INTELLECTUAL PROPERTY LAW (R.A.

8293)
An Act prescribing the Intellectual Property Code and establishing the Intellectual Property Office,
providing for its powers and functions, and for other purposes.

Definition:Intangible assets resulting from the creative work of an individual or organization.

CONSTITUTIONAL BASIS (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 intellectual property and creations, particularly when beneficial to the people,
for such period as may be provided by law.

COVERAGE OF INTELLECTUAL PROPERTY LAW

Copyright and Related Rights; Trademarks and Service Marks;
Geographical Indications; Industrial Designs;
Patents; Layout Designs of Integratde Circuits; and
Protection of Undisclosed Information (TRIPS).

TRADEMARKS
MARK: Means any visible sign capable of distinguishing the goods or service of an enterprise and
shall include a stamped or marked container of goods.

TRADE NAME: Means the name or designation identifying or distinguishing an enterprise.

COLLECTIVE MARK: Mark or trade-name used by the members of a cooperative, an association, or

other collective group or organization.

HOW RIGHTS ARE ACQUIRED?

The rights in a mark shall be acquired through registration with the IPO (Intellectual Property Office).

Prior use is no longer a condition precedent for registration of trademark, service mark, or trade
name.

CERTIFICATE OF REGISTRATION: A certificate of registration of a mark shall be prima facie evidence

of:
 The validity of the registration,
 The registration’s ownership of the mark, and
 The registrant’s exclusive right to use the same in connection with the goods or services and
those that are related thereto specified in the certificate.

PRIORITY CLAIM: is a local application of a trademark when an earlier application (priority

application) is filed abroad.
 Filed within 6 months from filing of priority application
 Certified copy of priority application within 3 months from filing date
 Failure to file is treated as a waiver of priority claim.
Duration: 10 years
Renewal: May be renewed for periods of 10 years at its expiration upon payment of the prescribed
fee and upon filing a request at any time within 6 months before expiration or within 6 months after
such exploration upon payment of an additional fee.

DECLARATION OF ACTUAL USE: A declaration of actual use shall be filed:

 Within 3 months from filing date of application; Extendible for another 6 months; Otherwise,
it shall be deemed an abandonment of the application.
 Another DAU within 1 year from the 5th anniversary of the registration of the mark;
Otherwise, the mark shall be removed from the Register by the Office.
 Within 1 year from date of renewal of the trademark registration.

MARKS WHICH CANNOT BE REGISTERED

Those that consists of:
 Immoral, deceptive, or scandalous matter.
 Matter which may disparage or falsely suggest a connection with persons, living or dead,
institutions, beliefs, or national symbol, or bring them into contempt or dispute
 Flags/ coat of arms of nations.
 Names, portraits, or signature of living persons
Exception: with consent
 Names, portraits, or signature of a deceased President of the Philippines.
Exception: with written consent of his/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, or
b. Closely related goods or services, or
c. If it nearly resembles such a mark as to be likely to deceive or cause confusion.
 Identical with an internationally well-known mark, whether or not it is registered here, used
for identical or similar goods or services.
 THEORY OF DILUTION: Identical with an internationally well-known mark which is registered
in the Philippines with respect to non-similar goods or services. Provided, that the use of the
mark in relation to these goods or services would indicate a connection between those
goods or services, and the owner of the trademark: Provided, further, that the interests of
the owner of the registered mark are likely to be damaged by such use.
 Misleading terms.
 Generic terms. (Indicators that have become customary or usual to designate the goods or
services in everyday language or in bona fide and established trade practice.)
 Descriptive terms
 Shapes dictated by technical factors.
 Color alone.
 Contrary to public order or morality.

COLORABLE IMITATION
Denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such
a resemblance to the original as to deceive an ordinary purchaser, giving such attention as a
purchaser usually gives, and to cause him to purchase the one supposing it to be the other.

KINDS OF TERMS
GENERAL TERMS- not legally protectible
Are those which constitute:
 the common descriptive name of an article or substance
  the genus of which the particular product was a specie
 commonly used as the name or description of a kind of goods
 imply reference to the basic nature of the wares or services
DESCRIPTIVE TERMS- not valid as a trademark
Are those that convey:
 the characteristics, functions, qualities, or ingredients of a product to one who has never
seen it and does not know what it is
 an immediate idea of the ingredients, qualities, or characteristics of the goods
SUGGESTIVE TERMS- eligible for protection in the absence of secondary meaning
Are those which:
 require imagination, thought, and perception to reach a conclusion as to the nature of the
goods
 subtly connote something about the product

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 geographical or otherwise descriptive might
nevertheless have been used so long and so exclusively by one producer with reference to this
article that, in the trade and that group of purchasing public, the word of phrase has come to mean
that the article was his produce.

RIGHTS CONFERRED
 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 an identical mark of the same, similar, or related goods
or services.

TERRITORIALITY PRINCIPLE: Trademark registration abroad shall not be valid and binding
here in the Philippines.

Exception: Well-known marks, bad faith

CANCELLATION OF REGISTRATION
A petition to cancel a registration of a mark under this act may be filed with the Bureau of Legal
Affairs by any person who believes that he is or will be damaged by the registration of a mark.

Period: GENERAL RULE

Within 5 years from the date of the registration of the mark under this Act.

EXCEPTIONS:
 At any time, if the registered owner of the mark without legitimate reason fails to use the
mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license
during an uninterrupted period of three (3) years or longer.

 At any time, if the registered mark becomes the generic name for the goods or services, or a
portion thereof, for which it is registered, or has been abandoned, or its registration was
obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is
 being used by or with the permission of, the registrant so as to misrepresent the source of
the goods or services on or in connection with which the mark is used.
 In any action to enforce the rights to a registered mark- Notwithstanding the foregoing
provisions, the court or the administrative agency vested with jurisdiction to hear and
adjudicate any action to enforce the rights to a registered mark shall likewise exercise
jurisdiction to determine whether the registration of said mark may be cancelled in
accordance with this Act.

TRADEMARK INFRINGEMENT
Use without consent of the trademark owner of any reproduction, counterfeit, copy or colorable
imitation of any registered mark or trade name. Such use is likely to cause confusion or mistake or to
deceive purchasers or others as to the source or origin of such goods or services, or identity of such
business.

Elements
 Ownership of a trademark through registration
 The trademark is reproduced, counterfeited, copied, or colourably imitated by another
 No consent by the trademark owner or assignee
 Use in connection with the sale, offering for sale, or advertising of any such goods or services
or those related thereto
 Likelihood of Confusion

TESTS TO DETERMINE INFRINGEMENT

Holistic or Totality test- Considers the entirety of the marks in question.
Dominancy test- Focuses on the prevalent features of the competing marks.

REMEDIES FOR TRADEMARK OWNER

1. Recover damages
2. Seek injunction
3. Seek the destruction of infringing materials

PRIOR USER IN GOOD FAITH:

A registered mark shall have no effect against any person who, in good faith, before the filing date or
the priority date, was using the mark for the purpose of his business or enterprise. Provided, that his
right may only be transferred or assigned together with his enterprise or business or with that part
of his enterprise or business which the mark is used.
UNFAIR COMPETITION
It is the passing 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.

The following shall be deemed guilty of unfair competition:

 Any person, who in selling his goods shall give them the general appearance of goods of
another manufacturer or dealer which would likely influence purchasers to believe that the
goods are those of a manufacturer or dealer;
 Any person who by any artifice, or deceive, or who employs any other means calculated to
induce the false belief that such person is offering the service of another who has identified
such services in the mind of the public; or
  Any person who shall make any false statement in the course of trade or who shall commit
any other act contrary to good faith of a nature calculated to discredit the goods, business or
services of another.

Penalty: Imprisonment: 2-5 years Fine: 50,000-200,000

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. ORIGINAL WORKS- It is an original intellectual creations in the literary and artistic domain
protected from the moment of their creation.
2. DERIVATIVE WORKS

NON-COPYRIGHTABLE WORKS
1. Any idea, procedure, system, method or operation, concept, principle, discovery or mere data as
such
2. News of the day and other items or press information
3. Any official text of a legislative, administrative or legal nature, as well as any official transaction
thereof
4. Pleadings
5. Decisions of courts and tribunals
6. Any work of the government of the Philippines
7. TV programs, format of TV programs
8. Systems of bookkeeping; and
9. Statutes

WHAT ARE THE RIGHTS OF COPYRIGHT OWNERS?

ECONOMIC RIGHTS- The right to carry out, authorize or prevent the following acts:
A. Reproduction of the work or substantial portion thereof
b. Carry-out derivative work (dramatizations, transaction, adaptation, abridgements, arrangement or
other transformation of the 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

MORAL RIGHTS- For reasons of professionalism and propriety, the author has the rights:
A. To require that the authorship of the works be attributed to him (attribution right/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, multilation 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)
OWNERSHIP OF COPYRIGHT
Type of Work Owner
Original literary and Artistic works Author of the work
Joint Authorship Co-authors - in case of works of joint
Authorship, in the absence of agreement, their
rights shall be governed by the rules on co-
ownership.
NOTE: If work of joint Authorship of each part
shall be the original owner of the copyright in
the part that he has created
Audiovisual work GR: Producer, the author of the scenario, the
composer of the music, the film director, and
the author of the work so adapted.

XPN: Producers have the right to manage the

copyright for showing a work in any way.
However, they don't have the right to collect
fees for playing the music, with or without
lyrics, that is part of the work.
Anonymous and Pseudonymous works Publishers are seen as the authors of articles
without names or with fake names, unless it's
obvious who the real author is or the author
reveals their identity.
Commissioned work The person who requested or paid for the work
owns the physical product, but the creator
keeps the copyright unless there's a written
agreement saying otherwise.
Collective works When an author contributes to a collection of
works (like an anthology), they give up the right
to be credited for their part unless they
specifically say they want to be acknowledged.
In the course of employment The employee, if not a part of his regular duties
even if the employee uses the time, facilities
and materials of the employer.

The employer, if the work is the result of the

performance of his regularly-assigned duties,
unless there is an agreement, express or
implied, to the contrary.
Letters In respect of letters, the copyright shall belong
to the writer subject to the provisions of Article
723 of the Civil Code

The letter itself belongs to the recipient

DURATION OF RIGHT
WORK TERMS OF PROTECTION

Literary and Artistic Works & Life of the author + 50 years after his death
Derivative Works
Joint Authorship Life of the last surviving author + 50 years after
 his death
Anonymous or Pseudonymous Works 50 years from date it is first lawfully published
If before expiration of period, identity is
revealed or no longer in doubt, the rule on
Literary and Joint Authorship applies
Work of Applied Art 25 years from date of making
Photographic works If published - 50 years from publication
Audiovisual works Unpublished - 50 years from making
Performances not incorporated in recordings 50 years from the end of the year in which
performance took place
Sound recordings and performances 50 years from end of the year in which
incorporated therein recording took place

DURATION OF MORAL RIGHT

"During the lifetime of the author and in perpetuity after his death" - Paternity Right/Right of
Attribution
Conterminous with Economic Rights - Alteration and Non-Publication Right; Right to Preservation
of Integrity; and Right against False Attribution

WHAT HAPPEN IF THE COPYRIGHT EXPIRES?

-Transfer to public domain

COPYRIGHT INFRINGEMENT
It is the unauthorized use of copyrighted material such as work of art, music, or software.

Elements
 Ownership of a valid copyright (proof of ownership
 Exercise of any of the exclusive economic rights in in Section 117 without the consent of the
copyright owner

Unless: FAIR USE

-fair use for criticism, comment, news reporting, teaching including limited [multiple] number of
copies for classroom use, scholarship, research and similar purposes.

FACTORS TO BE CONSIDER IN DETERMINING FAIR USE

1. Purpose & character of the use
2. Nature of the copyrighted work
3. Amount & substantiality of the portion used in relation
to the copyrighted work as a whole; &
4. Effect of the use upon the potential market for or value
of the copyrighted work.

WHO ARE LIABLE FOR INFRINGEMENT?

a. Directly commits an infringement;
b. Benefits from the infringing activity of another person who commits an infringement if the person
benefiting has been given notice of the infringing activity and has the right and ability to control the
activities of the other person;
c. With knowledge of infringing activity, induces, causes or materially contributes to the infringing
conduct of another (IPC, Sec. 216, as amended by R.A. No. 10372).

REMEDIES IN CASE OF COPYRIGHT INFRINGEMENT

1. Injunction2. Damages, including legal costs and other expenses, as he may have incurred d
infringement as well as the profits the infringer may have made due to such infringement
3. Impounding during the pendency of the action sales invoices and other documents sales
4. Destruction without any compensation all infringing copies
5. Moral and Exemplary damages; or
6. Seizure and impounding of any article, which may serve as evidence in the court proceedings.

COPYRIGHT INFRINGEMENT- The unauthorized use of copyright material in a manner that violates
one of the copyright owner's exclusive rights, such as the right to reproduce or perform the
copyrighted work, or to make derivative works that build upon it.
PLAGIARISM- The use of another's information, language, or writing, when done without proper
acknowledgment of the original source.

PATENT
- is a grant issued by the government to an inventor, designer or maker, the right to exclude others
from making, using or selling his invention, design or utility model within the country for a specific
term, in exchange of his patentable disclosure.

UTILITY MODEL
 It is a protection option, which is designed to protect innovations that are not sufficiently
inventive to meet the inventive threshold required for standard patents application. It may
be any useful machine, implement, tools, product, composition, process, improvement or
part of the same, that is of practical utility, novelty and industrial applicability.
 It is entitled to seven (7) years of protection from the date of filing
 No possibility of renewal.

INDUSTRIAL DESIGN
 Any composition of lines or colors or any three-dimensional form that gives a special
appearance to and can serve as a pattern for an industrial product or handicraft.
 Valid for five (5) years from the filing date of the application; may be renewed for up to two
(2) consecutive periods of five (5) years each.
 Renewal requires payment of a renewal fee.

BASIC PATENT PRINCIPLES

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
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
KINDS OF PATENTS; REQUISITES
1. Invention Patent: Novelty, Inventive Step, Industrial Applicability;
2. Design Patent: Novelty and Ornamentality;
3. Utility Model: Novelty and Industrial Applicability.
INVENTION PATENT:
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 shall be patentable. It may be, or may relate to, a
product, or process, or an improvement of any of the foregoing.

ELEMENTS OF A PATENT
1. Novelty: An invention shall not be considered new if it forms part of a prior art.
Prior Art:
a. Everything which has been made available to the public anywhere in the world, before the filing
date or the priority date of the application claiming the invention;
b. Those already covered by an earlier application.
2. Inventive Step: An invention involves an inventive step if, having regard to prior art, it is not
obvious to a person skilled in the art at the time of the filing date or priority date of the application
claiming the invention.
3. Industrial Applicability: An invention that can be produced and used in any industry shall be
industrially applicable.

RULE:
WHEN A WORK HAS ALREADY BEEN MADE AVAILABLE TO THE PUBLIC, IT SHALL BE NON-
PATENTABLE FOR ABSENCE OF NOVELTY.

EXCEPTION:
Doctrine of Non-prejudicial disclosure:
The disclosure of information contained in the application during the twelve (12) months
preceding the filing date or the priority date of the application shall not prejudice the applicant on
the ground of lack of novelty if such disclosure was made by:
a. The inventor;
b. A patent office, and the information was contained (a) in another application filed by the inventor
and should not have been disclosed by the office, or (b) in an application filed without the
knowledge or consent of the inventor by a third party which obtained the information directly or
indirectly from the inventor; or
c. A third party which obtained the information directly or indirectly from the inventor

TEST OF NON-OBVIOUSNESS
If any person possessing ordinary skill in the art was able to draw the inferences and he constructs
that 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
The following shall be excluded from patent protection:
 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;
  Aesthetic creations;
 Discoveries, scientific theories and mathematical methods;
 Schemes, rules and methods of performing mental acts, playing games or doing business,
and programs for computers;
 Anything which is contrary to public order or morality (IPC as amended by R.A. 9502,
Sec.22);
 Methods for treatment of the human or animal body; and
 In the case of drugs and medicines, mere discovery of a new form or new property of a
known substance which does not result in the enhancement of the efficacy of that substance

Patent Application Process

The procedure for the grant of patent may be summarized as follows:
1. Filing of the application
2. Accordance of the filing date
3. Formality examination
4. Classification and Search
5. Publication of application
6. Substantive examination
7. Grant of Patent
8. Publication upon grant
9. Issuance of certificate

Content of Application
SECTION 32. The Application. - 32.1. The patent application shall be in Filipino or English and shall
contain the following:
1. A request for the grant of a patent;
2. A description of the invention;
3. Drawings necessary for the understanding of the invention;
4. One or more claims; and
5. An 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 grounds:
1. The invention is not new or patentable;
2. 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
3. Contrary to public order or morality (IPC, Sec. 61.1);
4. Patent is found invalid in an action for infringement (IPC, Sec. 82); and
5. The patent includes matters outside the scope of the disclosure contained in the application. (IPC,
Sec 21, Regulations on Inter Partes Proceeding, Sec.1)

OWNERSHIP OF PATENTS
SECTION 28. Right to a Patent
The right to a patent belongs to the inventor, his heirs, or assigns.
When two (2) or more persons have jointly made an invention, the right to a patent shall belong to
them jointly.
First-to-File Rule
If two (2) or more persons have made the invention separately and independently of each other, the
right to the patent shall belong to the person who filed an application for such invention, or
Where two or more applications are filed for the same invention, to the applicant which has the
earliest filing date (IPC, Sec. 29).

Right of Priority/Priority Claim

Application made locally when an earlier application is filed abroad. Process:
1. A CLAIM of priority based on an earlier filing date abroad.
2. A local application is filed within 12 months from priority date (application date of foreign
application for patent)
3. Certified copy of priority application and English translation thereof within 6 months from filing
date.

Priority date: date of filing of FOREIGN application for the same invention.

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)

ACTUAL INVENTOR; REMEDIES:

1. Application still pending – file an action in court to prove that he is the actual inventor within 1
year from first publication. Once declared that he is the true inventor:
a. Request that the application be refused
b. File a new application but filing date will retroact to original filing date
2. Patent already granted - within 1 year from publication of the patent, he can either:
a. Be substituted as patentee; or
b. Seek cancellation of patent.

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 his employment
contract, the patent shall belong to:
1. The employee, if the inventive activity is not a part of his regular duties even if the employee uses
the time, facilities and materials of the employer.
2. The employer, if the invention is the result of the performance of his regularly assigned duties,
unless there is an agreement, express or implied, to the contrary.

TERM OF PATENT: The term of a patent shall be twenty (20) years from the filing date of the
application.

RIGHTS CONFERRED BY PATENT

1. In case of Product - Right to restrain, prohibit and prevent any unauthorized person or entity 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, Sec. 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 patented 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
b. Where the 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. The act includes testing, using, making, or selling drugs and medicines, along with related data,
solely for purposes related to developing and submitting information for government regulatory
approvals in the Philippines or other countries.
e. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical
professional, of a medicine in accordance with a medical prescription (Sec. 72.5, IPC).
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 the
application 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).
USE BY GOVERNMENT
74.1. A Government agency or third person authorized by the Government may exploit the
invention even without agreement of the patent owner where:
(a) The public interest, in particular, national security, nutrition, health or the development of other
sectors, as determined by the appropriate agency of the government, so requires; or
(b) A judicial or administrative body has determined that the manner of exploitation, by the owner
of the patent or his licensee is anti-competitive; or
(c) In the case of drugs and medicines, there is a national emergency or other circumstance of
extreme urgency requiring the use of the invention; or
(d) In the case of drugs and medicines, there is public non-commercial use of the patent by the
patentee, without satisfactory reason; or
(e) In the case of drugs and medicines, the demand for the patented article in the Philippines is not
being met to an adequate extent and on reasonable terms, as determined by the Secretary of the
Department of Health.

PATENT INFRINGEMENT
The making, using, offering for sale, selling, or importing a patented product or a product
obtained directly or indirectly from a patented process, or the use of a patented process without the
authorization of the patentee constitutes patent infringement.

KINDS OF INFRINGEMENT:
1.LITERAL INFRINGEMENT- exist if an accused device falls directly within the scope of properly
interpreted claims
a. Exactness Rule - the item that is being sold, made or used conforms exactly to the patent
claim of another.
b. Addition Rule - one makes, uses or sells an item that has all the elements of the patent
claim of another plus other elements.

2.DOCTRINE OF EQUIVALENTS
The doctrine of equivalents provides that an infringement also takes place when a device
appropriates a prior invention by incorporating its innovative concept and, although with some
modification and change, performs substantially the same function in substantially the same way to
achieve substantially the same result.
-“ function-means-and-result test “

REMEDIES OF PATENTEE AGAINST INFRINGERS

1. Civil action to recover damages plus attorney’s fees and other expenses of litigation or reasonable
royalty.
2. Injunction for the protection of rights.
3. The court may, in its discretion, order that the infringing goods, materials and implements
predominantly used in the infringement be disposed of outside the channels of commerce or
destroyed, without compensation.
4. Criminal Action for Repetition of Infringement: if infringement is repeated by the infringer or by
anyone in connivance with him after finality of the judgment of the court against the infringer, the
offenders shall,
without prejudice to the institution of a civil action for damages, be criminally liable therefore and,
upon conviction, shall suffer imprisonment for the period of not less than six (6) months but not
more than three (3) years and/or a fine of not less than One hundred thousand pesos (P100,000) but
not more than Three hundred thousand pesos (P300,000), at the discretion of the court. The
criminal action herein provided shall prescribe in three (3) years from date of the commission of the
crime.

DEFENSES IN ACTION FOR INFRINGEMENT

1. Invalidity of the patent (IPC, Sec. 81);
2. Any of the grounds for cancellation of patents:
a. That what is claimed as the invention is not new or patentable
b. That the patent does not disclose the invention in a manner sufficiently clear and complete for it
to be carried out by any person skilled in the art; or
c. That the patent is contrary to public order or morality (IPC, Sec. 61).
3. Prescription
VOLUNTARY LICENSING:
Mandatory Provisions:
1. Jurisdiction of disputes - Philippines; Venue – principal place of business of patentee
2. Continuous access to improvements in techniques and processes
3. If it includes Arbitration - venue: PH or other neutral countries, and the following laws are
applicable:
a. the procedure of Arbitration of the Arbitration Law of the Philippines or
b. the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL)
or
c. The Rules of Conciliation and Arbitration of the International Chamber of Commerce (ICC)
4. Taxes-borne by the licensor

COMPULSORY LICENSING:
Issuance of a license by the Director General of the IPO to exploit a patented invention without the
permission of the patent holder, either by manufacture or through parallel importation.
Grounds:
1. National emergency/circumstances of extreme urgency
2. Public interest so requires
3. The use of the patent is anti-competitive
4. Public non-commercial use without satisfactory reasons
5. Invention is not being worked in the PH on a commercial scale without satisfactory reasons
(importation counts as working or using)
6. Demand for patented drugs and medicine is not being met to an adequate extent and or
reasonable terms, as determined by DOH.