INTELLECTUAL PROPERTY
Inah del Rosario
based on the lectures of Atty. Melissa Suarez
INTRODUCTION
Intellectual Property
RA 8293 is not the original law. It is a codification of the Philippines’ various laws.
Past Laws:
1) RA 165 — Patent Law
2) RA 965 — Trademark Law
3) PD 49 — Decree on Intellectual Property
4) Articles 188 and 189 of the Revised Penal Code
When RA 8293 was enacted, it repealed all these previous laws. This law was
enacted to give effect to the agreement of trade-related aspects of intellectual
property which is the TRIPS agreement.
TRIPS Agreement is actually a cross-reference of the intellectual
property code. It is always best to refer to the TRIPS Agreement.
RA 8293 HAS PROSPECTIVE APPLICATION
What do you mean by RA 8293 repealing the previous laws? Does that mean that
the previous laws cannot be applied? NO. The previous laws can still be applied
because everything is determined by the law in force at the time of the filing of
the complaint. If the complaint was filed before Jan 1, 1998, then RA 8293 is not
applicable because it does not have retroactive effect. By express provision of the
law, there is no retroactive effect. It says here that the IP Code repealing the IP
Law, Sec. 241 expressly provides that RA 8293 takes effect on Jan 1, 1998
without any provision for retroactive application.
So in the cases that you will be encountering, you will see that there are times
that the applicable law is RA 165, 166. Like the Le Cordon Bleu case which is a
2013 case, the SC said that RA 166 still applied.
RA 8293 (January 1, 1998) has been amended by
RA 9502 (June 6, 2008) — Cheaper Medicines Act; primarily focuses on law
on patents
RA 10372 (July 2, 2012) — amended certain portions of the IP Code. Mostly
under Copyright.
Intellectual Creation — The product of mental labor embodied in writing (i.e.
novel) or some other material form (i.e. gadget, logo, painting, name of product). It
is one of the original modes of acquiring ownership.
Republic Act No. 8293 as amended           - who is domiciled or
Section 1. Title. - This Act shall be known as the "Intellectual Property Code
of the Philippines."
Section 2. Declaration of State Policy. - The State recognizes that an effective
intellectual and industrial property system is
- vital to the development of domestic and creative activity,
- facilitates transfer of technology,
- attracts foreign investments, and
- ensures market access for our products.
It shall protect and secure the EXCLUSIVE RIGHTS of scientists, inventors,
artists and other gifted citizens to their intellectual property and creations,
particularly when beneficial to the people, for such periods as provided in this
Act.
The use of intellectual property bears a social function. To this end, the State
shall promote the diffusion of knowledge and information for the promotion
of national development and progress and the common good.
It is also the policy of the State
- to streamline administrative procedures of registering patents,
trademarks and copyright,
- to liberalize the registration on the transfer of technology, and
- to enhance the enforcement of intellectual property rights in the
Philippines. (n)
Section 2 gives us the State’s Policy on intellectual property.
In procedure, it actually takes long to procure a patent. It takes years! Imagine,
inventor ka, namatay ka na, wala parin yung patent mo. The policy “to streamline
administrative processes” is not happening right now, even as we speak.
Let’s to go a VIP. This provision you will find in the different treaties.
TREATIES ACCEDED TO BY THE PHILIPPINES:
1. Protocol Relating to the Madrid Agreement Concerning the International
Registration of Marks (2012)
2. WIPO Copyright Treaty (2002)
3. WIPO Performances and Phonogram Treaty (2002)
4. Patent Cooperation Treaty (2001)
5. Rome Convention for the Protection of Performers, Producers of Phonograms
and Broadcasting Organizations (1984)
6. Budapest Treaty on the International Recognition of the Deposit of
Microorganisms for the Purposes of Patent Procedure (entered 1981)
7. Convention Establishing the World Intellectual Property Organization (1980)
8. Paris Convention for the Protection of Industrial Property Rights (1979)
1965 treaty but there is an 1979 amendment
The Paris Convention, adopted in 1883, applies to industrial property in
the widest sense, including patents, trademarks, industrial designs, utility
models, service marks, trade names, geographical indications and the
repression of unfair competition. This international agreement was the
first major step taken to help creators ensure that their intellectual works
were protected in other countries.
9. Berne Convention for the Protection of Literary and Artistic Works (1951)
10. TRIPS Agreement — Agreement on Trade-Related Aspects of Intellectural
Property Rights (1994)
11. Nice Classification (11th edition) used in trademarks because goods are
classified
- used in trademarks because the goods are classified according to the Nice
Classification
These treaties are important because of Section 3. Why? Section 3 says:
Section 3. International Conventions and Reciprocity. - Any person
- who is a national or
- has a real and effective industrial establishment in a
COUNTRY WHICH IS A PARTY TO
‣ any convention, treaty or agreement relating to intellectual
property rights or the repression of unfair competition, to which
the Philippines is also a party, or
‣ extends reciprocal rights to nationals of the Philippines by law,
shall be entitled
(1) to benefits to the extent necessary to give effect to any provision
of such convention, treaty or reciprocal law,
(2) in addition to the rights to which any owner of an intellectual
property right is otherwise entitled by this Act. (n)
Meaning, any of the treaties aforementioned can be invoked by Mr. X if he files
here in the Philippines. He can also invoke the Intellectual Property Code.
Sec. 3 was asked in the bar a few years ago: What is the scope of intellectual
property rights?
So, if you don’t know Section 3, you will get lost. That is the answer to
that question.
Cross-References:
a) Paris Convention
b) TRIPS Agreement
c) Nice Classfication
d) if you have time, read the WIPO rules
Page 1 of 46
 INTELLECTUAL PROPERTY
Inah del Rosario
based on the lectures of Atty. Melissa Suarez
Does the treaty afford protection to a foreign corporation against a Philippine
applicant for the registration of a similar trademark? YES.
Mirpuri vs. CA — Barbizon Corporation may invoke 6bis of the Paris Convention.
Article 6bis is a self-executing provision. its does not require legilative enactment
to gve it effect. When the case was filed, both US and the Philippines had already
acceded to 6bis of the Paris Convention.
Facts: Lolita Escobar who is the predecessor in interest of Mirpuri, filed an
application with the Bureau of Patents for the registration of the trademark
“Barbizon” for use in brassieres and ladies undergarments. She alleged that she
had been manufacturing and selling these products under the firm name “L&BM
Commercial” since March 3, 1970. Barbizon Corporation, a corporation organized
and doing business under the laws of NY, USA, opposed the application. It alleged
that the application if granted will cause confusion and damage to its bsiness
reputation and goodwill. The use of the mark, Barbizon by Escobar constitutes an
unlawful appropriation of a mark previously used in the Philippines and not
abandoned and therefore a statutory violation of Section 4(d) of RA 166.
Director of Patents: The opposition was dismissed.This decision attained finality.
Escobar was issued a certification of registation of the trademark Barbizon. The
trademark was for “use in ‘brasseries and lady’s underwear garments like panties.”
Escobar assigned all her rights and interest over to Mirpuri. But, Escobar failed to
file with the Bureau of Patents, the Affidavit of Use of the trademark required
under Section 12 of RA 166, the Philippine Trademark Law — the certificate of
registration was thus cancelled.
Mipuri reapplied (walang signature ni Escobar yung assignment) for registration
of the cancelled trademark. This was opposed by Barbizon Corp. Mirpuri
contended that the opposition is barred by res judicata.
Barbizon filed before the Office of Legal Affairs of the DTI a petition for
cancellation of Escobar/Mirpuri’s business name.
DTI- Office of Legal Affairs: cancelled Mirpuri’s business name. Barbizon
corporation was declared the owner and prior user of the business name
“Barbizon International”
Dirctor of Patents: declared the opposition filed by Barbizon Corp barred by res
judicata.
CA: reversed the Director of Patents. The case was remanded to the Bureau of
Patents for further proceedings.
Mirpuri claims that “Barbizon” products have been sold in the Philippines since
1970. It had developed this market by working long hours and spending sums of
money. The opposition filed by Barbizon Corp is barred by res judicata.
Barbizon Corporation argues that there is no res judicata because the cases do
not have identical causes of action. It is entitled to protection of the trademark
under the Convention of Paris for the Protection of Industrial Proeprty, specifically
Art. 6bis, and the implementation of Article 6bis by 2 memoranda of the Minister
of Trade and Industry to the Director of Patents, as well as EO 913.
Issue: Whether Barbizon Corporation may invoke Article 6Bis of the Paris
Convention.
Ruling: YES.
WHAT IS THE PARIS CONVENTION? It is a multilateral treaty that seeks to protect
industrial property consisting of patents, utility models, industrial designs,
trademarks, service marks, trade names and indications of source or appellations
of origin, and at the same time aims to repress unfair competition.
Convention is essentially a compact among various countries which, as
members of the Union, have pledged to accord to citizens of the other member
countries trademark and other rights comparable to those accorded their own
citizens by their domestic laws for an effective protection against unfair
competition. In short, foreign nationals are to be given the same treatment in
each of the member countries as that country makes available to its own citizens.
Nationals of the various member nations are thus assured of a certain minimum
of international protection of their industrial property.
- first signed by 11 countries in Paris on March 20, 1883
- revisions: (1) Brussels (1990); (2) Washington (1991); (3) Hague (1925); (4)
London (1934); (5) Lisbon (1958); (6) Stockholm (1967).
- both Philippines and the US are signatories to the Convention
- US acceeded on May 30, 1887
- Philippines, through the Senate concurred on May 10, 1965. This adhesion
became effective on Sept 27, 1965.
ARTICLE 6BIS OF THE PARIS CONVENTION GOVERNS THE PROTECTION OF
WELL-KNOWN TRADEMARKS.
(1) The countries of the Union undertake, either administratively if their
legislation so permits, or at the request of an interested party, to refuse or to
cancel the registration and to prohibit the use, of a trademark which
constitutes a reproduction, an imitation, or a translation, liable to create
confusion, of a mark considered by the competent authority of the country of
registration or use to be well-known in that country as being already the mark
of a person entitled to the benefits of this Convention and used for identical
or similar goods. These provisions shall also apply when the essential part of
the mark constitutes a reproduction of any such well-known mark or an
imitation liable to create confusion therewith.
(2) A period of at least five years from the date of registration shall be allowed
for seeking the cancellation of such a mark. The countries of the Union may
provide for a period within which the prohibition of use must be sought.
(3) No time limit shall be fixed for seeking the cancellation or the prohibition of
the use of marks registered or used in bad faith.
It is a self-executing provision and does not require legislative enactment to give
it effect in the member country. It may be applied directly by the tribunals and
officials of each member country by the mere publication or proclamation of the
Convention, after its ratification according to the public law of each state andthe
order for its execution.
REQUISITE UNDER ART. 6BIS: the trademark sought to be protected must be
“well-known” in the country where protection is sought. How to determine whether
it is well known? The power to determine whether a trademark is well-known lies
in the "competent authority of the country of registration or use." This competent
authority would be either the registering authority if it has the power to decide
this, or the courts of the country in question if the issue comes before a court. In
the Philippines, it is the Director of Patents.
If we were to apply RA 8293, what provision would you invoke? Section 3 which now
embodies the Article 6bis of the Paris Convention. Any citizen, domiciliary or entity
that is doing business in a country that is a signatory to a convention which the
Philippines is a signatory of or has reciprocal rights to Filipinos can invoke that
particular convention or the Intellectual Proeprty Code. Hence Barbizon, which is a
US corporation, the country of origin is a signatory to the Paris Convention — so it
can invoke the Paris Convention here in the Philippines.
Emerald Garments vs. CA — HD Lee (original Lee Jeans) Incorporated was
organized in US. In 1981, it filed with BPTTT a Cancellation of Cert of Registraiton
of Trademark against Emerald Garment Manufacturing Corp (Sytlistic Mr.Lee).
Trademark brand “too confusing or “similar” or the same with Emerald Gaments
(local Philippine brand). HD Lee invoked Sec. 37 of RA 166 or the Trademark Law
and Article VIII of the Paris Convention averred that petitioner's trademark "so
closely resembled its own trademark, 'LEE' as previously registered and used in
the Philippines, and not abandoned, as to be likely, when applied to or used in
connection with petitioner's goods, to cause confusion, mistake and deception on
the part of the purchasing public as to the origin of the goods. Dir. of Patnts and
CA ruled in favor of HD Lee. Can HD Lee invoke RA 166 and the Paris Convention?
YES. Philippines and the US are the parties to the Paris Convention. RA 166 Sec.
37 is the progenitor of Sec 3 of the IPC.
As Ruled by the SC in the Philip Morris, Inc vs. CA case:
In other words, (a foreign corporation) may have the capacity to sue for
infringement irrespective of lack of business activity in the Philippines on
account of Section 21-A of the Trademark Law but the question of
whether they have an exclusive right over their symbol as to justify
issuance of the controversial writ will depend on actual use of their
trademarks in the Philippines in line with Sections 2 and 2-A of the same
law. It is thus incongruous for petitioners to claim that when a foreign
corporation not licensed to do business in the Philippines files a
complaint for infringement, the entity need not be actually using its
trademark in commerce in the Philippines. Such a foreign corporation
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 INTELLECTUAL PROPERTY
Inah del Rosario
based on the lectures of Atty. Melissa Suarez
may have the personality to file a suit for infringement but it may not
necessarily be entitled to protection due to absence of actual use of the
emblem in the local market.
HD Lee however failed to prove its prior use before the Emerald’s use of its own
mark. The action for infringement was dismissed by the SC.
Section 37 of RA 166 is the progenitor of Section 3 of RA 8293 which was enacted in
1998. This provision states that foreign entities and corporations may invoke the
treaties and conventions adhered by the Philippines.
Intellectual Property is the subject but what are referring to in Sec. 4 are
intellectual property rights.
Section 4. Definitions. - 4.1. The term "intellectual property rights" consists
of:
a) Copyright and Related Rights;
b) Trademarks and Service Marks;
c) Geographic Indications;
d) Industrial Designs;
e) Patents;
f) Layout-Designs (Topographies) of Integrated Circuits; and
g) Protection of Undisclosed Information (n, TRIPS).
What are the intellectual property rights?
1) Copy right and Related Rights — If I write a song, that song is my
intellectual property. Copyright is my intellectual property right. I am
the only one who has the right to copy.
2) Trademarks and Service marks — I create a logo or a name for my
product. I apply for a trademark, that is the intellectual property right.
3) Geographic Indications;
4) Industrial Designs;
5) Patents;
6) Layout-Designs (Topographies) of Integrated Circuits; and
7) Protection of Undisclosed Information (n, TRIPS).
The three kinds in bold are the most important ones: patents trademarks and
copyright. The bar only requires these 3. The rest are used by practicing lawyers
in applicable situations.
We must also look at this: TECHNOLOGY TRANSFER AGREEMENT under Sec. 4.2.
4.2. The term "technology transfer arrangements" refers to contracts or
agreements involving
(1) the transfer of systematic knowledge for the manufacture
of a product,
(2) the application of a process, or rendering of a service
including management contracts; and
(3) the transfer, assignment or licensing of all forms of
intellectual property rights, including licensing of computer
software except computer software developed for mass
market.
4.3. The term "Office" refers to the Intellectual Property Office created
by this Act.
4.4. The term "IPO Gazette" refers to the gazette published by the Office
under this Act. (n)
What is a TTA?
It is a contract or agreement involving
(1) the transfer of systematic knowledge for the manufacture of a
product,
(2) the application of a process, or rendering of a service including
management contracts; and
(3) the transfer, assignment or licensing of all forms of intellectual
property rights (i.e. mass producing a song), including licensing
of computer software except computer software developed for
mass market.
Ex. Mr. X invented a robot. If he wants his invention to be mass produced, then he
must acquire a TTA.
Now let’s discuss the Intellectual Property Office. It replaced the Bureau of
Patents Trademarks and Technology Transfer. If you read your cases, you will
encounter this office, the BPTTT. This was the old IPO. The functions will be found
in Section 5.
Section 5. Functions of the Intellectual Property Office (IPO). -
5.1. To administer and implement the State policies declared in this Act,
there is hereby created the INTELLECTUAL PROPERTY OFFICE (IPO) which
shall have the following functions:
(a) Examine applications for grant of letters patent for inventions
and register utility models and industrial designs;
(b) Examine applications for the registration of marks, geographic
indication, integrated circuits;
(c) Register technology transfer arrangements and settle
disputes involving technology transfer payments covered by
the provisions of Part II, Chapter IX on Voluntary Licensing
and develop and implement strategies to promote and
facilitate technology transfer;
(d) Promote the use of patent information as a tool for
technology development;
(e) Publish regularly in its own publication the patents, marks,
utility models and industrial designs, issued and approved,
and the technology transfer arrangements registered;
(f) Administratively adjudicate contested proceedings affecting
intellectual property rights; and
(g) Coordinate with other government agencies and the private
sector efforts to formulate and implement plans and policies
to strengthen the protection of intellectual property rights in
the country.
5.2. The Office shall have custody of all records, books, drawings,
specifications, documents, and other papers and things relating to
intellectual property rights applications filed with the Office. (n)
Section 6. The Organizational Structure of the IPO. -
6.1. The Office shall be headed by a Director General who shall be
assisted by two (2) Deputies Director General.
6.2. The Office shall be divided into seven (7) Bureaus, each of which
shall be headed by a Director and assisted by an Assistant Director.
These Bureaus are:
(1)The Bureau of Patents;
(2)The Bureau of Trademarks;
(3)The Bureau of Legal Affairs;
(4)The Documentation, Information and Technology Transfer
Bureau;
(5)The Management Information System and EDP Bureau; and
(6)The Administrative, Financial and Personnel Services Bureau.
(7)The Bureau of Copyright and Other Related Rights.
6.3. The Director General, Deputies Director General, Directors and
Assistant Directors shall be appointed by the President, and the other
officers and employees of the Office by the Secretary of Trade and
Industry, conformably with and under the Civil Service Law. (n)
The IPO is under the DTI. The DGs, DDGs and the directors. These directors are
those of the different bureaus. So if you see Director, you are not talking about the
DG. You are talking about the 7 Bureaus of the IPO. Bureau of Copyright was
added by RA 10372 in 2012.
Each Bureau has its own director and assistant director. The DG, DGG, AD and D
of the Bureaus are all presidential appointees. Below assistant director, officers
and employees are appointed by the Sec. of DTI. These are the career officials.
From the DDG to the Assistant Director, they can be removed. They have a 5 year
term.
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 INTELLECTUAL PROPERTY
based on the lectures of Atty. Melissa Suarez
Office of the Director General
Deputy Director General Deputy Director General
Advocacy Policy & Int’l Administrative, Registration
Relations & Adjudication
BLA BP BT DITTB BC&ORR MIS
7.2. Qualifications. - The Director General and the Deputies Director General
must be
1) natural born citizens of the Philippines,
2) at least thirty-five (35) years of age on the day of their
appointment,
3) holders of a college degree, and
4) of proven competence, integrity, probity and independence:
5) Provided, That the Director General and at least one (1) Deputy
Director General shall be members of the Philippine Bar who have
engaged in the practice of law for at least ten (10) years:
6) Provided further, That in the selection of the Director General and
the Deputies Director General, consideration shall be given to such
qualifications as would result, as far as practicable, in the
balanced representation in the Directorate General of the various
fields of intellectual property.
7.3. Term of Office. - The Director General and the Deputies Director General
shall be appointed by the President for a term of five (5) years and shall be
eligible for reappointment only once: Provided, That the first Director General
shall have a first term of seven (7) years. Appointment to any vacancy shall
be only for the unexpired term of the predecessor.
7.4. The Office of the Director General. - The Office of the Director General
shall consist of the
(1) Director General and
(2) the Deputies Director General,
(3) their immediate staff and
(4) such Offices and Services that the Director General will set up to
support directly the Office of the Director General. (n)
JURISDICTION is also discussed in Section 7, which states that the DG shall:
(b) Exercise exclusive appellate jurisdiction over all decisions rendered by:
(1)the Director of Legal Affairs,
(2)the Director of Patents, *
(3)the Director of Trademarks,
(4)the Director of Copyright and Other Related Rights, and *
(5)the Director of the Documentation, Information and
Technology Transfer Bureau. +
The decisions of the Director General in the exercise of his appellate
jurisdiction in respect of the decisions of:
1) the Director of Patents, *
2) the Director of Trademarks and the Director of Copyright and
Other Related Rights *
➡ shall be appealable to the COURT OF APPEALS in accordance
with the Rules of Court; and
those in respect of the decisions of:
1) the Director of the Documentation, Information and Technology
Transfer Bureau +
➡ shall be appealable to the SECRETARY OF TRADE AND
INDUSTRY;
Inah del Rosario
FLOW OF APPEAL
‣ decisions of DLA, DP , DT, DC&ORR ➡ DG ➡ CA
‣ decisions of DDITT ➡ DG ➡ Sec. Trade and Industry
There are cases that are filed with the IPO. Because the IPO has a quasi-judicial
arm which is the Bureau of Legal Affairs.
Who decides? The Directors of BLA.
If you’re an inventor and you want to apply for a patent, you go to the Bureau of
Patents. Later, after the whole process, the examiner of the Bureau of Patents will
either grant or deny your application. If it is denied, the next step is to go to the
Director of Patents. The same thing with trademarks and copyrights (to their
AFPSB respective bureaus.) Then the DG. Afterwards, appeal can be made to the CA. That
is Section 7. That is the only time you can go to court.
What cases are DIRECTLY filed before the Director General? Petitions for
compulsory licensing.
This law is remedial — more procedural because of the registration process.
Section 7. The Director General and Deputies Director General. -
7.1. Functions. - The Director General shall exercise the following powers and
functions:
(a) Manage and direct all functions and activities of the Office, including
the promulgation of rules and regulations to implement the
objectives, policies, plans, programs and projects of the Office:
Provided, That in the exercise of the authority to propose
policies and standards in relation to the following:
(1) the effective, efficient, and economical operations of
the Office requiring statutory enactment;
(2) coordination with other agencies of government in
relation to the enforcement of intellectual property
rights;
(3) the recognition of attorneys, agents, or other persons
representing applicants or other parties before the
Office; and
(4) the establishment of fees for the filing and
processing of an application for a patent, utility model
or industrial design or mark or a collective mark,
geographic indication and other marks of ownership,
and for all other services performed and materials
furnished by the Office,
the Director General shall be subject to the supervision
of the Secretary of Trade and Industry;
(b) Exercise EXCLUSIVE APPELLATE JURISDICTION over all decisions
rendered by the Director of Legal Affairs, the Director of Patents, the
Director of Trademarks, the Director of Copyright and Other Related
Rights, and the Director of the Documentation, Information and
Technology Transfer Bureau. The decisions of the Director General in
the exercise of his appellate jurisdiction in respect of the decisions
of the Director of Patents, the Director of Trademarks and the
Director of Copyright and Other Related Rights shall be appealable to
the Court of Appeals in accordance with the Rules of Court; and those
in respect of the decisions of the Director of the Documentation,
Information and Technology Transfer Bureau shall be appealable to
the Secretary of Trade and Industry;
(c) Undertake enforcement functions supported by concerned agencies
such as the Philippine National Police, the National Bureau of
Investigation, the Bureau of Customs, the Optical Media Board, and
the local government units, among others;
(d) Conduct visits during reasonable hours to establishments and
businesses engaging in activities violating intellectual property rights
and provisions of this Act based on report, information or complaint
received by the office; and
(e) Such other functions in furtherance of protecting IP rights and
objectives of this Act."
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 INTELLECTUAL PROPERTY
Inah del Rosario
based on the lectures of Atty. Melissa Suarez
Phil Pharma vs. Pfizer — Phil Pharma offered to some hospitals the drug called
sulbactam ampicilin under the brand name Unasyn. Pfizer which is a multi-
national drug company is an exclusive distributor of this drug. Here comes Phil
Pharmawealth (a Phil. corporation), submitted bids to hospitals to supply
sulbactam ampicilin, the generic name of the patented drug. Pfizer wanted to stop
Philpharma from offering the patented drug to the hospitals. So it went to the
Bureau of Legal Affairs and asked for a writ of preliminary injunction to stop Phil
Pharma. It was granted by the BLA. The PI was only for 90 days. Upon the
expiration, Pfizer asked for an extension. It was denied by the BLA-IPO. Pfizer filed
a special civil action for certiorari under Rule 65 with the CA.
The allegation of Phil Pharma alleged that the appeal should be with the Director
General of the BLA.
Issue: Whether the remedy taken by Pfizer before the CA is correct.
Ruling: YES. Sec. 7 only applies to judgements and final orders of
directors — not to interlocutory orders. The allegation of PhilPHarma that
it should be an appeal filed by the Director General because that order
denying the extention of preliminary injunction is not a final order/
interlocutory.
What is being questioned before the CA is not a decision, but an
interlocutory order of the BLA-IPO denying respondents' motion to extend
the life of the preliminary injunction issued in their favor.
RA 8293 is silent with respect to any remedy available to litigants
who intend to question an interlocutory order issued by the BLA-IPO.
Moreover, Section 1(c), Rule 14 of the Rules and Regulations on
Administrative Complaints for Violation of Laws Involving Intellectual
Property Rights simply provides that interlocutory orders shall not be
appealable. The said Rules and Regulations do not prescribe a procedure
within the administrative machinery to be followed in assailing orders
issued by the BLA-IPO pending final resolution of a case filed with them.
Hence, in the absence of such a remedy, the provisions of the Rules of
Court shall apply in a suppletory manner, as provided under Section 3, Rule
1 of the same Rules and Regulations. Hence, in the present case,
respondents correctly resorted to the filing of a special civil action for
certiorari with the CA to question the assailed Orders of the BLA-IPO, as
they cannot appeal therefrom and they have no other plain, speedy and
adequate remedy in the ordinary course of law. This is consistent with
Sections 1 and 4, Rule 65 of the Rules of Court, as amended.
The propriety of extending the life of the writ of preliminary injunction
issued by the BLA-IPO in the exercise of its quasi-judicial power is no
longer a matter that falls within the jurisdiction of the said administrative
agency, particularly that of its Director General. The resolution of this issue
which was raised before the CA does not demand the exercise by the IPO of
sound administrative discretion requiring special knowledge, experience
and services in determining technical and intricate matters of fact. It is
settled that one of the exceptions to the doctrine of primary jurisdiction is
where the question involved is purely legal and will ultimately have to be
decided by the courts of justice.
Only final orders or judgements can be appealed. This order denying the motion
for the extension of the preliminary injunction is interlocutory.
What is a final order that is not interlocutory? A final order is one that disposes of
a case or a certain aspect thereof.
Ex: P files a case a forcible entry against D before the RTC. D files a motion
to dismiss for lack of jurisdiction over the subject matter. RTC dismissed
the case. That is a final order. What is the remedy of D? He can appeal that
order of RTC dismissing the case because it is a final order.
What is an interlocutory order? The same example. But instead of granting the
motion to dismiss, the RTC denies the motion. What is that decision? That order
denying the motion to dismiss is an INTERLOCUTORY ORDER because it is such an
order within a case wherein the court still has something to do. That kind cannot
be appealed. If you want to question that, you have to file a petition for certiorari
invoking GAD in excess or lack of jurisdiction before the CA under Rule 65.
That is precisely the case here. Humingi ng injunction ang Pfizer. It was granted
for 90 days. The extension sought by it was denied. It is an interlocutory order
within a case. So it cannot be appealed. So Section 7 does not apply.
Section 7 only applies to judgements and final orders of the Directors and not to
interlocutory orders. If it is an interlocutory order, go back to the Rules of Court
which is suppletorily applicable. Look at the explanation of the SC.
Let’s look at the different Bureaus:
BUREAU OF PATENTS
So if you want to have your invention patented, you file before the Bureau of
Patents. The Bureau of Patents is headed by a director and an assistant director.
What are the functions?
Section 8. The Bureau of Patents. - The Bureau of Patents shall have the
following functions:
8.1. Search and examination of PATENT APPLICATIONS and the GRANT OF
PATENTS;
8.2. Registration of utility models, industrial designs, and integrated circuits;
and
8.3. Conduct studies and researches in the field of patents in order to assist
the Director General in formulating policies on the administration and
examination of patents. (n)
BUREAU OF TRADEMARKS
Let’s say you have a business. You want to have the name of your business
registered. You go to the Bureau of Trademarks and have it registered there.
Section 9. The Bureau of Trademarks. - The Bureau of Trademarks shall have
the following functions:
9.1. Search and examination of the applications for the registration of marks,
geographic indications and other marks of ownership and the issuance
of the certificates of registration; and
9.2. Conduct studies and researches in the field of trademarks in order to
assist the Director General in formulating policies on the administration
and examination of trademarks. (n)
BUREAU OF COPYRIGHT AND ORR
Section 9-A. The Bureau of Copyright and Other Related Rights. — The Bureau
of Copyright and Other Related Righs shall have the following functions:
1. Exercise original jurisdiction to resolve DISPUTES RELATING TO
THE TERMS OF LICENSE involving the author’s right to public
performance or other communication of his work;
2. Accept, review and decide on applications for the accreditation of
collective management organizations or similar entities;
3. Conduct studies and researches in the field of copyright and
related rights; and
4. Provide for other copyright and related rights service and charge
reasonable fees therefor.
This is an amendment provided by RA 10372. If you look at the functions of the
BOCORR, it is different from that of patent and trademark. There is no search and
examination in the registration. They merely accept, review and decide.
Does one need to register copyright?
If you are an author, from this point onward you have to know the difference
between the patent, trademark and copy right.
When you write a book, as the creator of the book, you are protected from
the moment of creation — meaning you automatically own a copyright. What is a
copy right? The right to copy. The right to disseminate. The right to expose it to
the public, or communicate to the public.
That is the reason why we did not have a Bureau of Copyright because
there was no need to register to be protected. Unlike patent, if you have an
invention, if you don’t have it patented, a lot of people will copy your invention and
you’re not protected. The same thing with trademarks, if you don’t have the name
of your internet cafe trademark registered, anybody can use the name. But in
copyright, it is different because the creator is protected from the moment of
creation. Therefore, there was no Bureau of Copyright before.
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But then how do you know that you are protected? It’s hard. That’s why the
IPO got a lot of questions and requests to have their works registered. Now, one
can do that in the Bureau of Copyright.
If you look at the IPO website, there is a procedure there on how to register
copyright — dun parin sa Bureau of Copyright and falls under #4: Provide for other
copyright and related rights service and charge reasonable fees therefor.
It is not the primary function, unlike Bureau of Trademarks and Bureau of
Patents, it is really search and examination of applicants etc. Here, it is doing just
one of the functions because it is requested that there be registration of
copyright.
BUREAU OF LEGAL AFFAIRS
THIS IS A QUASI-JUDICIAL BODY inside the IPO. Its functions are under Section
10.
Please take note that Petitions for Compulsory Licensing is brought before the
Director General and not the BLA.
Section 10. The Bureau of Legal Affairs. - The Bureau of Legal Affairs shall
have the following functions:
10.1. Hear and decide
1. OPPOSITION to the application for registration of marks;
2. CANCELLATION of trademarks; subject to the provisions of
Section 64, cancellation of patents, utility models, and industrial
designs; and
3. petitions for compulsory licensing of patents; (Brought before the
DG; not the BLA under the amended law)
10.2. (a) 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 Two hundred thousand pesos (P200,000):
Provided further, That availment of the provisional remedies may be granted
in accordance with the Rules of Court. The Director of Legal Affairs shall
have the power to hold and punish for contempt all those who disregard
orders or writs issued in the course of the proceedings. (n)
(b) After formal investigation, the Director for Legal Affairs may impose
one (1) or more of the following administrative penalties:
(i) The issuance of a cease and desist order which shall specify
the acts that the respondent shall cease and desist from and
shall require him to submit a compliance report within a
reasonable time which shall be fixed in the order;
(ii) The acceptance of a voluntary assurance of compliance or
discontinuance as may be imposed. Such voluntary assurance
may include one or more of the following:
(1) An assurance to comply with the provisions of the
intellectual property law violated;
(2) An assurance to refrain from engaging in unlawful and
unfair acts and practices subject of the formal
investigation;
(3) An assurance to recall, replace, repair, or refund the money
value of defective goods distributed in commerce; and
(4) An assurance to reimburse the complainant the expenses
and costs incurred in prosecuting the case in the Bureau of
Legal Affairs.
The Director of Legal Affairs may also require the respondent to
submit periodic compliance reports and file a bond to guarantee
compliance of his undertaking;
(iii) The condemnation or seizure of products which are subject of
the offense. The goods seized hereunder shall be disposed of
in such manner as may be deemed appropriate by the Director
of Legal Affairs, such as by sale, donation to distressed local
governments or to charitable or relief institutions, exportation,
recycling into other goods, or any combination thereof, under
such guidelines as he may provide;
(iv) The forfeiture of paraphernalia and all real and personal
properties which have been used in the commission of the
offense;
(v) The imposition of administrative fines in such amount as
deemed reasonable by the Director of Legal Affairs, which shall
in no case be less than Five thousand pesos (P5,000) nor more
than One hundred fifty thousand pesos (P150,000). In addition,
an additional fine of not more than One thousand pesos
(P1,000) shall be imposed for each day of continuing violation;
(vi) The cancellation of any permit, license, authority, or
registration which may have been granted by the Office, or the
suspension of the validity thereof for such period of time as
the Director of Legal Affairs may deem reasonable which shall
not exceed one (1) year;
(vii)The withholding of any permit, license, authority, or
registration which is being secured by the respondent from the
Office;
(viii)The assessment of damages;
(ix) Censure; and
(x) Other analogous penalties or sanctions. (Secs. 6, 7, 8, and 9,
Executive Order No. 913 [1983]a)
10.3. The Director General may by Regulations establish the procedure to
govern the implementation of this Section. (n)
BUREAU OF DOCUMENTATION, INFORMATION, TECHNOLOGY TRANSFER
Just read them. We will not go through them one by one.
Section 11. The Documentation, Information and Technology Transfer Bureau. -
The Documentation, Information and Technology Transfer Bureau shall have
the following functions:
11.1. Support the search and examination activities of the Office through the
following activities:
(a) Maintain and upkeep classification systems whether they be
national or international such as the International Patent
Classification (IPC) system;
(b) Provide advisory services for the determination of search
patterns;
(c) Maintain search files and search rooms and reference libraries;
and
(d) Adapt and package industrial property information.
11.2. Establish networks or intermediaries or regional representatives;
11.3. Educate the public and build awareness on intellectual property through
the conduct of seminars and lectures, and other similar activities;
11.4. Establish working relations with research and development institutions
as well as with local and international intellectual property professional
groups and the like;
11.5. Perform state-of-the-art searches;
11.6. Promote the use of patent information as an effective tool to facilitate
the development of technology in the country;
11.7. Provide technical, advisory, and other services relating to the licensing
and promotion of technology, and carry out an efficient and effective program
for technology transfer; and
11.8. Register technology transfer arrangements, and settle disputes
involving technology transfer payments. (n)
MANAGEMENT INFORMATION SERVICES AND EDP BUREAU
Section 12. The Management Information Services and EDP Bureau. - The
Management Information Services and EDP Bureau shall:
12.1. Conduct automation planning, research and development, testing
of systems, contracts with firms, contracting, purchase and
maintenance of equipment, design and maintenance of systems, user
consultation, and the like; and
12.2. Provide management information support and service to the
Office. (n)

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ADMINISTRATIVE, FINANCIAL AND HUMAN RESOURCE DEVELOPMENT SERVICE
BUREAU
Section 13. The Administrative, Financial and Human Resource Development
Service Bureau. - 13.1. The Administrative Service shall:
(a) Provide services relative to procurement and allocation of supplies
and equipment, transportation, messengerial work, cashiering,
payment of salaries and other Office's obligations, office
maintenance, proper safety and security, and other utility services;
and comply with government regulatory requirements in the areas
of performance appraisal, compensation and benefits, employment
records and reports;
(b) Receive all applications filed with the Office and collect fees
therefor, and
(c) Publish patent applications and grants, trademark applications, and
registration of marks, industrial designs, utility models, geographic
indication, and lay-out-designs of integrated circuits registrations.
13.2. The Patent and Trademark Administration Services shall perform the
following functions among others:
(a) Maintain registers of assignments, mergings, licenses, and
bibliographic on patents and trademarks;
(b) Collect maintenance fees, issue certified copies of documents in its
custody and perform similar other activities; and
(c) Hold in custody all the applications filed with the office, and all
patent grants, certificate of registrations issued by the office, and
the like.
13.3. The Financial Service shall formulate and manage a financial program
to ensure availability and proper utilization of funds; provide for an effective
monitoring system of the financial operations of the Office; and
13.4. The Human Resource Development Service shall design and implement
human resource development plans and programs for the personnel of the
Office; provide for present and future manpower needs of the organization;
maintain high morale and favorable employee attitudes towards the
organization through the continuing design and implementation of employee
development programs. (n)
Read on Sec. 14.
Section 14. Use of Intellectual Property Rights Fees by the IPO. - 14.1. For a
more effective and expeditious implementation of this Act, the Director
General shall be authorized to retain, without need of a separate approval
from any government agency, and subject only to the existing accounting and
auditing rules and regulations, all the fees, fines, royalties and other charges,
collected by the Office under this Act and the other laws that the Office will
be mandated to administer, for use in its operations, like upgrading of its
facilities, equipment outlay, human resource development, and the
acquisition of the appropriate office space, among others, to improve the
delivery of its services to the public. This amount, which shall be in addition
to the Office's annual budget, shall be deposited and maintained in a separate
account or fund, which may be used or disbursed directly by the Director
General.
14.2. After five (5) years from the coming into force of this Act, the Director
General shall, subject to the approval of the Secretary of Trade and Industry,
determine if the fees and charges mentioned in Subsection 14.1 hereof that
the Office shall collect are sufficient to meet its budgetary requirements. If
so, it shall retain all the fees and charges it shall collect under the same
conditions indicated in said Subsection 14.1 but shall forthwith, cease to
receive any funds from the annual budget of the National Government; if not,
the provisions of said Subsection 14.1 shall continue to apply until such time
when the Director General, subject to the approval of the Secretary of Trade
and Industry, certifies that the above-stated fees and charges the Office shall
collect are enough to fund its operations. (n)
Section 15. Special Technical and Scientific Assistance. - The Director General
is empowered to obtain the assistance of technical, scientific or other
qualified officers and employees of other departments, bureaus, offices,
agencies and instrumentalities of the Government, including corporations
owned, controlled or operated by the Government, when deemed necessary in
the consideration of any matter submitted to the Office relative to the
enforcement of the provisions of this Act. (Sec. 3, R.A. No. 165a)
Section 16. Seal of Office. - The Office shall have a seal, the form and design
of which shall be approved by the Director General. (Sec. 4, R.A. No. 165a)
Section 17. Publication of Laws and Regulations. - The DIRECTOR GENERAL
shall cause to be printed and make available for distribution, pamphlet copies
of this Act, other pertinent laws, executive orders and information circulars
relating to matters within the jurisdiction of the Office. (Sec. 5, R.A. No. 165a)
It is the job of the DG to ensure that all the laws, rules, regulations pertaining to
intellectual property will be printed and disseminated to the public. What is being
used now is the IPO website.
Section 18. The IPO Gazette. - All matters required to be published under this
Act shall be published in the Office's own publication to be known as the IPO
Gazette. (n)
Aside from the IPO Phil website, we also have the IPO Gazette. If the SC has the
official gazette, the IPO has the IPO Gazette. I haven’t seen the IPO Gazette.
Always access website since it is better.
Section 19. Disqualification of Officers and Employees of the Office. - All
officers and employees of the Office shall NOT
‣ apply; or
‣ act as an attorney or patent agent of an application for a grant of
patent, for the registration of a utility model, industrial design or
mark nor
‣ acquire, except by hereditary succession, any patent or utility
model, design registration, or mark or any right, title or interest
therein
during their employment and for one (1) year thereafter. (Sec. 77, R.A. No.
165a)
Ex. Mr. X is a patent owner of a gadget. Mr. X is already going to die. His son is an
employee of an IPO. Mr. X executed a deed of donation in favor of his son where
he donated the patent to his son. Can that be done? NO. That cannot happen. That
employee cannot acquire.
Mr. X died. Son inherited the patent by virtue of operation of law. Son is an
employee of the IPO. Is that allowed? YES. Because that is what you call
hereditary succession. That is by virtue of operation of law.
This is just like the situation of a foreigner. A foreigner cannot own land here in
the Philippines. But if he is an heir of a Filipino who owns a particular land, he
may by hereditary succession, own that land. Ganun din when it comes to this.
We are done with the introduction of the Intellectual Property Code.
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based on the lectures of Atty. Melissa Suarez
Before the amendment made RA 10372, it was the Director General /DG who had
original jurisdiction to resolve disputes when it comes to terms of license. But
because of the amendment and the creation of the Bureau of Copyright, that
particular jurisdiction now belongs to the Bureau of Copyright and Other Related
Rights.
PART II
 Section 21. Patentable Inventions. - Any technical solution of a problem in
THE LAW ON PATENTS
When we talk about patents, we are talking about invention, a creation of the
mind. The kind of creation that is related to patents an invention.
DISCOVERY IS NOT AN INTELLECTUAL CREATION THAT CAN BE PATENTED.
Discovery is not an intellectual creation because you just discover it, you cannot
create it. Thus, one cannot obtain a patent when one discovers a new element.
When you discover a comet, you can have it named after you, but that is not yours
because you did not create it.
Patent — Is not the product but the intellectual property right. It is a grant made
by the government to an inventor, conveying and securing to him the exclusive
right to make use of his invention for a given period.
When something is patented, no one can copy that. If someone copies a
patented product, then that person may be liable for infringement.
What are the purposes of a patent or the patent law?
1. The patent law seeks to foster and reward invention. (Pearl and Dean vs.
Shoemart )
2. It promotes disclosures of inventions to stimulate further invention and to
permit the public to practice the invention once the patent expires.
‣ Patents are not forever because patent laws protect the inventor but
would also like that technology to be shared — so that others can also
make use of it. After the expiration of a patent, the creation belongs to
the public domain.
3. The stringent requirements for patent law protection seek to ensure that
ideas in the public domain remain there for the free use of the public.
But the ultimate goal of patents is to bring new design and technoogy into the
public domain through disclosure.
CHAPTER I
 PROCESS for the production of plants or animals. (i.e. American Bully) This
GENERAL PROVISIONS
Section 20. Definition of Terms Used in Part II, The Law on Patents. - As used in
Part II, the following terms shall have the following meanings:
20.1. "Bureau" means the Bureau of Patents,
20.2. "Director" means the Director of Patents;
20.3. "Regulations" means the Rules of Practice in Patent Cases
formulated by the Director of Patents and promulgated by the Director
General;
20.4. "Examiner" means the patent examiner;
20.5. "Patent application" or "application" means an application for a
patent for an invention except in Chapters XII and XIII, where
"application" means an application for a utility model and an industrial
design, respectively; and
20.6. "Priority date" means the date of filing of the foreign application
for the same invention referred to in Section 31 of this Act. (n)
CHAPTER II

PATENTABILITY
WHAT CAN BE PATENTED? WHAT IS PATENTABLE? Not everything can be
patented. Because Section 21 enumerates the 3 requisites for something to be
patentable.
any field of human activity which is
1. new,
2. involves an inventive step and
3. is industrially applicable
shall be Patentable.
It may be, or may relate to, a product, or process, or an improvement of any of
the foregoing. (Sec. 7, R.A. No. 165a)
What can you patent? Product (i.e. robot, gadget), process (i.e. intangible
product), or an improvement of a product or process.
What cannot be patented? 6 items.
Section 22. Non-Patentable Inventions. - The following shall be excluded from
patent protection:
22.1. Discoveries, scientific theories (e=mc2) and mathematical methods
(computation) and in the case of drugs and medicines,
- the mere discovery of a new form or new property of a KNOWN
SUBSTANCE which does not result in the enhancement of the known
efficacy of that substance, or (i.e. abc became abcd)
- the mere discovery of any new property or new use for a KNOWN
SUBSTANCE, (i.e. glutathione) or
- the mere use of a KNOWN PROCESS unless such known process
results in a new product that employs at least one new reactant. (RA
9502)
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; (i.e. how to treat cancerous mass)
22.4. PLANT VARIETIES or ANIMAL BREEDS or essentially BIOLOGICAL
provision shall not apply to micro-organisms and non-biological 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 (i.e. something that is admired like a
painting, picture; This is because you can only patent inventions.)
22.6. Anything which is CONTRARY TO PUBLIC ORDER OR MORALITY. (Sec.
8, R.A. No. 165a)
Out of all the 6 items. What are asked in the bar?
#6 — 1989 bar
X invented a bogus con detector which can be used in cell operating
gambling devices otherwise known as one arm bandits. Can X apply a
patent? NO. The operation of a self operating gambling devise is a
criminal offense in our country. The invention fosters these machines to
be one against public policy.
Under RA 8293 the term used is public order or morality.
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#1 RA 165 — 1988 bar
X invented a method improving the tenderness of meat by injecting an
enzyme into the live animal shortly before slaughter. Is the invention
patentable? YES. It is a process elected towards improving a commercial
product. This si under RA 165. A general invention possessing the
following requisites to be a subject of an application of patent: (1)
novelty (2) originality, (3) precedence (4) industrical applicabilty.
Now we have 3: (1) novelty, (2) has an inventive step, (3) industrially applicable.
2006 bar —
Supposed Albert Einsteign filed before the IPO an application of patent
for the theory of relativity. e=mc^2. Can he do that? NO. This is a
scientific theory.
2010 bar —
Dr. Rowell discovered a new way of treating of Alzheimers by developing
a special method of treating the disease with new medicine. This was
discovered after long experimentation and field testing. A novel mental
exercise, he comes to you for advise and how he can have his discoveries
protected. Can he patent the discoveries? If no, why? If yes, why? We will
see what do you mean by patentability.
REQUISITES OF PATENTABILITY
1. IT MUST BE NEW
What is new is novel. An invention shall not be considered new if it forms
part of a prior art. (Sec. 23)
Section 23. Novelty. . - An invention shall not be considered new if it forms
part of a prior art. (Sec. 9, R.A. No. 165a)
What is prior art? Everything which has been made available to the public
anywhere in the world, before the filing date or the priority date of the
applciation claiming the invention.
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 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)
MANZANO VS. CA and MADOLARIA
GR 113388, Sept 5, 1997
Facts: Manzano filed an action for the cancellation of the Letters Patent of a
GAS BURNER registered under the name of Madolaria who subsequently
assigned the letters patent to New United Foundry and Manufacturing
Corporation. Manzano alleges:
(a) the utility model covered by the letters patent, in this case, an LPG
gas burner, was not inventive, new or useful;
(b) the specification of the letters patent did not comply with the
requirements of Sec. 14, RA No. 165, as amended;
(c) respondent Melecia Madolaria was not the original, true and actual
inventor nor did she derive her rights from the original, true and actual
You can see the requirement of novelty — If a device or process has been known or
inventor of the utility model covered by the letters patent; and,
used by others prior to its invention or discovery by the applicant, an application for
(d) the letters patent was secured by means of fraud or
misrepresentation.
(e) the utility model covered by the letters patent of respondent had been
known or used by others in the Philippines for more than one (1) year
before she filed her application for letters patent on 9 December 1979;
(f) the products which were produced in accordance with the utility
model covered by the letters patent had been in public use or on sale
in the Philippines for more than one (1) year before the application for
patent therefor was filed.
She contends that the utility model of Madolaria is absolutely similar to the
LPG burner sold by Manzano in 1975 and 1976 and also of the Ransome
burner in the old brochures of Manila Gas corporation and Esso Standard
Eastern.
Issue: Should the patent of Madolaria be cancelled?
Ruling: NO.
1) Section 7, Ra 165 provides that Any invention of a new and useful
machine, manufactured product or substance, process or an improvement
of any of the foregoing, shall be patentable.
2) Sec. 55 provides Design patents and patents for utility models. - (a) Any
new, original and ornamental design for an article of manufacture and (b)
any new model of implements or tools or of any industrial product or of
part of the same, which does not possess the quality of invention, but
which is of practical utility by reason of its form, configuration,
construction or composition, may be protected by the author thereof, the
former by a patent for a design and the latter by a patent for a utility
model, in the same manner and subject to the same provisions and
requirements as relate to patents for inventions insofar as they are
applicable except as otherwise herein provided.
3) *** ELEMENT OF NOVELTY IS AN ESSENTIAL REQUISITE OF THE
PATENTABILTY OF AN INVENTION OR DISCOVERY. If a device or process
has been known or used by others prior to its invention or discovery by
the applicant, an application for a patent therefor should be denied; and if
the application has been granted, the court, in a judicial proceeding in
which the validity of the patent is drawn in question, will hold it void and
ineffective. It has been repeatedly held that an invention must possess
the essential elements of novelty, originality and precedence, and for the
patentee to be entitled to the protection the invention must be new to the
world
4) THE ISSUANCE OF PATENT TO MADOLARIA CREATES A PRESUMPTION
WHICH YIELDS ONLY TO CLEAR AND COGENT EVIDENCE THAT THE
PATENTEE WAS THE ORIGINAL AND FIRST INVENTOR. The burden of
proving that a utility model is not new is on him who avers it. It must be
overcome only by clear and satisfactory evidence. Hence, a utility model
shall not be considered new if before the application for a patent it has
been publicly known or publicly used in this country or has been
described in a printed publication or publications circulated within the
country, or if it is substantially similar to any other utility model so
known, used or described within the country.
5) MANZANO FAILED TO OVERCOME THE PRESUMPTION OF LEGALITY.
1) the brochures do not show that the device therein is identical or
substantially identical to the utility model of Madolaria. It is
relevant to state that in determining whether novelty or newness is
negatived by any prior art, only one item of the prior art may be
used at a time. For anticipation to occur, the prior art must show
that each element is found either expressly or described or under
principles of inherency in a single prior art reference or that the
claimed invention was probably known in a single prior art device
or practice.
2) Assuming that the brochures depict exactly the same models, they
cannot serve as anticipatory bars because they are undated. The
dates were not indicated. They are useless prior art references
6) The findings of fact of the Director of Patents, especially when affirmed by
the CA, are conclusive on the SC when supported by substantial evidence.
Manzano failed to show compelling grounds for a reversal.
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a patent therefor should be denied; and if the application has been granted, the
court, in a judicial proceeding in which the validity of the patent is drawn in question,
will hold it void and ineffective.
Under RA 165, for an invention to be new, it should be part of prior art. What is
prior art? Something that has been available to the public or anywhere in the
world. That why before, gas burners, powder puffs, registration of utility model, it
is difficult to search before. Now, there is a system for searching prior art. Even if
you have an application made somewhere else in the world for patent, that is
already considered prior art.
What is the primary function of the Bureau of Patents? Search and examination.
If Mr. X goes to the Bureau of Patents and applies for a patent for his
invention, the Bureau of Patents Examiner will search all over the world if
there is something that is similar to that. If there is, then it is already prior
art.
Section 25. Non-Prejudicial Disclosure. . - 25.1. The disclosure of information
contained in the application during the twelve (12) months preceding the
filing date or the priority date of the application shall not prejudice the
applicant on the ground of lack of novelty if such disclosure was made by:
(a) The inventor;
(b) A patent office and the information was contained (a) in another
application filed by the inventor and should not have been
disclosed by the office, or (b) in an application filed without the
knowledge or consent of the inventor by a third party which
obtained the information directly or indirectly from the inventor;
or
(c) A third party which obtained the information directly or
indirectly from the inventor.
25.2. For the purposes of Subsection 25.1, "inventor" also means any person
who, at the filing date of application, had the right to the patent. (n)
2. IT MUST HAVE AN INVENTIVE STEP
An invention involves an inventive step if:
- having regard to prior art,
- it is not obvious to a person skilled in the art at the time of the filing
date or priority date of the application claiming the invention.
Section 26. Inventive Step. - 26.1 An invention involves an inventive step if,
having regard to prior art, it is not obvious to a person skilled in the art at the
time of the filing date or priority date of the application claiming the invention.
(n)
26.2. In the case of DRUGS AND MEDICINES, there is no inventive step if the
invention results from
‣ the mere discovery of a NEW PROPERTY OR NEW FORM of a known
substance which does not result in the enhancement of the known
efficacy of that substance, or
‣ the mere discovery of any NEW PROPERTY OR NEW USE for a
known substance, or
‣ the MERE USE OF A KNOWN PROCESS unless such known process
results in a new product that employs at least one new reactant
it is inventive, if a person skilled in that art needs to look at the manual. Any thing
that is obvious for a person having a skill in that art, is not an inventive step.
RA 9502 Sec. 26.2 in the case and medicines — there is NO inventive step if the
invention results from these three:
1. the mere discovery of a new form or new property of a known
substance which does not result in the enhancement of the known
efficacy of that substance; or
2. the mere discovery of any new property or new use for a known
substance; (i.e. glutathione) or
3. the mere use of a known process unless such known process results in
a new product that employes at least one new reactant
‣ Not only it is not patentable, it also does not have an inventive step if it is any
one of the 3.
GRAHAM FACTOR — has something to do with inventive step. These factors (1966
US case) are the ones the court looks at in determining obviousness and non-
obviousness in the US and applied in the SC in Graham vs. John Deere.
What are the Graham Factors?
1. The scope and content of prior art
2. Level of ordinary skill in the art
3. Difference between the claimed invention and the prior art
4. The objective evidence of non-obviousness
(a) commercial success
(b) long-felt but unsolved needs; and
(c) failure of others
3. INDUSTRIAL APPLICABILITY
Patentable products must be useful. Verily, an invention shall be useless
if it be forever confined in the realm of theories. It has to have some
practical application to be useful.
Section 27. Industrial Applicability. - An invention that can be produced and
used in any industry shall be industrially applicable. (n)
CHAPTER III

RIGHT TO A PATENT
Who has a right to a patent?
Section 28. Right to a Patent. - The right to a patent belongs to the
1) inventor,
2) 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. (Sec. 10, R.A. No. 165a)
For one to be issued a patent, he must be the inventor or the inventor’s heirs or
assigns. Not anyone can apply for a patent. Otherwise, even if all the requisites of
patentability are there, but the one who is applying is not the inventor or his heirs
or assigns, then the patent application will not be granted.
2nd paragraph: there will be co-ownership if 2 or more persons invented the
product.
What if 2 or more persons made the invention separately and independently of
each other?
Section 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
1. the person who filed an application for such invention,
2. 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.)
There are two persons invented the same thing. What will happen? Unahan na
lang.
Section 30. Inventions Created Pursuant to a Commission. -
30.1. The person who commissions the work shall own the patent, unless
otherwise provided in the contract.
Ex. Mr. Y was commissioned to invent a robot that can fly.
Who shall own the patent?
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GR: the person who commissions the work shall own the patent
E: Unless otherwise provided in the contract.
What about employment? This concerns those people who are employed by drug
companies in their R&D.
Section 30. Inventions Created Pursuant to a Commission. -
xxx
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)
Ex. Pfizer has a department where the inventors are. They invent drugs. But one of
inventors, made a container. That is so different from drugs. Who will own the
invention?
The employee. To create a container is not part of his duties.
But if the invention is the result of the performance of his regularly-assigned
duties, then the employer who will own the patent. Unless there is an agreement,
express or implied to the contrary.
So, there are 2 dates in filing:
(1) Filing date — significant if only person filed an application for the
patent
(2) but if there are two people application for a patent for the same
invention, the one with the earliest filing date will be granted unless
there priority date. But if the other one has an earlier priority date, then
that will be prioritized.
Don’t forget that under Section 31,
a) the applicant must expressly claim priority based on his foreign
application:
b) The application made here in the Philippines must be made
within 12 months from the date of the earliest foreign
application.
It is not a requirement that the applicant already has a
patent in another country. It suffices that he has only
filed an application for a patent for his invention in
another country.
c) Applicant must submit a certified copy of theforeign application
in English translation within 6 months from the date of filing.
Q: What case can be filed against an appplication for patent?
A: A motion for opposition to the application for registration of patent
Q: Where?
A: Bureau of Legal Affairs

Q: Can anybody oppose the registration of Mr.X?

EARLIEST FILING DATE VS. PRIORITY DATE
A: Anybody can file provided that the motion for opposition must involve any of
Section 31. Right of Priority. . - An application for patent the following grounds for opposition.
GROUNDS FOR OPPOSITION
- filed by any person
(1) The invention is not patentable under Sec. 21 and 22
- who has previously applied for the same invention
(2) The applicant is not the inventor or his heirs or assigns under Sec. 28.
- 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 CHAPTER IV

foreign application was filed; and
PATENT APPLICATION
(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
SUMMARY OF THE PRODCEDURE FOR THE GRANT OF PATENT: (Salao)
the Philippines. (Sec. 15, R.A. No. 165a)
1. Filing of the application
Earliest Filing Date — one who filed first 2. Accordance of the filing date
Priority Date — the date of filing of the foreign application for the same 3. Formality examination
invention referred to in Sec. 31. 4. Classification and Search
5. Publication of the application
Ex. Mr X in the Philippines invented a car that runs on VCO. Then he applied for a 6. Substantive examination
patent in the Philippines on June 30, 2017. It turns out that Mr. Y who is in 7. Grant of Patent
Thailand, invented the same thing. Mr. Y applied for a patent in his own country in 8. Publication upon grant
Thailand on Jan 30, 2015. Mr. Y came to the Philippines to register his invention 9. Issuance of the certificate
here in the Philippines. Can that be done? YES. If he applies for a patent here on
Sept 30, 2015, who filed first?
Section 32. The Application. - 32.1. The patent application shall be in Filipino
Mr. Y. Sec. 31 provides that a person who has previously filed in another
or English and shall contain the following:
country which by treaty, convention, or law affords similar privileges to Filipino
(a) A request for the grant of a patent;
citizens, shall be considered as filed as of the date of filing the foreign application.
(b) A description of the invention;
Provided that all 3 requisites are present:
(c) Drawings necessary for the understanding of the invention;
(a) the local application expressly claims priority;
(d) One or more claims; and
- Mr. Y must expressly claim his priority based on his application in (e) An abstract.
Thailand
(b) it is filed within twelve (12) months from the date the earliest foreign
32.2. No patent may be granted unless the application identifies the inventor.
application was filed; and
If the applicant is not the inventor, the Office may require him to submit said
(c) a certified copy of the foreign application together with an English
authority. (Sec. 13, R.A. No. 165a)
translation is filed within six (6) months from the date of filing in the
Philippines. (Sec. 15, R.A. No. 165a)
Mr. Y has the earliest priority date.

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- The inventor must be identified because the invention is his property
which is owned by him automatically — intellectual creation being an
original mode of acquiring property.
- If the applicant is not the the inventor, if the applicant is the assignee/heir
of the inventor, then the Office may require him to submit proof of
authority.
Section 33. Appointment of Agent or Representative. - An applicant who is not
a resident of the Philippines must appoint and maintain a RESIDENT AGENT
or REPRESENTATIVE in the Philippines upon whom notice or process for
judicial or administrative procedure relating to the application for patent or the
patent may be served. (Sec. 11, R.A. No. 165a)
- Can a foreigner apply for an application? YES. A foreigner can apply for
application. Always go back to Section 3. You must have the qualifications
required by Section 3.
- If he is not going to be here (non-resident of the Philippines) during the
application process, he must appoint and maintain a resident agent or
representative in the Philippines for purposes of the application
Section 34. The Request. - The request shall contain a petition for the grant
of the patent, the name and other data of the applicant, the inventor and the
agent and the title of the invention. (n)
Section 35. Disclosure and Description of the Invention. - 35.1. Disclosure. -
The application shall disclose the invention in a manner sufficiently clear and
complete for it to be carried out by a person skilled in the art.
Where the application concerns a
‣ microbiological process or the product thereof and
‣ involves the use of a micro-organism which cannot be sufficiently
disclosed in the application in such a way as to enable the invention to
be carried out by a person skilled in the art, and
‣ such material is not available to the public,
the application shall be supplemented by a deposit of such material with an
international depository institution.
35.2. Description. - The Regulations shall prescribe the contents of the
description and the order of presentation. (Sec. 14, R.A. No. 165a)
- This is important.
- One must disclose the invention; the invention cannot be kept a secret.
The disclosure is for the purpose of search and examination.
Section 36. The Claims. - 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.
36.2. The Regulations shall prescribe the manner of the presentation of
claims. (n)
- By claim, you are asking for this or that protection in however way
- It must be clear and concise and supported by the description
CHAPTER V
PROCEDURE FOR GRANT OF PATENT
WHAT IS THE “FILING DATE”?
Section 37. The Abstract. - The ABSTRACT shall consist of a concise summary
of the disclosure of the invention as contained in the description, claims and
drawings in preferably not more than one hundred fifty (150) words.
It must be drafted in a way which allows
the clear understanding of the technical problem,
the gist of the solution of that problem through the invention, and
the principal use or uses of the invention.
The abstract shall merely serve for technical information. (n)
- must give an abstract; describe the invention
Section 38. Unity of Invention. - 38.1. The application shall relate to one
invention only or to a group of inventions forming a single general inventive
concept.
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.
- an application for patent is like a criminal information in a way that it
cannot be duplicitous (must be one offense; unless it may be quashable)
- one application = one invention or a group of inventions forming a single
general inventive concept
- several independent inventions = duplicitous = the Director may require
the application be restricted to a single application
- If grouped together, the Director of Patents will order the applicant to
divide the application and he must do so within 4 months or within
additional time, not exceeding 4 months.
Section 38. Unity of Invention. -
xxx
38.3. The fact that a patent has been granted on an application that did not
comply with the requirement of unity of invention shall not be a ground to
cancel the patent. (Sec. 17, R.A. No. 165a)
- What if the Director did not order of the severance of the applications?
What if the patent was granted for all inventions? It is NOT a ground to
cancel the patent.
Section 39. Information Concerning Corresponding Foreign Application for
Patents. - The applicant shall, at the request of the Director, furnish him with
the date and number of any application for a patent filed by him abroad,
hereafter referred to as the "foreign application," relating to the same or
essentially the same invention as that claimed in the application filed with
the Office and other documents relating to the foreign application. (n)
- this is related to the earliest priority date


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Section 40. Filing Date Requirements. - 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
(d) 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)
Section 41. According a Filing Date. - 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)
Section 42. Formality Examination. -
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 appeal to the Director of Patents
from any final action by the examiner. (Sec. 16, R.A. No. 165a)
- The examiner will examine all the formalities required
- The Rules and regulations provide that if the formality examination reveals
that the drawings were filed after the filing date applicant that the
drawings and the references to the drawings in the application shall be
deemed deleted unless the applicant requests within 2 months that the
application be granted a new filing date which is the date on which the
drawings were filed.
- Take note that it is not required in 40.1, but the formal drawings are
required for the filing date. This is under the Rules and Regulations of
Inventions, Rule 603. It is not here, nor 40.1 but Sec. 42 says that the
drawings are required.
- The filing date can be removed if the drawings are not filed.
- If the formality examination revelas that the drawings are not filed in due
time, any reference to them in the application are deemed deleted.
Section 43. Classification and Search. - An application that has complied with
the formal requirements shall be classified and a search conducted to
determine the prior art. (n)
- After the formality examination, all the requirements are complied with by
the applicant, then the Bureau of Patents shall conduct a classification
and search
- This is done not only with respect to prior art in the Philippines but all over
the world.
- This will take sometime.
- So it is at this point that the patent examiner shall determine the
requirement of novelty. The IPO uses the International Patent
Classification.
Result of Classification and Search - the Intellectual Property Search Report
It shall:
1) mention the documents, available at the Office at the time of drawing
up the reoport, which may be taken into consideration in assessing
novelty and inventive step of the invention
2) distinguish between cited documents published before the date of
priority claimed, between such date of priority and the date of filing,
and on or after the date of filing
3) contain the classification of the subject matter of the application in
accordance with the International Patent Classification
4) may include documents cited in a search established in the
corresponding foreign application.
Section 44. Publication of Patent Application. - 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)
- the most important requirement of the applcation is the publication of the
application
- This is to inform the entire world that there is an application for an
invention.
- It is only upon publication of the application that the papers relating to
publication is open to anyone who wants to examine. Before that, Sec. 45
applies.
Section 45. Confidentiality Before Publication. - 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)
WHAT STOPS 3RD PARTIES FROM COPYING and MANUFACTURING THE PATENT
APPLICANT’S WORK?
Section 46. Rights Conferred by a Patent Application After Publication. - 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 and within four (4) years from
the commission of the acts complained of. (n)
- it takes a long time for a patent to be granted but then
- this must be fixed! UNFAIR
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Ex. Mr. X invented a machine. He is a blind patent. What is the point of a blind
patent? So that it can be perfected. Nobody can copy his invention. Is he
precluded from manufacturing from selling his invention? No. That is his property,
his creation. Pwede niyang gawin yan. That is why there are certain products
which we will see “Philippine Patent Pending” “US Patent Pending” Pending pa
yung application. Pero ano naman ito? So pwede siya magbenta.
If somebody manufactures this product for which there’s a pending patent
application, tapos na publish na yung application. That person has committed
infringement. That is what it says under Sec. 76 — under acts of infringement.
Mr. X is protected even though his patent application is still pending.
Mr. Y copied Mr. X’s invention. Mr. X therefore has a cause of action, to file an
infringment case against Mr. Y.
However, while Mr. X has a cause of action, he does not have the right of action.
Why? Because he can only file an action for infringement after the grant of the
patent. Mr. X needs to wait for his patent application to be granted.
This is the catch here, it must be filed within 4 years from the commission of the
acts complained of.
Let’s say in 2017, Mr. Y copied Mr. X’s invention. Eh kailan inissue yung
patent ni X? 2027, ten years. Eh di nagexpire na.
That’s why I really don’t understand this IPC. Section 2 says that it is
trying fastrack the application of all those things, protect the inventors,
creators, but look what’s happening here. From this alone one can see
that it takes a long time to be granted a patent. Yet, the protection while
the application is pending is not there. That is why we have a lot of
inventors here in ADDU in the engineering, architecture dept, instead of
applying for a patent, they’d rather not because of the tedious and walang
kwentang process. The IPO personnel are the ones who make money out
of it. The application is submitted to the IPO and sila sila mismo yung nag
mamanufacture ng mga inventions. That is the complaint of the
inventors. Once their patent is already granted, the fake manufacturers’
products are already in the market. The thing is, all applications in
Manila. If you are the applicant, you file the application in the Intellectual
Property Satellite Office here in Davao. Then all the documents are sent
to Manila. How can you watch what’s going on? That is the reality of the
situation.
Here, we have the published application. Under Sec. 47, following the publication,
any person may present observations..
Section 47. Observation by Third Parties. - 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)
Aside from an opposition case, observations are allowed. The application is
subject to alot of scrutiny. To get protection for your creation, you have to go
through alot.
Section 48 is very important.
Section 48. Request for Substantive Examination. - 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)
This is something that a lot of applicants ignore.
The applicant, within 6 months from the date of publication, he must make a
WRITTEN REQUEST to determine whether a patent application meets the
requirements:
(1) of Sections 21-27 and
(2) Section 32-39 and
(3) the fees have been paid on time.
Failure to do so: The application shall be deemed waived.
DUPONT VS.DG FRANSISCO — The patent application of Dupont was refused
because (if we apply our IPC now) the application was deemed withdrawn.
Facts: EI Dupont is an American Corporaiton. It filed Philippine Patent Application
before the BPTTT. This was for Angiotensin II Receptor Blocking Imidazole
(Losartan), an invention related to the treatment of hypertension and congestive
heart failure. The product was produced and marketed by Merck, Sharpe, and
Dome Corporation, EI Dupont’s licensee under the brand names Cozaar and
Hyzaar. The application was handled by Atty. Mapili.
When Dupont sent an office action to the IPO, it replied that the applciation was
deemed abandoned because of Dupont’s failure to respond within the period
prescribed under Rule 112. It took 13 years for applicant to request for such office
action.
Dupont submitted a Power of Attorney in favor of a group of lawyers. It filed a
petition for Revival with Cost of Philippine Patent Application No. 35526.
- Atty. Mapili did not inform it about the abandonment of the application.
Not aware that Atty. Mapili had already died.
CA: because of the gross negligence of Atty. Mapili, the application should be
revived.
Therapharma moved for leave to intervene and admit the Attached MR on the
ground that such revival will affect its vested rights to sell it own product. It filed
before the Bureau of Food and Drugs its own application for a losartan product
which was granted when it found that Dupont’s application was deemed
abandoned. This was granted.
CA decided to not revive the application.
Dupont argues that it was not negligent in the prosecution of its patent
application because it was Atty. Mapili who failed to inform them of the
developments of the patent application. Nevertheless, it complied with all the
requirements for the revival of an abandoned application.
Therapharma argues otherwise. 8 years had already passed. Dupont’s inaction for
8 years constitutes actual abandonment. It took them another 4 years to request
a status update.
Issue: Whether the application of Dupont should be revived.
Ruling: NO.
1) An abandoned patent application may only be revived within 4 months from
the date of abandonment. Pursuant to Section 113 of the 1962 Revised Rules
of Practice, the period cannot be extended.
113. Revival of abandoned application. — An application abandoned for
failure to prosecute may be revived as a pending application if it is shown
to the satisfaction of the Director that the delay was unavoidable. An
abandoned application may be revived as a pending application within
four months from the date of abandonment upon good cause shown and
upon the payment of the required fee of P25. An application not revived
within the specified period shall be deemed forfeited.
2) Dupont had until January 29, 1989 to file for the revival of the patnet
application (office action received by Atty. Mapili on July 19, 1988). However,
it filed it 13 years later.
3) Section 113 has since been superseded by Section 133.4 of the Intellectual
Property Code, Rule 930 of the Rules and Regulations on Inventions, and Rule
929 of the Revised Implementing Rules and Regulations for Patents, Utility
Models and Industrial Design. The period of four (4) months from the date of
abandonment, however, remains unchanged. It actually provides for a shorter
period of 3 months within which to file for revival.
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Section 133. Examination and Publication. xxx 133.4. An abandoned

application may be revived as a pending application within three (3) CAN AN APPLICANT AMEND HIS APPLICATION? YES!
months from the date of abandonment, upon good cause shown and the
payment of the required fee. Section 49. Amendment of Application. - An APPLICANT MAY AMEND the
patent application during examination: Provided, That such amendment shall
Rule 930 of the Rules and Regulations on Inventions: not include new matter outside the scope of the disclosure contained in the
application as filed. (n)
Rule 930. Revival of application. An application deemed withdrawn for
failure to prosecute may be revived as a pending application within a
period of four (4) months from the mailing date of the notice of
withdrawal if it is shown to the satisfaction of the Director that the failure
was due to fraud, accident, mistake or excusable negligence.

A petition to revive an application deemed withdrawn must be

accompanied by (1) a showing of the cause of the failure to
WHEN SHALL A PATENT BE GRANTED?
prosecute, (2) a complete proposed response, and (3) the
required fee.
An application not revived in accordance with this rule shall be
deemed forfeited.
Rule 929 of the Revised Implementing Rules and Regulations for Patents,
Utility Models and Industrial Design provides:
Rule 929. Revival of Application. - An application deemed withdrawn for
failure to prosecute may be revived as a pending application within a
period of four (4) months from the mailing date of the notice of
withdrawal if it is shown to the satisfaction of the Director that the failure
was due to fraud, accident, mistake, or excusable negligence.
Section 50. Grant of Patent. - 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.
50.2. If the required fees for grant and printing are not paid in due time, the
application shall be deemed to be withdrawn.
50.3. A patent shall take effect on the DATE OF THE PUBLICATION OF THE
GRANT OF THE PATENT IN THE IPO GAZETTE. (Sec. 18, R.A. No. 165a)
- unfair provision
- it takes effect on the date of the publication of the IPO Gazette and not
from the granting of the patent

A petition to revive an application deemed withdrawn shall be

accompanied by:
(a) A showing of a justifiable reason for the failure to prosecute;
(b) A complete proposed response; and
(c) Full payment of the required fee.
No revival shall be granted to an application that has been previuosy
revived with cost.
An application not revived in accordance with this Rule shall be deemed
forfeited.
4) Even if the delay was unavoidable, or the failure to prosecute was due to
fraud, accident, mistake, or excusable negligence, or the Petition was
accompanied by a complete proposed response, or all fees were paid, the
Petition would still be denied since these regulations only provide a four (4)-
month period within which to file for the revival of the application. The rules
do not provide any exception that could extend this four (4)-month period to 13
years.
Public interest will be prejudiced if, despite Dupont’s inexcusable negligence, its
Petition for Revival is granted. Even without a pending patent application and the
absence of any exception to extend the period for revival, petitioner was already
threatening to pursue legal action against respondent Therapharma, Inc. if it
continued to develop and market its losartan product, Lifezar. Once petitioner is
granted a patent for its losartan products, Cozaar and Hyzaar, the loss of
competition in the market for losartan products may result in higher prices. For
the protection of public interest, Philippine Patent Application No. 35526 should
be considered a forfeited patent application.
WHAT CAN AN APPLICANT DO WHEN HIS APPLICATION IS DENIED?
Section 51. Refusal of the Application. - 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)
- the granting or denying is done by the Patent Examiner
- his decision may be appealed to the Director of Patents
Section 52. Publication Upon Grant of Patent. - 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. (Sec. 18, R.A. No. 165a)
- There are 2 publications: the one after the filing of the application and this
one, after the grant of the application.
- Why expose the invention after the patent has been already granted? Na-
grant na yung patent, dapat protected na! Diba? Maybe in the beginning to
find out whether the invention is part of prior art. But here, the patent is
already granted. This provision says that any interested party can still
inspect.

The patent application of Dupont should be refused because if we apply our IPC
Section 43.1, the application shall be withdrawn unless within 6 months of WHAT ARE THE CONTENTS OF PATENT?
publication, 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.

That is the importance of this provision. That is why it came out in this 2016 case.

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Section 53. Contents of Patent. - 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
Section 57. Correction of Mistakes of the Office. - 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. (Sec. 25, R.A. No. 165)

registered together with the description, claims, and drawings, if any, in

Section 58. Correction of Mistake in the Application. - On request of any
books and records of the Office. (Secs. 19 and 20, R.A. No. 165a)
interested person and payment of the prescribed fee, the Director is
authorized to correct any mistake in a patent of a formal and clerical nature,
not incurred through the fault of the Office. (Sec. 26, R.A. No. 165a)

Section 54. Term of Patent. - The term of a patent shall be TWENTY (20)
YEARS from the filing date of the application. (Sec. 21, R.A. No. 165a)

- VERY UNFAIR
- not from the date of effectivity
- We are very lucky here, because in the US, it is only 7 years.
- Inventions should be shared. Especially pag drugs. What happens if they
keep the drugs to themselves? Mahal masyado.
- Parang consuelo de bobo lang yung patent noh?
Section 55. Annual Fees. - 55.1. To maintain the patent application or patent,
an ANNUAL FEE shall be paid:
1. upon the expiration of four (4) years from the date the
application was published pursuant to Section 44 hereof, AND
2. 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. (Sec. 22, R.A. No. 165a)
Section 59. Changes in Patents. - 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.
59.2. 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.
59.3. If, and to the extent to which the Office changes the patent according to
this section, it shall PUBLISH the same. (n)
Section 60. Form and Publication of Amendment. - 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. (Sec. 27, R.A. No. 165)

Section 56. Surrender of Patent. - 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. (Sec. 24, R.A. No. 165a)

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CHAPTER VI

CANCELLATION OF PATENTS AND SUBSTITUTION OF
PATENTEE
Q: What case can be filed agianst a patent which is already effective?
A: File a cancellation case. Sec. 61
Where? Bureau of Legal Affairs
On what grounds?
Section 61. Cancellation of Patents. - 61.1. Any interested person may, upon
payment of the required fee, petition to cancel the patent or any claim
thereof, or parts of the claim, on any of the following GROUNDS:
(a) That what is claimed as the invention is not new or Patentable;
(b) That the patent does not disclose the invention in a manner
sufficiently clear and complete for it to be carried out by any person
skilled in the art; or
(c) That the patent is contrary to public order or morality.
61.2. Where the grounds for cancellation relate to some of the claims or parts
of the claim, cancellation may be effected to such extent only. (Secs. 28 and
29, R.A. No. 165a)
Section 62. Requirement of the Petition. - The PETITION FOR CANCELLATION
shall be:
1) in writing,
2) verified by the petitioner or by any person in his behalf who knows
the facts,
3) specify the grounds upon which it is based,
4) include a statement of the facts to be relied upon, and filed with the
Office.
5) Copies of printed publications or of patents of other countries, and
other supporting documents mentioned in the petition shall be
attached thereto, together with the
6) translation thereof in English, if not in the English language. (Sec.
30, R.A. No. 165)
Section 63. Notice of Hearing. - Upon filing of a petition for cancellation, the
Director of Legal Affairs shall forthwith serve notice of the filing thereof upon
the patentee and all persons having grants or licenses, or any other right,
title or interest in and to the patent and the invention covered thereby, as
appears of record in the Office, and of notice of the date of hearing thereon
on such persons and the petitioner.
Notice of the filing of the petition shall be PUBLISHED in the IPO Gazette.
(Sec. 31, R.A. No. 165a)
Section 64. Committee of Three. - In cases involving highly technical issues, on
motion of any party, the DIRECTOR OF LEGAL AFFAIRS may order that the
petition be heard and decided by a committee composed of
(1) the Director of Legal Affairs as chairman and
(2) two (2) members
who have the experience or expertise in the field of technology to which the
patent sought to be cancelled relates.
The decision of the committee shall be appealable to the Director General. (n)
WHAT IF THE INVENTION IS PROVEN TO BE NOT PATENTABLE?
Section 65. Cancellation of the Patent. - 65.1. If the Committee finds that a
case for cancellation has been proved, it shall order the patent or any
specified claim or claims thereof cancelled.
65.2. If the Committee finds that, taking into consideration the amendment
made by the patentee during the cancellation proceedings, the patent and
the invention to which it relates meet the requirement of this Act, it may
decide to maintain the patent as amended:
Provided, That the fee for printing of a new patent is paid within the
time limit prescribed in the Regulations.
65.3. If the fee for the printing of a new patent is not paid in due time, the
patent should be REVOKED.
65.4. If the patent is amended under Subsection 65.2 hereof, the Bureau
shall, at the same time as it publishes the mention of the cancellation
decision, publish the abstract, representative claims and drawings indicating
clearly what the amendments consist of. (n)
Section 66. Effect of Cancellation of Patent or Claim. - The rights conferred by
the patent or any specified claim or claims cancelled shall TERMINATE.
Notice of the cancellation shall be published in the IPO Gazette.
UNLESS RESTRAINED BY THE DIRECTOR GENERAL, the decision or
order to cancel by Director of Legal Affairs shall be immediately
executory even pending appeal. (Sec. 32, R.A. No. 165a)
What can the inventor or patent applicant do? He can appeal to the Director
General.
The decision or order to cancel by the Director of Legal Affairs is
immediately executory. Thus while appealing before the DG, the
publication of the cancellation will still take place.
CHAPTER VII

REMEDIES OF A PERSON WITH A RIGHT TO A PATENT
Let’s say a patent has been issued to Mr. X. It turns out that he had no rights to
the patent — maybe because he is not an assignee of the real inventor. Section 67
provides the remedy for this situation.
Section 67. Patent Application by Persons Not Having the Right to a Patent. . -
67.1. If a person referred to in Section 29 (first to file) 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; (Bureau of Patent)
(b) File a new patent application in respect of the same invention;
(Bureau of Patent)
(c) Request that the application be refused; or BLA)
(d) Seek cancellation of the patent, if one has already been issued.
(BLA)
67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis to a
new application filed under Subsection 67. 1(b). (n)
Who is entitled to a remedy under Sec. 67?
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A person referred to in Sec. 29 (first to file) other than the applicant, who is
declared by final court order as having the right to the patent.
Ex. Mr. X files a patent application for his invention on June 10, 2010. Mr.
Y files on Sept 10, 2010. Mr. Y claims that he has a foreign application.
Mr. Y submitted a foreign application na feeling ni Mr. X, peke. Pero hindi
niya alam for sure na fake. So, IPO found that Mr. Y has a earlier priority
date since he filed the foreign application on May 10, 2010. Mr. Y was
granted a patent. Later, Mr. X finds out that Mr. Y had a fake foreign
application. Mr. X claims that he has a right to the patent even if Mr. Y
invented the same product, he has the right to the patent because he was
the first to file for the application of a patent.
Mr. X must go to the SPECIAL COMMERCIAL COURT and prove that
the papers of Mr. Y are fake. The court must render a decision or give an
order that it is Mr. X who has a right to a patent because he was the first
to file.
What happens when Mr. X has the final order from the court?
Under Section 67, once Mr. X has the final order from the court, Section 67 says
that Mr. X can:
a) if the patent application is still pending, prosecute the application as
his own application in place of the applicant — Mr. X can take the place
of Mr. Y.; or
b) if Mr. X wants, he can file a new patent application before the Bureau
of Patents, in respect of the same invention and show his court order
stating that he is the one who has a right to the patent; or
c) Mr. X can go to the BLA and request that the application be refused.
Meaning, in his opposition case, he should present proof that he has
the right to the patent; or
d) if a patent has already been granted, Mr. X can go to the BLA and seek
that the patent be cancelled.
When can he avail of all these alternative remedies under Section 67? WITHIN 3
MONTHS AFTER THE DECISION OF THE SCC HAS BECOME FINAL. He needs that
decision of the court to be able to be entitled to the remedies under Section 67.
Section 67 is related to Section 29. It has something to do with the first-to-file
rule.
Section 68 is another remedy which can only be invoked by the inventor himself:
Section 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)
- Can go to the Special Commercial Court
- Court must declare him to be the true and actual inventor by final court
order
- Court shall:
(1) order for his substitution as patentee OR cancel the patent; and
(2) award actual and other damages.
In Section 68, there is no need to go to the BP or the BLA. The court do everything
for the true and actual inventor. Usually the cancellation cases are filed before the
BLA, but here, the court can cancel the patent for the true and actual inventor. The
court can award actual and other damages.
Section 69. Publication of the Court Order. - 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 and executory, and shall be recorded in the
register of the Office. (n)
- Under 67 and 68 the court shall furnish the IPO a copy of the order or the
decision within the 3 months from the date such order became final and
excutory
WHEN CAN YOU FILE ACTIONS UNDER 67 AND 68?
Section 70. Time to File Action in Court. - 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)
- There is a prescriptive period for filing which is within 1 year from the date
of the publication.
CHAPTER VIII

RIGHTS OF PATENTEES AND INFRINGEMENT OF
PATENTS
IF YOU ARE AWARDED A PATENT, WHAT ARE YOUR RIGHTS?
Section 71. Rights Conferred by Patent. - 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.
(Sec. 37, R.A. No. 165a)
Remember that the patentee, the creator or the inventor is the owner of his
creation. By applying for a patent, he gets the rights under Section 71.
PATENTEE HAS THE FOLLOWING EXCLUSIVE RIGHTS:
1) 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;
with regard to DRUGS AND MEDICINES,
the limitation on patent rights shall apply — after a drug or
medicine has been introduced in the RP or anywhere else in
the world (RA 9502)
2) 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.
If you are a patent owner, you also have the right to assign or transfer by
succession the patent, and you can conclude licensing contracts for the same.
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If you want to mass produce your product, and you don’t have the facilities,
you can give another entity a license to manufacture.
However, despite Section 71 which gives the patent owner those rights, Section
72, talks about the limitations of the right of the patent owner.
LIMITATIONS OF A PATENT OWNER
Section 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:
Provided, That, with regard to drugs and medicines, the limitation on
patent rights shall apply after a drug or medicine has been
introduced in the Philippines or anywhere else in the world by the
patent owner, or by any party authorized to use the invention:
Provided, further, That the right to import the drugs and medicines
contemplated in this section shall be available to any government
agency or any private third party;
“Importing” — It is the patentee who has the exclusive right to import the
patented product. However, this amendment, with regard to drugs and medicines
the limited patent right shall apply after a drug has already been introduced in the
Philippines or anywhere else in the world by the patent owner or by any party
authorized to use the invention.
When it comes to drugs and medicines, anybody can buy and use the
drugs as long as it is in the market. As well as any Government and
private third party shall have the right to import the drugs and medicines
after it has been introduced in the Philippines or anywhere else in the
world by the patent owner or by any authorized person to use the
invention.
Roma Drug vs. RTC Guagua — Smithkline the patent owner of Augmentin, Orbenin,
Amoxil, and Ampiclox, caused the seizure of drugs in Roma Drugs Store which
were manufactured by Smithkline and were imported directly from abroad and not
purchased through the local Smithkline distributor.
Issue: Is selling of drugs directly imported abroad and not bought from the local
distributor legal?
Ruling: YES! RA 9502 amended Section 72, of the IPC. Now, third persons have
the right to import drugs or medicines whose patent were registered in the
Philippines by the owner of the product.
Sec. 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 is performed after that product has been so put on the
said market: Provided, That, with regard to drugs and medicines, the
limitation on patent rights shall apply after a drug or medicine has been
introduced in the Philippines or anywhere else in the world by the patent
owner, or by any party authorized to use the invention: Provided further,
That the right to import the drugs and medicines contemplated in this
section shall be available to any government agency or PRIVATE THIRD
PARTY
Smithkline, as you know, is a multinational company. They have alot of drugs that
are branded: Augmentin, Amplicox, Orbenin. Smithkline has a local distributor called
Smithkline Philippines. All those drugs should be purchased from the exclusive
distributor. Drugstores like Roma Drug were able to import the drugs without going
through the exclusive local distributor.
Section 3 of a law provides that an unregistered imported drug is considered
counterfeit. Is the selling or importing of the said drugs is illegal? Is that
infringement of a patent? Is that a violation of a patent rights of SmithKline? NO.
Because of RA 9502 that specifcally provides now that the right to import drugs and
medicines shall be available to any government agency or any private party like the
drugstore owners.
What other limitations are there?
Section 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:
xxx
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;
- If you are just making experiments using a patent process, that is not a
violation of a right of a patentee.
Section 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:
xxx
72.3. Where the act consists of making or using EXCLUSIVELY FOR
EXPERIMENTAL USE of the invention for SCIENTIFIC PURPOSES or
EDUCATIONAL PURPOSES and such other activities directly related to such
scientific or educational experimental use;
72.4. In the case of drugs and medicines, where the act includes testing,
using, making or selling the invention including any data related thereto,
SOLELY FOR PURPOSES reasonably related to the DEVELOPMENT AND
SUBMISSION OF INFORMATION AND ISSUANCE OF APPROVALS BY
GOVERNMENT REGULATORY AGENCIES REQUIRED UNDER ANY LAW OF THE
PHILIPPINES OR OF ANOTHER COUNTRY that regulates the manufacture,
construction, use or sale of any product:
Provided, That, in order to protect the data submitted by the original
patent holder from unfair commercial use provided in Article 39.3 of
the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS Agreement), the Intellectual Property Office, in
consultation with the appropriate government agencies, shall issue
the appropriate rules and regulations necessary therein not later
than one hundred twenty (120) days after the enactment of this law;
72.5. 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, shall apply after a drug or medicine has been introduced in the
Philippines or anywhere else in the world by the patent owner, or by any
party authorized to use the invention:
Provided, further, That the right to import the drugs and medicines
contemplated in this section shall be available to any government
agency or any private third party;
72.6. 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.
Let’s go to Section 73.
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PRIOR USER — this is related to somebody who invented the same product
X has a patent. Here is Y from a little barrio, who invented a gadget which is
similar to a patented product. Can X stop Y from improving on his product or
selling it to his neighbors? NO. Section 73 provides:
Section 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)
Mr. X ’s patent is effective in the entire Philippines. He did not know that Mr. Y had
the same invention. Ginagamit sa kanilang mga tanim. Mr. Y as a prior user has a
right to continue such use of his own invention pursuant to Section 73.
THE GOVERNMENT
Section 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 anti-
competitive; or
(c) In the case of drugs and medicines, there is a national emergency
or other circumstance of extreme urgency requiring the use of the
invention; or
(d) In the case of drugs and medicines, there is a public non-
commercial use of the patent by the patentee, without satisfactory
reason; or
(e) In the case of drugs and medicines, the demand for the patented
article in the Philippines is not being met to an adequate extent
and on reasonable terms, as determined by the Secretary of the
Department of Health.
74.2. Unless otherwise provided herein, the use by the Government, or third
person authorized by the Government shall be subject, where applicable, to
the following provisions:
(a) In situations of national emergency or other circumstances of
extreme urgency as provided under Section 74.1(c), the right
holder shall be notified as soon as reasonably practicable;
(b) In the case of public non- commercial use of the patent by the
patentee, without satisfactory reason, as provided under Section
74.1(d), the right holder shall be informed promptly: Provided, that,
the Government or third person authorized by the Government,
without making a patent search, knows or has demonstrable
ground to know that a valid patent or will be used by or for the
Government;
(c) If the demand for the patented article in the Philippines is not
being met to an adequate extent and on reasonable terms as
provied under Section 74.1 (e), the right holder shall be informed
promptly;
(d) The scope and duration of such use shall be limtied to the purpose
for which it was authorized
(e) Such use shall be non-exclusive;
(f) The right holder shall be paid adequate remuneration in the
circumstances of each case, taking into account the economic
value of the authorization; and
(g) The existence of a national emergency or other circumstances of
extreme urgency, referred to under Section 74.1(c), shall be
subject to the determination of the President of the Philippines for
the purpose of determining the need for such use of other
exploitation, which shall be immediately executory.
74.3 All cases arising from the implementation of this provision shall be
cognizable by the courts with appropriate jurisdiction provided by law.
No courts, except the Supreme Court of the Philippines, shall issue any
temporary restraining order or preliminary injunction or such other
provisional remedies that will prevent its immediate execution.
74.4 The Intellectual Property Office (IPO), in consultation with the
appropriate government agencies, shall issue the appropriate implementing
rules and regulations for the use or exploitation of patented inventions as
contemplated in this section within one hundred twenty days after the
effectivity of this law.
*researched:
What do you mean by where the manner of exploitation of a patentee
holder or licensee is anti-competitive? Manner whereby such exploitation
prevents, restricts, or lessens competition. As to the kinds of anti-
competitive agreements, there are 2 kinds:
(1) Horizontal agreements — those entered into by and between 2
or more competitors. (i.e. when 2 competing manufacturers
collude and agree to sell the same product at the same price)
(2) Vertical agreements — those entered into by 2 or more entites at
different levels of distribution or production chains such as
those entered into by suppliers, manufacturers, distributors, and
retailers. (i.e. distribution, agency, and frnachising agreements)
Section 75. Extent of Protection and Interpretation of Claims. - 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. (n)
Bar Exam 1991: Ferdie is a patent owner of a certain invention he claims to have
been infringed by Yohan. What are the remedies available to Ferdie against
Yohan? To file an action for infringement.
INFRINGEMENT
WHAT IS INFRINGEMENT? Section 76 provides
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:
Provided, That, this shall not apply to instances covered by Sections
72.1 and 72.4 (Limitations of Patent Rights); Section 74 (Use of
Invention by Government); Section 93.6 (Compulsory Licensing); and
Section 93-A (Procedures on Issuance of a Special Compulsory
License under the TRIPS Agreement) of this Code.
Who can file an action for infringement? The registered holder of a patent.
If you are an inventor and you have an invention, and somebody copies it,
can you file an action for infringement? NO. Not an action for infringement.
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You have to be a registered patentee who has a granted application of
patent.
When a person infringes on another’s patent, normally he manufactures a similar
gadget or product that will compete with the patented product. Ang patented
product, mahal ‘yan. Syempre kasi the applicant had to go through an eye of a
needle to get his patent. The infringer will copy that and sell a cheaper kind. Does
the product need to be exactly the same as the patented product to be
considered as infringement? NO.
What is the test for infringement of patents? In order to constitute infringement,
there must only be substantial identity. It is not necessary that the patent product
and the infringed product to be exactly the same.
HOW DO YOU DETERMINE SUBSTANTIAL IDENTITY BETWEEN 2 DEVICES?
We have the: DOCTRINE OF EQUIVALENTS which states that there is a substantial
identity between 2 devices when they perform:
(1) substantially the same function (or mode or principle)
(2) in substantially the same way,
(3) to obtain the same result
even if they look different in form, shape or dimension.
Where to file an infringement case: Before the Special Commercial Court (RTC)
Who can file: Registered patentee
Prescriptive period: 4 YEARS from the commission of the act of infringement
What reliefs can be asked by the plaintiff?
(1) Order from the court to cease from manufacturing, selling the patented
product and
(2) Damages, Attorney’s Fees, Other expenses of litigation to be paid by
the infringer.
Is this incapable of pecuniary estimation? Yes, if the patentee is
only asking for the court to order the infringer to stop. No, if the
patentee also asked for damages the amount of docket fees,
depends upon the amount of damages asked for in the prayer.
For the payment of the docket fees, you have to include all kinds
of damages.
(3) For the court to issue a writ injunction — which is a provisional remedy
Section 76 has been asked in the bar so many times: What can a court grant a
patentee in an infringment case?
CRESOR PRECISION SYSTEMS, INC. VS. CA AND FLORO INTERNATIONAL
Facts: Floro International is a domestic corporation engaged in the manufacture,
production, distribution and sale of military armaments, munitions, airmunitions
and other similar materials. It was granted by the BPTTT a letters patent covering
an aerial fuze which was published in Sept-Oct 1990 issue of the BP Gazette.
President of Floro discovered that Cresor submitted samples of its patented aerial
fuze to the AFP for testing, that Cresor has been claiming the aerial fuze as its
own and planning to bid and manufacture the same commercially without license
or authority from Floro.
Cresor filed a complaint for injunction and damages from the alleged
infringement before the RTC. It alleged that:
(1) it is the first, true and actual inventor of an aerial fuze
(2) developed it in Dec 1981
Floro contended that (1) Cresor has no cause of action to file a complaint of
infringement because it has no patent for the aerial fuze which it claims to have
invented; (2) the proper remedy of Cresor is to file a petition for cancellation of
patent before the BP; (3) that Floro as the patent holder cannot be stripped of its
property right over the patented aerial fuze.
RTC issued a writ of preliminary injunction against Floro.
CA set aside the preliminary injunction and dismissed the petition of Cresor.
Cresor maintains that it can file, under Section 42 of the Patent Law (R.A. 165), an
action for infringement not as a patentee but as an entity in possession of a right,
title or interest in and to the patented invention. While the absence of a patent
may prevent one from lawfully suing another for infringement of said patent, such
absence does not bar the first true and actual inventor of the patented invention
from suing another who was granted a patent in a suit for declaratory or
injunctive relief recognized under American patent laws. This remedy, petitioner
points out, may be likened to a civil action for infringement under Section 42 of
the Philippine Patent Law.
Issue: Does Cresor have a right to be protected under the Patent Law?
Ruling: NO.
Sec. 42 of RA 165 provides:
Section 42. Civil action for infringement. 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 the
proper Court of First Instance (now Regional Trial court), to recover from
the infringer damages sustained by reason of the infringement and to
secure an injunction for the protection of his right. x x x
ONLY THE PATENTEE OR HIS SUCCESSORS-IN-INTEREST MAY FILE AN ACTION
FOR INFRINGEMENT. The phrase anyone possessing any right, title or interest in
and to the patented invention upon which petitioner maintains its present suit,
refers only to the patentees successors-in-interest, assignees or grantees since
actions for infringement of patent may be brought in the name of the person or
persons interested, whether as patentee, assignees or grantees, of the exclusive
right. Moreover, there can be no infringement of a patent until a patent has been
issued, since whatever right one has to the invention covered by the patent arises
alone from the grant of patent. In short, a person or entity who has not been
granted letters patent over an invention and has not acquired any right or title
thereto either as assignee or as licensee, has no cause of action for infringement
because the right to maintain an infringement suit depends on the existence of
the patent.
CRESOR DOES NOT HAVE THE RIGHT TO BE PROTECTED
1) it does not have a patent
2) no legal basis or cause of action to institute the petition for injunction and
damages
3) Under American jurisprudence, and inventor has no common-law right to a
monopoly of his invention. He has the right to make, use and vend his own
invention, but if he voluntarily discloses it, such as by offering it for sale, the
world is free to copy and use it with impunity. A patent, however, gives the
inventor the right to exclude all others. As a patentee, he has the exclusive
right of making, using or selling the invention
4) The remedy for declaratory judgement or injunctive suit on patent invalidity
relied upon by Cresor cannot be likened to the civil action for infringement
under Section 42. The civil action for infringement is available only to the
patent holder or his successor-in-interest. Thus, anyone who has no patent
over an invention but claims to have a right or interest thereto can not file an
action for declaratory judgment or injunctive suit which is not recognized in
this jurisdiction.
5) Since Floro is the patentee of the disputed invention embraced in the Letters
Patent issued to it, it has in its favor not only the presumption of validity of its
patent, but that of a legal and factual first and true inventor of the invention
WHAT IS THE PROPER REMEDY OF CRESOR: It may under Sec. 28 of the Patent
Law, file a petition for cancellation of the patent within three (3) years from the
publication of said patent with the Director of Patents and raise as ground
therefor that the person to whom the patent was issued is not the true and actual
inventor. Hence, petitioners remedy is not to file an action for injunction or
infringement but to file a petition for cancellation of private respondent patent.
Petitioner however failed to do so. As such, it can not now assail or impugn the
validity of the private respondents letters patent by claiming that it is the true and
actual inventor of the aerial fuze.
You cannot file an action for infringment of patent unless you are a patentee or his
successors in interest, assignees, etc. You must ave a patent first. WIthout a patent,
there is no infringement, no protection.
SMITHKLINE BECKMAN CORP. VS. CA AND TRYCO PHARMA CORP. — Smithkline
is patentee holder over an invention called Methods and Compositions for
Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-
Benzimidazole Carbarmate. The patented invention consisted of a new compound
named methyl 5 propylthio-2-benzimidazole carbamate and the methods or
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compositions utilizing the compound as an active ingredient in fighting infections
caused by gastrointestinal parasites and lungworms in animals such as swine,
sheep, cattle, goats, horses, and even pet animals.
Smithkline filed a complaint for infringement and unfair competition against
Tryco Pharma, a local corporation which sold Impregon, a drug that has
Albendazole for its active ingredient and is claimed to be effective against
gastrointestinal roundworms, lungworms, tapeworms and fluke infestation in
carabaos, cattle and goats. This was filed before the RTC.
- issued a TRO
- Answer of Tryco: The patent of Smithkline does not cover the substance
Albendazole because it does not even mention it. The products are not the
same.
Smithkline argues that under the doctrine of equivalents for determining patent
infringement, Albendazole, the active ingredient it alleges was appropriated by
Tryco for its drug Impregon, is substantially the same as methyl 5 propylthio-2-
benzimidazole carbamate covered by its patent since both of them are meant to
combat worm or parasite infestation in animals. It cites the unrebutted testimony
of its witness Dr. Godofredo C. Orinion (Dr. Orinion) that the chemical formula in
Letters Patent No. 14561 refers to the compound Albendazole.the two substances
substantially do the same function in substantially the same way to achieve the
same results, thereby making them truly identical. The appellate court should
have gone beyond the literal wordings used in Letters Patent No. 14561, beyond
merely applying the literal infringement test, for in spite of the fact that the word
Albendazole does not appear in petitioners letters patent, it has ably shown by
evidence its sameness with methyl 5 propylthio-2-benzimidazole carbamate.
Is Tryco liable for infringing Smithkline’s patent? NO.
1. Burden of proof to substantiate a charge for patent infringement rests on the
plaintiff.
No mention of Albendazole exists in the Letters of Patent. All that the
claims disclose are: the covered invention, that is, the compound methyl
5 propylthio-2-benzimidazole carbamate; the compounds being
anthelmintic but nontoxic for animals or its ability to destroy parasites
without harming the host animals; and the patented methods,
compositions or preparations involving the compound to maximize its
efficacy against certain kinds of parasites infecting specified animals.
When the language of its claims is clear and distinct, the patentee is
bound thereby and may not claim anything beyond them. And so are the
courts bound which may not add to or detract from the claims matters
not expressed or necessarily implied, nor may they enlarge the patent
beyond the scope of that which the inventor claimed and the patent
office allowed, even if the patentee may have been entitled to something
more than the words it had chosen would include.
2. Doctrine of equivalents does not apply.
Smithkline fails to explaint how Albendazole is in every essential detail
identical to methyl 5 propylthio-2-benzimidazole carbamate. Apart from
the fact that Albendazole is an anthelmintic agent like methyl 5
propylthio-2-benzimidazole carbamate, nothing more is asserted and
accordingly substantiated regarding the method or means by which
Albendazole weeds out parasites in animals, thus giving no information
on whether that method is substantially the same as the manner by
which petitioners compound works. The testimony of Dr. Orinion lends no
support to petitioners cause, he not having been presented or qualified as
an expert witness who has the knowledge or expertise on the matter of
chemical compounds.
DOCTRINE OF EQUIVALENTS — provides that an INFRINGEMENT takes place
when a device appropriates a prior invention by incorporating its innovative
concept and, although with some modification and change, performs
substantially the same function in substantially the same way to achieve
substantially the same result.
Yet again, a scrutiny of petitioners evidence fails to convince this Court
of the substantial sameness of petitioners patented compound and
Albendazole. While both compounds have the effect of neutralizing
parasites in animals, identity of result does not amount to infringement
of patent unless Albendazole operates in substantially the same way or
by substantially the same means as the patented compound, even though
it performs the same function and achieves the same result. In other
words, the principle or mode of operation must be the same or
substantially the same
DOCTRINE OF EQUIVALENTS REQUIRES SATISFACTION OF THE FUNCTION-
MEANS-AND-RESULT TEST. The patentee having the burden to show that all three
components of such equivalency test are met.
Smithkline failed to explain how Albendazole is in every essential detail
identical to methyl 5 propylthio-2-benzimidazole carbamate. Apart from the
fact that Albendazole is an anthelmintic agent like methyl 5 propylthio-2-
benzimidazole carbamate, nothing more is asserted and accordingly
substantiated regarding the method or means by which Albendazole weeds
out parasites in animals, thus giving no information on whether that method
is substantially the same as the manner by which petitioners compound
works.
If you do not indicate the same means methods and results is used. If either of those
are different, then there is no substantial identity. Don’t forget the function means
result test.
DEL ROSARIO VS. CA AND JANITO CORPORATION
Facts: Del Rosario filed a complaint for patent infringement against Janito Corp.
del Rosario is a patentee of an audio equipment and improved audio equipment
commonly known as a sing-along system or karaoke under Letters of Patent
UM-5269 dated 2 June 1983 as well as Letters Patent No. UM-6237 dated 14
November 1986 issued by the Director of Patents.
Effectivity : 5 years and was extended for another 5 years starting June 2,
1988 and Nov 14, 1991.
Del Rosario discovered that Janito Corp was manufacturing a sing-along system
bearing the trademark miyata karaoke substantially similar to the sing-along
system covered by the patents.
RTC issued a writ of preliminary injunction upon a bond on the basis of its finding
that petitioner was a holder of a utility model patent for a sing-along system and
that without his approval and consent private respondent was admittedly
manufacturing and selling its own sing-along system under the brand name
miyata which was substantially similar to the patented utility model of petitioner.
CA: set aside the order of the RTC. There was no infirngement of the patents of
Del ROsario by the fact along that Janito had manufactured the miyata karaoke or
audio system. The karaoke system was a univeral product manufactured,
advertised and marketed in most countries of the world long before the patents
were issued to Del Rosario.
Issue: Is there basis to grant a writ of preliminary injunction in favor of Del
Rosario? Is the karaoke machine novel?
Ruling: YES.
WHAT IS A PRELIMINARY INJUNCTION? A prelimlinary injunction is a
preservative remedy for the protection of substantive rights or interests. It is not a
cause of action in itself but merely a provisional remedy, an adjunct to a main
suit. The court has the authority to issue such a writ to prevent threatened or
continuous irremediable injury to some parties before their claims can be
thoroughly investigated and adjudicated. The application of the writ rests upon an
alleged existence of an emergency or of a special reason for such an order before
the case can be regularly heard, and the essential conditions for granting such
temporary injunctive relief are that the complaint alleges facts which appear to be
sufficient to constitute a cause of action for injunction and that on the entire
showing from both sides, it appears, in view of all the circumstances, that the
injunction is reasonably necessary to protect the legal rights of plaintiff pending
the litigation.
When can it be granted? At any time after the commencement of the
action and before judgement when it is established that the defendant is
doing, threatens, or is about to do, or is procuring or suffering to be done,
some act in violation of the plaintiff’s rights.
Requisites for the issuance of writ of preliminary injunction:
(1) The existence of the right to be protected; and
(2) the facts against which the injunction is to be directed are
violative of said right.
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DEL ROSARIO HAS A LEGAL RIGHT TO BE PROTECTED. THE RIGHT WAS
SUFFICIENTLY ESTABLISHED.
1) Del Rosario is a holder of a patent dated June 2, 1985 issued for a term
of 5 years from the grant of a utility model
2) Terms of the 2 letters patents were extended for another 5 years each.
First beginning June 2, 1988 and the 2nd, Nov 14, 1991.
3) The letters patent issued to Del Rosario are for utility models of audio
equipment. The Patent Law expressly acknowledges that any new
model of implements or tools of any industrial product even if not
possessed of the quality of invention but which is of practical utility is
entitled to a patent for utility model
4) Janito Corp failed to present before the Trial Court competent evidence
that utility models covered by the letters patent issued to Del Rosario
were not new. Janito Cua, the Pres of Janito Corp, testified to the effect
that their allegations in their Urgent Motion, enumerating the prior
models of Sanyo and Panasonic, etc. of their own models of karaoke
machines were had the wrong dates/were inaccurate.
HOW DOES THE DIRECTOR OF PATENTS DETERMINE WHETHER THE
PATENT IS NEW AND WHETHER THE MACHINE OR DEVICE IS THE
PROPER SUBJECT OF PATENT?
‣ In passing on an application, Director decides not only
questions of law but also questions of fact (i.e. whether
there has been a prior public use of the article sought to be
patented)
‣ Where petitioner introduces the patent in evidence, if it is in
due form, it affords a prima facie presumption of its
correctness and validity. The decision of the Director of
Patents in granting the patent is always presumed to be
correct, and the burden then shifts to respondent to
overcome this presumption by competent evidence.
WHEN IS A UTILITY MODEL NOT CONSIDERED NEW? Under Sec. 55 of the
Patent Law, a utility model shall not be considered new if before the
application for a patent it has been publicly known or publicly used in this
country or has been described in a printed publication or publications
circulated within the country, or if it is substantially similar to any other
utility model so known, used or described within the country.
RIGHTS OF DEL ROSARIO AS PATENTEE:
(1) Under Sec. 37 of the Patent Law, he shall have the exclusive right to
make, use and sell the patented machine, article or product for the
purpose of industry or commerce, throughout the territory of the
Philippines for the term of the patent, and such making, using or
selling by any person without authorization of the patentee
constitutes infringement of his patent.
JANITO CORP VIOLATED THE RIGHTS OF DEL ROSARIO AS PATENTEE.
(1) Janito Corp was manufacturing a similar sing-along system bearing
the trademark miyata which infringed his patented models.
(2) both his own patented audio equipment and respondents sing-along
system were constructed in a casing with a control panel, the casing
having a vertical partition wall defining the rear compartment from the
front compartment, with the front compartment consisting of a loud
speaker baffle, both containing a transistorized amplifier circuit
capable of being operated from outside through various controls
mounted on the control panel, and that both had loud speakers fitted
inside the front compartment of the casing and connected to the
output of the main audio amplifier section both having a tape recorder
and a tape player mounted on the control panel with the tape recorder
and tape player being both connected to the transistorized amplifier
circuit.
(3) Janito Corp while denied the violation of Del Rosario’s patent rights,
only confined its comparison to the first model.
(4) It is elementary that a patent may be infringed where the essential or
substantial features of the patented invention are taken or
appropriated, or the device, machine or other subject matter alleged to
infringe is substantially identical with the patented invention. In order
to infringe a patent, a machine or device must perform the same
function, or accomplish the same result by identical or substantially
identical means and the principle or mode of operation must be
substantially the same.
(5) Jacinto failed to present before the RTC a clear, competent, and
reliable comparison between its own model and that of Del Rosario,
and disregarded completely the 2nd model which improved the 1st
model. Notwithstanding the differences cited, it did not refute and
disprove the allegations of Del Rosario that the models made by Janito
are substantially the same models. Namely that (a) both are used by a
singer to sing and amplify his voice; (b) both are used to sing with a
minus-one or multiplex tapes, or that both are used to play minus-one
or standard cassette tapes for singing or for listening to; (c) both are
used to sing with a minus-one tape and multiplex tape and to record
the singing and the accompaniment; (d) both are used to sing with live
accompaniment and to record the same; (e) both are used to enhance
the voice of the singer using echo effect, treble, bass and other
controls; (g) both are equipped with cassette tape decks which are
installed with one being used for playback and the other, for recording
the singer and the accompaniment, and both may also be used to
record a speakers voice or instrumental playing, like the guitar and
other instruments; (h) both are encased in a box-like cabinets; and, (i)
both can be used with one or more microphones.
Writ of Injunction is reinstated.
What can be recovered from the defendant?
1) Damages sustained — if the patentee lost money because he is selling his
invention at a certain price. Here comes an infringer sold it for P500 lang.
The infringer lost money and can ask for damages for lost of income. He
can also ask for attorney’s fees because he was compelled to resort to
court action. Other expenses can also be charged.
2) Issue a writ of injunction to stop or prevent an act by infringer from
continuing his acts of infringement. (76.2)
3) award by way of damages a sum equivalent to reasonable royalty — these
are what we call temperate damages
‣ if the damages (a) are inadequate or (b) cannot be readily ascertained
with reasonable certainty (Sec. 76.3)
4) 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.
5) 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. (76.5)
Section 76. Civil Action for Infringement. -
xxx
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
(1)such damages sustained thereby, plus attorney's fees and other
expenses of litigation, and
(2)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.
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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 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)
Bar question: Ferdie is a patent owner of a certain invention. He discovered that
his invention is being infringed by Yohan.
a) What are the remedies available for Ferdie? Section 76.
b) If you are the lawyer of Yohan in the infringement suit, what are the defenses
that your client can assert? Look at Section 81. Grounds for Cancellation are
also defenses that are available to the infringer: Patent is invalid! (1) Patent is
not new or patentable; (2) Patent did not disclose the manner … (3) Patent is
contrary to public order or morality.
This kind of question is always asked.
CAN A FOREIGN NATIONAL BRING AN ACTION FOR INFRINGEMENT OF A
PATENT?
I would want you to look at the Paris Convention, Art. 2
Art. 2.
National Treatment for Nationals of Countries of the Union.
(1) Nationals of any country of the Union SHALL, as regards the protection of
industrial property, ENJOY in all the other countries of the Union THE
ADVANTAGES THAT THEIR RESPECTIVE LAWS NOW GRANT, OR MAY
HEREAFTER GRANT, TO NATIONALS; all without prejudice to the rights
specially provided for by this Convention. Consequently, they shall have
the same protection as the latter, and the same legal remedy against any
infringement of their rights, provided that the conditions and formalities
imposed upon nationals are complied with.
(2) However, no requirement as to domicile or establishment in the country
where protection is claimed may be imposed upon nationals of countries
of the Union for the enjoyment of any industrial property rights.
(3) The provisions of the laws of each of the countries of the Union relating to
judicial and administrative procedure and to jurisdiction, and to the
designation of an address for service or the appointment of an agent,
which may be required by the laws on industrial property are expressly
reserved.
We, as Filipinos can invoke the Intellectual Property Code, file infringement cases
if we are registered patentees. A registered patentee who is a foreign national can
also file an action for infringement. This is without prejudice to the rights provided
for by the Convention.
Whatever conditions that are imposed upon us, Filipinos, by the IPC, the statute
would be imposed upon the foreigner.
2nd paragraph: that particular foreigner does not have to be domiciled here in the
Philippines in order to file an infringement case. He does not have to be
established here. He just have to be registered.
So, YES. Foreigners can file an action for infringement for patents here in the
Philippines as well as other Intellectual Property cases.
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)
Section 77, affirms Art. 2 of the Paris Convention. A foreigner can file an
infringement action provided:
1) He meets the requirements of Sec 3.
2) What do you mean by: He is not engaged in business in the RP
‣ This is related to Corp Law. A foreign corporation doing business
here but is not registered, cannot sue. But if a foreign corporation
who is not doing business nor is it registered here, can sue. This
is what this means. Such foreign national can bring an action for
infringement if he is not doing business here in the Philippines.
‣ What if he is doing business in the Philippines? Does that mean
that he cannot file an action for infringemnet? He can but he must
be registered. If he is not registered in the proper government
agency, like SEC, DTI, then he cannot sue.
‣ A foreign national doing business here can also file an action for
infringement provided that he is registered
3) He has been granted or assigned a patent under RA 8293
‣ Infringement cases can only be filed by an entity or person who
has a registered patent here in the Philippines. You cannot bring
your patent from abroad and bring here and say you are
reigstered. You can file something else but not infringement. You
can file a cancellation case but not infringement case which is
reserved to the registered patentees here in the Philippines.
whether or not it is licensed to do business in the RP (Sec. 77)
- related to the 2nd requisite
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)
WHAT IS THE PRESCRIPTIVE PERIOD FOR FILING AN INFRINGEMENT CASE? Sec.
79.
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)
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 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)
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WHAT ARE THE DEFENSES IN AN 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)
Other Defenses: He ’s not an infringer — somebody else
COURT FINDS THE PATENT INVALID IN AN ACTION FOR INFRINGEMENT
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)
What if in an action for infringement, the court shall find the patent or any claim
to be invalid? Here under Section 82, we have a situation where the patent holder,
files an infringement case against the alleged infringer with the Special
Commercial Court. SCC ruled that the patent is invalid for whatever reason.
The Court shall cancel the patent; and DLA upon receipt of the final
judgement cancellation by the court, shall:
- record that fact in the register of the Office and
- Publish a notice to that effect in the Gazette
We know the doctrine of primary jurisdiction — one must go to the administrative
body. But if an infringement case is filed and the court holds that a patent is
invalid, it has the power to cancel the patent and the Director of Legal Affairs,
from the receipt of final judgement by the court, shall record of the fact in the
register of the Office and shall publish a notice to that effect in the IPO.
MAGUAN VS. CA & LUCHAN — Maguan is doing business under the firm name of
“Swan Manufacturing.” Luchan on the other hand, “Susana Luchan Powder Puff
Manufacturing.”
Maguan is a patent holder of power puff: 3 kinds. It informed Luchan that the
powder puffs the latter is manufacturing and selling to various enterprises is
substantially identical to that of Maguan. Such production and sale constitute
infringement of said patents and thus should stop.
Luchan said that his products are substantially diff. and assailed the validity of
the patents stated by Maguan. It filed petitions for cancellation of the patents
before the Philippine Patent Office.
Maguan filed a Complaint for Damages with injunction and preliminary injunction
for infringing the letters of patent.
Luchan’s Answer: Prior to the filing of the applications for the patents involved,
powder puffs of the kind were already existing and publicly being sold in the
market, here and abroad.
RTC issued a writ of preliminary injunction. This was assailed by Luchan on the
ground that there is a pending cancellation proceeding before the Philippine
Patent Office.
Luchan files this petition for certiorari averring that the patent of Maguan is
invalid.
Issue: Does the court have jurisdiction to determine the invalidity of the patents
at issue in an action for infringement when there is a petition for its cancellation
pending in the patent office?
Ruling: YES.
WHEN A PATENT IS SOUGHT TO BE ENFORCED, THE QUESTIONS OF INVENTION,
NOVELTY OR PRIOR USE, AND EACH OF THEM, ARE OPEN TO JUDICIAL
EXAMINATION. A patentee shall have the exclusive right to make, use and sell the
patented article or product. The making, using, or selling by any person without
the authorization of the patentee constitutes infringement of the patent (Sec. 37,
R.A. 165).
Any patentee whose rights have been infringed upon may bring an action
before the proper CFI now (RTC) and to secure an injunction for the protection of
his rights (Sec. 42, R.A. 165). Defenses in an action for infringement are provided
for in Section 45 of the same law which in fact were availed of by private
respondent in this case. Then, as correctly stated by respondent Court of Appeals,
this conclusion is reinforced by Sec. 46 of the same law which provides that if the
Court shall find the patent or any claim thereof invalid, the Director shall on
certification of the final judgment ... issue an order cancelling the patent or the
claims found invalid and shall publish a notice thereof in the Official Gazette."
Upon such certification, it is ministerial on the part of the patent office to execute
the judgment.
Did Luchan overcome the presumption that the validity of the patents of
Maguan?
GR: Burden of proof to substantiate a charge of infringement is with the plaintiff.
E: Where the plaintiff introduces the patent in due form in evidence, there is a
prima facie presumption of its correctness and validity. The burden of proof then
shifts to the defendant to overcome by competent evidence this legal
presumption.
YES. There is a prima facie showing of a fair question of invalidity of Maguan’s
patents on the ground of lack of novelty. An invention must possess the essential
elements of novelty, originality and precedence and for the patentee to be
entitled to protection, the invention must be new to the world. A single instance
of public use of the invention by a patentee for more than 2 years (now for more
than one year only under Sec. 9 of the Patent Law) before the date of his
application for his patent, will be fatal to, the validity of the patent when issued.
SEC. 9. Invention not considered new or patentable. — An invention shall
not be considered new or capable of being patented if it was known or
used by others in the Philippines before the invention thereof by the
inventor named in an application for patent for the invention; or if it was
patented or described in any printed publication in the Philippines or any
foreign country more than one year before the application for a patent
therefor; or if it had been in public use or on sale in the Philippines for
more than one year before the application for a patent therefor; or if it is
the subject matter of a validity issued patent in the Philippines granted
on an application filed before the filing of the application for patent
therefor.
THE ISSUANCE OF PRELIMINARY INJUNCTION AGAINST LUCHAN WAS NOT
PROPER. Requisites for the issuance of the writ: (1) existence of the right to be
protected, (2) violation of such right. Trial court which granted the PI, failed to
determine first the validity of the patents.
Note: By express provision of Art. 82, the RTC or now the SPECIAL COMMRERCIAL
COURT has now the power to cancel a patent. What is the effect to the
cancellation case which is pending before the PPO(now BLA) if the court cancels
a patent? It becomes moot and academic because the DLA is required now on
record that fact in the register and publish a notice that the patent has been
cancelled. The decision of the court in an infringement case cancelling a patent
supercedes any cancellation case before the Bureau of Legal Affairs.
Regarding the power puff of Maguan, did the Court cancel the patent of Maguan?
If you were the RTC, would you cancel the patent of Maguan? Since it is not novel/
new it should not be patentable. I would cancel the patent. Even during the time
Cleopatra the powder puff has been used. One shape or another it is not new.
If you noticed, it was never called an invention. It was a utility model. Later we will
go to utility models.
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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)
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 (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)
REPEATED INFRINGER = CRIMINAL CASE = REPEATED INFRINGEMENT
Normally, the first infringment case for infrngement of patent is a civil case.
However, if the infringer repeats the act of infringement, after the finality of the
judgement of the court agianst him, the patentee can now file criminal case. What
is the crime? Repeated infringement.
What is a prescriptive period for filing a criminal case? It is 3 YEARS from the
date of the commission of the crime. 3 years from the date of the committed
repeated infringement.
GODINES VS. CA — Villaruz possesses a letters patent. It covers a utility model
for a hand tractor or power tiller. It has components and works in a specific
manner. This patent was acquired by SV-Agro from Villaruz by Deed of
Assingment.
SV-Agro suffered a decline of more than 50% in the Molave, Zamboanga del Sur
branch because of the power tillers similar to SV-Agro were sold by Godines.
SV-Agro filed a Complaint for Infringement of Patent and Unfair Competition
before the RTC.
Godines maintains that he was not engaged in the manufacture and sale of the
power tillers as he made them only upon special orders of his customers who
gave their own specifications. Thus, he could not be liable for infringement of
patent and unfair competition; and that those made by him were different from
those being manufactured and sold by private respondent.
Issue: Did Godines’ product infringe upon the patent of SV-Agro?
Ruling: YES.
TESTS TO DETERMINE INFRINGEMENT:
(1) literal infringement — resort is made to the words of the claim. If
accused mattter clearly falls within the claim, infringement is made out
and that is the end of it
- issue: whether the particular item falls within the literal meaning
of the patent claims
- to find out — court must juxtapose the claims of the patent and
the accused product within the overall context of the claims and
specifications to determine whether there is exact identity of all
material elements
(2) the doctrine of equivalents
TRIAL COURT FOUND:
(1) Godines admitted to the court that the turtle power tilller were manufactured
and sold by him
(2) viewed from any perspective or angle, the power tiller of Godines is identical
and similar to that of the turtle power tiller of SV Agro in form, configuration,
design and appearance
(3) Parts and components are the same:
(1) both have the circularly-shaped vacuumatic housing float
(2) paddy in front
(3) protectie water covering
(4) transmission box housing the transmission gears
(5) a handle which is V-shaped and inclined upwardly, attached to the side
of the vacuumatic housing float and supported by the upstanding GI
pipes
(6) engine base at the top midportion of the vacuumatic housing float to
which the engine drive may be attached
(4) Operation-wise both are also the same:
(5) Godines also called his power tiller as a floating power tiller
THERE IS INFRINGEMENT. The patent issued by the Patent Office referred to a
"farm implement but more particularly to a turtle hand tractor having a
vacuumatic housing float on which the engine drive is held in place, the operating
handle, the harrow housing with its operating handle and the paddy wheel
protective covering." It appears from the foregoing observation of the trial court
that these claims of the patent and the features of the patented utility model were
copied by petitioner. We are compelled to arrive at no other conclusion but that
there was infringement.
As to the defense of Godines that the product is different from the patented one,
there is the DOCTRINE OF EQUIVALENTS which recognizes that minor
modifications in a patented invention are sufficient to put the item beyond the
scope of literal infringement.
➡ "(a)n 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.”
rationale: 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 to a hollow and
useless thing. Such imitation would leave room for — indeed encourage — the
unscrupulous copyist to make 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 the law.
APPLYING THE DOCTRINE OF EQUIVALENTS:
1) careful examination between the 2 power tillers will show that they will
operate on the same fundamental principles
2) According to jurisprudence, in infringement of patent, similarities or
differences are to be determined, not by the names of things, but in the light
of what elements do, and substantial, rather than technical, identity in the
test. It is necessary and sufficient to constitute equivalency that the same
function can be performed in substantially the same way or manner, or by the
same or substantially the same, principle or mode of operation; but where
these tests are satisfied, mere differences of form or name are immaterial.
3) To establish an infringement, it is not essential to show that the defendant
adopted the device or process in every particular; Proof of an adoption of the
substance of the thing will be sufficient. The law will protect a patentee
against imitation of his patent by other forms and proportions. 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.
GODINES IS LIABLE FOR INFRINGEMENT IN ACCORDANCE WITH SEC. 37 OF RA
165.
Sec. 37. Right of Patentees. — A patentee shall have the exclusive right to
make, use and sell the patented machine, article or product, and to use
the patented process for the purpose of industry or commerce,
throughout the territory of the Philippines for the terms of the patent; and
such making, using, or selling by any person without the authorization of
the Patentee constitutes infringement of the patent.
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Take note that the subject of this case, the power tiller is not called an invention but
a utility model. But We apply the same test for infringement: the doctrine of
equivalents or the the liberal infringment test.

Here it passed the test of doctrine of equivalents. Therefore there was infringement.

SONIC STEEL VS. CHUA — Sonic Steel is a corporation doing business as a

manufacturing and distributor of zinc and aluminum coated metal sheets. Chua is
the Corporate Legal Counsel of Steel Corp.

Steel Corp filed a beofre the DOJ a complaint for the for violation of Section 168,
in relatin to Section 170 of RA 8293 against Sonic Steel. Steel Corp contends that
the search warrant was obtained through deceit on the part of Sonic Streel. Sonic
Steel refused to submit a copy of the patent because if the court sees the same, it
would know that it had already expired.

Is the search warrant proper based on the expired patent? NO.

The expiration of the patent effectively negated and rendered irrelevant
respondent’s defense of subsistence of the contract between STEELCORP and
BIEC International, Inc. during the filing of the application for search warrant and
filing of respondent’s affidavit before the Department of justice. There is basis,
therefore, to the claim that respondent has not been “candid enough” in his
actuations.

Note: That is a defense in an infringement case — that the patent has already
expired. The Atty. Chua did not reveal to the court that the patent of Steel Corp
had already expired. One week after the seizure, Steel Corp filed before the DOJ a
complaint of violation of Section 168 which is unfair competition. Why did Steel
Corp not file an action for infringment? Because the patent is already expired.
you cannot file an infringement if your patent is expired. After your patent has
expired, it may no longer be renewed.

Not once did Atty. Chua show the patent before the Court. Besides, the action filed
was for unfair competition. Here, there was no proper infringement.

The following topics are still related to patents and still part of the first exam.

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CHAPTER IX
 Section 87. Prohibited Clauses. - Except in cases under Section 91, the
VOLUNTARY LICENSING
Section 85. Voluntary License Contract. - To encourage the transfer and
dissemination of technology, prevent or control practices and conditions that
may in particular cases constitute an abuse of intellectual property rights
having an adverse effect on competition and trade, all technology transfer
arrangements shall comply with the provisions of this Chapter. (n)
Going back to Section 4.2 on TTA,
What is a TTA?
It is a contract or agreement involving
(1) the transfer of systematic knowledge for the manufacture of a product,
If Mr. X is a patentee as the inventor for a particular product but has
no capacity to mass produce, he can enter into a Technology
Transfer Arrangement.
(2) the application of a process, or rendering of a service including
management contracts; and
(3) the transfer, assignment or licensing of all forms of intellectual property
rights (i.e. mass producing a song), including licensing of computer
software except computer software developed for mass market.
It is not only the systematic knowledge that is given but another
entity is given the license under the patent.
This is what you call voluntary licensing where the patentee voluntarily, on his
own accord, authorizes another by means of a license to exploit the patent.
What is the purpose of voluntary licensing?(Sec. 85)
1. to enourage the transfer an dissemination of technology
2. prevent or control practices and conditions that may in particular constitute
an abuse of intellectual property rights having an adverse effect on
competition and trade
All TTAs shall comply with the provisions of voluntary licensing.
This TTA is a contract between the patentee and the licensee or the assignee,
there are times where conflict will arise between the parties.
If there is a dispute (i.e. on royalties) what office has jurisdiciton over disputes of
TTAs? DDITTB
Section 86. Jurisdiction to Settle Disputes on Royalties. - The DIRECTOR OF
THE DOCUMENTATION, INFORMATION AND TECHNOLOGY TRANSFER
BUREAU shall exercise quasi-judicial jurisdiction in
the settlement of disputes between parties to a technology transfer
arrangement arising from:
- technology transfer payments,
- including the fixing of appropriate amount or rate of royalty. (n)
- this is a new provision not found in RA 165
I did not put Sec 87 and 88 in the slides because they are very long. Sec 87
enumerates the prohibted clauses.
What are deemed to be prohibited in the TTA?
Section 87. Prohibited Clauses. - Except in cases under Section 91, the
following provisions shall be deemed prima facie to have an adverse effect on
competition and trade:
87.1. Those which IMPOSE UPON THE LICENSEE the obligation
1. to acquire from a specific source: capital goods, intermediate
products, raw materials, and other technologies, or
2. of permanently employing personnel indicated by the licensor;
- the patentor cannot impose upon the licensee saying “dito ka umutang.”
following provisions shall be deemed prima facie to have an adverse effect on
competition and trade:
xxx
87.2. Those pursuant to which the LICENSOR RESERVES THE RIGHT TO FIX
THE SALE OR RESALE PRICES OF THE PRODUCTS manufactured on the basis
of the license;
- the licensor cannot reserve the right to fix the sale or resale prices
Section 87. Prohibited Clauses. - Except in cases under Section 91, the
following provisions shall be deemed prima facie to have an adverse effect on
competition and trade:
xxx
87.3. Those that CONTAIN RESTRICTIONS REGARDING THE VOLUME AND
STRUCTURE of production;
- “100 pieces lang yung i-manufacture mo ha “ bawal yun
Section 87. Prohibited Clauses. - Except in cases under Section 91, the
following provisions shall be deemed prima facie to have an adverse effect on
competition and trade:
xxx
87.4. Those that PROHIBIT THE USE OF COMPETITIVE TECHNOLOGIES in a
non-exclusive technology transfer agreement;
87.5. Those that ESTABLISH A FULL OR PARTIAL PURCHASE OPTION in favor
of the licensor;
- this is favorable to the licensor
Section 87. Prohibited Clauses. - Except in cases under Section 91, the
following provisions shall be deemed prima facie to have an adverse effect on
competition and trade:
xxx
87.6. Those that OBLIGATE THE LICENSEE TO TRANSFER FOR FREE TO THE
LICENSOR THE INVENTIONS OR IMPROVEMENTS that may be obtained
through the use of the licensed technology;
- manufacture ka ng 100 ha para ibigay ko sa friends ko — pwede yan
Section 87. Prohibited Clauses. - Except in cases under Section 91, the
following provisions shall be deemed prima facie to have an adverse effect on
competition and trade:
xxx
87.7. Those that REQUIRE PAYMENT OF ROYALTIES TO THE OWNERS OF
PATENTS FOR PATENTS WHICH ARE NOT USED;
87.8. Those that PROHIBIT THE LICENSEE TO EXPORT THE LICENSED
PRODUCT unless justified for the protection of the legitimate interest of the
licensor such as exports to countries where exclusive licenses to
manufacture and/or distribute the licensed product(s) have already been
granted;
- if you notice most the prohibited clauses are favorable to the licensee;
yung mga prohibitions are on the licensor
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Section 87. Prohibited Clauses. - Except in cases under Section 91, the
following provisions shall be deemed prima facie to have an adverse effect on
competition and trade:
xxx
87.9. Those which RESTRICT THE USE OF THE TECHNOLOGY SUPPLIED
AFTER THE EXPIRATION OF THE TECHNOLOGY TRANSFER ARRANGEMENT,
except in cases of early termination of the technology transfer arrangement
due to reason(s) attributable to the licensee;
87.10. Those which REQUIRE PAYMENTS FOR PATENTS AND OTHER
INDUSTRIAL PROPERTY RIGHTS AFTER THEIR EXPIRATION, TERMINATION
ARRANGEMENT;
87.11. Those which REQUIRE THAT THE TECHNOLOGY RECIPIENT SHALL
NOT CONTEST THE VALIDITY OF ANY OF THE PATENTS of the technology
supplier;
87.12. Those which RESTRICT THE RESEARCH AND DEVELOPMENT
ACTIVITIES OF THE LICENSEE designed to absorb and adapt the transferred
technology to local conditions or to initiate research and development
programs in connection with new products, processes or equipment;
87.13. Those which PREVENT THE LICENSEE FROM ADAPTING THE
IMPORTED TECHNOLOGY TO LOCAL CONDITIONS, OR INTRODUCING
INNOVATION TO IT, as long as it does not impair the quality standards
prescribed by the licensor;
87.14. Those which EXEMPT THE LICENSOR FOR LIABILITY FOR NON-
FULFILMENT OF HIS RESPONSIBILITIES under the technology transfer
arrangement and/or liability arising from third party suits brought about by
the use of the licensed product or the licensed technology; and
87.15. Other clauses with equivalent effects. (Sec. 33-C (2), R.A 165a)
- this enumeration is not exclusive because it says other clauses with
equivalent effects
Section 88 gives us the mandatory provisions or those which must be included in
a voluntary license contract.
Section 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;
- this is related to venue under Sec. 4, Rule 4 of the Rules of Court
Section 88. Mandatory Provisions. - The following provisions shall be included
in voluntary license contracts:
xxx
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;
- exemption from any of the above requirements may be allowed by the
Section 88. Mandatory Provisions. - The following provisions shall be included
in voluntary license contracts:
xxx
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
- this is only where the TTA provides for arbitration
- if there is none, they can go to the DDITTB
Section 88. Mandatory Provisions. - The following provisions shall be included
in voluntary license contracts:
xxx
88.4. The Philippine taxes on all payments relating to the technology transfer
arrangement shall be borne by the licensor. (n)
WHAT ARE THE RIGHTS OF THE LICENSOR/PATENTEE?
Section 89. Rights of Licensor. - In the absence of any provision to the
contrary in the technology transfer arrangement, the grant of a license shall
not prevent the licensor from granting further licenses to third person NOR
from exploiting the subject matter of the technology transfer arrangement
himself. (Sec. 33-B, R.A. 165a)
- in order words, unless the licensor enters into an exclusive TTA, he can still
enter into other TTAs
- he can never be prevented from exploiting the subject matter unless he
himself takes out such right in the TTA
- he can sell, distribute his patented product despite the existence of the
TTA
WHAT ARE THE RIGHTS OF THE LICENSEE?
Section 90. Rights of Licensee. - The LICENSEE shall be entitled to exploit the
subject matter of the technology transfer arrangement during the whole term
of the technology transfer arrangement. (Sec. 33-C (1), R.A. 165a)
- the TTA does not have to be co-terminous with the patent; it depends upon
the parties
- but definitely, it cannot go beyond the existence beyond the Patent; there
is no need for the TTA after the expiration of the patent (becomes public
domain)
Section 91. Exceptional Cases. - In exceptional or meritorious cases where
substantial benefits will accrue to the economy, such as
- high technology content,
- increase in foreign exchange earnings,
- employment generation,
- regional dispersal of industries and/or substitution with or use of
local raw materials, or
- in the case of Board of Investments, registered companies with
pioneer status,
Documentation, Information and Technology Transfer Bureau after
evaluation thereof on a case by case basis. (n)
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Section 92. Non-Registration with the Documentation, Information and
Technology Transfer Bureau. - Technology transfer arrangements that
conform with the provisions of Sections 86 and 87 need NOT BE
REGISTERED with the Documentation, Information and Technology Transfer
Bureau.
Non-conformance with any of the provisions of Sections 87 and 88, however,
shall AUTOMATICALLY RENDER THE TECHNOLOGY TRANSFER
ARRANGEMENT UNENFORCEABLE,
unless said technology transfer arrangement is approved and
registered with the Documentation, Information and Technology
Transfer Bureau under the provisions of Section 91 on exceptional
cases. (n)
- it is not always required that the TTA is registered with the DITTB
CHAPTER X

COMPULSORY LICENSING
What is compulsory licensing? SEC. 93 has been amended. Under RA 9502 ot the
cheaper medicines act which amended Sec. 93 provides:
The office or the entity who may grant a compulsory license is the
Director General of the IPO.
A compulsory license is the grant of a license to exploit a patented invention even
without the agreement of the patent owner.
To whom may a compulsory license be granted? To any person who has shown
his capabilty to exploit (to import, manufacture) the invention, under any of the
following circumstances:
(1) The licensee must show his capability to exploit — he must show his
capacity to manufacture the patented drug or to import, to distribute, etc.
the patented drug.
You do not have to procure a compulsory license to import drugs.
(SmithKline vs. RTC Guagua)
Capacity to exploit is not enough.
(2) One or more of the following must be present:
Section 93. Grounds for Compulsory Licensing. - The Director General of the
Intellectual Property Office 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; (i.e. birdflu or anything that is contagious)
93.2. Where the public interest so requires, 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; or
- appropriate government agencies:
‣ health : Department of Health
‣ national security: Department of National Defense
Section 93. Grounds for Compulsory Licensing. - The Director General of the
Intellectual Property Office 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:
xxx
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
- anti-competitive: reduces or discourages competition in the market
- whether it is anti-competitve— has to be determined by a judicial or
administrative body
Section 93. Grounds for Compulsory Licensing. - The Director General of the
Intellectual Property Office 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:
xxx
93.4. In case of public non-commercial use of the patent by the
patentee, without satisfactory reason;
- if you have an invention and you want to keep it as a secret, itago mo
na lang sa bodega mo
- but if you go out of your way for it to be patented, then that means
that your invention is new, inventive step and industrially applicable —
it is useful; you should share that with the public — manufacture,
distribute, enter in a TTA
- a new invention should be shared with everybody
- a compulsory license may be granted if there an invention is being
kept by the inventor to himself
Section 93. Grounds for Compulsory Licensing. - The Director General of the
Intellectual Property Office 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:
xxx
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,
34-B, R.A. No. 165a)
- nag-manufacture nga pero 10 pieces lang
- that is not enough; it has to be in a commercial scale and not tingi
tingi lang
Section 93. Grounds for Compulsory Licensing. - The Director General of the
Intellectual Property Office 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:
xxx
93.6. Where the demand for patented drugs and medicines is not
being met to an adequate extent and on reasonable terms, as
determined by the Secretary of the Department of Health."
- this has to be determined byt he Secretary of Department of Health
SMITHKLINE VS. CA — SC said Sec. 34 of the Patent Law (RA 165) authorises the
DBTT (now Director of the IPO) to grant a compulsory license to a local is not
contrary to the provisions of the Paris Convention which under Article 5, Section
2-A respects the right of each member countries to adopt legislative measures to
provide for the grant of compulsory licenses to prevent abuses which might result
from the exercise of the exclusive rights conferred by the patent. An example
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provided of possible abuses is "failure to work;" however, as such is merely
supplied by way of an example, it is plain that the treaty does not preclude the
inclusion of other forms or categories of abuses. The legislative intent in the grant
of a compulsory license was not only to afford others an opportunity to provide
the public with the quantity of the patented product, but also to prevent the
growth of monopolies.
The grant of compulsory license will not result in deprivation of property to the
registrant owner without just compensation.
Compulsory licensing is really alllowed and it is actually based on the Paris
Convention.
This case is under RA 165. The only case on compulsory licensing that I can find.
SMITH KLINE VS. CA AND DANLEX —
Facts: CA affirmed the decision of BPTTT which granted a compulsory license to
Danlex Research Lab for the use of the pharmeceutical product Cimetidine. The
medicine relates to derivatives of heterocyclicthio or lower alkoxy or amino lower
alkyl thiourea, ureas or guanadines. Danlex filed a petition for compulsory
license to manufacture and produce its own brand of medicines using Cimetidine.
It is useful as an antihistamine and in the treatment of ulcers. Danlex stated in its
petition that it is capable of using the patented product in the manufacture of a
useful product.
SmithKline argued that Danlex had no cause of action and it failed to allege how it
intended to work the patented product. Its manufacture, use and sales of
Cimetidine satisfied the needs of the Philippine market, hence, there was no need
to grant a compulsory license to private respondent to manufacture, use and sell
the same. Finally, petitioner also claimed that the grant of a compulsory license to
private respondent would not promote public safety and that the latter was only
motivated by pecuniary gain
Issue: Is Danlex entitled to a compulsory license to manufacture Cimetidine?
Ruling: YES.
1. Said grant is in accord with Sec. 34 of the Patent Law. The compulsory
license was applied for after the expiration of the 2 years grant of the patent
under the ff circumstances under Sec. 34 of the Patent Law: The patented
invention or article related to food or medicine or manufactured substances
which can be used as food or medicine, or is necessary for public health or
public safety
1. A compulsory license shall be granted to the petitioner provided that
he has proved his capability to work the patented product or to make
use of the patented product in the manufacture of a useful product, or
to employ the patented process.
➡ More than 10 yers have passed since the patent for Cimetidine was
issued to Smith Kline. The compulsory license applied for by Danlex
is for the use, manufacture and sale of a medicinal product. Both CA
and BPTTT found that Danlex had the capability to work Cimitidine
or to make use of it in the manufacture of a useful product.
2. Section 34 does not contravene the Paris Convention. Section A(2) of Article
5 [of the Paris Convention] unequivocally and explicitly respects the right of
member countries to adopt legislative measures to provide for the grant of
compulsory licenses to prevent abuses which might result from the exercise
of the exclusive rights conferred by the patent. An example provided of
possible abuses is failure to work; however, as such, is merely supplied by
way of an example, it is plain that the treaty does not preclude the inclusion
of other forms of categories of abuses. The legislative intent in the grant of a
compulsory license was not only to afford others an opportunity to provide
the public with the quantity of the patented product, but also to prevent the
growth of monopolies [Congressional Record, House of Representatives, 12
May 957, 998]. Certainly, the growth of monopolies was among the abuses
which Section A, Article 5 of the Convention foresaw, and which our Congress
likewise wished to prevent in enacting R.A. No. 165.
3. The grant of the compulsory license to Danlex will not confuse the public. By
the grant of the compulsory license, Danelx as licensee explicitly
acknowledges that Smith Kline is the source of the patented product
Cimetidine. Even assuming arguendo that such confusion may indeed occur,
the disadvantage is far outweighed by the benefits resulting from the grant
of the compulsory license, such as an increased supply of pharmaceutical
products containing Cimetidine, and the consequent reduction in the prices
thereo
4. The grant of compulsory license to Danlex will not result in the deprivation of
Smith Kline’s property. as owner of Letters Patent No. 12207, petitioner had
already enjoyed exclusive rights to manufacture, use and sell Cimetidine for at
least two years from its grant in November, 1978. Even if other entities like
private respondent are subsequently allowed to manufacture, use and sell the
patented invention by virtue of a compulsory license, petitioner as owner of
the patent would still receive remuneration for the use of such product in the
form of royalties. CA correctly held that the rate of 2.5% of net wholesale
price is in accord with the Patent Law (should not exceed 5%) Director of the
BPTTT may fix the rate of royalty in the absence of an agreement between the
parties.
Section 93 is the provision on Compulsory Licensing.
If RA 8293 was applied, would it have granted the compulsory license? NO. Smith
Kline was able to adequately supply the market of the said drug.
The provisions on compulsory licensing were amended because if you look at the
ruling of this case, what is the point of having a patent? That is the protection of the
20 years of filing. If the only requirement is that the petition be filed after 2 years
after the grant of the patent. What’s the point of having your product patented? It
was so easy to get compulsory licensing.
Look at Section 93. There is an enumeration. The requirements are more stringent --
and rightfully so.
Moreover, we have this Paris Convention in which the Philippines is a signatory. It
has to adhere to the Paris Convention. The Paris Convention protects the owners of
intellectual property rights. If it is that easy to get a compulsory license, why on
earth would you go through that whole process of applying for the patent? Now you
know that we have more stringent provisions on compulsory licensing unlike RA 165.
SMITH KLINE VS. CA, BPTTT AND DOCTORS PHARMACEUTICALS INC.
Facts: Smith Kline owns Philippine Letters Patent issued by BPTTT for the patent
of the drug Cimetidine.
Doctors Pharmaceuticals, a domestic corporation engaged in manufacturing and
distributing pharmaceutical products, filed a petition for compulsory licensing
with the BPTTT for authorization to manufacture its own brand of medicine from
the drug Cimetidine and to market it.
- this was filed pursuant to the provisions of Section 24 of RA 165 (An Act
Creating a Patent Office Prescribing its Powers and Duties)
- Said law provides for the compulsory licensing of a particular patent after
the expiration of two years from the grant of the latter if the patented
invention relates to, inter alia, medicine or that which is necessary for
public health or public safety.
- the grant issued to Smith Kline was issued on Nov 29, 1978 and that the
petition was filed beyond the 2 year productive period provided in Sec. 34
of RA 165 and that it had the capability to work the patented product or
make use of it in its manufacture of medicine
Smith Kline opposed the petition:
1) Doctors Pharma had no cause of action and lacked the capabilty to
work the patented product
2) Petition failed to specifically divulge how private respondent would use
or improve the patented product
3) Doctors Pharma was motivated by the pecuniary gain attendant to the
grant of a compulsory license
4) Smith Kline is capable of satisfying the demand of the local market in
the manufacture and marketing of the medicines covered by the
patented product.
5) Smith Kline challenged the constitutionality of Sections 34 and 35 of
RA 165 for violating the due process and equal protection clauses of
the Constitution.
BPTTT granted the petition of Doctors Pharma.
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Smith Kline avers that the decision violates Paris Convention for the protection of
industrial property.
CA affirmed the challenged decision.
Issue: Does the issuance of a compulsory license in favor of Doctors Pharma
violate the Paris Convention?
Ruling:
WHAT DOES A COMPULSORY LICENSE ENTAIL? The holder of a compulsory
licents has a right to use the patented chemical compound in the manufacture of
a special product, without any technical assistance from the patentee holder. The
patentee holder has rights to payment of royalties.
Smith Kline invokes Article 5 of the Paris Convention for the Protection of Industrial
Property:
Art. 5, Sec. A.
xxx
(2) Each country of the union shall have the right to take
legislative measures providing for the grant of compulsory
licenses to prevent the abuses which might result from the
exercise of the exclusive rights conferred by the patent, for
example, failure to work.
xxx
(4) A compulsory license may not be applied for on the ground of
failure to work or insufficient working before the expiration of a
period of four years from the date of filing of the patent
application or three years from the date of the grant of the
patent, whichever period expires last; it shall be refused if the
patentee justifies his inaction by legitimate reasons. Such a
compulsory license shall be non-exclusive and shall not be
transferable, even in the form of the grant of a sub-license,
except with that part of the enterprise or goodwill which exploits
such license.
ART. 5 OF THE PARIS CONVENTION ALLOWS AND RESPECTS THE RIGHT OF
MEMBER COUNTRIES TO ADOPT LEGISLATIVE MEASURES to provide for the
grant of compulsory licenses to prevent abuses which might result from the
exercise of the exclusive rights conferred by the patent. An example provided of
possible abuses is "failure to work;" however, as such is merely supplied by way
of an example, it is plain that the treaty does not preclude the inclusion of other
forms or categories of abuses.
SEC. 34, RA165, DOES NOT CONTRAVENE ART. 5 OF THE PARIS CONVENTION.
the growth of monopolies was among the abuses which Section A, Article 5 of the
Convention foresaw, and which our Congress likewise wished to prevent in
enacting R.A. No. 165.
This case falls under Section 34(1) (e)of RA165, the patented invention or
article relates to food or medicine or manufactured products or
substances which can be used as food or medicine, or is necessary for
public health or public safety. And it may not be doubted that the
aforequoted provisions of R.A. No. 165, as amended, are not in
derogation of, but are consistent with, the recognized right of treaty
signatories under Article 5, Section A(2) of the Paris Convention. It must
be noted that paragraph (4) of Section A, Article 5 of the Paris
Convention setting time limitations in the application for a compulsory
license refers only to an instance where the ground therefor is "failure to
work or insufficient working," and not to any ground or circumstance as
the treaty signatories may reasonably determine.
SMITHKLINE CANNOT INVOKE THE GATT TREATY, URUGUAY ROUND. This act is
better known as the Uruguay Final Act signed for the Philippines on 15 April 1994
by Trade and Industry Secretary Rizalino Navarro. Forming integral parts thereof
are the Agreement Establishing the World Trade Organization, the Ministerial
Declarations and Decisions, and the Understanding on Commitments in Financial
Services. The Agreement establishing the World Trade Organization includes
various agreements and associated legal instruments.
1) It was only on 14 December 1994 that the Philippine Senate, in the exercise of
its power under Section 21 of Article VII of the Constitution, adopted Senate
Resolution No. 97 concurring in the ratification by the President of the
Agreement.
2) The President signed the instrument of ratification on 16 December 1994. But
plainly, this treaty has no retroactive effect.
3) Accordingly, since the challenged BPTTT decision was rendered on 14
February 1994, petitioner cannot avail of the provisions of the GATT treaty.
SMITHKLINE WAS NOT UNDULY DEPRIVED OF ITS PROPERTY RIGHTS as RA 165
not only grants the patent holder a protective period of 2 years to enjoy his
exclusive rights thereto; but the law recognizes just compensation in the form of
royalties.
SMITHKLINE CANNOT ASSAIL THE JURISDICTION OF THE BPTTT. It raised the
jurisdiction issue for the first time on appeal. Thus making the party barred on the
ground of laches or estoppel under the circumstances therein stated. This rule
equally applies to quasi-judicial bodies.
Under RA 8293, the Art .5 is already part of the provision. It is a ground not only an
example. You can see, kawawa naman Smith Kline ang daming compulsory license.
You have to be respectful of the rights of an intellectual property owner. To his own
invention. It is not easy to develop a drug. You have to go through tests, made in
hectares of sanitized areas. There is a limit naman to a life of a patent. It is not like it
is forever. Unlike a trademark that may be owned forever because that is your logo.
You’ve seen 2 cases where the SC and the BPTTT were very very lax in granting
compulsory licenses.
RA 9502 inserted:
SPECIAL COMPULSORY LICENSE BASED ON THE TRIPS AGREEMENT
Section 93-A Procedures on Issuance of a Special Compulsory License under
the TRIPS Agreement
93-A.1. The DIRECTOR GENERAL of the Intellectual Property Office, upon the
written recommendation of the Secretary of the Department of Health, shall,
upon filing of a petition, grant a special compulsory license for the
IMPORTATION of patented drugs and medicines.
The SPECIAL COMPULSORY LICENSE for the importation contemplated
under this provision shall be an additional special alternative procedure to
ensure access to quality affordable medicines and shall be primarily for
domestic consumption:
Provided, That adequate remuneration shall be paid to the patent
owner either by the exporting or importing country. The compulsory
license shall also contain a provision directing the grantee the
license to exercise reasonable measures to prevent the re-
exportation of the products imported under this provision.
The grant of a special compulsory license under this provision shall be an
exception to Sections 100.4 and 100.6 of Republic Act No. 8293 and shall be
immediately executory.
No court, EXCEPT the Supreme Court of the Philippines, shall issue any
temporary restraining order or preliminary injunction or such other provisional
remedies that will prevent the grant of the special compulsory license.
WHAT IS A SPECIAL COMPULSORY LICENSE? It is a special license for the
importation of patented drugs and medicines.
Who grants the SCL? The DG upon recommendation of Sec of DOH shall grant the
petition.
Although importation is now allowed under RA 9502, they still have this
provision.
The special compulsory license for the importation contemplated under this
provision shall be:
- an addition special alternative procedure to ensure access to quality
affordable medicines, and
- primarily for domestic consumption
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This is meant for large-scale domestic consumption. Unlike what Roma
Drug and other small-scale businesses do.
What is the patent owner entitled to? Adequate remuneration to be paid by the
exporting or importing country, depends upon the agreement.
The special compulsory license shall also contain a provision directing the
grantee the license ot exercise reasonable measures to prevent the re-exportation
of the products imported under this provision
- the purpose must is really for the domestic market and should not be re-
exported
The grant of a special compulsory license under this provision shall be an
exception of Section 100.4 and 100.6 of RA 8293 and shall be immediately
executory.
- take note of that mamaya pa yung 100 eh
- once this is issued, the licensee can import the drugs
Remedy of SmithKline if DG issues a compulsory license: The only court that can
issue a TRO or Preliminary Injunction is the Supreme Court.
That is the fist kind of special compulsory license.
We have another one: this is now for the manufacture and export of patented
drugs. Under A-2.
Section 93-A Procedures on Issuance of a Special Compulsory License under
the TRIPS Agreement
Sec. 93-A.2 — other ground for issuance of
A COMPULSORY LICENSE shall also be available for the manufacture
and export of DRUGS and MEDICINES to any country having insufficient or no
manufacturing capacity in the pharmaceutical sector to address public
health problems:
Provided that:
- A compulsory license has been granted by such country, or (where
you want to export the drugs to)
- Such country has, by notification or otherwise, allowed importation
into its jurisdiction of the patented drugs and medicines from the RP
in compliance with the TRIPS agreement.
93-A-3.
The right to grant a special compulsory license under this section
shall not limit or prejudice the rights, obligations and flexibilities provided
under the TRIPS Agreement and under Philippine laws, particularly Sec. 72-1
and Section 74 of the IPC, as amended under this Act.
This is not something that is imported and exported. This is manufactured here.
The special compulsory license is where you manufacture a patented drug.
That entity must have a capacity to manufacture a patented drug and export it.
The cheap medicines act is not only concerned about Filipinos but also the needs
of other countries that are not capable of manufacturing drugs.
TRIPS Agreement is always mentioned. Read it, Ins.
Section 94. Period for Filing a Petition for a Compulsory License. - 94.1. A
compulsory license may not be applied for:
(1) on the ground stated in Subsection 93.5 (not being worked on a
commercial scale),
(2) before the expiration of a period of four (4) years from the date of
filing of the application or
(3) three (3) years from the date of the patent whichever period
expires last.
- of course you have to allow the patentee 4 years from the date of the
application for the patent
- remember the applicant does not have to wait for his patent to be granted,
he can proceed, manufacture and make money
Section 94. Period for Filing a Petition for a Compulsory License. - x x x
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)
ONE WHO WANTS TO GET COMPULSORY LICENSE NEEDS TO GET
AUTHORIZATION FROM THE PATENT OWNER
Section 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.
- do not go straight to the DG and apply for the license
- the applicant should first approach the patent owner
- applicant must offer money/royalty to the patent owner
- if there is a refusal by the patent holder, then you go to the DG but 95.2
says:
GR: Need to obtain authorization from the patent owner to be granted a
compulsory license
E: No need to first obtain authorization where:
1) Where the petition for compulsory license seeks to remedy a practice
determined after judicial or administrative process to be anti-
competitive;
2) In situations of national emergency or other circumstances of extreme
urgency;
3) In cases of public non-commercial use; and
4) In cases where the demand for the patented drugs and medicines in
the Philippines is not being met to an adequate extent and on
reasonable terms, as determined by the Secretary of the Department of
Health.
Section 95. Requirement to Obtain a License on Reasonable Commercial
Terms. - x x x
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; and
(d) In cases where the demand for the patented drugs and medicines
in the Philippines is not being met to an adequate extent and on
reasonable terms, as determined by the Secretary of the
Department of Health.
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.
95.5 Where the demand for the patented drugs and medicines in the
Philippines is not being met to an adequate extent and on reasonable terms,
as determined by the Secretary of the Department of Health, the right holder
shall be informed promptly." (n)
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Section 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)
INTERDEPEDENCE OF PATENTS
Section 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)
Section 98. Form and Contents of Petition. - The petition for compulsory
licensing must be in
(1) writing,
(2) verified by the petitioner and
(3) accompanied by payment of the required filing fee.
(4) It shall contain the name and address of the petitioner as well as
those of the respondents,
(5) the number and date of issue of the patent in connection with
which compulsory license is sought,
(6) the name of the patentee,
(7) the title of the invention,
(8) the statutory grounds upon which compulsory license is sought,
(9) the ultimate facts constituting the petitioner's cause of action, and
(10)the relief prayed for. (Sec. 34-D, R.A. No. 165)
Section 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 applicant's expense. (Sec. 34-E, R.A.
No. 165)
TERMS AND CONDITIONS OF COMPULSORY LICENSE
Section 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 DG 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;
- anyone who has the capacity can apply and be granted
Section 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 DG subject to the following conditions:
xxx
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 patentee's 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. (Sec. 35-B, R.A. No. 165a)
- 100.6 is the most important for the licensee
CAN THE COMPULSORY LICENSE GRANTED BY THE DG BE AMENDED? YES.
Section 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)
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Section 102. Licensee's 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)

Under the old law, there is an amount for royalties. But none in the new law. Why?
Because royalties are supposed to be agreed upon by the parties. It cannot be
dictated by a law. A law should not do that. There is no such thing as
unconscionable royalties.

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CHAPTER XI
 Section 106. Recording. - 106.1. The Office shall recordassignments, licenses
ASSIGNMENT AND TRANSMISSION OF RIGHTS
Section 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,
1) may be assigned or
2) transmitted by inheritance or bequest or
3) may be the subject of a license contract. (Sec. 50, R.A. No. 165a)
If you have a patent or an application, you have all the rights of an owner which
are:
(1) right to enjoy
(2) right ot dispose
(3) right to recover
Because the right to dispose is available, inventions and any right title or interest
in and to patents covered thereby:
- may be assigned
- may be transmitted by inheritance or bequest
- may be the subject of a license contract
Who can apply for a patent? Normally the inventor or the assignee of the inventor.
Once the patent is already granted, the inventor has the right to dispose it.
WHAT CAN THE PATENT HOLDER ASSIGN?
Section 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)
Ex for co-patentees:
A B C D and E are co-patentees of this single invention. Under Art. 493 of
the CC has the right to dispose of his undivided share. A can assign,
dispose of his right to 1/5 of the patent. The assignee or the licensee
becomes the joint co-owner with the other co-patentees.
Section 105. Form of Assignment. - The assignment must be
(1) in writing,
(2) acknowledged before a notary public or other officer
authorized to administer oath or perform notarial acts, and
(3) certified under the hand and official seal of the notary or such
other officer. (Sec. 52, R.A. No. 165)
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)
WHAT ARE THE RIGHTS OF JOINT OWNERS OF A PATENT?
Section 107. Rights of Joint Owners. - If two (2) or more persons JOINTLY
own a patent and the invention covered thereby, either:
a) by the issuance of the patent in their joint favor or
b) by reason of the assignment of an undivided share in the patent
and invention or
c) 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
1) without the consent of the other owner or owners, or
2) without proportionally dividing the proceeds with such
other owner or owners. (Sec. 54, R.A. No. 165)
You already know this under Art. 486 of the CC.
If there are 5 co-owners, a co-owners can only use or enjoy the 1/5 of the property
of the patent. Each of them has the right to make, use, sell or import the invention
for his own profit.
Neither of the joint owners are not entitled to grant licenses because it is
an act of alteration
1) without the consent of the other owners; or
2) without proportionally dividing the proceeds with the other
owners
Each of them has the right to enjoy. But the right to dispose has to be agreed
upon unanimously by all of them.
So, if he wants to grant a license pertaining to his share, then he has to
get the consent of his other co-owners or proportionally divide the
proceeds with such other owners.
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CHAPTER XII
 Section 109. Special Provisions Relating to Utility Models. -

REGISTRATION OF UTILITY MODELS 109.1. (a) An invention qualifies for registration as a utility model if it is new
and industrially applicable.
In the case of Maguan (powder puff) and Godines (tractor), did not involve
inventions, rather, utility models. (b) Section 21, "Patentable Inventions", shall apply EXCEPT the
reference to inventive step as a condition of protection.

Utility Model Invention 109.2. Sections 43 to 49 shall not apply in the case of applications for
registration of a utility model.
2 requisites: 3 requisites:
(1) New (1) New 109.3. A utility model registration shall expire, without any possibility of
(2) Industrially applicable (2) inventive step renewal, at the END OF THE SEVENTH YEAR after the date of the filing of the
(3) industrially applicable application.

lifetime of the registration of utility lifetime of the patent: 20 years from 109.4. In proceedings under Sections 61 to 64, the utility model registration
model: 7 years the date of application 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,
But application period may still be the same because such period is
23, 24 and 27;
determined whether it is novel. The search for prior art is a requisite
(b) That the description and the claims do not comply with the
prescribed requirements;
there is no possibility of renewal
(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. (Secs. 55, 56, and 57, R.A. No. 165a)
Grounds for cancellation
CAN YOU CONVERT PATENT APPLICATIONS TO APPLICATIONS FOR UTILITY
MODEL REGISTRATION AND VICE VERSA? YES!

Section 110. Conversion of Patent Applications or Applications for Utility Model

Registration. - 110.1. At any time before the grant or refusal of a patent,
If your invention does not have an inventive step, instead of applying for a patent,
go for the registration of utility models.
an APPLICANT for a patent MAY,
upon payment of the prescribed fee,
Under the old law, registration of utility models are still called patent, but here, it
is more precise, it is called registration of utility models.
CONVERT his application into an application for registration of a
utility model
which shall be accorded the filing date of the initial
Section 108. Applicability of Provisions Relating to Patents. - 108.1. Subject to application.
Section 109, the provisions governing patents shall apply, mutatis mutandis,
to the registration of utility models. An application may be converted only ONCE.

108.2. Where the right to a patent conflicts with the right to a utility model 110.2. At any time before the grant or refusal of a utility model registration,
registration in the case referred to in Section 29, the said provision shall an applicant for a utility model registration may, upon payment of the
apply as if the word "patent" were replaced by the words "patent or utility prescribed fee, convert his application into a patent application, which shall
model registration". (Sec. 55, R.A. No. 165a) be accorded the filing date of the initial application. (Sec. 58, R.A. No. 165a)

- cannot convert after the patent application or the application for

registration has been granted or refused
- What is your filing date? Applicant shall be accorded the filing date of the
initial application. The applicant does not lose his first filing date.

CAN YOU FILE 2 APPLICATIONS FOR PATENT AND FOR REGISTRATION OF

UTILITY MODEL JUST TO BE SURE? NO.

Section 111. Prohibition against Filing of Parallel Applications. - 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. (Sec. 59, R.A. No. 165a)

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CHAPTER XIII
 GR: Only layout designs of integrated circuits that are original shall be
INDUSTRIAL DESIGN
This particular chapter has been amended by RA 9150 (Sept 25, 2001)
Section 112. Definition of Terms.:
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.”
Industrial Design
The requirement for registration of industrial design is that it is a three-
dimensional form — it has length, width, depth (it should not be flat). It is not
merely a drawing. i.e. cakes, christmas hat design, fruit arrangements. Anything
that is new and not part of prior art. (i.e. Aperitif chocolate arrangement)
Integrated Circuit
Electronic Function. This is another protection. So if you have an invention which
you want to register but it does not have an inventive step, nor can it be registered
as a utility model but maybe you can register it as an integrated circuit, as long as
it has an electronic function.
Layout-Design
This is another word for “topography.” Layout and integrated circuit are somehow
interrelated. But for layout, it is 3-dimensional.
What are the conditions for protection?
Section 113. Substantive Conditions for Protection. - 113.1. Only INDUSTRIAL
DESIGNS that are new or ornamental shall benefit from protection under this
Act.
113.2. INDUSTRIAL DESIGNS shall NOT be protected if
1) dictated essentially by technical or functional considerations to
obtain a technical result or
2) those that are contrary to public order, health or morals
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.
When you talk about industrial design, it is something that you do not use, it is
something that you admire or maybe eat or make.
The term for layout-design is not novelty but original.
protected by the IPC. Those which are commonplace shall not be
protected.
E: 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.
If you want to apply for registration of industrial design or layout-design that is
under Section 114.1.
First, Go to the IPO or IPSO (satellite office) and get a registration request
Section 114. Contents of the Application. - 114.1. Every application for
registration of an industrial design shall contain:
(a) A request for registration of the industrial 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 other 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 design 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 layout-design and shall be subject to the
payment of the prescribed fee.(n)
Who can apply? Just like patents, the creator, if not, must indicate the origin of
the right.
Section 115. Several Industrial Designs in One Application. - 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. (n)
Must refer to the Nice Classification. If they belong to the same sub-class, then
they can be joined in one application.
Filing Date — under patents, the filing date is the submission of all the minimum
requirements.
Under Section 116, (the same; if can’t comply with 116, go back to 114;
but must comply with both 116 and 114)
Section 116. Examination. - 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 Section 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
Section 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 Section 112 (Definitions) and
Subsections 113 (Substantive Conditions for Protection: new, orignal,
ornamental, etc).
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Section 117. Registration. - 117.1. Where the Office finds that the conditions
referred to in Section 113 are fulfilled, it shall order that registration be
effected in the industrial design or layout-design register and cause the
issuance of an industrial design or layout-design certificate of registration,
otherwise, it shall refuse the application.
each. Total of 15 years of protection for industrial design. You just have to pay a
renewal fee.
For layout-design, the term for the registration is 10 years, with no renewal. This
is counted from the date of commencement of protection accorded to the layout-
design. So, from the publication.

117.2. The FORM AND CONTENTS of an industrial design or layout-design
certificate shall be established by the Regulations: 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 the files of cancellation proceedings. (n)
For registration of industrial design, there is only 1 publication which is for the
registration.
Just like patent, anyone may inspect the Register and the files of registered
industrial designs or layout-designs including the files of cancellation
proceedings.
How long does a certificate of registration last?
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
- can first exploit the layout design then to follow na lang yung
registration
- but the period from protection, will retroact on the date of the first
commercial exploitation even if it is still not registered
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.
- if you don’t commercially exploit the layout-design/ don’t make it
available to the public, but you applied for registration first, then
from the filing date
For industrial design you have to apply the provisions on patent,
Section 119. Application of Other Sections and Chapters. - 119.1. The following
provisions relating to patents shall apply mutatis mutandis to an INDUSTRIAL
DESIGN registration:
Section 21 Novelty:

Section 118. The Term of Industrial Design Registration. - 118.1 The

Prior art: Provided, That the disclosure is contained in printed
registration of an industrial design shall be for a period of FIVE (5) YEARS Section 24
documents or in any tangible form;
from the filing date of the application.
Section 25 Non-prejudicial Disclosure;
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 Section 28 Right to a Patent;
the renewal fee.

Section 29
118.3. The renewal fee shall be paid within twelve (12) months preceding the First to File Rule;

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 Section 30 Inventions Created Pursuant to a Commission;
payment of a surcharge.
Section 31 Right of Priority: Provided, That the APPLICATION FOR
INDUSTRIAL DESIGN shall be filed within six (6) months from the
118.4. The Regulations shall fix the amount of renewal fee, the surcharge and earliest filing date of the corresponding foreign application;
other requirements regarding the recording of renewals of registration.
Section 33 Appointment of Agent or Representative;
118.5. REGISTRATION OF A LAYOUT-DESIGN shall be valid for a period of ten
(10) years, without renewal, and such validity to be counted from the date of
Section 51 Refusal of the Application;
commencement of the protection accorded to the layout-design. The
protection of a layout-deisgn under this Act shall commence:
Sections 56 to 60
a) on the date of the first commercial exploitation, anywhere in the Surrender, Correction of and Changes in Patent;

world, of the layout-design by or with the consent of the right

holder: Provided, That an application for registration is filed with CHAPTER VII Remedies of a Person with a Right to Patent;
the Intellectual Property Office within two (2) years from such
date of first commercial exploitation; or CHAPTER VIII Rights of Patentees and Infringement of Patents; and
b) on the filing date accorded to the application for the registration of
the layout-design if the layout-design has not been previously CHAPTER XI Assignment and Transmission of Rights.
exploited commercially anywhere in the world.

Patent registration and utility model registration cannot be renewed. Industrial
design registration can be renewed. But, only twice of 5 years each. In some
countries, it is 20-30 years. The Philippines has a shorter period.
Again, effectivity is only after publication but the term will retroact to the filing
date. If it takes you 1 year to register, then 4 years na lang. But as already
mentioned, it can be renewed for not more 2 consecutive periods with 5 years
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. (n)
- make sure that you get the consent of the creator

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119.3 the following provisions relating to patents shall apply mutatis mutandis to Section 120. Cancellation of Design Registration. - 120.1. At any time during
a LAYOUT-DESIGN of integrated circuits registration: 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
Section 28 Right to a Patent; industrial design on any of the following grounds:
(a) If the subject matter of the industrial design is not registrable within
Section 29 First to File Rule;
the terms of Sections 112 and 113;
(b) If the subject matter is not new; or
Section 30
(c) If the subject matter of the industrial design extends beyond the
Inventions Created Pursuant to a Commission;
content of the application as originally filed.

Section 33 Appointment of Agent or Representative; 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
Sections 56 to 60 Surrender, Correction of and Changes in Patent; be effected in the form of an alteration of the effected features of the design.
(n)
CHAPTER VII Remedies of a Person with a Right to Patent;
120.3. Grounds for Cancellation of Layout-Design of Integrated Circuits. — Any
CHAPTER VIII interested person may petition that the registration of a layout-design be
Rights of Patentees and Infringement of Patents; and
cancelled on the ground that:
(i) the layout-design is not protectable under this Act;
CHAPTER X Compulsory Licensing;
(ii) the right holder is not entitled to protection under this Act; or
(iii) where the application for registration of the layout-design, was
CHAPTER XI Assignment and Transmission of Rights. not filed within two (2) years from its first commercial
exploitation anywhere in the world.

119.4. Rights Conferred to the Owner of a Layout-Design Registration. — 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 layout-design 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.
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 expugned from the
records of the Intellectual Property Office. Reference to all cancelled
layout-design registration shall be published in the IPO Gazette.

119.5. Limitations of Layout Rights. — 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; (RATE)
(2) Where the act is performed in respect of a layout-design 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 layout-design, or
in respect of an integrated circuit in which such 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
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 25% 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.

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PROCEDURE
1.  Application for Utility Model or Industrial Design Patent 
The application for registration of a Utility Model or Industrial Design (UM/ID) must be filed with the Bureau of Patents (BOP) of the Intellectual Property Office (IPO)
through the Receiving Section/Counter of the Administrative, Financial and Human Resource Development Services Bureau (AFHRDSB) located at the ground floor
of the IPO Building.

To obtain a filing date, the following has to be submitted:

(a) Properly filled-out Request form for a Registration of Utility Model or Industrial Design;
(b) Name, address and signature of applicant(s); for non-resident applicant, the name and address of his/her/their resident agent, and;
(c) Description of the UTILITY MODEL OR INDUSTRIAL DESIGN and one or more claims; for INDUSTRIAL DESIGN, drawing/s and a "design"  claim.

NOTE:  For Utility Model application, it is advised that any drawing/s necessary to understand the subject utility model should be submitted at the time of filing so that there
would not be a possible change in filing date due to late submission/filing of said drawing/s. (RULE 203 of the IRR)
 
    The other formal requirements, which are not needed to obtain a filing date, but maybe included at the time of filing are:
(a) A filing fee (for big or small entities) which maybe paid during application filing or within one month from the date of filing.  The application shall be deemed
automatically  cancelled/withdrawn in case of non-payment of such fees;
(b) Drawing(s) necessary to understand the invention, and;
(c) If the  priority of an earlier filed application is being claimed, the details of the claim, i.e. filing date, file number and country of origin.

2.  Formality Examination

The utility model or industrial design shall be examined as to the completeness of the requirements for the grant of a filing date.  Under the present “first to file”
system, the date of filing is  very important because it determines, in case of a dispute with another applicant for the same or similar utility model or industrial
design, who has the prior right and is therefore entitled to the registration of the utility model or industrial design.

3.  Formality Examination Report/Search Report

The application is classified and examined as to completeness of formal requirements, and a report thereon is sent to the applicant.

4.  Applicant’s Action on the Formality Examination Report

Within two (2) months from the mailing date of the formality examination report and the search report, the applicant may:
(1) convert the utility model application to an application for an invention patent; or
(2) withdraw the application; or
(3) amend the application; or
(4) request for a registrability report
The registrability report shall be given to the applicant within two (2) months from receipt of the request and payment of fee from the applicant.
The report shall contain citations of relevant prior art documents with appropriate indications as to their degree of relevance which will serve as an
aid to the applicant in the determination of the validity of the utility model or industrial design claim(s) in respect to newness.
     (5)  not act in any way
If the application meets all the formal requirements for registration and the Bureau does not receive any action from the applicant, the utility model or industrial design shall
be deemed registered provided all the required fees are paid.
   
5.  Publication Upon Registration of the Utility Model or Industrial Design 
Registration of the utility model or industrial design shall be published in the form of bibliographic data and representative drawing, if any, in the IPO Gazette within
six (6) months after registration

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Patents Utility Design Industrial Design Layout-Design

What is?

Who can file?

Subject matter

Who has jurisdiction?

Term

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Patents Utility Design Industrial Design Layout-Design

Renewability

Grounds for
cancellation

Rights

Limitation

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