Intellectual Property

INTELLECTUAL
PROPERTY
CODE
Cataquis, Zyreen Kate B.
Intellectual
Property Rights,
In General
REPUBLIC ACT NO. 8293
● “AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY

CODE AND ESTABLISHING THE INTELLECTUAL PROPERTY
OFFICE, PROVIDING FOR ITS POWERS AND FUNCTIONS,
AND FOR OTHER PURPOSES”
● SECTION 2. Declaration of State Policy. - The State
recognizes that an effective intellectual and industrial
property system is vital to the development of domestic
and creative activity, facilitates transfer of technology,
attracts foreign investments, and ensures market access
for our products. It shall protect and secure the exclusive
rights of scientists, inventors, artists and other gifted
citizens to their intellectual property and creations,
particularly when beneficial to the people, for such
periods as provided in this Act.
REPUBLIC ACT NO. 8293
● The use of intellectual property bears a social function. To

this end, the State shall promote the diffusion of
knowledge and information for the promotion of national
development and progress and the common good.
● It is also the policy of the State to streamline
administrative procedures of registering patents,
trademarks and copyright, to liberalize the registration on
the transfer of technology, and to enhance the
enforcement of intellectual property rights in the
Philippines.
Intellectual Property Rights
Coverage of intellectual property rights

● 1. Copyright and Related Rights;
● 2. Trademarks and Service Marks;
● 3. Geographic indications;
● 4. Industrial designs;
● 5. Patents;
● 6. Layout designs (Topographies) of Integrated Circuits;
● 7. Protection of Undisclosed Information (TRIPS).
Basic Principles
● National Treatment - A Member country shall accord to

the nationals of other Member countries treatment no less
favorable than it accords to its own national with regard to the
protection of intellectual property.
● Most Favored Nation - Any advantage, favor, privilege or
immunity granted by a Member to the nationals of any other
country shall be accorded immediately and unconditionally to the
nationals of all other Members
Copyright and Trademarks and
Related Rights
01 02 Service Marks
any visible sign capable of
exists over original and distinguishing the goods
derivative intellectual (trademark) or services
creations in the literary and (service mark) of an
enterprise and shall
artistic domain protected
include a stamped or
from the moment of their marked container of
creation. goods.
Geographic Indications Industrial Designs

indications which identify a good
as originating in the territory of a
03 04 any composition of lines or colors or
any three-dimensional form, whether
Member of the Agreement, or a or not associated with lines or colors,
region or locality in that territory, provided that such composition or
where a given quality, reputation form gives a special appearance to
or other characteristic of the good and can serve as pattern for an
is essentially attributable to its industrial product or handicraft. It
geographical origin. (Article 22, must be new or ornamental.
TRIPS Agreement)
Patents Layout Designs
any technical solution of a
problem in any field of human 05 06 synonymous with 'Topography' and
means the three-dimensional
disposition, however expressed, of the
activity which is new, involves
an inventive step and is elements, at least one of which is an
active element, and of some or all of
industrially applicable. It may
the interconnections of an integrated
be, or may relate to, a product, circuit, or such a three-dimensional
or process, or an improvement disposition prepared for an integrated
of any of the foregoing. circuit intended for manufacture.
Protection of Undisclosed Trade Secrets
Information
07 08
a plan or process, tool, mechanism or compound
protection of information lawfully held from being disclosed known only to its owner and those of his employees to
to, acquired by, or used by others without their consent in a whom it is necessary to confide it. The definition also
manner contrary to honest commercial practices so long as extends to: (a) a secret formula or process not
such information: (a) is secret in the sense that it is not, as patented, but known only to certain individuals using it
a body or in the precise configuration and assembly of its in compounding some article of trade having a
components, generally known among or readily accessible to commercial value; or (b) any formula, pattern, device,
persons within the circles that normally deal with the kind of or compilation of information that: (1) is used in one's
information in question; (b) has commercial value because it business; and (2) gives the employer an opportunity to
is secret; and (c) has been subject to reasonable steps under obtain an advantage over competitors who do not
the circumstances, by the person lawfully in control of the possess the information. (Air Philippines Corporation v.
information, to keep it secret. (Article 39, TRIPS Agreement) Pennwell, Inc., G.R. No. 172835 December 13, 2007)
Difference between Copyrights,
Trademarks and Patent
Copyright
Literary and artistic works which are
original intellectual creations in the literary
and artistic domain protected from the
moment of their creation.
Trademark
Any visible sign capable of distinguishing the
goods (trademark) or services (service mark)
of an enterprise and shall include a stamped or
marked container of goods.
Patent
Any technical solution of a problem in any field
of human activity which is new, involves an
inventive step and is industrially applicable.
Technology
Transfer
Arrangement
Technology transfer
arrangement
Contracts or agreements involving the transfer of
systematic knowledge for the manufacture of a
product, the application of the process, or
rendering of a service including management
contracts; and the transfer, assignment or
licensing of all forms of intellectual property
rights, including licensing of computer software
except computer software developed for mass
market (IPC, Sec. 4.2).
Nature of technology transfer arrangement
It is in the nature of a Voluntary License Contract.

It is a contract between an intellectual property
right owner (licensor) and a second party
(licensee), authorizing the latter to commercially
exploit the same intellectual property right under
specified terms and conditions (Salao, 2012).
PATENTS
General Principles
The primary purpose of the patent system is not
the reward of the individual but the advancement
of the arts and sciences. The function of a patent
is to add to the sum of useful knowledge and one
of the purposes of the patent system is to
encourage dissemination of information
concerning discoveries and inventions (Manzano
vs. Court of Appeals, G.R. No. 113388, September
5, 1997).
Threefold purpose of patent law
Patent law seeks to It promotes disclosures of The stringent

foster and reward inventions to stimulate requirements for patent
invention; further innovation and to protection seek to ensure
permit the public to that ideas in the public
practice the invention domain remain there for
once the patent expires; the free use of the public
and (Pearl & Dean (Phil.),
Incorporated v. Shoemart,
Incorporated, G.R. No.
148222, August 15,
2003).
Coverage of patents
Invention
any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is
industrially applicable. It may be, or may relate to, a product,
or process, or an improvement of any of the foregoing (Sec.
21, IPC).
Utility Model
An invention qualifies for registration as a utility model
if it is new and industrially applicable. (Sec. 109, IPC)
Industrial Design
any composition of lines or colors or any three-dimensional
form, whether or not associated with lines or colors,
provided that such composition or form gives a special
appearance to and can serve as pattern for an industrial
product or handicraft. It must be new or ornamental (Sec.
112, 113 IPC).
Patentable inventions
● Any technical solution of a problem in

any field of human activity which is
new, involves an inventive step and is
industrially applicable. It may be, or
may relate to, a product, or process, or
an improvement of any of the
foregoing (IPC, Sec. 21).
Criteria for Patentability
Novelty
An invention shall not be considered new if it
forms part of a prior art (Sec. 23, IPC).
Inventive Step
if, having regard to prior art, it is not obvious to a
person skilled in the art at the time of the filing date or
priority date of the application claiming the invention.
Industrially Applicable
An invention that can be produced and used in any industry
(IPC, Sec. 27).
Prior Art
a. Everything which has been made available to the public anywhere in the
world, before the filing date or the priority date of the application claiming the
invention; and
b. b. The whole contents of an earlier published Philippine application or
application with earlier priority date of a different inventor.
Only prior art made available to the public before the filing date or priority date is
considered in assessing inventive step (Revised IRR for RA 8293, Rule 206).
Public disclosure
The ultimate goal of a patent system is to bring new designs and technologies into
the public through disclosure; hence ideas, once disclosed to the public without
protection of a valid patent, are subject to appropriation without significant
restraint (Pearl & Dean vs. Shoemart Inc., G.R. No. 148222, August 15, 2003).
GR: When a work has already been made available to the public, it shall be non-
patentable for absence of novelty.
Public disclosure
XPNs: Non-prejudicial disclosure – the disclosure of information contained in the
application during the 12-month period before the filing date or the priority date of
the application if such disclosure was made by:
1. The inventor;
2. A patent office and the information was contained:
a. In another application filed by the inventor and should have not have
been disclosed by the office, or
b. In an application filed without the knowledge or consent of the inventor
by a third party which obtained the information directly or indirectly from
the inventor;
3. A third party who obtained the information directly or indirectly from the
inventor (IPC, Sec. 25).
Public disclosure
If the disclosure was made by the designer

in the case of industrial design, the period
is 6 months. In other words, the
application must be filed within 6 months
after disclosure for it to be non-prejudicial.
Inventive step
General Rule:
An invention involves an inventive step if, having
regard to prior art, it is not obvious to a person
skilled in the art at the time of the filing date or
priority date of the application claiming the invention
(IPC Sec. 26).
Exception:
In the case of drugs and medicines, there is no inventive
step if the invention results from the mere discovery of a
new form or new property of a known substance which
does not result in the enhancement of the known efficacy
of that substance (IPC, as amended by R.A. 9502, Sec.
26.2).
Test of Non-Obviousness
If any person possessing ordinary skill in the art

was able to draw the inferences and he
constructs that the supposed inventor drew from
prior art, then the latter did not really invent it.
Person skilled in the art
If any person possessing ordinary skill in the art was able to draw the
inferences and he constructs that the A person with ordinary skills in a
certain art or field who is aware of what is a common general knowledge in
the field at the time of the application. “He is presumed to have knowledge
of all references that are sufficiently related to one another and to the
pertinent art and to have knowledge of all arts reasonably pertinent to the
particular problems with which the inventor was involved. He is presumed
also to have had at his disposal the normal means and capacity for routine
work and experimentation” (Revised IRR for R.A. No. 8293, Rule 207).
supposed inventor drew from prior art, then the latter did not really invent it.
A process pertaining to an improvement of the old process
of tile making is patentable.
An improvement in the tile making process is indeed inventive and

goes beyond the exercise of mechanical skill. The applicant has
introduced a new kind of tile for a new purpose. He has improved the
old method of making tiles and pre-cast articles which were not
satisfactory because of an intolerable number of breakages,
especially if deep engravings are made on the tile. He has overcome
the problem of producing decorative tiles with deep engraving, but
with sufficient durability (Aguas v. De Leon, G.R. No. L-32160, January
30, 1982).
Utility model
● A name given to inventions in the mechanical field.
● Utility models differ from inventions for which patents for invention are available
mainly in two respects. First, the technological progress required is smaller
than the technological progress (“inventive step”) required in the case of an
invention for which a patent for invention is available. Second, the maximum
term of protection provided in the law for a utility model is generally much
shorter than the maximum term of protection provided in the law for an
invention for which a patent for invention is available (WIPO Handbook, Chapter
2, “Fields of Intellectual Property Protection”, WIPO Publication No. 489 (E), 2nd
Edition, p. 40.).
Requisites for an invention to be considered as a utility model
If it is new and industrially applicable. A model of

implement or tools of any industrial product even if
not possessed of the quality of invention but which
is of practical utility (IPC, Sec. 109.1).
Industrial Applicability
An invention that can be produced and
used in any industry meets the industrial
application requirement of patent
registrability. This means an invention is
not merely theoretical, but also has a
practical purpose. If the invention is a
product, it should be able to produce a
product and if the invention is a process, it
should be able to lay out a process
(WIPO, IP Handbook 2nd Edition, Chapter 2: “Fields of Intellectual
Property Protection” Publication No. 489 (E), p. 18.)
Term of a utility model
7 years from date of filing of the application

(IPC, Sec. 109.3).
Other forms of patentable inventions
1. Integrated circuit – A product, in its final form, or an intermediate form, in

which the elements, at least one of which is an active elements and some of
all of the interconnections are integrally formed in and or on a piece of
material, and in which is intended to perform an electronic function.
2. Layout design/topography – The three dimensional disposition, however

expressed, of the elements, at least one of which is an active element, and
of some or all of the interconnections of an integrated circuit, or such a
three-dimensional disposition prepared for an integrated circuit intended for
manufacture. Registration is valid for 10 years without renewal counted from
date of commencement of protection.
NON-
PATENTABLE
INVENTIONS
Non-patentable inventions
1. Plant varieties or animal breeds or essentially biological
process for the production of plants or animals. This provision
shall not apply to micro-organisms and non-biological and
microbiological processes
2. Aesthetic creations
3. Discoveries, scientific theories and mathematical methods
4. Schemes, rules and methods of performing mental acts, playing
games or doing business, and programs for computers
5. Anything which is Contrary to public order or morality (IPC as
amended by R.A. 9502, Sec. 22).
6. Methods for treatment of the human or animal body
7. In the case of drugs and medicines, mere discovery of a new
form or new property of a known substance which does not result
in the enhancement of the efficacy of that substance
Ownership of
a patent
Rights to a Patent
Persons entitled to a patent
1. Inventor, his heirs, or assigns (IPC, Sec 28);
2. Joint invention – Jointly by the inventors (IPC, Sec. 28);
3. Two or more persons invented separately and

independently of each other – To the person who filed an
application;
4. Two or more applications are filed – the applicant who has

the earliest filing date or, the earliest priority date. First to
file rule (IPC, Sec. 29).
FIRST-TO-FILE RULE
1. 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
2. Where two or more applications are filed for the

same invention, to the applicant which has the
earliest filing date (IPC, Sec. 29).
INVENTIONS CREATED PURSUANT
TO A COMMISSION
Pursuant to a commission: The person who commissions the work shall own the
patent, unless otherwise provided in the contract.
Pursuant to employment: In case the employee made the invention in the course of
his employment contract, the patent shall belong to:
a. The employee, if the inventive activity is not a part
of his regular duties even if the employee uses the
time, facilities and materials of the employer;
b. The employer, if the inventive activity is the result
of the performance of his regularly-assigned duties,
unless there is an agreement, express or implied, to
the contrary (IPC, Sec. 30).
RIGHT OF PRIORITY
An application for patent filed by any person who has

previously applied for the same invention in another country
which by treaty, convention, or law affords similar
privileges to Filipino citizens, shall be considered as filed
as of the date of filing the foreign application(IPC, Sec. 31).
Filing Date is accorded only when all the requirements

provided under Section 40 are present. Priority Date comes
into play when there is an application for patent for the
same invention that was filed in another country (Salao,
2012).
Conditions in availing of priority date
1. The local application expressly claims priority;
2. It is filed within 12 months from the date the

earliest foreign application was filed; and
3. A certified copy of the foreign application together

with an English translation is filed within 6 months
from the date of filing in the Philippines (Sec. 31, IPC).
Three (3) Main Areas of Activity in the
Grant of Invention Patent
1. Examination as to form or formality

examination;
2. Classification, search and first
publication; and
3. Examination as to substance or
substantive examination
Steps in the registration of a patent
1. Filing of the application
2. Accordance of the filing date
3. Formality examination
4. Classification and Search
5. Publication of application
6. Substantive examination
7. Grant of Patent
8. Publication upon grant
9. Issuance of certificate
Manner of making disclosure
The application shall disclose the invention in a manner

sufficiently clear and complete for it to be carried out
by a person skilled in the art.
Claim
Defines the matter for which protection is
sought. Each claim shall be clear and concise,
and shall be supported by the description. It
must point out and distinctly show the part,
improvement, or combination which the
applicant regards as his invention.
Abstract
A concise summary of the disclosure of the invention as
contained in the description, claims and merely serves as
technical information.
The purpose of requiring a definite and accurate description of

the process is to apprise the public of what the patentee claims
as his invention, to inform the Courts as to what they are called
upon to construe, and to convey to competing manufacturers
and dealers information of exactly what they are bound to avoid.
Unity of invention
The application shall relate to one invention only or to a

group of inventions forming a single general inventive
concept (IPC, Sec. 38.1). If several independent
inventions which do not form a single general inventive
concept are claimed in one application, the application
must be restricted to a single invention (IPC, Sec.
38.2).
Divisional applications
Divisional applications come into play when two or more
inventions are claimed in a single application but are of such a
nature that a single patent may not be issued for them. The
applicant, is thus required to “divide”, that is, to limit the claims
to whichever invention he may elect, whereas those inventions
not elected may be made the subject of separate applications
which are called “divisional applications” (Smith-Kline Beckman
Corp. v. CA, GR No. 126627, August 14, 2003).
First publication
The applicant shall have all the rights of a patentee against any person who, without his
authorization, exercised any of the rights conferred under Section 71 in relation to the
invention claimed in the published patent application, as if a patent had been granted for
that invention, provided that the said person had:
● 1. Actual knowledge that the invention that he was using was the subject matter of a
published application; or
● 2. Received written notice that the invention was the subject matter of a published
application being identified in the said notice by its serial number.
The action may not be filed until after the grant of a patent on the published application
and within four (4) years from the commission of the acts complained of (IPC, Sec. 46).
Effectivity of a patent
A patent shall take effect on the date of the

publication of the grant of the patent in the
IPO Gazette (IPC, Sec. 50.3).
GROUNDS FOR
CANCELLATION
OF A PATENT
Any interested party may petition to cancel any patent or any
claim or parts of a claim any of the following grounds:
1. The invention is not new or patentable;

2. The patent does not disclose the invention in a
manner sufficiently clear and complete for it to be
carried out by any person skilled in the art; or
3. Contrary to public order or morality (IPC, Sec. 61.1);
4. Patent is found invalid in an action for infringement
(IPC, Sec. 82);
5. The patent includes matters outside the scope of
the disclosure contained in the application (IPC, Sec
21, Regulations on Inter Partes Proceeding, Sec.1).
Grounds for cancellation of a utility model
1. The invention does not qualify for registration

as a utility model;
2. That the description and the claims do not
comply with the prescribed requirements;
3. Any drawing which is necessary for the
understanding of the invention has not been
furnished;
4. That the owner of the utility model registration
is not the inventor or his successor in title (IPC,
Sec. 109.4).
Grounds for cancellation of an industrial design
1. The subject matter of the industrial

design is not registrable;
2. The subject matter is not new; or
3. The subject matter of the industrial
design extends beyond the content of
the application as originally filed (IPC,
Sec. 120).
Grounds for Cancellation of Layout-Design of
Integrated Circuits
1. The layout-design is not protectable;

2. The right holder is not entitled to
protection:
3. Where the application for
registration of the layout-design, was
not filed within two (2) years from its
first commercial exploitation anywhere
in the world.
REMEDY OF THE
TRUE AND
ACTUAL
INVENTOR
Remedies of persons with a right to a patent
If a person other than the applicant is declared by final court order

or decision as having the right to a patent, he may within 3 months
after such decision has become final:
1. Prosecute the application as his own
2. File a new patent application
3. Request the application to be refused; or
4. Seek cancellation of the patent (IPC, Sec. 67.1).
Remedies of the true and actual inventor
If a person, who was deprived of the patent without his consent or
through fraud is declared by final court order or decision to be the true
and actual inventor, the court shall order for his substitution as patentee,
or at the option of the true inventor, cancel the patent, and award actual
damages in his favor if warranted by the circumstances (IPC, Sec. 68).
In the two circumstances aforementioned, the court shall furnish the

Office a copy of the order or decision which shall be published in the IPO
Gazette within three (3) months from the date such order or decision
became final and executor, and shall be recorded in the register of the
Office (IPC, Sec. 69).
Time to file action in court
The actions indicated in Sections 67 and 68 shall be filed

within one (1) year from the date of publication made in
accordance with Sections 44 and 51, respectively (IPC,
Sec. 70).
RIGHTS
CONFERRED BY A
PATENT
1. In case of Product – Right to restrain, prohibit and
prevent any unauthorized person or entity from making,
using, offering for sale, selling or importing the product.
2. In case of Process – Right to restrain prohibit and
prevent any unauthorized person or entity from
manufacturing, dealing in, using, offering for sale, selling
or importing any product obtained directly or indirectly
from such process (IPC, Sec. 71).
3. Right to assign the patent, to transfer by succession,
and to conclude licensing contracts (IPC, Sec. 71.2).
CREDITS: This presentation template was created
by Slidesgo, including icons by Flaticon, and
The rights conferred by a patent application take effect
infographics & images by Freepik.
after publication in the Official Gazette (IPC, Sec 46).
LIMITATIONS OF
PATENT RIGHTS
a. Using a patented product after it has been put on the market in the
Philippines by the owner of the product, or with his express consent.
In case of drugs or medicines, the said limitation applies after a drug or

medicine has been introduced in the Philippines or anywhere else in the world by
the patent owner, or by any party authorized to use the invention. This allows
parallel importation for drugs and medicines.
The right to import the drugs and medicines shall be available to any government
agency or any private third party (IPC, Sec. 72.1, as amended by RA No. 9502)
b. Where the act is done privately and on a non-commercial scale or for a non-
commercial purpose (IPC, Sec. 72.2).
c. Exclusively for experimental use of the invention for scientific purposes or

educational purposes. (IPC, Sec. 72.3).
d. In the case of drugs and medicines, where the act includes testing, using,
making or selling the invention including any data related thereto, solely for
purposes reasonably related to the development and submission of information
and issuance of approvals by government regulatory agencies required under any
law of the Philippines or of another country that regulates the manufacture,
construction, use or sale of any product. The data submitted by the original
patent holder may be protected from unfair commercial use provided in Article
39.3 of the TRIPS Agreement (IPC, Sec. 72.4).
e. Where the act consists of the preparation for individual cases, in a pharmacy
or by a medical professional, of a medicine in accordance with a medical
prescription (Sec. 72.5, IPC).
f. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any
other country entering the territory of the Philippines temporarily or accidentally:
Provided, That such invention is used exclusively for the needs of the ship,
vessel, aircraft, or land vehicle and not used for the manufacturing of anything to
be sold within the Philippines (IPC, Sec. 72.5).
Prior user
Person other than the applicant, who in good faith,

started using the invention in the Philippines, or
undertaken serious preparations to use the same,
before the filing date or priority date of the
application shall have the right to continue the use
thereof, but this right shall only be transferred or
assigned further with his enterprise or business (IPC,
Sec. 73).
Use by Government
A Government agency or third person authorized by the Government
may exploit the invention even without agreement of the patent owner
where:
a. The public interest, in particular, national security, nutrition, health
or the development of other sectors, as determined by the appropriate
agency of the government, so requires; or
b. A judicial or administrative body has determined that the manner of
exploitation, by the owner of the patent or his licensee, is anti-
competitive; or
c. In the case of drugs and medicines, there is a national emergency or
other circumstance of extreme urgency requiring the use of the
invention; or
Use by Government
d. In the case of drugs and medicines, there is a public non-

commercial use of the patent by the patentee, without satisfactory
reason; or
e. In the case of drugs and medicines, the demand for the patented
article in the Philippines is not being
met to an adequate extent and on reasonable terms, as determined by
the Secretary of the Department of Health.
Use by Government
The use by the Government, or third person authorized by the
Government, shall be subject, where applicable, to the following
provisions:
1. In situations of national emergency or other circumstances of

extreme urgency, the right holder shall be notified as soon as
reasonably practicable;
2. In the case of public non-commercial use of the patent by the
patentee, without satisfactory reason, the right holder shall be
informed promptly;
3. If the demand for the patented article in the Philippines is not being
met to an adequate extent and on reasonable terms as determined by
the Secretary of Health, the right holder shall be informed promptly;
Use by Government
4. The scope and duration of such use shall be limited to the purpose
for which it was authorized;
5. Such use shall be non-exclusive;
6. The right holder shall be paid adequate remuneration in the
circumstances of each case, taking into account the economic value
of the authorization; and
7. The existence of a national emergency or other circumstances of
extreme urgency, in the case of drugs and medicines shall be subject
to the determination of the President of the Philippines for the
purpose of determining the need for such use or other exploitation,
which shall be immediately executory.
Reverse reciprocity of foreign law
Any condition, restriction, limitation, diminution,

requirement, penalty or any similar burden imposed by the
law of a foreign country on a Philippine national seeking
protection of intellectual property rights in that country,
shall reciprocally be enforceable upon nationals of said
country, within Philippine jurisdiction (Sec. 231, IPC).
Doctrine of exhaustion
Also known as the doctrine of first sale, it provides that

the patent holder has control of the first sale of his
invention. He has the opportunity to receive the full
consideration for his invention from his sale. Hence, he
exhausts his rights in the future control of his invention.
PATENT
INFRINGEMENT
Civil Infringement
The making, using, offering for sale,

selling, or importing a patented product or
a product obtained directly or indirectly
from a patented process, or the use of a
patented process without the
authorization of the patentee constitutes
patent infringement.
Exemptions:
a. Parallel importation for patented drugs and medicines;
Parallel importer is one which imports, distributes, and sells
genuine products in the market, independently of an
exclusive distributorship or agency agreement with the
manufacturer.
b. In the case of drugs and medicines, where the act includes

testing, using, making or selling the invention including any
data related thereto, solely for purposes reasonably related
to the development and submission of information and
issuance of approvals by government regulatory agencies
required under any law of the Philippines or of another
country that regulates the manufacture, construction, use or
sale of any product;
Exemptions:
c. Use of Invention by Government;
d. Compulsory licensing;
e. Procedures on Issuance of a Special Compulsory License

under the TRIPS Agreement for patented drugs and
medicines.
Contributory Infringement
Anyone who actively induces the infringement of a
patent or provides the infringer with a component of
a patented product or of a product produced
because of a patented process knowing it to be
especially adopted for infringing the patented
invention and not suitable for substantial non-
infringing use shall be liable as a contributory
infringer and shall be jointly and severally liable with
the infringer (Sec. 76.6, IPC)
Criminal Infringement
If infringement is repeated by the infringer

or by anyone in connivance with him after
finality of the judgment of the court
against the infringer, the offenders shall,
without prejudice to the institution of a
civil action for damages, be criminally liable
(IPC, Sec. 84).
TESTS IN PATENT
INFRINGEMENT
Literal Infringement
The extent of protection conferred by the patent shall be determined
by the claims, which are to be interpreted in the light of description
and drawings (Sec. 75, IPC).
In using literal infringement, resort must be had, in the first instance,

to the words of the claim. If accused matter clearly falls within the
claim, infringement is made out and that is the end of it. To determine
whether the particular item falls within the literal meaning of the
patent claims, the Court must juxtapose the claims of the patent and
the accused product within the overall context of the claims and
specifications, to determine whether there is exactly identity of all
material elements (Godines v. CA, G.R. No. 97343, September 13,
1993).
Doctrine of Equivalents
Account shall be taken of elements which are equivalent to the elements
expressed in the claims, so that a claim shall be considered to cover not
only all the elements expressed therein, but also equivalents (Sec. 75,
IPC).
According to the doctrine of equivalents, an infringement also occurs
when a device appropriates a prior invention by incorporating its
innovative concept and, despite some modification and change, performs
substantially the same function in substantially the same way to
achieve substantially the same result (Godines v. CA, G.R. No. 97343,
September 13, 1993).
The doctrine of equivalents thus requires satisfaction of the function-
means- and-result test, the patentee having the burden to show that all
three components of such equivalency test are met (Smithkline
Beckman Corporation v. CA, G.R. No. 126627, August 14, 2003).
Civil action for infringement
The owner may bring a civil action with the appropriate Regional Trial
Court to recover from infringer the damages sustained by the former,
plus attorney’s fees and other litigation expenses, and to secure an
injunction for the protection of his rights (IPC, Sec 76.2). If the
damages are inadequate or cannot be reasonably ascertained with
reasonable certainty, the court may award by way of damages a sum
equivalent to reasonable royalty (IPC, Sec 76.3).
No damages can be recovered for acts of infringement committed

more than four (4) years before the filing of the action for
infringement (IPC, Sec. 79).
Criminal action for infringement
Criminal action for infringement – If the infringement is repeated,

the infringer shall be criminally liable and upon conviction, shall
suffer imprisonment of not less than six (6) months but not more
than three (3) years and/or a fine not less than P100,000.00 but
not more than P300,000.00.
The criminal action prescribes in three (3) years from the

commission of the crime (IPC, Sec. 84).
Administrative remedy
Where the amount of damages claimed is not less than

P200,000.00, the patentee may choose to file an administrative
action against the infringer with the Bureau of Legal Affairs (BLA).
The BLA can issue injunctions, order direct infringer to pay
patentee damages, but unlike regular courts, the BLA may not
issue search and seizure warrants or warrants of arrest.
Destruction of Infringing material
The court may, in its discretion, order that the

infringing goods, materials and implements
predominantly used in the infringement be disposed of
outside the channels of commerce of destroyed,
without compensation (IPC, Sec.76.5).
Persons who can file an action for infringement
The patentee or his successors-in-interest may file an

action for infringement (Creser Precision Systems, Inc. v.
CA, G.R. No. 118708, Feb. 2, 1998).
A licensee cannot be considered a successor-in-interest.

GR: A licensee may NOT maintain a suit for infringement.

Only the patentees, his heirs, assignee, grantee or
personal representatives may bring an action for
infringement.
XPN: If the licensing agreement provides that the
licensee may bring an action for infringement or if he was
authorized to do so by the patentee through a special
power of attorney.
Any foreign national or juridical entity who meets the

requirements of Sec. 3 and not engaged in business in
the Philippines, to which a patent has been granted or
assigned, whether or not it is licensed to do business in
the Philippines (IPC, Sec. 77).
DEFENSES IN ACTION FOR INFRINGEMENT
1. Invalidity of the patent (IPC, Sec. 81);
2. Any of the grounds for cancellation of patents:

a. That what is claimed as the invention is not new or patentable
b. That the patent does not disclose the invention in a manner
sufficiently clear and complete for it to be carried out by any person
skilled in the art; or
c. That the patent is contrary to public order or morality
(IPC, Sec. 61).
3. Prescription
The burden of proof to substantiate a charge of
infringement is with the plaintiff. But where the
plaintiff introduces the patent in evidence, and the
same is in due form, there is created a prima facie
presumption of its correctness and validity. The
decision of the Director of Patent in granting the
patent is presumed to be correct. The burden of
going forward with the evidence (burden of
evidence) then shifts to the defendant to
overcome by competent evidence this legal
presumption (MaguanCREDITS:
v. This
CA,presentation
G.R. template
No.L-45101,
was created
November 28, 1986). infographics & images by Freepik.
LICENSING
Modes of obtaining license to exploit
patent rights
1. Voluntary licensing (IPC, Sec. 85)

and
2. Compulsory licensing (IPC, Sec. 93).
VOLUNTARY LICENSING
The grant by the patent owner to a third person of
the right to exploit a patented invention.
Rights of a licensor in voluntary licensing
In the absence of any provision to the contrary in

the technology transfer arrangement, the grant of
a license shall not prevent the licensor from
granting further licenses to third person nor from
exploiting the subject matter of the technology
transfer arrangement himself (IPC, Sec. 89).
Prohibited clauses
1. Those which impose upon the licensee the obligation to

acquire from a specific source capital goods, intermediate
products, raw materials, and other technologies, or of
permanently employing personnel indicated by the licensor;
2. Those pursuant to which the licensor reserves the right to

fix the sale or resale prices of the products manufactured on
the basis of the license;
3. Those that contain restrictions regarding the volume and

structure of production;
Prohibited clauses
4. Those that prohibit the use of competitive technologies in

a non-exclusive technology transfer agreement;
5. Those that establish a full or partial purchase option in

favor of the licensor;
6. Those that obligate the licensee to transfer for free to the

licensor the inventions or improvements that may be
obtained through the use of the licensed technology;
7. Those that require payment of royalties to the owners of

patents for patents which are not used;
Prohibited clauses
8. Those that prohibit the licensee to export the licensed

product unless justified for the protection of the
legitimate interest of the licensor such as exports to
countries where exclusive licenses to manufacture
and/or distribute the licensed product(s) have already
been granted;
9. Those which restrict the use of the technology supplied

after the expiration of the technology transfer
arrangement, except in cases of early termination of the
technology transfer arrangement due to reason(s)
attributable to the licensee;
Prohibited clauses
10. Those which require payments for patents and other
industrial property rights after their expiration,
termination arrangement;
11. Those which require that the technology recipient shall

not contest the validity of any of the patents of the
technology supplier;
12. Those which restrict the research and development

activities of the licensee designed to absorb and adapt
the transferred technology to local conditions or to
initiate research and development programs in
connection with new products, processes or equipment;
Prohibited clauses
13. Those which prevent the licensee from adapting the
imported technology to local conditions, or introducing
innovation to it, as long as it does not impair the quality
standards prescribed by the licensor;
14. Those which exempt the licensor for liability for non-
fulfillment of his responsibilities under the technology
transfer arrangement and/or liability arising from third
party suits brought about by the use of the licensed
product or the licensed technology; and
15. Other clauses with equivalent effects (IPC, Sec. 87).

Mandatory provisions
1. That the laws of the Philippines shall govern the
interpretation of the same and in the event of litigation,
the venue shall be the proper court in the place where
the licensee has its principal office;
2. Continued access to improvements in techniques and

processes related to the technology shall be made
available during the period of the technology transfer
arrangement;
Mandatory provisions
3. In the event the technology transfer arrangement shall
provide for arbitration, the Procedure of Arbitration of the
Arbitration Law of the Philippines or the Arbitration Rules
of the United Nations Commission on International Trade
Law (UNCITRAL) or the Rules of Conciliation and
Arbitration of the International Chamber of Commerce
(ICC) shall apply and the venue of arbitration shall be the
Philippines or any neutral country; and
4. The Philippine taxes on all payments relating to the

technology transfer arrangement shall be borne by the
licensor (IPC, Sec. 88).
Effect of non-conformance with the prohibited
clauses and mandatory provisions
GR: Non-conformance shall automatically render the

technology transfer arrangement unenforceable.
XPN: Unless said technology transfer arrangement is

approved and registered with the Documentation,
Information and Technology Transfer Bureau under the
provisions of Section 91 on exceptional cases (IPC, Sec.
92).
COMPULSORY LICENSING
Jurisdiction
1. The Director of Legal Affairs may grant a license to exploit a patented

invention, even without the agreement of the patent owner, in favor of any
person who has shown his capability to exploit the invention (IPC, Sec. 93).
2. R.A. No. 9502 (Universally Accessible Cheaper and Quality Medicines Act of
2008) however amended Sec. 93 so that it is the Director General of the
IPO who may grant a license to exploit patented invention under the
grounds enumerated therein.
Jurisdiction
1. The Director of Legal Affairs may grant a license to exploit a patented

invention, even without the agreement of the patent owner, in favor of any
person who has shown his capability to exploit the invention (IPC, Sec. 93).
2. R.A. No. 9502 (Universally Accessible Cheaper and Quality Medicines Act of
2008) however amended Sec. 93 so that it is the Director General of the
IPO who may grant a license to exploit patented invention under the
grounds enumerated therein.
The Director General of the Intellectual Property Office may grant a
license to exploit a patented invention, even without the agreement of
the patent owner, in favor of any person who has shown his capability
to exploit the invention, under any of the following circumstances:
1. National emergency or other circumstances of extreme urgency;

2. Where the public interest, in particular, national security, nutrition,
health or the development of other vital sectors of the national
economy as determined by the appropriate agency of the
Government, so requires; or
3. Where a judicial or administrative body has determined that the
manner of exploitation by the owner of the patent or his licensee is
anti- competitive; or
4. In case of public non-commercial use of the patent by the patentee,

without satisfactory reason;
5. If the patented invention is not being worked in the Philippines on a

commercial scale, although capable of being worked, without
satisfactory reason: Provided, that the importation of the patented
article shall constitute working or using the patent; and
6. Where the demand for patented drugs and medicines is not being met
to an adequate extent and on reasonable terms, as determined by
the Secretary of the Department of Health (IPC, Sec. 93, as
amended by RA 9502).
Procedure on Issuance of a Special Compulsory
License under the TRIPS Agreement
The Director General of the Intellectual Property Office,
upon the written recommendation of the Secretary of the
Department of Health, shall, upon filing of a petition, grant a
special compulsory license for the importation of patented
drugs and medicines. The special compulsory license for the
importation contemplated under this provision shall be an
additional special alternative procedure to ensure access to
quality affordable medicines and shall be primarily for
domestic consumption: Provided, that adequate
remuneration shall be paid to the patent owner either by the
exporting or importing country. The compulsory license shall
also contain a provision directing the grantee the license to
exercise reasonable measures to prevent the re-exportation
of the products imported under this provision.
The grant of a special compulsory license

shall be immediately executory.
No court, except the Supreme Court of

the Philippines, shall issue any temporary
restraining order or preliminary injunction
or such other provisional remedies that
will prevent the grant of the special
compulsory license.
A compulsory license shall also be available

for the manufacture and export of drugs and
medicines to any country having insufficient
or no manufacturing capacity in the
pharmaceutical sector to address public
health problems: Provided, That, a
compulsory license has been granted by such
country or such country has, by notification
or otherwise, allowed importation into its
jurisdiction of the patented drugs and
medicines from the Philippines in compliance
with the TRIPS Agreement.
A compulsory license shall also be available

for the manufacture and export of drugs and
medicines to any country having insufficient
or no manufacturing capacity in the
pharmaceutical sector to address public
health problems: Provided, That, a
compulsory license has been granted by such
country or such country has, by notification
or otherwise, allowed importation into its
jurisdiction of the patented drugs and
medicines from the Philippines in compliance
with the TRIPS Agreement.
Requirement to obtain authorization from the patent owner on
reasonable commercial terms and conditions
General Rule: The license will only be granted after the petitioner has made
efforts to obtain authorization from the patent owner on reasonable commercial
terms and conditions but such efforts have not been successful within a
reasonable period of time (IPC, Sec. 95.1).
Exceptions:
1. Where the petition for compulsory license seeks to remedy a practice
determined after judicial or administrative process to be anti-competitive;
2. In situations of national emergency or other circumstances of extreme
urgency;
3. In cases of public non-commercial use; and
4. In cases where the demand for the patented drugs and medicines in the
Philippines is not being met to an adequate extent and on reasonable terms, as
determined by the Secretary of the Department of Health (R.A. 8293, Sec. 95 as
amended by R.A. 9502).
Cancellation of compulsory license
Upon the request of the patentee, the Director may cancel the
compulsory license:
a. If the ground for the grant of the compulsory license no longer exists
and is unlikely to recur;
b. If the licensee has neither begun to supply the domestic market nor
made serious preparation therefor;
c. If the licensee has not complied with the prescribed terms of the
license (IPC, Sec. 101.2).
ASSIGNMENT
AND
TRANSMISSION
OF RIGHTS
ASSIGNMENT AND
TRANSMISSION OF RIGHTS
Patents or applications for patents and invention to which they relate,
shall be protected in the same way as the rights of other property under
the Civil Code.
Inventions and any right, title or interest in and to patents and

inventions covered thereby, may be assigned or transmitted by
inheritance or bequest or may be the subject of a license contract (IPC,
Sec. 103).
Assignment of Inventions
An assignment may be of the entire right, title or interest in and to
the patent and the invention covered thereby, or of an undivided
share of the entire patent and invention, in which event the parties
become joint owners thereof. An assignment may be limited to a
specified territory (IPC, Sec. 104).
Form of Assignment
The assignment must be in writing, acknowledged before a notary
public or other officer authorized to administer oath or perform
notarial acts, and certified under the hand and official seal of the
notary or such other officer (Sec. 105, IPC).
Manner of effecting transfer of rights
1. By inheritance or bequest
2. License contract
Effect of an assignment of a patent
The assignment works as an estoppel by deed,
preventing the assignor from denying the novelty
and utility of the patented invention when sued by
the assignee for infringement.
Effect if the assignment was not recorded in the IPO
A deed of assignment affecting title shall be void as

against any subsequent purchaser or mortgagee for
valuable consideration and without notice unless, it is so
recorded in the Office, within three (3) months from the
date of said instrument, or prior to the subsequent
purchase or mortgage. However, even without recording,
the instruments are binding upon the parties.
TRADEMARK
DEFINITION OF MARKS,
COLLECTIVE MARKS,
TRADE NAMES
DEFINITION OF MARKS, COLLECTIVE MARKS,
TRADE NAMES
Mark means any visible sign

capable of distinguishing the
goods (trademark) or services
(service mark) of an enterprise
and shall include a stamped or
marked container of goods.
TRADE NAMES
Collective mark means any visible sign

designated as such in the application for
registration and capable of distinguishing
the origin or any other common
characteristic, including the quality of
goods or services of different enterprises
which use the sign under the control of
the registered owner of the collective
mark.
TRADE NAMES
Trade name means the name or

designation identifying or distinguishing
an enterprise (IPC, Sec. 121.1, 121.2,
121.3).
Trademark vs. Trade name
TRADEMARK TRADE NAME
Identifies or Identifies or
distinguishes the goods distinguishes the
or services business or enterprise
Registration is required Registration is not

required.
Functions of trademark
Indicator of
Indicator of
goodwill or
source or origin
business
reputation;
Indicator of Advertise the

quality product or
service it
symbolizes
ACQUISITION OF OWNERSHIP
OF MARK
The right to register a trademark should be based on ownership. When
the applicant is not the owner of the trademark being applied for, he has
no right to apply for the registration of the same. Under the Trademark
Law, only the owner of the trademark, trade name or service mark used
to distinguish his goods, business or service from the goods, business or
service of others is entitled to register the same. An exclusive distributor
does not acquire any proprietary interest in the principal's trademark and
cannot register it in his own name unless it is has been validly assigned
to him (Superior Commercial Enterprises, Inc. v. Kunnan Enterprises, G.R.
No. 169974, April 20, 2010).
The rights in a mark shall be acquired
through registration made validly in
accordance with the provisions of the IP
Code (IPC, Sec. 122).
Registration does not confer upon the registrant an
absolute right to the registered mark. The certificate of
registration is merely a prima facie proof that the
registrant is the owner of the registered mark or trade
name. Evidence of prior and continuous use of the mark
or trade name by another can overcome the
presumptive ownership of the registrant and may very
well entitle the former to be declared owner in an
appropriate case.
Marks which may be registered
Any word, name, symbol, emblem, device,

figure, sign, phrase, or any combination
thereof except those enumerated under
Section 123, IPC.
Requirements for a mark to be
registered
● 1. A visible sign (not sounds or scents);

and
● 2. Capable of distinguishing one’s goods
and services from another.
ACQUISITION OF OWNERSHIP
OF MARK
Acquisition of trade names
A name or designation may not be used as

a trade name if by its nature or the use to
which such name or designation may be
put, it is contrary to public order or morals
and if, in particular, it is liable to deceive
trade circles or the public as to the nature
of the enterprise identified by that name.
In particular, any subsequent use of the

trade name by a third party, whether as a
trade name or a mark or collective mark, or
any such use of a similar trade name or
mark, likely to mislead the public, shall be
deemed unlawful (Sec. 165, IPC).
Ownership of a mark or trade name may be acquired
not necessarily by registration but by adoption and
use in trade or commerce. As between actual use of
a mark without registration, and registration of the
mark without actual use thereof, the former
prevails over the latter. For a rule widely accepted
and firmly entrenched is that actual use in
commerce or business is a pre requisite to the
acquisition of the right of ownership (Shangri-la
Hotel Management Ltd. v Developers Group of
companies, March 31, 2006 G.R. No. 159938).
NON-REGISTRABLE MARKS
Non-registrable marks
1. Consists of immoral, deceptive or scandalous
matter or falsely suggest a connection with persons,
institutions, beliefs, or national symbols;
2. Consists of the flag or coat of arms or other insignia
of the Philippines or any of its political subdivisions, or
of any foreign nation;
3. Consists of a name, portrait or signature identifying
a particular living individual except by his written
consent, or the name, signature, or portrait of a
deceased President of the Philippines, during the life
of his widow except by written consent of the widow;
4. Identical with a registered mark belonging to a

different proprietor or a mark with an earlier filing
or priority date, in respect of:
a. The same goods or services, or
b. Closely related goods or services, or
c. If it nearly resembles such a mark as to be
likely to deceive or cause confusion;
5. Is identical with an internationally well-known mark,
whether or not it is registered here, used for
identical or similar goods or services;
6. Is identical with an internationally well-known mark
which is registered in the Philippines with respect
to non-similar goods or services. Provided, that the
interests of the owner of the registered mark are
likely to be damaged by such use;
7. Is likely to mislead the public as to the nature,
quality, characteristics or geographical origin of
the goods or services;
8. Consists exclusively of signs that are generic for
the goods or services that they seek to identify;
9. Consists exclusively of signs that have become
customary or usual to designate the goods or
services in everyday language and established
trade practice;
10. Consists exclusively that may serve in trade to
designate the kind, quality, quantity, intended
purpose, value, geographical origin, time or
production of the goods or rendering of the
services, or other characteristics of the goods or
services;
11. Consists of shapes that may be necessitated by
technical factors or by the nature of the goods
themselves or factors that affect their intrinsic
value;
12. Consists of color alone, unless defined by a given
form; or
13. Is contrary to public order or morality (IPC, Sec.
123).
Instances when non-use of a mark is excused
1. If caused by circumstances arising independently of
the will of the owner. Lack of funds is not an excuse.
2. A use which does not alter its distinctive character
though the use is different from the form in which it
is registered.
3. Use of mark in connection with one or more of the
goods/services belonging to the class in which the
mark is registered.
4. The use of a mark by a company related to the
applicant/registrant.
5. The use of a mark by a person controlled by the
registrant (IPC, Section 152).
PRIOR USE OF MARK AS A
REQUIREMENT
Actual prior use in commerce in the
Philippines has been abolished as a
condition for the registration of
trademark.
CREDITS: This presentation template was created

TEST TO DETERMINE
CONFUSING
SIMILARITY BETWEEN MARKS
Confusion
The likelihood of confusion is a relative concept; to
be determined only according to the particular, and
sometimes peculiar, circumstances of each case. In
trademark cases, even more than in any other
litigation, precedent must be studied in light of the
facts of the particular case. The wisdom of the
likelihood of confusion test lies in its recognition
that each trademark infringement case presents its
own unique set of facts.
Confusion
1. Confusion of Goods – The ordinarily prudent
purchaser would be induced to purchase one
product in the belief that he was purchasing the
other.
2. Confusion of Origin (Confusion of Business) – The
goods of the parties are different, the defendant’s
product is such as might reasonably be assumed to
originate from the plaintiff, and the public would
then be deceived either into that belief or into the
belief that there is some connection between the
plaintiff and defendant which, in fact, does not
exist.
Two (2) tests to determine colorable imitation
1. Dominancy Test
2. Holistic Test
DOMINANCY TEST
It focuses on the similarity of the prevalent features of the

competing marks. If the competing trademark contains the
main or essential or dominant features of another, and
confusion and deception are likely to result, infringement
takes place. Duplication or imitation is not necessary; nor is it
necessary that the infringing label should suggest an effort to
imitate (C. Neilman Brewing Co. v. Independent Brewing Co.,
191 F. 489, 495, citing Eagle White Lead Co. vs. Pflugh [CC]
180 FED. 579). The question is whether the use of marks
involved is likely to cause of confusion or mistake in the mind
of the public or deceive purchasers.
TOTALITY OR HOLISTIC TEST
Confusing similarity is to be determined on the basis of visual,

aural, connotative comparisons and overall impressions
engendered by the marks in controversy as they are
encountered in the marketplace.
The trademarks in their entirety as they appear in their

respective labels are considered in relation to the goods to
which they are attached. The discerning eye of the observer
must focus not only on the predominant words but also on the
other features appearing in both labels in order that he may
draw his conclusion whether one is confusingly similar to the
other
TOTALITY OR HOLISTIC TEST
The dominancy test only relies on visual comparisons

between two trademarks whereas the totality or holistic test
relies not only on the visual but also on the aural and
connotative comparisons and overall impressions between
the two trademarks (Societe Des Produits Nestl, S.A. v. CA,
G.R. No. 112012, Apr. 4, 2001).
Principle of related goods
Goods are related when they belong to the same class or have
the same descriptive properties; when they possess the same
physical attributes or essential characteristics with reference
to their form, composition, texture or quality. They may also be
related because they serve the same purpose or are sold in
grocery stores (Esso Standard Eastern, Inc. vs. The Honorable
Court of Appeals; Canon Kabushiki Kaisha v. Court of Appeals,
G.R. No. 120900, July 20, 2000).
In resolving whether goods are related, several
factors come into play:
a. the business (and its location) to which the goods belong;
b. the class of product to which the goods belong;
c. the product’s quality, quantity, or size, including the nature of the

package, wrapper or container;
d. the nature and cost of the article;
e. the descriptive properties, physical attributes or essential

characteristics with reference to their form, composition, texture or
quality;
In resolving whether goods are related, several
factors come into play:
f. the purpose of the goods;
g. whether the article is bought for immediate consumption, that is,

day- to-day household items;
h. fields of manufacture;
i. the conditions under which the article is usually purchased; and
j. the channels of trade through which the goods flow, how they are
distributed, marketed, displayed and sold (Mighty Corporation vs. E.
J. Gallo Winery, G.R. No. 154342, July 14, 2004).
Non-competing goods
Non-competing goods may be those which, though they are

not in actual competition, are so related to each other that it
might reasonably be assumed that they originate from one
manufacturer. Non-competing goods may also be those which,
being entirely unrelated, could not reasonably be assumed to
have a common source. In the former case of related goods,
confusion of business could arise out of the use of similar
marks; in the latter case of non-related goods, it could not
(Esso Standard Eastern, Inc. v. The Honorable Court of
Appeals, G.R. No. L-29971, August 31, 1982).
Doctrine of Unrelated Goods
The mere fact that one person has adopted and used a
trademark on his goods does not prevent the adoption and
use of the same trademark by others on unrelated articles of
a different kind. Since in this case the trademark of petitioner
is used in the sale of leather wallets, key cases, money folds
made of leather, belts, men's briefs, neckties, handkerchiefs
and men's socks, and the trademark of registrant-appellant is
used in the sale of shoes, which have different channels of
trade, the Director of Patents ought to have reached a
different conclusion (Hickok Manufacturing Co., v. CA, G.R. No.
L-44707, August 31, 1982).
Generic figure
A trademark device is susceptible to registration if it is

crafted fancifully or arbitrarily and is capable of identifying
and distinguishing the goods of one manufacturer or seller
from those of another. Apart from its commercial utility, the
benchmark of trademark registrability is distinctiveness.
Thus, a generic figure as that of a shark, if employed and
designed in a distinctive manner, can be a registrable
trademark device, subject to the provisions of the IP Code
(Great White Shark Enterprises, Inc. v. Danilo M. Caralde, Jr.,
G.R. No. 192294, November 21, 2012).
Idem sonans rule
Two names are said to be "idem sonantes" if the attentive ear
finds difficulty in distinguishing them when pronounced
(Martin v. State, 541 S.W. 2d 605).
Similarity of sound is sufficient to rule that the two marks are

confusingly similar when applied to merchandise of the same
descriptive properties (Marvex Commercial v. Director of
Patent, G.R. No. L-19297, December 22, 1966).
Colorable imitation
Such a close or ingenious imitation as to be calculated to

deceive ordinary persons, or such a resemblance to the
original as to deceive an ordinary purchaser giving such
attention as a purchaser usually gives, as to cause him to
purchase the one supposing it to be the other (Societe des
Produits Nestlé, S.A. v. CA, G.R. No. 112012, April 4, 2001).
Doctrine of Secondary Meaning
This doctrine is to the effect that a word or phrase originally

incapable of exclusive appropriation with reference to an
article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and
so exclusively by one producer with reference to his article
that, in that trade and to that branch of the purchasing public,
the word or phrase has come to mean that the article was his
product (Ang vs. Teodoro, G. R. No. 48226, December 14,
1942).
Trademark Dilution
It is the lessening of the capacity of a famous mark to
identify and distinguish goods or services, regardless of the
presence or absence of (1) competition between the owner of
the famous mark and other parties; or (2) likelihood of
confusion, mistake or deception. Subject to the principles of
equity, the owner of a famous mark is entitled to an
injunction against another person’s commercial use in
commerce of a mark or trade name, if such use begins after
the mark has become famous and causes dilution of the
distinctive quality of the mark (Levi Strauss & Co., vs. Clinton
Apparelle, Inc., G.R. No. 138900, September 20, 2005).
WELL-KNOWN MARKS
WELL-KNOWN MARKS
The scope of protection initially afforded by Article

6bis of the Paris Convention has been expanded
via a nonbinding recommendation that a well-
known mark should be protected in a country even
if the mark is neither registered nor used in that
country (Sehwani, Incorporated vs. In-N-Out Burger,
Inc., G. R. No. 171053, October 15, 2007).
WELL-KNOWN MARKS
A junior user of a well-known mark on goods or

services which are not similar to the goods or
services, and are therefore unrelated, to those
specified in the certificate of registration of the
well-known mark is precluded from using the same
on the entirely unrelated goods or services,
subject to the following requisites, to wit:
WELL-KNOWN MARKS
A junior user of a well-known mark on goods or

services which are not similar to the goods or
services, and are therefore unrelated, to those
specified in the certificate of registration of the
well-known mark is precluded from using the same
on the entirely unrelated goods or services,
subject to the following requisites, to wit:
WELL-KNOWN MARKS
1. The mark is well-known internationally and in the
Philippines;
2. The use of the well-known mark on the entirely

unrelated goods or services would result to the
likelihood of confusion of origin or business or
some business connection or relationship between
the registrant and the user of the mark;
3. The interests of the owner of the well-known mark

are likely to be damaged
Internationally well-known mark
The following constitutes internationally well-known mark:
1. Considered by the competent authority of the Philippines to be

“well-known” internationally and in the Philippines as the mark of a
person other than the applicant or registrant
2. Need not be used or registered in the Philippines
3. Need not be known by the public at large but only by relevant sector
of the public.
Rules regarding internationally-
well known marks
A mark cannot be registered if it is identical with, or
confusingly similar to, or constitutes a translation of a mark
which is considered by the competent authority of the
Philippines to be well-known internationally and in the
Philippines, whether or not it is registered here, as being
already the mark of a person other than the applicant for
registration, and used for identical or similar goods or
services: Provided, That in determining whether a mark is well-
known, account shall be taken of the knowledge of the
relevant sector of the public, rather than of the public at large,
including knowledge in the Philippines which has been
obtained as a result of the promotion of the mark;
Rules regarding internationally-
well known marks
A mark cannot be registered if it is identical with, or
confusingly similar to, or constitutes a translation of a mark
considered well-known in accordance with the preceding
paragraph, which is registered in the Philippines with respect
to goods or services which are NOT similar to those with
respect to which registration is applied for: Provided, That use
of the mark in relation to those goods or services would
indicate a connection between those goods or services, and
the owner of the registered mark: Provided further, That the
interests of the owner of the registered mark are likely to be
damaged by such use (Sec. 123.IPC).
Factors to be considered in determining well-
known marks
Account shall be taken of the knowledge of the relevant sector of the
public, rather than of the public at large, including knowledge in the
Philippines which has been obtained as a result of the promotion of
the mark. The following criteria or any combination thereof may be
taken into account in determining whether a mark is well-known:
1. duration, extent and geographical area of any use of the mark; in

particular, the duration, extent and geographical area of any
promotion of the mark, including advertising or publicity and the
presentation, at fairs or exhibitions, of the goods and/or services to
which the mark applies;
2. market share, in the Philippines and in other countries, of the goods
and/or services to which the mark applies;
known marks
3. degree of the inherent or acquired distinction of the mark;
4. quality image or reputation acquired by the mark;
5. extent to which the mark has been registered in the world;
6. exclusivity of registration attained by the mark in the world;
7. extent to which the mark has been used in the world;
8. exclusivity of use attained by the mark in the world;
9. commercial value attributed to the mark in the world;

known marks
10. record of successful protection of the rights in the mark;
11. outcome of litigations dealing with the issue of whether the mark is
a well-known mark; and
12. presence or absence of identical or similar marks validly registered

for or used on identical or similar goods or services and owned by
persons other than the person claiming that his mark is a well-
known mark.
Provided, further, that the mark is well-known both internationally and

in the Philippines (Sec. 2, Rule 18, A.M. No. 10-3-10-SC, October 18,
2011).
Priority Right
An application for registration of a mark filed in the Philippines
by a person referred to in Section 3 of the IP Code, and who
previously duly filed an application for registration of the same
mark in one of those countries, shall be considered as filed as
of the day the application was first filed in the foreign country.
No registration of a mark shall be granted until such mark has
been registered in the country of origin of the applicant (Sec.
131, IPC).
The owner of a mark seeking priority right is not entitled to

sue for acts committed prior to the date on which his mark
was registered in the Philippines: except in the case of an
owner of a well-known mark.
RIGHTS CONFERRED BY
REGISTRATION
Certificate of registration prima facie
evidence of validity
A certificate of registration of a mark shall be prima facie
evidence of the validity of the registration, the registrant’s
ownership of the mark, and of the registrant’s exclusive right
to use the same in connection with the goods or services and
those that are related thereto specified in the certificate (IPC,
Sec. 138).
Issuance and publication of certificate
The certificate of registration shall be issued when the period
for filing the opposition has expired, or when the Director of
Legal Affairs shall have denied the opposition, and upon
payment of the required fee (IPC, Sec. 136).
The registered mark shall be published, in the form and within

the period fixed by the Regulations. Marks registered at the
Office may be inspected free of charge and any person may
obtain copies thereof at his own expense. This provision shall
also be applicable to transactions recorded in respect of any
registered mark (IPC, Sec. 138).
Duration of a certificate of trademark
registration
A certificate of registration shall remain in force for ten (10)
years, provided that the registrant shall file a declaration of
actual use and evidence to that effect, or shall show valid
reasons based on the existence of obstacles to such use, as
prescribed by the Regulations, within one (1) year from the
fifth anniversary of the date of the registration of the mark.
Otherwise, the mark shall be removed from the Register by the
Office (IPC, Sec. 145).
The applicant or the registrant shall file a declaration of actual
use of the mark with evidence to that effect, as prescribed by
the Regulations within three (3) years from the filing date of
the application. Otherwise, the application shall be refused or
the mark shall be removed from the Register by the Director
(IPC, Sec. 124.2).
Effect of failure to file Declaration of
Actual Use
The applicant or the registrant shall file a declaration of
actual use (DAU) of the mark with evidence to that effect,
within three (3) years from the filing date of the application.
Otherwise, the application shall be refused or the mark shall
be removed from the Register by the Director
(IPC, Sec. 124.2).
A fifth anniversary use is also required. This is done by filing

a declaration of actual use and evidence to that effect
within one year from the fifth anniversary of the registration.
The form and evidence of use required are similar to the
third year DAU. Failure to submit the fifth anniversary use
and evidence to that effect shall merit the cancellation of
the mark.
Renewal of registration
A certificate of registration may be renewed for periods of
ten (10) years at its expiration. Each request for renewal of
registration must be made within 6 months before the
expiration of the registration or within 6 months after such
expiration on payment of the additional fee prescribed (IPC,
Sec. 146).
Rights of a registered mark owner
Except in cases of importation of drugs and medicines
allowed under Section 72.1 of the IP Code and of off- patent
drugs and medicines, the owner of a registered mark shall
have the exclusive right to prevent all third parties not
having the owner’s consent from using in the course of trade
identical or similar signs or containers for goods or services
which are identical or similar to those in respect of which
the trademark is registered where such use would result in
a likelihood of confusion. In case of the use of an identical
sign for identical goods or services, a likelihood of confusion
shall be presumed.
Rights of a registered mark owner
There shall be no infringement of trademarks or trade names
of imported or sold patented drugs and medicines allowed
under Section 72.1 of the IP Code, as well as imported or
sold off-patent drugs and medicines; Provided, That said
drugs and medicines bear the registered marks that have
not been tampered, unlawfully modified, or infringed upon,
under Section 155 of the IP Code (Sec. 147, IPC).
Cancellation of trademark
registration
A trademark registration may be cancelled by
any person who believes that he will be damaged
by the registration of the mark:
1. Within 5 years, from the date of the
registration of the mark; or
2. At any time;
a. If the registered mark becomes the generic
name for the goods or services, or a portion
thereof, for which it is registered;
b. If the mark has been abandoned;
c. If its registration was obtained fraudulently
or contrary to the provisions of the IPC;
A trademark registration may be cancelled by
any person who believes that he will be damaged
by the registration of the mark:
d. If the registered mark is being used by, or with
the permission of, the registrant so as to
misrepresent the source of the goods or
services on or in connection with which the
mark is used;
e. Non-use of the mark within the Philippines,
without legitimate reason, for an
uninterrupted period of 3 years.
NOTE: If in a petition for cancellation of a trademark, it
was established that the petitioner was not its owner,
prior registration can be cancelled without need of filing
a separate petition
USE BY THIRD PARTIES OF
NAMES, ETC.
SIMILAR TO REGISTERED MARK
USE BY THIRD PARTIES OF NAMES, ETC.
SIMILAR TO REGISTERED MARK
Use of indications by third parties for purposes other than
those for which the mark is used
Registration of the mark shall not confer on the registered

owner the right to preclude third parties from using bona
fide their names, addresses, pseudonyms, a geographical
name, or exact indications concerning the kind, quality,
quantity, destination, value, place of origin, or time of
production or of supply, of their goods or services.
INFRINGEMENT AND REMEDIES
Trademark infringement
Use without consent of the trademark owner of any

reproduction, counterfeit, copy or colorable limitation of any
registered mark or trade name. Such use is likely to cause
confusion or mistake or to deceive purchasers or others as to
the source or origin of such goods or services, or Identity of
such business (Esso Standard Eastern v. CA, supra).
A crucial issue in any trademark infringement case is the

likelihood of confusion, mistake or deceit as to the identity,
source or origin of the goods or identity of the business as a
consequence of using a certain mark. Likelihood of confusion
is admittedly a relative term, to be determined rigidly
according to the particular (and sometimes peculiar)
circumstances of each case. Thus, in trademark cases, more
than in other kinds of litigation, precedents must be studied
in the light of each particular case (Mighty Corporation vs. E.
J. Gallo Winery, G.R. No. 154342, 14 July 2004).
Failure to present proof of actual confusion does not negate

their claim of trademark infringement. Trademark
infringement requires the less stringent standard of
“likelihood of confusion” only. While proof of actual confusion
is the best evidence of infringement, its absence is
inconsequential (McDonalds Corporation v. L. C. Big Mak
Burger, Inc., G.R. No. 143993, August 18, 2004).
Elements to be established in trademark
infringement
a. The trademark or trade name is reproduced, counterfeited, copied, or
colorably imitated by the infringer;
b. The infringing mark or trade name is used in connection with the sale,
offering for sale, or advertising of any goods, business or services;
or the infringing mark or trade name is applied to labels, signs,
prints, packages, wrappers, receptacles or advertisements intended
to be used upon or in connection with such goods, business or
services;
Elements to be established in trademark
infringement
c. The use or application of the infringing mark or trade name is likely to
cause confusion or mistake or to deceive purchasers or others as to
the goods or services themselves or as to the source or origin of
such goods or services or the identity of such business; and
d. It is without the consent of the trademark or trade name owner or

the assignee thereof
Counterfeit Goods vs. Colorable Imitation
COUNTERFEIT GOODS COLORABLE IMITATION
any goods, including packaging, bearing "such a close or ingenious imitation as to

without authorization a trademark which is be calculated to deceive ordinary
identical to the trademark validly purchasers, or such resemblance of the
registered in respect of such goods, or infringing mark to the original as to
which cannot be distinguished in its deceive an ordinary purchaser giving such
essential aspects from such a trademark, attention as a purchaser usually gives,
and which thereby infringes the rights of and to cause him to purchase the one
the owner of the trademark in question supposing it to be the other (Emerald vs.
under the law of the country of importation CA, G.R. No. 100098, December 29,
(TRIPs Agreement). 1995).
Remedies of the owner of the
trademark against infringers
Civil
filed with the Regional Trial Courts. The owner of
the registered mark may ask the court to issue a
preliminary injunction to quickly prevent infringer
from causing damage to his business. Furthermore,
the court will require infringer to pay damages to
the owner of the mark provided defendant is shown
to have had notice of the registration of the mark
(which is presumed if a letter R within a circle is
appended) and stop him permanently from using the
mark.
Criminal
the owner of the trademark may ask the court to
issue a search warrant and in appropriate cases,
remedies available shall also include the seizure,
forfeiture and destruction of the infringing goods
and of any materials and implements the
predominant use of which has been in the
commission of the offense.
Administrative
same as in patent infringement cases. If the

amount of damages claimed is not less than
P200,000.00, the registrant may choose to seek
redress against the infringer by filing an
administrative action against the infringer with the
Bureau of Legal Affairs.
Ascertainment of the amount of damages in
a civil action for infringement
The owner of a trademark which has been infringed is entitled to
actual damages:
1. The reasonable profit which the complaining party would have made,
had the defendant not infringed his said rights; or
2. The profit which the defendant actually made out of infringement; or
3. The court may award as damages a reasonable percentage based
upon the amount of gross sales of the defendant or the value of the
services in connection with which the mark or trade name was
issued.
In cases where actual intent to mislead the public or to defraud the

complainant is shown, in the discretion of the court, the damages
may be doubled (IPC, Sec. 156.3).
Jurisdiction over violations of
intellectual property rights
It is properly lodged with the Regional Trial Court even if the
penalty therefore is imprisonment of less than six years, or
from 2 to 5 years and a fine ranging from P50,000 to
P200,000.
R.A. No. 8293 and R.A. No. 166 are special laws conferring
jurisdiction over violations of intellectual property rights to
the Regional Trial Court. They should therefore prevail over
R.A. No. 7691, which is a general law (Samson v. Daway, G.R.
No. 160054-55, July 21, 2004).
Venue in filing actions for
infringement
A.M. 02-1-06-SC (The Rule on Search and Seizure in Civil Ac-

tions for Infringement of Intellectual Property Rights) governs
the issuance of a writ of search and seizure in a civil action
for infringement filed by an intellectual property right owner
against the supposed infringer of his trademark or name.
Under this rule, the claim for damages should be filed with the
same court that issued the writ of search and seizure.
Limitations on the actions for infringement
1. Right of prior user– registered mark shall be without affect
against any person who, in good faith, before filing or
priority date, was using the mark for purposes of his
business (IPC, Sec 159.1).
2. Relief against publisher– injunction against future printing
against an innocent infringer who is engaged solely in the
business of printing the mark (IPC, Sec. 159.2).
3. Relief against newspaper –injunction against the
presentation of advertising matter in future issues of the
newspaper, magazine or in electronic communications in
case the infringement complained of is contained in or is
part of paid advertisement in such materials(IPC, Sec.
159.3)
UNFAIR COMPETITION
Unfair Competition
Employing deception or any other means
contrary to good faith by which a person
passes off his goods or business or
services for those of one who has already
established goodwill thereto (IPC, Sec.
168.2).
Unfair Competition
It is the passing off (or palming off) or attempting to
pass off upon the public of the goods or business of one
person as the goods or business of another with the end
and probable effect of deceiving the public. Passing off
(or palming off) takes place where the defendant, by
imitative devices on the general appearance of the
goods, misleads prospective purchasers into buying his
merchandise under the impression that they are buying
that of his competitors. Thus, the defendant gives his
goods the general appearance of the goods of his
competitor with the intention of deceiving the public
that the goods are those of his competitor (Republic Gas
Corporation v. Petron Corporation, G. R. No. 194062,
June 17, 2013).
Infringement of trademark vs. Unfair
competition
INFRINGEMENT OF UNFAIR
TRADEMARK COMPETITION
Unauthorized use of a trademark. The passing off of one’s goods as those of
another.
Fraudulent intent is unnecessary. Fraudulent intent is essential.
GR: Prior registration of the trademark is Registration is not necessary. (Del Monte
a prerequisite to the action. Corp. v. CA, G.R. No. 78325, January 23,
XPN: Well-known marks 1990)
Right protected under unfair
competition
A person who has identified in the mind of the public the
goods he manufactures or deals in, his business or
services from those of others, whether or not a
registered mark is employed, has a property right in the
goodwill of the said goods, business or services so
identified, which will be protected in the same manner
as other property rights (IPC, Sec. 168.1).
Persons guilty of unfair
competition
1. Any person, who is selling his goods and gives
them the general appearance of goods of another
manufacturer or dealer, either as to the goods
themselves or in the wrapping of the packages in
which they are contained, or the devices or words
thereon, or in any other feature of their
appearance, which would be likely to influence
purchasers to believe that the goods offered are
those of a manufacturer or dealer, other than the
actual manufacturer or dealer, or who otherwise
clothes the goods with such
CREDITS: This appearance
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deceive the public andby Slidesgo,
defraud another of his
including icons by Flaticon, and
legitimate trade, or any subsequent vendor of such
goods or any agent of any vendor engaged in selling
such goods with a like purpose;
2. Any person who by any artifice, or
device, or who employs any other
means calculated to induce the
false belief that such person is
offering the services of another
who has identified such services
in the mind ofCREDITS:
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3. Any person who shall make any
false statement in the course of
trade or who shall commit any
other act contrary to good faith of
a nature calculated to discredit
the goods, business or services of
another. CREDITS: This presentation template was created
Essential Elements of an action for
unfair competition
a. confusing similarity in the general appearance of

the goods, and
b. intent to deceive the public and defraud a

competitor.
Element of passing off
In order to prove a case of unfair competition, it is

sufficient to show that such deception will be the
natural and probable cause of defendants acts.
"true test" of unfair competition
The "true test" of unfair competition has thus been "whether the acts
of the defendant have the intent of deceiving or are calculated to
deceive the ordinary buyer making his purchases under the ordinary
conditions of the particular trade to which the controversy relates."
It is therefore essential to prove the existence of fraud, or the intent
to deceive, actual or probable, determined through a judicious
scrutiny of the factual circumstances attendant to a particular case
(Shang Properties Realty Corporation (formerly The Shang Grand
Tower Corporation) and Shang Properties, Inc. (formerly EDSA
Properties Holdings, Inc.) v. St. Francis Development Corporation,
G.R. No. 190706, July 21, 2014).
TRADE NAME OR
BUSINESS NAME
Trade names or Business Names
Any individual name or surname, firm name, device

nor word used by manufacturers, industrialists,
merchants, and others to identify their businesses,
vocations or occupants (Converse Rubber Corp. vs.
Universal Rubber Products, GR No. L-27425, L-
30505, April 28, 1980).
Limitations on use of trade name or
business name
A person may NOT:
1. Use a name if the word is generic (Lyceum of the

Philippines v. CA, G.R. No. 101897, March 5, 1993).
2. Use any name indicating a geographical locations
(Ang Si Heng vs. Wellington Department Store,
supra).
3. Use any name or designation contrary to public order
or morals.
4. Use a name if it is liable to deceive trade circles or
the public as to the nature of the enterprise
identified by that name (IPC, Sec. 165.1).
Limitations on use of trade name or
business name
5. Subsequently use a trade name likely to mislead the
public as a third party (IPC, Sec. 165.2 [b]).
6. Copy or simulate the name of any domestic product
(for imported products).
7. Copy or simulate a mark registered in accordance
with the provisions of IPC (for imported products).
8. Use mark or trade name calculated to induce the
public to believe that the article is manufactured in
the Philippines, or that it is manufactured in any
foreign country or locality other than the country or
locality where it is in fact manufactured.
NOTE: Items 4, 5 and 6 only applies to imported products and those imported articles shall
not be admitted to entry at any customhouse of the Philippines (IPC, Sec. 166).
COLLECTIVE MARK
Collective Mark
A "collective mark" or “collective trade-name"

is a mark or trade-name used by the
members of a cooperative, an association or
other collective group or organization (RA
166, Sec. 40).
Contents of an application for
registration of a collective mark
1. 2.
The application shall Accompanied by a copy

designate the mark as of the agreement, if any,
a collective mark; governing the use of the
collective mark (IPC,
Sec. 167.2)
Grounds for the cancellation of
collective marks
The Court shall cancel the registration of a collective mark
if the person requesting the cancellation proves that:
1. only the registered owner uses the mark,

2. he uses or permits its use in contravention of the
agreements referred to in Subsection 166.2,
3. he uses or permits its use in a manner liable to deceive
trade circles or the public as to the origin or any other
common characteristics of the goods or services
concerned (IPC, Sec 167.3).
The registration of a collective mark, or an application
therefore shall not be the subject of a license contract.
Criminal penalties under the Intellectual Property Code for
unfair competition, infringement, false designation of origin
and false representations
A criminal penalty of imprisonment from two (2) years to five

(5) years and a fine ranging from Fifty thousand pesos
(P50,000) to Two hundred thousand pesos (P200,000), shall
be imposed on any person who is found guilty of committing
any of the acts. The penalty shall be independent of the civil
and administrative sanctions imposed by law (IPC, Sec 170).
Transliteration vs. Translation of mark
Transliteration Translation of mark
is an act, process or instances of is an act, process or instance of translating

representing or spelling of words, letters as rendering from one language or
or characters of one language in the representational system into another.
letters and characters of another
language or alphabet

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INTELLECTUAL

● “AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY

● The use of intellectual property bears a social function. To

Coverage of intellectual property rights

● National Treatment - A Member country shall accord to

Geographic Indications Industrial Designs

It is in the nature of a Voluntary License Contract.

Patent law seeks to It promotes disclosures of The stringent

● Any technical solution of a problem in

If the disclosure was made by the designer

If any person possessing ordinary skill in the art

An improvement in the tile making process is indeed inventive and

If it is new and industrially applicable. A model of

7 years from date of filing of the application

1. Integrated circuit – A product, in its final form, or an intermediate form, in

2. Layout design/topography – The three dimensional disposition, however

2. Joint invention – Jointly by the inventors (IPC, Sec. 28);

3. Two or more persons invented separately and

4. Two or more applications are filed – the applicant who has

1. If two (2) or more persons have made the

2. Where two or more applications are filed for the

An application for patent filed by any person who has

Filing Date is accorded only when all the requirements

1. The local application expressly claims priority;

2. It is filed within 12 months from the date the

3. A certified copy of the foreign application together

1. Examination as to form or formality

The application shall disclose the invention in a manner

The purpose of requiring a definite and accurate description of

The application shall relate to one invention only or to a

A patent shall take effect on the date of the

1. The invention is not new or patentable;

1. The invention does not qualify for registration

1. The subject matter of the industrial

1. The layout-design is not protectable;

If a person other than the applicant is declared by final court order

In the two circumstances aforementioned, the court shall furnish the

The actions indicated in Sections 67 and 68 shall be filed

In case of drugs or medicines, the said limitation applies after a drug or

c. Exclusively for experimental use of the invention for scientific purposes or

Person other than the applicant, who in good faith,

d. In the case of drugs and medicines, there is a public non-

1. In situations of national emergency or other circumstances of

Any condition, restriction, limitation, diminution,

Also known as the doctrine of first sale, it provides that

The making, using, offering for sale,

b. In the case of drugs and medicines, where the act includes

c. Use of Invention by Government;

e. Procedures on Issuance of a Special Compulsory License

If infringement is repeated by the infringer

In using literal infringement, resort must be had, in the first instance,

No damages can be recovered for acts of infringement committed

Criminal action for infringement – If the infringement is repeated,

The criminal action prescribes in three (3) years from the

Where the amount of damages claimed is not less than

The court may, in its discretion, order that the

The patentee or his successors-in-interest may file an

A licensee cannot be considered a successor-in-interest.

GR: A licensee may NOT maintain a suit for infringement.

Any foreign national or juridical entity who meets the

1. Invalidity of the patent (IPC, Sec. 81);

2. Any of the grounds for cancellation of patents:

1. Voluntary licensing (IPC, Sec. 85)

In the absence of any provision to the contrary in