INTELLECTUAL PROPERTY LAW

Intellectual Property- intangible assets resulting from the creative work of

an individual or organization.
Creations of the mind, such as: inventions, litersry amd artistic works,
symbols, names, images, and designs used in commerce.
●The legal rights which result from intellectual activies in the industrial,
scientific, literary and artistic fields.

THE CONSTITUTIONAL BASIS (THE PURPOSE OF INTELLECTUAL PROPERTY)

●Article 14, Section 13, 1987 Constitution
“The state shall protect and secure the exclusive rights of scientists,
inventors, artists, and other gifted citizens to their IP and creations,
particularly when beneficial to the people, for such period as msy be
provided by law.”

<the state gives some sort of protection to the inventors while the latter
continue to develop IP>

COVERAGE OF IP RIGHTS
1. COPYRIGHT AND RELATED RIGHTS
2. TRADEMARKS AND SERVICE MARKS
3. Geographic indiciations
4. Industrial designs
5. PATENTS
6. Layout designs (topographies) and integrated circuits
7. Protection of Undisclosed Information (TRIPS)

BASIC PATENT PRINCIPLES

*patents are not given to reward individual for his invention, this is for
advancement ,but to encourage people to disclose info or their useful
knowledge
*the patent law has 3 fold purpose: 1. To foster invention 2. To promote
disclosure of those inventions 3. Im order for these inventions tobbe
available to the public domain
1. TERRITORIALITY- patents are only valid in the country or region in which
they have been granted.
2. FIRST TO FILE- applicant who files first will get the patent.
•if 2 or more persons have made the invention separately and
independently of each other, the right to the patent shall belong to the
person who filed an application for such invention or where 2 or more
applications are filed for the same invention to the applicant which has
the earliest filing date (IPC SEC 29)
3. DISCLOSURE- applicant shall disclose the invention in a manner
sufficiently clear and complete.
QUID PRO QUO PRINCIPLE- protection in exchange for disclosure
4. CONDITIONAL- patents are granted only upon compliance with the
criteria of patentability.
5. LIMITED RIGHTS

PATENTABLE INVENTIONS- any technical solution of a problem in any field

of human activity which is new involves an inventive step and is
industrially applicable. It may be, or may relate to, a product, or process,
or an improvement of any of the foregoing. (Sec, 21, IPC)

CRITERIA FOR PATENTABILITY

1. NOVELTY- an invention shall bot be considered new if it forms part of a
prior art.
*prior art: everything which has been made available to the public
anywhere in the world, before the filing date or the priority date of
application claiming the invention, and the whole contents of an earlier
published Philippine application or application with earlier priority date of
different inventor.
2. INVENTIVE STEP- if, having regard to prior art, it is not obvious to a
person skilled in the art at the time of the filing date or priority date of the
application claiming the invention.
3. INDUSTRIALLY APPLICABLE- an invention that can be produced and used
in any industry. This means an invention is not merely theoretical, but also
has a practical purpose.

HOW MUCH INFO FROM PRIOR ART IS SUFFICIENT?

“The defense of lack od novelty, (anticipation) can only be established by
a single prior art reference which discloses each and every element of the
claimed invention.”
RULE: WHEN A WORK HAS ALREADY BEEN MADE AVAILABLE TO THE
PUBLIC, IT SHALL BE NON-PATENTABLE FOR ABSENCE OF NOVELTY
EXEPTION: Doctrine of Non-Prejudicial Disclosure
The disclosure of info contained in the application furing the 12-month
period before the filing te pr the priority date of the application is such
disclosure was made by:
1. The inventor
2. A patent office and the information was contained
a. In another application filed by the inventor and should have not been
disclosed by the office, or
b. in an application filed without the knowledge or consent of the inventor
by a third party which obtained the info directly or indirectly from the
inventor
3. a third party who obtained the information directly or directly from the
inventor. (IPC, SEC. 25)

TEST OF NON-OBVIOUSNESS

•If any person possessing ordinary skill in the art was able to draw the
inferences and he constructs thst the supposed inventor drew from prior
art, then the latter did not really invent it.
•person skilled in the art-ordinary practitioner (fictional person)
a.has access and understanding of all the prior art
b. aware of common general knowledge in the specific art
c. observes developments in the related technical field- could be a team;
need not have inventive ability.

NON-PATENTABLE INVENTIONS
1. plant varieties or animal breeds or essentially biological process for the
production of plants or animals. This provision shall not apply to micro-
organisms and non-biological and microbiological processes.
2. aesthetic creations
3. discoveries, scientific theories and mathematical methods
4. schemes, rules and methods of performing mental acts, playing games
or doing business, andprograms for computers
5. anything which is contrary to public order or morality (IPC as amended
by RA 9502, SEC.22)
6. methods for treatment of the human or animal body and
7. in case of drugs and medicines, mere discovery of a new form or new
property of a known substsnce which does not result in the enhancement
of the efficacy of that substance.

Is the covid 19 vaccine PATENTABLE? Yes since it is not a method for

treating an illness, not a surgical method as well not also a medicine.

OWNERSHIP OF PATENTS
SECTION 28. RIGHT TO PATENT- The right to a patent belongs to the
inventors, his heirs, or assigns. When 2 or more persons have jointly made
an invention, the right to a patent shall belong to them jointly.

MAY PATENT RIGHTS BE ASSIGNED OR TRANSFERRED ?

YES. For a valid assignment of patent rights, the assignment must be in
writing and must be duly notarized. (IPC, SEC 105)

INVENTIONS CREATED PURSUANT TO A COMMISSION

PURSUANT TO A COMMISSION- the person who commissions the work

shall own the patent, unless otherwise provided in the contract.
PURSUANT TO EMPLOYMENT- in case the employee made the invention in
the course of hus employment contract, the patent shall belong to :
a. the employee, if the inventive activity is not patt of his regular duties
even if the employee uses the time. Facilities, and materials of the
employer.
b. the employer. If the inventive activity is the result of the performance of
hus regularly-assigned duties, unless there is an agreement, express or
implied tk the contraty. (IPC SEC 30)
PATENT REGISTRATION
1.Filing of the application
2.Accordance of the filing date
3.Formality examination
4.Classification and search
5.Publication and search
6.Substantive examination
7.Grant of Patent
8.Publication upon grant
9.Issuance of certificate
PATENT APPLICATION- SECTION 32. The application. -32.1. The patent
application shall be in filipino or english and shall contain the following:
A.request for the grant of a patent
B.description of the invention
C.drawings and necessary for the understanding of the invention
D.one or more claims
E.abstract
GROUNDS FOR CANCELLATION OF PATENT
ANY INTERESTED PARTY MAY PETITION TO CANCEL ANY PATENT OR ANY
CLAIM OR PARTS OF A CLAIM ANY OF THE FOLLOWING HROUNDS:
1.the invention is not new or patentable
2.patent does not disclose the invention in a manner sufficiently clear and
complete for it to be carried out by any person skilled in the art, or
3.contrary to public order or morality (IPC SEC.61.1)
4.patent is found invalid in an action for infringement (IPC SEC 82)
5.patent includes matters outside the scope of the disclosure contained in
the application (IPC SEC 21, regs on inter partes proceeding, sec 1)
PATENT APPLICATION BY PERSONS NOT HAVING THE RIGHT TO A PATENT
Remedies of persons with a right to a patent
If a person other than the applicant is declared by final court order or
decision as having the right to to a patent, he may within 3 months after
such decision has become final:
1 prosecute the application as his own.
2 file a new patent application
3 request the application to be refused or
4 seek cancellation of the patent (IPC SEC 67.1)
Time to file action: within 1 year from the date of publication
REMEDIES OF A TRUE AND ACTUAL INVENTOR
IF A PERSON WHO WAS DEPRIVED OF THE PATENT AND WITHOUT HIS
CONSENT OR THROUGH FRAUD IS DECLARED BY FINAL COURT ORDER OR
DECISION TO BE THE TRUE AND ACTUAL INVENTOR, THE COURT SHALL
ORDER FOR HIS SUBSTITUTION AS PATENTEE, AND AWARD ACTUAL AND
OTHER DAMAGES IN HIS FAVOR IF WARRANTED BY THE CIRCUMSTANCES.
TIME TO FILE ACTION: within 1 year from the date of publication
RIGHTS CONFERRED BY PATENT
1.in case of product: right to restrain, prohibit, and prevent any
unauthorized person orentity from making, using, offering for sale, selling,
or importing (MUOSI) the product.
2.in case of process- right to restrain prohibit and prevent any
unauthorized person or entity from manufacturing, dealing in, using
offering for sale, selling or importing any product obtained directly or
indirectly from such process.(IPC section 71)
3.right to assign the patent,to transfer by succession, and to conclude
licensing contracts (IPC SEC 71.2)
The rights conferred by a patent application take effect after publication in
the official gazette. (IPC SEC 46)
LIMITATIONS OF PATENT RIGHTS
The owner of a patent has no right to prevent third parties from making,
using, offering for sale, selling or importing a patentable product in the
following circumstances:
A.using a patented product after it has been put on the market in the
Philippines by the owner of the product, or with his express consent.
•in case of drugs or medicines, the said limitation applies after a drug or
medicine has been introduced in the Philippines or anywhere else in the
world by the patent owner, or by any party authorized to use the
invention. This allows parallel importation for drugs and medicines.
•the right to import the drugs and medicines shall be available to any
government agency or any private third party (IPC SEC 72.1 as amended
by RA No. 9502)
B.where act is done privately and on a non-commercial scale or for a non-
commercial purpose (IPC SEC 72.2)
C.exclusively for experimental use of the invention for scientific purposes
or educational purposes. (IPC SEC 72.3)
D.in the case of drugs and medicines, where the act includes testing,
using, making, or selling the invention including any data related thereto,
solely for purposes reasonably related to the development and submission
of info and issuance of approvals by government regulatory agencies
required under any law of the Philippines or of another country that
regulates the manufacture, construction, use or sale of any product.
E.where act consists of the preparation for individual cases in a pharmacy
or by a medical professional, of a medicine in accordance with a medical
prescription (IPC SEC 72.5)
F.where the invention is used in any ship, vessel, aircraft, or land vehicle
of any other country entering the territory of the Philippines temporarily or
accidentally. Provided that such invention is used exclusively for the needs
of the ship, vessel, aircraft, or land vehicle and not used for the
manufacturing of anything to be sold within the Philippines. (IPC SEC 72.5)
OTHER LIMITATIONS
Prior User- person other than the applicant, who in good faith, started
using the invention in the Philippines, or undertaken serious preparations
to use the same, before the filing date or priority date of publication shall
have the right to continue the use thereof, but this right shall only be
transferred or assigned further with his enterprise or business. (IPC SEC
73)
OTHER LIMITATIONS: USE BY GOVERNMENT
74.1 A government agency or Thurs person authorized by the government
may exploit the invention even without agreement of the patent owner
where:
A.public interest, in particular, national security, nutrition, health or the
development of other sectors, as determined by the appropriate agency of
the government, so requires, or
b.judicial or administrative body has determined that the manner of
exploitation, by the owner of the patent or his licensee is anti-competitive
or
C.in case of drugs and medicines, there is a national emergency or other
circumstance of extreme urgency requiring the use of the invention or
D.in case of drugs and medicines, there is public non-commercial use of
the patent by the PATENTEE, without satisfactory reason or
E.in case of drugs and medicines, the demand for the patented article in
the Philippines is not being met to an adequate extent and on reasonable
terms, as determined by the secretary of the department of health.
DOCTRINE OF EXHAUSTION
Also known as the doctrine of first sale, it provides that the patent holder
has control of the first sale of his invention. He has the opportunity to
receive the full consideration for his invention from his sale. Hence, he
exhausts his rights in the future control of his invention.
PATENT INFRINGEMENT
The making, using, offering for sale, selling or importing a patented
product of a product obtained directly or indirectly from a patented
process, or the use of a patented process without the authorization of the
patentee. SEC 76
A patent maybe infringed either: 1. Literally or 2. By equivalents
LITERAL INFRINGEMENT – exists if an accused device falls directly within
the scope of properly interpreted claims.
DOCTRINE OF EQUIVALENTS- an infringement also occurs when a device
appropriates a prior invention by incorporating it’s innovative concept and
despite some modification and change, performs substantially the same
function in substantially the same way to achieve substantially the same
result. FUNCTION-MEANS-AND-RESULT TEST
REMEDIES OF THE OWNERS OF THE PATENT AGAINST INFRINGERS:
•Civil action for infringement
•criminal action for infringement – if the infringement is repeated, the
criminal action prescribes in 3 years from the commission of the crime
•administrative remedy- where the amount of damages claimed is not
less than 200,000.00
•destruction of infringing material-upon court order
DEFENSES IN ACTION FOR INFRINGEMENT
1.invalidity of the patent (IPC SEC 81)
2.any of the ground for cancellation of patents
A.that what us claimed as the invention is not new or patentable
B.that the patent does not disclose the invention in a manner sufficiently
clear and complete for it to be carried out by any person skilled in the art
or
C.thst the patent is contrary to public order or morality (IPC SEC 61)
3.prescription
TRADEMARK- Mark means any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall
include a stamped or marked container of goods.
REQUIREMENTS FOR A MARK TO BE REGISTERED:
•a visible sign and capable of distinguishing one’s goods and services
from another.
VISIBLE SIGN: words, letters, numeral, figures, pics, shapes, colours, logos,
3D, objects, combinations
NOT VISIBLE: scents and sounds
DISTINCTIVENESS OF A MARK
FANCIFUL TRADEMARK – made up words which are INVENTED to be used
as a trademark name
ARBITRARY TRADEMARK – words that have a real common meaning but
they are completely unrelated to the product or service
SUGGESTIVE TRADEMARK – named after a characteristic of the product or
service
DESCRIPTIVE TRADEMARK – description of the product of service
GENERIC TRADEMARK – cannot be protected as they are simply a generic
description of the product or service.
MARKS WHICH MAY BE REGISTERED: any word, name, symbol, emblem,
device, figure, sign, phrase, or any combination thereof except those
enumerated under section 123, IPC
TRADEMARK VS. TRADE NAME
TRADEMARK – identifies or distinguishes the goods or services.
Registration is required.
TRADE NAME- identifies or distinguishes the business or enterprise.
Registration is not required .
COLLECTIVE MARK: mark or trade name used by the members of a
cooperative, an association or other collective group or organization.
RIGHTS OVER A TRADEMARK CONFERRED
•The rights in a mark shall be acquired through registration with the IPO.
(IPC SEC 122) The filing date of application is the operative act to acquire
trademark rights. Prior use is no longer a condition precedent for
registration of trademark, service mark or trade name.
ACQUISITION OF OWNERSHIP OF MARK
•The rights in a mark shall be acquired through registration but the right
to register a trademark should be based on ownership.
•An exclusive distributor does not acquire any proprietary interest in the
principal’s trademark and cannot register it in his own name unless it is
has been validly assigned to him.
REGISTRATION: prior use is not a requirement but there must be actual
use after application. Declaration of actual User- within 3 years from filing
of the application.
DURATION OF EFFECTIVITY OF TRADEMARK REGISTRATION
•10 years subject to indefinite renewals of 10 years each. Patent 20 years
non-renewable
•The registrant is required to file a declaration of actual use and evidence
to that effect, or show valid reasons based on the existence of obstacles
to such use, within one year from the fifth anniversary of the date of the
registration of the mark. Otherwise, the mark shall be removed from the
register by the IPO. (IPC SECS 145 and 146)
NON-REGISTRABLE MARKS: immoral, deceptive or scandalous matters,
matter which may disparage or falsely suggest a connection with persons,
etc. Contrary to public order or morality. Flags or coat or arms of nations,
names portraits or signature of living persons (except with consent)
names portraits and signatures of a deceased president of the Philippines
(except: with written consent of his or her living widow)
-identical with a registered mark belonging to a different proprietor or a
mark with an earlier filing or priority date, in respect of
A.the same goods or services
B.closely related to goods or services
C.if it nearly resembles such a mark as to be likely to deceive or cause
confusion
-misleading marks SEC 123.1, generic terms, everyday language,
descriptive terms, purpose,value, geographical origin, time, or production
of the goods or rendering of the services or other characteristics of the
goods or services. Colour alone, shapes dictated by technical factors.
*FIRST-TO-FILE RULE
TM- already subject to tradmeark R- not issued into trademark, still in
process
NON-REGISTRABLE MARKS:WELL KNOWN MARKS
•Identical with an internationally well-known mark, whether or not it is
registered here, used for identical or similar goods or services
•identical with an internationally well-known mark which is registered in
the Philippines with respect to non-similar goods or services. Provided,
that the interests of the owner of the registered mark are likely to be
damaged by such use.
RIGHTS OF A TRADEMARK OWNER
•right to exclusive use of the mark in connection with one’s own goods or
services resulting in likelihood of confusion
•right to prevent others from use of identical mark for the same, similar,
or related goods slot services (SEC 147)
TERRITORIALITY PRINCIPLE: trademark registration abroad shall not be
valid and binding here in the Philippines.. exceptions: well-known marks,
bad faith
TRADEMARK INFRINGEMENT
•use without consent of the trademark owner of any reproduction,
counterfeit, copy or colorable limitation of any registered mark or trade
name. Such use is kiely to cause confusion or mistake or to deceive
purchasers or others as to the source or origin of such goods or services l,
or identity of such business.
ELEMENTS:
1.ownership of a trademark through registration
2.that the trademark is reproduced, counterfeited, copied, or colourable
imitated by another
3.no consent by the trademark owner or assignee
4.use in connection with the same, offering for sale, selling or advertising
of any such goods, business, or services or those related thereto
5. Likelihood of confusion
COLORABLE IMITATION: such a close or ingenious imitation as to be
calculated to deceive ordinary purchasers, or such resemblance of the
infringing mark to the original as to deceive ordinary purchasers giving
such attention as a purchaser usually gives, and to cause him to purchase
the one supposing it to be the other.
LIKELIHOOD OF CONFUSION
TYPES OF CONFUSION
•CONFUSION OF GOODS- as to the goods themselves
•CONFUSION OF BUSINESS – as to the source or origin of such goods
-wherein the foods 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, doesn’t exist.
TESTS IF CONFUSION
•DOMINANCY TEST- focuses on the prevalent features of the competing
marks
•TOTALITY TEST- determined on the basis of visual, aural, connotative
comparisons and overall impressions engendered by the marks in
controversy as they are encountered in the marketplace.
OTHER FACTORS:
•IDEM SONANS RULE: aural effects of the words and letters contained in
the marks are also considered in determining the issue of confusing
similarity.
DOCTRINE OF SECONDARY MEANING: this doctrine is to the effect that a
word or phrase originally incapable of exclusive appropriation with
reference to an article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and so exclusively
by one producer with reference to his article that, in that trade and to that
branch of the purchasing public, the word or phrase has come to mean
that the article was his product.
UNFAIR COMPETITION : It is the passing off or palming off or attempting to
pass off upon the public of the goods or business of one person as the
goods or business of another with the end and probable effect of
deceiving the public.
TRADEMARK INFRINGEMENT: unauthorized use of trademark. Fraudulent
intent is unnecessary. GR:prior registration of the trademark is a
prerequisite to the action. XPN: well-known trademarks.
UNFAIR COMPETITION: the passing of one’s goods as those of another.
Fraudulent intent is essential. Registration is not necessary.
REMEDIES AND JURISDICTION
Administrative action- IPO-BLA, concurrent with RTC-SCCs
•civil action, RTC-SCC concurrentnwith IPO-BLA
•criminal action, exclusive with RTC-SCC
-2 to 5 years imprisonment
-P50000 to P20000 in fine

COPYRIGHT:a right over literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from the
moment of creation.
COPYRIGHTABLE WORKS:
1.LITERARY AND ARTISTIC WORKS -books, pamphlets, articles and other
writings. Lectures, sermons, addresses,. Dissertations prepared for oral
delivery, whether or not reduced in writing or other material form. Letters
shall belong to writer. Dramatic, choreographic works, musical
compositions, works of art, periodicals and newspapers, works relative to
Geography, topography., architecture or science. Works of applied arts.
Work of a scientific or technical character. Photographic work. Audiovisual
works and cinematographic works. Pictorial illustrations and
advertisements. Computer programs and other literary, scholarly,
scientific and artistic works. IPC SEC 172.1
2.DERIVATIVE WORKS- dramatisations, translations, adaptations,
abridgment S, arrangements, and other alterations of literary or artistic
works. Collections of literary, scholarly,or artistic works, and compilations
of data and other materials which are original by reason of the selection or
coordination or arrangement of their contents. IPC SEC 173
NON-COPYRIGHTABLE WORKS
-Idea, procedure, system, method, or operation, concept, principle,
discovery, or mere data as such. News of the day and other items of press
information. Any official text of a legislative, administrative, or legal
nature as well as any official translation thereof. Pleadings. Decisions of
court and tribunals. Any work of the government of the Philippines. TV
programs, format of TV programs. Systems of bookkeeping. Statutes.
RIGHTS OF COPYRIGHT OWNERS:
1.ECONOMIC RIGHTS- (50 years after death)the right to carry out,
authorize or prevent the following acts:
a.reproduction of work is substantial portion thereof, b.carry out derivative
work, c.first distribution of the original and each copy of the work by sale
or other forms of transfer of ownership,d.rental right, e.public display,
f.public performance, g.other communications to the public.
2.MORAL RIGHTS – for reasons of professionalism and propriety, the
author has the right:
A.to acquire that the authorship of the works he attributed to him
(attribution right or paternity right)
B.to make any alterations of his work prior to, or to withhold it from
publication
C.to preserve integrity of work, object to any distortion, mutilation or
other modification which would be prejudicial to his honor or reputation
and
D.to restrain the use of his name with respect to any work not of his own
creation or in a distorted version of his work (right against false
attribution) IPC SEC 193.
EXPIRATION OF COPYRIGHT: transfers to public domain
OWNERSHIP OF COPYRIGHT
Original literary and artistic works – author of the work IPC SEC 178.1
Joint authorship – co-authors in case of works of joint authorship in the
absence of agreement. NOTE: if work of joint authorship consists of parts
that can be used separately, then the author of each part shall be the
original owner of the copyright in the part that he created IPC SEC 178.2