Beruflich Dokumente
Kultur Dokumente
NEGRE
UNTALAN INFRINGEMENT OF
INTELLECTUAL PROPERTY RIGHTS
Intellectual Property Attorneys
Copyrights
“The State 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
period as may be provided by law.”
Intellectual Property and the Constitution
“The State 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
period as may be provided by law.”
Exclusive Rights
Trademarks Patents
Trademarks Patents
a product, or
process, or
1. Novelty
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 […] date that is earlier than the filing […] date of the application:…:
Provided further, That the applicant or the inventor identified in both applications are
not one and the same.
REQUIREMENTS FOR PATENTABILITY
2. Inventive Step
3. Industrial Applicability
1. Novelty
2. Inventive Step
3. Industrial Applicability
NON-PATENTABLE SUBJECT MATTER
Section 22
1. Discoveries
2. Scientific theories
3. Mathematical methods
Section 22 (continued)
7. Aesthetic creations
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.
FIRST-TO-FILE RULE
Section 29.
OR
Where 2 or more applications are filed for the same invention, to
the applicant who has the EARLIEST filing date, or the earliest
priority date.
RIGHTS AND LIMITATIONS
Territory:
Term:
Patent: 20 years
Scope:
Claims
CLAIMS INTERPRETATION
UM No. 2-1999-00164
Making
Using
Selling
Types:
Literalinfringement
Infringement by Equivalents
Patent Infringement
Types:
Literal infringement
•Literal infringement exists if an accused device falls directly within the
scope of properly interpreted claims.
Example:
Patent Claim Accused Product
1. Novelty
2. Inventive Step
3. Industrial Applicability
INDUSTRIAL DESIGN
INDUSTRIAL
PATENTS UTILITY MODELS
DESIGN
Novelty Novelty
REGISTRATION Inventive step
Novelty
REQUIREMENTS Industrial Industrial
Applicability Applicability
SUBSTANTIVE
EXAMINATION
Required Not Required Not Required
TERM OF
PROTECTION
20 7 5+5+5
Infringement of Utility Models
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:
xxx
CHAPTER VII - Remedies of a Person with a Right to Patent;
CHAPTER VIII - Rights of Patentees and Infringement of Patents;
xxx
TRADEMARK, TRADENAME
INFRINGEMENT &
UNFAIR COMPETITION
Trademarks
Visible Sign
Trademarks
Visible Sign
Distinctive
Distinctiveness of a mark
Ownership of a mark
How Marks are Acquired. - The rights in a mark shall be acquired
through registration made validly in accordance with the provisions of
this law. (Sec. 122)
159.1. Notwithstanding the provisions of Section 155 hereof, a registered
mark shall have no effect against any person who, in good faith, before the
filing date or the priority date, was using the mark for the purposes of his
business or enterprise.
Right to prevent others from use of an identical mark for the same,
similar or related goods or services.
Rights of a Trademark Owner
Will trademark registration abroad be valid and binding
here?
- No.
- Principle of Territoriality
Trademark Infringement
Unauthorized use of a registered trademark, or of a
colorable imitation of the same, for similar or related
goods in which such use is likely to cause confusion or
mistake, or to deceive.
Elements 5:
4. Likelihood of confusion
4. Is actual confusion necessary?
Trademark Infringement
Element 5:
4. Likelihood of confusion
Types of confusion:
• As to the goods themselves (“Confusion of goods”)
• As to the source or origin of such goods (“Confusion of business”)
Trademark Infringement
Element 5:
4. Likelihood of confusion
Types of confusion:
• As to the goods themselves (“Confusion of goods”)
Same or competing goods
• As to the source or origin of such goods (“Confusion of business”)
Trademark Infringement
Element 5:
4. Likelihood of confusion
Types of confusion:
• As to the goods themselves (“Confusion of goods”)
• As to the source or origin of such goods (“Confusion of business”)
Wherein the goods of the parties are different but the defendant’s
product can reasonably be assumed to originate from the plaintiff
thereby deceiving the public into believing that there is some
connection between the plaintiff and defendant, which in fact, does
not exist (Mighty Corporation vs. EJ Gallo, 434 SCRA 473, [2004]])
Trademark Infringement
Element 5:
Likelihood of confusion
Tests of confusion:
• Dominancy Test
• Holistic Test
Trademark Infringement
Element 5:
Likelihood of confusion
Tests of confusion:
• Dominancy Test
Prevalent features of a product
Trademark Infringement
Element 5:
Likelihood of confusion
Tests of confusion:
• Dominancy Test
Prevalent features of a product
Trademark Infringement
Element 5:
Likelihood of confusion
Tests of confusion:
• Dominancy Test
Prevalent features of a product
Registration a Yes No No
requirement?
Acts prohibited Use/reproduction/counte Use/reproduction/counte Passing off of one’s goods
rfeiting/copying of a rfeiting/copying of a
trademark or colorable tradename
imitation thereof
Musical compositions
Dramatic or dramatico-
musical compositions
Computer
programs
Letters
No formalities required
Automatic Protection: “From Moment of Creation”
a. Registration?
b. Deposit?
c. ©?
d. Fixed or Expressed?
178.3. In the case of work created by an author during and in the course of his
employment, the copyright shall belong to:
(a) The employee, if the creation of the object of copyright 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 work is the result of the performance of his regularly-
assigned duties,
unless there is an agreement, express or implied, to the contrary.
Ownership of Copyright
Commissioned Work
Performances not incorporated in recordings 50 years from end of the year in which performance took place
Sound recordings and performances incorporated therein 50 years from end of the year in which recoding took place
COPYRIGHT INFRINGEMENT.
Copyright and Public Domain
The Fair Use Exception – fair use for criticism, comment, news
reporting, teaching including limited number of copies for classroom
use, scholarship, research and similar purposes.
Copyright and Fair Use
Ownership of a copyright
• Proof of Ownership: Sec. 218 – Affidavit Evidence
Exercise of any of the exclusive economic rights in Section 177
ABS-CBN v. Gozon
G.R. No. 195956, March 11, 2015
J. Leonen
Issues
Rules on evidence
Actions concerning:
• Trademark license contracts (Section 150, IPC)
• Cancellation of collective marks (Section 167, IPC)
• Breach of contract (Section 194, IPC)
A.M. No. 10-3-10-SC
Objective: speedy; summary in nature
a) Motion to dismiss;
b) Motion for a bill of particulars;
c) Motion for reconsideration of a final order or judgment, except with
regard to an order of destruction issued under Rule 20 hereof;
d) Etc.
A.M. No. 10-3-10-SC
Rule 1, Section 4:
Copyright infringement
Inter-partes cases:
• Oppositions to TM applications;
• Petitions to cancel TM
registrations;
• Petitions to cancel patents, UM
registrations, ID registrations;
• Petitions for Compulsory
Licensing.
Jurisdiction in IP Cases
INTELLECTUAL PROPERTY OFFICE REGULAR COURTS
Administrative actions for IPVs where the total Civil actions for violations of IPRs
damages claimed are two hundred thousand irrespective of the total damages claimed.
pesos (P200,000.00) or more.
Held:
RTC.
Samson vs. Daway
RTC has jurisdiction over criminal and civil cases for violation
of intellectual property rights
1. R.A. No. 8293 and R.A. No. 166 are special laws conferring jurisdiction over
violations of intellectual property rights to the Regional Trial Court. They
should therefore prevail over R.A. No. 7691, which is a general law.
• Statutory Construction: In case of conflict between a general law and a
special law, the latter must prevail.
Recent Jurisprudence
Kolin v. Kolin (March 25, 2015)
Kolin v. Kolin (March 25, 2015)
TAIWAN KOLIN CORPORATION, LTD. KOLIN ELECTRONICS, INC.
On 19 July 2016, the Supreme Court voted 13-0 in denying the petition as
executive agreements do not require the consent of Congress
Moreover, the SC categorically stated that the accession was not in conflict
with the IP Code.
IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016
FERDINAND M. NEGRE