CHAPTER 29: LIMITATIONS OF PATENT RIGHTS NON-INFRINGING ACTS

Sec. 72. 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: 72.1. Using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar as such use is performed after that product has been so put on the said market; 72.2. Where the act is done privately and on a noncommercial scale or for a non-commercial purpose: Provided, That it does not significantly prejudice the economic interests of the owner of the patent; 72.3. Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention; 72.4. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared; 72.5. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other country entering the territory of the Philippines temporarily or accidentally: Provided, That such invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not used for the manufacturing of anything to be sold within the Philippines.

SALE AND USE FOR EXPERIMENTAL PURPOSES A sale by the inventor for experimental purposes precludes the application of the on-sale bar. Similarly, an experimental use by a third party without the inventor’s authority precludes liability for infringement. How is sale determined? That the invention asserted to be on sale was operable, the complete invention was embodied in or obvious in view of the device offered for sale, and the sale or offer was primarily for profit rather than for experimental purposes. All circumstances surrounding the sale or offer to sell, including the stage of development of the invention and the nature of the invention must be considered and weighed. FACTORS CONSIDERED IN DETERMINING EXPERIMENTAL USE There must be consideration of the totality of the circumstances and the policies underlying the public use bar. The length of the test period of the invention or similar devices, whether the inventor received payment for testing, any agreement maintaining confidential use, records of testing, persons involved, and the number of tests are considered. PATENTEE’S LIMITED MONOPOLY It is the right or power to exclude all others from manufacturing, using, or selling his invention. He may not condition his license so as to tie to the use of the patented product or process the use of other products, processes or materials outside of the monopoly of his patent. In short, it may not be enlarged for the exploitation of the monopoly of another, or of an unpatented article, or of a business not embraced in the patent. RELINQUISHMENT OF PATENT MONOPOLY With the sale of the patented product or process, the patent-owner conferred on the buyer the right to practice the patent and parted with the right to assert its patent monopoly. ABSOLUTE AND UNCONDITIONAL SALE OPERATES A sale implies that the patentee consents that the purchaser may use the machines so long as its identity is preserved. Hence, it operates to pass the patented thing outside the boundaries of the patent so long as its identity is preserved.

STATUTORY BALANCE There must be a balance between the need to encourage innovation and the avoidance of monopolies which stifle competition without any concomitant advance in the progress of the science and useful arts. Congress may not create patent monopolies of unlimited duration, nor may it authorize the issuance of patents whose effects are to remove existent knowledge from public domain, or to restrict free access to materials already available. Also, when the patented product passes to the hands of the purchaser, it is no longer within the limits of the monopoly. It passes outside of it, and is no longer under the protection of the Congress.

acquired in good faith prior to the effective date of this Act. It tempers the rigid application of the first-to-file rule. It also exempts from any liability for infringement any prior user under Sec. use and sell the patented product. to use. 95. 236. However. Nothing herein shall adversely affect the rights on the enforcement of rights in patents. any prior user. nutrition. industrial designs. Notwithstanding Section 72 hereof. It equally forbids the use of the patent to secure an exclusive right or limited monopoly not granted by the IPO. A Government agency or third person authorized by the Government may exploit the invention even without agreement of the patent owner where: (a) the public interest. health or the development of other sectors.1. or by way of conditions on the use.EXPLOITATION OF ALL OR SOME OF PATENTEE’S RIGHTS The patentee may maintain a close monopoly of the rights granted or separately exercise the distinct rights to make. mutatis mutandis. who. The right of the prior user may only be transferred or assigned together with his enterprise or business. A patentee who has parted with the thing patented by passing title to a buyer has placed the thing beyond the limits of the monopoly secured by the act.1. The government is treated like a licensee of the patentee.” NO RESERVATION OF RIGHT AFTER SALE Where the transfer of the patented thing is full and complete. 74. as its boundaries are marked by the specifications and claims of the patent. or third person authorized by the Government shall be subject. It is also worth noting that the prior user is clearly a prior inventor himself whose exploitation and use of the invention constitutes enabling prior art under the absolute novelty rule in Sec. so requires. or with that part of his enterprise or business in which the use or preparations for use have been made. shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect. Sec. 73. The use by the Government.2. Beyond the limited monopoly. he can also seek cancellation of the subsequent patent for lack of novelty. 73. or selling his invention. He may limit a license to use for specific purposes only. PATENT CONFERS EXCLUSIONARY MONOPOLY It is the right or power to exclude all others from manufacturing. Hence. He may impose conditions “not definitely illegal. 95. 21. the exemption only covers the use limited to the prior user’s business or enterprise. 73. in good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business. the arrangements by which the patent is used are subject to the general law. USE OF INVENTIONS BY GOVERNMENT Sec. or both.2. Requirement to Obtain a Reasonable Commercial Terms License on Sec. Therefore. is anti-competitive. the government is also liable to the patentee for royalties. or (b) A judicial or administrative body has determined that the manner of exploitation. may charge what he thinks proper for permitting invasion of his monopoly. using.2. in particular. as determined by the appropriate agency of the government. 74. national security. PATENT GRANT CANNOT BE EXTENDED BY CONTRACT A patent afford no immunity for a monopoly not fairly or plainly within the grant. . to the conditions set forth in Sections 95 to 97 and 100 to 102. 73 creates an exception from the rule that the inventor has the exclusive right to make. and may contract for his consideration either in money. LIMITATIONS ARISING FROM PRIOR USE Sec. and to sell.1 shall not apply in the following cases: Preservation of Existing Rights Sec. The requirement under Subsection 95. utility models. The extent of that right is limited by the definition of his invention. 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. by the owner of the patent or his licensee.1. an attempt to reserve the right to fix the price at which it is to be resold by the buyer is futile. The public policy which included inventions within the granted monopoly excludes from it all that is not embraced in the invention.1. before the filing date or priority date of the application on which a patent is granted. Sec. marks and works.

except with that part of the enterprise or business with which the invention is being exploited. 100. The scope and duration of such license shall be limited to the purpose for which it was authorized. subject to the following conditions: 97.5. where the government or contractor. 101. (c) In cases of public non-commercial use. 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. The invention claimed in the second patent involves an important technical advance of considerable economic significance in relation to the first patent. 100. 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. Upon the request of the patentee. 97." granted on a prior application or benefiting from an earlier priority." within the country cannot be worked without infringing another patent. hereafter referred to as the "second patent.4.’ 100. notify the patentee. The license shall be non-exclusive. 101. 100.1. 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. the right holder shall be informed promptly. 95. a compulsory license may be granted to the owner of the second patent to the extent necessary for the working of his invention. 100. to be anti-competitive. If the invention protected by a patent. Use of the subject matter of the license shall be devoted predominantly for the supply of the Philippine market: Provided. (c) If the licensee has not complied with the prescribed terms of the license. 96.2. That adequate protection shall be afforded to the legitimate interest of the licensee.3. and 100.1. hereafter referred to as the "first patent. and/or the licensee. and cause notice thereof to be published in the IPO Gazette.4. surrender. 96 and 98 to 100 of this Act. 101. The said Director shall cause the amendment.(a) Where the petition for compulsory license seeks to remedy a practice determined after judicial or administrative process to be anti-competitive.3. Amendment. Cancellation. (b) In situations of national emergency or other circumstances of extreme urgency. Terms and Conditions of Compulsory License Sec.3. the said Director may cancel the compulsory license: (a) If the ground for the grant of the compulsory license no longer exists and is unlikely to recur.1. 100. In the case of public non-commercial use. Compulsory License Based on Interdependence of Patents Sec. In the case of compulsory licensing of patents involving semi-conductor technology. 97. or cancellation in the Register. the Director of Legal Affairs may amend the decision granting the compulsory license. 97. and 97. The patentee shall be paid adequate remuneration taking into account the economic value of the grant or authorization. The licensee may surrender the license by a written declaration submitted to the Office. The license shall be non-assignable. the need to correct the anti-competitive practice may be taken into account in fixing the amount of remuneration. (b) If the licensee has neither begun to supply the domestic market nor made serious preparation therefor.6. 95. The use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent. except that in cases where the license was granted to remedy a practice which was determined after judicial or administrative process.2. without making a patent search. 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: . Upon the request of the patentee or the licensee.3. Compulsory Licensing of Patents Involving Semi-Conductor Technology Sec. the right holder shall be notified as soon as reasonably practicable. Compulsory License Surrender of Sec.2. The terms and conditions of Sections 95. 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 anti-competitive. to be anti-competitive. upon proper showing of new facts or circumstances justifying such amendment. 101. knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government. In situations of national emergency or other circumstances of extreme urgency.4.4.

albeit with some modification and change. Doctrine of Equivalents Minor modifications in a patented invention are sufficient to put the item beyond the scope of literal infringement. 36.1. the more open it is to attack on grounds of lack of novelty or on grounds of obviousness. The claims must not be an invention broader than that described.1. which are to be interpreted in the light of the description and drawings. but also equivalents. 102. substance and/or process under a license granted under this Chapter. it is the complete record of all proceedings in the IPO and any express representations made by the applicant about a claim’s scope. no collusion with the licensor is proven. COURTS CANNOT EXPAND THE CLAIMS Courts may not add to.Licensee’s Exemption from Liability. performs substantially the same function in substantially the same way to achieve substantially the same result.” Why series? The wider the claim is. even though the patentee may have been entitled to something more than the words the patentee has chosen will include. or detract from. the following claims become narrower and narrower. The function of the claims is to define clearly the scope of the exclusive rights provided by the patent. and shall be supported by the description. Positions taken in order to obtain the allowance of the patent applicant’s claims are pertinent to an understanding and interpretation of the claims are pertinent to an understanding and interpretation of the claims and may work an estoppel as against subsequent different or broader interpretation. the claim must be properly construed to determine its scope and meaning. 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. That in the case of voluntary licensing. the claims matter not expressed or necessarily implied. 75. The application shall contain one (1) or more claims which shall define the matter for which protection is sought. The description must provide a fair basis for the invention defined by the claims. Extent of Protection and Interpretation of Claims Sec. so that a claim shall be considered to cover not only all the elements as expressed therein. The claims shall be clear and concise and supported by the description. The extent of protection conferred by the patent shall be determined by the claims. 36. Second. Proof of adoption of the substance of the thing will be sufficient. DETERMINING INFRINGEMENT OF CLAIMS Two-step Analysis First. or enlarge the patent beyond the scope of that which the inventor claim and the IPO allowed. For the purpose of determining the extent of protection conferred by the patent. The Regulations shall prescribe the manner of the presentation of claims. 75. Ratio: To permit the imitation of a patented invention which does not copy any literal detail would be to convert the protection of the patent grant into a hollow and useless thing. They are called “dependent claims.2. Sec. and the patentee. PROTECTION OF PATENT IS MEASURED BY THE CLAIMS Everything not covered by the claim/s is disclaimed or waived. Each claim shall be clear and concise. and is open to the public.2. This is done in terms of the technical features of the invention disclosed in the description. shall be free from any liability for infringement: Provided however. Any person who works a patented product. is bound by the limitations contained therein. or one claiming under the patent. PROSECUTION HISTORY ESTOPPEL Also called “file wrapper”. due account shall be taken of elements which are equivalent to the elements expressed in the claims. An infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and. How to draft a claim? It must be a series that starts with a broad claim. . CLAIMS INTERPRETATION PROTECTION The Claims AND Sec. the claim as properly construed must be compared to the accused device or process.

" SPECIAL PROVISIONS UTILITY MODELS RELATING TO Sec.” the technological progress required is smaller than that of an invention . (a) An invention qualifies for registration as a utility model if it is new and industrially applicable. without any possibility of renewal. Sections 43 to 49 shall not apply in the case of applications for registration of a utility model.1.1 and Sections 22. the prosecution history. 24 and 27. mutatis mutandis. A utility model registration shall expire. the said provision shall apply as if the word patent were replaced by the words "patent or utility model registration. Subject to Section 109. Where the right to a patent conflicts with the right to a utility model registration in the case referred to in Section 29. in particular having regard to Subsection 109. (b) That the description and the claims do not comply with the prescribed requirements. CHAPTER 30: REGISTRATION OF UTILITY MODELS APPLICABILITY OF PROVISIONS RELATING TO PATENTS Sec. and if necessary. 109.2. "Patentable Inventions". (d) That the owner of the utility model registration is not the inventor or his successor in title. (b) Section 21. 109.3. 108. shall apply except the reference to inventive step as a condition of protection.2. at the end of the seventh year after the date of the filing of the application. 108. 109. 23. the specifications.4.1. (c) That any drawing which is necessary for the understanding of the invention has not been furnished. UTILITY MODELS AND INVENTIONS COMPARED Utility models differ from inventions for which patents for invention are available mainly in two respects: 1) In the case of an invention called “utility model. 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. extrinsic evidence. 109.Claim Construction The court looks to the claims. to the registration of utility models. the provisions governing patents shall apply. In proceedings under Sections 61 to 64.

It is sufficient if the design as a whole produces a new impression on the eye of the ordinary observer. An application may be converted only once.2) The maximum term of protection provided in the law for a utility model is generally much shorter than the maximum term of that of an invention. which shall be accorded the filing date of the initial application. It is only concerned with industrial art. 109. FUNCTIONALITY No functionality requirement in obtaining a design patent. used or described within the country.2. visualized by the ordinary observer giving such attention as a purchaser usually gives.That such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft. 112. health or morals shall not be protected. Sec. and not a modified. but it is now function of invention that is protected by patent. form or shape. Patentability is based on the design of the thing.2) However. Anticipated or Unoriginal Design It is essential that what was known or used. upon payment of the prescribed fee. which shall be accorded the filing date of the initial application. At any time before the grant or refusal of a utility model registration. The viewpoint of an expert is inapplicable. At any time before the grant or refusal of a patent. one for utility model registration and the other for the grant of a patent whether simultaneously or consecutively. but rather that which gives peculiar or distinctive appearance to manufacture. PROHIBITION AGAINST PARALLEL APPLICATIONS FILING OF Sec.2. The points of novelty in a design patent relate to differences from prior designs and the novelty of a design patent is to be considered in the light of the impact of the design upon an ordinary observer and this condition is met when the average observer takes a new design for a different. convert his application into a patent application. utility models must be new and industrially applicable to qualify for registration. not functional. 113. or article. INDUSTRIAL DESIGNS Sec. CONVERSION OF PATENT APPLICATIONS OR APPLICATIONS FOR UTILITY MODEL REGISTRATION Sec. convert his application into an application for registration of a utility model. even though they differ in name. UTILITY MODEL NOT CONSIDERED NEW It is not considered new if it is substantially similar to any utility model so known. not fine art. already-existing design. the design of the article in question is likely ornamental. The effect that the design produces. whether or not associated with lines or colors: Provided. it is a ground for cancellation of the registration. 111. when the appearance of the claimed design is dictated by the use or purpose of the article. patented.1. The Chapter on Utility Model dispenses with the substantive examination of utility models and opts for simple registration system. If two devices do the same work in substantially the same way accomplishing the same result—they are the same. an applicant for a utility model registration may. or described in a printed publication should be substantially identical with it in appearance. But if other designs could produce the same or similar functional capabilities. EXPN: When during some point in its life. VISIBILITY OF DESIGN GR: Concealed features are not a proper basis for design patent protection because their appearance is not a matter of concern. an applicant for a patent may. Industrial designs dictated essentially by technical or functional considerations to obtain a technical . upon payment of the prescribed fee. It is also subject to some of same requirements as utility patent. its appearance is a matter of concern.” and thus not patentable. A design patent cannot be obtained to protect a mechanical function or cover an article whose configuration affects utility alone. An applicant may not file two (2) applications for the same subject. The design of a useful article is deemed to be “functional. A design patent only protects the novel features of the design patented. Otherwise. 110. (See Sec. An Industrial Design is any composition of lines or colors or any three-dimensional form. 110. result or those that are contrary to public order. not the use.

116.5. a grace period of six (6) months shall be granted for payment of the fees after such expiration. The application may be accompanied by a specimen of the article embodying the industrial design or layoutdesign and shall be subject to the payment of the prescribed fee. If the application does not meet these requirements. EXAMINATION OF INDUSTRIAL DESIGNS Sec. a statement indicating the origin of the right to the industrial design or layout-design registration.1. The form and contents of an industrial design or layout-design certificate shall be established by the Registrations: Provided. The registration of an industrial design shall be for a period of five (5) years from the filing date of the application.2. 116. . It suggests that applications for industrial designs are subject to limited examination for the purpose of determining novelty or originality in compliance with Sec. 113 (Substantive Conditions for Protection). The Office shall record in the register any change in the identity of the proprietor of the industrial design or layout design or his representative. This requires research. and (e) The name and address of the creator. That the name and address of the creator shall be mentioned in every case. Every application for registration of an industrial design or layout-design shall contain: (a) A request for registration of the industrial design or layout-design. 117. 118. (c) An indication of the kind of article of manufacture or handicraft to which the industrial design or layout-design shall be applied. Registration shall be published in the form and within the period fixed by the Regulations. it shall refuse the application.1. Several Industrial Designs in One Application Sec. 118. upon payment of a surcharge. with the request to record the change in the identity of the proprietor. if proof thereof is furnished to it. 115. Anyone may inspect the Register and the files of registered industrial designs or layout-designs including files of cancellation proceedings. A fee shall be paid. 114. if the fee is not paid. CONTENTS OF THE APPLICATION FOR INDUSTRIAL DESIGN Sec. 117. the applicant shall comply with the requirements of Sec.3. TERM OF REGISTRATION INDUSTRIAL DESIGN Sec. the former proprietor and the former representative shall remain subject to the rights and obligations as provided in this Act. 117. 117.2.4. 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 the layout -design or a pictorial representation thereof. (b) Information identifying the applicant. the filing date should be that date when all the elements specified in Sec. and not an identifying mark. 114 are filed or the mistakes corrected.2. After the application has been accorded a filing date and the required fees paid on time. or where the applicant is not the creator. 118.4.3. The registration of an industrial design may be renewed for not more than two (2) consecutive periods of five (5) years each. Where the Office finds that the conditions referred to in Sec. REGISTRATION OF INDUSTRIAL DESIGNS Sec. 117. That they relate to the same sub-class of the International Classification or to the same set or composition of articles. However. the manufacturer must seek design-patent laws and not the aid of trademark laws. Two (2) or more industrial designs may be the subject of the same application: Provided. 116. the application shall be considered withdrawn.To protect intellectual property which consists of a pleasing design.3. (d) A representation of the article of manufacture or handicraft by way of drawings. examination and analysis of the prior art. Otherwise. 114. the request shall be deemed not to have been filed.1.1. if the requirements are not complied within the prescribed period. 112 (Definitions) and Sec. 114 within the prescribed period. The renewal fee shall be paid within twelve (12) months preceding the expiration of the period of registration. by paying the renewal fee. 116. The Office shall examine whether the industrial design or layout-design complies with requirements of Sec. photographs or adequate graphic representation of the industrial design or of the layout-design as applied to the article of manufacture or handicraft which clearly and fully discloses those features for which protection is claimed. it shall order that registration be effected in the industrial design or layoutdesign register and cause the issuance of an industrial design or layout-design certificate of registration. 113 are fulfilled. In such case. otherwise. otherwise the application shall be considered withdrawn. 113.2.

4. Any interested person may petition that the registration of a layout-design be cancelled on the ground that: (i) the layout-design is not protectable under this Act. SECTION 51 . 119. shall be regarded as null and void from the beginning and may be expunged from the records of the Intellectual Property Office. protection under this Chapter cannot be invoked against the injured party. That the disclosure is contained in printed documents or in any tangible form.1. APPLICATION OF OTHER SECTIONS AND CHAPTERS Sec. and such validity to be counted from the date of commencement of the protection accorded to the layout-design. That an application for registration is filed with the Intellectual Property Office within two (2) years from such date of first commercial exploitation. Correction of and Changes in Patent.Remedies of a Person with a Right to Patent. 119. SECTION 30 . 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. SECTION 25 . The Regulations shall fix the amount of renewal fee.3. .118. Registration of a layout-design shall be valid for a period often (10) years.Prior art: Provided. only the corresponding part of the registration shall be cancelled. the surcharge and other requirements regarding the recording of renewals of registration. (ii) the right holder is not entitled to protection under this Act.Assignment and Transmission of Rights 119.2. (b) If the subject matter is not new.Appointment of Agent or Representative. INDUSTRIAL DESIGNS PERSON’S CREATION FROM ANOTHER Sec. anywhere in the world. 120. The restriction may be effected in the form of an alteration of the effected features of the design.Inventions Created Pursuant to a Commission. SECTION 31 . and CHAPTER XI . Reference to all cancelled layout-design registration shall be published in the IPO Gazette.Non prejudicial Disclosure. Where the grounds for cancellation are established with respect only to a part of the layout-design. SECTION 33 . SECTION 29 . GROUNDS FOR LAYOUT-DESIGN CIRCUITS CANCELLATION OF OF INTEGRATED Sec. That the application for industrial design shall be filed within six (6) months from the earliest filing date of the corresponding foreign application. protection under this Chapter cannot be invoked against the injured party. At any time during the term of the industrial design registration. CANCELLATION OF DESIGN REGISTRATION Sec. was not filed within two (2) years from its first commercial exploitation anywhere in the world. any person upon payment of the required fee. SECTION 24 .1. or b) on the filing date accorded to the application for the registration of the layout-design if the layout-design has not been previously exploited commercially anywhere in the world.Rights of Patentees and Infringement of Patents. Where the grounds for cancellation relate to a part of the industrial design.Right to a Patent. The protection of a layout-design under this Act shall commence: a) on the date of the first commercial exploitation. CHAPTER VII . without renewal.Novelty. 120.2. SECTION 21.First to File Rule. The following provisions relating to patents shall apply mutatis mutandis to an industrial design registration. 120. the novelty and originality of the design is subject to question in an infringement case and. or (iii) where the application for registration of the layoutdesign.Refusal of the Application. or (c) If the subject matter of the industrial design extends beyond the content of the application as originally filed. SECTION 28 .Surrender. SECTION 56 to 60 . of the layout-design by or with the consent of the right holder: Provided. In reality.5. . cancellation may be effected to such extent only. CHAPTER VIII . even third parties may assail its originality and novelty by showing that the design was disclosed in the prior art. 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. 118. therefore. may petition the Director of Legal Affairs to cancel the industrial design on any of the following grounds: (a) If the subject matter of the industrial design is not registerable within the terms of Sections 112 and 113.Right of Priority: Provided. Any cancelled layout-design registration or part thereof.2.

or where the applicant is not the creator.1. the filing date should be that date when all the elements specified in Sec. The form and contents of an industrial design or layout-design certificate shall be established by the Registrations: Provided. Otherwise. or an intermediate form.4. 114. it shall refuse the application. If the application does not meet these requirements. (d) A representation of the article of manufacture or handicraft by way of drawings. 113. 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 the layout -design or a pictorial representation thereof. Every application for registration of an industrial design or layout-design shall contain: (a) A request for registration of the industrial design or layout-design. 113 (Substantive Conditions for Protection). CONTENTS OF THE APPLICATION Sec. 113. Integrated Circuit means a product. otherwise.3. however expressed. 116. and of some or all of the interconnections of an integrated circuit. it shall order that registration be effected in the industrial design or layoutdesign register and cause the issuance of an industrial design or layout-design certificate of registration.3.1. 113.2. health or morals shall not be protected. 116. 117. and which is intended to perform an electronic function.2. Layout-Design is synonymous with 'Topography' and means the three-dimensional disposition. Industrial designs dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order. in its final form. of the elements. a statement indicating the origin of the right to the industrial design or layout-design registration. EXAMINATION Sec. SUBSTANTIVE PROTECTION CONDITIONS FOR Sec. and (e) The name and address of the creator. The Office shall examine whether the industrial design or layout-design complies with requirements of Sec. 13. REGISTRATION Sec. 112. Only layout -designs of integrated circuits that are original shall benefit from protection under this Act.PROTECTION OF LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS RA 9150 added to the IP Code Section 112 for the purpose of protecting layout designs of integrated circuits. The application may be accompanied by a specimen of the article embodying the industrial design or layout-design and shall be subject to the payment of the prescribed fee. 114 are filed or the mistakes corrected. An Industrial Design is any composition of lines or colors or any three-dimensional form. (b) Information identifying the applicant. 113 are fulfilled. at least one of which is an active element and some or all of the interconnections are integrally formed in and/or on a piece of material. at least one of which is an active element.1. the applicant shall comply with the requirements of Sec. 2. photographs or adequate graphic representation of the industrial design or of the layout-design as applied to the article of manufacture or handicraft which clearly and fully discloses those features for which protection is claimed.1. 1. 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-designs and manufacturers of integrated circuits at the time of its creation. is original. in which the elements. otherwise the application shall be considered withdrawn.4. 114 within the prescribed period. After the application has been accorded a filing date and the required fees paid on time. A layout-design consisting of a combination of elements and interconnections that are commonplace shall be protected only if the combination.2. if the requirements are not complied within the prescribed period. Where the Office finds that the conditions referred to in Sec. and 3. or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture. 116. . 116. taken as a whole. (c) An indication of the kind of article of manufacture or handicraft to which the industrial design or layout-design shall be applied. Only industrial designs that are new or ornamental shall benefit from protection under this Act. Sec.That such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft. the application shall be considered withdrawn. 117. 114. That the name and address of the creator shall be mentioned in every case. whether or not associated with lines or colors: Provided.2. Sec. 112 (Definitions) and Sec.

an article or an integrated circuit in which the registered layout-design is incorporated. if the fee is not paid. The registration of an industrial design may be renewed for not more than two (2) consecutive periods of five (5) years each. That after the time that such person has received sufficient notice that the layout-design was unlawfully reproduced. LIMITATIONS OF LAYOUT RIGHTS Sec.5.4. the request shall be deemed not to have been filed. In such case. research or teaching. Registration of a layout-design shall be valid for a period often (10) years. if proof thereof is furnished to it. Anyone may inspect the Register and the files of registered industrial designs or layout-designs including files of cancellation proceedings. the former proprietor and the former representative shall remain subject to the rights and obligations as provided in this Act. with the request to record the change in the identity of the proprietor. A fee shall be paid. or b) on the filing date accorded to the application for the registration of the layout-design if the layout-design has not been previously exploited commercially anywhere in the world. without renewal. the registered layoutdesign in its entirety or any part thereof. 118. TERM OF INDUSTRIAL DESIGN OR LAYOUTDESIGN REGISTRATION Sec. RIGHTS CONFERRED ON THE OWNER OF A LAYOUT-DESIGN REGISTRATION Sec.5. The protection of a layout-design under this Act shall commence: a) on the date of the first commercial exploitation. Registration shall be published in the form and within the period fixed by the Regulations. That an application for registration is filed with the Intellectual Property Office within two (2) years from such date of first commercial exploitation.117.4. and (2) to sell or otherwise distribute for commercial purposes the registered layout design.5. The renewal fee shall be paid within twelve (12) months preceding the expiration of the period of registration. The Office shall record in the register any change in the identity of the proprietor of the industrial design or layout design or his representative. The owner of a layout design has no right to prevent third parties from reproducing. 118. (2) Where the act is performed in respect of a layoutdesign created on the basis of such analysis or evaluation and which is itself original in the meaning as provided herein. 19. by paying the renewal fee. that it incorporated an unlawfully reproduced layout-design: Provided. except the act of reproducing any part that does not comply with the requirement of originality. (3) Where the act is performed in respect of a registered lay-out-design. and such validity to be counted from the date of commencement of the protection accorded to the layout-design. however. the surcharge and other requirements regarding the recording of renewals of registration.3. However. (4) 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. The registration of an industrial design shall be for a period of five (5) years from the filing date of the application. of the layout-design by or with the consent of the right holder: Provided. that has been put on the market by or with the consent of the right holder. or (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. 118. 118. selling or otherwise distributing for commercial purposes the registered layout-design in the following circumstances: (1) Reproduction of the registered layout-design for private purposes or for the sole purpose of evaluation. The owner of a layout-design registration shall enjoy the following rights: . (1) to reproduce. upon payment of a surcharge. 117.2. 19.1.4. The Regulations shall fix the amount of renewal fee. whether by incorporation in an integrated circuit or otherwise. 118.3. or in respect of an integrated circuit in which such a layout-design is incorporated. analysis. that person may perform any of the 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 layout-design. a grace period of six (6) months shall be granted for payment of the fees after such expiration. anywhere in the world. 117.

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