LIP READING ASSIGNMENT
I. INTELLECTUAL PROPERTY RIGHTS IN GENERAL
1987 Constitution, Article XIV, Section 13
Section 13. The State 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 period as may be provided by law.
Civil Code
Article 712
ARTICLE 712. Ownership is acquired by occupation and by
intellectual creation.
Ownership and other real rights over property are acquired and
transmitted by law, by donation, by testate and intestate
succession, and in consequence of certain contracts, by tradition.
They may also be acquired by means of prescription. (609a)
Articles 721 to 724
ARTICLE 721. By intellectual creation, the following persons
acquire ownership:
(1) The author with regard to his literary, dramatic, historical,
legal, philosophical, scientific or other work;
(2) The composer, as to his musical composition;
(3) The painter, sculptor, or other artist, with respect to the
product of his art;
(4) The scientist or technologist or any other person with regard
to his discovery or invention. (n)
ARTICLE 722. The author and the composer, mentioned in Nos. 1
and 2 of the preceding article, shall have the ownership of their
creations even before the publication of the same. Once their
works are published, their rights are governed by the Copyright
laws.
The painter, sculptor or other artist shall have dominion over the
product of his art even before it is copyrighted.
The scientist or technologist has the ownership of his discovery or
invention even before it is patented. (n)
ARTICLE 723. Letters and other private communications in writing
are owned by the person to whom they are addressed and
delivered, but they cannot be published or disseminated without
the consent of the writer or his heirs. However, the court may
authorize their publication or dissemination if the public good or
the interest of justice so requires. (n)
ARTICLE 724. Special laws govern copyright and patent. (429a)
Republic Act No. 8293, Sections 1-4, Section 231
SECTION 1. Title. - This Act shall be known as the “Intellectual
Property Code of the Philippines.”
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.
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. (n)
SECTION 3. International Conventions and Reciprocity. - Any
person who is a national or who is domiciled or has a real and
effective industrial establishment in a country which is a party to
any convention, treaty or agreement relating to intellectual
property rights or the repression of unfair competition, to which
the Philippines is also a party, or extends reciprocal rights to
nationals of the Philippines by law, shall be entitled to benefits to
the extent necessary to give effect to any provision of such
convention, treaty or reciprocal law, in addition to the rights to
which any owner of an intellectual property right is otherwise
entitled by this Act. (n)
SECTION 4. Definitions.
4.1. The term “intellectual property rights” consists of:
a) Copyright and Related Rights;
b) Trademarks and Service Marks;
c) Geographic Indications;
d) Industrial Designs;
e) Patents;
f) Layout-Designs (Topographies) of Integrated Circuits;
and
g) Protection of Undisclosed Information (n, TRIPS).
4.2. The term “technology transfer arrangements” refers to
contracts or agreements involving the transfer of systematic
knowledge for the manufacture of a product, the application of a
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.
4.3. The term “Office” refers to the Intellectual Property Office
created by this Act.
4.4. The term “IPO Gazette” refers to the gazette published by the
Office under this Act.
 Intellectual Property Rights
 Intellectual Property Association of the Philippines vs. Ochoa, G.R. No.204605, July 19, 2016
 Mighty Corporation and La Campana Fabrica de Tobaco, Inc. v. E. & J. Gallo Winery and Andersons Group, Inc., G.R. No. 154342, July 14, 2004
 Cocoland Development Corporation v. NLRC, G.R. No. 98458, July 17, 1996
 Duncan Association of Detailman-PTGWO v. Glaxo Welcome Philippines, Inc., G.R. No. 162994, September 17, 2004
 E.I. Dupont De Nemours and Co. v. Director Emma C. Francisco and Therapharma, Inc. G.R.No. 174379, August 31, 2016
 Melbarose Sasot and Allandale Sasot v. People of the Philippines, G.R. No. 143193, June 29, 2005

TITLE DOCTRINE FACTS ISSUE(s) RULING

Intellectual Property Rights

1. Intellectual Property The method of Petitioner IPAP, an association of more than 100 law Whether or not the NO.
Association of the registration through firms and individual practitioners in Intellectual Madrid Protocol is in
Philippines vs. Ochoa, the IPOPHL, as laid Property Law whose main objective is to promote and conflict with the IP There is no conflict between the Madrid Protocol
G.R. No.204605, July down by the IP Code, protect intellectual property rights in the Philippines Code. and the IP Code.
19, 2016 is distinct and through constant assistance and involvement in the
Natividad separate from the legislation of intellectual property law, has commenced The method of registration through the IPOPHL, as
method of this special civil action for certiorari and prohibition to laid down by the IP Code, is distinct and separate
registration through challenge the validity of the President's accession to from the method of registration through the WIPO,
the WIPO, as set in the Madrid Protocol without the concurrence of the as set in the Madrid Protocol.
the Madrid Protocol. Senate.
The IPOPHL actually requires the designation of the
The IPAP has argued that the implementation of the resident agent when it refuses the registration of a
Madrid Protocol in the Philippines, specifically the mark. Local representation is further required in the
processing of foreign trademark applications, conflicts submission of the Declaration of Actual Use, as well
with Section 125 of the IP Code, regarding the need for as in the submission of the license contract. The
designating their resident agents in the country. The Madrid Protocol accords with the intent and spirit
IPAP has insisted that Article 2 of the Madrid Protocol of the IP Code, particularly on the subject of the
means that foreign trademark applicants may file their registration of trademarks. The Madrid Protocol
applications through the International Bureau or the does not amend or modify the IP Code on the
WIPO, and their applications will be automatically acquisition of trademark rights considering that the
granted trademark protection without the need for applications under the Madrid Protocol are still
 designating their resident agents in the country. examined according to the relevant national law. In
that regard, the IPOPHL will only grant protection to
The IPAP has prayed that the implementation of the a mark that meets the local registration
Madrid Protocol in the Philippines be restrained in requirements.
order to prevent future wrongs considering that the
IPAP and its constituency have a clear and unmistakable
right not to be deprived of the rights granted them by
the IP Code and existing local laws.

2. Mighty In resolving whether E. & J. GALLO WINERY and THE ANDRESONS GROUP, WON the CA did not NO.
Corporation and goods are related, INC (respondents) sued MIGHTY CORPORATION and LA follow prevailing Wines and cigarettes are not identical, similar,
La Campana several factors come CAMPANA FABRICA DE TABACO, INC. (petitioners) in laws and competing or related goods.
Fabrica de Tobaco, into play: (a) the the RTC-Makati for trademark and trade name jurisprudence when
Inc. v. E. & J. Gallo business (and its infringement and unfair competition. Gallo Winery it held that: [a] RA In resolving whether goods are related, several
Winery and location) to which the claimed that Mighty Corporation adopted the Gallo 8293 (Intellectual factors come into play:
Andersons Group, goods belong (b) the trademark to ride on Gallo Winery’s and Gallo and Property Code of ·         the business (and its location) to which the
Inc., class of product to Ernest & Julio Gallo trademark’s established the Philippines [IP goods belong
G.R. No. 154342, July which the goods reputation and popularity, thus causing confusion, Code]) was ·         the class of product to which the good belong
14, 2004 belong (c) the deception and mistake on the part of the purchasing applicable in this ·         the product’s quality, quantity, or size,
Nato product’s quality, public who had always associated Gallo and Ernest and case; [b] GALLO including the nature of the package, wrapper or
quantity, or size, Julio & Gallo trademarks with Gallo Winery’s wines. cigarettes and container
including the nature GALLO wines were ·         the nature and cost of the articles
of the package, In their answer, petitioners alleged, among other identical, similar or ·         the descriptive properties, physical attributes or
wrapper or container  affirmative defenses that: petitioners Gallo cigarettes related goods for essential characteristics with reference to their form,
(d) the nature and and Gallo Winery’s wine were totally unrelated the reason alone composition, texture or quality
cost of the articles (e) products. To wit: that they were ·         the purpose of the goods
the descriptive purportedly forms ·         whether the article is bought for immediate
properties, physical 1. Gallo Winery’s GALLO trademark registration of vice; [c] both consumption, that is, day-to-day household items
attributes or essential certificates covered wines only, and not cigarettes; goods passed ·         the field of manufacture
characteristics with through the same ·         the conditions under which the article is usually
reference to their 2. GALLO cigarettes and GALLO wines were sold through channels of trade purchased and
form, composition, different channels of trade; and [d] petitioners ·         the articles of the trade through which the
texture or quality (f) were liable for goods flow, how they are distributed, marketed,
the purpose of the 3. the target market of Gallo Winery’s wines was the trademark displayed and sold.
goods (g) whether the middle or high-income bracket while Gallo cigarette infringement, unfair
article is bought for buyers were farmers, fishermen, laborers and other competition and The test of fraudulent simulation is to the likelihood
immediate low-income workers; damages. of the deception of some persons in some measure
consumption, that is, acquainted with an established design and desirous
day-to-day household 4. that the dominant feature of the Gallo cigarette was of purchasing the commodity with which that design
items (h) the fields of the rooster device with the manufacturer’s name has been associated. The simulation, in order to be
manufacture (i) the clearly indicated as MIGHTY CORPORATION, while in the objectionable, must be as appears likely to mislead
conditions under case of Gallo Winery’s wines, it was the full names of the ordinary intelligent buyer who has a need to
which the article is the founders-owners ERNEST & JULIO GALLO or just supply and is familiar with the article that he seeks to
usually purchased and their surname GALLO; purchase.
(j) the channels of
trade through which The petitioners are not liable for trademark
the goods flow, how infringement, unfair competition or damages.
they are distributed,
marketed, displayed Respondent Gallo Winery is a foreign corporation not
and sold. doing business in the Philippines but organized and
existing under the laws of the State of California, United
States of America (U.S.), where all its wineries are
located. Gallo Winery produces different kinds of wines
and brandy products and sells them in many countries
under different registered trademarks, including the
GALLO and ERNEST & JULIO GALLO wine trademarks.
Respondent domestic corporation, Andresons, has
been Gallo Winerys exclusive wine importer and
distributor in the Philippines since 1991, selling these
products in its own name and for its own account. Gallo
Winerys GALLO wine trademark was registered in the
principal register of the Philippine Patent Office (now
Intellectual Property Office) on November 16, 1971
under Certificate of Registration No. 17021 which was
renewed on November 16, 1991 for another 20 years.
Gallo Winery also applied for registration of its ERNEST
& JULIO GALLO wine trademark on October 11, 1990
under Application Serial No. 901011-00073599-PN but
the records do not disclose if it was ever approved by
the Director of Patents.

On the other hand, petitioners Mighty Corporation and

La Campana and their sister company, Tobacco
Industries of the Philippines (Tobacco Industries), are
engaged in the cultivation, manufacture, distribution
and sale of tobacco products for which they have been
using the GALLO cigarette trademark since 1973. The
Bureau of Internal Revenue (BIR) approved Tobacco
Industries use of GALLO 100s cigarette mark on
September 14, 1973 and GALLO filter cigarette mark on
March 26, 1976, both for the manufacture and sale of
its cigarette products. In 1976, Tobacco Industries filed
its manufacturers sworn statement as basis for BIRs
collection of specific tax on GALLO cigarettes. On
February 5, 1974, Tobacco Industries applied for, but
eventually did not pursue, the registration of the GALLO
cigarette trademark in the principal register of the then
Philippine Patent Office.

In May 1984, Tobacco Industries assigned the GALLO

cigarette trademark to La Campana which, on July 16,
1985, applied for trademark registration in the
Philippine Patent Office. On July 17, 1985, the National
Library issued Certificate of Copyright Registration No.
5834 for La Campanas lifetime copyright claim over
GALLO cigarette labels. Subsequently, La Campana
authorized Mighty Corporation to manufacture and
sell cigarettes bearing the GALLO trademark. BIR
approved Mighty Corporations use of GALLO 100s
cigarette brand, under licensing agreement with
Tobacco Industries, on May 18, 1988, and GALLO
SPECIAL MENTHOL 100s cigarette brand on April 3,
1989. Petitioners claim that GALLO cigarettes have been
sold in the Philippines since 1973, initially by Tobacco
Industries, then by La Campana and finally by Mighty
Corporation.

On the other hand, although the GALLO wine trademark

was registered in the Philippines in 1971, respondents
claim that they first introduced and sold the GALLO and
ERNEST & JULIO GALLO wines in the Philippines circa
1974 within the then U.S. military facilities only. By
1979, they had expanded their Philippine market
through authorized distributors and independent
 outlets. Respondents claim that they first learned about
the existence of GALLO cigarettes in the latter part of
1992 when an Andresons employee saw such cigarettes
on display with GALLO wines in a Davao supermarket
wine cellar section. Forthwith, respondents sent a
demand letter to petitioners asking them to stop using
the GALLO trademark, to no avail.

3. Cocoland Any determination by Cocoland Development Corporation hired Jeremias Should an Petitioner corporation "failed to demonstrate with
Development management as to the Mago, an agriculturist by profession, as Field employer's clear and convincing evidence the alleged company
Corporation v. confidential nature of Supervisor. Sometime in January 1989, Cocoland came determination of a policy which it claimed was violated by the
NLRC, technologies, to know that Mago was engaged in extending technical certain "technology" complainant (private respondent)", and that in any
G.R. No. 98458, July processes, formulae services and advice to small farmers without prior as trade secret be event, even assuming that there was such company
17, 1996 or other so-called clearance from management. Because of this, the considered binding policy prohibiting its employees from transferring
Purificacion trade secrets must company, through its vice president for operations, and conclusive upon technological knowledge to third parties, the so-
have a substantial Alfredo C. de la Cruz, issued a memorandum charging the National Labor called technology was hardly a 'trade secret' since
factual basis which private respondent with reportedly imparting company Relations private respondent had established convincingly via
can pass judicial technology in coffee propagation techniques by Commission? MUST competent evidence that the various propagation
scrutiny. "rendering professional services to outside parties HAVE SUBSTANTIAL techniques claimed by petitioner as its trade secret
without the knowledge/consent of the management", FACTUAL BASIS were readily available to the public.
and in violation of its policy against unauthorized
disclosure of trade secrets, which violation was Does the alleged Who determines what is trade secret?
allegedly a ground for termination of his services with violation of
the company. Private respondent was further advised confidentiality of Any determination by management as to the
to immediately refrain from such consultancy activities. the employer's confidential nature of technologies, processes,
"technology" formulae or other so-called trade secrets must have a
Mago admitted that he accepted the invitations of small constitute just cause substantial factual basis which can pass judicial
farm owners and gave outside consultancy services at for termination of scrutiny.
their farms in order to uplift his standard of living and the erring
that of his men through receipt of voluntary employee? NO This is but an ineludible corollary of the time-tested
remuneration from these farm owners. However, he BASIS principle that "(t)he rules, instructions or commands
denied having violated petitioner's policy against in order to be a ground for discharge on the score of
unauthorized disclosure of its trade secret, claiming disobedience, must be reasonable and lawful, must
that its technology on coffee propagation techniques be known to the employee, and must pertain to the
was no longer a secret as the same had been learned duties which the employees have been engaged to
and applied by outside parties or small farm owners discharge." A fictitious or non-existent "secret" (or a
since 1986. publicly known one as in the instant case) can in no
wise be the basis of a reasonable and lawful rule or
 de la Cruz emphasized that Mago was still bound to
keep confidential the petitioner's technologies which he
had access to, notwithstanding the absence of any
signed agreement to that effect.
De la Cruz directed the Mago "to explain in writing
within 48 hours why the company should not terminate
(his) services for cause.” Mago complied with de la
Cruz’s order but de la Cruz stated that his explanations
were “not admissible with the management” and that
they will terminate his services for loss of trust and
confidence.
company policy regarding confidentiality.
There was no basis at all for private respondent's
dismissal on the ground of either disobedience or
loss of trust and confidence. The petitioner's failure
to prove violation of the policy necessarily means
that private respondent's dismissal was not justified.
It is doctrinal that in an unlawful dismissal case, the
employer has the burden of proving the lawful
cause for the employee's dismissal. To warrant
dismissal for loss of trust and confidence there
should naturally be some basis therefor.
Unsupported by sufficient proof, "loss of confidence"
is without basis and may not be successfully invoked
as a ground for dismissal.

4. Duncan As held in a Georgia, Confronting in this petition, involving the validity of the Whether the YES. Glaxo has a right to guard its trade secrets,
Association of U.S.A case,it is a policy of a pharmaceutical company prohibiting its company policy is manufacturing formulas, marketing strategies and
Detailman- legitimate business employees from marrying employees of any valid other confidential programs and information from
PTGWO v. Glaxo practice to guard competitor company. competitors, especially so that it and Astra are rival
Welcome business companies in the highly competitive pharmaceutical
Philippines, Inc., confidentiality and Pet. Tecson signed a contract of employment that industry.
G.R. No. 162994, protect a competitive stipulates, among others that he agrees to disclose to
September 17, 2004 position by even- management any existing or future relationship by The prohibition against personal or marital
Ubay handedly disqualifying consanguinity or affinity with co-employees or relationships with employees of competitor
from jobs male and employees of competing drug companies and should companies upon Glaxo’s employees is reasonable
female applicants or management find that such relationship poses a under the circumstances because relationships of
employees who are possible conflict of interest, to resign from the that nature might compromise the interests of the
married to a company. company.
competitor.
Employee Code of Conduct of Glaxo similarly provides That Glaxo possesses the right to protect its
that an employee is expected to inform management of economic interests cannot be denied. No less than
an existing or future relationship by consanguinity or the Constitution recognizes the right of enterprises to
affinity with co-employees or employees of competing adopt and enforce such a policy to protect its right to
drug company. reasonable returns on investments and to expansion
and growth.
Tecson was inititally assigned to market Glaxo’s
products in Camarines Sure and Norte sales area. As held in a Georgia, U.S.A case,it is a legitimate
 business practice to guard business confidentiality
Subsequently, Tecson entered into a romantic and protect a competitive position by even-handedly
relationship with Best, an employee of Astra disqualifying from jobs male and female applicants or
Pharmaceuticals (Astra), a competitor of Glaxo. employees who are married to a competitor.

Even before they got married, Tecson received several
reminders from his District Manager regarding the
conflict of interest which his relationship with Betsy clause
might engender. Love prevailed, they got married.
Tecson’s superiors informed him that his relationship
with Betsy gave rise to a conflict of interst and was
given the time to decide which one of the should resign
from their jobs.
Tecson requested more time to resolve the problem
and explained that Astra was planning to merge with
Zeneca and that Betsy was just planning to avail the
redundancy package offered by Astra.
Whether it violates NO.
the equal protection
of the It is a settled principle that the commands of the
Constitution equal protection clause are addressed only to the
state or those acting under color of its authority.
Significantly, the company actually enforced the
policy after repeated requests to the employee to
comply with the policy. Indeed, the application of the
policy was made in an impartial and even-handed
manner, with due regard for the lot of the employee.

Tecson was transferred to Butuan City-Surigao City-

Agusan del Sur sales area.

Tecson sought Glaxo’s reconsideration regarding the

matter and brought it to Glaxo’s Grievancce committee.
During the pendency of the proceedings, he was paid
his salary but was not given samples of products which
were similar competing products of Astra and was not
also included in product conferences.
The parties submitted the matter for voluntary
arbitration

NCMB: affirmed Glaxo’s policy on relationships between

employees and persons employed with competitor
companies as valid
CA: affirmed NCMB
5. E.I. Dupont De
Nemours and Co. 1. A patent is granted Petitioner filed with the Bureau of Patents, Trademarks, 1. Whether or not 1. Yes, Therapharma has the right to intervene.
v. Director Emma to provide rights and and Technology Transfer a petition for revival with cost Therapharma has
C. Francisco and protection to the of their Philippine patent application but this was the right to  It was able to show that it had legal interest to
Therapharma, Inc inventor after an denied by the Director of Patents and subsequently, by intervene intervene in the appeal of petitioner's revival of its
G.R.No. 174379, invention is disclosed the Director General, because thirteen years had patent application because the threat of legal action
August 31, 2016 to the public. It also lapsed from the time their patent application was 2. Whether or not from merck was real and imminent. If Therapharma
Natividad seeks to restrain and declared abandoned which was beyond the patent proceedings waited until EI Dupont was granted a patent
prevent unauthorized reglementary period of four months allowed by law to are absolutely application, its continued marketing of Lifezar would
persons from unjustly do the same. The CA originally ruled in favor of confidential be considered as an infringement of EI Dupont’s
profiting from a petitioner on the ground that the lapses was due to the patent.
protected invention. negligence of its previous resident agent, Atty. Mapili. 3. Whether or not
However, ideas not However, on MR, it reversed its decision and ruled in petitioner was
covered by a patent favor of respondents. Petitioner argued that its petition negligent in the
are free for the public for revival of patent application should be granted prosecution of its 2. No, petitioner's claim of absolute confidentiality
to use and exploit. because it had the right of priority since it filed a patent patent application in patent proceedings is inaccurate.
application in the US on July 11, 1986 and in the
2.  A mere patent Philippines, on July 11, 1986. 4. Whether or not a In the 1962 Revised Rules of Practice, the Bureau of
application does not mere patent Patents, Trademarks, and Technology Transfer
vest any right in the ---- application vests previously required secrecy in pending patent
applicant before the any right in the applications.
issuance of the EI Dupont Nemours is an American Corporation that applicant before the
was organized under the laws of Delaware. It filed its issuance of the The Intellectual Property Code, however, changed
patent.
application for a Philippine Patent  before the Bureau of patent numerous aspects of the old patent law. The
3. Compulsory Patents, Trademarks and Technology Transfer. The Intellectual Property Code was enacted to honor the
licensing is defined in application was for Iosartan, an invention related to the 5. Whether or not country's commitments under the World Trade
the Intellectual treatment of hypertension and congestive heart failure. the invention has Organization — Agreement on Trade-Related Aspects
Property Code as the This was produced and marketed by merck and EI already become part of Intellectual Property Rights (TRIPS Agreement).
"grant a license to Dupont under the brand names Cozaar and Hyzaar. of public domain
The mandatory disclosure requirement in the TRIPS
exploit a patented
Agreement allowed the shift from a first-to-invent
invention, even
system to a first-to-file system. The first-to-file
without the
system required citizens of foreign countries to
agreement of the The said application, however, was abandoned. In their
Petition for Revival, EI Dupont argued that Atty. register their patents in the Philippines before they
patent owner."
Mapili, their former counsel who handled the can sue for infringement.
application, did not inform them about the
abandoment of the said application and they were not The Intellectual Property Code now states that all
aware that he has died. Relief was afforded to them by patent applications must be published in the
the Court of Appeals.
On the other hand, Therapharma, inc.alleged that the
Bureau of Food and Drugs granted its application for a
Iosartan product “Lifezar” which was a medication for
hypertension. According to Therapharma, before its
application with the said Bureau, it made a research of
existing patent applications for similar products and
that it found no existing patent registration since EI
Dupont’s application was considered abandoned but
the Bureau of Patents, Trademark and Technology
Transfer.
According to Therapharma, Merck informed them that
they are pursuing a patent on the Iosartan products in
the Philippines and it would pursue any legal action
necessary to protect its products.
After Therapharma’s motion to intervene was granted,
the CA found that the revival of EI Dupont’s patent
application would be prejudicial to public interest and
Therapharma’s interest in that the latter already
invested P20M to develop its own Iosartan product and
that it acted in good faith when it marketed its
products.
Hence, this petition for review on certiorari.
Intellectual Property Office Gazette and that any
interested party may inspect all documents
submitted to the Intellectual Property Office. The
patent application is only confidential before its
publication.
It was inaccurate, therefore, for petitioner to argue
that secrecy in patent applications prevents any
intervention from interested parties. The
confidentiality in patent applications under the
Intellectual Property Code is not absolute since a
party may already intervene after the publication of
the application.
3. Yes, petitioner was negligent in prosecuting its
application.
Under Chapter VII, Section 111 (a) of the 1962
Revised Rules of Practice, a patent application is
deemed abandoned if the applicant fails to
prosecute the application within four months from
the date of the mailing of the notice of the last
action by the Bureau of Patents, Trademarks, and
Technology Transfer, and not from applicant's
actual notice. |||
Under Section 113, petitioner had until January 20,
1989 to file for a revival of the patent application. Its
Petition for Revival, however, was filed on May 30,
2002, 13 years after the date of abandonment.
Petitioner's patent application, therefore, should
not be revived since it was filed beyond the
allowable period.
Note: The Intellectual Property Code even provides
for a shorter period of three (3) months within which
to file for revival|.
4. No, a mere patent application does not vest any
right in the applicant before the issuance of the
patent.

 Under Section 31 of the Intellectual Property Code, a

right of priority is given to any patent applicant who
has previously applied for a patent in a country that
grants the same privilege to Filipinos.||| Moreover, a
patent applicant with the right of priority is given
preference in the grant of a patent when there are
two or more applicants for the same invention.

Since both the United States and the Philippines are

signatories to the Paris Convention for the Protection
of Industrial Property, an applicant who has filed a
patent application in the United States may have a
right of priority over the same invention in a patent
application in the Philippines. However, a right of
priority does not immediately entitle a patent
applicant the grant of a patent. A right of priority is
not equivalent to a patent.

It was, therefore, inaccurate for EI Dupont to argue

that its prior patent application in the United States
removed the invention from the public domain in the
Philippines. This argument is only relevant if
respondent Therapharma, Inc. had a conflicting
patent application with the Intellectual Property
Office.

5. Yes, the patent has already been part of public

domain.

Under the Intellectual Property Code, the grant of a

patent provides protection to the patent holder from
the indiscriminate use of the invention. However, its
mandatory publication in the intellectual property
 office Gazette allows the bringing of new ideas into
the public. After the publication of the patent, any
person may examine the invention and develop it
into something further than what the original patent
holder may have envisioned. After the lapse of 20
years,  the invention becomes part of the public
domain and is free for the public to use.

In addition, a patent holder of inventions relating to

food or medicine does not enjoy absolute monopoly
over the patent. Both Republic Act No. 165 and the
Intellectual Property Code provide for compulsory
licensing. Compulsory licensing is defined in the
Intellectual Property Code as the "grant a license to
exploit a patented invention, even without the
agreement of the patent owner."

Under Republic Act No. 165, a compulsory license

may be granted to any applicant three (3) years
after the grant of a patent if the invention relates to
food or medicine necessary for public health or
safety consciousness.

6. Melbarose Sasot The crime of Unfair The National Bureau of Investigation conducted an 1. Whether or not The Court held that the crime of Unfair Competition
and Allandale Competition investigation pursuant to a complaint filed by the NBA the court trying the punishable under Article 189 of the Revised Penal
Sasot v. People of punishable under Properties, Inc. against petitioners for possible violation case has jurisdiction Code is a public crime. It is essentially an act against
the Philippines, Article 189 of the of Article 189 of the Revised Penal Code on unfair over the offense the State and it is the latter which principally stands
G.R. No. 143193, Revised Penal Code is competition. Based on the report from the NBI, they charged or the as the injured party although there is a private right
June 29, 2005 a public crime. It is have conducted two investigations due to the person of the violated. The complainants capacity to sue in such
Nato essentially an act petitioners’ alleged participation in the manufacture, accused because the case becomes immaterial. Thus, the information
against the State and printing, sale and distribution of counterfeit “NBA” complainant is a shall be in the name of the People of the Philippines
it is the latter which garment products, which led to the search and seizure foreign corporation and no longer the petitioner which is only an
principally stands as of several items from petitioner’s establishment. not doing business aggrieved party since a criminal offense is essentially
the injured party. The Before arraignment, petitioners filed a Motion to Quash in the Philippines, an act against the State. State is entitled to prosecute
complainant’s on the ground that, the facts charged do not constitute and cannot be the offense even without the participation of the
capacity to sue in such an offense and that the court did not have jurisdiction protected by private offended party, as the crime charged is a
case becomes over the offense charged or the person of the accused. Philippine patent public crime.
immaterial. Petitioners contend that since the complainant is a laws since it is not a With regard to petitioners arguments that the NBA
foreign corporation not doing business in the registered patentee. Properties, Inc., is not entitled to protection under
If prosecution follows Philippines, and cannot be protected by Philippine 2. Whether or not Philippine patent laws since it is not a registered
after the completion patent laws since it is not a registered patentee. the complaint was patentee, that they have not committed acts
of the preliminary Petitioners aver that they have been using the business valid because it was amounting to unfair competition for the reason that
investigation being name ALLANDALE SPORTSLINE, INC. since 1972, and filed in the name of their designs are original and do not appear to be
conducted by the their designs are original and do not appear to be the People of the similar to complainants, and they do not use
Special Prosecutor the similar to complainants, and they do not use Philippines. complainants logo or design, the Court finds that
information shall be in complainants logo or design. these are matters of defense that are better
the name of the In the Comment/Opposition filed by the trial prosecutor ventilated and resolved during trial on the merits of
People of the of Manila RTC Branch 1, it stated that the State is the case.
Philippines and no entitled to prosecute the offense even without the The petition was denied for lack of merit and was
longer the petitioner participation of the private offended party, as the crime remanded to the RTC.
which is only an charged is a public crime, as provided for in the Revised
aggrieved party since Penal Code.
a criminal offense is The trial court sustained the prosecution’s arguments
essentially an act and denied petitioners’ motion to quash which lead to
against the State. It is the filing of a special civil action for Certiorari with the
the latter which is CA. According to the CA, the petition is not the proper
principally the injured remedy in assailing the denial of the quashal motion,
party although there and that the grounds raised therein should be raised
is a private right during the trial of the case on the merits.
violated. Petitioner's Petitioners sought for the reconsideration of the
capacity to sue would Decision, but was denied by the CA, hence this petition.
become, therefore, of
not much significance
in the main case. We
cannot allow a
possible violator of
our criminal statutes
to escape prosecution
upon a far-fetched
contention that the
aggrieved party or
victim of a crime has
no standing to sue.
 Differences between copyrights, trademarks, and patents
 Pearl & Dean (Phil.) Inc. v. Shoemart, Inc. and North Edsa Marketing Inc., G.R. No. 148222, August 15, 2003
 Elidad C. Kho, doing business under the name and style of KEC Cosmetics Laboratory v. Hon. Court of Appeals, Summerville General Merchandising and Company, and
Ang Tiam Chay, G.R. No. 115758, March 19, 2002
 Ferdinand U. Juan v. Roberto U. Juan and Laundromatic Corporation, G.R. No. 221732, August 23, 2017

Differences between copyrights, trademarks, and patents

1. Pearl & Dean (Phil.) Inc. A trademark is any visible sign Pearl and Dean (Phil.), Inc. (PDI) is 1. Whether the the light box The Court of Appeals correctly held that the
v. Shoemart, Inc. and capable of distinguishing the engaged in the manufacture of depicted in such engineering copyright was limited to the drawings alone and
North Edsa Marketing goods (trademark) or services advertising display units simply drawings ipso facto also not to the light box itself.
Inc., (service mark) of an enterprise referred to as light boxes. PDI was protected by such copyright. -
G.R. No. 148222, and shall include a stamped or able to secure a Certificate of LIMITED TO DRAWINGS Although petitioner’s copyright certificate was
August 15, 2003 marked container of goods Copyright Registration, the ALONE AND NOT TO THE entitled “Advertising Display Units” (which
Purificacion advertising light boxes were LIGHT BOX depicted the box-type electrical devices), its
A trade name means the name marketed under the trademark claim of copyright infringement cannot be
or designation identifying or “Poster Ads”. sustained.
distinguishing an enterprise.
In 1985, PDI negotiated with Copyright, in the strict sense of the term, is
Meanwhile, the scope of a defendant-appellant Shoemart, Inc. purely a statutory right. Accordingly, it can cover
copyright is confined to literary (SMI) for the lease and installation of only the works falling within the statutory
and artistic works which are the light boxes in certain SM Makati enumeration or description.
original intellectual creations in and SM Cubao. PDI submitted for
the literary and artistic domain signature the contracts covering Even as we find that P & D indeed owned a valid
protected from the moment of both stores, but only the contract for copyright, the same could have referred only to
their creation. SM Makati, however, was returned the technical drawings within the category of
signed. Eventually, SMI’s informed “pictorial illustrations.” It could not have possibly
Patentable inventions, on the PDI that it was rescinding the stretched out to include the underlying light box.
other hand, refer to any contract for SM Makati due to non- The light box was not a literary or artistic piece
technical solution of a problem performance of the terms thereof. which could be copyrighted under the copyright
in any field of human activity law.
which is new, involves an Years later, PDI found out that exact
inventive step and is industrially copies of its light boxes were installed The Court reiterated the ruling in the case of Kho
applicable. at different SM stores. It was further vs. Court of Appeals, differentiating patents,
discovered that SMI’s sister company copyrights and trademarks, namely:
North Edsa Marketing Inc. (NEMI),
sells advertising space in lighted
display units located in SMI’s
different branches.
PDI sent a letter to both SMI and
NEMI enjoining them to cease using
the subject light boxes, remove the
same from SMI’s establishments and
to discontinue the use of the
trademark “Poster Ads,” as well as
the payment of compensatory
damages.
Claiming that both SMI and NEMI
failed to meet all its demands, PDI
filed this instant case for infringement
of trademark and copyright, unfair ———————-
competition and damages.
SMI maintained that it RIGHTS
independently developed its poster
panels using commonly known
techniques and available technology,
without notice of or reference to
PDI’s copyright. SMI noted that the
registration of the mark “Poster Ads”
was only for stationeries such as
letterheads, envelopes, and the like.
Besides, according to SMI, the word
“Poster Ads” is a generic term which
cannot be appropriated as a
trademark, and, as such, registration
of such mark is invalid. On this basis,
SMI, aside from praying for the
dismissal of the case, also
counterclaimed for moral, actual and
exemplary damages and for the
2. Whether there was a patent
infringement. - NO PATENT
———————-
3. Whether the owner of a
registered trademark legally
prevent others from using
such trademark if it is a mere
abbreviation of a term
descriptive of his goods,
services or business? - NO
TRADEMARK INFRINGEMENT
SINCE REGISTRATION IS AN
ESSENTIAL ELEMENT THEREOF
A trademark is 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. In
relation thereto, a trade name means the name
or designation identifying or distinguishing an
enterprise. Meanwhile, the scope of a copyright
is confined to literary and artistic works which
are original intellectual creations in the literary
and artistic domain protected from the moment
of their creation. Patentable inventions, on the
other hand, refer to any technical solution of a
problem in any field of human activity which is
new, involves an inventive step and is industrially
applicable.
——————————————
Petitioner never secured a patent for the light
boxes. It therefore acquired no patent rights
which and could not legally prevent anyone
from manufacturing or commercially using the
contraption. To be able to effectively and legally
preclude others from copying and profiting from
the invention, a patent is a primordial
requirement. No patent, no protection.
———————————————-
On the issue of trademark infringement, the
petitioner’s president said “Poster Ads” was a
contraction of “poster advertising.” P & D was
able to secure a trademark certificate for it, but
one where the goods specified were “stationeries
such as letterheads, envelopes, calling cards and
newsletters.”Petitioner admitted it did not
commercially engage in or market these goods.
On the contrary, it dealt in electrically operated
backlit advertising units which, however, were
not at all specified in the trademark certificate.
 cancellation of PDI’s Certification of Assuming arguendo that “Poster Ads” could
Copyright Registration, and validly qualify as a trademark, the failure of P & D
Certificate of Trademark Registration. to secure a trademark registration for specific use
on the light boxes meant that there could not
RTC: SMI and NEMI jointly and have been any trademark infringement since
severally liable for infringement of registration was an essential element thereof.
copyright and infringement of
trademark

CA: Not liable for copyright and

infringement of trademark

2. Elidad C. Kho, doing Trademark, copyright and On December 20, 1991, petitioner Whether or not the copyright NO. Trademark, copyright and patents are
business under the patents are different intellectual Elidad C. Kho filed a complaint for and patent over the name and different intellectual property rights that cannot
name and style of property rights that cannot be injunction and damages with a prayer container of a beauty cream be interchanged with one another. A trademark
KEC Cosmetics interchanged with one another. for the issuance of a writ of product would entitle the is any visible sign capable of distinguishing the
Laboratory v. Hon. preliminary injunction against the registrant to the use and goods (trademark) or services (service mark) of
Court of Appeals, respondents Summerville General ownership over the same to an enterprise and shall include a stamped or
Summerville Merchandising and Company the exclusion of others. marked container of goods. In relation thereto, a
General (Summerville, for brevity) and Ang trade name means the name or designation
Merchandising and Tiam Chay. identifying or distinguishing an enterprise.
Company, and Ang Meanwhile, the scope of a copyright is confined
Tiam Chay, Petitioner, owner of KEC Cosmetics to literary and artistic works which are original
G.R. No. 115758, Laboratory, is the registered owner of intellectual creations in the literary and artistic
March 19, 2002 the copyrights Chin Chun Su and Oval domain protected from the moment of their
Ubay Facial Cream Container/Case creation. Patentable inventions, on the other
(Certificates of Copyright Registration hand, refer to any technical solution of a problem
No. 0-1358 and No. 0-3678). She also in any field of human activity which is new,
has patent rights over Chin Chun Su involves an inventive step and is industrially
& Device and Chin Chun Su for applicable.
medicated cream after purchasing
the same from Quintin Cheng. She In order to be entitled to exclusively use the
alleged that respondent Summerville same in the sale of the beauty cream product,
advertised and sold petitioner’s the user must sufficiently prove that she
cream products and in the same registered or used it before anybody else did.
container. She alleged that The petitioner's copyright and patent
respondents should be enjoined registration of the name and container would
from allegedly infringing on the not guarantee her the right to the exclusive use
copyrights and patents of the of the same for the reason that they are not
petitioner. appropriate subjects of the said intellectual
rights. Consequently, a preliminary injunction
On their defense, respondent order cannot be issued for the reason that the
Summerville alleged that they are petitioner has not proven that she has a clear
the exclusive re-packer and right over the said name and container to the
distributor of Chin Chun Su products exclusion of others, not having proven that she
manufactured by Shun Yi Factory of has registered a trademark thereto or used the
Taiwan. Shun Yi Factory authorized same before anyone did.
Summerville to register its trade
name Chin Chun Su Medicated Hence, the petition is hereby denied.
Cream with the Philippine Patent
Office. They further alleged that KEC
Cosmetics obtained the copyrights
through fraud, misrepresentation
and falsification.
After due hearing on the application
for preliminary injunction, the trial
court granted the application for
preliminary injunction.

Upon appeal, the appellate court

rendered a decision in favor of
respondent, ruling that: “The
registration of the trademark or
brand name "Chin Chun Su" by KEC
with the supplemental register of the
Bureau of Patents, Trademarks and
Technology Transfer cannot be
equated with registration in the
principal register, which is duly
protected by the Trademark Law.”

Petitioner was barred from using the

trademark Chin Chun Su and
upholding the right of the
respondents to use the same, but

3. Ferdinand U. Juan Copyright is the right of literary
v. Roberto U. Juan property as recognized and
and Laundromatic sanctioned by positive law.[14]
Corporation An intangible, incorporeal right
G.R. No. 221732, granted by statute to the author
August 23, 2017 or originator of certain literary or
Natividad artistic productions, whereby he
is invested, for a limited period,
with the sole and exclusive
privilege of multiplying copies of
the same and publishing and
selling them.[15] Trade name, on
the other hand, is any
designation which (a) is adopted
and used by person to
denominate goods which he
markets, or services which he
renders, or business which he
conducts, or has come to be so
used by other, and (b) through
its association with such goods,
services or business, has
acquired a special significance as
the name thereof, and (c) the
use of which for the purpose
stated in (a) is prohibited neither
by legislative enactment nor by
otherwise defined public policy.
recognizing the copyright of the
petitioner over the oval shaped
container of her beauty cream.
Respondent Roberto U. Juan claimed
that he began using the name and
mark "Lavandera Ko" in his laundry
business on July 4, 1994. He then
opened his laundry store at No. 119
Alfaro St., Salcedo St., Makati City in
1995. Thereafter, on March 17, 1997,
the National Library issued to him a
certificate of copyright over said
name and mark.
The Respondent Roberto then
formed a corporation to handle the
said business, hence, Laundromatic
Corporation (Laundromatic) was
incorporated in 1997, while
"Lavandera Ko" was registered as a
business name on November 13,
1998 with the Department of Trade
and Industry (DTI). Thereafter,
respondent Roberto discovered that
his brother, petitioner Fernando was
able to register the name and mark
"Lavandera Ko" with the Intellectual
Property Office (IPO) on October 18,
2001, the registration of which was
filed on June 5, 1995. Respondent
Roberto also alleged that a certain
Juliano Nacino (Juliano) had been
writing the franchisees of the former
threatening them with criminal and
civil cases if they did not stop using
the mark and name "Lavandera Ko."
It was found out by respondent
Roberto that petitioner Fernando had
WHETHER OR NOT A MARK IS "Lavandera Ko," the mark in question in this case
THE SAME AS A COPYRIGHT. is being used as a trade name or specifically, a
WHETHER OR NOT FERNANDO service name since the business in which it
U. JUAN IS THE OWNER OF pertains involves the rendering of laundry
THE MARK "LAVANDERA KO." services. Under Section 121.1 of R.A. No. 8293,
D. "mark" is defined as 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. As such,
the basic contention of the parties is, who has
the better right to use "Lavandera Ko" as a
service name because Section 165.2[13] of the
said law, guarantees the protection of trade
names and business names even prior to or
without registration, against any unlawful act
committed by third parties. A cause of action
arises when the subsequent use of any third
party of such trade name or business name
would likely mislead the public as such act is
considered unlawful. Hence, the RTC erred in
denying the parties the proper determination as
to who has the ultimate right to use the said
trade name by ruling that neither of them has
the right or a cause of action since "Lavandera
Ko" is protected by a copyright.
Copyright and trade or service name are
different. Copyright is the right of literary
property as recognized and sanctioned by
positive law.[14] An intangible, incorporeal right
granted by statute to the author or originator of
certain literary or artistic productions, whereby
he is invested, for a limited period, with the sole
and exclusive privilege of multiplying copies of
the same and publishing and selling them.[15]
been selling his own franchises.
Roberto filed a petition for injunction,
unfair competition, infringement of
copyright, cancellation of trademark
and name with/and prayer for TRO
and Preliminary Injunction with the
Regional Trial Court
RTC issued a writ of preliminary
injunction against petitioner
Fernando
RTC rendered a Resolution dated
September 23, 2013, dismissing the
petition and ruling that neither of the
parties had a right to the exclusive
use or appropriation of the mark
"Lavandera Ko" because the same
was the original mark and work of a
certain Santiago S. Suarez (Santiago).
According to the RTC, the mark in
question was created by Suarez in
1942 in his musical composition
called, "Lavandera Ko" and both
parties of the present case failed to
prove that they were the originators
of the same mark.
National Library is hereby ordered to
cancel the Certificate of Registration
issued to Roberto U. Juan on March
17, 1997 over the word "Lavandera
Ko," under certificate no. 97-362.
Moreover, the Intellectual Property
Office is also ordered to cancel
Certificate of Registration No. 4-1995-
102749, Serial No. 100556, issued on
October 18, 2001, covering the work
LAVANDERA KO AND DESIGN, in favor
of Fernando U. Juan.
Petitioner elevated the case to the CA
Trade name, on the other hand, is any
designation which (a) is adopted and used by
person to denominate goods which he markets,
or services which he renders, or business which
he conducts, or has come to be so used by other,
and (b) through its association with such goods,
services or business, has acquired a special
significance as the name thereof, and (c) the use
of which for the purpose stated in (a) is
prohibited neither by legislative enactment nor
by otherwise defined public policy.[
Lavandera Ko," being a musical composition
with words is protected under the copyright law
(Part IV, R.A. No. 8293) and not under the
trademarks, service marks and trade names law
(Part III, R.A. No. 8293).
Considering, therefore, the above premise, this
Court deems it proper to remand the case to the
RTC for its proper disposition since this Court
cannot, based on the records and some of the
issues raised by both parties such as the
cancellation of petitioner's certificate of
registration issued by the Intellectual Property
Office, make a factual determination as to who
has the better right to use the
trade/business/service name, "Lavandera Ko."
through a notice of appeal. In his
appeal, petitioner contended that a
mark is different from a copyright and
not interchangeable. Petitioner
Fernando insisted that he is the
owner of the service mark in question
as he was able to register the same
with the IPO pursuant to Section 122
of R.A. No. 8293. Furthermore,
petitioner Fernando argued that the
RTC erred in giving credence to the
article of information it obtained
from the internet stating that the
Filipino folk song "Lavandera Ko" was
a composition of Suarez in 1942
rather than the actual pieces of
evidence presented by the parties.
petitioner elevated the case to the CA
through a notice of appeal. In his
appeal, petitioner contended that a
mark is different from a copyright and
not interchangeable. Petitioner
Fernando insisted that he is the
owner of the service mark in question
as he was able to register the same
with the IPO pursuant to Section 122
of R.A. No. 8293. Furthermore,
petitioner Fernando argued that the
RTC erred in giving credence to the
article of information it obtained
from the internet stating that the
Filipino folk song "Lavandera Ko" was
a composition of Suarez in 1942
rather than the actual pieces of
evidence presented by the parties.
 The Intellectual Property
Republic Act No. 10055 and 10372
 In-N-Out Burger, Inc., v. Sehwani, Incorporated and/or Benita’s Frites, Inc., G.R. No. 179127, December 24, 2008
 Phil Pharmawealth, Inc., v. Pfizer, Inc. and Pfizer (Phil.) Inc., G.R. No. 167715, November 17, 2010
The Intellectual Property Office (Sec. 6-19, Rep. Act No. 8293)
Republic Act No. 10055 and 10372
1. In-N-Out Burger, The essential elements of an action
Inc., v. Sehwani, for unfair competition are (1)
Incorporated confusing similarity in the general
and/or Benita’s appearance of the goods and (2)
Frites, Inc., G.R. No. intent to deceive the public and
179127, December defraud a competitor. The confusing
24, 2008 similarity may or may not result from
Nato similarity in the marks, but may...
result from other external factors in
the packaging or presentation of the
goods. The intent to deceive and
defraud may be inferred from the
similarity of the appearance of the
goods as offered for sale to the
public. Actual fraudulent intent need
not be shown.
Office (Sec.
Respondent IN-N-OUT Burger, Inc., a
foreign corporation (California, USA),
and not doing business in the
Philippines, filed before the Bureau of
Legal Affairs of the IPO, an
administrative complaint against
petitioners Sehwani, Inc. and Benita’s
Frites, Inc. for violation of intellectual
property rights, attorney’s fees and
damages with prayer for the issuance
of a restraining order or writ of
preliminary injunction.
Respondent, alleges that it is the
owner of the tradename “IN-N-OUT”
and trademarks “IN-N-OUT,” “IN-N-
OUT Burger & Arrow Design” and “IN-
N-OUT Burger Logo” which are used in
its business since 1948 up to the
present.  These tradename and
trademarks were registered in the
United States as well as in other parts
of the world.  Petitioner Sehwani
allegedly had obtained a trademark
registration for the mark “IN N OUT”
(with the inside letter O formed like a
6-19, Rep. Act No. 8293)
1. Whether or not the 1. Yes, Respondent has the legal capacity to
Respondent has the legal sue for the protection of its trademarks
capacity to sue for the albeit it is not doing business in the
protection of its trademarks Philippines. Section 160 RA No. 8293
albeit it is not doing business in provides for the right of foreign corporations
the Philippines to sue in trademark or service mark
enforcement action, provided that it meets
2. Whether or not a ground the requirements under Section 3 thereof,
exists for the cancellation of the which are a) Any convention, treaty or
Petitioners’ registration agreement relation to intellectual property
right or the repression of unfair competition
wherein Philippines is also a party; and b) An
extension therein of reciprocal rights.
Moreoever, Article 6 of The Paris
Convention, which governs the protection of
well-known trademarks, is a self-executing
provision and does not require legislative
enactment to give it effect in the member
country.  The essential requirement therein is
that the trademark must be well-known in
the country where protection is sought.  In
this case, Director Beltran-Abelardo found
that In-n-out Burger and Arrow Design is an
internationally well known mark as
evidenced by its trademark registrations
 star) without its authority. around the world and its comprehensive
advertisements therein.
In their answer with counterclaim,
petitioners alleged that respondent 2. Yes. Section 151(b) of RA 8293 provides
lack the legal capacity to sue because that a petition to cancel a registration of a
it was not doing business in the mark may be filed with the Bureau of Legal
Philippines and that it has no cause of Affairs by any person who believes that he is
action because its mark is not or will be damaged by the registration of a
registered or used in the Philippines. mark at any time, if the registered mark
Petitioner Sehwani, Inc. also claimed becomes the generic name for the goods or
that as the registered owner of the "IN- services, or a portion thereof, for which it is
N-OUT" mark, it enjoys the registered, or has been abandoned, or its
presumption that the same was validly registration was fraudulently or contrary to
acquired and that it has the exclusive the provisions of this Act, or if the registered
right to use the mark. Moreover, mark is being used by or with the permission
petitioners argued that other than the of, the registrant so as to misrepresent the
bare allegation of fraud in the source of goods or services on or in
registration of the mark, respondent connection with which the mark is used.  The
failed to show the existence of any of evidence showed that not only did the
the grounds for cancellation thereof petitioners use the IN-N-OUT Burger
under Section 151 of Republic Act trademark for the name of their restaurant,
(R.A.) No. 8293, otherwise known as but they also used identical or confusingly
The Intellectual Property Code of the similar mark for their hamburger wrappers
Philippines. and French-fries receptacles, thereby
effectively misrepresenting the source of the
The Bureau ruled in favor of In-N-Out goods and services.
and cancelled the registration of
Shwani.

2. Phil The exclusive right of a patentee to Pfizer is the registered owner of a a) Can an injunctive relief be Section 37 of Republic Act No. (RA) 165, 17
Pharmawealth, make, use and sell a patented patent pertaining to Sulbactam issued based on an action of which was the governing law at the time of
Inc., v. Pfizer, product, article or process exists only Ampicillin. It is marketed under the patent infringement when the the issuance of respondents' patent,
Inc. and Pfizer during the term of the patent. brand name “Unasyn.” Sometime in patent allegedly infringed has provides:
(Phil.) Inc. January and February 2003, Pfizer already lapsed? -  NO, the
G.R. No. 167715, Since the IP Code and the Rules and discovered that Pharmawealth exclusive right of a patentee to Section 37. Rights of patentees. — A
November 17, Regulations are bereft of any remedy submitted bids for the supply of make, use and sell a patented patentee shall have the exclusive
2010 regarding interlocutory orders of the Sulbactam Ampicillin to several product, article or process right to make, use and sell the
Purificacion IPO-BLA, the only remedy available to hospitals without the Pfizer’s consent. exists only during the term of patented machine, article or product,
Pfizer is to apply the Rules and
Regulations suppletorily. Under the
Rules, a petition for certiorari to the
CA is the proper remedy.
Pfizer then demanded that the the patent.
hospitals cease and desist from
accepting such bids. Pfizer also
demanded that Pharmawealth
immediately withdraw its bids to
supply Sulbactam Ampicillin.
Pharmawealth and the hospitals
ignored the demands.
Pfizer then filed a complaint for patent
infringement with a prayer for
permanent injunction and forfeiture of
the infringing products. A preliminary
injunction effective for 90 days was
granted by the IPO’s Bureau of Legal
Affairs (IPO-BLA). Upon expiration, a
motion for extension filed by Pfizer was
denied. Pfizer filed a Special Civil Action
for Certiorari in the Court of Appeals
(CA) assailing the denial.
While the case was pending in the CA,
Pfizer filed with the Regional Trial Court
of Makati (RTC) a complaint for
infringement and unfair competition,
with a prayer for injunction. The RTC
issued a temporary restraining order,
and then a preliminary injunction.
Pharmawealth filed a motion to dismiss
the case in the CA, on the ground of
forum shopping. Nevertheless, the CA
issued a temporary restraining order.
Pharmawealth again filed a motion to
dismiss, alleging that the patent, the
main basis of the case, had already
lapsed, thus making the case moot, and
that the CA had no jurisdiction to
and to use the patented process for
the purpose of industry or
commerce, throughout the territory
of the Philippines for the term of the
patent; and such making, using, or
selling by any person without the
authorization of the patentee
constitutes infringement of the
patent.
It is clear from the above-quoted provision of
law that the exclusive right of a patentee to
make, use and sell a patented product,
article or process exists only during the term
of the patent. In the instant case, Philippine
Letters Patent No. 21116, which was the
basis of respondents in filing their complaint
with the BLA-IPO, was issued on July 16,
1987. This fact was admitted by respondents
themselves in their complaint. They also
admitted that the validity of the said patent
is until July 16, 2004, which is in conformity
with Section 21 of RA 165, providing that the
term of a patent shall be seventeen (17)
years from the date of issuance thereof. In
the present case, there is no dispute as to
respondents' admission that the term of
their patent expired on July 16, 2004.
Neither is there evidence to show that their
admission was made through palpable
mistake. Hence, contrary to the
pronouncement of the CA, there is no longer
any need to present evidence on the issue of
expiration of respondents' patent.
On the basis of the foregoing, the Court
agrees with petitioner that after July 16,
2004, respondents no longer possess the
review the order of the IPO-BLA exclusive right to make, use and sell the
because this was granted to the articles or products covered by Philippine
Director General. The CA denied all the Letters Patent No. 21116.
motions. Pharmawealth filed a petition
for review on Certiorari with the Two requisites must exist to warrant the
Supreme Court. issuance of an injunctive relief, namely: (1)
the existence of a clear and unmistakable
right that must be protected; and (2) an
urgent and paramount necessity for the writ
to prevent serious damage.

In the instant case, it is clear that when the

———————--
b) What tribunal has jurisdiction
to review the decisions of the
Director of Legal Affairs of the
Intellectual Property Office?
CA issued its January 18, 2005 Resolution
approving the bond filed by respondents, the
latter no longer had a right that must be
protected, considering that Philippine Letters
Patent No. 21116 which was issued to them
already expired on July 16, 2004. Hence, the
issuance by the CA of a temporary restraining
order in favor of the respondents is not
proper.
———————————————----
According to IP Code, the Director General of
the IPO exercises exclusive jurisdiction over
decisions of the IPO-BLA. The question in the
CA concerns an interlocutory order, and not a
decision. Since the IP Code and the Rules and
Regulations are bereft of any remedy
regarding interlocutory orders of the IPO-
BLA, the only remedy available to Pfizer is to
apply the Rules and Regulations suppletorily.
Under the Rules, a petition for certiorari to
the CA is the proper remedy. This is
consistent with the Rules of Court. Thus, the
CA had jurisdiction.
Technology transfer arrangements
https://www.ipophil.gov.ph/services/technology-transfer/
Technology Transfer Arrangement is the process by which one
party systematically transfers to another party the knowledge
for the manufacture of a product, the application of a process,
or rendering of a service, which may involve the transfer,
assignment or licensing of intellectual property rights.
Benefits:
1. Tax-treaty relief - Foreign companies paying taxes on
royalties may apply for tax treaty relief with the Bureau of
Internal Revenue; A certificate of compliance to TTA
regulations is issued by IPOPHL’s Documentation,
Information, Technology Transfer Bureau (DITTB), which
may be presented to BIR.
Eligibility:
Agreements that (1) transfer systematic knowledge, and (2)
transfer, assign, or license intellectual property right are
recommended to be reviewed by the Documentation,
Information, and Technology Transfer Bureau of the IPOPHL.
Application:
1. Application for Preliminary Review
- Any party to a technology transfer arrangement may
file a request for a preliminary review of a draft
technology transfer arrangement to determine
conformance with the Prohibited Clauses and
Mandatory Provisions of the IP Code.
2. Request for Certificate of Compliance
- The parties to a technology transfer arrangement may
jointly file a request for a certification to the effect
that the technology transfer arrangement conforms
with the Prohibited Clauses and Mandatory Provisions
of the IP Code.
3. Request for Certificate of Registration
- If a draft agreement was submitted for evaluation, the
Certificate of Registration shall be issued two (2) days
after the submission of the duly executed agreement
provided it shall not contain any amendment or any
modification not authorized by the Bureau.
- After the issuance of the Certificate of Registration,
the title of the technology transfer arrangement and
parties thereto, its registration number and the date
of registration shall be entered in the Certificate
Registry Book.
4. Trademark License Agreement Recordal
- Recordal of agreements that involve transmission of
rights is necessary. However, registration is no longer
required where the agreement is in conformity of the
requirements of the law under Sections 87 and 88 of
the IP Code.
Mere idea cannot be considered intellectual property, there must be
something tangible at least.
 PATENTS (Sections 21-120, IPC) and applicable provisions of
republic act no. 9502
Section 21. 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 shall be Patentable. It may be, or may relate to, a
product, or process, or an improvement of any of the foregoing. (Sec. 7,
R.A. No. 165a)
Section 22. Non-Patentable Inventions. - The following shall be excluded
from patent protection:
22.1. Discoveries, scientific theories and mathematical methods;
22.2. Schemes, rules and methods of performing mental acts, playing
games or doing business, and programs for computers;
22.3. Methods for treatment of the human or animal body by surgery or
therapy and diagnostic methods practiced on the human or animal body.
This provision shall not apply to products and composition for use in any
of these methods;
22.4. 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.
Provisions under this subsection shall not preclude Congress to consider
the enactment of a law providing sui generis protection of plant varieties
and animal breeds and a system of community intellectual rights
protection:
22.5. Aesthetic creations; and
22.6. Anything which is contrary to public order or morality. (Sec. 8, R.A.
No. 165a)
Section 23. Novelty. . - An invention shall not be considered new if it forms
part of a prior art. (Sec. 9, R.A. No. 165a)
Section 24. Prior Art. - Prior art shall consist of:
24.1. 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
24.2. The whole contents of an application for a patent, utility model, or
industrial design registration, published in accordance with this Act, filed
or effective in the Philippines, with a filing or priority date that is earlier
than the filing or priority date of the application: Provided, That the
application which has validly claimed the filing date of an earlier
application under Section 31 of this Act, shall be prior art with effect as of
the filing date of such earlier application: Provided further, That the
applicant or the inventor identified in both applications are not one and
the same. (Sec. 9, R.A. No. 165a)
Section 25. Non-Prejudicial Disclosure. . - 25.1. The disclosure of
information contained in the application during the twelve (12) months
preceding the filing date or the priority date of the application shall not
prejudice the applicant on the ground of lack of novelty if such disclosure
was made by:
(a) The inventor;
(b) A patent office and the information was contained (a) in another
application filed by the inventor and should 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; or
(c) A third party which obtained the information directly or indirectly from
the inventor.
25.2. For the purposes of Subsection 25.1, "inventor" also means any
person who, at the filing date of application, had the right to the patent.
(n)
Section 26. Inventive Step. - An invention involves an inventive step if,
having regard to prior art, it is not obvious to a person skilled in the art at
the time of the filing date or priority date of the application claiming the
invention. (n)
Section 27. Industrial Applicability. - An invention that can be produced
and used in any industry shall be industrially applicable. (n)
CHAPTER III
RIGHT TO A PATENT
Section 28. Right to a Patent. - The right to a patent belongs to the
inventor, his heirs, or assigns. When two (2) or more persons have jointly
made an invention, the right to a patent shall belong to them jointly. (Sec.
10, R.A. No. 165a)
Section 29. First to File Rule. - If two (2) or more persons have made the
invention separately and independently of each other, the right to the
patent shall belong to the person who filed an application for such
invention, or where two or more applications are filed for the same
invention, to the applicant who has the earliest filing date or, the earliest
priority date. (3rd sentence, Sec. 10, R.A. No. 165a.)
Section 30. Inventions Created Pursuant to a Commission. - 30.1. The
person who commissions the work shall own the patent, unless otherwise
provided in the contract.
30.2. 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 invention is the result of the performance of his
regularly-assigned duties, unless there is an agreement, express or
implied, to the contrary. (n)
Section 31. 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: Provided, That: (a) the local application expressly
claims priority; (b) it is filed within twelve (12) months from the date the
earliest foreign application was filed; and (c) a certified copy of the foreign
application together with an English translation is filed within six (6)
months from the date of filing in the Philippines. (Sec. 15, R.A. No. 165a)
CHAPTER IV
PATENT APPLICATION
Section 32. The Application. - 32.1. The patent application shall be in
Filipino or English and shall contain the following:
(a) A request for the grant of a patent;
(b) A description of the invention;
(c) Drawings necessary for the understanding of the invention;
(d) One or more claims; and
(e) An abstract.
32.2. No patent may be granted unless the application identifies the
inventor. If the applicant is not the inventor, the Office may require him to
submit said authority. (Sec. 13, R.A. No. 165a)
Section 33. Appointment of Agent or Representative. - An applicant who is
not a resident of the Philippines must appoint and maintain a resident
agent or representative in the Philippines upon whom notice or process
for judicial or administrative procedure relating to the application for
patent or the patent may be served. (Sec. 11, R.A. No. 165a)
Section 34. The Request. - The request shall contain a petition for the
grant of the patent, the name and other data of the applicant, the
inventor and the agent and the title of the invention. (n)
Section 35. Disclosure and Description of the Invention. - 35.1. 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. Where
the application concerns a microbiological process or the product thereof
and involves the use of a micro-organism which cannot be sufficiently
disclosed in the application in such a way as to enable the invention to be
carried out by a person skilled in the art, and such material is not available
to the public, the application shall be supplemented by a deposit of such
material with an international depository institution.
35.2. Description. - The Regulations shall prescribe the contents of the
description and the order of presentation. (Sec. 14, R.A. No. 165a)
Section 36. The Claims. - 36.1. The application shall contain one (1) or
more claims which shall define the matter for which protection is sought.
Each claim shall be clear and concise, and shall be supported by the
description.
36.2. The Regulations shall prescribe the manner of the presentation of
claims. (n)
Section 37. The Abstract. - The abstract shall consist of a concise summary
of the disclosure of the invention as contained in the description, claims
and drawings in preferably not more than one hundred fifty (150) words.
It must be drafted in a way which allows the clear understanding of the
technical problem, the gist of the solution of that problem through the
invention, and the principal use or uses of the invention. The abstract shall
merely serve for technical information. (n)
Section 38. Unity of Invention. - 38.1. The application shall relate to one
invention only or to a group of inventions forming a single general
inventive concept.
38.2. If several independent inventions which do not form a single general
inventive concept are claimed in one application, the Director may require
that the application be restricted to a single invention. A later application
filed for an invention divided out shall be considered as having been filed
on the same day as the first application: Provided, That the later
application is filed within four (4) months after the requirement to divide
becomes final or within such additional time, not exceeding four (4)
months, as may be granted: Provided further, That each divisional
application shall not go beyond the disclosure in the initial application.
38.3. The fact that a patent has been granted on an application that did
not comply with the requirement of unity of invention shall not be a
ground to cancel the patent. (Sec. 17, R.A. No. 165a)
Section 39. Information Concerning Corresponding Foreign Application for
Patents. - The applicant shall, at the request of the Director, furnish him
with the date and number of any application for a patent filed by him
abroad, hereafter referred to as the "foreign application," relating to the
same or essentially the same invention as that claimed in the application
filed with the Office and other documents relating to the foreign
application. (n)
CHAPTER V
PROCEDURE FOR GRANT OF PATENT
Section 40. Filing Date Requirements. - 40.1. The filing date of a patent
application shall be the date of receipt by the Office of at least the
following elements:
(a) An express or implicit indication that a Philippine patent is sought;
(b) Information identifying the applicant; and
(c) Description of the invention and one (1) or more claims in Filipino or
English.
40.2. If any of these elements is not submitted within the period set by the
Regulations, the application shall be considered withdrawn. (n)
Section 41. According a Filing Date. - The Office shall examine whether the
patent application satisfies the requirements for the grant of date of filing
as provided in Section 40 hereof. If the date of filing cannot be accorded,
the applicant shall be given an opportunity to correct the deficiencies in
accordance with the implementing Regulations. If the application does not
contain all the elements indicated in Section 40, the filing date should be
that date when all the elements are received. If the deficiencies are not
remedied within the prescribed time limit, the application shall be
considered withdrawn. (n)
Section 42. Formality Examination. - 42.1. After the patent application has
been accorded a filing date and the required fees have been paid on time
in accordance with the Regulations, the applicant shall comply with the
formal requirements specified by Section 32 and the Regulations within
the prescribed period, otherwise the application shall be considered
withdrawn.
42.2. The Regulations shall determine the procedure for the re-
examination and revival of an application as well as the appeal to the
Director of Patents from any final action by the examiner. (Sec. 16, R.A.
No. 165a)
Section 43. Classification and Search. - An application that has complied
with the formal requirements shall be classified and a search conducted to
determine the prior art. (n)
Section 44. Publication of Patent Application. - 44.1. The patent
application shall be published in the IPO Gazette together with a search
document established by or on behalf of the Office citing any documents
that reflect prior art, after the expiration of eighteen ( 18) months from
the filing date or priority date.
44.2. After publication of a patent application, any interested party may
inspect the application documents filed with the Office.
44.3. The Director General subject to the approval of the Secretary of
Trade and Industry, may prohibit or restrict the publication of an
application, if in his opinion, to do so would be prejudicial to the national
security and interests of the Republic of the Philippines. (n)
Section 45. Confidentiality Before Publication. - A patent application,
which has not yet been published, and all related documents, shall not be
made available for inspection without the consent of the applicant. (n)
Section 46. Rights Conferred by a Patent Application After Publication. -
The applicant shall have all the rights of a patentee under Section 76
against any person who, without his authorization, exercised any of the
rights conferred under Section 71 of this Act 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:
46.1. Actual knowledge that the invention that he was using was the
subject matter of a published application; or
46.2. Received written notice that the invention that he was using was the
subject matter of a published application being identified in the said notice
by its serial number: Provided, That 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. (n)
Section 47. Observation by Third Parties. - Following the publication of the
patent application, any person may present observations in writing
concerning the patentability of the invention. Such observations shall be
communicated to the applicant who may comment on them. The Office
shall acknowledge and put such observations and comment in the file of
the application to which it relates. (n)
Section 48. Request for Substantive Examination. - 48.1. The application
shall be deemed withdrawn unless within six (6) months from the date of
publication under Section 41, a written request to determine whether a
patent application meets the requirements of Sections 21 to 27 and
Sections 32 to 39 and the fees have been paid on time.
48.2. Withdrawal of the request for examination shall be irrevocable and
shall not authorize the refund of any fee. (n)
Section 49. Amendment of Application. - An applicant may amend the
patent application during examination: Provided, That such amendment
shall not include new matter outside the scope of the disclosure contained
in the application as filed. (n)
Section 50. Grant of Patent. - 50.1. If the application meets the
requirements of this Act, the Office shall grant the patent: Provided, That
all the fees are paid on time.
50.2. If the required fees for grant and printing are not paid in due time,
the application shall be deemed to be withdrawn.
50.3. A patent shall take effect on the date of the publication of the grant
of the patent in the IPO Gazette. (Sec. 18, R.A. No. 165a)
Section 51. Refusal of the Application. - 51.1. The final order of refusal of
the examiner to grant the patent shall be appealable to the Director in
accordance with this Act.
51.2. The Regulations shall provide for the procedure by which an appeal
from the order of refusal from the Director shall be undertaken. (n)
Section 52. Publication Upon Grant of Patent. - 52.1. The grant of the
patent together with other related information shall be published in the
IPO Gazette within the time prescribed by the Regulations.
52.2. Any interested party may inspect the complete description, claims,
and drawings of the patent on file with the Office. (Sec. 18, R.A. No. 165a)
Section 53. Contents of Patent. - The patent shall be issued in the name of
the Republic of the Philippines under the seal of the Office and shall be
signed by the Director, and registered together with the description,
claims, and drawings, if any, in books and records of the Office. (Secs. 19
and 20, R.A. No. 165a)
Section 54. Term of Patent. - The term of a patent shall be twenty (20)
years from the filing date of the application. (Sec. 21, R.A. No. 165a)
Section 55. Annual Fees. - 55.1. To maintain the patent application or
patent, an annual fee shall be paid upon the expiration of four (4) years
from the date the application was published pursuant to Section 44
hereof, and on each subsequent anniversary of such date. Payment may
be made within three (3) months before the due date. The obligation to
pay the annual fees shall terminate should the application be withdrawn,
refused, or cancelled.
55.2. If the annual fee is not paid, the patent application shall be deemed
withdrawn or the patent considered as lapsed from the day following the
expiration of the period within which the annual fees were due. A notice
that the application is deemed withdrawn or the lapse of a patent for non-
payment of any annual fee shall be published in the IPO Gazette and the
lapse shall be recorded in the Register of the Office.
55.3. A grace period of six (6) months shall be granted for the payment of
the annual fee, upon payment of the prescribed surcharge for delayed
payment. (Sec. 22, R.A. No. 165a)
Section 56. Surrender of Patent. - 56.1. The owner of the patent, with the
consent of all persons having grants or licenses or other right, title or
interest in and to the patent and the invention covered thereby, which
have been recorded in the Office, may surrender his patent or any claim or
claims forming part thereof to the Office for cancellation.
56.2. A person may give notice to the Office of his opposition to the
surrender of a patent under this section, and if he does so, the Bureau
shall notify the proprietor of the patent and determine the question.
56.3. If the Office is satisfied that the patent may properly be surrendered,
he may accept the offer and, as from the day when notice of his
acceptance is published in the IPO Gazette, the patent shall cease to have
effect, but no action for infringement shall lie and no right compensation
shall accrue for any use of the patented invention before that day for the
services of the government. (Sec. 24, R.A. No. 165a)
Section 57. Correction of Mistakes of the Office. - The Director shall have
the power to correct, without fee, any mistake in a patent incurred
through the fault of the Office when clearly disclosed in the records
thereof, to make the patent conform to the records. (Sec. 25, R.A. No.
165)
Section 58. Correction of Mistake in the Application. - On request of any
interested person and payment of the prescribed fee, the Director is
authorized to correct any mistake in a patent of a formal and clerical
nature, not incurred through the fault of the Office. (Sec. 26, R.A. No.
165a)
Section 59. Changes in Patents. - 59.1. The owner of a patent shall have
the right to request the Bureau to make the changes in the patent in order
to:
(a) Limit the extent of the protection conferred by it;
(b) Correct obvious mistakes or to correct clerical errors; and
(c) Correct mistakes or errors, other than those referred to in letter (b),
made in good faith: Provided, That where the change would result in a
broadening of the extent of protection conferred by the patent, no
request may be made after the expiration of two (2) years from the grant
of a patent and the change shall not affect the rights of any third party
which has relied on the patent, as published.
59.2. No change in the patent shall be permitted under this section, where
the change would result in the disclosure contained in the patent going
beyond the disclosure contained in the application filed.
59.3. If, and to the extent to which the Office changes the patent
according to this section, it shall publish the same. (n)
Section 60. Form and Publication of Amendment. - An amendment or
correction of a patent shall be accomplished by a certificate of such
amendment or correction, authenticated by the seal of the Office and
signed by the Director, which certificate shall be attached to the patent.
Notice of such amendment or correction shall be published in the IPO
Gazette and copies of the patent kept or furnished by the Office shall
include a copy of the certificate of amendment or correction. (Sec. 27, R.A.
No. 165)
CHAPTER VI
CANCELLATION OF PATENTS AND SUBSTITUTION OF PATENTEE
Section 61. Cancellation of Patents. - 61.1. Any interested person may,
upon payment of the required fee, petition to cancel the patent or any
claim thereof, or parts of the claim, on any of the following grounds:
(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.
61.2. Where the grounds for cancellation relate to some of the claims or
parts of the claim, cancellation may be effected to such extent only. (Secs.
28 and 29, R.A. No. 165a)
Section 62. Requirement of the Petition. - The petition for cancellation
shall be in writing, verified by the petitioner or by any person in his behalf
who knows the facts, specify the grounds upon which it is based, include a
statement of the facts to be relied upon, and filed with the Office. Copies
of printed publications or of patents of other countries, and other
supporting documents mentioned in the petition shall be attached
thereto, together with the translation thereof in English, if not in the
English language. (Sec. 30, R.A. No. 165)
Section 63. Notice of Hearing. - Upon filing of a petition for cancellation,
the Director of Legal Affairs shall forthwith serve notice of the filing
thereof upon the patentee and all persons having grants or licenses, or
any other right, title or interest in and to the patent and the invention
covered thereby, as appears of record in the Office, and of notice of the
date of hearing thereon on such persons and the petitioner. Notice of the
filing of the petition shall be published in the IPO Gazette. (Sec. 31, R.A.
No. 165a)
Section 64. Committee of Three. - In cases involving highly technical issues,
on motion of any party, the Director of Legal Affairs may order that the
petition be heard and decided by a committee composed of the Director
of Legal Affairs as chairman and two (2) members who have the
experience or expertise in the field of technology to which the patent
sought to be cancelled relates. The decision of the committee shall be
appealable to the Director General. (n)
Section 65. Cancellation of the Patent. - 65.1. If the Committee finds that a
case for cancellation has been proved, it shall order the patent or any
specified claim or claims thereof cancelled.
65.2. If the Committee finds that, taking into consideration the
amendment made by the patentee during the cancellation proceedings,
the patent and the invention to which it relates meet the requirement of
this Act, it may decide to maintain the patent as amended: Provided, That
the fee for printing of a new patent is paid within the time limit prescribed
in the Regulations.
65.3. If the fee for the printing of a new patent is not paid in due time, the
patent should be revoked.
65.4. If the patent is amended under Subsection 65.2 hereof, the Bureau
shall, at the same time as it publishes the mention of the cancellation
decision, publish the abstract, representative claims and drawings
indicating clearly what the amendments consist of. (n)
Section 66. Effect of Cancellation of Patent or Claim. - The rights conferred
by the patent or any specified claim or claims cancelled shall terminate.
Notice of the cancellation shall be published in the IPO Gazette. Unless
restrained by the Director General, the decision or order to cancel by
Director of Legal Affairs shall be immediately executory even pending
appeal. (Sec. 32, R.A. No. 165a)
CHAPTER VII
REMEDIES OF A PERSON WITH A RIGHT TO A PATENT
Section 67. Patent Application by Persons Not Having the Right to a
Patent. . - 67.1. If a person referred to in Section 29 other than the
applicant, is declared by final court order or decision as having the right to
the patent, such person may, within three (3) months after the decision
has become final:
(a) Prosecute the application as his own application in place of the
applicant;
(b) File a new patent application in respect of the same invention;
(c) Request that the application be refused; or
(d) Seek cancellation of the patent, if one has already been issued.
67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis to a
new application filed under Subsection 67. 1(b). (n)
Section 68. 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 and other
damages in his favor if warranted by the circumstances. (Sec. 33, R.A. No.
165a)
Section 69. Publication of the Court Order. - The court shall furnish the
Office a copy of the order or decision referred to in Sections 67 and 68,
which shall be published in the IPO Gazette within three (3) months from
the date such order or decision became final and executory, and shall be
recorded in the register of the Office. (n)
Section 70. 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. (n)
CHAPTER VIII
RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS
Section 71. Rights Conferred by Patent. - 71.1. A patent shall confer on its
owner the following exclusive rights:
(a) Where the subject matter of a patent is a product, to restrain, prohibit
and prevent any unauthorized person or entity from making, using,
offering for sale, selling or importing that product;
(b) Where the subject matter of a patent is a process, to restrain, prevent
or prohibit any unauthorized person or entity from using the process, and
from manufacturing, dealing in, using, selling or offering for sale, or
importing any product obtained directly or indirectly from such process.
71.2. Patent owners shall also have the right to assign, or transfer by
succession the patent, and to conclude licensing contracts for the same.
(Sec. 37, R.A. No. 165a)
Section 72. Limitations of Patent Rights. - The owner of a patent has no
right to prevent third parties from performing, without his authorization,
the acts referred to in Section 71 hereof in the following circumstances:
72.1. Using a patented product which has been put on the market in the
Philippines by the owner of the product, or with his express consent,
insofar as such use is performed after that product has been so put on the
said market;
72.2. Where the act is done privately and on a non-commercial scale or for
a non-commercial purpose: Provided, That it does not significantly
prejudice the economic interests of the owner of the patent;
72.3. Where the act consists of making or using exclusively for the purpose
of experiments that relate to the subject matter of the patented invention;
72.4. 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 or acts concerning the medicine so prepared;
72.5. 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. (Secs. 38 and 39, R.A. No. 165a)
Section 73. Prior User. - 73.1. Notwithstanding Section 72 hereof, any prior
user, who, in good faith was using the invention or has undertaken serious
preparations to use the invention in his enterprise or business, before the
filing date or priority date of the application on which a patent is granted,
shall have the right to continue the use thereof as envisaged in such
preparations within the territory where the patent produces its effect.
73.2. The right of the prior user may only be transferred or assigned
together with his enterprise or business, or with that part of his enterprise
or business in which the use or preparations for use have been made. (Sec.
40, R.A. No. 165a)
Section 74. Use of Invention by Government. - 74.1. 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.
74.2. The use by the Government, or third person authorized by the
Government shall be subject, mutatis mutandis, to the conditions set forth
in Sections 95 to 97 and 100 to 102. (Sec. 41, R.A. No. 165a)
Section 75. Extent of Protection and Interpretation of Claims. - 75.1. The
extent of protection conferred by the patent shall be determined by the
claims, which are to be interpreted in the light of the description and
drawings.
75.2. For the purpose of determining the extent of protection conferred
by the patent, due 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 as expressed therein, but
also equivalents. (n)
Section 76. Civil Action for Infringement. - 76.1. The making, using, offering
for sale, selling, or importing a patented product or a product obtained
directly or indirectly from a patented process, or the use of a patented
process without the authorization of the patentee constitutes patent
infringement.
76.2. Any patentee, or anyone possessing any right, title or interest in and
to the patented invention, whose rights have been infringed, may bring a
civil action before a court of competent jurisdiction, to recover from the
infringer such damages sustained thereby, plus attorney's fees and other
expenses of litigation, and to secure an injunction for the protection of his
rights.
76.3. If the damages are inadequate or cannot be readily ascertained with
reasonable certainty, the court may award by way of damages a sum
equivalent to reasonable royalty.
76.4. The court may, according to the circumstances of the case, award
damages in a sum above the amount found as actual damages sustained:
Provided, That the award does not exceed three (3) times the amount of
such actual damages.
76.5. 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 or destroyed, without
compensation.
76.6. 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. 42, R.A. No.
165a)
Section 77. Infringement Action by a Foreign National. - Any foreign
national or juridical entity who meets the requirements of Section 3 and
not engaged in business in the Philippines, to which a patent has been
granted or assigned under this Act, may bring an action for infringement
of patent, whether or not it is licensed to do business in the Philippines
under existing law. (Sec. 41-A, R.A. No. 165a)
Section 78. Process Patents; Burden of Proof . - If the subject matter of a
patent is a process for obtaining a product, any identical product shall be
presumed to have been obtained through the use of the patented process
if the product is new or there is substantial likelihood that the identical
product was made by the process and the owner of the patent has been
unable despite reasonable efforts, to determine the process actually used.
In ordering the defendant to prove that the process to obtain the identical
product is different from the patented process, the court shall adopt
measures to protect, as far as practicable, his manufacturing and business
secrets. (n)
Section 79. Limitation of Action for Damages. - No damages can be
recovered for acts of infringement committed more than four (4) years
before the institution of the action for infringement. (Sec. 43, R.A. No.
165)
Section 80. Damages, Requirement of Notice. - Damages cannot be
recovered for acts of infringement committed before the infringer had
known, or had reasonable grounds to know of the patent. It is presumed
that the infringer had known of the patent if on the patented product, or
on the container or package in which the article is supplied to the public,
or on the advertising material relating to the patented product or process,
are placed the words "Philippine Patent" with the number of the patent.
(Sec. 44, R.A. No. 165a)
Section 81. Defenses in Action for Infringement. - In an action for
infringement, the defendant, in addition to other defenses available to
him, may show the invalidity of the patent, or any claim thereof, on any of
the grounds on which a petition of cancellation can be brought under
Section 61 hereof. (Sec. 45, R.A. No. 165)
Section 82. Patent Found Invalid May be Cancelled. - In an action for
infringement, if the court shall find the patent or any claim to be invalid, it
shall cancel the same, and the Director of Legal Affairs upon receipt of the
final judgment of cancellation by the court, shall record that fact in the
register of the Office and shall publish a notice to that effect in the IPO
Gazette. (Sec. 46, R.A. No. 165a)
Section 83. Assessor in Infringement Action. - 83.1. Two (2) or more
assessors may be appointed by the court. The assessors shall be possessed
of the necessary scientific and technical knowledge required by the
subject matter in litigation. Either party may challenge the fitness of any
assessor proposed for appointment.
83.2. Each assessor shall receive a compensation in an amount to be fixed
by the court and advanced by the complaining party, which shall be
awarded as part of his costs should he prevail in the action. (Sec. 47, R.A.
No. 165a)
Section 84. Criminal Action for Repetition of 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 therefor and, upon conviction, shall suffer imprisonment
for the period of not less than six (6) months but not more than three (3)
years and/or a fine of not less than One hundred thousand pesos
(P100,000) but not more than Three hundred thousand pesos (P300,000),
at the discretion of the court. The criminal action herein provided shall
prescribe in three (3) years from date of the commission of the crime.
(Sec. 48, R.A. No. 165a)
CHAPTER IX
VOLUNTARY LICENSING
Section 85. Voluntary License Contract. - To encourage the transfer and
dissemination of technology, prevent or control practices and conditions
that may in particular cases constitute an abuse of intellectual property
rights having an adverse effect on competition and trade, all technology
transfer arrangements shall comply with the provisions of this Chapter. (n)
Section 86. Jurisdiction to Settle Disputes on Royalties. - The Director of
the Documentation, Information and Technology Transfer Bureau shall
exercise quasi-judicial jurisdiction in the settlement of disputes between
parties to a technology transfer arrangement arising from technology
transfer payments, including the fixing of appropriate amount or rate of
royalty. (n)
Section 87. Prohibited Clauses. - Except in cases under Section 91, the
following provisions shall be deemed prima facie to have an adverse effect
on competition and trade:
87.1. 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;
87.2. 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;
87.3. Those that contain restrictions regarding the volume and structure of
production;
87.4. Those that prohibit the use of competitive technologies in a non-
exclusive technology transfer agreement;
87.5. Those that establish a full or partial purchase option in favor of the
licensor;
87.6. 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;
87.7. Those that require payment of royalties to the owners of patents for
patents which are not used;
87.8. 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;
87.9. 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;
87.10. Those which require payments for patents and other industrial
property rights after their expiration, termination arrangement;
87.11. Those which require that the technology recipient shall not contest
the validity of any of the patents of the technology supplier;
87.12. 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;
87.13. 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;
87.14. Those which exempt the licensor for liability for non-fulfilment 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
87.15. Other clauses with equivalent effects. (Sec. 33-C (2), R.A 165a)
Section 88. Mandatory Provisions. - The following provisions shall be
included in voluntary license contracts:
88.1. 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;
88.2. Continued access to improvements in techniques and processes
related to the technology shall be made available during the period of the
technology transfer arrangement;
88.3. 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
88.4. The Philippine taxes on all payments relating to the technology
transfer arrangement shall be borne by the licensor. (n)
Section 89. Rights of Licensor. - 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. (Sec. 33-B, R.A. 165a)
Section 90. Rights of Licensee. - The licensee shall be entitled to exploit
the subject matter of the technology transfer arrangement during the
whole term of the technology transfer arrangement. (Sec. 33-C (1), R.A.
165a)
Section 91. Exceptional Cases. - In exceptional or meritorious cases where
substantial benefits will accrue to the economy, such as high technology
content, increase in foreign exchange earnings, employment generation,
regional dispersal of industries and/or substitution with or use of local raw
materials, or in the case of Board of Investments, registered companies
with pioneer status, exemption from any of the above requirements may
be allowed by the Documentation, Information and Technology Transfer
Bureau after evaluation thereof on a case by case basis. (n)
Section 92. Non-Registration with the Documentation, Information and
Technology Transfer Bureau. - Technology transfer arrangements that
conform with the provisions of Sections 86 and 87 need not be registered
with the Documentation, Information and Technology Transfer Bureau.
Non-conformance with any of the provisions of Sections 87 and 88,
however, shall automatically render the technology transfer arrangement
unenforceable, 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.
(n)
CHAPTER X
COMPULSORY LICENSING
Section 93. Grounds for Compulsory Licensing. - 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, under any of the following
circumstances:
93.1. National emergency or other circumstances of extreme urgency;
93.2. Where the public interest, in particular, national security, nutrition,
health or the development of other vital sectors of the national economy
as determined by the appropriate agency of the Government, so requires;
or
93.3. Where a judicial or administrative body has determined that the
manner of exploitation by the owner of the patent or his licensee is anti-
competitive; or
93.4. In case of public non-commercial use of the patent by the patentee,
without satisfactory reason;
93.5. If the patented invention is not being worked in the Philippines on a
commercial scale, although capable of being worked, without satisfactory
reason: Provided, That the importation of the patented article shall
constitute working or using the patent. (Secs. 34, 34-A, 34-B, R.A. No.
165a)
Section 94. Period for Filing a Petition for a Compulsory License. - 94.1. A
compulsory license may not be applied for on the ground stated in
Subsection 93.5 before the expiration of a period of four (4) years from
the date of filing of the application or three (3) years from the date of the
patent whichever period expires last.
94.2. A compulsory license which is applied for on any of the grounds
stated in Subsections 93.2, 93.3, and 93.4 and Section 97 may be applied
for at any time after the grant of the patent. (Sec. 34(1), R.A. No. 165)
Section 95. Requirement to Obtain a License on Reasonable Commercial
Terms. - 95.1. 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.
95.2. The requirement under Subsection 95.1 shall not apply in the
following cases:
(a) Where the petition for compulsory license seeks to remedy a practice
determined after judicial or administrative process to be anti-competitive;
(b) In situations of national emergency or other circumstances of extreme
urgency;
(c) In cases of public non-commercial use.
95.3. In situations of national emergency or other circumstances of
extreme urgency, the right holder shall be notified as soon as reasonably
practicable.
95.4. In the case of public non-commercial use, where the government or
contractor, without making a patent search, knows or has demonstrable
grounds to know that a valid patent is or will be used by or for the
government, the right holder shall be informed promptly. (n)
Section 96. Compulsory Licensing of Patents Involving Semi-Conductor
Technology. - In the case of compulsory licensing of patents involving
semi-conductor technology, the license may only be granted in case of
public non-commercial use or to remedy a practice determined after
judicial or administrative process to be anti-competitive. (n)
Section 97. Compulsory License Based on Interdependence of Patents. - If
the invention protected by a patent, hereafter referred to as the "second
patent," within the country cannot be worked without infringing another
patent, hereafter referred to as the "first patent," granted on a prior
application or benefiting from an earlier priority, a compulsory license may
be granted to the owner of the second patent to the extent necessary for
the working of his invention, subject to the following conditions:
97.1. The invention claimed in the second patent involves an important
technical advance of considerable economic significance in relation to the
first patent;
97.2. The owner of the first patent shall be entitled to a cross-license on
reasonable terms to use the invention claimed in the second patent;
97.3. The use authorized in respect of the first patent shall be non-
assignable except with the assignment of the second patent; and
97.4. The terms and conditions of Sections 95, 96 and 98 to 100 of this Act.
(Sec. 34-C, R.A. No. 165a)
Section 98. Form and Contents of Petition. - The petition for compulsory
licensing must be in writing, verified by the petitioner and accompanied by
payment of the required filing fee. It shall contain the name and address
of the petitioner as well as those of the respondents, the number and date
of issue of the patent in connection with which compulsory license is
sought, the name of the patentee, the title of the invention, the statutory
grounds upon which compulsory license is sought, the ultimate facts
constituting the petitioner's cause of action, and the relief prayed for.
(Sec. 34-D, R.A. No. 165)
Section 99. Notice of Hearing. - 99.1. Upon filing of a petition, the Director
of Legal Affairs shall forthwith serve notice of the filing thereof upon the
patent owner and all persons having grants or licenses, or any other right,
title or interest in and to the patent and invention covered thereby as
appears of record in the Office, and of notice of the date of hearing
thereon, on such persons and petitioner. The resident agent or
representative appointed in accordance with Section 33 hereof, shall be
bound to accept service of notice of the filing of the petition within the
meaning of this Section.
99.2. In every case, the notice shall be published by the said Office in a
newspaper of general circulation, once a week for three (3) consecutive
weeks and once in the IPO Gazette at applicant's expense. (Sec. 34-E, R.A.
No. 165)
Section 100. Terms and Conditions of Compulsory License. - The basic
terms and conditions including the rate of royalties of a compulsory
license shall be fixed by the Director of Legal Affairs subject to the
following conditions:
100.1. The scope and duration of such license shall be limited to the
purpose for which it was authorized;
100.2. The license shall be non-exclusive;
100.3. The license shall be non-assignable, except with that part of the
enterprise or business with which the invention is being exploited;
100.4. Use of the subject matter of the license shall be devoted
predominantly for the supply of the Philippine market: Provided, That this
limitation shall not apply where the grant of the license is based on the
ground that the patentee's manner of exploiting the patent is determined
by judicial or administrative process, to be anti-competitive.
100.5. The license may be terminated upon proper showing that
circumstances which led to its grant have ceased to exist and are unlikely
to recur: Provided, That adequate protection shall be afforded to the
legitimate interest of the licensee; and
100.6. The patentee shall be paid adequate remuneration taking into
account the economic value of the grant or authorization, except that in
cases where the license was granted to remedy a practice which was
determined after judicial or administrative process, to be anti-competitive,
the need to correct the anti-competitive practice may be taken into
account in fixing the amount of remuneration. (Sec. 35-B, R.A. No. 165a)
Section 101. Amendment, Cancellation, Surrender of Compulsory License. -
101.1. Upon the request of the patentee or the licensee, the Director of
Legal Affairs may amend the decision granting the compulsory license,
upon proper showing of new facts or circumstances justifying such
amendment.
101.2. Upon the request of the patentee, the said 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;
101.3. The licensee may surrender the license by a written declaration
submitted to the Office.
101.4. The said Director shall cause the amendment, surrender, or
cancellation in the Register, notify the patentee, and/or the licensee, and
cause notice thereof to be published in the IPO Gazette. (Sec. 35-D, R.A.
No. 165a)
Section 102. Licensee's Exemption from Liability. - Any person who works a
patented product, substance and/or process under a license granted
under this Chapter, shall be free from any liability for infringement:
Provided however, That in the case of voluntary licensing, no collusion
with the licensor is proven. This is without prejudice to the right of the
rightful owner of the patent to recover from the licensor whatever he may
have received as royalties under the license. (Sec. 35-E, R.A. No. 165a)
CHAPTER XI
ASSIGNMENT AND TRANSMISSION OF RIGHTS
Section 103. Transmission of Rights. - 103.1. 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.
103.2. 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. (Sec.
50, R.A. No. 165a)
Section 104. 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. (Sec. 51, R.A. No. 165)
Section 105. 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. 52, R.A. No. 165)
Section 106. Recording. - 106.1. The Office shall record assignments,
licenses and other instruments relating to the transmission of any right,
title or interest in and to inventions, and patents or application for patents
or inventions to which they relate, which are presented in due form to the
Office for registration, in books and records kept for the purpose. The
original documents together with a signed duplicate thereof shall be filed,
and the contents thereof should be kept confidential. If the original is not
available, an authenticated copy thereof in duplicate may be filed. Upon
recording, the Office shall retain the duplicate, return the original or the
authenticated copy to the party who filed the same and notice of the
recording shall be published in the IPO Gazette.
106.2. Such instruments 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. (Sec. 53,
R.A. No. 165a)
Section 107. Rights of Joint Owners. - If two (2) or more persons jointly
own a patent and the invention covered thereby, either by the issuance of
the patent in their joint favor or by reason of the assignment of an
undivided share in the patent and invention or by reason of the succession
in title to such share, each of the joint owners shall be entitled to
personally make, use, sell, or import the invention for his own profit:
Provided, however, That neither of the joint owners shall be entitled to
grant licenses or to assign his right, title or interest or part thereof without
the consent of the other owner or owners, or without proportionally
dividing the proceeds with such other owner or owners. (Sec. 54, R.A. No.
165)
CHAPTER XII
REGISTRATION OF UTILITY MODELS
Section 108. Applicability of Provisions Relating to Patents. - 108.1. Subject
to Section 109, the provisions governing patents shall apply, mutatis
mutandis, to the registration of utility models.
108.2. Where the right to a patent conflicts with the right to a utility
model registration in the case referred to in Section 29, the said provision
shall apply as if the word "patent" were replaced by the words "patent or
utility model registration". (Sec. 55, R.A. No. 165a)
Section 109. Special Provisions Relating to Utility Models. - 109.1. (a) An
invention qualifies for registration as a utility model if it is new and
industrially applicable.
(b) Section 21, "Patentable Inventions", shall apply except the reference to
inventive step as a condition of protection.
109.2. Sections 43 to 49 shall not apply in the case of applications for
registration of a utility model.
109.3. A utility model registration shall expire, without any possibility of
renewal, at the end of the seventh year after the date of the filing of the
application.
109.4. In proceedings under Sections 61 to 64, the utility model
registration shall be canceled on the following grounds:
(a) That the claimed invention does not qualify for registration as a utility
model and does not meet the requirements of registrability, in particular
having regard to Subsection 109.1 and Sections 22, 23, 24 and 27;
(b) That the description and the claims do not comply with the prescribed
requirements;
(c) That any drawing which is necessary for the understanding of the
invention has not been furnished;
(d) That the owner of the utility model registration is not the inventor or
his successor in title. (Secs. 55, 56, and 57, R.A. No. 165a)
Section 110. Conversion of Patent Applications or Applications for Utility
Model Registration. - 110.1. At any time before the grant or refusal of a
patent, an applicant for a patent may, upon payment of the prescribed
fee, convert his application into an application for registration of a utility
model, which shall be accorded the filing date of the initial application. An
application may be converted only once.
110.2. At any time before the grant or refusal of a utility model
registration, an applicant for a utility model registration may, upon
payment of the prescribed fee, convert his application into a patent
application, which shall be accorded the filing date of the initial
application. (Sec. 58, R.A. No. 165a)
Section 111. Prohibition against Filing of Parallel Applications. - An
applicant may not file two (2) applications for the same subject, one for
utility model registration and the other for the grant of a patent whether
simultaneously or consecutively. (Sec. 59, R.A. No. 165a)
CHAPTER XIII
INDUSTRIAL DESIGN
Section 112. Definition of Industrial Design. - An industrial design is 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. (Sec. 55, R.A. No. 165a)
Section 113. Substantive Conditions for Protection. - 113.1. Only industrial
designs that are new or original shall benefit from protection under this
Act.
113.2. Industrial designs dictated essentially by technical or functional
considerations to obtain a technical result or those that are contrary to
public order, health or morals shall not be protected. (n)
Section 114. Contents of the Application. - 114.1. Every application for
registration of an industrial design shall contain:
(a) A request for registration of the industrial design;
(b) Information identifying the applicant;
(c) An indication of the kind of article of manufacture or handicraft to
which the design shall be applied;
(d) A representation of the article of manufacture or handicraft by way of
drawings, photographs or other adequate graphic representation of the
design as applied to the article of manufacture or handicraft which clearly
and fully discloses those features for which design protection is claimed;
and
(e) The name and address of the creator, or where the applicant is not the
creator, a statement indicating the origin of the right to the industrial
design registration.
114.2. The application may be accompanied by a specimen of the article
embodying the industrial design and shall be subject to the payment of
the prescribed fee.(n)
Section 115. Several Industrial Designs in One Application. - Two (2) or
more industrial designs may be the subject of the same application:
Provided, That they relate to the same sub-class of the International
Classification or to the same set or composition of articles. (n)
Section 116. Examination. - 116.1. The Office shall accord as the filing date
the date of receipt of the application containing indications allowing the
identity of the applicant to be established and a representation of the
article embodying the industrial design or a pictorial representation
thereof.
116.2. If the application does not meet these requirements the filing date
should be that date when all the elements specified in Section 105 are
filed or the mistakes corrected. Otherwise if the requirements are not 118.4. The Regulations shall fix the amount of renewal fee, the surcharge
complied within the prescribed period, the application shall be considered and other requirements regarding the recording of renewals of
withdrawn. registration.
116.3. After the application has been accorded a filing date and the Section 119. Application of Other Sections and Chapters. - 119.1. The
required fees paid on time, the applicant shall comply with the following provisions relating to patents shall apply mutatis mutandis to an
requirements of Section 114 within the prescribed period, otherwise the industrial design registration:
application shall be considered withdrawn.
116.4. The Office shall examine whether the industrial design complies - Novelty:
with requirements of Section 112 and Subsections 113.2 and 113.3. (n) Section 21
Section 117. Registration. - 117.1. Where the Office finds that the
conditions referred to in Section 113 are fulfilled, it shall order that
registration be effected in the industrial design register and cause the Section 24 - Prior art: Provided, That the disclosure is contained in
issuance of an industrial design certificate of registration, otherwise, it printed documents or in any tangible form;
shall refuse the application.
117.2. The form and contents of an industrial design certificate shall be Section 25 - Non-prejudicial Disclosure;
established by the Regulations: Provided, That the name and address of
the creator shall be mentioned in every case. Section 27 - Inventions Created Pursuant to a Commission;
117.3. Registration shall be published in the form and within the period
fixed by the Regulations.
Section 28 - Right to a Patent;
117.4. The Office shall record in the register any change in the identity of
the proprietor of the industrial design or his representative, if proof
thereof is furnished to it. A fee shall be paid, with the request to record Section 29 - First to File Rule;
the change in the identity of the proprietor. If the fee is not paid, the
request shall be deemed not to have been filed. In such case, the former Section 31 - Right of Priority: Provided, That the application for
proprietor and the former representative shall remain subject to the rights industrial design shall be filed within six (6) months from
and obligations as provided in this Act. the earliest filing date of the corresponding foreign
117.5. Anyone may inspect the Register and the files of registered application;
industrial designs including the files of cancellation proceedings. (n)
Section 118. The Term of Industrial Design Registration. - 118.1 The Section 33 - Appointment of Agent or Representative;
registration of an industrial design shall be for a period of five (5) years
from the filing date of the application. Section 51 - Refusal of the Application;
118.2. The registration of an industrial design may be renewed for not
more than two (2) consecutive periods of five (5) years each, by paying the
Sections 56 - Surrender, Correction of and Changes in Patent;
renewal fee.
to 60
118.3. The renewal fee shall be paid within twelve (12) months preceding
the expiration of the period of registration. However, a grace period of six
CHAPTER - Remedies of a Person with a Right to Patent;
(6) months shall be granted for payment of the fees after such expiration,
VII
upon payment of a surcharge
 1. Elements of Patentability
CHAPTER - Rights of Patentees and Infringement of Patents; and
a. Novelty
VIII
b. Inventive Step
CHAPTER - Assignment and Transmission of Rights. c. Industrial Applicability
XI 2. Novelty
 Section 23 in relation to section 24
o Section 23, an invention shall not be considered new if it
119.2. If the essential elements of an industrial design which is the subject
forms part of a prior art.
of an application have been obtained from the creation of another person
o Section 24, there are two classes of prior art
without his consent, protection under this Chapter cannot be invoked
1. [first] It is already available to the public
against the injured party. (n)
not only in the country but anywhere in
Section 120. Cancellation of Design Registration. - 120.1. At any time
the world. The requirement that the thing
during the term of the industrial design registration, any person upon
is already in the public domain must be
payment of the required fee, may petition the Director of Legal Affairs to
present before the filing date or the
cancel the industrial design on any of the following grounds:
priority date of the application claiming
(a) If the subject matter of the industrial design is not registrable within the invention.
the terms of Sections 112 and 113; 2. [second] Those that are actually subject of
application for a patent registration. Thus,
(b) If the subject matter is not new; or the whole contents of an application for a
patent, utility model, or industrial design
(c) If the subject matter of the industrial design extends beyond the registration that are published in
content of the application as originally filed. accordance with the law, field or effective
in the Philippines, with a filing or priority
120.2. Where the grounds for cancellation relate to a part of the industrial date that is earlier than the filing or
design, cancellation may be effected to such extent only. The restriction priority date of the application are
may be effected in the form of an alteration of the effected features of the considered prior art, subject to certain
design. (n) conditions.

A. Patentable inventions
CASE: Angelita Manzano v. Court of Appeals and Melecia Madolaria, G.R. No. 113388, September 5, 1997
FACTS
1. Petitioner Angelita Manzano filed with the
Philippine Patent Office on 19 February 1982 an
action for the cancellation of Letters Patent No.
UM-4609 for a gas burner registered in the name
of respondent Melecia Madolaria who
subsequently assigned the letters patent to New
United Foundry and Manufacturing Corporation
(UNITED FOUNDRY, for brevity).
2. Petitioner alleged that the LPG  burner was not
new or inventive, that the respondent was not
the true and original inventor; that the letters of
patent were secured through fraud; that the
patent was used and known in the PH.
3. Several pieces of evidence were presented such
as a model of the LPG burner used in their
previous employment; witnesses that confirmed
that the respondent was affiliated with United
Foundry to further her claim.
4. The respondent, on the other hand, stated that
he was instructed to create innovations due to
defects of the product by providing latest
sketches and specifications incorporating
additionals to the new model.
5. Director of Patents denied the petition for
cancellation and holding that the evidence of
petitioner was not able to establish convincingly
that the patented utility model of private
respondent was anticipated. Not one of the
various pictorial representations of business
clearly and convincingly showed that the devices
presented by petitioner was identical or
substantially identical with the utility model of
the respondent.
ISSUE RULING
Whether or not Patentable. The element of novelty is an essential requisite of the patentability
the LPG burner of an invention or discovery. If a device or process has been known or used by
design is not others prior to its invention or discovery by the applicant, an application for a
patentable patent therefor should be denied; and if the application has been granted, the
court, in a judicial proceeding in which the validity of the patent is drawn in
question, will hold it void and ineffective. It has been repeatedly held that an
invention must possess the essential elements of novelty, originality and
precedence, and for the patentee to be entitled to the protection the invention
must be new to the world.
In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an "LPG
Burner" on 22 July 1981, the Philippine Patent Office found her invention novel
and patentable. The issuance of such patent creates a presumption which
yields only to clear and cogent evidence that the patentee was the original and
first inventor. The burden of proving want of novelty is on him who avers it and
the burden is a heavy one which is met only by clear and satisfactory proof
which overcomes every reasonable doubt.4 Hence, a utility model shall not be
considered "new" if before the application for a patent it has been publicly
known or publicly used in this country or has been described in a printed
publication or publications circulated within the country, or if it is substantially
similar to any other utility model so known, used or described within the
country.
6. The case was appealed by the petitioners alleging
that the difference between the utility model
from others are imaginary rather than real.
Hence, this petition.
3. Non-Prejudicial Disclosure
 Element novelty requires that the thing is not yet known
to anyone besides the inventor. Once it has been made
known to the public through disclosures, this requirement
may be in peril.
 There are disclosures, however, that will not prejudice the
application, i.e., the application will not be denied for lack
of novelty. These are disclosure of information contained
in the application as long as the disclosure was:
1. Made during the 12 months preceding the filing date
or the priority date of application; and
2. The disclosure was made by any of the following
person:  experimentation.
a. The inventor
b. A patent office and the information was contained
a) in another application filed bythe inventor and
should not have been disclosed by the office, or b)
in an application filed without the knowledge or
content of the inventor by a third party which
obtained the information directly or indirectly
from the inventor; or  have some practice application for it to be really useful.
c. A third party which obtained the information
directly or indirectly from the inventor. (sec 25)
 Third party, excludes all patent offices as well
as the WIPO which publishes patent
applications filed through the PCT. ANy
disclosure of information not within the
exceptions specified under Sec 25 shall be
considered prejudicial taking into
consideration the meaning of a “third party”.
 A disclosure that is prejudicial shall have the
same adverse effect on novelty whether
made before or after a non-prejudicial
closure.
4. Inventive Step
 Section 26
 Inventive step thus connotes that the invention should not
be obvious not to the general public but to a “person
skilled in the art” for it to be patented.
 A person skilled in the art is presumed to be an ordinary
practitioner aware of what was common general
knowledge in the art at the relevant date. 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
5. Industrial Applicability
 The element of patentability also has a statutory
definition, viz.:
 Section 27
 Verily, an invention will be useless if it will be forever
confined in the sphere of theories and principles. It has to
B. Non-patentable inventions
C. Ownership of a patent
 The right to a patent belongs to the inventor. Like any
other property, patent may be acquired through
succession or assignment. The right to patent may also be
subject of joint-ownership as when two or more persons
have jointly made an invention.
1. Right to a patent
 Belongs to the inventor
 May be acquired through succession or
assignment
 May also be subject of joint ownership as when 2
or more persons have jointly made the invention
 2. First-to-file rule (Sec. 29)
 Section 29. First to File Rule. - If two (2) or more
persons have made the invention separately and
independently of each other, the right to the
patent shall belong to the person who filed an
application for such invention, or where two or
more applications are filed for the same invention,
to the applicant who has the earliest filing date
or, the earliest priority date. (3rd sentence, Sec.
10, R.A. No. 165a.)
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: Provided, That:
a. the local application expressly claims priority;
b. it is filed within twelve (12) months from the date the earliest
foreign application was filed; and
c. a certified copy of the foreign application together with an English
translation is filed within six (6) months from the date of filing in
the Philippines. 

 If in case there is an application filed in the

 E.I. Dupont De Nemours and Co. v. Director Emma C. Philippines and another filed in another country,
Francisco and Therapharma, Inc. G.R.No. 174379, August 31, and the Philippine application was filed earlier
2016\ than the other application, it is still possible that
the foreign application will be granted by virtue of
this RIGHT OF PRIORITY as long as all the
3. Inventions created pursuant to a Commission (Sec. 30) requisites are complied with.
 The person who commissions the work shall be
the owner of the patent UNLESS there was an
agreement to the contrary.
 When an invention is made by an employee in the
course of his employment contract, the patent
shall belong to:
o 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.
o The employer - if the invention is the
result of the performance of his
regularly-assigned duties, UNLESS there is
an agreement, express or implied, to the
contrary.

4. Right of priority (Sec. 31)

 Section 31. Right of Priority. . - An application for
patent filed by any person who has previously
Reading Assignment 3
Add: Utility Models
A. Procedure in Patent Registration Industrial Designs
B. Term of Patent Registration
 Phil Pharmawealth, Inc., v. Pfizer, Inc. and Pfizer (Phil.) Enforcement of Patents:
Inc., G.R. No. 167715, November 17, 2010 https://www.syciplaw.com/documents/LegalResources/2018/PAT19_C
hapter-23_Philippines.pdf
C. Grounds for cancellation of a patent  2020 Revised Rules of Procedure for Intellectual Property Rights
D. Remedy of the true and actual inventor  Cases (A.M. No. 10-3-10-SC) https://sc.judiciary.gov.ph/15824/
E. Remedies of a Person Declared by Final Court
Order Having Right to the Patent
F. Rights conferred by a patent 
TRADEMARKS (SECS. 121-170, IPC)
G. Limitations of patent rights
1. Prior user 
a. Definitions of marks, collective marks, trade names (Sec. 121);
2. Use by the government
functions of a mark

H. Patent infringement   Mirpuri v. Court of Appeals, G.R. No. 114508. November 19,
1. Tests in patent infringement 1999
a. Literal infringement   Berris Agricultural Co., Inc. v. Norby Abyadang, G.R. No.
b. Doctrine of equivalents 183404, October 13, 2010
 Smith Kline Beckman Corp. v. Court of Appeals and Tryco Pharma,
G.R. No. 126627, August 14, 2003 b. Acquisition of ownership of mark (Sec. 122)
c. Acquisition of ownership of trade name 
c. Civil and criminal action 
d. Prescriptive period 
 W Land Holdings, Inc. v. Starwood Hotels and Resorts
e. Defenses in action for infringement
Worldwide, Inc. G.R. No. 222366, December 4, 2017
 Coffee Partners, Inc. v. San Francisco Coffee and Roastery, Inc, G.R.
i. Licensing 
No. 169504, March 3, 2010
 Birkenstock Orthopadie GmbH and Co. KG v. Philippine Shoe Expo ,
(1) Voluntary
G.R. No. 194307, November 30, 2013
Add: Prohibited Clauses
Mandatory Provisions d. Non-registrable marks (Sec. 123)

(2) Compulsory   Fredco Manufacturing Corp. v. President and Fellows of Harvard

College, G.R. No. 185917, June 1, 2011
j. Assignment and transmission of rights  Ana Ang v. Toribio Teodoro, G.R. No. L-48226, December 14, 1942
 McDonald’s Corporation v. L.C. Big Mac Burger, Inc. G.R. No. 14399
 McDonald’s Corporation v. MacJoy Fastfood Corp., G.R. No. 166115,
February 2, 2007
 Lyceum of the Philippines v. Court of Appeals, G.R. No. 101897, March
5, 1993

e. Prior use of mark as a requirement 

f. Tests to determine confusing similarity between marks

(1) Dominancy test 

(2) Holistic test
 Kolin Electronics Co. Inc. v. Kolin Philippines International Inc.,
G.R. No. 228165, February 9, 2021
(3) Idem Sonans
 Amigo Manufacturing Inc. v. Cluett Peabody Co., Inc., G.R. No.
139300, March 14, 2001
Reading Assignment 4 Limitations (Sec. 159) 

Lack of Proof of Actual Confusion Trademark Dilution 

UFC Philippines, Inc. v. Barrio Fiesta Manufacturing Corporation
G.R. No. 198889, January 20, 2016
Seri Somboonsakdikul v. Orlane S.A., G.R. No. 188996, February
1, 2017
Mighty Corporation and La Campana Fabrica de Tobaco, Inc. v. E.
& J. Gallo Winery and Andersons Group, Inc., G.R. No. 154342,
July 14, 2004
Del Monte Corp. v. Court of Appeals, G. R. No. L-78325, January
25, 1990
Asia Brewery, Inc. v. Court of Appeals and San Miguel Corporation,
G.R. No. 103543, July 5, 1993
Berries Agricultural Co., Inc. v. Norvy Abyadang, G.R. No. 183404,
October 13, 2010
Prosource International, Inc., v. Horphag Research Management
SA, G.R. No. 180073, November 25, 2009
g. Well-known marks (Sec. 123.1 [e] and [f])
Prosource International, Inc., v. Horphag Research Management
SA, G.R. No. 180073, November 25, 2009 
Dermaline Inc. v. Myra Pharmaceuticals, Inc., G.R. No. 190065,
August 16, 2010
Levi Strauss v. Clinton Apparelle, Inc., G. R. No. 138900,
September 20, 2005
Mang Inasal Philippines, Inc. V. IFP Manufacturing Corporation,
G.R. No. 221717, June 19, 2017
Use by third parties of names, etc. similar to registered mark 
Unfair competition (Sec. 168)
Asia Pacific Resources International Holdings, Ltd. v PAPERONE,
INC. (G.R. Nos. 213365-66, December 10 2018)
Superior Commercial Enterprises, Inc. vs. Kunnan Enterprises Ltd.
And Sports Concept & Distributor, Inc., G.R. No. 169974, 20 April
2010

246 Corporation v. Hon. Reynaldo B. Daway, G.R. No. 157216, Additional resource:
G.R. No. 157216, November 20, 2003 https://www.ipophil.gov.ph/help-and-support/trademark/

h. Rights conferred by registration (Sec. 147) l. Registration of Marks under the Madrid Protocol
Rights conferred
Application Procedure (Sec. 124 – 144) Requirements for registration
Term of protection
Priority Right (Sec. 131)
Duration (Sec. 145)
Resources:
Renewal (Sec. 146) https://www.ipophil.gov.ph/trademark/madrid-protocol/
https://wipolex-res.wipo.int/edocs/lexdocs/laws/en/ph/ph192en.pdf
Use of Indications by Third Parties for Other Purposes (Sec.148) https://www.federislaw.com.ph/wp-content/themes/federis/files/
Assignment and Transfer of Registration (Sec. 149) 3.%20Philippine%20Regulations%20Implementing%20the%20Protocol
%20Relating%20to%20the%20Madrid%20Agreement...(2012).pdf
License Contracts (Sec. 150)
https://internationalipcooperation.eu/sites/default/files/arise-docs/2019/
Cancellation (Sec. 151) ARISEplusIPR_The-Madrid-Protocol_Philippines_English.pdf
Effect of Non-use (Sec. 152)
Remedies (Sec. 155 – 158) Additional resource:
https://www.wipo.int/edocs/pubdocs/en/wipo_pub_455_2021.pdf
False Designation of Origin (Sec. 169)
Distinguish from Trademark Infringement
https://lawphil.net/judjuris/juri2017/mar2017/gr_197482_2017.html
https://lawphil.net/judjuris/juri2005/jun2005/gr_161693_2005.html
l. Trade names or business names (Sec. 165)
m. Collective marks (Sec. 121.2 in relation to Sec. 167)
n. Criminal penalties for infringement, unfair competition,
false designation of origin, and false description or misrepresentation
ABS-CBN Broadcasting Corporation v. Philippine Multi-Media System,
Inc., et al., G.R. No.s 175769-70, January 19, 2009
Pearl & Dean (Phil.) Inc. v. Shoemart, Inc. and North Edsa Marketing Inc.,
G.R. No. 148222, August 15, 2003
Filipino Society of Composers, Authors and Publishers v. Tan, G.R. No.
36401, March 16, 1987
United Feature Syndicate v. Munsingwear, G.R. No. 79163, November 9,
1989
Bayanihan Music Philippines v. BMG, G.R. No. 166337, March 7, 2005
Additional Resource:
https://www.ipophil.gov.ph/news/how-fair-is-fair-use/

4. Copyrights (Secs. 171 – 129, IPC) (a) Remedies 

(b) Criminal penalties (Sec. 217)
a. Basic principles  Add: Moral Rights (Sec. 193 – 199)
b. Copyrightable works
Additional resource:
http://web.nlp.gov.ph/nlp/?q=node/646
(1) Original works (Sec. 172) 
(2) Derivative works (Sec. 173)

c. Non-copyrightable works (Secs. 175-176)

Joaquin v. Drilon, G.R. No. 108946, January 28, 1999

ABS-CBN Corporation v. Felipe Gozon, et. Al, G.R. No. 195956, March 11,
2005

Rights of copyright owner (Sec. 177)

Rules on ownership of copyright (Sec. 178 – 183)

Manly Sportswear Manufacturing, Inc. V. Dadodette Enterprises and/or

Hermes Sports Center, G.R. No. 165306, September 20, 2005

Limitations on copyright (Sec. 184 – 190)

(1) Doctrine of fair use 

(2) Copyright infringement (Sec. 216)

Cases:

Habana v. Robles, G.R. No. 131522, July 19, 1999

NBI-Microsoft Corp. v. Judy Hwang, et al., G.R. No. 147043, June 21, 2005