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Agreements: Technology Transfer Agreements; Requisites

& Prohibitions
(A) What contractual stipulations are required in all technology transfer
agreements? (2%)
The following stipulations are required in all technology transfer agreements:
(1) The laws of the Philippines shall govern its interpretation and in the event of
litigation, the venue shall be the proper court in the place where the licensee has its
principal office;
(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;
(3) In case it 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 or the Rules of Arbitration of the
International Chamber of Commerce (ICC) shall apply and the venue of arbitration
shall be the Philippines or any neutral country;
(4) The Philippine taxes on all payments relating to the technology transfer
agreement shall be borne by the licensor (Sec. 88, Intellectual Property Code).
(B) Enumerate three stipulations that are prohibited in technology
transfer agreements. (3%)
(1) Those that contain restrictions regarding the volume and structure of production;
(2) Those that prohibit the use of competitive technologies in a nonexclusive
agreement; and
(3) Those that establish a full or partial purchase option in favor of the licensor
(Subsections 87.3, 87.4 and 87.5 of the Intellectual Property Code)

Article of Commerce; As Trademark, Patent & Copyright


(C) Can an article of commerce serve as a trademark and at the same time
enjoy patent and copyright protection? Explain and give an example. (2%)
A stamped or marked container of goods can be registered as trademark
(subsections 113.1 of the Intellectual Property Code). An original ornamental design
or model for articles of manufacturer can be copyrighted (Subsection 172.1 of the
Intellectual Property Code). An ornamental design cannot be patented, because
aesthetic creations cannot be patented (Section 22 of the Intellectual Property
Code). However, it can be registered as an industrial design (Subsections 113.1 and
172.1 of the Intellectual Code). Thus, a container of goods which has an original
ornamental design can be registered as trademark, can be copyrighted, and can be
registered as an industrial design.

Infringement; Trademark, Copyright


After disposing of his last opponent in only two rounds in Las Vegas, the
renowned Filipino boxer Sonny Bachao arrived at the Ninoy Aquino International
Airport met by thousands of hero-worshipping fans and hundreds of media
photographers. The following day, a colored photograph of Sonny wearing a black
polo shirt embroidered with the 2-inch Lacoste Crocodile logo appearedon the front
page of every Philippine newspaper
Lacoste International, the French firm that manufactures lacoste apparel and
owns the Lacoste trademark, decided to cash in on the universal popularity of the
boxing icon. It reprinted the photographs, with the permission of the newspaper
publishers, and went on a world-wide blitz of print commercials in which Sonny is
shown wearing a Lacoste shirt alongside the phrase Sonny Bachao just loves
Lacoste. When Sonny sees the Lacoste advertisements, he hires you as lawyer
and asks you to sue Lacoste International before a Philippine court:
(A) For trademark Infringement in the Philippines because Lacoste
International used his image without his permission: (2%)
Sonny Bachao cannot sue for infringement of trademark. The photographs
showing him wearing a Lacoste shirt were not registered as a trademark (Pearl &
Dean (Phil.), Inc. v. Shoemart, Inc., 409 SCRA 231 (2003)).
(B) For copyright infringement because of the unauthorized use of
the published photographs; (2%)and
Sonny Bachao cannot sue for infringement of copyright for the unauthorized
use of the photographs showing him wearing a Lacoste shirt. The copyright to the
photographs belong to the newspapers which published them inasmuch as the
photographs were the result of the performance of the regular duties of the
photographers (Subsection 173.3 (b), Intellectual Property Code (IPC). Moreover, the
newspaper publishers authorized the reproduction of the photographs (Section 177,
Intellectual Property Code).
(C) For injunction in order to stop Lacoste International from
featuring him in their commercials. (2%) Will these actions prosper?
Explain.
The complaint for injunction to stop Lacoste International from featuring him
in its advertisements will prosper. This is a violation of subsection 123, 4(c) of the
IPC and Art.169 in relation to Art.170 of the IPC.
(D) Can Lacoste International validly invoke the defense that it is not
a Philippine company and, therefore, Philippine courts have no
jurisdiction? Explain. (2%)
No. Philippine courts have jurisdiction over it, if it is doing business in the
Philippines. Moreover, under Section 133 of the Corporation Code, while a foreign
corporation doing business in the Philippines without license to do business, cannot

sue or intervene in any action, it may be sued or proceeded against before our
courts or administrative tribunal (De Joya v. Marquez, 481 SCRA 376 (2006))

Patent: Non-Patentable; Method of Diagnosis &


Treatment
Dr. Nobel discovered a new method of treating Alzheimers involving
a special method of diagnosing the disease, treating it with a new
medicine that has been discovered after long experimentation and field
testing, and novel mental isometric exercises. He comes to you for advice
on how he can have his discoveries protected. Can he legally protect his
new method of diagnosis, the new medicine, and the new method of
treatment? If no, why? If yes, how? (4%)
Dr. Nobel can be protected by a patent for the new medicine as it falls within
the scope of Sec. 21 of the Intellectual Property Code (Rep. Act No. 8293, as
amended). But no protection can be legally extended to him for the method of
diagnosis and method of treatment which are expressly non-patentable (Sec. 22,
Intellectual Property Code)

Trademark; Unfair Competition


For years, Y has been engaged in the parallel importation of famous
brands, including shoes carrying the foreign brand MAGIC. Exclusive
distributor X demands that Y cease importation because of his
appointment as exclusive distributor of MAGIC shoes in the Philippines. Y
counters that the trademark MAGIC is not registered with the Intellectual
Property Office as a trademark and therefore no one has the right to
prevent its parallel importation.
(A)

Who is correct? Why? (2%)

X is correct. His rights under his exclusive distributorship agreement are


property rights entitled to protection. The importation and sale by Y of MAGIC shoes
constitute unfair competition (Yu v. Court of Appeals, 217 SCRA 328 (1993)).

Registration of the trademark is not necessary in case of an action for unfair


competition (Del Monte Corporation v. Court of Appeals, 181 SCRA 410 (1990)).
(B) Suppose the shoes are covered by a Philippine patent issued to
the owner, what would your answer be? Explain. (2%)
A patent for a product confers upon its owner the exclusive right of importing
the product (Subsection 71.1 of the Intellectual Property Code). The importation of a
patented product without the authorization of the owner of the patent constitutes
infringement of the patent (Subsection 76.1 of the Intellectual Property Code). X can
prevent the parallel importation of such shoes by Y without its authorization