INTELLECTUAL PROPERTY LAW
Ateneo de Davao University | College of Law
Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
RA 8293
Intellectual Property
Code of the Philippines
of the State to streamline administrative procedures of registering
patents, trademarks and copyright, to liberalize the registration on the
transfer of technology, and to enhance the enforcement of intellectual
property rights in the Philippines.
Declaration of State Policy
The State recognizes that an effective intellectual and industrial
property system:
1. Is vital to the development of domestic and creative
activity
2. Facilitates transfer of technology
3. Attracts foreign investments, and
4. Ensures market access for our products.
NOVEMBER 15, 2018 | Transcribed by: Reginald Matt
Santiago
RA 8293 [January 1, 1998] as amended by
RA 9502 [June 6, 2008] or the Cheaper Medicines Act
RA 10372 [July 2, 2012]
SECTION 239. Repeals. –
It 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 periods as provided in this Act. The use of
intellectual property bears a social function. To this end, the
State shall promote the diffusion of knowledge and information
for the promotion of national development and progress and
the common good.
239.1. All Acts and parts of Acts inconsistent herewith, more
particularly Republic Act No. 165, as amended; Republic Act No. 166,
as amended; and Articles 188 and 189 of the Revised Penal Code;
Presidential Decree No. 49, including Presidential Decree No. 285, as
amended, are hereby repealed.
239.2. Marks registered under Republic Act No. 166 shall remain in
force but shall be deemed to have been granted under this Act and
shall be due for renewal within the period provided for under this Act
and, upon renewal shall be reclassified in accordance with the
International Classification. Trade names and marks registered in the
Supplemental Register under Republic Act No. 166 shall remain in force
but shall no longer be subject to renewal.
It is also the policy of the State to
1. Streamline administrative procedures of registering
patents, trademarks and copyright,
2. To liberalize the registration on the transfer of
technology, and to
3. Enhance enforcement of intellectual property rights in
the Philippines.
239.3. The provisions of this Act shall apply to works in which copyright
protection obtained prior to the effectivity of this Act is subsisting:
Provided, That the application of this Act shall not result in the
diminution of such protection. (n)
SECTION 3. International Convention and Reciprocity. – Any
person who is a national or who is domiciled or has a real and
effective industrial establishment in a country which is a party to any
convention, treaty or agreement relating to intellectual property rights
or the repression of unfair competition, to which the Philippines is
also a party, or extends reciprocal rights to nationals of the
Philippines by law, shall be entitled to benefits to the extent
necessary to give effect to any provision of such convention, treaty or
reciprocal law, in addition to the rights to which any owner of an
intellectual property right is otherwise entitled by this Act.
RA 165 – Patent Law
RA 166 – Trademark Law
PD 49 and 285 – Decree on Intellectual Property
SECTION 241. Effectivity. This Act shall take effect on 1 January 1998.
It has no retroactive effect. It is prospective in nature.
Intellectual Creation
The product of mental labor embodied in writing or some other
material form. It is one of the original modes of acquiring
ownership.
Examples: Novels, poems, paintings, sculpture, etc.
Scope of Intellectual Property Rights
Any person who is
1. a national or
2. who is domiciled or
3. has a real and effective industrial establishment
in a country which
1. is a party to any convention, treaty or agreement
relating to intellectual property rights or the
repression of unfair competition, to which the
Philippines is also a party, or
2. extends reciprocal rights to nationals of the Philippines
by law
PART I – The Intellectual Property Office
SECTION 2. Declaration of State Policy. – The State recognizes
that an effective intellectual and industrial property system is vital to
the development of domestic and creative activity, facilitates transfer
of technology, attracts foreign investments, and ensures market access
for our products. It 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 periods as provided in this Act. The use of intellectual property
bears a social function. To this end, the State shall promote the
diffusion of knowledge and information for the promotion of national
development and progress and the common good. It is also the policy
shall be entitled:
1. to benefits to the extent necessary to give effect to
any provision of such convention, treaty or reciprocal
law, in addition to the rights to which any owner of an
1
INTELLECTUAL PROPERTY LAW
Ateneo de Davao University | College of Law
Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
intellectual property right is otherwise entitled by this
Act.
The intellectual property right becomes right if it is registered.
Intellectual property is different from the intellectual property
rights. Patents refer to inventions.
Comment: When it comes to foreign laws, hindi ganun kadali,
foreign laws have to pleaded and proven in the PH. This has to
do with international relationships. This foreigner can invoke
our laws plus foreign laws in other countries if there is
reciprocity and other treaties.
4.2 The term "technology transfer arrangements" refers to contracts
or agreements involving the transfer of systematic knowledge for the
manufacture of a product, the application of a process, or rendering of
a service including management contracts; and the transfer,
assignment or licensing of all forms of intellectual property rights,
including licensing of computer software except computer software
developed for mass market.
Paris Convention
We are all members of IP states, the PH has adhered to this
convention and therefore is member of union and this Article 2
is the same of Article 3 of our IPC, the idea is the same. All of
these treaties can be invoked in the PH, because we already
acceded to those treaties.
Technology Transfer Arrangements
refers to contracts or agreements involving
1. the transfer of systematic knowledge for the
manufacture of a product,
2. the application of a process, or rendering of a service
including management contracts; and the
3. transfer, assignment or licensing of all forms of
intellectual property rights, including licensing of
computer software except computer software
developed for mass market.
Cross References
1. Paris Convention for the Protection of Industrial
Property [1979]
2. TRIPS Agreement [1994]
3. Nice Classification [11th Edition]
PHILIP MORRIS v. CA 224 SCRA 576 (1993)
4.3. The term "Office" refers to the Intellectual Property Office created
by this Act.
Following universal acquiescence and comity, our municipal law
on trademarks regarding the requirement of actual use in the
Philippines must subordinate an international agreement
inasmuch as the apparent clash is being decided by a municipal
tribunal.
NOTE: The IPO replaced the Bureau, Patents, Trademarks, and
Technology Transfer. This IPO now has bureaus within.
4.4. The term "IPO Gazette" refers to the gazette published by the
Office under this Act.
Withal, the fact that international law has been made part of
the law of the land does not by any means imply the primacy
of international law over national law in the municipal sphere.
Under the doctrine of incorporation as applied in most
countries, rules of international law are given a standing equal,
not superior, to national legislative enactments.
SECTION 5. Functions of the Intellectual Property Office
(IPO). –
5.1. To administer and implement the State policies declared in this
Act, there is hereby created the Intellectual Property Office (IPO) which
shall have the following functions:
Comment: Under RA 166 you have to actual use, under the
convention no need, there is a clash, what shall prevail? It must
subordinate the convention to our laws. As to the issue of
actual use. You invoke these treaties if we do not have such
provisions to apply to certain situations. But if we have, since
the action was filed in PH, then we must follow our own laws.
But, this is already moot and academic for RA 8293
removed the requirement for actual use.
a) Examine applications for grant of letters patent for inventions and
register utility models and industrial designs;
b) Examine applications for the registration of marks, geographic
indication, integrated circuits;
c) Register technology transfer arrangements and settle disputes
involving technology transfer payments covered by the provisions of
Part II, Chapter IX on Voluntary Licensing and develop and implement
strategies to promote and facilitate technology transfer;
SECTION 4. Definitions. –
4.1. The term "intellectual property rights" consists of: a) Copyright
and Related Rights;
b) Trademarks and Service Marks;
c) Geographic Indications;
d) Industrial Designs;
e) Patents;
f) Layout-Designs (Topographies) of Integrated Circuits; and
g) Protection of Undisclosed Information
d) Promote the use of patent information as a tool for technology
development;
e) Publish regularly in its own publication the patents, marks, utility
models and industrial designs, issued and approved, and the
technology transfer arrangements registered;
f) Administratively adjudicate
intellectual property rights; and
2
contested
proceedings
affecting
INTELLECTUAL PROPERTY LAW
Ateneo de Davao University | College of Law
Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
communication of his work. The decisions of the Director General in
these cases shall be appealable to the Secretary of Trade and Industry.
g) Coordinate with other government agencies and the private sector
efforts to formulate and implement plans and policies to strengthen the
protection of intellectual property rights in the country.
7.2. Qualifications. - The Director General and the Deputies Director
General must be natural born citizens of the Philippines, at least thirtyfive (35) years of age on the day of their appointment, holders of a
college degree, and of proven competence, integrity, probity and
independence: Provided, That the Director General and at least one (1)
Deputy Director General shall be members of the Philippine Bar who
have engaged in the practice of law for at least ten (10) years: Provided
further, That in the selection of the Director General and the Deputies
Director General, consideration shall be given to such qualifications as
would result, as far as practicable, in the balanced representation in
the Directorate General of the various fields of intellectual property.
5.2. The Office shall have custody of all records, books, drawings,
specifications, documents, and other papers and things relating to
intellectual property rights applications filed with the Office.
SECTION 6. The Organization Structure of the IPO.
6.1. The Office shall be headed by a Director General who shall be
assisted by two (2) Deputies Director General.
6.2. The Office shall be divided into six (6) Bureaus, each of which
shall be headed by a Director and assisted by an Assistant Director.
These Bureaus are:
7.3. Term of Office. - The Director General and the Deputies Director
General shall be appointed by the President for a term of five (5) years
and shall be eligible for reappointment only once: Provided, That the
first Director General shall have a first term of seven (7) years.
Appointment to any vacancy shall be only for the unexpired term of the
predecessor.
a) The Bureau of Patents;
b) The Bureau of Trademarks;
c) The Bureau of Legal Affairs;
d) The Documentation, Information and Technology Transfer Bureau;
e) The Management Information System and EDP Bureau; and
(f) the Administrative, Financial and Personnel Services Bureau; and
(g) the Bureau of Copyright and Other Related Rights."
7.4. The Office of the Director General. - The Office of the Director
General shall consist of the Director General and the Deputies Director
General, their immediate staff and such Offices and Services that the
Director General will set up to support directly the Office of the Director
General.
6.3. The Director General, Deputies Director General, Directors and
Assistant Directors shall be appointed by the President, and the other
officers and employees of the Office by the Secretary of Trade and
Industry, conformably with and under the Civil Service Law.
Flow of Appeal
[1] DLA, DP, DT, DC&ORR

to the DG

to the CA

to the SC
SECTION 7. The Director General and Deputies Director
General.
7.1. Functions. - The Director General shall exercise the following
powers and functions:
I will go the Bureau of Trademarks, I will go the Examiner there
is a process there, I am denied, so where do I go? I go to the
Director of Trademark. If denied again, I will appeal to the
Director General. If denied again, I will appeal to the Court of
Appeals, and next obviously is the Supreme Court.
a) Manage and direct all functions and activities of the Office, including
the promulgation of rules and regulations to implement the objectives,
policies, plans, programs and projects of the Office: Provided, That in
the exercise of the authority to propose policies and standards in
relation to the following: (1) the effective, efficient, and economical
operations of the Office requiring statutory enactment; (2) coordination
with other agencies of government in relation to the enforcement of
intellectual property rights; (3) the recognition of attorneys, agents, or
other persons representing applicants or other parties before the
Office; and (4) the establishment of fees for the filing and processing
of an application for a patent, utility model or industrial design or mark
or a collective mark, geographic indication and other marks of
ownership, and for all other services performed and materials furnished
by the Office, the Director General shall be subject to the supervision
of the Secretary of Trade and Industry;
[2] DDITT

to

to

to

to
the
the
the
the
DG
STI
CA
SC
Once I am denied there, he will appeal to the DG not to the CA
but to the Secretary of Trade and Industry.
[3] DG

to the STI

to the CA

to the SC
Petition for compulsory licensing under RA 9502, it is under the
DG, during RA 8293 it was DLA. It is now direct to the Director
General.
b) Exercise exclusive appellate jurisdiction over all decisions rendered
by the Director of Legal Affairs, the Director of Patents, the Director of
Trademarks, and the Director of the Documentation, Information and
Technology Transfer Bureau. The decisions of the Director General in
the exercise of his appellate jurisdiction in respect of the decisions of
the Director of Patents, and the Director of Trademarks shall be
appealable to the Court of Appeals in accordance with the Rules of
Court; and those in respect of the decisions of the Director of
Documentation, Information and Technology Transfer Bureau shall be
appealable to the Secretary of Trade and Industry; and
SECTION 8. The Bureau of Patents. - The Bureau of Patents shall
have the following functions:
8.1. Search and examination of patent applications and the grant of
patents;
c) Exercise original jurisdiction to resolve disputes relating to the terms
of a license involving the author's right to public performance or other
3
INTELLECTUAL PROPERTY LAW
Ateneo de Davao University | College of Law
Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
8.2. Registration of utility models, industrial designs, and integrated
circuits; and
submit a compliance report within a reasonable time which shall be
fixed in the order; (ii) The acceptance of a voluntary assurance of
compliance or discontinuance as may be imposed. Such voluntary
assurance may include one or more of the following:
8.3. Conduct studies and researches in the field of patents in order to
assist the Director General in formulating policies on the administration
and examination of patents.
(1) An assurance to comply with the provisions of the intellectual
property law violated;
(2) An assurance to refrain from engaging in unlawful and unfair acts
and practices subject of the formal investigation;
Comment: Who goes? The inventors for robots and even
formulas, and even drugs are patented.
(3) An assurance to recall, replace, repair, or refund the money value
of defective goods distributed in commerce; and
SECTION 9. The Bureau of Trademarks. - The Bureau of
Trademarks shall have the following functions: 9.1. Search and
examination of the applications for the registration of marks,
geographic indications and other marks of ownership and the issuance
of the certificates of registration; and 9.2. Conduct studies and
researches in the field of trademarks in order to assist the Director
General in formulating policies on the administration and examination
of trademarks.
(4) An assurance to reimburse the complainant the expenses and costs
incurred in prosecuting the case in the Bureau of Legal Affairs. The
Director of Legal Affairs may also require the respondent to submit
periodic compliance reports and file a bond to guarantee compliance of
his undertaking;
(iii) The condemnation or seizure of products which are subject of the
offense. The goods seized hereunder shall be disposed of in such
manner as may be deemed appropriate by the Director of Legal Affairs,
such as by sale, donation to distressed local governments or to
charitable or relief institutions, exportation, recycling into other goods,
or any combination thereof, under such guidelines as he may provide;
SECTION 9A. The Bureau of Copyright and Other Related
Rights.
9A.1. Exercise original jurisdiction to resolve disputes relating to the
terms of a license involving the author’s right to public performance or
other communication of his work;
(iv) The forfeiture of paraphernalia and all real and personal properties
which have been used in the commission of the offense;
9A.2. Accept, review and decide on applications for the accreditation
of collective management organizations or similar entities;
(v) The imposition of administrative fines in such amount as deemed
reasonable by the Director of Legal Affairs, which shall in no case be
less than Five thousand pesos (P5,000) nor more than One hundred
fifty thousand pesos (P150,000). In addition, an additional fine of not
more than One thousand pesos (P1,000) shall be imposed for each day
of continuing violation;
9A.3. Conduct studies and researches in the field of copyright and
related rights; and
9A.4. Provide other copyright and related rights service and charge
reasonable fees therefor.
(vi) The cancellation of any permit, license, authority, or registration
which may have been granted by the Office, or the suspension of the
validity thereof for such period of time as the Director of Legal Affairs
may deem reasonable which shall not exceed one (1) year;
Comment: In case of literary and artistic works they are
protected from the time of creation and it is automatic, that is
why there is no bureau of copyright before. But now, under RA
10372, there is no bureau of copyright. But if you look at it, the
primary function, there is no need to register. It is not
required.
(vii) The withholding of any permit, license, authority, or registration
which is being secured by the respondent from the Office;
(viii) The assessment of damages;
SECTION 10. The Bureau of Legal Affairs. – The Bureau of Legal
Affairs shall have the following functions:
(ix) Censure; and
(x) Other analogous penalties or sanctions. (Secs. 6, 7, 8, and 9,
Executive Order No. 913 [1983]a)
10.1. Hear and decide opposition to the application for registration of
marks; cancellation of trademarks; subject to the provisions of Section
64, cancellation of patents, utility models, and industrial designs; and
petitions for compulsory licensing of patents;
10.3. The Director General may by Regulations establish the procedure
to govern the implementation of this Section.
10.2. (a) Exercise original jurisdiction in administrative complaints for
violations of laws involving intellectual property rights: Provided, That
its jurisdiction is limited to complaints where the total damages claimed
are not less than Two hundred thousand pesos (P200,000): Provided
further, That availment of the provisional remedies may be granted in
accordance with the Rules of Court. The Director of Legal Affairs shall
have the power to hold and punish for contempt all those who
disregard orders or writs issued in the course of the proceedings.
SASOT v. PEOPLE GR 143193 (2005)
It was conducted in May 1997. The NBI conducted
investigation pursuant to a complaint by NBA. The NBI stated
that NBA was a foreign corporation and that it was a registered
owner of NBA Trademarks, these NBA names were used
garment products. NBI discovered that the Sasot engaged in
making such products. The information was filed.
(b) After formal investigation, the Director for Legal Affairs may impose
one (1) or more of the following administrative penalties: (i) The
issuance of a cease and desist order which shall specify the acts that
the respondent shall cease and desist from and shall require him to
4
INTELLECTUAL PROPERTY LAW
Ateneo de Davao University | College of Law
Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
Sasots filed a motion to quash and that the trial court does not
have jurisdiction and that a foreign corporation is not protected
by patent laws and that NBA trademarks were not used in the
PH. And that they conduct business under the name of
Allendale and not similar and did not use their logo are design.
NOVEMBER 20, 2018 | Transcribed by: Monjid Abpi & Val
Acevedo
Issue: Whether a foreign corporation can maintain an action
for unfair competition. – Yes.
In this case, Lolita Escobar, the predecessor-in-interest of
Mirpuri filed a petition with the Bureau of Patents for the
registration of the trademark “Barbizon” for use in Brassieres
and ladies undergarments. So, the Barbizon Corporation in this
case is a US Corporation and they opposed the application of
Escobar because they said that Barbizon is confusingly similar
to the trademark of Barbizon in US and that the Barbizon
Corporation will be damaged by the registration of mark
“Barbizon”.
MIRPURI v. CA 318 SCRA 516 (1999)
Rule: For one, while petitioners raise in their motion to quash
the grounds that the facts charged do not constitute an offense
and that the trial court has no jurisdiction over the offense
charged or the person of the accused, their arguments focused
on an alleged defect in the complaint filed before the fiscal,
complainants capacity to sue and petitioners exculpatory
defenses against the crime of unfair competition.
That the applicant’s use of the said mark which resembles the
trademark used and owned by the opposer constitutes an
unlawful appropriation of a mark previously used in the
Philippines and not abandoned and therefore a statutory
violation of Section 4(d) RA 166.
Nowhere in the foregoing provision is there any mention of the
defect in the complaint filed before the fiscal and the
complainants capacity to sue as grounds for a motion to quash.
More importantly, the crime of Unfair Competition punishable
under Article 189 of the Revised Penal Code is a public crime.
It is essentially an act against the State and it is the latter which
principally stands as the injured party. The complainants
capacity to sue in such case becomes immaterial.
So, eventually, on June 18, 1974, Escobar’s application was
given due course, and her trademark was registered. Later,
Escobar assigned all their rights to Mirpuri who failed to file and
affidavit of use which brought the cancellation of the
trademark.
Lastly, with regard to petitioners arguments that the NBA
Properties, Inc., is not entitled to protection under Philippine
patent laws since it is not a registered patentee, that they have
not committed acts amounting to unfair competition for the
reason that their designs are original and do not appear to be
similar to complainants, and they do not use complainants logo
or design, the Court finds that these are matters of defense
that are better ventilated and resolved during trial on the merits
of the case. The MTQ was denied.
So, they both re applied. However, this application also
opposed once again by Barbizon Corporation. However, in June
8, 1992, the Director of Patents once again gave due course to
the application denying the opposition of Barbizon corporation.
In his defense, Barbizon Corporation claims that the protection
under Article (inaudible) Under the Paris Convention.
Comment: This is an application of Section 3. NBA is a foreign
corporation and it is suing Filipinos in the name of Sasot who
are manufacturing products who are similar to the NBA logo
and other products. So, according to the Sasots they have no
right to sue. But we have Section 3, as long as NBA as a
national or has business in the country.
ISSUE: WON the treaty affords protection to a foreign
corporation against a Philippine applicant for the registration of
a similar trademark. – YES
Trademark
Trademark, as defined by the Intellectual property Code of the
Philippines is any visible sign capable of distinguishing goods.
So if the US is a signatory to the convention and gives reciprocal
rights – then NBA as foreign entity can sue to pursue rights it
rights of intellectual property.
The SC said that the Paris Convention is a Multilateral treaty
that seeks to protect Industrial properties consisting of patents,
utility models, industrial designs, tradenames, trademarks, and
indication of sources of origin; and at the same time aims to
reduce unfair competition. So, the SC here cited that the
Nationals of the various member nations are thus assured of a
certain minimum of international protection of their industrial
property.
So, Article 6 is a self-executing provision which does not require
any legislative enactment to give in effect in the member
country here in the Philippines.
5
INTELLECTUAL PROPERTY LAW
Ateneo de Davao University | College of Law
Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
Comment: So, in the case of Sasot, the SC said that treaty,
conventions, or laws under the Constitution (Article 2), are not
given higher status in our laws but at least sustain or support
it.
Pfizer prayed for permanent injunction, damages and the
forfeiture and impounding of the alleged infringing products.
They also asked for the issuance of a temporary restraining
order and a preliminary injunction that would prevent Phil
Pharmawealth, its agents, representatives and assigns, from
importing, distributing, selling or offering the subject product
for sale to any entity in the Philippines.
So, in this case (Mirpuri), the SC said that since these treaties
and conventions are part of law of the land – considered, taken,
and can actually be used against Filipinos – they can be used
by foreign corporations such as Barbizon to protect their
intellectual property rights; as long as that is for the protection
of their rights. These Conventions maybe taken cognizance or
followed.
In an Order dated July 15, 2003 the BLA-IPO issued a
preliminary injunction which was effective for ninety days from
petitioner's receipt of the said Order.
Prior to the expiration of the ninety-day period, Pfizer filed a
Motion for Extension of Writ of Preliminary Injunction which,
however, was denied by the BLA-IPO in an Order dated October
15, 2003.
PHIL PHARMAWEALTH v. PFIZER G.R. No. 167715 (2010)
This case arose from a complaint filed by Pfizer against Phil
Pharmawealth Corporation for infringement with the Bureau of
Legal affairs of the Intellectual property office (BLA-IPO).
Pfizer filed a Motion for Reconsideration but the same was also
denied by the BLA-IPO in a Resolution dated January 23, 2004.
They then filed a special civil action for certiorari with the CA
assailing the October 15, 2003 and January 23, 2004
Resolutions of the BLA-IPO.
The Complaint alleged that Pfizer was the registered owner of
Philippine Letters Patent No. 21116. Now, the patent covered
ampicillin sodium/sulbactam sodium which is a specific example
of the broad beta lactam antibiotic disclosed and claimed in the
Patent.
ISSUE: Was Pfizer correct in filing a petition for Certiorari
before the CA? – YES
Pfizer is marketing Sulbactam Ampicillin under the brand name
"Unasyn." Pfizer's "Unasyn" products, which come in oral and
IV formulas, are covered by Certificates of Product Registration
("CPR") issued by the Bureau of Food and Drugs ("BFAD")
under the name of complainants. The sole and exclusive
distributor of "Unasyn" products in the Philippines is Zuellig
Pharma Corporation, pursuant to a Distribution Services
Agreement it executed with Pfizer Phils. on January 23, 2001.
“It is true that under Section 7(b) of RA 8293, otherwise known as the
Intellectual Property Code of the Philippines, which is the presently
prevailing law, the Director General of the IPO exercises exclusive
appellate jurisdiction over all decisions rendered by the Director of the
BLA-IPO. However, what is being questioned before the CA is not a
decision, but an interlocutory order of the BLA-IPO denying
respondents' motion to extend the life of the preliminary injunction
issued in their favor.
RA 8293 is silent with respect to any remedy available to litigants who
intend to question an interlocutory order issued by the BLA-IPO.
Moreover, Section 1(c), Rule 14 of the Rules and Regulations on
Administrative Complaints for Violation of Laws Involving Intellectual
Property Rights simply provides that interlocutory orders shall not be
appealable. The said Rules and Regulations do not prescribe a
procedure within the administrative machinery to be followed in
assailing orders issued by the BLA-IPO pending final resolution of a
case filed with them. Hence, in the absence of such a remedy, the
provisions of the Rules of Court shall apply in a suppletory manner, as
provided under Section 3, Rule 1 of the same Rules and Regulations.
Sometime in January and February 2003, complainants came
to know that Phil Pharmawealth submitted bids for the supply
of Sulbactam Ampicillin to several hospitals without the consent
of complainants and in violation of the complainants'
intellectual property rights.
Complainants thus wrote the hospitals and demanded that the
latter immediately cease and desist from accepting bids for the
supply [of] Sulbactam Ampicillin or awarding the same to
entities other than complainants. Complainants, in the same
letters sent, also demanded that Phil Pharmawealth
immediately withdraw its bids to supply Sulbactam Ampicillin.
Hence, in the present case, respondents correctly resorted to the filing
of a special civil action for certiorari with the CA to question the assailed
Orders of the BLA-IPO, as they cannot appeal therefrom and they have
no other plain, speedy and adequate remedy in the ordinary course of
law. This is consistent with Sections 120 and 4,21 Rule 65 of the Rules
of Court, as amended.”
In gross and evident bad faith, Phil Pharmawealth and the
hospitals willfully ignored complainants' just, plain and valid
demands, refused to comply therewith and continued to
infringe the Patent, all to the damage and prejudice of
complainants. As registered owner of the Patent, Pfizer is
entitled to protection under Section 76 of the IP Code.
Comment: In other words, the decision here is an
Interlocutory order.
6
INTELLECTUAL PROPERTY LAW
Ateneo de Davao University | College of Law
Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
There was an infringement case filed by Pfizer against Phil
Pharma. The exclusive distributor of Pfizer is Zuellig in the
Philippines. So only Zuellig can distribute the drugs. And the
Pfizer alleges that Philpharma was trying to import the drug
and was even offering the bidding for hospitals. That’s why
there was an infringement case.
a. Maintain and upkeep classification systems whether they be national
or international such as the International Patent Classification (IPC)
system;
b. Provide advisory services for the determination of search patterns;
c. Maintain search files and search rooms and reference libraries; and
d. Adapt and package industrial property information.
11.2. Establish networks or intermediaries or regional representatives;
So, to stop the offer, Pfizer asked the BLA to issue a Writ of
Preliminary Injunction to stop Phil Pharma in conducting the
bidding. So it was granted. Normally that is applied for within
a day. It is a provisional remedy. So, it was a 90 day injunction.
So Phil Pharma could not do anything within that period. When
the 90-day period was about to expire, Pfizer wanted to extend
but this was denied by the BLA. Now, if you look at the
provision, the order is appealable to the DG. But, Pfizer went
to the CA to file a petition for Certiorari.
11.3. Educate the public and build awareness on intellectual property
through the conduct of seminars and lectures, and other similar
activities;
11.4. Establish working relations with research and development
institutions as well as with local and international intellectual property
professional groups and the like;
11.5. Perform state-of-the-art searches;
11.6. Promote the use of patent information as an effective tool to
facilitate the development of technology in the country;
Is it correct? YES. Because when we talk about section 7, it
only talks about APPEAL. And what can be appealed? ONLY
judgements or Final orders.
11.7. Provide technical, advisory, and other services relating to the
licensing and promotion of technology, and carry out an efficient and
effective program for technology transfer; and
What is a final order? It is an order where the court has
nothing else to do. But here, there was an infringement case
that ordered denying the motion for extension of the writ,
which is an interlocutory order. Meaning, it is an order within a
case that is still pending. And that kind of order cannot be
appealed. So, this is not the provision that applies. But there is
nothing in the Intellectual property Code that talks about
interlocutory order, so where do you go? You go to the RULES
OF COURT. For those cases where the ordinary rules are not
applicable, the rules can be applied in a suppletory manner.
1.
DLA/DT/DP/DC&ORR  DR  CA
2.
DDITT
3.
DG  DTI SECRETARY
11.8. Register technology transfer arrangements, and settle disputes
involving technology transfer payments.
Section 12. The Management Information Services and EDP
Bureau. - The Management Information Services and EDP Bureau
shall:
12.1. Conduct automation planning, research and development,
testing of systems, contracts with firms, contracting, purchase and
maintenance of equipment, design and maintenance of systems, user
consultation, and the like; and
 DG  DTI SECRETARY
12.2. Provide management information support and service to the
Office.
What about the management Bureau? Those are the functions.
Just remember, this flow only talks about appeal. What can
be appealed? Only final orders or judgments.
Section 13. The Administrative, Financial and Human Resource
Development Service Bureau.
That is why I was surprised when the infringement case was
filed before the BLA. The BLA only has this under jurisdiction,
no infringement cases. Infringement cases are only filed before
the Special Commercial Court.
13.1. The Administrative Service shall:
(a) Provide services relative to procurement and allocation of supplies
and equipment, transportation, messengerial work, cashiering,
payment of salaries and other Office's obligations, office maintenance,
proper safety and security, and other utility services; and comply with
government regulatory requirements in the areas of performance
appraisal, compensation and benefits, employment records and
reports;
Functions of the DITTT. We will not go through them one by
one. Just make sure that you read this.
SECTION 11. The Documentation, Information and Technology
Transfer Bureau. — The Documentation, Information and
Technology Transfer Bureau shall have the following functions:
(b) Receive all applications filed with the Office and collect fees
therefor, and
11.1. Support the search and examination activities of the Office
through the following activities:
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INTELLECTUAL PROPERTY LAW
Ateneo de Davao University | College of Law
Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
(c) Publish patent applications and grants, trademark applications, and
registration of marks, industrial designs, utility models, geographic
indication, and lay-out-designs of integrated circuits registrations.
the public. This amount, which shall be in addition to the Office's annual
budget, shall be deposited and maintained in a separate account or
fund, which may be used or disbursed directly by the Director General.
13.2. The Patent and Trademark Administration Services shall perform
the following functions among others:
So they collect fees and they keep the fees. In addition to the
budget given by the government, kasama sila sa annual
budget.
(a) Maintain registers of assignments, mergings, licenses, and
bibliographic on patents and trademarks;
14.2. After five (5) years from the coming into force of this Act, the
Director General shall, subject to the approval of the Secretary of Trade
and Industry, determine if the fees and charges mentioned in
Subsection 14.1 hereof that the Office shall collect are sufficient to
meet its budgetary requirements. If so, it shall retain all the fees and
charges it shall collect under the same conditions indicated in said
Subsection 14.1 but shall forthwith, cease to receive any funds from
the annual budget of the National Government; if not, the provisions
of said Subsection 14.1 shall continue to apply until such time when
the Director General, subject to the approval of the Secretary of Trade
and Industry, certifies that the above-stated fees and charges the
Office shall collect are enough to fund its operations.
(b) Collect maintenance fees, issue certified copies of documents in its
custody and perform similar other activities; and
(c) Hold in custody all the applications filed with the office, and all
patent grants, certificate of registrations issued by the office, and the
like.
13.3. The Financial Service shall formulate and manage a financial
program to ensure availability and proper utilization of funds; provide
for an effective monitoring system of the financial operations of the
Office; and
13.4. The Human Resource Development Service shall design and
implement human resource development plans and programs for the
personnel of the Office; provide for present and future manpower
needs of the organization; maintain high morale and favorable
employee attitudes towards the organization through the continuing
design and implementation of employee development programs.
But 14.2 says, when was the IPO created? 1988 January when
the IPC was enacted and made effective. That is also when the
IPO was created.
Before kasi, it was the BPTTT. So it says, 5 years from the
coming into force, so it has come into existence for 20 years
na. If sufficient, the IPO can use the fees to operate and then
there will be no funds from the national government. But, if not
sufficient, continue collecting fees and continue the civic part
of the budget but still if the fees are sufficient, then the DG
with the approval of the STI can inform maybe the Congress
that they are no longer in need of a portion of the annual
budget of the government.
And then we have another Bureau. These are the functions.
What kind of office is the IPO?
It is an office that is under the Department of Trade and
Industry. In your Public Corporation, you have two kinds of
corporation.
1. The legal government corporations; and
2. The GOCCs.
Section 15. Special Technical and Scientific Assistance. - The
Director General is empowered to obtain the assistance of technical,
scientific or other qualified officers and employees of other
departments, bureaus, offices, agencies and instrumentalities of the
Government, including corporations owned, controlled or operated by
the Government, when deemed necessary in the consideration of any
matter submitted to the Office relative to the enforcement of the
provisions of this Act.
GOCCs are created by charter. It is the law that creates these
GOCCs and they are independent in the sense that they have
fiscal autonomy. GOCCs earn money, it actually supports itself,
may budget from the national government.
What about the IPO? Since it is under the DTI, not really
a GOCC in the sense that it has its charter, but if you
look at Section 14:
Just read this. Which, the DG can request from different
Department like the DOST. We already talked about the IPO
Gazette. This is where everything is published.
Section 14. Use of Intellectual Property Rights Fees by the
IPO. –
Section 19. Disqualification of Officers and Employees of the
Office. - All officers and employees of the Office shall not apply or act
as an attorney or patent agent of an application for a grant of patent,
for the registration of a utility model, industrial design or mark nor
acquire, except by hereditary succession, any patent or utility model,
design registration, or mark or any right, title or interest therein during
their employment and for one (1) year thereafter.
14.1. For a more effective and expeditious implementation of this Act,
the Director General shall be authorized to retain, without need of a
separate approval from any government agency, and subject only to
the existing accounting and auditing rules and regulations, all the fees,
fines, royalties and other charges, collected by the Office under this Act
and the other laws that the Office will be mandated to administer, for
use in its operations, like upgrading of its facilities, equipment outlay,
human resource development, and the acquisition of the appropriate
officCe space, among others, to improve the delivery of its services to
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INTELLECTUAL PROPERTY LAW
Ateneo de Davao University | College of Law
Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
In the applications for patent, it is important that you have a
patent operations. It is not that easy to apply for patents. So,
patent attorneys are normally to undergo training and to be
given some kind of authority to act as a patent attorney. So
itong mga IPO lawyers and employees, are definitely wellversed on how the patent application goes.
Example: If A invents a machine that is patentable, he owns
the machine. Why does he want that to be patented? So
that he will have the exclusive right to use (manufacture, sell,
distributed, etc) his invention. But a patent is exclusive to
him for a given period. It is not forever.
After the patents expires – the inventions, the methods, the
formula – will be part of the public domain. Here in the
Philippines, a patent may reach 20 years. But in the US, it is
only 7 years. The laws there are more concerned about what
the invention can do to benefit the people instead of the single
inventor. This is a right given by law. If one does not apply for
a patent, he is not protected. So anyone can copy his invention,
manufacture and sell.
So, can they actually leave the IPO and represent
another as a patent attorney?
No. For one year from the time of separation from office or that
employee cannot acquire any patent or can give mark, etc.
because you learned in the property can dispose. So when talk
about Intellectual property rights, if I am the owner of the
property, I can actually not share it with another.
Can I transfer it to a former employee?
Sure. For as long as his separation is for more than 1 year from
the IPO.
Can any invention, gadget be patented, any machine?
No. We have requisites for patentability.
Chapter II - Patentability
PART II – The Law on Patents
Section 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.
So when you read the law on patents, if the Director is
mentioned there, you are not talking about the DG, but the
Director of Patents.
CHAPTER I – General Provisions
Requisites of Patentability:
1. Any technical solution of a problem in any field
of human activity which is new;
Section 20. Definition of Terms Used in Part II, The Law on
Patents. - As used in Part II, the following terms shall have the
following meanings:
So, anything that will solve a problem: “This is a dirty. Oh, I
have a machine to clean it.” “I have a headache. Oh I have
drug that will remove the headache. Oh I have a stomachache,
any problem.
20.1. "Bureau" means the Bureau of Patents,
20.2. "Director" means the Director of Patents;
20.3. "Regulations" means the Rules of Practice in Patent Cases
formulated by the Director of Patents and promulgated by the Director
General;
2.
Involves an inventive step; and
3.
Industrially applicable
20.4. "Examiner" means the patent examiner;
What is this technical solution?
It could be a product or it could be a process, a formula, a
procedure. Itong mga drug products, it could be a formula or
it could be process of doing something or it could be an
improvement of a product or an improvement of a process.
20.5. "Patent application" or "application" means an application for a
patent for an invention except in Chapters XII and XIII, where
"application" means an application for a utility model and an industrial
design, respectively; and
20.6. "Priority date" means the date of filing of the foreign application
for the same invention referred to in Section 31 of this Act.
Section 21 tells us what is patentable. Section 22 tells us what
cannot be patented.
What is a patent?
It is a grant made by the government to an inventor. So, at this
point, you have to memorize to whom patent is given. Not to
the writer, not to composer, but to an inventor. One who
invents, such as a machine. Anything that is useful. So, the law
conveys and secures to him the exclusive right of his invention
for a given period. So, as the inventor, he owns the invention.
SEC. 22. Non-Patentable Inventions. - The following shall be
excluded from patent protection:
22.1. Discoveries, scientific theories and mathematical methods, and
in the case of drugs and medicines, the mere discovery of a new form
or new property of a known substance which does not result in the
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INTELLECTUAL PROPERTY LAW
Ateneo de Davao University | College of Law
Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
enhancement of the known efficacy of that substance, or the mere
discovery of any new property or new use for a known substance, or
the mere use of a known process unless such known process results in
a new product that employs at least one new reactant.
What else?
22.2. Schemes, rules and methods of performing mental acts, playing
games or doing business, and programs for computers;
For the purpose of this clause, salts, esters, ethers, polymorphs,
metabolites, pure form, particle size, isomers, mixtures of isomers,
complexes, combinations, and other derivatives of a known substance
shall be considered to be the same substance, unless they differ
significantly in properties with regard to efficacy;
You cannot patent a computer program. Yung mga gaming,
hindi pwedeng ipatent pero that does not mean there is no
other way to protect. Hindi lang siya pwedeng ipatent because
it is not a product and it is not a process.
Example: If Mr. X discovers a planet, He cannot have that
planet patented. He cannot have that planet named after him.
So hindi yan. What is patentable, we are talking about
intellectual creation.
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;
Example of Scientific theories and mathematical methods:
E=mc2 , Pythagorean theorem.
Yung mga laser treatment, chemotheraphy, yung mga
immunotheraphy, hindi pwedeng ipatent. So the person who
invent that, cannot have exclusive use. This cannot be kept
secret because it is for the good of the human kind as a whole.
According to the Cheaper Medicine’s Act, in the case of drugs
and medicine. So all drugs na branded. So diba meron tayong
generic act, but we have branded like mga pfizer drugs, they
are patented.
22.4. 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.
So, according to cheaper medicine’s act:
1. The mere discovery of a new form or new
property of a known substance which does not
result the enhancement of the known efficacy
of that substance.
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;
So a mere discovery of a new form or new property of a known
substance. Let us say we have that unasyn in the case of
PhilPharma, if one discovers a new form or new property of
that unasyn, but it does not result to an enhancement, it does
not improve the effect of that drug and that new property is
not patentable.
Yung mga micro thing na ginagawa nila sa plant. Grafting. New
breed of animal. Yung American Bully. It is a new breed, it is
not that old. So the one who was able to discover American
bully, pwede ba niyang ikeep to himself? No.
22.5. Aesthetic creations; and
What else?
2.
Examples: Paintings, Mosaics, Sculpture. You cannot have that
patented
The mere discovery of a new property or new
use of a known substance.
22.6. Anything which is contrary to public order or morality.
This one, we gave an example. What is that? Glutathione. It is
a known substance for the liver. It cures the liver. But, it was
discovered that it is good for the skin. It makes the skin white.
The side effect of that. So, the one who discovered that, can
he have that patented in the sense that siya lang pwede
magdistribute, gumawa, magbenta ng glutathione? No. That is
why every drug company, sells glutathione and advertises it as
a skin whitener kasi hindi siya patentable. Walang exclusivity.
3.
Those cannot be patented.
NOVEMBER 22, 2018 | Transcribed by: Kristal Alaban &
Jilyan Ampog
What is patentable? What is not patentable? So let’s go to some
examples.
The mere use of a known process unless such
known process results in a new product that
employs at least one new reactant.
1998 BQ
X invented a method of improving tenderness of meat by
injecting an enzyme solution into the animal shortly before
slaughter. Is the invention patentable?
So those are not patentable when it comes to drugs.
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INTELLECTUAL PROPERTY LAW
Ateneo de Davao University | College of Law
Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
According 24.2, aside from searching a similar product or
process there will also be publication. The whole contents of
the application for patent shall “published in accordance with
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”.
The suggested answer is YES. How do you defend the answer?
Enumerate the requisites of patentability. Under R.A. 166, the
requisites were novelty, originality, precedence and industrial
applicability. Under R.A. 8292, there are three: new, involves
an inventive step, and is industrially applicable.
1989 BQ
X invented a bogus coin detector to be used exclusively on selfoperating gambling devices otherwise known as one-armed
bandits. Can X apply for a patent? Suggested answer is No
because the operation of a self-operating gambling device is a
criminal offense in our country. The invention, if it fosters …
will therefore be against public policy.
Example
A goes to the Bureau of patents on August 8, 2018 and wants
to apply for a patent. Filing date is August 8, 2018. B goes to
the Bureau of Patents and files for an application for the same
invention on September 8, 2018. There’s already prior art
because there’s already an application with an earlier filing
date. It doesn’t have to be something already patented or
popularly being sold. Even though there’s no patent yet, as long
as an application on the same invention has been filed, the
invention is already prior art. What is the condition? “That the
applicant or the inventor identified in both applications are not
one and the same." If it’s A who filed the application on August
8 and he feels that he needs to amend or file another
application, and he files it on September 8, is the product or
process considered prior art? No because it’s the same inventor
and same product. If it’s a different inventor, the invention can
no longer be accepted because it is already part of prior art.
COMMENT: Under last item of Section 22, anything contrary
to public order or morality shall be excluded from patent
protection.
REQUISITES OF PATENTABILITY
1. New
Section 23. Novelty. . - An invention shall not be considered new if
it forms part of a prior art.
“New” is not defined under Section 23. What is defined is what
is not new. Something is not new if it is not novel. Novel has
many meanings. Novel in here means new or rare. An
invention shall not be considered new if it forms part of
a prior art.
Section 25. Non-Prejudicial Disclosure. . –
25.1. 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:
What is prior art?
Section
24.
Prior
Art.
-
Prior
art
shall
consist
(a) The inventor;
of:
(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
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 accordance with 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.
(c) A third party which obtained the information directly or indirectly
from the inventor.
25.2. For the purposes of Subsection 25.1, "inventor" also means any
person who, at the filing date of application, had the right to the patent.
When an applicant files an application, there is what we called
as non-prejudicial disclosure, so it will not prejudice the
inventor.
If it’s a part of prior art then it’s not new or novel. So that’s
why, if you remember, the functions of the Bureau of patents
are search and examination. The Bureau will search anything
that is similar to the product for which patent is sought for.
Nowadays, there is already a program that will assist in the
search process.
2. Involves an inventive step
Section 26. Inventive Step. –
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INTELLECTUAL PROPERTY LAW
Ateneo de Davao University | College of Law
Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
provision shall apply as if the word "patent" were replaced by the words
"patent or utility model registration".
26.1. 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.
Where do you apply you application for utility models? Bureau
of Patents.
26.2. In the case of drugs and medicines, there is no inventive step if
the invention results from the mere discovery of a new form or new
property of a known substance which does not result in the
enhancement of the known efficacy of that substance, or the mere
discovery of any new property or new use for a known substance, or
the mere use of a known process unless such known process results in
a new product that employs at least one new reactant.
Section 109. Special Provisions Relating to Utility Models. –
109.1.
(a) An invention qualifies for registration as a utility model if it is new
and industrially applicable.
The second requisite is inventive step. How do you know if the
process or product involves an inventive step? It says here
“having regard to prior art” (meaning it should not be part of
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.”
(b) Section 21, "Patentable Inventions", shall apply except the
reference to inventive step as a condition of protection.
109.2. Sections 43 to 49 shall not apply in the case of applications for
registration of a utility model.
109.3. A utility model registration shall expire, without any possibility
of renewal, at the end of the seventh year after the date of the filing
of the application.
Example
So when you buy a robot, would you know how to use it by
just looking at it? No. You have to look at the instructions. If it
is very easy to use, this does not have an inventive step.
*Proceeds to refer to her thermos bottle.* Would you know
how to use this? Of course. You open it and put water inside.
This does not have an inventive step. If somebody wants to
apply a patent for this. It will be rejected. First of all it’s not
new and it does not have an inventive step. It is very obvious
to anyone.
109.4. In proceedings under Sections 61 to 64, the utility model
registration shall be canceled on the following grounds:
(a) That the claimed invention does not qualify for registration as a
utility model and does not meet the requirements of registrability, in
particular having regard to Subsection 109.1 and Sections 22, 23, 24
and 27;
(b) That the description and the claims do not comply with the
prescribed requirements;
To have an inventive step, it must not be obvious to a “person
skilled in the art”. In case of robots, this would refer to
engineers. If the robot is not obvious to the robotic engineers
and they still need to study it, then it has an inventive step.
(c) That any drawing which is necessary for the understanding of the
invention has not been furnished;
(d) That the owner of the utility model registration is not the inventor
or his successor in title.
3. Industrial Applicability
If you have an invention and you want to register it, but you
don’t think that it involves an inventive step, you can have it
registered as a utility model.
Section 27. Industrial Applicability. - An invention that can be
produced and used in any industry shall be industrially applicable.
Meaning, something that can be used. Anything that one can
use. Hindi yung titingnan mo lang. Ano yan? That’s art, so it’s
not patentable. If you just listen to it, that’s not patentable. It
must be something you can use like, to brush your teeth or to
cure somebody.
REQUISITES:
1. New
2. Industrially applicable
MAGUAN v. CA 146 SCRA 107 (1986)
JUMPS TO UTILITY MODELS under Chapter 12…
Nota Bene: The applicable law was R.A. 165
Section 108. Applicability of Provisions Relating to Patents. –
Rosario Maguan was doing business under name Swan
Manufacturing, while Susan Luchan was doing business under
the name Susan Luchan Powder Puff Manufacturing. The object
of the case is the powder puff.
108.1. Subject to Section 109, the provisions governing patents shall
apply, mutatis mutandis, to the registration of utility models.
108.2. Where the right to a patent conflicts with the right to a utility
model registration in the case referred to in Section 29, the said
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INTELLECTUAL PROPERTY LAW
Ateneo de Davao University | College of Law
Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
Maguan here is the patent holder of the powder puff. Because
she’s the patent holder, she sent a letter to Luchan saying that
Luchan’s powder puffs are substantially identical with her
powder puffs. She also claims that the production and sale of
Luchan’s powder puff constitute infringement of her patent and
she therefore asked for its immediate discontinuance.
CHAPTER III - Right to a Patent
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.
Luchan, on the other hand, says that her products are different
and Maguan’s patent is void because the utility models were
not new and patentable. Luchan assailed the validity of
Maguan’s patent and filed with the Philippine Patent Office an
action for cancellation of patent.
Let's continue, so now, who has the right to apply? Or who has
the right to a patent? Section 28 says, the inventor.
So if you want to apply to a patent make sure that you are the
inventor, di mo ninakaw yung formula from somebody. Or if
the inventor is no longer alive:
1. His heirs but the heirs must prove that they are
the heirs of the inventor; or
2. An assignee but he must prove that indeed, the
invention was assigned to him by the inventor.
Allegations of Luchan:
1. The utility model were not new and patentable.
2. The person to whom the patent was issued was not the
true and actual author of the utility model.
3. The powder puffs are already existing and publicly sold in
the market.
4. Maguan’s process of manufacturing the powder puffs was
already complicated and the impractical version of the old
and simple one.
The source must always be the inventor, because this is
intellectual property, we are talking about intellectual creation
and how the law protects no, intellectual creation.
SECTION 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, the
earliest priority date. (3rd sentence, Sec. 10, R.A. No. 165a.) It has no
retroactive effect. It is prospective in nature.
Issue: WON the patents here are invalid due to lack of novelty.
– YES
The burden of proof is with the defendant. The applicable law
is Section 9 of R.A. 165. The invention not considered new
or patentable:
1. If it was known or used by others in the Philippines before
the invention
2. It was patented or described in any printed publication in
the Philippines or any foreign country for more than 1 year
before the application
3. If it had been in public use or on sale in the Philippines for
more than 1 year before the application
4. If it is a subject matter of a validly issued patent in the
Philippines
The application process is very very strict no, not anyone can
just apply for a patent. When to or more persons have jointly
made a creation, the right to a patent shall belong to them
jointly.
Example
This is the invention and this was made by A and B. So both of
them made this invention edi joint sila. Okay?
Now if the invention was made separately and independently
of each other, the right shall belong to the person who
filed an application for such invention.
The powder puff was publicly known and used since 1963. The
court took cognizance of the 64 exhibits and oral testimonies
and found out that the utility models were not new or novel.
Example
So let's say, this is the invention of A. He when to the Bureau
of Patents on August 8, okay? Then yun pala, si B, meron din
siyang invention na ganito rin, pero he did not go to the Bureau
of Patents to have it registered. So who will be given the
patent? Obviously, si A, because he filed an application.
Comment: I don’t why a utility model registration was granted
to Maguan for something that has already been in existence
even during the time of Cleopatra. Iba’t ibang form but they
are still powder puffs. Is it industrially applicable? Of course.
That’s why utility model lang and hindi patent because it
doesn’t have an inventive step. One look at it and you know na
hindi sya unan.
Example
What if both of them of filed? Nag file si A, August 8. Nagfile si
B, September 8. Now is it possible for two people to have
exactly the same invention? Yes. But they don't have to look
exactly the same, we will go to the Doctrine of Equivalents
later.
Pareho, the same function kase diba, when you talk about
patents, it must be industrially applicable, so what it is for, what
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INTELLECTUAL PROPERTY LAW
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is its use. Kahit di sila magkamukha, So here comes B, goes to
the patent office. So who has the earlier filing date, si A. So
most probably, the patent will be issued to A. Itong earliest
priority date, we will go to that later okay.
Now, what if itong employee, itong scientist, when everyone
has gone home, naiiwan siya sa laboratory, so kung ano ano
yung ginagawa niya he's using the equipment, the funds of the
employer and manufactures something that is so different with
drugs. Sabihin na lang nating, a flying car, okay? Malayo
masyado, so who will own the patent? If the invented utility
is not part of his regular duties, it is the employee, even
if the employee uses the time, facilities, and materials
of the employer. Okay, very clear no?
Now, yan yung, to whom shall the patent belong, be given.
SECTION 30. Inventions Created Pursuant to a Commission. —
30.1. The person who commissions the work shall own the patent,
unless otherwise provided in the contract.
SECTION 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:
What if an invention was created pursuant to a commission?
Example
A will hire B, B can you invent a machine that will make me
disappear. Tapos naka invent si B, may machine. Who will own
the patent?
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
General rule
The person who commissions the work shall own the patent so
si A. Kase kinconomission niya si B to invent such machine,
unless otherwise provided in the contract. There is nothing
against the agreement na hati sila o it will belong to B or
whatever. But if there is no agreement, under the law, the
patent will belong to the one who commissions, not the one
commissioned. Okay?
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.
Right of Priority
Let's go back to our example earlier. A filed an application on
August 8 for this invention. And then B, files an application on
September 8, for the same invention. Who has the earlier filing
date? Si A. So talaga bang wala nang chance si B to be granted
a patent? Kay A na ba talaga yan? Well, B has a chance if he
has earlier priority date.
30.2. In case the employee made the invention in the course of his
employment contract, the patent shall belong to:
a. 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.
Example
So kunwari, itong si B is a foreigner, wala. And he already filed
an application in his home country, let's say he is from China.
Ay, Papua New Guinea gusto mo? Wait, is Papua New Guinea
ano, a country which by treaty, convention, law affords?
Maybe? Let's assume. So nagfile na pala siya, June 8 of the
same year, meron na pala siyang application dun though hindi
pa naapprove pero meron siyang pending application, so
it shall be considered as filed as of the date of the filing on the
foreign application. So he shall be considered as someone who
has priority date.
Now, itong employee-employer. This is very common sa mga
drug company, kase yung mga drug company they have their
own RND (probably research and development), puro pa nga
mga scientists yan, developing new drugs to cure these illness,
that illness and those things, so kumpleto sila, laboratory,
equipment, budget and all those things. So who shall own the
patent pag meron ng na invent?
Example
Let's say, new drug was invented, nakakatangkad ng one foot,
are you gonna buy that? One foot, inumin mo lang tapos tutubo
ka, kunwari. So who shall own the patent? It says here, if the
invention was a result of the performance of his regularly
assigned duties, then the employer. Definitely, kung ano yung
pinapapagawa ng drug company tapos ginawa nung mga
scientists tapos meron silang bagong drug, the patent belongs
to the drug company no, like Smithkline, Pfeizer, Beyer, yung
mga big drug companies no. Okay?
Okay, so he applied in Papua New Guinea on June 8.
1. He must state that in his local application,
2. That it is within 12 months
So dito, 3 months ago lang yan no
3. He must, attach a certified copy of the foreign
application.
Kailangan pa ba ng English translation from Papua New
Guinea? No, because they speak British. So no need, pero
kung China yan o Japan, kailangan. So pwede lang yan to
follow, yung certified fcopy of the foreign application.
Unless there's an agreement express or implied to the contrary,
that's a general rule.
30.2 b. 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.
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INTELLECTUAL PROPERTY LAW
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SECTION 20. Definition of Terms Used in Part II, The Law on
Patents. — As used in Part II, the following terms shall have the
following meanings:
xxx
20.6. "Priority date" means the date of filing of the foreign
application for the same invention referred to in Section 31 of this Act.
22.4. 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.
The other ground, the applicant is not the inventor, or his heirs
or assigns. Sino pala inventor? Akom yung nag oppose, I'm the
inventor, not the applicant.
So according to 20.6, priority date means the date of filing of
the foreign application for the same invention. Okay, so now
you know, whenever you see, earliest filing date or earlier
priority date, you know what it means. You don't have to keep
on going back. Okay? Are we clear?
So okay, those are the grounds for opposition.
CHAPTER IV – Patent Application
Example
So, there's a pending application made by, let's say, A. Now,
let's go back. Wala na yung foreign application.
SECTION 32. The Application. —
32.1. The patent application shall be in Filipino or English and shall
contain the following:
We have A, he is applying for a patent for his product then here
comes B. He wants to oppose the application of A. Saan nagfile
si A ng application? Sa Bureau of Patents. Tapos si B, wants to
oppose the application, where should he go? Where? To the
Bureau of Legal Affairs. Diba? Opposition.
a. A request for the grant of a patent;
b. A description of the invention;
c. Drawings necessary for the understanding of the invention;
Comment
So what are the grounds? Syempre di ka pwede magfile file
lang for the heck of it. You have to have grounds, just like when
you answer your exam questions, you don't answer just for the
heck of it lang. Yes, he is entitled to a patent, period. No? May
mga ganyan. Hindi pwede yan, you need to state your legal
basis.
d. One or more claims; and
What are the GROUNDS FOR OPPOSITION?
1. The invention is not new or patentable;
Yan yung ginawa ni Luchan, pero ginawa niya is
cancellation kase may patent Mackwan(?). Ito, wala
pang patent, pending application pa, pwedeng
ioppose yan.
Now, let's go to the application process. I already told you
before, the most complicated application process in the
Intellectual Property is the one for patents. Kailangan mo ng
patent lawyer. Yung trademark, walang problema yan, lalo na
yung copyright. Pero this one, it is very complicated, very
tedious, okay?
2.
It is not industrially applicable; and
3.
It does not have an inventive step
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 may require
him to submit said authority.
So let's go to the application itself. The patent application shall
be in Filipino-English and shall contain the following:
1. Request;
2. Description;
3. Drawings;
4. Claims; and
5. Abstract
Meron pang Section 22. It is a discovery, it is a system, it is
against public morality, mathematical formula. Lahat yan, these
grounds for opposition.
So, A goes to the Bureau of Patents and fill the abstract
application form. No patent may be granted unless the
application identifies the inventor. So yung nakalagay dito sa
Section 32, the enumeration, but it must state the inventor,
the name. Hindi pwede yung anonymous. Pwede ang
copyright sa anonymous, yung mga novelists na ayaw nila
malaman sino sila but if you want to apply for a patent, the
inventor's name must be there.
SECTION 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 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;
If the applicant is not the inventor, the IPO may require him to
submit such authority,
Heir: "I am the heir of the inventor" Oh, so where's
the death certificate? Where's your birth certificate.
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INTELLECTUAL PROPERTY LAW
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Meaning, the IPO in the form, the DG, will promulgate rules
and regulation. How, ano yung nakalagay sa description. You
look at the regulations of the IPO.
Assignee: "I am the assignee of the inventor" Where's
the document assigning the invention to you.
How about the claims? That the application must also contain
claims.
SECTION 33. Appointment of Agent or Representative. —
An applicant who is not a resident of the Philippines must appoint and
maintain a resident agent or representative in the Philippines upon
whom notice or process for judicial or administrative procedure relating
to the application for patent or the patent may be served.
SECTION 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.
Foreign Patent Applicant
So what if the applicant is not a resident of the Philippines?
Pwede ba mag-apply ang foreigner?
36.2. The Regulations shall prescribe the manner of the presentation
of claims.
Yes, we have Section 33. Okay? That is if he will not stay here,
if he will stay here, pwede siya.
SECTION 37. The Abstract. — The abstract shall consist of a concise
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.
But if the inventor just wants to apply then goes back to his
country, kailangan talaga na may resident agent or
representative.
SECTION 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.
So we already look what the patent application must contain,
the first one is the request. What shall the request contain? A
petition for the grant of the patent, meron ata yan silang form,
for the petition. The name and other data of the applicant, the
inventor and the agent. We already know what the agent isfor the foreign applicant, okay? And the title of the invention.
So those are the contents of the application. Explained by the
individual provisions.
SECTION 35. Disclosure and Description of the Invention. —
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 filed within 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.
SECTION 38. Unity of Invention. —
38.1. The application shall relate to one invention only or to a group
of inventions forming a single general inventive concept.
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 a
microbiological 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.
Unity of Invention
Naalala niyo sa crimpro? An information must only contain one
offense, di pwede ang duplicitous; that is quashable. Ganun rin
ang application, it must relate to one invention only or a group
of inventions forming a single general inventive concept. Okay?
Disclosure
What is the name of your invention? Growing pills. Okay? What
else? In your application. you must disclose the invention in a
manner sufficiently clear and complete for it to be carried out
by a person skilled in the art. Di ka pwede mag apply apply
tapos di iexplain kung ano yun. He must disclose it, what is it
all about? How does it work? What is it for? Because all the
requisites of patentability should be seen by the
examiner. Okay?
Now, what if the information is duplicitous and the accused
does not file a motion to quash. What is the rule? The accused
can be convicted each and every offense stated in the
information.
Ganun rin dito, what if several independent inventions which
do not form a single general inventive concept or claim in one
information. The director may require that the application be
restricted to a single invention. The later application for the
35.2. Description. — The Regulations shall prescribe the contents of
the description and the order of presentation. (Sec. 14, R.A. No. 165a)
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INTELLECTUAL PROPERTY LAW
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application divided out shall be considered as having been filed
on the same date as the same application. So he sever the
application for the inventions, the duplicitous application but
the severed ones will still have the same filing date provided
that the later application has been filed within four months
after the requirement to divide becomes final. Such
additional time not exceeding four months may be granted.
SECTION 42. Formality Examination. —
Each divided application shall not go beyond the disclosure in
the initial application. But take note, that the fact a patent has
been granted to an application that did not comply to the
requirement of unity of invention shall not be a ground to
cancel. Meaning, there's a possibility that the Bureau of
Patents will grant a patent for three inventions in one
application, and that is not a ground for cancellation.
42.2. The Regulations shall determine the procedure for the reexamination and revival of an application as well as the appeal to the
Director of Patents from any final action by the examiner.
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.
SECTION 43. Classification and Search. — An application that has
complied with the formal requirements shall be classified and a search
conducted to determine the prior art.
SECTION 39. Information Concerning Corresponding Foreign
Application for Patents. — The applicant shall, at the request of the
Director, furnish him with the date and number of any application for
a patent filed by him abroad, hereafter referred to as the "foreign
application," relating to the same or essentially the same invention as
that claimed in the application filed with the Office and other
documents relating to the foreign application.
SECTION 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 patent application, any interested party
may inspect the application documents filed with the Office.
NOVEMBER 29, 2018 | Transcribed by: Carla Louise
Bayquen & Marvin Doods De Castro
The Publication Process is quite complicated. Once the
application has been published, everything submitted by the
applicant may be examined by any interested party. It’s easy
to copy whatever it is submitted. That’s when infringement
takes place.
CHAPTER V – Procedure for Grant of Patent
SECTION 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:
How do you protect the rights of the applicant if the
applicant is the vendor?
If you read the book of Salao, there’s this discussion on prior
art. If you are asked in the bar what are the Graham factors,
it is cited in the US case of Graham v. John Deere Co. This
is to determine the obviousness or non-obviousness. This has
something to do with inventive step. An object or a process has
an inventive step if it is not obvious to a person skilled in the
art.
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.
According to this case, the obviousness or nonobviousness is determined by:
1. level of ordinary skill in the art;
2. scope and content of the prior art;
3. differences between the claimed invention and
the prior art; and
4. objective evidence of non-obviousness
SECTION 41. According a Filing Date. — The Office shall examine
whether the patent application satisfies the requirements for the grant
of date of filing as provided 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.
Here, prior art and inventive step are intertwined. In addition,
the court outlined examples of factors that show objective
evidence of non-obviousness:
1. Commercial success;
2. Long felt but unsolved needs;
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INTELLECTUAL PROPERTY LAW
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3.
Failure of others
Section 76 means that the applicant has a cause of action to
file an infringement case.
It’s a bit abstract. Just take note of that. It’s not in our provision
but it’s from a US jurisprudence.
Section 71 talks about the rights of a patentee.
Inventive step
Connotes that an invention must not be obvious, not to the
general public, but to a person skilled in the art.
What can the patentee do exclusively once the patent
is awarded to him?
It says here it’s as if a patent had been granted for that
invention. He is already protected. Everyone who copies his
product will be a potential defendant in an infringement case.
Person skilled in the art
Presumed to be an ordinary practitioner aware of what was
common general knowledge of the art. He’s presumed to have
knowledge of all of the references that are sufficiently related
to another of the pertinent art or pertinent to the particular
problem which the inventor is involved, whatever that means.
These are just taken from other sources.
The applicant only has a cause of action to file an infringement
case. What is a cause of action? It is made up of four
elements:
(1) a right in favor of the plaintiff by whatever means and
under whatever law (here under Section 76) it arises
or is created;
(2) an obligation on the part of the named defendant
(obligation not to copy) to respect or not to violate
(when there is imitation there is already a violation)
such right; and
(3) an act or omission on the part of such defendant in
violation of the right of the plaintiff or constituting a
breach of the obligation of the defendant to the
plaintiff for which the latter may maintain an action
for recovery of damages.
44.3. The Director General, subject to the 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.
Under Section 44, our last topic, we talked about publication
and the restrictions that are possible when the Director
General, subject to the approval of the STI may restrict when
the publication is prejudicial to national security and I think we
were talking about, before we were rudely interrupted, a bomb.
Let’s say what is being submitted, or application of patent is a
bomb. There are several types of bomb; atomic bomb,
hydrogen bomb … maybe made of human waste bomb that
could annihilate the whole country, alangan naman iyong
ipupublish ‘yan. So, that would be prejudicial to our national
security.
However,
46.1. Actual knowledge that the invention that he was using was the
subject matter of a published application; or
46.2. Received written notice that the invention that he was using was
the subject matter of a published application being identified in the said
notice by its serial number: Provided that the action may not be filed
until after the grant of a patent on the published application and within
four (4) years from the commission of the acts complained of.
SECTION 45. Confidentiality Before Publication. — A patent
application, which has not yet been published, and all related
documents, shall not be made available for inspection without the
consent of the applicant.
When can an action be filed? An action here is an action for
infringement. It is filed by the applicant against a person or an
entity that copies his invention. When? Only upon the grant of
the patent. Meaning, even though the applicant has the cause
of action, he still does not have the right of action.
It is only the publication that will make it public, before that,
there is confidentiality.
The right will come later, if he gets his patent registration. The
sad part here is, it must be within four years from the
commission of the act to bring an action.
How is the right of an inventor protected when his
invention is made known to the whole world by
publication?
What if it takes 10 years before his application for patent will
be granted? Wala na, prescribed na, wala nang right of action.
Actually, kawawa ang mga inventor because this law only
pretends to protect, when in truth and in fact it exposes
everything from the world.
SECTION 46. Rights Conferred by a Patent Application After
Publication. — The applicant shall have all the rights of a patentee
under Section 76 against any person who, without his authorization,
exercised any of the rights conferred under Section 71 of this Act in
relation to the invention claimed in the published patent application, as
if a patent had been granted for that invention: Provided that the said
person had:
I’ve heard from the inventors that approach us, what does the
intellectual property office do when there is an application for
patent is brought before it, tatanggapin lahat ng document, at
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INTELLECTUAL PROPERTY LAW
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anong gagawin? Denied. The once inside and their cohorts are
Dupont filed an appeal with the Director General Francisco.
the ones who are going to develop the product for profit. The
applicant is left out in the cold, wala na. It goes on. The ones
who complain are the inventors, ayaw na nilang magparegister.
First Issue: WON the appeal by Dupont of the DG decision to
the Court of Appeals was proper?
Yes, that was the proper appeal. We've looked at the flow of
appeals under Sec. 7. 7.1 says the decision of the Director of
Patents is appealable to the Director General. And the decisions
of the Director General is appealable to the Court of Appeals.
So that's the correct remedy.
Section 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 observations shall 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.
Second Issue: Is there absolute confidentiality in patent
proceedings?
Any person could make a comment, like you, students. If you
see something from the IP gazette a publication about this
invention, sa tingin ninyo, it is not new, it odes not involve an
inventive step, it is not industrially applicable, it is against public
morality, it is discovery, it is a mathematical formula, then you
can comment.
According to this RA 165, the old law, actually it's the 1962
Revised Rules of Practice, the BPTT, previously required
secrecy in patent applications. We do not see that in our IP
Law, confidentiality before publication. Pero ito, it says here
Sec. 33 "Pending applications are preserved in secrecy. No
information will be given to anyone respecting the filing by any
particular person of any application of patent. The pendency of
any particular case before the office of the subject matter of
any particular application, unless the same is authorized by the
applicant in writing, and unless it shall be necessary in the
opinion of the Director of Patents for the proper conduct of
business before the office. And the SC discussed here that the
IPC , RA 8293 changed numerous aspects of the old patent
law.
The office is open to that and the applicant will be informed
about it. This is only a comment, it is not an opposition; a
formal complaint. That’s what is most important.
Section 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, a written 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.
Section 44 of the IPC provides that all patent applications must
be published. So, the confidentiality is only before publication.
So it's now different under RA 8293.
48.2. Withdrawal of the request for examination shall be irrevocable
and shall not authorize the refund of any fee.
Now the next issue is, if you were listening to the facts, it's so
simple. There was a patent application filed in 19 something,
and nobody followed up. If you look at Sec. 48, the application
shall be deemed withdrawn, unless within six months from the
date of publcation, a written request to determine whether a
patent application meets the requirements of Sec. 21, 27, 32,
39, and the fees have been paid on time. So, going back to the
case, the SC answered based on the old law. An abandoned
patent application will only be revived within four months from
the date of abandonment. No extension of this period is
provided under the 1962 Revised Rules of Practice.
DUPONT v. DG FRANCISCO G.R. No. 174379 (2016)
Dupont is an American corporation organized under the laws of
the State of Delaware filed a Philippine Patent Application No.
35526 before the Bureau of Patents, Trademarks, and
Technology Transfer for their application for Angiotensin II
Receptor Blocking Imidazole (losartan), an invention related to
the treatment of hypertension and congestive heart failure.
The patent application was subsequently abandoned. They filed
for a petition for revival arguing its former counsel, Atty. Mapili,
did not inform it about the abandonment of the application, and
it was not aware that Atty. Mapili had already died. This was
denied by the Director of Patents.
Sec 113 says an abandoned application may be revived as a
pending application within four months from the date of
abandonment upon a good cause shown. An application not
revived within the specified period shall be deemed forfeited.
So Dupont filed the application on July 10, 1987, it was
assigned to the examiner on June 7, 1988. An office action was
mailed to Dupont agent on July 19, 1988. As Dupont failed to
respond, the application was deemed abandoned on
September 20, 1988, which is 60 days. Abandoned na yan. How
much time does Dupont have, to revive? Four months lang from
When the director of patent denied the petition for revival for
having been filed out of time, what did Dupont do when their
Motion for Reconsideration was denied by the Director? What
was the legal remedy resorted to by Dupont?
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September 20, 1988, under Section 113, under the Revised
Rules of Practice. So when was the petition for revival filed? It
was filed only on May 13 2002. 13 years, after the date of
abandonment. Now here, under our new IPC, it even provides
for a shorter period of three months within which to file for
revival.
So when shall a patent be granted? If the application meets the
requirements of the law, and the fees are paid on time. So, all
of that, documentation, and it passes the prerequisites of
patentability, then there's publication, then the patent will be
granted. There's no deficiency when it comes to requirement.
If the required fees for grant and fitting are not paid in due
time, the application shall be deemed to be withdrawn. So we
already know that filing a civil case under Civ Pro, magbayad
ka ng docket fees. Diba, dismissible yung kaso, under the case
of Manchester. The same here. You want to make a patent,
marami kayong babayaran na fees. Even if complies with the
requisites of patentability, walang fees, withdrawn.
Under Sec. 133.4,
“An abandoned application may be revived as a pending application
within three (3) months from the date of abandonment, upon good
cause shown and the payment of the required fee.”
So, if you apply our new provision under RA 8293, since there
was no request for substantive examination, kailangan
magfollow-up ang applicant. Did my application comply with
Sec. 21, 22, 27, 29? Follow-up. Kung walang follow-up, deemed
withdrawn.
50.3. A patent shall take effect on the date of the publication of the
grant of the patent in the IPO Gazette.
So when shall a patent take effect? It shall take effect on the
date of the publication of the grant of the patent. Will it take
effect on the date it is granted? Kunyari nakalagay dun "patent
is granted, November 10, 2018"? No, it will not take effect
unless it is published. So kunyari one year later pa siya
mapublish, then that's the only time it shall take effect.
So let's continue with the case. What is the purpose of the law
on patents? According to this case, the patent is of three-fold
purpose:
1. It seeks to foster and reward invention."
Definitely, to reward those who are inventive enough to create
an invention.
SECTION 51. Refusal of the Application. —
2.
"It promotes disclosures of inventions, to stimulate
further innovation and to permit the public to practice
the invention once the patent expires."
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 the procedure by which an
appeal from the order of refusal from the Director shall be undertaken.
Sana, after na lang the expiration. Bakit kailangan after, kung
kailangan siyang i-publish, as an application.
3.
Now, Sec. 51, the Bureau of Patents can grant a patent, it can
also refuse, or deny. So who normally will refuse an
application? It is the examiner. The final order of the examiner
to grant the patent, where do you appeal that? To the Director
of Patents. Director of Patents muna. So examiner, Director of
Patents. Then from the Director of Patents, you appeal to the
Director General. After you appeal to the Director General, what
do you do? You look at the regulations promulgated by the IPO.
"Stringent requirements for patent protection seek to
ensure that ideas in the public domain remain
therefore the free use of the public."
Okay so, that is a portion of the case. We will go back to this
case, under compulsory licensing.
SECTION 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.
SECTION 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.
Can the applicant amend his or her application? Yes, provided
that such amendment will not include new matter outside the
scope of the disclosure contained in the application as filed.
52.2. Any interested party may inspect the complete description,
claims, and drawings of the patent on file with the Office.
SECTION 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.
So we had our first publication. What is the first publication?
Publication of the application. And then once we have our
patent granted, we will have our 2nd publication. What will be
published this time? The grant of the patent. What else to be
included? Other related information. And again, any interested
50.2. If the required fees for grant and printing are not paid in due
time, the application shall be deemed to be withdrawn.
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party may inspect the complete description and drawings of the
patent on file with the office.
SECTION 53. Contents of Patent. — The patent shall be issued in
the name of the Republic of the Philippines under the seal of the Office
and shall be signed by the Director, and registered together with the
description, claims, and drawings, if any, in books and records of the
Office.
So, what shall the patent contain?
A patent is a piece of paper which shows that the application is
granted a patent. It shall be issued in the name of the Republic
of the Philippines under the seal of the office, signed by the
Director. Which director? The director of patents. And
registered along with the description, and etcetera, in the
books and records of the IPO.
SECTION 54. Term of Patent. — The term of a patent shall be
twenty (20) years from the filing date of the application.
Now the patent that is granted to the applicant is not forever.
It has a very short term. How long? 20 years. Not from the
effectivity, not from the grant, 20 years from the filing date. So
if it takes 10 years for the patent to be issued, 10 years na lang
ang protection. Does that mean that the inventor cannot sell,
manufacture, distribute his invention? Pwede, di lang siya
makafile ng infringement case. That is why, I don't know if you
notice, there are some gadgets na if you really scrutinize them,
nakalagay diyan "Philippine Patent Pending", or "US Patent
Pending". That means there is a pending application, hindi pa
naga-grant. And that is to inform the whole world that I, the
inventor, is in the process of applying for a patent. So do not
copy. Wag mong gayahin to. So this flowchart was taken from
the IPO flowchart.
SECTION 55. Annual Fees. —
55.1. To maintain the patent application or patent, an annual fee shall
be paid upon the expiration of four (4) years from the date the
application was published pursuant to Section 44 hereof, and on each
subsequent anniversary of such date. Payment may be made within
three (3) months before the due date. The obligation to pay the annual
fees shall terminate should the application be withdrawn, refused, or
cancelled.
Now, after the patent is granted, does that mean wala na?
Goodbye IPO, thank you, I have nothing to do with you
anymore?
No. Once you go to the IPO to apply, you're stuck with the IPO
until your patent expires. Because to maintain the patent or
patent application an annual fee shall be paid upon the
expiration of four years from the date of application was
published, pursuant to Sec. 44.
So kahit na wala pang patent, basta four years from the date
of publication, magbayad ka na ng annual fee, and in fact on
each subsequent anniversary of that date, yearly from the date,
till the expiration. Payment may be made within three months
before the due date. The obligation to pay the annual fee shall
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terminate should the application be withdrawn, refused, or
cancelled.
shall cease to exist. So andaming napa-publish sa Official
Gazette.
55.2. If the annual fee is not paid, the patent application shall be
deemed withdrawn or the patent considered as lapsed from the day
following the expiration of the period within which the annual fees were
due. A notice that the application is deemed withdrawn or the lapse of
a patent for non-payment of any annual fee shall be published in the
IPO Gazette and the lapse shall be recorded in the Register of the
Office.
DECEMBER 4, 2018 | Transcribed by: Hannah Keziah Dela
Cerna & Vanessa Escritor
Q: What if there is a mistake in the patent? Any mistake? [Sa]
certificate ano, mali yung spelling ng pangalan, mali yung
item and all those things but it’s the fault of the office?
A: It says here the Director shall have the power to correct,
without fee, any mistake in the patent incurred through the
fault of the office when clearly disclosed in the records
thereof.
55.3. A grace period of six (6) months shall be granted for the payment
of the annual fee, upon payment of the prescribed surcharge for
delayed payment.
Now what happens if you don't pay the annual fee? Deemed
withdrawn, or the patent considered as lapsed, from the date
following the expiration of the period. And notice that the
application is deemed withdrawn from the lapse of the patent
from nonpayment shall be published in the IPO Gazette and
recorded. But you are given six months for the payment of the
annual fee, upon payment of the surcharge.
SECTION 57. Correction of Mistakes of the Office. – The
Director shall have the power to correct, without fee, any mistake in a
patent incurred through the fault of the Office when clearly disclosed
in the records thereof, to make the patent conform to the records. (
Comment of Ma’am: Luckily we have this provision because
when it comes to a mistake in a birth certificate or marriage
certificate whatever diba. It’s the person affected that has to
file, whether its administrative or judicial and pay. But here in
the IPC, mistakes made by the office may be rectified without
fee.
SECTION 56. Surrender of Patent. —
56.1. The owner of the patent, with the consent of all persons having
grants or licenses or other right, title or interest in and to the patent
and the invention covered thereby, which have been recorded in the
Office, may surrender his patent or any claim or claims forming part
thereof to the Office for cancellation.
Annotation of Salao: This is done upon written petition of
the patentee or assignee of record and upon tender to the
Office of the copy of the patent issued (from IRR, Rule 1102).
Q: But what if it is the applicant who makes a mistake?
A: Section 58
56.2. A person may give notice to the Office of his opposition to the
surrender of a patent under this section, and if he does so, the Bureau
shall notify the proprietor of the patent and determine the question.
SECTION 58. Correction of Mistake in the Application. - On
request of any interested person and payment of the prescribed fee,
the Director is authorized to correct any mistake in a patent of a formal
and clerical nature, not incurred through the fault of the Office.
56.3. If the Office is satisfied that the patent may properly be
surrendered, he may accept the offer and, as from the day when notice
of his acceptance is published in the IPO Gazette, the patent shall cease
to have effect, but no action for infringement shall lie and no right
compensation shall accrue for any use of the patented invention before
that day for the services of the government.
Q: Can the patentee or the owner of the patent make changes
in his patent?
A: YES!
Now, sometimes noh the patent, mas magulo, mas problema.
Mabuti na lang wala na lang patent. So sometimes yung mga
patentee, they surrender the patent. So the owner of the
patent, with the consent of the persons having grants and
licenses, will surrender patent on any claim or claims or in part
thereof, to the office, what office? Bureau of Patents.
SECTION 59. Changes in Patents. –
59.1. The owner of a patent shall have the right to request the Bureau
to make the changes in the patent in order to:
(a) Limit the extent of the protection conferred by it;
(b) Correct obvious mistakes or to correct clerical errors; and
(c) Correct mistakes or errors, other than those referred to in letter (b),
made in good faith: Provided, That where the change would result in a
broadening of the extent of protection conferred by the patent, no
request may be made after the expiration of two (2) years from the
grant of a patent and the change shall not affect the rights of any third
party which has relied on the patent, as published.
What if the patentee has already entered into contracts with
the licensee, mga manufacturer, etc? Says here any person
may give notice of his opposition, to the surrender of the
patent, and if he does so the Bureau shall notify the proprietor.
When the Office is satisfied that the patent may be properly
surrendered, he may accept the offer and from the day when
notice of acceptance is published in the IPO Gazette, and it
59.2. No change in the patent shall be permitted under this section,
where the change would result in the disclosure contained in the patent
going beyond the disclosure contained in the application filed.
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59.3. If, and to the extent to which the Office changes the patent
according to this section, it shall publish the same.
*NOTE: Partial cancellation is allowed (Section 61.2)
SECTION 62. Requirement of the Petition. - The petition for
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 the English language.
Comment: So merong 2 year limit noh if you want to broaden
and change shall not affect the rights of any third party which
has relied on the patent.
So andami-andaming pinapublish sa IPO gazette. So this is ANY
change should also be published.
SECTION 60. Form and Publication of Amendment. – An
amendment or correction of a patent shall be accomplished by a
certificate of such amendment or correction, authenticated by the seal
of the Office and signed by the Director, which certificate shall be
attached to the patent. Notice of such amendment or correction shall
be published in the IPO Gazette and copies of the patent kept or
furnished by the Office shall include a copy of the certificate of
amendment or correction.
Requirements (W-V-S-F-A):
1. In writing;
2. Verified by the petitioner or any person in his behalf who
knows the facts
3. Specify the grounds, include a statement of facts
4. Filed with the Office
5. Attachment of printed publications or of patents of other
countries or other supporting documents together with the
English translation if not in English
Comment: So in other words, the original certificate of patent
will remain and then there will just be an attachment or such
correction. Notice of such amendment shall also be published
in the IPO Gazette.
Comment: If you are the person who wants to cancel a
patent, you have to file a petition and this is how it should be.
Ang tawag sa gusto magpacancel ng patent ay a “petitioner”.
Here, the word petitioner is used in its proper context.
So now let’s go to [Section] 61. We are in a situation where the
patent has already been issued.
Chapter VI – Cancellation of Patents and
Substitution of Patentee
JURISDICTION AND NOTICE OF HEARING
Where to file: Bureau of Legal Affairs (Sec 10.1)
SECTION 61. Cancellation of Patents. –
SECTION 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 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.
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 in the 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, R.A. No. 165a)
SECTION 64. Committee of Three. – In cases involving highly
technical issues, on motion of any party, the Director of Legal Affairs
may order that the petition be heard and decided by a committee
composed of the Director of Legal Affairs as chairman and two (2)
members who have the experience or expertise in the field of
technology to which the patent sought to be cancelled relates. The
decision of the committee shall be appealable to the Director General.
Comment: By whom [was it issued]? The Bureau of Patents.
So, if somebody wants to file a case for cancellation, where
should he go? The same as opposition. The Bureau of Legal
Affairs.
Comment: Ang patent talaga, most of the time very technical,
especially if it’s a process. Or if invention, mga robot, daming
butingting.
Grounds for Cancellation (N-D-C):
1. Invention is not new or patentable;
Composition of Committee of Three:
1. Director of Legal Affairs - Chairman;
2. Two members who have the experience or expertise in the
field of technology to which the patent sought to be cancelled
relates
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; - (*which means that there are no
instructions on how to use it)
3. The patent is contrary to public order or morality
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Where to appeal: Director General
he is an assignee of the real inventor pero ang kaniyang
authority pineke niya pero it looked real. So he applied for a
patent. Tapos he was granted a patent.
Comment: So kunyari if it’s a formal defect, may konti lang na
dapat
ayusin
ang
patentee/applicant.
Kulang
sa
documentation. The amendment made by the patentee during
the proceedings, if okay na, it may decide to maintain the
patent, provided the fees for printing have been paid within the
time describe.
According to Section 67 if a person referred to in Section 29…
SECTION 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, the
earliest priority date.
Ano tong amendment? This is when the patent does not
disclose. Pag nadisclose na, that will be published again.
But what if the patent is cancelled? The rights conferred by the
patent or any specified claim or claims cancelled shall
terminate.
Say we have Mr. X who filed the application patent on June 10,
2010.
Mr. Y. files on September 10, 2010. Mr. Y claims he has a
foreign application. Nagsubmit siya ng foreign application na
feeling ni Mr. X na peke. Pero di alam na fake.
SECTION 65. Cancellation of the Patent. –
65.1. If the Committee finds that a case for cancellation has been
proved, it shall order the patent or any specified claim or claims thereof
cancelled.
So Mr. Y has earlier priority date because he filed an application
on May 10. Siya yung na-grantan ng patent. Mr Y was granted
the patent. Mr X found out na fake talaga.
65.2. If the Committee finds that, taking into consideration the
amendment made by the patentee during the cancellation proceedings,
the patent and the invention to which it relates meet the requirement
of this Act, it may decide to maintain the patent as amended: Provided,
That the fee for printing of a new patent is paid within the time limit
prescribed in the Regulations.
So Mr. X says, “I have the right to patent. I was the first to
file.”
He must go to a special commercial court and prove that the
papers of Mr. Y are fake. The court must give an order that Mr.
X has the right to patent because he was first to file.
65.3. If the fee for the printing of a new patent is not paid in due time,
the patent should be revoked.
65.4. If the patent is amended under Subsection 65.2 hereof, the
Bureau shall, at the same time as it publishes the mention of the
cancellation decision, publish the abstract, representative claims and
drawings indicating clearly what the amendments consist of. (n)
Under Section 67, Mr. X, once he has that final order from the
court (so he has to undergo court proceedings; he must pay
the corresponding filing fees o ano pa sa korte), so he can
present his own application in the place of the applicant.
SECTION 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, R.A. No. 165a)
The situation here, the first remedy, pending pa ang application
ni Mr. Y tapos Mr. X goes to court and nakakuha siya ng final
order. So Mr X can take the place of Mr. Y because he already
has a court order. He should go to the Bureau of Patents.
What if hindi niya feel ang application ni Mr. Y? He can file a
new application with the Bureau of Patents again. He must
show the court order. Or he can go to the Bureau of Legal
Affairs and request that the application be refused.
GENERAL RULE: The decision of the DLA shall be immediately
executory
EXCEPTION: Unless restrained by the DG
Dun sa opposition case niya, he has proof from the court. Or
he can go to the BLA and seek cancellation if one has already
been issued.
The only way to stop it is to get a Writ of Injunction. Where do
we get it? That is under Civil Procedure.
When can he avail? Within 3 months after the decision of the
Special Commercial Court has been made final.
CHAPTER VII
REMEDIES OF A PERSON WITH A RIGHT TO A PATENT
*NOTE: Section 29 and 67 are related
Comment: This is very very important. This always comes out
in the Bar so take note.
SECTION 67. Patent Application by Persons Not Having the
Right to a Patent. –
Scenario (from TSN): Say a patent has been issued to Mr. X.
yun pala he has no right to patent. Kasi nag-apply siya claiming
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
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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.
SECTION 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 as patentee,
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.
67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis
to a new application filed under Subsection 67. 1(b). (n)
So again, let’s say MR. A applied for a patent for this particular
invention and he claims to be the inventor. And here goes Mr.
B. Let’s say the application is still ongoing. Mr B. claims that he
is the true and actual inventor. Pwede ba siyang pumunta sa
Bureau of Patents and [say], “Ako! Ako yung inventor. Ibigay
niyo sakin.” Do you think the Bureau of Patents will listen to
him? NO. He must again go to the Special Commercial Court.
Get a judgment or order that declares him to be the true and
actual inventor. He has to prove before the court that he is
indeed is the true and actual inventor.
Ma’am’s Lecture (2018): So who has a right to the patent?
The inventor diba. The inventor his heirs, or assigns.
So okay, in other words, let’s say we have here applicant A and
he was the first to file the application. And then we have
applicant B who filed for the same invention. He claims to have
the right of priority pero dinedma. And the patent was issued
to A. Ano magawa ni B? He clearly has the right of priority.
Maybe he was not able to submit all the necessary documents
when he filed so he didn’t get the first early priority date. Is it
the end for him if naissue na ang patent kay A? The answer is,
he still has a remedy under Section 67. Can he go to the Bureau
of Patents and say, “here oh, here are my documents”? He
cannot do that anymore. Can he have the patent cancelled?
No, that is not a ground for cancellation. The grounds are
specific under section 61. His remedy is to go to court. What
court? Special Commercial Court. He must prove to the court
that he has the earlier priority date. He must show the
documents and he must ask the court to declare him as the
person who has the right to the patent. So once he has the
court declaration, what can he do? It depends. Itong Section
67, applicable to an ongoing or pending application. Hindi pa
na-award ang application. Hindi niya to pwedeng iinsist sa
Bureau of Patents. Bawal if pending at ‘di sya na-entertain. But
if he gets the court order that he is entitled to the patent, he
can within 3 months after the finality of the decision… whose
decision? The Special Commercial Court. He can prosecute the
application as his own application in the place of the applicant.
Or he can file a new patent application instead. Where does he
do that? Bureau of Patents. His other option, request that the
application be refused. So that is something like opposition.
Where does he file that? Bureau of Legal Affairs. Or he can seek
the cancellation of the patent. Where? BLA.
Difference between 67 and 68:
Under 68, the court shall order for a substitution as patentee,
the same. Pareho noh. Or at the option of the true inventor,
cancel the patent. If you look at this [other] one, “seek
cancellation”, meaning under 67, when he gets his order, he
has to go to the BLA and file a cancellation case. He has to file
a petition for cancellation. But under 68, he does not have to
go to the BLA. He can ask the court to cancel the patent.
Meaning the court has the power to cancel the patent even
though cancellation cases are filed before the BLA. And [court]
can award actual and other damages in his favor if warranted
by the circumstances. So you have to differentiate 67 from 68.
The situations are different and the remedies are different. So
if you are placed with a problem, you have to know which
provision to apply.
SECTION 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.
When should the person under 67 and 68 file the action
in court: Within 1 year from the date of publication of the
application.
SUMMARY of the THREE (3) OPTIONS AFTER GETTING
THE COURT ORDER:
1. Prosecute the application as his own application in the place
of the applicant - he will replace
2. File a new patent application
3. Request in the BLA that the application of B be refused
SECTION 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.
Section 67 refers to the one who has the earliest priority date.
Why do we have to specify? It is because Section 68 is another
remedy. But this remedy belong to the true and actual inventor.
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INTELLECTUAL PROPERTY LAW
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Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
CHAPTER VIII
RIGHTS OF PATENTEES AND INFRINGEMENT OF
PATENTS
SECTION 72. Limitations of Patent Rights. — The owner of a
patent has no right to prevent third parties from performing, without
his authorization, the acts referred to in Section 71 hereof in the
following circumstances:
There is an automatic ownership by the creator of his creation.
The inventor owns his invention. There is no question about
that. Kanya yun. But what will he do with his invention kung
tingnan lang niya? Siyempre gusto niyang kumita. He wants to
reproduce. He wants to sell. He wants to make a profit. That is
when the problem arises. Without a patent, anyone can copy it
and will not be held liable. So, he has to apply for a patent. And
once he gets a patent for his invention. What are his rights?
That is section 71.
Even though the patentee has the rights conferred by section
71, section 72 says that, “owner of the patent has no right to
prevent third parties from performing without his authorization
the acts referred to in section 71 in the following circumstances.
So yung making, selling, using, importing, hindi niya pwedeng
pigilan if:
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: Provided, That, with regard to drugs and
medicines, the limitation on patent rights shall apply 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: Provided, further, That the right to import the drugs and
medicines contemplated in this section shall be available to any
government agency or any private third party;
RIGHTS OF PATENTEES AND INFRINGEMENT OF
PATENTS
SECTION 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;
Syempre, the owner of the patent is the one who
manufactures, who sells, who distributes. Edi yung namimili,
alangan tignan nya lang yung product. Pwede nya gamitin.
Provided, it is the owner of the product. It’s the patentee’s
product. Hindi yung sa infringer.
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.
Now let’s look at this. This has been amended by RA No.
9502. Let’s go to the case of Roma Drug.
Where the subject matter is a product, he has the right to
restrain, prohibit or prevent any unauthorized person or entity
from making, using, offering the same, selling, or importing
that product.
ROMA DRUG v. RTC OF GUAGUA G.R. No. 149907 (2009)
These drugs are manufactured by Smithkline and Smithkline
has an exclusive distributor in the Philippines which is
Smithkline Philippines. Meaning, nobody else can import that
drug except Smithkline Philippines. Unfortunately, merong mga
drugstore who were able to find a supplier in London na mas
mura ang bigay sa kanila. Kasi mahal man masyado ang benta
ng Smithkline Philippines kasi sila lang. And these are not
generic. These are branded drugs. They were able to get
directly from London cheaper ones.
What if it’s a process? He has the right to restrain, prevent or
prohibit any unauthorized person or entity from using the
process and the manufacturing, dealing in, selling, using 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.
According to Section 3 of RA 8203, which prohibits the sale
on counterfeit drugs, under section 3.3, that includes an
unregistered imported drug product. So, unregistered imported
ka, considered counterfeit. Kaya na-seize yung mga drugs ng
Roma Drug under this law.
Patent owner shall also have the right to assign or transfer by
succession the patent. Because every owner has the right to
dispose.
So pwede nya ibenta. Pwede nya ipamigay. Whatever. Because
that is his right. The right to the patent is also a property right;
he can dispose of that. He can even compute licensing
contracts for the same. So, those are the rights conferred by a
patent.
Issue: WON the act of selling imported drugs is illegal. - NO
When R.A. No. 9502 or the Cheaper Medicines Act was
enacted in 2008, this prohibition, the word “importing” under
Section 71 which is one of the acts that are exclusive to the
patentee no longer applies if we are talking about drugs and
medicines. Drugs and medicines lang. Pwede na i-import
because – what is the name of the law? Cheaper Medicines Act.
No unauthorized making, using, etc.
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INTELLECTUAL PROPERTY LAW
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Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
The purpose of the Cheaper Medicines Act is to provide for
cheaper medicines for the public. So that the public can have
access to cheaper medicine. Kasi nga kung exclusive distributor
lang, only the rich can afford, noh? With this provision, it now
allows importation, direct importation. And hindi naman
counterfeit yung mga drugs na ito. Binili naman from Smithkline
in London.
with a medical prescription or acts concerning the medicine so
prepared; and
If any of those acts by a pharmacist or medical professional
involves using, etc., that is not an act of infringement.
72.6. 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. (amended by RA No. 9502)
“Section 7 of Rep. Act No. 9502 amends Section 72 of the Intellectual
Property Code in that the later law unequivocally grants third persons
the right to import drugs or medicines whose patent were registered in
the Philippines by the owner of the product.
The unqualified right of private third parties such as petitioner to import
or possess unregistered imported drugs in the Philippines is further
confirmed by the Implementing Rules to Republic Act No. 9502
promulgated on 4 November 2008.”
Those are the limitations on the rights of the patentee.
Section 73 talks about a prior user.
72.2. Where the act is done privately and on a 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;
SECTION 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 to continue the use thereof as envisaged in such
preparations within the territory where the patent produces its effect.
What are these acts? Making, selling, distributing, using,
importing, noh? Somebody does it and it involves a patented
product, hindi naman talaga sya bawal if it is for private noncommercial use. But it must not have significantly – pwede
konti lang, noh? Pero not significantly prejudice the economic
interest. Dapat hindi malugi yung patentee.
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.
72.3. Where the act consists of making or using exclusively for
experimental use of the invention for scientific purposes or educational
purposes and such other activities directly related to such scientific or
education experimental use;
Under number 1, if you buy a patented product, you can use
it. ‘Yan ‘yung number 1. As long as this is the product that was
released in the market by the owner of the patent under his
authority, yung mga manufacturer nya, mga distributor nya,
you can use the patented product.
If we tamper with a patented product here in school or labs,
for educational, experimental, scientific purposes, that does not
amount to infringement.
Now, we also told you a while back that some of the inventors
actually manufacture their products already before they apply
for a patent. Now, kung meron mang manggaya noon,
nanggaya nung invention nya and somebody manages to make
something out of it na medyo pareho, eh wala pang patent.
Hindi pa sya nag-aapply. So this person who actually made this
invention and is using it before the inventor had the patent
registered, can continue using. He is not obliged to buy again
yung patented product. As long as he started using it before
the filing or priority date of the application from which the
patent is granted. He can continue using it.
72.4. In the case of drugs and medicines, where the act includes
testing, using, making or selling the invention including any data
related thereto, solely for purposes reasonably related to the
development and submission of information and issuance of approvals
by government regulatory agencies required under any law of the
Philippines or of another country that regulates the manufacture,
construction, use or sale of any product: Provided, That, in order to
protect the data submitted by the original patent holder from unfair
commercial use provided in Article 39.3 of the Agreement on TradeRelated Aspects of Intellectual Property Rights (TRIPS Agreement), the
Intellectual Property Office, in consultation with the appropriate
government agencies, shall issue the appropriate rules and regulations
necessary therein not later than one hundred twenty (120) days after
the enactment of this law;
SECTION 74. Use of Invention 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:
Can a private person or an entity test, use, make, sell patented
drugs and medicines? YES. Provided it is solely for the purpose
related to development, etc.
(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
72.5. Where the act consists of the preparation for individual cases, in
a pharmacy or by a medical professional, of a medicine in accordance
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INTELLECTUAL PROPERTY LAW
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Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
When it comes to section 74, the use of the government or
exploitation of the government of a patented product or
process, when you question that, you go to the special
commercial court.
(b) A judicial or administrative body has determined that the manner
of exploitation, by the owner of the patent or his licensee, is anticompetitive; 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
No court, except the Supreme Court of the Philippines, shall issue any
temporary restraining order or preliminary injunction or such other
provisional remedies that will prevent its immediate execution.
(d) In the case of drugs and medicines, there is public non-commercial
use of the patent by the patentee, without satisfactory reason; or
74.4. The Intellectual Property Office (IPO), in consultation with the
appropriate government agencies, shall issue the appropriate
implementing rules and regulations for the use or exploitation of
patented inventions as contemplated in this section within one hundred
twenty (120) days after the effectivity of this law. (amended by R.A.
(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.
No. 9502)
Under section 74, the government can actually exploit. Actually
ang nagpapahaba dito, section 74. What are the instances
under Section 74 aside from that the government can exploit a
patented product?
What does this mean? If the government exploit the patent of
another, that patentee can go to the Special Commercial Court
and oppose it by trying to prevent it. But that court, the court
where he files the action, cannot – if it renders that decision in
favor of the government, the patentee has to go to the
Supreme Court to stop the execution of the decision of the
court.
74.2. Unless otherwise provided herein, the use by the Government,
or third person authorized by the Government shall be subject, where
applicable, to the following provisions:
(a) In situations of national emergency or other circumstances of
extreme urgency as provided under Section 74.1 (c), the right holder
shall be notified as soon as reasonably practicable;
DECEMBER 6, 2018 | Transcribed by: Dominic Estremos &
Najim Guinomla
(b) In the case of public non-commercial use of the patent by the
patentee, without satisfactory reason, as provided under Section 74.1
(d), the right holder shall be informed promptly: Provided, That, the
Government or third person authorized by the Government, without
making a patent search, knows or has demonstrable ground to know
that a valid patent is or will be used by or for the Government;
REVIEW:
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)
(c) If the demand for the patented article in the Philippines is not being
met to an adequate extent and on reasonable terms as provided under
Section 74.1 (e), the right holder shall be informed promptly;
In other words, a prior user who is not a patentee can still use
that particular product, if he falls under this definition of a prior
user.
(d) The scope and duration of such use shall be limited to the purpose
for which it was authorized;
Q. Can he transfer that patented product to another? Does he
have that right?
A. The answer is no. Because only the patentee has only the
right to assign, transfer the patented product. But he can do so
if he assigns or transfers the entire business. This is for the
protection of the patent owner.
(e) Such use shall be non-exclusive;
(f) The right holder shall be paid adequate remuneration in the
circumstances of each case, taking into account the economic value of
the authorization; and
(g) The existence of a national emergency or other circumstances of
extreme urgency, referred to under Section 74.1 (c), shall be subject
to the determination of the President of the Philippines for the purpose
of determining the need for such use or other exploitation, which shall
he immediately executory.
Section 74. Use of Invention 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:
There are instances where the government – it’s not a blanket
authority given to the government. There are situations that
should be present before the government could exploit the
patent of another.
(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 anticompetitive.
74.3. All cases arising from the implementation of this provision shall
be cognizable by courts with appropriate jurisdiction provided by law.
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INTELLECTUAL PROPERTY LAW
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Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
Q. Who can file an action for infringement of patent?
A. Only the registered holder of the patent. So not all inventors
can file an action for infringement of patent. If there is no
patent registration in his name, then such inventor cannot file
an action for infringement.
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)
Section 75. Extent of Protection and Interpretation of Claims.
–
Q. Now, what is the test of infringement? How do you know
that somebody else is infringing on your patented product –
using, making, selling, distributing, etc.?
A. In order to constitute infringement, they only need
substantial identity, not exact, between the two devices.
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)
Q. What are the two devices?
A.
1. First, the registered device; and
2. Second, the device of the alleged infringer.
Just read sections 74 and 75. It’s kinda complicated, noh. But
it’s really not that important.
Like these two – *maam points to her laptop and thermos* –
do they look the same? Is there substantial identity between
this device and this device?
Section 76. Civil Action for Infringement. –
To determine, we use the Doctrine of Equivalents to
determine substantial identity – when they perform
substantially the same function, in substantially the same way,
to obtain the same result, even if they differ in form, shape,
dimension. So these two devices are not equivalent. There is
no substantial identity because they have different functions.
And that is enough to make them different.
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 a court of competent jurisdiction, to recover
from the infringer such damages sustained thereby, plus attorney's fees
and other expenses of litigation, and to secure an injunction for the
protection of his rights.
The best example for this is a vacuum cleaner. How many
forms of vacuum cleaners have you seen? Diba there are long
ones, round ones, square ones, may mga triangle. Iba-iba.
Different colors. Different shapes and sizes.

But they perform the same function. Ano yun? Mag
suyop, vacuum ng whatever it is.

In the same way. How? Well, there is a suction there,
a gadget.

What is the result? To clean the surface which is being
vacuumed, even if they differ in form, shape or
dimension.
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 actual damages
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.
The Doctrine of Equivalents provides that the infringement
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.
76.6. Anyone who actively induces the infringement of a patent or
provides the infringer with a component of a patented product or of a
product produced 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)
A case here is Smith Kline v. CA and Tryco.
SMITH KLINE v. CA AND TRYCO 409 SCRA 33 (2003)
Q. What is infringement?
A. It is performing the acts that are limited to the patentee making, using, offering for sale, selling, or importing a patented
product or product obtained directly or indirectly from a
patented process, or the use of the patented process without
the authorization of the patentee.
Smith Kline is a corporation existing by virtue of US
laws and licensed to do business in the Philippines. In 1981,
the Bureau of Patents granted Smith Kline’s application for
patent over its invention entitled "Methods and Compositions
for Producing Biphasic Parasiticide Activity Using Methyl 5
Propylthio-2-Benzimidazole Carbamate."
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INTELLECTUAL PROPERTY LAW
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Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
The letters patent provides in its claims that the patented
invention consisted of a new compound named Methyl 5 and
the methods or compositions utilizing the compound as an
active ingredient in fighting infections caused by
gastrointestinal parasites in animals.
substantial identity even though they perform the same
function and achieve the same result. This is because the
second component is not present. Smith Kline failed to explain
how Albendazole performs the same way as Methyl 5. Nothing
more was asserted and substantiated regarding the method or
the means which Albendazole treats parasites in animals.
Now, we have Tryco Pharma Corporation which manufactures,
distributes and sells veterinary products including Impregon.
This drug has an active ingredient called Albendazole. This is
claimed to be effective against gastro-intestinal infestation,
which is the same functions as Methyl 5.
Issue 2: Whether the letters of patent issued to Smith Kline
covers the active ingredient Albendazole. – No.
Rule: When the language of its claims is clear and distinct, the
patentee is bound thereby and may not claim anything beyond
them.
So, Smith Kline sued Tryco Pharma for infringement of patent
before the RTC.
However, it bears stressing that the mere absence of the word
Albendazole in the letter patent is not determinative of
Albendazole’s non-inclusion in the claims of the patent. While
Albendazole is admittedly a chemical compound that exists by
a name different from that covered in Smith Kline’s letters
patent, the language of the letter patent fails to yield anything
at all regarding Albendazole. No extrinsic evidence had been
adduced to prove that Albendazole inheres in Smith Kline’s
patent in spite of its omission therefrom or that the meaning of
the claims of the patent embraces Albendazole.
Smith Kline alleged that using the Doctrine of Equivalents, there
is patent infringement. Albendazole is a substantially the same
as Methyl 5 because they both combat worm or parasite
infestation in animals. So since they both perform the same
function in the same way to achieve the same results, they are
truly identical.
On the other hand, Tryco here alleges that the Doctrine of
Equivalents is not applicable because these two compounds are
actually different in their chemical and physical properties.
Tryco found out that there was a divisional application of patent
by Smith Kline in the U.S. for the same Albendazole compound.
Being a separate patent, Tryco alleged that it is not the same
as Methyl 5.
Comment: It is actually quite complicated noh when it comes
to drugs, how it is being used. The function and the result, it is
easy to prove.
Furthermore, the patent does not cover the substance
Albendazole because it was not even in the letters of patent of
Smith Kline. Since they are not the same, Tryco alleged that it
is not impliedly covered by the letters of patent.
Also take note in this case that the SC mentioned the functionmeans-and-results test. The Doctrine of Equivalents requires
satisfaction of the function-means-and-result test. So if this test
is passed, this means that the two devices or two processes –
there is substantial identity between them.
Issue 1: Whether or not Methyl 5 is substantially the same as
Albendazole. – No. It is not substantially the same.
CRESER PRECISION v. CA and FLORO INTERNATIONAL
CORP. 286 SCRA 13 (1998)
Rule: Substantial identity is determined by the Doctrine of
Equivalents. It is also the test of infringement for patent.
NOTA BENE: The applicable law was RA 165.
Floro International Corporation (private respondent) was
granted by Bureau of Patents, Trademarks and Technology
Transfer (BPTTI), a Letters Patent, covering an aerial fuze
which was published in the Bureau of Patents Gazette.
The Doctrine of Equivalents provides that an infringement 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.
Sometime in November 1993, FIC through its president,
Gregorio Floro, discovered that Creser submitted samples of its
patented aerial fuze to the Armed Forces of the Philippines
(AFP) for testing. He learned that petitioner was claiming the
aforesaid aerial fuze as its own and planning to bid and
manufacture the same commercially without license or
authority from FCI.
In other words, the innovative concept of the devise must have
substantial similarity with respect to the function, means, and
results of the devise patented, or the function-means-andresult test.
Furthermore, the patentee, who is assailing infringement, has
the burden to show that all three components of the test of
equivalents are met.
To protect its right, FIC sent a letter to Creser advising it for its
existing patent and warned the latter of a possible court action
should it proceed with the scheduled testing by the military on
December 7, 1993.
Applying these in the case at bar, while both compounds have
the effect of neutralizing parasites in animals, there is no
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INTELLECTUAL PROPERTY LAW
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exclusive right. Moreover, there can be no infringement of a
patent until a patent has been issued, since whatever right one
has to the invention covered by the patent arises alone from
the grant of patent. In short, a person or entity who has not
been granted letters patent over an invention and has not
acquired any right or title thereto either as assignee or as
licensee, has no cause of action for infringement because the
right to maintain an infringement suit depends on the existence
of the patent.
In response to private respondents demand, petitioner filed on
December 8, 1993 a complaint for injunction and damages
arising from the alleged infringement before the RTC of Quezon
City.
The complaint alleged, among others: that petitioner is the
first, true and actual inventor of an aerial fuze which is
developed as early as December 1981 under the Self-Reliance
Defense Posture Program (SRDP) of the AFP; that private
respondents aerial fuze is identical in every respect to the
petitioners fuze; and that the only difference between the two
fuzes are miniscule and merely cosmetic in nature.
“Petitioner admits it has no patent over its aerial fuze. Therefore, it has
no legal basis or cause of action to institute the petition for injunction
and damages arising from the alleged infringement by private
respondent. While petitioner claims to be the first inventor of the aerial
fuze, still it has no right of property over the same upon which it can
maintain a suit unless it obtains a patent therefor. Under American
jurisprudence, and inventor has no common-law right to a monopoly
of his invention. He has the right to make, use and vend his own
invention, but if he voluntarily discloses it, such as by offering it for
sale, the world is free to copy and use it with impunity. A patent,
however, gives the inventor the right to exclude all others. As a
patentee, he has the exclusive right of making, using or selling the
invention.
Petitioner prayed that a temporary restraining order and/or writ
of preliminary injunction be issued enjoining private
respondent.
It is petitioner’s contention that it can file, under section 42 if
the Patent Law (R.A. 165), an action for infringement not as a
patentee but as an entity in possession of a right, title or
interest in and to the patented invention. It advances the
theory that while the absence of a patent may prevent one from
lawfully suing another for infringement of said patent, such
absence does not bar the first true and actual inventor of the
patented invention from suing another who was granted a
patent in a suit for declaratory or injunctive relief recognized
under American patent laws. This remedy, petitioner points
out, may be likened to a civil action for infringement under
Section 42 of the Philippine Patent Law.
Further, the remedy of declaratory judgment or injunctive suit on
patent invalidity relied upon by petitioner cannot be likened to the civil
action for infringement under Section 42 of the Patent Law. The reason
for this is that the said remedy is available only to the patent holder or
his successors-in-interest. Thus, anyone who has no patent over an
invention but claims to have a right or interest thereto cannot file an
action for declaratory judgment or injunctive suit which is not
recognized in this jurisdiction. Said person, however, is not left without
any remedy. He can, under Section 28 of the aforementioned law, file
a petition for cancellation of the patent within three (3) years from the
publication of said patent with the Director of Patents and raise as
ground therefor that the person to whom the patent was issued is not
the true and actual inventor. Hence, petitioners remedy is not to file an
action for injunction or infringement but to file a petition for
cancellation of private respondent patent. Petitioner however failed to
do so. As such, it cannot now assail or impugn the validity of the private
respondent’s letters patent by claiming that it is the true and actual
inventor of the aerial fuze.”
ISSUE: WON Creser has the cause of action to file an
injunction and damages arising from alleged infringement. NO
RULING: Section 42 of R.A. 165, otherwise known as the
Patent Law, explicitly provides:
SECTION. 42. Civil action for infringement. 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 the proper Court of First Instance (now Regional Trial court), to
recover from the infringer damages sustained by reason of the
infringement and to secure an injunction for the protection of his right.
xxx
Q: Is section 28 (now section 61 of RA 8293) the proper
remedy? Can Creser, assuming he is the true and actual
inventor, just immediately file a petition for cancellation? What
is the procedure in the new law?
(Reporter’s note: This was reincorporated in section 76 of
current IP law, RA 8293)
A: Section 68 of RA 8293. 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 as patentee, 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)
Under the aforequoted law, only the patentee or his
successors-in-interest may file an action for infringement. The
phrase anyone possessing any right, title or interest in and to
the patented invention upon which petitioner maintains its
present suit, refers only to the patentees successors-ininterest, assignees or grantees since actions for infringement
of patent may be brought in the name of the person or persons
interested, whether as patentee, assignees or grantees, of the
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COMMENT
The court can actually cancel the patent of Floro if indeed the
court finds that Creser is the true and actual inventor.
Can a foreign national file an infringement case?
Yes. Provided, he has a patent here in Philippines.
What do you mean by doing business here? Simply stated, a
corporation doing business here can sue if it is registered here.
If not registered, it cannot sue.
The procedure in RA 8293 is more detailed. To go to the BLA
and file a cancellation case with true inventor or if you have an
earlier priority date. You can go to the BLA for the cancellation
if the patent is not new. You don’t have to go to the court
anymore. You have to know when you can go directly to the
BLA. Based on section 61 grounds. But also be aware of section
67 and 68.
If not doing business, of course not registered, hence cannot
sue. But can it register? Yes, under section 3.
DECEMBER 11, 2018 | Transcribed by: Karlena Luz &
Frances Ann Mana-ay
Who can file infringement case?
The registered patent owner or holder (patentee).
Section 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 to have 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.
Where do you file?
Special Commercial Courts (section 76)
When do you bring an action for infringement?
It may not be filed until the grant of patent. So, earlier we
talked about publication. Once the copy is published, any
person may review all of the attached documents to the Bureau
of Patents. And if somebody imitates a device seeking
registration, the applicant already has the cause of action to
file an infringement case but his right of action shall only exist
after the grant of patent. And he has only 4 years from the
commission of the act complained of.
DOCTRINE OF EQUIVALENTS
If the patent is for a product, you can use the doctrine of
equivalents. You have two gadgets, you can see how they are
used and what is the purpose, the shape and the size, etc. It’s
more difficult, if it is a process.
What will be recovered from the infringer after the
court action?
If indeed there is an infringement, the court will order the
infringer to stop what he’s doing. Plus, the court can order the
infringer to pay damages as well as attorney’s fees and other
expenses of litigation.
If it is a process, how do you determine what the process is.
So, it is kind of difficult. So, it says here “any identical product
created through this process is presumed to have been
created through the use of the patented process.”
Either it is new, or there is substantial likelihood that the is
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.
Other award that the special commercial court can grant? (see
section 76)

Issue a writ of injunction.

The court may, according to the circumstances of the
case, award damages in a sum above the amount
found as actual damages sustained: Provided, That
the award does not exceed three (3) times the amount
of such actual damages.

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.
Q. Who is the defendant here?
A. In ordering that the defendant may 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. So, the
defendant here is the alleged infringer. The courts shall
adopt measures to protect.
The court has leeway here, there is no definite procedure or
rule how to determine. The best way is to get an expert on the
matter. In civil procedure it’s called a commissioner. So, this
is to explain to the court that this process is only a copy of the
patented process.
SECTION 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.
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5.
6.
Section 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.
Actual
Liquidated
So, we already took up Section 79.
So, under Section 80, the patentee cannot recover damages if
the infringer DID NOT KNOW that it was a patented product.
Section 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 or package 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.
Q. Is it possible to infringe on a patent and not know about it?
A. YES. Maybe before, but in this day and age, it’s said here in
Section 80, it is presumed that the infringer had known of the
patent. Normally in a patented product, there is a mark in the
container, etc. There is a mark of Philippine patent or Philippine
patent pending. Only if the infringer is proven to have known
of the patent or if the presumption is NOT rebutted, can the
damages may be recovered.
When you reach 3rd year, you will take up damages, and you
will look up Section 76 whereby the patentee is entitled to
damages:
Section 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 cancellation can be brought
under Section 61 hereof.
Section 76. Civil Action for Infringement. –
DEFENSES IN AN ACTION FOR INFRINGEMENT
1. Defendant may show invalidity of the patent;
2. Defendant may show invalidity of the claim thereof;
3. Any grounds on which a petition of cancellation can be
brought under Section 61 hereof:
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.
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 a court of competent jurisdiction, to recover
from the infringer such damages sustained thereby, plus attorney's fees
and other expenses of litigation, and to secure an 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.
Again, the grounds for cancellation are available as defenses if
one is sued for infringement.
76.4. The court may, according to the circumstances of the case,
award damages in a sum above the amount found as actual damages
sustained: Provided, That the award does not exceed three (3) times
the amount of such actual damages.
Section 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.
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.
Section 82 was already discussed under Section 67 and 68.
That the inventor or the applicant with the earlier priority date
can go to Court. In Section 68, the Court can declare that
person to be the actual inventor and the Court can cancel the
pending application of the one who is NOT the inventor or the
existing patent.
76.6. Anyone who actively induces the infringement of a patent or
provides the infringer with a component of a patented product or of a
product produced 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.
Power of the Court v. Power of the BLA
In an action for infringement, under Section 82, if the court
shall find the patent or any claim to be invalid, it shall cancel
the same. So, does the Court have the power to cancel? What
can the BLA do? Isn’t it that the jurisdiction belongs to the
Bureau of Legal Affairs?
The following are the possible damages that can be recovered:
1. Moral
2. Exemplary
3. Nominal
4. Temperate
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The BLA is the one who accepts the Court’s ruling that the
patent is cancelled. And then, 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.
the infringer from repeating his criminal act again, a criminal
case would result in imprisonment.
Penalty
1. imprisonment for the period of not less than six (6)
months but not more than three (3) years; and/or
2. 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.
Section 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.
Prescription - The criminal action herein provided shall
prescribe in three (3) years from date of the commission of the
crime.
Q. What is the crime in this case? A. It is the repetition of the
infringement. There must be a final judgement on the civil case
that indeed this defendant has infringed on the patent of
another. And if he repeats it, it is now a criminal act and the
prescriptive period is 3 years from the commission of the act.
83.2. Each assessor shall receive a compensation in an amount to be
fixed by the court and advanced by the complaining party, which shall
be awarded as part of his costs should he prevail in the action.
ASSESSORS
Under civil procedure, these people are called commissioners.
But, under the IPC, they are called assessors. They have the
necessary, scientific and technical knowledge required by the
subject matter. These assessors are paid by the complaining
party. This is part of the cost.
CHAPTER IX
VOLUNTARY LICENSING
NATURE OF INFRINGEMENT CASE
An infringement case is normally a civil case. The first
infringement is a civil case. So, that is for infringement and
what will the Court do? It may do the following:
1. issue an injunction to prevent the infringer from
continuing its acts;
2. order the destruction of infringing materials;
3. damages if it can be awarded.
If you remember, under Section 4.2 defines a TTA.
4.2. The term "technology transfer arrangements" refers to
contracts or agreements involving the transfer of systematic
knowledge for the manufacture of a product, the application
of a process, or rendering of a service including
management contracts; and the transfer, assignment or
licensing of all forms of intellectual property rights,
including licensing of computer software except computer
software developed for mass market.
Q. What if the infringer, despite the Court ruling that he
committed infringement still continues to commit the acts.
A. Section 84 says that it is now a criminal act.
Whenever a patentee enters into a contract with another
allowing him to manufacture this product and use or apply a
patented process, that is a form of voluntary licensing.
Section 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, be criminally 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 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.
Section 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.
PREROGATIVE OF THE PATENTEE
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 – what does this
mean? It means it is the prerogative of the patentee, ano ba
ang gusto ko, criminal case or civil case. Depende nalang sa
kanya. You know that in criminal cases, the burden of proof is
higher and it’s kind of easy to collect damages. If the patentee
wants money, it’s better to file a civil case. But to really prevent
DISPUTES
If there are disputes on what is normally paid, if I’m the
patentee and I enter into a TTA with Mr. X to manufacture my
patented product, what will I get out of it? Definitely, I will want
to get royalties. What if I’m not paid, and I know n amalakas
ang benta pero wala akong natatanggap. Usually, this is the
case for copyrights for me Central Books forgot that I exist.
Mandatory Nature of Provisions
Under Section 85, the law clearly states that “all technology
transfer arrangements shall comply with the provisions of this
Chapter” on voluntary licensing.
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Section 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.
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 licensed technology;
Okay. For free. Kung gusto mo ng product mo that I
manufactured, then buy it. Pay for it. Parang yung mga authors
ng mga libro, "bigyan mo ako ng 1,000 copies", lugi na yung
bookstore, diba?
WHERE TO FILE
When there is a dispute, the parties should go to the Director
of the Documentation and Information on Technology Transfer
Bureau (DITTB). Do not go to the Bureau of Legal Affairs, kasi
usually BLA is where you go for disputes. But when it comes to
this kind of dispute, you go to the DITTB.
87.7. Those that require payment of royalties to the owners of patents
for patents which are not used;
Okay, so that is easy to understand.
DISCUSSION:
Atty. Brunson Alabastro last year I think asked the question in
his exam, what are the prohibited clauses under voluntary
licensing. So, you know, let’s just read that one by one.
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;
Section 87. Prohibited Clauses. - Except in cases under Section 91,
the following provisions shall be deemed prima facie to have an adverse
effect on competition and trade:
Okay. So, licensees should not be prohibited from exporting the
product.
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;
87.1. 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;
So those which restrict the use of the technology supply
as after the expiration of the technology transfer arrangement
(TTA), meaning after the expiration of the TTA the licensee can
still use the technology except if the licensee terminates. Early
termination by the licensee.
Pwede bang sabihin ng licensor nung patentee, yung taong ito sa kakin
mo kunin ha. Can he say, I will supply everything, I will supply all the
people. That is NOT allowed.
87.2. Those pursuant to which the licensor reserves the right to fix the
sale or resale prices of the products manufactured on the basis of the
license;
87.10. Those which require payments for patents and other industrial
property rights after their expiration, termination arrangement;
So it is presumed that if you allow somebody to manufacture, license
to manufacture, then he has the right to the selling price because the
licensor cannot reserve the right to fix the sale or resale prices of the
product.
Payments only during the life of the agreement.
87.11. Those which require that the technology recipient shall not
contest the validity of any of the patents of the technology supplier;
87.3. Those that contain restrictions regarding the volume and
structure of production.
Anyone can question the validity of a patent.
Di naman pwedeng sabihin ni licensor kailangan 1 million items a
month at kailangan mabenta mo rin yun.
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;
87.4. Those that prohibit the use of competitive technologies in a nonexclusive technology transfer agreement.
Just take note of that.
Just take note of that.
87.5. Those that establish a full or partial purchase option in favor of
the licensor.
87.13. Those which prevent the licensee from adapting 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;
Oh, hindi pala pwede na the licensor will have the purchase option of
the manufactured patented product.
87.14. Those which exempt the licensor for liability for non-fulfilment
of his responsibilities under the technology transfer arrangement
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and/or liability arising from third party suits brought about by the use
of the licensed product or the licensed technology; and
Licensor, not the licensee. So talagang para itong usufructuary
no ang licensee. A privilege.
Q: You heard the 14 clauses, who is favored by these clauses,
the licensor or the licensee?
A: The licensee. These clauses, or most of them are favorable
to the licensee.
So those are the prohibited clauses and the mandatory
provisions in a TTA. What are the rights of the licensor?
SECTION 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 prevent the licensor from granting further licenses to
third person nor from exploiting the subject matter of the technology
transfer arrangement himself.
87.15. Other clauses with equivalent effects.
These clauses are not exclusive because of Number 15.
SECTION 88. Mandatory Provisions. - The following provisions
shall be included in voluntary license contracts:
What are the rights of the licensor? In the absence of any
provision to the contrary in the TTA, the grant of license shall
not prevent the licensor from granting further licenses to third
persons unless the TTA is exclusive. Merong mga license na
exclusive, so kung hindi exclusive that the licensor can enter
into other TTAs with other licensees.
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;
Okay. So you are taking up Civil Procedure. What law shall
govern? Any interpretation of the TTA? Philippine Law. That is
an issue in conflict. What is a Conflict Rule? When you take up
Conflict of Laws, you will determine if there is an issue if what
law shall apply? The foreign law or Philippine Law, that is a
Conflict Rule.
"Nor from exploiting the subject matter of the technology
transfer arrangement himself" If I were the patentee, would I
prevent, would I allow (inaudible) to prevent me from
exploiting my own invention? Of course, not.
SECTION 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.
So 88.1 is a conflict rule, because it says that the laws of the
Philippines shall govern. Even though we have a foreign
element, even if there are two foreigners involved the
Philippine law shall apply if the case is filed here.
What do you mean by exploit? To use, manufacture, distribute,
kung ano yung nakalagay doon sa TTA. Pwede naman sabihin
ng licensor na "you can only manufacture", "you are only the
What else? The venue. Under Rule 4, venue does not seem
very important. But it says here "the venue shall be the proper
court in the place where the licensee has its principal office".
So this is a special law. It does not matter if Rule 4, Section 2
on personal actions says this and that. It has to be the licensee,
not the licensor.
distributor" during the whole term of the TTA.
SECTION 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 Technology Transfer Bureau after
evaluation thereof on a case by case basis.
88.2. Continued access to improvements in techniques and processes
related to the technology shall be made available during the period of
the technology transfer arrangement;
Yes, access to improvements in techniques and processes.
So what are the above requirements? Yan yung mga Mandatory
Provisions (refer to Section 88) and Prohibited Clauses (refer to
Section 87). One could ask for exemption, if that's enumerated
here, in exemptional and meritorious cases
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 of Commerce
(ICC) shall apply and the venue of arbitration shall be the Philippines
or any neutral country; and
SECTION 92. Non-registration with the Documentation,
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 registered with the
Documentation, Information and Technology Transfer Bureau under
the provisions of Section 91 on exceptional cases.
It says here that if there is arbitration, these are the rules that
will apply and the venue shall be the Philippines or any neutral
country.
88.4. The Philippine taxes on all payments relating to the technology
transfer arrangement shall be borne by the licensor.
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Do you need to register your TTA? According to Section 92,
"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". If your TTA conforms to Sections 86 and 87, the
prohibited clauses and mandatory provisions, no need to
register. But if you do not register and you do not conform, if
you are caught, it shall automatically render the TTA
unenforceable, unless that TTA is approved and registered.
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 of exploitation 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;
So if you don't conform, you ask for exceptions, you register.
Noh, pwede maenforce. But if you do not conform and you do
not register, mahuli ka, unenforceable yung TTA.
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, 34-B, R.A. No. 165a) and
CHAPTER X
COMPULSORY LICENSING
93.6. Where the demand for patented drugs and medicines is
not being met to an adequate extent and on reasonable terms,
as determined by the Secretary of the Department of Health."
SECTION 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 the invention, under any of the
following circumstances:
Okay, Section 10 of the Cheaper Medicines Act states "Section
93 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines, is hereby
amended to read as follows" so what was read earlier was the
DLA may grant a license. But the Cheaper Medicines Acts says
that the Director General of IPO may grant a license to exploit
a patented invention, even without the agreement of the patent
owner, etc. etc. So, it's now the Director General, even if it does
not involve medicines Section 10 of R.A. 9502 amended Section
93 of the IPC.
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 of exploitation by the owner of the patent or his licensee is
anti-competitive; or
So, what is Compulsory Licensing? It is the grant of a
license to exploit a patented invention, even without the
agreement of the patent owner.
93.4. In case of public non-commercial use of the patent by the
patentee, without satisfactory reason;
Who may grant the compulsory license? The Director General
of the IPO.
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.
To whom shall a compulsory license be granted? To any
person who has shown his capability to exploit the invention,
but it has to be under any of the following circumstances:
93.6. Where the demand for patented drugs and medicines is not
being met to an adequate extent and on reasonable terms, as
determined by the Secretary of the Department of Health.
93.1. National emergency or other circumstances of extreme urgency;
So if you look at Section 93, it's the Director of Legal Affairs but
we already have the Cheaper Medicines Act which says:
Of course national emergency, yung mga plague, May plague
pa ba ngayon? Ebola, plague. What if dumating na yna dito and
somebody has a patented drug na napakamahal.
SEC. 10. Section 93 of Republic Act No. 8293, otherwise known as
the Intellectual Property Code of the Philippines, is hereby
amended to read as follows:
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;
SEC. 93. Grounds for Compulsory Licensing. - The
Director General of the Intellectual Property Office 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 the invention, under any of
the following circumstances:
Similar to Consti, police power.
93.3. Where a judicial or administrative body has determined that the
manner of exploitation by the owner of the patent or his licensee is
anti-competitive;
93.1. National emergency or other circumstances of extreme
urgency;
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provisional remedies that will prevent the grant of the special
compulsory license.
If the patentee, the way he exploits his license is anticompetitive.
The amendment which add a provision 93-A by the Cheaper
Medicines Act. Because now it is the DG of the IPO who has
the authority and the power to grant a compulsory license. On
the other provisions under this chapter, where it is stated that
the legal affairs should be changed to DG. It also says in the
book of Salao that RA 9502 amended Section 93. So it’s now
the DG of the IPO. Clarification in the budget station, division,
interpretation and rule on jurisdiction (*2:30 dili nako
masabtan parang nagarap si Ma’am) should be made to
avoid the confusion.
93.4. In case of public non-commercial use of the patent by the
patentee, without satisfactory reason;
Yes, in case of public non-commercial use. If you are a
patentee, you go out of your way to apply for a patent, of
course you have to manufacture your product and make it
available to the public. Sayang lang yung pera mo sa pag-aaply,
your time and effort because if you only protect your product
kung itago mo sa cabinet mo yung invention mo, wag ka nalang
mag-apply ng patent. But if you have a patent and you do not
use it commercially, for personal use lang then pwede applyan
for compulsory licensing.
So the whole section 93 was amended and therefore
considered all the other provisions to be amended as well
because the other provisions still states that it’s the Director of
Legal Affairs.
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; and
So, let’s go to special compulsory licensing under the
TRIPS Agreement.
So we have here our provision which is quite long which says
again that it is the DG of the IPO upon the written
recommendation of the Secretary of the Department of Health.
Almost similar to the previous one but this is “not being worked
in the Philippines on a commercial scale”
93.6. Where the demand for patented drugs and medicines is not
being met to an adequate extent and on reasonable terms, as
determined by the Secretary of the Department of Health."
What is the procedure in applying for a special
compulsory license?
So the applicant will file a petition.
Demand is not being met Konte lang gina-manufacture.
What is a special compulsory license?
It is for the importation of patented drugs and medicines.
Although importation is allowed but this one is very specific
wherein an entity will apply for that and the DG of the IPO upon
the written recommendation of the Secretary of Health shall
grant the petition.
DECEMBER 13, 2018 | Transcribed by: Emmanuel
Monteroyo & Anna Sophia Tarhata Piang
SEC. 11. A new Section 93-A is hereby inserted after Section 93 of
Republic Act No. 8293, otherwise known as the Intellectual Property
Code of the Philippines, to read as follows:
SO what is this special compulsory license all about?
It shall be an additional, special alternative procedure to insure
access to quality affordable medicines and it is primarily for
domestic consumption. This pertains to those expensive drugs
like in the case of Roma Drug. There are actually distributors
in other countries that sell medicines in cheaper price.
"SEC. 93-A. Procedures on Issuance of a Special Compulsory
License under the TRIPS Agreement. –
93-A.1. The Director General of the Intellectual Property Office, upon
the written recommendation of the Secretary of the Department of
Health, shall, upon filing of a petition, grant a special compulsory
license for the importation of patented drugs and medicines. The
special compulsory license for the importation contemplated under this
provision shall be an additional special alternative procedure to ensure
access to quality affordable medicines and shall be primarily for
domestic consumption: Provided, That adequate remuneration shall be
paid to the patent owner either by the exporting or importing country.
The compulsory license shall also contain a provision directing the
grantee the license to exercise reasonable measures to prevent the reexportation of the products imported under this provision.
So in Roma Drug, the drugstores, individual retailers can
import. That’s no longer a prohibition. But to get a special
compulsory license an entity can import and sell, in addition to
the exclusive distributor.
What happens to the patent owner? Let’s say it’s Smith
Kline?
According to the provision, adequate remuneration shall be
paid to the patent owner either by the exporting or importing
country.
"The grant of a special compulsory license under this provision shall be
an exception to Sections 100.4 and 100.6 of Republic Act No. 8293 and
shall be immediately executory.
So it is the country that imports or exports that will pay the
patentee. The compulsory license shall contain a provision
directing the grantee the license to exercise reasonable
measures to prevent the re-exportation of the products
"No court, except the Supreme Court of the Philippines, shall issue any
temporary restraining order or preliminary injunction or such other
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imported under this provision. Because the drugs that are
imported under the special compulsory license are preferred
Philippine use primarily.
94.1. A compulsory license may not be applied for on the ground
stated in Subsection 93.5 before the expiration of a period of four (4)
years from the date of filing of the application or three (3) years from
the date of the patent whichever period expires last.
So the grant of special compulsory license shall be an
exception to section 100, which we will take up, and shall
"94.2. A compulsory license which is applied for on any of the grounds
stated in Subsections 93.2, 93.3, 93.4, and 93.6 and Section 97 may
be applied for at any time after the grant of the patent.
be immediately executory. So once this SCL is granted by the
DG, the licensee can now import right away.
So what is the period to file a petition? So we’re back to
compulsory license.
Before the expiration of a period of four (4) years from the date
of filing of the application (Application for what? for patent)
or three (3) years from the date of the patent whichever period
expires last.
So what can the patentee do? Syempre ayaw niya
niyan, diba?
The patentee can ask the court to issue the TRO. But inly the
Supreme Court will do that, no other entity or court can issue
a TRO.
So what is the purpose if you are the applicant?
The purpose is to make the expensive drugs available to the
public for a much lower price because this is the Cheaper
Medicines Act.
Why is this special compulsory license being applied
for?
Because the patentee does not want to share his invention to
the world or there is national emergency or whatever.
93-A.2. A compulsory license shall also be available for the
manufacture and export of drugs and medicines to any country having
insufficient or no manufacturing capacity in the pharmaceutical sector
to address public health problems: Provided, That, a compulsory
license has been granted by such country or such country has, by
notification or otherwise, allowed importation into its jurisdiction of the
patented drugs and medicines from the Philippines in compliance with
the TRIPS Agreement.
So he should (Meron nag cough, nasapawan boses ni Ma’am)
time. Hindi yung kaagad na once ma issue yung patent sa
kanya ayan na, may compulsory license na sya right away. It
is within 3 years from the date of the patent or before the
expiration of period of 4 years from the day of the filing of the
application. Whichever expires last.
It’s normally the 3 years, kasi the application period is quite
long. So a compulsory license which is applied for on any of the
grounds stated in Subsections 93.2, 93.3, 93.4, and 93.6 and
Section 97 may be applied for at any time after the grant of the
patent. No need to wait.
So anong ibig sabihin ng durgs here, manufacture here,
or what is this special compulsory license to import
drugs?
This other special compulsory license will authorize the licensee
to manufacture such drugs and to export to a country that has
no capacity. But that country or an entity in that country has to
obtain a compulsory license in order to import a drugs from
here.
Ano yung 93.2, 93.3, 93.4, and 93.6. This is public interest,
any time. Anti-competitive, anytime. Public health, anytime.
93.6, demand for patented drug and medicine, anytime (?).
Section 97, interdependence, which we will take up, anytime.
"93-A.3. The right to grant a special compulsory license under this
section shall not limit or prejudice the rights, obligations and flexibilities
provided under the TRIPS Agreement and under Philippine laws,
particularly Section 72.1 and Section 74 of the Intellectual Property
Code, as amended under this Act. It is also without prejudice to the
extent to which drugs and medicines produced under a compulsory
license can be exported as allowed in the TRIPS Agreement and
applicable laws."
The only time, this one. This is only for 93.5, what is that? If
the patented invention is not being worked in the Philippines
on a commercial scale, although capable of being worked,
without satisfactory reason. So it really depends on the ground.
So what is the requirement to obtain a license on
reasonable commercial terms?
Answer:
So that is a special provision inserted by the Cheaper Medicines
Act. So now let’s go to Section 94. We’re back to the Cheaper
Medicines Act.
"SEC. 95. Requirement to Obtain a License on Reasonable
Commercial Terms. –
So what is the special compulsory license?
95.1. The license will only be granted after the petitioner has made
efforts to obtain authorization from the patent owner on reasonable
commercial terms and conditions but such efforts have not been
successful within a reasonable period of time.
SEC. 12. Section 94 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines, is hereby amended to read
as follows:
So before applying for a compulsory license, approach the
patentee first. Can you give me a voluntary license? Can we
enter into a TTA because of this reason or that reason? Eh
"SEC. 94. Period for Filing a Petition for a Compulsory License.
–
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ayaw. Not being successful, then pwede na. So, 95.2, no need
to go to the patentee under the following cases:
97.2. The owner of the first patent shall be entitled to a cross-license
on reasonable terms to use the invention claimed in the second patent;
"95.2. The requirement under Subsection 95.1 shall not apply in any
of the following cases:
97.3. The use authorized in respect of the first patent shall be nonassignable except with the assignment of the second patent; and
"(a) Where the petition for compulsory license seeks to remedy a
practice determined after judicial or administrative process to be anticompetitive;
"(b) In situations of national emergency or other circumstances of
extreme urgency;
"(c) In cases of public non-commercial use; and
97.4. The terms and conditions of Sections 95, 96 and 98 to 100 of
this Act.
So basically what this provision is saying here is we have an
invention, the right to(?) patent which is the 2nd invention. So
it is being worked in the country in a sense that the product is
being manufactured, distributed, etc. If it cannot be done
without infringing another person’s patent, which is called as
the first patent, and compulsory licensing is required in the 2nd
patent, it may be granted as long as these 4 are present.
(Ma’am’s Note: This is 93.2, 93.3, 93.4 and 93.6. So no need to go.
You only need to go to the patentee to 93.5)
"(d) In cases where the demand for the patented drugs and medicines
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.
Now let’s go to the form.
If you are to apply for a compulsory license, you must
file a petition. It must be in writing, it must be verified. You
will learn what verification is under Rule 7, section 4. And it
must be accompanied by the payment of the required filing fee.
But 95.3 says that the right holder shall be notified as soon as
reasonably practicable.
"95.3. In situations of national emergency or other circumstances of
extreme urgency, the right holder shall be notified as soon as
reasonably practicable.
Section 98. Form and Contents of Petition. - The petition for
compulsory licensing must be in writing, verified by the petitioner and
accompanied by payment of the required filing fee. It shall contain the
name and address of the petitioner as well as those of the respondents,
the number and date of issue of the patent in connection with which
compulsory license is sought, the name of the patentee, the title of the
invention, the statutory grounds upon which compulsory license is
sought, the ultimate facts constituting the petitioner's cause of action,
and the relief prayed for.
No need to ask permission. But notify him. In the case of noncommercial public use, the right holder should be informed
again.
"95.4. In the case of public non-commercial use, where the
government or contractor, without making a patent search, knows or
has demonstrable grounds to know that a valid patent is or will be used
by or for the government, the right holder shall be informed promptly.
Who is the petitioner?
The one who applies.
Who is the respondent?
The patentee.
"95.5. Where the demand for the patented drugs and medicines 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,
the right holder shall be informed promptly."
Here you have to base your grounds on section 93.
So this is like a complaint in an ordinary civil action. You have
to state the ultimate facts and the cause of actions must be
clear, and the relief prayed for. And after the petition is filed,
there will be a hearing.
Section 96. Compulsory Licensing of Patents Involving SemiConductor Technology. - In the case of compulsory licensing of
patents involving semi-conductor technology, the license may only be
granted in case of public non-commercial use or to remedy a practice
determined after judicial or administrative process to be anticompetitive.
SECTION 99. Notice of Hearing. —
99.1. Upon filing of a petition, the Director of Legal Affairs shall
forthwith serve notice of the filing thereof upon the patent owner and
all persons having grants or licenses, or any other right, title or interest
in and to the patent and invention covered thereby as appears of record
in the Office, and of notice of the date of hearing thereon, on such
persons and petitioner. The resident agent or representative appointed
in accordance with Section 33 hereof, shall be bound to accept service
of notice of the filing of the petition within the meaning of this Section.
Section 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;
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99.2. In every case, the notice shall be published by the said Office in
a newspaper of general circulation, once a week for three (3)
consecutive weeks and once in the IPO Gazette at applicant's expense.
SECTION. 101. Amendment, Cancellation, Surrender of
Compulsory License. –
101.1. Upon the request of the patentee or the licensee, the Director
of Legal Affairs may amend the decision granting the compulsory
license, upon proper showing of new facts or circumstances justifying
such amendment.
SECTION 100. Terms and Conditions of Compulsory License. —
The basic terms and conditions including the rate of royalties of a
compulsory license shall be fixed by the Director of Legal Affairs subject
to the following conditions:
101.2. Upon the request of the patentee, the said Director may cancel
the compulsory license:
100.1. The scope and duration of such license shall be limited to the
purpose for which it was authorized;
(a) If the ground for the grant of the compulsory license no longer
exists and is unlikely to recur;
100.2. The license shall be non-exclusive;
(b) If the licensee has neither begun to supply the domestic market nor
made serious preparation therefor;
100.3. The license shall be non-assignable, except with that part of
the enterprise or business with which the invention is being exploited;
(c) If the licensee has not complied with the prescribed terms of the
license.
100.4. Use of the subject matter of the license shall be devoted
predominantly for the supply of the Philippine market: Provided, That
this limitation shall not apply where the grant of the license is based
on the ground that the patentee's manner of exploiting the patent is
determined by judicial or administrative process, to be anticompetitive.
101.3. The licensee may surrender the license by a written declaration
submitted to the Office.
101.4. The said Director shall cause the amendment, surrender, or
cancellation in the Register, notify the patentee, and/or the licensee,
and cause notice thereof to be published in the IPO Gazette.
100.5. The license may be terminated upon proper showing that
circumstances which led to its grant have ceased to exist and are
unlikely to recur: Provided, That adequate protection shall be afforded
to the legitimate interest of the licensee; and
SECTION 102. Licensee's Exemption from Liability. – Any person
who works a patented product, substance and/or process under a
license granted under this Chapter, shall be free from any liability for
infringement: Provided, however, That in the case of voluntary
licensing, no collusion with the licensor is proven. This is without
prejudice to the right of the rightful owner of the patent to recover
from the licensor whatever he may have received as royalties under
the license.
100.6. The patentee shall be paid adequate remuneration taking into
account the economic value of the grant or authorization, except that
in cases where the license was granted to remedy a practice which was
determined after judicial or administrative process, to be
anticompetitive, the need to correct the anti-competitive practice may
be taken into account in fixing the amount of remuneration.
It is the patentee who is entitled to royalties.
SMITH KLINE v. DANLEX G.R. No 121267 (2001)
With regard to its non-exclusive nature, anyone who has been
granted a compulsory license cannot object if another person
applies for a compulsory license on whatever ground is
available.
In this case, Danlex Laboratories applied for a compulsory
license to be able to work Smith Kline’s patented Cimetidine
product. However, Smith Kline opposed the application raising
the following contentions:
On the provision that the same is non-assignable, take for
example Mr. X who has a business named “XXX”. He is a
manufacturer of drugs. He has a compulsory license. Can he
assign the license to Y? He cannot. However, he may sell the
business to Y – in turn, Y will become the new owner of the
compulsory license. Assignment of the compulsory license
cannot be made without the assignment of the entire business
or the part of the business related to compulsory license.
1.
2.
3.
4.
This license should only be for the Philippine market. Also, if
the ground for the granting of the compulsory license ceases,
then the license itself shall be terminated.
Danlex failed to allege how it intended to work the
patented product;
Smith Kline’s manufacture, use and sales of
Cimetidine satisfied the needs of the Philippine
economy;
The grant of the compulsory license would not
promote public welfare; and
Danlex is only motivated by pecuniary gain.
Despite the opposition, the Bureau of Patents, Trademarks, and
Technologies granted the application.
Section 100.6 provides for the instance where the patentee
cannot be paid royalties.
ISSUE: Was the granting of a license proper? – Yes.
RULING: Section 34 of RA 165. Grounds for compulsory
license. - Any person may apply to the Director for the grant of
a license under a particular patent at any time after the
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expiration of three years from the date of the grant of the
patent, under any of the following circumstances:
(d) If the working of the
invention within the
country
is
being
prevented or hindered
by the importation of
the patented article; or
xxx
(d) If the patented invention relates to food or medicine or
is necessary for public health or public safety.
(e) If the patented
invention relates to
food or medicine or is
necessary for public
health or public safety.
In any of the above cases, a compulsory license shall be
granted to the petitioner provided that he has proved his
capability to work the patented product or to make use of the
patented product in the manufacture of a useful product, or to
employ the patented process.
Period
filing
In the case at bar, more than ten (10) years have passed since
the patent for Cimetidine was issued to Smith Kline and its
predecessors-in-interest.
for
Any time after the
expiration of 2 years
from the date of the
grant of the patent.
Moreover, the compulsory license applied for by Danlex is for
the use, manufacture and sale of a medicinal product.
RA 165 vs. RA 8293 as regards to compulsory licensing
To whom
apply
Grounds
to
RA 165
Director of Patents
(a) If the patented
invention is not being
worked
within
the
Philippines
on
a
commercial
scale,
although capable of
being
so
worked,
without
satisfactory
reason;
(b) If the demand for
the patented article in
the Philippines is not
being met to an
adequate extent and on
reasonable
terms,
without
satisfactory
reason;
(c) If by reason of the
refusal of the patentee
to grant a license or
licenses on reasonable
terms, or by reason of
the conditions attached
by the patentee to
licenses or to the
purchase, lease or use
of the patented article
or working of the
patented process or
machine of production
the establishment of
any new trade or
industry
in
the
Philippines
is
prevented, or the trade
of industry therein is
unduly restrained;
RA 8293
Director General of
the IPO
(a)
National
emergency or other
circumstances
of
extreme urgency;
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,
34-B, R.A. No. 165a)
At any time after the
grant of the patent
(2,3,4)
After expiration of 4
years from DATE OF
FILING,
APPLICATION or 3
years FROM DATE
OF PATENT (5)
ISSUE: Does the grant of a compulsory license to Danlex
result in the deprivation of Smith Kline’s property without just
compensation? – No.
RULING: Even if other entities like Danlex are subsequently
allowed to manufacture, use and sell the patented invention by
virtue of a compulsory license, Smith Kline as owner of the
patent would still receive remuneration for the use of such
product in the form of royalties.
(b) 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
Section 35-B Terms and Conditions of Compulsory
License
(3) A compulsory license shall only be granted subject to the
payment of adequate royalties commensurate with the extent
to which the invention is worked. However, royalty payments
shall not exceed five percent (5%) of the net wholesale price.
Chapter XI – Assignment and Transmission of
Rights
(c) Where 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
SECTION 103. Transmission of Rights. —
103.1. Patents or applications for patents and invention to which they
relate, shall be protected in the same way as the rights of other
property under the Civil Code.
103.2. Inventions and any right, title or interest in and to patents and
inventions covered thereby, may be assigned or transmitted by
inheritance or bequest or may be the subject of a license contract.
(d) In case of public
non-commercial use
of the patent by the
patentee,
without satisfactory
reason;
It is similar to Voluntary Licensing.
A patentee or applicant for a patent is still the owner of his
invention, process or product. He is entitled to all the rights
under the Civil Code which are to enjoy, dispose, and recover.
(e) If the patented
invention is not
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without proportionally dividing the proceeds with such other owner or
owners.
SECTION 104. Assignment of Inventions. — An assignment may
be of the entire right, title or interest in and to the 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.
Under the rules of co-ownership, each co-owner has the right
to make use of thing owned in common and not just half of it
but the entirety of the property commonly owned. In relation
to this, all joint owners of a patent have a right to the entire
patent.
Under these provisions, a patentee may assign his patent or his
entire rights over the patent plus the invention covered thereby
being the owner thereof. In the case of a co-patentee, under
the rules of co-ownership, he may assign his full undivided
share over the patent and invention, in which event, the parties
to whom the same were assigned become the new co-owner
along with the original co-patentees.
Neither of the joint owners shall be entitled to grant licenses or
assign his right, title, or interest without the consent of the
other co-owners or without proportionally dividing the proceeds
with such other owner or owners.
Chapter XII – Registration of Utility Models
An assignment may be limited to a specified territory. For
example, the patent will be assigned to another person but only
insofar as it covers Davao City.
SECTION 108. Applicability of Provisions Relating to Patents.
—
108.1. Subject to Section 109, the provisions governing patents shall
apply, mutatis mutandis, to the registration of utility models.
SECTION 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.
108.2. Where the right to a patent conflicts with the right to a utility
model registration in the case referred to in Section 29, the said
provision shall apply as if the word "patent" were replaced by the words
"patent or utility model registration".
Comment: The assignment must be:
1. In writing;
2. Acknowledged before a notary public or other officer
authorized to administer oath or perform notarial acts;
and
3. Certified under the hand and official seal of the notary
or such other officer
SECTION 109. Special Provisions Relating to Utility Models. —
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. cdtai
109.2. Sections 43 to 49 shall not apply in the case of applications for
registration of a utility model.
SECTION 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. The original
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 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.
109.3. A utility model registration shall expire, without any possibility
of renewal, at the end of the seventh year after the date of the filing
of the application.
109.4. In proceedings under Sections 61 to 64, the utility model
registration shall be canceled on the following grounds:
a. That the claimed invention does not qualify for registration as a utility
model and does not meet the requirements of registrability, in
particular having regard to Subsection 109.1 and Sections 22, 23, 24
and 27;
106.2. Such instruments shall be void as against any subsequent
purchaser or mortgagee for valuable consideration and without notice,
unless, itis so recorded in the Office, within three (3) months from the
date of said instrument, or
b. That the description and the claims do not comply with the
prescribed requirements;
c. That any drawing which is necessary for the understanding of the
invention has not been furnished;
SECTION 107. Rights of Joint Owners. — If two (2) or more
persons jointly own a patent and the invention covered thereby, either
by the issuance of the patent in their joint favor or by reason of the
assignment of an undivided share in the patent and invention or by
reason of the succession in title to such share, each of the joint owners
shall be entitled to personally make, use, sell, or import the invention
for his own profit: Provided, however, That neither of the joint owners
shall be entitled to grant licenses or to assign his right, title or interest
or part thereof without the consent of the other owner or owners, or
d. That the owner of the utility model registration is not the inventor
or his successor in title.
A utility model only has a life span of seven (7) years without
any possibility of renewal, at the end of the seventh year after
the date of the filing of the application. It is similar to a patent
which is only valid for twenty (20) years, after which it cannot
be renewed.
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The grounds for the cancellation of a utility model are similar
to those for the cancellation of a patent:
a.
b.
c.
d.
Chapter XIII – Industrial Design and Layout
Designs (Topographies) of Integrated Circuits
That the claimed invention does not qualify for
registration as a utility model and does not meet the
requirements of registrability, in particular having
regard to Subsection 109.1 and Sections 22, 23, 24
and 27;
That the description and the claims do not comply
with the prescribed requirements;
That any drawing which is necessary for the
understanding of the invention has not been
furnished;
That the owner of the utility model registration is not
the inventor or his successor in title.
SECTION 110. Conversion of Patent Applications
Applications for Utility Model Registration. —
SECTION 112. Definition of Terms. –
1. An Industrial Design is any composition of lines or colors or any
three-dimensional form, whether or not associated with lines or colors:
Provided, That such composition or form gives a special appearance to
and can serve as pattern for an industrial product or handicraft;
What does this definition tell us? Simply put, it is the aspect of
a useful article. It is ornamental or aesthetic or that which
enhances the aesthetic beauty or the attractive appearance of
an article.
or
So, why do we have to protect this industrial design? Mainly,
first, it enables the owner to prevent others from copying or
imitating the industrial design. Second one, it also prevents
parties from importing, selling, manufacturing or making
products bearing this industrial design. So, generally, it is
important for handicrafts, mobile phones, furnitures, structural
design and other products.
110.1. At any time before the grant or refusal of a patent, an applicant
for a patent may, upon payment of the prescribed fee, convert his
application into an application for registration of a utility model, which
shall be accorded the filing date of the initial application. An application
may be converted only once.
110.2. At any time before the grant or refusal of a utility model
registration, an applicant for a utility model registration may, upon
payment of the prescribed fee, convert his application into a patent
application, which shall be accorded the filing date of the initial
application. (Sec. 58, R.A. No. 165a)
So, patentable designs must not only be new and (01:4901:51) but ornamental as well. In all these industrial designs,
there is a qualification for it to be registrable. It should not be
designs dictated essentially by technical or functional
consideration to obtain a technical result or those that are
contrary to public order, health or morals.
A patent application may be converted to a utility model
registration and vice-versa. However, it may only be done once.
Furthermore, even when there is a conversion, the applicant
will still be given the original filing date.
So, what we are protecting here in industrial design is the
pattern for the design of an article or product. It is not the use
of the product or the product per se but it is that which gives
it aesthetic beauty. So, just like furnitures (chair), diba may paa
siya and may sandalan siya but most of the chairs, may paa
man talaga so hindi yan patentable and the same with
sandalan. So, what is patentable here is the design of the chair,
that is the aesthetic which gives an attractive appearance for
an article.
SECTION 111. Prohibition against Filing of Parallel
Applications. — An applicant may not file two (2) applications for the
same subject, one for utility model registration and the other for the
grant of a patent whether simultaneously or consecutively. (Sec. 59,
R.A. No. 165a)
An applicant may not file both a patent application and a utility
model registration for the same subject whether simultaneously
or consecutively.
Another example is the Samsung S6, diba may curve siya so
yang curve, that is the industrial design. As compared to other
phones, diba plain and flat lang. So, that is its industrial design
because that is what makes it different from others; its
aesthetic which gives it an attractive appearance.
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 in a piece of material, and which is intended to
perform an electronic function; and
DECEMBER 13, 2018 | Transcribed by: Sarah Sosoban &
Niel Vic Suaybaguio
So this is now Section 112, par. 2, Integrated Circuit which
means a product in its final form, or an intermediate form, in
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INTELLECTUAL PROPERTY LAW
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Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
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 in a piece of material, and which is intended to perform
an electronic function. So if you have the time to open your
laptops or phones or computers, you can see the motherboard
and inside the motherboard there is an integrated circuit and if
you zoom it out, as a whole, there are integrated circuits there
which now gives us lay-out designs.
ornamental - these are the generic requirements. It should be
new, it should have recently come into existence and it should
be for ornamental purposes only. We are focusing more only
on how it looks and not more on how it works.
So, the standard of novelty is still required here in industrial
designs; as provided in Section 23 of our Intellectual Property
Law - “An invention shall not be considered new if it forms part
of a prior art”. Note, however, that Rule 1503 of the
Implementing Rules and Regulations of our Intellectual
Property Law provides that “An industrial design shall not be
3. Layout-Design is a 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 intended for manufacture.
considered new if it differs from prior designs only in minor
respects that it can be mistaken as such prior designs by an
ordinary observer.”
Section 112, par. 3, Lay-out 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 intended for manufacture. Lay-out
design, so if you zoom it out as a whole, the motherboard,
which has integrated circuits that is now what forms a lay-out
design. For lay-out designs, why we have to protect it, because
there are some laptops which are very bulky and there are
some laptops which are also very thin. So if you’re the
consumer, you would rather buy the slimmer or thinner one.
For some engineers or inventors, if they made better lay-out
designs, they can actually make thinner or slimmer laptops. So
that is why if you’re an inventor, you really have to protect that
one so that it couldn’t be manufactured or sold without your
consent.
Now we go to the more important part of the provision. So,
here the items are enumerated in Rule 1501 of the
Implementing Rules and Regulations of the IP Law. So, first,
what are non-registrable industrial designs? First, industrial
designs that are dictated essentially by technical or functional
consideration to obtain a technical result. Second, industrial
designs which are mere schemes of surface ornamentations
only existing separately from the industrial product or
handicraft. And third, those designs that are contrary to public
order, health, or morals shall not be protected.
So let’s take this one by one - dictated essentially by
technical or functional consideration.
So, power button, earphone jack cannot be protected because
they have functional considerations. It has functions; it works.
It does not only pertain to how it looks. It has technical
functions; thus, it cannot be registered.
SECTION 113. Substantive Conditions/ or Protection. 113.1. Only industrial designs are new or ornamental shall benefit
from protection under this Act.
Second, designs which are mere schemes of surface
ornamentations.
The design on the bag ( yung flower-flower) cannot be
protected because it is a mere scheme of surface
ornamentations.
113.2. Industrial designs dictated essentially by technical or functional
consideration to obtain a technical result or those that are contrary to
public order, health or morals shall not be protected.
113.3. Only layout-designs of integrated circuits that are original shall
benefit from protection under this Act. A layout-design shall be
considered original if it is the result of its creator’s own intellectual
effort and is not commonplace among creators of layout-design and
manufacturers of integrated circuits at the time of its creation.
Third, our IP Law does not provide for examples of what are
designs that are contrary to law, public order, health,
and morals.
So, first example, here, are those designs that are intended for
a process of cloning human beings. (This example is taken from
the New Zealand Intellectual Property Office)
113.4. A layout-design consisting of a combination of elements and
interconnections that are commonplace shall be protected only if the
combination, taken as a whole, is original.
So, we have an additional provision provided by RA 9150. We
have already discussed what are Lay-out Designs of integrated
circuits. So, again, we have requirements. It must be original
and second, it must not be commonplace; meaning, it should
not be ordinary. A lay-out design shall be considered original if
it is the result of its creator’s own intellectual effort. And second
requirement is it must not be commonplace where it should not
be ordinary among creators of lay-out design and
manufacturers fo integrated circuits at the time of its creation.
We have already discussed Industrial Design, Lay-out Design
and Integrated Circuits. Now, we will discuss what are the
registrable and non-registrable Industrial and Lay-out Designs.
So, the substantive conditions or protections for these designs
are provided in Section 113 of R.A. 8293 or the Intellectual
Property Law. So, only industrial designs that are new or
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So, next is actually the exception to Section 113.3. The
requirement is it should not be commonplace or ordinary to be
registered. But in Section 113.4. it is provided that “A layout-
a. A request for registration of the industrial design;
design consisting of a combination of elements and
interconnections that are commonplace shall be protected only
if the connection, taken as a whole, is original”.
c. An indication of the kind of article of manufacture or handicraft to
which the design shall be applied;
b. Information identifying the applicant;
d. A representation of the article of manufacture or handicraft by way
of drawings, photographs or other adequate graphic representation of
the design as applied to the article of manufacture or handicraft which
clearly and fully discloses those features for which design protection is
claimed; and
So earlier, in the report, we saw the term “useful article”. What
are useful articles? Any pictorial, sculptured or graphic work is
a useful article. This is related to copyright. It can be
copyrighted. What are normally copyrighted? Scholarly,
literary, and artistic works. So, we have an artistic work, the
chair (example before). So, it is useful but then it has aesthetic
features; so, that can be copyrighted. So, a useful article is an
article having an intrinsic utilitarian function that is not merely
to portray the appearance of the article or to convey
information. They must be separable to the functional aspect
to be copyrighted. Aside from copyright, we also learned under
the topic that was just discussed that industrial designs and
layout designs can also be protected under the patent
provisions; not as patents but as such.
e. The name and address of the creator, or where the applicant is not
the creator, a statement indicating the origin of the right to the
industrial design registration.
114.2. The application may be accompanied by a specimen of the
article embodying the industrial design and shall be subject to the
payment of the prescribed fee.
DISCUSSION
Let’s go to Section 114. If you want to apply for registration of
an industrial or layout design, you must submit a request for
registration. There must be information identifying the
applicant. An indication of the kind of article of manufacture or
handicraft to push the design or layout design shall be applied.
It’s the chair, it’s the basket, it’s the bed, the sofa. A
representation of the article of manufacture by means of
drawings, photographs etc. The name and address of the
creator or if the applicant is not the creator as stated indicating
the origin of the right to the industrial design registration. So
just like any other intellectual property, an industrial design is
a creation of the mind of a person. So there is definitely a
creator. It will not just appear from out of the blue. And who
has the right to be protected? Of course, the creator. If
somebody else wants to register he needs to show proof that
he has the right. (inaudible)... creator dispose of his right. So
the application may be accomplished by a specimen of the
article embodying the industrial or layout design and shall be
subject to the payment of the prescribed fee. If you already
have the article there then, submit it as well in your
application.
DENICULA TEST
Industrial Design and Layout Design etc. will also be protected
under the patent provisions. Not as patents but as such. Now
this is the question in the bar. When it came out i was shocked
because I have no idea what it was.
Q: What is the Denicula Test? How do you separate usefulness
from the aesthetic feature of an article or a thing
A: There are four tests. And the fourth one is the Denicula Test,
because sometimes you have one article, one product, you can
copyright it and you can also have it registered as an industrial
design. So it says here, copyrightability should ultimately
depend on the extent on which the work reflects the artistic
expression inhibited by functional consideration. If something
came to have a pleasing shape because there were functional
considerations, the artistic aspect was constrained by those
concerns.
SECTION 115. Several Industrial Designs in One Application.
— Two (2) or more industrial designs may be the subject of the same
application: Provided, That they relate to the same sub-class of the
International Classification or to the same set or composition of articles.
So going back to the chair. The chair that's very artistic. Is it
artistic because it is functional? No. It is functional but its
artistic feature is separate from its functionability. So it can be
copyrighted but it can also be registered as an industrial design.
I don’t think it will come out in the bar again but I just wanted
to let you know.
Q: Can you have a duplicitous application?
A: For patents, No. But for industrial design, Yes. (Section115)
Two or more may be the subject of the same application.
Condition: they relate to the same subclass of the International
Classification or to the same set or composition of articles.
So let’s go the procedure of the registration of... (long pause).
So this chapter again, as already mentioned was amended by
RA 9150. You already know the definitions and protection.
SECTION 114. Contents of the Application. —
114.1. Every application for registration of an industrial design shall
contain:
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INTELLECTUAL PROPERTY LAW
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Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
If it is a layout design and it meets the registrability
requirements, then the Office shall order the registration be
effected and cause the issuance of an industrial design or
layout design certificate. Otherwise, if it does not comply with
Section 112 and 113, refused. Just read 117.2, 117.3 again
publication is done. 117.4 The Office shall record in the register
any change in the identity of the proprietor of the industrial
design. So because this is property, it can be disposed of, it can
be donated, sold, transferred, alienated whatever. A fee shall
be paid with the request to record the change in the identity of
the proprietor. If the fee is not paid. The request shall be
deemed not to have been filed. In such case, the former
proprietor and former representative shall remain subject to
the rights and obligations as provided. And just like patents,
anyone may inspect the Register and of the registered
industrial designs including the files of cancellation
proceedings.
SECTION 116. Examination. —
116.1. The Office shall accord as the filing date the date of receipt of
the application containing indications allowing the identity of the
applicant to be established and a representation of the article
embodying the industrial design or a pictorial representation thereof.
116.2. If the application does not meet these requirements the filing
date should be that date when all the elements specified in Section 105
are filed or the mistakes corrected. Otherwise if the requirements are
not complied within the prescribed period, the application shall be
considered withdrawn.
116.3. After the application has been accorded a filing date and the
required fees paid on time, the applicant shall comply with the
requirements of Section 114 within the prescribed period, otherwise
the application shall be considered withdrawn.
116.4. The Office shall examine whether the industrial design complies
with requirements of Section 112 and Subsections 113.2 and 113.3.
Q. What will happen when that application is submitted??
A. (116.1) The Office shall accord as the filing date of receipt
of the application containing those two, indications allowing the
identity of the applicant to be established and representation
of the article.
Q: How long is the protection given by the Code?
A: 5 years from the filing date.
So if patents, 20 years. Utility model, 7 years. Industrial design
or layout design, 5 years. All from the filing date.
Q: What if the application does not meet the above
requirements?
A: The filing date should be that date when all the elements
are filed or the mistakes corrected. If the requirements are not
complied with, the application shall be considered withdrawn.
SECTION 118. The Term of Industrial Design Registration. —
118.1. The registration of an industrial design shall be for a period of
five (5) years from the filing date of the application.
118.2. The registration of an industrial design may be renewed for not
more than two (2) consecutive periods of five (5) years each, by paying
the renewal fee. The renewal fee shall be paid within twelve (12)
months preceding the expiration of the period of registration. However,
a grace period of six (6) months shall be granted for payment of the
fees after such expiration, upon payment of a surcharge
So the Office shall examine whether the industrial design
complies with the requirements of what was discussed earlier.
Is this really an industrial design? Is this really registrable or
not? This is what the Bureau of Patents will determine. So very
simple, not as complicated as patents
SECTION 117. Registration. —
118.3. The Regulations shall fix the amount of renewal fee, the
surcharge and other requirements regarding the recording of renewals
of registration.
117.1. Where the Office finds that the conditions referred to in Section
113 are fulfilled, it shall order that registration be effected in the
industrial design register and cause the issuance of an industrial design
certificate of registration, otherwise, it shall refuse the application.
Q: Can this be renewed?
A: Yes, unlike patents and utility models, because this is more
of an art form. Its a design. Its more under copyright.
117.2. The form and contents of an industrial design certificate shall
be established by the Regulations: Provided, That the name and
address of the creator shall be mentioned in every case.
In designing Kenneth Cobonpue, siya lang. That's his, he just
keeps on renewing it. Nobody can imitate it. Because its not a
useful article. Iba yung useful, it can be used in any kind of
human endeavour. Oa lang ito, pagandahan ng chair,
pagandahan ng bed, tsinelas or whatever. So may be renewed
for not more than 2 consecutive periods of 5 years.
Limited rin 5 years each. The renewal shall be paid, grace
period read that. Read 118.
117.3. Registration shall be published in the form and within the period
fixed by the Regulations.
117.4. The Office shall record in the register any change in the identity
of the proprietor of the industrial design or his representative, if proof
thereof is furnished to it. A fee shall be paid, with the request to record
the change in the identity of the proprietor. If the fee is not paid, the
request shall be deemed not to have been filed. In such case, the
former proprietor and the former representative shall remain subject
to the rights and obligations as provided in this Act. Anyone may
inspect the Register and the files of registered industrial designs
including the files of cancellation proceedings.
Layout design, so kanina industrial design. This one is a layout
design valid for 10 years without renewal. And such validity
shall be counted on the date of the commencement of the
protected accorded to the layout design. Hindi siya from the
date of filing, iba siya. When? Either the date of the first
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INTELLECTUAL PROPERTY LAW
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commercial exploitation anywhere in the world or the filing
date. So either of the two.
Number 2; When the act is performed in respect of a layout
design created on the basis of such analysis or evaluation and
which is itself original in the meaning provided
herein. Whatever that means. Next.
SECTION 119. Application of Other Sections and Chapters. —
Number 3; Where the act performed in respect of a registered
layout design, or in respect of an integrated circuit in which
such layout design is incorporated, that has been put on the
market by or with the consent of the right holder. Okay this is
119.1. The following provisions relating to patents shall apply mutatis
mutandis to an industrial design registration:
Section 21 — Novelty;
Section 24 — Prior art: Provided, That the disclosure is contained in
printed documents or in any tangible form;
Section 25 — Non-prejudicial Disclosure;
Section 27 — Inventions Created Pursuant to a Commission;
Section 28 — Right to a Patent;
Section 29 — First to File Rule;
Section 31 — Right of Priority: Provided, That the application for
industrial design shall be filed within six (6) months from the earliest
filing date of the corresponding foreign application;
Section 33 — Appointment of Agent or Representative;
Section 51 — Refusal of the Application;
Sections 56 to 60 — Surrender, Correction of and Changes in Patent;
Chapter VII — Remedies of a Person with a Right to Patent;
Chapter VIII — Rights of Patentees and Infringement of Patents; and
Chapter XI — Assignment and Transmission of Rights.
similar to patents. Next.
In respect of an integrated circuit where the person performing
or ordering such an act did not know and had no reasonable
ground to know when acquiring the integrated circuit or the
article incorporating such an integrated circuit, that it
incorporated an unlawfully reproduced layout design: Provided
however, that after the time such person has received sufficient
notice that the layout-design was unlawfully reproduced, that
person may perform any of said acts only with respect to the
stock on hand or ordered before such time and shall be liable
to pay to the right holder a sum equivalent to at least 5% of
net sales or such other reasonable royalty as would be payable
under a freely negotiated license in respect of such layoutdesign. Okay so that's self explanatory. Very very long
119.2. If the essential elements of an industrial design which is the
subject of an application have been obtained from the creation of
another person without his consent, protection under this Chapter
cannot be invoked against the injured party.
sentence. I hope you were following. Next.
Number 5; Where the act is performed in respect of an identical
layout design which is original and has been created
independently by a third party. Yes, is it possible for two people
So just read 119.1, the other provisions of the patent law that
are applicable to industrial design. 119.2 If the essential
elements of an industrial design which is the subject of an
application have been obtained from the creation of another
person without his consent, then protection under this Chapter
cannot be invoked against the injured party.
to create similar, substantially similar layout designs and not
know each other? Of course! Only God can create... No two
person are alike, only God can do that. Pero yung creation ng
tao limited and capability. So pwede. If there's somebody else
invented his own layout design and its similar to a registered
layout design, that is not infringement.
Q: What about layout design?
A: These are the provisions that are applicable to layout
designs, mga first to file etc.
SECTION 120. Cancellation of Design Registration. —
Q: What are the rights conferred to the owner? If you are a
layout design registrant. What are your rights?
120.1. At any time during the term of the industrial design registration,
any person upon payment of the required fee, may petition the Director
of Legal Affairs to cancel the industrial design on any of the following
grounds:
A: It says here, to enjoy the following; to reproduce whether
by incorporation in (inaudible) otherwise the registered design
in its entirety or any part thereof except the act of reproducing
any part does not comply with the requirement of originality
and to sell or otherwise distribute for commercial purposes of
the registered layout design and article or integrated circuit in
which the registered layout design is incorporated. But there
are also limitations. If you are the owner of a layout design
certificate of registration, there are limitations. There's no right
to prevent third parties from reproducing, selling or otherwise
distributing for commercial purposes the registered layout
designs in the following circumstances. (Section 119.5)
a. If the subject matter of the industrial design is not registrable within
the terms of Sections 112 and 113;
b. If the subject matter is not new; or
c. If the subject matter of the industrial design extends beyond the
content of the application as originally filed.
120.2. Where the grounds for cancellation relate to a part of the
industrial design, cancellation may be effected to such extent only. The
restriction may be effected in the form of an alteration of the effected
features of the design.
Number one; Reproduction of the registered layout design for
private purposes or for the sole purpose of evaluation, analysis,
research or teaching .
Q: Can not a registration be cancelled?
A: Yes. Anytime during the term of the industrial design
registration, any person upon payment of the required fee may
petition.
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Q: Where do you go for cancellation cases?
A: Bureau of Legal Affairs to cancel the industrial design on any
of the following grounds.
Q: What are the grounds for cancellation?
A: If the subject matter is not registrable. You look at 112 and
113. If the subject matter is not new. If the subject of the
industrial design extends beyond the content of the application
as originally filed.
Q: Can a part of the registration be cancelled?
A: Yes. You dont have to cancel the entire thing. What are the
grounds for cancellation of layout design?
120.3. Grounds for Cancellation of Layout Design of Integrated
Circuits. Any interested person may petition that the registration of a
layout design be canceled on the ground that:
(i) The layout design is not protectable under this act;
(ii) The right holder is not entitled to protection under this act; or
(iii) Where the application for registration of the layout design was not
filed within two years from its first commercial exploitation anywhere
in the world. Where the grounds for cancellation are established with
respect only to a part of the layout design, only the corresponding part
of the registration shall be canceled.
Any canceled layout design registration or part thereof, shall be
regarded as null and void from the beginning and may be expunged
from the records of the intellectual property office. Reference to all
canceled layout design registration shall be published in the IPO
Gazette.
-END OF FIRST EXAM-
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