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PATENTS LAW

(2nd Lecture) 1. PATENT an exclusive right acquired over an invention, to sell, use, and make the same whether for commerce or industry. It is a grant made by the government to an inventor, conveying and securing to him the exclusive right to make use of his invention for a given limited period. 2. PATENT VS. UTILITY MODEL AND DESIGN REGISTRATIONS i. PATENTA LE INVENTIONS any technical solution of a problem in any field of human activity which is 1. N !, "#ec. $% and $&' $. involves an IN( N)I( #) * "#ec. $+' and %. is IN,-#).I/001 /**0I2/30 "#ec. $4' shall be patentable. ii. )erm5 $6 yrs from the filing date of application, without renewal

UTILITY MODELS /n invention qualifies for registration as a utility model if it is5 1. N ! $. IN,-#).I/001 /**0I2/30 77Note no inventive step required, unlike in patents )erm5 its registration shall expire after 4 years after the date of filing of the application8 no renewal "#ec. 169.%'

!. NON"PATENTA LE INVENTIONS )he following shall be excluded from patent protection5 a. ,iscoveries, scientific theories and mathematical methods, and in the case of drugs and medicines "./ 9:6$'5 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 ii. the mere discovery of any new property or new use for a known substance, or iii. the mere use of a known process unless such known process results in a new product that employs at least one new reactant b. #chemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers8 c. ;ethods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body8 d. *lant varieties or animal breeds of essentially biological process for the production of plants or animals8 e. /esthetic creations8 f. /nything which is contrary to public order or morality "#ec. $$' #. RE$UISITES %OR INVENTION TO E PATENTA LE i. New "prior art' "#ec. $% and $&' ii. Involves an inventive step "#ec. $+' iii. Industrially applicable "capable of some beneficial use' "#ec. $4' &. W'O MAY APPLY %OR A PATENT( Secti)n 2*. Right to a Patent. < )he right to a patent belongs to the inventor, his heirs, or assigns. i.

+. RE$UIREMENTS %OR %ILING O% A PATENT Secti)n !2. The Application. < %$.1. )he patent application shall be in =ilipino or following5 "a' "b' "c' "d' "e' / request for the grant of a patent8 / description of the invention8 ,rawings necessary for the understanding of the invention8 >ne or more claims8 and /n abstract. nglish and shall contain the

,. Secti)n 2*. Right to a Patent. xxx !hen two "$' or more persons have ?ointly made an invention, the right to a patent shall belong to them ?ointly. *. W'O OWNS T'E RIG'T TO A PATENT( Secti)n 2*. Right to a Patent. < )he right to a patent belongs to the inventor, his heirs, or assigns. !hen two "$' or more persons have ?ointly made an invention, the right to a patent shall belong to them ?ointly. -. Secti)n !.. In/enti)n0 1re2ted Pur0u2nt t) 2 1)33i00i)n. < %6.1. )he person who commissions the work shall own the patent, unless otherwise provided in the contract. 1.. RIG'TS 1ON%ERRED Y PATENT #ection 41. .ights 2onferred by *atent. < 41.1. / patent shall confer on its owner the following exclusive rights5 a. !here the sub?ect matter of a patent is a product 5 to restrain, prohibit and prevent any unauthori@ed person or entity from making, using, offering for sale, selling or importing that product8 "#ec. 41.1' b. !here the sub?ect matter of a patent is a process5 to restrain, prevent or prohibit any unauthori@ed person or entity from using the process, and from manufacturing, dealing in, using or offering for sale, or importing any product obtained directly or indirectly from such process8 "#ec. 41.1' c. to assign, or transfer by succession the patent, and to conclude licensing contracts for the same "#ec. 41.$' 11. Secti)n ,2. Limitations of Patent Rights. < )he owner of a patent has no right to prevent third parties from performing, without his authori@ation, the acts referred to in #ection 41 hereof in the following circumstances5 4$.1. -sing a patented product which has been put on the market in the *hilippines 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 market8 4$.$. !here the act is done privately and on a non<commercial scale or for a non<commercial purpose5 *rovided, )hat it does not significantly pre?udice the economic interests of the owner of the patent8 4$.%. !here the act consists of making or using exclusively for the purpose of experiments that relate to the sub?ect matter of the patented invention8 4$.&. !here 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 prepared8 4$.:. !here the invention is used in any ship, vessel, aircraft, or land vehicle of any other country entering the territory of the *hilippines temporarily or accidentally5 *rovided, )hat such invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not used for the manufacturing of anything to be sold within the *hilippines. 12. Secti)n ,+. Civil Action for Infringement. < 4+.1. )he making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authori@ation of the patentee constitutes patent infringement. 4+.$. /ny 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 ?urisdiction, to recover from the infringer

such damages sustained thereby, plus attorneyAs fees and other expenses of litigation, and to secure an in?unction for the protection of his rights. 4+.%. 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. 4+.&. )he court may, according to the circumstances of the case, award damages in a sum above the amount found as actual damages sustained5 *rovided, )hat the award does not exceed three "%' times the amount of such actual damages. 4+.:. )he court may, in its discretion, order that the infringing goods, materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed, without compensation. 4+.+. /nyone 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 ?ointly and severally liable with the infringer. 1!. Secti)n ,,. Infringement Action by a Foreign National. < /ny foreign national or ?uridical entity who meets the requirements of #ection % and not engaged in business in the *hilippines, to which a patent has been granted or assigned under this /ct, may bring an action for infringement of patent, whether or not it is licensed to do business in the *hilippines under existing law. 1#. Secti)n ,*. Process Patents; Bur en of Proof. < If the sub?ect 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. 1&. Secti)n ,-. Limitation of Action for !amages . < No damages can be recovered for acts of infringement committed more than four "&' years before the institution of the action for infringement. 1+. Secti)n *.. !amages" Re#uirement of Notice . < ,amages 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 B*hilippine *atentB with the number of the patent. 1,. Secti)n *1. !efenses 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 #ection +1 hereof. 1*. Secti)n *2. Patent Foun Invali $ay be Cancelle . " 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 ,irector of 0egal /ffairs upon receipt of the final ?udgment of cancellation by the court, shall record that fact in the register of the >ffice and shall publish a notice to that effect in the I*> Ca@ette. 2ase5 2reser *recision vs. 2/ and =loro Int. "C. No. 11D46D, =eb. $, 199D' 1-. Secti)n *#. Criminal Action for Repetition of Infringement. < If infringement is repeated by the infringer or by anyone in connivance with him after finality of the ?udgment of the court against the infringer, the offenders shall, without pre?udice to the institution of a civil action for damages, be criminally liable therefor and, upon conviction, shall suffer imprisonment for the period of not less than six "+' months but not more than three "%' years andEor a fine of not less than >ne hundred thousand pesos "*166,666' but not more than )hree hundred thousand pesos "*%66,666', at the discretion of the court. )he criminal action herein provided shall prescribe in three "%' years from date of the commission of the crime. 2.. TEST AS TO IN%RINGEMENT4 T'E DO1TRINE O% E$UIVALEN1E - )his is a test to determine infringement of patents that may have substantial identity between patented product and the other product.

)hey are considered identical if5 a.' )hey perform substantially the same functions8 b.' #ubstantially the same way to obtain the same result even if they differ in name, form, shape or dimension. !hat the law requires is merely substantial identity, not exact identity between the two devices.

T5u06 under the D)ctrine )7 E8ui/29ent0, if two devices do the same work in substantially the same way, the same result, and produce substantially the same result, they are the same even though they differ in name, form, or shape. 2ases5 #mith Fline 3eckman 2orp vs. 2/ "C. No. 1$++$4, /ugust 1&, $66%' *ascual Codine@ vs. 2/ "C. No. 94%&%, #eptember 1$, 199%'