“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.” -Section 2(2) Declaration of State Policy, RA 8293

Our laws on Intellectual Property are vital in the development of the State. These laws cover
Industrial Designs, Copyright, Trademarks, Patents, etc. which provide a two-way protection, one on the
side of the market, the industries and businesses; and the other for the consumers. These ensure the
survival of our economy, the protection of our creative activities, attracting foreign investments and
provide benefits to our people.

Industrial design in the Philippines is still in its infancy. Unlike Patents, Copyright and
Trademarks, which are in continuous progress with respect to their means of protection, ways on how
to determine whether violations are committed against its covered products or inventions and sanctions
in cases thereof, Industrial Design is still in its early stage of development. Jurisprudence has not yet
settled a wide-range of discussion on its application, protection from unauthorized copying or tests to
determine existence of infringement.

Philippine Intellectual Property laws shall be our basis on this Answer, specifically Industrial
Design under Republic Act No. 8293, Republic Act No. 165 and laws on Patents which apply mutatis
mutandis on Industrial Design under Section 119 of RA 8293. We shall also look upon cases decided on
foreign jurisprudence regarding industrial design and design patents to give us an extensive
understanding on the subject matter.

>>>>> On ordinary observer test

Design Patent on industrial design was granted to secure against infringement. It uses the
Ordinary Observer test to determine whether there was infringement committed by the accused design.
Its purpose is to protect the purchasers, which are the objective standards of an ordinary observer. If
the latter is deceived into thinking the accused design is the patented design because the overall visual
effects of the designs are the same, then infringement exists.

In the case of Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 20 L. Ed. 731 (1871) “if, in
the eye of an ordinary observer, giving such attention as a purchaser usually gives, two
designs are the same, if the resemblance is such as to deceive such an observer,
inducing him to purchase one supposing it to be the other, the first one patented is
infringed by the other.”

>>>>>>>>> Product design taken as a whole

 In proving infringement in design patents, we should not single out parts of the product as
piecemeal comparisons. Look at the overall aesthetic design of the products to be compared and not
merely minor parts of the item. Piecemeal approach is not a valid indicator of differences and
similarities.

In the case of Litton Systems vs Whirlpool 728 F.2d 1423 (Fed. Cir. 1984) Feb. 14, 1984,
the Federal Circuit Court noted that: “we are not just separating out individual elements
used here to create a new, composite design. Whirlpool, for example, erroneously uses
a piecemeal approach, one in which it takes the individual elements, item by item, and
tries to show us that they each exist in the accused design. The elements we single out
are shown in all prior art patents.”

In the case of Smith v. Whitman Saddle Co., 148 U.S. 674 (1893), US Federal Supreme Court discussed
the materiality of the design to the integrated whole. If the design allegedly infringed is something that
distinguishes it from other design of the same line of product, rendering it patentable, there is
infringement. Otherwise, if it is not an original design of a product or it exists on other brands rendering
it a universal feature, there is no infringement.

“The Supreme Court found no infringement where the accused saddle design did not
contain the single feature that was material to distinguishing the patented design from
the prior art. After noting that the material difference between the patented saddle
design and the prior art was “the sharp drop of the pommel” of the patented saddle
design, it concluded “[i]f, therefore, this drop was material to the design, and rendered
it patentable as a complete and integrated whole, there was no infringement” as the
accused saddle did not have “the sharp drop.” (Smith v. Whitman Saddle Co., 148 U.S.
674 (1893)