INTELLECTUAL PROPERTY RIGHTS 3.

Geographic indications
- Indications which identify a good as originating
from a given territory that is essentially
Intellectual property rights are rights given to persons
attributable to its geographic indication.
over the creation of their minds.
Example: grasse (for perfume)
2 categories:
4. Industrial designs
a. Industrial property
- Any composition of line or colors or any three
- This includes inventions (patents), trademarks,
dimensional form, provided that such
industrial design, and geographic indications of
composition or form gives a special appearance
source; and,
to and can serve as pattern.
b. Copyright and related rights
- Includes literary and artistic works.
5. Patents
- Any technical solution of a problem with any
Kinds of intellectual property rights under the
field of human activity which is new, involves an
Intellectual PRoperty Code of the Philippines:
inventive step and is industrially applicable.

1. Copyright and related rights

6. Lay out designs
- Exist over original and derivative intellection
- Synonymous with topography
creations in the literary and artistic domain
- It means three dimensional disposition
protected from the moment of creation.
7. Integrated circuit
2. Trademark and service marks
- A product in its final form or an intermediate
- Any visible sign capable of distinguishing the
form, in which the elements are integrally
goods (trademarks) or services (service mark) of
formed.
an enterprise and shall include a stamped or
- Intended to perform an electronic function.
marked container of goods.
 8. Protection of undisclosed information
- Means protection of information lawfully held
from being disclosed to or used by others
without their consent in a manner contrary to
honest commercial practices.
Elements:
● Information is secret in the sense that it is not
● Has commercial value because it is a secret
● Has been subject to reasonable steps under the
circumstances, by the person lawfully in control
of the information, to keep it secret.
Intellectual Property as a right.
➔ Intellectual property rights are statutory in
nature.
● It must be provided by law
● Can only be enjoyed on the terms specified by
statute
➔ Intellectual property is also an incorporeal right.
● It exists separate and distinct from the material
object to which it is attached.
● Ownership in one does not necessarily vest
ownership in the other.
➔ Intellectual property is a private right.
● There is a need from the rights holder or owner
of the IP to participate in any and all
investigations and prosecutions involving
violations of IP.
➔ The right is not absolute. It is still subject to
certain limitations and exceptions provided by
law.
HOARDING OR COLLECTION OF
EMPTY BOTTLES NOT VIOLATION OF IPC.
● It is not a violation of the IPC.
● While it is contrary to good faith, it does
not constitute an act within the
contemplation of the IPC.
● Neither does it amount to unfair
competition of pertain to mean
fraudulently “passing off”
Trade secrets are protected under the ipc.
● The IPC protects trade secrets in the sense
that the law owes protection to
undisclosed corporations.
 AS TO ITS TERM OF PROTECTION
➔ Trade Sections is defined as a plan or process,
Trademark Trade Name
tool, mechanism known only to its owners and
those of his employees to whom it is necessary A certificate of registration A certificate of
to confide it. shall remain in force for 10 registration shall
years, provided that the remain in force for 10
registrant shall file a years, provided that the
DIFFERENCE BETWEEN TRADEMARK AND TRADENAME declaration of actual use or registrant shall file a
show a valid reason. declaration of actual use
Trademark Trade Name or show a valid reason.
Any visible sign capable of It means the name or AS TO MODE OF ACQUIRING THE VARIOUS RIGHTS
distinguishing the goods designation identifying Trademark Trade Name
(trademark) or services or distinguishing an
(service mark of an enterprise. Acquired solely through Acquired solely through
enterprise and shall include registration in accordance registration in
a stamped or marked with the provisions of IPC. accordance with the
container of goods. provisions of IPC.
AS TO ITS SCOPE OR OBJECT
Trademark Trade Name

Trademark attaches to It means the name or

goods or services of an designation identifying
enterprise and stamped or or distinguishing an
marked containers. enterprise.

DIFFERENCE BETWEEN PATENT AND COPYRIGHT
Patent Copyright
It is an exclusive right It is an intangible,
granted to an inventor over incorporeal right granted
an invention or a utility by statute to the author or
model or industrial design originator of certain
to sell, use, and make the literary or artistic
same for commerce and productions, with the sole
industry. and exclusive privilege of
multiplying copies of the
same and selling them.
AS TO ITS SCOPE OR OBJECT
Patent Copyright
Patentable inventions refer It is confined to literary,
to any technical solution of artistic and scientific
a problem in any field of works which are original
human activity which is intellectual creations.
new, involves an inventive
step and is industrially
applicable.
AS TO ITS TERM OF PROTECTION
Patent Copyright
Valid for 10 years from the Valid for 50 years.
filing of the application for
the grant of patent.
AS TO MODE OF ACQUIRING THE VARIOUS RIGHTS
Patent Copyright
Acquired solely through Acquired from the
registration in accordance moment of creation.
with the provisions of IPC.
➔ Trademark, copyright and patents are different
intellectual property rights that cannot be
interchanged with another.
➔ They are completely distinct and separate from
one another and the protection afforded by one
cannot be used interchangeably.
➔ The law guarantees the protection of trade
names and business names prior to or even
without registration, against any unlawful act
committed by third parties.
➔ A stamped or marked container of goods
can be registered as a trademark.
➔ An ornamental design cannot be patented,
because aesthetic creations cannot be
patented.

PATENT
A patent is an exclusive right granted to an inventor
over an invention or a utility model or industrial design
to sell, use, and make the same for commerce and
industry.
Types of Patents:
➔ Patentable inventions
➔ Industrial designs
➔ Utility models
Purpose of patent law:
● It seeks to foster and reward invention
● It promotes disclosure of inventions to stimulate
further innovation and ot permit the public to
practice the invention once the patent expires
● To ensure that ideas in the public domain remain
for the free use of the public
● An invention qualifies for registration as a utility
model if it is new and industrially applicable.
● A utility model cannot be renewed, it can only be
registered for a period of 7 years after the date of
the filing of application, without any possibility
of renewal.
Example of utility model:
- karaoke
Patentable Invention
● 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 a product, process or an improvement
of any of the foregoing.

Ex of recently patented inventions:

-the iphone, the drone, self driving car
Utility Model
● It is any model or tools or any industrial product, Requisites for the patentability of an invention:
or part of the same which is of practical utility by ➔ Novelty or newness
reason of its form, configuration or ➔ Inventive step
composition. ➔ Industrial applicability
 Novelty as an element of patentability Example: Bojji put together a mechanical water pump
in his garage consisting of suction systems capable of
drawing water using less human effort than what was
❖ An invention shall not be considered new if it
then required by existing models.
forms part of a prior part.
❖ If the inventor makes his invention available to
Bojji had several models of his new system fabricated
the public but without obtaining a patent, he
and thereafter sold in his province.
cannot restraint others from using his
invention.
Question: is Bojji’s invention no longer
● No patent, no protection.
patentable by virtue of the fact na nagbenta na
● A utility model shall not be considered
siya sa public before formal application sa IPO?
“new” if before the application for it, it
has been publicly known or publicly used
Answer: It still patentable. It presupposes that
in this country
the one who was made available to the
● An invention must possess the essential
patentable invention to the public is a person
elements of novelty, originality and
other than the applicant for patent.
precedence, and the invention must be
new to the world.

Inventive Step
Doctrine of Prejudicial Disclosure
● The disclosure of information contained in the
application during the 12 months preceding the
filing date of the application shall not prejudice
the applicant on the ground of lack of novelty if
such disclosure was made by the inventor
himself.
● 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 of the application
claiming the invention.
● Only prior art made available to the public
before the date or priority date is
considered in assessing inventive step.

Industrial applicability
● An invention that can be produced and
used in any industry shall be industrially
applicable.
methods practiced on the human or animal
body;
d. Plant varieties or animal breeds or essentially
biological process for the production of plants or
animals

Non - Patentable inventions e. Aesthetic creations; and

f. Anything which is contrary to public order or

These are inventions that are excluded from patent
morality.
protection to wit:

a. Discoveries, scientific theories and

mathematical methods, and in the case of drugs Right to a Patent
and medicines, the mere discovery of a new form
or new property of a known substance which
● The right to a patent belongs to the:
does not result in the enhancement of the known
➔ Inventor
efficacy of that substance, or the mere discovery
➔ His heirs
of any new property or new use for a known
➔ Assigns
substance, or the mere use of a known process
unless such known process results in a new
● When two or more persons have jointly
product that employs at least one new reactant;
made an invention, the right to a patent
shall belong to them jointly.
b. Schemes, rules and methods of performing
mental acts, playing games or doing business,
Note: the ultimate goal of a patent system
and programs for computers;
is to bring new designs and technologies
into the public through disclosure, hence,
c. Methods for treatment of the human or animal
ideas, once disclosed to the public w/o
body by surgery or therapy and diagnostic
 protection of a valid patent, are subject to
appropriation without significant
restraint.
First to File Rule
● If two or more persons have made the
invention separately and independently of
each other, it shall belong to the applicant
who has the earliest filing date or, the
earliest priority date.
➔ Invention created pursuant to a commission
● The person who commissions the work
shall own the patent, unless other
provided in the contract.
● This is different from copyright where
the work is owned by the one who
commissioned it but the copyright
belongs to the author or creator.
➔ Inventions created by an employee
● In case the employee made the invention
in the course of his employment contract,
the patent shall belong to:
a) 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) 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.
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 afford similar
privileges to Filipino citizens, shall be
considered as filed as of the date of the
filing of the foreign application; provided,
that:
a) The local application expressly
claims priority
b) It is filed within 12 months from
the date of the earliest foreign
application was filed
 c) Certified copy of the foreign ➔ Remedy of the true and actual
application together with an
inventor
English translation is filed within 6
months from the date of filing in
the Philippines. a. Declared by final court order as having the right
to the patent
Note: a right of priority is not equivalent to a patent.
● Within three months after the decision
has become final;
➔ Grounds for cancellation of a patent
(1) Prosecute the application as his
own application in place of the
a) The invention is not new or patentable
applicant
b) The patent does not disclose the invention in a
(2) File a new patent application in
manner sufficiently clear and complete for it to
respect of the same invention
be carried out by any person skilled in the art
(3) Request that the application be
c) The patent is contrary to public order or
refused;
morality
(4)Seek cancellation of the patent, if
one has already been issued
Note:
- That the patent is not granted in favor of the true
➢ The court order shall order for his
and actual inventor is not a ground for
substitution as patentee, or at the option
cancellation of a patent.
of the true inventor, cancel the patent,
and award actual and other damages in his
favor if warranted by circumstances.

➢ Even true and actual inventors, who are

patent holders, cannot file an action for
patent infringement. Such remedy is
 available only to the patentee or his
successors-in-interest.
➢ The remedy available to the inventor who
is not issued the patent is not to file a
petition for cancellation of patent but
institute the appropriate court action to
be declared the patentee an only after he
has obtained judgment that he can ask the
IPO to cancel the patent of the holder.
➔ Rights conferred by a patent
A patent shall confer on its owner the following
exclusive rights:
a) 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) 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.
Note: Patent owners shall also have the
right to assign, or transfer by succession
the patent, and to conclude licensing
contracts for the same.
➔ Term of patent
The term of patent shall be 20 years from
the filing date of the application. The term
is not subject to extension.
➔ Significance of the term of
patent
A patent shall have the exclusive right to
make, use and sell the patented machine,
article or product, and o 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, selling by any person
without the authorization of the patentee
constitutes infringement of the patent.
Note: the patentee’s exclusive rights exist
only during the term of the patent, hence,
after the cut off date, the exclusive rights
no longer exist.

➔ Limitations of patent rights
The owner of a patent has no right to prevent
third parties from performing without his
authorization in the following circumstances:
a. Using a patented product which has been
put on the market in the Philippines by
the owner of the product, with regard to
drugs and medicines, the limitation on
patent rights shall apply after a drug or
medicine has been introduced in the
Philippines or anywhere else in the world
by the patent owner, provided that the
right to import the drugs and medicines
contemplated in this section shall be
available to any government agency or
any private third party
b. Where the act is done privately and on a
non-commercial scale or for a consultation
non-commercial purpose: Provided, that
it does not significantly prejudice the
economic interests of the owner of the
patent;
c. Where the act consists of making or using
exclusively for experimental use of the
invention for scientific purposes or
educational purposes and such other
activities directly related to such scientific
or educational experimental use
d. In the case of drugs and medicines, where
the act includes testing, using, making or
selling the invention including any data
related thereto, solely for purposes
reasonably related to the development
and submission of information and
issuance of approvals by government
regulatory agencies required under any
law of the Philippines or of another
country that regulates the manufacture,
construction, use or sale of any product:
Provided, That, in order to protect the
data submitted by the original patent
holder from unfair commercial use
provided in Article 39.3 of the Agreement
on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement), the
Intellectual Property Office, in
with the appropriate
government agencies, shall issue the
appropriate rules and regulations
necessary therein not later than 120 days
after the enactment of this law;
e. Where the act consists of the preparation
for individual cases, in a pharmacy or by a
medical professional, of a medicine in
accordance with a medical prescription or
 acts concerning the medicine so
prepared;and
f. Where the invention is used in any ship,
vessel, aircraft, or land vehicle of any
other country entering the territory of the
Philippines temporarily or accidentally:
provided that such invention is used
exclusively for the needs of the ship,
vessel, aircraft, or land vehicle and not
used for the manufacturing of anything to
be sold within the Philippines.
g. 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.
h. A government agency or third person
authorized by the Government may
exploit the invention even without
agreement of the patent owner where:
i. 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
ii. Mere determination of an
appropriate government agency on
the existence of a ground based on
public interest would suffice for the
exploitation of the invention.82
This is different from the situation
of national emergency or extreme
urgency where the determination is
made by the President of the
Philippines
iii. A judicial or administrative body
has determined that the manner of
exploitation, by the owner of the
patent or his licensee, is
anti-competitive;
iv. In the case of drugs and medicines,
there is a national emergency or
other circumstance of extreme
urgency requiring the use of the
invention;

v. In the case of drugs and medicines,
there is a public non-commercial
use of the patent by the patentee,
without satisfactory reason.
PATENT INFRINGEMENT
Intellectual property infringement basically means
performing any act in violation of the rights granted by
law to the owner or holder of the intellectual property
right.
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
Exception:
a. Section 72.1 and 72.4 (Limitations of Patent
Rights)
b. Section 74 (Use of Invention by the Government)
c. Section 93.6 (Compulsory Licensing)
d. Section 93 - A (Procedures on Issuance of a
Special Compulsory License under the TRIPS
Agreement
Note: There can be no infringement of a patent
until a patent has been issued. No patent, no
protection.
➔ Who may file an action for patent
infringement?
●
●
Any patentee
Anyone possessing any right, title
or interest in and to the patented
invention, whose right have been
infringed
Note: only the patent holder can file an
action for infringement.
The SC ruled that the phrase “anyone possessing
any right, title or interest in and to the patented
invention, whose rights have been infringed”
may bring an action for infringement does NOT
refer to the inventor not issued the patent but to
the patentee’s successors-in-interest and
assignee.
 ➔ Remedy of the inventor ➔ Tests in patent infringement

● To file an action in court that he be a) Literal

declared the patentee and not to file an b) Infringement
action for infringement. c) Doctrine of equivalents

➔ Who has the burden of proof in

an action for infringement?

● The burden of proof to substantiate a

charge of infringement is with the
plaintiff.

When can burden of proof shifts to the

defendant:

- Where the plaintiff introduces the patent in

evidence, and the same is in due form, there is a
prima facie presumption of its correctness and
validity.
- The burden of going forward with the evidence
then shifts to the defendant to overcome by
competent evidence this legal presumption.