: o Use by another person of a reproduction, counterfeit, copy, or spurious imitation of the genuine registered trademark or a colourable imitation thereof; o Similarity in kind of the good manufactured or dealt in by such person to which the trademark is attached, to those of thee lawful owner of the registered trademark; and o Sale by such person of said goods with the trademark. If the complaint is for unfair competition, it must allege all the essential elements of unfair competition which are: o That the person complained of shall have given to his goods the general appearance of the goods of the complaining party, either in the wrapping of the packages in which they are contained, or the devices or words thereon or in any other feature of their appearance which would likely to influence purchasers to believe that the goods offered are those of the complaining party o That the person complained of should have clothed the goods with such appearance for the purpose of deceiving the public and defrauding the complaining party of his legitimate trade.
Section 161. Authority to Determine Right to Registration. - In any action involving a registered mark, the court may determine the right to registration, order the cancellation of a registration, in whole or in part, and otherwise rectify the register with respect to the registration of any party to the action in the exercise of this. Judgment and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Bureau, and shall be controlled thereby. (Sec. 25, R.A. No. 166a)

The RTC shall have exclusive original jurisdiction over, among others, cases in which the demand, exclusive of interest, damages of whatever kind, attorneys fees, litigation expenses, and costs or the value of the property in controversy exceeds P100,000.00 or, in such other cases in Metro Manila, where the demand exclusive, of the abovementioned items exceeds P200,000.00 MTC shall exercise exclusive original jurisdiction over civil actions where the amount of the demand does not exceed P100,000.00 or in Metro Manila where the amount of the demand does not exceed P200,000.00 exclusive of interest, damages of whatever kind, attorneys fees litigation expenses, and costs, the amount of which must be specifically alleged

JURISDICTION
Section 163. Jurisdiction of Court. - All actions under Sections 150, 155, 164, and 166 to 169 shall be brought before the proper courts with appropriate jurisdiction under existing laws. (Sec. 27, R.A. No. 166)

APPLICATION FOR EX-PARTE RELIEF Ex parte injunctive relief is of paramount importance since counterfeiters often employ evasive tactics to frustrate enforcement efforts against them. They are in a position to remove quickly their counterfeit goods or otherwise destroy the evidence of their infringing activities before judicial adjudication of infringement can be made and appropriate relief ordered. Ex parte TRO is to prevent immediate and irreparable harm to the movant during the period required to prepare for and conduct a hearing to determine whether a preliminary injunction should issue. BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY The exclusive right to a trademark or a trade name should be protected by injunction. A corporation has an exclusive right to the use of its name, which may be protected by injunction upon a principle similar to that upon which persons are protected in the use of trademarks and trade names.
156.4. The complainant, upon proper showing, may also be granted injunction. (Sec. 23, second par., R.A. No. 166a)

CHAPTER 7 TRADEMARK ASSIGNMENT AND LICENSING TRADEMARK ASSIGNMENT A trademark or service mark may be validly assigned only with the goodwill that is symbolized by the trademark on the theory that, as a designation of source or origin, a trademark or service mark cannot exist apart from the goodwill that it has created for the goods or services on which it is used. The purported assignee cannot rely upon the priority-of-use-date of the purported assignor and must start with a new first-use date. By requiring that the ability to carry on producing or selling the same quality of goods or services be transferred along with the mark, the rule does not guarantee continuity, but only facilitates it. FORM OF ASSIGNMENT
149.3. The assignment of the application for registration of a mark, or of its registration, shall be in writing and require the signatures of the contracting parties. Transfers by mergers or other forms of succession may be made by any document supporting such transfer. 149.4. Assignments and transfers of registrations of marks shall be recorded at the Office on payment of the prescribed fee; assignment and transfers of applications for registration shall, on payment of the same fee, be provisionally recorded, and the mark, when registered, shall be in the name of the assignee or transferee.

CLEAR RIGHT TO INJUCTIVE RELIEF In addition to establishing that he has a valid, enforceable and exclusive right to use the trademark, the proprietor must also show that the defendants products infringe on his rights. If the exterior size, shape, color and description, in other words, those things which go to make up the general outside appearance of the article, are so substantially similar as to likely deceive the ordinary purchaser exercising ordinary care, the defendant is guilty of unfair competition. DAMAGES
Section 156. Actions, and Damages and Injunction for Infringement. - 156.1. The owner of a registered mark may recover damages from any person who infringes his rights, and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made, had the defendant not infringed his rights, or the profit which the defendant actually made out of the infringement, or in the event such measure of damages cannot be readily ascertained with reasonable certainty, then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party. (Sec. 23, first par., R.A. No. 166a) 156.2. On application of the complainant, the court may impound during the pendency of the action, sales invoices and other documents evidencing sales. (n) 156.3. In cases where actual intent to mislead the public or to defraud the complainant is shown, in the discretion of the court, the damages may be doubled. (Sec. 23, first par., R.A. No. 166)

EFFECT OF VALID ASSIGNMENT A valid assignment transfers ownership of the mark to the assignee in whose favour a new trademark registration may be issued upon recordal of the assignment.
137.3. A certificate of registration of a mark may be issued to the assignee of the applicant: Provided, That the assignment is recorded in the Office. In case of a change of ownership, the Office shall at the written request signed by the

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY

owner, or his representative, or by the new owner, or his representative and upon a proper showing and the payment of the prescribed fee, issue to such assignee a new certificate of registration of the said mark in the name of such assignee, and for the unexpired part of the original period.

DEED OF ASSIGNMENT Where a valid assignment has been made, the prior rights of the assignor inure to the benefit of the assignee. LICENSING OF TRADEMARKS
Section 150. License Contracts. - 150.1. Any license contract concerning the registration of a mark, or an application therefor, shall provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used. If the license contract does not provide for such quality control, or if such quality control is not effectively carried out, the license contract shall not be valid. 150.2. A license contract shall be submitted to the Office which shall keep its contents confidential but shall record it and publish a reference thereto. A license contract shall have no effect against third parties until such recording is effected. The Regulations shall fix the procedure for the recording of the license contract. (n)

Quality control provisions in trademark license agreements are meant to protect the public regarding the quality of the licensed goods and/or services. This does not necessarily mean high quality, but merely equal quality, whether that quality is high, low, or mediocre.

GROSS LICENSING Gross licensing the situation when a trademark licensor grants permission to a licensee to use a mark without exerting sufficient control over the quality of the products and services offered under the mark. The burden of proof is on the party challenging the license. LICENSEE ESTOPPEL A trademark licensee may be stopped from challenging the validity of the licensors mark. In order to make the estoppel clear, a license agreement may expressly prohibit a licensee from challenging the validity, registration, or ownership of the mark. FRANCHISING Franchising - an arrangement whereby one person (the franchisor), who has developed a system for conducting a particular business, allows another person (the franchisee) to use that system in accordance with the prescription of the franchisor, in exchange for a consideration. The franchised system is a package comprising the intellectual property rights relating to one or more marks, trade names, industrial designs, inventions and works, protected by copyright, together with relevant know-how and trade secrets, to be exploited for the sale of goods or the provision of services to end users. MERCHANDISING Merchandising is the licensing of publicly recognizable intellectual property for use BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

It would not suffice for the owner to take the power to control quality, but never to exercise it. A trademark or service mark can therefore be validly assigned only if the licensor exercises control over the nature and quality off the goods or services sold by the licensor under the licensed mark. naked licensing- licensing of mark without adequate quality control, and bears the risk that the public will be deceived into thinking that the goods or services provided by the uncontrolled licensee are of the same general nature and quality as those previously provided or as those provided by other licensee.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY on or in association with specific products or services to foster sales. CHAPTER 8: COPYRIGHT PURPOSE The economic philosophy behind the clause empowering the Congress to grant patents and copyright is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventions in the science and the arts. OBJECTIVE: To promote the progress of science and the arts. HOW? Congress may grant to authors the exclusive rights to the fruits of their respective works. An author who possesses unlimited copyright may preclude others from copying his creations for commercial purposes without permission. In short, Congress grants a reward to the authors in the form of control over the sale or personal commercial use of copies of their works. OBJECTIVE FURTHER EXPLAINED The primary objective is not to reward the labor of the authors but to promote the progress of science and the arts. It assures authors the right to their original expression, but also encourages others to build freely upon ideas and information conveyed by a work. This is also known as the idea/expression or fact/expression dichotomy. E.G. As to a compilation, only the compilers selection and arrangement may be protected; the raw facts may be copied at will. Creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts. Immediate effect: secures a fair return to an authors creative labor. Ultimate aim: to stimulate artistic creativity for the general public good.

CHAPTER 9: DEFINITION OF TERMS UNDER SECTION 171 OF THE IPC 1. AUTHOR the natural person who has created the work. 2. COLLECTIVE WORK created by two or more natural persons at the initiative and under the direction of another with the understanding that it will be disclosed by the latter under his own name and that the contributing natural persons will not be identified. 3. COMMUNICATION TO THE PUBLIC the making of a work available to the public by wire or wireless means in such a way that members of the public may access these works from a place and time individually chosen by them. 4. PUBLIC LENDING transfer of possession of the original or a copy of a work or sound recording for a limited period, for non-profit purposes, by an institution the services of which are available to the public, such as public libraries or archives. 5. PUBLIC PERFORMANCE recitation, playing, dancing, acting or otherwise performing the work (other than audiovisual work), either directly or by means of any device or process (in case of audiovisual work), the showing of its images in sequence and the making of the sounds accompanying it audible. In case of sound recording, making the recorded sounds audible at the place/s where persons outside the normal circle of a family and that familys closest social acquaintances are or can be present, irrespective of whether or not they can be present at the same place at the same time or at different places at different times, and where the BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY performance can be perceived without the need for communication. PUBLISHED WORKS works made available to the public by wire or wireless means with the authors consent. Members of the public may access these works from a place and time individually chosen by them. Provided, that availability of the copies satisfies the reasonable requirements of the public, depending on the nature of the work. RENTAL transfer of the possession of the original or a copy of a work or a sound recording for a limited period of time, for profit-making purposes. WORK OF APPLIED ART artistic creation with utilitarian functions or incorporated in a useful article, whether made by hand or produced on an industrial scale. WORK OF THE GOVERNMENT OF THE PHILIPPINES created by an officer or employee of the Phil. Government or any of it subdivisions and instrumentalities, including GOCCs, as part of his regularly prescribed official duties. form, it has existence in a real sense, although he must take a further step in order to take his title. Hence, no copyright exists until the author causes it to be reduced into writing or material form, but once it has been so, he has a good cause of action in respect of unauthorized reproductions made after that moment. COMPETING CLAIMS INVOLVED IN COPYRIGHT The courts must occasionally subordinate the copyright holders interest in maximum financial return to the greater public interest in the development of art, science and industry. INTERPRETATION OF COPYRIGHT LAW The basic purposes of the law must be effectuated. Absurdity must be avoided.

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CHAPTER 10: ORIGINAL WORKS

Sec. 172. Literary and Artistic Works. 172.1 Literary and artistic works, hereinafter referred to as "works", are original intellectual creations in the literary and artistic domain protected from the moment of their creation and shall include in particular: (a) Books, pamphlets, articles and other writings; (b) Periodicals and newspapers; (c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or other material form; (d) Letters; (e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows; (f) Musical compositions, with or without words; (g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models or designs for works of art; (h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art;

Take note: PUBLIC LENDING is for non-profitmaking purposes; RENTAL is for profit-making purposes.

FIXATION IN A TANGIBLE MEDIUM OF EXPRESSION To clarify, a copyright work is not a material thing but is the intellectual production of the author. However, it is conceded that a copyright (the right per se) may only arise once the thoughts are fixed in material form, i.e. the result of the act. This just merely shows that fixation is a condition precedent to the subsistence of copyright. Hence, to say that the work does not exists at all before fixation is a fallacy. When a work is perfect in its authors mind but has not yet reduced into material 31 | P a g e

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(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science; (j) Drawings or plastic works of a scientific or technical character; (k) Photographic works including works produced by a process analogous to photography; lantern slides; (l) Audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings; (m) Pictorial illustrations and advertisements; (n) Computer programs; and (o) Other literary, scholarly, scientific and artistic works. 172.2. Works are protected by the sole fact of their creation, irrespective of their mode or form of expression, as well as of their content, quality and purpose.

ORIGINALITY It is both a constitutional and statutory requirement for copyright protection. A work is original if: a) Independently created by the author b) Has some minimal degree of creativity The requisite amount of creativity is relatively low. A slight amount is sufficient to invoke copyright protection. Take note: Originality is not novelty. A work resembling another is entitled to copyright so long as the similarities are not the result of illicit copying. Facts are not covered by copyright protection. However, they may be arranged or compiled in an original manner. The compilation warrants copyright protection. WORKS PROTECTED UNDER ARTICLE 2 OF THE BERNE CONVENTION Literary and artistic works, which shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as: 1) BOOKS, PAMPHLETS, ARTICLES AND OTHER WRITINGS It is the product of the mind, consisting of a series of verbal or numerical statements, not necessarily possessing aesthetic merit, capable of being expressed in writing. It does not require dancing or acting for its presentation. This is the biggest category, if not in numbers, by variety. Congress has declared these to include all forms of writing, printing, engraving, etching, by which ideas are given visible expression. Even if a work is identical to a prior work, it is considered original if it is not copied from the latter, but instead is the product of independent effort of the author.

ORIGINAL WORKS These are works eligible for copyright protection. An original work means it must originate from him; the work must have its origin in the labor of the author. The work is protected irrespective of the quality thereof. It is also not necessary that it must pass a test of imaginativeness or inventiveness. Copyright does not protect mere ideas but only the form of expression of such ideas. NOVELTY IS NOT REQUIRED All that is needed to satisfy both the Constitution and the statute is that the author contributes something more than a merely trivial variation, something recognizably his own. The right to obtain copyright depends on the originality and not upon any standard of merit (wise or foolish, accurate or inaccurate) in the subject matter. If it commands the interest of the public, it has commercial value. And whether it has an aesthetic and educational value is largely a matter of taste.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY E.G. Articles in periodicals are subject to copyright. But the news itself cannot be copyrighted. Case Law: Adaptation of Classics as per ruling in Waldman Publishing Corp. v. Landoll, Inc. Facts: Waldman publishes a line of childrens books. The books are adaptations of literary works of public domain such as Oliver Twist, Black Beauty, etc. which are in the abbreviated version. The language is simple with illustration on every other page to draw the attention of children. To make this possible, Waldman contracted with writers and artists who are credited on the front cover of the books. A copyright notice on behalf of Waldman and its seller/distributor Playmore is placed on the cover of each book. Landoll, on the other hand, also publishes childrens books called First Illustrated Classics. They contain stories similar to those adapted by Waldman, as well as illustrations adapted from the stories. The Landoll books are not exact copies of Waldman books. However, the arrangement of the chapters and the texts are the closely the same. Even the events illustrated in the stories are the same. Waldman and Playmore applied in the court for preliminary injunction and a temporary restraining order which prohibited Landoll from publishing its book. The application was granted. Issue: a) Are Waldman books which are adaptations of literary works of public domain original works? b) Are the Landoll books similar enough with Waldman books so that the formers failure to credit 33 | P a g e the latter constitutes designation of origin? false

Held: a) Yes. The Waldman books are adaptations of classic novels and hence classified as derivative works. A derivative work is copyrightable if it is sufficiently original. It requires a distinguishable variation that is more than merely trivial. The books are original because the author selected which episodes should be included in the books, redrafted the text to cater to children, and used illustrations that gave originality. In this case, only the material added to the underlying work is protected by copyright. b) Yes. The court held that the similarities between the structure, texts, and illustrations of the books compel the inference that Landoll adaptations are copies of the Waldman adaptations, with minimal changes intended to disguise the copying. 2) PERIODICALS AND NEWSPAPERS News articles are copyrightable. But copyright protection is conferred only on those elements that were original to the author. Therefore, the information respecting current events is not the creation of the author. The court must determine whether the test is a story with a degree of originality, or just a simple account, arid and impersonal, of news and miscellaneous facts. 3) LECTURES, SERMONS, ADDRESSES, AND DISSERTATIONS PREPARED FOR ORAL DELIVERY Usually known as oral works. They are protected whether or not reduced in BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY writing or other material form. If a work is not prepared for oral delivery, it cannot claim copyright protection. To be free: - It must have been delivered in public - The use must be for informatory purpose - The subject need not be news if the purpose is to allow the public to be informed of what the lecturer said. 4) LETTERS A fair and bona fide abridgement of an original work is not piracy of the copyright of the author. The abridgment must contain real, substantial, condensation of materials, and intellectual labor and judgment bestowed thereon; and not merely facile use of the scissors; or extracts of essential parts, constituting the chief value of the original work. Justice Story in Folsom v. March Case Law: J.D. Salingers Letters in Salinger v. Random House, Inc. The biographer who copies only facts incurs no risk of an injunction; he has not taken copyrighted material. And it is unlikely that the biographer will distort those facts by rendering them in words of his own choosing. The biographer has no inherent right to copy the accuracy or the vividness of the letter writers expression. Indeed, vividness of description is precisely an attribute of the authors expression that he is entitled to protect. What is protected is the manner of expression, the authors analysis or interpretation of events, the way he structures his material and marshals facts, his choice of words and the emphasis he gives to particular 34 | P a g e developments. The ordinary phrase may enjoy no protection as such, but its use in sequence of expressive words does not cause the entire passage to lose protection. And though the ordinary phrase may be quoted without fear of infringement, a copier may not quote or paraphrase the sequence of creative expression that includes such a phrase. 5) DRAMATIC OR DRAMATICO-MUSICAL COMPOSITIONS; CHOREOGRAPHIC WORKS OR ENTERTAINMENT IN DUMB SHOWS a) Dramatico-musical works combination of drama and music. It differs from dramatic compositions in that, besides a plot, characters and acting, musical and/or vocal accompaniment is also present. b) Choreographic works/Pantomime it must contain original and expressive elements to be protected. It does not include conventional gestures or social dance steps and simple routines. These works may also contain protectable matter aside from movement, like physical attitudes, the configuration of the dancers bodies, or the placement of dancers on the stage. It must also be fixed in a tangible medium to be copyrightable, like a videotape or a motion picture film. c) Musical compositions, with or without words where the music and lyrics are composed by different authors, it is considered works of joint authorship which consist of parts that can be used separately. The author of each BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY part shall be the original owner of the copyright in the part he has created. Under the Copyright Act, when music and lyrics are integrated in a single work, the copyright will protect against unauthorized use of the music alone, or of the words alone, or of a combination of music and words. With regard to originality, it has been held that although a musical theme may be suggestive of prior works, it will still be deemed original if the overall impression is of a new work. Determination of similarities involves a two-step analysis. First, there must be similarity of ideas via extrinsic analysis. Second, if there is substantial similarity in ideas, similarity of expression is evaluated intrinsically. 6 ) DRAWING, PAINTING, ARCHITECTURE, SCULPTURE It covers all artistic works whether in 2D or 3D, independent of their nature (figurative or abstract), and their intention (pure or commercial art). It does not include generic shapes. It also limits protection for the design of useful articles to those with separately identifiable features existing independently of its utilitarian aspects. a) Architectural plans are not useful articles because their only function is to portray the appearance of the article or convey information. They are copyrightable as pictorial, graphic, and sculptural works. b) Original ornamental designs or models for articles of manufacture it is considered 35 | P a g e as a work of applied art. It is an artistic creation with utilitarian functions or incorporated in a useful article, whether made by hand or produced on an industrial scale. Mazer v. Stein: If the sole intrinsic function of an article is its utility, the fact that it is unique and attractively shaped will not qualify as a work of art. However, if the shape of a utilitarian article incorporates features, such as artistic sculpture, carving, or pictorial representation, which can be identified separately and are capable of existing independently as a work of art, such features will be eligible for registration. c) Useful articles in relation to letter (b) a pictorial, graphic, or sculptural feature incorporated in the design of a useful article is conceptually separable if it can stand on its own as a work of art as traditionally conceived, and if the useful article in which it is embodied would be equally useful without it. This is the test to determine the exclusion of protection for utilitarian purposes. 7) ILLUSTRATIONS, MAPS, PLANS, SKETCHES, CHARTS For a map to be copyrightable, its preparation must involve a modicum of creative work. A mere master map from various other maps from government sources, without original surveying, calculating, or investigating is not entitled to copyright protection, even though he spent considerable time in assembling it and no other map BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY contains all the information to be found on his. Names of cities, streets, or other geographical items may be copied if such were the names by which such items are known. 8) ARTWORKS ON SWEATERS AS ORIGINAL WRITINGS Copyright works are protected irrespective of their method or means of expression. They are considered as writings for purposes of copyright law. Hence, artworks on fabrics and sweaters are copyrightable. 9) AUDIOVISUAL WORK This consists of a series of related images which impart the impression of motion, with or without accompanying sounds, susceptible of being made visible and, where accompanied by sounds, susceptible of being made audible. Elements: a) Images b) Images must be sequential; it must create an impression of motion c) It must be susceptible of being made visible and audible d) It must be intended to be shown by the use of machines or devices such as projectors, viewers or electronic equipment 10) PICTORIAL ILLUSTRATIONS A work may constitute a pictorial illustration merely by virtue of its being a picture although there is no accompanying text to be illustrated. Any work eligible for registration as a pictorial illustration could also obtain registration as a reproduction of a work of art. 11) ADVERTISING MATERIALS Pictures used for advertising purposes, if possessed of the least degree of originality or artistic merit, are the subjects of copyright. It is immaterial that the advertising matter is not offered for sale itself, but merely used to promote the sale of the articles listed in it. The copyright protection has also been extended to written advertisements. In the case of written advertisements, the protection shall only extend to those advertisements that speak the truth, and not to those that mislead and deceive the public. 12) PRINTS AND LABELS USED FOR ARTICLES OF MERCHANDISE It is copyrightable under the general protection accorded to pictorial, graphic, and sculptural works. 13) PROTECTION OF TEXTUAL MATTER OF LABELS Prints or labels are protectable under the pictorial, graphic and sculptural works category. However, short phrases placed upon labels cannot claim protection if they do not aid or augment an accompanying pictorial illustration. If a label contains textual material consisting of more than a short phrase, but is such material is dictated by functional considerations such as listing of ingredients or contents, this shall be denied copyright protection. But if the listing contains original recipe, it shall be protectable despite its functional nature. 14) CARTOON CHARACTERS A character can take a life of its own and thus may be protected against copies in postures, settings, and attitudes far removed from any in the authors original depiction. They are much like literary characters. They will BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY enjoy unauthorized exploitation of their personality and appearance. If a cartoon character also has a literary aspect, the combination of visual and literary elements will usually strengthen the characters protectable features. 15) COMPUTER PROGRAMS These shall be protected as literary works under the Berne Convention. It shall be copyrightable whether it is an application program or an operating system, whether embodied in paper, magnetic disk, tape, or semiconductor chip. 16) JUDICIAL OPINIONS The whole work of judges is free for publication to all, whether it is a declaration of unwritten law or an interpretation of a constitution or a statute. The question is one of public policy. 17) LAW REPORTS A reporter may have a copyright in a digest or synopsis of judicial decision and selection and arrangement of cases relating to a particular branch of law. 18) TEXTBOOK AND TREATISES There is protectable expression not only in the literal wording of a textbook or treatise, but also in its arrangement, style and manner of presentation. 19) NEWS STORIES, HISTORY, BIOGRAPHY These are not protected by copyright. Copyright only extends to the literal phrasing, authors original narrative style and arrangement of facts reported. The ordering of events shall not be protected if it follows the chronological order in which the incidents occurred. 20) ORIGINAL WORKS DERIVED FROM PUBLIC DOMAIN MATERIALS These works may be protected if the author, through his skill and effort, has contributed a distinguishable variation from the older works. The distinguishable variation must be substantial and not merely trivial. 21) ORIGINAL COMPILATION OF FACTS Under the originality standard, bare facts are never copyrightable because they do not owe their origin to an act of authorship. They may be freely copied. However, a compilation of facts may be copyrightable if the author made choices as to which facts to include, in what order to place them, and how to arrange the collected data. The authors selection, coordination, and arrangement of facts are protected only if they were made independently and entail a minimal degree of creativity.

CHAPTER 11: DERIVATIVE WORKS

Sec. 173. Derivative Works. 173.1. The following derivative works shall also be protected by copyright: (a) Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary or artistic works; and (b) Collections of literary, scholarly or artistic works, and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents. (Sec. 2, [P] and [Q], P. D. No. 49) 173.2. The works referred to in paragraphs (a) and (b) of Subsection 173.1 shall be protected as a new works: Provided however, That such new work shall not affect the force of any subsisting copyright upon the original works employed or any part

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thereof, or be construed to imply any right to such use of the original works, or to secure or extend copyright in such original works.(Sec. 8, P. D. 49; Art. 10, TRIPS)

DEFINITIONAL ELEMENTS First, the work must borrow original and expressive content from another work, Second, to qualify as a derivative work, the work must recast, transform, or adaptand not simply copythe work upon which it is based. SUBSTANTIALLY SIMILAR TO THE UNDERLYING WORK The new work must be so substantially similar to the underlying work that in the absence of a license, it would be a copyright infringement of the underlying work. RELATIONSHIP BETWEEN UNDERLYING COPYRIGHT AND DERIVATIVE WORK A derivative work is by definition substantially similar to the underlying work and would be a copyright infringement in the absence of a license. Thus, if the underlying work is in copyright, one who wishes to exploit the derivative work needs a copyright license from the owner of copyright in the underlying work/s. The aspects of a derivative work added by the derivative authors are that authors property, but the elements drawn from the preexisting work remains on grant from the owner of the pre-existing work. DIFFERENT KINDS OF ADAPTATION 1. TRANSLA TION This is the translation of a literary work into other languages or dialects, or to make any other version thereof. To be copyrightable as a new work, such translation of works in the public domain must have the consent of the copyright proprietor. No special notice is also required. 2. CHANGE OF MEDIUM 38 | P a g e

The work may still be original in the sense that he has employed skill and judgment in its production. The author produces the resemblance by means very different from those employed by the original author from whom he copies. Reproduction in the Same Medium there must be more than an exact reproduction to secure copyright. If the original was merely used as a model, then it is entitled to protection. 3. ADAPTATION 4. ABRIDGEMENTS OF LITERARY WORK Copyright may likewise exist in a genuine and just abridgement, for it is said than an abridgement may with great propriety be called a new book. The entire work must be preserved in its precise import and exact meaning, and then the act of abridgement is an exertion of the understanding, transforming a large work into a small compass, making it less expensive and more convenient both to the time and use of the reader. It requires the exercise of the mind, labor, skill and judgment are brought into play, and the result is not merely copying. COLLECTIVE WORK
Section 171.2. A "collective work" is a work which has been created by two (2) or more natural persons at the initiative and under the direction of another with the understanding that it will be disclosed by the latter under his own name and that contributing natural persons will not be identified;

When an author contributes to a collective work, his right to have his contribution attributed to him is deemed waived. This must be connected with:
Section 180.3. The submission of a literary, photographic or artistic work

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to a newspaper, magazine or periodical for publication shall constitute only a license to make a single publication unless a greater right is expressly granted. If two (2) or more persons jointly own a copyright or any part thereof, neither of the owners shall be entitled to grant licenses without the prior written consent of the other owner or owners. reproduction of the typographical arrangement of the published edition of the work. (n)

The protection given to publishers of works of this class is of limited character and merely restricts the making by a photographic or similar process of a reproduction of the typographical arrangement of the edition. CHAPTER 12 UNPROTECTED WORKS
Sec. 175. Unprotected Subject Matter. Notwithstanding the provisions of Sections 172 and 173, no protection shall extend, under this law, to any idea, procedure, system method or operation, concept, principle, discovery or mere data as such, even if they are expressed, explained, illustrated or embodied in a work; news of the day and other miscellaneous facts having the character of mere items of press information; or any official text of a legislative, administrative or legal nature, as well as any official translation thereof.

When the required consent is granted, the necessary changes, reproduction, presentation, or expression shall not be deemed to contravene the authors rights. TABLE OF COMPARISON: DERIVATIVE WORK, COMPILATION, and COLLECTIVE WORK DERIVATIVE COLLECTIVE COMPILATION WORK WORK It is one based on one or more preexisting works in any form in which the work may be recast, transformed, or adapted. It is a work formed by the collection and assembling of pre-existing materials or data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. It is a compilation of contributions which would themselves be capable of copyright protection.

o o

A copyright must possess at least a minimal degree of creativity A work may be copyrighted even though it is based on something already in the public domain if the author, through his skill and effort, has contributed a distinguishable variation from the older works. A distinguishable variation must be substantial and not merely trivial.

CASE: IMITATION OF EXISTING FLOWERS UNPROTECTED At issue here are asserted copyrights on ribbon flowers made of twisted ribbon that may be attached as decoration to clothing accessories. The Littles expert witnesses testified that ribbon flowers have been in existence for many years, possibly as early as the 18th century. Norma Ribbon has made and marketed them

PUBLISHERS TYPOGRAPHICAL ARRANGEMENT

Sec. 174. Published Edition of Work. In addition to the right to publish granted by the author, his heirs or assigns, the publisher shall have a copy right consisting merely of the right of

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY since the late 1940s. The Littles began manufacturing ribbon flowers in 1983. Littles developed a machine and a heat-seal process that reduced substantially the time required to produce each flower. Littles entered into an agreement to produce ribbon flowers for Norma Ribbon. For several years, Norma Ribbon provided the Littles with raw materials for the flowers, and the Littles produced the ribbon flowers under the agreement. However, Norma Ribbon later rescinded the agreement without notice and began to import identical ribbon flowers from suppliers in Mexico. Norma Ribbon later established its own manufacturing facility in Mexico. Norma brought suit against the Littles, alleging copyright invalidity and requesting injunctive relief against further seizures and the bringing of a copyright infringement action. The Court held that a copyright infringement action requires the plaintiff to prove ownership of a valid copyright and copying by the defendant. Ownership of a valid copyright is established by proving the originality and copyrightability of the material and compliance with the statutory formalities. Norma Ribbon reputed the presumption because the ribbons which are the subject of the action are not original. Original only that the work was independently created by the author and that it possesses at least some minimal degree of creativity Furthermore, there was no distinguishable variation in the ribbon flowers that the Littles sought to copyright. 40 | P a g e Those flowers already existed in the public domain. The Littles duplicated Norma Ribbons flowers exactly, using their employees process. Although prior to the new process it may have been consistently high quality, there was nothing new in the design of the flowers themselves. The only thing original in the Littles flowers was the manufacturing process, which is not copyrightable. The Court correctly held that the Littles copyrights in the ribbon flowers were invalid. OTHER PROTECTED SUBJECT MATTER Map protected as a compilation Compilation of state trademark registrations Computer databases Compilation of facts

But when the compilation evidences no judgment in selection, coordination or arrangement, the result is not copyrightable. Threshold values found best to predict hard drive failures Sequencing of camera angles presented by a television broadcast or sporting event Advertising materials, such as poster Dolls

UNCOPYRIGHTABLE SUBJECT MATTER Under the TRIPS agreement, copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such. o Copyright protection does not attach to idea for creating a particular work. This rule reflects the belief that such ideas

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY are relatively few and not worth the social costs of monopoly protection and that, in any event, copyright incentives are not needed for their protection. The court must filter out unprotectable elements. In order to impose liability for a copyright infringement, the court must find that the defendant copied protectable elements of the plaintiffs program and that those protectable elements comprise a substantial part of the plaintiffs program when it is considered as a whole. Programs, including the menu and sub-menu command tree structure, is a process that is not entitled to copyright protection. A compilation copyright therefore protects the order and manner of the presentation of the compilations elements, but does not necessarily embrace those elements. a public document of any work in which copyright is subsisting be taken to cause any abridgement or annulment of the copyright or to authorize any use or appropriation of such work without the consent of the copyright proprietor. Judicial decisions and statutes are in the public domain and therefore, neither judicial opinions nor statutes can be copyrighted

STATUTES, JUDICIAL OPINIONS AND LAW REPORTS There is no per se rule excluding legal case arrangement from copyright protection, in each case, the arrangement must be evaluated in light of originality and intellectual creation standards CASE: UNPROTECTED SHAPED SPOONS HEART-AND-ARROW

WORKS OF THE GOVERNMENT o No copyright shall subsist in any work of the Government of the Philippines. However, prior approval of the government agency or office wherein the work is created shall be necessary for exploitation of such work for profit. Such agency, among other things, impose as a condition the payment of royalties. Notwithstanding the foregoing provisions, the Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest or otherwise; nor shall publication or republication by the Government in

The designer of heart-and-arrow shaped measuring spoons sued competitor for copyright and trade dress infringement. The competitor moved for summary judgment. The District court held that: 1. Artistic aspects of design were not copyrightable 2. The design was not entitled to trade dress protection Copyright law protects original pictorial, graphic, and sculptural works. The parties do not dispute that plaintiffs spoons constitute sculptural works. However, where a sculptural work is a useful article, that is, an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information, copyright protection BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY exists only to the extent that, such design incorporates pictorial graphical, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. Thus, the issue is the conceptual separability of the utilitarian and artistic forms. Artistic aspects of designers heart-shaped measuring spoons with arrow shaped handles were inseparable from their utilitarian function, and thus they were not copyrightable; everything about size and shape of spoons was designed to measure material accurately and to scoop effectively. o Belt buckles were copyrightable because the primary ornamental aspect of the buckles is conceptually separable from their subsidiary utilitarian function pieces of applied art, these buckles may be considered jewellery, the form of which is subject to copyright protection Congress has explicitly refused copyright protection for works of applied art or industrial design which have aesthetic or artistic features that cannot be identified separately from the useful articles o In case of joint ownership, the coauthors shall be the original owners of the copyright and in the absence of agreement; their right shall be governed by the rules of co-ownership. If however, a work of joint ownership consist of parts can be used separately and the author of each part can be identified, the author of each part shall be the original owner of the copyright in the part that he has created. The employee, if the creation is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer. The employer, if the work is the result of the performance of his regularlyassigned duties, unless there is an agreement, express or implied, to the contrary. The person who so commissioned the work shall have ownership of the work, but the copyright thereto shall remain with the creator, unless there is a written stipulation to the contrary A producer shall exercise the copyright to an extent required for the exhibition of the work in any manner except for the right to collect performing license fees for the musical compositions, with or without words, which may be incorporated into the work

TEST: Is the design inseparable from its utilitarian function? CHAPTER 13 OWNERSHIP OF RIGHTS o

Author he who is entitled to bring action to assert the copyright in the work o Moral rights always belong to the author

In case of original artistic works, copyright shall belong to the author of the work who is defined as the natural person who created the work

TEST OF JOINT AUTHORSHIP Copyrightability test determines whether collaborators are authors of joint work; thus, BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY collaborators are authors, and product is joint work only if parties intend to be joint authors when work is created and contributions are independently copyrightable. CASE: ELEMENTS OF CO-AUTHORSHIP 1. Ownership of valid copyright 2. Copying of constituent elements of work that are original A producer of television program sued competing production company, seeking declaration of copyright ownership, and declaration that subsequent program produced by defendant on different channel was derivative work. The producer moved for summary judgment. The District Court held that: 1. Producer was sole owner of copyright program 2. Program produced by defendants was infringing as unauthorized derivative work Work does not have to be novel to be copyrightable; as long as it contains original expression fixed in tangible medium of expression, such work merits copyright protection. Originality requirement for copyright purposes means that work was not copied from previously existing works. As long as original elements of work are not minimal, originality requirement for copyrightability is easily met. o It is the similarities, rather than differences, that inform whether infringement has occurred; plagiarist can excuse wrong by showing how much of his work he did not pirate o An infringement claim cannot lie against a co-owner. The reason is that the right is not exclusive to the owner None of the co-owners shall, without the consent of the others, make alterations in the thing owned in common, even though benefits for all would result there from

WORK FOR HIRE RULE A work made for hire is either: 1. A work prepared by an employee within the scope of his or her employment 2. A work specially ordered or commissioned and created by an independent contractor An employer or other person for whom a work made for hire is prepared is considered the author for purposes of the copyright law and, unless the parties have expressly agreed otherwise in a written instrument signed by them, the owner of all the rights comprised in the copyright. Under the work for hire doctrine, an employer owns the copyright on a product by an employee within the scope of his or her employment, absent a written agreement to the contrary. For purposes of this statute, employee does not refer only to formal salaried employees. A court, in order to determine whether a work is a work for hire, should first ascertain, using principles of the general common law of agency, whether the work was prepared by an employee or by an independent contractor. ANONYMOUS AND PSEUDONYMOUS WORKS

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Sec. 179. Anonymous and Pseudonymous Works. - For purposes of this Act, the publishers shall be deemed to represent the authors of articles and other writings published without the names of the authors or under pseudonyms, unless the contrary appears, or the pseudonyms or adopted name leaves no doubts as to the authors identity, or if the author of the anonymous works discloses his identity.

infringement of the particular right assigned to him. WRITTEN ASSIGNMENT There is a need for written assignment to prove such intention. If an author verbally assigns his copyright to his last novel to a publishing house in consideration for an immediate lump-sum payment for all the rights to the work, and subsequently assigns the same copyright to the novel to another person, the latter shall have the rights. The remedy of the former is to file damages to the author. FILING OF ASSIGNMENT OR LICENSE An assignment or exclusive license may be filed in duplicate with the National Library upon payment of the prescribed fee for registration in books and records kept for that purpose. Upon recording, a copy of the instrument shall be attended to the sender with a notation of the fact of record. Notice of the record shall be published in the IPO Gazette. DESIGNATION OF SOCIETY
184.1. Notwithstanding the provisions of Chapter V, the following acts shall not constitute infringement of copyright: (a) the recitation or performance of a work, once it has been lawfully made accessible to the public, if done privately and free of charge or if made strictly for a charitable or religious institution or society

Anonymous work is a work on the copies of which no natural person is identified as author. Pseudonymous work - is a work on the copies of which the author is identified under a fictitious name The authors of these works remain as their copyright proprietors, but their publishers are considered as their representatives since they have personally dealt with the authors in publishing their works. o The copyright is not deemed assigned inter vivos in whole or in part unless there is a written indication of such intention If two or more persons jointly own a copyright or any part thereof, neither of the owners shall be entitled to grant licenses without the consent of the other owner or owners

EXCLUSIVE RIGHTS To reproduce To distribute To perform To display To prepare derivative works based upon the copyrighted work

CHAPTER 14 ECONOMIC RIGHTS The law provides the copyright holder with a bundle of rights such as: Reproduction of the work or substantial portion

DIVISIBILITY OF RIGHTS In cases of assignment, the assignee of the particular right has standing to sue for the 44 | P a g e

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY Dramatization, translation, adaptation abridgement, arrangement or other transformation of the work First public distribution Rental of the work Public display of the work Public performance of the work Other communication to the public of the work any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images consequentially First sale doctrine the first public distribution of the original and each copy of the work is vested in the author. After the first sale, anyone who is the owner of that copy can sell or dispose of that copy in any way without liability for copyright infringement. The distribution right is extinguished after the first legitimate transfer of an object embodying the copyrighted material. o The first sale doctrine is applicable to imported copies

Reproduction right bedrock of the copyright and is fundamental to the concept of ownership of a copyright RIGHT OF PUBLIC DISTRIBUTION 1. The distribution is to more than a selected group of people; 2. The distribution is for more than a limited purpose, for example, without prohibition on further reproduction, distribution or sale RIGHT OF PUBLIC PERFORMANCE 1. To perform it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of family and its social acquaintances is gathered; 2. To transmit or otherwise communicate a performance of the work to a place specified by (1) by means of any device or process, whether the members of the public capable of receiving the performance receive it in the same place or in separate places and at the same time or at different times RIGHT TO PUBLIC DISPLAY To display show a copy of it, either directly or by means of a film, slide, television image, or 45 | P a g e

FIRST PUBLIC DISTRIBUTION The distribution right is infringed merely by a transfer of copies of work whether these copies are lawfully or unlawfully made. The copyright owners distribution however is already exhausted by the first authorized sale of the original or copies of the work. The first sale: 1. Exhausts only the distribution right, excluding the other rights of copyright; 2. It only applies when the possessor has lawfully acquired original or copies of the work Public performance recitation, playing, dancing, acting or otherwise performing the work, either directly or by means of any devices or process, in the case of an audiovisual work, the showing of its images in sequence and the making of the sounds accompanying it audible and, in the case of a sound recording, making the recoded sounds audible at a place or at places where persons outside the normal circle BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY of a family and that familys closest social acquaintances are or can be present, irrespective of same time, or at different places and/or at different times, and where the performance can be perceived without the need for communication. integrity of the work should therefore be protected and preserved. They are personal to the artist; it exists independently of an artists copyright in his or her work. Right of attribution consists of the right of an artist to be recognised by name as the author of his work or to publish anonymously or pseudonymously, the right to prevent the authors work from being attributed to someone else, and to prevent the use of the authors name on works created by others, including distorted editions of the authors original work. Right of integrity allows the author to prevent any deforming or mutilating changes to his work, even after the title in the work has been transferred Breach of Contract may arise if an author declines to perform what was stated in the contract. Although he cannot be compelled to publish his work, the remedy of the other party is to file for damages for breach of contract WAIVER OF MORAL RIGHTS
Sec. 195. Waiver of Moral Rights. - An author may waive his rights mentioned in Section 193 by a written instrument, but no such waiver shall be valid where its effects is to permit another: 195.1. To use the name of the author, or the title of his work, or otherwise to make use of his reputation with respect to any version or adaptation of his work which, because of alterations therein, would substantially tend to injure the literary or artistic reputation of another author; or 195.2. To use the name of the author with respect to a work he did not create.

LIMITATIONS ON PERFORMANCE

RIGHT

OF

PUBLIC

Once it has already been lawfully made accessible to the public, it can no longer be protected if it was done privately or free of charge. CHAPTER 15 MORAL RIGHTS

Sec. 193. Scope of Moral Rights. - The author of a work shall, independently of the economic rights in Section 177 or the grant of an assignment or license with respect to such right, have the right: 193.1. To require that the authorship of the works be attributed to him, in particular, the right that his name, as far as practicable, be indicated in a prominent way on the copies, and in connection with the public use of his work; 193.2. To make any alterations of his work prior to, or to withhold it from publication; 193.3. To object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be prejudicial to his honor or reputation; and 193.4. To restrain the use of his name with respect to any work not of his own creation or in a distorted version of his work.

Moral rights mean to capture those rights of a spiritual, non-economic and personal nature. The rights spring from a belief that an artist in the process of creation injects his spirit from a belief that the artists personality, as well as the 46 | P a g e

Where the party commissioning a work intends to acquire the copyright to the work, it will be prudent to ask for the

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY authors written waiver of his moral right as well. WRITTEN WAIVER CANNOT JUSTIFY: 1. Use the name of the author, or the title of his work, or otherwise to make use of his reputation with respect to any version or adaptation of his work which, because of alterations therein, would substantially tend to injure the literary or artistic reputation of another author 2. Use the name of the author with respect to a wok he did not create CONTRIBUTION TO COLLECTIVE WORK When a creator contributes to a collective work, his right to have his contribution attributed to him is deemed waived unless he expressly reserves it. The copyright of a compiler to the collective work does not affect the force of any subsisting copyright upon the original works employed or any part thereof. TERM OF MORAL RIGHTS Rights of a creator under moral rights shall last during the lifetime of the creator and for 50 years after his death and shall not be assignable or subject to license. The person or persons to be charged with the posthumous enforcement of these rights shall be named in writing to be filed with the National Library. In default of heirs, to the Director of the National Library. WORKS NOT COVERED Moral rights shall not apply to prints, etchings, engravings, works of applied art, or work of similar kind wherein the creator primarily derives gain from proceeds of reproductions. 47 | P a g e CHAPTER 16 NEIGHBORING RIGHTS RIGHTS OF PERFORMERS, PRODUCERS OF SOUNDS RECORDINGS AND BROADCASTING ORGANIZATIONS Sec. 202. Definitions.- For the purpose of this Act, the following terms shall have the following meanings: 202.1. "Performers" are actors, singers, musicians, dancers, and other persons who act, sing, declaim, play in, interpret, or otherwise perform literary and artistic work; 202.2. "Sound recording" means the fixation of the sounds of a performance or of other sounds, or representation of sound, other than in the form of a fixation incorporated in a cinematographic or other audiovisual work; 202.3. An "audiovisual work or fixation" is a work that consists of a series of related images which impart the impression of motion, with or without accompanying sounds, susceptible of being made visible and, where accompanied by sounds, susceptible of being made audible; 202.4. "Fixation" means the embodiment of sounds, or of the representations thereof, from which they can be perceived, reproduced or communicated through a device; 202.5. "Producer of a sound recording" means the person, or the legal entity, who or which takes the initiative and has the responsibility for the first fixation of the sounds of a performance or other sounds, or the representation of sounds; 202.6. "Publication of a fixed performance or a sound recording" means the offering of copies of the fixed performance or the sound recording to the public, with the consent of the

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY right holder: Provided, That copies are offered to the public in reasonable quality; 202.7. "Broadcasting" means the transmission by wireless means for the public reception of sounds or of images or of representations thereof; such transmission by satellite is also "broadcasting" where the means for decrypting are provided to the public by the broadcasting organization or with its consent; 202.8. "Broadcasting organization" shall include a natural person or a juridical entity duly authorized to engage in broadcasting; and 202.9. "Communication to the public of a performance or a sound recording" means the transmission to the public, by any medium, otherwise than by broadcasting, of sounds of a performance or the representations of sounds fixed in a sound recording. For purposes of Section 209, "communication to the public" includes making the sounds or representations of sounds fixed in a sound recording audible to the public. THREE KINDS OF NEIGHBORING RIGHTS: 1. Rights of performing artists in their performances 2. Rights of producers of phonograms in their phonograms 3. Rights of broadcasting organizations in their radio and television programs o All persons who make use of literary, artistic or scientific works in order to make them accessible to others require their own protection against the illegal use use of their contributions in the process of communicating the work to the public Protection of performers is provided in order to safeguard the interests of actors, singers, musicians, dancers, or other persons who act, sing, deliver, declaim, play in or otherwise perform literary or artistic works, including works of folklore, against certain unlawful uses of their performances. LIMITATIONS ON PROTECTION Sec. 212. Limitations on Rights. - Sections 203, 208 and 209 shall not apply where the acts referred to in those Sections are related to: 212.1. The use by a natural person exclusively for his own personal purposes; 212.2. Using short excerpts for reporting current events; 212.3. Use solely for the purpose of teaching or for scientific research; and 212.4. Fair use of the broadcast subject to the conditions under section 185 CONTRACT TERMS Nothing in the Chapter on Neighboring Rights shall be construed to deprive performers of the right to agree by contract on terms and conditions more favorable for them in respect of any use of their performance. RIGHTS OF PERFROMERS 1. Broadcasting 2. Fixation 3. Reproduction 4. First public distribution 5. Commercial rental 6. Authorizing the making available to the public of their performances fixed in sound recordings by wireless means CHAPTER 17 LIMITATION ON COPYRIGHTS

NON-INFRINGING ACTS
Sec. 184. Limitations on Copyright. 184.1. Notwithstanding the provisions of Chapter V, the following acts shall not constitute infringement of copyright: (a) the recitation or performance of a work, once it has been lawfully made

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY

accessible to the public, if done privately and free of charge or if made strictly for a charitable or religious institution or society; (Sec. 10(1), P. D. No. 49) (b) The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose, including quotations from newspaper articles and periodicals in the form of press summaries: Provided, That the source and the name of the author, if appearing on the work, are mentioned; (Sec. 11, Third Par., P. D. No. 49) (c) The reproduction or communication to the public by mass media of articles on current political, social, economic, scientific or religious topic, lectures, addresses and other works of the same nature, which are delivered in public if such use is for information purposes and has not been expressly reserved: Provided, That the source is clearly indicated; (Sec. 11, P. D. No. 49) (d) The reproduction and communication to the public of literary, scientific or artistic works as part of reports of current events by means of photography, cinematography or broadcasting to the extent necessary for the purpose; (Sec. 12, P. D. No. 49) (e) The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use: Provided, That the source and of the name of the author, if appearing in the work, are mentioned; (f) The recording made in schools, universities, or educational institutions of a work included in a broadcast for the use of such schools, universities or educational institutions: Provided, That such recording must be deleted within a reasonable period after they were first broadcast: Provided, further, That such recording may not be made from audiovisual works which are part of the general cinema repertoire of feature films except for brief excerpts of the work; (g) The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast; (h) The use made of a work by or under the direction or control of the Government, by the National Library or by educational, scientific or professional institutions where such use is in the public interest and is compatible with fair use; (i) The public performance or the communication to the public of a work, in a place where no admission fee is charged in respect of such public performance or communication, by a club or institution for charitable or educational purpose only, whose aim is not profit making, subject to such other limitations as may be provided in the Regulations; (n) (j) Public display of the original or a copy of the work not made by means of a film, slide, television image or otherwise on screen or by means of any other device or process: Provided, That either the work has been published, or, that original or the copy displayed has been sold, given away or otherwise transferred to another person by the author or his successor in title; and (k) Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner. 184.2. The provisions of this section shall be interpreted in such a way as to allow the work to be used in a manner which does not conflict with the normal exploitation of the work and does not unreasonably prejudice the right holder's legitimate interest.

NON-INFRINGING ACTS EVEN WITHOUT COPYRIGHT OWNER CONSENT Sec 184 o Enumerates limitations upon the exclusive rights of copyright under section 177 Acts do not constitute infringement on copyright even if done without consent of copyright proprietor

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY o Affirmative declaration of rights that do not constitute infringement of copyright Considered statutory fair uses which need no longer be subjected to analysis under fair use factors in section 185 The limited grant means by which an important public purpose may be achieved, to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the mites period of exclusive control has expired. copyright does not continue indefinitely, law provides for a period of time, duration for it to exist, period or duration begins in the creation of work Geographic: owner is protected by the law of the country against acts restricted for protection against such as done in another country, he must refer to the law of that other country Permitted use -"fair use": certain acts normally restricted by copyright may if specified in the law, be done without authorization of copyright owner Private recitation or performance of a work -under section 184(a): not considered an infringement of copyright if 1. The work has already been lawfully made accessible to the public 2. No fee is charged for the recitation or performance

Copyright act grants the copyright holder exclusive rights to use and to authorize the use of his work in qualified ways The following are limitations upon the reproduction right under sec 184.1 -(b) and (c) are justified by the information purpose of the use of works -(d) and (e) are justified by the educational purpose of the use -(h) is justified by the status of the user and use of a work in the public interest or for educational, scientific or professional purposes -(I) limits the right of public performance and is justified by the non-profit and non-paying nature of the public performance of the works by a club or institution for charitable or educational purpose LIMITATIONS ON COPYRIGHT PROTECTION Temporal:

This limitation specifies the condition that the work should have been lawfully made accessible to the public because the first public distribution of the work is the author's exclusive right under section 177.3. The charging of fees negates the private character of the recitation and performance FILSCAP case: whether or not the playing of musical compositions protected by copyright law in a restaurant or in an establishment constitutes public performance for profit within the contemplation of the law. YES. Although the customers pay for the food and drinks, they also pay for the overall ambiance of the restaurant. It is beyond question that the playing and singing of the combo in defendant-appellant BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY restaurant constituted performance for profit contemplated by the copyright law. -a matter of allowing the reporting of news within reasonable limits -in reporting current events the appearance of protected works is fortuitous and subsidiary to the report itself, it is therefore impossible to seek the consent of the owner in advance -convention also imposes another limitation which is the informatory purpose -a television broadcast of a current event may show the town hall in front of which the event takes place but it would be different if a whole concert was recorded or all the artistic works in an exhibition were shown in a film INCLUSION OF A WORK BY WAY OF ILLUSTRATION FOR TEACHING PURPOSES, RECORDING MADE IN EDUCATIONAL INSTITUTIONS OF A WORK INCLUDED IN A BROADCAST -to permit the utilization, to the extent justified by the purpose, of protected works by way of illustration, sound, visual recording for educational purposes provided such utilization is compatible with fair practice NOTE: the article must always be acknowledged the source and the authors name if this can be gathered from that source Case: off the air videotapes and derivative copies -copyright owners brought action against board of educational services new York alleging copyright infringement -district court held: 1) action by board in engaging large scale videotape reproduction of copyrighted works originally broadcast and taken from television airways did not constitute

Twentieth century music vs. Aiken: radio reception of broadcast of copyrighted musical compositions did not constitute performance QUOTATIONS FROM A PUBLISHED WORK AS THEY ARE COMPATIBLE WITH FAIR USE -taken from the Berne convention THREE LIMITS ON THE LICENSE TO QUOTE: 1. Work from which the extract is taken must have been lawfully made available to the public 2. Quotations must be Compatible with fair practice- matter for the court to decide 3. Quotation must only be to the extent Justified by the purpose-matter for courts REPRODUCTION OF NEWS ITEMS 1. Such news items may be reproduced UNLESS they contain a notice that their publication is reserved, or 2. That they may also be reproduced UNLESS they contain a notice of copyright NOTE: the source of the work must always be cited NOTE: "we reserved all rights" is equal to "that their publication is reserved" REPRODUCTION OR COMMUNICATION TO THE PUBLIC BY MASS MEDIA -also implements a paragraph in the Berne convention which provides that it shall also be a matter for legislation in the countries to determine the conditions under this limitation 51 | P a g e

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY a fair use under copyright laws and 2) furthermore, fact that television station which had originally broadcast programs was publicly financed did not make it unconstitutional to apply copyright statutes to bar educational off the air recordings made from television EPHERMAL RECORDINGS BY BROADCASTING ORGANIZATION EPHERMAL recording: an aural or audiovisual fixation of a performance or a broadcast made for a temporary period by a broadcasting organization by means of its own facilities and for use for its own broadcasts -broadcasting and recording are different, when broadcast is made the public is receiving it, it is the same whether the broadcast is live or deferred while use of recordings depends on programming and time actors, and fortuitous reasons of this kind do not call for any additional remuneration -member countries may take advantage of the power given by paragraphs to allow the making and keeping for a short time of recordings by a broadcasting organization by means of recordings by a broad acting organization by means of its own facilities and for its own broadcasts. If member countries do not so, it is the contract between the author and broadcasting organization which determines whether recordings for this purpose may be made and if so whether they are to be merely EPHERMAL. If the contact does not expressly or impliedly allow recording, the first sentence of par three prevails: permission to broadcast does not imply permission to record USE OF A WORK BY OR UNDER THE DIRECTION OR CONTROL OF THE GOVERNMENT -this reserved right of the government to use copyrighted works without any liability compensates for the limited protection given to works of the government

Case: unauthorized photocopies of articles -publisher of medical journals brought suit against practice of government medical research organization and it's library in making photocopies of articles in medical journals constituted infringement. -court of claims held that the photocopying should be considered a fair use USE MADE OF A WORK FOR THE PURPOSE OF ANY JUDICIAL PROCEEDINGS OR THE GIVING OF PROFESSIONAL ADVICE BY A LEGAL PRACTITIONER -practice of law is based on precedents and is an important function in the dispensation of justice, it essential that lawyers and judicial officers are given the privilege to use copyrighted works without any liability. -consent must however be taken FAIR USE OF A COPYRIGHTED WORK -fair use of copyrighted work in comments, criticism, teaching including research etc is not an infringement of copyright. FACTORS TO BE CONSIDERED: 1. Purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes 2. Nature of the copyrighted work

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY 3. Amount and substantiality of the portion used in relation to the copyrighted work as a whole 4. Effect of the use upon the potential market for or value of the copyrighted work Publishers of copyrighted works filed a suit against a copy center for producing coursepacks. -CA: 1) copy shops preparation of coursepacks was not fair use, 2) infringement was not willful, for purposes of awarding statutory damages and 3) injunction prohibiting infringement could extend to future copyrighted works Case: scientific journals -publishers of scientific and medical journals brought copyright infringement action against corporation that had made unauthorized copies of copyrighted articles for use of its researchers -US court district ruled that such copying was not fair use and certified ruling for interlocutory appeal. -CA held that is was for fair use THE NATURE OF THE COPYRIGHTED WORK -the copying of site-specific documents is justified as fair use since they were prepared for a public moment process and were voluminous, making it very difficult for someone to prepare for a hearing without a copy of the plans to take on site -the non-commercial purpose of the copying and a lack of impact on marketability and value of the work justified the use SCIENTIFIC STUDIES USEFUL REQUESTERS IN THEIR WORK -must be 1. Solely for advancement and dissemination of medical knowledge and non-profit TO THE

Section 185.2 -work is unpublished shall not by itself at a finding of fair use if such finding is made upon consideration of all above factors -fair use defence applies regardless of the merit of the authors work -the four factors must be weighed together in the light of the purposes of copyright -the law gives copying for scientific purposes a wider scope Case: gone with the wind vs. the wind done gone (p. 404) -copyright cannot protect idea, only expression of that idea. Copyright does not immunize work from comment and criticism THE PURPOSE AND CHARACTER OF USE -first factor. Plainly assigns higher value to nonprofit educational purposes than one of commercial nature -parody like other comment or criticism, may claim fair use -the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use Case: course packs 53 | P a g e

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY 2. Medical researchers who asked for copies from libraries needs them for personal use in their scientific work 3. Copied articles are scientific studies useful for requesters CREATIVE WORKS CONTAINING ORIGINAL ANALYSIS AND CREATIVE THEORIES -2nd fair use factor recognizes that fair use is more difficult to establish when the work being used is at the core of intended copyright protection -factual compilations such as telephone listings may be used freely SCIENTIFIC ARTICLES -in Texaco case, court ultimately concluded that second factor favored Texaco because the photocopied articles essentially factual in nature and the scope of fair use is greater with respect to factual than nonfactual works -law greatly recognizes a greater need to disseminate factual works than works of fiction or fantasy AMOUNT AND PORTION USED SUBSTANTIALLY OF THE EXCERPTS FOR CLASSROOM USE -Third factor considers the amount and substantiality of the porting used in relation to the copyrighted work as a whole -in the context of musical parody, SC interpreted this factor to inquire whether the quantity and value of materials used were reasonable in relation to the purpose of coming, noting that the extent of permissible copying varies with the materials used were reasonable in relation to the purpose and character of use THE EFFECT OF THE USE UPON THE POTENTIAL MARKET -4th factor single most important element of fair use -generally demonstrated by a showing that the purpose or character of the use was commercial. Whether an activity is commercial sets a presumption regarding which may the fourth factor points in a fair use analysis TV NEWS FOOTAGE -4th factor militates against a finding of fair use if there is a showing by a preponderance of the evidence that some meaningful likelihood of future harm exists, intended use is for commercial gain, and likelihood may be presumed DECOMPILATION OF THE CODE AND TRANSALATION OF THE FORMS OF THE COMPUTER PROGRAM -section 185.1: on DECOMPILATION of computer programs must be understood in relation to section 172.1(n) and 175 -means that while computer programs are considered works of authorship and therefore BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

-in context of musical parodys use of copyrighted song, the SC interpreted this factor to inquire whether the quantity and value of the materials used were reasonable in relation to the purpose of the copying noting that the extent of permissible copying varies with the purpose and character of the use -however, copying even a small portion of copyrighted work may exceed the boundaries of fair use if the material taken in the heart of the work 54 | P a g e

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY protected by copyright they are treated like other works of authorship only to the extent that they embody original expression. -if other works of authorship are subject to the doctrine of fair use, computer programs are similarly treated -only the above mentioned classes of work shall be accepted for deposit by the national library and sc library -each copy shall contain a notice bearing the name of the copyright owner, and the year of its first publication, and in copies produced after the creators death, the year of such death

CHAPTER 18 COMMENCEMENT AND TERM OF PROTECTION REGISTRATION OF RIGHTS -section 172.1, 172.2, 172.3: first dissemination of performance by authority of the copyright owner of a work -there shall be for the purpose of completing the records of the national library and the supreme court library within three weeks, be registered and deposited with it, by personal delivery or by registered mail two complete copies or reproductions of the work in such form as directors of said libraries may prescribe -certificate Of deposit shall be issued for which the prescribed fee shall be collected and the copyright owner shall be exempt from making additional deposit of the works with the national library and the supreme court library under other laws -if within three weeks after receipt by the copyright owner of a written demand from the directors for such deposit, the required copies or reproductions are not delivered and the fee is not paid, the copyright owner shall be liable to pay a fine equivalent to the required fee per month of delay and to pay to the national library and SC library the amount of the retail price of the best edition of the work

INTERNATIONAL REGISTRATION OF WORKS GR: statement concerning work recorded in an international register in accordance with an international treaty to which the Philippines is or may become a party, shall be construed as true until contrary is proved XPN: 1. where the statement cannot be valid under this act or any other law concerning intellectual property 2. Where the statement is contradicted by another statement recorded in the international register POINTS OF ATTACHMENT FOR WORKS UNDER SECTIONS 172 AND 173 -protection shall apply to: A. Works of authors who are nationals of, or have their habitual residence in the Philippines B. AV works the producer of which has his headquarters or habitual residence in the Philippines C. Works of architecture erected in the Philippines or other artistic works incorporated in a building or other structure located in the Philippines D. Works first published in the Philippines

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY E. works first published in another country but also published in the Philippine within 30 days, irrespective of nationality or residence POINTS OF ATTACHMENTS FOR PERFORMERS -apply to 1. Performers who are not nationals 2. Same as above but whose performances: -take place in the Philippines -incorporated in sound recordings that are protected under this act -not been fixed in sound recording but are carried by broadcast qualifying for protection under this act POINTS OF RECORDINGS -apply to: 1. Sound recordings that producers of which are nationals of the Philippines 2. Sound recordings that were first published in the Philippines ATTACHMENT FOR SOUND COPYRIGHT REGISTRATION -law allows an author to apply for registration when he believes he has a copyright in a work -if register of copyright determines that the work is copyright able, register issues a certificate of registration to the author -such copyright has a rebuttable presumption of validity REGISTRATION AND DEPOSIT
Sec. 191. Registration and Deposit with National Library and the Supreme Court Library.- After the first public dissemination of performance by authority of the copyright owner of a work falling under Subsections 172.1, 172.2 and 172.3 of this Act, there shall, for the purpose of completing the records of the National Library and the Supreme Court Library, within three (3) weeks, be registered and deposited with it, by personal delivery or by registered mail, two (2) complete copies or reproductions of the work in such form as the directors of said libraries may prescribe. A certificate of deposit shall be issued for which the prescribed fee shall be collected and the copyright owner shall be exempt from making additional deposit of the works with the National Library and the Supreme Court Library under other laws. If, within three (3) weeks after receipt by the copyright owner of a written demand from the directors for such deposit, the required copies or reproductions are not delivered and the fee is not paid, the copyright owner shall be liable to pay a fine equivalent to the required fee per month of delay and to pay to the National Library and the Supreme Court Library the amount of the retail price of the best edition of the work. Only the above mentioned classes of work shall be accepted for deposit by the National Library and the Supreme Court Library. (Sec. 26, P. D. No. 49a)

POINTS OF ATTACHMENT FOR BROADCASTS -apply to: 1. Broadcasts of broadcasting organizations the headquarters of which are in the Philippines 2. Broadcasts transmitted from transmitters situated in the Philippines PROTECTION FROM MOMENT OF CREATION -see sections 172.1 and 172.2

DEPOSIT OF WORKS -GR: two copies of published work must be deposited in the copyright office within three months of publication for the benefit of thelinrary of congress -although required by the act, deposit of copies is not a prerequisite to condition of copyright protection

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY -failure to deposit copies of a work after a written demand by the register of copyrights, however, generally results in the imposition of a fine -registration mandatory is permissive rather than

NOTICE OF COPYRIGHT Sec. 192. Notice of Copyright. - Each copy of a work published or offered for sale may contain a notice bearing the name of the copyright owner, and the year of its first publication, and, in copies produced after the creators death, the year of such death.

-certificate of copyright registration constitutes prima facile evidence of the validity of the copyright and facts stated in the certificate EFFECT OF FAILURE TO REGISTER -plaintiff did not choose to protect his intellectual creation by a copyright -unless satisfactorily explained a delay in applying for a copyright, of more than thirty days from the date of its publication, converts the property to one public domain

CHAPTER 19 TERM OF PROTECTION

TERM OF PROTECTION -during the life of the author and for 50 years after his death -rule also applies to posthumous works

REGISTRATION OF COPYRIGHT OFFICE -benefits

WORK

WITH

THE

-joint authorship: economic rights shall be protected during the life of the last surviving author and for fifty years after his death -anonymous or pseudonymous works: 50 years from the date on which the work was first lawfully published provided that where before the expiration of the said period, the authors identity is revealed or is no longer I'm doubt, the provisions of subsections 213.1 and 213.2 shall apply, as the case maybe: provided further, that such works if not published before shall be protected for 50 years counted from the making of work -art protection: 25 years from date of making -photographic works: 50 years from publication and if not published 50 years from making -AV works: same as photographic works

1. Although copyright protection attaches the day original expression is fixed in a tangible medium and thus an infringer may be liable for infringement from that day forward, registration of the copyright is a prerequisite to full entitlement to the remedies against infringement 2. Upon accepting the registrants application, fee and deposit of a representative copy of the work, the copyright office issues a certificate of registration, which is admissible in an infringement action as prima facie evidence of the validity of the copyright and of the acts stated in the certificate

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY -Rome convention: 20 years -term shall last at least until the end of the period of 25 years from the making of such work -term is a result of a compromise arising from the differences between Union countries as to those works of applied art which fall to be protected by copyright and those protected only as design or models (usually by registration).

TERM OF PROTECTION UNDER THE BERNE CONVENTION -article 7 of convention: life of the author and 50 years after death

TERM OF PROTECTION CINEMATOGRAPHIC WORKS

FOR APPLICABLE LAW AND COMPARISON OF TERMS -term governed by the legislation of that country where protection is claimed; however, unless the legislation of that country otherwise provides, the term shall not exceed the term fixed in the country of the work

-the countries of the union may provide that the term of protection shall expire 50 years after the work has been made available to the public with the consent of the author, or, failing such an event within 50 years from the making of such work, 50 years after the making

TERM OF PROTECTION FOR ANONYMOUS AND PSEUDONYMOUS WORKS --expires 50 years after the work has been lawfully made available to the public -50 years after the death of author in two cases: 1. When the pseudonym adopted by the author leaves no doubt about his identity (question of fact) 2. When the author of an anonymous or pseudonymous work decides to reveal his identity within 50 years of work being made public

TERM OF PROTECTION FOR WORKS OF JOINT AUTHORSHIP -the terms measured from the death of the author shall be calculated from the death of the last surviving author

PURPOSE OF A TERM STARTING POINT FOR TERMS OF PROTECTION -to create a balance between the artist's right to control the work during the term of the copyright protection and the public's need for access to creative works

TERM OF PROTECTION FOR PHOTOGRAPHS AND WORKS OF APPLIED ART

CALCULATION OF TERM

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY -under section 214, the term of protection subsequent to the death of the creator provided in section 213 shall run from the date of his death or of publication, but such terms shall always be deemed to begin on the first day of January of the year following the event which gave rise to them profits the infringer may have made, or in lieu thereof, the courts may award damages 3. For impounding sales invoices and other documents evidencing the sale, all articles and their packaging alleged to infringe a copyright (seizure of business records is not authorized) 4. For destruction of all infringing copies or devices 5. To other terms and conditions, including moral and exemplary damages which is deem proper, wise and equitable and the destruction of infringing copies of the work even in the event of acquittal.

STARTING POINT FRO TERMS OF PROTECTION -terms shall always be deemed to begin on the first day of January of the year following the death or such event

TERM OF PROTECTION FOR PERFORMERS, PRODUCERS AND BROADCASTING ORGANIZATIONS -performance not incorporated in the recordings: 50 years from the end of year in which the performance took place -for sound or image and sound recordings and for performances incorporated therein, 50 years from the end of the year in which the recording took place CHAPTER 20 INJUNCTION RESTRAINING INFRINGEMENT Plaintiff must establish that: 1. It has substantial likelihood of prevailing on the merits; 2. It will suffer irreparable injury if it is denied the injunction (presumed when the exclusive rights of the holder are infringed); 3. Its threatened injury outweighs the injury that the opposing party will suffer under the injunction; and 4. An injunction would not be adverse to the public interest. -requires notice and hearing to parties sought to be enjoined -if it is shown in the facts that great or irreparable injury would result to the applicant before the matter can be heard on notice, Court may issue ex parte a TRO effective for 20days. Within the 20days the person sought to be enjoined must show cause why the injunction should not be granted. The court within such BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

ENFORCEMENT OF RIGHTS
Remedies for Infringement (SEC. 216.1) Any person infringing a right protected under this law shall be liable: 1. To an injunction restraining such infringement. Court may also order the defendant to desist from an infringement 2. To pay damages to the copyright proprietor (legal cost and expenses plus 59 | P a g e

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY period must issue an order whether or not the injunction is granted. -TRO may be issued effective for 72hrs if the matter is of extreme urgency and the applicant will suffer grave injustice and irreparable injury. It may be extended until the application for injunction can be heard. -injunction shall not exceed 20 days, including the 72hrs. -TRO issued by CA: effective 60days; SC: effective until further orders AWARD OF EXEMPLARY AND MORAL DAMAGES -when an owner establishes that the defendants infringement was wilful, the courts may increase its award of damages -Copyright infringement will be found wilful when the defendant had knowledge that its conduct constituted infringement or showed reckless disregard for the copyright holders rights. -SEC 226 precludes recovery of damages for infringer after 4yrs from the time the cause of action arose. ENTRAPMENT AND ESTOPPEL -In all inter partes proceedings, the equitable principles of estoppel, laches, and acquiescence where applicable may be considered and applied. To avail of the defence of estoppels the claimant must show that the party: 1. Misrepresented or concealed the material facts; 2. Intended or expected that the claimant would act upon those misrepresentations or concealments, and; 3. Had actual or constructive knowledge of the true facts. The Exclusive Rights 60 | P a g e The copyright statute specifies the five exclusive rights to attach to copyrighted works: 1. Right of Reproduction -right creating any tangible object which duplicates or embodies the work. -(ex.novel) it would prohibit the unauthorized production of copies of the novel 2. Right of Adaptation (to prepare derivative works based on the copyrighted work) -right to alter the original work to create a new work with sufficient originality to qualify for separate copyright protection. -would prohibit the novels unauthorized translation or its adaptation into a motion picture 3. Right of Distribution -grants the author the sole and exclusive right to sell, lease, or give away tangible objects embodying the work. -SC held that this right also confers the right to first publish work -prohibit the unauthorised sale, lease, lending or other transfer of copies of the novel to the public 4. Right of Public Performance -exclusive right to perform the work with the exception of pictoral-type works (photos, sculptures, or drawings)cannot be performed -to perform it directly or with the assistance of a mechanical device. -prohibit the unauthorized public recital of excerpts from the novel 5. Right of Public Display -protects an authors right to show the public a tangible work or copy of the work either directly or indirectly by means of film, slide, television or other mechanical methods. -prohibit the unauthorized projection of pages from the novel.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY Performance Display If there is no direct evidence of copying, infringement may be established through inference of copying by showing: 1. ACCESS to allegedly-infringed work by the defendant; 2. SUBSTANTIAL SIMILARITY between two works at issue **Infringement occurs when competitor appropriates elements of protected design to produce article that is substantially indistinguishable from copyrighted work. **A person may unconsciously copy a work and remain liable for infringement. INTENT IS IRRELEVANT. PLAINTIFF must show: 1. That his work was actually copied, either by introducing direct evidence of copying or else by proving access and substantial similarity between the works; 2. That copying amounts to improper or unlawful appropriation by demonstrating that substantial similarities relate to protectable material. **Access cannot be inferred through speculation. There must be reasonable opportunity for the defendant to view or hear the plaintiffs work. **Proof for substantial similarity in both the idea and the unique expression of the idea. - ORDINARY OBSERVER TEST: whether an ordinary lay observer would consider the works substantially similar (or consider the second work as having been copied from the first) - Expert testimony is not allowed on substantial similarity where factual copying BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

A sequential showing When individual images from the work of the work are shown

NOTE: **An infringement of copyright is actionable only if the conduct violates any of the aforementioned exclusive rights comprised in copyright. **Copyright does not confer the owner complete control over all possible uses of his work but it only grants the copyright holder exclusive rights to use and to authorize the use of his work in five qualified ways. **The owner of copyright may use the work as he wishes but not without regard to the legally recognized rights and interests of others and may exclude others from using it without authorization. **Some examples of acts which require authorization of the copyright owner: copying or reproducing the works, performing the work in public, making a motion picture of the work, adapting the work, translating the work. Q: how is copying generally demonstrated? A: 1. By direct evidence 2. **By circumstantial evidence of access and substantial similarity (most common test) ACCESS: having a reasonable opportunity to view or hear the plaintiffs work, i.e. REASONABLE OPPORTUNITY TO COPY THRESHOLD INQUIRY: whether there is reasonable probability of access 3. By circumstantial evidence of striking similarity 61 | P a g e

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY has been established, since the applicable test is an ordinary observer test. However, it is permissible to establish copying. ELEMENTS OF COPYING AND ACCESS To prove actionable copying the plaintiff must establish: 1. That the alleged infringer actually used thee copyrighted material to create his own work; 2. If the plaintiff successfully demonstrates that the portion of the copyrighted work taken satisfies the originality requirement, he must: a. Prove that the copying was so extensive that it rendered the offending and copyrighted works substantially similar. b. To challenge the putative infringers evidentiary assertion that the use made of the original portion of the copyrighted work is fair use, where the putative infringer attempts to carry his burden and demonstrate a right to such use. **Absent direct evidence (since copying is rarely witnessed or recorded), copying may be inferred from a showing that the defendant had access to the plaintiffs work prior to the creation of defendants work, and there is substantial similarity between the works. **If the two works are so strikingly similar as to produce possibility of independent creation, copying may be proved without showing of access. ELEMENT OF SUBSTANTIAL SIMILARITY **Copyright infringement occurs only if one copies protected elements of a copyrighted work; the portion of the copyrighted work that is copied must satisfy the constitutional requirement of originality. 62 | P a g e

A plaintiff cannot succeed in his proof if: 1. The similarities between the works are not sufficient to prove copying, or 2. It is established that one work was arrived at independently. DIRECT VS. CONTRIBUTORY INFRINGEMENT Direct infringer any person who himself carries out any of acts in violation of the authors economic rights, their moral rights and droit de suite, as well as the rights of performers, producers or sound recordings and broadcasting organizations. Contributory infringer one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, or authorizes another, without the copyright owners consent to commit any violation of said exclusive rights. ** The doctrine that one who knowingly participates in or furthers a tortuous act is jointly and severally liable with the prime tort feasor, is applicable under copyright law. ** But before one could be held liable for contributory infringement, there must be direct infringement through any violation of the exclusive rights of the author. **Traditional principles of vicarious liability apply in copyright infringement actions. It extends to anyone with authority to control the infringing activities who also has a financial interest in the activities. (ex. A partnership may be liable for the infringing activities of one partner and a corporation for action of corporate officers in the course and scope of corporate duties.) CRIMINAL PENALTIES

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY Any person infringing any right or aiding or abetting such infringement shall be guilty of a crime punishable by: 1. Imprisonment of 1yr to3yrs plus a fine ranging from P50,000 to P150,000 for first offense; 2. Imprisonment of 3yrs and 1day to 6yrs plus a fine ranging from P150,000 to P500,000 for the second offense; 3. Imprisonment of 6yrs and 1day to 9yrs plus a fine ranging from P500,000 to P1.5M for the third and subsequent offenses. 4. In all cases, subsidiary imprisonment in cases of insolvency. **imprisonment and fine shall be based on the value of the infringing materials that the defendant has produced or manufactured and the damage that the copyright owner has suffered by reason of the infringement. Q: Who should be liable as an infringer under the provisions of this Act? A: Any person who at the time when copyright subsists in a work has in his possession an article which he knows, or ought to know, to be an infringing copy of the work for the purpose of: 1. Selling, letting for hire, or by way of trade offering or exposing for sale, or hire, the article; 2. Distributing the article for purpose of trade, or for any other purpose to an extent that will prejudice the rights of the copyright owner in the work; or 3. Trade exhibit of the article in public, shall be guilty of an offense and shall be liable on conviction to imprisonment and fine in above mentioned. OPTICAL MEDIA ACT OF 2003 -Regulates the manufacture, mastering, replication, importation and exportation of optical media. -OPTICAL MEDIA: storage media or devices in which information, including sounds and/or images or software code has been stores, either by mastering and/or replication, which may be accessed and read using a lens scanning mechanism employing high intensity light source such as a laser or any such other means as may be developed in the future. **CRIMINAL LIABILITY: Imprisonment of at least 30days but not more than 90days or a fine of not less than P25,000 but not exceeding P50,000 1. The act of knowingly processing items of the same content or title, produces in violation of this Act, and used for the purpose of sale, rental, distribution or any other commercial purpose with the intent to profit; 2. Engaging in the sale, rental, distribution, importation, exportation of, or any other commercial activity involving optical media Suspension of operation of the establishment for 1month, but not more than 3months confiscation of duplicating equipment, including parts, accessories and paraphernalia or magnetic media products and/or a fine of not less than P50,000 but not more than P100,000 -imposable to any person, establishment or any entity who shall knowingly possess magnetic media produces in violation of the Act for the purpose of sale, rental, distribution, or any other commercial purpose or with the intent to profit.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY DEFENSES AGAINST INFRINGEMENT Proof of independent creation of the defendants work STATUTORY DEFENSES: The allegedly infringing act could be a protected activity under SEC184 or a permissible reprographic reproduction by libraries under SEC188, or a reproduction off a computer program under SEC189. FAIR USE: permits other people to use copyrighted material without owners consent in reasonable manner for certain purposes. (ex. When an ad becomes a transformative work which commented on original work and did not interfere with any potential market for original photograph) ABANDONMENT: the defendant must show the plaintiffs manifest intent to abandon the copyright. This is proven through words or conduct. ESTOPPEL REQUISITES: 1. The plaintiff knew of the defendants conduct; 2. The plaintiffs actions reasonably led the defendant to believe that the defendants conduct was authorized, and 3. The defendant reasonable relied on the plaintiffs actions (ex. Plaintiffs action might lead the defendant to believe that he or she had an implied license to exploit to plaintiffs work. In this case, equity might prevent enforcement of the owners exclusive rights, particularly if the defendant has expended large sums in connection with exploitation of the work. UNCLEAN HANDS: if the defendant can show that the plaintiffs engaged in serious misconduct concerning the copyright and/or the defendants potentially infringing activities.

IDEA-EXPRESSION DICHOTOMY When the idea and its expression are not completely inseparable, there may still be only be limited number of ways of expressing an idea. Hence, the burden of proof is heavy on the plaintiff who may have to show near identity between the works at issue. CASE: INSUFFICIENT PROOF OF ACCESS Plaintiff are two life-long friends who share the love of baseball, they wanted to keep the Minnesota Twins (baseball team) so they had a campaign to build a new baseball stadium. In support of this goal, they made a 30-min documentary, highlighting a day road trip that included visits to baseball stadiums in urban settings. It was copyrighted in 2001. An advertising agency created a series of ads for MasterCard. As part of the series, an ad features 2 male friends on a road trip to visit all 30 Major League Baseball stadiums in one summer, purchasing necessities along the way with their MasterCard. The idea was developed in February 2001, was approved and filmed thereafter. The owners of the copyright in video documentary sued the advertising agency and its client for the infringement. Distribution of copyrighted video documentary was insufficiently widespread to give rise to reasonable possibility of access by alleged infringer. CASE: THE DA VINCI CODE

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY This appeal involves copyright infringement action between Perdue author of The Da Vinci Legacy (1983) and Daughter of God (200), and Dan Brown et al, who wrote, published, and made into a movie the best-selling fiction novel The Da Vinci Code (2003). The threshold issue for deciding whether The Da Vinci Code infringes on copyright in daughter of god and The Da Vinci Legacy involves a determination of whether the works are substantially similar. The court held that it has been a fundamental principle in copyright law that a copyright does not protect an idea, but only the expression of an idea. All of the similarities alleged by Perdue such as: notion of the divine feminine, the unity of male and female in pagan worship, the importance of Sophia, and others are unprotectable ideas, these are mere historical facts and general themes that do not represent original elements. Copyright protection does not extend to thematic concepts or scenes which must necessarily follow from similar plot situation. Both Daughter of God and The Da Vinci Code involve the unprotectable idea of mystery thriller set against a religious backdrop. REMEDIES AGAINST INFRINGEMENT SEC 216 1. Preventive Injunction restraining such infringement, prevent the entry into the channels of commerce of imported goods that involve an infringement, immediately after customs clearance of such goods. Preliminary injunctive relief is appropriate when party can show: 65 | P a g e A strong likelihood of success of the merits o Irreparable harm, and o The balancing of hardships weigh in favour of the injuction Impounding during the pendency of the action of sales invoices and other documents evidencing sales, all articles and their packaging alleged to infringe a copyright and implements for making them. 2. Evidentiary Seizure and impounding of any article which may serve as evidence in the court proceedings 3. Compensatory Payment to the copyright proprietor or his assigns of heirs of such actual damages, including legal costs and other expenses, as he may have incurred due to the infringement expenses, as well as the profits the infringer may have made due to such infringement. 4. Punitive Delivery under oath for destruction without any compensation all infringing copies or devices, as well as all plates, molds, or other means for making such infringing copies as the court may order. Destruction of infringing copies of the work even in the event of acquittal in a criminal case. o

JURISDICTION The Director General shall exercise original jurisdiction to resolve disputes relating to the terms of a license involving authors right to public performance of other communication of his work. The decision of the Director General is appealable to the Sec. of Trade and Industry. BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY The Bureau of Legal Affairs shall exercise original jurisdiction in administrative complaints for violations of laws involving intellectual property rights: Provided that its jurisdiction is limited to complaints where the total damages claimed are not less than P200,000: Provided further, that availment of provisional remedies may be granted in accordance with the Rules of Court. charge of copyright infringement. In fact, it is the second author who had access to the earlier work who could be held liable for copyright infringement. The owner of copyright sued motion picture production for infringement. The court favored the defendant on the basis that the copyright does not protect ideas, but only expression of ideas. Scenes a faire elements of work, which are not entitled to copyright protection, are those incidents, characters or settings which are as practical matter indispensable, or at least standard, in treatment of given topic. Even if copied portion is relatively small in proportion to entire work, if qualitatively important, substantial similarity may be found, and hence copyright infringement. The treatment for motion picture idea, produced by defendant prior to time plaintiff could establish, either directly or inferentially, defendants access to plaintiffs copyrighted screenplay, was not so strikingly similar as to preclude possibility of independent creation.

CASE: INDEPENDENT CREATION Owners of copyright in a song sued the parties involved in production of motion picture for infringement. The court favored the defendants who claimed independent creation and lack of access to plaintiffs song. SUBSTANTIAL SIMILARITY REQUIRES: 1. Filtering of unprotectable aspects of protected work 2. Asking whether ordinary observer would perceive original and alleged copy as substantially similar. Even if songs were substantially similar, composer did not have access to protected song until after he had already made demonstration recording of accused song and sent copied of it to several third parties. CASE: PRIOR AUTHOR IN GOOD FAITH
Sec. 236. Preservation of Existing Rights Nothing herein shall adversely affect the rights on the enforcement of rights in patents, utility models, industrial designs, marks and works, acquired in good faith prior to the effective date of this Act.

The author in good faith whose rights are preserved may be the prior creator and is completely insulated against

CASE: MERGER DOCTRINE DEFENSE The holder of copyrights for drawing of latch for portable childrens play yard brought copyright infringement action against patentee, alleging that patent drawings infringed his copyrights. The court ruled in favour of the patentee relying upon the following: o Not all copying is actionable, it is a constitutional requirement that a plaintiff bringing a copyright infringement claim must prove BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY copying of constituent elements of the work that are original. Mere abstract ideas are not protectable in copyright case, but the expression of an idea is. The merger doctrine establishes that when there is essentially only one way to express an idea, the idea and its expression are inseparable, i.e., they merge, and copyright is no bar to copying that expression. whether to treat them as multiple infringements or one continuous infringement. 2. Heterogeneity test looks whether the successive infringements are so similar in nature that they should be treated as one infringement. PIRACY AND INFRINGEMENT The essential part of piracy is that the unauthorized activity is carried on for commercial gain. This element of commercial gain implies that piracy will often be carried out on an organized basis since not only is the unauthorized reproduction of a work involved, but also the subsequent sale or distribution of the illegally reproduced work, which will require some form of organized distribution. AFFIDAVIT EVIDENCE
Sec 218. Affidavit Evidence 218.1. In an action under this Chapter, an affidavit made before a notary public by or on behalf of the owner of the copyright in any work or other subject matter and stating that: a) At the time specified therein, copyright subsisted in the work or other subject matter; b) He or the person named therein is the owner of the copyright; and c) The copy of the work or other subject matter annexed thereto is a true copy thereof, shall be admitted in evidence in any proceedings for an offense under this Chapter and shall be prima facie proof of the matters therein stated until the contrary is proved, and the court before which such affidavit is produced shall assume that the affidavit was made by or on behalf of the owner of the copyright. 218.2. In an action under this Chapter: a) Copyright shall be presumed to subsist in the work or other subject matter to

LICENSE DEFENSE Once any authorization for use of a copyrighted work is found, the copyright holder is forever barred from bringing suit for infringement. ENCOURAGING INFRINGING ACTIVITY The sale of copying equipment, like the sale f other articles of commerce, does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes, or indeed, is merely capable of substantial non-infringing uses. MULTIPLE INFRINGEMENTS
Sec. 217.2. In determining the number of years of imprisonment and the amount of fine, the court shall consider the value of the infringing materials that the defendant has produced or manufactured and the damage that the copyright owner has suffered by reason of the infringement.

TWO TESTS APPLIED TO LIMIT THE NUMBER OF INFRINGEMENTS COMMITTED BY A COPYRIGHT INFRINGER: 1. Time test the proximity in time of repeated infringements in deciding

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY

which the action relates if the defendant does not put in issue thee question whether copyright subsists in the work or other subject matter; and Where the subsistence of the copyright is established, the plaintiff shall be presumed to be the owner of the copyright if he claims to be the owner of the copyright and the defendant does not put in issue the question of his ownership. Where the defendant, without good faith, puts in issue the questions of whether copyright subsists in a work or other subject matter to which the action relates or the ownership of copyright in such work or subject matter, thereby occasioning unnecessary costs or delay in the proceedings, the court may direct that any costs to the defendant in respect of the action shall not be allowed by him and that any costs occasioned by the defendant to other parties shall be paid by him to such other parties.

b)

c)

notice of copyright entirely optional in compliance with the Berne requirement that copyright protection shall not be made to depend upon compliance with any formality. Any infringer who disputes the authorship of the work under 218(c) is not likely to be considered to have acted in good faith. Since wilfulness of the infringement may help support an award of damages Sec 216.1 (e), the notice of copyright puts the defendant on notice that the named author claims all of his economic rights and moral rights in the work.

PRESUMPTION OF AUTHORSHIP
Sec. 219. Presumption of Authorship 219.1 The natural person whose name is indicated on a work in the usual manner as the author shall, in the absence of proof to the contrary, be presumed to be the author of the work. This provision shall be applicable even if the name is a pseudonym, where the pseudonym leaves no doubt as to the identity of the author. 219.2. The person or body corporate whose name appears on an audio-visual work in the usual manner shall, in the absence of proof to the contrary, be presumed to be the maker of said work. Sec. 192. Notice of Copyright Each copy of a work published or offered for sale may contain a notice bearing the name of the copyright owner, and the year of its first publication, and, in copies produced after the creators death, the year of such death.

STATUTE OF LIMINTATION It does not provide for a waiver of infringing acts within the limitation period if earlier infringements were discovered and not sued upon, nor does it provide for any reach back if an act of infringement occurs within the statutory period. PUBLIC RECORD
Sec. 228. Public record The section or division of the National Library and the Supreme Court Library charged with receiving copies and instruments deposited and with keeping records required under this Act and everything in it shall be opened to public inspection. The Director of the National Library is empowered to issue such safeguards and regulations as may be necessary to implement this Section and other provisions of this Act.

COPYRIGHT DIVISION FEES

Sec. 229. Copyright Division Fees The Copyright Section of the National Library shall be classified as a Division upon the effectivity of this Act. The National Library shall have the power to collect, for the discharge of its services under this Act, such fees as may be promulgated by it

Sec. 218 and 219 must be understood in relation with 192, which makes the

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from time to time subject to the approval of the Department Head.

Chapter 21 PATENTS o The Intellectual Property Code superseded RA 165 otherwise known as the Patent Law which took effect on June 20, 1947. o The Intellectual Property Code adopts the first-to-file system while the Patent Law adopted the first-to-invent system. o The shift to the first-to-file system required the elimination of the interference provisions of the Patent Law, example that the right to patent belongs to the first true and actual inventors, heirs and legal representatives. o 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 substitution as patentee, or at the option of the true inventor, cancel the patent, and award actual and other damages in his favour if warranted by the circumstances. o Any prior user, who in good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business, before the filing date or priority date of the application on which a patent is granted, shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect.

o Questions concerning the validity of these patents granted under the Patent Law will continue to be resolved under its provisions even while applications for patents filed on or after January 1, 1998 (IP Code effectivity) will be governed by the Intellectual Property Code. For these reasons, concepts like priority of invention and reduction to practice will continue to be relevant even after January 1, 1998. Chapter 21 PATENTABLE INVENTIONS o Any technical solution of a problem in any files of human activity which is new, involves an inventive step, and is industrially applicable shall be patentable.

Machine a concrete thing, consisting of parts or of certain devices and combination of devices Manufacture production of articles for use from raw or prepared materials by giving to these materials new forms, qualities properties, or combinations, whether by hand labor or by machinery Composition of Matter composition of two or more substances or a composite article, whether it be the result of chemical union, or of mechanical mixture, or whether it be a gas, fluid, powder or solid RIGHTS OF A PATENTEE (EXLUSIVE RIGHTS OF EXPLOITATION: The rights of a patentee is not described in the document called a patent. Those rights are described in the patent law of the country in which the patent for invention was granted.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY 1. In the case of product patents for inventions, the right to make, use, sell and import the product that includes the invention, and 2. In the case of process patents for inventions, the right to use the process includes the invention as well as the right to make, use, sell and import products which were made by the process that includes the invention GR: If anyone exploits the patented invention without the authorization of the owner of the patent for invention, he commits an illegal act XPN: As provided for by the patent laws, example: exploitation in the public interest by or on behalf of the government, or exploitation on the basis of a compulsory license Compulsory license authorization to exploit the invention, given by a governmental authority, generally only in very special cases, defined in the law, and only where the entity wishing to exploit the patented invention is unable to obtain the authorization of the owner of the patent for invention. It usually has the fixing of the remuneration for the patentee and may be subject to appeal. Utility Model a name given to certain inventions, namely- according to the laws of most countries which contain provisions on utility models- inventions in the mechanical field. o Utility models differ from inventions for which for patents for invention are available mainly in two aspects: first, in the case of an invention called utility model, the technological progress required in case of an invention for which a patent for invention is available and second in the maximum term of protection provided in the law for utility model is generally much shorter than the maximum term of protection provided in the law for an invention for which a patent for invention is available. Industrial Design ornamental or aesthetic aspect of a useful article. It may consist of shape, color or pattern. In order to constitute as industrial design it must be reproducible and original (also the requirement for protection) The Paris Convention on the Protection of Industrial Property encompasses the following: 1. Right of Priority 2. Independence of Patents grant of a patent for invention in one country for a given invention does not oblige any other member country to grant a patent for invention for the same invention. The fate of a particular patent for invention in any given country has no influence whatsoever on the fate of a patent for the same invention in any other countries. REASON: national laws and administrative practices are usually quite different from country to country 3. Right of inventor to be named 4. Importation Patents and Maintenance of

5. Working of Inventions and Compulsory Licenses patent owner must retain the right to grant other non-exclusive licenses and to work the invention himself. LIMITATION: only bound to that enterprise and cannot be transferred separately from that enterprise REASON: promote the industrialization BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY of the country SUBSTANTIVE REQUIREMENTTS OF THE TRIPS AGREEMENT: 1. Each member must extend national treatment and most-favored nation treatment to every other member 2. Others such as: prescription for minimum norms of intellectual property protection, remedies and procedures These must be met by every Member by January 1, 2005, at the latest. GENERAL REQUIREMENTS: 1. National treatment 2. Most favored nation treatment SPECIFIC REQUIREMENTS FOR PATENT PROTECTION: 1. Availability of both product and process patents 2. Exclusive rights that a patent must confer 3. Compulsory licensing 4. Term of protection 5. Requirements for proof of process patent infringement GR: Patents must be available for any inventions, whether products or processes, in all fields of technology, that meet the requirements of law XPN: pharmaceuticals, medical devices, modern technological methods for their production o There is no general exception for products of any kind-except for plants and animals other than microorganisms o Patents must be available for both products and processes in all firleds of technology. This 71 | P a g e requirement implicitly repudiates a practice observed in a number of developing countries of providing only process patents in certain fields of technology thereby encouraging local investors to develop other, non-infringing processes to make the same products. o The TRIPS Agreement has one general exception to the scope of patentable subject matter, whose range of application may be hard to predict. It allows members to exclude inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect order public or morality, including protecting human, animal, or plant life or health to avoid serious prejudice to the environment. It does not permit exclusion to be based on the mere fact that exploitation of an invention is prohibited by domestic law.

EXCLUSIVE RIGHTS: A product patentee must have the right to prevent others without authoriation, from making, using, offering for sale, selling or importing the patented product. A process patentee must have the right to prevent others without authoriation, from using the process, offering for sale, selling or importing the product obtained directly by the process. In either case the rights must be capable of assignment, transfer by succession, and transfer by licensing. REMEMBER: 1. These include two newer rights: rights of offering for sale and importation. The latter right supports the use of borderenforcement measures

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY 2. These include the right to exclude others. A patent by itself provides no right to practive patented invention if dominated by rights of another. 3. A process patent must confer exclusive right atleast with respect to products made directly by patented process 4. Exclusive rights to use, sale, offering for sale and importation are subject to exhaustion at each Members discretion, as long as the basic principles of national treatment and most-favored nation are honored COMPULSORY LICENSING: 1. Procedural requirements each compulsory licensee be considered on its individual merits on a case-by-case basis, and except for compulsory licenses resulting from adjudicated antitrust violations only after negotiations toward a commercial license over a reasonable period of time have failed to bear fruit. TERM OF PROTECTION: Members must make protection available at least for a period of twenty years counted from the filing date. PROOF OF PROCESS PATENT INFRINGEMENT: o A process patent holder does not have the right to control the making or distribution even of identical products if made by another, non-infringing process. It will depend on whether or not those products were made directly by using the patented process. TWO EVIDENTIARY RULES: a. Members must give their judicial authorities power, where the products are identical to require the party accused of infringement to prove that an infringing process was not used. b. Members should treat identical products as having been made by the patented process in either of two circumstances: 1) If the product obtained by the patented process is new 2) if there is a substantial likelihood that the identical product was made by the process actually used. These should be applied alternatively. o The Patent Cooperation Treaty, to which the Philippines adheres is a multilateral treaty that was established at Washington, in 1970, in order to simplify and make more economical the work connected with the obtaining of protection for inventions. It is a special agreement under the Paris Convention. The PCT offers an alternative route to filing patent applications directly in the

2. Substantive requirements it must be non-exclusive and non transferable. It must also provide the adequate remuneration to the patentee, determined on a case-by-case basis based on the economic value of the authoriation. Royalty rates are determined 3. Additional requirements a) the subsidiary technology must have considerable relative importance b) the owner of the blocking patent must be given a cross-licnese on reasonable commercial terms c) the license under the blocking patent must be nonassignable except along with the subsidiary patent

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY patents offices of thos countries which are Contracting States of the PCT. It does not preclude taking advantage of the priority rights and other advantages prodived under the Paris Convention and the WTO administered agreement on TRIPS. The PCT provides an additional and optional foreign filing route to patent applications. o Right of priority provides that an application for patent filed by any person who has previously applied for the same invention in another country which by treaty, convention, or law affords similar privileges to Filipino citizen, shall be considered as filed as of the date of filing the foreign application: Provided that: a) the local application expressly priorities; b) it is filed within 12 months from the date the earliest foreign application was filed; c) a certified copy of, the foreign application together with an English translation is filed within 6 months from the date of filing in the Philippines. Chapter 23 REQUIREMENTS FOR PATENTABILITY o The patent law promote progress in the science and the arts by offering a right of exclusion for a limited period as an incentive to inventors to risk often enormous costs in time research and development. The patent system gives on who makes a useful discovery or invention a monopoly in the making, use and vending of it for a limited number of years. o A patent is by its very nature affected with a public interest and is an exception to the general rule against monopolies and to the right to access to a free and open market. Patent is a privilege but it is conditioned by a public purpose. Its results from invention and is limited to the invention which it defines. ELEMENTS OF PATENTABILITY: 1. Novelty 2. Inventive step or non-obviousness 3. Industrial Applicability Question to be used: whether the invention satisfies the standards of patentability o The applicant whose invention satisfies the requirements of novelty, nonobviousness, and utility, and who is willing to reveal to the public the substance of his discovery and the best mode of carrying out his invention, is granted the right to exclude others from making, using, or selling the invention throughout the country, for the statutory period.

PRIOR ART: 1. Everything which has been made available to the public anywhere in the world, before the filing date of the priority date of the application claiming the invention 2. The whole contents of an application for a patent, in accordance with laws INVENTIVE STEP:

It must be a result of a creative idea and may be a step, that is, it must be noticeable. There must be a clearly noticeable distance between the state of art and claimed invention. An invention cannot receive a valid patent if the invention can be readily

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY deduced from publicly available information by a person of ordinary skill in that technology. o The enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the invention without undue experimentation. With regard substantial utility, if composition is in fact useless, appellants specification cannot have taught how to use them. Prior art defeats novelty. Any invention described in a printed publication more than one year prior to the date of a patent application is prior art even if the printed publication was authored by the patent application. sued as such. But where the change of construction suggested, was only to increase its capacity for usefulness, the construction was merely carrying forward of more extended application of the original thought - a change only in form, by substantially the same means, with better results. In this situation, the patent is void for want of patentable novelty. CHAPTER 24 NON-PATENTABLE INVENTIONS EXCLUSIONS FROM PATENTABILITY Section 22. Non-Patentable Inventions. The following shall be excluded from patent protection: 22.1. Discoveries, scientific theories and mathematical methods; 22.2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers; 22.3. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. This provision shall not apply to products and composition for use in any of these methods; 22.4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-organisms and nonbiological and microbiological processes. Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis protection of plant varieties and animal breeds and a system of community intellectual rights protection: 22.5. Aesthetic creations; and 22.6. Anything which is contrary to public order or morality. (Sec. 8, R.A. No. 165a) BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

o FACTORS TO BE CONSIDERED IN DETERMING WHETHER THE SPECIFICATION WOULD REQUIRE UNDUE EXPERIMENTATION (IN RE WANDS CASE) : 1. Quantity of experimentation necessary 2. Amount of presented direction or guidance

3. Presence or absence of working examples 4. Nature of invention 5. State of prior art 6. Relative skill of those in the art 7. Predictability or unpredictability of art 8. Breadth of claim IMPROVEMENT PATENTS: Section 21 recognizes the patentability of improvement patents. It is well established that an improver cannot appropriate the basic patent of another and that the improver without a license is an infringer and may be 74 | P a g e

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The laws of nature, physical phenomena, and abstract ideas have been held not patentable. 2 Einsteins formula (E=mc ) and Newtons law of gravity are merely manifestations of nature, free to all men, and reserved exclusively to none. They are not patentable as they are the basic tools of scientific and technological work. Unpatentable matters are in the public domain. An unpatentable article, like an article on which the patent has expired is in the public and may be made and sold by whoever chooses to do so.

model, or industrial design registration, published in accordance with this Act, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application: Provided, That the application which has validly claimed the filing date of an earlier application under Section 31 of this Act, shall be prior art with effect as of the filing date of such earlier application: Provided further, That the applicant or the inventor identified in both applications are not one and the same. (Sec. 9, R.A. No. 165a) PROVING ANTICIPATION Anticipation by prior art can be found only when a reference discloses exactly what is claimed. A finding of anticipation requires that the publication describe or disclose all of the elements of the claims, arranged as in the patented devise, functioning in substantially same way to produce substantially the same results. It must disclose the complete and operative invention in such full, clear, and exact terms as to enable any person skilled in the art to which the invention relates, or is most nearly connected, to practice the invention without the exercise of inventive skill of his own. A person will be entitled to a patent except under certain circumstances, including that the invention was patented before the applicant invented it, or the invention was described in a patent granted on an application for patent by another filed in the country before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled certain statutory requirements before the invention thereof by the BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

HANDIWORK OF NATURE They serve the ends nature originally provided and act quite independently of any effort of the patentee. NOVELTY AND PRIOR ART Section 23. Novelty. . - An invention shall not be considered new if it forms part of a prior art. (Sec. 9, R.A. No. 165a) Section 24. Prior Art. - Prior art shall consist of: 24.1. Everything which has been made available to the public anywhere in the world, before the filing date or the priority date of the application claiming the invention; and 24.2. The whole contents of an application for a patent, utility

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY applicant for patent.

CHAPTER 26: PROCEDURE FOR GRANT OF INVENTION PATENT
Sec. 40.1. The filing date of a patent application shall be the date of receipt by the Office of at least the following elements: (a) An express or implicit indication that a Philippine patent is sought; (b) Information identifying the applicant; and (c) Description of the invention and one (1) or more claims in Filipino or English. 40.2. If any of these elements is not submitted within the period set by the Regulations, the application shall be considered withdrawn. (n) the appeal to the Director of Patents from any final action by the examiner. (Sec. 16, R. A. No. 165a)

CLASSIFICATION AND SEARCH

Sec. 43. An application that has complied with the formal requirement shall be classified and a search conducted to determine the prior art. (n)

PUBLICATION OF PATENT APPLICATION

Sec 44.1. The patent application shall be published in the IPO Gazette together with a search document established by or on behalf of the Office citing any documents that reflect prior art, after the expiration of eighteen (18) months from the filing date or priority date. 44.2. After publication of a patent application, any interested party may inspect the application documents filed with the Office. 44.3. The Director General, subject to the approval of the Secretary of Trade and Industry, may prohibit or restrict the publication of an application, if in his opinion, to do so would be prejudicial to the national security and interests of the Republic of the Philippines. (n)

Aside from the abovementioned, the following shall also be accomplished: 1) The abovementioned requirements should be in English or Filipino. 2) Payment of filing fee. 3) The IPO may accept a copy of the applications received by the resident agent by telefax, subject to submission of the original copy within 60 days from the filing day. ACCORDING A FILING DATE
Sec. 41. The Office shall examine whether the patent application satisfies the requirements for the grant of date of filing as provided in Section 40 hereof. If the date of filing cannot be accorded, the applicant shall be given an opportunity to correct the deficiencies in accordance with the implementing Regulations. If the application does not contain all the elements indicated in Section 40, the filing date should be that date when all the elements are received. If the deficiencies are not remedied within the prescribed time limit, the application shall be considered withdrawn. (n)

CONFIDENTIALITY BEFORE PUBLICATION

Sec. 45. A patent application, which has not yet been published, and all related documents, shall not be made available for inspection without the consent of the applicant. (n)

OBSERVATION BY THIRD PARTIES

Sec. 47. Following the publication of the patent application, any person may present observations in writing concerning the patentability of the invention. Such observations shall be communicated to the applicant who may comment on them. The Office shall acknowledge and put such observations and comment in the file of the application to which it relates. (n)

FORMALITY EXAMINATION
Sec. 42.1. After the patent application has been accorded a filing date and the required fees have been paid on time in accordance with the Regulations, the applicant shall comply with the formal requirements specified by Section 32 and the Regulations within the prescribed period, otherwise the application shall be considered withdrawn. 42.2. The Regulations shall determine the procedure for the re-examination and revival of an application as well as

The observations by interested third person may include, among others, the existence of enabling prior art that may defeat the novelty of the invention. The IPO has an obligation to inform the applicant of these observations so that the latter may comment thereon. However, the IPO can only acknowledge the observations and comment in the application to which it relates. There can be no action ex parte allowed. The third party who submitted his observations can challenge the validity of the patent in an appropriate action. He is not precluded from doing so.

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The third party observations concerning the patentability may relate to: 1) Availability to the public of a prior art anywhere in the world before the filing date or priority date of application. 2) A single sale of the invention can bar patentability. 3) An invention described in a printed publication more than a year prior to the date of the application is a prior art (even if the author of the publication is the applicant). 4) Research and test reports, government documents, classified or not, are printed publications. 5) College theses with potentially anticipatory material may or may not be a printed publication, depending on the manner of their storage and the degree of availability to the public. 6) Microfilm copies (master copy or ultimate paper copy) are printed publication depending on public accessibility. The standard applied in determining whether the document can be located, recognized, and comprehended is that of a reasonable diligence exercised by a person interested and ordinarily skilled in the subject matter or art. The manner of storage and availability to the public are taken into consideration. REQUEST FOR SUBSTANTIVE EXAMINATION
Sec 48.1. The application shall be deemed withdrawn unless within six (6) months from the date of publication under Section 41, a written request to determine whether a patent application meets the requirements of Sections 21 to 27 and Sections 32 to 39 and the fees have been paid on time. 48.2. Withdrawal of the request for examination shall be irrevocable and shall not authorize the refund of any fee. (n)

XPN: No amendment may introduce new matter which is not disclosed in the original application and is outside the original drawings and specifications. Ratio: to set forth more clearly or accurately the invention originally applied for and described. AMENDMENT OF DRAWINGS GR: Drawings originally presented in a parent application for a patent may be amended. XPN: The introduction of a new matter in the disclosure of an application other than that originally presented. EFFECT OF AMENDMENT ON FILING DATE; RELATION BACK The amendment which is seasonably and properly made not involving a new matter relates back and speaks as of the date of the original application. GRANT OF PATENT
Sec. 50.1. If the application meets the requirements of this Act, the Office shall grant the patent: Provided, That all the fees are paid on time.

If the all fees are not paid in due time, the application shall be deemed to be withdrawn. (Sec. 50.2)
Sec 50.3. A patent shall take effect on the date of the publication of the grant of the patent in the IPO Gazette.

The grant of patent is prima facie evidence that the patentee is the original and first inventor of the invention. REFUSAL OF THE APPLICATION
Sec 51.1. The final order of refusal of the examiner to grant the patent shall be appealable to the Director in accordance with this Act. 51.2. The Regulations shall provide for the procedure by which an appeal from the order of refusal from the Director shall be undertaken. (n)

AMENDMENT OF APPLICATION
Sec. 49. An applicant may amend the patent application during examination: Provided, That such amendment shall not include new matter outside the scope of the disclosure contained in the application as filed. (n)

PUBLICATION UPON GRANT OF PATENT

Sec 52.1. The grant of the patent together with other related information shall be published in the IPO Gazette within the time prescribed by the Regulations. 52.2. Any interested party may inspect the complete description, claims, and drawings of the patent on file with the Office.

GR: Amendment is allowed. For example: adding a name of an omitted coinventor or deletion of a name erroneously added.

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PATENT DOCUMENT A patent is a document, issued, upon application, by the IPO, which describes an invention and creates a legal situation in which the patented invention can normally only be exploited (manufactured, used, sold, imported) with the authorization of the owner of the patent. The protection conferred is limited in time. CONTENTS OF PATENT
Sec. 53. The patent shall be issued in the name of the Republic of the Philippines under the seal of the Office and shall be signed by the Director, and registered together with the description, claims, and drawings, if any, in books and records of the Office.

SURRENDER OF PATENT
Sec. 56.1. The owner of the patent, with the consent of all persons having grants or licenses or other right, title or interest in and to the patent and the invention covered thereby, which have been recorded in the Office, may surrender his patent or any claim or claims forming part thereof to the Office for cancellation. 56.2. A person may give notice to the Office of his opposition to the surrender of a patent under this section, and if he does so, the Bureau shall notify the proprietor of the patent and determine the question. 56.3. If the Office is satisfied that the patent may properly be surrendered, he may accept the offer and, as from the day when notice of his acceptance is published in the IPO Gazette, the patent shall cease to have effect, but no action for infringement shall lie and no right compensation shall accrue for any use of the patented invention before that day for the services of the government.

TERM OF PATENT
Sec. 54. The term of a patent shall be twenty (20) years from the filing date of the application.

However, the patent rights do not accrue in favour of the right holder until the publication of the patent. ANNUAL FEES
Sec. 55.1. To maintain the patent application or patent, an annual fee shall be paid upon the expiration of four (4) years from the date the application was published pursuant to Section 44 hereof, and on each subsequent anniversary of such date. Payment may be made within three (3) months before the due date. The obligation to pay the annual fees shall terminate should the application be withdrawn, refused, or cancelled. 55.2. If the annual fee is not paid, the patent application shall be deemed withdrawn or the patent considered as lapsed from the day following the expiration of the period within which the annual fees were due. A notice that the application is deemed withdrawn or the lapse of a patent for non-payment of any annual fee shall be published in the IPO Gazette and the lapse shall be recorded in the Register of the Office. 55.3. A grace period of six (6) months shall be granted for the payment of the annual fee, upon payment of the prescribed surcharge for delayed payment.

CORRECTION OF MISTAKES OF THE OFFICE

Sec. 57. The Director shall have the power to correct, without fee, any mistake in a patent incurred through the fault of the Office when clearly disclosed in the records thereof, to make the patent conform to the records.

CHANGES IN PATENTS
Sec. 59.1. The owner of a patent shall have the right to request the Bureau to make the changes in the patent in order to: (a) Limit the extent of the protection conferred by it; (b) Correct obvious mistakes or to correct clerical errors; and (c) Correct mistakes or errors, other than those referred to in letter (b), made in good faith: Provided, That where the change would result in a broadening of the extent of protection conferred by the patent, no request may be made after the expiration of two (2) years from the grant of a patent and the change shall not affect the rights of any third party which has relied on the patent, as published.

No change in the patent shall be permitted under this section, where the change would result in the disclosure contained in the patent going beyond the disclosure contained in the application filed. If the IPO changes the patent according to Sec. 59, it shall publish the same up to such extent. Cause of action The section provides a cause of action to interested parties to have the inventorship of the patent changed to reflect the true inventors. Consensus as

The obligation to pay royalties in return for the use of a patented device may not extend beyond the life of the patent. Ratio: To use that leverage to project those royalty payments beyond the life of the patent is analogous to an effort to enlarge the monopoly of the patent.

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to the correct inventorship is not required for as long as there was notice and opportunity to be heard. 3. 4. Purpose To obviate inconvenience and hardship of the common law, which made a patent wholly void if any part of the invention was wrongfully claimed by the patentee, and which made such a defect in a patent an effectual bar to a suit brought upon it, unless he has the right to disclaim the surplus has been preserved. Take Note: Such disclaimer must be entered in the IPO. FORM AND PUBLICATION OF AMENDMENT
Sec. 60. An amendment or correction of a patent shall be accomplished by a certificate of such amendment or correction, authenticated by the seal of the Office and signed by the Director, which certificate shall be attached to the patent. Notice of such amendment or correction shall be published in the IPO Gazette and copies of the patent kept or furnished by the Office shall include a copy of the certificate of amendment or correction.

patent is filed. It is called constructive reduction to practice. The patentee must claim his invention. The doctrine has no application to an unclaimed invention.

Proper inventorship Inventorship is relevant to the issue of validity. The requirements of the law for correction of inventorship must be followed; otherwise, the patent is invalid. Quantum or quality of inventive contribution of a joint inventor There is no explicit lower limit on the quantum or quality of inventive contribution to qualify as a joint inventor. However, the contribution must be a significant manner to the conception of the invention. Thus, a person who only makes explanation concerning the products properties and performance is not a joint inventor. JOINT INVENTORS CONTRIBUTION One need not conceive the entire invention alone for this shall obviate the concept of joint inventorship. . However, the contribution must be a significant manner to the conception of the invention. Hence, each inventor must contribute to the joint arrival at a definite and permanent idea of the invention. REQUIREMENTS FOR JOINT INVENTORSHIP A person who did nothing more than mere explaining and supplying a product and informing inventors of the availability of products for the invention is not a co-inventor. It is because an inventor may use the services, ideas, and aid of others in perfecting his invention without losing his right to the patent. The inventors named in an issued patent are presumed to be correct. In holding that the one claiming that the invention is his must show clear and convincing evidence.

CHAPTER 27 ACQUISITION OF PATENT RIGHTS RIGHT TO A PATENT

Sec. 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 a patent shall belong to them jointly.

The provision assumes that the invention satisfies the elements of patentability under Sec. 21. The invention must be taken out of the realm of speculation into that of reality. So when does an invention exist in legal contemplation? By way of application of the doctrine of constructive reduction to practice. It consists of making and using the invention so that it has physical existence. This does not mean the mere making of sketches or description. There must be more than this, namely: 1. Taking the invention out of the realm of speculation into the realm of reality. He must have actually built the invention for its to exists and be available to the public. 2. Actual reduction to practice is not requires if a complete allowable application for a

AN INVENTOR MUST CONTRIBUTE TO THE CONCEPTION OF THE INVENTION With regard to the inventorship of chemical compunds, an inventor must have a conception of the specific compounds being claimed. General knowledge will not suffice. In this case, reduction to practice per se is irrelevant.

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Sec. 30.1. The person who commissions the work shall own the patent, unless otherwise provided in the contract. 30.2. In case the employee made the invention in the course of his employment contract, the patent shall belong to: (a) The employee, if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer. (b) The employer, if the invention is the result of the performance of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary. (n)

ADOPTION OF IDEAS, SUGGESTIONS, AND MATERIALS FROM OTHERS In arriving at conception, the inventor may consider and adopt ideas and materials derived from many sources such as suggestions from people, so long as he maintains intellectual domination of the work even if the suggestion proves to be the key that unlocks his problem. THE INVENTOR IS NOT REQUIRED TO REDUCE THE INVENTION TO PRACTICE It is not essential for the inventor to be personally involved in carrying out process steps where implementation of those steps does not require the exercise of inventive skills. Inventors need not personally construct and test their invention. They can direct and supervise others to do so. REQUIREMENTS FOR JOINT INVENTORSHIP Inventors may apply for a patent jointly even though: 1. They did not physically work together or at the same time; 2. Each did not make the same type or amount of contribution 3. Each did not make a contribution to the subject matter of every claim of the patent. What is required is quantum of collaboration or connection. Each joint inventor must generally contribute to the conception of the invention. A coinventor need not make a contribution to every claim of a patent. A contribution to one claim is enough. FIRST-TO-FILE RULE
Sec. 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.

It appears that the parties are allowed to stipulate that the employee shall own the patent in par (b) of Sec. 30.1, but not in par (a). RULES ON EMPLOYEE INVENTIONS Shop-right Where a servant, during his hours of employment, working with his masters materials and appliances, conceives and perfects an invention for which he obtains a patent, he must accord his master a nonexclusive right to practice the invention. This is an application of equitable principles. Since the servant uses his masters time, facilities and materials, the latter is in equity entitled to use that which embodies his own property and to duplicate it as often as he may find occasion to employ similar appliances in his business. But the employer has no equity to demand conveyance of the invention. PATENT APPLICATION BY PERSONS NOT HAVING THE RIGHT TO A PATENT
Sec. 67.1. 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: (a) Prosecute the application as his own application in place of the applicant; (b) File a new patent application in respect of the same invention; (c) Request that the application be refused; or (d) Seek cancellation of the patent, if one has already been issued. 67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis to a new application filed under Subsection 67.1

First to file is the rule in which patent priority is determined by which inventor was the first to file a patent application, rather than who was the first to actually invent. INVENTIONS CREATED PURSUANT TO A COMMISSION AND EMPLOYMENT RELATIONSHIP

Sec. 67.1 refers to Sec. 29, which provides that if 2 or more persons have made the invention separately and independently of each other, the right to the patent shall belong the person who filed an application for such invention, or where two or applications are filed for the same invention, to the

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applicant who has the earliest filing date, or the earliest priority date. While Sec. 29 adopts the first-to-file rule, Sec. 67.1 allows a person other than the patent applicant to obtain a declaration by court order or decision that he has the right to the patent. This provision gives a cause of action to the true and actual inventor, who was not the first to file, to reclaim the patent through court action. Sec. 67.1 creates an exception to the first-to-file rule even in the absence of deprivation of consent or fraud upon the true and actual inventor. The new application filed under Sec. 67.1 shall be governed by:
Sec. 38.2. If several independent inventions which do not form a single general inventive concept are claimed in one application, the Director may require that the application be restricted to a single invention. A later application filed for an invention divided out shall be considered as having been filed on the same day as the first application: Provided, That the later application is filed within four (4) months after the requirement to divide becomes final, or within such additional time, not exceeding four (4) months, as may be granted: Provided further, That each divisional application shall not go beyond the disclosure in the initial application. and executory, and shall be recorded in the register of the Office. (n)

It requires the court to furnish the IPO with a copy of its decision for the apparent purpose of recording the name and identity of the true and actual inventor with the records of the office. Time to file action in court
Sec. 70. The actions indicated in Sections 67 and 68 shall be filed within one (1) year from the date of publication made in accordance with Sections 44 and 51, respectively. (n)

These provisions reinforce the view that, where the invention was made separately and independently, the first inventor may still be declared entitled to the patent even if another applicant had filed a patent application for it ahead. CHAPTER 28 RIGHTS ACQUIRED RIGHTS ACQUIRED ON FILING ON APPLICATION
Sec. 31. An application for patent filed by any person who has previously applied for the same invention in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing the foreign application: Provided, That: (a) the local application expressly claims priority; (b) it is filed within twelve (12) months from the date the earliest foreign application was filed; and (c) a certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing in the Philippines.

REMEDIES OF THE TRUE AND ACTUAL INVENTOR

Sec. 68. 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.

The aforementioned are the requisites to be entitled to the priority of an earlier-filed foreign application. RIGHTS ACQUIRED AFTER PUBLICATION
Sec. 46. The applicant shall have all the rights of a patentee under Section 76 against any person who, without his authorization, exercised any of the rights conferred under Section 71 of this Act in relation to the invention claimed in the published patent application, as if a patent had been granted for that invention: Provided, That the said person had: 46.1. Actual knowledge that the invention that he was using was the subject matter of a published application; or 46.2. Received written notice that the invention that he was using was the subject matter of a published application being identified in the said notice by its serial number: Provided, That the action may not be filed until after the grant of a patent on the published application

This provision appears to be limited to situations where the true and actual inventor has been deprived of the patent without his consent or though fraud and has been declared entitled to the patent by final court order or decision. It would also appear that when the true inventor is substituted as the patentee, he would no longer be entitled to damages, which are available if warranted only if he exercises the option of cancellation. PUBLICATION OF THE COURT ORDER
Sec. 69. The court shall furnish the Office a copy of the order or decision referred to in Sections 67 and 68, which shall be published in the IPO Gazette within three (3) months from the date such order or decision became final

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and within four (4) years from the commission of the acts complained of. (n)

of the patent. Those acts usually are referred to as protected acts. SCOPE OF PROTECTION Does the exclusive right covers only the making of the product exactly described in the patent for invention or also the making of a similar product? For an examination of this question, it is necessary to evaluate the description and the claims as filed in the patent application and accepted in the patent for invention by the IPO. The claims determine the scope of protection but the description may be used in order to interpret the claims. The specific statements of the claims are not necessarily the limits of the scope of the protection: that scope will go beyond those statements if, in the light of the description, they may be considered/interpreted as also covering solutions similar to the ones specifically mentioned in the claims. INFRINGEMENT OF THE EXCLUSIVE RIGHT TO MAKE THE PRODUCT Infringement by manufacture involves the making of the patented product without the authorization of the owner of the patent. As a general rule, this is not allowed. However, there are 3 exceptions: 1. Where the patented product is made under a compulsory license or under an authorization by the Government on grounds of public interests. 2. Where the product is made for the sole purpose of scientific research and experiment. Ratio: To make it easier and cheaper for scientific institutions to carry out experiments. 3. Where an entity or person, other than the applicant, had started making the product before the time when the patent application for an invention consisting of the product was filed. E.g. An invention is made by two different persons independently, especially where residing in different countries. AUTHORIZATION TO MAKE THE PRODUCT

The right of the applicant under Sec. 46 is subject to Sections 68 and 73:
Sec. 68. Remedies 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. 73. Prior User. 73.1. Notwithstanding Section 72 hereof, any prior user, who, in good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business, before the filing date or priority date of the application on which a patent is granted, shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect. 73.2. The right of the prior user may only be transferred or assigned together with his enterprise or business, or with that part of his enterprise or business in which the use or preparations for use have been made.

Sec. 72 appears to exempt a prior user in good faith from any infringement liability in favor of the patentee, but such protection is unnecessary since if there was a prior user of the invention that was subsequently obtained, this negates the novelty of the subsequent application, which should in fact be the subject of the cancellation proceedings. RIGHTS CONFERRED UPON GRANT
Sec. 71.1. A patent shall confer on its owner the following exclusive rights: (a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product; (b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any unauthorized person or entity from using the process, and from manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from such process. 71.2. Patent owners shall also have the right to assign, or transfer by succession the patent, and to conclude licensing contracts for the same.

Each and every one of these acts may, lawfully, be carried out only with the authorization of the owner

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Such authorization is usually given against payment to, or some other advantage for, the owner of the patent. The authorization may be granted without limitation, and the one receiving the authorization may manufacture the patented product anywhere in the country, in any quantity and without limitation in time. Conversely, the authorization may be granted with limitations since the owner of the patent may be free not to grant any authorization. MEANING OF USE It does not require that the use be repetitive or continuous. Use is a protected act regardless of what the user is, and for what purposes it has. Use without authorization from the owner is an infringement of the exclusive right of the latter, except in the following cases: 1. Compulsory license or authorization from the Government for public interest 2. Scientific research and experiment 3. Occurs in vehicles in transit in the country 4. The user has the special right to continue to make the product 5. The product used was put on the market by the owner of the patent with his authorization AUTHORIZATION TO USE THE PRODUCT It may be limited or unlimited. Typical limitations are the ff.: 1. Time - The use is only authorized until a certain date which may not be beyond the expiration of the patent. 2. Place - Authorized only in certain parts of the country or in certain places. 3. Quantity - It must not exceed the extent indicated in the authorization. 4. Purpose - Only for certain purposes. MEANING OF SALE Sale is a protected act irrespective whether the product actually sold was made by the owner of the patent, with or without authorization. Any product that corresponds to the description of the invention and is claimed in the patent, even if made without the authorization of the owner is a patented product. The sale of similar products is also a protected act provided that the similarity corresponds to the criteria that cause their making to be a protected act. INFRINGEMENT OF THE EXCLUSIVE RIGHT TO SELL THE PRODUCT Sale without authorization from the patent owner constitutes infringement except in the ff.: 1. Compulsory license or authorization from the Government for public interest 2. The product sold was put on the market by the owner of the patent with his authorization. With respect to an article which consists of or incorporates the patented product, the sale is not an infringement since such a sale does not require the authorization of the owner of the patent. AUTHORIZATION TO SELL THE PRODUCT This is required in respect of each and every object that consists of or includes the patented product. It may include limitations. However, the authorization is generally required only for the first sale of any given object. MEANING OF IMPORT It is imported when an article which constitutes of incorporates the patented product is brought into the country. It is a physical act of transportation of the product across the border into the territory of the country. Irrelevant matters: 1. It is irrelevant which country the product was imported from. 2. The purposes of importation. 3. Whether the imported product enjoyes patent protection in the country from which it was made or came from. 4. Whether the making of the product took place in conformity with or in violation of the patent law of a foreign

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country. Because the patent law of a cpuntry has no effect in any other country. What is relevant? The imported product should consist of or include an invention which, in the country of importation, is protected by a patent granted by the importing country. INFRINGEMENT OF THE EXCLUSIVE RIGHT TO IMPORT THE PRODUCT Importation without authorization of the owner of the patent is infringement, except when: 1. Compulsory license or authorization by the government for public interest 2. Scientific research and experiment 3. Concerning the use of vehicles temporarily entering the territory PROTECTED ACTS IN RELATION TO PATENTED PROCESSES Since it is sometimes difficult to foresee, when the invention is made and when the claims are drafted, all possible uses to which a process may be put, one must be particularly careful to formulate the claims as broadly as possible. When some variations can be derived from the interpretation of the claims on the basis of description, it will be considered as being within the scope of protection. INFRINGEMENT OF THE EXCLUSIVE RIGHT TO USE THE PROCESS Use of the patented process without authorization constitutes infringement, except in the ff. 1. Compulsory license or authorization by the government for public interest 2. Scientific research and experiment 3. Concerning the use of vehicles temporarily entering the territory 4. The user of the patented process had started using the process before the patent application was filed AUTHORIZATION TO USE THE PROCESS Such authorization is usually given against payment to, or some other advantage for, the owner of the patent. It may be subject to limitations, some of which are: 1. Time 2. The use is only authorized until a certain date which may not be beyond the expiration of the patent. Authorized only in certain parts of the country or in certain places.

Place -

3.

4.

Quantity - It must not exceed the extent indicated in the authorization. Purpose - Only for certain purposes.

MAKING OF PRODUCTS DIRECTLY OBTAINED THROUGH THE PROCESS Only those directly obtained through the patented process is a protected act. Directly means immediately or without further transformatio n or modification. USE, SALE, IMPORTATION OF PRODUCTS DIRECTLY OBTAINED THROUGH THE PROCESS It is to be noted that the fact that the product is imported from a country where the process for making of the product is notor no longer protected under the patent law of that country does not make legal any importation, sale and use without authorization of the owner of the patent granted under the law of the country into which the product is imported. RIGHT TO SELL OR AUTHORIZE SALE An owner of a patent has the right to sell it or to keep it; to manufacture the article himself or to license others to manufacture it; to sell such article himself or to authorize others to sell it. The law impressed upon it the qualities and characteristics of property for a specified period. Hence, on the owners death, it passes, with his personal estate, to his legal representatives, and becomes part of his estate. An absolute and unconditional sale operates to pass the patented thing outside the boundaries of the patent, because such a sale implies that the patentee consents that the purchaser may use the machines so long as its identity is preserved. RIGHT TO LICENSE The owner of the patent may limit a license to use for specific purposes only, may charge what he

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thinks proper for permitting invasion of his monopoly, and may contract for his consideration either in money, or by way of conditions on the use, or both. The conditions imposed must be legal. FULL AND COMPLETE TRANSFER OF PATENTED ARTICLE A patentee who has parted with the article patented by passing title to a purchaser has placed the article beyond the limits of the monopoly secured by the act. CHAPTER 29: LIMITATIONS OF PATENT RIGHTS NON-INFRINGING ACTS
Sec. 72. The owner of a patent has no right to prevent third parties from performing, without his authorization, the acts referred to in Section 71 hereof in the following circumstances: 72.1. Using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar as such use is performed after that product has been so put on the said market; 72.2. Where the act is done privately and on a noncommercial scale or for a non-commercial purpose: Provided, That it does not significantly prejudice the economic interests of the owner of the patent; 72.3. Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention; 72.4. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared; 72.5. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other country entering the territory of the Philippines temporarily or accidentally: Provided, That such invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not used for the manufacturing of anything to be sold within the Philippines.

issuance of patents whose effects are to remove existent knowledge from public domain, or to restrict free access to materials already available. Also, when the patented product passes to the hands of the purchaser, it is no longer within the limits of the monopoly. It passes outside of it, and is no longer under the protection of the Congress. SALE AND USE FOR EXPERIMENTAL PURPOSES A sale by the inventor for experimental purposes precludes the application of the on-sale bar. Similarly, an experimental use by a third party without the inventors authority precludes liability for infringement. How is sale determined? That the invention asserted to be on sale was operable, the complete invention was embodied in or obvious in view of the device offered for sale, and the sale or offer was primarily for profit rather than for experimental purposes. All circumstances surrounding the sale or offer to sell, including the stage of development of the invention and the nature of the invention must be considered and weighed. FACTORS CONSIDERED IN DETERMINING EXPERIMENTAL USE There must be consideration of the totality of the circumstances and the policies underlying the public use bar. The length of the test period of the invention or similar devices, whether the inventor received payment for testing, any agreement maintaining confidential use, records of testing, persons involved, and the number of tests are considered. PATENTEES LIMITED MONOPOLY It is the right or power to exclude all others from manufacturing, using, or selling his invention. He may not condition his license so as to tie to the use of the patented product or process the use of other products, processes or materials outside of the monopoly of his patent. In short, it may not be enlarged for the exploitation of the monopoly of another, or of an unpatented article, or of a business not embraced in the patent. RELINQUISHMENT OF PATENT MONOPOLY With the sale of the patented product or process, the patent-owner conferred on the buyer the right

STATUTORY BALANCE There must be a balance between the need to encourage innovation and the avoidance of monopolies which stifle competition without any concomitant advance in the progress of the science and useful arts. Congress may not create patent monopolies of unlimited duration, nor may it authorize the

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to practice the patent and parted with the right to assert its patent monopoly. ABSOLUTE AND UNCONDITIONAL SALE OPERATES A sale implies that the patentee consents that the purchaser may use the machines so long as its identity is preserved. Hence, it operates to pass the patented thing outside the boundaries of the patent so long as its identity is preserved. EXPLOITATION OF ALL OR SOME OF PATENTEES RIGHTS The patentee may maintain a close monopoly of the rights granted or separately exercise the distinct rights to make, to use, and to sell. He may limit a license to use for specific purposes only, may charge what he thinks proper for permitting invasion of his monopoly, and may contract for his consideration either in money, or by way of conditions on the use, or both. He may impose conditions not definitely illegal. NO RESERVATION OF RIGHT AFTER SALE Where the transfer of the patented thing is full and complete, an attempt to reserve the right to fix the price at which it is to be resold by the buyer is futile. A patentee who has parted with the thing patented by passing title to a buyer has placed the thing beyond the limits of the monopoly secured by the act. PATENT GRANT CANNOT BE EXTENDED BY CONTRACT A patent afford no immunity for a monopoly not fairly or plainly within the grant. The public policy which included inventions within the granted monopoly excludes from it all that is not embraced in the invention. It equally forbids the use of the patent to secure an exclusive right or limited monopoly not granted by the IPO. Beyond the limited monopoly, the arrangements by which the patent is used are subject to the general law. PATENT CONFERS EXCLUSIONARY MONOPOLY It is the right or power to exclude all others from manufacturing, using, or selling his invention. The extent of that right is limited by the definition of his invention, as its boundaries are marked by the specifications and claims of the patent. LIMITATIONS ARISING FROM PRIOR USE
Sec. 73.1. Notwithstanding Section 72 hereof, any prior user, who, in good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business, before the filing date or priority date of the application on which a patent is granted, shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect.

Preservation of Existing Rights

Sec. 236. Nothing herein shall adversely affect the rights on the enforcement of rights in patents, utility models, industrial designs, marks and works, acquired in good faith prior to the effective date of this Act. Sec. 73.2. The right of the prior user may only be transferred or assigned together with his enterprise or business, or with that part of his enterprise or business in which the use or preparations for use have been made.

Sec. 73 creates an exception from the rule that the inventor has the exclusive right to make, use and sell the patented product. It also exempts from any liability for infringement any prior user under Sec. 73.1. It tempers the rigid application of the first-tofile rule. However, the exemption only covers the use limited to the prior users business or enterprise. It is also worth noting that the prior user is clearly a prior inventor himself whose exploitation and use of the invention constitutes enabling prior art under the absolute novelty rule in Sec. 21. Hence, he can also seek cancellation of the subsequent patent for lack of novelty. USE OF INVENTIONS BY GOVERNMENT
Sec. 74.1. A Government agency or third person authorized by the Government may exploit the invention even without agreement of the patent owner where: (a) the public interest, in particular, national security, nutrition, health or the development of other sectors, as determined by the appropriate agency of the government, so requires; or (b) A judicial or administrative body has determined that the manner of exploitation, by the owner of the patent or his licensee, is anti-competitive. 74.2. The use by the Government, or third person authorized by the Government shall be subject, mutatis mutandis, to the conditions set forth in Sections 95 to 97 and 100 to 102.

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The government is treated like a licensee of the patentee. Therefore, the government is also liable to the patentee for royalties. Requirement to Obtain a License on Reasonable Commercial Terms
Sec. 95.1. The license will only be granted after the petitioner has made efforts to obtain authorization from the patent owner on reasonable commercial terms and conditions but such efforts have not been successful within a reasonable period of time. 95.2. The requirement under Subsection 95.1 shall not apply in the following cases: (a) Where the petition for compulsory license seeks to remedy a practice determined after judicial or administrative process to be anti-competitive; (b) In situations of national emergency or other circumstances of extreme urgency; (c) In cases of public non-commercial use. 95.3. In situations of national emergency or other circumstances of extreme urgency, the right holder shall be notified as soon as reasonably practicable. 95.4. In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly. 97.3. The use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent; and 97.4. The terms and conditions of Sections 95, 96 and 98 to 100 of this Act.

Terms and Conditions of Compulsory License

Sec. 100. The basic terms and conditions including the rate of royalties of a compulsory license shall be fixed by the Director of Legal Affairs subject to the following conditions: 100.1. The scope and duration of such license shall be limited to the purpose for which it was authorized; 100.2. The license shall be non-exclusive; 100.3. The license shall be non-assignable, except with that part of the enterprise or business with which the invention is being exploited; 100.4. Use of the subject matter of the license shall be devoted predominantly for the supply of the Philippine market: Provided, That this limitation shall not apply where the grant of the license is based on the ground that the patentees manner of exploiting the patent is determined by judicial or administrative process, to be anti-competitive. 100.5. The license may be terminated upon proper showing that circumstances which led to its grant have ceased to exist and are unlikely to recur: Provided, That adequate protection shall be afforded to the legitimate interest of the licensee; and 100.6. The patentee shall be paid adequate remuneration taking into account the economic value of the grant or authorization, except that in cases where the license was granted to remedy a practice which was determined after judicial or administrative process, to be anti-competitive, the need to correct the anti-competitive practice may be taken into account in fixing the amount of remuneration.

Compulsory Licensing of Patents Involving SemiConductor Technology

Sec. 96. In the case of compulsory licensing of patents involving semi-conductor technology, the license may only be granted in case of public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive.

Compulsory License Based on Interdependence of Patents

Sec. 97. If the invention protected by a patent, hereafter referred to as the "second patent," within the country cannot be worked without infringing another patent, hereafter referred to as the "first patent," granted on a prior application or benefiting from an earlier priority, a compulsory license may be granted to the owner of the second patent to the extent necessary for the working of his invention, subject to the following conditions: 97.1. The invention claimed in the second patent involves an important technical advance of considerable economic significance in relation to the first patent; 97.2. The owner of the first patent shall be entitled to a cross-license on reasonable terms to use the invention claimed in the second patent;

Amendment, Cancellation, Surrender of Compulsory License

Sec. 101.1. Upon the request of the patentee or the licensee, the Director of Legal Affairs may amend the decision granting the compulsory license, upon proper showing of new facts or circumstances justifying such amendment. 101.2. Upon the request of the patentee, the said Director may cancel the compulsory license: (a) If the ground for the grant of the compulsory license no longer exists and is unlikely to recur;

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(b) If the licensee has neither begun to supply the domestic market nor made serious preparation therefor; (c) If the licensee has not complied with the prescribed terms of the license; 101.3. The licensee may surrender the license by a written declaration submitted to the Office. 101.4. The said Director shall cause the amendment, surrender, or cancellation in the Register, notify the patentee, and/or the licensee, and cause notice thereof to be published in the IPO Gazette.

The wider the claim is, the more open it is to attack on grounds of lack of novelty or on grounds of obviousness. Extent of Protection and Interpretation of Claims
Sec. 75.1. The extent of protection conferred by the patent shall be determined by the claims, which are to be interpreted in the light of the description and drawings. 75.2. For the purpose of determining the extent of protection conferred by the patent, due account shall be taken of elements which are equivalent to the elements expressed in the claims, so that a claim shall be considered to cover not only all the elements as expressed therein, but also equivalents.

Licensees Exemption from Liability.

Sec. 102. Any person who works a patented product, substance and/or process under a license granted under this Chapter, shall be free from any liability for infringement: Provided however, That in the case of voluntary licensing, no collusion with the licensor is proven. This is without prejudice to the right of the rightful owner of the patent to recover from the licensor whatever he may have received as royalties under the license.

CLAIMS INTERPRETATION AND PROTECTION The Claims

Sec. 36.1. The application shall contain one (1) or more claims which shall define the matter for which protection is sought. Each claim shall be clear and concise, and shall be supported by the description.

Doctrine of Equivalents Minor modifications in a patented invention are sufficient to put the item beyond the scope of literal infringement. An infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and, albeit with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result. Proof of adoption of the substance of the thing will be sufficient. Ratio: To permit the imitation of a patented invention which does not copy any literal detail would be to convert the protection of the patent grant into a hollow and useless thing. PROTECTION OF PATENT IS MEASURED BY THE CLAIMS Everything not covered by the claim/s is disclaimed or waived, and is open to the public, and the patentee, or one claiming under the patent, is bound by the limitations contained therein. COURTS CANNOT EXPAND THE CLAIMS Courts may not add to, or detract from, the claims matter not expressed or necessarily implied, or enlarge the patent beyond the scope of that which the inventor claim and the IPO allowed, even though the patentee may have been entitled to something more than the words the patentee has chosen will include. PROSECUTION HISTORY ESTOPPEL Also called file wrapper, it is the complete record of all proceedings in the IPO and any express

The claims shall be clear and concise and supported by the description.
36.2. The Regulations shall prescribe the manner of the presentation of claims.

The description must provide a fair basis for the invention defined by the claims. The claims must not be an invention broader than that described. The function of the claims is to define clearly the scope of the exclusive rights provided by the patent. This is done in terms of the technical features of the invention disclosed in the description. How to draft a claim? It must be a series that starts with a broad claim; the following claims become narrower and narrower. They are called dependent claims. Why series?

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representations made by the applicant about a claims scope. Positions taken in order to obtain the allowance of the patent applicants claims are pertinent to an understanding and interpretation of the claims are pertinent to an understanding and interpretation of the claims and may work an estoppel as against subsequent different or broader interpretation. DETERMINING INFRINGEMENT OF CLAIMS Two-step Analysis First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process. Claim Construction The court looks to the claims, the specifications, the prosecution history, and if necessary, extrinsic evidence. CHAPTER 30 REGISTRATION OF UTILITY MODELS APPLICABILITY OF PROVISIONS RELATING PATENTS TO
109.4. In proceedings under Sections 61 to 64, the utility model registration shall be canceled on the following grounds: (a) That the claimed invention does not qualify for registration as a utility model and does not meet the requirements of registrability, in particular having regard to Subsection 109.1 and Sections 22, 23, 24 and 27; (b) That the description and the claims do not comply with the prescribed requirements; (c) That any drawing which is necessary for the understanding of the invention has not been furnished; (d) That the owner of the utility model registration is not the inventor or his successor in title.

UTILITY MODELS AND INVENTIONS COMPARED Utility models differ from inventions for which patents for invention are available mainly in two respects: 1) In the case of an invention called utility model, the technological progress required is smaller than that of an invention 2) The maximum term of protection provided in the law for a utility model is generally much shorter than the maximum term of that of an invention. UTILITY MODEL NOT CONSIDERED NEW It is not considered new if it is substantially similar to any utility model so known, used or described within the country. If two devices do the same work in substantially the same way accomplishing the same resultthey are the same, even though they differ in name, form or shape. CONVERSION OF PATENT APPLICATIONS OR APPLICATIONS FOR UTILITY MODEL REGISTRATION
Sec. 110.1. At any time before the grant or refusal of a patent, an applicant for a patent may, upon payment of the prescribed fee, convert his application into an application for registration of a utility model, which shall be accorded the filing date of the initial application. An application may be converted only once. 110.2. At any time before the grant or refusal of a utility model registration, an applicant for a utility model registration may, upon payment of the prescribed fee, convert his application into a patent application, which shall be accorded the filing date of the initial application.

Sec. 108.1. Subject to Section 109, the provisions governing patents shall apply, mutatis mutandis, to the registration of utility models. 108.2. Where the right to a patent conflicts with the right to a utility model registration in the case referred to in Section 29, the said provision shall apply as if the word patent were replaced by the words "patent or utility model registration."

SPECIAL PROVISIONS MODELS

RELATING

TO

UTILITY

Sec. 109.1. (a) An invention qualifies for registration as a utility model if it is new and industrially applicable. (b) Section 21, "Patentable Inventions", shall apply except the reference to inventive step as a condition of protection. 109.2. Sections 43 to 49 shall not apply in the case of applications for registration of a utility model. 109.3. A utility model registration shall expire, without any possibility of renewal, at the end of the seventh year after the date of the filing of the application.

PROHIBITION AGAINST APPLICATIONS

FILING

OF

PARALLEL

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Sec. 111. An applicant may not file two (2) applications for the same subject, one for utility model registration and the other for the grant of a patent whether simultaneously or consecutively.

The Chapter on Utility Model dispenses with the substantive examination of utility models and opts for simple registration system. (See Sec. 109.2) However, utility models must be new and industrially applicable to qualify for registration. Otherwise, it is a ground for cancellation of the registration. INDUSTRIAL DESIGNS
Sec. 112. An Industrial Design is any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors: Provided,That such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft; Sec. 113.2. Industrial designs dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order, health or morals shall not be protected.

FUNCTIONALITY No functionality requirement in obtaining a design patent. A design patent cannot be obtained to protect a mechanical function or cover an article whose configuration affects utility alone. Patentability is based on the design of the thing, not the use. The design of a useful article is deemed to be functional, and thus not patentable, when the appearance of the claimed design is dictated by the use or purpose of the article. But if other designs could produce the same or similar functional capabilities, the design of the article in question is likely ornamental, not functional. VISIBILITY OF DESIGN GR: Concealed features are not a proper basis for design patent protection because their appearance is not a matter of concern. EXPN: When during some point in its life, its appearance is a matter of concern. To protect intellectual property which consists of a pleasing design, and not an identifying mark, the manufacturer must seek design-patent laws and not the aid of trademark laws. CONTENTS OF THE APPLICATION FOR INDUSTRIAL DESIGN
Sec. 114.1. Every application for registration of an industrial design or layout-design shall contain: (a) A request for registration of the industrial design or layout-design; (b) Information identifying the applicant; (c) An indication of the kind of article of manufacture or handicraft to which the industrial design or layout-design shall be applied; (d) A representation of the article of manufacture or handicraft by way of drawings, photographs or adequate graphic representation of the industrial design or of the layout-design as applied to the article of manufacture or handicraft which clearly and fully discloses those features for which protection is claimed; and (e) The name and address of the creator, or where the applicant is not the creator, a statement indicating the origin of the right to the industrial design or layout-design registration. 114.2. The application may be accompanied by a specimen of the article embodying the industrial design or layoutdesign and shall be subject to the payment of the prescribed fee.

A design patent only protects the novel features of the design patented. The points of novelty in a design patent relate to differences from prior designs and the novelty of a design patent is to be considered in the light of the impact of the design upon an ordinary observer and this condition is met when the average observer takes a new design for a different, and not a modified, already-existing design. It is only concerned with industrial art, not fine art. It is also subject to some of same requirements as utility patent, but it is now function of invention that is protected by patent, but rather that which gives peculiar or distinctive appearance to manufacture, or article. Anticipated or Unoriginal Design It is essential that what was known or used, patented, or described in a printed publication should be substantially identical with it in appearance. The effect that the design produces, visualized by the ordinary observer giving such attention as a purchaser usually gives. It is sufficient if the design as a whole produces a new impression on the eye of the ordinary observer. The viewpoint of an expert is inapplicable.

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Several Industrial Designs in One Application
Sec. 115. Two (2) or more industrial designs may be the subject of the same application: Provided, That they relate to the same sub-class of the International Classification or to the same set or composition of articles. record the change in the identity of the proprietor, if the fee is not paid, the request shall be deemed not to have been filed. In such case, the former proprietor and the former representative shall remain subject to the rights and obligations as provided in this Act. 117.5. Anyone may inspect the Register and the files of registered industrial designs or layout-designs including files of cancellation proceedings.

EXAMINATION OF INDUSTRIAL DESIGNS

Sec. 116.1. The Office shall accord as the filing date the date of receipt of the application containing indications allowing the identity of the applicant to be established and a representation of the article embodying the industrial design or the layout -design or a pictorial representation thereof. 116.2. If the application does not meet these requirements, the filing date should be that date when all the elements specified in Sec. 114 are filed or the mistakes corrected. Otherwise, if the requirements are not complied within the prescribed period, the application shall be considered withdrawn. 116.3. After the application has been accorded a filing date and the required fees paid on time, the applicant shall comply with the requirements of Sec. 114 within the prescribed period, otherwise the application shall be considered withdrawn. 116.4. The Office shall examine whether the industrial design or layout-design complies with requirements of Sec. 112 (Definitions) and Sec. 113 (Substantive Conditions for Protection).

TERM OF INDUSTRIAL DESIGN REGISTRATION

Sec. 118.1. The registration of an industrial design shall be for a period of five (5) years from the filing date of the application. 118.2. The registration of an industrial design may be renewed for not more than two (2) consecutive periods of five (5) years each, by paying the renewal fee. 118.3. The renewal fee shall be paid within twelve (12) months preceding the expiration of the period of registration. However, a grace period of six (6) months shall be granted for payment of the fees after such expiration, upon payment of a surcharge. 118.4. The Regulations shall fix the amount of renewal fee, the surcharge and other requirements regarding the recording of renewals of registration. 118.5. Registration of a layout-design shall be valid for a period often (10) years, without renewal, and such validity to be counted from the date of commencement of the protection accorded to the layout-design. The protection of a layout-design under this Act shall commence: a) on the date of the first commercial exploitation, anywhere in the world, of the layout-design by or with the consent of the right holder: Provided, That an application for registration is filed with the Intellectual Property Office within two (2) years from such date of first commercial exploitation; or b) on the filing date accorded to the application for the registration of the layout-design if the layout-design has not been previously exploited commercially anywhere in the world.

REGISTRATION OF INDUSTRIAL DESIGNS

Sec. 117.1. Where the Office finds that the conditions referred to in Sec. 113 are fulfilled, it shall order that registration be effected in the industrial design or layoutdesign register and cause the issuance of an industrial design or layout-design certificate of registration; otherwise, it shall refuse the application.

It suggests that applications for industrial designs are subject to limited examination for the purpose of determining novelty or originality in compliance with Sec. 113. This requires research, examination and analysis of the prior art.
117.2. The form and contents of an industrial design or layout-design certificate shall be established by the Registrations: Provided, That the name and address of the creator shall be mentioned in every case. 117.3. Registration shall be published in the form and within the period fixed by the Regulations. 117.4. The Office shall record in the register any change in the identity of the proprietor of the industrial design or layout design or his representative, if proof thereof is furnished to it. A fee shall be paid, with the request to

APPLICATION OF OTHER SECTIONS AND CHAPTERS

Sec. 119.1. The following provisions relating to patents shall apply mutatis mutandis to an industrial design registration. SECTION 21. - Novelty; SECTION 24 - Prior art: Provided, That the disclosure is contained in printed documents or in any tangible form; SECTION 25 - Non prejudicial Disclosure; SECTION 28 - Right to a Patent; SECTION 29 - First to File Rule; SECTION 30 - Inventions Created Pursuant to a Commission;

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SECTION 31 - Right of Priority: Provided, That the application for industrial design shall be filed within six (6) months from the earliest filing date of the corresponding foreign application; SECTION 33 - Appointment of Agent or Representative; SECTION 51 - Refusal of the Application; SECTION 56 to 60 - Surrender, Correction of and Changes in Patent; CHAPTER VII - Remedies of a Person with a Right to Patent; CHAPTER VIII - Rights of Patentees and Infringement of Patents; and CHAPTER XI - Assignment and Transmission of Rights 119.2. If the essential elements of an industrial design which is the subject of an application have been obtained from the creation of another person without his consent, protection under this Chapter cannot be invoked against the injured party. Sec. 120.3. Any interested person may petition that the registration of a layout-design be cancelled on the ground that: (i) the layout-design is not protectable under this Act; (ii) the right holder is not entitled to protection under this Act; or (iii) where the application for registration of the layoutdesign, was not filed within two (2) years from its first commercial exploitation anywhere in the world.

Where the grounds for cancellation are established with respect only to a part of the layout-design, only the corresponding part of the registration shall be cancelled. Any cancelled layout-design registration or part thereof, shall be regarded as null and void from the beginning and may be expunged from the records of the Intellectual Property Office. Reference to all cancelled layout-design registration shall be published in the IPO Gazette.

INDUSTRIAL DESIGNS FROM ANOTHER PERSONS CREATION

Sec. 119.2. If the essential elements of an industrial design which is the subject of an application have been obtained from the creation of another person without his consent, protection under this Chapter cannot be invoked against the injured party.

PROTECTION OF LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS RA 9150 added to the IP Code Section 112 for the purpose of protecting layout designs of integrated circuits.
Sec. 112. 1. An Industrial Design is any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors: Provided,That such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft; 2. Integrated Circuit means a product, in its final form, or an intermediate form, in which the elements, at least one of which is an active element and some or all of the interconnections are integrally formed in and/or on a piece of material, and which is intended to perform an electronic function; and 3. Layout-Design is synonymous with 'Topography' and means the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture.

In reality, the novelty and originality of the design is subject to question in an infringement case and, therefore, even third parties may assail its originality and novelty by showing that the design was disclosed in the prior art. CANCELLATION OF DESIGN REGISTRATION
Sec. 120.1. At any time during the term of the industrial design registration, any person upon payment of the required fee, may petition the Director of Legal Affairs to cancel the industrial design on any of the following grounds: (a) If the subject matter of the industrial design is not registerable within the terms of Sections 112 and 113; (b) If the subject matter is not new; or (c) If the subject matter of the industrial design extends beyond the content of the application as originally filed. 120.2. Where the grounds for cancellation relate to a part of the industrial design, cancellation may be effected to such extent only. The restriction may be effected in the form of an alteration of the effected features of the design.

SUBSTANTIVE CONDITIONS FOR PROTECTION

Sec. 113.1. Only industrial designs that are new or ornamental shall benefit from protection under this Act. 13.2. Industrial designs dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order, health or morals shall not be protected.

GROUNDS FOR CANCELLATION OF LAYOUT-DESIGN OF INTEGRATED CIRCUITS

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113.3. Only layout -designs of integrated circuits that are original shall benefit from protection under this Act. A layout-design shall be considered original if it is the result of its creator's own intellectual effort and is not commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of its creation. 113.4. A layout-design consisting of a combination of elements and interconnections that are commonplace shall be protected only if the combination, taken as a whole, is original. prescribed period, otherwise the application shall be considered withdrawn. 116.4. The Office shall examine whether the industrial design or layout-design complies with requirements of Sec. 112 (Definitions) and Sec. 113 (Substantive Conditions for Protection).

REGISTRATION
Sec. 117.1. Where the Office finds that the conditions referred to in Sec. 113 are fulfilled, it shall order that registration be effected in the industrial design or layoutdesign register and cause the issuance of an industrial design or layout-design certificate of registration; otherwise, it shall refuse the application. 117.2. The form and contents of an industrial design or layout-design certificate shall be established by the Registrations: Provided, That the name and address of the creator shall be mentioned in every case. 117.3. Registration shall be published in the form and within the period fixed by the Regulations. 117.4. The Office shall record in the register any change in the identity of the proprietor of the industrial design or layout design or his representative, if proof thereof is furnished to it. A fee shall be paid, with the request to record the change in the identity of the proprietor, if the fee is not paid, the request shall be deemed not to have been filed. In such case, the former proprietor and the former representative shall remain subject to the rights and obligations as provided in this Act. 117.5. Anyone may inspect the Register and the files of registered industrial designs or layout-designs including files of cancellation proceedings.

CONTENTS OF THE APPLICATION

Sec. 114.1. Every application for registration of an industrial design or layout-design shall contain: (a) A request for registration of the industrial design or layout-design; (b) Information identifying the applicant; (c) An indication of the kind of article of manufacture or handicraft to which the industrial design or layout-design shall be applied; (d) A representation of the article of manufacture or handicraft by way of drawings, photographs or adequate graphic representation of the industrial design or of the layout-design as applied to the article of manufacture or handicraft which clearly and fully discloses those features for which protection is claimed; and (e) The name and address of the creator, or where the applicant is not the creator, a statement indicating the origin of the right to the industrial design or layout-design registration. Sec. 114.2. The application may be accompanied by a specimen of the article embodying the industrial design or layout-design and shall be subject to the payment of the prescribed fee.

EXAMINATION
Sec. 116.1. The Office shall accord as the filing date the date of receipt of the application containing indications allowing the identity of the applicant to be established and a representation of the article embodying the industrial design or the layout -design or a pictorial representation thereof. 116.2. If the application does not meet these requirements, the filing date should be that date when all the elements specified in Sec. 114 are filed or the mistakes corrected. Otherwise, if the requirements are not complied within the prescribed period, the application shall be considered withdrawn. 116.3. After the application has been accorded a filing date and the required fees paid on time, the applicant shall comply with the requirements of Sec. 114 within the

TERM OF INDUSTRIAL DESIGN OR LAYOUT-DESIGN REGISTRATION

Sec. 118.1. The registration of an industrial design shall be for a period of five (5) years from the filing date of the application. 118.2. The registration of an industrial design may be renewed for not more than two (2) consecutive periods of five (5) years each, by paying the renewal fee. 118.3. The renewal fee shall be paid within twelve (12) months preceding the expiration of the period of registration. However, a grace period of six (6) months shall be granted for payment of the fees after such expiration, upon payment of a surcharge. 118.4. The Regulations shall fix the amount of renewal fee, the surcharge and other requirements regarding the recording of renewals of registration.

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118.5. Registration of a layout-design shall be valid for a period often (10) years, without renewal, and such validity to be counted from the date of commencement of the protection accorded to the layout-design. The protection of a layout-design under this Act shall commence: a) on the date of the first commercial exploitation, anywhere in the world, of the layout-design by or with the consent of the right holder: Provided, That an application for registration is filed with the Intellectual Property Office within two (2) years from such date of first commercial exploitation; or b) on the filing date accorded to the application for the registration of the layout-design if the layout-design has not been previously exploited commercially anywhere in the world. reproduced layout-design: Provided, however, That after the time that such person has received sufficient notice that the layout-design was unlawfully reproduced, that person may perform any of the said acts only with respect to the stock on hand or ordered before such time and shall be liable to pay to the right holder a sum equivalent to at least 5% of net sales or such other reasonable royalty as would be payable under a freely negotiated license in respect of such layout-design; or (5) Where the act is performed in respect of an identical layout-design which is original and has been created independently by a third party.

RIGHTS CONFERRED ON THE OWNER OF A LAYOUTDESIGN REGISTRATION

Sec. 19.4. The owner of a layout-design registration shall enjoy the following rights: (1) to reproduce, whether by incorporation in an integrated circuit or otherwise, the registered layoutdesign in its entirety or any part thereof, except the act of reproducing any part that does not comply with the requirement of originality; and (2) to sell or otherwise distribute for commercial purposes the registered layout design, an article or an integrated circuit in which the registered layout-design is incorporated.

CHAPTER 31 TRANSFER OF OWNERSHIP Sec. 103. Transmission of Rights. 103.1 Patents or applications for patents and invention to which they relate, shall be protected in the same way as the rights of other property under the Civil Code. 103.2. Inventions and any right, title or interest in and to patents and inventions covered thereby, may be assigned or transmitted by inheritance or bequest or may be the subject of a license contract. o An assignment of a patent, or of the invention upon which a patent is subsequently granted to the assignee, though not required to be under seal, works an estoppels by deed, preventing the assignor from denying the novelty and utility of the patented invention when sued by the assignee for infringement

LIMITATIONS OF LAYOUT RIGHTS

Sec. 19.5. The owner of a layout design has no right to prevent third parties from reproducing, selling or otherwise distributing for commercial purposes the registered layout-design in the following circumstances: (1) Reproduction of the registered layout-design for private purposes or for the sole purpose of evaluation, analysis, research or teaching; (2) Where the act is performed in respect of a layoutdesign created on the basis of such analysis or evaluation and which is itself original in the meaning as provided herein; (3) Where the act is performed in respect of a registered lay-out-design, or in respect of an integrated circuit in which such a layout-design is incorporated, that has been put on the market by or with the consent of the right holder; (4) In respect of an integrated circuit where the person performing or ordering such an act did not know and had no reasonable ground to know when acquiring the integrated circuit or the article incorporating such an integrated circuit, that it incorporated an unlawfully

Sec. 104. Assignment of Inventions. - An assignment may be of the entire right, title or interest in and to the patent and the invention covered thereby, or of an undivided share of the entire patent and invention, in which event the parties become joint owners thereof. An assignment may be limited to a specified territory. (Sec. 51, R. A. No. 165) Sec. 105. Form of Assignment. - The assignment must be in writing, acknowledged before a notary public or other officer authorized to BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY administer oath or perform notarial acts, and certified under the hand and official seal of the notary or such other officer. Sec. 106. Recording. 106.1. The Office shall record assignments, licenses and other instruments relating to the transmission of any right, title or interest in and to inventions, and patents or application for patents or inventions to which they relate, which are presented in due form to the Office for registration, in books and records kept for the purpose. The original documents together with a signed duplicate thereof shall be filed, and the contents thereof should be kept confidential. If the original is not available, an authenticated copy thereof in duplicate may be filed. Upon recording, the Office shall retain the duplicate, return the original or the authenticated copy to the party who filed the same and notice of the recording shall be published in the IPO Gazette. 106.2. Such instruments shall be void as against any subsequent purchaser or mortgagee for valuable consideration and without notice, unless, it is so recorded in the Office, within three (3) months from the date of said instrument, or prior to the subsequent purchase or mortgage. (Sec. 53, R. A. No. 165a) Sec. 107. Rights of Joint Owners. - If two (2) or more persons jointly own a patent and the invention covered thereby, either by the issuance of the patent in their joint favor or by reason of the assignment of an undivided share in the patent and invention or by reason of the succession in title to such share, each of the joint owners shall be entitled to personally make, use, sell, or import the invention for his own profit: Provided, however, That neither of the joint owners shall be entitled to grant licenses or to assign his right, title or interest or part thereof without the consent of the other owner or owners, or without proportionally dividing the proceeds with such other owner or owners. *Licensee is not allowed to maintain a suit for infringement and that to entitle an assignee or 95 | P a g e grantee to do so, he must first have a valid assignment. *An assignment of patent rights operates to transfer title to the patent, while a license leaves title in the patent owner CHAPTER 32 LICENSING RIGHTS Sec. 93. Grounds for Compulsory Licensing. - The Director of Legal Affairs may grant a license to exploit a patented invention, even without the agreement of the patent owner, in favor of any person who has shown his capability to exploit the invention, under any of the following circumstances: 93.1. National emergency or other circumstances of extreme urgency; 93.2. Where the public interest, in particular, national security, nutrition, health or the development of other vital sectors of the national economy as determined by the appropriate agency of the Government, so requires; or 93.3. Where a judicial or administrative body has determined that the manner of exploitation by the owner of the patent or his licensee is anti-competitive; or 93.4. In case of public non-commercial use of the patent by the patentee, without satisfactory reason; 93.5. If the patented invention is not being worked in the Philippines on a commercial scale, although capable of being worked, without satisfactory reason: Provided, That the importation of the patented article shall constitute working or using the patent. (Secs. 34, 34-A, and 34-B, R. A. No. 165a) Sec. 94. Period for Filing a Petition for a Compulsory License. 94.1. A compulsory license may not be applied for on the ground stated in Subsection 93.5 before the expiration of a period of four (4) years from the date of filing of the application or three (3) years from the date of the patent whichever period expires last.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY 94.2. A compulsory license which is applied for on any of the grounds stated in Subsections 93.2, 93.3, and 93.4 and Section 97 may be applied for at any time after the grant of the patent. (Sec. 34[1], R. A. No. 165) Sec. 95. Requirement to Obtain a License on Reasonable Commercial Terms. 95.1. The license will only be granted after the petitioner has made efforts to obtain authorization from the patent owner on reasonable commercial terms and conditions but such efforts have not been successful within a reasonable period of time. 95.2. The requirement under Subsection 95.1 shall not apply in the following cases: (a) Where the petition for compulsory license seeks to remedy a practice determined after judicial or administrative process to be anticompetitive; (b) In situations of national emergency or other circumstances of extreme urgency; (c) In cases of public non-commercial use. 95.3. In situations of national emergency or other circumstances of extreme urgency, the right holder shall be notified as soon as reasonably practicable. 95.4. In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly. (n) Sec. 96. Compulsory Licensing of Patents Involving Semi-Conductor Technology. - In the case of compulsory licensing of patents involving semi-conductor technology, the license may only be granted in case of public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive. (n) Sec. 97. Compulsory License Based on Interdependence of Patents. - If the invention protected by a patent, hereafter referred to as the "second patent," within the country cannot be worked without infringing another patent, 96 | P a g e hereafter referred to as the "first patent," granted on a prior application or benefiting from an earlier priority, a compulsory license may be granted to the owner of the second patent to the extent necessary for the working of his invention, subject to the following conditions: 97.1. The invention claimed in the second patent involves an important technical advance of considerable economic significance in relation to the first patent; 97.2. The owner of the first patent shall be entitled to a cross-license on reasonable terms to use the invention claimed in the second patent; 97.3. The use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent; and 97.4. The terms and conditions of Sections 95, 96 and 98 to 100 of this Act.(Sec. 34-C, R. A. No. 165a) Sec. 98. Form and Contents of Petition. - The petition for compulsory licensing must be in writing, verified by the petitioner and accompanied by payment of the required filing fee. It shall contain the name and address of the petitioner as well as those of the respondents, the number and date of issue of the patent in connection with which compulsory license is sought, the name of the patentee, the title of the invention, the statutory grounds upon which compulsory license is sought, the ultimate facts constituting the petitioner's cause of action, and the relief prayed for. (Sec. 34-D, R. A. No. 165) Sec. 99. Notice of Hearing. 99.1. Upon filing of a petition, the Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the patent owner and all persons having grants or licenses, or any other right, title or interest in and to the patent and invention covered thereby as appears of record in the Office, and of notice of the date of hearing thereon, on such persons and petitioner. The resident agent or representative appointed in accordance with Section 33 hereof, shall be bound to accept service of BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY notice of the filing of the petition within the meaning of this Section. 99.2. In every case, the notice shall be published by the said Office in a newspaper of general circulation, once a week for three (3) consecutive weeks and once in the IPO Gazette at applicants expense. (Sec. 34-E, R. A. No. 165) Sec. 100. Terms and Conditions of Compulsory License. - The basic terms and conditions including the rate of royalties of a compulsory license shall be fixed by the Director of Legal Affairs subject to the following conditions: 100.1. The scope and duration of such license shall be limited to the purpose for which it was authorized; 100.2. The license shall be non-exclusive; 100.3. The license shall be non-assignable, except with that part of the enterprise or business with which the invention is being exploited; 100.4. Use of the subject matter of the license shall be devoted predominantly for the supply of the Philippine market: Provided, That this limitation shall not apply where the grant of the license is based on the ground that the patentees manner of exploiting the patent is determined by judicial or administrative process, to be anti-competitive. 100.5. The license may be terminated upon proper showing that circumstances which led to its grant have ceased to exist and are unlikely to recur: Provided, That adequate protection shall be afforded to the legitimate interest of the licensee; and 100.6. The patentee shall be paid adequate remuneration taking into account the economic value of the grant or authorization, except that in cases where the license was granted to remedy a practice which was determined after judicial or administrative process, to be anticompetitive, the need to correct the anticompetitive practice may be taken into account in fixing the amount of remuneration. (Sec. 35B, R. A. No. 165a) Sec. 101. Amendment, Cancellation, Surrender of Compulsory License. 101.1. Upon the request of the patentee or the licensee, the Director of Legal Affairs may amend the decision granting the compulsory license, upon proper showing of new facts or circumstances justifying such amendment. 101.2. Upon the request of the patentee, the said Director may cancel the compulsory license: (a) If the ground for the grant of the compulsory license no longer exists and is unlikely to recur; (b) If the licensee has neither begun to supply the domestic market nor made serious preparation therefor; (c) If the licensee has not complied with the prescribed terms of the license; 101.3. The licensee may surrender the license by a written declaration submitted to the Office. 101.4. The said Director shall cause the amendment, surrender, or cancellation in the Register, notify the patentee, and/or the licensee, and cause notice thereof to be published in the IPO Gazette. (Sec. 35-D, R. A. No. 165a) Sec. 102. Licensees Exemption from Liability. Any person who works a patented product, substance and/or process under a license granted under this Chapter, shall be free from any liability for infringement: Provided however, That in the case of voluntary licensing, no collusion with the licensor is proven. This is without prejudice to the right of the rightful owner of the patent to recover from the licensor whatever he may have received as royalties under the license. o Arrangements between two patentees for cross-licensing of their interdependent product patents, and for licensing exclusively by one of them of other manufacturers to make and vend under both patents which arrangements are intended to control the prices at which products were sold in intestate commerce shall be violative

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY of Section 1 of Sherman Act. It limits monopoly. Sec. 88. Mandatory Provisions. - The following provisions shall be included in voluntary license contracts: 88.1. That the laws of the Philippines shall govern the interpretation of the same and in the event of litigation, the venue shall be the proper court in the place where the licensee has its principal office; 88.2. Continued access to improvements in techniques and processes related to the technology shall be made available during the period of the technology transfer arrangement; 88.3. In the event the technology transfer arrangement shall provide for arbitration, the Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation and Arbitration of the International Chamber of Commerce (ICC) shall apply and the venue of arbitration shall be the Philippines or any neutral country; and 88.4. The Philippine taxes on all payments relating to the technology transfer arrangement
shall be borne by the licensor.

consecutive weeks and once in the IPO Gazette at applicants expense. CHAPTER 33 PATENTEES CAUSES OF ACTION INFRINGEMENT NATIONAL ACTION BY A FOREIGN

Section 77. Infringement Action by a Foreign National. - Any foreign national or juridical entity who meets the requirements of Section 3 and not engaged in business in the Philippines, to which a patent has been granted or assigned under this Act, may bring an action for infringement of patent, whether or not it is licensed to do business in the Philippines under existing law. (Sec. 41-A, R.A. No. 165a)

CIVIL ACTION FOR INFRINGEMENT

Section 76. Civil Action for Infringement. - 76.1. The making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorization of the patentee constitutes patent infringement. 76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented invention, whose rights have been infringed, may bring a civil action before a court of competent jurisdiction, to recover from the infringer such damages sustained thereby, plus attorney's fees and other expenses of litigation, and to secure an injunction for the protection of his rights. 76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty, the court may award by way of damages a sum equivalent to reasonable royalty. 76.4. The court may, according to the circumstances of the case, award damages in a sum above the amount found as actual damages sustained: Provided, That the award does not exceed three (3) times the amount of such actual damages. 76.5. The court may, in its discretion, order that the infringing goods, materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed, without compensation. 76.6. Anyone who actively induces the infringement of a patent or provides the infringer with a component of a patented product or of a product produced because of a patented process knowing it to be especially

Sec. 99. Notice of Hearing. 99.1. Upon filing of a petition, the Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the patent owner and all persons having grants or licenses, or any other right, title or interest in and to the patent and invention covered thereby as appears of record in the Office, and of notice of the date of hearing thereon, on such persons and petitioner. The resident agent or representative appointed in accordance with Section 33 hereof, shall be bound to accept service of notice of the filing of the petition within the meaning of this Section. 99.2. In every case, the notice shall be published by the said Office in a newspaper of general circulation, once a week for three (3)

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adopted for infringing the patented invention and not suitable for substantial non-infringing use shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer. (Sec. 42, R.A. No. 165a)

ACTS OF INFRINGEMENT Infringement proceedings are court proceedings which the owner of the patent for invention may institute in order to defend its or his exclusive right against an entity or person which or who exploits the patented invention without the required authorization. To constitute as infringement it must: o Be to make, sell or import the patented product or to use the patented process or to make, use, sell or import the product directly obtained through the patented process; o The act must be in relation to a product or process falling within the scope of protection of the patent. The scope of protection of the patent is determined by the claims. The meaning of the claims is interpreted by the courts hence, what a claim means will depend upon the jurisdiction in which it is being interpreted. TWO APPROACHES TO CLAIM INTERPRETATION: o Continental system Central The court attempts to determine what the inventive concept or essence of the invention iis from the claims, description, common knowledge and prior art. Attempts to determine whether the alleged infringing device incorporates the inventive concept of the invention. The claim is to the gist of the invention 99 | P a g e

Common law system The court attempts to determine what structure the language of the claims defines and whether or not the alleged infringing structure corresponds to the structure defines in the language of the claims. Define the limits of the invention the actual structure that falls within the claim. If the following are answered in the affirmative, presuming that the claim is valid, then there is an infringement: o Are all the elements of the claim present in the infringing structure? o Do all the elements have the same form? o Do all the elements perform the same function? o Do the elements have the same relationship to the other elements? o Is the effect of the combination of these elements in the infringing structure to give the same result? EXAMPLE: Changing the order of steps in a process will not avoid infringement if the result is the same, and placing some parts upside down in a machine will not avoid infringement if the result is the same.

CONTRIBUTORY INFRINGEMENT Contributory or indirect infringement occurs where a person does not do the infringing act per se but rather encourages, or incites or abets, another person/s to commit the infringing act. EXAMPLE: where a person supplies unpatented integers of a patented combination, or where an unpatented product is supplied for use in a patented process. There would be direct infringement by the person who puts all the integers of the combination together or uses the patented BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY process, but the supplier/s of component integers would contribute to the direct infringement. CONTRIBUTORY INFFRINGEMENT REQUIRES PRESENCE OF DIRECT INFRINGEMENT PROCESS PATENT INFRINGEMENT
Section 78. Process Patents; Burden of Proof . - If the subject matter of a patent is a process for obtaining a product, any identical product shall be presumed to have been obtained through the use of the patented process if the product is new or there is substantial likelihood that the identical product was made by the process and the owner of the patent has been unable despite reasonable efforts, to determine the process actually used. In ordering the defendant to prove that the process to obtain the identical product is different from the patented process, the court shall adopt measures to protect, as far as practicable, his manufacturing and business secrets. (n)

DAMAGES ON ACCOUNT OF PROFITS A common approach has been to assess damages on the basis of a notional arms length license: this will arise for example when te parties are competitors and is usually appropriate to patent and registered design cases. Damages for past infringement are then based upon a payment of royalty in respect of, for example, each infringing article. Another approach which is more difficult to prove is through consideration of sales lost to the Plaintiff; in this case the plaintiff is entitled to the entire lost profit. DETERMINING EXISTENCE OF INFRINGEMENT To prove infringement, the plaintiff must show that the accused device includes every limitation of the claim or an equivalent of each limitation not literally met. ANALYSIS FOR INFRINGEMENT: o The claim must be properly construed to determine its scope and meaning; o The claim as properly construed must be compared to the accused device or process. IMPROVEMENT PATENT An improver who appropriates, without license, the basic patent of another, is an infringer and suable as such. INSUBSTANTIAL DIFFERENCES AND DOCTRINE OF EQUIVALENTS A finding of infringement under the doctrine requires proof of insubstantial differences between the claimed and accused products or processes. Infringement may be found under the doctrine of equivalents although the claim limitations are not literally met, if the accused process is substantially the same as the patented process. The doctrine of equivalents enables the trier of fact to achieve a just result when BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

REMEDIES Injunction Damages and account of profits PRELIMINARY RELIEF: THE INTERLOCUTORY INJUNCTION PURPOSE: to preserve the status quo until the hearing of the main action. The period from the time the commencement of proceedings to the final determination of an issue can allow significant damage in the form of lost sales and profits, to reputation, and through other exploitation of material and/or information. FINAL INJUNCTION Only in unusual situation will an injunction be refused. The grant of injunction would result to enabling the defendant to take a compulsory license under the patent without having to go through the statutory provisions relating to compulsory license.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY the circumstances warrant, preventing the unscrupulous copyist from making unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law. Doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. A patent holder cannot enforce his rights if he has committed inequitable conduct in the prosecution of his patent application.

FUNCTION-MEANS-RESULT TEST UNDER THE DOCTRINE OF EQUIVALENTS Substantial equivalent of a thing, in the sense of the patent law, is the same as the thing itself; so that if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape. Mere colourable departure from the patented device does not avoid infringement. When the invention, although showing some change in form and position, uses substantially the same devices, performing precisely the same offices with no change in principle, constitutes an infringement. PLAINTIFF MUST HAVE LEGAL TITLE TO THE PATENT AT THE TIME OF THE INFRINGEMENT SUCCESSORS IN TITLE A conveyance of interest in a patent typically constitutes either assignment or a mere license. An assignment of patent rights operates to transfer title to the patent, while a license leaves title in the patent owner. EFFECT OF INEQUITABLE CONDUCT Inequitable conduct consists of an affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with intent to deceive. 101 | P a g e

REASONABLE ROYALTY The objective of the reasonable royalty calculation is to determine the amount necessary to adequately compensate for an infringement. The amount of the royalty should be that amount which adequately compensates for the infringement. DETERMINIG THE MEANING AND SCOPE OF CLAIMS The language of the claims defines the bounds of the patentees exclusive rights. To construe the meaning of terms within the claims, a court may consult the patent specification and the administrative records, and the court must construe the claim language according to the standard of what those words would have meant to one skilled in the art as of the application date. LITERAL IINFRINGEMENT Literal infringement of a claim exists when every limitation recited in the claim is found in the accused device, i.e. when the properly construed claim reads on the accused device exactly. INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS IS AN ISSUE OF FACT Infringement under this doctrine requires proof of insubstantial differences between the claimed and accused products. A patentee may prove this insubstantial change by showing that the accused device performs substantially the same function, in substantially the same way, to produce substantially the same result as the claimed invention. THE CLAIMS MEASURE THE PROTECTION GIVEN TO THE INVENTION BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY The claims, not the specification, measure the protected patent right to exclude others. What is not claimed, even though disclosed as part of the invention, cannot be enjoined.
advertising material relating to the patented product or process, are placed the words "Philippine Patent" with the number of the patent. (Sec. 44, R.A. No. 165a)

DEFENSES IN ACTION FOR INFRINGEMENT

Section 81. Defenses in Action for Infringement. In an action for infringement, the defendant, in addition to other defenses available to him, may show the invalidity of the patent, or any claim thereof, on any of the grounds on which a petition of cancellation can be brought under Section 61 hereof. (Sec. 45, R.A. No. 165)

EACH ELEMENT CONTAINED IN A PATENT CLAIM DEEMED MATERIAL TO DEFINING THE SCOPE OF THE PATENTED INVENTION. NARROWING THE CLAIM MAY PRECLUDE INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS Where a patentee has narrowed his claim, in order to escape rejection, he may not by resort to the doctrine of equivalents, give to the claim the larger scope which it might have had without the amendments which amount to disclaimer. INFRINGEMENT NATIONAL ACTION BY A FOREIGN

PATENT FOUND INVALID MAY BE CANCELLED

Section 82. Patent Found Invalid May be Cancelled. - In an action for infringement, if the court shall find the patent or any claim to be invalid, it shall cancel the same, and the Director of Legal Affairs upon receipt of the final judgment of cancellation by the court, shall record that fact in the register of the Office and shall publish a notice to that effect in the IPO Gazette. (Sec. 46, R.A. No. 165a)

Section 77. Infringement Action by a Foreign National. - Any foreign national or juridical entity who meets the requirements of Section 3 and not engaged in business in the Philippines, to which a patent has been granted or assigned under this Act, may bring an action for infringement of patent, whether or not it is licensed to do business in the Philippines under existing law. (Sec. 41-A, R.A. No. 165a)

ASSESSOR IN INFRINGEMENT ACTION section 83. Assessor in Infringement Action. 83.1. Two (2) or more assessors may be appointed by the court. The assessors shall be possessed of the necessary scientific and technical knowledge required by the subject matter in litigation. Either party may challenge the fitness of any assessor proposed for appointment. 83.2. Each assessor shall receive a compensation in an amount to be fixed by the court and advanced by the complaining party, which shall be awarded as part of his costs should he prevail in the action. (Sec. 47, R.A. No. 165a)

LIMITATION OF ACTION FOR DAMAGES

Section 79. Limitation of Action for Damages. No damages can be recovered for acts of infringement committed more than four (4) years before the institution of the action for infringement. (Sec. 43, R.A. No. 165)

CRIMINAL ACTION INFRINGEMENT

FOR

REPETITION

OF

DAMAGES; REQUIREMENT OF NOTICE

Section 80. Damages, Requirement of Notice. Damages cannot be recovered for acts of infringement committed before the infringer had known, or had reasonable grounds to know of the patent. It is presumed that the infringer had known of the patent if on the patented product, or on the container or package in which the article is supplied to the public, or on the

Section 84. Criminal Action for Repetition of Infringement. - If infringement is repeated by the infringer or by anyone in connivance with him after finality of the judgment of the court against the infringer, the offenders shall, without prejudice to the institution of a civil action for damages, be criminally liable therefor and, upon conviction, shall suffer imprisonment for the period of not less than six (6) months but not more than three (3) years and/or a fine of not less than One hundred thousand pesos

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(P100,000) but not more than Three hundred thousand pesos (P300,000), at the discretion of the court. The criminal action herein provided shall prescribe in three (3) years from date of the commission of the crime. (Sec. 48, R.A. No. 165a)

CHAPTER 34 LIMITATIONS ON PATENT RIGHTS PRIOR USER IN GOOD FAITH

Sec. 72. Limitations of Patent Rights. - The owner of a patent has no right to prevent third parties from performing, without his authorization, the acts referred to in Section 71 hereof in the following circumstances: 72.1 Using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar as such use is performed after that product has been so put on the said market; 72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose: Provided, That it does not significantly prejudice the economic interests of the owner of the patent; 72.3. Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention; 72.4. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared; 72.5. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other country entering the territory of the Philippines temporarily or accidentally: Provided, That such invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not used for the manufacturing of anything to be sold within the Philippines. (Secs. 38 and 39, R. A. No. 165a)

invention in his enterprise or business, before the filing date or priority date of the application on which a patent is granted, shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect. 73.2. The right of the prior user may only be transferred or assigned together with his enterprise or business, or with that part of his enterprise or business in which the use or preparations for use have been made. (Sec. 40, R. A. No. 165a) -under section 73.2, the right of prior user may only be transferred or assigned together with his enterprise or business, or with that part of his enterprise or business in which the use or preparations for use have been made PRIOR USE IN GOOD FAITH INCURS NO INFRINGMENT LIABILITY
Sec. 73. Prior User. 73.1. Notwithstanding Section 72 hereof, any prior user, who, in good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business, before the filing date or priority date of the application on which a patent is granted, shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect. 73.2. The right of the prior user may only be transferred or assigned together with his enterprise or business, or with that part of his enterprise or business in which the use or preparations for use have been made. (Sec. 40, R. A. No. 165a)

-under section 72.1, notwithstanding section 72 on limitations of patent rights, any prior user, who, in good faith was using the invention or has undertaken serious preparations to use the 103 | P a g e

GR: inventor has exclusive right to make, use and sell the patented product EXCEPTION: section 73 which exempts from liability for INFRINGMENT any prior user, in BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

INTELLECTUAL PROPERTY LAW AMADOR SUMMARY good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business, before the filing date or priority date of the application on which a patent is granted -creates a limited exception from inability in that the use must be limited to the prior user's business, right of prior user may only be transferred or assigned together with business -section 73 allows a prior user in good faith to continue practicing the invention notwithstanding the grant of a patent to an inventor who was first to file a patent for that invention Remedy: section 29
Sec. 29. First to File Rule. - 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. (3rd Sentence, Sec. 10, R. A. No. 165a.) patent, such person may, within three (3) months after the decision has become final: (a) Prosecute the application as his own application in place of the applicant; (b) File a new patent application in respect of the same invention; (c) Request that the application be refused; or (d) Seek cancellation of the patent, if one has already been issued. 67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis to a new application filed under Subsection 67.1(b). (n)

HOWEVER, section 67 allows a person other than the patent applicant to obtain a declaration by court order or decision that he has the right to the patent
Sec. 68. Remedies 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. 33, R. A. No. 165a)

-providing that if 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 2 or more applications are filed for the same invention, to the applicant who has the earliest filing date or earliest priority date Note: provision does not explicitly address the situation of the prior user in good faith since he did not file any application for a patent on his invention
Sec. 67. Patent Application by Persons Not Having the Right to a Patent. 67.1. 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

Section 68 gives a cause of action to the true and actual inventor, who was not the first to file a patent application for the invention, to reclaim the patent through a court action Section 67.2 together with section 38. 2 provides: see above
38.2. If several independent inventions which do not form a single general inventive concept are claimed in one application, the Director may require that the application be restricted to a single invention. A later application filed for an invention divided out shall be considered as having been filed on the same day as the first application: Provided, That the later application is filed within four (4) months after the requirement to divide becomes final, or within such additional time, not exceeding four (4)

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months, as may be granted: Provided further, That each divisional application shall not go beyond the disclosure in the initial application. (b) In situations of national emergency or other circumstances of extreme urgency; (c) In cases of public non-commercial use. 95.3. In situations of national emergency or other circumstances of extreme urgency, the right holder shall be notified as soon as reasonably practicable. 95.4. In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly. (n) Sec. 96. Compulsory Licensing of Patents Involving Semi-Conductor Technology. - In the case of compulsory licensing of patents involving semi-conductor technology, the license may only be granted in case of public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive. (n) Sec. 97. Compulsory License Based on Interdependence of Patents. - If the invention protected by a patent, hereafter referred to as the "second patent," within the country cannot be worked without infringing another patent, hereafter referred to as the "first patent," granted on a prior application or benefiting from an earlier priority, a compulsory license may be granted to the owner of the second patent to the extent necessary for the working of his invention, subject to the following conditions: 97.1. The invention claimed in the second patent involves an important technical advance of considerable economic significance in relation to the first patent; 97.2. The owner of the first patent shall be entitled to a cross-license on reasonable terms to use the invention claimed in the second patent; 97.3. The use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent; and 97.4. The terms and conditions of Sections 95, 96 and 98 to 100 of this Act. (Sec. 34-C, R. A. No. 165a)

USE OF INVENTION BY GOVERNMENT

Sec. 74. Use of Invention by Government. 74.1. A Government agency or third person authorized by the Government may exploit the invention even without agreement of the patent owner where: (a) the public interest, in particular, national security, nutrition, health or the development of other sectors, as determined by the appropriate agency of the government, so requires; or (b) A judicial or administrative body has determined that the manner of exploitation, by the owner of the patent or his licensee, is anticompetitive. 74.2. The use by the Government, or third person authorized by the Government shall be subject, mutatis mutandis, to the conditions set forth in Sections 95 to 97 and 100 to 102. (Sec. 41, R. A. No. 165a)

Pursuant to section 74.2 the use by the governement or third person authorized by the government shall be subject, MUTATIS MUTANDIS to the conditions set forth in sections 95 to 97 and 100 to 102 (these relate to the compulsory licensing of patented inventions
Sec. 95. Requirement to Obtain a License on Reasonable Commercial Terms. 95.1. The license will only be granted after the petitioner has made efforts to obtain authorization from the patent owner on reasonable commercial terms and conditions but such efforts have not been successful within a reasonable period of time. 95.2. The requirement under Subsection 95.1 shall not apply in the following cases: (a) Where the petition for compulsory license seeks to remedy a practice determined after judicial or administrative process to be anticompetitive;

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Sec. 100. Terms and Conditions of Compulsory License. - The basic terms and conditions including the rate of royalties of a compulsory license shall be fixed by the Director of Legal Affairs subject to the following conditions: 100.1. The scope and duration of such license shall be limited to the purpose for which it was authorized; 100.2. The license shall be non-exclusive; 100.3. The license shall be non-assignable, except with that part of the enterprise or business with which the invention is being exploited; 100.4. Use of the subject matter of the license shall be devoted predominantly for the supply of the Philippine market: Provided, That this limitation shall not apply where the grant of the license is based on the ground that the patentees manner of exploiting the patent is determined by judicial or administrative process, to be anti-competitive. 100.5. The license may be terminated upon proper showing that circumstances which led to its grant have ceased to exist and are unlikely to recur: Provided, That adequate protection shall be afforded to the legitimate interest of the licensee; and 100.6. The patentee shall be paid adequate remuneration taking into account the economic value of the grant or authorization, except that in cases where the license was granted to remedy a practice which was determined after judicial or administrative process, to be anticompetitive, the need to correct the anticompetitive practice may be taken into account in fixing the amount of remuneration. (Sec. 35-B, R. A. No. 165a) Sec. 101. Amendment, Cancellation, Surrender of Compulsory License. 101.1. Upon the request of the patentee or the licensee, the Director of Legal Affairs may amend the decision granting the compulsory license, upon proper showing of new facts or circumstances justifying such amendment. 101.2. Upon the request of the patentee, the said Director may cancel the compulsory license: (a) If the ground for the grant of the compulsory license no longer exists and is unlikely to recur; (b) If the licensee has neither begun to supply the domestic market nor made serious preparation therefor; (c) If the licensee has not complied with the prescribed terms of the license; 101.3. The licensee may surrender the license by a written declaration submitted to the Office. 101.4. The said Director shall cause the amendment, surrender, or cancellation in the Register, notify the patentee, and/or the licensee, and cause notice thereof to be published in the IPO Gazette. (Sec. 35-D, R. A. No. 165a) Sec. 102. Licensees Exemption from Liability. Any person who works a patented product, substance and/or process under a license granted under this Chapter, shall be free from any liability for infringement: Provided however, That in the case of voluntary licensing, no collusion with the licensor is proven. This is without prejudice to the right of the rightful owner of the patent to recover from the licensor whatever he may have received as royalties under the license. (Sec. 35-E, R. A. No. 165a)

Compulsory licensee is exempt from INFRINGMENT liability pursuant to section 102 Requirement to obtain a license on reasonable commercial terms- the license will only be granted after the patent owner on reasonable commercial terms and conditions but such efforts have not been successful within a reasonable period of time Requirement under subsection 95.1 shall not apply in the following cases: 1. Petition for compulsory license seeks to remedy a practice determined after judicial or administrative process to anti-competitive 2. In situations of national emergency or other circumstances of extreme urgency 3. In cases of public non-commercial use

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY Compulsory licensing of patents involving semiconductor technology -the license may only be granted in case of public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive Compulsory license based on interdependence of patents -compulsory license may be granted to the owner of the second patent to the extent necessary for the working of his invention subject to: 1. Invention claimed in second patent involves an important technical advance of considerable economic significance in relation to the first patent 2. Owner of the first patent shall be entitled to cross-license on reasonable terms to use the invention claimed in the second patent 3. Use authorized in respect of the first agent shall be non-available except with the assignment of the second patent 4. Terms and conditions of sections 95, 96, and 98-100
Sec. 98. Form and Contents of Petition. - The petition for compulsory licensing must be in writing, verified by the petitioner and accompanied by payment of the required filing fee. It shall contain the name and address of the petitioner as well as those of the respondents, the number and date of issue of the patent in connection with which compulsory license is sought, the name of the patentee, the title of the invention, the statutory grounds upon which compulsory license is sought, the ultimate facts constituting the petitioner's cause of action, and the relief prayed for. (Sec. 34-D, R. A. No. 165) Sec. 99. Notice of Hearing. 99.1. Upon filing of a petition, the Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the patent owner and all persons having grants or licenses, or any other right, title or interest in and to the patent and invention covered thereby as appears of record in the Office, and of notice of the date of hearing thereon, on such persons and petitioner. The resident agent or representative appointed in accordance with Section 33 hereof, shall be bound to accept service of notice of the filing of the petition within the meaning of this Section. 99.2. In every case, the notice shall be published by the said Office in a newspaper of general circulation, once a week for three (3) consecutive weeks and once in the IPO Gazette at applicants expense. (Sec. 34-E, R. A. No. 165)

EXTENT OF PROTECTION AND INTERPETATION OF CLAIMS Section 75 FUNCTION OF THE CLAIMS -to define clearly the scope of the xclusive rights provided by the patent -this is done in the terms of the technical feature of the invention disclosed in the description -section 36 defines claims as the matter for which protection is sought -claims must be clear and concise and shall be supported by the description -claim interpretation is the process of giving proper meaning to the claim language, claim language after all defines the scope DOCTRINE OF EQUIVALENTS IN CLAIMS INTERPRETATION - see section 75.2 -doctrine: an accused product that differs from the claim and thus does not literally infringe, none the less infringers if it's difference from that claim is insubstantia from the perspective of one of ordinary skill in the relevant art AMENDMENTS MAY RESTRICT THE SCOPE OF THE CLAIMS -the amendment operates as the disclaimer of that difference and strictly construed against him BETCHIE.CHAMI.MONEH.NEA-ANN.RELIE.

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INTELLECTUAL PROPERTY LAW AMADOR SUMMARY -what the patentee has lost by disclaimer cannot be regained by recourse to the doctrine of equivalents SOURCES OF CLAIMS INTERPRETATION: THE CLAIMS, THE SPECIFICATION AND THE PROSECUTION HISTORY -a construing court does not accord the specification, prosecution history and other relevant evidence the same weight as the claims themselves, but consults these sources to give the necessary context to the claim language THE DOCTRINEOF PROSECUTION HISTORY ESTOPPEL -is a limitation on how broadly aLiam may be expanded under the doctrine of equivalents to reach an accused product that is not literally covered by the claim language -an equitable, judicially-created doctrine (like the doctrine of equivalents itself) this doctrine is in reactive intended to prevent a patentee from taking one position before the patent office in attempt to obtain a patent, and an alleged infringer JURISDICTION: THE BUREAU OF LEGAL AFFAIRS Section 10 before the institution of the action for INFRINGMENT EQUITABLE PRINCIPLE PROCEEDINGS TO GOVERN

Section 230. Equitable Principles to Govern Proceedings. - In all inter partes proceedings in the Office under this Act, the equitable principles of laches, estoppel, and acquiescence where applicable, may be considered and applied. (Sec. 9-A, R.A. No. 165)

REVERSE RECIPROCITY OF FOREIGN LAWS

Section 231. Reverse Reciprocity of Foreign Laws. - Any condition, restriction, limitation, diminution, requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine national seeking protection of intellectual property rights in that country, shall reciprocally be enforceable upon nationals of said country, within Philippine jurisdiction. (n)

FINAL PROVISIONS APPEALS

Section 232. Appeals. - 232.1. Appeals from decisions of regular courts shall be governed by the Rules of Court. Unless restrained by a higher court, the judgment of the trial court shall be executory even pending appeal under such terms and conditions as the court may prescribe. 232.2. Unless expressly provided in this Act or other statutes, appeals from decisions of administrative officials shall be provided in the Regulations. (n) Section 232

LIMITATION OF ACTION FOR DAMAGES

Sec. 79. Limitation of Action for Damages. damages can be recovered for acts infringement committed more than four years before the institution of the action infringement. (Sec. 43, R. A. No. 165) No of (4) for

APPLICATIONS PENDING ON EFFECTIVEDATE OF ACT

Section 235. Applications Pending on Effective Date of Act. - 235.1. All applications for patents pending in the Bureau of Patents, Trademarks and Technology Transfer shall be proceeded with and patents thereon granted in accordance with the Acts under which said applications were

No damages can be recovered for acts of INFRINGMENT committed more than 4 years

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filed, and said Acts are hereby continued to be enforced, to this extent and for this purpose only, notwithstanding the foregoing general repeal thereof: Provided, That applications for utility models or industrial designs pending at the effective date of this Act, shall be proceeded with in accordance with the provisions of this Act, unless the applicants elect to prosecute said applications in accordance with the Acts under which they were filed. 235.2. All applications for registration of marks or trade names pending in the Bureau of Patents, Trademarks and Technology Transfer at the effective date of this Act may be amended, if practicable to bring them under the provisions of this Act. The prosecution of such applications so amended and the grant of registrations thereon shall be proceeded with in accordance with the provisions of this Act. If such amendments are not made, the prosecution of said applications shall be proceeded with and registrations thereon granted in accordance with the Acts under which said applications were filed, and said Acts are hereby continued in force to this extent for this purpose only, notwithstanding the foregoing general repeal thereof (n) not result in the diminution of such protection. (n)

SEPARABILITY Section 240. Separability. - If any provision of this Act or the application of such provision to any circumstances is held invalid, the remainder of the Act shall not be affected thereby. (n)

REPEALS
Section 239. Repeals. - 239.1. All Acts and parts of Acts inconsistent herewith, more particularly Republic Act No. 165, as amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285, as amended, are hereby repealed. 239.2. Marks registered under Republic Act No. 166 shall remain in force but shall be deemed to have been granted under this Act and shall be due for renewal within the period provided for under this Act and, upon renewal shall be reclassified in accordance with the International Classification. Trade names and marks registered in the Supplemental Register under Republic Act No. 166 shall remain in force but shall no longer be subject to renewal. 239.3. The provisions of this Act shall apply to works in which copyright protection obtained prior to the effectivity of this Act is subsisting: Provided, That the application of this Act shall

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