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What is a trademark?

Intellectual Property Law


Midterms Reviewer Any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped
Atty. Espinas or marked container of goods.

Book Prescribed: Essentials of Intellectual Property Law Illustration:


(Ernesto C. Salao)  Pedro is a chemist by profession particularly a perfumer. A
perfumer makes perfume. Pedro discovered a certain perfume
What is Republic Act 8293? by combining the extracts from cellar woods and jasmine. The
- It is the codification of the country’s various intellectual cellar wood was the base tone and the jasmine was the top
property laws. It took effect on January 1, 1998. The basic law tone. With respect to perfume there are many ingredients for
in IPL is RA 8293 also known as the Intellectual Property Code perfume and the perfume consists of 3 levels/bases/tones.
of the Philippines. The first is high tone or the pass tone which is the smell when
Non- Retroactivity of IP Law: you first apply the perfume to your skin. The second one is
- In the case of Mighty Corporation vs. E an J Gallo Winery, GR the medium tone and the last one would be the base tone
No. 154342 (2004), the Court hold that the courts a quo erred (pinakahuling nawawalang amoy). He named this perfume,
in retroactively applying the IP Code in that case. Eternity. Can he register the fragrance of the perfume as
trademark? What is the basis in saying that the fragrance of
Intellectual Property Rights, Defined (Section 4, RA 8293) the perfume can be registered as a trademark?
- The term has a statutory definition as that consisting of: a)
Copyright and Related Rights b) Trademarks and Service Answer: No, because it is not visible sign.
Marks c) Geographic Indications d) Industrial Designs e)
Patents f) Layout Designs (Topographies) of Integrated  Supposing that a person by the name of Juan compose a
Circuits and g) Protection of Undisclosed Information. This music entitled “Nocturna…” Can he register his composition as
definition merely enumerates. a trademark? Legal basis? Can he register the music/melody
as trademark?
Copyrights, Patent and Trademarks, Distinctions
Case: Answer: No, because it is not visible sign.
Elidad Kho vs. Court of Appeals GR No. 115758 (2002)
Pearl and Dean (Phil.) Inc. v. Shoemart, Inc. and North Edsa That’s why the law has its own definition. You don’t ignore or take for
Marketing Inc. GR 148222 (2003) (Asked in the Prelims) granted definitions of certain terms in the law because that is very
La Chemise Lacoste v. Fernandez 129 SCRA 373, 393 important. So the fragrance of the perfume as well as the music of
Juan cannot be registered as trademark because under the definition
The Intellectual Property Law consists of 3 subjects/courses: provided for in IP Code, “MARK” is any visible sign capable of
1. TRADEMARK distinguishing the goods and services of enterprise and that includes
2. COPYRIGHT marked or stamped container of goods.
3. PATENT
Technology Transfer Arrangement, Defined
- Refers to “contracts or agreements involving the transfer of Functions
systematic knowledge for the manufacture of a product, the - Enumerated under Section 5
application of a process, or rendering of a service including Director General
management contracts and the transfer, assignment or Functions (See Section 7.1)
licensing of all forms of intellectual property rights, including Qualifications (See Section 7.2)
licensing of computer software developed for mass market. Term of Office (See Section 7.3)
- Nature: Licensing Contract, between whom? Jurisdiction (Section 7, paragraph b and c)
Intellectual Property Right owner (licensor) and a second party - These two paragraphs define the jurisdiction of the Director
(licensor) who was granted the authority to commercially General in IP adjudications. In sum, the Director General has:
exploit the same intellectual property right under specified 1.) ORIGINAL JURISDICTION to resolve disputes relating to
terms and conditions. the terms of licenses involving the author’s right to public
This is a highly regulated contract since its role in the performance or other communication of the work, and:
fulfillment of the State’s desire to bring technologies into the 2.) EXCLUSIVE APPELATE JURISDICTION over all decisions
public domain through disclosures and also to prevent rendered by the Director of Legal Affairs, the Director of
practices that have adverse effects on competition and trade. Patents, Director of Trademarks, and the Director of the
- Required and Prohibited Stipulations: Failure to comply with Documentation, Information and Technology Transfer
mandatory and prohibited clauses would automatically render Bureau.
the TTA unenforceable. See Sections 87, 88, 91 AND
Voluntary Licensing Jurisdiction over Interlocutory Orders of the Bureau of Legal
Affairs
Intellectual Property Office - The Supreme Court explained that only FINAL DECISIONS of
How Created? the BLA are appealable to the Director General.
- Under RA 8293 - The Court of Appeals may exercise jurisdiction over
- Replaced the Bureau of Patents, Trademarks and Technology interlocutory orders of BLA.
Transfer Case Cited:
Organization Phil. Pharmawealth, Inc. vs. Pfizer, Inc. and Pfizer Phil.
- Headed by the Director General Inc GR 167715 (2010)
- Assisted by two (2) Deputies
- The Office is divided into 6 Bureaus, each being headed by a Where to Appeal Decision of the Director General
Director and assisted by an Assistant Director. - The law provides remedies in case of an adverse decision of
the Director General. The appeal may be made to the Court of
Notes: Appeals (CA) or the Secretary of Department of Trade of
 Presidential Appointees- Director General, Deputies, Directors Industry, as the case may be.
and Assistant Directors
 DTI Secretary Appointees- Other officers and employees Notes:
(conformably with the Civil Service Law)
Decisions of the DG in the exercise of his APPELATE
Jurisdiction in respect of the decisions of the Director
of Patents and Director of Trademarks are
APPEALABLE to the Court of Appeals (Rules of Court)
With respect of the decisions of the Director of
Documentation, Information and Technology Transfer ULTIMATE GOAL: To bring new designs and technologies into the
Bureau are APPEALABLE to the DTI Secretary. Also public domain through disclosure. (Pearl and Dean v. Shoemart)
with the decisions of the DG in the exercise of
ORIGINAL Jurisdiction to resolve disputes relating to PUBLIC- benefits from new ideas
the terms of a license involving the author’s right to INVENTORS- to be protected.
public performance or other communications of his
work. The law attempts to strike an ideal balance between the two
interests.
Bureaus (Six Divisions) (See Sections 8-13)

Notes:
Patentable and Non-Patentable
- The law recognizes the current jurisdiction of civil courts and Inventions
the IPO over unfair competition cases.
PATENTABLE INVENTIONS NON-PATENTABLE INVENTIONS
Law of Patents (Section 21) (Section 22)
Note:
- Only when the invention is patented may it be given
protection under the Intellectual Property Law. Elements of Patentability
- A patent is a valuable asset that must be protected.
Patentability, Elements
Patents (Latin “Patere- To lay open (to make available for public) 1. Novelty
- Set of EXCLUSIVE RIGHTS granted by a state to an inventor or 2. Inventive Step
his assignee for FIXED PERIOD OF TIME in exchange for a 3. Industrial Applicability
disclosure of an invention.
- These are grants by the State given to someone so he will FIRST ELEMENT OF PATENTABILITY: Novelty (Section 23, in relation
have monopoly right over his property. In exchange for you to Section 24)
revealing something 1)new, 2) useful, and 3) has an - An invention shall not be considered new if it forms part of a
inventive step, State gives you protection. prior art.
- Prior art is defined in Section 24. Under the section, there are
Three fold purpose and Ultimate Goal two (2) classes of prior art.

First, it patent law seeks to foster and reward invention First Classification Second Classification
Second, it promotes disclosures of inventions to Everything that is already Those that are actually subject
stimulate further invention and to permit the public to available to the public NOT of application for patent
practice the invention once the patent expires ONLY in the country but registration.
Third, the stringent requirements for patent protection anywhere in the world. PRIOR ARTS- The whole
seek to ensure that ideas in the public domain remain The requirement that it is contents of an application for
there for the free use of the public. already in the public domain a patent, utility model or
must be present BEFORE the industrial design registration application shall be application assuming
filing date or the priority date that are published in withdrawn. of course that the
of the application claiming the accordance with law, filed or - If the date of filing cannot requirements of
invention. effective in the Philippines, be accorded, the applicant Section 31 are
Filing date and Priority Date- with a filing or priority date shall be given an complied with.
Technical terms that is EARLIER than the filing opportunity to correct the
or priority date of the deficiencies in accordance
application, subject to certain with the implementing
conditions. Regulations.
- If the application does not
Filing Date vs Priority Date contain all the elements,
the filing date should be
Note: that date when all the
- IPL follows the “First to File” Rule. elements are received.
- If the deficiencies are not
FILING DATE (Section 41) PRIORITY DATE (Section remedied within the
31) prescribed time limit, the
Accorded only when Comes into play application shall be
all the when there is considered withdrawn.
REQUIREMENTS an application
provided under for patent for
Section 40 are the same Non- Prejudicial Disclosure
present. (Section invention that Note:
41) was filed in - The element of Novelty requires that the thing is not yet
- An express or implicit another known to anyone besides the inventor.
indication that a Philippine country. - There are disclosures however that will not prejudice the
patent is sought; (Done - Following the “First to application i.e. the application will not be denied for lack of
through filing a Patent File” rule, in case of novelty.
Application under Section TWO or MORE Disclosure of Information contained in the application
32) applications for patent as long as the disclosure was: (See Section 25)
- Information identifying the over the same Any disclosure of information not within the exceptions
applicant; and invention, an under Section 25 shall be considered prejudicial taking
- Description of the invention application with a into consideration the meaning of third party.
and one or more claims in LATTER local filing It has the same adverse effect on novelty whether
Filipino or English. date may still be the o made before or after non-prejudicial disclosure.
Note: preferred application
- If any of these elements over a previous local Clarifying the Third Party (Section 25, 2.3) (Memorandum Circular
are not submitted within filing date. No. 4 Series of 2002)
the period set, the - PROVIDED, that it has
an earlier foreign
- Excludes all patent offices as well as the World Intellectual - The Philippines follows this rule and observed by almost all
Property Office which publishes patent applications filed nations in the world.
through the PCT. Application of the Rule
 There must be at least be two persons who
SECOND ELEMENT OF PATENTABILITY: Inventive Step (Section 26) have made the invention, SEPARATELY and
INDEPENDENTLY of each other. Otherwise,
- Connotes that the invention should not be obvious not to the joint ownership under Section 28 may exist or
general public but to a “person skilled in the art” for it to be may call the application of Section 67.
patented. Inventions Pursuant to Commission or Employment

Who is a “person skilled in the art”? (Rule 207, IRR) Pursuant to a Commission Pursuant to an Employment

- Presumed to be an ordinary practitioner aware of what was The person who If made by an
common general knowledge in the art at the relevant date. commissions the employee during
- Presumed to have knowledge of all references that are work shall be the an employment
sufficiently related to one anither and to the pertinent art and owner of the contract, the
to have knowledge of all arts reasonably pertinent to the patent, UNLESS patent shall
particular problems with which the inventor was involved. there was a belong to:
contrary 1.) The employee, if the
What are the Graham Factors? agreement. inventive activity is
(Section 30) not a part of his
Factors a court will look at when determining regular duties even if
obviousness and non-obviousness in the United States. he uses the time,
(See enumeration) facilities and
materials of the
THIRD ELEMENT OF PATENTABILITY: Industrially Applicability employer.
(Section 27) 2.) The employer, if the
invention is the result
- An invention will be useless if it will be forever confined in the of the performance
sphere of theories and principles. It has to have some practical of his regularly-
application. assigned duties,
UNLESS there is an
agreement, express
Right to Patent or implied, to the
Ownership of Patent contrary.
- Belongs to the inventor
- It may be acquired through succession or assignment.
- It may also be subject of joint-ownership as when two or Right of Priority
more persons have jointly made an invention.
First to File Rule
- An application for patent filed by any person who has The patent application shall be in Filipino or English and shall contain
previously applied for the same invention in another country the following:
which by treaty, convention or law affords similar privileges to
Filipino citizens shall be considered FILED as of the DATE OF (a) A request for the grant of a patent;
FILING the foreign application (b) A description of the invention;
- Provided, that: (c) Drawings necessary for the understanding of the invention;
 The local application expressly claims (d) One or more claims; and
priority (e) An abstract.
 Filed within 12 months from the date
the earliest foreign application was filed No patent may be granted unless the application identifies the inventor.
 Certified copy of the foreign application If the applicant is not the inventor, the Office may require him to submit
together with an English translation is said authority. (Section 32)
filed within 6 months from the date of
filing in the Philippines. (Section 31) The request shall contain:
Illustration:
- An application filed in the Philippines and another filed in 1.) petition for the grant of the patent,
Sweden, and the Philippine application was filed earlier than 2.) the name and other data of the applicant
the other application, it is still possible that the foreign 3.) the inventor and the agent and
application will be granted by virtue of this Right of Priority, as 4.) the title of the invention.
long as all the requisites are complied with.
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.
Procedure for the Grant of Patent
Disclosure and Description
Summary of Procedure
Where the application concerns a microbiological process or the product
Filing of the application thereof and involves the use of a micro-organism which cannot be
Accordance of the filing date sufficiently disclosed in the application in such a way as to enable the
Formality Examination invention to be carried out by a person skilled in the art, and such
Classification and Search material is not available to the public, the application shall be
Publication of the Application supplemented by a deposit of such material with an international
Substantive Examination depository institution. The Regulations shall prescribe the contents of the
Grant of the Patent description and the order of presentation.
Publication upon grant
Issuance of the Certificate Claims

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. The Regulations shall
Filing of the application prescribe the manner of the presentation of claims.
The Abstract as may be granted: Provided further, That each divisional application shall not
go beyond the disclosure in the initial application.
Note: The abstract shall merely serve for technical information.
The fact that a patent has been granted on an application that did not comply
The abstract shall consist of: with the requirement of unity of invention shall not be a ground to cancel the
patent. (Section 38)
1.) Concise summary of the disclosure of the invention as contained
in the description, Accordance of Filing Date
2.) Claims and drawings in preferably not more than one hundred
fifty (150) words. The filing date of a patent application shall be the date of receipt by the
3.) It must be drafted in a way which allows the clear understanding Office of at least the following elements:
of the technical problem, the gist of the solution of that problem
through the invention, and the principal use or uses of the (a) An express or implicit indication that a Philippine
invention. patent is sought;

What are prohibited matters? (b) Information identifying the applicant; and
- The application shall not contain:
1.) Statement contrary to public order or morality (c) Description of the invention and one (1) or more
2.) Statement disparaging the products or processes of any claims in Filipino or English.
particular person or other applicant, or the merits or validity of
applications or patents of any person. If any of these elements is not submitted within the period set by the
Note: A mere comparison shall not be disparaging. Regulations, the application shall be considered withdrawn. (Section 40)
3.) Irrelevant or unnecessary matters
The Office shall examine whether the patent application satisfies the
requirements for the grant of date of filing as provided in Section 40
Note: If the application contains such, the Bureau of Patents shall omit
hereof.
it when publishing the application, indicating the place and number of
words or drawing omitted.
Instances:
What is the Unity of Invention?
1.) If the date of filing cannot be accorded, the applicant shall be
given an opportunity to correct the deficiencies in accordance
The application shall relate to one invention only or to a group of inventions
with the implementing Regulations.
forming a single general inventive concept.
2.) If the application does not contain all the elements indicated in
Section 40, the filing date should be that date when all the
If several independent inventions which do not form a single general inventive
elements are received.
concept are claimed in one application, the Director may require that the
application be restricted to a single invention. 3.) If the deficiencies are not remedied within the prescribed time
limit, the application shall be considered withdrawn. (Section 41)
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 Formality Examination
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,
After the patent application has been accorded a filing date and the f. Signatures of the applicants;
required fees have been paid on time in accordance with the Regulations, g. Identification of the inventor; and
the applicant shall comply with the formal requirements specified by h. Formal drawings. (Rules and Regulations on Invention,
Section 32 and the Regulations within the prescribed period, otherwise
the application shall be considered withdrawn.
Rule 603)

Section 32 dictates:
The Regulations shall determine the procedure for the re-examination
and revival of an application as well as the appeal to the Director of
The patent application shall be in Filipino or English and shall contain the following:
Patents from any final action by the examiner. (Section 42) (a) A request for the grant of a patent;
(b) A description of the invention;
(c) Drawings necessary for the understanding of the invention;
If the formality examination reveals that the drawings were filed (d) One or more claims; and
after the filing date of the application, the Bureau shall send a (e) An abstract.
No patent may be granted unless the application identifies the inventor. If the applicant is not
notice to the applicant that the drawings and the references to the inventor, the Office may require him to submit said authority
the drawings in the application shall be deemed deleted unless
the applicant requests within two (2) months that the Classification and Search
application be granted a new filing date which is the date on
which the drawings were filed. An application that has complied with the formal requirements shall be
classified and a search conducted to determine the prior art. (Section 43)
If the formality examination reveals that the drawings were not
filed, the Bureau shall require applicant to file them within two Note: The patent examiner, at this stage shall determine the requirement
of novelty. The Office uses the International Patent Classification for
(2) months and inform the applicant that the application will be
classifying purposes.
given a new filing date which is the date on which the drawings
are filed, or, if they are not filed in due time, any reference to Content of the Intellectual Property Search Report
them in the application shall be deemed deleted.
The Intellectual Property Search Report is drawn up on the
The new filing date shall be cited in all succeeding basis of the claims, description, and the drawings if there is
correspondences between the Bureau and the applicant. (Rules any:
and Regulations on Invention, Rule 602)
a.) The search report shall mention those documents,
Such other requirements may relate to the following: available at the Office at the time of drawing up the
report, which may be taken into consideration in
a. contents of the request for grant of a Philippine patent; assessing novelty and inventive step of the invention.
b. Priority documents if with claim of convention priority b.) The search report shall distinguish between cited
(i.e., file number, date of filing and country of the priority documents published before the date of priority claimed,
applications); between such date of priority and the date of filing, and
c. Proof of authority, if the applicant is not the inventor; on or after the date of filing.
d. Deed of assignment;
e. Payment of all fees, (e.g. excess claims)
c.) The search report shall contain the classification of the Confidentiality Before Publication
subject matter of the application in accordance with the
International Patent Classification. Note: A patent application, which has not yet been published, and all
related documents, shall not be made available for inspection without the
d.) The search report may include documents cited in a
consent of the applicant. (Section 45)
search established in the corresponding foreign
application. Rights Conferred by a Patent Application After Publication
Publication of Patent Application The applicant shall have all the rights of a patentee under Section 76
against any person who, without his authorization, exercised any of the
The patent application shall be published in the IPO Gazette together rights conferred under Section 71 of this Act in relation to the invention
with a search document established by or on behalf of the Office citing claimed in the published patent application, as if a patent had been
any documents that reflect prior art, after the expiration of eighteen (18) granted for that invention: Provided, That the said person had:
months from the filing date or priority date. (Section 44)
1.) Actual knowledge that the invention that he was using was the
In case the applicant requests for an early publication he must: subject matter of a published application; or
2.) Received written notice that the invention that he was using was
1.) Submit a written waiver of the: the subject matter of a published application being identified in
 Above-mentioned 18-month period the said notice by its serial number: Provided, That the action
 Establishment of a search report may not be filed until after the grant of a patent on the published
2.) Publication shall not be earlier than six months from application and within four (4) years from the commission of the
filing date acts complained of. (Section 46)
3.) Required fee for early publication is paid in full.
Note:
- The application will not be published if it has been finally
refused or withdrawn or deemed to be withdrawn before the - This provision is important since it confers certain rights to the
termination of the technical preparation for publication. application even before the actual grant of approval to the
- The application to be published shall contain the bibliographic application.
data, any drawing as filed and the abstract. - Section 76 refers to the REMEDIES against patent infringement.
- The Office shall communicate to the applicant the date and The remedy is strictly civil.
other information regarding the publication of the application
and draw his attention to the period within which the request Observation by Third Parties
for substantive examination must be filed.
Following the publication of the patent application, any person may
After publication of a patent application, any interested party may inspect present observations in writing concerning the patentability of the
the application documents filed with the Office. invention. Such observations shall be communicated to the applicant who
may comment on them. The Office shall acknowledge and put such
The Director General subject to the approval of the Secretary of Trade observations and comment in the file of the application to which it
and Industry, may prohibit or restrict the publication of an application, if relates. (Section 47)
in his opinion, to do so would be prejudicial to the national security and
interests of the Republic of the Philippines.
Substantive Examination which has slid through the Bureau easily. This is so for
two reasons: first, the rejections have given the applicant
The application shall be deemed withdrawn unless within six (6) months or his attorney suggestions of strengthening
from the date of publication under Section 41, a written request to
amendments so that his claims have been made infinitely
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
less vulnerable than would be otherwise possible;
time. Withdrawal of the request for examination shall be irrevocable and secondly, every point raised by the Examiner and finally
shall not authorize the refund of any fee. (Section 48) decided by the Bureau in favor of the applicant will give
him a prima facie standing on that point in court. The
THE EXAMINATION OF THE APPLICATION; NATURE OF PROCEEDINGS IN Office is empowered by law to pass upon applications for
THE EXAMINATION OF AN APPLICATION FOR A PATENT; GENERAL patents and, because of the authority vested in it, its
CONSIDERATIONS
decisions with respect to the granting of
Law Contest - A rejection by the Examiner is never to be taken literally.
An applicant should remember that the Examiner may
- An application is prosecuted ex parte by the not be actually rejecting his invention. The Examiner may
applicant; that is, the proceedings are like a lawsuit in in fact be quite prepared to admit the invention over the
which there is a plaintiff, but no defendant, the court references to the prior art. He may be merely rejecting
itself acting as the adverse party. the applicant’s claims, that is, the way in which the
- An ex parte proceeding in the Bureau is a law contest applicant has expressed his invention.
between the Examiner, representing the public and trying - An Examiner will frequently make a blanket rejection on
to give the inventor the least possible monopoly in return some reference to the prior art just to be helpful to the
for his disclosure, and the applicant or his attorney trying applicant - just to give the applicant a chance to explain
to get as much monopoly as possible. away some reference and make a change in his claims to
- The Bureau, represented by the Examiner, is not avoid it, rather than to wait until the patent is granted
supposed to look after the interests of an applicant. and is involved in a litigation, when it may be too late to
- The Examiners are charged with the protection of the make the explanation.
interest of the public, and hence must be vigilant to see
Amendment of Application
that no patent issues for subject matter which is not
patentable, and is already disclosed in prior inventions An applicant may amend the patent application during examination:
and accessible to the public at large. Provided, That such amendment shall not include new matter outside the
scope of the disclosure contained in the application as filed. (Section 49)
Tough love case
Grant of Patent
- The positive value of preliminary adverse actions of the
Examiner should be fully appreciated by the applicant If the application meets the requirements of this Act, the Office shall
grant the patent: Provided, That all the fees are paid on time. If the
and his attorney. A hard-fought application will produce a
required fees for grant and printing are not paid in due time, the
patent much more likely to stand in court than a patent application shall be deemed to be withdrawn.
A patent shall take effect on the date of the publication of the grant of Case: Phil. Pharmawealth Inc. vs. Pfizer Inc. and Pfizer Phil. GR
the patent in the IPO Gazette. (Section 50) 167715 (2010)
Refusal of the Application Issue; Whether Pfizer still holds monopoly over the substance
by virtue of their issued Patent over the same?
The final order of refusal of the examiner to grant the patent shall be
appealable to the Director in accordance with this Act. The Regulations
shall provide for the procedure by which an appeal from the order of Ruling: The Court ruled in the negative. The exclusive right of a
refusal from the Director shall be undertaken. (Section 51) patentee to make, use and sell a patented product, article or
process exists only during the term of the patent.—It is clear
Publication Upon Grant of Patent from the above-quoted provision of law that the exclusive right
of a patentee to make, use and sell a patented product, article
The grant of the patent together with other related information shall be or process exists only during the term of the patent. In the
published in the IPO Gazette within the time prescribed by the instant case, Philippine Letters Patent No. 21116, which was the
Regulations. Any interested party may inspect the complete description,
basis of respondents in filing their complaint with the BLA-IPO,
claims, and drawings of the patent on file with the Office. (Section 52)
was issued on July 16, 1987. This fact was admitted by
Contents of Patent respondents themselves in their complaint. They also admitted
that the validity of the said patent is until July 16, 2004, which
The patent shall be issued in the name of the Republic of the Philippines is in conformity with Section 21 of RA 165, providing that the
under the seal of the Office and shall be signed by the Director, and term of a patent shall be seventeen (17) years from the date of
registered together with the description, claims, and drawings, if any, in issuance thereof. Section 4, Rule 129 of the Rules of Court
books and records of the Office. (Section 53) provides that an admission, verbal or written, made by a party
in the course of the proceedings in the same case, does not
Term of Patent
require proof and that the admission may be contradicted only
by showing that it was made through palpable mistake or that
The term of a patent shall be twenty (20) years from the filing date of
the application. (Section 54) no such admission was made.

Note: Annual Fees

To maintain the patent application or patent, an annual fee shall be paid


- However, a patent shall cease to be in force and effect if
upon the expiration of four (4) years from the date the application was
any prescribed annual fees therefor is not paid within the published pursuant to Section 44 hereof, and on each subsequent
prescribed time or if the patent is cancelled in anniversary of such date. Payment may be made within three (3) months
accordance with the provisions of the IP CODE and these before the due date. The obligation to pay the annual fees shall
Regulations terminate should the application be withdrawn, refused, or cancelled.
- When it expires, the monopoly ceases to exist and the
subject matter of patent becomes part of the public If the annual fee is not paid, the patent application shall be deemed
domain. 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 Changes in Patents
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. The owner of a patent shall have the right to request the Bureau to
make the changes in the patent in order to:
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 (a) Limit the extent of the protection conferred by it;
payment. (Section 55)
(b) Correct obvious mistakes or to correct clerical errors;
Surrender of Patent and

The owner of the patent, with the consent of all persons having grants or (c) Correct mistakes or errors, other than those referred
licenses or other right, title or interest in and to the patent and the to in letter (b), made in good faith: Provided, That where
invention covered thereby, which have been recorded in the Office, may the change would result in a broadening of the extent of
surrender his patent or any claim or claims forming part thereof to the protection conferred by the patent, no request may be
Office for cancellation. made after the expiration of two (2) years from the grant
of a patent and the change shall not affect the rights of
A person may give notice to the Office of his opposition to the surrender any third party which has relied on the patent, as
of a patent under this section, and if he does so, the Bureau shall notify published.
the proprietor of the patent and determine the question.
No change in the patent shall be permitted under this section, where the
If the Office is satisfied that the patent may properly be surrendered, he change would result in the disclosure contained in the patent going
may accept the offer and, as from the day when notice of his acceptance beyond the disclosure contained in the application filed. If, and to the
is published in the IPO Gazette, the patent shall cease to have effect, but extent to which the Office changes the patent according to this section, it
no action for infringement shall lie and no right compensation shall shall publish the same. (n)
accrue for any use of the patented invention before that day for the
services of the government. Form and Publication of Amendment

Correction of Mistakes of the Office An amendment or correction of a patent shall be accomplished by a


certificate of such amendment or correction, authenticated by the seal of
The Director shall have the power to correct, without fee, any mistake in the Office and signed by the Director, which certificate shall be attached
a patent incurred through the fault of the Office when clearly disclosed in to the patent.
the records thereof, to make the patent conform to the records.
Notice of such amendment or correction shall be published in the IPO
Correction of Mistake in the Application Gazette and copies of the patent kept or furnished by the Office shall
include a copy of the certificate of amendment or correction.
On request of any interested person and payment of the prescribed fee,
the Director is authorized to correct any mistake in a patent of a formal Cancellation of Patent
and clerical nature, not incurred through the fault of the Office.
Who may cancel?
- Any interested person may, upon payment of the required fees, Committee of Three: Highly Technical Issues
petition to cancel the patent or any claim or parts.
In cases involving highly technical issues, on motion of any party, the
What are the grounds? Director of Legal Affairs may order that the petition be heard and decided
by a committee composed of the Director of Legal Affairs as chairman
a.) The invention is not new or patentable and two (2) members who have the experience or expertise in the field
b.) The patent does not disclose the invention in a manner sufficiently of technology to which the patent sought to be cancelled relates. The
clear and complete for it to be carried out by any person skilled in the decision of the committee shall be appealable to the Director General. (n)
art.
c.) Patent is contrary to public order or morality. Cancellation of the Patent

If the cancellation was to the parts or claims only, cancellation may be effected If the Committee finds that a case for cancellation has been proved, it
to such extent only. shall order the patent or any specified claim or claims thereof cancelled.

Requirement of the Petition If the Committee finds that, taking into consideration the amendment
made by the patentee during the cancellation proceedings, the patent
- The petition for cancellation shall be: and the invention to which it relates meet the requirement of this Act, it
1.) In writing, may decide to maintain the patent as amended: Provided, That the fee
2.) Verified by the petitioner or by any person in his behalf who for printing of a new patent is paid within the time limit prescribed in the
knows the facts, Regulations.
3.) Specify the grounds upon which it is based
4.) Include a statement of the facts to be relied upon, and If the fee for the printing of a new patent is not paid in due time, the
5.) Filed with the Office. patent should be revoked.
6.) Copies of printed publications or of patents of other
countries, and other supporting documents mentioned in the If the patent is amended under Subsection 65.2 hereof, the Bureau shall,
petition shall be attached thereto, together with the at the same time as it publishes the mention of the cancellation decision,
translation thereof in English, if not in the English language. publish the abstract, representative claims and drawings indicating
(Section 62) clearly what the amendments consist of.

Notice of Hearing Effect of Cancellation of Patent or Claim

The jurisdiction to hear the petition for cancellation is with the Director of The rights conferred by the patent or any specified claim or claims
Legal Affairs. cancelled shall terminate. Notice of the cancellation shall be published in
the IPO Gazette.
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 Unless restrained by the Director General, the decision or order to cancel
persons having grants or licenses, or any other right, title or interest in by Director of Legal Affairs shall be immediately executory even pending
and to the patent and the invention covered thereby, as appears of appeal.
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.
Persons Deprived of Patent Ownership, 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
Remedies and 51, respectively.

Patent Application by Persons Not Having the Right to a Patent


Remedies against Infringement
If a person referred to in Section 29 other than the applicant, is declared
by final court order or decision as having the right to the patent, such Rights Conferred by Patent
person may, within three (3) months after the decision has become final:
The rights conferred by a patent depend on whether the subject matter is
(a) Prosecute the application as his own application in place of a product or a process.
the applicant;
A patent shall confer on its owner the following exclusive rights:
(b) File a new patent application in respect of the same
invention; (a) Where the subject matter of a patent is a product, to
restrain, prohibit and prevent any unauthorized person or
(c) Request that the application be refused; or entity from making, using, offering for sale, selling or
importing that product;
(d) Seek cancellation of the patent, if one has already been
issued. (Section 67) (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,
Remedies of the True and Actual Inventor
dealing in, using, selling or offering for sale, or importing
any product obtained directly or indirectly from such
If a person, who was deprived of the patent without his consent or
process.
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,
Which is broader in scope?
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.
(Section 68) - The patent is broader when its subject matter is a process since
the owner does not only control the use of the process but also
Publication of the Court Order the products obtained from such process, even those indirectly
obtained.
The court shall furnish the Office a copy of the order or decision referred - But regardless of this, patent owners shall also have the right to
to in Sections 67 and 68, which shall be published in the IPO Gazette assign, or transfer by succession the patent, and to conclude
within three (3) months from the date such order or decision became licensing contracts for the same.
final and executory, and shall be recorded in the register of the Office.
(Section 69) Civil Action for Infringement

Time to File Action in Court What constitutes Patent Infringement?


- The making, using, offering for sale, selling, or importing a Section 3 provides:
patented product or a product obtained directly or indirectly from
a patented process, or the use of a patented process without the International Conventions and Reciprocity. - Any person who is a national
authorization of the patentee constitutes patent infringement. or who is domiciled or has a real and effective industrial establishment in
a country which is a party to any convention, treaty or agreement relating
Any patentee, or anyone possessing any right, title or interest in and to to intellectual property rights or the repression of unfair competition, to
the patented invention, whose rights have been infringed, may bring a civil which the Philippines is also a party, or extends reciprocal rights to
action before a court of competent jurisdiction, to recover from the nationals of the Philippines by law, shall be entitled to benefits to the
infringer such damages sustained thereby, plus attorney's fees and other extent necessary to give effect to any provision of such convention, treaty
expenses of litigation, and to secure an injunction for the protection of his or reciprocal law, in addition to the rights to which any owner of an
rights. intellectual property right is otherwise entitled by this Act.

If the damages are inadequate or cannot be readily ascertained with Presumptions in Patent Infringement Actions
reasonable certainty, the court may award by way of damages a sum
equivalent to reasonable royalty. The presumptions are found in Sections 78 and 80:

The court may, according to the circumstances of the case, award If the subject matter of a patent is a process for obtaining a product, any
damages in a sum above the amount found as actual damages sustained: identical product shall be presumed to have been obtained through the
Provided, That the award does not exceed three (3) times the amount of use of the patented process if the product is new or there is substantial
such actual damages. likelihood that the identical product was made by the process and the
owner of the patent has been unable despite reasonable efforts, to
The court may, in its discretion, order that the infringing goods, materials determine the process actually used. In ordering the defendant to prove
and implements predominantly used in the infringement be disposed of that the process to obtain the identical product is different from the
outside the channels of commerce or destroyed, without compensation. patented process, the court shall adopt measures to protect, as far as
practicable, his manufacturing and business secrets. (Section 78)
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 Damages cannot be recovered for acts of infringement committed before
because of a patented process knowing it to be especially adopted for the infringer had known, or had reasonable grounds to know of the patent.
infringing the patented invention and not suitable for substantial non- It is presumed that the infringer had known of the patent if on the patented
infringing use shall be liable as a contributory infringer and shall be jointly product, or on the container or package in which the article is supplied to
and severally liable with the infringer. the public, or on the advertising material relating to the patented product
or process, are placed the words "Philippine Patent" with the number of
Infringement Action by a Foreign National the patent. (Section 80)

Any foreign national or juridical entity who meets the requirements of Prescription in Action for Infringement
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 No damages can be recovered for acts of infringement committed more
for infringement of patent, whether or not it is licensed to do business in than four (4) years before the institution of the action for infringement.
the Philippines under existing law. (Section 79)

Defenses in Action for Infringement


In an action for infringement, the defendant, in addition to other b. Where the act is done privately and on a non-commercial
defenses available to him, may show the invalidity of the patent, or any scale or for a non-commercial purpose: Provided, That it
claim thereof, on any of the grounds on which a petition of cancellation does not significantly prejudice the economic interests of the
can be brought under Section 61 hereof. (Section 81) owner of the patent;
c. Where the act consists of making or using exclusively for the
Criminal Action for Repetition of Infringement purpose of experiments that relate to the subject matter of
the patented invention;
d. Where the act consists of the preparation for individual
Note: The law is clear therefore that criminal liability only inures when cases, in a pharmacy or by a medical professional, of a
the infringement is repeated. medicine in accordance with a medical prescription or acts
concerning the medicine so prepared;
If infringement is repeated by the infringer or by anyone in connivance e. Where the invention is used in any ship, vessel, aircraft, or
with him after finality of the judgment of the court against the infringer, land vehicle of any other country entering the territory of the
the offenders shall, without prejudice to the institution of a civil action for Philippines temporarily or accidentally: Provided, That such
damages, be criminally liable therefor and, upon conviction, shall suffer invention is used exclusively for the needs of the ship,
imprisonment for the period of not less than six (6) months but not more vessel, aircraft, or land vehicle and not used for the
than three (3) years and/or a fine of not less than One hundred thousand manufacturing of anything to be sold within the Philippines.
pesos (P100,000) but not more than Three hundred thousand pesos (Section 72)
(P300,000), at the discretion of the court. The criminal action herein
provided shall prescribe in three (3) years from date of the commission Case Cited: Roma Drug and Romeo Rodriguez vs. RTC of Guagua, Pampanga
of the crime. (Section 84) et. al GR No. 149907 (2009)

Patent Found Invalid May be Cancelled Prior User

In an action for infringement, if the court shall find the patent or any Notwithstanding Section 72 hereof, any prior user, who, in good faith was
claim to be invalid, it shall cancel the same, and the Director of Legal using the invention or has undertaken serious preparations to use the
Affairs upon receipt of the final judgment of cancellation by the court, invention in his enterprise or business, before the filing date or priority date
shall record that fact in the register of the Office and shall publish a 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
notice to that effect in the IPO Gazette.
territory where the patent produces its effect.

Limitation on Patent Rights 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
Acts Allowed even without Authorization which the use or preparations for use have been made.

The owner of a patent has no right to prevent third parties from performing, The prior user cannot assign the right to use the patented product or process
without his authorization, the acts referred to in Section 71, as amended by without giving up entirely his enterprise.
RA 9502 hereof in the following circumstances:
Illustration:
a. Using a patented product which has been put on the market
in the Philippines by the owner of the product, or with his X invented a device which, through the use of noise can recharge a cellphone
express consent, insofar as such use is performed after that battery. He applied for and was granted a patent on his device, effective
product has been so put on the said market; within the Philippines. As it turns out, a year before the grant of X’s patent, Y,
an inventor also invented a similar device. X filed an injuctive suit against Y to Case: Smith Kline Beckman Corp. vs. CA GR No. 126627 (2003)
stop him from using the device on the ground of patent infringement. Will the
suit proper?
Voluntary Licensing Contract
Answer: No, since Y is a prior user in good faith. (Bar Question, 2010 Bar)
Objectives of Law:
Use of Invention by Government
1.) To encourage the transfer and dissemination of technology
2.) Prevent or control practices and conditions that may cases
A Government agency or third person authorized by the Government may
exploit the invention even without agreement of the patent owner where:
constitute an abuse of intellectual property rights having an
adverse effect on competition and trade
(a) The public interest, in particular, national security, nutrition,
health or the development of other sectors, as determined by the Note: All technology transfer arrangements shall comply with the
appropriate agency of the government, so requires; or provisions of this Chapter.

(b) A judicial or administrative body has determined that the manner Prohibited Clauses
of exploitation, by the owner of the patent or his licensee is anti-
competitive. (Section 74) Note: These are deemed adverse to trade and competition.

Note: Additional exceptions were provided by RA 9502 which purposely brings Except in cases under Section 91, the following provisions shall be
down the price of medicine in the country. Now, Section 74 is being amended. deemed prima facie to have an adverse effect on competition and trade:
(See enumeration)
1. Those which impose upon the licensee the obligation to acquire
Extent of Protection and Interpretation of Claims from a specific source capital goods, intermediate products, raw
materials, and other technologies, or of permanently employing
The extent of protection conferred by the patent shall be determined by personnel indicated by the licensor;
the claims, which are to be interpreted in the light of the description and 2. Those pursuant to which the licensor reserves the right to fix the
drawings. sale or resale prices of the products manufactured on the basis of
the license;
For the purpose of determining the extent of protection conferred by the 3. Those that contain restrictions regarding the volume and structure
patent, due account shall be taken of elements which are equivalent to of production;
the elements expressed in the claims, so that a claim shall be considered 4. . Those that prohibit the use of competitive technologies in a non-
to cover not only all the elements as expressed therein, but also exclusive technology transfer agreement;
equivalents. (Section 75) 5. Those that establish a full or partial purchase option in favor of the
licensor;
Doctrine of Equivalents (The Doctrine of Substantially) 6. Those that obligate the licensee to transfer for free to the licensor
the inventions or improvements that may be obtained through the
- Provides that an infringement also takes place when a device use of the licensed technology;
appropriates a prior invention by incorporating its innovative 7. Those that require payment of royalties to the owners of patents
concept and, although with some modification and change, for patents which are not used;
performs substantially the same function in substantially the 8. Those that prohibit the licensee to export the licensed product
same way to achieve substantially the same result. unless justified for the protection of the legitimate interest of the
licensor such as exports to countries where exclusive licenses to Commerce (ICC) shall apply and the venue of arbitration shall be
manufacture and/or distribute the licensed product(s) have already the Philippines or any neutral country; and
been granted; 4.) The Philippine taxes on all payments relating to the technology
9. Those which restrict the use of the technology supplied after the transfer arrangement shall be borne by the licensor. (Section 88)
expiration of the technology transfer arrangement, except in cases
of early termination of the technology transfer arrangement due to Rights of Licensor (Section Rights of Licensee (Section
reason(s) attributable to the licensee; 89) 90)
10. Those which require payments for patents and other industrial In the absence of any provision to The licensee shall be entitled to
property rights after their expiration, termination arrangement; the contrary in the technology exploit the subject matter of the
11. Those which require that the technology recipient shall not contest transfer arrangement, the grant technology transfer arrangement
the validity of any of the patents of the technology supplier; of a license shall not prevent the during the whole term of the
12. Those which restrict the research and development activities of the licensor from granting further technology transfer arrangement.
licensee designed to absorb and adapt the transferred technology licenses to third person nor from
to local conditions or to initiate research and development exploiting the subject matter of
programs in connection with new products, processes or the technology transfer
equipment; arrangement himself.
13. Those which prevent the licensee from adapting the imported
technology to local conditions, or introducing innovation to it, as Non-Registration with the Documentation, Information and Technology
long as it does not impair the quality standards prescribed by the Transfer Bureau
licensor;
14. Those which exempt the licensor for liability for non-fulfilment of Technology transfer arrangements that conform with the provisions of
his responsibilities under the technology transfer arrangement Sections 86 and 87 need not be registered with the Documentation,
and/or liability arising from third party suits brought about by the Information and Technology Transfer Bureau.
use of the licensed product or the licensed technology; and
15. Other clauses with equivalent effects. (Section 87)
Non-conformance with any of the provisions of Sections 87 and 88,
however, shall automatically render the technology transfer arrangement
Mandatory Provisions unenforceable, unless said technology transfer arrangement is approved
and registered with the Documentation, Information and Technology
The following provisions shall be included in voluntary license contracts: Transfer Bureau under the provisions of Section 91 on exceptional cases.

1.) That the laws of the Philippines shall govern the interpretation of Exceptional Cases
the same and in the event of litigation, the venue shall be the
proper court in the place where the licensee has its principal In exceptional or meritorious cases where substantial benefits will accrue
office; to the economy, such as high technology content, increase in foreign
2.) Continued access to improvements in techniques and processes exchange earnings, employment generation, regional dispersal of
related to the technology shall be made available during the industries and/or substitution with or use of local raw materials, or in the
period of the technology transfer arrangement; case of Board of Investments, registered companies with pioneer status,
3.) In the event the technology transfer arrangement shall provide exemption from any of the above requirements may be allowed by the
for arbitration, the Procedure of Arbitration of the Arbitration Law Documentation, Information and Technology Transfer Bureau after
of the Philippines or the Arbitration Rules of the United Nations evaluation thereof on a case by case basis. (n)
Commission on International Trade Law (UNCITRAL) or the Rules
of Conciliation and Arbitration of the International Chamber of
Compulsory Licensing A compulsory license may not be applied for on the ground stated in
Subsection 93.5 before the expiration of a period of four (4) years from
the date of filing of the application or three (3) years from the date of
This covers situations where licenses are awarded against the will of
the patent whichever period expires last.
the patent owner which is related to the State policies on intellectual
property rights.
A compulsory license which is applied for on any of the grounds stated in
Subsections 2, 3 and 4 and Section 97 may be applied for at any time
Who has jurisdiction? after the grant of the patent.

- Director of Legal Affairs Requirement to Obtain a License on Reasonable Commercial Terms

Grounds for Compulsory Licensing The license will only be granted after the petitioner has made efforts to
obtain authorization from the patent owner on reasonable commercial
The Director of Legal Affairs may grant a license to exploit a patented terms and conditions but such efforts have not been successful within a
invention, even without the agreement of the patent owner, in favor of reasonable period of time.
any person who has shown his capability to exploit the invention, under
any of the following circumstances: The requirements shall not apply in the following cases:

1.) National emergency or other circumstances of extreme urgency; a. Where the petition for compulsory license seeks
2.) Where the public interest, in particular, national security, to remedy a practice determined after judicial or
nutrition, health or the development of other vital sectors of the administrative process to be anti-competitive;
national economy as determined by the appropriate agency of b. In situations of national emergency or other
the Government, so requires; or circumstances of extreme urgency;
3.) Where a judicial or administrative body has determined that the c. In cases of public non-commercial use.
manner of exploitation by the owner of the patent or his licensee d. In cases where the demand for the patented
is anti-competitive; or drugs and medicines in the Philippines is not
4.) In case of public non-commercial use of the patent by the being met to an adequate extent and on
patentee, without satisfactory reason;. reasonable terms as determined by the Secretary
5.) If the patented invention is not being worked in the Philippines of Department of Health.
on a commercial scale, although capable of being worked,
without satisfactory reason: Provided, That the importation of the In situations of national emergency or other circumstances of extreme
patented article shall constitute working or using the patent. urgency, the right holder shall be notified as soon as reasonably
6.) Where the demand for patented drugs and medicines is not being practicable.
met to an adequate extent and on reasonable terms, as
determined the Secretary of the Department of Health. (See RA
In the case of public non-commercial use, where the government or
9502 for additions.
contractor, without making a patent search, knows or has demonstrable
grounds to know that a valid patent is or will be used by or for the
government, the right holder shall be informed promptly. (n)

Compulsory Licensing of Patents Involving Semi-Conductor Technology

Period for Filing a Petition for a Compulsory License


In the case of compulsory licensing of patents involving semi-conductor grants or licenses, or any other right, title or interest in and to the patent
technology, the license may only be granted in case of public non- and invention covered thereby as appears of record in the Office, and of
commercial use or to remedy a practice determined after judicial or notice of the date of hearing thereon, on such persons and petitioner.
administrative process to be anti-competitive. (Section 96) The resident agent or representative appointed in accordance with
Section 33 hereof, shall be bound to accept service of notice of the filing
Compulsory License Based on Interdependence of Patents of the petition within the meaning of this Section.

If the invention protected by a patent, hereafter referred to as the In every case, the notice shall be published by the said Office in a
"second patent," within the country cannot be worked without infringing newspaper of general circulation, once a week for three (3) consecutive
another patent, hereafter referred to as the "first patent," granted on a weeks and once in the IPO Gazette at applicant's expense. (Section 99)
prior application or benefiting from an earlier priority, a compulsory
license may be granted to the owner of the second patent to the extent Terms and Conditions of Compulsory License
necessary for the working of his invention, subject to the following
conditions: The basic terms and conditions including the rate of royalties of a
compulsory license shall be fixed by the Director of Legal Affairs subject
1.) The invention claimed in the second patent involves an important to the following conditions:
technical advance of considerable economic significance in
relation to the first patent; 1.) The scope and duration of such license shall be limited to the
2.) The owner of the first patent shall be entitled to a cross-license purpose for which it was authorized;
on reasonable terms to use the invention claimed in the second 2.) The license shall be non-exclusive;
patent; 3.) The license shall be non-assignable, except with that part of the
3.) The use authorized in respect of the first patent shall be non- enterprise or business with which the invention is being
assignable except with the assignment of the second patent; and exploited;
4.) The terms and conditions of Sections 95, 96 and 98 to 100 of this 4.) Use of the subject matter of the license shall be devoted
Act. predominantly for the supply of the Philippine market: Provided,
That this limitation shall not apply where the grant of the license
Form and Contents of Petition is based on the ground that the patentee's manner of exploiting
the patent is determined by judicial or administrative process, to
The petition for compulsory licensing must be in writing, verified by the be anti-competitive
petitioner and accompanied by payment of the required filing fee. It shall 5.) The license may be terminated upon proper showing that
contain the name and address of the petitioner as well as those of the circumstances which led to its grant have ceased to exist and are
respondents, the number and date of issue of the patent in connection unlikely to recur: Provided, That adequate protection shall be
with which compulsory license is sought, the name of the patentee, the afforded to the legitimate interest of the licensee; and
title of the invention, the statutory grounds upon which compulsory 6.) The patentee shall be paid adequate remuneration taking into
license is sought, the ultimate facts constituting the petitioner's cause of account the economic value of the grant or authorization, except
action, and the relief prayed for. (Section 98) that in cases where the license was granted to remedy a practice
which was determined after judicial or administrative process, to
Notice of Hearing be anti-competitive, the need to correct the anti-competitive
practice may be taken into account in fixing the amount of
Upon filing of a petition, the Director of Legal Affairs shall forthwith serve remuneration.
notice of the filing thereof upon the patent owner and all persons having
Amendment, Cancellation, Surrender of Compulsory License
Upon the request of the patentee or the licensee, the Director of Legal interest in and to patents and inventions covered thereby, may be assigned
Affairs may amend the decision granting the compulsory license, upon or transmitted by inheritance or bequest or may be the subject of a license
proper showing of new facts or circumstances justifying such contract.
amendment. Upon the request of the patentee, the said Director may
cancel the compulsory license: Assignment of Inventions

If the ground for the grant of the compulsory license no An assignment may be of the entire right, title or interest in and to the
longer exists and is unlikely to recur; patent and the invention covered thereby, or of an undivided share of
If the licensee has neither begun to supply the domestic the entire patent and invention, in which event the parties become joint
market nor made serious preparation therefor; owners thereof. An assignment may be limited to a specified territory.
If the licensee has not complied with the prescribed
terms of the license; Form of Assignment

The licensee may surrender the license by a written declaration The assignment must be in writing, acknowledged before a notary public
submitted to the Office. or other officer authorized to administer oath or perform notarial acts,
and certified under the hand and official seal of the notary or such other
The said Director shall cause the amendment, surrender, or cancellation officer.
in the Register, notify the patentee, and/or the licensee, and cause
notice thereof to be published in the IPO Gazette. Recording

Licensee's Exemption from Liability he Office shall record assignments, licenses and other instruments
relating to the transmission of any right, title or interest in and to
Any person who works a patented product, substance and/or process inventions, and patents or application for patents or inventions to which
under a license granted under this Chapter, shall be free from any they relate, which are presented in due form to the Office for
liability for infringement: Provided however, That in the case of voluntary registration, in books and records kept for the purpose. The original
licensing, no collusion with the licensor is proven. documents together with a signed duplicate thereof shall be filed, and
the contents thereof should be kept confidential. If the original is not
This is without prejudice to the right of the rightful owner of the patent available, an authenticated copy thereof in duplicate may be filed. Upon
to recover from the licensor whatever he may have received as royalties recording, the Office shall retain the duplicate, return the original or the
under the license. authenticated copy to the party who filed the same and notice of the
recording shall be published in the IPO Gazette.
Assignment of Rights
Such instruments shall be void as against any subsequent purchaser or
mortgagee for valuable consideration and without notice, unless, it is so
Transmission of Rights recorded in the Office, within three (3) months from the date of said
instrument, or prior to the subsequent purchase or mortgage.
Reason: Patent is a property and even patent
application is a property. Thus, they shall be protected Rights of Joint Owners
in the same way as the rights of other property under If two (2) or more persons jointly own a patent and the invention
the Civil Code (Section 103) Inventions and any right, title or covered thereby, either by the issuance of the patent in their joint favor
or by reason of the assignment of an undivided share in the patent and without any possibility of renewal, at the end of the seventh year after
invention or by reason of the succession in title to such share, each of the date of the filing of the application.
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 In proceedings under Sections 61 to 64, the utility model registration
joint owners shall be entitled to grant licenses or to assign his right, title shall be canceled on the following grounds:
or interest or part thereof without the consent of the other owner or
owners, or without proportionally dividing the proceeds with such other 1.) That the claimed invention does not qualify for
owner or owners. registration as a utility model and does not meet the
requirements of registrability, in particular having regard
Utility Models to Subsection 109.1 and Sections 22, 23, 24 and 27;
2.) That the description and the claims do not comply with
the prescribed requirements;
Utility model is a petty patent for new and industrially 3.) That any drawing which is necessary for the
applicable technical solution of a problem. A new and understanding of the invention has not been furnished;
useful but obvious improvement may be protected as 4.) That the owner of the utility model registration is not the
inventor or his successor in title.
utility model.
Conversion of Patent Applications or Applications for Utility Model
Case: Ching v. Salinas GR No. 161295 (2005) Registration

Applicability of Provisions Relating to Patents At any time before the grant or refusal of a patent, an applicant for a
patent may, upon payment of the prescribed fee, convert his application
Distinguished from Patentable Inventions into an application for registration of a utility model, which shall be
accorded the filing date of the initial application. An application may be
Subject to Section 109, the provisions governing patents shall apply, converted only once.
mutatis mutandis, to the registration of utility models. Where the right to
a patent conflicts with the right to a utility model registration in the case At any time before the grant or refusal of a utility model registration, an
referred to in Section 29, the said provision shall apply as if the word applicant for a utility model registration may, upon payment of the
"patent" were replaced by the words "patent or utility model prescribed fee, convert his application into a patent application, which
registration". shall be accorded the filing date of the initial application.

Special Provisions Relating to Utility Models Prohibition against Filing of Parallel Applications

a.) An invention qualifies for registration as a utility model if it is new An applicant may not file two (2) applications for the same subject, one
and industrially applicable. for utility model registration and the other for the grant of a patent
b.) Section 21, "Patentable Inventions", shall apply except the whether simultaneously or consecutively.
reference to inventive step as a condition of protection.

Sections 43 to 49 shall not apply in the case of applications for


registration of a utility model. A utility model registration shall expire,
Industrial Designs
Definition 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
An industrial design is any composition of lines or colors or any three- International Classification or to the same set or composition of articles. (
dimensional form, whether or not associated-with lines or colors:
Provided, That such composition or form gives a special appearance to Examination of Application
and can serve as pattern for an industrial product or handicraft.
The Office shall accord as the filing date the date of receipt of the
Substantive Conditions for Protection application containing indications allowing the identity of the applicant to
be established and a representation of the article embodying the
Only industrial designs that are new or original shall benefit from industrial design or a pictorial representation thereof.
protection under this Act. Industrial designs dictated essentially by
technical or functional considerations to obtain a technical result or those If the application does not meet these requirements the filing date
that are contrary to public order, health or morals shall not be protected. should be that date when all the elements specified in Section 105 are
filed or the mistakes corrected. Otherwise if the requirements are not
Contents of the Application complied within the prescribed period, the application shall be considered
withdrawn. After the application has been accorded a filing date and the
Every application for registration of an industrial design shall contain: required fees paid on time, the applicant shall comply with the
requirements of Section 114 within the prescribed period, otherwise the
a. A request for registration of the industrial design; application shall be considered withdrawn. The Office shall examine
b. Information identifying the applicant; whether the industrial design complies with requirements of Section 112
c. An indication of the kind of article of manufacture (Definition) and Section 113 (Substantive Conditions for Protection).
or handicraft to which the design shall be applied;
d. A representation of the article of manufacture or Registration
handicraft by way of drawings, photographs or
other adequate graphic representation of the Where the Office finds that the conditions referred to in Section 113 are
design as applied to the article of manufacture or fulfilled, it shall order that registration be effected in the industrial design
handicraft which clearly and fully discloses those register and cause the issuance of an industrial design certificate of
features for which design protection is claimed; registration, otherwise, it shall refuse the application.
and
e. The name and address of the creator, or where The form and contents of an industrial design certificate shall be
the applicant is not the creator, a statement established by the Regulations: Provided, That the name and address of
indicating the origin of the right to the industrial the creator shall be mentioned in every case.
design registration.
Registration shall be published in the form and within the period fixed by
The application may be accompanied by a specimen of the article the Regulations.
embodying the industrial design and shall be subject to the payment of
the prescribed fee. The Office shall record in the register any change in the identity of the
proprietor of the industrial design or his representative, if proof thereof is
Several Industrial Designs in One Application 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 from the earliest filing date of the corresponding
obligations as provided in this Act. foreign application;

Anyone may inspect the Register and the files of registered industrial
designs including the files of cancellation proceedings. Section 33 - Appointment of Agent or Representative;

Section 51 - Refusal of the Application;


The Term of Industrial Design Registration
Sections
- Surrender, Correction of and Changes in Patent;
The registration of an industrial design shall be for a period of five (5) 56 to 60
years from the filing date of the application. The registration of an
industrial design may be renewed for not more than two (2) consecutive CHAPTER
- Remedies of a Person with a Right to Patent;
periods of five (5) years each, by paying the renewal fee. VII

CHAPTER Rights of Patentees and Infringement of Patents;


The renewal fee shall be paid within twelve (12) months preceding the -
VIII and
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, CHAPTER
- Assignment and Transmission of Rights.
upon payment of a surcharge XI

The Regulations shall fix the amount of renewal fee, the surcharge and Rights Conferred of Layout-Design Registration
other requirements regarding the recording of renewals of registration.
1.) To reproduce whether by incorporation in an integrated circuit or
Application of Other Sections and Chapters otherwise the registered layout-design in its entirety or any part,
except that the act of reproducing any part that does not comply
The following provisions relating to patents shall apply mutatis mutandis with the requirement of originality
to an industrial design registration: 2.) To sell or distribute for commercial purposes the registered layout
design , an article or an integrated circuit in which the registered
Section 21 - Novelty: layout-design is incorporated.

Prior art: Provided, That the disclosure is contained If the essential elements of an industrial design which is the subject of an
Section 24 -
in printed documents or in any tangible form; application have been obtained from the creation of another person
without his consent, protection under this Chapter cannot be invoked
Section 25 - Non-prejudicial Disclosure;
against the injured part.
Section 27 - Inventions Created Pursuant to a Commission;
Cancellation of Design Registration
Section 28 - Right to a Patent;
At any time during the term of the industrial design registration, any
Section 29 - First to File Rule;
person upon payment of the required fee, may petition the Director of
Section 31 Legal Affairs to cancel the industrial design on any of the following
Right of Priority: Provided, That the application for
- grounds:
industrial design shall be filed within six (6) months
(a) If the subject matter of the industrial design is not registrable
within the terms of Sections 112 and 113;

(b) If the subject matter is not new; or

(c) If the subject matter of the industrial design extends beyond


the content of the application as originally filed.

Where the grounds for cancellation relate to a part of the


industrial design, cancellation may be effected to such extent only. The
restriction may be effected in the form of an alteration of the effected
features of the design.