REVIEWER_Intellectual Property (Midterm)

8/2/2019 REVIEWER_Intellectual Property (Midterm)

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INTELLECTUAL PROPERTY CEC

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I. INTELLECTUAL PROPERTY

What is intellectual property (IP)?

It is those property rights which result from the

physical manifestation of original thought.

(Ballantines Law Dictionary, 3rd

Ed.)

It is any creation of the mind. The type of intellectualproperty would depend on the result how the idea

was expressed or manifested into something

concrete. (CEC)

Each particular type of IP protects a specific type of

creation:

Patent a technical solution to a problem Trademark a visible sign that would show

the source of goods; symbolizes goods or

services

Copyright an expression of an idea comingfrom an author

The Intellectual Property Code of the Philippines

Art. XIV, Sec. 13, 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.

The constitution thus provides:

The basic definition of copyright theexclusive right/s of an author to the work of

his authorship.

Intellectual property rights are ultimatelyordered towards public benefit or welfare.

Congress enacted the Intellectual Property Code of

The Philippines which comprehends the following

concerns:

Copyright and related rights Trademark and service marks Geographic indications Industrial designs Patents Layout designs (topographies) of integrated

circuits

Protection of undisclosed information Technology transfer

Why should we protect intellectual property

Personality theorygifted persons should begiven their due. Our works are the extension

of our personality. You are what you create.

Therefore, your intellectual property should

be credited to you.

Utilitarianism what is useful is good. Itpropels social development. It makes the

economy move forward. There is a motive to

innovate, an incentive given to the innovator

(recognition of rewards). In the end, society

will benefit.

John Locke philosophy we should rewardthe labor of the creator. You are entitled to

the fruits of your labor.

The role of the IP system is to balance the interests

between the creator and the public. The compromise

is limited protection. (CEC)

For example, patents are only good for 20years. Upon expiration, anyone can copy it.

Treaties and agreements on Intellectual Property

The Senate of the Philippines ratified the General

Agreement on Tariffs and Trade (1994, Uruguay

Round) and therefore, the Philippines has become a

member of the World Trade Organization.

Among the agreements of the Uruguay Round is the

Agreement on Trade-Related Aspects of Intellectual

Property Rights (TRIPS).

Aside from the General Agreement on Tariffs and

Trades, the Philippines are also a party to otherconventions:

Convention on establishing the WorldIntellectual Property Code

Paris Convention for the Protection ofIndustrial Property

Budapest Treaty on the InternationalRecognition of the Deposit of Microorganisms

for Purposes of Patent Procedures

Berne Convention for the Protection ofLiterary and Artistic Works

Rome Convention: International Conventionfor the Protection of Performers, Producers of

Phonograms and Broadcasting Organizations

Paris Convention for the Protection of Industrial

Property (1965)

All signatories agree on the following:

National treatmento Afford the same kind of protection to

citizens as its own national

o All member countries should affordsame level of protection to all citizens

regardless of the country, as long as

they are signatories of the agreement.


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o Similar to reciprocity principle.o A provision stating that only Filipinos

can apply for patent protection is

void.

Ex. An inventor, a citizen of amember country in the WTO,

filed for application that is not

a member of the WTO. What

happens? Inventor can beafforded the same treatment

as long as he is a citizen of a

member country in the WTO.

o It also follows in patenting that thecountry cannot give priority over their

nationals.

Right of priorityo First to file rule first person who

applies first shall be given the right to

the patent.

o First to invent ruleWhy do you need to file in several countries instead of

trusting one country accepting the filing? patenting

rules are territorial. It only applies on the certain

country it is applied.

Treaties recognize that each country has its own

culture. Each signatory can have their own rules with

regard to the details of the agreement (ex. Duration of

patent protection)

Each state has a domestic law whichdetermines whether something is patentable

or not. For as long as it abides by the general

principles of the Paris convention and TRIPS.

You have 12 months to file a patent in another

country; and it would be as if you filed the patent

application at the same time you filed it with the prior

country. (CEC)

The right of patent protection retroacts to the date of

filing. (CEC)

Independence of patentso If a patent is granted in one country,

that cannot be the basis for the grant

in another country.

If a patent application isdenied in one country, that

cannot be the basis of denial

in another country.

o BECAUSE THERE ARE DIFFERENTDOMESTIC LAWS.

The Paris Convention requires for compulsory license.

If public welfare requires it, the state can step in

(March in rights) and compel the inventor to license

it to third parties.

Ex. Public healtho March in rights is similar to police

power.

Third parties still have to payfor the compulsory licenses.

The duration of the licenses

would depend on the

emergency situation.

Term of the patent is 20 years from the application,

NOT from the grant of the patent.

Case: Kho v. CA

Petitioner alleged that they are doing business under

the name and style of KEC Cosmetics Laboratory,

registered owner of Chin Chun Su and oval facial

cream container/case. She also alleged that she has

patent rights on Chin Chun Su and Device and Chin

Chun Su Medicated Cream after purchasing the samefrom Quintin Cheng, the registered owner thereof in

the supplemental register of the Philippine Patent

Office. She alleged that Summerville advertised and

sold petitioners cream products under the brand

name Chin Chun Su, in similar containers that

petitioner uses, thereby misleading the public, and

resulting in the decline in the petitioners business

sales and income.

In defense, respondents said that (1) Summerville is

the exclusive and authorized importer, re-packer anddistributor of Chin Chun Su products manufactured

by Shun Yi factory of Taiwan, (2) that the said

Taiwanese manufacturing company authorized

Summerville to register its trade name Chin Chun Cu

Medicated Cream with the Philippine Patent office

and Other appropriate governmental agencies; (3)

that KEC Cosmetics Laboratory of the petitioner

obtained the copyrights through misrepresentation

and falsification; and, (4) that the authority of Quintin

Cheng, assignee of the patent registration certificate,

to distribute and market Chin Chun Su products in thePhilippines had already terminated by the said

Taiwanese manufacturing company.

HELD: Petitioner has no right to claim the exclusive

use of the subject trade name and its container. The

name and container of a beauty cream product are

proper subjects of a trademark in as much as the

same falls squarely within its definition. In order to be

entitled to exclusively use the same in the sale of the

beauty cream product, the user must sufficiently

prove that she registered or used it before anybodyelse did. The petitioners copyright and patent

registration of the name and container would not

guarantee her right to exclusive use of the same for

the reason that they are not appropriate subjects of


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the said intellectual rights. Consequently, a

preliminary injunction order cannot be issued for the

reason that the petitioner has not proven that she has

a clear right over the said name and container to the

exclusion of others, not having proven that she has

registered a trademark thereto or used the same

before anyone did.

II. PATENT BASICS

A patent is a document issued upon application by a

government office which describes an invention and

creates a legal situation in which the patented

invention can normally only be exploited

(manufactured, used, sold, imported) with the

authorization of the owner of the patent. (WIPO, 75)

It encourages inventiveness by awarding to inventors

monopolies for limited periods to the exploitation of

their inventions. (Aquino)

Patentability

Sec. 21. 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. (Sec. 7, RA

165a)

Sec. 21 determines which products of human

inventiveness are patentable. To be patentable, a

product must be:

a. A technical solution of a problem in any fieldof human activity

b. Novelc. An invention (inventive step)d. Industrially applicable.

These criteria may apply to:

a. Productsb. Processesc. Improvement of either products or processes

(Aquino)

All requisites must be present. If one is absent,

application will be denied. (CEC)

Products

The term is broad enough to include every output of

human ingenuity, every tangible result of humancraftsmanship or partisanship. However, not all

products are patentable because not all possess the

requirements of patentability. (Aquino)

Process

Consists of an act, operation, or step, or of a series

thereof, performed upon a specified subject matter

to produce a physical result.

It is an act or series of acts performed upon the

subject matter to be transformed and reduced to a

different state or thing. The patent protects a mode of treatment of

certain materials to produce a certain result.

(Aquino)

Improvements

When the improvement is a consequence of the

technical configuration of the original invention and is

thus suggested by the invention itself, then the

improvement is still within the dominion of the

original invention.

If it is non-obvious to one skilled in the art of the

original invention and is truly novel, then an

improvement patent will issue. (Aquino)

What are patentable?

1. Machines consists of parts which are soarranged and organized as to cooperate, when

set in motion, produces a definite,

predetermined and unitary result.

Even if the parts are old, or already in public domain,

the machine itself will be patentable if such parts are

arranged in such a manner as to evidence an

inventive step.

It also follows that it will also be patentable ifthe machine is able to perform a new

operation or to produce a new result when an

artifice of a patented machine is modified.

2. Manufacture or product it is an article ofmanufacture.

To qualify for a product patent, it must possess a

new or distinctive form, quality or property. (Aquino)

3. Compositions of matter4. An improvement of such

What are not patentable?

Sec. 22. Non-Patentable Inventions. The following

shall be excluded from patent protection:22.1. Discoveries, scientific theories and

mathematical methods;

22.2. Schemes, rules and methods of

performing mental acts, playing games or


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doing business, and programs for computers;

22.3 Methods for treatment of the human or

animal body by surgery or therapy and

diagnostic methods practiced on the human

or animal body. This provision shall not apply

to products and composition for use in any of

these methods;

22.4. Plant varieties or animal breeds or

essentially biological process for theproduction of plants or animals. This

provision shall not apply to microorganisms

and non-biological and microbiological

processes. Provisions under this subsection

shall not preclude Congress to consider the

enactment of a law providing sui generis

protection of plant varieties and animal

breeds and a system of community

intellectual rights protection:

22.5. Aesthetic creations; and

22.6. Anything which is contrary to publicorder or morality. (Sec. 8, RA 165a)

First-to-file rule and Right of priority

Sec. 29. 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 who has the earliest filing date or, theearliest priority date.

Sec. 31. Right of Priority. - An application for patent

filed by any person who has previously applied for

the same invention in another country which by

treaty, convention, or law affords similar privileges

to Filipino citizens, shall be considered as filed as of

the date of filing the foreign application: Provided,

That: (a) the local application expressly claims

priority; (b) it is filed within twelve (12) months from

the date the earliest foreign application was filed;and (c) a certified copy of the foreign application

together with an English translation is filed within six

(6) months from the date of filing in the Philippines.

Requirements for a patent

Sec. 5, Art. 27, (par. 1), TRIPS. Subject to the

provisions of paragraphs 2 and 3, patents shall be

available for any inventions, whether products or

processes, in all fields of technology, provided that

they are new, involve an inventive step and arecapable of industrial application.

1. NoveltySec. 23. Novelty. - An invention shall not be

considered new if it forms part of a prior art. (Sec. 9,

RA 165a)

The new law defines novelty negatively that which

does not form part of prior art. (Sec. 23)

What is prior art?

Sec. 24. Prior Art. - Prior art shall consist of:

24.1. Everything which has been made

available to the public anywhere in the

world, before the filing date or the priority

date of the application claiming the

invention; and

24.2. The whole contents of an application

for a patent, utility model, or industrial

design registration, published in accordancewith this Act, filed or effective in the

Philippines, with a filing or priority date that

is earlier than the filing or priority date of the

application: Provided, That the application

which has validly claimed the filing date of

an earlier application under Section 31 of this

Act, shall be prior art with effect as of the

filing date of such earlier application:

Provided further, That the applicant or the

inventor identified in both applications are

not one and the same. (Sec. 9, RA 165a)

Something already disclosed to the public.(CEC)

When is there public disclosure?o There is access to the public.o Therefore, it will already be

considered prior art.

Prior art is before the date of application ofpatent

Two types of novelty: Prejudicial

o Disclosure before the filing or prioritydate

Non-prejudicialo It does not destroy the novelty of the

invention.

o It is within a limited period of 12months upon disclosure.

Forms of disclosure

Oral disclosureo It would depend on the circumstances

if oral disclosure can make something

prior art.


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o The test is WON it is accessible to thepublic.

o Ex. In a public conference whereparticipants are made to sign a non-

disclosure agreement, it would still be

considered prior art. (CEC)

Publicationo The description of the technical

solution in writing that is published. Public Use

o The use of the technical solution inpublic or by putting the public in a

position that any member may use it.

(Aquino)

Private sales are not considered public disclosure. But

if it is sold to the public, it will be considered public

disclosure. (CEC)

There should be an operational/ enabling disclosurefor it to be considered a prior art. Meaning, an

average person skilled in the art may be able to

replicate the invention based on the disclosure. (CEC)

We only give protection to those that can contribute

to society. Why protect something that has already

been existing? (CEC)

What if it is not new in another country?

It will then be considered prior art.Two kinds of novelty:

Relative novelty Absolute novelty the Philippines follows

this. The law says that it should not be prior

art anywhere in the world.

Defensive publication a strategy used so that the

invention becomes part of public domain. As a result,

no one cannot patent it.

Ex. Suits S01E02 the client invented asatellite phone and he threatened to post hisdesigns in the internet.

If another person invents an improvement for your

patent, that person will have to ask permission from

you to use your basic patent in his improvement.

(CEC)

2. Inventiveness/ Inventive stepSec. 26. Inventive Step. - An invention involves an

inventive step if, having regard to prior art, it is notobvious to a person skilled in the art at the time of

the filing date or priority date of the application

claiming the invention.

It is with the inventive concept, the thing achieved,

not with the manner of its achievement or the quality

of the mind which gave it birth that the patent law

concerns itself. (In re: Dow Chem Co., 837 F.2d 469,

cited Aquino)

When is something inventive?

It should not be anticipated by the person who willexamine the invention. It shall be examined by:

A person skilled in the art is the one whodetermines if the thing is inventive. It is a

person who a reasonable knowledge on the

matter. HE need not be an expert on the field.

(CEC)

If an invention has novelty and industrial applicability,

but it does not have an inventive step, the inventor

can instead file for a utility model.

It will be good for 7 years. It is also called a petty patent.

Inventive step pertains to how the invention would

bring the state of the art to the next level. (CEC)

Compared to innovation

How to put the inventions out into the market It is more of a business term

3. Industrial applicabilitySec. 27. Industrial Applicability. - An invention that

can be produced and used in any industry shall be

industrially applicable.

Sec. 27 categorizes an invention as industrially

applicable when it can be produced and used in any

industry.

According to TRIPS, the term shall be deemed to be

synonymous with useful.

This assures the patent office that the invention can

be applied in the industry, can be mass produced.

Otherwise, there will be no sense in granting a patent

to something that cannot be given to the public. (CEC)

4. Ample disclosure through application in thePatent Office

Case: Manzano v. CA

Manzano filed with the PPO an action for thecancellation of Letters Patent registered to

Madolaria who subsequently assigned the letters

patent to United Foundry. Manzano alleged that the

utility model covered by the letters patent (an LPG gas


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burner) was not inventive, new, or useful, and that

Madolaria was not the original, true and actual

inventor, nor did she derive her rights from the

original, true and actual inventor of the utility model

covered by the letters patent.

In defense, Rolando Madolaria, general supervisor of

United Foundry, testified and said that it was private

respondent who discovered the solutions to thedefects of earlier models of burners.

HELD: The element of novelty is an essential

requisite of the patentability of an invention or

discovery. If a device or process has been known or

used by others prior to its invention or discovery by

the applicant, an application for a patent therefor

should be denied; and if the application has been

granted, the court, in a judicial proceeding in which

the validity of the patent is drawn in question, will

hold it void and ineffective. It has been repeatedlyheld that an invention must possess the essential

elements of novelty, originality and precedence; and

for the patentee to be entitled to the protection, the

invention must be new to the world.

In issuing the letters patent to Madolaria for an LPG

Burner on 22 July 1981, the Philippine Patent Office

found her invention novel and patentable. The

issuance of such patent creates a presumption which

yields only to clear and cogent evidence that the

patentee was the original and first inventor. Theburden of proving want of novelty is on him who

avers it and the burden is a heavy one which is met

only by clear and satisfactory proof which overcomes

every reasonable doubt. Hence, a utility model shall

not be considered new if before the application for

a patent it has been publicly known or publicly used

in this country or has been described in a printed

publication or publications circulated within the

country, or if it is substantially similar to any other

utility model so known, used or described within the

country.

Trademark, copyright and patents are different

intellectual property rights that cannot be

interchanged with one another.

A trademark is any visible sign capable of

distinguishing the goods or services of an enterprise

and shall include a stamped or marked container of

goods.

The scope of a copyright is confined to literary andartistic works which are original intellectual

creations in the literary and artistic domain.

Patentable inventions refer to any technical solution

of a problem in any field of human activity which is

new, involves an inventive step and is industrially

applicable.

Patent application

A patent application consists of the following parts:

1. Application2. Appointment of agent or representative3. Request4. Disclosure and description of the invention5. Claims6. Abstract7. Information concerning corresponding foreign

application for patents

Sec. 32. The Application.

32.1. The patent application shall be in

Filipino or English and shall contain thefollowing:

(a) A request for the grant of a

patent;

(b) A description of the invention;

(c) Drawings necessary for the

understanding of the invention;

(d) One or more claims; and

(e) An abstract.

32.2. No patent may be granted unless the

application identifies the inventor. If the

applicant is not the inventor, the Office mayrequire him to submit said authority. (Sec.

13, RA 165a)

Sec. 34. The Request. - The request shall contain a

petition for the grant of the patent, the name and

other data of the applicant, the inventor and the

agent and the title of the invention.

1. Application. File with Bureau of Patents of theIntellectual Property Office

2. Request for PatentSec. 34. The Request. - The request shall contain a

petition for the grant of the patent, the name and

other data of the applicant, the inventor and the

agent and the title of the invention. (n)

a. We need to know the inventor toknow who well be giving the

protection to. (CEC)

b. Inventor may not necessarily be theowner.

c. If the owner is a non-residentapplicant, the application form must

include the name and address of the

resident agent.


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3. Description of the inventionSec. 35. Disclosure and Description of the

Invention.

35.1. Disclosure. - 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.

Where the application concerns amicrobiological process or the product

thereof and involves the use of a micro-

organism which cannot be sufficiently

disclosed in the application in such a way as

to enable the invention to be carried out by a

person skilled in the art, and such material is

not available to the public, the application

shall be supplemented by a deposit of such

material with an international depository

institution.

35.2. Description. - The Regulations shall

prescribe the contents of the description and

the order of presentation.

a. Clear and completeb. Sec. 35 requires that the disclosure

must be sufficient so that a person

skilled in the art may be able to

replicate the invention by following

the process.

4. ClaimsSec. 36. The Claims. -

36.1. 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.

36.2. The Regulations shall prescribe the

manner of the presentation of claims. (n)

a. This is the most important part of thepatent application. It is the matter of

legal protection. (CEC)

b. Matter sought to be protected withthe patent

c. We follow the EUROPEAN STYLE ofclaims in the PH

d. Strategy:i. Put ancillary claims so that if

someone copies claim 1 and

makes an improvement, it

would be considered part ofthe ancillary claims.

ii. The IPO, however, will notallow claims that are too

general.

Case: Oriley v. Morse

The 8thclaim includes the use of the motivepower of the electric or galvanic current...

however developed for marking or printing

intelligible characters, signs, or letters, at any

distance...

o The claim is vague.o The extent of the claim is also too

broad.

A claim is the metes andbounds of the invention.

(CEC)

The rule in drafting claims is that it cannot betoo broad or too narrow. (CEC)

o Cannot be too broad that it wouldencompass everything.

It would foreclose futureinventions relating to thespecific invention.

o Cannot be too narrow because theprotection would be too limited.

The goal is to make the claims as broad aspossible; the claims dictate the legal

protection.

Rejecting broad claims

Sec. 38. Unity of Invention.

38.1. The application shall relate to oneinvention only or to a group of inventions

forming a single general inventive concept.

38.2. If several independent inventions

which do not form a single general inventive

concept are claimed in one application, the

Director may require that the application be

restricted to a single invention. 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 later application is filedwithin four (4) months after the requirement

to divide becomes final, or within such

additional time, not exceeding four (4)

months, as may be granted: Provided

further, That each divisional application shall

not go beyond the disclosure in the initial

application.

38.3. The fact that a patent has been granted

on an application that did not comply with

the requirement of unity of invention shall

not be a ground to cancel the patent. (Sec.17, R. A. No. 165a)


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Sec. 38 talks about unity of invention.

The patent application should only cover oneinventive concept.

However, a single patent application mayinvolve multiple inventions when there is a

group of closely related inventions

o Ex. Foldable chandelier to save space.o It involves several patents for the

foldable arm, the spring mechanism.o Although there are several

inventions/ patents, they still form

part of one inventive concept.

Is it possible that an application has 2inventive concepts? YES.

But the law requires that the applicant has adivisional application. IN other words, the

applicant has to file a separate patent

application.

Sec. 37. The Abstract. - The abstract shall consist of aconcise summary of the disclosure of the invention

as contained in the description, claims and drawings

in preferably not more than one hundred fifty (150)

words. It must be drafted in a way which allows the

clear understanding of the technical problem, the

gist of the solution of that problem through the

invention, and the principal use or uses of the

invention. The abstract shall merely serve for

technical information. (n)

Procedure for grant of patent

1. Filing dateSec. 40. Filing Date Requirements.

40.1. The filing date of a patent application

shall be the date of receipt by the Office of at

least the following elements:

(a) An express or implicit indication that a

Philippine patent is sought;

(b) Information identifying the applicant; and(c) Description of the invention and one (1)

or more claims in Filipino or English.

40.2. If any of these elements is not

submitted within the period set by the

Regulations, the application shall be

considered withdrawn. (n)

Sec. 41. According a Filing Date. - The Office shall

examine whether the patent application satisfies the

requirements for the grant of date of filing asprovided in Section 40 hereof. If the date of filing

cannot be accorded, the applicant shall be given an

opportunity to correct the deficiencies in accordance

with the implementing Regulations. If the application

does not contain all the elements indicated in

Section 40, the filing date should be that date when

all the elements are received. If the deficiencies are

not remedied within the prescribed time limit, the

application shall be considered withdrawn. (n)

2. Formality ExaminationSec. 42. Formality Examination. -

42.1. After the patent application has been

accorded a filing date and the required fees

have been paid on time in accordance with

the Regulations, the applicant shall comply

with the formal requirements specified by

Section 32 and the Regulations within the

prescribed period, otherwise the application

shall be considered withdrawn.

42.2. The Regulations shall determine the

procedure for the re-examination and revival

of an application as well as the appeal to theDirector of Patents from any final action by

the examiner. (Sec. 16, R. A. No. 165a)

a. They will look at the compliance ofthe form and not the substance or

content is examined.

3. Prior Art SearchSec. 43. Classification and Search. - An application

that has complied with the formal requirement shall

be classified and a search conducted to determinethe prior art. (n)

a. Who conducts this prior search?i. The IPO conducts this search

for a certain fee.

b. What if you have something incommon with a prior art?

i. You will have to argue thatyours is different. That is why

you need to make a search

before you file.4. Publication

Sec. 44. Publication of Patent Application. -

44.1. The patent application shall be

published in the IPO Gazette together with a

search document established by or on behalf

of the Office citing any documents that

reflect prior art, after the expiration of

eighteen (18) months from the filing date or

priority date.

44.2. After publication of a patentapplication, any interested party may inspect

the application documents filed with the

Office.

44.3. The Director General, subject to the


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approval of the Secretary of Trade and

Industry, may prohibit or restrict the

publication of an application, if in his

opinion, to do so would be prejudicial to the

national security and interests of the

Republic of the Philippines. (n)

a. The publication must be within 18months between the filing and thepublication

b. After such time, the IP office will giveyou another letter informing you that

they have published your application.

They are published in the IPO gazette.

c. After 6 months from publication, youwill have to write the IP office and

request for substantive examination.

Otherwise, your application will be

deemed withdrawn.

d. What is the importance of publication It gives notice to the world

regarding the patent being applied for

and the inventor is being protected

with regard to infringement should

the patent be granted later on.

5. InspectionSec. 45. Confidentiality Before Publication. A

patent application, which has not yet been

published, and all related documents, shall not bemade available for inspection without the consent of

the applicant.

Sec. 44.2. After publication of a patent application,

any interested party may inspect the application

documents filed with the Office.

Sec. 47. Observation by Third Parties. - Following the

publication of the patent application, any person

may present observations in writing concerning the

patentability of the invention. Such observationsshall be communicated to the applicant who may

comment on them. The Office shall acknowledge and

put such observations and comment in the file of the

application to which it relates.

6. Request for substantive examinationSec. 48. Request for Substantive Examination.

48.1. The application shall be deemed

withdrawn unless within six (6) months from

the date of publication under Section 41, awritten request to 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 time. 48.2.

Withdrawal of the request for examination

shall be irrevocable and shall not authorize

the refund of any fee.

SEC. 49. Amendment of Application. An applicant

may amend the patent application during

examination: Provided, That such amendment shall

not include new matter outside the scope of the

disclosure contained in the application as filed.

7. Grant or refusal of applicationSec. 50. Grant of Patent.

50.1. If the application meets the

requirements of this Act, the Office shall

grant the patent: Provided, That all the fees

are paid on time.

50.2. If the required fees for grant and

printing are not paid in due time, the

application shall be deemed to bewithdrawn.

50.3. A patent shall take effect on the date of

the publication of the grant of the patent in

the IPO Gazette. (Sec. 18, RA 165a)

Sec. 51. Refusal of the Application.

51.1. The final order of refusal of the

examiner to grant the patent shall be

appealable to the Director in accordance

with this Act.

51.2. The Regulations shall provide for theprocedure by which an appeal from the order

of refusal from the Director shall be

undertaken.

8. Publication of the grant of patentSec. 52. Publication Upon Grant of Patent.

52.1. The grant of the patent together with

other related information shall be published

in the IPO Gazette within the time prescribed

by the Regulations.52.2. Any interested party may inspect the

complete description, claims, and drawings

of the patent on file with the Office. (Sec. 18,

RA 165a)

Case: Diamond v. Chakrabarty issue on the

patentability of microorganisms

Chakrabarty genetically-engineered a bacteriathat eats the different components of oil. He

applied for the patent of the ff:o Method for producing the bacteriao Compositiono The bacteria


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USPTO first 2 allowed; the 3rd claim wasdenied. Natural phenomenon cannot be

patented.

ISSUE: WON microorganisms are patentablesubject matter?

Who determines patentable subject mattero SC said it is up to the Congress to

decide. The duty of the court is simply

to interpret what the law means.

SC held that there was human intervention onthe part of Chakrabarty when he

manufactured the bacteria.

Invention there must be some form of human

intervention. (CEC)

Arguments raised:

1. Bacteria are not patentable under patent law.Living things are generally not patentable. But

Congress made an exception in the PPA.a. SC the special laws focuses on plant

varieties. With their enactment, they

are protecting the patentability of

plants. Thus, if plants can be

patented, why not microorganisms?

b. By enacting the 2 special laws onplant protection, the Congress already

delineated living and non-living

things. The distinction lies in WON

there is man-made intervention.

c. Manufacture or composition ofmatter does not include genetically

altered organisms.

Copyright v. Patent

COPYRIGHT PATENT

Prohibits photocopying,

selling, or distributing the

material.

Prohibits unauthorized

production of patented

material.

No protection for reading

or constructing based onwhat was copyrighted.

Protects the expression of

the idea.

Protects the idea itself.

What if the inventor discloses to a 3rd

party before

filing the application, but in confidence? Does that

form part prior art?

If such disclosure is done in confidence, itdoes not form part of prior art.

Internet publications are just like any otherwritten publication.

What if the disclosure came from a fictional story?

The disclosure needs to be substantial/detailed in such manner that a person skilled

in the art will be able to create the thing

based on the details disclosed in the fictional

story. (CEC)

See Donald Duck storyCancellation of patents and substitution of patentee

Sec. 61. Cancellation of Patents.

61.1. Any interested person may, upon

payment of the required fee, petition to

cancel the patent or any claim thereof, or

parts of the claim, on any of the following

grounds: (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 inthe art; or (c) That the patent is contrary to

public order or morality.

61.2. Where the grounds for cancellation

relate to some of the claims or parts of the

claim, cancellation may be effected to such

extent only. (Secs. 28 and 29, RA 165a)

Grounds for cancellation of patents

Not new or patentable Does not disclose the invention in a manner

sufficiently clear and complete for it to be

carried out by a person skilled in the art

Contrary to public order or moralityThe issue is not only patentability, but also disclosure

(how the claims were drafted).

Verified petition petitioner personally verified and

signed the petition under oath

Sec. 62. Requirement of the Petition. - The petitionfor cancellation shall be in writing, verified by the

petitioner or by any person in his behalf who knows

the facts, specify the grounds upon which it is based,

include a statement of the facts to be relied upon,

and filed with the Office. Copies of printed

publications or of patents of other countries, and

other supporting documents mentioned in the

petition shall be attached thereto, together with the

translation thereof in English, if not in English

language. (Sec. 30, RA 165)

Sec. 63. Notice of Hearing. - Upon filing of a petition

for cancellation, the Director of Legal Affairs shall

forthwith serve notice of the filing thereof upon the


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patentee and all persons having grants or licenses, or

any other right, title or interest in and to the patent

and the invention covered thereby, as appears of

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. (Sec. 31, RA 165a)

Effect of revocation

Sec. 66. Effect of Cancellation of Patent or Claim. -

The rights conferred by the patent or any specified

claim or claims cancelled shall terminate. Notice of

the cancellation shall be published in the IPO

Gazette. Unless restrained by the Director General,

the decision or order to cancel by Director of Legal

Affairs shall be immediately executory even pending

appeal. (Sec. 32, RA 165a)

The rights conferred by the patent shallterminate.

Does not mention anything aboutretroactivity.

A patent can be cancelled in part or in whole.Remedies of a person with a right to a patent

Sec. 67. Patent Application by Persons Not Having

the Right to a Patent. -

67.1. 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 person may, within three (3)

months after the decision has become final:

(a) Prosecute the application as his own

application in place of the applicant;

(b) File a new patent application in respect of

the same invention;

(c) Request that the application be refused;

or(d) Seek cancellation of the patent, if one has

already been issued.

67.2. The provisions of Subsection 38.2 shall apply

mutatis mutandis to a new application filed under

Subsection 67.1(b). (n)

Sec. 68. Remedies of the True and Actual Inventor. -

If a person, who was deprived of the patent 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 aspatentee, 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. (Sec. 33, R. A. No. 165a)

Sec. 69. Publication of the Court Order. - The court

shall furnish the Office a copy of the order or

decision referred to in Sections 67 and 68, which

shall be published in the IPO Gazette within three (3)

months from the date such order or decision became

final and executory, and shall be recorded in the

register of the Office. (n)

Sec. 70. Time to File Action in Court. - 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 and 51, respectively. (n)

Rights of patentee and infringement of patents

Sec. 71. Rights Conferred by Patent. -

71.1. A patent shall confer on its owner the

following exclusive rights:(a) Where the subject matter of a

patent is a product, to restrain,

prohibit and prevent any

unauthorized person or entity from

making, using, offering for sale,

selling or importing that product;

(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,dealing in, using, selling or offering

for sale, or importing any product

obtained directly or indirectly from

such process.

71.2. Patent owners shall also have the right

to assign, or transfer by succession the

patent, and to conclude licensing contracts

for the same. (Sec. 37, RA 165a)

Infringement of patents

Sec. 76. Civil Action for Infringement. -

76.1. 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.

76.2. Any patentee, or anyone possessing

any right, title or interest in and to the

patented invention, whose rights have been

infringed, may bring a civil action before acourt of competent jurisdiction, to recover

from the infringer such damages sustained

thereby, plus attorneys fees and other

expenses of litigation, and to secure an


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injunction for the protection of his rights.

76.3. If the damages are inadequate or

cannot be readily ascertained with

reasonable certainty, the court may award

by way of damages a sum equivalent to

reasonable royalty.

76.4. The court may, according to the

circumstances of the case, award damages in

a sum above the amount found as actualdamages sustained: Provided, That the

award does not exceed three (3) times the

amount of such actual damages.

76.5. 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.

76.6. Anyone who actively induces the

infringement of a patent or provides theinfringer with a component of a patented

product or of a product produced because of

a patented process knowing it to be

especially adopted for infringing the

patented invention and not suitable for

substantial non-infringing use shall be liable

as a contributory infringer and shall be

jointly and severally liable with the infringer.

(Sec. 42, R. A. No. 165a)

Sec. 77. Infringement Action by a Foreign National. -Any foreign national or juridical entity who meets

the requirements of 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 for infringement of patent, whether or not

it is licensed to do business in the Philippines under

existing law. (Sec. 41-A, R. A. No. 165a)

Sec. 78. Process Patents; Burden of Proof. - If the

subject matter of a patent is a process for obtaining a

product, any identical product shall be presumed tohave been obtained through the use of the patented

process if the product is new or there is substantial

likelihood that the identical product was made by

the process and the owner of the patent has been

unable despite reasonable efforts, to determine the

process actually used. In ordering the defendant to

prove that the process to obtain the identical

product is different from the patented process, the

court shall adopt measures to protect, as far as

practicable, his manufacturing and business secrets.

(n)

Sec. 79. Limitation of Action for Damages. - No

damages can be recovered for acts of infringement

committed more than four (4) years before the

institution of the action for infringement. (Sec. 43, R.

A. No. 165)

Sec. 80. Damages; Requirement of Notice. - Damages

cannot be recovered for acts of infringement

committed before the infringer had known; or had

reasonable grounds to know of the patent. It is

presumed that the infringer had known of the patent

if on the patented product, or on the container orpackage in which the article is supplied to the public,

or on the advertising material relating to the

patented product or process, are placed the words

"Philippine Patent" with the number of the patent.

(Sec. 44, R. A. No. 165a)

Sec. 81. Defenses in Action for Infringement. - In an

action for infringement, the defendant, in addition to

other defenses available to him, may show the

invalidity of the patent, or any claim thereof, on any

of the grounds on which a petition of cancellationcan be brought under Section 61 hereof. (Sec. 45, R.

A. No. 165)

Sec. 82. Patent Found Invalid May be Cancelled. - In

an action for infringement, if the court shall find the

patent or any claim to be invalid, it shall cancel the

same, and the Director of Legal Affairs upon receipt

of the final judgment of cancellation by the court,

shall record that fact in the register of the Office and

shall publish a notice to that effect in the IPO

Gazette. (Sec. 46, R. A. No. 165a)

Sec. 83. Assessor in Infringement Action. -

83.1. Two (2) or more assessors may be

appointed by the court. The assessors shall

be possessed of the necessary scientific and

technical knowledge required by the subject

matter in litigation. Either party may

challenge the fitness of any assessor

proposed for appointment.

83.2. Each assessor shall receive a

compensation in an amount to be fixed bythe court and advanced by the complaining

party, which shall be awarded as part of his

costs should he prevail in the action. (Sec. 47,

R. A. No. 165a)

Sec. 84. 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, becriminally liable therefor 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


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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

prescribed in three (3) years from date of the

commission of the crime. (Sec. 48, R. A. No. 165a)

Limitations of rights of patentee

Sec. 72. Limitations of Patent Rights. - The owner of apatent has no right to prevent third parties from

performing, without his authorization, the acts

referred to in Section 71 hereof in the following

circumstances:

72.1 Using a patented product which has

been put on the market in the Philippines by

the owner of the product, or with his express

consent, insofar as such use is performed

after that product has been so put on the

said market;

72.2. Where the act is done privately and ona non-commercial scale or for a non-

commercial purpose: Provided, That it does

not significantly prejudice the economic

interests of the owner of the patent;

72.3. Where the act consists of making or

using exclusively for the purpose of

experiments that relate to the subject matter

of the patented invention;

72.4. Where the act consists of the

preparation for individual cases, in a

pharmacy or by a medical professional, of amedicine in accordance with a medical

prescription or acts concerning the medicine

so prepared;

72.5. 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 withinthe Philippines. (Secs. 38 and 39, R. A. No.

165a)

Sec. 73. Prior User. -

73.1. Notwithstanding Section 72 hereof, any

prior user, who, in good faith was using the

invention or has undertaken serious

preparations to use the invention in his

enterprise or business, before the filing date

or priority date of the application on which a

patent is granted, shall have the right tocontinue the use thereof as envisaged in such

preparations within the territory where the

patent produces its effect.

73.2. 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 which the use or

preparations for use have been made. (Sec.

40, R. A. No. 165a)

Sec. 74. Use of Invention by Government. -

74.1. A Government agency or third person

authorized by the Government may exploitthe 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.

74.2. The use by the Government, or third

person authorized by the Government shall

be subject, mutatis mutandis, to the

conditions set forth in Sections 95 to 97 and

100 to 102. (Sec. 41, R. A. No. 165a)

Sec. 75. Extent of Protection and Interpretation of

Claims. -

75.1. The extent of protection conferred by

the patent shall be determined by the claims,which are to be interpreted in the light of the

description and drawings.

75.2. For the purpose of determining the

extent of protection conferred by the patent,

due account shall be taken of elements

which are equivalent to the elements

expressed in the claims, so that a claim shall

be considered to cover not only all the

elements as expressed therein, but also

equivalents. (n)

Case: Pearl and Dean v. Shoemart

Pearl and Dean is a corporation in the manufacture of

advertising display units also known as light boxes,

which were manufactured by Metro Industrial

Services. A copyright Registration was obtained in

1981. These were marketed in the name of "Poster

Ads". They also applied for a registration of trademark

with the Bureau of Patents in 1983, but were only

approved in 1988.

In 1985, petitioner had an agreement with respondent

Shoemart Inc. (SMI) to install these light boxes in their

Makati and Cubao branch; only the Makati branch

was able to sign the agreement. In 1986, the contract


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was rescinded unilaterally by SMI, and instead

contracted with Metro Industrial Services. They

installed these light boxes in different SM city

branches, including Cubao and Makati, in association

with North Edsa Marketing Inc (NEMI), SMI's sister

company.

Petitioner requested SMI and NEMI to put down their

installations of the light boxes, and payment ofcompensatory damages worth P20M. Claiming that

respondents failed to comply, they filed a case for

infringement of trademark and copyright, unfair

competition and damages. RTC ruled in favor of

petitioner, but CA reversed.

Issue/ Held: NO to all.

1. Whether there was a copyright infringementCopyright is a statutory right, subject to the terms and

conditions specified in the statute. Therefore, it can

only cover the works falling within the statutoryenumeration or description. Since the copyright was

classified under class "O" works, which includes

"prints, pictorial illustrations, advertising copies,

labels, tags and box wraps," and does not include the

light box itself. A light box, even admitted by the

president of petitioner company, was neither a

literary nor an artistic work but an engineering or

marketing invention, thus not included under a

copyright.

2. Whether there was a patent infringementPetitioner was not able to secure a patent for its light

boxes, and cannot legally prevent anyone from

manufacturing or commercially using the same.

Patent has a three-fold purpose:

a. To foster and reward inventionb. To promote the disclosure of an invention and

permit public to use the same upon expiration

c. To ensure in the public domain remain therefor free use of the public.

Since petitioner was not able to go through suchexamination, it cannot exclude others from

manufacturing, or selling such light boxes. No

patent, no protection.

3. Whether there was a trademarkinfringement

The certificate of registration issued by the Director of

Patents gives exclusive right to use its own symbol

only to the description specified in the certificate. It

cannot prevent others to use the same trademark

with a different description.

Poster ads is a general term that cannot be

associated specifically to Pearl and Dean, thus it

cannot be considered to use such term to be unfair

competition against the petitioner. (CEC)

4. Whether there was unfair competition"Poster Ads" is a general term that cannot be

associated specifically to Pearl and Dean, thus it

cannot be considered to use such term to be unfair

competition against the petitioner.

The SC also made the following distinctions for patent,

copyright, and trademark

Patent technical solutiono Exclusivity of 20 yearso Minimum protection under TRIPS

Copyright work of arto There is no need for registration.

There is no need to register to have

protection. (CEC)

Trademark visible sign of goods and servicesVoluntary Licensing

Sec. 85. Voluntary License Contract. - To encourage

the transfer and dissemination of technology,

prevent or control practices and conditions that may

in particular cases constitute an abuse of intellectual

property rights having an adverse effect on

competition and trade, all technology transfer

arrangements shall comply with the provisions of

this Chapter. (n)

Sec. 86. Jurisdiction to Settle Disputes on Royalties. -

The Director of the Documentation, Information and

Technology Transfer Bureau shall exercise quasi-

judicial jurisdiction in the settlement of disputes

between parties to a technology transfer

arrangement arising from technology transfer

payments, including the fixing of appropriate

amount or rate of royalty. (n)

Sec. 87. Prohibited Clauses. - Except in cases under

Section 91, the following provisions shall be deemedprima facie to have an adverse on competition and

trade:

87.1. Those which impose upon the licensee

the obligation to acquire from a specific

source capital goods, intermediate products,

raw materials, and other technologies, or of

permanently employing personnel indicated

by the licensor;

87.2. Those pursuant to which the licensor

reserves the right to fix the sale or resale

prices of the products manufactured on thebasis of the license;

87.3. Those that contain restrictions

regarding the volume and structure of

production;


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87.4 Those that prohibit the use of

competitive technologies in a non-exclusive

technology transfer agreement;

87.5. Those that establish a full or partial

purchase option in favor of the licensor;

87.6. Those that obligate the licensee to

transfer for free to the licensor the

inventions or improvements that may be

obtained through the use of the licensedtechnology;

87.7. Those that require payment of royalties

to the owners of patents for patents which

are not used;

87.8. Those that prohibit the licensee to

export the licensed product unless justified

for the protection of the legitimate interest

of the licensor such as exports to countries

where exclusive licenses to manufacture

and/or distribute the licensed product(s)

have already been granted;87.9. Those which restrict the use of the

technology supplied after the expiration of

the technology transfer arrangement, except

in cases of early termination of the

technology transfer arrangement due to

reason(s) attributable to the licensee;

87.10. Those which require payments for

patents and other industrial property rights

after their expiration, termination

arrangement;

87.11. Those which require that thetechnology recipient shall not contest the

validity of any of the patents of the

technology supplier;

87.12. Those which restrict the research and

development activities of the licensee

designed to absorb and adapt the transferred

technology to local conditions or to initiate

research and development programs in

connection with new products, processes or

equipment;

87.13. Those which prevent the licensee fromadapting the imported technology to local

conditions, or introducing innovation to it, as

long as it does not impair the quality

standards prescribed by the licensor;

87.14. Those which exempt the licensor for

liability for non-fulfillment of his

responsibilities under the technology

transfer arrangement and/or liability arising

from third party suits brought about by the

use of the licensed product or the licensed

technology; and87.15. Other clauses with equivalent effects.

(Sec. 33-C[2], R. A. 165a)

Sec. 88. Mandatory Provisions. - The following

provisions shall be included in voluntary license

contracts:

88.1. That the laws of the Philippines shall

govern the interpretation of the same and in

the event of litigation, the venue shall be the

proper court in the place where the licensee

has its principal office;

88.2. Continued access to improvements in

techniques and processes related to thetechnology shall be made available during

the period of the technology transfer

arrangement;

88.3. In the event the technology transfer

arrangement shall provide for arbitration,

the Procedure of Arbitration of the

Arbitration Law of the Philippines or the

Arbitration Rules of the United Nations

Commission on International Trade Law

(UNCITRAL) or the Rules of Conciliation and

Arbitration of the International Chamber ofCommerce (ICC) shall apply and the venue of

arbitration shall be the Philippines or any

neutral country; and

88.4. The Philippine taxes on all payments

relating to the technology transfer

arrangement shall be borne by the licensor.

(n)

Sec. 89. Rights of Licensor. - In the absence of any

provision to the contrary in the technology transfer

arrangement, the grant of a license shall not preventthe licensor from granting further licenses to third

person nor from exploiting the subject matter of the

technology transfer arrangement himself. (Sec. 33-B,

R. A. 165a)

Sec. 90. Rights of Licensee. - The licensee shall be

entitled to exploit the subject matter of the

technology transfer arrangement during the whole

term of the technology transfer arrangement. (Sec.

33-C (1), R. A. 165a)

Sec. 91. Exceptional Cases. - In exceptional or

meritorious cases where substantial benefits will

accrue to the economy, such as high technology

content, increase in foreign exchange earnings,

employment generation, regional dispersal of

industries and/or substitution with or use of local

raw materials, or in the case of Board of

Investments, registered companies with pioneer

status, exemption from any of the above

requirements may be allowed by the

Documentation, Information and TechnologyTransfer Bureau after evaluation thereof on a case by

case basis. (n)

Sec. 92. Non-Registration with the Documentation,


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Information and Technology Transfer Bureau. -

Technology transfer arrangements that conform with

the provisions of Sections 86 and 87 need not be

registered with the Documentation, Information and

Technology Transfer Bureau. Non-conformance with

any of the provisions of Sections 87 and 88, however,

shall automatically render the technology transfer

arrangement unenforceable, unless said technology

transfer arrangement is approved and registeredwith the Documentation, Information and

Technology Transfer Bureau under the provisions of

Section 91 on exceptional cases. (n)

Licensing is allowing another person to use a patented

product. There are 2 kinds:

Voluntary parties are allowed to enter intosuch as long as they follow the mandatory

provisions and not put therein prohibited

provisions.

Compulsory government compels, undercertain situations, the patent holder to give

licenses. This is usually one for emergency

situations.

Compulsory Licensing

Sec. 93. Grounds for Compulsory Licensing. The

Director of Legal Affairs may grant a license to

exploit a patented invention, even without the

agreement of the patent owner, in favor of any

person who has shown his capability to exploit theinvention, under any of the following circumstances:

93.1. National emergency or other

circumstances of extreme urgency;

93.2. Where the public interest, in particular,

national security, nutrition, health or the

development of other vital sectors of the

national economy as determined by the

appropriate agency of the Government, so

requires; or

93.3. Where a judicial or administrative body

has determined that the manner ofexploitation by the owner of the patent or

his licensee is anti-competitive; or

93.4. In case of public non-commercial use of

the patent by the patentee, without

satisfactory reason;

93.5. If the patented invention is not being

worked in the Philippines on a commercial

scale, although capable of being worked,

without satisfactory reason: Provided, That

the importation of the patented article shall

constitute working or using the patent. (Secs.34, 34-A, and 34-B, RA 165a)

Sec. 97. Compulsory License Based on

Interdependence of Patents. - If the invention

protected by a patent, hereafter referred to as the

"second patent," within the country cannot be

worked without infringing another patent, hereafter

referred to as the "first patent," granted on a prior

application or benefiting from an earlier priority, a

compulsory license may be granted to the owner of

the second patent to the extent necessary for the

working of his invention, subject to the following

conditions:97.1. The invention claimed in the second

patent involves an important technical

advance of considerable economic

significance in relation to the first patent;

97.2. The owner of the first patent shall be

entitled to a cross-license on reasonable

terms.

If public welfare requires it, the state can step in

(March in rights) and compel the inventor to license

it to third parties. Ex. Public health March in rights is similar to police power.

o Third parties still have to pay for thecompulsory licenses. The duration of

the licenses would depend on the

emergency situation.

Assignment and transmission of rights

Sec. 104. Assignment of Inventions. An assignment

may be of the entire right, title or interest in and tothe patent and the invention covered thereby, or of

an undivided share of the entire patent and

invention, in which event the parties become joint

owners thereof. An assignment may be limited to a

specified territory. (Sec. 51, RA 165)

Sec. 105. Form of Assignment. - The assignment must

be in writing, acknowledged before a notary public

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 officer.(Sec. 52, RA 165)

Sec. 106. Recording.

106.1. The Office shall record assignments,

licenses and other instruments relating to

the transmission of any right, title or interest

in and to inventions, and patents or

application for patents or inventions to

which they relate, which are presented in

due form to the Office for registration, in

books and records kept for the purpose. Theoriginal documents together with a signed

duplicate thereof shall be filed, and the

contents thereof should be kept confidential.

If the original is not available, an


17/17


authenticated copy thereof in duplicate may

be filed. Upon recording, the Office shall

retain the duplicate, return the original or

the authenticated copy to the party who

filed the same and notice of the recording

shall be published in the IPO Gazette.

106.2. Such instruments shall be void as

against any subsequent purchaser or

mortgagee for valuable consideration andwithout notice, unless, it is so recorded in

the Office, within three (3) months from the

date of said instrument, or prior to the

subsequent purchase or mortgage. (Sec. 53,

RA 165a)

Registration of Utility Models

Sec. 109.1 (a) An invention qualifies for registration

as a utility model if it is new and industrially

applicable.

(b) Section 21, "Patentable Inventions", shall apply

except the reference to inventive step as a condition

of protection.

Utility models must have a technical function in the

mechanical field. It is not necessarily really

groundbreaking, but they still make our lives easier.

(CEC)

Patent v. Utility Model (petty patents)

PATENT UTILITY MODEL

The invention which has

novel, inventive step and

industrial application can

be protected.

The invention which has

mainly novelty, but less or

absent in inventive step

can be protected.

In other words, it does

not require an inventive

step. (CEC)

All new invention or

substantial improvement

invention can be

protected.

All marginal improvement

invention can be

protected.

The term of protection is

20 years from the date of

filing.

The term of protection is

between 7 and 10 years

from the date of filing.

The cost to obtain and

maintain the patent is

expensive.

The cost to obtain and

maintain the utility model

is cheaper.

It requires substantive

examination of patent

application to validate

patentability.

It does not require

substantive examination

procedure, as it does not

require inventive step.

Longer time [2 to 5 To obtain Utility model

years] is required to

obtain a patent.

protection, it requires

only less time in the range

of 6 months to 1 year.

Patent protection is

actively used

Utility model protection is

less actively used.

Conversion of patent in

to utility model is always

possible.

Conversion of utility

model in to a patent is

possible under certain

circumstances.

Formal and substantial

examination

Formal examination only.

Lay-out designs (topographies) of integrated circuits

(As amended by RA 9150, August 2001)

Sec. 112.2 Integrated Circuit means a product, in its

final form, or an intermediate form, in which the

elements, at least one of which is an active element

and some or all of the interconnections are integrally

formed in and/or on a piece of material, and which is

intended to perform an electronic function; and

Sec. 112.3 Layout-Design is synonymous with

'Topography' and means the three-dimensional

disposition, however expressed, of the elements, at

least one of which is an active element, and of some

or all of the interconnections of an integrated circuit,

or such a three-dimensional disposition prepared for

an integrated circuit intended for manufacture.

Layout designs or industrial designs pertain to

something which is ornamental.

For aesthetic purposes or appearance It makes the product more attractive.

Elements of an industrial design

1. It must be new2. It must be original

As compared to utility models, which are more into

the function of the invention, an industrial design is all

about the appearance of the product. In other words,

once the design already deals with a technical

function, it will be considered as a utility model.

Industrial designs are strictly focused on the

aesthetics of the thing. (CEC)

Term of protection

5 years Protection of industrial designs may be

renewed twice for an additional 5 years for

each renewal.

In other words, the total term of protectionfor industrial designs is 15 years.

Date post:	06-Apr-2018
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