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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  Ginebra San Miguel
 350 c.c. flint bottles of ____
The Intellectual Property Law consists of 3 subjects/courses:
1. TRADEMARK (easiest) TAKE NOTE CLASS: that marked or stamped container of
2. COPYRIGHT (more difficult) goods can be subject of a trademark.
3. PATENT (most difficult)
What is the nature of the action that La Tondeña filed against
The basic law in IPL is RA 8293 also known as the Intellectual Washington? The procedure what is the type of action? What
Property Code of the Philippines. do you call this type of action?
Replevin.
What is a trademark?
Any visible sign capable of distinguishing the goods What is replevin?
(trademark) or services (service mark) of an It is a possessory action. In the replevin case the
enterprise and shall include a stamped or marked issue is possession, but if a person is asking in the
container of goods. possession of property what is the implication? The
person is the owner of the personal property subject
X is a chemist by profession particularly a perfumer. A of replevin.
perfumer makes perfume. X discovered a certain perfume by
combining the extracts from cellar woods and jasmine. The Why did La Tondeña filed replevin against Washington?
cellar wood was the base tone and the jasmine was the top La Tondeña believes that it is the owner of the
tone. With respect to perfume there are many ingredients for bottles subject of replevin.
perfume and the perfume consists of 3 levels/bases/tones.
The first is high tone or the pass tone which is the smell when How many bottles are involved?
you first apply the perfume to your skin. The second one is 18,000 bottles
the medium tone and the last one would be the base tone
(pinakahuling nawawalang amoy). He named this perfume Can you think of underlying interest aside from claim of
eternity. ownership by La Tondeña who filed against Washington fro
replevin? Is there any other interest? What did La Tondeña
Can he register the fragrance of the perfume as trademark? expects of the activities of Washington?
What is the basis in saying that the fragrance of the perfume That La Tondeña is refilling the bottles with its own
can be registered as a trademark? products called “Gin Seven” (that’s the main reason)
No, because it is not visible sign.
Did La Tondeña transfer ownership of the marking product
Supposing that a person by the name of Jopan compose a when it sold them the bottles? When it sold its product in the
music entitled “Nocturna…” Can he register his composition market to the public, did La Tondeña transfer ownership of
as a trademark? Legal basis? Can he register the the marked bottles?
music/melody as trademark? Yes, reason? What laws involve? RA 623 “An Act to
No, because it is not visible sign. Regulate the use of duly stamped or marked bottles
of another similar things” So La Tondeña trasferren
That’s why the law has its own definition. You don’t ignore or ownership of the marked bottles when it sold its
take for granted definitions of certain terms in the law products to the market. Why, what was the
because that is very important. So the fragrance of the reasoning of the court?
perfume as well as the music of Jopan cannot be registered as
trademark because under the definition provided for in IP Let say I’m a retailer, I have sales outlet and I’m selling Coca
Cod, “MARK” is any visible sign capable of distinguishing the Cola products and you are the consumer and you buy Coca
goods and services of enterprise and that includes marked or Cola products from me the Coca Cola product in bottle. When
stamped container of goods. you brought the product, you also get the ownership of the
bottle?
st
DISTILLERIA WASHINGTON V. LA TODEÑA DISTILLERS Yes, this case there are 2 involve in these cases. 1
nd
CORPORATION case and the 2 case.

What are the trademarks involved in this case? That’s why the petitioners Washington moved for
 La Tondeña Incorporated the disintegration of the case .

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INTELLECTUAL PROPERTY LAW REVIEWER BY
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st
What was wrong with the 1 case? What was the resolution ANG V. TEODORO
st
of the court in the 1 case? According to the court who is the
owner of the bottle? When human rationalize why they do not want to achieve
Washington because there is transfer of the anymore a certain goal after they had failed to achieve it,
ownership of the bottles like from the sale of the what do you call that expression?
product. From the Aesop’s fable. Sour graping.

What was wrong with this decision? Aside from the fact that Between the 2 who was the first one to register the TM “Ang
the SC held that Washington Distillers should be adjudged as Tibay”?
the owners of the bottles, what was the other part of the It was Teodoro who first register the TM “Ang Tibay”
decision? Did the court resolve the matter by requiring
Washington to pay La Tondeña the amount of X pesos or the How come Ana Ang was able to register the same?
amount of the bottles? If it was Washington who is ordered to
pay La Tondeña because of the bottles but the court said that What are the functions of TM?
the ownership over the bottles remained with the To indicate the ownership of the product or to be
Washington. Is that something wrong or correct? Fair or specific the court said that it is to point distinctly
unfair? either by whole meaning or association to the origin
Unfair because it is not consistent with the adverse or ownership of the things from which you acquire
of it ownership Washington moved for or to which they are attach.
reconsideration of the first decision because
according to that decision Washington should be Can a word or device which relate only to the thing following
adjudged the owners of the bottles. the description of the merchandise be a subject of a TM?
you call this a descriptive name.
But how about the SC requires Washington to pay It cannot because there is a provision under RA 8293
the cost of the bottle to La Tondeña? which prohibits registration of a descriptive name.
That’s not fair, that’s inconsistent, that’s
wrong because in finding the owner of the What is the intent of the law? Why does the law does not
property then all attributes of ownership allow descriptive name to be the subject of TM registration?
should be belonging to me. Not to misled the buyers or you go back to the
definition of or to the function of the TM.
What’s the owner of stamped bottles? Can Washington fill
the same with it sown products? If Washington will be using Can the descriptive name serve the function of TM?
the TM of La Tondeña is there a crime committed? It cannot because it only describes the quality or the
Trademark infringement under RA 623 because the description of the goods.
marked or stamped container of the goods is
considered as a TM. In effect The SC ruled that while If the descriptive words or devices to the subject of TM are
ownership over the bottles remain with Washington what kinds of words or devices or phrase cannot be subject of
and Washington can use the bottles in any way it TM not descriptive what do you call those phrases or device?
want it cannot violate the TM of the La Tondeña. What are those words, devices or phrases that can be subject
of TM not descriptive? NIKE is that descriptive?
But how come did the issuance obey? No.
because this is not a case for TM infringement this is
a case for replevin. Had the lawyer for La Tondeña ADIDAS desciptive?
filed a case for violation of TM infringement under No.
RA 623 then it could have been a different matter.
The court can decide whether there is a violation of Can they be subject of TM?
intellectual property rights or trademark right of La Yes.
Tondeña but that’s not the issue that issue is
replevin who owns of property must possess the What do you call these words?
property. They are called Fanciful, arbitary, coined words,
phrases, or device.

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

In a word or device which nonetheless descriptive and there What was the contention of Ethepa because Ethepha is
can be subject illustration use by a person (di ko maintindihan rejecting or opposing the registration of the brand
to) how come? “ATUSSIN”?
Through we call exclusive use. That it will be damaged because “ATUSSIN” is so
confusedly similar to “PERTUSSIN” and that the
What do you call that doctrine? buying public will be misled into believing that
Doctrine of secondary meaning. Westmont’s product is that of Petioner’s which
allegedly enjoys goodwill.
Are the words “Ang Tibay” descriptive or fanciful, arbitrary or
coined? How about “TUSSIN” can you register the mark “TUSSIN”?
Fanciful, arbitrary, or coined because the SC made a No.
semantic arrangement of words. It said that “Ang” is
an article which means “THE” or an adverb of the What is “TUSSIN” is that a Latin word? French word?
constructed word “ANO” “ANG TIBAY” is not an It is Latin word for cough
adjective that’s why its not a descriptive term. You
don’t say “ANG TIBAY SAPATOS KO” but you say Can you register “TUSSIN” as TM?
“MATIBAY SAPATOS KO” if the TM is “MATIBAY” do The SC held that “TUSSIN” is a descriptive word. It is
you think it is still fanciful or arbitrary? also a generic term because it means cough. It also
No more, it is already descriptive term. make thought you cannot appropriate it as TM. But
if you add some prefix or suffix like “PERTUSSIN” or
Does it matter that Ang’s application for registration for “ANG “ATUSSIN” then it becomes registrable as TM.
TIBAY” applies to a classic of merchandise different from
Teodoros? Or does it matter that both are selling non How is the mark of “PERTUSSIN” different from “ATUSSIN”?
competing goods? “ATUSSIN” is in bold, block letters horizontally
Ang’s goods are pants and shirts. Teodoros’ goods written. “PERTUSSIN” is printed diagonally upwards
are slippers and shoes. Are they of the same kind? and across in semiscript style with flourishes and
No. Are they competing? No. do they have the same with only the first letter “P” capitalized.
trademark? Yes. The SC says that it does not matter
whether the goods to which the trademark are What about the phonetic similarity? Do they sound alike?
attached with are not competing as long as it can They do not sound alike. There is not much phonetic
cause confusion. similarity between the 2.
(VERY GOOD!) Angela’s SHINING MOMENT!
Does it matter that “PERTUSSIN” and “ATUSSIN” is a
ETEPHA V. DIRECTOR OF PATENTS pharmaceutical product as a point of determination whether
there is confusingly similarity? If “PERTUSSIN” is a milk and
When the doctor prescribes you a medicine with a brandname “ATUSSIN” is also milk. Is that a matter? Does it have
ending with a suffic “TUSSIN”. What is your ailment? confusing similarity? What about that these 2 products are
That you have cough. pharmaceutical products not an ordinary product? Is that
important in the point of determination in confusing
Which trademark was perfected with? similarity?
“PERTUSSIN” The court said that since they are pharmaceutical
products before a person can buy such product it
Who was able to register the TM “PERTUSSIN” needed prescription and because these products
Etepha A.G. needs a prescription or requires a prescription then
the purchasing or consumers would be less because
Is it a corporation?foreign?Liechtenstin? there is a need of prescription. The doctor prescribes
yes for a medication. The pharmacy prescribes for
medication. You have to consider that for
Who was trying to register “ATUSSIN” determination.
Westmont pharmaceutical

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

This case enumerates the objects of TM, what are the 5. guarantee that those articles come up to a certain
functions of TM? standard quality;
1. to point out distinctly the origin or ownership of the 6. They advertise the articles they symbolize.
articles to which it is affixed;
2. to secure to him who has been instrumental in IPL2
bringing into market a superior or merchandise the CASE: UNO COMMERCIAL
fruit of his industry and skill;
3. to prevent fraud and imposition. Is doing business a pre requisite for the ownership of a mark?
How did General Milling Corporation became the owner of
MIRPURI V. CA the trademark All Montana?
General Milling became the owner of the trademark
FACTS: Lolita Escobar registered the name of barbizon by virtue of a deed of assignment executed by the
wherein she sold brassieres and ladies undergarments. original owner of the trademark, Centennial Milling
However BARBIZON corporation a foreign corporation
opposed such registration contending that it would cause Is Centennial Milling a domestic corporation?
confusion because it has the same name. However the No. It is a foreign corporation
Bureau of Patents allowed Escobar to register her BARBIZON
mark to be registered. Thereafter Escobar transfer her right Is General Milling a domestic corporation?
to Mirpuri. Thereafter Mirpuri failed to file an affidavit of use Yes
that resulted to cancellation of the TM BARBIZON. Escobar
filed an application again for registration and transfer it to What was the basis of Uno Commercial that it has acquired
Mirpuri. This time BARBIZON CORPO oppose again and again ownership over the mark?
on the same ground. Mirpuri contends that BARBIZON can no Uno Commercial that it has first registered the mark
longer oppose because the action is already barred by the
previous action.(res judicata) What was the relationship of Uno Commercial with
Centennial Milling?
RES JUDICATA Uno Commercial is an indentor of SH Huang who is a
An absolute bar to a subsequent action for the same distributor of Centennial Milling
cause.
Can Uno Commercial validly register the trademark All
REQUISITES: Montana?
1. former judgement or order must be final. Uno Commercial cannot register the mark, because
2. judgement or order must be one on the merits it is not the owner of the trademark All Montana.
3. it must have been rendered by a court having The right to register a mark is base on ownership.
jurisdiction over the subject matter and parties
4. there must be between the first and second actions Can SH Huang apply for the registration of the trademark All
identity of parties of subject matter and causes of Montana?
action. No. The distributor is placed in the same level as a
broker, indentor or importer until and unless it is
Proceeding in intellectual property office or formerly known duly authorized of the owner of the trademark, it
as Bureau of Patents are known as inter partes cases which cannot apply for registration.
means those parties opposing each other in different
property office. Why?
Considering that the distributor is merely an agent of
According to this case what are the other functions of TM: the principal, then the principal is estopped from
1. to assure the public that they are procuring the asserting title over the subject matter of the agency.
genuine article; Therefore his registration will be deemed that of the
2. to prevent fraud and imposition; principal. If the principal ask the agent to register the
3. to protect the manufacturer against substitution and trademark All Montana, then the registration will
sale of an inferior and different article as his inure to the benefit of the principal.
product.
4. indicate origin or ownership of the articles to which
they are attached;

4

? trademark here in the Phils. anyone can register that mark in the Phils. Under the IP Code of the Phils. how are rights in the mark therefore KK cannot acquire ownership of the acquired? trademark Isetan. No. What about Isetan Phils. and is not actually use here in the Was Kabushi Kaisha (KK.? the Phils. It is a form of corporation. Because actual use is a pre What then is the pre requisite for the ownership of a mark. there must be actual use of the trademark in not less than 2 mos. Phils. accdg. can you apply for registration of that trademark here in Phils. It is a Japanese term meaning limited company. accordance with the provisions IP Code.? Isetan.? Did it use the trademark Isetan in In the instant case. In the old law. RA 166? constitute actual use. If a certain trademark is registered in Spain. Even if KK advertise its products here in the commerce here in the Phils. use? No. Can actual use of a mark in commerce in a foreign country can be a mode of acquisition of ownership of that mark here If KK Isetan adverstised its products bearing the trademark in the Phils. for short) doing business in the Phils. There was never an allegation by KK that it has actually used the trademark Isetan and the device Why? here in the Phils. Because the Spanish entity who registered the mark in Spain and who has actually used the mark in Did KK alleged that it actually use the trademark Isetan as Spain does not have the right to be protected of its well as the device in commerce here in the Phils. 122 of RA 8293. but not registered in the Phils. the trademark Isetan was never use by KK commerce here in the Phils.? No Yes. can you say that KK Isetan has gained or acquired No. It did not allege actual use of the Yes mark in commerce here in the Phils. requisite to the acquisition of the ownership of the mark. The price list is not a valid registration or registration made validly in constitutive of actual use of the marks. It What if KK Isetan exhibited the goods bearing the trademark should be in accordance with the provisions of the IP Isetan as samples? Does it constitute actual sale or actual Code. the SC said that the exhibition or ownership of the mark in RA 8293 (IP Code) and the old display of the products with the mark does not trademark law. Yes. 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. The same is true with the giving The rights in a mark shall be acquired through or by out of price list of the products. the mode then? How do you prove actual use of the mark? What is your of acquisition of the mark is by registration made best evidence that there is actual use of the mark in validly in accordance with the IP Code. the same does not constitute sale or actual use of the product .. In RA 8293. Not being an actual use. Therefore. There must be actual What is the meaning of Kabushi Kaisha? sale of the products bearing the mark. Because the Spanish entity does not actually use the trademark here in the Phils. JEN AND MON CASE: KABUSHI KAISHA ISETAN What therefore is actual use? Actual use means actual sale.. it 5 . of application for registration. to the SC in this case? Actual use of trademark in commerce in the Phils. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. APRIL. Because the requirement for acquisition of ownership of the trademark Isetan? ownership of the mark is actual use of the mark in No. According to the case of Pag-asa Industrial Is there a distinction in so far as the mode of acquisition of Corporation. Registration per se will not result in the acquisition of the mark. prior to the filing What is the meaning of actual use in commerce in the Phils. commerce? The best evidence would be the sales invoices or Is RA 8293 which is a later legislative enactment has already receipts because that would show that the products dispensed with the requirement of actual use in so far as is actually sold.? Isetan here in the Phils.

Registration is a pre requisite to perfecting title of ownership over the mark? maintaining an action for infringement. It goes to the very function of trademarks. Under Sec. actual use is both a mode of What is the importance of registration aside from being a acquiring ownership over the mark as well as the mode of acquiring ownership of a mark? only mode for perfecting title of ownership over the Registration is a prima facie evidence of the validity mark. actual use is only a condition No. 124. JEN AND MON does not say that ownership of the mark can only be the application. perfect ownership of the mark because you still have to prove actual use of the mark after filing the As between a registrant and a prior actual user of the same application for registration. Does registration alone perfect title of ownership of the mark? Under the old law (RA 166).2 which is the doctrine of secondary meaning. Another is Sec. merely a prima facie evidence that the registrant is the owner of the trademark or the registered mark. 124. the basis for an action for unfair competition. Therefore. Therefore his right the mark before filing the application for registration cannot be said to be permanent but only temporary of the mark. the present law? Under the IP Code.2 of the IP Code. Therefore. Is actual use still a pre requisite to the filing of application under RA 8293? Does registration confer upon the registrant a permanent No. the registrant’s ownership of the mark and of the registrant’s exclusive right to use Why does actual use is the mode of perfecting title of the same in connection with the goods or services as ownership of the mark and not registration? specified in the certificate. with the provisions of the IP Code and actual use of Under the IP Code. registration alone will not ownership over the registered mark. of the registration. A mark which is not otherwise capable of Is registration a pre requisite for maintaining an action for registration may become distinctive and capable of unfair competition? registration by substantially exclusive and Unfair competition does not require for its continuous use thereof for 5 yrs before the date of maintenance a registration of the mark 6 . who owns the mark? A prior user shall be considered the owner of the What would then perfect title of ownership of the mark? mark and not the registrant. The right is not absolute but merely inchoate. mark. what other provisions of RA 8293 will mark? support the argument that actual use is the mode for You cannot. Can you file a case or an action for infringement of a trademark against somebody if you do not have a registered Aside from Sec. 168 which provides acquired by registration. it is provided precedent to filing a registration. You do not have to prove actual use before you right to the registered mark? can file an application for registration of the mark No. Under the present law you did not file declaration of actual use then his need not have to file a declaration of actual use of registration will be cancelled. which is subject to the condition that he files a declaration of actual use. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA.2. It is also a pre requisite Because the purchasers must come to understand for maintaining an action for infringement. What then are the two modes of acquiring ownership of the Does the registration of a mark confer an absolute right upon mark? the registrant to the registered trademark? Registration of the mark made validly in accordance No. 123. the mark as indicating the origin or ownership of the wares. APRIL. If within 3 yrs from the filing date the registrant under the present law. Sec. the certificate of registration is the mark. Because there is only a Actual use of the mark presumption of ownership of a mark in the certificate of registration and such can be rebutted What is the legal significance or the rule of actual use under or overcome by evidence of actual use by another. RA 8293 does that actual use of a mark even without registration is not dispense away with actual use. But now under the present that after filing the application for registration there law actual use is no longer a condition precedent prior to is still a need to prove actual use of the mark registration but a condition subsequent to perfecting title of thereafter.

and design. She was the one who marketed the product because it is under a distributorship But even if Philip Morris did not allege actual use of the agreement. The SC said in within a year after ______ . 2 of the Paris Convention. How did the SC No. Perez and Gabriel? They entered into a distributorship agreement Is Philip Morris doing business here in the Philippines? wherein Gabriel is the distributor of the Wonder No. It was suing only on an isolated transaction soap of Dr. to have a personality or legal standing to file a suit for Who was the adminstratrix of the intestate estate of Dr. Perez. must prevail because distributor agreement trademark rights are territorial. Trademark rights being territorial. 7 . Perez. What was Philip Morris ____ in this case? Did Philip Morris What did Gabriel with respect to the packaging and design of allege actual use of the mark? the wonder soap? There was no allegation of the actual use of the It is Gabriel who has the control of the packaging mark. 2 of the Paris Convention is inconsistent with Sec. JEN AND MON CASE: PHILIP MORRIS CASE: C. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. Under the IP Code the registrant must file an which grants the same reciprocal rights to Filipino affidavit of actual use or declaration of actual use nationals with respect to trademarks. allege its alien origin or its alien nationality because it will not have a legal standing. subject mark it argued that it can still sue Fortune Tobacco for trademark infringement. What was the basis of Philip Morris? Can Gabriel as the exclusive distributor register the trademark The basis was Art. infringement? Is Philip Morris licensed to do business here in Perez? the Phils. therefore domestic or national law In spite of the registration of the trademark Wonder in favor must prevail over a treaty even if we adhere to the of Dr. Under RA 166 actual use is a pre requisite or a mode Did the distributorship agreement provide that the ownership of acquiring ownership over the mark. the treaty or the domestic law? transferred under a deed of assignment or under the The trademark law of the Phils. Wonder? No Art. In order for it to Did the cancellation of the trademark Wonder render the have legal standing it must allege that it is a citizen infringement case moot and academic? or domiciled at a country which grants the same It did not reciprocal rights to Filipino nationals with respect to the protection of intellectual property rights. GABRIEL Is Philip Morris licensed to do business here in the Philippines? What was the business relationship before the dispute No between Dr. Perez during the pendency of the nationality in order for it to have a legal standing? civil action? Under the Paris Convention. trademark? She kept on using the trademark Wonder. But under the Paris of the mark will be transferred to Gabriel? Convention actual use is not a pre requisite. Philip Morris must The administratrix failed to file the affidavit of actual allege that it is a citizen or domiciled at a country use. 2a of RA 166. what did Gabriel do in relation to the said doctrine of incorporation. APRIL. The same goes with the this case that it is not enough for a foreign entity to old law.? They are not doing business in the Philippines and What did the adminstratrix do after she learned that Gabriel are not licensed to do business in the Phils.Y. was still using the trademark Wonder? She filed an infringement suit What must Philip Morris allege in its complaint so that it can sue for trademark infringement against Fortune Tobacco? What happened to the registration of the trademark in favor Can Philip Morris merely allege its alien origin or its alien of the intestate estate of Dr. Is it possible for a foreign entity not doing business here in the Phils. There was no such stipulation although it is reconcile these two provisions? Which prevails in case of possible that the rights in the mark may be conflict.

The issue The Wonder brand of Dr. Perez and the other CASE: COMPANIA DE GENERAL DE TABACOS one is Wonder GH in favor of Go Hay. Perez. What was the reason of the SC? merits in the trial of the merits of the case. there was an abandonment. The applicant must file his request for registration. Yes there was an actual confusion because the goods are related goods. If it is an international corporation. the Wonder brand of Go Hay IPL3 Did Gabriel abandon the use of the trademark assigned to her by Go Hay? What are the requisites for obtaining a filing date? How do Yes. Perez? registered and pay the appropriate filing fees. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. Did this assignment _____ suspicion to the similarity or colorable imitation. Such would injunction. The similarity between the competing products. APRIL. Agua de Kananga To whom will you submit the application for registration. contending parties? And there is no relationship between the There is no unfair competition because there is no cancellation of a trademark and infringement. his name. The SC said that Baxter has no exclusive right to substantive examination of the application? the use the term Kananga even though it has a NO registered trademark of Agua de Kananga. One is a registered trademark in favor of Dr. Therefore she did you register a trademark. The term Kananga is generic therefore it cannot be the subject of trademark registration. who What about the trademark registered by Zosimo Zuazua? receives the application? Kananga Superior and ____ It is the Duty Officer of the Day and not the Trade Examiner. Did the SC say that Baxter has the exclusive right to the use of Kananga? What is the duty of the officer of the day? Will he conduct a No. its address abroad and here in the What was the trademark registered by Baxter in this case? Philippines. 8 . he must indicate his domicile or his that of his Was there confusion between Gabriel’s use of the trademark representative must produce the mark sought to be assigned to her and the trademark of Dr. But what What did the SC say about the contention of Alhambra that did Gabriel do with respect to the trademark assigned to her? Isabela is geographic term and therefore Compania de Although the 2 application for registration have General de Tabacos could not have appropriated the same as marked differences. court? There were 2 registration in this case for Wonder. The contention of Alhambra that the cause confusion term Isabela is a geographic and therefore cannot be exclusively appropriated by Compania de General de The Court ordered the cancellation of the trademark Wonder Tabacos is an issue which should be decided in the GH in favor of Gabriel. JEN AND MON Should the trial court dismiss the case just because the Did the SC say that there was an unfair competition in this trademark has been cancelled? case? Is there any similarity between the products of the No. they are the same toilet has indeed infringe the trademark. They are different in so far as the application for registration is concerned. Gabriel did not actually use The SC said that the issue here is contempt and the trademark that was assigned to her. The case in the trial court is about infringement. the labels are different there is no unfair competition. service mark or tradename? not use it any more. residence. water but the SC said that bec. They court must still determine whether or not Gabriel are the same Kananga. Gabriel was able to imitate the its own trademark? trademark of Dr. That’s why the SC cancelled the What are the requisites for you to have an application trademark of Gabriel. Perez was in prior use of here is merely an injunction and one for contempt. number? The applicant must present the mark he seeks to CASE: BAXTER register. The basic There was an assignment of the trademark Wonder by Go rule under unfair competition is that there must be a Hay to Gabriel.

If it fails to do so. 2009. The foreign actually use the trademark upon submitting the applicant must claim a priority right. What is the importance of the filing date? In order to determine who has the priority over the Is there any exception? mark. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. cancellation the Philippines or foreign countries pursuant to the proceeding. because there is no requirement that you must For the protection of the applicant. it is a ministerial function to see whether the requirements for filing are What is the condition before the Japanese corporation can complied with. APRIL. applicant his application/registration has been granted. Consequently on April 2. it must file an application here in the Philippines or any country Is it required to submit the actual label specimen (the one signatory to the Paris Convention. The filing date must be analyzed against the priority 9 . found in the product itself. What is the prescriptive period/ reglementary period for filing Who between the two corporations has the priority right over an opposition? the same TM having the identical line of goods and services? Within 30 days from the publication of the The Japanese corporation because was the first to registration. If it is a well-known mark or internationally known mark. Within six months from its filing date. it is not the trademark) indicating then it loses its claim to priority right. He is not going to conduct a claim priority right over the same TM? substantive examination. The actual use requirement has been an actual and formal declaration that he is claiming abandoned in so far as the filing of application is as pr over the same TM. But if date/right? it doesn’t belong in the same line goods or services The filing date is the date the office has received the there is a need for registration. concerned. against the other party? A corporation organized and existing in Japan filed None. 2009 without any condition? YES. for registration of the TM “Nike”. In the Philippines. they are not doing business in the Philippines corporation applied in the Philippines an application and there is no actual use here. apply (we are not talking of registration here). 2009. CASE: BATA INDUSTRIES LIMITED How a foreign corporation can claim priority right? Cite Did the BATA have the personality to sue for opposition example. And both the Japan and the Philippines application? are members of the Paris Convention. a domestic corporation Did BATA stand to be prejudiced or suffer damage by the applied for the same TM registration on March 2. registration of the TM BATA in the case? 2009. the law specifies that the application will not be your application because within three years you granted unless in the home country of the foreign have to prove that you actually used the trademark. within three years for the time you submitted NO. an application for the TM “Nike” in Japan on January 2. What does the law say about claiming a PR? Can the But do you need to submit your actual label specimen after Philippines through IPO grant the application of the Japanese submitting your application form? corporation on May 2. filing date in which said foreign corporation was able to register the same. the Japanese NO. Only a formal examination. while priority date/right What are interpartes/interference proceedings? given to the person who has able to register a TM in It is an opposition proceeding. he must make application. application when all the requirements provided by law are complied with. JEN AND MON What kind of examination is he going to perform on the right/date. there is no need for registration if the TM Is there a difference between a filing date and priority belongs in the line of similar goods or services. the trademark which you are seeking to register in your application? What is the purpose of the Priority Right? NO.

Nice Classification – comes from Nice Agreement.Ana (September 1962) 34 in goods and 11 in services. NO. You can go back to submit all your filing the widow. requirements. He recommends to the Date of actual use? Director of the Bureau of TM the publication of the TM sought to be registered and after the publication What is the principle behind this case? anyone who believes that he will be damaged or No need to prove because there is already a judicial prejudiced by the registration have the right to file admission in relation to actual use because it is an opposition which is called an borne by the records therefore there is no need for interpartes/interference proceedings.Sta.Maliwat (June 1962) How many classes are there in Nice Classification? Flormenn . to the Director of the Bureau of TM. No. and Sta. scandalous When you submit your requirements to obtain the filing date. APRIL. The Philippines is not a party to the Nice CASE: STA. no more no less) Sta. further proof. The No. Section 20 TM Law and Section 4 is there a conflict? In the application given by Maliwat in the TM Flormann. deceptive. but if his widow consents. 10 . Is his decision appealable? Can you register “SHABU” for Cola drink? YES. That is why one of the requirements for obtaining a filing date is a mere CASE: HICKOCK reproduction/drawing/sketch of the TM. When will the office conduct a substantive examination? Absolutely? It is only when the application meets the filing No. The law seems mistaken. you cannot get the consent of date. JEN AND MON Who has the exclusive jurisdiction over the application for TM *Take note of these facts: registration? Who conducts the examination of the Same TM? application? Similar line of goods/services? It is the Trademark Examiner. Sec 123. filing date. who among the two applicants has the right or priority right to register the same TM. Ana? 1959 Did section 20 prevail over section 4? Yes. nice is a town in France. What happened in the stipulation of facts? They agreed with the same that the actual use is 1955 for Maliwat. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. if there is his consent. what YES year did he state the he actually used the TM? 1959 but he amended it to 1955 Principle: Extent of protection (limited as SPECIFIED IN THE CERTIFICATE OF REGISTRATION. requirements. the court can determine whether or not the filing date is very important because it determines products are related or not. not the actual or formal TM (you only need to submit the Is the Nice Classification controlling? actual TM when filing all the requirements). latter intent of Congress. Prohibited – immoral. What is the mode of perfecting ownership over a TM? CASE: FABERGE The actual use.Ana 1959. will the office conduct a substantive examination? Can you register a name of a person as a TM? NO.ANA VERSUS MALIWAT Agreement but it follows the nice classification Flormann . you can. you need not submit all your filing requirements because you only need to have a filing If not the president. When you file an application to obtain a No. What are the filing requirements? President of the Philippines and is already dead? Section 124. par1.

by Yu? Are these provisions under RA 166 or provisions under the civil code? CASE: LEVITON INDUSTRIES Art. APRIL. But protected in so far as the exclusive sales agreement prior to the enactment of RA 8293. Then there is no reason for the injunction. His only protection is the TM of poster Assuming that Yu filed a case for unfair competition under RA ads and copyright registration of technical drawings. In this case although the injunction was base on Art. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. 21-A of RA 166 The lower court and the CA denied Yu’s application for injunction. 28 which grants damages and injunction there is unfair completion and you can file a case base on What law was made as the basis in filing the injunction filed unfair competition. But because there is a provision under Based on the exclusive distributorship agreement Art. it can still file a is concern. 28 of the Civil Code He did not apply for the registration of the lightboxes. If the applicant for injunction can be Could Leviton file a case for unfair competition under Art 189 compensated for damages then injunction could not of the RPC instead of RA 166? lie Yes What was the SC’s decision? Should the injunction be What was Art 189 of the RPC? granted? Unfair Competition The SC said that injunction is the proper remedy to prevent a wrongful interference with contracts by Assuming that the case happened today. In other No. RA 8293 repealed words. The essence of unfair competition under the works but not to technical drawings. Intellectual property law is the passing off of one’s goods or services on the public as that of the goods IPL4 and services of another. that is the true meaning Injunction of unfair competition. 28 of the Civil Code What was the action filed by the foreign corporation? Is there a provision under the Civil Code which speaks of Unfair competition unfair competition? Art. JEN AND MON Is the filing an application for registration an ex-parte proceeding? Is it confidential or not? Is there unfair competition here? Yes CASE: BERNANDINE The unfair competition was base on what law in this case? What is the problem in Bernadine’s petition? Art. can Leviton file a strangers when the legal remedy would be ____ and case for unfair competition base on Art. 11 . 28 of the Civil Code. The definition of unfair competition under the the action? intellectual property code. CA strictly speaking it is not one for unfair competition because unfair competition under the Civil Code is What kind of action was filed by Yu? What was the nature of ___. even if ___ is not a party to the contract. 189 of the RPC? the resulting injury would be irreparable. 8293. What was the basis of the denial of the lower Can the foreign corporation file a case for unfair competition court? base on other law aside from RA 166? The evidence provided that ___ was willing to pay Yes. could there be a case for unfair competition? However. but not on the basis of the agreement case for unfair competition under the RPC or RA 166 itself but because there is a provision under the law which is Art. Art 189 of the Revised Penal Code damages to Yu. copyright protects only literary and artistic No. 1314 which gives a remedy. Therefore it can no longer _____ must be enjoined because Yu must be file a case for unfair competition under the RPC. 28 of the Civil Code Base on which law? Under Sec. It must be base on RA 8293. CASE: YU v. This case involves ____ importation and must strictly speaking be unfair What was the basis? competition. if Art 188 an 189 of the RPC.

Even if La Chemise Lacoste failed to Lack of legal capacity to sue and litis pendentia allege the facts bearing upon its capacity to sue. It is a treaty there is no need for you to prove a or infringement whether or not it is licensed to do business treaty. Lacoste is an internationally well known mark so the SC have a very strong policy in favor of CASE: PUMA internationally well known mark. Is prior registration of a mark a pre requisite for an action for infringement? CASE: LA CHEMISE LACOSTE Yes How did the Court meet squarely the argument of Hermandas Is registration of a mark a pre requisite for an action for unfair that Leviton principle should be applied in this case? competition? The SC said that Leviton principle is not applicable in No . the SC could have for infringement of trademark ? made the same decision. registration of a mark is not a pre requisite for this case because these two cases involve different an action for unfair competition The exception is if law. it cannot. the Patent Office. In case of a well known trademark. If it is would like to abandon the principle in the Leviton case? determined by competent authority that it is a well In the Leviton case. One involves a provision in the Revised Penal the foreign corporation files a case for unfair Code the other a provision under RA 166. Under the law of evidence a treaty must here in the Phils. APRIL. so the competition. In this case base on an isolated transaction it can file an action WON it is the inter partes case was before an administrative license to do business here in the Phils. it must allege that its trademark is Leviton Industries principle is not applicable in this registered here in the Phils. but it has an isolated transaction it can still sue here The Sc said that there is no litis pendentia. the mark involve is not an known mark. it must have a license. Because it is an internationally well known mark sue? Was there any missing element in the complaint? It failed to allege reciprocity in the complaint 12 . bec. JEN AND MON What ground was invoked by the local entity when it filed a What did the SC say about this issue? Did the SC abandoned motion to dismiss the complaint? the ruling in Leviton? What is the difference between Leviton Failure to state a cause of action because allegedly it and this case in so far as foreign corporations are concerned? did not state its legal personality to sue In Leviton the basis for the case for unfair competition is a law. And here in the Philippines can file a case for unfair competition bec. What was the defense of Mil-Oro when Puma filed an action Even if the complaint is base on RA 166. registered here in the Phils. in this case. If it is doing business. You have to distinguish the activity. it complaint that its trademark is registered here in the need not allege reciprocity because the treaty is the Phils one which supplies the reciprocity arrangement between the Phils and the foreign country of which (Remember: a foreign corporation not engaged in business the foreign country is a citizen or domiciled of. a foreign corporation must allege in its foreign corporation is suing base on a treaty then. Do you agree? Why did Mil-Oro argue that Puma has no legal capacity to Yes.) body. whether the for there to be lis pendens. the SC would still grant the same decision. This case did not abandon the ruling in complaint in order that it will not be dismissed? Leviton industries because the SC said that if the Leviton. then it need not allege that it is internationally well-known mark . the other case pending activity is one doing business or merely an isolated involving the same parties and having the same transaction. Is there an exception to the exception? Do you agree with the decision of the SC? Do you think the SC Yes. Therefore. In this the case the basis is a What should the foreign entity should have alleged in its treaty. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. and be given judicial notice not licensed to do business in the Phils. If cause of action must be a court action. case. In order in the Phils. but if it is doing business in the Phils. If it is not doing business here in the Phils and not license to do What was the ruling of the SC with regards to Litis Pendentia? business. there can be no application of the doctrine of lis pendens.

If a foreign corporation under the regime of RA 166 would like Hermandas argued that it is the holder of a certificate of to file registration of its trademark. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. What was the ruling of No. in nature. We don’t have that anymore. 37. Was that enough for it to be protected from suit from No infringement? What did SC say on this? What are the 2 kinds of registry under RA 166? If it is a domestic corporation or a local entity who would like Supplemental registry and principal registry to file an application for a trademark here in the Philippines under the regime of RA 166. does it need to prove actual use Hermandas certificate of registration was under which upon filing of the application? registry? No. APRIL. can he be sued for infringement? license to do business here in the Phils. exclusive ownership of the mark because Rustan’s is doing business not for the name or for the account of Lacoste but on its own name. is a party to a convention or a treaty then the foreign corporation need not prove actual use upon What was the difference between a supplemental registry filing of the application. 13 . Because such is an issue that must be raise in cancellation for registration of a trademark? the trial itself and not in the hearing on motion to Sec. Judge Court’s ruling? Fernandez recalled the search warrants base on this The case involve is civil. In issuing the search warrant Judge Fernandez has already complied with CASE: ROMERO the probable cause. But there is a section 37. Yet it was not the principal registry. What was the ground invoked by Hermandas in filing a What about the contention of Hermandas that the action was motion to quash the search warrant? premature in view of the pending Inter Partes case before the Hermandas said that the trademark use by him is Patent Office between the same parties? What was the different from the trademark use by Lacoste. supplemental registry Then Hermandas filed a motion to quash search warrant. There is no more distinction between a principal registry and a In this case Judge Fernandez issued two search warrants. Inter partes case is not civil allegation. JEN AND MON Let’s go to the argument of Hermandas that La Chemise Granting that Hermandas’ certificate was registered under Lacoste is doing business here in the Phils. Do we still have supplemental registry under RA 8293? Therefore it not an agent. 151. does it need to prove registration of the trademark Chemise Lacoste and Crocodile actual use upon filing of the application? device. Therefore Hermandas’ argument was wrong because he did not even have a prima facie presumption in his favor. is there a need to prove actual use upon filing as to the registrant’s right of exclusive ownership over the the application for registration whether or not it is a foreign trademark? corporation or a local entity? It has no presumption as to its valid registration and No. That’s why the SC said that and a principal registry? the application in this case was filed on the basis of A trademark registered under the supplemental Sec. It provides that if the Supplemental registry Phils. Because it gives only a prima facie presumption the SC? on the validity of registration and the registrant’s Lacoste is not doing business here in the Phils. presumption. Because at registry still has some defects with respect to its that time Phils was not yet a signatory or a member registrability and it is not subject to any opposition of the Paris Convention Does it have the presumption of validity of registration as well Under RA 8293. they are merely administrative Was that a correct step on the part of Judge Fernandez? What is the prescriptive period for filing a petition for No. it is a middleman. Unlike in the case of a has already harmonized the rules as between a principal registry. 2 and not on the basis of Sec.1 IP Code – prescriptive periods quash the search warrant. there is that prima facie foreign corporation and a local entity. There is no more requirement of proving actual that the holder of the certificate is the axclusive use upon filing of the application because RA 8293 owner of the trademark.

What the opposition filed by the counsel of Clorox? was the Court’s ruling? No. JEN AND MON There was also an argument that the registration of Adagio The first one. was it verified or unverified? was procured fraudulently because there was a government It was unverified restriction on the importation of the goods by Maiden Form which resulted in the temporary use of Adagio by Maiden Was the counsel of Clorox company able to file a verified Form. this time verified because it receive a notice from the director of patents that it filed an What is the dominancy test? unverified opposition.. in the same as Selecta in considerable injustice to Clorox.So if you are made meaning. It was only an opinion ... What was the ruling of the SC? petition for opposition within the reglementary period? .. Nut argued that the word Planters has not acquired a What did the SC say about the decision of the Director of secondary meaning or that the Standard Brands could not Patents? Was the Director of Patents correct in dismissing have acquired or could not have owned the trademark.. can you say that Standard Brand owned the to choose between a technicality and substance. the main feature in both trademark is the term Planters Therefore whose mistake was that? Was it the clerk of court or the lawyer of Clorox? Why not Cocktails? Why not Cordial? According to the SC it was the mistake of the Clerk of Because it is the word Planters that catches the Court attention of the consumers and which will lead consumers into thinking that the source of this two Do you agree with the decision of the SC? peanuts belong to the same origin (According to sir. But in this verified opposition In dominancy test. still. The SC said in this case that the freedom of the The term Planters acquired a secondary meaning in opposition on technicality grounds would amount to favor of Standard Brands.. CASE: CLOROX How many opposition papers were filed by the counsel of Clorox? Two 14 . he filed it within the 30 day period.. the focus is on the prevalent there was a cover letter and the cover letter states a feature of the product different case title How would you know if a trademark is confusingly similar to a What did the clerk of court or the ____ of the director of registered trademark by the test of dominancy? patents do? The focus is on the main or the dominant feature of It did not correct the mistake the mark. Standard Brand still owned the trademark Planters because it fulfils the requirement of Was the verified opposition filed by the counsel of Clorox ever registrability found by the SC? No Can a person who failed to apply a petition for opposition against the registration of a mark still file a petition for If there was no evidence that there was a verified opposition cancellation of the registration of the same mark? then why did the SC that the counsel of Clorox was able to file Yes. the a verified opposition? parties can choose any one of them (Achor Trading There was only an opinion of the SC that the counsel v. is a possibility of such period consequence which necessitate a careful examination of the grounds But even if the term Planters did not acquire a secondary upon which it requires that ____ . it was the mistake of the counsel) Phil... APRIL. In the first opposition which is unverified.. Yes... INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA.. NUT opposition. Then it filed another CASE: PHIL. Director of Patents) of Clorox filed a verified opposition. According to the SC. of trademark? course you have to go to substance. The SC said that this actions are alternative. And therefore there the case of Arce acquired a secondary meaning..

As such. remains valid and subsisting for as long as it has not been cancelled by the What was the ruling of the Supreme Court? Bureau or by an infringement court.The filing of a suit to RA 166 and did not change the declaration of policy enforce the registered mark with the proper court or as embodied in the said law hence res judicata is Bureau shall exclude any other court or agency from applicable. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. Worldwide cause of action is vested with jurisdiction to hear and adjudicate any barred by the res judicata. Effect of filing of a suit before the Bureau The Memorandum did not amend the provisions of or with the proper court.2. provides. the earlier filing of petition to cancel the mark in relation to their prosecution of the case? with the Bureau shall not constitute a prejudicial They failed to invoke the protection of Paris question that must be resolved before an action to Convention during the interpartes cases. and of the registrant's exclusive right to use the same in connection with the goods. Affairs. upon which the infringement case is based. despite the with the BPTTT cannot effectively bar the subsequent filing of institution of an Inter Partes case for cancellation of an infringement case by registrant Developers Group. 8293. decided. The law a mark with the BPTTT (now the Bureau of Legal and the rules are explicit. SHANGRILA VERSUS CA Hence. 31904. continues as "prima facie evidence of the validity of the registration. Notwithstanding the foregoing in the Patent Office prior to the institution of the provisions. APRIL. as follows – What was the defence interposed by the private respondents? Since there were three interpartes proceedings filed Section 151. The filing of a Patent Office? suit to enforce the registered mark with the proper Yes. Infringement case can be filed notwithstanding Group's Certificate of Registration in the principal register the cancelation proceedings in the Patent Office. otherwise WOLVERINE WORLDWIDE VERSUS CA known as the Intellectual Property Code. Rule 8. Intellectual Property Office) by one party. the court or the administrative agency complaint in the court. connection with the same registered mark. business or services specified in 15 .2 of Republic Act No. Minister Ongpin the doctrine of res judicata must not apply. What was the ruling of the Supreme Court? Section 7. of the Regulations on Inter Partes which are issued by virtue of the Paris Convention Proceedings. action to enforce the rights to a registered mark shall likewise exercise jurisdiction to determine Are the equitable principles of res judicata. the decision would not be adverse to them. the earlier institution of an Inter Partes case by the Shangri-La Group for the What is the issue in this case? cancellation of the "Shangri-La" mark and "S" device/logo The core issue is simply whether. Minister Ongpin stating that trademarks registered prior to the issuance of the said memorandum and Similarly. as applied in the case at bar. the adverse party can file a subsequent action for infringement with the regular courts of justice in The rationale is plain: Certificate of Registration No. Had they enforce the rights to same registered mark may be done so. the earlier filing of petition to Why is that so? cancel the mark with the Bureau of Legal Affairs shall Worldwide said that the three interpartes cases not constitute a prejudicial question that must be were filed under RA 166 but the case filed before the resolved before an action to enforce the rights to court was filed under the Memorandum issued by same registered mark may be decided. court or agency shall exclude any other court or agency from assuming jurisdiction over a Worldwide said that by virtue of the Memorandum issued by subsequently filed petition to cancel the same mark. Developers YES. JEN AND MON IPL5 What is your basis? Section 151. estoppels and whether the registration of said mark may be laches applicable in administrative decisions like before the cancelled in accordance with this Act. . Section 7. On the other hand. On the other What was wrong with the strategy adopted by the Worldwide hand. assuming jurisdiction over a subsequently filed petition to cancel the same mark. the registrant's ownership of the mark or trade- name. provides to wit – should be cancelled.

There is not much phonetic similarity between the two. however.. by the marks the CA? as a whole. Petitioner's and What benefit will it give to the party filing the infringement respondent's products are to be dispensed upon medical case? What is it that you can get from filing an infringement prescription. Gerero. The proceedings. alike — when pronounced. rendered a decision. had been similar to petitioner's trademark FRUIT OF THE previously registered in the Patent Office. whereas unfair competition is the passing off of purchasing public into believing that the products to which one's goods as those of another. given the FRUIT FOR EVE and its hang tag are confusingly fact that PERTUSSIN. In 16 . soft drinks and the like which may be freely despite the filing of cancelation. the marks are applied emanated from the same source. There is. I attached Republic Act No. or meaning are such as would lead the trademark. anywhere. he knows what he is to buy. What is the logical reason? obtained by anyone. In this case the conflict The Regional Trial Court because it is a court of is more possible because the trial court had already general jurisdiction. In the solution of a trademark If a cancellation case has been filed and subsequently an infringement problem. It’s possible that IPO might render conflicting case? decision with that of the CA. *Confusion is likely between trademarks. fixed legal rules exist — if not in harmony. another trademark. APRIL. the recover damages from any person who infringes upon the application of these rules in any given situation necessarily former's rights. ) Cancellation case filed ahead the infringement case? FRUIT OF THE LOOM. COURT OF APPEALS and GENERAL GARMENTS CORPORATION. The words Pertussin and Atussin do not sound YES. he reads the registration. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. ETHEPA VERSUS DIRECTOR OF PATENTS What is the issue in this case? What is the issue in this case? Whether or not private respondent's trademark WON trademark ATUSSIN be registered. however. the cancellation case need not be of persons who buy the particular product and the 16 suspended. are unlike articles of everyday use such as candies. medicinal preparation clothed with the trademarks in question. LOOM and its hang tag so as to constitute an infringement of the latter's trademark rights and What is the ruling of the Supreme Court? justify the cancellation of the former. Did the SC ordered the suspension of admin proceedings? Which court has jurisdiction to take cognizance infringement YES. because the two are different and independent circumstances ordinarily attendant to its acquisition. regard too should be given to the class infringement case is filed. in the final analysis. infringement case? (Classmates. only if their over-all presentations in any of the particulars of sound. JEN AND MON the certificate. An intending buyer case but you cannot get in cancellation proceedings? must have to go first to a licensed doctor of medicine. and can be no disagreement with Did the infringement case filed by Developer’s Group reach the rule that the purchaser is confused. The respective labels say so. Why did the court allow an infringement case be maintained ice cream. Group may thus file a corresponding infringement suit and certainly in abundance — but. But if the trial court had not yet rendered a decision the administrative proceedings Is there a provision in the IP Code vesting jurisdiction in RTC in will not be suspended. Cancellation case will be suspended because the trial Soriano said the answer can be found in this latest court can order the cancellation of the registered amendatory law. he Injunctive remedy in favour of holder of certificate of receives instructions as to what to purchase. thank you – April TM. vs. if at all. Distinguish infringement and unfair competition. INC. 1) Infringement of trademark is the unauthorized use of a appearance. They can proceed independently. anytime. milk. doctor's prescription." Since the certificate still subsists. There is no infringement in this case. 9502 or the Infringement case filed ahead of cancellation case? Cheaper Medicines Law amending RA 8293. reflects a matter of individual judgment largely predicated on opinion. Find it na lang. Atty. Developers testing this issue.

provides in part as follows: contained. Infringement. 29. wrappers. or who shall commit any The SC said that the similarities of the competing acts calculated to produce said result. 22. 166. receptacles or advertisements calculated to induce the false belief that intended to be used upon or in connection with such such person is offering the services of goods. whereas in unfair shall give them the general appearance of competition registration is not necessary. rights and remedies. APRIL. or herein provided. identified. or who employs ally other means packages. 29 of the same law states as follows: statement in the course of trade or who shall commit any other act contrary to good Sec. business or services.A. counterfeit (b) Any person who by any artifice. which will be protected in the same manner as other property rights. offering for sale. or reproduce. — Any person which would likely influence purchasers to who shall use. prints. either as to the goods themselves or in the Section 22 of R. or confusion or mistake or to deceive purchasers or any subsequent vendor of such goods or others as to the source or origin of such goods or any agent of any vendor engaged in selling services or identity of such business. or in any other feature of their appearance. business or services of another. The word FRUIT is not at all made dominant over the Any person who shall employ deception or any other other words. who in selling his goods trademark is a prerequisite to the action. — A faith of a nature calculated to discredit the person who has identified in the mind of the public the goods. such goods with a like purpose. business or services on or in appearance as shall deceive the public and connection with which such use is likely to cause defraud another of his legitimate trade. copy or colorable a manufacturer or dealer other than the imitation of any registered mark or trade-name in actual manufacturer or dealer. signs. and shall be subject to an action substantial differences in the design and general therefor. device. (c) Any person who shall make any false Sec. goods of another manufacturer or dealer. his business or services from those of others. and without in any way limiting the scope unnecessary whereas in unfair competition fraudulent intent of unfair competition. otherwise known as the wrapping of the packages in which they are Trademark Law. the following shall be deemed is essential. whether or not a mark or tradename is employed. Chapter V Because there is NO dominant feature in the TM. The word “FRUIT” is not the dominant feature. It have examined the two trademarks as they appear in the hang tags submitted by the parties and are 17 . or the devices or words thereon. counterfeit. What is the relevance of the hangtags in the Supreme Court’s or his business. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. has a property right in the What test was the employed by the Supreme Court? goodwill of the said goods.three. means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals. Such a person shall have the Why did not apply the dominancy test in this case? remedies provided in section twenty. what constitutes. shall be guilty of trademarks in this case are completely lost in the unfair competition. without the consent of the registrant. No. goods he manufactures or deals in. or who connection with the sale. Sec. or services for those of the one having decision? established such goodwill. hereof. guilty of unfair competition: (3) In infringement of trademark the prior registration of the (a) Any person. JEN AND MON (2) In infringement of trademark fraudulent intent is In particular. Unfair competition. business or services so Holistic test. believe that the goods offered are those of any reproduction. shall be liable to a civil another who has identified such services in action by the registrant for any or all of the remedies the mind of the public. counterfeit copy or colorably imitate any such mark or trade name and apply such reproduction. or copy or colorable imitation to labels. appearance of their respective hang tags. or otherwise clothes the goods with such advertising of any goods.

So the court must scrutinize all the details of use of his scrutiny. The court made the scrutiny but the buyer the label in order to determine whether there is has not made his scrutiny. The ordinary purchaser must employed by the SC because that will benefit the buyer? be thought of as having. design and the labels. whether the article is bought for immediate consumption and the condition under which the consumer usually purchase. He does not go into the detail. In making purchase the buyer confusing similarity?not necessary all the details but depends on his recollection of the appearance of the product such details that would lead to the conclusion that which he tends to purchase. whether there is confusing similarity? No because it is dissected What about the trademarks? There’s also infringement of the trademark. there is a scrutiny of the detail of the label because the buyer does not always makes label. holistic test what would you see? The color will be considered. The purchaser does not dissect there is a confusion. This product is a Whose point of view is to be considered in order to determine household item whether there is confusing similarity in these two products? The point of view of a common buyer. the label because it depends only on his recollection of the label. nature and cost of the article. 18 . and credited with. It held that the whether there is confusing similarity with these 2 products? trademarks FRUIT OF THE LOOM and FRUIT FOR EVE What does the holistic test will give to the buyer which the do not resemble each other as to confuse or deceive dominancy test will not? Is it not that the holistic test is an ordinary purchaser. What are the other factors to determine which you have to take note of that? The age. benefit the consumers or the buyers by the employment of the dominancy test the same will not DEL MONTE CORPORATION v. JEN AND MON impressed more by the dissimilarities than by the Why did the SC employed the holistic test in determining similarities appearing therein. The print of the catsup? Is it the same? Yes ???? is it necessary for the court to go into the details of the label? Take note: The SC said there is no need to scrutinize every Yes by using totality test. do you consider the entire WON there was infringement or UC on the part of mark and the entire label in order to determine the private respondent in the use of the bottles. Tomato What about the colors? What about ???? Green and red orange. APRIL. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. What is holistic test? It mandates that the entirety of the marks in What is the similarity between the trademark and the label of question must be considered in determining private respondent? confusing similarity. at least a Yes so what is that if the holistic test which will modicum of intelligence. It is not a tomato but it approximates as that of a tomato. If you employed the dominancy test the word ABSOLUTE would be the dominant What test was employed by the SC? feature of this trademark but if you employed the The holistic or totality test. CA be enjoyed by???? What is the issue in this? In the dominancy test. The symbols of the petitioner resembles to that of the private respondent which is not really a tomato What is the trademark of Del Monte Corporation? but approximates or looks like as tomato. education of the usual purchaser. In this case what is the dominant feature? (sample is the ABSOLUTE mineral water) What part???? The catsup The word absolute. the background.

registrant ownership and esclusive use the contents of the bottle thereof. CA CORP” not to be refilled still opted to use said bottle to market a product which Philpack also produces. JEN AND MON Was Sunshine guilty in using the Del Monte bottles? What about the use of ambered colored design bottle of Asia The SC said that it is not guilty of infringement for brewery? Does it constitute infringement? having used the Del Monte bottle because it was No because the bottle was not registered and that merely registered in the Supplemental Register. A word is dominant if such word attracts the person. the said test cannot be applied in this case LEE but why did the SC did not apply the dominancy because the product involved in Del Monte which test? Because the buyer in this case are buying by was the subject matter of the case was bought by brands. APRIL. consumer is it dominancy test or holistic test? The 2. In this case was there a conjunction in the dominant feature? None because on one hand it was San Miguel pale How would you know if the word or feature is dominant? pilsen on the other hand it was beer. Lee the similarity between the 2 trademarks whereas in this case the beer is ordered by brand. Lee what is the dominant word? No. becomes conspicuous and have to matter in the light of Therefore the consumer is more aware of the brand. The SC said of those dominant feature stylistic common buyer who does not scrutinize the goods Mr.. However despite many choices available to it nothwithstanding that the caution “DEL MONTE CONRAD v. You will note in the holistic test is rather more of the exception rather than the general rule. v. What is the dominant feature in ASIA BREWERY PALE PILSEN? The word beer Is that a dominant feature? Yes. INC. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. What test was employed by the SC? Dominancy test Why not the dominancy test? Because the dominant feature being the word lee What was the result of the application of the dominancy test? such is not being capable of an appropriation Was there infringement or not? because LEE pertains to a surname of a person. Did the SC abandon the holistic test mentioned in Del Monte case? In Stylistic Mr. the buyer bla bla bla the product involve is not an Which test would benefit the unwary/unexpecting ordinary item. The SC tending to Does the presence of PALE PILSEN in the Asia Brewery’s apply the dominancy test bottle constitute infringement? No. Lee was there a dominant feature or word? The word Lee.. What was the decision of the court? This shows private repondent’s bad faith amounting to Unfair competition. CA What test was employed by the SC in this case? Holistic test. The mere presence of such word calls the attention of the respective buyer.. EMERALD GRAMENT v. together with the other cases like del monte holistic test because it does not dissect of all the details of the part of a trademark. 19 . there is no such presumption of validity of because it was the color which gives protection to registration. none Apart from that why did the SC did not apply the dominancy test What is the dominant feature in SAN MIGUEL PALE PILSEN? It was SAN MIGUEL PALE PILSEN In the stylistic Mr. 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. the glass colored constitute a functional term Thus. the ff variables: 1. CA ASIA BREWERY.

What is a suggestive term? How will you know if the term is suggestive and not descriptive? Why he needs to be accustomed with the product? Those which in phraseology of one court require Because there is no point in determining whether imagination. Suggestive about the nature of the product. The court also said that it something contrary to the SOCIETE DES PRODUITS NESTLE v. cannot be considered as a variand they are aggregated as one term. because it suggests about the nature of the product. We also use the holistic test and the The word MASTER dominancy test. No because Lee refers to a surname therefore The SC said that MASTER is a suggestive term cannot be appropriated or registered. the product.  The word linenized with arrows printed on the label  Representation of man’s foot wearing a sock The SC said that the holistic test only relies on visual  Same type of lettering comparison not including the aural comparison. Since it is suggestive there must be a of HD Lee are terms in such a way that the stylistic Mr. Lee might be mistaken as another variation under the LEE’s trademark what was the SC said? Was there no relation between a suggestive mark and a there was an apprehension by the CA that the stylistic Mr. of the trademark. thought and perception to reach a the buyer is confuse or not. CA elementary postulate of the law on trademark but of course that is not the ratio decidendi it is only an What is the dominant feature in both trademarks? obiter dictum. buyer of a product he cannot be considered as an ordinary purchaser because he has no comparison What does aperson need in order to know the nature of the with the product but if the person buys the product product with respect to the suggestive term but which a often than not then he can be considered an person does not mean a generic term or descriptive term? ordinary purchaser because he knows the general In generic or descriptive term when it is related to appearance of the product that he is buying. product of stylistic Mr. when it describes the product. APRIL. product to which it attach? Lee might be mistaken as another variand or line of products If there is no such relation at all then it is fanciful or by Lee. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. What about the new comer? Someone who does not care or What kind of term is that? Is it fanciful or arbitrary? indifferent with the product? Is he an ordinary purchaser No. when there is logical relation with the product and the There was a contention or connection by the CA that the mark. No because he is not accustomed with the product. CLUETT PEABODY The dominancy test. thought or perception? Can HD Lee acquire exclusive ownership over the term LEE? Yes. Lee relation. No. What does a person need to know that there is a relation? Does he need some imagination. if a person is a new conclusion as to the nature of the goods. JEN AND MON An ordinary purchaser is the one who is accustomed Is that descriptive or generic term? to buy or familiar with the goods in question. What test employed by the SC in this case? AMIGO MANUFACTURING v. What is the dominant feature in the “GOLD TOE” “GOLD Why not the holistic test? TOP”? Because the totality test covers only the visual side  Both have gold checkered lines against a of the trademark while in the dominancy test it predominantly black background tackles not only the visual but also the aural or the  The representation of a sock with a magnifying glass overall description of the trademark. What was the SC ruling on this? Because the variand arbitrary. That these 2 has a relationship. it is a SUGGESTIVE TERM under IP law? Somebody buying the product for the first time. Did HD Lee has actual use of trademark Lee in the Philippines? What does the relation between MASTER and ROBERT No though it has registered its name as a JAWORSKI? requirement under our law there must be actual use Master strategist. 20 .

Limitations of Patent Rights. x x x. private third party." "22. 6675 OR THE GENERICS ACT OF 1988. insofar as such use is ethers. That it does 21 .6. 8293. 7. or the mere discovery of any performing. JEN AND MON Republic Act No. 5921 OR THE PHARMACY LAW. and regard to drugs and medicines. and in the case of as the Intellectual Property Code of the Philippines.The following process unless such known process results in a new shall be excluded from patent protection: product that employs at least one new reactant. the other derivatives of a known substance limitation on patent rights shall be considered to be the same substance. polymorphs.3. 5. 8293. salts. combinations. and "72. 2008 SEC. 8293. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. scientific theories and SEC. OTHERWISE KNOWN AS THE INTELLECTUAL PROPERTY CODE OF THE "26.1. .1. REPUBLIC "SEC. is hereby AN ACT PROVIDING FOR CHEAPER AND QUALITY amended to read as follows: MEDICINES. x x x. been put on the market in the Philippines by the owner of the product. 6. complexes. 22. Inventive Step.The owner of enhancement of the known efficacy of that a patent has no right to prevent third parties from substance. express consent. x x x. Where the act is done privately and on a non-commercial scale or for a non- "22. 8293.2. 26. it is REPUBLIC ACT NO. Section 22 of Republic Act No.1.26. Discoveries. Section 26 of Republic Act No. esters. mixtures of put on the said market: Provided. 72. otherwise known mathematical methods. having regard to prior art. the mere discovery of amended to read as follows: a new form or new property of a known substance which does not result in the "SEC. or the mere use of a known "SEC. been introduced in the Philippines or anywhere else in the world by the patent "22. or by any party authorized to use the invention: Provided. metabolites. That the "22. That. Section 72 of Republic Act No. with isomers.5. In the case of drugs and medicines. pure performed after that product has been so form. further. AND an inventive step if. is hereby of the known efficacy of that substance.2. An invention involves ACT NO. or the mere use of a known circumstances: process unless such known process results in a new product that employs at least one "72.4. isomers. AMENDING FOR THE PURPOSE REPUBLIC ACT NO. 8293 OR THE INTELLECTUAL PROPERTY CODE. Non-Patentable Inventions. is hereby drugs and medicines. Using a patented product which has new reactant. AND FOR not obvious to a person skilled in the art at the time OTHER PURPOSES of the filing date or priority date of the application claiming the invention. otherwise known substance which does not result in the enhancement as the Intellectual Property Code of the Philippines. there is no PHILIPPINES inventive step if the invention results from the mere discovery of a new form or new property of a known SEC. . (n) AMENDMENTS TO REPUBLIC ACT NO. x x x. the acts new property or new use for a known referred to in Section 71 hereof in the following substance.2. without his authorization. 9502 June 6. or with his "For the purpose of this clause. or the mere amended to read as follows: discovery of any new property or new use for a known substance. . "22. otherwise known as the Intellectual Property Code of the Philippines. right to import the drugs and medicines contemplated in this section shall be available to any government agency or any "22. owner. APRIL." commercial purpose: Provided. unless they differ significantly in shall apply after a drug or medicine has properties with regard to efficacy. particle size. x x x.

construction. construction. in consultation Property Rights (TRIPS Agreement). of a or by a medical professional. in a "72. where the act includes testing. any data related thereto. "72. In the case of drugs and medicines. "72. making or selling the invention including where the act includes testing. solely for making or selling the invention including purposes reasonably related to the any data related thereto.4. owner. activities directly related to such scientific or educational experimental use.4. of a medicine medicine in accordance with a medical in accordance with a medical "74.3 of the Agreement Property Rights (TRIPS Agreement). solely for development and submission of purposes reasonably related to the information and issuance of approvals by development and submission of government regulatory agencies required information and issuance of approvals by under any law of the Philippines or of government regulatory agencies required another country that regulates the under any law of the Philippines or of manufacture. use or sale of protect the data submitted by the original any product: Provided. in order to patent holder from unfair commercial use protect the data submitted by the original provided in Article 39. the on Trade-Related Aspects of Intellectual Intellectual Property Office. "72. Where the act consists of the pharmacy preparation for individual cases. Where the act consists of making or the invention for scientific purposes or using exclusively for experimental use of educational purposes and such other the invention for scientific purposes or activities directly related to such scientific educational purposes and such other or educational experimental use. In the case of drugs and medicines.5. on a non-commercial scale or for a non.3 of the Agreement patent holder from unfair commercial use on Trade-Related Aspects of Intellectual provided in Article 39. except the Supreme Court of the right to import the drugs and medicines Philippines. Intellectual Property Office.3. "72. in consultation with the appropriate 22 .5. prevent its immediate execution. That the "No court. in consultation shall issue the appropriate rules and with the appropriate government agencies. That it does interests of the owner of the patent. regulations necessary therein not later than shall issue the appropriate rules and one hundred twenty (120) days after the regulations necessary therein not later than enactment of this law. "72.2. JEN AND MON not significantly prejudice the economic commercial purpose: Provided. further. use or sale of another country that regulates the any product: Provided.3. the with the appropriate government agencies. That. not significantly prejudice the economic interests of the owner of the patent. Where the act consists of making or using exclusively for experimental use of "72. or by any party authorized to use the invention: Provided. in order to manufacture. APRIL. in a pharmacy or by a medical professional. using. Where the act is done privately and "74. using. The Intellectual Property Office (IPO). Where the act consists of the preparation for individual cases.4.3. All cases arising from the shall apply after a drug or medicine has implementation of this provision shall be been introduced in the Philippines or cognizable by courts with appropriate anywhere else in the world by the patent jurisdiction provided by law. That. one hundred twenty (120) days after the enactment of this law. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. shall issue any temporary contemplated in this section shall be restraining order or preliminary injunction available to any government agency or any or such other provisional remedies that will private third party.

SEC. Grounds for Compulsory Licensing. in importing country. offering for sale. x x x. 165a) and That. 93. in particular. 8293. although a patented product or a product obtained directly or capable of being worked. to the patent owner either by the exporting or even without the agreement of the patent owner. and on reasonable terms. without satisfactory indirectly from a patented process.76. 34." of the Secretary of the Department of Health. The Director General of the Intellectual Property Office. so requires.6. and Section 93. "93. 93-A. The compulsory license shall also favor of any person who has shown his capability to contain a provision directing the grantee the license exploit the invention. patent.5. 76. and 93-A. "The grant of a special compulsory license under this provision shall be an exception to Sections 100. No. to read as "76. Where the public interest. "SEC. x x x. Procedures on Issuance of a Special Compulsory License under the TRIPS Agreement. this shall not apply to instances covered by Sections 72. In case of public non-commercial use of the hereby amended to read as follows: patent by the patentee. 8293. otherwise license for the importation of patented drugs and known as the Intellectual Property Code of the Philippines. 100. 34-B. using.1. upon filing of a petition. 9. under any of the following to exercise reasonable measures to prevent the re- circumstances: exportation of the products imported under this provision.3.6 of Republic Act No.1. The special compulsory license for the hereby amended to read as follows: importation contemplated under this provision shall be an additional special alternative procedure to ensure access to quality affordable medicines and "SEC. nutrition. grant a special compulsory SEC.A. or SEC. is "93. 8293 and shall be national security. Where the demand for patented drugs and Section 74 (Use of Invention by Government). INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. otherwise known as the Intellectual Property Code of the Philippines. (Secs. .4 (Limitations of Patent Rights).6. or the use of a reason: Provided. 8293. health or the immediately executory." License under the TRIPS Agreement) of this Code. A new Section 93-A is hereby inserted after Section "76. or importing in the Philippines on a commercial scale.1 of Republic Act No. Where a judicial or administrative body has section within one hundred twenty (120) determined that the manner of exploitation by the days after the effectivity of this law.2. as determined by the A (Procedures on Issuance of a Special Compulsory Secretary of the Department of Health. 34-A. R. "SEC. JEN AND MON government agencies. without satisfactory reason. APRIL. . selling. 10.1.6 (Compulsory Licensing). 11. Civil Action for Infringement. Section 93 of Republic Act No. Section 76. follows: "76. medicines is not being met to an adequate extent Section 93. x x x. "93. shall issue the economy as determined by the appropriate agency appropriate implementing rules and of the Government. or regulations for the use or exploitation of patented inventions as contemplated in this "93. otherwise known as the Intellectual Property Code of the Philippines. That adequate remuneration shall be paid may grant a license to exploit a patented invention. development of other vital sectors of the national 23 .4.4 and "93. National emergency or other circumstances of extreme urgency. upon the written recommendation "76.5. is medicines.4.3. If the patented invention is not being worked making." owner of the patent or his licensee is anti- competitive.1 and 72. x x x.2. 93 of Republic Act No. The "93. - "76. shall. That the importation of the patented process without the authorization of the patented article shall constitute working or using the patentee constitutes patent infringement: Provided.The shall be primarily for domestic consumption: Director General of the Intellectual Property Office Provided. x x x.

14. It is also without prejudice to the extent to which drugs and medicines produced under a "95. otherwise 93.1 of this Act and of off-patent hereby amended to read as follows: drugs and medicines. is any time after the grant of the patent. where the government or contractor.3. Except in cases SEC. 8293. 13. is "95. Section 147 of Republic Act No. 165)" "SEC.1.1 and Section 74 of the as determined by the Secretary of the Department Intellectual Property Code. is under Section 72.94. A compulsory license shall also be available "95.5 before the expiration of a period of four (4) years from the date of filing of the application or three (3) "95. The license the course of trade identical or similar signs or 24 . particularly Section 72. SEC.2. 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. R. Section 94 of Republic Act No. Rights Conferred. and "93-A. without hereby amended to read as follows: making a patent search.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. 34(1). 12. 147. "(c) In cases of public non-commercial use.6 and Section 97 may be applied for at known as the Intellectual Property Code of the Philippines. Period for Filing a Petition for a Compulsory by or for the government. That.1. otherwise of importation of drugs and medicines allowed known as the Intellectual Property Code of the Philippines. 95. In the case of public non-commercial use. as expires last. within a reasonable period of time. 94. . country or such country has. laws. 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. otherwise known as the Intellectual Property Code of the Philippines. the right holder shall be License. knows or has demonstrable grounds to know that a valid patent is or will be used "SEC. Section 95 of Republic Act No. 93. a to remedy a practice determined after judicial or compulsory license has been granted by such administrative process to be anti-competitive.2. Requirement to Obtain a License on parties not having the owner's consent from using in Reasonable Commercial Terms. except the Supreme Court of the will only be granted after the petitioner has made Philippines.2. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. APRIL.5. determined by the Secretary of the Department of Health." shall be notified as soon as reasonably practicable. the owner of a registered mark shall have the exclusive right to prevent all third "SEC. 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. SEC. A compulsory license may not be informed promptly. A compulsory license which is applied for on any of the grounds stated in Subsections 93. (Sec. the right holder the TRIPS Agreement and applicable laws. JEN AND MON "No court. "93-A. . 8293. and 93. the right holder shall be informed promptly. 8293. by notification or otherwise.3. . Act.1.4. The requirement under Subsection 95. as amended under this of Health. shall issue any temporary restraining efforts to obtain authorization from the patent order or preliminary injunction or such other owner on reasonable commercial terms and provisional remedies that will prevent the grant of conditions but such efforts have not been successful the special compulsory license.2. 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.4.147. hereby amended to read as follows: A. In situations of national emergency or other compulsory license can be exported as allowed in circumstances of extreme urgency.95. (n) applied for on the ground stated in Subsection 93.3. No." "94.

"147. the Intellectual Property Office. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. a likelihood of confusion shall be presumed." SEC. 8293. otherwise known as the Intellectual Property or similar to those in respect of which the trademark Code of the Philippines. in coordination with the Department of Health and the Bureau of Food and Drugs." SEC. - Notwithstanding any other provision of this Act. APRIL. x x x.Unless otherwise provided herein. Limitations to Actions for Infringement. x x x.2. shall issue and promulgate.1 of this Act.1 of this Act. under Section 155 of this Code. or infringed upon as defined under Section 155 of this Code. That. is registered where such use would result in a likelihood of confusion. as well as imported or sold off-patent drugs and medicines: Provided. the remedies given to the owner of a right infringed under this Act shall be limited as follows: "159. and "159. 159. 15. 8293. the implementing rules and regulations to effectively implement the provisions of this Act that relate to Republic 25 . is hereby amended to read as follows: "SEC. unlawfully modified. "There shall be no infringement of trademarks or tradenames of imported or sold patented drugs and medicines allowed under Section 72. as well as imported or sold off-patent drugs and medicines: Provided. or infringed upon. .1.3 x x x. 16. "159. That said drugs and medicines bear the registered marks that have not been tampered. "159. In case of the use of an identical sign for identical goods or services. Implementing Rules and Regulations on Amendments to Republic Act No.4 There shall be no infringement of trademarks or tradenames of imported or sold drugs and medicines allowed under Section 72. otherwise known as the Intellectual Property Code of the Philippines. otherwise known as the Intellectual Property Code of the Philippines. JEN AND MON containers for goods or services which are identical Act No. within one hundred twenty (120) days after the enactment of this Act. Section 159 of Republic Act No. said drugs and medicines bear the registered marks that have not been tampered. unlawfully modified.2 x x x. 8293.

want to avoid.. (e) Dramatic or dramatico-musical compositions. an activity (d) Letters. How did John Locke opposed that argument? • servicemarks. (b) Periodicals and newspapers. Literary and Artistic Works. IP Code) the things in this world can be exhausted? There are inexhaustible objects Sec. properties which no one • industrial design. By using labor they can • utility model. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. APRIL. what is the basis of granting property to Instrumental – unpleasantness of labor should be labor? rewarded with property because people must be motivated to perform labor There are 2 interpretations of John Locke’s theory. something evil about it? • patent. whether or not Depicts labor as something which people avoid or reduced in writing or other material form. hereinafter referred to as "works". dissertations What is the Avoidance View of Labor? prepared for oral delivery. It will result to inequality • copyright. 172. articles and other writings. 26 . • tradename. 172. - 172. something they don’t like. what are Normative – unpleasantness of labor should be these two interpretations? rewarded with property Instrumental and Normative interpretation Our intellectual property laws were based on the US Constitution and American Jurisprudence. JEN AND MON FINALS What about the Value Added Theory? That when labor produces something of value to IPL6 others. (c) Lectures. they engage in because they must choreographic works or entertainment in dumb shows. are original intellectual creations in the literary and What are the 2 theories regarding labor? artistic domain protected from the moment of their creation The Avoidance View of Labor and The Value Added and shall include in particular: Theory (a) Books. addresses.. do i need to have a The enough and as good condition certificate of copyright registration before I can be protected? No. pamphlets. the laborers deserve some benefit for it What is the labor theory of property according to John Locke? Distinguish the Normative and Instrumental interpretation According to Locke. The power of the What is the nature of labor that needs it to be rewarded with Congress to grant intellectual property rights. with or without words. at first. exerting labor upon it. Because copyright protection is given from the What is the enough and as good condition? Do you think all moment of creation (Sec.1 Literary and artistic works. (f) Musical compositions. appropriate the property What is the distinction between Ideas and form of expression? What is that condition according to John Locke? If I have an intellectual creation. That there are. is that property? constructed under the normative or instrumental Because labor is unpleasant interpretation? Is the US Constitution was drafted under normative or instrumental interpretation? Are all kinds of labor unpleasant? Is idea making labor? Or is Instrumental interpretation it a recreation? How do you know if a certain activity is labor? How do you characterize an activity to be a labor? Why? Since the Congress is given the power to grant Who is the author of a view which is opposed to John Locke? intellectual property rights in order to promote the Karl Marx progress of science and the useful arts. Intellectual property rights are granted to motivate the artists or What is Karl Marx’s theory as opposed to John Locke’s? scientists to perform labor That property should be owned in common What are the different intellectual property rights? Why is he against giving individual property? Is there • Trademark. owned and that individuals may appropriate it by • trade secrets. sermons.

No. arrangement or other transformation of the work. charts and three-dimensional works relative to geography. . Can your ideas be adopted by another person (sa example ni CASE: SAMBAR v. JEN AND MON (g) Works of drawing. then. APRIL. engraving. irrespective of the ownership of the literary and artistic domain original or the copy which is the subject of the rental. 177.2. Ong have a certificate of copyright sculpture. in China. The SC said that Mr. topography. IP Code (Memorize) If the work is protected from the moment of creation. Ong does not have a right even if he is a (l) Audiovisual works and cinematographic works holder of certificate of copyright registration. why is there a need for registration? Sec. 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. Public display of the original or a copy of the work. maps. translation. 177. painting. architecture or science. Rental of the original or a copy of an audiovisual or It lacks literary and artistic value. and 177. and other Which office issued it? works of applied art. “may the force be with you”). 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. adaptation. In this case irrespective of their mode or form of expression. design by Ceroil. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. publisher or the producer? Is there a two dragon design? copyright infringement? Yes (Sec. Ong has a right. Remember that cinematographic work. sketches. plans. The works. scholarly. Ong is the original their content.4) 27 . do not deserve copyright protection? 177. creator. Before the court can grant an injunction. because ideas are not protected It must be an original creation When does your idea deserve a protection? CASE: SANTOS v. authorize or prevent the following How do you distinguish patent from a copyright? acts: Lines from a movie (ex. And when there is no (o) Other literary. scientific and artistic clear legal right there is no basis for injunction. CASE: CHING KIAN CHUAN v. can it be 177. Mr. and whether Mr.Subject to the provisions of Chapter VIII. it is now doubtful (n) Computer programs. The National Library (i) Illustrations.4.6.7. 177. 177. lithography or other works registration over the two dragon design. what are the two (j) Drawings or plastic works of a scientific or requisites? technical character. copyright or economic rights shall consist of the exclusive right to carry out. architecture.5. Public performance of the work. lantern slides. a work embodied in a sound recording. 177. 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.2 Dramatization. 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. a computer program. quality and purpose. Yes. abridgment.3. as well as of it does not appear that Mr. existing copyright registration of the two dragon (m) Pictorial illustrations and advertisements. It must establish injury and a clear legal right (k) Photographic works including works produced by a process analogous to photography. whether or not registrable as an industrial design. a compilation of data and other materials or a copyright works are those that forms part of the musical work in graphic form. can anyone adopt the same idea? protection? Yes. (h) Original ornamental designs or models for design use by Mr. original form is the one that is protected. LEVI STRAUSS sir. ung idea of highlighting)? The idea of carwashing.1. CA 177. models or designs for works of art. Reproduction of the work or substantial portion of the the object of copyright protection? work. Tan articles of manufacture. the same of art. Copy or Economic Rights. (n) 177. using a What did the SC say about the requirement for copyright machine. Works are protected by the sole fact of their creation. SC also said that the author of the a work in its 172.

abridgment. for non-profit purposes. and public. 49. . for profit-making purposes.3) arrangement or other transformation of the work. works employed or any part thereof. What are the derivative works under the Intellectual Property 177. abridgments.In addition to the right to 172.5. irrespective of the ownership of the Sec. 173. architecture. painting. . Chapter VIII. adaptation. irrespective of the ownership of the original or the copy which is the subject of the rental. 2.Subject to the provisions of original or the copy which is the subject of the rental. Copy or Economic Rights. whether or not reduced in writing or other The movie “Dear John” as adapted in the novel of material form. Other communication to the public of the work Sec.1. and compilations of data and other materials which are original by reason original or a copy of a work or a sound recording for of the selection or coordination or a limited period of time.3. and Code? 177. choreographic works or What about abridgment of a work? entertainment in dumb shows. TRIPS) require the permission of the author? Sec. a compilation of data and other materials or a musical work in graphic form.6. such as public library or archive while (b) Collections of literary. A novel by Shakespeare. translation. limited period. 177. Give an example of adaptation of literary work.4. . JEN AND MON 177. [P] and [Q]. public distribution of the original and each copy of 177. D. addresses. the work (Sec. arrangement of their contents. 177. the same title. arrangements. 177.1. a work embodied in a sound recording. sermons. dissertations prepared for oral delivery. authorize or prevent the following acts: If I buy a book from National Bookstore and I resell it. articles and other Are derivative works protected as copyrights? writings. YES. Art. (Sec.1 shall be protected as a new works: for free. (f) Musical compositions. a computer program. do I need to ask permission from the writer of the Provided however. engraving. 8. D.4. Rental of the original or a copy of an audiovisual or What’s the meaning of copyright or economic right? cinematographic work. with or without words. No. (e) Dramatic or dramatico-musical compositions. lithography or other 28 . Published Edition of Work. APRIL. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. his heirs or assigns. adaptations. Public display of the original or a copy of the work. That such new work shall not affect novel so that I will not be liable for copyright infringement? the force of any subsisting copyright upon the original No. - Sec. The first public distribution of the original and each copy of 177. Rental of the original or a copy of an audiovisual or the work by sale or other forms of transfer of ownership. by an and other alterations of literary or artistic institution the services of which are available to the works. 172. The following derivative works shall also be “Public lending" is the transfer of possession of the protected by copyright: original or a copy of a work or sound recording for a (a) Dramatizations. 49) 173. Reproduction of the work or substantial portion of the No. abridged version. particular: (a) Books. or to secure or extend copyright in such original works.7. is there a copyright infringement? 177. hereinafter referred publish granted by the author. (c) Lectures. (d) Letters. 10. Public performance of the work. or be construed to imply any right to such use of the original works. 174. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership. (g) Works of drawing. are original intellectual creations in the shall have a copy right consisting merely of the right of literary and artistic domain protected from the reproduction of the typographical arrangement of the published moment of their creation and shall include in edition of the work. Literary and Artistic Works. a compilation of data and other materials or a IPL7 musical work in graphic form. a work embodied in a sound recording.2. a computer program. Is there a difference rental of a work and public lending of a work under the IPL? 173. translations. P. 177. Because copyright belongs only to the first work.3. sculpture. Derivative Works. What are the works that are rented out for profit which (Sec. (n) 177. pamphlets. P. cinematographic work. copyright or economic rights shall consist of the exclusive right to carry out. (b) Periodicals and newspapers. scholarly or "Rental" is the transfer of the possession of the artistic works.2 Dramatization.1 Literary and artistic works. The works referred to in paragraphs (a) and (b) I bought 1000 copies of a novel and I decided to rent them out of Subsection 173. the publisher to as "works".

work. audience are persons outside the normal circle of a (i) Illustrations. and.An author may waive his Musical. D. or other derogatory action in relation the normal circle of a family and that family’s closest to. quality and YES. 49) 29 . in particular. or at different version of his work. 193. would substantially tend to injure the literary or artistic reputation of Those which are graphic in form. 35. performance. his work which would be prejudicial to his honor or reputation. (Sec. P. P. different times. *If I perform before a substantial number of individuals (l) Audiovisual works and cinematographic beyond the outside the normal circle of a family and my works and works produced by a process family’s closest social acquaintances. making the recorded sounds 193. scientific and artistic works. and social acquaintances are or can be present. APRIL. Breach of Contract. P. be indicated in a prominent way process.1. 195. 172. D. but no such waiver shall be valid where its effects is to permit another: visual or motion picture. topography. they are or can be present at the same place and at (j) Drawings or plastic works of a scientific the same time. or the title of his and rendition of a literary piece.The author of a work shall. the right that his name.* (m) Pictorial illustrations and advertisements. 36. D. What are the works that can be publicly displayed? because of alterations therein. irrespective of their mode or form of does this extend to both musical work and sound recording? expression. Is there a difference between musical work and sound (n) Computer programs. To restrain the use of his name with respect to irrespective of whether they are or can be present at any work not of his own creation or in a distorted the same place and at the same time. plans.3. To use the name of the author. To make any alterations of his work prior to. . JEN AND MON works of art. No. scholarly. or at different places and/or at or technical character. 193. models or designs for works of If I sing a song in front of my family is that a public art. To object to any distortion. and where the Sec. rights mentioned in Section 193 by a written instrument. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. To use the name of the author with respect to a work he did not create. acting or otherwise performing the attributed to him. mutilation or other audible at a place or at places where persons outside modification of. as well as of their content. . another author. in the case of an audiovisual work. public performance of a work? independently of the economic rights in Section 177 or the grant YES. of a sound recording. (k) Photographic works including works produced by a process analogous to photography. in the case to withhold it from publication. However. either directly or by means of any device or as far as practicable. family and that family’s closest social acquaintances charts and three-dimensional works relative to geography. architecture or that are or can be present. right: 193. lantern slides. 2.2. because public performance means that the other works of applied art. 49) What are the works that can be publicly performed? Sec. purpose. have the other than an audiovisual work.2." in the case of a work of an assignment or license with respect to such right. sculpture and murals. (Sec. dramatical. No. performance? Or I invited all my relatives and my best friend (h) Original ornamental designs or models for articles of manufacture. literary. 49a) Is there a difference between public display of a work and What are the so called moral rights of the author? Sec.4. pantomine works. work. . he may be held liable for 171. maps. No. is that a public performance? registrable as an industrial design. To require that the authorship of the works be playing. creation.An author cannot be compelled to performance can be perceived without the need for perform his contract to create a work or for the publication of his communication within the meaning of Subsection work already in existence. 49) places and/or at different times. irrespective of whether science. P. and recording? (o) Other literary. then that is public analogous to cinematography or any process for making audio-visual recordings. 194. (Sec. No. and No. audio. or otherwise to make use of his reputation with respect to any version or adaptation of his work which. dancing. choreographic.2. Examples are the singing of the Philippine National Anthem 195. Scope of Moral Rights. and in connection with the public use of showing of its images in sequence and the making of his work. whether or not to watch me. the on the copies.1. (Sec. 195. sketches. is the recitation. or Examples are painting. D. Waiver of Moral Rights. damages for breach of such contract. "Public performance. Works are protected by the sole fact of their This right to public perform belongs to the copyright owner. 193. 34.3. or the sounds accompanying it audible.

No. employer. copyright shall belong to the author of the work. principle. 9. and dissertations. Editing. P. of original copy of the work is copying. discovery or mere data as such. provisions of Sections 172 and 173. No copyright shall subsist in any work of the or adaptation of such work. "Person" shall of any work in which copy right is subsisting be taken mean any individual. 176. dramatization. JEN AND MON even if they are expressed. (Sec. no protection shall extend. concept. broadcast. 197. D.1. corporation. lectures. P. The person or persons to be charged preceding paragraphs shall have the exclusive right of with the posthumous enforcement of these rights shall making a collection of his works. Rules on Copyright Ownership. No prior approval or conditions unconditionally transferred by the author be deemed to violate shall be required for the use of any purpose of such rights.2. 49) Section.1. APRIL. prior motion picture. in deliberative assemblies and in meetings of public character. 178. - absence of a contrary stipulation at the time an author licenses or permits another to use his work. the co- Give example of copying which is not reproduction. No. administrative or legal nature. unless there is an agreement. 49) What are the rules on ownership of copyright? Is there a difference between reproduction and copying? Sec. illustrated or embodied in a Sec.3. to cause any abridgment or annulment of the association. and speeches.1. In the case of a work-commissioned by a person operation. If. nor shall publication or National Library. infringement of a work. Such agency or office may. Arranging and Adaptation of Work. such Government is not precluded from receiving and enforcement shall devolve upon either the author's holding copyrights transferred to it by assignment. the necessary editing. the author of each part shall be the original public performance of work is copying. facilities and materials of the author. The Director of the National copyright or to authorize any use or appropriation of Library may prescribe reasonable fees to be charged such work without the consent of the copyright for his services in the application of provisions of this owners. pronounced. No. republication by the government in a public document 198. 178. In the case of work created by an author during and in the course of his employment. addresses. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. and dissertations mentioned in the subject to license.Copyright ownership Reproduction is the making of one (1) or more shall be governed by the following rules: copies of a work or a sound recording in any manner 178. 49) last during the lifetime of the author and for fifty (50) 176. First Par. case of original literary and artistic works. lectures. No.. sermons. rules and regulations. D. sermons.2. The right to 178. system method or 178. shall not be deemed to contravene the author's rights among other things. (n) be named in writing to be filed with the National 176. (b) The employer. and in default of the heirs. in the or form. (Sec. Sec. Works of the Government. heirs. explained. D. or any official text attributed to him is deemed waived unless he expressly reserves of a legislative. or mechanical or electrical approval of the government agency or office wherein reproduction in accordance with the reasonable and customary the work is created shall be necessary for exploitation standards or requirements of the medium in which the work is to of such work for profit. if the work is the result of What works are not protected? the performance of his regularly-assigned Sec. In the case of works of joint authorship. (Sec. (Sec. . Subject to the provisions of this section.In the Sec. use in a Government of the Philippines. public display owner of the copyright in the part that he has created. (n) Sec. Contribution to Collective Work.Notwithstanding the duties. For purposes of this Section.When an author work. 198. D. 9. to any idea. 49) official translation thereof. as well as any it. Third Par. to the contrary. partnership. the Director of the bequest or otherwise. 198. other than an employer of the author and who pays for 30 . (a) The employee. 37.3. D. However. if the creation of the So the broader term is copying and the right to object of copyright is not a part of his reproduce is only a part of the economic right of the regular duties even if the employee uses the time. The rights of an author under this chapter shall No. years after his death and shall not be assignable or addresses. the identified. Term of Moral Rights. 175. impose as a condition the secured by this chapter. Nor shall complete destruction of a work payment of royalties. . The Author of speeches.. however. In default of such person or persons. the Library. or society. Is copying authors shall be the original owners of the copyright reproduction? Is reproduction copying? and in the absence of agreement. (Sec. be used. his right to have his contribution character of mere items of press information. . P. 196. the copyright reproduce is only a part of the economic right of the shall belong to: author but copying a work amounts to infringement. . Notwithstanding the foregoing provisions.4. before administrative agencies. P. P. under this law. their rights shall be Reproduction is only one form of copyright or governed by the rules on co-ownership. express or implied. . 39. 49) statutes. a work of joint authorship consists of parts that can be economic right of the copyright owner but copying used separately and the author of each part can be includes all the others. read or rendered in courts of justice. for publication. Unprotected Subject Matter. arranging 176. procedure. news of the day and other miscellaneous facts having the contributes to a collective work. 38.2.

the person who so commissioned the greeting cards.An assignment or authorship.6. to the contrary. use. if the scenario. In the case of work created by an author 178. The copyright is not deemed assigned inter vivos in whole or in part unless there is a written Reyes is an artist employed by the company to draw sketches indication of such intention. here to be the reproduction of the code and translation of the express or implied. Ms. unless the contrary appears. an extent required for the exhibition of the work in any manner. Notice of the record shall be published in the authorship consists of parts that can be used IPO Gazette. and similar purposes is not an infringement of copyright. photographic or authors or under pseudonyms. or if the author of the anonymous works discloses his single publication unless a greater right is expressly identity. D.5. Decompilation. Reyes is an employee of a law firm. and the author of the work so adapted. B owns chapters 1 to 5 while Mr. during and in the course of his employment. the producers shall exercise the copyright to facilities and materials of the employer. 49) owns the book? Both of them. P. Reyes. Who owns the copyright of the greeting work shall have ownership of work. who owns the 15. comment. the author of each part shall be the Sec. Rights of Assignee. the co-authors shall be the original exclusive license may be filed in duplicate with the National owners of the copyright and in the absence of Library upon payment of the prescribed fee for registration in agreement. In the case of audiovisual work.The copyright owners or their original owner of the copyright in the part that he heirs may designate a society of artists. who of the work imply transfer or assignment of the copyright. and 180. the copyright shall belong part. P. . 179. D. subject to their stipulations. a copy rules on co-ownership. If. 181. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. 49a) assignor had with respect to the copyright.The copyright is distinct from the property in the material object subject to it. 183. 180. D. writers or composers to has created. or the artistic work to a newspaper. (Sec. (Sec. The copyright may be assigned in whole or in 178. a work of joint of the instrument shall be. (Sec. Anonymous and Pseudonymous Works. If two (2) or more persons jointly own a copyright or any part thereof. creators. unless there is a cards? written stipulation to the contrary. the copyright during and in the course of his employment. Copyright and Material Object. the film director. with or without words. enforce their economic rights and moral rights on their behalf. granted. teaching including multiple copies for classroom the result of the performance of his regularly. the assignee to the writer subject to the provisions of Article 723 of is entitled to all the rights and remedies which the the Civil Code. 180. No. neither of the owners shall be entitled to grant licenses without the prior A book was written by A and B. unless there is an agreement. their rights shall be governed by the books and records kept for the purpose. of articles and other writings published without the names of the 180. In respect of letters. The copyright is not deemed assigned inter Sec. the author of the copyright shall belong to the employee. Her hobby is to make commission. Mr. In the case of work created by an author Give the rules on Fair Use of a Copyrighted Work. 16. APRIL.For purposes of vivos in whole or in part unless there is a written this Act. the publishers shall be deemed to represent the authors indication of such intention. copyright shall belong to the employer. JEN AND MON it and the work is made in pursuance of the Ms.1. 6. The fair use of a copyrighted work for criticism. compositions. scholarship. 5 while Mr. Within the scope of the assignment. 49a) separately and the author of each part can be identified. (Sec.1. not itself constitute a transfer of the material object. 49a) copyright of the book? Sec. P. P. forms of the computer program to achieve the inter-operability of an independently created computer program with other programs may also constitute fair use.3. except for the right to collect performing license fees for the performance of musical Give the rules on TRANSFER OR ASSIGNMENT OF COPYRIGHT. Mr. No. Nor shall a transfer or assignment of the sole copy or of one or several copies What if there is no division or designation as to chapters. for the cards. D.2. However. Designation of Society. returned to the sender with a notation of the fact of record. the composer of the music. No. In determining whether the use 31 . The submission of a literary. Who owns the copyright of the cards? Hallmark. but the copyright thereto shall remain with the creator. which are Sec. the transfer or assignment of the copyright shall chapters 6 to 10. which is understood assigned duties. if the work is news reporting. A authored chapters 6 to 10. . B authored chapters 1 to written consent of the other owner or owners. Upon recording. In the case of works of joint Sec.2. research. A owns Consequently. 182. 180. however. the shall belong to the producer. creation of the object of copyright is not a part of his subject to contrary or other stipulations among the regular duties even if the employee uses the time. Hallmark Company is a maker of greeting cards and Ms. Filing of Assignment of License. - incorporated into the work. 19. magazine or periodical pseudonyms or adopted name leaves no doubts as to the author’s for publication shall constitute only a license to make a identity. . the 185. . No.

D. D. expressly reserved: Provided. cinematography COLLECTION OF works? or broadcasting to the extent necessary for Sec 171. Third Par. COLLECTION OF works (f) The recording made in schools. That such recording may not be 32 . P. finding of fair use if such finding is made upon consideration of all scientific or professional institutions where the above factors.2 the purpose. if such direction of another with the understanding that it inclusion is made by way of illustration for will be disclosed by the latter under his own name teaching purposes and is compatible with and that contributing natural persons will not be fair use: Provided. APRIL. (i) The public performance or the What are the LIMITATIONS ON COPYRIGHT? communication to the public of a work. including feature films except for brief excerpts of the whether such use is of a commercial nature or is for work. direction or control of the Government. 10(1). 49) COLLECTIVE work is a work created by 2 or more (e) The inclusion of a work in a publication. (a) the recitation or performance of a work. 49) of professional advice by a legal (c) The reproduction or communication to practitioner. if (k) Any use made of a work for the purpose appearing on the work. including quotations from displayed has been sold. are mentioned. P. television image or otherwise on (b) The making of quotations from a screen or by means of any other device or published work if they are compatible with process: Provided. 49) slide. whose aim is not profit making. JEN AND MON made of a work in any particular case is fair use. lectures. the work not made by means of a film. That the source is clearly indicated. the public by mass media of articles on 184. That such recording None. D. Limitations on Copyright. given away or newspaper articles and periodicals in the otherwise transferred to another person by form of press summaries: Provided. No. a broadcasting organization by means of its (c) The amount and substantiality of the portion used own facilities and for use in its own in relation to the copyrighted work as a whole. by 185. place where no admission fee is charged in 184. and the source and the name of the author. 49) IPL8 (d) The reproduction and communication to the public of literary. . which are normal exploitation of the work and does not delivered in public if such use is for unreasonably prejudice the right holder's legitimate information purposes and has not been interest. or educational institutions of a Is there a agreement in collection of work that the contributor work included in a broadcast for the use of will not be identified? such schools. respect of such public performance or the following acts shall not constitute infringement of communication. universities or educational institutions: Provided. that original or the copy the purpose. (Sec. 12. scientific or artistic What are the distinctions between COLLECTIVE work and works as part of reports of current events by means of photography. P.2 The fact that a work is unpublished shall not by itself bar a the National Library or by educational. further. in a Sec. 11. by a club or institution for copyright: charitable or educational purpose only.1. economic. of any judicial proceedings or for the giving (Sec. non-profit education purposes. are mentioned. (Sec. No. such use is in the public interest and is compatible with fair use. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. and broadcast. No. No. (n) charge or if made strictly for a charitable or (j) Public display of the original or a copy of religious institution or society. P. That the author or his successor in title.2. natural persons at the initiative and under the broadcast. D. if appearing in the work. or other communication to the public. (g) The making of ephemeral recordings by (b) The nature of the copyrighted work. The provisions of this section shall be current political. the factors to be made from audiovisual works which are considered shall include: part of the general cinema repertoire of (a) The purpose and character of the use. sound recording or film. Notwithstanding the provisions of Chapter V.. scientific interpreted in such a way as to allow the work to be or religious topic. (d) The effect of the use upon the potential market for (h) The use made of a work by or under the or value of the copyrighted work. That either the work has fair use and only to the extent justified for been published. addresses and used in a manner which does not conflict with the other works of the same nature. must be deleted within a reasonable period after they were first broadcast: Provided. 11. That the source and of identified the name of the author. social. universities. if done privately and free of the Regulations. subject to once it has been lawfully made accessible to such other limitations as may be provided in the public. 184. (Sec. or.

public by wire or wireless means in such a way that members of the public by wire or wireless means “in Is this a public performance or a private performance? such a way that members of the public may access Public performance because the law says that “… at these works from a place and time individually a place or at places where person outside the chosen by them (at the option of the viewers. Jean Marion attended and left thereafter. Give an example of audiovisual work communicated to the public and publicly performed. What is the difference between DERIVATIVE WORK (Sec 173) On March 14 there is going to be a boxing match and COMPILATION OF DATA (Sec 173. 3 parts because in the 1 part the pianist nd public performance? will play compositions of Chopan. It will composed of 3 parts but you only get 1 ticket to st considered only as communication to the public and not enter the concert.. JEN AND MON In collective work and collection of works are all the works Public performance. can have access to this works at the time of your own choosing. will you consider it public performance or communication to the public? The provision states…Literary or artistic works under Communication to the public because you the chapter of original works (Chapter II). b. Yes.3) and PUBLIC PERFORMANCE (Sec 171. What is the difference? Communication to the public or communicate to the Is this a public performance or communication to the public? public means the making of a work available to the Public performance. APRIL. works COMPILATION OF DATA are original by reason of the Will you consider this communication to the public or selection or coordination or arrangement of their public performance? contents.1) HBO Sport Channel.6)? 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 Is a showing of a motion picture or audiovisual work pm. In the 2 part the family rd which have different definitions.” “the public may access the works from a place and time individually chosen by When we say “work. 33 . can be present. What is the difference between COMMUNICATION TO THE PUBLIC (Sec 171. The 3 part was attended the family of Ms. When you speak of “work” does that refer to original works or derivative works? If the boxing match will be shown later in youtube by the moment of their creation (Sec 172. These are two different terms attended. of Ms.7. Masilungan. because of the term “ work. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA.” what does it mean? them.. They left after the 1 part. In the 1 part only the family of Ms.” normal circle of a family and that family’s closest social acquaintances are or can be present at the How about AUDIOVISUAL work can it be publicly performed or same place and at the normal circle of a family and only communicated to the public? that the family’s closest social acquaintances are or It can be both.1.” If it show to the public on certain This refers to “original” intellectual creations in the time then definitely the public cannot have literary and artistic protected from access on it from a place and time in their own choosing. these families can be present at the same place at the same time.” • For public performance • For communication to the public: Here.)? between Pacquiao and Clottey and it will be shown DERIVATIVE works are works derived from original in various theaters nationwide from 9 am until 1 pm.6 public performance different from composition of Mozart and in the 3 part the composition of st other communication to the public of the work Rachmaninov. in the 2 part the rd Under Sec 177. irrespective of whether they are or can be present at the same place and at the same Can you give an example to show the difference between the time. Pizaña st nd under Sec 177. or at different places and/or at different two? times. If you look at the capable of protection or copyright? definition of communication to the public.

1 a. assigned inter vivos in whole or in part unless there is a written indication of such intention (Sec 180. Individually these works can protected by copyright. You don’t need intellect to generate a fact.” If you publicly perform. Can a copyright or economic right be subject of an assignment? In Collection of works.1 (i). Compilation of data and other materials. Sec 172. materials” therefore the data and materials of which Ponce and the economic right to publicly display the work be the compilation is composed of are not individually assigned to Ms. does the author have the right to limit the access or the rd use by 3 persons? What about the book “Letters of Ronald Reagan?” Yes because the author has the right to reproduce. Is the Pyramid of Giza capable of copyright protection? Are data and other materials in compilation of data Yes. coordination or arrangement of data and system. protection. It is a present is selection. Compilation of data are original by reason of arrangement or Give example of derivative work per se. The right to prevent the use by a 3 What about Encyclopedias? person is not part of the copyright of the author. Unprotected Subject Matter. Telephone directory. The copyright not deemed copyright protection. It is not part of the copyright or economic right rd of the author. mentions architecture. recasting or adaption of the from derivative works. does not mention “works” but it mentions “data and other Can the economic right to publicly perform be assigned to Mr. Ponce and the right to publicly perform to Ms. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. What is capable of copyright Bermudez? protection is the arrangement. selection or Yes in both cases. Both are because letters per se can be capable of copyright new works. are considered works. compilation of facts.2 these works are protect as new works. The rights of the author under the chapter on Give an example of compilation of data and other materials. Derivative works are capable of protection because of the Can the right of the author to object to any form derogatory internal change of the original work. 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 FEIST CASE others from reading it? Can the composer of the song prevent another from singing it? *Books under Sec 172. Therefore although the author has no 34 . Under IP Code Sec 172 works are considered as What is the requirement for the assignment to be valid? the original intellectual works or creations afforded It must be in writing.2). The copyright may be assigned in coordination of data and materials. “Letters. Sec 172 d. Is food pyramid capable of copyright protection? In compilation of data there is no internal change what is No. Sec 175. are the works individually capable of Yes copyright protection? Yes. They are also new works. Pizaña? Can the right to reproduce be capable of copy right protection. display. whole or in part (Sec 180. Adaptation of a book through motion picture. Moral Rights…shall not be assignable or subject to Catalogs license (Sec 198. Collection of works. Derivative work are original work but are derived from *Collection of works is under derivative works but another. They are merely assigned to Mr. No. Thes are only facts gathered. But. original work.1). concept… other materials. Therefore derivative work have internal changes by technically speaking collection of works is different process of transformation. APRIL. coordination.1). individually protected as copyright? No. to first public distribution compile letters it becomes a collection of work of the work. JEN AND MON Under 173. action be assigned? No. idea.

I wrote a poem that is exactly similar as that of Homer’s Iliad and Odyssey. returned it to the library. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. 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. Not necessarily that you are the owner of This is why the law says “copy”right not reproright. because public performance or public the original author of the work. Assuming I have photographic memory. Will I be held liable for infringement? No because novelty is different from originality. If I can prove that I never heard or read about Homer’s Iliad and Odyssey then I’m also the creator INFRINGEMENT of Iliad and Odyssey. 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. Infringer will not 2) 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. APRIL. 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. he is not Example: the owner. until and unless you deposit Is copying necessarily reproduction? it with the national library or SC library that you are No. the work but that you are the original author of the Copying is a broad term is encompasses all 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. by direct evidence? he is not the owner. No. announce to the public that he copied it. It is rarely possible. It proves that you are the original author. Homer’s Iliad or Odyessy. I st read a book from the 1 page to the last Is originality different from novelty? page and memorize everything and Yes. In a piece of paper st I wrote everything down from the 1 page Example: I love poems. If you reproduce a book that is reproduction and copying at the same time. If the author is not the original creator. Copyrightable subject matter. Originality. Why? Because no one knows. 35 . I’ve never read heard of to the last page. 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. presumption is that you are the original author of the work. 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 the author is not the original creator. bundle of rights called copyright or economic right. Is this copying? Yes.

What is FAIR USE? What are the activities that are considered fair use? Is he liable for copyright infringement? The fair use of a copyrighted work for: No. c) The amount or substantiality of the portion used in st relation to the copyrighted work as a whole. They have different potential market. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. I copied use. The motion picture that I made became a • research and block buster hit in Holly Wood. not the musical notes. Is there an infringement? • Decompilation…the reproduction of the code and th translation of the forms of the computer program to A good defense to an infringement case is fair use.1). I am a producer of a film. I By proving the “substantial” similarity. How can you prove that I copied the work? borrowed a speech from or song of Senator Villar. One who buys music in graphical whether such use is for a commercial nature or is for form buys it because he wants to buy a piano or organ or non-profit education purposes. • criticism. The market for music in graphical form is a) The purpose and character of the use. guitar. • other similar purposes is not infringement of copyright. I will also make There is no such thing as decompilation of data and an argument that because of the motion picture the value of other materials. Potter. APRIL. Ponce is engaged in song hits business. • comment. What are the 4 FACTORS to be considered in determining nd whether there is fair use? 2 Example. I I am a comedian in comedy bar. But one who buys song hits only wants to use it for b) The nature of the copyrighted work singing. Therefore I can make decompilation of computer programs. If there is no effect then there is no fair use. as fair use. 36 . JEN AND MON How can you prove that I copied the work? Example 1: Even if I don’t have photographic memory. Example 3 • news reporting. You are my borrowed a book and secretly copied the contents of audience and my duty is to make you laugh. or value of the copyrighted work (Sec 185. The 4 achieve the inter-operability of and independently factor says. FAIR USE He used the lyrics of my composition. Mr. and 1 Example: Parody has different market compared to that of d) The effect of the use upon the potential market for a song. but there is such thing as the Harry Potter book was enhanced.1). Not made fun of it and made a parody out of the speech necessarily exact similarity. This it alone prove copying or do you need to prove Is that an infringement of copyright? another element? None because the use has no effect upon the That the infringer has access to the work. an argument for fair use even if my purpose is a commercial one. picture. some portions which I think can be made as motion • scholarship. I the book. potential market for or value of the copyrighted work. rd What is the difference between COMPILATION of data and In the 3 example I will make an argument that the motion other materials and DECOMPILATION of data and other picture has a different market as compared to the book Harry materials. or song. including different from song hits. So to prove copying you need to prove two things: 1) The infringer has access to the work Example 2: 2) Substantial similarity I made a musical composition (musical notes and lyrics). I read Harry Potter Book • teaching including multiple copies for class room and had an idea to make motion picture. if there is an effect to the use upon the potential created computer program with other programs (Sec market for or value of the copyrighted work is not considered 185.

but your computer is Microsoft 98. transformation. You will not buy one copy for every computer. I published my work in a country which is a member of Berne Convention is my work protected? Infringement happens when the person violates the copyright or economic rights of the author. Archival purpose. The program is reproduced. One copy of an Autocad program will cost you about P350. You have to What is effect of publication on copy right protection does it factor in the 4 factors. If your reproduce it then you are violating the IP Code. If there is no copyright or economic right violated. If economic rights of the person. Translations are derivative works but the author has the right to abridgment. Berne Convention. destroyed or rendered unusable then you can make back up copy. can you make a backup or adaptation copy of the computer program? st Yes under the 1 instance. there is no infringement. Reproduction is part of the bundle of economic rights of the author.1) Example: You bought a computer program that works for Microsoft XP. These are part of the My country is country X. The use of the computer program 2. Therefore it extends. If you are a businessman will only buy one or two copies. APRIL. 3) The amount or substantiality of the portion used in relation to the copyrighted work as a whole. and What is the effect of publication on international copyright? 4)The effect of the use upon the potential market for or Example: I am a national of country X. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. Can you make a back up copy of a computer program? Yes At what instances? If necessary for: 1. divest copyright protection or extend copyright protection? Whether it is for Extend. 000. 37 . Convention. JEN AND MON That is what we mean when we say fair use. If the computer program will be lost. archival purposes (Sec 189. The law says for this work its 25 years of 50 1) commercial purpose or non profit purpose years from the making or 25 years or 50 years from 2) The nature of the copyrighted work the publication. country X is a value of the copyrighted work member of Berne Convention is my work protected in country Z which is also member of Berne Translation of songs by another is considered infringement. not a member of Berne Convention. What is the terms of copyright protection? For different work there is different term of protection. Only one.

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. non application. produced and used in any Why did you say a process of treating disease is not industry.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. (Sec. 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. Secs. the application claiming the Supposing I’m a medical doctor and I learned a new process invention. the subject matter patentable? can be Yes. 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. patentable? (Sec. utility mutandis. (Sec. mutandis. country that grants the patent. New (NOVEL) – 1. JEN AND MON IPL8 patents applying on patents mutatis applying mutatis What is the difference/ differences between patent. selling not from of a Applicable or importing the invention within the territory of the prior art. New invention to the public. in return for the disclosure of the 1. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. Industrially Patentable. use it except for the inventor. 108. periods of 5 years each. APRIL. 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.111 Secs. It amounts to a monopoly that others 20 years from the 7 years from the 5 years from the cannot use the invention. Because the grant of a patent amounts to a TERM monopoly. for treating human disease is this patentable subject matter? 26) No.23) 2. the right for a limited period that which does 2. 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. Can you have a patent for new variety of a plant? APPLICABLE RULES No. 20-107 Secs. 22. using.27) Because it is excluded from patent protection. (Sec. 112-120 and and provisions on certain provisions 38 . What if I invented a new drug for the treatment or curing invention that disease. Industrially of time to exclude others from making. 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. 3.

You read of performers. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. useful machine 1. processes 3. Technical solution to a problem which is new. Thus. Trademarks/ Tradenames/ Service mark 2. involves an inventive step. Industrial Design genetic engineering that can be a subject of a 6. (2) produced by a process of genetic engineering. Copyrights and Related Rights subject of a patent? The US Patent in Trademark Office made a decision All IP Rights that are not part copyright and related rights on this matter and they said that an animal belongs to Industrial Property Rights so for example produced by genetic engineer can be the subject of a trademarks. Protection against or from Unfair Competition (1) when produced in purified form. There are only 2 classes of Intellectual Property Rights: 1. dinosaurs were killed by an asteroid? No because scientific theory cannot be subject of a patent. Patent What are those that can and what are those that cannot? 3. it is subject of a patent. 4. recordings. why do you think the term So we said that plant varieties and animal breeds can include related rights? be a subject of a patent but they are subject of Because the related rights refers to the performance entirely different systems of protection. manganese. industrial designs these are all industrial patent. aluminum. magnesium. copper. industrially applicable. No What about the substance inside a plant? Substance that A new business plan? exists inside a plant? No It is not a patentable subject matter. patents. 3. silicon. What are the kinds of Intellectual Property Rights under the IP Are all microorganism subject of a patent? Code: No. Utility Model of a patent but microorganism that are made by 5. So there are 2 case: 9. Pinapatent yan pero you can performances and the producer’s right over some register it under Plant Variety Act. Geographic Indication of the Source are made by its purifying culture. Industrial Property Rights What about animals produced by genetic engineering? Is that 2. Yes TAKE NOTE: anything which exists in nature is not subject of What about the theory according to scientists that the patent protection there must be a human intervention. zinc. products 2. JEN AND MON What about Pythagorean theorem? Is that a subject of a What about a new breed of an animal? patent? Also not patentable. 2. 39 . 1. is that patentable? What about the machine for counting votes? No. Copyright and Related Rights. microorganism 4. the purified 8. APRIL. Lay out/ designs or photography of integrated patent. No silver. But it has not yet been resolved by the property rights courts. performer’s right in their the plant variety act. Do you know that genetic engineering can circuits or what we call as “computer chips” produce microorganism? Even microorganism that 7. A new plan of counting votes? What about the discovery of new element for example gold. Protection of Undisclosed Information from can be subject of patent. improvements of those mentioned. Copyright Microorganism by its very nature cannot be subject 4. What are the kinds of patent? What are the statutory classes or kinds of patent or invention? What are the requisites of patentability? 1. 5.

in Patent there’s a need. chemical formula prove inventive step in UM. the technical field. Geographic (UM)? What about the other way around? indication of source are usually made for agricultural BOTH ARE POSIIBLE. industrial design? Why is the person skilled in the art being average or ordinary? The person skilled in the art is only a theoretical person. utility model or industrial design published A qualitative difference between a novel by IPO. Why do we include patents. Why an applicant for Patent change his What about protection from undisclosed information? What mind and filed an application for UM? Because of their does it refer to? differences between a patent and UM. written articles. they are the chemical engineers. All kinds of processes. newspaper any form of making it pharmaceutical. Second 2. While you have an easier examination for UM you considered confidential they are called as trade have a shorter term of protection compared to patent. Will the examination be more There are many types of trade secrets: rigid than in the case of UM? Yes because you need not 1. utility model. systems of business that are 7 years. all prior art) which must exist fro the development to For example an inventor file an application for his invention be patentable. For example your cheese come application for patent may be changed for from Rocheport in France. examination as to from examination as to substance. Your coffee-BARAKO application for UM and vice versa.state of the art” (that is. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. point if you are the inventor and you cannot prove inventive step what will you do change your application to UM because What are about computer programs can they be subject of it’s hard to prove the inventive step. For change? What’s the difference between UM and patent? example olive oil from Tuscany if it is not from What are the requisites of UM? What is the requisite in Tuscany then you will be violating it. The IP Code provides that an and food products. In other words you have protection for the geographic source. just choose to apply for UM. Still all technologies under these 3 intellectual property rights forms part of the prior art. A development which is found to be here in the Philippines that same invention was published or obvious to a person of appropriate skill in the light of made available anywhere in the world to the public then that the state of the art would lack an inventive step. development and the “…. pharmacologist or the pharmacist. It is possible that you have granted a registration What is your basis in determining novelty? for UM but your invention is actually patentable one and you If it new and it does not form of prior art. design forms part of the prior art because these are all inventions. in Patent there is It refers to trade secrets. it becomes now the standard or the threshold for determining whether there is an 40 . forms part of a prior art. internet. business plan. APRIL. It his mind and file an application instead for utility model indicates the source of the product. is not already an invention capable of invention because it lacked the element of novelty because the law says that What is not obvious in the person skilled in the art is the anything made available to the public anywhere in the world advanced form or the development of the invention. the term of protection in patent is 20 years. UM. patent that is not available in UM? It is the element of INVENTIVE STEP. available to the public forms part of a prior art. comes from Batangas. Your product is When will the change be made? Before the grant or refusal of now from geography then you cannot use a patent or UM. For example in the case of published journals. Third secrets. JEN AND MON What is the geographic indication of source? Can an inventor who file an application for a patent change An example of this is OLIVE OIL made in Tuscany. That’s why the law says patent? all contents on the application of patents. What about UM? 3. What is a prior part? It includes the whole contents of an application for What about inventive step? patent. Who is the person skilled in the art? How do we make it available to the public? He is considered an ordinary or average person in By TV/RADIO Broadcast. industrial No because they under copyright. formal or substantive examination. Now why is it that the law allows such geographic means to indicate the source.

2. much cheaper to file here in the phils than for example in Japan. so Pag naglapse na yung 12 months period mo wala na wala na yung priority date mo. 2. the application form.Prejudicial Disclosure (Sec. Normally that will be considered forming 2009. Can you give priority date/priority right to Japanese part of prior art but because the law grants the inventor non- national who are both members of Paris Convention? Here prejudicial disclosure of invention the inventor must file are the requisites for claiming priority rights: within 12 months from the disclosure to the public his 1. you form part of prior art because the information is reckoned it from the time of the filing of the earliest date of taken directly or indirectly from the inventor. Everything made available to the public or anywhere in the The Paris Convention grants a priority date in favor of world is part or is prior art. inventive step. National Phase the priority date. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. In the While in Novelty your threshold or basis would be the prior PCT you can have file it in 1 country and it will be art. In Canada he filed Must the problem be old or new? The problem of curing on Dec. Because it is an invention is judged. 09. you have Japan. What’s the benefit of priority date? For example I am an inventor and I was invited to a For example a Japanese National filed an application for his conference to speak for my invention. Magfifile ka pa rin naman sa national phase. disclosing their invention it will already form part or become prior art. When do you determine if there is or there is inventive step or there are 2 phases under the PCT: novelty? What is the time? 1. priority right. In Inventive Step your threshold or basis is the person considered as filed in another country member of skilled in the art. problem can be old or 41 . For example you have a cellphone which is not a touch screen and you have a new cell What about the filing of the translation? When will be the phone which is touch screen now you think that an filing of the translation? average person invent the advancement or From the normal application of the filing. efficacy of Viagra. Yes Non. The applicant filed it on Jan. nawawala yung novelty. In patent. What’s the difference between a Patent Cooperation Treaty (PCT) and Paris Convention? What are the benefits given by What is the other term for inventive step? this 2? Non-Obviousness. Canada. In Phils. that the applicant must be in present claim the invention. It will not So you have 3 countries. In Paris Convention it grants the inventor a priority date (12 months) what about TM? 6 months. APRIL. The filing in the Phils. He filed it Jan. development from the ordinary phone to a touch screen phone? It cannot. That’s give you What’s a priority date? the benefit of filing in 1 country member of PCT. 09 so pag naglapse na yung 12 months period mo wala average person in the technical filed. My invention ayan invention on January 1. Phils. 1. 09. 2010 can he claim heartaches/heartbreaks. there is no na di ka magrerekon dun sa Canada. the local application in the Philippines must be filed Why does the law allows that? within 12 months from the earliest filing date of the Because most investors are not aware that by application for the said invention. Japan for ex. He came to the Philippines to nabasa mo sa powerpoint presentation my invention of the file his application for the same invention on December12. That’s why The date at which the novelty and inventive step of some foreigners they opt to file here in the Phils. Will give you the filing in other It is normally the filing date of the patent application countries in international trade or national trade that first discloses the invention. 2009. For ex. International Phase Filing At the time of the date of the filing or at the time of 2. JEN AND MON inventive step because if they can make the priority date for his invention in the Philippines? He cannot advancement of the invention then there is no because the reckoning date will be the earliest date which is inventive step because he is just an ordinary or Jan 1. Is there any exception to this rule? nationals of members of Paris Convention. 30. PCT. We say that a patent or any technical solution of a problem. 25 of IP Code) take note of this 3 instances daw sbi ni sir.

it is not Sec. But in What are rights granted to a patent? international exhaustion interpretation when the invention is Sec. If it does not. importing a product produced by betahistene forms part of prior art but the that patent. 74 Use by government because of the requirement of novelty. TO CONCLUDE LICENSING CONTRACTS drug and medicine there is no inventive step if the discovery of the form or known property or What are the rights granted to a patentee? substance does not result to efficiency of such You have to distinguish. prevent or prohibit any Pag drugs and medicines we follow the international unauthorized person or entity from exhaustion interpretation. What is this? It means that when Because without ?? there will no originality the invention is put into the market in 1 country it exhausts into the right of that patentee over that invention.71 placed or put into the market anywhere in the world then it 1. doctrine of exhaustion of patent life. There are 2 st interpretations of the doctrine the 1 is the national Why can’t it be subject of Copyright? exhaustion interpretation. For ex. JEN AND MON new while in technical solution the problem must be new Sec.  SUBJECT MATTER is PROCESS To retsrain. APRIL. Using a patented product which has been put on the Should the problem be complex? market in the Philippines by the owner of the No it can be simple. prohibit and prevent patent rights therefore there is limitation of patent but if we any unauthorized person or entity adopt international if the invention is introduced in the from making. So if there is discovery of a new to prevent others from some activities like form or a known substance the same is not manufacturing. so you have to get the amended law RA 9502 . manufacturing. General Limitation substance. using. using. product. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. If you are the 1 inventor of the safety pin has been put or placed into the market or anywhere then have it subject of a patent because it is novel. can it be subject on the said market. directly or indirectly from such having regard to prior art it skilled in the art at the process. importing. sale. This means that in national  SUBJJECT MATTER is PRODUCT exhaustion the introduction of the invention will exhaust To restrain. selling or offering for sale. selling or importing that Even if it is not introduced in the Phils as in the case of drugs product. TO ASSIGN OR TRANSFER application claiming the invention but in the case of 3. Sa product patent the right known substance. it in the world so you have to make a distinction but if is an inventive step. selling. selling. or When is there Section 26an inventive step? importing any product obtained Section 26 An invention involves an inventive step. Sa project patent patentable if it does not increase or harness the the right to prevent others from manufacturing and efficiency of the said substance. TO RESTRAIN/PROHIBIT/PREVENT exhaust the rights of patentee. or with his express consent insofar as such use is performed after that product has been so put Example an inventor invented a safety pin. is there an exception to this of a patent? rule?what about if it has been introduced in Japan? Yes. But for others we follow the using the process and from national exhaustion interpretation.73 Use by prior user patentable. Why can’t lay out design for integrated circuits (chips) can’t st be subject of a patent? On the 1 doctrine is the doctrine of first sale also known as Because there is no inventive step. how will you analyzed it now? There are 2 doctrines. because it will fulfill the requisites of the Except that in the case of drugs and medicines which st following. dealing in. 42 . offering for market or anywhere in the world then anyone can use it. time of the filing date or priority date of the 2. A drug dealing.72. We said that UM does not have it is not a drug if it is food introduced in the market inventive step. manufacturing company invented a drug betahistene hydrochloride will that be patentable? What are the limitations on patent right? Yes if it result to efficiency of the known Sec.

You are using the patent or the invention inventor and the licensee is someone who wants to have a only for experimental purposes that’s allowed that’s license to the products. public non commercial use of the patent 5. 4. Who grants the compulsory license? Read the amended 72. If you don’t allow the bolar Sec. Without going or negotiating with the not an infringement. patented invention is not being worked in What are the grounds for patent cancellation? the Phils. 43 . National Emergency is very soluble in water yun yung extension ng protection mo. eyeballs because the problems in existing contact lens is that don’t fit the eyeball. it forms part of prior art right? You have favor of any person who has shown his capability to invented contact lens that perfectly fits the concave of the exploit the invention under certain circumstances. affairs of a license to exploit a patented invention even without the agreement of the patent owner in Ex. on a commercial scale although FORMALITIES capable of being worked. then that’s only the time that genric manufacturers will have access Voluntary is the grant by the patent owner to a third to the data matatagalan yung pag manufacture ng person of the right to exploit a patented invention.5 Preparation of Medicinal drug. So you claim an independent claim a Grounds contact claim that perfectly fit the eye or a contact claim that 1. Period there is 1 year (not sufficiently clear and complete for it to be carried out by any sure daw si sir kc may inissue dawn a rules and person skilled in the art.85-92 provision after the 20 year period .) prior to Patent is contrary to public order or morality (Sec.72. What are the instances by which a government can grant compulsory licenses? Sec. 2. Sec.3 the Experimental Use Invention Ex. 61) expiration wherein other generic manufacturing can have access to the data provided by the inventor.2) No. What are the licensor. However if after negotiation the 2 fail to contents of the application? Sec. A contact lens. there was a patent that last for 20 years but prior to Patent does not disclose the invention in a manner the expiration of 20 yrs. 93-102 How many claims are there? Compulsory is the grant by the director of legal 2 claims: Independent and Dependent Claims. it is not consider an infringement of a patent. 32 come up with a full terms and conditions typically the royalty rates then he may now go to the What are claims? government for a compulsory license. manner of exploitation of patent is anti- requirements of the shape of the eyes so you can claim to competitive that and you have the monopoly over that. Party A licensor party B licensee usually the licensor is the For ex.4 of the amendment Termination of rights conferred by the patent GROUNDS How do we explain this? What is claimed as the invention is not new or patentable. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. when public interest requires If the contact lense have the property of meeting the 3. and regulations but he belives so that it is 1 yr. Upon petition with notice and hearing What is the Bolar provision? EFFECT Sec. privately and not for educational purpose that’s also Should the compulsory license be granted? a limitation (72. Why is it there why not? is public disclosure of patent? What do you mean by public A condition for the grant of compulsory license is disclosure of an invention? How? that the licensee should go first to negotiate it to the Through filing of an application. If you use the invention licensor party b went to the government and ask for a license. Why? So that they can start manufacturing generic In voluntary licensing what are the prohibited causes? version of a drug. It determines the extent of protection or monopoly of a patent. 87) access so that you can start producing generic drugs. generic drugs. If before 20 years you can have the Prohibited clauses (Sec. JEN AND MON In patent there is public disclosure of a patent.72. APRIL.

So What is your BASIS? micro-organism per se is capable of patent The US Patent and Trademark Office issued a notice protection. Humans cannot be a created by Is a MICRO-ORGANISM capable of patent protection? genetic engineering cannot be subject of a patent. Scientific Theories The law says PLANTS and ANIMALS CANNOT be subject of a 3. through a process consist of uni-cellular structure or composition. which says that there can be NO INVOLUNTARY SERVITUDE Examples: except as a consequence of a penal law. What if MULTI-CELLULAR organisms? What is the REASON? They can be subject of a patent Because there is a HUMAN INTERVENTION. The law says micro-organisms. This is a subject of a patent. plants. Mathematical Formula cannot be the subject of a patent.Genetic 4 REQUISITES of Patent Engineering. 1. 1. for example. What about the discovery of a NEW METAL? Can they be the subject of a patent? The metal itself is not capable of patentability Yes because it exists in nature. JEN AND MON IPL9 Why? Because there is a human intervention. purify the substance inside the metal. Novelty 2. But isn’t it that micro-organism exists in nature? What is the REASON given the US Patent and Trademark So what is capable of patent protection? Office? If there is human intervention. but if there is device A plant variety or animal breed cannot be subject of a patent. If you use LASER TECHNOLOGY. 1. Micro-organisms are the What if the person who discovered the metal was able to smallest living organism. micro-biological and non-biological processes are subject of a patent. The purified state can be a subject of purification. mice. Industrial Applicability of the micro-organism is capable of patent protection. applications of scientific principles and mathematical Why? formulas/methods are capable of patent. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. 44 . or animals. known as PURIFICATION? After this there multi-cellular. They are one-celled/uni-cellular. Inventive Step 2. A micro-organism that was CREATED BY a process known as GENETIC ENGINEERING then the resulting micro. capable of patentability. like aligae. The purified state 3. Micro-organism purified by a person. capable of generating laser beams such device is But what if a NON-HUMAN MULTI CELLULAR living organism. Because for PLANT VARIETES they HAVE a different SYSTEM OF PROTECTION called the PLANT VARIETY Example: PROTECTION ACT. engineering for oil spills. patent But. EXCEPT HUMANS. Same with MICRO-ORGANISM. Patentability of Subject Matter Give an EXAMPLE of MICRO-BIOLOGICAL and NON- PATENTABILITY of Subject Matter BIOLOGICAL PROCESS? The law specifies which subject matters CANNOT BE subject The use of micro-organism created by a genetic of the patent. Discoveries 2. This is mathematical formula or scientific principle. 4. APRIL. It will VIOLATE the US CONSTITUTION. If you create a human created using a genetic engineering organism is capable of patent protection? that human can be the subject of involuntary servitude therefore that is not allowed by the Constitution. that humans cannot be the subject to a patent.

*The reckoning point is from the date of filing the application. Chair 45 . of its speed. new or A composition of lines or colors or any 3. serve to maximize the speed of the car. A utility model must also fulfil all the requisites (see Section 22 for the enumeration of NON-PATENTABLE except the inventive step. industrial design. It avoids the gravity of the earth because subject of and industrial design. The Rocket system can be a subject of a patent. what is absent? INDUSTRIAL DESIGN In industrial design the design must be novel. What about APPLICATIONS of these theories? Example: Can be subject of a patent The design of the chair is dictated because it serves some function like lumbar support. Car It also has no inventive step. original. JEN AND MON Non-human. • Big Bang Theory by Stephen • Newton’s Law of Gravity But. APRIL.2) Patent – 20 years (Sec 54) utility model – 7 years (Sec 109. the subject of a patent. 2. product. But if because of the design of the chair it serves functional value then it cannot be a DISCOVERIES and MATHEMATICAL PRINCIPLES CANNOT be subject of Industrial design protection. it can’t be renewable for another 5 years for a total of 15 years (Sec the subject of an industrial design because it could 118) dictate the design. A patent must fulfil the 4 requisites. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. Is a DESIGN OF A CAR subject industrial design? It DEPENDS. dimensional form. the UTILITY MODEL serves a utilitarian value. It is not a technical solution to a to the subject. Consider the distinctions between a patent. Those AGAINST PUBLIC MORALS and PUBLIC ORDER. INVENTIONS) ______of Industrial design. whether or not associated with lines or colors PROVIDED that composition form Does it have industrial applicability? serves as a pattern or a design or special appearance Probably none. But the application themselves can be a subject of a patent. The following cannot be a subject of patent - • Einstein’s Theory of Relativity which is a An INDUSTRIAL DESIGN intellectual creation but it have no mathematical formula functional or utilitarian value. It is only a design. What is the difference between a utility model and a patent? AESTHETIC CREATIONS cannot be the subject of a patent. renewable for another 5 years. It cannot be the Example: A ROCKET. other multi-cellulars like mice. problem. Examples: Is there an inventive step? 1. But if it simply a design it is capable of registration as What else cannot be subject of a patent? an industrial design. utility model and industrial design If the design is dictated essentially by functional consideration to come up with a functional result Take note of the Term of protection then it cannot be a subject of an industrial design For- (Sec 113. monkeys created The mere design of the chair is subject of an through genetic engineering can be the subject of a patent. Why? Because it can be protected under the UTILITY Examples: DESIGN PROTECTION REGISTRATION. The design by itself cannot be a technical solution to a problem.3) If the design of the car is such that the design will industrial design – 5 years. or handicraft (Sec 112).

If your invention was not made available to the patent. Therefore the 2 person who What are the rights under the patent? filed the application will be granted the right to the patent. the true and actual creditor can do the the right to the patent shall be given to the applicant following: who first filed the application for that invention (Sec 1. or st The 1 person in prior application for the invention 4. filed or effective in the Philippines. COMPULSORY LICENSING Inventing something is different from an invention which What is the difference between compulsory licensing and already formed part of the prior art. the invention already formed part of prior art. with a filing or priority date that is earlier than the filing or Why? priority date of an earlier application. public then it does not form part of the prior art. assignment? If it formed part of the prior art it must be made available to In an assignment there is a transfer of all the rights under the the public. Import one who first filed the application will granted the right to the patent. But. right to patent. APRIL. The right to prevent others from- 1. Under the 1 to file rule he will be granted the registration. 29). 2. Sell 4. utility model. but the patent? invention was made by another. Prosecute the application. In a license there is transfer of the divided portion under the So it is possible that 2nd person filing the application for the right under the patent same invention did not made the invention available to the nd public therefore no prior art. If 2 or more applications are for the same invention.. 3. That’s why the law says. Anything which is made available to the public public).” If there is a decision or order by the that invention shall have the right to the patent. TAKE NOTE of PRIOR ART (Sec 24 IPC) Assuming that there is an existing invention which did not What is prior art? form part of the prior (it was not made available to the 1. Transfer of the whole patent. to person B the right to sell. JEN AND MON Can you renew the term of protection of utility model? In other words. Request that the application be refused. If the invention already formed part of the prior art you cannot grant a patent to that invention. All the contents of an application an application for actual inventor will not have any legal remedy against said registration a patent. published. Seek cancellation of the patent. because the true and actual inventor has redress under the IP But. What is the “first to file” rule? If there is a publication of the patent he must oppose it. Using Why? 2. if one has already nd The 2 person filed an application for the same invention been issued st Under the 1 to file rule. Consider the 2 persons 3. it does not mean that his application will be granted if Code. 1. Offer to sell If 2 persons filed an application for the same invention the 5. Making Because that invention did not form part of the prior art. part of the prior art. or industrial person. 24. it is not subject to renewal. File a new patent application in respect of the same invention. the court by invention the person who filed an application for “final order or decision. actual inventor. This means if 2 or more persons made a same appeal to the court. Sec 29 should be read in conjunction with Sec No.. this does not meant that the true and 2. Then another person filed an application for the same st anywhere in the word before the filing date of invention. unless it be proven that the invention already formed Therefore you can grant a license to person A right to make. 46 . to person C the right to import. you will be admitted The first to file the application. Because under the provisions of the IP Code (Sec 67) the true and actual inventor is given the right to do the following after Take note of Sec 24 and Sec 29: First to File Rule the publication of the application. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. or court that the person mention in Sec 29 is not the true and 2. who will have the right to the This means that just because you were the one to file.

If the license agreement.” There is an agreement between the form of anti-competition. The patent owner or licensor monopolizes the I grant to both A and B the right to make. This is another arrangement. but before they make the contract. The DITTB will allow it if it complies with Sec The licensor and the licensee have a stipulation providing that 91. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. they can’t come up with reasonable terms and conditions on the grant. that’s your right as a patentee. they are anti- 2. containing all those exceptional circumstances. The effect is The IP Code has a provision on “Prohibited Clauses. It is valid (DITTB) under the Intellectual Property Office. JEN AND MON You can even grant non-exclusive licenses. contract. which is what we call the “Anti-trust -Increase in foreign exchange earnings. employment Law. Even without the agreement of the patent owner the license is given by the government in favor of The next provisions under the IP Code says. Why? Why? The DITTB has the jurisdiction to determine whether Because these stipulated clauses amounts to anti. So you can have a prohibited clause. 47 . In the Philippines.” meaning uneforceability of the agreement. patent owner (licensor) and the licensee on the terms and conditions of the license. what the licensor and licensee cannot stipulate. 2 kinds of license Another instance: 1. transfer technology rate or amount of royalty. prohibited clause Sec 91 which contains the exceptions. the licensee will obtain his raw material only from the source dictated by the licensor. APRIL.” generation etc. Voluntary License When the licensee is required to hire a person This is also called “technology transfer dictated or instructed by the licensor. What about the compulsory license agreement? There are 6 GROUNDS under compulsory license Is this prohibited? agreement (Sec 93). If it will spur the growth of national economy US SC said that patent holders are not excluded from (John) Sherman’s Anti Act. Compulsory License competitive therefore they are prohibited. Voluntary Licensing Do you need to register a voluntary license agreement? The patent owner and the licensee will agree on the terms It depends. these are the another person who has shown the capability of mandatory provisions that must be stipulated in the license commercially exploiting the patent. What are these GROUNDS? 1. Yes because it will amount to anti-competition. If it contains one or more of the prohibited clauses it is unenforceable if not registered. and conditions. A PATENT is a grant of monopoly rights. source of the raw materials therefore prohibiting the If you want make it exclusive. there is NO NEED to register. it will allow a certain license agreement to contain a competition or Anti-trust. But if you want the license agreement to be enforceable then you must register it Illustration: with the DITTB. but this doesn’t mean that the patentee is not included in the provisions of What are these exceptions? the Anti-trust Law. original and exclusive jurisdiction over disputes relating to the amount or rate of royalty in a license agreement. It has the and enforceable. the Revised Penal Code – Prohibitions against monopolies and prohibitions _______. NOTE: In all of these prohibited clauses. Is there a government agency agreement/arrangement does not contain any of the responsible for settling the dispute on the royalty rate? prohibited clauses and contains the mandatory Documentation Information and Technology Transfer Bureau provisions. National emergency or other circumstances of extreme urgency. The latter will not grow. other sources.

drawing sufficient to describe the invention constitute working or using the patent. request for the grant of the patent worked. CANCELLATION (Chapter VI. It is required the inventor must fully disclose his invention.. All contents of the application. without satisfactory reason.. It is non- commercial because I am charging no fee for that. inventive step. Public non-commercial use of the patent by the 5. If there is a demand for patented drugs and medicines and the demand is not sufficiently met as Connect this provision with the provision for the cancellation determined by the DOH of a patent. abstract patentee. Where a judicial or administrative body has requirements under the IP Code. Invention is not new or patentable. 4. Sec 62-66) What does this mean? The inventor must disclose sufficiently clear and complete so This means that the state wants the inventor or the patentee that a person skilled in the art would be able to carry out the to commercially exploit the invention. Do you require the petitioner for a compulsory license to What are the grounds for the cancellation of a patent (Sec prove that he exerted efforts in negotiating reasonable 61)? terms and conditions under the license with the patent 1. Can you think of another ground for cancellation of a patent 4. JEN AND MON 2. industrial applicability. description of the patented invention the importation of the patented article shall 3. so requires. determined that the manner of exploitation by the owner of the patent or his licensee is anti. 1. The patent is contrary to public order or morality. Where the public interest. The petitioner must prove that he subject to cancellation exerted efforts to come up with reasonable terms of conditions with the licensor/patent owner. There must be full disclosure of the invention. 4. other vital sectors of the national economy as determined by the appropriate agency of the How does he disclose the invention? Government. 48 . or application should be. although capable of being 1. Xxx I am a patent owner.. 3. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. Under Sec 24. It documents under Sec 32 is public because it is for the benefit of the public. that 2.. The term “not patentable” covers everything – novelty. owner? If it does not meet the requirements of novelty it is General rule: He must. 6. what forms part of a prior art? Example: 1. in particular. In situations of national emergency or other circumstances of extreme urgency. without satisfactory reason: Provided. Patent does not disclose the invention in a manner 2.. Public interest 2. 1 or more claims 5. The documents that he must attach to the competitive. not the true and actual inventor. Otherwise if he failed to do that it will be ground commercial exploitation of the invention. There must be a invention. APRIL. If the patented invention is not being worked (not being made available to the public) in the Philippines Contents of the application (Sec 32) on a commercial scale. In cases of public non-commercial use that is not explicitly mentioned in the IP Code? If the patent application was filed by a person who is ____ For patented drugs and medicines.this means the use/give my invention for the benefit of the public for free. health or the development of invention. 4 Exceptions: patentability of the subject matter. for the cancellation of the patent. Where the petition for compulsory license seeks to sufficiently clear and complete for it to be carried remedy a practice determined after judicial or out by any person skilled in the art. I have a commercial enterprise and 2. nutrition. He discloses the invention by complying with the 3. or administrative process to be anti-competitive 3. national The patent system requires the inventor to disclose the security.

But in case of drugs and medicines. No. the mere How? discovery of a use or property of such medicine By sufficiently describing his invention in a manner results in the efficacy of the known substance. subject of cancellation. otherwise known as the Intellectual Property Code of the Philippines. In the US it is subject of a patent – the mere new use DRUGS AND MEDECINES of a known substance is subject of a patent.The following shall be excluded from patent protection: SEC. mere use is not capable of a new patent protection. there is no inventive "For the purpose of this clause. or the mere discovery of any new property or new use step if. is hereby amended to read as "22. mixtures of form or new property of a known substance which does not result isomers. 6. can the patentee amend When do you determine if there is an inventive step of the his patent? invention? General Rule: he cannot if the patent was There is inventive step if the invention is not obvious determined not new or patentable. APRIL. 26. esters." of patent. ethers. The substance itself is subject of a pate. If there is discovery of the new use of that substance or Once the application document has been amended by the patented drug. An invention involves an inventive substance. the jurisdiction to entertain petition for cancellation of a patent. This the heart therefore it can also treat some has heart is wrong because. novelty. follows: and in the case of drugs and medicines. (n) one new reactant. During the cancellation proceedings. 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 "SEC. Illustration: You can only amend when there is lack of description. the mere discovery of any new property or new use for a known substance. Minoxidil was discovered to be substance for hair growth. that of the IP Code. you have to disclose otherwise it can be a diseases. or the mere use of a known process unless skilled in the art at the time of the filing date or priority date of such known process results in a new product that employs at least the application claiming the invention. polymorphs. – you can never amend it. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. . combinations. . Discoveries. BUT. that is capable of being carried out by a person skilled in the art. step if the invention results from the mere discovery of a new metabolites. salts. "26. if the patent failed to fulfill the requisites – patentability. pure form. forms part of the prior art.2.1. it is not obvious to a person for a known substance. 22. what are these provisions? Provisions on the definition of inventive step SEC. isomers. his application. or known substance shall be considered to be the same substance. scientific theories and mathematical methods. and other derivatives of a in the enhancement of the known efficacy of that substance. Inventive Step. particle size.26. In the case of drugs and medicines. complexes. unless there is a resulting increase in the efficacy of the patented drugs. or the mere use of a known process unless such known 49 . JEN AND MON The true and actual inventor can file the cancellation process results in a new product that employs at least one new reactant. or against public to a person skilled in the art the time of the filing morals or public order the applicant cannot amend date or time of the priority date. Patented drug Intellectual Property Office (IPO) Bureau of Legal Affairs has forms part of the prior art. inventive step etc.1. Specifically. It is patented. 8293. having regard to prior art. Non-Patentable Inventions. Does the mere discovery of the new use of a patent owner can make a decision not cancel the patent or patented drug capable of another patent? maintain the patent because there is already an amendment. Later on it was found out that minoxidil is In the Philippines inventors are afraid to disclose all their also a drug capable of affecting the receptor cells of inventions because they think that they might be copied. Section 26 of Republic Act No. RA 9502 called the “Cheaper Medicines Law” This amends certain provisions under the Patent Law But in Philippines after the advent of RA 9502.

following circumstances: SPECIAL COMPULSORY LICENSING "72. ethers. or by any party authorized Under the provision on Limitation of right. That the right introduction made anywhere in the world will to import the drugs and medicines contemplated in exhaust patent rights. metabolites. 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. particle size. JEN AND MON unless they differ significantly in properties with regard to not only in the Philippines. 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. isomers. 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. the limitation on patent rights Philippine market. polymorphs. if the But under the provision on the limitation of rights. is hereby amended to read as follows: import it? Yes. patent rights. otherwise known as the medicine is introduced in Russian Market. can Intellectual Property Code of the Philippines. recommended by DOH. APRIL. or with his express consent. The law also mentions that the following substances are not What does it mean? capable of patent protection. 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. says that the introduction anywhere in the world will 50 .The owner of a patent has adopt the international exhaustion principle no right to prevent third parties from performing. 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. it says the to use the invention: Provided. 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. it same has been introduced anywhere in the world. with regard to drugs compulsory license if import is granted in the and medicines. can I import the invention? Doctrine of First Sale also known as the exhaustion No. Market. because for drugs and medicines we "SEC. What are these? In the first instance we adopt the national salts. mixtures of isomers. 8293. this section shall be available to any government agency or any private third party. the acts referred to in Section 71 hereof in the Code. 72. However in the case of drugs and medicines. That.1. If the drugs and SEC. Section 72 of Republic Act No. pure interpretation of the principle of form. 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. it will also exhaust the efficacy. esters. without his that is a very substantial change in the IP authorization. complexes Example: Another provision affected by RA 9502 refers to limitations of If the Invention is introduced in Russian patent rights. 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. Limitations of Patent Rights. Special compulsory license. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. What does it mean? for patented drugs and medicines you need special General rule. I already exhausted my right. If I introduced it to the Philippine owner because we adhere to the market. further. EXCEPTION: Drugs and medicines. . 7. national interpretation. exhaustion.

process patent (intangible. So You don’t register this but anyone who violates this apparently there is a conflict. 51 .com. 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. Different registration for utility model and different registration for industrial design. Patents Me-an Ayos – meandayos@yahoo. area in the IP Code.com 3. mere company. Those working in manufacturing companies they are Favorite Bar Question required to sign non-disclosure agreement.com. product patent cannot just transfer to a competitor manufacturing (tangible thing).com Take Note of IP RIGHTS Mon Pasia – monbpasia@yahoo.com Nine (9) Angela dela Cruz – mabdlcrz@yahoo. Copyright April Gerero – boogapops@yahoo.com 4. It is not capable of copyright protection. Service Marks Aileen Pizania – aillen_pizana@yahoo. INTELLECTUAL PROPERTY LAW REVIEWER BY ANGELA. but the process of coming up with GRATITUDE the product. technique) Example : ADD US IN FACEBOOK or FRIENDSTER AS A SIGN OF Chemical A is a product. 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 capable of copyright What about lay-out designs of integrated circuits. Marx de Chavez – atty_dcmrg@yahoo.e. Protection of undisclosed information. chemical A is a process. Geographic Indications Donna Masilungan – donnarence15@yahoo. Related Rights Soc Marbil – soc_benj@yahoo.com 7. JEN AND MON result to patent right into patent right exhaustion. trade secrets . Industrial Designs Theena Martinez – theena_martinez@yahoo.right to prevent other from using it Example: Jollibee recipe for burger steak.com 1. They Patentability of subject matter – i. So far this is a gray will be held liable.ph 8.ph How many IP Rights do you have? Jen Reyes – jenjrey2004@yahoo. Layouts-Designs (Topographies) of Integrated Circuits ANG HINDI MAG-ADD “MAG-INGAT SA PAGTAWID” 9. Trade Marks Jam Bermudez – kawaii_shoujo03@yahoo. APRIL. It has a different system of registration.com 6.com 2.com 5.