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IP LAW LECTURE:

What is the principal law that governs Intellectual Properties?


o R.A. No. 8293 AS AMENDED

Principal Purpose
o To protect and secure the exclusive rights of scientists, investors and
other gifted citizens to their IP and creations, particularly when beneficial
to the people.
o To ensure that the investors/creators will benefit from the protection of
law in order for them to be encouraged to create more or invent more.
o It is also cognizant of the fact that science will be developed through
intellectual property protection.
o The interest of the investors will run contrary to the public but then IP
must be protected. Their right or entitlement to intellectual property is
protected, however limited for a given period of time.

Intellectual Property
o What does TTA mean?
An inventor may have a product but he cannot manufacture such
product due to cost consideration.
A contract or agreement involving transfer of systematic
knowledge for the manufacture of a prodyct, the application of a
process, or rending of a service including mgmt contract; and the
transfer, assignment or licensing of all forms of IP including
licensing of computer software.
So that the owners of the products in the US, when they bring it
here in the PI, these products will not be copied, and will be
protected under this arrangement.

IPO
o Principal government agency
o Functions: 1) issue letters of patent and register utility models; 2) examine
of registration of marks, geographic indications, etc.; 3) register TTA and
settle disputes; 4) promote the use of patent information as a tool for
technology development; 5) administartively adjudicate contested
proceeding affecting IP rights; 6) coordinate with other govt agencies.
o Bureaus of IPO: 1) BoP; 2) BoT; 3) BLA; 4) DITTB; 5) EDP Bureau; 6)
administrative financial and personnel services bureau.
o IPO is headed by Dir Gen. In case of appeal in matters of inter partes
cases, appeal on the decision of the Bureaus is made only to the Dir Gen.
such that if you lose your case to the BLA, your remedy is to file an
appeal to Dir Gen.

What are laws covered by IP?


o Patents
o Trademarks, Service Marks and Tradenames
o Copyright

Patents
o Grant of exclusive right to make use and sell patented object personally
or through others as well as the grant of right to effectively prohibit others
from practicing the invention or profiting therefrom without the owners
consent.

Are all inventions patentable?


o Any technical solution to a problem in any field of human activity, which is
NEW, involved an INVENTIVE STEP and is INDUSTRIALLY
APPLICABLE.
o Is novelty required for the patentability of an invention/discovery?
The element of novelty is an essential requisite of patentability of
an invention or discovery.
o An invention must possess the essential elements of novelty, originality
and precedence, and for the patentee to be entitled to the protection of
the invention, which must be new to the world.
o The very first reqyirement that rhe applicant must satisfy is the issue of
NOVELTY/ORIGINALITY. If it is merely an improvement of an exisiting
invention, that will not qualify.

Non patentable = SEC. 22

What is the First to File Rule


If two (2) or more persons have made the invention separately and independently
of each other, the right to the patent shall belong to the person who filed an
application for such invention, or where two or more applications are filed for the
same invention, to the applicant who has the earliest filing date or, the earliest
priority date.

What is the so-called Right to Priority? Sec. 31


o If the application is filed by another inventor in another country, this rule in
priority will be given preference.
o Requirements: 1) local application expressly claiming priority; 2) filed
within 12 months from the date of the earliest foreign application is filed;
3) paten shall be issued in the name of the RP under the seal of the
Office.
o Term of patent: 20 years from the filing date of the application (Sec. 54).
o May patents be cancelled? Yes. On what grounds? 1) invention is not
new or patentable; 2) patent does not disclose the invention in a manner
sufficiently clear and complete (inventor has to disclose every bit of
information related to his invention; if he fails to do this, the IPO thru the
BoP will deny the application)
o What is the effect of a cancelled patent? Sec. 66
o Can a patent be surrendered? Sec. 56

Remedies available to a true and actual inventor who was deprived of the patent
without his consent or through fraud: Sec. 68

Rights conferred by a patent: Sec. 71.2

IP is property in itself therefore it can be assigned or transferred.


Prior User Rule: Sec. 73.1
o You can disqualify the whole world from using their product. The Prior
User Rule is a minor exception to such rule. The prior user can continue
using his product without being accused of infringement.

Can the govt use an invention? Yes. Sec. 74.1

Patent Infringement
o Remedies of patentee whose rights have been infringed: Sec. 76.2
o Can a foreign national file an action for infringement? Sec. 77
o Is notice of an existing patent a necessary requisite before on can recover
damages due to infringement? Sec. 80
o How would you know that a product is patented? Product must indicate
that it is patented. When you produce a similar product, that is already
registered, there is already a presumption of infringement.

What are the defenses available in infringement?

Can a criminal action be maintained? Yes. Sec. 84

Is there a prescriptive period for a criminal action? Yes. 3 years.

Doctrine of Equivalents = Smith Kline v. CA

Can rights over invenetons be assigned/Transmitted? Sec. 103.2

TRADEMARK
o Mark, Collective Mark & Trade Name
o How is a right in a mark acquired? Sec. 122. This is the distinction
between trademark and copyrights. In copyright, registration is not
indispensable. In trademark, however, you do not apply the same rule.
You have to register before you can claim ownership.
o Can the owner of a mark demand for its registration? No. the owner
cannot demand. Registration will only be allowed upon compliance with
the law.
o What can be used as evidence that the mark has become distinctive? For
you to register a mark, it has to have acquired distinctiveness such that
that mark is already associated with the product in the minds of the
people. The IPO may accept as prima facie evidence that the mark has
become distinctive as used in connection with the goods or service for 5
years.
o What must the applicant file as evidence of substantial and exclusive
use? Sec. 124.2
o Nature of the First to File Rule: the rule that reg of a mark is prevented
with the filing of an earlier application for registration. This must not,
however, be interpreted to mean that ownership should be based upon an
earlier filing date.
o Does the Philippines adhere to the Paris Convention? Shangri-La Intl
Hotel Management v. Developers Group of Co., Inc.
o Is there at time limit for the filing of a petition for cancellation of a
registered trademark? None. Shangri-La Intl Hotel Management v.
Developers Group of Co., Inc.
o Suppose an application: 133.3
o Recourse of the owner of a mark that has been abandoned: Sec. 133.4
o Recourse of the person whose right is affected by the registration of the
mark: pay the required fee and within 30 days after the publication of the
app for the regi of the mark, file with the IPO an opposition to the
application for the registration of the mark.
o Trademark infringement: Esso Standard v. CA
o When does trademark infringement exist? when the goods are so related
that the public may be or is actually deceived and misled that they came
from the same maker or manufacturer.

COPYRIGHT
o Unlike in the case of a patent where there is a tangible product, in a
trademark where there is a visible mark, in the case of a copyroght, it
must be something more than that. It may include paintings, sculpture,
and writings.
o When does protection for original intellectual creations commence? From
the moment of their creation.
o What are included in the protection?
Take note ABS-CBN v. Gozon, which involves TV footages. Are
they covered by copyright?
o What works are not protected? Sec. 175
o Can government works be protected? Sec. 176.
o Two kinds of copyrights? Economic (Sec. 177) and Moral Rights
o If there was PAYMENT for the playing of the song, there is copyright
infringement if there was no prior approval. However, if it was just played
while you were eating where no fees were charged.
o Who owns the copyright over letters? In respect of letters, the copyright
shall belong to the writer subject to the provisions of Art. 723 of the CC.
Mr. Garcia and Mr. Aquino became lovers. They wrote several
letters for four years til they broke up. Mr. Garcia asked for the
return of the letters. Mr. Aquino told Mr. Garcia that the letters
exchanged belong to her because it reminds her of Mr. Garcia.
Who owns the letters? The letters belong to the one to whom it is
addressed (Art. 723).
o What is the nature of copyright infringement? Columbia Pictures v. CA
o Is it a valid defense for the infringer that he did not know that he was
infringing a copyright? No. Habana v. Roble
o What is the difference between letters of patent and copyright? Pearl &
Dean v. Shoemart
An inventor wrote a book about the creation of a certain medicine.
Someone manufactured medicine similar to the one Was there
infringement? None. Registration only covers the book not the
formula.

KEY TAKE-AWAY POINTS:


o Patents relate to new and useful inventions.
Phils. Now adopt the First to File Rule NOT the First to Use Rule
For inventions, period of grant is now 20 years. With no extension.
Utility model 7 years
Industrial design 5 years
Penalty for infringement = ranging from 100K to 300K and/or 6
mos. And 3 years imprisonment.

o Trademarks relate to distinguishing marks, names and signs that


identifies a product.
Actual use before application is no longer required
Before the rule was you have to have your trademark used in
commerce before u can register. Now there is NO LONGER such
requirement.
Term of grant is 10 years BUT renewable. Its as if you have a
perpetual right over your trademark.
Affidavit of actual use is required to be filed within 3 years from
filing of application.
Penalty for trademark infringement

o Copyright relates to works on literary and artistic domain.


Registration is not an absolute necessity.
Term of protection is the entire lifetime of the creator and 50 years
after his death.
Covers 2 kinds of rights:
Economic Rights
Moral Rights
Ex: Rosanna Roces use to pose for painters nude. The
agreement was after she is painted, the painting belongs
to her. The painter however has good memories of her.
What is the so-called economic right? The economic right
belongs to the painter such that the painter can say you
cannot copy my creation. Thats my painting. But the
actual painting itself belongs to Rosanna Roces.
Penalty for infringement