IP SAMPLEX
commercial nature;
QUESTION 1 (10/10)
A. NO. Inventor A’s analgesic cannot be patented. The second paragraph of Sec.
22.9 of the IP Code expressly provides that salts and other derivative of a known
substance shall be considered the same substitute, unless they differ significantly
in properties with regards to efficacy. In this example, the new analgesic is simply
analgesic X in salt form. This fact makes the new drug non-patentable by clear
provision of law.
B. To avoid possible patent litigation, inventor A may enter into a technology
transfer agreement with the owner of the patent for analgesic X. In a licensing
contract, the agreement will grant inventor A with the authority to commercially
exploit the same intellectual property right under specified terms and conditions.
C. YES. The new drug infringes on the patent of analgesic X. The doctrine of
equivalents provides that an infringement may take place when a device
appropriates a prior invention by incorporating its innovative concept and
although with some modification, and change, performs substantially the same
function in substantially the same way to achieve the same result. In addition, a
product that contains essentially the same limitations as a patented invention
may infringe that patent despite falling outside the patent’s literal terms.
QUESTION 2
A. The new corn variety may not be patented under the IP Code, but may be protected
under RA 9168. The tissue culture of the new corn variety may not be patented being
an essentially biological process for the production of plants. The seaweed may not be
patented as well as the protein from the seaweed and the DNA that codes for the
protein since all of them are naturally occurring beings or organisms. Organisms or
naturally occurring substances may not be the subject of a patent.
B. Assuming that the patent to the tissue culture of the new variety is patentable, it still be
owned by company B. The general rule is that the right to patent belongs to the
inventor, his heirs, or assigns. When 2 or more persons have jointly made an
invention, the right to a patent shall belong them jointly. The exception to the rule is
the work for hire doctrine. A.) The employer has the right to the patent if the invention
is the result of the performance of the employee’s regularly assigned duties. B.) In
case of inventions created pursuant to a commission, the person who commissions
the work shall own the patent. In this case, company B is the employer of X and
commissioner of Z.
QUESTION 3 (38/40)
To: Google
From: ABC
RE: Legal opinion on Google Library Project
ISSUES:
 Does the GLP make Google liable for infringement of copyright or any related right?
 Should the publishers fail to provide Google with the list of excluded books, can
Google include all the copyrighted works of the publishers in the GLP?
 Should the publishers provide them with the list of the works to be excluded which
portions, if any can Google include in the GLP to enable to search such copyrighted
books online through Google?
KEY IDEA: to exempt Google from copyright infringement, it must show that the GLP is within
the bounds of fair use.
DISCUSSION: the idea or concept of fair use refers to using someone else’s work fairly or what
is reasonable under the circumstances. It is an accepted limitation on copyright, the problem
however, in applying fair use is the fact that there is no hard and fast rule in determining what is
fair. Case law on the other hand, provides us with the different factors to consider fair use.
 FAIR USE ELEMENTS
- Using the fair use elements, Google must show that the purpose of GLP is not for a
- It is also difficult to pass the 2nd factor which considers the nature of the copyrighted
work. Fair use is more difficult to establish when the former works are copied as in this
case where the books are scanned for GLP.
- Google will have a hard time passing the 3rd factor which deals with substantiality of
the portion used in relation to the copyrighted work as a whole, given that the books
were scanned in their entirety.
- The 4th factor pertains to the economic effect of GLP. Since the entire books would
have been available online, it might be challenging for Google to pass this because
users will use the GLP service instead of buying the original books.
CONCLUSION:
It may be a challenge for Google to pass the fair use test.
RECOMMENDATIONS:
- Clarify that GLP is for non-commercial purpose
- Refrain from scanning and publishing entire books so as to avoid showing substantial
portions of the copyrighted work to the users
- Respect the moral and economic rights of the publishers or copyright owners.
QUESTION 4 (14/15)
A. Yes. Mr. Molina violated 24/7 Inc’s IP rights. 24/7 may bring civil action for
infringement and also for damages. The measure of damages suffered shall be
either the estimated profit which the complaining party would have made had the
defendant not infringed his rights, or the profit which the defendant actually made
out of the infringement, or upon the discretion of the court, taking into
consideration the profits gained by the defendant. 24/7 may also file for
injunction, impounding of sales, and other documents, court order for the
disposal or destruction of the infringing goods, criminal action, or administrative
sanctions. 24/7 may fall under a well-known mark. A well-known mark need not
be registered in the Philippines to be protected. It extends to goods and services
which are not similar to those with respect to which the registration is applied if its
use will indicate a connection to them.
B. Mr. Molina can raise the defense that a convenience store and a drug store
involve goods that are not closely related. Goods that are not closely related may
bear the same trademark.
IP SAMPLEX 2
QUESTION 1
A. The synchronization license between Viva and De Villa is not valid because Viva
was only contracted by DJ Excon to be the publisher of all the songs that DJ
Excon recorded for Viva.DJ Excon composed the song Bootlikah not Bootlick 2.0
thus the license is invalid for infringing DJ Excon’s exclusive rights over his song
Bootlikah through its unauthorized use.
B. DJ Excon is correct in saying that De Villa still needs to get his permission to use
the song Bootlikah in the political ad.DJ Excon has exclusive rights over the song
Bootlikah because it is an original literary/ artistic work. The song is a work
authorship having been composed and recorded by DJ Excon himself.
C. DJ Excon’s use of the same title per se is not an infringement of the copyright of
Shookt because Bootlikah is still an idea that is not protected by a copyright.
What is being protected by a copyright is the expression of an idea and not the
idea itself.
D. Teacher’s Hershell’s choreography of Bootlick 2.0 is a derivative work of
Macarena because of the substantial alterations made, making it faster and more
complex than the original hence Hershell’s choreography is protected by a
copyright. De Villa’s use of the choreography is not considered fair use because
1
 of its nature (political). The amount and substantiality of the portion used in
relation to the copyrighted work as a whole, which was in its entirety. Lastly, the
effect of use of the choreography on the potential or value of it, which can maybe
in the negative because of politics. De Vill’s unauthorized use of DJ Excon’s song
constitutes copyright infringement because DJ Excon has ownership over the
valid copyright and there was an act of copying elements of the work that are
original.
E. De Villa should show the substantial similarities of the 2 songs by presenting the
audio and lyrical copy of both songs to prove his claim that DJ Excin ripped off or
copied Shookt’s song. De Villa may also present a letter or statement from
Shookt’s recording company or Shookt himself saying that DJ Excon did not
obtain their consent for authorized use of the song.

LEGAL MEMO
TO: LM Railing
Re: Copyright infringement against studio XYZ regarding Harry Potter: Life as a muggle
Issues
- Did Lim Railing create original derivative work harry potter: life as a muggle?
- Does it entitle it to copyright?
- Whether or not studio XYZ should have asked for LM’s permission to use the book in
the movie
Objectives
- Studio XYZ must show that movie was used within fair use doctrine. If not, file an
action or ask for damages.
- Determine whether the movie is a derivative work or not
Conclusion
- While copyright can be obtained in derivative works, “protection for a work employing
pre-existing material in which copyright subsists does not extend to any part of the
work in which it has been unlawfully used by Studio XYZ. It is not considered fair use
because it was for a commercial purpose.
QUESTION 3
A. Mr. Molina violated the intellectual property rights of 24/7 Inc. 24/7 Inc can state
the following causes of action against Mr. Molina.
a. Trademark infringement and unfair competition for unauthorized use of
trademark 24/7 and passing off one’s good as those of 24/7.
b. 24/7 Inc may involve right over 24/7 bring internationally well-known
mark which may not be needed to be registered in the PH to be
afforded protection in which such marks was used in goods although
not similar, but continued use of the mark 24/7 in every goods may
establish a connection that may negatively affect 24/7 Inc. and cause
confusion to the ordinary buyer.