Article 712.

Ownership is acquired by
occupation and intellectual creation.

Civil Code of the Philippines

1
 What is IP?

Intellectual Property
describes ideas, inventions,
technologies, artworks, music and
literature, that are intangible
when first created, but become
valuable in tangible form as
products

- Dr. Kamil Idris

 What is IP?

Intellectual property is the creation or

product of the human mind that are put
in tangible form.

“those property rights which result from the physical

manifestation of original thought” (Ballentine’s Law
Dictionary, 3rd Ed.)
 TANGIBLE VS. INTANGIBLE

Tangible property– discernible by

the senses

Intangible property – incapable of

being perceived by the senses

4
Intellectual property is a set of legal
rights that results from intellectual
activity in the industrial, literary, scientific
and artistic fields; they do not apply to
the physical object but instead to the
intellectual creation as such.

5
 Republic Act No. 8293
“Intellectual Property Code of the Philippines”
as amended by RA 9150 and RA 10372
took effect on January 1, 1998

The IPC superseded

R.A. No. 165 )(Patent Law)
RA 166 (Trademark Law)
Articles 188 & 189, Revised Penal Code
PD 49 and PD 285 (Copyright Laws)
International Treaties, Conventions, Agreements
 Berne Convention for the Protection of Literary and Artistic Works(August 1, 1951)
 Paris Convention for the Protection of Industrial Property (September 27, 1965)
 Convention Establishing the WIPO (July 14, 1980)
 Budapest Treaty (Oct 1981)
 Rome Convention (1984)
 Convention on Biological Diversity (1993)
 World Trade Organization WTO – TRIPS (1994)
 Patent Cooperation Treaty (August 17, 2001)
 WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty (2002)
 Madrid Protocol (July 2012)
 Beijing Treaty (June 2012) – Protection of Audiovisual Performances.
 Marraakesh Treaty (2018)
 Protected IP Rights

• Copyright and Related Rights

• Patents and Utility Models

• Industrial Designs

Pearl & Dean vs. Shoemart, et al. , GR No. 148222, Aug. 15, 2003
 Protected IP Rights

• Layout-Designs
(Topographies) of
Integrated Circuits

•Trademarks, Service
Marks, Collective Marks

Pearl & Dean vs. Shoemart, et al. , GR No. 148222, Aug. 15, 2003
 Protected IP Rights

• Geographical Indications

identify a good as originating in

territory, region or locality, where given
quality, reputation or other
characteristic of the good is essentially
attributable to its geographical origin.
Protection of Undisclosed Information

TRADE SECRET

• Secret

• Has commercial value

• Reasonable steps to keep it

secret
Technology Transfer arrangements
 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.
 Declaration of Policies

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
Philippine products
Declaration of Policies

 There is a need to protect and secure the

exclusive rights of scientists, investors,
artists and other gifted citizens to their
intellectual property and creations,
particularly when beneficial to the people

see Section 13, Article XIV 1987 Constitution

Declaration of Policies

 The use of intellectual property bears a social

function; and to that end, the State shall promote
the diffusion of knowledge and information for
the promotion of national development and
progress and the common good; and
Declaration of Policies

 There is a need 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.
 International Conventions and Reciprocity
 Any person who is a national of, or who is domiciled in, 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 under the Code.
 *correlate with Sec. 231 IPC
PRINCIPLES under the TRIPS AGREEMENT
NATIONAL TREATMENT
 Under Sec. 3, TRIPS, each member of the WTO’s Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS) shall accord to
national of the other members no less favorable than it accords to its
own national with regard to the protection of intellectual property.

MOST-FAVOURED NATIONS TREATMENT

 With regard to the protection of intellectual property, any advantage,
favour, privilege or immunity granted by a member to the nationals of
any other country shall be accorded immediately and unconditionally
to the nationals of all other members of WTO’s TRIPS (Art. 4, TRIPS)
 International Treaty vs. Philippine Law
Emerald Garment Manufacturing Corp. vs. CA, GR 100098 Dec. 29,
1995
The provisions of the 1965 Paris Convention for the Protection of Industrial
Property 38 relied upon by private respondent and Sec. 21-A of the Trademark Law (R.A.
No. 166) 39 were sufficiently expounded upon and qualified in the recent case of Philip
Morris, Inc. v. Court of Appeals: 40
xxx xxx xxx
Following universal acquiescence and comity, our municipal law on trademarks
regarding the requirement of actual use in the Philippines must subordinate an
international agreement inasmuch as the apparent clash is being decided by a
municipal tribunal (Mortisen vs. Peters, Great Britain, High Court of Judiciary of
Scotland, 1906, 8 Sessions, 93; Paras, International Law and World Organization, 1971
Ed., p. 20). Withal, the fact that international law has been made part of the law of
the land does not by any means imply the primacy of international law over national
law in the municipal sphere. Under the doctrine of incorporation as applied in most
countries, rules of international law are given a standing equal, not superior, to
national legislative enactments.
PUBLIC INTEREST UPHELD

E.I. DUPONT DE NEMOURS VS. DIR. Francisco AND

THERAPHARMA, INC., G.R. No. 174379, August 31, 2016

A patent is granted to provide rights and protection to the inventor

after an invention is disclosed to the public. It also seeks to restrain
and prevent unauthorized persons from unjustly profiting from a
protected invention. However, ideas not covered by a patent are free
for the public to use and exploit. Thus, there are procedural rules on
the application and grant of patents established to protect against any
infringement. To balance the public interests involved, failure to
comply with strict procedural rules will result in the failure to obtain a
patent.
FOREIGN CORPORATION CAPACITY TO SUE
SASOT et al VS. People AND JUDGE SALVADOR, G.R. NO. 143193, June 29, 2005
In upholding the right of the petitioner to maintain the present suit
before our courts for unfair competition or infringement of trademarks
of a foreign corporation, we are moreover recognizing our duties and
the rights of foreign states under the Paris Convention for the Protection
of Industrial Property to which the Philippines and France are parties.
We are simply interpreting and enforcing a solemn international
commitment of the Philippines embodied in a multilateral treaty to
which we are a party and which we entered into because it is in our
national interest to do so (citing La Chemise Lacoste, S.A. vs. Fernandez G.R. Nos. L-
63796-97, G.R. No. 65659, May 21, 1984).
The Intellectual Property Office
 DIRECTOR GENERAL
 2 DEPUTIES DIRECTOR GENERAL
7 DIRECTORS
ASSISTANT DIRECTORS
Bureau of Patents;
Bureau of Trademarks;
Documentation, Information and Technology Transfer Bureau;
Management Information System and EDP Bureau; and
The Administrative, Financial and Personnel Services Bureau;
and
Bureau of Copyright and Other Related Rights
Bureau of Legal Affairs
The Intellectual Property Office
DIRECTOR GENERAL
Sec. 7.

 Exclusive appellate jurisdiction over all decisions rendered by –

a. Director of Legal Affairs – appeal to CA
Phil Pharmawealth vs Pfizer et al GR# 167715 Nov.17, 2010
b.Director of Patents – appeal to CA
c.Director of Trademarks – appeal to CA
d.Director of Copyright and Other Related Right – appeal to CA
e.Director of the Documentation, Information and Technology Transfer
Bureau – appealable to Secretary of Trade and Industry
The Intellectual Property Office
DIRECTOR GENERAL
Sec. 7.

 (c) Undertake enforcement functions supported by concerned

agencies such as the Philippine National Police, the National
Bureau of Investigation, the Bureau of Customs, the Optical
Media Board, and the local government units, among others
 (d) Conduct visits during reasonable hours to establishments and
businesses engaging in activities violating intellectual property
rights and provisions of this Act based on report, information or
complaint received by the office
 Office Order No. 13-170, S2013, Rules and Regulations in the
Exercise of the Enforcement Functions and Visitorial Power of
the IPO and Creating Thereby an IPR Enforcement Office
The Intellectual Property Office
DIRECTOR GENERAL
Sec. 7.

 (e) Such other functions in furtherance of protecting IP rights

and objectives of this Act. (RA 10372)
The Intellectual Property Office
SEC. 9A. The Bureau of Copyright and Other Related Rights. –
the Bureau of Copyright and Other Related Rights shall have the following functions:

 "9A.1. Exercise original jurisdiction to resolve disputes

relating to the terms of a license involving the author’s
right to public performance or other communication of his
work;
 "9A.2. Accept, review and decide on applications for the accreditation of collective
management organizations or similar entities;
 "9A.3. Conduct studies and researches in the field of copyright and related rights;
and
 "9A.4. Provide other copyright and related rights service and charge reasonable fees
therefor."

The Intellectual Property Office
Sec. 10. The Bureau of Legal Affairs. - The Bureau of Legal Affairs shall
have the following functions:
 10.1. Hear and decide opposition to the application for registration of
marks; cancellation of trademarks, cancellation of patents, utility
models, and industrial designs and petitions for compulsory licensing of
patents;
 10.2. (a) Exercise original jurisdiction in administrative complaints for
violations of laws involving intellectual property rights, where the total
damages claimed are not less than Two hundred thousand pesos
(P200,000)
 -provisional remedies may be granted in accordance with the Rules of
Court.
 The Director of Legal Affairs shall have the power to hold and punish for
contempt all those who disregard orders or writs issued in the course of
the proceedings.
The Intellectual Property Office
Sec. 10. The Bureau of Legal Affairs. –
may impose the following administrative penalties:
 1. cease and desist order
 2. The acceptance of a voluntary assurance of compliance or
discontinuance as. Such as:
 (a) An assurance to comply with the provisions of the intellectual
property law violated;
 (b) An assurance to refrain from engaging in unlawful and unfair acts
and practices subject of the formal investigation;
 (c) An assurance to recall, replace, repair, or refund the money value
of defective goods distributed in commerce; and
 (d) An assurance to reimburse the complainant the expenses and
costs incurred in prosecuting the case in the Bureau of Legal Affairs.
 (e) require the respondent to submit periodic compliance reports
and file a bond to guarantee compliance of his undertaking.
The Intellectual Property Office
Sec. 10. The Bureau of Legal Affairs. –
may impose the following administrative penalties:
 (3) condemnation or seizure of products
 (4) forfeiture of paraphernalia and all real and personal properties
 (5) imposition of administrative fines not less than P5,000 nor more
than P150,000. + additional fine of not more than P1,000 shall be
imposed for each day of continuing violation;
 (6) cancellation of any permit, license, authority, or registration
which may have been granted by the Office, or the suspension of the
validity thereof not exceeding one (1) year;
 (7) withholding of any permit, license, authority, or registration
 (8) assessment of damages;
 (9) Censure; and
 (10) Other analogous penalties or sanctions.
 Patents

The exclusive right to exclude others from exploiting

the invention for 20 years from the filing date,i.e. to
make, use, sell or import an invention.

A temporary monopoly granted to an inventor by the government

in return for disclosing an invention.
What is a Patent?

1. A Patent is grant issued by the Government through

the Intellectual Property Office of the Philippines (IP
Philippines).

2. It is an exclusive right granted for a product,

process or an improvement of a product or process
which is new, inventive and useful.

3. This exclusive right gives the inventor the right to

exclude others from making, selling or using the
product of his invention during the life of the patent.
In return the patent owner must share the full
description of his invention.
 Inventor vs Public
The law attempts to strike an ideal balance between the two interests:
The patent system thus embodies a carefully crafted bargain for
encouraging the creation and disclosure of new useful and non-obvious
advances in technology and design, in return for the exclusive right to
practice the invention for a number of years. The inventor may keep his
invention secret and reap its fruits indefinitely. In consideration of its
disclosure and the consequent benefit to the community, the patent is
granted. An exclusive enjoyment is guaranteed him for 17 years, but upon
expiration of that period, the knowledge of the invention inures to the
people, who are thus enabled to practice it and profit by its use. (Pearl &
Dean, Phils. Vs. Shoemart, Inc, et. Al. GR No. 148222, 409 SCRA 224, August 15, 2003)
Why are Patents necessary

The patent law has a three-fold purpose;

 first, patent law seeks to foster and reward invention;
 second, it promotes disclosures of inventions to stimulate
further innovation and to permit the public to practice
the invention once the patent expires;
 third, the stringent requirements for patent protection
seek to ensure that ideas in the public domain remain
there for the free use of the public
(Pearl & Dean, Phils. Vs. Shoemart, Inc, et. Al. GR No. 148222,
August 15, 2003)
(E.I. Dupont De Nemours And Co. Vs. Dir. Francisco, Dir.Evasco And
Therapharma, Inc., G.R. No. 174379, August 31, 2016 ]
“ Simplicity is often
the hallmark of
invention “
The mobile phone was invented by Motorola in 1973.

The current mobile phone that we are using now may

contain hundreds of patents for the internal antenna, the
screen, the keypad, the battery, etc.

36
 Patentable Invention

• Invention is any technical solution to a problem

in any field of human activity which is

• New
• Involves an inventive step
• Industrially applicable

• Term of 20 years from filing date; without renewal

MAKE
CREATE
INNOVATE
 STATUTORY CLASSES
Of Invention/Utility Model

1. A useful machine
2. A product
3. A Process
4. Improvement of any of the foregoing
5. Microorganism
6. Non-biological or microbiological
processes
 Examples of Patentable Inventions

• A useful machine
e.g. biogas digester
threshing machine
• A product
e.g. pharmaceutical product ( vaccine for bovine
coronavirus; chemical substance/composition

• A process or method
e.g. process of using column panels and roofing assembly
to build a house

AN IMPROVEMENT
• Non-biological process
e.g. A method of treating a plant characterized by the
application of growth- stimulating substance or
radiation.
• Microbiological process
e.g. A process of isolating the bacteria from the
soil….
NON-PATENTABLE INVENTIONS
1. Discoveries
2. Scientific theories
3. Mathematical methods
4. Schemes, rules and methods of
-performing mental acts
-playing games
-doing business
-programs for computers
5. Methods for treatment of the human or animal body
by surgery or therapy & diagnostic methods practised
on the human & animal body
NON-PATENTABLE INVENTIONS
6. Plant varieties or animal breeds or essentially
biological processes for the production of plants and
animals
7. Aesthetic creations
8. Contrary to public order or morality
Requirements for Patent Protection

NOVELTY REQUIREMENT

• New or novel when it does not form

part of the prior art

Prior art means everything made

available to the public anywhere in
the world prior to the filing date or
priority date of an application.
 PRIOR ART - Everything made available to the public by means of:

PRIOR
ART

(E.I.Dupont De Nemours And Co. Vs. Dir. Francisco, Dir.Evasco And Therapharma,
Inc., G.R. No. 174379, August 31, 2016 ]
Ideas not covered by a patent are free for the public to use and exploit.
 NON-PREJUDICIAL DISCLOSURE

Not Prejudicial to the filing of an Application:

1. Disclosure by the Inventor

(must be filed within twelve (12) months from filing date or
priority date)
2. Patent Office and the information should not have
been disclosed by the patent office
3. Third party from the inventor
Requirements for Patent Protection

INVOLVES AN 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 or priority date of an application.
 Person Skilled in the Art

1. Ordinary practitioner (fictional person)

2. Has access and understanding to all the prior art
3. Aware of common general knowledge in the specific art
4. Observes developments in the related technical field
5. Could be a team
6. No inventive ability
Requirements for Patent Protection

CAPABLE OF INDUSTRIAL APPLICATION

• An invention that can be produced

and used in any industry shall be
industrially applicable.
Invention Filing Requirements
•Accomplished Request for a grant of
Patent

•Specification or Description containing:

a) The title;
b) A brief statement of its nature
and purpose;
c) A brief explanation of the
drawings, if any;
 Invention Filing Requirements
• Specification or Description:
d) Complete and detailed enabling
description;
e) Claim(s)
f) Abstract of the invention

• Drawings, if any
• Filing fee:
Small Entity Big Entity
(Asset: P 100M or less) (Asset: More than
P100M)
Invention P 1,818.00 max. of 5 P 3,636.00 max. of 5
claims claims
Claims in excess P 152.00/claim P 303.00/claim
Request for early
publication P 5,605.50
Unity of Invention

 Application should relate to one invention only or

to a group of inventions forming a single general
inventive concept
 First-to-File Rule
The Right to a Patent shall belong to:

1. Person who filed an application

2. Applicant who has the earliest Filing Date
or Priority Date

Why is the filing date important?

 Right of Priority Date

Patent Application by “A” was

When may “A” file his
patent application in the
filed on February 7, 2021 in
Philippines to avail of the effect
Japan
PRIOR SALE in Japan of the priority date?
June 2021

“B” files same application “C” files same application “A” filed in the Philippines
in Japan OCTOBER 2021 DECEMBER 2021
in the Philippines on
MARCH 7, 2021
 1. PROCESS FLOW FOR A GRANT OF PATENT

APPLICANT IP PHILIPPINES PUBLIC

(First Party) (Second Party) (Third Party)

Filing Of:  Receives

 Request
 Description  Assigns Filing
 Fees upon filing or Date
within a 30-day  Conducts “FORMALITY
grace period “EXAMINATION"
Specification/Claim Format
Contents of the Request Form
Drawings
Appointment of Resident Agent
Other Formal Matters
2. PROCESS FLOW FOR A GRANT OF PATENT
APPLICANT IP PHILIPPINES PUBLIC

(First Party) (Second Party) (Third Party)

 Sends Examiner’s Action,

If necessary, two (2)
months to respond, two (2)
extensions
Ex Parte Proceedings
 Application
CLASSIFICATION

 Conducts Prior Art SEARCH

 PUBLICATION of
Application
with Search Report after 18
months from the filing date
 3. PROCESS FLOW FOR A GRANT OF PATENT

APPLICANT IP PHILIPPINES PUBLIC

(First Party) (Second Party) (Third Party)

 Request for SUBSTANTIVE  Conducts SUBSTANTIVE

EXAMINATION EXAMINATION

Industrial Applicability’
Novelty; and Inventiveness
Sufficiency of Disclosure,
Unity of Invention
Other Issues

 Sends Communication,
if necessary (Examiner’s
ACTION)
 4. PROCESS FLOW FOR A GRANT OF PATENT

APPLICANT IP PHILIPPINES PUBLIC

(First Party) (Second Party) (Third Party)

 Replies, if required
 FINAL REFUSAL
_______
_______
 APPEAL _______
 GRANT (Letters Patent) _______
_______

 Pays Maintenance Fee  PUBLICATION of GRANT

 Maintains Patent

 Surrender of Patent
Patent
Cancellation of Patents

GROUNDS:

1. Invention not new or patentable

2. Cannot be carried out by a person skilled in the
art
3. Contrary to public order or morality
Right to Patent
 INVENTOR
 Heirs
 Assigns
 Pursuant to a Commission
 Person who commissions work
 Employment
 Employee
 Employer if result of his regularly assigned duties

SHOP RIGHT is that where a servant during his hours of employment, working
with his master’s materials and appliances, conceives and perfects an
invention for which he obtains a patent, he must accord his master a non-
exclusive right to practice the invention.
Assignment of Rights

 Written
 Notarized
 Recorded with IPO
 Published
 Remedies of Persons Deprived of Patent
Sec 67
a. substitution
b. file new application
c. request refusal of application
d. cancellation
(Declared by final court order as having the right to patent under Sec
29, on First to file rule; file within 3 months from finality of
order/decision)

Sec 68. True and actual Inventor

A. substitution or cancellation of patent
B. damages
 (Action Must be filed w/in 1 yr from publication )
What rights does a patent owner have?
Rights of the patent owner:
- may decide who may or may not use the patented
invention for the period in which the invention is protected
- may give permission to, or license others to use the
invention on agreed terms
- may sell the right to the patent to others
- may prevent others from making, using, selling or importing
the product of his invention
- transfer by succession
Rights conferred by patent
Sec 71.
(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.
 Civil Action for Infringement Sec. 76

patent infringement = The making, using, offering for

sale, selling, or importing a patented product or a product
obtained directly or indirectly from a patented process, or
the use of a patented process without the authorization of
the patentee
contributory infringer = 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 and shall be
jointly and severally liable with the infringer.
*Action prescribes in 4 years
 Civil Action for Infringement
Patent infringement = The making, using, offering for sale,
selling, or importing a patented product or a product obtained
directly or indirectly from a patented process, or the use of a
patented process without the authorization of the patentee
Philippine Patent No.
123456

Damages + Attorney’s fees + Expenses + Injunction

Destruction of Infringing goods, materials & implements

*Action prescribes in 4 years

Civil Action for Infringement
 Presumption in case of Process Patents: IN FAVOR OF
OWNER
 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.

 Sec. 77. Infringement Action by a Foreign National

(Melbarose Sasot v PP GR 143193 June 29, 2005)
Criminal Action for Repetition of
Infringement

Penalty:
six (6) months to 3 years imprisonment
and/or
P100,000 to P300,000 fine

*Action prescribes in 3 years

Limitations of Patent Rights
72.1 Use of a patented product which has been put on the
market in the Philippines by the owner of the product, or
with his express consent
drugs/medicines – in the Phils. Or anywhere in the world
by owner or authorized party
72.2.Use done
• privately and on a non-commercial scale
or for a non- commercial purpose
• that does not significantly prejudice the economic
interests of the owner of the patent
 Limitations of Patent Rights
72.3. making or using exclusively for the purpose of experiments
for scientific or educational purposes
72.4. testing, using, making, selling of drugs/medicines or its data,
for approvals by gov’t regulatory agencies
72.5. 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;
72.6. temporary or accidentally use in any ship, vessel, aircraft, or
land vehicle of any other country entering the territory of the
Philippines, exclusively for the needs of the ship, vessel, aircraft, or
land vehicle and not for the manufacturing of anything to be sold
within the Philippines.
Limitations of Patent Rights

Sec. 74. Use of Invention by Government

(or authorized third person)
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
Limitations of Patent Rights
Sec. 74. Use of Invention by Government *
(or authorized third person)
where: In the case of drugs and medicines
(c) -there is a national emergency or other circumstance of extreme
urgency requiring the use of the invention; or
(d) -there is public non-commercial use of the patent by the
patentee, without satisfactory reason; or
(e) -the insufficient supply in the Philippines without reasonable
reasons, as determined by the Secretary of the Department of
Health

*comply with Sec 74.2 & subject to 74.3

Limitations of Patent Rights
Sec. 73. 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
Sec. 75. Extent of Protection and Interpretation of Claims
…due account shall be taken of elements which are equivalent to the
elements expressed in the claims, so that a claim shall be considered
cover not only all the elements as expressed therein, but also
equivalents
Doctrine of Equivalents
"(a)n infringement also occurs when a device
appropriates a prior invention by incorporating its
innovative concept and, albeit with some
modification and change, performs substantially the
same function in substantially the same way to
achieve substantially the same result.“
 (Pascual Godines Vs. The Honorable Court Of Appeals, Sv-agro
Enterprises, Inc., G.R. No. 97343. September 13, 1993)
Doctrine of File Wrapper Estoppel
“File wrapper” refers to the protection covering by
which the US Patent Office kept documents of
patent applications. Under the doctrine, a patentee
is precluded from claiming as part of the patented
product that which he had to excide or modify in
order to avoid patent office rejection, nor may he
omit any additions he was compelled to add by
patent office regulations.
Doctrine of Equivalents
"(a)n infringement also occurs when a device appropriates a prior invention
by incorporating its innovative concept and, albeit with some modification and
change, performs substantially the same function in substantially the same way
to achieve substantially the same result.“

 Smith Kline Beckman Corp vs CA & Tryco Pharma Corp.

G.R. No. 126627, August 14, 2003
 The doctrine of equivalents thus requires satisfaction
of the function-means-and-result test, the patentee
having the burden to show that all three components of
such equivalency test are met.
 Methyl 5 propylthio-2-benzimidazole carbamate vs Albendazole
Doctrine of Equivalents
Smith Kline Beckman Corp vs CA & Tryco Pharma Corp.
G.R. No. 126627, August 14, 2003
 The doctrine of equivalents thus requires satisfaction
of the function-means-and-result test, the patentee
having the burden to show that all three components of
such equivalency test are met.
 Methyl 5 propylthio-2-benzimidazole carbamate vs Albendazole

 the concept of divisional applications proffered by

petitioner, it comes into play when two or more
inventions are claimed in a single application but are of
such a nature that a single patent may not be issued
for them.
Defenses in Action for Infringement

 Non infringement
 Invalid based on prior art
 Failure to meet statutory limits (laches)
 Failure to meet the statutory requirements
 Invalid claims
 No knowledge or notice
 File wrapper estoppel
Voluntary Licensing
 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
 Disputes under the jurisdiction of the Director of the
Documentation, Information and Technology Transfer
Bureau
Voluntary Licensing
Prohibited Clauses
 87.1Those 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;
Voluntary Licensing
Prohibited Clauses
 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;
Voluntary Licensing
Prohibited Clauses
 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;
Voluntary Licensing
Prohibited Clauses
 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;
Voluntary Licensing
Prohibited Clauses
 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-fulfillment of his responsibilities under the technology
transfer arrangement and/or liability arising from third
party suits brought about by the use of the licensed
product or the licensed technology; and
 87.15. Other clauses with equivalent effects.
Voluntary Licensing
Mandatory Provisions
 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;
Voluntary Licensing
Mandatory Provisions
 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.
Voluntary Licensing
Sec. 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.
Compulsory Licensing

 Jurisdiction – Director of Legal Affairs

 Requirement – Efforts to obtain a voluntary license first
Grounds for Compulsory Licensing
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
 Grounds for Compulsory Licensing
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.
93.6 Where the demand for patented drugs and medicines is not
being met to an adequate extent on reasonable terms, as
determined by the Secretary of the Department of Heath.
Sec. 93-A Procedures on Issuance of a Special Compulsory License under the
TRIPS Agreement
(RA 9502 :Director General has jurisdiction to issue license for importation of
patented drugs)
Compulsory Licensing
Semi Conductors
Sec. 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.
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:
 The invention claimed in the second patent involves an important
technical advance of considerable economic significance in relation to
the first patent;
 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;
 The use authorized in respect of the first patent shall be non-
assignable except with the assignment of the second patent
Terms and Conditions of Compulsory License
 Rate of royalties to be fixed by the Director of Legal Affairs
 100.1. Scope and duration of license
 100.2. License shall be non-exclusive
 100.3. 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 unless 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.
Terms and Conditions of Compulsory License
 100.5.Termination of license upon proper showing that
circumstances which led to its grant have ceased to
exist and are unlikely to recur
 100.6.Payment of adequate remuneration to the
patentee 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.
Grounds for Cancellation of 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;
 Utility Model

• “Innovation Patent”

• New

• Industrially applicable (Useful)

• Term of 7 years from filing date

without renewal
SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO, AND JAP
FUK HAI VS. LIM ENG CO
G.R. No. 195835, March 14, 2016

 Since the hatch doors cannot be considered as either

illustrations, maps, plans, sketches, charts and three-
dimensional works relative to geography, topography,
architecture or science, to be properly classified as a
copyrightable class "I" work, what was copyrighted were
their sketches/drawings only, and not the actual hatch
doors themselves. To constitute infringement, the usurper
must have copied or appropriated the original work of an
author or copyright proprietor, absent copying, there can
be no infringement of copyright
 Industrial Design

• Composition of lines or colors

• Any three-dimensional form
• Special appearance or pattern
• Industrial product or handicraft
• New or original
• Ornamental or aesthetic value
• Term of 5 years renewable for two
consecutive terms of 5 years
Kenneth Cobonpue

Interior Crafts of the Island, Inc.

 Layout-Design of IC

• Original topography (picture of a surface) of

elements
• Three-dimensional disposition prepared for an
integrated circuit intended for manufacture
• One is an active element of an integrated circuit

• Term of protection is 10 years, not renewable

 Basic Differences between Patent, Utility Model and
Industrial Design

Categories Patent Utility Model Industrial Design

(Invention)
Subject Matter of Apparatus (Product) Apparatus Article of manufacture
Protection & Method (Process) (Product) & (Over-all aesthetic and
Method (Process) pleasing appearance of the
article of manufacture.)
Novelty YES YES YES
Inventive Step YES NO NO
Industrial Applicability YES YES YES
More than one (1) Only one (1)
Claim generic claim is generic claim is Omnibus type of claim
allowed and allowed. No limit
dependent claims on the number of
dependent claims.
Ornamental Features of
shape, configuration, NO NO YES
form, or a combination
thereof
Term of Protection Twenty (20) years Seven (7) years Five (5) years from the
from the date of from the date of date of filing with 2 five
filing with payment filing without year term renewals upon
of annuities renewal payment of fees
HAVE A NICE DAY