Professor: Atty. Rodolfo P. Soriano Jr.

Transcribers:
Marc Roby de Chavez (MARX)

Mon Cristhoper Pasia (MON)

Angela dela Cruz (ANGELA)
Jennielyn Reyes (JEN)
April Gerero (APRIL)
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
IPL1
The Intellectual Property Law consists of 3 subjects/courses:
1. TRADEMARK (easiest)
2. COPYRIGHT (more difficult)
3. PATENT (most difficult)
The basic law in IPL is RA 8293 also known as the Intellectual
Property Code of the Philippines.
What is a trademark?
Any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an
enterprise and shall include a stamped or marked
container of goods.
X is a chemist by profession particularly a perfumer. A
perfumer makes perfume. X discovered a certain perfume by
combining the extracts from cellar woods and jasmine. The
cellar wood was the base tone and the jasmine was the top
tone. With respect to perfume there are many ingredients for
perfume and the perfume consists of 3 levels/bases/tones.
The first is high tone or the pass tone which is the smell when
you first apply the perfume to your skin. The second one is
the medium tone and the last one would be the base tone
(pinakahuling nawawalang amoy). He named this perfume
eternity.
Can he register the fragrance of the perfume as trademark?
What is the basis in saying that the fragrance of the perfume
can be registered as a trademark?
No, because it is not visible sign.
Supposing that a person by the name of Jopan compose a
music entitled Nocturna Can he register his composition
as a trademark? Legal basis? Can he register the
music/melody as trademark?
No, because it is not visible sign.
Thats why the law has its own definition. You dont ignore or
take for granted definitions of certain terms in the law
because that is very important. So the fragrance of the
perfume as well as the music of Jopan cannot be registered as
trademark because under the definition provided for in IP
Cod, MARK is any visible sign capable of distinguishing the
goods and services of enterprise and that includes marked or
stamped container of goods.
DISTILLERIA WASHINGTON V. LA TODEA DISTILLERS
CORPORATION
What are the trademarks involved in this case?

La Tondea Incorporated
1

Ginebra San Miguel

350 c.c. flint bottles of ____
TAKE NOTE CLASS: that marked or stamped container of
goods can be subject of a trademark.
What is the nature of the action that La Tondea filed against
Washington? The procedure what is the type of action? What
do you call this type of action?
Replevin.
What is replevin?
It is a possessory action. In the replevin case the
issue is possession, but if a person is asking in the
possession of property what is the implication? The
person is the owner of the personal property subject
of replevin.
Why did La Tondea filed replevin against Washington?
La Tondea believes that it is the owner of the
bottles subject of replevin.
How many bottles are involved?
18,000 bottles
Can you think of underlying interest aside from claim of
ownership by La Tondea who filed against Washington fro
replevin? Is there any other interest? What did La Tondea
expects of the activities of Washington?
That La Tondea is refilling the bottles with its own
products called Gin Seven (thats the main reason)
Did La Tondea transfer ownership of the marking product
when it sold them the bottles? When it sold its product in the
market to the public, did La Tondea transfer ownership of
the marked bottles?
Yes, reason? What laws involve? RA 623 An Act to
Regulate the use of duly stamped or marked bottles
of another similar things So La Tondea trasferren
ownership of the marked bottles when it sold its
products to the market. Why, what was the
reasoning of the court?
Let say Im a retailer, I have sales outlet and Im selling Coca
Cola products and you are the consumer and you buy Coca
Cola products from me the Coca Cola product in bottle. When
you brought the product, you also get the ownership of the
bottle?
st
Yes, this case there are 2 involve in these cases. 1
nd
case and the 2 case.
Thats why the petitioners Washington moved for
the disintegration of the case .
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
st
What was wrong with the 1 case? What was the resolution
st
of the court in the 1 case? According to the court who is the
owner of the bottle?
Washington because there is transfer of the
ownership of the bottles like from the sale of the
product.
What was wrong with this decision? Aside from the fact that
the SC held that Washington Distillers should be adjudged as
the owners of the bottles, what was the other part of the
decision? Did the court resolve the matter by requiring
Washington to pay La Tondea the amount of X pesos or the
amount of the bottles? If it was Washington who is ordered to
pay La Tondea because of the bottles but the court said that
the ownership over the bottles remained with the
Washington. Is that something wrong or correct? Fair or
unfair?
Unfair because it is not consistent with the adverse
of it ownership Washington moved for
reconsideration of the first decision because
according to that decision Washington should be
adjudged the owners of the bottles.
But how about the SC requires Washington to pay
the cost of the bottle to La Tondea?
Thats not fair, thats inconsistent, thats
wrong because in finding the owner of the
property then all attributes of ownership
should be belonging to me.
Whats the owner of stamped bottles? Can Washington fill
the same with it sown products? If Washington will be using
the TM of La Tondea is there a crime committed?
Trademark infringement under RA 623 because the
marked or stamped container of the goods is
considered as a TM. In effect The SC ruled that while
ownership over the bottles remain with Washington
and Washington can use the bottles in any way it
want it cannot violate the TM of the La Tondea.
But how come did the issuance obey?
because this is not a case for TM infringement this is
a case for replevin. Had the lawyer for La Tondea
filed a case for violation of TM infringement under
RA 623 then it could have been a different matter.
The court can decide whether there is a violation of
intellectual property rights or trademark right of La
Tondea but thats not the issue that issue is
replevin who owns of property must possess the
property.
2
ANG V. TEODORO
When human rationalize why they do not want to achieve
anymore a certain goal after they had failed to achieve it,
what do you call that expression?
From the Aesops fable. Sour graping.
Between the 2 who was the first one to register the TM Ang
Tibay?
It was Teodoro who first register the TM Ang Tibay
How come Ana Ang was able to register the same?
What are the functions of TM?
To indicate the ownership of the product or to be
specific the court said that it is to point distinctly
either by whole meaning or association to the origin
or ownership of the things from which you acquire
or to which they are attach.
Can a word or device which relate only to the thing following
the description of the merchandise be a subject of a TM?
you call this a descriptive name.
It cannot because there is a provision under RA 8293
which prohibits registration of a descriptive name.
What is the intent of the law? Why does the law does not
allow descriptive name to be the subject of TM registration?
Not to misled the buyers or you go back to the
definition of or to the function of the TM.
Can the descriptive name serve the function of TM?
It cannot because it only describes the quality or the
description of the goods.
If the descriptive words or devices to the subject of TM are
what kinds of words or devices or phrase cannot be subject of
TM not descriptive what do you call those phrases or device?
What are those words, devices or phrases that can be subject
of TM not descriptive? NIKE is that descriptive?
No.
ADIDAS desciptive?
No.
Can they be subject of TM?
Yes.
What do you call these words?
They are called Fanciful, arbitary, coined words,
phrases, or device.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
In a word or device which nonetheless descriptive and there
can be subject illustration use by a person (di ko maintindihan
to) how come?
Through we call exclusive use.
What do you call that doctrine?
Doctrine of secondary meaning.
Are the words Ang Tibay descriptive or fanciful, arbitrary or
coined?
Fanciful, arbitrary, or coined because the SC made a
semantic arrangement of words. It said that Ang is
an article which means THE or an adverb of the
constructed word ANO ANG TIBAY is not an
adjective thats why its not a descriptive term. You
dont say ANG TIBAY SAPATOS KO but you say
MATIBAY SAPATOS KO if the TM is MATIBAY do
you think it is still fanciful or arbitrary?
No more, it is already descriptive term.
Does it matter that Angs application for registration for ANG
TIBAY applies to a classic of merchandise different from
Teodoros? Or does it matter that both are selling non
competing goods?
Angs goods are pants and shirts. Teodoros goods
are slippers and shoes. Are they of the same kind?
No. Are they competing? No. do they have the same
trademark? Yes. The SC says that it does not matter
whether the goods to which the trademark are
attached with are not competing as long as it can
cause confusion.
(VERY GOOD!) Angelas SHINING MOMENT!
ETEPHA V. DIRECTOR OF PATENTS
When the doctor prescribes you a medicine with a brandname
ending with a suffic TUSSIN. What is your ailment?
That you have cough.
Which trademark was perfected with?
PERTUSSIN
Who was able to register the TM PERTUSSIN
Etepha A.G.
Is it a corporation?foreign?Liechtenstin?
yes
Who was trying to register ATUSSIN
Westmont pharmaceutical
3
What was the contention of Ethepa because Ethepha is
rejecting or opposing the registration of the brand
ATUSSIN?
That it will be damaged because ATUSSIN is so
confusedly similar to PERTUSSIN and that the
buying public will be misled into believing that
Westmonts product is that of Petioners which
allegedly enjoys goodwill.
How about TUSSIN can you register the mark TUSSIN?
No.
What is TUSSIN is that a Latin word? French word?
It is Latin word for cough
Can you register TUSSIN as TM?
The SC held that TUSSIN is a descriptive word. It is
also a generic term because it means cough. It also
make thought you cannot appropriate it as TM. But
if you add some prefix or suffix like PERTUSSIN or
ATUSSIN then it becomes registrable as TM.
How is the mark of PERTUSSIN different from ATUSSIN?
ATUSSIN is in bold, block letters horizontally
written. PERTUSSIN is printed diagonally upwards
and across in semiscript style with flourishes and
with only the first letter P capitalized.
What about the phonetic similarity? Do they sound alike?
They do not sound alike. There is not much phonetic
similarity between the 2.
Does it matter that PERTUSSIN and ATUSSIN is a
pharmaceutical product as a point of determination whether
there is confusingly similarity? If PERTUSSIN is a milk and
ATUSSIN is also milk. Is that a matter? Does it have
confusing similarity? What about that these 2 products are
pharmaceutical products not an ordinary product? Is that
important in the point of determination in confusing
similarity?
The court said that since they are pharmaceutical
products before a person can buy such product it
needed prescription and because these products
needs a prescription or requires a prescription then
the purchasing or consumers would be less because
there is a need of prescription. The doctor prescribes
for a medication. The pharmacy prescribes for
medication. You have to consider that for
determination.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
This case enumerates the objects of TM, what are the
functions of TM?
1. to point out distinctly the origin or ownership of the
articles to which it is affixed;
2. to secure to him who has been instrumental in
bringing into market a superior or merchandise the
fruit of his industry and skill;
3. to prevent fraud and imposition.
MIRPURI V. CA
FACTS: Lolita Escobar registered the name of barbizon
wherein she sold brassieres and ladies undergarments.
However BARBIZON corporation a foreign corporation
opposed such registration contending that it would cause
confusion because it has the same name. However the
Bureau of Patents allowed Escobar to register her BARBIZON
mark to be registered. Thereafter Escobar transfer her right
to Mirpuri. Thereafter Mirpuri failed to file an affidavit of use
that resulted to cancellation of the TM BARBIZON. Escobar
filed an application again for registration and transfer it to
Mirpuri. This time BARBIZON CORPO oppose again and again
on the same ground. Mirpuri contends that BARBIZON can no
longer oppose because the action is already barred by the
previous action.(res judicata)
RES JUDICATA
An absolute bar to a subsequent action for the same
cause.
REQUISITES:
1. former judgement or order must be final.
2. judgement or order must be one on the merits
3. it must have been rendered by a court having
jurisdiction over the subject matter and parties
4. there must be between the first and second actions
identity of parties of subject matter and causes of
action.
Proceeding in intellectual property office or formerly known
as Bureau of Patents are known as inter partes cases which
means those parties opposing each other in different
property office.
According to this case what are the other functions of TM:
1. to assure the public that they are procuring the
genuine article;
2. to prevent fraud and imposition;
3. to protect the manufacturer against substitution and
sale of an inferior and different article as his
product.
4. indicate origin or ownership of the articles to which
they are attached;
4
5. guarantee that those articles come up to a certain
standard quality;
6. They advertise the articles they symbolize.
IPL2
CASE: UNO COMMERCIAL
Is doing business a pre requisite for the ownership of a mark?
How did General Milling Corporation became the owner of
the trademark All Montana?
General Milling became the owner of the trademark
by virtue of a deed of assignment executed by the
original owner of the trademark, Centennial Milling
Is Centennial Milling a domestic corporation?
No. It is a foreign corporation
Is General Milling a domestic corporation?
Yes
What was the basis of Uno Commercial that it has acquired
ownership over the mark?
Uno Commercial that it has first registered the mark
What was the relationship of Uno Commercial with
Centennial Milling?
Uno Commercial is an indentor of SH Huang who is a
distributor of Centennial Milling
Can Uno Commercial validly register the trademark All
Montana?
Uno Commercial cannot register the mark, because
it is not the owner of the trademark All Montana.
The right to register a mark is base on ownership.
Can SH Huang apply for the registration of the trademark All
Montana?
No. The distributor is placed in the same level as a
broker, indentor or importer until and unless it is
duly authorized of the owner of the trademark, it
cannot apply for registration.
Why?
Considering that the distributor is merely an agent of
the principal, then the principal is estopped from
asserting title over the subject matter of the agency.
Therefore his registration will be deemed that of the
principal. If the principal ask the agent to register the
trademark All Montana, then the registration will
inure to the benefit of the principal.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
CASE: KABUSHI KAISHA ISETAN
What is the meaning of Kabushi Kaisha?
It is a Japanese term meaning limited company. It is
a form of corporation.
Was Kabushi Kaisha (KK, for short) doing business in the
Phils.?
No
Did KK alleged that it actually use the trademark Isetan as
well as the device in commerce here in the Phils.?
No. There was never an allegation by KK that it has
actually used the trademark Isetan and the device
here in the Phils.
What about Isetan Phils.? Did it use the trademark Isetan in
commerce here in the Phils.?
Yes
What then is the pre requisite for the ownership of a mark,
accdg. to the SC in this case?
Actual use of trademark in commerce in the Phils.
If KK Isetan adverstised its products bearing the trademark
Isetan, can you say that KK Isetan has gained or acquired
ownership of the trademark Isetan?
No. Even if KK advertise its products here in the
Phils., the same does not constitute sale or actual
use of the product . Not being an actual use,
therefore KK cannot acquire ownership of the
trademark Isetan. The same is true with the giving
out of price list of the products. The price list is not
constitutive of actual use of the marks.
What if KK Isetan exhibited the goods bearing the trademark
Isetan as samples? Does it constitute actual sale or actual
use?
No. According to the case of Pag-asa Industrial
Corporation, the SC said that the exhibition or
display of the products with the mark does not
constitute actual use.
What is the meaning of actual use in commerce in the Phils.
then? How do you prove actual use of the mark? What is your
best evidence that there is actual use of the mark in
commerce?
The best evidence would be the sales invoices or
receipts because that would show that the products
is actually sold.
5
What therefore is actual use?
Actual use means actual sale. There must be actual
sale of the products bearing the mark.
If a certain trademark is registered in Spain, but not
registered in the Phils. and is not actually use here in the
Phils., can you apply for registration of that trademark here in
the Phils.?
Yes. Because the Spanish entity who registered the
mark in Spain and who has actually used the mark in
Spain does not have the right to be protected of its
trademark here in the Phils.
Why?
Because the Spanish entity does not actually use the
trademark here in the Phils.
In the instant case, the trademark Isetan was never use by KK
Isetan here in the Phils. It did not allege actual use of the
mark in commerce here in the Phils. Therefore, anyone can
register that mark in the Phils. Because actual use is a pre
requisite to the acquisition of the ownership of the mark.
Can actual use of a mark in commerce in a foreign country
can be a mode of acquisition of ownership of that mark here
in the Phils.?
No. Because the requirement for acquisition of
ownership of the mark is actual use of the mark in
commerce here in the Phils.
Under the IP Code of the Phils. how are rights in the mark
acquired?
The rights in a mark shall be acquired through or by
a valid registration or registration made validly in
accordance with the provisions IP Code. Registration
per se will not result in the acquisition of the mark. It
should be in accordance with the provisions of the IP
Code.
Is there a distinction in so far as the mode of acquisition of
ownership of the mark in RA 8293 (IP Code) and the old
trademark law, RA 166?
Yes. In the old law, there must be actual use of the
trademark in not less than 2 mos. prior to the filing
of application for registration. In RA 8293, the mode
of acquisition of the mark is by registration made
validly in accordance with the IP Code.
Is RA 8293 which is a later legislative enactment has already
dispensed with the requirement of actual use in so far as
mode of acquisition of ownership of a mark is concerned?
RA 8293 does not repeal RA 166 in so far as the
mode of acquisition of ownership of the mark is
concerned because under Sec. 122 of RA 8293, it
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
does not say that ownership of the mark can only be
acquired by registration. Therefore, RA 8293 does
not dispense away with actual use.
What then are the two modes of acquiring ownership of the
mark?
Registration of the mark made validly in accordance
with the provisions of the IP Code and actual use of
the mark.
Is actual use still a pre requisite to the filing of application
under RA 8293?
No. You do not have to prove actual use before you
can file an application for registration of the mark
under the present law. Under the present law you
need not have to file a declaration of actual use of
the mark before filing the application for registration
of the mark.
Does registration alone perfect title of ownership of the
mark?
No. Under Sec. 124.2 of the IP Code, it is provided
that after filing the application for registration there
is still a need to prove actual use of the mark
thereafter. Therefore, registration alone will not
perfect ownership of the mark because you still have
to prove actual use of the mark after filing the
application for registration.
What would then perfect title of ownership of the mark?
Actual use of the mark
What is the legal significance or the rule of actual use under
the present law?
Under the IP Code, actual use is both a mode of
acquiring ownership over the mark as well as the
only mode for perfecting title of ownership over the
mark.
Why does actual use is the mode of perfecting title of
ownership of the mark and not registration?
Because the purchasers must come to understand
the mark as indicating the origin or ownership of the
wares. It goes to the very function of trademarks.
Aside from Sec. 124.2, what other provisions of RA 8293 will
support the argument that actual use is the mode for
perfecting title of ownership over the mark?
Sec. 123.2 which is the doctrine of secondary
meaning. A mark which is not otherwise capable of
registration may become distinctive and capable of
registration by substantially exclusive and
continuous use thereof for 5 yrs before the date of
6
the application. Another is Sec. 168 which provides
that actual use of a mark even without registration is
the basis for an action for unfair competition.
Does the registration of a mark confer an absolute right upon
the registrant to the registered trademark?
No. The right is not absolute but merely inchoate.
Under the IP Code, the certificate of registration is
merely a prima facie evidence that the registrant is
the owner of the trademark or the registered mark.
Does registration confer upon the registrant a permanent
right to the registered mark?
No. If within 3 yrs from the filing date the registrant
did not file declaration of actual use then his
registration will be cancelled. Therefore his right
cannot be said to be permanent but only temporary
which is subject to the condition that he files a
declaration of actual use.
Under the old law (RA 166), actual use is only a condition
precedent to filing a registration. But now under the present
law actual use is no longer a condition precedent prior to
registration but a condition subsequent to perfecting title of
ownership over the registered mark.
As between a registrant and a prior actual user of the same
mark, who owns the mark?
A prior user shall be considered the owner of the
mark and not the registrant. Because there is only a
presumption of ownership of a mark in the
certificate of registration and such can be rebutted
or overcome by evidence of actual use by another.
What is the importance of registration aside from being a
mode of acquiring ownership of a mark?
Registration is a prima facie evidence of the validity
of the registration, the registrants ownership of the
mark and of the registrants exclusive right to use
the same in connection with the goods or services as
specified in the certificate. It is also a pre requisite
for maintaining an action for infringement.
Can you file a case or an action for infringement of a
trademark against somebody if you do not have a registered
mark?
You cannot. Registration is a pre requisite to
maintaining an action for infringement.
Is registration a pre requisite for maintaining an action for
unfair competition?
Unfair competition does not require for its
maintenance a registration of the mark
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
CASE: PHILIP MORRIS
Is Philip Morris licensed to do business here in the Philippines?
No
Is Philip Morris doing business here in the Philippines?
No. It was suing only on an isolated transaction
What was Philip Morris ____ in this case? Did Philip Morris
allege actual use of the mark?
There was no allegation of the actual use of the
mark.
But even if Philip Morris did not allege actual use of the
subject mark it argued that it can still sue Fortune Tobacco for
trademark infringement. What was the basis of Philip Morris?
The basis was Art. 2 of the Paris Convention.
Art. 2 of the Paris Convention is inconsistent with Sec. 2a of
RA 166. Under RA 166 actual use is a pre requisite or a mode
of acquiring ownership over the mark. But under the Paris
Convention actual use is not a pre requisite. How did the SC
reconcile these two provisions? Which prevails in case of
conflict, the treaty or the domestic law?
The trademark law of the Phils. must prevail because
trademark rights are territorial. Trademark rights
being territorial, therefore domestic or national law
must prevail over a treaty even if we adhere to the
doctrine of incorporation.
Is it possible for a foreign entity not doing business here in the
Phils. to have a personality or legal standing to file a suit for
infringement? Is Philip Morris licensed to do business here in
the Phils.?
They are not doing business in the Philippines and
are not licensed to do business in the Phils.
What must Philip Morris allege in its complaint so that it can
sue for trademark infringement against Fortune Tobacco?
Can Philip Morris merely allege its alien origin or its alien
nationality in order for it to have a legal standing?
Under the Paris Convention, Philip Morris must
allege that it is a citizen or domiciled at a country
which grants the same reciprocal rights to Filipino
nationals with respect to trademarks. The SC said in
this case that it is not enough for a foreign entity to
allege its alien origin or its alien nationality because
it will not have a legal standing. In order for it to
have legal standing it must allege that it is a citizen
or domiciled at a country which grants the same
reciprocal rights to Filipino nationals with respect to
the protection of intellectual property rights.
7
CASE: C.Y. GABRIEL
What was the business relationship before the dispute
between Dr. Perez and Gabriel?
They entered into a distributorship agreement
wherein Gabriel is the distributor of the Wonder
soap of Dr. Perez.
What did Gabriel with respect to the packaging and design of
the wonder soap?
It is Gabriel who has the control of the packaging
and design. She was the one who marketed the
product because it is under a distributorship
agreement.
Can Gabriel as the exclusive distributor register the trademark
Wonder?
No
Did the distributorship agreement provide that the ownership
of the mark will be transferred to Gabriel?
No. There was no such stipulation although it is
possible that the rights in the mark may be
transferred under a deed of assignment or under the
distributor agreement
In spite of the registration of the trademark Wonder in favor
of Dr. Perez, what did Gabriel do in relation to the said
trademark?
She kept on using the trademark Wonder.
Who was the adminstratrix of the intestate estate of Dr.
Perez?
What did the adminstratrix do after she learned that Gabriel
was still using the trademark Wonder?
She filed an infringement suit
What happened to the registration of the trademark in favor
of the intestate estate of Dr. Perez during the pendency of the
civil action?
The administratrix failed to file the affidavit of actual
use. Under the IP Code the registrant must file an
affidavit of actual use or declaration of actual use
within a year after ______ . The same goes with the
old law.
Did the cancellation of the trademark Wonder render the
infringement case moot and academic?
It did not
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
Should the trial court dismiss the case just because the
trademark has been cancelled?
No. The case in the trial court is about infringement.
And there is no relationship between the
cancellation of a trademark and infringement. The
court must still determine whether or not Gabriel
has indeed infringe the trademark.
There was an assignment of the trademark Wonder by Go
Hay to Gabriel. Did this assignment _____ suspicion to the
court? There were 2 registration in this case for Wonder. One
is a registered trademark in favor of Dr. Perez and the other
one is Wonder GH in favor of Go Hay. They are different in so
far as the application for registration is concerned. But what
did Gabriel do with respect to the trademark assigned to her?
Although the 2 application for registration have
marked differences, Gabriel was able to imitate the
trademark of Dr. Perez. Gabriel did not actually use
the trademark that was assigned to her. Such would
cause confusion
The Court ordered the cancellation of the trademark Wonder
GH in favor of Gabriel. What was the reason of the SC?
The Wonder brand of Dr, Perez was in prior use of
the Wonder brand of Go Hay
Did Gabriel abandon the use of the trademark assigned to her
by Go Hay?
Yes, there was an abandonment. Therefore she did
not use it any more.
Was there confusion between Gabriels use of the trademark
assigned to her and the trademark of Dr. Perez?
Yes there was an actual confusion because the goods
are related goods. Thats why the SC cancelled the
trademark of Gabriel.
CASE: BAXTER
What was the trademark registered by Baxter in this case?
Agua de Kananga
What about the trademark registered by Zosimo Zuazua?
Kananga Superior and ____
Did the SC say that Baxter has the exclusive right to the use of
Kananga?
No. The SC said that Baxter has no exclusive right to
the use the term Kananga even though it has a
registered trademark of Agua de Kananga. The term
Kananga is generic therefore it cannot be the subject
of trademark registration.
8
Did the SC say that there was an unfair competition in this
case? Is there any similarity between the products of the
contending parties?
There is no unfair competition because there is no
similarity between the competing products. They
are the same Kananga, they are the same toilet
water but the SC said that bec. the labels are
different there is no unfair competition. The basic
rule under unfair competition is that there must be a
similarity or colorable imitation.
CASE: COMPANIA DE GENERAL DE TABACOS
What did the SC say about the contention of Alhambra that
Isabela is geographic term and therefore Compania de
General de Tabacos could not have appropriated the same as
its own trademark?
The SC said that the issue here is contempt and
injunction. The contention of Alhambra that the
term Isabela is a geographic and therefore cannot be
exclusively appropriated by Compania de General de
Tabacos is an issue which should be decided in the
merits in the trial of the merits of the case. The issue
here is merely an injunction and one for contempt.
IPL3
What are the requisites for obtaining a filing date? How do
you register a trademark, service mark or tradename?
The applicant must file his request for registration,
he must indicate his domicile or his that of his
representative must produce the mark sought to be
registered and pay the appropriate filing fees.
What are the requisites for you to have an application
number?
The applicant must present the mark he seeks to
register, his name, residence. If it is an international
corporation, its address abroad and here in the
Philippines.
To whom will you submit the application for registration, who
receives the application?
It is the Duty Officer of the Day and not the Trade
Examiner.
What is the duty of the officer of the day? Will he conduct a
substantive examination of the application?
NO
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
What kind of examination is he going to perform on the
application?
Only a formal examination, it is a ministerial function
to see whether the requirements for filing are
complied with. He is not going to conduct a
substantive examination.
Is it required to submit the actual label specimen (the one
found in the product itself, it is not the trademark) indicating
the trademark which you are seeking to register in your
application?
NO, because there is no requirement that you must
actually use the trademark upon submitting the
application. The actual use requirement has been
abandoned in so far as the filing of application is
concerned.
But do you need to submit your actual label specimen after
submitting your application form?
YES, within three years for the time you submitted
your application because within three years you
have to prove that you actually used the trademark.
What is the importance of the filing date?
In order to determine who has the priority over the
mark.
Is there a difference between a filing date and priority
date/right?
The filing date is the date the office has received the
application when all the requirements provided by
law are complied with, while priority date/right
given to the person who has able to register a TM in
the Philippines or foreign countries pursuant to the
filing date in which said foreign corporation was able
to register the same.
How a foreign corporation can claim priority right? Cite
example.
A corporation organized and existing in Japan filed
an application for the TM Nike in Japan on January
2, 2009. In the Philippines, a domestic corporation
applied for the same TM registration on March 2,
2009. Consequently on April 2, 2009, the Japanese
corporation applied in the Philippines an application
for registration of the TM Nike.
Who between the two corporations has the priority right over
the same TM having the identical line of goods and services?
The Japanese corporation because was the first to
apply (we are not talking of registration here). The
filing date must be analyzed against the priority
9
right/date. And both the Japan and the Philippines
are members of the Paris Convention.
What is the condition before the Japanese corporation can
claim priority right over the same TM?
Within six months from its filing date, it must file an
application here in the Philippines or any country
signatory to the Paris Convention. If it fails to do so,
then it loses its claim to priority right.
What is the purpose of the Priority Right?
For the protection of the applicant. The foreign
applicant must claim a priority right, he must make
an actual and formal declaration that he is claiming
as pr over the same TM.
What does the law say about claiming a PR? Can the
Philippines through IPO grant the application of the Japanese
corporation on May 2, 2009 without any condition?
NO, the law specifies that the application will not be
granted unless in the home country of the foreign
applicant his application/registration has been
granted.
Is there any exception?
If it is a well-known mark or internationally known
mark, there is no need for registration if the TM
belongs in the line of similar goods or services. But if
it doesnt belong in the same line goods or services
there is a need for registration.
What are interpartes/interference proceedings?
It is an opposition proceeding, cancellation
proceeding.
CASE: BATA INDUSTRIES LIMITED
Did the BATA have the personality to sue for opposition
against the other party?
None.
Did BATA stand to be prejudiced or suffer damage by the
registration of the TM BATA in the case?
NO, they are not doing business in the Philippines
and there is no actual use here.
What is the prescriptive period/ reglementary period for filing
an opposition?
Within 30 days from the publication of the
registration.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
Who has the exclusive jurisdiction over the application for TM
registration? Who conducts the examination of the
application?
It is the Trademark Examiner. He recommends to the
Director of the Bureau of TM the publication of the
TM sought to be registered and after the publication
anyone who believes that he will be damaged or
prejudiced by the registration have the right to file
an opposition which is called an
interpartes/interference proceedings.
Is his decision appealable?
YES, to the Director of the Bureau of TM.
When you submit your requirements to obtain the filing date,
will the office conduct a substantive examination?
NO.
When will the office conduct a substantive examination?
It is only when the application meets the filing
requirements.
What are the filing requirements?
Section 124. When you file an application to obtain a
filing date, you need not submit all your filing
requirements because you only need to have a filing
date. You can go back to submit all your filing
requirements. That is why one of the requirements
for obtaining a filing date is a mere
reproduction/drawing/sketch of the TM, not the
actual or formal TM (you only need to submit the
actual TM when filing all the requirements). The
filing date is very important because it determines
who among the two applicants has the right or
priority right to register the same TM.
CASE: STA.ANA VERSUS MALIWAT
Flormann - Maliwat (June 1962)
Flormenn - Sta.Ana (September 1962)
What is the mode of perfecting ownership over a TM?
The actual use.
In the application given by Maliwat in the TM Flormann, what
year did he state the he actually used the TM?
1959 but he amended it to 1955
Sta. Ana?
1959
What happened in the stipulation of facts?
They agreed with the same that the actual use is
1955 for Maliwat, and Sta.Ana 1959.
10
*Take note of these facts:
Same TM?
Similar line of goods/services?
Date of actual use?
What is the principle behind this case?
No need to prove because there is already a judicial
admission in relation to actual use because it is
borne by the records therefore there is no need for
further proof.
Can you register SHABU for Cola drink?
NO, Sec 123, par1. Prohibited immoral, deceptive,
scandalous
Can you register a name of a person as a TM?
No.
Absolutely?
No, if there is his consent.
President of the Philippines and is already dead?
No, but if his widow consents, you can.
If not the president, you cannot get the consent of
the widow. The law seems mistaken.
CASE: HICKOCK
Is the Nice Classification controlling?
No, the court can determine whether or not the
products are related or not.
Nice Classification comes from Nice Agreement, nice is a
town in France. The Philippines is not a party to the Nice
Agreement but it follows the nice classification
How many classes are there in Nice Classification?
34 in goods and 11 in services.
CASE: FABERGE
Section 20 TM Law and Section 4 is there a conflict?
YES
Principle: Extent of protection (limited as SPECIFIED IN THE
CERTIFICATE OF REGISTRATION, no more no less)
Did section 20 prevail over section 4?
Yes, latter intent of Congress.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
Is the filing an application for registration an ex-parte
proceeding? Is it confidential or not?
CASE: BERNANDINE
What is the problem in Bernadines petition?
He did not apply for the registration of the
lightboxes. His only protection is the TM of poster
ads and copyright registration of technical drawings.
However, copyright protects only literary and artistic
works but not to technical drawings.
IPL4
CASE: YU v. CA
What kind of action was filed by Yu? What was the nature of
the action?
Injunction
What was the basis?
Based on the exclusive distributorship agreement
What law was made as the basis in filing the injunction filed
by Yu? Are these provisions under RA 166 or provisions under
the civil code?
Art. 28 of the Civil Code
Is there a provision under the Civil Code which speaks of
unfair competition?
Art. 28 of the Civil Code
The lower court and the CA denied Yus application for
injunction. What was the basis of the denial of the lower
court?
The evidence provided that ___ was willing to pay
damages to Yu. Then there is no reason for the
injunction. If the applicant for injunction can be
compensated for damages then injunction could not
lie
What was the SCs decision? Should the injunction be
granted?
The SC said that injunction is the proper remedy to
prevent a wrongful interference with contracts by
strangers when the legal remedy would be ____ and
the resulting injury would be irreparable. In other
words, even if ___ is not a party to the contract, if
_____ must be enjoined because Yu must be
protected in so far as the exclusive sales agreement
is concern, but not on the basis of the agreement
itself but because there is a provision under the law
which is Art. 1314 which gives a remedy.
11
Is there unfair competition here?
Yes
The unfair competition was base on what law in this case?
Art. 28 of the Civil Code
Assuming that Yu filed a case for unfair competition under RA
8293, could there be a case for unfair competition?
No. The essence of unfair competition under the
Intellectual property law is the passing off of ones
goods or services on the public as that of the goods
and services of another. In this case although the
injunction was base on Art. 28 of the Civil Code,
strictly speaking it is not one for unfair competition
because unfair competition under the Civil Code is
___. The definition of unfair competition under the
intellectual property code, that is the true meaning
of unfair competition. This case involves ____
importation and must strictly speaking be unfair
competition. But because there is a provision under
Art. 28 which grants damages and injunction there is
unfair completion and you can file a case base on
unfair competition.
CASE: LEVITON INDUSTRIES
What was the action filed by the foreign corporation?
Unfair competition
Base on which law?
Under Sec. 21-A of RA 166
Can the foreign corporation file a case for unfair competition
base on other law aside from RA 166?
Yes. Art 189 of the Revised Penal Code
Could Leviton file a case for unfair competition under Art 189
of the RPC instead of RA 166?
Yes
What was Art 189 of the RPC?
Unfair Competition
Assuming that the case happened today, can Leviton file a
case for unfair competition base on Art. 189 of the RPC?
No. It must be base on RA 8293. RA 8293 repealed
Art 188 an 189 of the RPC. Therefore it can no longer
file a case for unfair competition under the RPC. But
prior to the enactment of RA 8293, it can still file a
case for unfair competition under the RPC or RA 166
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
What ground was invoked by the local entity when it filed a
motion to dismiss the complaint?
Failure to state a cause of action because allegedly it
did not state its legal personality to sue
What should the foreign entity should have alleged in its
complaint in order that it will not be dismissed?
Leviton, a foreign corporation must allege in its
complaint that its trademark is registered here in the
Phils
(Remember: a foreign corporation not engaged in business
here in the Philippines can file a case for unfair competition
or infringement whether or not it is licensed to do business
here in the Phils, but if it is doing business in the Phils, and
not licensed to do business in the Phils. it cannot. If it is not
doing business here in the Phils and not license to do
business, but it has an isolated transaction it can still sue here
in the Phils. You have to distinguish the activity, whether the
activity is one doing business or merely an isolated
transaction. If it is doing business, it must have a license. If
base on an isolated transaction it can file an action WON it is
license to do business here in the Phils.)
Is prior registration of a mark a pre requisite for an action for
infringement?
Yes
Is registration of a mark a pre requisite for an action for unfair
competition?
No , registration of a mark is not a pre requisite for
an action for unfair competition The exception is if
the foreign corporation files a case for unfair
competition, it must allege that its trademark is
registered here in the Phils.
Is there an exception to the exception?
Yes. In case of a well known trademark. If it is
determined by competent authority that it is a well
known mark, then it need not allege that it is
registered here in the Phils.
CASE: PUMA
What was the defense of Mil-Oro when Puma filed an action
for infringement of trademark ?
Lack of legal capacity to sue and litis pendentia
Why did Mil-Oro argue that Puma has no legal capacity to
sue? Was there any missing element in the complaint?
It failed to allege reciprocity in the complaint
12
What did the SC say about this issue? Did the SC abandoned
the ruling in Leviton? What is the difference between Leviton
and this case in so far as foreign corporations are concerned?
In Leviton the basis for the case for unfair
competition is a law. In this the case the basis is a
treaty. This case did not abandon the ruling in
Leviton industries because the SC said that if the
foreign corporation is suing base on a treaty then, it
need not allege reciprocity because the treaty is the
one which supplies the reciprocity arrangement
between the Phils and the foreign country of which
the foreign country is a citizen or domiciled of. And
bec. It is a treaty there is no need for you to prove a
treaty, bec. Under the law of evidence a treaty must
be given judicial notice
What was the ruling of the SC with regards to Litis Pendentia?
The Sc said that there is no litis pendentia. In order
for there to be lis pendens, the other case pending
involving the same parties and having the same
cause of action must be a court action. In this case
the inter partes case was before an administrative
body, the Patent Office. Therefore, there can be no
application of the doctrine of lis pendens.
CASE: LA CHEMISE LACOSTE
How did the Court meet squarely the argument of Hermandas
that Leviton principle should be applied in this case?
The SC said that Leviton principle is not applicable in
this case because these two cases involve different
law. One involves a provision in the Revised Penal
Code the other a provision under RA 166, so the
Leviton Industries principle is not applicable in this
case.
Do you agree with the decision of the SC? Do you think the SC
would like to abandon the principle in the Leviton case?
In the Leviton case, the mark involve is not an
internationally well-known mark , in this case,
Lacoste is an internationally well known mark so the
SC have a very strong policy in favor of
internationally well known mark.
Even if the complaint is base on RA 166, the SC could have
made the same decision. Even if La Chemise Lacoste failed to
allege the facts bearing upon its capacity to sue, the SC would
still grant the same decision. Do you agree?
Yes. Because it is an internationally well known mark
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
Lets go to the argument of Hermandas that La Chemise
Lacoste is doing business here in the Phils. Yet it was not
license to do business here in the Phils. What was the ruling of
the SC?
Lacoste is not doing business here in the Phils.
because Rustans is doing business not for the name
or for the account of Lacoste but on its own name.
Therefore it not an agent, it is a middleman.
In this case Judge Fernandez issued two search warrants.
Then Hermandas filed a motion to quash search warrant.
What was the ground invoked by Hermandas in filing a
motion to quash the search warrant?
Hermandas said that the trademark use by him is
different from the trademark use by Lacoste. Judge
Fernandez recalled the search warrants base on this
allegation.
Was that a correct step on the part of Judge Fernandez?
No. Because such is an issue that must be raise in
the trial itself and not in the hearing on motion to
quash the search warrant. In issuing the search
warrant Judge Fernandez has already complied with
the probable cause.
Hermandas argued that it is the holder of a certificate of
registration of the trademark Chemise Lacoste and Crocodile
device. Was that enough for it to be protected from suit from
infringement? What did SC say on this? What are the 2 kinds
of registry under RA 166?
Supplemental registry and principal registry
Hermandas certificate of registration was under which
registry?
Supplemental registry
What was the difference between a supplemental registry
and a principal registry?
A trademark registered under the supplemental
registry still has some defects with respect to its
registrability and it is not subject to any opposition
Does it have the presumption of validity of registration as well
as to the registrants right of exclusive ownership over the
trademark?
It has no presumption as to its valid registration and
that the holder of the certificate is the axclusive
owner of the trademark. Unlike in the case of a
principal registry, there is that prima facie
presumption. Therefore Hermandas argument was
wrong because he did not even have a prima facie
presumption in his favor.
13
Granting that Hermandas certificate was registered under
the principal registry, can he be sued for infringement?
No. Because it gives only a prima facie presumption
on the validity of registration and the registrants
exclusive ownership of the mark
Do we still have supplemental registry under RA 8293?
We dont have that anymore. There is no more
distinction between a principal registry and a
supplemental registry
What about the contention of Hermandas that the action was
premature in view of the pending Inter Partes case before the
Patent Office between the same parties? What was the
Courts ruling?
The case involve is civil. Inter partes case is not civil
in nature, they are merely administrative
What is the prescriptive period for filing a petition for
cancellation for registration of a trademark?
Sec. 151.1 IP Code prescriptive periods
CASE: ROMERO
If a foreign corporation under the regime of RA 166 would like
to file registration of its trademark, does it need to prove
actual use upon filing of the application?
No
If it is a domestic corporation or a local entity who would like
to file an application for a trademark here in the Philippines
under the regime of RA 166, does it need to prove actual use
upon filing of the application?
No, But there is a section 37. It provides that if the
Phils. is a party to a convention or a treaty then the
foreign corporation need not prove actual use upon
filing of the application. Thats why the SC said that
the application in this case was filed on the basis of
Sec. 2 and not on the basis of Sec. 37. Because at
that time Phils was not yet a signatory or a member
of the Paris Convention
Under RA 8293, is there a need to prove actual use upon filing
the application for registration whether or not it is a foreign
corporation or a local entity?
No. There is no more requirement of proving actual
use upon filing of the application because RA 8293
has already harmonized the rules as between a
foreign corporation and a local entity.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
There was also an argument that the registration of Adagio
was procured fraudulently because there was a government
restriction on the importation of the goods by Maiden Form
which resulted in the temporary use of Adagio by Maiden
Form. What was the ruling of the SC?
...............
CASE: PHIL. NUT
What is the dominancy test?
In dominancy test, the focus is on the prevalent
feature of the product
How would you know if a trademark is confusingly similar to a
registered trademark by the test of dominancy?
The focus is on the main or the dominant feature of
the mark. According to the SC, the main feature in
both trademark is the term Planters
Why not Cocktails? Why not Cordial?
Because it is the word Planters that catches the
attention of the consumers and which will lead
consumers into thinking that the source of this two
peanuts belong to the same origin
Phil. Nut argued that the word Planters has not acquired a
secondary meaning or that the Standard Brands could not
have acquired or could not have owned the trademark. What
was the Courts ruling?
The term Planters acquired a secondary meaning in
favor of Standard Brands, in the same as Selecta in
the case of Arce acquired a secondary meaning.
But even if the term Planters did not acquire a secondary
meaning, still, can you say that Standard Brand owned the
trademark?
Yes, Standard Brand still owned the trademark
Planters because it fulfils the requirement of
registrability
Can a person who failed to apply a petition for opposition
against the registration of a mark still file a petition for
cancellation of the registration of the same mark?
Yes. The SC said that this actions are alternative, the
parties can choose any one of them (Achor Trading
v, Director of Patents)
CASE: CLOROX
How many opposition papers were filed by the counsel of
Clorox?
Two
14
The first one, was it verified or unverified?
It was unverified
Was the counsel of Clorox company able to file a verified
petition for opposition within the reglementary period?
In the first opposition which is unverified, he filed it
within the 30 day period. Then it filed another
opposition, this time verified because it receive a
notice from the director of patents that it filed an
unverified opposition. But in this verified opposition
there was a cover letter and the cover letter states a
different case title
What did the clerk of court or the ____ of the director of
patents do?
It did not correct the mistake
Therefore whose mistake was that? Was it the clerk of court
or the lawyer of Clorox?
According to the SC it was the mistake of the Clerk of
Court
Do you agree with the decision of the SC?
(According to sir, it was the mistake of the counsel)
What did the SC say about the decision of the Director of
Patents? Was the Director of Patents correct in dismissing
the opposition filed by the counsel of Clorox?
No. The SC said in this case that the freedom of the
opposition on technicality grounds would amount to
considerable injustice to Clorox. And therefore there
is a possibility of such period consequence which
necessitate a careful examination of the grounds
upon which it requires that ____ .So if you are made
to choose between a technicality and substance, of
course you have to go to substance.
Was the verified opposition filed by the counsel of Clorox ever
found by the SC?
No
If there was no evidence that there was a verified opposition
then why did the SC that the counsel of Clorox was able to file
a verified opposition?
There was only an opinion of the SC that the counsel
of Clorox filed a verified opposition. It was only an
opinion .
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
IPL5
WOLVERINE WORLDWIDE VERSUS CA
What was the defence interposed by the private respondents?
Since there were three interpartes proceedings filed
in the Patent Office prior to the institution of the
complaint in the court, Worldwide cause of action is
barred by the res judicata.
Are the equitable principles of res judicata, estoppels and
laches applicable in administrative decisions like before the
Patent Office?
Yes.
Worldwide said that by virtue of the Memorandum issued by
Minister Ongpin the doctrine of res judicata must not apply.
Why is that so?
Worldwide said that the three interpartes cases
were filed under RA 166 but the case filed before the
court was filed under the Memorandum issued by
Minister Ongpin stating that trademarks registered
prior to the issuance of the said memorandum and
which are issued by virtue of the Paris Convention
should be cancelled.
What was the ruling of the Supreme Court?
The Memorandum did not amend the provisions of
RA 166 and did not change the declaration of policy
as embodied in the said law hence res judicata is
applicable.
What was wrong with the strategy adopted by the Worldwide
in relation to their prosecution of the case?
They failed to invoke the protection of Paris
Convention during the interpartes cases. Had they
done so, the decision would not be adverse to them.
SHANGRILA VERSUS CA
What is the issue in this case?
The core issue is simply whether, despite the
institution of an Inter Partes case for cancellation of
a mark with the BPTTT (now the Bureau of Legal
Affairs, Intellectual Property Office) by one party, the
adverse party can file a subsequent action for
infringement with the regular courts of justice in
connection with the same registered mark.
What was the ruling of the Supreme Court?
YES. Infringement case can be filed notwithstanding
the cancelation proceedings in the Patent Office.
15
What is your basis?
Section 151.2 of Republic Act No. 8293, otherwise
known as the Intellectual Property Code, provides,
as follows
Section 151.2. Notwithstanding the foregoing
provisions, the court or the administrative agency
vested with jurisdiction to hear and adjudicate any
action to enforce the rights to a registered mark
shall likewise exercise jurisdiction to determine
whether the registration of said mark may be
cancelled in accordance with this Act. The filing of a
suit to enforce the registered mark with the proper
court or agency shall exclude any other court or
agency from assuming jurisdiction over a
subsequently filed petition to cancel the same mark.
On the other hand, the earlier filing of petition to
cancel the mark with the Bureau of Legal Affairs shall
not constitute a prejudicial question that must be
resolved before an action to enforce the rights to
same registered mark may be decided.
Similarly, Rule 8, Section 7, of the Regulations on Inter Partes
Proceedings, provides to wit
Section 7. Effect of filing of a suit before the Bureau
or with the proper court. - The filing of a suit to
enforce the registered mark with the proper court or
Bureau shall exclude any other court or agency from
assuming jurisdiction over a subsequently filed
petition to cancel the same mark. On the other
hand, the earlier filing of petition to cancel the mark
with the Bureau shall not constitute a prejudicial
question that must be resolved before an action to
enforce the rights to same registered mark may be
decided.
Hence, as applied in the case at bar, the earlier institution of
an Inter Partes case by the Shangri-La Group for the
cancellation of the "Shangri-La" mark and "S" device/logo
with the BPTTT cannot effectively bar the subsequent filing of
an infringement case by registrant Developers Group. The law
and the rules are explicit.
The rationale is plain: Certificate of Registration No. 31904,
upon which the infringement case is based, remains valid and
subsisting for as long as it has not been cancelled by the
Bureau or by an infringement court. As such, Developers
Group's Certificate of Registration in the principal register
continues as "prima facie evidence of the validity of the
registration, the registrant's ownership of the mark or trade-
name, and of the registrant's exclusive right to use the same
in connection with the goods, business or services specified in
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
the certificate." Since the certificate still subsists, Developers
Group may thus file a corresponding infringement suit and
recover damages from any person who infringes upon the
former's rights.
Did the infringement case filed by Developers Group reach
the CA?
YES.
If a cancellation case has been filed and subsequently an
infringement case is filed, the cancellation case need not be
suspended, because the two are different and independent
proceedings.
Why did the court allow an infringement case be maintained
despite the filing of cancelation. What is the logical reason?
What benefit will it give to the party filing the infringement
case? What is it that you can get from filing an infringement
case but you cannot get in cancellation proceedings?
Injunctive remedy in favour of holder of certificate of
registration.
Did the SC ordered the suspension of admin proceedings?
YES. Its possible that IPO might render conflicting
decision with that of the CA. In this case the conflict
is more possible because the trial court had already
rendered a decision. But if the trial court had not yet
rendered a decision the administrative proceedings
will not be suspended.
Infringement case filed ahead of cancellation case?
Cancellation case will be suspended because the trial
court can order the cancellation of the registered
TM.
Cancellation case filed ahead the infringement case?
They can proceed independently.
ETHEPA VERSUS DIRECTOR OF PATENTS
What is the issue in this case?
WON trademark ATUSSIN be registered, given the
fact that PERTUSSIN, another trademark, had been
previously registered in the Patent Office.
What is the ruling of the Supreme Court?
There is no infringement in this case.
*Confusion is likely between trademarks, however, only if
their over-all presentations in any of the particulars of sound,
appearance, or meaning are such as would lead the
purchasing public into believing that the products to which
the marks are applied emanated from the same source. In
16
testing this issue, fixed legal rules exist if not in harmony,
certainly in abundance but, in the final analysis, the
application of these rules in any given situation necessarily
reflects a matter of individual judgment largely predicated on
opinion. There is, however, and can be no disagreement with
the rule that the purchaser is confused, if at all, by the marks
as a whole. The words Pertussin and Atussin do not sound
alike when pronounced. There is not much phonetic
similarity between the two. In the solution of a trademark
infringement problem, regard too should be given to the class
of persons who buy the particular product and the
16
circumstances ordinarily attendant to its acquisition. The
medicinal preparation clothed with the trademarks in
question, are unlike articles of everyday use such as candies,
ice cream, milk, soft drinks and the like which may be freely
obtained by anyone, anytime, anywhere. Petitioner's and
respondent's products are to be dispensed upon medical
prescription. The respective labels say so. An intending buyer
must have to go first to a licensed doctor of medicine; he
receives instructions as to what to purchase; he reads the
doctor's prescription; he knows what he is to buy.
Which court has jurisdiction to take cognizance infringement
case?
The Regional Trial Court because it is a court of
general jurisdiction.
Is there a provision in the IP Code vesting jurisdiction in RTC in
infringement case?
(Classmates, I attached Republic Act No. 9502 or the
Cheaper Medicines Law amending RA 8293. Atty.
Soriano said the answer can be found in this latest
amendatory law. Find it na lang, thank you April
Gerero. )
FRUIT OF THE LOOM, INC., vs.
COURT OF APPEALS and GENERAL GARMENTS
CORPORATION,
What is the issue in this case?
Whether or not private respondent's trademark
FRUIT FOR EVE and its hang tag are confusingly
similar to petitioner's trademark FRUIT OF THE
LOOM and its hang tag so as to constitute an
infringement of the latter's trademark rights and
justify the cancellation of the former.
Distinguish infringement and unfair competition.
1) Infringement of trademark is the unauthorized use of a
trademark, whereas unfair competition is the passing off of
one's goods as those of another.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
(2) In infringement of trademark fraudulent intent is
unnecessary whereas in unfair competition fraudulent intent
is essential.
(3) In infringement of trademark the prior registration of the
trademark is a prerequisite to the action, whereas in unfair
competition registration is not necessary.
Section 22 of R.A. No. 166, otherwise known as the
Trademark Law, provides in part as follows:
Sec. 22. Infringement, what constitutes. Any person
who shall use, without the consent of the registrant,
any reproduction, counterfeit, copy or colorable
imitation of any registered mark or trade-name in
connection with the sale, offering for sale, or
advertising of any goods, business or services on or in
connection with which such use is likely to cause
confusion or mistake or to deceive purchasers or
others as to the source or origin of such goods or
services or identity of such business; or reproduce,
counterfeit copy or colorably imitate any such mark or
trade name and apply such reproduction, counterfeit
copy or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such
goods, business or services, shall be liable to a civil
action by the registrant for any or all of the remedies
herein provided.
Sec. 29 of the same law states as follows:
Sec. 29. Unfair competition, rights and remedies. A
person who has identified in the mind of the public the
goods he manufactures or deals in, his business or
services from those of others, whether or not a mark
or tradename is employed, has a property right in the
goodwill of the said goods, business or services so
identified, which will be protected in the same manner
as other property rights. Such a person shall have the
remedies provided in section twenty- three, Chapter V
hereof.
Any person who shall employ deception or any other
means contrary to good faith by which he shall pass off
the goods manufactured by him or in which he deals,
or his business, or services for those of the one having
established such goodwill, or who shall commit any
acts calculated to produce said result, shall be guilty of
unfair competition, and shall be subject to an action
therefor.
17
In particular, and without in any way limiting the scope
of unfair competition, the following shall be deemed
guilty of unfair competition:
(a) Any person, who in selling his goods
shall give them the general appearance of
goods of another manufacturer or dealer,
either as to the goods themselves or in the
wrapping of the packages in which they are
contained, or the devices or words thereon,
or in any other feature of their appearance,
which would likely influence purchasers to
believe that the goods offered are those of
a manufacturer or dealer other than the
actual manufacturer or dealer, or who
otherwise clothes the goods with such
appearance as shall deceive the public and
defraud another of his legitimate trade, or
any subsequent vendor of such goods or
any agent of any vendor engaged in selling
such goods with a like purpose;
(b) Any person who by any artifice, or
device, or who employs ally other means
calculated to induce the false belief that
such person is offering the services of
another who has identified such services in
the mind of the public; or
(c) Any person who shall make any false
statement in the course of trade or who
shall commit any other act contrary to good
faith of a nature calculated to discredit the
goods, business or services of another.
What test was the employed by the Supreme Court?
Holistic test.
Why did not apply the dominancy test in this case?
Because there is NO dominant feature in the TM.
The word FRUIT is not the dominant feature. The
word FRUIT is not at all made dominant over the
other words.
What is the relevance of the hangtags in the Supreme Courts
decision?
The SC said that the similarities of the competing
trademarks in this case are completely lost in the
substantial differences in the design and general
appearance of their respective hang tags. It have
examined the two trademarks as they appear in the
hang tags submitted by the parties and are
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
impressed more by the dissimilarities than by the
similarities appearing therein. It held that the
trademarks FRUIT OF THE LOOM and FRUIT FOR EVE
do not resemble each other as to confuse or deceive
an ordinary purchaser. The ordinary purchaser must
be thought of as having, and credited with, at least a
modicum of intelligence.
DEL MONTE CORPORATION v. CA
What is the issue in this?
WON there was infringement or UC on the part of
the private respondent in the use of the bottles.
What about the trademarks?
Theres also infringement of the trademark.
What part????
The catsup
What test was employed by the SC?
The holistic or totality test.
What is holistic test?
It mandates that the entirety of the marks in
question must be considered in determining
confusing similarity.
What is the trademark of Del Monte Corporation?
Tomato
What about ????
It is not a tomato but it approximates as that of a
tomato.
???? is it necessary for the court to go into the details of the
label?
Yes by using totality test, there is a scrutiny of the
label. So the court must scrutinize all the details of
the label in order to determine whether there is
confusing similarity?not necessary all the details but
such details that would lead to the conclusion that
there is a confusion.
Whose point of view is to be considered in order to determine
whether there is confusing similarity in these two products?
The point of view of a common buyer.
18
Why did the SC employed the holistic test in determining
whether there is confusing similarity with these 2 products?
What does the holistic test will give to the buyer which the
dominancy test will not? Is it not that the holistic test is
employed by the SC because that will benefit the buyer?
Yes so what is that if the holistic test which will
benefit the consumers or the buyers by the
employment of the dominancy test the same will not
be enjoyed by????
In the dominancy test, do you consider the entire
mark and the entire label in order to determine
whether there is confusing similarity?
No because it is dissected
In this case what is the dominant feature?
(sample is the ABSOLUTE mineral water)
The word absolute. If you employed the dominancy
test the word ABSOLUTE would be the dominant
feature of this trademark but if you employed the
holistic test what would you see? The color will be
considered, the background, design and the labels.
What is the similarity between the trademark and the label of
private respondent?
The symbols of the petitioner resembles to that of
the private respondent which is not really a tomato
but approximates or looks like as tomato.
What about the colors?
Green and red orange.
The print of the catsup? Is it the same?
Yes
Take note: The SC said there is no need to scrutinize every
detail of the label because the buyer does not always makes
use of his scrutiny. The court made the scrutiny but the buyer
has not made his scrutiny. In making purchase the buyer
depends on his recollection of the appearance of the product
which he tends to purchase. The purchaser does not dissect
the label because it depends only on his recollection of the
label. He does not go into the detail. This product is a
household item
What are the other factors to determine which you have to
take note of that?
The age, education of the usual purchaser, nature
and cost of the article, whether the article is bought
for immediate consumption and the condition under
which the consumer usually purchase.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
Was Sunshine guilty in using the Del Monte bottles?
The SC said that it is not guilty of infringement for
having used the Del Monte bottle because it was
merely registered in the Supplemental Register.
Thus, there is no such presumption of validity of
registration, registrant ownership and esclusive use
thereof. However despite many choices available to
it nothwithstanding that the caution DEL MONTE
CORP not to be refilled still opted to use said bottle
to market a product which Philpack also produces.
This shows private repondents bad faith amounting
to Unfair competition.
ASIA BREWERY, INC. v. CA
What test was employed by the SC?
Dominancy test
What was the result of the application of the dominancy test?
Was there infringement or not?
none
What is the dominant feature in SAN MIGUEL PALE PILSEN?
It was SAN MIGUEL PALE PILSEN
What is the dominant feature in ASIA BREWERY PALE PILSEN?
The word beer
In this case was there a conjunction in the dominant feature?
None because on one hand it was San Miguel pale
pilsen on the other hand it was beer.
Did the SC abandon the holistic test mentioned in Del Monte
case?
No. the said test cannot be applied in this case
because the product involved in Del Monte which
was the subject matter of the case was bought by
common buyer who does not scrutinize the goods
whereas in this case the beer is ordered by brand.
Therefore the consumer is more aware of the brand.
Which test would benefit the unwary/unexpecting
consumer is it dominancy test or holistic test? The
holistic test because it does not dissect of all the
details of the part of a trademark.
Does the presence of PALE PILSEN in the Asia Brewerys
bottle constitute infringement?
No....
19
What about the use of ambered colored design bottle of Asia
brewery? Does it constitute infringement?
No because the bottle was not registered and that
the glass colored constitute a functional term
because it was the color which gives protection to
the contents of the bottle
CONRAD v. CA
What was the decision of the court?
EMERALD GRAMENT v. CA
What test was employed by the SC in this case?
Holistic test.
Why not the dominancy test?
Because the dominant feature being the word lee
such is not being capable of an appropriation
because LEE pertains to a surname of a person.
Apart from that why did the SC did not apply the
dominancy test
In the stylistic Mr. Lee was there a dominant feature or word?
The word Lee.
Is that a dominant feature?
Yes.
How would you know if the word or feature is dominant?
A word is dominant if such word attracts the person.
The mere presence of such word calls the attention
of the respective buyer.
In Stylistic Mr. Lee what is the dominant word?
LEE but why did the SC did not apply the dominancy
test? Because the buyer in this case are buying by
brands. The SC said of those dominant feature stylistic
Mr. Lee the similarity between the 2 trademarks
becomes conspicuous and have to matter in the light of
the ff variables:
1. the buyer bla bla bla the product involve is not an
ordinary item.
2. together with the other cases like del monte
You will note in the holistic test is rather more of the
exception rather than the general rule. The SC tending to
apply the dominancy test
Who is an ordinary purchaser? How would you describe him?
Because it is from his point of view will that be considered
whether there is confusing similarity.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
An ordinary purchaser is the one who is accustomed
to buy or familiar with the goods in question.
What about the new comer? Someone who does not care or
indifferent with the product? Is he an ordinary purchaser
under IP law? Somebody buying the product for the first time.
No because he is not accustomed with the product.
Why he needs to be accustomed with the product?
Because there is no point in determining whether
the buyer is confuse or not. if a person is a new
buyer of a product he cannot be considered as an
ordinary purchaser because he has no comparison
with the product but if the person buys the product
often than not then he can be considered an
ordinary purchaser because he knows the general
appearance of the product that he is buying.
There was a contention or connection by the CA that the
product of stylistic Mr. Lee might be mistaken as another
variation under the LEEs trademark what was the SC said?
there was an apprehension by the CA that the stylistic Mr.
Lee might be mistaken as another variand or line of products
by Lee. What was the SC ruling on this? Because the variand
of HD Lee are terms in such a way that the stylistic Mr. Lee
cannot be considered as a variand they are aggregated as one
term.
Can HD Lee acquire exclusive ownership over the term LEE?
No because Lee refers to a surname therefore
cannot be appropriated or registered.
Did HD Lee has actual use of trademark Lee in the Philippines?
No though it has registered its name as a
requirement under our law there must be actual use
of the trademark.
AMIGO MANUFACTURING v. CLUETT PEABODY
What is the dominant feature in the GOLD TOE GOLD
TOP?

Both have gold checkered lines against a
predominantly black background

The representation of a sock with a magnifying glass

The word linenized with arrows printed on the label

Representation of mans foot wearing a sock

Same type of lettering
SOCIETE DES PRODUITS NESTLE v. CA
What is the dominant feature in both trademarks?
The word MASTER
20
Is that descriptive or generic term?
No.
What kind of term is that? Is it fanciful or arbitrary?
No. it is a SUGGESTIVE TERM
What is a suggestive term? How will you know if the term is
suggestive and not descriptive?
Those which in phraseology of one court require
imagination, thought and perception to reach a
conclusion as to the nature of the goods.
What does aperson need in order to know the nature of the
product with respect to the suggestive term but which a
person does not mean a generic term or descriptive term?
In generic or descriptive term when it is related to
the product; when it describes the product; when
there is logical relation with the product and the
mark.
Was there no relation between a suggestive mark and a
product to which it attach?
If there is no such relation at all then it is fanciful or
arbitrary. Since it is suggestive there must be a
relation. That these 2 has a relationship.
What does a person need to know that there is a relation?
Does he need some imagination, thought or perception?
Yes. Suggestive about the nature of the product.
The SC said that MASTER is a suggestive term
because it suggests about the nature of the product.
What does the relation between MASTER and ROBERT
JAWORSKI?
Master strategist.
What test employed by the SC in this case?
The dominancy test.
Why not the holistic test?
Because the totality test covers only the visual side
of the trademark while in the dominancy test it
tackles not only the visual but also the aural or the
overall description of the trademark.
The SC said that the holistic test only relies on visual
comparison not including the aural comparison. The
court also said that it something contrary to the
elementary postulate of the law on trademark but of
course that is not the ratio decidendi it is only an
obiter dictum. We also use the holistic test and the
dominancy test.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
Republic Act No. 9502 June 6, 2008
AN ACT PROVIDING FOR CHEAPER AND QUALITY
MEDICINES, AMENDING FOR THE PURPOSE REPUBLIC ACT
NO. 8293 OR THE INTELLECTUAL PROPERTY CODE, REPUBLIC
ACT NO. 6675 OR THE GENERICS ACT OF 1988, AND
REPUBLIC ACT NO. 5921 OR THE PHARMACY LAW, AND FOR
OTHER PURPOSES
AMENDMENTS TO REPUBLIC ACT NO. 8293, OTHERWISE
KNOWN AS THE INTELLECTUAL PROPERTY CODE OF THE
PHILIPPINES
SEC. 5. Section 22 of Republic Act No. 8293, otherwise known
as the Intellectual Property Code of the Philippines, is hereby
amended to read as follows:
"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
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.
"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;
"22.2. x x x;
"22.3. x x x;
"22.4. x x x;
"22.5. x x x; and
"22.6. x x x."
21
SEC. 6. Section 26 of Republic Act No. 8293, otherwise known
as the Intellectual Property Code of the Philippines, is hereby
amended to read as follows:
"SEC. 26. Inventive Step. - 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. (n)
"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."
SEC. 7. Section 72 of Republic Act No. 8293, otherwise known
as the Intellectual Property Code of the Philippines, is hereby
amended to read as follows:
"SEC. 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:
"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;
"72.2. Where the act is done privately and
on a non-commercial scale or for a non-
commercial purpose: Provided, That it does
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
not significantly prejudice the economic
interests of the owner of the patent;
"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 educational experimental use;
"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 Trade-Related 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;
"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 with a medical
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;
"72.2. Where the act is done privately and
on a non-commercial scale or for a non-
22
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 experimental use of
the invention for scientific purposes or
educational purposes and such other
activities directly related to such scientific
or educational experimental use;
"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 Trade-Related 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;
"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 with a medical
"74.3. All cases arising from the
implementation of this provision shall be
cognizable by courts with appropriate
jurisdiction provided by law.
"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.
"74.4. The Intellectual Property Office (IPO),
in consultation with the appropriate
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
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."
SEC. 9. Section 76.1 of Republic Act No. 8293, otherwise
known as the Intellectual Property Code of the Philippines, is
hereby amended to read as follows:
"SEC. 76. Civil Action for Infringement. - 76.1. The
making, using, offering for sale, selling, or importing
a patented product or a product obtained directly or
indirectly from a patented process, or the use of a
patented process without the authorization of the
patentee constitutes patent infringement: Provided,
That, this shall not apply to instances covered by
Sections 72.1 and 72.4 (Limitations of Patent Rights);
Section 74 (Use of Invention by Government);
Section 93.6 (Compulsory Licensing); and Section 93-
A (Procedures on Issuance of a Special Compulsory
License under the TRIPS Agreement) of this Code.
"76.2. x x x;
"76.3. x x x;
"76.4. x x x;
"76.5. x x x; and
"76.6. x x x."
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:
"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:
"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
23
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;
"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
"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."
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:
"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 re-
exportation of the products imported under this
provision.
"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.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON

"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 the grant of
the special compulsory 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.

"93-A.2. A compulsory license shall also be available "95.2. The requirement under Subsection 95.1 shall
for the manufacture and export of drugs and not apply in any of the following cases:
medicines to any country having insufficient or no
manufacturing capacity in the pharmaceutical sector "(a) Where the petition for compulsory license seeks
to address public health problems: Provided, That, a to remedy a practice determined after judicial or
compulsory license has been granted by such administrative process to be anti-competitive;
country or such country has, by notification or
otherwise, allowed importation into its jurisdiction "(b) In situations of national emergency or other
of the patented drugs and medicines from the circumstances of extreme urgency;
Philippines in compliance with the TRIPS Agreement.
"(c) In cases of public non-commercial use; and
"93-A.3. The right to grant a special compulsory
license under this section shall not limit or prejudice
"(d) In cases where the demand for the patented
the rights, obligations and flexibilities provided
drugs and medicines in the Philippines is not being
under the TRIPS Agreement and under Philippine
met to an adequate extent and on reasonable terms,
laws, particularly Section 72.1 and Section 74 of the
as determined by the Secretary of the Department
Intellectual Property Code, as amended under this
of Health.
Act. It is also without prejudice to the extent to
which drugs and medicines produced under a
"95.3. In situations of national emergency or other
compulsory license can be exported as allowed in
circumstances of extreme urgency, the right holder
the TRIPS Agreement and applicable laws."
shall be notified as soon as reasonably practicable.
SEC. 12. Section 94 of Republic Act No. 8293, otherwise
known as the Intellectual Property Code of the Philippines, is "95.4. In the case of public non-commercial use,
where the government or contractor, without
hereby amended to read as follows:
making a patent search, knows or has demonstrable
grounds to know that a valid patent is or will be used
"SEC. 94. Period for Filing a Petition for a Compulsory
by or for the government, the right holder shall be
License. - 94.1. A compulsory license may not be
informed promptly. (n)
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) "95.5. Where the demand for the patented drugs
and medicines in the Philippines is not being met to
years from the date of the patent whichever period
an adequate extent and on reasonable terms, as
expires last.
determined by the Secretary of the Department of
Health, the right holder shall be informed promptly."
"94.2. A compulsory license which is applied for on
any of the grounds stated in Subsections 93.2, 93.3,
SEC. 14. Section 147 of Republic Act No. 8293, otherwise
93.4, and 93.6 and Section 97 may be applied for at
known as the Intellectual Property Code of the Philippines, is
any time after the grant of the patent. (Sec. 34(1), R.
hereby amended to read as follows:
A. No. 165)"

"SEC. 147. Rights Conferred. - 147.1. Except in cases

SEC. 13. Section 95 of Republic Act No. 8293, otherwise
of importation of drugs and medicines allowed
known as the Intellectual Property Code of the Philippines, is
under Section 72.1 of this Act and of off-patent
hereby amended to read as follows:
drugs and medicines, the owner of a registered mark
shall have the exclusive right to prevent all third
"SEC. 95. Requirement to Obtain a License on
parties not having the owner's consent from using in
Reasonable Commercial Terms. - 95.1. The license
the course of trade identical or similar signs or
24
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON

containers for goods or services which are identical Act No. 8293, otherwise known as the Intellectual Property
or similar to those in respect of which the trademark Code of the Philippines.
is registered where such use would result in a
likelihood of confusion. In case of the use of an
identical sign for identical goods or services, a
likelihood of confusion shall be presumed.

"There shall be no infringement of trademarks or

tradenames of imported or sold patented drugs and
medicines allowed under Section 72.1 of this Act, as
well as imported or sold off-patent drugs and
medicines: Provided, That, said drugs and medicines
bear the registered marks that have not been
tampered, unlawfully modified, or infringed upon,
under Section 155 of this Code.

"147.2. x x x."

SEC. 15. Section 159 of Republic Act No. 8293, otherwise

known as the Intellectual Property Code of the Philippines, is
hereby amended to read as follows:

"SEC. 159. Limitations to Actions for Infringement. -

Notwithstanding any other provision of this Act, the
remedies given to the owner of a right infringed
under this Act shall be limited as follows:

"159.1. x x x;

"159.2 x x x;

"159.3 x x x; and

"159.4 There shall be no infringement of trademarks

or tradenames of imported or sold drugs and
medicines allowed under Section 72.1 of this Act, as
well as imported or sold off-patent drugs and
medicines: Provided, That said drugs and medicines
bear the registered marks that have not been
tampered, unlawfully modified, or infringed upon as
defined under Section 155 of this Code."

SEC. 16. Implementing Rules and Regulations on

Amendments to Republic Act No. 8293, otherwise known as
the Intellectual Property Code of the Philippines. - Unless
otherwise provided herein, the Intellectual Property Office, in
coordination with the Department of Health and the Bureau
of Food and Drugs, shall issue and promulgate, within one
hundred twenty (120) days after the enactment of this Act,
the implementing rules and regulations to effectively
implement the provisions of this Act that relate to Republic

25
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
FINALS
IPL6
What is the labor theory of property according to John Locke?
According to Locke, what is the basis of granting property to
labor?
There are 2 interpretations of John Lockes theory, what are
these two interpretations?
Instrumental and Normative interpretation
What is the nature of labor that needs it to be rewarded with
property?
Because labor is unpleasant
Are all kinds of labor unpleasant? Is idea making labor? Or is
it a recreation? How do you know if a certain activity is labor?
How do you characterize an activity to be a labor?
Who is the author of a view which is opposed to John Locke?
Karl Marx
What is Karl Marxs theory as opposed to John Lockes?
That property should be owned in common
Why is he against giving individual property? Is there
something evil about it?
It will result to inequality
How did John Locke opposed that argument?
That there are, at first, properties which no one
owned and that individuals may appropriate it by
exerting labor upon it. By using labor they can
appropriate the property
What is that condition according to John Locke?
The enough and as good condition
What is the enough and as good condition? Do you think all
the things in this world can be exhausted?
There are inexhaustible objects
What are the 2 theories regarding labor?
The Avoidance View of Labor and The Value Added
Theory
What is the Avoidance View of Labor?
Depicts labor as something which people avoid or
want to avoid, something they dont like, an activity
they engage in because they must
26
What about the Value Added Theory?
That when labor produces something of value to
others, the laborers deserve some benefit for it
Distinguish the Normative and Instrumental interpretation
Instrumental unpleasantness of labor should be
rewarded with property because people must be
motivated to perform labor
Normative unpleasantness of labor should be
rewarded with property
Our intellectual property laws were based on the US
Constitution and American Jurisprudence. The power of the
Congress to grant intellectual property rights, is that
constructed under the normative or instrumental
interpretation? Is the US Constitution was drafted under
normative or instrumental interpretation?
Instrumental interpretation
Why?
Since the Congress is given the power to grant
intellectual property rights in order to promote the
progress of science and the useful arts. Intellectual
property rights are granted to motivate the artists or
scientists to perform labor
What are the different intellectual property rights?
Trademark,
patent,
copyright,
tradename,
servicemarks,
industrial design,
trade secrets,
utility model...
What is the distinction between Ideas and form of expression?
If I have an intellectual creation, do i need to have a
certificate of copyright registration before I can be protected?
No. Because copyright protection is given from the
moment of creation (Sec. 172, IP Code)
Sec. 172. Literary and Artistic Works. -
172.1 Literary and artistic works, hereinafter referred to as
"works", are original intellectual creations in the literary and
artistic domain protected from the moment of their creation
and shall include in particular:
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations
prepared for oral delivery, whether or not
reduced in writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions;
choreographic works or entertainment in dumb
shows;
(f) Musical compositions, with or without words;
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON

(g) Works of drawing, painting, architecture, Yes. Mr. Ong have a certificate of copyright
sculpture, engraving, lithography or other works
registration over the two dragon design, the same
of art; models or designs for works of art;
(h) Original ornamental designs or models for design use by Mr. Tan
articles of manufacture, whether or not
registrable as an industrial design, and other Which office issued it?
works of applied art;
The National Library
(i) Illustrations, maps, plans, sketches, charts and
three-dimensional works relative to geography,
topography, architecture or science; Before the court can grant an injunction, what are the two
(j) Drawings or plastic works of a scientific or requisites?
technical character;
It must establish injury and a clear legal right
(k) Photographic works including works produced by
a process analogous to photography; lantern
slides; The SC said that Mr. Ong does not have a right even if he is a
(l) Audiovisual works and cinematographic works holder of certificate of copyright registration. Why?
and works produced by a process analogous to
The SC said that because it appears that there is an
cinematography or any process for making audio-
visual recordings; existing copyright registration of the two dragon
(m) Pictorial illustrations and advertisements; design by Ceroil, in China, then, it is now doubtful
(n) Computer programs; and whether Mr. Ong has a right. And when there is no
(o) Other literary, scholarly, scientific and artistic
clear legal right there is no basis for injunction. The
works.
SC also said that the author of the a work in its
172.2. Works are protected by the sole fact of their creation, original form is the one that is protected. In this case
irrespective of their mode or form of expression, as well as of it does not appear that Mr. Ong is the original
their content, quality and purpose. creator.

Can your ideas be adopted by another person (sa example ni CASE: SAMBAR v. LEVI STRAUSS
sir, ung idea of highlighting)? The idea of carwashing, using a What did the SC say about the requirement for copyright
machine, can anyone adopt the same idea? protection?
Yes, because ideas are not protected It must be an original creation

When does your idea deserve a protection? CASE: SANTOS v. McCULLOUGH

When the idea is already expressed in a tangible What is a copyright? What consists of a copyright or an
form or medium economic right?
Sec. 177, IP Code (Memorize)
If the work is protected from the moment of creation, why is
there a need for registration? Sec. 177. Copy or Economic Rights. - Subject to the provisions of
Chapter VIII, copyright or economic rights shall consist of the
exclusive right to carry out, authorize or prevent the following
How do you distinguish patent from a copyright?
acts:
Lines from a movie (ex. may the force be with you), can it be 177.1. Reproduction of the work or substantial portion of the
the object of copyright protection? work;
No. 177.2 Dramatization, translation, adaptation, abridgment,
arrangement or other transformation of the work;
177.3. The first public distribution of the original and each copy of
What is the lacking element in those lines/statements which the work by sale or other forms of transfer of ownership;
do not deserve copyright protection? 177.4. Rental of the original or a copy of an audiovisual or
It lacks literary and artistic value. Remember that cinematographic work, a work embodied in a sound recording, a
computer program, a compilation of data and other materials or a
copyright works are those that forms part of the
musical work in graphic form, irrespective of the ownership of the
literary and artistic domain original or the copy which is the subject of the rental; (n)
177.5. Public display of the original or a copy of the work;
CASE: CHING KIAN CHUAN v. CA 177.6. Public performance of the work; and
177.7. Other communication to the public of the work
What is vermicelli?
Sotanghon
Can you have a business of renting out dvds without the
Did Ong have a certificate of copyright registration over the consent of the author, publisher or the producer? Is there a
two dragon design? copyright infringement?
Yes (Sec. 177.4)

27
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
177.4. Rental of the original or a copy of an audiovisual or
cinematographic work, a work embodied in a sound recording, a
computer program, a compilation of data and other materials or a
musical work in graphic form, irrespective of the ownership of the
original or the copy which is the subject of the rental;
If I buy a book from National Bookstore and I resell it, is there
a copyright infringement?
No. Because copyright belongs only to the first
public distribution of the original and each copy of
the work (Sec. 177.3)
177.3. The first public distribution of the original and each copy of
the work by sale or other forms of transfer of ownership;
IPL7
What are the derivative works under the Intellectual Property
Code?
Sec. 173. Derivative Works. -
173.1. The following derivative works shall also be
protected by copyright:
(a) Dramatizations, translations,
adaptations, abridgments, arrangements,
and other alterations of literary or artistic
works; and
(b) Collections of literary, scholarly or
artistic works, and compilations of data and
other materials which are original by reason
of the selection or coordination or
arrangement of their contents. (Sec. 2, [P]
and [Q], P. D. No. 49)
173.2. The works referred to in paragraphs (a) and (b)
of Subsection 173.1 shall be protected as a new works:
Provided however, That such new work shall not affect
the force of any subsisting copyright upon the original
works employed or any part thereof, or be construed
to imply any right to such use of the original works, or
to secure or extend copyright in such original works.
(Sec. 8, P. D. 49; Art. 10, TRIPS)
Sec. 174. Published Edition of Work. - In addition to the right to
publish granted by the author, his heirs or assigns, the publisher
shall have a copy right consisting merely of the right of
reproduction of the typographical arrangement of the published
edition of the work.
Are derivative works protected as copyrights?
YES.
Give an example of adaptation of literary work.
The movie Dear John as adapted in the novel of
the same title.
What about abridgment of a work?
A novel by Shakespeare, abridged version.
28
Whats the meaning of copyright or economic right?
Sec. 177. Copy or Economic Rights. - Subject to the provisions of
Chapter VIII, copyright or economic rights shall consist of the
exclusive right to carry out, authorize or prevent the following
acts:
177.1. Reproduction of the work or substantial portion of the
work;
177.2 Dramatization, translation, adaptation, abridgment,
arrangement or other transformation of the work;
177.3. The first public distribution of the original and each copy of
the work by sale or other forms of transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or
cinematographic work, a work embodied in a sound recording, a
computer program, a compilation of data and other materials or a
musical work in graphic form, irrespective of the ownership of the
original or the copy which is the subject of the rental; (n)
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the work
Is there a difference rental of a work and public lending of a
work under the IPL?
Public lending" is the transfer of possession of the
original or a copy of a work or sound recording for a
limited period, for non-profit purposes, by an
institution the services of which are available to the
public, such as public library or archive while
"Rental" is the transfer of the possession of the
original or a copy of a work or a sound recording for
a limited period of time, for profit-making purposes.
I bought 1000 copies of a novel and I decided to rent them out
for free, do I need to ask permission from the writer of the
novel so that I will not be liable for copyright infringement?
No.
What are the works that are rented out for profit which
require the permission of the author?
Sec. 172. Literary and Artistic Works. -
172.1 Literary and artistic works, hereinafter referred
to as "works", are original intellectual creations in the
literary and artistic domain protected from the
moment of their creation and shall include in
particular:
(a) Books, pamphlets, articles and other
writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses,
dissertations prepared for oral delivery,
whether or not reduced in writing or other
material form;
(d) Letters;
(e) Dramatic or dramatico-musical
compositions; choreographic works or
entertainment in dumb shows;
(f) Musical compositions, with or without
words;
(g) Works of drawing, painting, architecture,
sculpture, engraving, lithography or other
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
works of art; models or designs for works of
art;
(h) Original ornamental designs or models
for articles of manufacture, whether or not
registrable as an industrial design, and
other works of applied art;
(i) Illustrations, maps, plans, sketches,
charts and three-dimensional works relative
to geography, topography, architecture or
science;
(j) Drawings or plastic works of a scientific
or technical character;
(k) Photographic works including works
produced by a process analogous to
photography; lantern slides;
(l) Audiovisual works and cinematographic
works and works produced by a process
analogous to cinematography or any
process for making audio-visual recordings;
(m) Pictorial illustrations and
advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and
artistic works.
172.2. Works are protected by the sole fact of their
creation, irrespective of their mode or form of
expression, as well as of their content, quality and
purpose. (Sec. 2, P. D. No. 49a)
Is there a difference between public display of a work and
public performance of a work?
YES. "Public performance," in the case of a work
other than an audiovisual work, is the recitation,
playing, dancing, acting or otherwise performing the
work, either directly or by means of any device or
process; in the case of an audiovisual work, the
showing of its images in sequence and the making of
the sounds accompanying it audible; and, in the case
of a sound recording, making the recorded sounds
audible at a place or at places where persons outside
the normal circle of a family and that familys closest
social acquaintances are or can be present,
irrespective of whether they are or can be present at
the same place and at the same time, or at different
places and/or at different times, and where the
performance can be perceived without the need for
communication within the meaning of Subsection
171.3.
What are the works that can be publicly performed?
Musical, choreographic, literary, dramatical, audio-
visual or motion picture, pantomine works. Examples
are the singing of the Philippine National Anthem
and rendition of a literary piece.
What are the works that can be publicly displayed?
Those which are graphic in form.
Examples are painting, sculpture and murals.
29
If I sing a song in front of my family is that a public
performance? Or I invited all my relatives and my best friend
to watch me, is that a public performance?
No, because public performance means that the
audience are persons outside the normal circle of a
family and that familys closest social acquaintances
that are or can be present, irrespective of whether
they are or can be present at the same place and at
the same time, or at different places and/or at
different times.
*If I perform before a substantial number of individuals
beyond the outside the normal circle of a family and my
familys closest social acquaintances, then that is public
performance.*
Is there a difference between musical work and sound
recording?
This right to public perform belongs to the copyright owner,
does this extend to both musical work and sound recording?
YES.
What are the so called moral rights of the author?
Sec. 193. Scope of Moral Rights. - The author of a work shall,
independently of the economic rights in Section 177 or the grant
of an assignment or license with respect to such right, have the
right:
193.1. To require that the authorship of the works be
attributed to him, in particular, the right that his name,
as far as practicable, be indicated in a prominent way
on the copies, and in connection with the public use of
his work;
193.2. To make any alterations of his work prior to, or
to withhold it from publication;
193.3. To object to any distortion, mutilation or other
modification of, or other derogatory action in relation
to, his work which would be prejudicial to his honor or
reputation; and
193.4. To restrain the use of his name with respect to
any work not of his own creation or in a distorted
version of his work. (Sec. 34, P. D. No. 49)
Sec. 194. Breach of Contract. - An author cannot be compelled to
perform his contract to create a work or for the publication of his
work already in existence. However, he may be held liable for
damages for breach of such contract. (Sec. 35, P. D. No. 49)
Sec. 195. Waiver of Moral Rights. - An author may waive his
rights mentioned in Section 193 by a written instrument, but no
such waiver shall be valid where its effects is to permit another:
195.1. To use the name of the author, or the title of his
work, or otherwise to make use of his reputation with
respect to any version or adaptation of his work which,
because of alterations therein, would substantially
tend to injure the literary or artistic reputation of
another author; or
195.2. To use the name of the author with respect to a
work he did not create. (Sec. 36, P. D. No. 49)
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
Sec. 196. Contribution to Collective Work. - When an author
contributes to a collective work, his right to have his contribution
attributed to him is deemed waived unless he expressly reserves
it. (Sec. 37. P. D. No. 49)
Sec. 197. Editing, Arranging and Adaptation of Work. - In the
absence of a contrary stipulation at the time an author licenses or
permits another to use his work, the necessary editing, arranging
or adaptation of such work, for publication, broadcast, use in a
motion picture, dramatization, or mechanical or electrical
reproduction in accordance with the reasonable and customary
standards or requirements of the medium in which the work is to
be used, shall not be deemed to contravene the author's rights
secured by this chapter. Nor shall complete destruction of a work
unconditionally transferred by the author be deemed to violate
such rights. (Sec. 38, P. D. No. 49)
Sec. 198. Term of Moral Rights. -
198.1. The rights of an author under this chapter shall
last during the lifetime of the author and for fifty (50)
years after his death and shall not be assignable or
subject to license. The person or persons to be charged
with the posthumous enforcement of these rights shall
be named in writing to be filed with the National
Library. In default of such person or persons, such
enforcement shall devolve upon either the author's
heirs, and in default of the heirs, the Director of the
National Library.
198.2. For purposes of this Section, "Person" shall
mean any individual, partnership, corporation,
association, or society. The Director of the National
Library may prescribe reasonable fees to be charged
for his services in the application of provisions of this
Section. (Sec. 39, P. D. No. 49)
What are the rules on ownership of copyright?
Is there a difference between reproduction and copying?
Reproduction is the making of one (1) or more
copies of a work or a sound recording in any manner
or form.
Give example of copying which is not reproduction. Is copying
reproduction? Is reproduction copying?
Reproduction is only one form of copyright or
economic right of the copyright owner but copying
includes all the others, infringement of a work, the
public performance of work is copying, public display
of original copy of the work is copying. The right to
reproduce is only a part of the economic right of the
author but copying a work amounts to infringement.
So the broader term is copying and the right to
reproduce is only a part of the economic right of the
author.
What works are not protected?
Sec. 175. Unprotected Subject Matter. - Notwithstanding the
provisions of Sections 172 and 173, no protection shall extend,
under this law, to any idea, procedure, system method or
operation, concept, principle, discovery or mere data as such,
30
even if they are expressed, explained, illustrated or embodied in a
work; news of the day and other miscellaneous facts having the
character of mere items of press information; or any official text
of a legislative, administrative or legal nature, as well as any
official translation thereof. (n)
Sec. 176. Works of the Government. -
176.1. No copyright shall subsist in any work of the
Government of the Philippines. However, prior
approval of the government agency or office wherein
the work is created shall be necessary for exploitation
of such work for profit. Such agency or office may,
among other things, impose as a condition the
payment of royalties. No prior approval or conditions
shall be required for the use of any purpose of
statutes, rules and regulations, and speeches, lectures,
sermons, addresses, and dissertations, pronounced,
read or rendered in courts of justice, before
administrative agencies, in deliberative assemblies and
in meetings of public character. (Sec. 9, First Par., P. D.
No. 49)
176.2. The Author of speeches, lectures, sermons,
addresses, and dissertations mentioned in the
preceding paragraphs shall have the exclusive right of
making a collection of his works. (n)
176.3. Notwithstanding the foregoing provisions, the
Government is not precluded from receiving and
holding copyrights transferred to it by assignment,
bequest or otherwise; nor shall publication or
republication by the government in a public document
of any work in which copy right is subsisting be taken
to cause any abridgment or annulment of the
copyright or to authorize any use or appropriation of
such work without the consent of the copyright
owners. (Sec. 9, Third Par., P. D. No. 49)
Sec. 178. Rules on Copyright Ownership. - Copyright ownership
shall be governed by the following rules:
178.1. Subject to the provisions of this section, in the
case of original literary and artistic works, copyright
shall belong to the author of the work;
178.2. In the case of works of joint authorship, the co-
authors shall be the original owners of the copyright
and in the absence of agreement, their rights shall be
governed by the rules on co-ownership. If, however, a
work of joint authorship consists of parts that can be
used separately and the author of each part can be
identified, the author of each part shall be the original
owner of the copyright in the part that he has created;
178.3. In the case of work created by an author during
and in the course of his employment, the copyright
shall belong to:
(a) The employee, if the creation of the
object of copyright is not a part of his
regular duties even if the employee uses
the time, facilities and materials of the
employer.
(b) The employer, if the work is the result of
the performance of his regularly-assigned
duties, unless there is an agreement,
express or implied, to the contrary.
178.4. In the case of a work-commissioned by a person
other than an employer of the author and who pays for
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
it and the work is made in pursuance of the
commission, the person who so commissioned the
work shall have ownership of work, but the copyright
thereto shall remain with the creator, unless there is a
written stipulation to the contrary;
178.5. In the case of audiovisual work, the copyright
shall belong to the producer, the author of the
scenario, the composer of the music, the film director,
and the author of the work so adapted. However,
subject to contrary or other stipulations among the
creators, the producers shall exercise the copyright to
an extent required for the exhibition of the work in any
manner, except for the right to collect performing
license fees for the performance of musical
compositions, with or without words, which are
incorporated into the work; and
178.6. In respect of letters, the copyright shall belong
to the writer subject to the provisions of Article 723 of
the Civil Code. (Sec. 6, P. D. No. 49a)
Sec. 179. Anonymous and Pseudonymous Works. - For purposes of
this Act, the publishers shall be deemed to represent the authors
of articles and other writings published without the names of the
authors or under pseudonyms, unless the contrary appears, or the
pseudonyms or adopted name leaves no doubts as to the authors
identity, or if the author of the anonymous works discloses his
identity.
A book was written by A and B. Mr. B authored chapters 1 to
5 while Mr. A authored chapters 6 to 10, who owns the
copyright of the book?
Mr. B owns chapters 1 to 5 while Mr. A owns
chapters 6 to 10, subject to their stipulations.
What if there is no division or designation as to chapters, who
owns the book?
Both of them. In the case of works of joint
authorship, the co-authors shall be the original
owners of the copyright and in the absence of
agreement; their rights shall be governed by the
rules on co-ownership. If, however, a work of joint
authorship consists of parts that can be used
separately and the author of each part can be
identified, the author of each part shall be the
original owner of the copyright in the part that he
has created.
Hallmark Company is a maker of greeting cards and Ms.
Reyes is an artist employed by the company to draw sketches
for the cards. Who owns the copyright of the cards?
Hallmark. In the case of work created by an author
during and in the course of his employment, the
copyright shall belong to the employer, if the work is
the result of the performance of his regularly-
assigned duties, unless there is an agreement,
express or implied, to the contrary.
31
Ms. Reyes is an employee of a law firm. Her hobby is to make
greeting cards. Who owns the copyright of the greeting
cards?
Ms. Reyes. In the case of work created by an author
during and in the course of his employment, the
copyright shall belong to the employee, if the
creation of the object of copyright is not a part of his
regular duties even if the employee uses the time,
facilities and materials of the employer.
Give the rules on TRANSFER OR ASSIGNMENT OF COPYRIGHT.
Sec. 180. Rights of Assignee. -
180.1. The copyright may be assigned in whole or in
part. Within the scope of the assignment, the assignee
is entitled to all the rights and remedies which the
assignor had with respect to the copyright.
180.2. The copyright is not deemed assigned inter
vivos in whole or in part unless there is a written
indication of such intention.
180.3. The submission of a literary, photographic or
artistic work to a newspaper, magazine or periodical
for publication shall constitute only a license to make a
single publication unless a greater right is expressly
granted. If two (2) or more persons jointly own a
copyright or any part thereof, neither of the owners
shall be entitled to grant licenses without the prior
written consent of the other owner or owners. (Sec.
15, P. D. No. 49a)
Sec. 181. Copyright and Material Object. - The copyright is distinct
from the property in the material object subject to it.
Consequently, the transfer or assignment of the copyright shall
not itself constitute a transfer of the material object. Nor shall a
transfer or assignment of the sole copy or of one or several copies
of the work imply transfer or assignment of the copyright. (Sec.
16, P. D. No. 49)
Sec. 182. Filing of Assignment of License. - An assignment or
exclusive license may be filed in duplicate with the National
Library upon payment of the prescribed fee for registration in
books and records kept for the purpose. Upon recording, a copy
of the instrument shall be, returned to the sender with a notation
of the fact of record. Notice of the record shall be published in the
IPO Gazette. (Sec. 19, P. D. No. 49a)
Sec. 183. Designation of Society. - The copyright owners or their
heirs may designate a society of artists, writers or composers to
enforce their economic rights and moral rights on their behalf.
180.2. The copyright is not deemed assigned inter
vivos in whole or in part unless there is a written
indication of such intention.
Give the rules on Fair Use of a Copyrighted Work.
185.1. The fair use of a copyrighted work for criticism, comment,
news reporting, teaching including multiple copies for classroom
use, scholarship, research, and similar purposes is not an
infringement of copyright. Decompilation, which is understood
here to be the reproduction of the code and translation of the
forms of the computer program to achieve the inter-operability of
an independently created computer program with other programs
may also constitute fair use. In determining whether the use
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
made of a work in any particular case is fair use, the factors to be
considered shall include:
(a) The purpose and character of the use, including
whether such use is of a commercial nature or is for
non-profit education purposes;
(b) The nature of the copyrighted work;
(c) The amount and substantiality of the portion used
in relation to the copyrighted work as a whole; and
(d) The effect of the use upon the potential market for
or value of the copyrighted work.
185.2 The fact that a work is unpublished shall not by itself bar a
finding of fair use if such finding is made upon consideration of all
the above factors.
What are the LIMITATIONS ON COPYRIGHT?
Sec. 184. Limitations on Copyright. -
184.1. Notwithstanding the provisions of Chapter V,
the following acts shall not constitute infringement of
copyright:
(a) the recitation or performance of a work,
once it has been lawfully made accessible to
the public, if done privately and free of
charge or if made strictly for a charitable or
religious institution or society; (Sec. 10(1),
P. D. No. 49)
(b) The making of quotations from a
published work if they are compatible with
fair use and only to the extent justified for
the purpose, including quotations from
newspaper articles and periodicals in the
form of press summaries: Provided, That
the source and the name of the author, if
appearing on the work, are mentioned;
(Sec. 11, Third Par., P. D. No. 49)
(c) The reproduction or communication to
the public by mass media of articles on
current political, social, economic, scientific
or religious topic, lectures, addresses and
other works of the same nature, which are
delivered in public if such use is for
information purposes and has not been
expressly reserved: Provided, That the
source is clearly indicated; (Sec. 11, P. D.
No. 49)
(d) The reproduction and communication to
the public of literary, scientific or artistic
works as part of reports of current events
by means of photography, cinematography
or broadcasting to the extent necessary for
the purpose; (Sec. 12, P. D. No. 49)
(e) The inclusion of a work in a publication,
broadcast, or other communication to the
public, sound recording or film, if such
inclusion is made by way of illustration for
teaching purposes and is compatible with
fair use: Provided, That the source and of
the name of the author, if appearing in the
work, are mentioned;
(f) The recording made in schools,
universities, or educational institutions of a
work included in a broadcast for the use of
such schools, universities or educational
institutions: Provided, That such recording
must be deleted within a reasonable period
after they were first broadcast: Provided,
further, That such recording may not be
32
made from audiovisual works which are
part of the general cinema repertoire of
feature films except for brief excerpts of the
work;
(g) The making of ephemeral recordings by
a broadcasting organization by means of its
own facilities and for use in its own
broadcast;
(h) The use made of a work by or under the
direction or control of the Government, by
the National Library or by educational,
scientific or professional institutions where
such use is in the public interest and is
compatible with fair use;
(i) The public performance or the
communication to the public of a work, in a
place where no admission fee is charged in
respect of such public performance or
communication, by a club or institution for
charitable or educational purpose only,
whose aim is not profit making, subject to
such other limitations as may be provided in
the Regulations; (n)
(j) Public display of the original or a copy of
the work not made by means of a film,
slide, television image or otherwise on
screen or by means of any other device or
process: Provided, That either the work has
been published, or, that original or the copy
displayed has been sold, given away or
otherwise transferred to another person by
the author or his successor in title; and
(k) Any use made of a work for the purpose
of any judicial proceedings or for the giving
of professional advice by a legal
practitioner.
184.2. The provisions of this section shall be
interpreted in such a way as to allow the work to be
used in a manner which does not conflict with the
normal exploitation of the work and does not
unreasonably prejudice the right holder's legitimate
interest.
IPL8
What are the distinctions between COLLECTIVE work and
COLLECTION OF works?
Sec 171.2
COLLECTIVE work is a work created by 2 or more
natural persons at the initiative and under the
direction of another with the understanding that it
will be disclosed by the latter under his own name
and that contributing natural persons will not be
identified
COLLECTION OF works
Is there a agreement in collection of work that the contributor
will not be identified?
None.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
In collective work and collection of works are all the works
capable of protection or copyright?
Yes, because of the term work.
When we say work, what does it mean?
This refers to original intellectual creations in the
literary and artistic protected from
When you speak of work does that refer to original works or
derivative works?
the moment of their creation (Sec 172.1)
The provision statesLiterary or artistic works under
the chapter of original works (Chapter II).
What is the difference between COMMUNICATION TO THE
PUBLIC (Sec 171.3) and PUBLIC PERFORMANCE (Sec 171.6)?
Is a showing of a motion picture or audiovisual work
considered only as communication to the public and not
public performance?
Under Sec 177.6 public performance different from
other communication to the public of the work
under Sec 177.7. These are two different terms
which have different definitions.
What is the difference?
Communication to the public or communicate to the
public means the making of a work available to the
public by wire or wireless means in such a way that
members of the public by wire or wireless means in
such a way that members of the public may access
these works from a place and time individually
chosen by them (at the option of the viewers.
How about AUDIOVISUAL work can it be publicly performed or
only communicated to the public?
It can be both.
Can you give an example to show the difference between the
two?
For public performance
For communication to the public:
Give an example of audiovisual work communicated to the
public and publicly performed.
On March 14 there is going to be a boxing match
between Pacquiao and Clottey and it will be shown
in various theaters nationwide from 9 am until 1 pm.
Will you consider this communication to the public or
public performance?
33
Public performance. If you look at the
definition of communication to the public,
the public may access the works from a
place and time individually chosen by
them. If it show to the public on certain
time then definitely the public cannot have
access on it from a place and time in their
own choosing.
If the boxing match will be shown later in youtube by
HBO Sport Channel, will you consider it public
performance or communication to the public?
Communication to the public because you
can have access to this works at the time of
your own choosing.
Pianist will play at the cultural center of the Philippines on
Sunday and the Concert or recital will be held in 9 am until 12
pm. It will composed of 3 parts but you only get 1 ticket to
st
enter the concert. 3 parts because in the 1 part the pianist
nd
will play compositions of Chopan, in the 2 part the
rd
composition of Mozart and in the 3 part the composition of
st
Rachmaninov. In the 1 part only the family of Ms. Pizaa
st nd
attended. They left after the 1 part. In the 2 part the family
rd
of Ms. Jean Marion attended and left thereafter. The 3 part
was attended the family of Ms. Masilungan.
Is this a public performance or communication to the public?
Public performance.
Is this a public performance or a private performance?
Public performance because the law says that at
a place or at places where person outside the
normal circle of a family and that familys closest
social acquaintances are or can be present at the
same place and at the normal circle of a family and
that the familys closest social acquaintances are or
can be present, irrespective of whether they are or
can be present at the same place and at the same
time, or at different places and/or at different
times...
Here, these families can be present at the same place at the
same time.
What is the difference between DERIVATIVE WORK (Sec 173)
and COMPILATION OF DATA (Sec 173.1, b.)?
DERIVATIVE works are works derived from original
works
COMPILATION OF DATA are original by reason of the
selection or coordination or arrangement of their
contents.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
Under 173.2 these works are protect as new works. Both are
new works.
Compilation of data are original by reason of arrangement or
coordination. They are also new works.
Derivative work are original work but are derived from
another. Therefore derivative work have internal changes by
process of transformation, recasting or adaption of the
original work.
In compilation of data there is no internal change what is
present is selection, coordination or arrangement of data and
other materials.
Are data and other materials in compilation of data
individually protected as copyright?
No.
In Collection of works, are the works individually capable of
copyright protection?
Yes. Under IP Code Sec 172 works are considered as
the original intellectual works or creations afforded
copyright protection.
Compilation of data and other materials, does not
mention works but it mentions data and other
materials therefore the data and materials of which
the compilation is composed of are not individually
capable of copy right protection. They are merely
compilation of facts. What is capable of copyright
protection is the arrangement, selection or
coordination of data and materials.
Derivative works are capable of protection because of the
internal change of the original work.
Give an example of compilation of data and other materials.
Catalogs
Telephone directory. Thes are only facts gathered.
You dont need intellect to generate a fact.
FEIST CASE
*Books under Sec 172.1 a, are considered works.
What about Encyclopedias?
Individually these works can protected by copyright.
What about the book Letters of Ronald Reagan?
Collection of works. Sec 172 d, Letters. If you
compile letters it becomes a collection of work
34
because letters per se can be capable of copyright
protection.
Give example of derivative work per se.
Adaptation of a book through motion picture.
*Collection of works is under derivative works but
technically speaking collection of works is different
from derivative works.
Is food pyramid capable of copyright protection?
No. Sec 175. Unprotected Subject Matter. It is a
system, idea, concept
Is the Pyramid of Giza capable of copyright protection?
Yes. Sec 172.1 (i), mentions architecture.
Can a copyright or economic right be subject of an
assignment?
Yes
What is the requirement for the assignment to be valid?
It must be in writing. The copyright not deemed
assigned inter vivos in whole or in part unless there
is a written indication of such intention (Sec 180.2).
Can the economic right to publicly perform be assigned to Mr.
Ponce and the economic right to publicly display the work be
assigned to Ms. Pizaa? Can the right to reproduce be
assigned to Mr. Ponce and the right to publicly perform to Ms.
Bermudez?
Yes in both cases. The copyright may be assigned in
whole or in part (Sec 180.1).
Can the right of the author to object to any form derogatory
action be assigned?
No. The rights of the author under the chapter on
Moral Rightsshall not be assignable or subject to
license (Sec 198.1).
Is there in favor of the copyright proprietor to prevent the use
rd
of his work by a 3 person? Can the author of a book prevent
others from reading it? Can the composer of the song prevent
another from singing it?
No. It is not part of the copyright or economic right
rd
of the author. The right to prevent the use by a 3
person is not part of the copyright of the author.
But, does the author have the right to limit the access or the
rd
use by 3 persons?
Yes because the author has the right to reproduce,
publicly perform, display, to first public distribution
of the work. Therefore although the author has no
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
rd
right to prevent its use by a 3 person he has the
rd
right to limit the access or use by 3 person. If I can prove that I never heard or read about
Homers Iliad and Odyssey then Im also the creator
INFRINGEMENT of Iliad and Odyssey, I will not be held liable from
What are the 2 allegations and proofs that plaintiff must have infringement because as far as the law is concerned I
in an infringement case? am also the original creator.
1) The plaintiff is the owner of copyright (Ownership
of copyright) Is registration necessary for copyright protection? What is the
significance of the registration and deposit with the National
Is reproduction copying? Library and SC records?
Yes It proves originality. It proves that you are the
original author.
If you reproduce a book that is reproduction and
copying at the same time. Why?
Because no one knows, until and unless you deposit
Is copying necessarily reproduction? it with the national library or SC library that you are
No, because public performance or public the original author of the work. But once you deposit
st
display or 1 distribution of the work etc is it and obtains a certificate of registration the
copying. presumption is that you are the original author of
the work. Not necessarily that you are the owner of
This is why the law says copyright not reproright. the work but that you are the original author of the
Copying is a broad term is encompasses all the work.
bundle of rights called copyright or economic right.
Is there a provision in IP Code saying the Certificate of
2) Copying copyright ownership is a prima facie evidence of ownership?
Is at like the Law on Trademarks that the certificate of
Does the violation of the provisions of the IP Code registration is a prima facie evidence of ownership?
constitute infringement? None.
No.
Copyrightable subject matter.
Under the broad term of ownership the plaintiff must also
prove: How can you prove copying? Can you prove copying
1) Originality. If the author is not the original creator, by direct evidence?
he is not the owner. It is rarely possible. Infringer will not
2) Copyrightable subject matter. announce to the public that he copied it.

Originality. If the author is not the original creator, he is not Example:

the owner. Assuming I have photographic memory, I
st
read a book from the 1 page to the last
Is originality different from novelty? page and memorize everything and
Yes. returned it to the library. In a piece of paper
st
I wrote everything down from the 1 page
Example: I love poems. Ive never read heard of to the last page.
Homers Iliad or Odyessy. I wrote a poem that is
exactly similar as that of Homers Iliad and Odyssey. Is this copying?
Yes.
Will I be held liable for infringement?
No because novelty is different from originality.
Therefore it is possible for two persons to have
similar or identical works but they will never be held
liable for infringement because originality merely
requires that the work owes its creation to the
author.

35
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
How can you prove that I copied the work?
Even if I dont have photographic memory, I
borrowed a book and secretly copied the contents of
the book. How can you prove that I copied the work?
By proving the substantial similarity. Not
necessarily exact similarity.
This it alone prove copying or do you need to prove
another element?
That the infringer has access to the work.
So to prove copying you need to prove two things:
1) The infringer has access to the work
2) Substantial similarity
FAIR USE
What is FAIR USE? What are the activities that are considered
fair use?
The fair use of a copyrighted work for:
criticism,
comment,
news reporting,
teaching including multiple copies for class room
use,
scholarship,
research and
other similar purposes is not infringement of
copyright.
Decompilationthe reproduction of the code and
translation of the forms of the computer program to
achieve the inter-operability of and independently
created computer program with other programs (Sec
185.1).
What is the difference between COMPILATION of data and
other materials and DECOMPILATION of data and other
materials.
There is no such thing as decompilation of data and
other materials, but there is such thing as
decompilation of computer programs.
What are the 4 FACTORS to be considered in determining
whether there is fair use?
a) The purpose and character of the use, including
whether such use is for a commercial nature or is for
non-profit education purposes;
b) The nature of the copyrighted work
c) The amount or substantiality of the portion used in
relation to the copyrighted work as a whole; and
d) The effect of the use upon the potential market for
or value of the copyrighted work (Sec 185.1).
36
Example 1:
I am a comedian in comedy bar. You are my
audience and my duty is to make you laugh. I
borrowed a speech from or song of Senator Villar. I
made fun of it and made a parody out of the speech
or song.
Is that an infringement of copyright?
None because the use has no effect upon the
potential market for or value of the copyrighted
work.
Example 2:
I made a musical composition (musical notes and
lyrics). Mr. Ponce is engaged in song hits business.
He used the lyrics of my composition, not the
musical notes.
Is he liable for copyright infringement?
No.
Example 3
I am a producer of a film. I read Harry Potter Book
and had an idea to make motion picture. I copied
some portions which I think can be made as motion
picture. The motion picture that I made became a
block buster hit in Holly Wood.
Is there an infringement?
th
A good defense to an infringement case is fair use. The 4
factor says, if there is an effect to the use upon the potential
market for or value of the copyrighted work is not considered
as fair use. If there is no effect then there is no fair use.
rd
In the 3 example I will make an argument that the motion
picture has a different market as compared to the book Harry
Potter. They have different potential market. I will also make
an argument that because of the motion picture the value of
the Harry Potter book was enhanced. Therefore I can make
an argument for fair use even if my purpose is a commercial
one.
nd
2 Example. The market for music in graphical form is
different from song hits. One who buys music in graphical
form buys it because he wants to buy a piano or organ or
guitar. But one who buys song hits only wants to use it for
singing.
st
1 Example: Parody has different market compared to that of
a song.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON

That is what we mean when we say fair use. You have to
factor in the 4 factors.
Whether it is for
1) commercial purpose or non profit purpose
2) The nature of the copyrighted work
3) The amount or substantiality of the portion used in
relation to the copyrighted work as a whole; and
4)The effect of the use upon the potential market for or
value of the copyrighted work
Translation of songs by another is considered infringement.
Translations are derivative works but the author has the right
to abridgment, transformation. These are part of the
economic rights of the person.
Infringement happens when the person violates the copyright
or economic rights of the author. If there is no copyright or
economic right violated, there is no infringement.
What is effect of publication on copy right protection does it
divest copyright protection or extend copyright protection?
Extend. The law says for this work its 25 years of 50
years from the making or 25 years or 50 years from
the publication. Therefore it extends.
What is the effect of publication on international copyright?
Example: I am a national of country X. country X is a
member of Berne Convention is my work protected
in country Z which is also member of Berne
Convention.
My country is country X, not a member of Berne Convention. If
I published my work in a country which is a member of Berne
Convention is my work protected?

Can you make a back up copy of a computer program?

Yes

At what instances?
If necessary for:
1. The use of the computer program
2. archival purposes (Sec 189.1)

Example:
You bought a computer program that works for Microsoft XP,
but your computer is Microsoft 98, can you make a backup
or adaptation copy of the computer program?
st
Yes under the 1 instance.

Archival purpose. If the computer program will be lost,

destroyed or rendered unusable then you can make back up
copy. Only one.

One copy of an Autocad program will cost you about P350,

000. If you are a businessman will only buy one or two copies.
You will not buy one copy for every computer. The program is
reproduced. Reproduction is part of the bundle of economic
rights of the author. If your reproduce it then you are
violating the IP Code.

Berne Convention.
What is the terms of copyright protection?
For different work there is different term of
protection.

37
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON

IPL8 patents applying on patents

mutatis applying mutatis
What is the difference/ differences between patent, utility mutandis. mutandis.
model and industrial design?
What is a patent?
PATENT UTILTY MODEL INDUSTRIAL A statutory grant which confers to an inventor or his
DESIGN legal successor, in return for the disclosure of the
1. New (NOVEL) 1. New invention to the public, the right for a limited period
that which does 2. Industrially of time to exclude others from making, using, selling
not from of a Applicable or importing the invention within the territory of the
prior art. country that grants the patent.
(Sec.23)
2. Inventive an Does it give statutory right in favor of the inventor to exploit
invention his invention?
involves an No
inventive step if
having regard So what does it give? if it does not give statutory right to
to prior act, it is exploit or use his invention?
not obvious to It gives statutory right in favor of the inventor to
a person skilled exclude others from exploiting it. To secure the
in the art at the inventor naturally you can use or exploit your
time of the invention without the benefit of patent but because
filing date or of the patent you have the right to exclude others
priority date of from commercially exploiting it.
the application
claiming the Supposing Im a medical doctor and I learned a new process
invention. (Sec. for treating human disease is this patentable subject matter?
26) No.
3. Industrially
Patentable- What if I invented a new drug for the treatment or curing
invention that disease, the subject matter patentable?
can be Yes.
produced and
used in any Why did you say a process of treating disease is not
industry. patentable?
(Sec.27) Because it is excluded from patent protection. (Sec.
22.3 of IP Code)
Has all of the 4 No inventive step No inventive Step
essential requisites and industrially Why did the law exclude them?
applicable. Because the grant of a patent amounts to a
TERM monopoly. It amounts to a monopoly that others
20 years from the 7 years from the 5 years from the cannot use the invention. So if you grant a patent for
filing date of the filing date of filing date of the treatment of a human disease then no others can
application application; non application, use it except for the inventor.
renewable whichever is
renewable for not What about for process or treatment or diagnosis for
more than 2 treatment is that included?
consecutive Yes it is non patentable.
periods of 5 years
each. Can you have a patent for new variety of a plant?
APPLICABLE RULES No.
Secs. 20-107 Secs. 108- 111 Secs. 112-120 and
and provisions on certain provisions
38
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
What about a new breed of an animal?
Also not patentable.
What about the substance inside a plant? Substance that
exists inside a plant?
It is not a patentable subject matter.
What about the discovery of new element for example gold,
silver, silicon, aluminum, copper, zinc, magnesium,
manganese, is that patentable?
No.
TAKE NOTE: anything which exists in nature is not subject of
patent protection there must be a human intervention.
What are the kinds of patent? What are the statutory classes
or kinds of patent or invention?
1. useful machine
2. products
3. processes
4. microorganism
5. improvements of those mentioned.
Are all microorganism subject of a patent?
No.
What are those that can and what are those that cannot?
Microorganism by its very nature cannot be subject
of a patent but microorganism that are made by
genetic engineering that can be a subject of a
patent. Do you know that genetic engineering can
produce microorganism? Even microorganism that
are made by its purifying culture. Thus, the purified
from can be subject of patent. So there are 2 case:
(1) when produced in purified form; (2) produced by
a process of genetic engineering.
What about animals produced by genetic engineering? Is that
subject of a patent?
The US Patent in Trademark Office made a decision
on this matter and they said that an animal
produced by genetic engineer can be the subject of a
patent. But it has not yet been resolved by the
courts.
So we said that plant varieties and animal breeds can
be a subject of a patent but they are subject of
entirely different systems of protection. You read
the plant variety act. Pinapatent yan pero you can
register it under Plant Variety Act.
39
What about Pythagorean theorem? Is that a subject of a
patent?
No
A new business plan?
No
A new plan of counting votes?
No
What about the machine for counting votes?
Yes
What about the theory according to scientists that the
dinosaurs were killed by an asteroid? No because scientific
theory cannot be subject of a patent.
What are the requisites of patentability?
1. Technical solution to a problem which is new;
2. involves an inventive step;
3. industrially applicable;
4. it is subject of a patent.
What are the kinds of Intellectual Property Rights under the IP
Code:
1. Trademarks/ Tradenames/ Service mark
2. Patent
3. Copyright
4. Utility Model
5. Industrial Design
6. Lay out/ designs or photography of integrated
circuits or what we call as computer chips
7. Geographic Indication of the Source
8. Protection of Undisclosed Information
9. Protection against or from Unfair Competition
There are only 2 classes of Intellectual Property Rights:
1. Industrial Property Rights
2. Copyrights and Related Rights
All IP Rights that are not part copyright and related rights
belongs to Industrial Property Rights so for example
trademarks, patents, industrial designs these are all industrial
property rights
Copyright and Related Rights. why do you think the term
include related rights?
Because the related rights refers to the performance
of performers, performers right in their
performances and the producers right over some
recordings.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
What is the geographic indication of source?
An example of this is OLIVE OIL made in Tuscany. It
indicates the source of the product. Geographic
indication of source are usually made for agricultural
and food products. For example your cheese come
from Rocheport in France. Your coffee-BARAKO
comes from Batangas. In other words you have
protection for the geographic source. Your product is
now from geography then you cannot use
geographic means to indicate the source. For
example olive oil from Tuscany if it is not from
Tuscany then you will be violating it.
What about protection from undisclosed information? What
does it refer to?
It refers to trade secrets.
There are many types of trade secrets:
1. chemical formula
2. business plan.
3. All kinds of processes, systems of business that are
considered confidential they are called as trade
secrets.
What are about computer programs can they be subject of
patent?
No because they under copyright.
What is your basis in determining novelty?
If it new and it does not form of prior art.
What is a prior part?
It includes the whole contents of an application for
patent, utility model or industrial design published
by IPO.
For example an inventor file an application for his invention
here in the Philippines that same invention was published or
made available anywhere in the world to the public then that
is not already an invention capable of invention because it
lacked the element of novelty because the law says that
anything made available to the public anywhere in the world
forms part of a prior art.
How do we make it available to the public?
By TV/RADIO Broadcast, internet, written articles,
published journals, newspaper any form of making it
available to the public forms part of a prior art.
Why do we include patents, utility model, industrial design?
40
Can an inventor who file an application for a patent change
his mind and file an application instead for utility model
(UM)? What about the other way around?
BOTH ARE POSIIBLE. The IP Code provides that an
application for patent may be changed for
application for UM and vice versa.
When will the change be made? Before the grant or refusal of
a patent or UM. Now why is it that the law allows such
change? Whats the difference between UM and patent?
What are the requisites of UM? What is the requisite in
patent that is not available in UM? It is the element of
INVENTIVE STEP. Why an applicant for Patent change his
mind and filed an application for UM? Because of their
differences between a patent and UM, in Patent there is
formal or substantive examination, examination as to from
examination as to substance. Will the examination be more
rigid than in the case of UM? Yes because you need not
prove inventive step in UM, in Patent theres a need. Second
the term of protection in patent is 20 years. What about UM?
7 years. While you have an easier examination for UM you
have a shorter term of protection compared to patent. Third
point if you are the inventor and you cannot prove inventive
step what will you do change your application to UM because
its hard to prove the inventive step. Thats why the law says
all contents on the application of patents, UM, industrial
design forms part of the prior art because these are all
inventions. It is possible that you have granted a registration
for UM but your invention is actually patentable one and you
just choose to apply for UM. Still all technologies under these
3 intellectual property rights forms part of the prior art.
What about inventive step?
A qualitative difference between a novel
development and the .state of the art (that is, all
prior art) which must exist fro the development to
be patentable. A development which is found to be
obvious to a person of appropriate skill in the light of
the state of the art would lack an inventive step.
What is not obvious in the person skilled in the art is the
advanced form or the development of the invention.
Who is the person skilled in the art?
He is considered an ordinary or average person in
the technical field. For example in the case of
pharmaceutical, they are the chemical engineers,
pharmacologist or the pharmacist.
Why is the person skilled in the art being average or ordinary?
The person skilled in the art is only a theoretical
person, it becomes now the standard or the
threshold for determining whether there is an
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
inventive step because if they can make the
advancement of the invention then there is no
inventive step because he is just an ordinary or
average person in the technical filed, there is no
inventive step. For example you have a cellphone
which is not a touch screen and you have a new cell
phone which is touch screen now you think that an
average person invent the advancement or
development from the ordinary phone to a touch
screen phone? It cannot.
What is the other term for inventive step?
Non-Obviousness.
While in Novelty your threshold or basis would be the prior
art. In Inventive Step your threshold or basis is the person
skilled in the art.
When do you determine if there is or there is inventive step or
novelty? What is the time?
At the time of the date of the filing or at the time of
the priority date.
Whats a priority date?
The date at which the novelty and inventive step of
an invention is judged.
It is normally the filing date of the patent application
that first discloses the invention.
The Paris Convention grants a priority date in favor of
nationals of members of Paris Convention.
Whats the benefit of priority date?
For example a Japanese National filed an application for his
invention on January 1, 2009. He came to the Philippines to
file his application for the same invention on December12,
2009. Can you give priority date/priority right to Japanese
national who are both members of Paris Convention? Here
are the requisites for claiming priority rights:
1. that the applicant must be in present claim the
priority right;
2. the local application in the Philippines must be filed
within 12 months from the earliest filing date of the
application for the said invention.
So you have 3 countries, you have Japan, Canada, Phils, you
reckoned it from the time of the filing of the earliest date of
the application form. Japan for ex. so Pag naglapse na yung
12 months period mo wala na wala na yung priority date mo.
For ex. The applicant filed it on Jan. 1, 09. In Canada he filed
on Dec. 30, 09. In Phils. He filed it Jan. 2, 2010 can he claim
41
priority date for his invention in the Philippines? He cannot
because the reckoning date will be the earliest date which is
Jan 1, 09 so pag naglapse na yung 12 months period mo wala
na di ka magrerekon dun sa Canada.
What about the filing of the translation? When will be the
filing of the translation?
From the normal application of the filing.
Whats the difference between a Patent Cooperation Treaty
(PCT) and Paris Convention? What are the benefits given by
this 2?
In Paris Convention it grants the inventor a priority
date (12 months) what about TM? 6 months. In the
PCT you can have file it in 1 country and it will be
considered as filed in another country member of
PCT.
there are 2 phases under the PCT:
1. International Phase Filing
2. National Phase
Magfifile ka pa rin naman sa national phase. Thats give you
the benefit of filing in 1 country member of PCT. Thats why
some foreigners they opt to file here in the Phils. Because it is
much cheaper to file here in the phils than for example in
Japan. The filing in the Phils. Will give you the filing in other
countries in international trade or national trade
Everything made available to the public or anywhere in the
world is part or is prior art. Is there any exception to this rule?
Yes Non- Prejudicial Disclosure (Sec. 25 of IP Code) take note
of this 3 instances daw sbi ni sir.
For example I am an inventor and I was invited to a
conference to speak for my invention. My invention ayan
nabasa mo sa powerpoint presentation my invention of the
efficacy of Viagra. Normally that will be considered forming
part of prior art but because the law grants the inventor non-
prejudicial disclosure of invention the inventor must file
within 12 months from the disclosure to the public his
invention.
Why does the law allows that?
Because most investors are not aware that by
disclosing their invention it will already form part or
become prior art. nawawala yung novelty. It will not
form part of prior art because the information is
taken directly or indirectly from the inventor.
We say that a patent or any technical solution of a problem.
Must the problem be old or new? The problem of curing
heartaches/heartbreaks. In patent, problem can be old or
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
new while in technical solution the problem must be new
because of the requirement of novelty.
Should the problem be complex?
No it can be simple.
Example an inventor invented a safety pin, can it be subject
of a patent?
Yes, because it will fulfill the requisites of the
st
following. If you are the 1 inventor of the safety pin
then have it subject of a patent because it is novel, it
is an inventive step. We said that UM does not have
inventive step.
Why cant lay out design for integrated circuits (chips) cant
be subject of a patent?
Because there is no inventive step.
Why cant it be subject of Copyright?
Because without ?? there will no originality
What are rights granted to a patent?
Sec.71
1. TO RESTRAIN/PROHIBIT/PREVENT

SUBJJECT MATTER is PRODUCT
To restrain, prohibit and prevent
any unauthorized person or entity
from making, using, offering for
sale, selling or importing that
product;

SUBJECT MATTER is PROCESS
To retsrain, 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.
2. TO ASSIGN OR TRANSFER
3. TO CONCLUDE LICENSING CONTRACTS
What are the rights granted to a patentee?
You have to distinguish. Sa product patent the right
to prevent others from some activities like
manufacturing, selling, importing. Sa project patent
the right to prevent others from manufacturing and
dealing, selling, importing a product produced by
that patent.
What are the limitations on patent right?
Sec.72. General Limitation
Sec.73 Use by prior user
42
Sec. 74 Use by government
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; is there an exception to this
rule?what about if it has been introduced in Japan?
Except that in the case of drugs and medicines which
has been put or placed into the market or anywhere
in the world so you have to make a distinction but if
it is not a drug if it is food introduced in the market
how will you analyzed it now? There are 2 doctrines.
st
On the 1 doctrine is the doctrine of first sale also known as
doctrine of exhaustion of patent life. There are 2
st
interpretations of the doctrine the 1 is the national
exhaustion interpretation. What is this? It means that when
the invention is put into the market in 1 country it exhausts
into the right of that patentee over that invention. But in
international exhaustion interpretation when the invention is
placed or put into the market anywhere in the world then it
exhaust the rights of patentee. This means that in national
exhaustion the introduction of the invention will exhaust
patent rights therefore there is limitation of patent but if we
adopt international if the invention is introduced in the
market or anywhere in the world then anyone can use it.
Even if it is not introduced in the Phils as in the case of drugs
so you have to get the amended law RA 9502 .
Pag drugs and medicines we follow the international
exhaustion interpretation. But for others we follow the
national exhaustion interpretation.
When is there Section 26an inventive step?
Section 26 An invention involves an inventive step,
having regard to prior art it skilled in the art at the
time of the filing date or priority date of the
application claiming the invention but in the case of
drug and medicine there is no inventive step if the
discovery of the form or known property or
substance does not result to efficiency of such
known substance. So if there is discovery of a new
form or a known substance the same is not
patentable if it does not increase or harness the
efficiency of the said substance. For ex. A drug
betahistene forms part of prior art but the
manufacturing company invented a drug betahistene
hydrochloride will that be patentable?
Yes if it result to efficiency of the known
substance. If it does not, it is not
patentable.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
In patent there is public disclosure of a patent. Why is it there
is public disclosure of patent? What do you mean by public
disclosure of an invention? How?
Through filing of an application. What are the
contents of the application? Sec. 32
What are claims?
It determines the extent of protection or monopoly
of a patent.
How many claims are there?
2 claims: Independent and Dependent Claims.
Ex. A contact lens, it forms part of prior art right? You have
invented contact lens that perfectly fits the concave of the
eyeballs because the problems in existing contact lens is that
dont fit the eyeball. So you claim an independent claim a
contact claim that perfectly fit the eye or a contact claim that
is very soluble in water yun yung extension ng protection mo.
If the contact lense have the property of meeting the
requirements of the shape of the eyes so you can claim to
that and you have the monopoly over that.
What are the grounds for patent cancellation?
FORMALITIES
Upon petition with notice and hearing
EFFECT
Termination of rights conferred by the patent
GROUNDS
What is claimed as the invention is not new or patentable;
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; and
Patent is contrary to public order or morality (Sec. 61)
In voluntary licensing what are the prohibited causes?
Sec.85-92
Voluntary is the grant by the patent owner to a third
person of the right to exploit a patented invention.
Prohibited clauses (Sec. 87)
Who grants the compulsory license?
Ex. Party A licensor party B licensee usually the licensor is the
inventor and the licensee is someone who wants to have a
license to the products. Without going or negotiating with the
licensor party b went to the government and ask for a license.
Should the compulsory license be granted?
No.
43
why not?
A condition for the grant of compulsory license is
that the licensee should go first to negotiate it to the
licensor. However if after negotiation the 2 fail to
come up with a full terms and conditions typically
the royalty rates then he may now go to the
government for a compulsory license.
What are the instances by which a government can grant
compulsory licenses? Sec. 93-102
Compulsory is the grant by the director of legal
affairs of 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 certain circumstances.
Grounds
1. National Emergency
2. when public interest requires
3. manner of exploitation of patent is anti-
competitive
4. public non commercial use of the patent
5. patented invention is not being worked in
the Phils. on a commercial scale although
capable of being worked.
What is the Bolar provision?
Sec.72.4 of the amendment
How do we explain this?
there was a patent that last for 20 years but prior to
the expiration of 20 yrs. Period there is 1 year (not
sure daw si sir kc may inissue dawn a rules and
regulations but he belives so that it is 1 yr.) prior to
expiration wherein other generic manufacturing can
have access to the data provided by the inventor.
Why? So that they can start manufacturing generic
version of a drug. If you dont allow the bolar
provision after the 20 year period , then thats only
the time that genric manufacturers will have access
to the data matatagalan yung pag manufacture ng
generic drugs. If before 20 years you can have the
access so that you can start producing generic drugs.
Read the amended 72.3 the Experimental Use Invention
For ex. You are using the patent or the invention
only for experimental purposes thats allowed thats
not an infringement. If you use the invention
privately and not for educational purpose thats also
a limitation (72.2)
Sec.72.5 Preparation of Medicinal drug, it is not
consider an infringement of a patent.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
IPL9
4 REQUISITES of Patent
1. Novelty
2. Inventive Step
3. Industrial Applicability
4. Patentability of Subject Matter
PATENTABILITY of Subject Matter
The law specifies which subject matters CANNOT BE subject
of the patent.
1. Discoveries
2. Scientific Theories
3. Mathematical Formula cannot be the subject of a
patent
But, applications of scientific principles and mathematical
formulas/methods are capable of patent.
Example:
If you use LASER TECHNOLOGY. This is mathematical
formula or scientific principle, but if there is device
capable of generating laser beams such device is
capable of patentability.
What about the discovery of a NEW METAL?
The metal itself is not capable of patentability
because it exists in nature.
What if the person who discovered the metal was able to
purify the substance inside the metal, through a process
known as PURIFICATION?
The purified state can be a subject of purification.
What is the REASON?
Because there is a HUMAN INTERVENTION.
Is a MICRO-ORGANISM capable of patent protection?
The law says micro-organisms, micro-biological and
non-biological processes are subject of a patent. So
micro-organism per se is capable of patent
protection.
But isnt it that micro-organism exists in nature?
So what is capable of patent protection?
If there is human intervention.
Examples:
1. A micro-organism that was CREATED BY a process known
as GENETIC ENGINEERING then the resulting micro-
organism is capable of patent protection?
44
Why?
Because there is a human intervention- Genetic
Engineering.
2. Micro-organism purified by a person. The purified state
of the micro-organism is capable of patent protection.
Give an EXAMPLE of MICRO-BIOLOGICAL and NON-
BIOLOGICAL PROCESS?
The use of micro-organism created by a genetic
engineering for oil spills. This is a subject of a patent.
The law says PLANTS and ANIMALS CANNOT be subject of a
patent.
Why?
Because for PLANT VARIETES they HAVE a different
SYSTEM OF PROTECTION called the PLANT VARIETY
PROTECTION ACT.
A plant variety or animal breed cannot be subject of a patent.
But what if a NON-HUMAN MULTI CELLULAR living organism,
for example, mice.
Can they be the subject of a patent?
Yes
Same with MICRO-ORGANISM. Micro-organisms are the
smallest living organism. They are one-celled/uni-cellular;
consist of uni-cellular structure or composition.
After this there multi-cellular, like aligae, plants, or animals.
What if MULTI-CELLULAR organisms?
They can be subject of a patent
EXCEPT HUMANS. Humans cannot be a created by
genetic engineering cannot be subject of a patent.
What is your BASIS?
The US Patent and Trademark Office issued a notice
that humans cannot be the subject to a patent.
What is the REASON given the US Patent and Trademark
Office?
It will VIOLATE the US CONSTITUTION, which says
that there can be NO INVOLUNTARY SERVITUDE
except as a consequence of a penal law.
If you create a human created using a genetic engineering
that human can be the subject of involuntary servitude
therefore that is not allowed by the Constitution.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
Non-human, other multi-cellulars like mice, monkeys created
through genetic engineering can be the subject of a patent.
DISCOVERIES and MATHEMATICAL PRINCIPLES CANNOT be
the subject of a patent. But the application themselves can be
a subject of a patent.
Examples:
The following cannot be a subject of patent -
Einsteins Theory of Relativity which is a An INDUSTRIAL DESIGN intellectual creation but it have no
mathematical formula
Big Bang Theory by Stephen
Newtons Law of Gravity
What about APPLICATIONS of these theories?
Can be subject of a patent
Example: A ROCKET. It avoids the gravity of the earth because
of its speed. The Rocket system can be a subject of a patent.
What else cannot be subject of a patent?
Those AGAINST PUBLIC MORALS and PUBLIC ORDER.
AESTHETIC CREATIONS cannot be the subject of a patent.
(see Section 22 for the enumeration of NON-PATENTABLE
INVENTIONS)
INDUSTRIAL DESIGN
A composition of lines or colors or any 3-
dimensional form, whether or not associated with
lines or colors PROVIDED that composition form
serves as a pattern or a design or special appearance
to the subject, product, or handicraft (Sec 112).
Examples:
1. Car
Is a DESIGN OF A CAR subject industrial design?
It DEPENDS.
If the design is dictated essentially by functional
consideration to come up with a functional result
then it cannot be a subject of an industrial design
(Sec 113.2)
If the design of the car is such that the design will
serve to maximize the speed of the car, it cant be
the subject of an industrial design because it could
dictate the design.
2. Chair
45
The mere design of the chair is subject of an
industrial design. But if because of the design of the
chair it serves functional value then it cannot be a
subject of Industrial design protection.
Why?
Because it can be protected under the UTILITY
DESIGN PROTECTION REGISTRATION.
functional or utilitarian value.
But, the UTILITY MODEL serves a utilitarian value.
Example:
The design of the chair is dictated because it serves
some function like lumbar support. It cannot be the
subject of and industrial design.
But if it simply a design it is capable of registration as
an industrial design.
What is the difference between a utility model and a patent?
A patent must fulfil the 4 requisites.
A utility model must also fulfil all the requisites
except the inventive step.
______of Industrial design, what is absent?
In industrial design the design must be novel, new or
original.
Does it have industrial applicability?
Probably none. It is not a technical solution to a
problem. It is only a design. The design by itself
cannot be a technical solution to a problem.
Is there an inventive step?
It also has no inventive step.
Consider the distinctions between a patent, utility model and
industrial design
Take note of the Term of protection
For-
Patent 20 years (Sec 54)
utility model 7 years (Sec 109.3)
industrial design 5 years, renewable for another 5 years,
renewable for another 5 years for a total of 15 years (Sec
118)
*The reckoning point is from the date of filing the application.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
Can you renew the term of protection of utility model?
No, it is not subject to renewal.
TAKE NOTE of PRIOR ART (Sec 24 IPC)
What is prior art?
1. Anything which is made available to the public
anywhere in the word before the filing date of
registration.
2. All the contents of an application an application for
registration a patent, utility model, or industrial
published, filed or effective in the Philippines, with a
filing or priority date that is earlier than the filing or
priority date of an earlier application.
Take note of Sec 24 and Sec 29: First to File Rule
What is the first to file rule?
1. This means if 2 or more persons made a same
invention the person who filed an application for
that invention shall have the right to the patent; or
2. If 2 or more applications are for the same invention,
the right to the patent shall be given to the applicant
who first filed the application for that invention (Sec
29).
Consider the 2 persons
st
The 1 person in prior application for the invention
nd
The 2 person filed an application for the same invention
st
Under the 1 to file rule, who will have the right to the
patent?
The first to file the application.
But, it does not mean that his application will be granted if
the invention already formed part of prior art.
Inventing something is different from an invention which
already formed part of the prior art.
If it formed part of the prior art it must be made available to
the public. If your invention was not made available to the
public then it does not form part of the prior art.
So it is possible that 2nd person filing the application for the
same invention did not made the invention available to the
nd
public therefore no prior art. Therefore the 2 person who
filed the application will be granted the right to the patent.
Why?
Because that invention did not form part of the prior art.
If 2 persons filed an application for the same invention the
one who first filed the application will granted the right to the
patent, unless it be proven that the invention already formed
part of the prior art.
46
In other words, Sec 29 should be read in conjunction with Sec
24. If the invention already formed part of the prior art you
cannot grant a patent to that invention.
Assuming that there is an existing invention which did not
form part of the prior (it was not made available to the
public). Then another person filed an application for the same
st
invention. Under the 1 to file rule he will be granted the
right to patent. But, this does not meant that the true and
actual inventor will not have any legal remedy against said
person.
Why?
Because under the provisions of the IP Code (Sec 67) the true
and actual inventor is given the right to do the following after
the publication of the application...
If there is a publication of the patent he must oppose it,
appeal to the court. Thats why the law says, the court by
final order or decision. If there is a decision or order by the
court that the person mention in Sec 29 is not the true and
actual inventor, the true and actual creditor can do the
following:
1. Prosecute the application;
2. File a new patent application in respect of the same
invention;
3. Request that the application be refused; or
4. Seek cancellation of the patent, if one has already
been issued
This means that just because you were the one to file, but the
invention was made by another, you will be admitted
because the true and actual inventor has redress under the IP
Code.
COMPULSORY LICENSING
What is the difference between compulsory licensing and
assignment?
In an assignment there is a transfer of all the rights under the
patent. Transfer of the whole patent.
In a license there is transfer of the divided portion under the
right under the patent
What are the rights under the patent?
The right to prevent others from-
1. Using
2. Making
3. Sell
4. Offer to sell
5. Import
Therefore you can grant a license to person A right to make,
to person B the right to sell, to person C the right to import.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
You can even grant non-exclusive licenses.
I grant to both A and B the right to make.
If you want make it exclusive, thats your right as a patentee.
2 kinds of license
1. Voluntary License
This is also called technology transfer
arrangement. There is an agreement between the
patent owner (licensor) and the licensee on the
terms and conditions of the license.
2. Compulsory License
Even without the agreement of the patent owner
the license is given by the government in favor of
another person who has shown the capability of
commercially exploiting the patent.
Voluntary Licensing
The patent owner and the licensee will agree on the terms
and conditions, but before they make the contract, they cant
come up with reasonable terms and conditions on the grant,
rate or amount of royalty. Is there a government agency
responsible for settling the dispute on the royalty rate?
Documentation Information and Technology Transfer Bureau
(DITTB) under the Intellectual Property Office. It has the
original and exclusive jurisdiction over disputes relating to the
amount or rate of royalty in a license agreement.
The IP Code has a provision on Prohibited Clauses, meaning
what the licensor and licensee cannot stipulate.
Why?
Because these stipulated clauses amounts to anti-
competition or Anti-trust.
A PATENT is a grant of monopoly rights, but this doesnt
mean that the patentee is not included in the provisions of
the Anti-trust Law.
US SC said that patent holders are not excluded from (John)
Shermans Anti Act, which is what we call the Anti-trust
Law.
In the Philippines, the Revised Penal Code Prohibitions
against monopolies and prohibitions _______.
Illustration:
The licensor and the licensee have a stipulation providing that
the licensee will obtain his raw material only from the source
dictated by the licensor.
Is this prohibited?
Yes because it will amount to anti-competition.
47
The patent owner or licensor monopolizes the
source of the raw materials therefore prohibiting the
other sources. The latter will not grow.
Another instance:
When the licensee is required to hire a person
dictated or instructed by the licensor. This is another
form of anti-competition.
NOTE: In all of these prohibited clauses, they are anti-
competitive therefore they are prohibited.
The next provisions under the IP Code says, these are the
mandatory provisions that must be stipulated in the license
contract.
Do you need to register a voluntary license agreement?
It depends.
If the license agreement, transfer technology
agreement/arrangement does not contain any of the
prohibited clauses and contains the mandatory
provisions, there is NO NEED to register. It is valid
and enforceable.
If it contains one or more of the prohibited clauses it
is unenforceable if not registered. The effect is
uneforceability of the agreement.
Why?
The DITTB has the jurisdiction to determine whether
it will allow a certain license agreement to contain a
prohibited clause Sec 91 which contains the
exceptions.
What are these exceptions?
If it will spur the growth of national economy
-Increase in foreign exchange earnings, employment
generation etc.
So you can have a prohibited clause. But if you want the
license agreement to be enforceable then you must register it
with the DITTB. The DITTB will allow it if it complies with Sec
91, containing all those exceptional circumstances.
What about the compulsory license agreement?
There are 6 GROUNDS under compulsory license
agreement (Sec 93).
What are these GROUNDS?
1. National emergency or other circumstances of
extreme urgency;
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
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;
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
4. If the patented invention is not being worked (not
being made available to the public) 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.
5. Public non-commercial use of the patent by the
patentee, without satisfactory reason;
Example:
I am a patent owner. I have a commercial enterprise and
use/give my invention for the benefit of the public for free. It
is public because it is for the benefit of the public. It is non-
commercial because I am charging no fee for that.
What does this mean?
This means that the state wants the inventor or the patentee
to commercially exploit the invention. There must be a
commercial exploitation of the invention.
6. If there is a demand for patented drugs and
medicines and the demand is not sufficiently met as
determined by the DOH
Do you require the petitioner for a compulsory license to
prove that he exerted efforts in negotiating reasonable
terms and conditions under the license with the patent
owner?
General rule: He must. The petitioner must prove that he
exerted efforts to come up with reasonable terms of
conditions with the licensor/patent owner.
4 Exceptions:
1. Public interest
2. Where the petition for compulsory license seeks to
remedy a practice determined after judicial or
administrative process to be anti-competitive
3. In situations of national emergency or other
circumstances of extreme urgency;
4. In cases of public non-commercial use
____ For patented drugs and medicines.
48
The patent system requires the inventor to disclose the
invention. There must be full disclosure of the invention.
How does he disclose the invention?
He discloses the invention by complying with the
requirements under the IP Code.
The documents that he must attach to the
application should be...
Contents of the application (Sec 32)
1. request for the grant of the patent
2. description of the patented invention
3. drawing sufficient to describe the invention
4. 1 or more claims
5. abstract
Under Sec 24, what forms part of a prior art?
1. Xxx
2. All contents of the application...- this means the
documents under Sec 32
CANCELLATION (Chapter VI. Sec 62-66)
The inventor must disclose sufficiently clear and complete so
that a person skilled in the art would be able to carry out the
invention. Otherwise if he failed to do that it will be ground
for the cancellation of the patent. It is required the inventor
must fully disclose his invention.
Connect this provision with the provision for the cancellation
of a patent.
What are the grounds for the cancellation of a patent (Sec
61)?
1. Invention is not new or patentable;
If it does not meet the requirements of novelty it is
subject to cancellation
The term not patentable covers everything
novelty, industrial applicability, inventive step,
patentability of the subject matter.
2. Patent does not disclose the invention in a manner
sufficiently clear and complete for it to be carried
out by any person skilled in the art; or
3. The patent is contrary to public order or morality.
Can you think of another ground for cancellation of a patent
that is not explicitly mentioned in the IP Code?
If the patent application was filed by a person who is
not the true and actual inventor.
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
The true and actual inventor can file the cancellation
of patent.
During the cancellation proceedings, can the patentee amend
his patent?
General Rule: he cannot if the patent was
determined not new or patentable, or against public
morals or public order the applicant cannot amend
his application.
How?
By sufficiently describing his invention in a manner
that is capable of being carried out by a person
skilled in the art.
Intellectual Property Office (IPO) Bureau of Legal Affairs has
the jurisdiction to entertain petition for cancellation of a
patent.
Once the application document has been amended by the
patent owner can make a decision not cancel the patent or
maintain the patent because there is already an amendment.
BUT, if the patent failed to fulfill the requisites
patentability, novelty, inventive step etc. you can never
amend it.
You can only amend when there is lack of description.
In the Philippines inventors are afraid to disclose all their
inventions because they think that they might be copied. This
is wrong because, you have to disclose otherwise it can be a
subject of cancellation.
DRUGS AND MEDECINES
RA 9502 called the Cheaper Medicines Law
This amends certain provisions under the Patent Law
of the IP Code.
Specifically, what are these provisions?
Provisions on the definition of inventive step
SEC. 6. Section 26 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines, is hereby amended to read as
follows:
"SEC. 26. Inventive Step. - 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. (n)
"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
49
process results in a new product that employs at least one new
reactant."
When do you determine if there is an inventive step of the
invention?
There is inventive step if the invention is not obvious
to a person skilled in the art the time of the filing
date or time of the priority date.
But in case of drugs and medicines, the mere
discovery of a use or property of such medicine
results in the efficacy of the known substance.
The substance itself is subject of a pate. It is
patented, forms part of the prior art. Patented drug
forms part of the prior art.
If there is discovery of the new use of that substance or
patented drug, Does the mere discovery of the new use of a
patented drug capable of another patent?
No, unless there is a resulting increase in the efficacy
of the patented drugs.
Illustration:
Minoxidil was discovered to be substance for hair
growth. Later on it was found out that minoxidil is
also a drug capable of affecting the receptor cells of
the heart therefore it can also treat some has heart
diseases.
In the US it is subject of a patent the mere new use
of a known substance is subject of a patent.
But in Philippines after the advent of RA 9502, that
mere use is not capable of a new patent protection.
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 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.
"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,
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON

unless they differ significantly in properties with regard to not only in the Philippines, it will also exhaust the
efficacy;
patent rights.

The law also mentions that the following substances are not What does it mean?
capable of patent protection. What are these? In the first instance we adopt the national
salts, esters, ethers, polymorphs, metabolites, pure interpretation of the principle of
form, particle size, isomers, mixtures of isomers, exhaustion.
complexes
Example:
Another provision affected by RA 9502 refers to limitations of If the Invention is introduced in Russian
patent rights. Market, can I import the invention?
Doctrine of First Sale also known as the exhaustion No, because we adopted national
of patent right means the first introduction to the interpretation for all kinds of
market of the patented invention will exhaust the invention. The right to import is a
right of the patentee. right granted to the patent owner
therefore I cannot import it unless
Example: I am authorized by the patent
If I have an invention. If I introduced it to the Philippine owner because we adhere to the
market, I already exhausted my right. national interpretation.

EXCEPTION: Drugs and medicines. If the drugs and

SEC. 7. Section 72 of Republic Act No. 8293, otherwise known as the medicine is introduced in Russian Market, can
Intellectual Property Code of the Philippines, is hereby amended to read as
follows:
import it?
Yes, because for drugs and medicines we
"SEC. 72. Limitations of Patent Rights. - The owner of a patent has adopt the international exhaustion principle
no right to prevent third parties from performing, without his that is a very substantial change in the IP
authorization, the acts referred to in Section 71 hereof in the Code.
following circumstances:

SPECIAL COMPULSORY LICENSING

"72.1. Using a patented product which has been put on
This appears to be in conflict with the international
the market in the Philippines by the owner of the
product, or with his express consent, insofar as such exhaustion principle because the law mentions that
use is performed after that product has been so put on for patented drugs and medicines you need a special
the said market: Provided, That, with regard to drugs compulsory license if import is granted in the
and medicines, the limitation on patent rights
Philippine market. Special compulsory license,
granted by the IPO as recommended by DOH.
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 Under the provision on Limitation of right, it says the
to use the invention: Provided, further, That the right introduction made anywhere in the world will
to import the drugs and medicines contemplated in exhaust patent rights.
this section shall be available to any government
agency or any private third party;
Special Compulsory Licensing
This refers to drugs and medicines a separate
provision in compulsory licensing
The law says that in case of drugs and medicines, there is an
exhaustion of patent rights even if the drug or medicine is
It appears to be in conflict will the international
introduced anywhere in the world not necessarily in the
exhaustion principle because the law mentions that
Philippines. What does it mean?
for patented drugs and medicines you need special
General rule, All inventions if introduced to the
compulsory license to import these drugs in the
Philippine Market will result exhaust the right of the
Philippine market granted by the IPO as
patentee and therefore a limitation of patent right.
recommended by DOH.
However in the case of drugs and medicines, if the
But under the provision on the limitation of rights, it
same has been introduced anywhere in the world,
says that the introduction anywhere in the world will

50
 INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON

result to patent right into patent right exhaustion. So
apparently there is a conflict. So far this is a gray
area in the IP Code.
Favorite Bar Question
Patentability of subject matter i.e. product patent
(tangible thing), process patent (intangible; mere
technique)
You dont register this but anyone who violates this
will be held liable.
Those working in manufacturing companies they are
required to sign non-disclosure agreement. They
cannot just transfer to a competitor manufacturing
company.

Example : ADD US IN FACEBOOK or FRIENDSTER AS A SIGN OF

Chemical A is a product, but the process of coming up with GRATITUDE
the product, chemical A is a process.
Marx de Chavez atty_dcmrg@yahoo.com
Take Note of IP RIGHTS Mon Pasia monbpasia@yahoo.com.ph
How many IP Rights do you have? Jen Reyes jenjrey2004@yahoo.com
Nine (9) Angela dela Cruz mabdlcrz@yahoo.com
1. Copyright April Gerero boogapops@yahoo.com
2. Related Rights Soc Marbil soc_benj@yahoo.com
3. Trade Marks Jam Bermudez kawaii_shoujo03@yahoo.com
4. Service Marks Aileen Pizania aillen_pizana@yahoo.com
5. Geographic Indications Donna Masilungan donnarence15@yahoo.com
6. Industrial Designs Theena Martinez theena_martinez@yahoo.com
7. Patents Me-an Ayos meandayos@yahoo.com.ph
8. Layouts-Designs (Topographies) of Integrated
Circuits ANG HINDI MAG-ADD MAG-INGAT SA PAGTAWID
9. Protection of Undisclosed Information (n TRIPS)

*You can only find 3 provisions

Example:
Provisions on copyright Provisions and related rights
(performance rights)
Provisions on computer programs
Provisions on architectural designs

Is computer program capable of patent protection?

No, it is capable of copyright

What about lay-out designs of integrated circuits, is it capable

of patent protection or copyright protection?
It is not capable of patent protection because there
is no inventive step in the case of lay-out designs of
computer chips.

It is not capable of copyright protection.

It has a different system of registration. Different

registration for utility model and different
registration for industrial design.

Protection of undisclosed information,

trade secrets - right to prevent other from using it

Example: Jollibee recipe for burger steak.

51