INTELLECTUAL PROPERTY – CEC

I. INTELLECTUAL PROPERTY What is intellectual property (IP)? It is those property rights which result from the physical manifestation of original thought. (Ballantine’s Law Dictionary, 3rd Ed.) It is any creation of the mind. The type of intellectual property would depend on the result – how the idea was expressed or manifested into something concrete. (CEC) Each particular type of IP protects a specific type of creation:  Patent – a technical solution to a problem  Trademark – a visible sign that would show the source of goods; symbolizes goods or services  Copyright – an expression of an idea coming from an author The Intellectual Property Code of the Philippines Art. XIV, Sec. 13, Constitution. 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. The constitution thus provides:  The basic definition of copyright – the exclusive right/s of an author to the work of his authorship.  Intellectual property rights are ultimately ordered towards public benefit or welfare. Congress enacted the Intellectual Property Code of The Philippines which comprehends the following concerns:  Copyright and related rights  Trademark and service marks  Geographic indications  Industrial designs  Patents  Layout designs (topographies) of integrated circuits  Protection of undisclosed information  Technology transfer Why should we protect intellectual property –  Personality theory – gifted persons should be given their due. Our works are the extension of our personality. You are what you create.  

Therefore, your intellectual property should be credited to you. Utilitarianism – “what is useful is good.” It propels social development. It makes the economy move forward. There is a motive to innovate, an incentive given to the innovator (recognition of rewards). In the end, society will benefit. John Locke philosophy – we should reward the labor of the creator. You are entitled to the fruits of your labor.

The role of the IP system is to balance the interests between the creator and the public. The compromise is limited protection. (CEC)  For example, patents are only good for 20 years. Upon expiration, anyone can copy it. Treaties and agreements on Intellectual Property The Senate of the Philippines ratified the General Agreement on Tariffs and Trade (1994, Uruguay Round) and therefore, the Philippines has become a member of the World Trade Organization. Among the agreements of the Uruguay Round is the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Aside from the General Agreement on Tariffs and Trades, the Philippines are also a party to other conventions:  Convention on establishing the World Intellectual Property Code  Paris Convention for the Protection of Industrial Property  Budapest Treaty on the International Recognition of the Deposit of Microorganisms for Purposes of Patent Procedures  Berne Convention for the Protection of Literary and Artistic Works  Rome Convention: International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations Paris Convention for the Protection of Industrial Property (1965) All signatories agree on the following:  National treatment o Afford the same kind of protection to citizens as its own national o All member countries should afford same level of protection to all citizens regardless of the country, as long as they are signatories of the agreement.
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and.  If a patent application is denied in one country. In order to be entitled to exclusively use the same in the sale of the beauty cream product. If public welfare requires it. o First to invent rule o o  Ex. HELD: Petitioner has no right to claim the exclusive use of the subject trade name and its container. o BECAUSE THERE ARE DIFFERENT DOMESTIC LAWS. to distribute and market Chin Chun Su products in the Philippines had already terminated by the said Taiwanese manufacturing company. a citizen of a member country in the WTO. re-packer and distributor of Chin Chun Su products manufactured by Shun Yi factory of Taiwan. the user must sufficiently prove that she registered or used it before anybody else did. Case: Kho v. You have 12 months to file a patent in another country. Term of the patent is 20 years from the application. An inventor. NOT from the grant of the patent.INTELLECTUAL PROPERTY – CEC  Similar to reciprocity principle.  Third parties still have to pay for the compulsory licenses. Duration of patent protection)  Each state has a domestic law which determines whether something is patentable or not. Right of priority o First to file rule – first person who applies first shall be given the right to the patent. For as long as it abides by the general principles of the Paris convention and TRIPS. that cannot be the basis of denial in another country. Treaties recognize that each country has its own culture. The petitioner’s copyright and patent registration of the name and container would not guarantee her right to exclusive use of the same for the reason that they are not appropriate subjects of 2 Why do you need to file in several countries instead of trusting one country accepting the filing? – patenting rules are territorial. thereby misleading the public. registered owner of Chin Chun Su and oval facial cream container/case. (3) that KEC Cosmetics Laboratory of the petitioner obtained the copyrights through misrepresentation and falsification. A provision stating that only Filipinos can apply for patent protection is void. The Paris Convention requires for compulsory license. Public health o “March in rights” is similar to police power. filed for application that is not a member of the WTO. She also alleged that she has patent rights on Chin Chun Su and Device and Chin Chun Su Medicated Cream after purchasing the same from Quintin Cheng. The duration of the licenses would depend on the emergency situation. and it would be as if you filed the patent application at the same time you filed it with the prior country. (CEC) Independence of patents o If a patent is granted in one country.  . In defense. in similar containers that petitioner uses. assignee of the patent registration certificate. the registered owner thereof in the supplemental register of the Philippine Patent Office. CA Petitioner alleged that they are doing business under the name and style of KEC Cosmetics Laboratory. respondents said that (1) Summerville is the exclusive and authorized importer. Each signatory can have their own rules with regard to the details of the agreement (ex. What happens? Inventor can be afforded the same treatment as long as he is a citizen of a member country in the WTO. (2) that the said Taiwanese manufacturing company authorized Summerville to register its trade name Chin Chun Cu Medicated Cream with the Philippine Patent office and Other appropriate governmental agencies. o It also follows in patenting that the country cannot give priority over their nationals. The name and container of a beauty cream product are proper subjects of a trademark in as much as the same falls squarely within its definition. It only applies on the certain country it is applied. that cannot be the basis for the grant in another country. (CEC) The right of patent protection retroacts to the date of filing. She alleged that Summerville advertised and sold petitioner’s cream products under the brand name Chin Chun Su. and resulting in the decline in the petitioner’s business sales and income. the state can step in (“March in rights”) and compel the inventor to license it to third parties.  Ex. (4) that the authority of Quintin Cheng.

Even if the parts are old. operation. or may relate to.2. Consequently. 21. a product. or an improvement of any of the foregoing. Patentable Inventions. performed upon a specified subject matter to produce a physical result. However. To qualify for a product patent. 22. If one is absent. 21 determines which products of human inventiveness are patentable. A technical solution of a problem in any field of human activity b. a product must be: a. (Sec. Manufacture or product – it is an article of manufacture. (WIPO. not having proven that she has registered a trademark thereto or used the same before anyone did. Improvement of either products or processes (Aquino) All requisites must be present. (CEC) Products The term is broad enough to include every output of human ingenuity. Discoveries. These criteria may apply to: a.  It also follows that it will also be patentable if the machine is able to perform a new operation or to produce a new result when an artifice of a patented machine is modified. sold. Non-Patentable Inventions. It may be. or step. Machines – consists of parts which are so arranged and organized as to cooperate. (Aquino) What are patentable? 1. predetermined and unitary result. II.  The patent protects a mode of treatment of certain materials to produce a certain result. then an improvement patent will issue. To be patentable. RA 165a) Sec. An invention (inventive step) d. used. it must possess a new or distinctive form. a preliminary injunction order cannot be issued for the reason that the petitioner has not proven that she has a clear right over the said name and container to the exclusion of others. Products b. then the improvement is still within the dominion of the original invention. or process. scientific theories and mathematical methods. PATENT BASICS A patent is a document issued upon application by a government office which describes an invention and creates a legal situation in which the patented invention can normally only be exploited (manufactured. 2. imported) with the authorization of the owner of the patent. application will be denied. 75) It encourages inventiveness by awarding to inventors monopolies for limited periods to the exploitation of their inventions. produces a definite. Industrially applicable. . the machine itself will be patentable if such parts are arranged in such a manner as to evidence an inventive step. or of a series thereof. not all products are patentable because not all possess the requirements of patentability. (Aquino) 3. Processes c. Compositions of matter 4. It is an act or series of acts performed upon the subject matter to be transformed and reduced to a different state or thing. An improvement of such What are not patentable? Sec.INTELLECTUAL PROPERTY – CEC the said intellectual rights. If it is non-obvious to one skilled in the art of the original invention and is truly novel.Any technical solution of a problem in any field of human activity which is new. or already in public domain. involves an inventive step and is industrially applicable shall be patentable. Novel c. (Aquino) Patentability Sec. (Aquino) Process Consists of an act. every tangible result of human craftsmanship or partisanship. Schemes. playing games or 3 . – The following shall be excluded from patent protection: 22. 22. (Aquino) Improvements When the improvement is a consequence of the technical configuration of the original invention and is thus “suggested” by the invention itself.1. 7. rules and methods of performing mental acts. when set in motion. quality or property.

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. published in accordance with this Act. (par. 24. shall be considered as filed as of the date of filing the foreign application: Provided. o It is within a limited period of 12 months upon disclosure. 5.If two (2) or more persons have made the invention separately and independently of each other. provided that they are new. 1). First to File Rule. the earliest priority date. 1. Forms of disclosure  Oral disclosure o It would depend on the circumstances if oral disclosure can make something prior art. RA 165a) The new law defines novelty negatively – that which does not form part of prior art. Right of Priority. (Sec. and 22. Subject to the provisions of paragraphs 2 and 3. utility model. 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.INTELLECTUAL PROPERTY – CEC doing business. 23) What is prior art? Sec. RA 165a)   Something already disclosed to the public. and programs for computers. shall be prior art with effect as of the filing date of such earlier application: Provided further. 4 . Prior Art. 31. Prior art is before the date of application of patent  Two types of novelty:  Prejudicial o Disclosure before the filing or priority date  Non-prejudicial o It does not destroy the novelty of the invention.3 Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. with a filing or priority date that is earlier than the filing or priority date of the application: Provided. 22.6. filed or effective in the Philippines. (b) it is filed within twelve (12) months from the date the earliest foreign application was filed. . 8. TRIPS. patents shall be available for any inventions. or industrial design registration. involve an inventive step and are capable of industrial application. This provision shall not apply to microorganisms and non-biological and microbiological processes. Requirements for a patent Sec.4. Novelty Sec. or law affords similar privileges to Filipino citizens. Art.5. or where two or more applications are filed for the same invention. 9. convention. . . 22. 27. (Sec. and 24. o Therefore. Anything which is contrary to public order or morality. Novelty. Aesthetic creations. That the applicant or the inventor identified in both applications are not one and the same. This provision shall not apply to products and composition for use in any of these methods. (Sec. whether products or processes. Everything which has been made available to the public anywhere in the world. RA 165a) First-to-file rule and Right of priority Sec.Prior art shall consist of: 24.2. in all fields of technology. the right to the patent shall belong to the person who filed an application for such invention. The whole contents of an application for a patent. (Sec. to the applicant who has the earliest filing date or. Plant varieties or animal breeds or essentially biological process for the production of plants or animals.An application for patent filed by any person who has previously applied for the same invention in another country which by treaty.1. Sec. (CEC) When is there “public disclosure?” o There is access to the public. . That the application which has validly claimed the filing date of an earlier application under Section 31 of this Act. 29. it will already be considered prior art. 23. That: (a) the local application expressly claims priority. 9.An invention shall not be considered new if it forms part of a prior art. before the filing date or the priority date of the application claiming the invention.

” “Inventive step” pertains to how the invention would bring the state of the art to the next level. Why protect something that has already been existing? (CEC) What if it is not new in another country?  It will then be considered prior art. Two kinds of novelty:  Relative novelty  Absolute novelty – the Philippines follows this. not with the manner of its achievement or the quality of the mind which gave it birth that the patent law concerns itself. cited Aquino) When is something inventive? It should not be anticipated by the person who will examine the invention.  Ex. It shall be examined by:  A person skilled in the art is the one who determines if the thing is inventive. Sec. If another person invents an improvement for your patent. Inventiveness/ Inventive step Sec. Ample disclosure through application in the Patent Office Case: Manzano v. It is a person who a reasonable knowledge on the matter.An invention that can be produced and used in any industry shall be industrially applicable. (CEC) We only give protection to those that can contribute to society. HE need not be an expert on the field. (CEC) Compared to innovation –  How to put the inventions out into the market  It is more of a business term 3. Public Use o The use of the technical solution in public or by putting the public in a position that any member may use it. The law says that it should not be prior art anywhere in the world. Manzano alleged that the utility model covered by the letters patent (an LPG gas . 26. but it does not have an inventive step. Suits S01E02 – the client invented a satellite phone and he threatened to post his designs in the internet. In a public conference where participants are made to sign a nondisclosure agreement. 27 categorizes an invention as industrially applicable when it can be produced and used in any industry. (In re: Dow Chem Co. the thing achieved. it will be considered public disclosure. o Ex.  It will be good for 7 years. Inventive Step. the term shall be deemed to be synonymous with “useful. Industrial Applicability. But if it is sold to the public. 27. CA Private sales are not considered public disclosure.2d 469. the inventor can instead file for a utility model. Defensive publication – a strategy used so that the invention becomes part of public domain. it would still be considered prior art. (CEC) 2. no one cannot patent it. (CEC) Publication o The description of the technical solution in writing that is published. can be mass produced.  It is also called a “petty patent.” This assures the patent office that the invention can be applied in the industry. Otherwise. . having regard to prior art.. (CEC) 4. 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. (Aquino) o It is with the inventive concept. (CEC) If an invention has novelty and industrial applicability.An invention involves an inventive step if. 837 F. .INTELLECTUAL PROPERTY – CEC   The test is WON it is accessible to the public. Industrial applicability Sec. As a result. 5 Manzano filed with the PPO an action for the cancellation of Letters Patent registered to Madolaria who subsequently assigned the letters patent to United Foundry. According to TRIPS. that person will have to ask permission from you to use your basic patent in his improvement. Meaning. (CEC) There should be an operational/ enabling disclosure for it to be considered a prior art. an average person skilled in the art may be able to replicate the invention based on the disclosure. there will be no sense in granting a patent to something that cannot be given to the public.

– 32. 6 .The request shall contain a petition for the grant of the patent. Appointment of agent or representative 3. involves an inventive step and is industrially applicable.INTELLECTUAL PROPERTY – CEC burner) was not inventive. Claims 6. HELD: The element of novelty is an essential requisite of the patentability of an invention or discovery. and for the patentee to be entitled to the protection.2. Request 4. In issuing the letters patent to Madolaria for an “LPG Burner” on 22 July 1981. If a device or process has been known or used by others prior to its invention or discovery by the applicant. originality and precedence. the inventor and the agent and the title of the invention. 13. general supervisor of United Foundry. We need to know the inventor to know who we’ll be giving the protection to. Abstract 7. the Office may require him to submit said authority. It has been repeatedly held that an invention must possess the essential elements of novelty. . The patent application shall be in Filipino or English and shall contain the following: (a) A request for the grant of a patent. the Philippine Patent Office found her invention novel and patentable. the inventor and the agent and the title of the invention. and (e) An abstract. (CEC) b. The Application. If the owner is a non-resident applicant. new. File with Bureau of Patents of the Intellectual Property Office 2. (n) a. in a judicial proceeding in which the validity of the patent is drawn in question. Patent application A patent application consists of the following parts: 1. the name and other data of the applicant. an application for a patent therefor should be denied. testified and said that it was private respondent who discovered the solutions to the defects of earlier models of burners. used or described within the country.1. Patentable inventions refer to any technical solution of a problem in any field of human activity which is new. or useful. Inventor may not necessarily be the owner. Disclosure and description of the invention 5. or if it is substantially similar to any other utility model so known. The Request. Request for Patent Sec. the court. Application. If the applicant is not the inventor. The scope of a copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain. No patent may be granted unless the application identifies the inventor. Information concerning corresponding foreign application for patents Sec. 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. In defense. nor did she derive her rights from the original. 32. 1. (c) Drawings necessary for the understanding of the invention. the application form must include the name and address of the resident agent. true and actual inventor. RA 165a) Sec. 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 name and other data of the applicant. the invention must be new to the world. 34. true and actual inventor of the utility model covered by the letters patent. A trademark is any visible sign capable of distinguishing the goods or services of an enterprise and shall include a stamped or marked container of goods. 34. will hold it void and ineffective.The request shall contain a petition for the grant of the patent. c. . 32. Rolando Madolaria. (b) A description of the invention. 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. (d) One or more claims. Hence. The Request. copyright and patents are different intellectual property rights that cannot be interchanged with one another. (Sec. Trademark. and that Madolaria was not the original. and if the application has been granted. Application 2.

36. the application shall be supplemented by a deposit of such material with an international depository institution. The application shall relate to one invention only or to a group of inventions forming a single general inventive concept. Description.3. Strategy: i.1. The Claims. however. (Sec. not exceeding four (4) months. Clear and complete b. the Director may require that the application be restricted to a single invention. (CEC)  The rule in drafting claims is that it cannot be too broad or too narrow.INTELLECTUAL PROPERTY – CEC 3. 35. This is the most important part of the patent application. If several independent inventions which do not form a single general inventive concept are claimed in one application. Unity of Invention. Matter sought to be protected with the patent c. 35 requires that the disclosure must be sufficient so that a person skilled in the art may be able to replicate the invention by following the process. Sec. 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.  The goal is to make the claims as broad as possible. a. or letters. o Cannot be too narrow because the protection would be too limited. Put ancillary claims so that if someone copies claim 1 and makes an improvement. Disclosure and Description of the Invention. 38. Where the application concerns a microbiological process or the product thereof and involves the use of a microorganism 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.” o The claim is vague. and such material is not available to the public. the claims dictate the legal protection. The application shall contain one (1) or more claims which shall define the matter for which protection is sought. and shall be supported by the description.1.2. 35. Rejecting broad claims Sec.  It would foreclose future inventions relating to the specific invention.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.. 165a) . Each claim shall be clear and concise. signs. The Regulations shall prescribe the manner of the presentation of claims. – 35. Disclosure. or within such additional time. 7 Case: Oriley v.1. . 38. (CEC) b. 36.. (CEC) o Cannot be too broad that it would encompass everything.. 17.2. Claims Sec. That the later application is filed within four (4) months after the requirement to divide becomes final. at any distance. Morse  The 8th claim includes “the use of the motive power of the electric or galvanic current. will not allow claims that are too general. R. as may be granted: Provided further. 38. Description of the invention Sec. – 38. . o The extent of the claim is also too broad. 4. It is the matter of legal protection. 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. however developed for marking or printing intelligible characters. No. The IPO.2. That each divisional application shall not go beyond the disclosure in the initial application. 36. A. ii. We follow the EUROPEAN STYLE of claims in the PH d.The Regulations shall prescribe the contents of the description and the order of presentation.. it would be considered part of the ancillary claims. (n) a.  A claim is the metes and bounds of the invention.

The abstract shall consist of a concise summary of the disclosure of the invention as contained in the description. 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. If the date of filing cannot be accorded. Classification and Search. 38 talks about unity of invention. 16. According a Filing Date. A. 165a) a. What if you have something in common with a prior art? i. R. Prior Art Search Sec. 37. 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. otherwise the application shall be considered withdrawn.2.  The patent application should only cover one inventive concept. The IPO conducts this search for a certain fee.2. claims and drawings in preferably not more than one hundred fifty (150) words. After the patent application has been accorded a filing date and the required fees have been paid on time in accordance with the Regulations. 4. and the principal use or uses of the invention. They will look at the compliance of the form and not the substance or content is examined. The Abstract. Sec. (n) 2. 42.INTELLECTUAL PROPERTY – CEC Sec.2. 3. – 40. Formality Examination. the applicant shall be given an opportunity to correct the deficiencies in accordance with the implementing Regulations. 40. the application shall be considered withdrawn. o Although there are several inventions/ patents. (Sec. 43. That is why you need to make a search before you file. the applicant has to file a separate patent application. Publication of Patent Application. and (c) Description of the invention and one (1) or more claims in Filipino or English. Who conducts this prior search? i. the filing date should be that date when all the elements are received. Foldable chandelier to save space. any interested party may inspect the application documents filed with the Office.The Office shall examine whether the patent application satisfies the requirements for the grant of date of filing as provided in Section 40 hereof. 41.1. the application shall be considered withdrawn. 42. No. 44.  However. After publication of a patent application. subject to the . 44. (b) Information identifying the applicant. Formality Examination Sec. (n) a. If the application 8 does not contain all the elements indicated in Section 40. Filing Date Requirements. 42. b. The Director General.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. . 44. 44. . . Filing date Sec. If any of these elements is not submitted within the period set by the Regulations. IN other words. after the expiration of eighteen (18) months from the filing date or priority date. they still form part of one inventive concept. (n) Sec.1. a single patent application may involve multiple inventions – when there is a group of closely related inventions o Ex. the gist of the solution of that problem through the invention. It must be drafted in a way which allows the clear understanding of the technical problem. (n) Procedure for grant of patent 1. the applicant shall comply with the formal requirements specified by Section 32 and the Regulations within the prescribed period.An application that has complied with the formal requirement shall be classified and a search conducted to determine the prior art.3. If the deficiencies are not remedied within the prescribed time limit. You will have to argue that yours is different. 40. o It involves several patents for the foldable arm. the spring mechanism.  But the law requires that the applicant has a divisional application.  Is it possible that an application has 2 inventive concepts? YES. The abstract shall merely serve for technical information. Publication Sec.

Request for substantive examination Sec. (Sec. 18. RA 165a) Sec. After publication of a patent application. the IP office will give you another letter informing you that they have published your application. 52. shall not be made available for inspection without the consent of the applicant. They are published in the IPO gazette. The application shall be deemed withdrawn unless within six (6) months from the date of publication under Section 41. 52. Observation by Third Parties. After 6 months from publication. A patent shall take effect on the date of the publication of the grant of the patent in the IPO Gazette. 50. Publication of the grant of patent Sec. Any interested party may inspect the complete description.INTELLECTUAL PROPERTY – CEC approval of the Secretary of Trade and Industry. which has not yet been published. your application will be deemed withdrawn. The final order of refusal of the examiner to grant the patent shall be appealable to the Director in accordance with this Act. Grant or refusal of application Sec. (n) a. 50. Chakrabarty – issue on the patentability of microorganisms  Chakrabarty genetically-engineered a bacteria that eats the different components of oil.2. Publication Upon Grant of Patent. 18. 48. any person may present observations in writing concerning the patentability of the invention. may prohibit or restrict the publication of an application. RA 165a) Case: Diamond v. 45. That such amendment shall not include new matter outside the scope of the disclosure contained in the application as filed. any interested party may inspect the application documents filed with the Office. If the application meets the requirements of this Act. 5. 49.1. Grant of Patent. The publication must be within 18 months between the filing and the publication b. – 51. 8.3.2. the Office shall grant the patent: Provided. you will have to write the IP office and request for substantive examination. The grant of the patent together with other related information shall be published in the IPO Gazette within the time prescribed by the Regulations. Sec. He applied for the patent of the ff: o Method for producing the bacteria o Composition o The bacteria . c. 48. claims. If the required fees for grant and printing are not paid in due time.1. – 50. 9 Withdrawal of the request for examination shall be irrevocable and shall not authorize the refund of any fee. The Office shall acknowledge and put such observations and comment in the file of the application to which it relates. Otherwise. and drawings of the patent on file with the Office. the application shall be deemed to be withdrawn.1. 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. – A patent application. 51. 51. . Confidentiality Before Publication.Following the publication of the patent application. 7.1. if in his opinion. Sec. After such time. Such observations shall be communicated to the applicant who may comment on them. 6.2. What is the importance of publication – It gives notice to the world regarding the patent being applied for and the inventor is being protected with regard to infringement should the patent be granted later on. 48. to do so would be prejudicial to the national security and interests of the Republic of the Philippines. That all the fees are paid on time. and all related documents. – 52. Request for Substantive Examination. (Sec. Amendment of Application. 50. 44. 47. Inspection Sec.2. Refusal of the Application. SEC. – An applicant may amend the patent application during examination: Provided.2. d. The Regulations shall provide for the procedure by which an appeal from the order of refusal from the Director shall be undertaken.

What if the inventor discloses to a 3rd party before filing the application. the 3rd claim was denied.The petition for cancellation shall be in writing. (CEC) Arguments raised: 1. “Verified petition” – petitioner personally verified and signed the petition under oath Sec. or (c) That the patent is contrary to public order or morality. . Thus. 30. No protection for reading or constructing based on what was copyrighted. a. Where the grounds for cancellation relate to some of the claims or parts of the claim. (Secs. Copyright v. PATENT Prohibits unauthorized production of patented material. By enacting the 2 special laws on plant protection. cancellation may be effected to such extent only. c. 61. the Congress already delineated living and non-living things. (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. The distinction lies in WON there is man-made intervention. The duty of the court is simply to interpret what the law means. SC held that there was human intervention on the part of Chakrabarty when he “manufactured” the bacteria. SC – the special laws focuses on plant varieties. Patent COPYRIGHT Prohibits photocopying. Protects the expression of the idea. Notice of Hearing. . or distributing the material. upon payment of the required fee. Natural phenomenon cannot be patented. and filed with the Office. 62. include a statement of the facts to be relied upon. (CEC)  See Donald Duck story Cancellation of patents and substitution of patentee Sec. they are protecting the patentability of plants. verified by the petitioner or by any person in his behalf who knows the facts. 28 and 29. but in confidence? Does that form part prior art?  If such disclosure is done in confidence.2. Requirement of the Petition. – 61. Bacteria are not patentable under patent law. Protects the idea itself.  Internet publications are just like any other written publication. together with the translation thereof in English. What if the disclosure came from a fictional story?  The disclosure needs to be substantial/ detailed in such manner that a person skilled in the art will be able to create the thing based on the details disclosed in the fictional story. 63. RA 165) Sec. but also disclosure (how the claims were drafted). why not microorganisms? b. on any of the following grounds: (a) That what is claimed as the invention is not new or patentable.Upon filing of a petition for cancellation. (Sec. it does not form part of prior art. . specify the grounds upon which it is based.1. RA 165a) Grounds for cancellation of patents  Not new or patentable  Does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art  Contrary to public order or morality The issue is not only patentability. With their enactment. Any interested person may.INTELLECTUAL PROPERTY – CEC     USPTO – first 2 allowed. or parts of the claim. if plants can be patented. if not in English language. But Congress made an exception in the PPA. Manufacture or composition of matter – does not include genetically altered organisms. ISSUE: WON microorganisms are patentable subject matter? Who determines patentable subject matter – o SC said it is up to the Congress to decide. 61. and other supporting documents mentioned in the petition shall be attached thereto. Cancellation of Patents. selling. Copies of printed publications or of patents of other countries. petition to cancel the patent or any claim thereof. Living things are generally not patentable. the Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the 10 “Invention” – there must be some form of human intervention.

The rights conferred by the patent or any specified claim or claims cancelled shall terminate. plus attorney’s fees and other expenses of litigation. or the use of a patented process without the authorization of the patentee constitutes patent infringement. (b) Where the subject matter of a patent is a process.2 shall apply mutatis mutandis to a new application filed under Subsection 67. A patent shall confer on its owner the following exclusive rights: (a) Where the subject matter of a patent is a product. 76. A patent can be cancelled in part or in whole. Does not mention anything about retroactivity. to recover from the infringer such damages sustained thereby. 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. . prohibit and prevent any unauthorized person or entity from making. 66.The court shall furnish the Office a copy of the order or decision referred to in Sections 67 and 68.1. No. If a person referred to in Section 29 other than the applicant. (n) Rights of patentee and infringement of patents Sec. the court shall order for his substitution as patentee. to restrain. and from manufacturing. Notice of the filing of the petition shall be published in the IPO Gazette. and to secure an 11 Remedies of a person with a right to a patent Sec. title or interest in and to the patent and the invention covered thereby. 67.2. or transfer by succession the patent.1. 70. Remedies of the True and Actual Inventor. RA 165a) Effect of revocation Sec. circumstances. 31. is declared by final court order or decision as having the right to the patent. the decision or order to cancel by Director of Legal Affairs shall be immediately executory even pending appeal. selling or offering for sale. 69. or any other right. 68. (b) File a new patent application in respect of the same invention. or (d) Seek cancellation of the patent. 71. Effect of Cancellation of Patent or Claim. 67. prevent or prohibit any unauthorized person or entity from using the process. Unless restrained by the Director General. Time to File Action in Court. Patent owners shall also have the right to assign. 37. 76.INTELLECTUAL PROPERTY – CEC patentee and all persons having grants or licenses. Patent Application by Persons Not Having the Right to a Patent. and award actual and other damages in his favor if warranted by the .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. Publication of the Court Order. such person may. Rights Conferred by Patent. 76. cancel the patent. offering for sale. respectively. 165a) Sec. using. If a person. and to conclude licensing contracts for the same. . may bring a civil action before a court of competent jurisdiction.2. 71. to restrain. using. RA 165a)    The rights conferred by the patent shall terminate. or importing any product obtained directly or indirectly from such process.1(b). Any patentee. or importing a patented product or a product obtained directly or indirectly from a patented process. 33. Civil Action for Infringement. dealing in. using. Notice of the cancellation shall be published in the IPO Gazette. offering for sale. (Sec. 71. (Sec. (Sec. within three (3) months after the decision has become final: (a) Prosecute the application as his own application in place of the applicant. title or interest in and to the patented invention. The making. (c) Request that the application be refused. as appears of record in the Office. The provisions of Subsection 38. selling. (Sec. or at the option of the true inventor.1. R. whose rights have been infringed.2. 67. and shall be recorded in the register of the Office. RA 165a) Infringement of patents Sec. A. or anyone possessing any right. and of notice of the date of hearing thereon on such persons and the petitioner. selling or importing that product. which shall be published in the IPO Gazette within three (3) months from the date such order or decision became final and executory. (n) Sec. if one has already been issued. (n) Sec. 32.

A.3. . (Sec. be criminally liable therefor and. without prejudice to the institution of a civil action for damages. (Sec. Defenses in Action for Infringement. If the damages are inadequate or cannot be readily ascertained with reasonable certainty. R. the defendant. A. No. 165a) Sec. 79. or had reasonable grounds to know of the patent. No. according to the circumstances of the case. in its discretion. R. 76. which shall be awarded as part of his costs should he prevail in the action. 80. Each assessor shall receive a compensation in an amount to be fixed by the court and advanced by the complaining party.No damages can be recovered for acts of infringement committed more than four (4) years before the 12 institution of the action for infringement. The court may. 84. A. the offenders shall. or on the advertising material relating to the patented product or process. shall record that fact in the register of the Office and shall publish a notice to that effect in the IPO Gazette. A. The assessors shall be possessed of the necessary scientific and technical knowledge required by the subject matter in litigation. 76. if the court shall find the patent or any claim to be invalid.INTELLECTUAL PROPERTY – CEC injunction for the protection of his rights. The court may. the court may award by way of damages a sum equivalent to reasonable royalty. 165a) Sec. Either party may challenge the fitness of any assessor proposed for appointment. Requirement of Notice. 45. R. . 165) Sec. 76. A. (Sec. to determine the process actually used. . 165a) Sec. his manufacturing and business secrets.If the subject matter of a patent is a process for obtaining a product. 165a) Sec. R. 76. or any claim thereof. . Any foreign national or juridical entity who meets the requirements of Section 3 and not engaged in business in the Philippines. it shall cancel the same. award damages in a sum above the amount found as actual damages sustained: Provided. 44. upon conviction. No. Limitation of Action for Damages. 78. A.5.6. without compensation. A. 165a) Sec.4. 41-A. R.1. (Sec.2.In an action for infringement. R. 42. 81. No. (Sec. the court shall adopt measures to protect. (Sec. No. That the award does not exceed three (3) times the amount of such actual damages. In ordering the defendant to prove that the process to obtain the identical product is different from the patented process. . 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. Patent Found Invalid May be Cancelled. It is presumed that the infringer had known of the patent if on the patented product. Criminal Action for Repetition of Infringement.Damages cannot be recovered for acts of infringement committed before the infringer had known. No. 83. 77. to which a patent has been granted or assigned under this Act. Process Patents. No. 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 . 47. Assessor in Infringement Action. or on the container or package in which the article is supplied to the public. 165) Sec. (n) Sec. (Sec. 83. are placed the words "Philippine Patent" with the number of the patent. 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. Infringement Action by a Foreign National. . in addition to other defenses available to him. Burden of Proof.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. order that the infringing goods. may bring an action for infringement of patent. Damages. as far as practicable. R. and the Director of Legal Affairs upon receipt of the final judgment of cancellation by the court. Two (2) or more assessors may be appointed by the court. 82.In an action for infringement. whether or not it is licensed to do business in the Philippines under existing law. on any of the grounds on which a petition of cancellation can be brought under Section 61 hereof. materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed. 46. 83. 43. may show the invalidity of the patent.

1. 74.The owner of a patent has no right to prevent third parties from performing. 75. only the Makati branch was able to sign the agreement. Extent of Protection and Interpretation of Claims. vessel. or land vehicle and not used for the manufacturing of anything to be sold within the Philippines. Where the invention is used in any ship. 48. R. In 1986. 38 and 39. so requires.2. A. R. (Sec. 72. 165a) Limitations of rights of patentee Sec. 165a) Sec. 72.1 Using a patented product which has been put on the market in the Philippines by the owner of the product. aircraft. 73. (n) Case: Pearl and Dean v. 73. Prior User. health or the development of other sectors. (Secs. the contract . 73. insofar as such use is performed after that product has been so put on the said market. Notwithstanding Section 72 hereof. 41. No. the acts referred to in Section 71 hereof in the following circumstances: 72. R. For the purpose of determining the extent of protection conferred by the patent.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. is anti-competitive. These were marketed in the name of "Poster Ads". who. R.1. (Sec. in a pharmacy or by a medical professional.2. They also applied for a registration of trademark with the Bureau of Patents in 1983. The right of the prior user may only be 13 transferred or assigned together with his enterprise or business. so that a claim shall be considered to cover not only all the elements as expressed therein.2. without his authorization. (SMI) to install these light boxes in their Makati and Cubao branch. any prior user. Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention.000). That it does not significantly prejudice the economic interests of the owner of the patent. 74. No. A. 40. or (b) A judicial or administrative body has determined that the manner of exploitation. No. in particular.3. The use by the Government. before the filing date or priority date of the application on which a patent is granted. petitioner had an agreement with respondent Shoemart Inc. 165a) Sec.2. national security. The extent of protection conferred by the patent shall be determined by the claims. 72. 72. of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared.000) but not more than Three hundred thousand pesos (P300.4. Where the act is done privately and on a non-commercial scale or for a noncommercial purpose: Provided. at the discretion of the court. or land vehicle of any other country entering the territory of the Philippines temporarily or accidentally: Provided. or with that part of his enterprise or business in which the use or preparations for use have been made. 165a) Sec. vessel. Use of Invention by Government. as determined by the appropriate agency of the government. In 1985. Limitations of Patent Rights. A. due account shall be taken of elements which are equivalent to the elements expressed in the claims. or third person authorized by the Government shall be subject.5. A copyright Registration was obtained in 1981.INTELLECTUAL PROPERTY – CEC pesos (P100. Where the act consists of the preparation for individual cases. to the conditions set forth in Sections 95 to 97 and 100 to 102. or with his express consent. . by the owner of the patent or his licensee. The criminal action herein provided shall prescribed in three (3) years from date of the commission of the crime. (Sec. aircraft. but also equivalents. in good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business. 72. No. 74. but were only approved in 1988. 75. Shoemart Pearl and Dean is a corporation in the manufacture of advertising display units also known as light boxes. A. which were manufactured by Metro Industrial Services. nutrition. 75. which are to be interpreted in the light of the description and drawings. shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect. mutatis mutandis. That such invention is used exclusively for the needs of the ship.

or selling such light boxes. No patent. subject to the terms and conditions specified in the statute. but CA reversed. The SC also made the following distinctions for patent. Whether there was a patent infringement Petitioner was not able to secure a patent for its light boxes. 3. thus it cannot be considered to use such term to be unfair competition against the petitioner. (n) Sec. Information and Technology Transfer Bureau shall exercise quasijudicial jurisdiction in the settlement of disputes between parties to a technology transfer arrangement arising from technology transfer payments. and cannot legally prevent anyone from manufacturing or commercially using the same. Since petitioner was not able to go through such examination. RTC ruled in favor of petitioner. 85. Jurisdiction to Settle Disputes on Royalties. Whether there was a copyright infringement Copyright is a statutory right. or of permanently employing personnel indicated by the licensor. copyright. and payment of compensatory damages worth P20M. “Poster ads” is a general term that cannot be associated specifically to Pearl and Dean. 2. They installed these light boxes in different SM city branches. 87. all technology transfer arrangements shall comply with the provisions of this Chapter. Therefore. . advertising copies.INTELLECTUAL PROPERTY – CEC was rescinded unilaterally by SMI. and other technologies. 14 . There is no need to register to have protection.1. intermediate products. Those that contain restrictions regarding the volume and structure of production. even admitted by the president of petitioner company. Prohibited Clauses. which includes "prints. (CEC)  Trademark – visible sign of goods and services Voluntary Licensing Sec. Claiming that respondents failed to comply. To ensure in the public domain remain there for free use of the public. Whether there was a trademark infringement The certificate of registration issued by the Director of Patents gives exclusive right to use its own symbol only to the description specified in the certificate. the following provisions shall be deemed prima facie to have an adverse on competition and trade: 87. Petitioner requested SMI and NEMI to put down their installations of the light boxes. raw materials. they filed a case for infringement of trademark and copyright. was neither a literary nor an artistic work but an engineering or marketing invention. A light box. and instead contracted with Metro Industrial Services. including the fixing of appropriate amount or rate of royalty. Issue/ Held: NO to all. Since the copyright was classified under class "O" works. Whether there was unfair competition "Poster Ads" is a general term that cannot be associated specifically to Pearl and Dean. It cannot prevent others to use the same trademark with a different description. 1. 87.3. pictorial illustrations. (CEC) 4.2. 87. Patent has a three-fold purpose: a. unfair competition and damages. 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. and trademark –  Patent – technical solution o Exclusivity of 20 years o Minimum protection under TRIPS  Copyright – work of art o There is no need for registration. (n) Sec. The Director of the Documentation. thus not included under a copyright. To promote the disclosure of an invention and permit public to use the same upon expiration c. in association with North Edsa Marketing Inc (NEMI). Voluntary License Contract. Those which impose upon the licensee the obligation to acquire from a specific source capital goods." and does not include the light box itself. it cannot exclude others from manufacturing. SMI's sister company. . no protection. 86. labels. thus it cannot be considered to use such term to be unfair competition against the petitioner. tags and box wraps. 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.Except in cases under Section 91. including Cubao and Makati. To foster and reward invention b. it can only cover the works falling within the statutory enumeration or description.To encourage the transfer and dissemination of technology.

87. . registered companies with pioneer status. 87.5. Non-Registration with the Documentation. Those which require payments for patents and other industrial property rights after their expiration. Exceptional Cases. (Sec.12. processes or equipment.15.14. Those that require payment of royalties to the owners of patents for patents which are not used. 33-C (1). regional dispersal of industries and/or substitution with or use of local raw materials. 88. increase in foreign exchange earnings. Continued access to improvements in techniques and processes related to the technology shall be made available during the period of the technology transfer arrangement. (Sec. 87.6. (n) Sec. 87. That the laws of the Philippines shall govern the interpretation of the same and in the event of litigation. 88.9. 87.4. 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.7. such as high technology content. 89.The following 15 provisions shall be included in voluntary license contracts: 88. and 87.INTELLECTUAL PROPERTY – CEC 87. . A. Mandatory Provisions. except in cases of early termination of the technology transfer arrangement due to reason(s) attributable to the licensee. 165a) Sec. Information and Technology Transfer Bureau after evaluation thereof on a case by case basis. 87. Those which prevent the licensee from adapting the imported technology to local conditions. R. In the event the technology transfer arrangement shall provide for arbitration. Those which restrict the use of the technology supplied after the expiration of the technology transfer arrangement. 88.In exceptional or meritorious cases where substantial benefits will accrue to the economy. 33-C[2]. Those which require that the technology recipient shall not contest the validity of any of the patents of the technology supplier. 87. 165a) Sec. A. 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. 87. 33-B.1. 87.4 Those that prohibit the use of competitive technologies in a non-exclusive technology transfer agreement. (n) Sec. Rights of Licensee. and 88. Those that establish a full or partial purchase option in favor of the licensor. .2. 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. Other clauses with equivalent effects. . 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. 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.In the absence of any provision to the contrary in the technology transfer arrangement. or in the case of Board of Investments. 87. as long as it does not impair the quality standards prescribed by the licensor. A. R. 90.13. employment generation. R. The Philippine taxes on all payments relating to the technology transfer arrangement shall be borne by the licensor. Rights of Licensor. exemption from any of the above requirements may be allowed by the Documentation. termination arrangement. . 91.3. the venue shall be the proper court in the place where the licensee has its principal office.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.11. 165a) Sec.8. or introducing innovation to it. 92. 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.10.

Where the public interest.4. Information and Technology Transfer Bureau under the provisions of Section 91 on exceptional cases. Recording. RA 165) Sec. health or the development of other vital sectors of the national economy as determined by the appropriate agency of the Government. without satisfactory reason: Provided. Information and Technology Transfer Bureau. 97. (n) Licensing is allowing another person to use a patented product. Form of Assignment. or 93. (Secs. If the original is not available. under any of the following circumstances: 93. which are presented in due form to the Office for registration. in books and records kept for the purpose. even without the agreement of the patent owner. 52. Non-conformance with any of the provisions of Sections 87 and 88. Public health  “March in rights” is similar to police power. in which event the parties become joint owners thereof. RA 165) Sec. unless said technology transfer arrangement is approved and registered with the Documentation. national security. (Sec. The owner of the first patent shall be entitled to a cross-license on reasonable terms." granted on a prior application or benefiting from an earlier priority. – An assignment may be of the entire right. .2. and the contents thereof should be kept confidential. 34-A. nutrition. hereafter referred to as the "first patent. (Sec. or 93. title or interest in and to inventions. and patents or application for patents or inventions to which they relate. 97. An assignment may be limited to a specified territory. The Office shall record assignments. 51. acknowledged before a notary public or other officer authorized to administer oath or perform notarial acts. That the importation of the patented article shall constitute working or using the patent. or of an undivided share of the entire patent and invention. the state can step in (“March in rights”) and compel the inventor to license it to third parties.3. If the patented invention is not being worked in the Philippines on a commercial scale. o Third parties still have to pay for the compulsory licenses. In case of public non-commercial use of the patent by the patentee.1. without satisfactory reason.INTELLECTUAL PROPERTY – CEC Information and Technology Transfer Bureau. Assignment of Inventions. Technology transfer arrangements that conform with the provisions of Sections 86 and 87 need not be registered with the Documentation. licenses and other instruments relating to the transmission of any right. shall automatically render the technology transfer arrangement unenforceable. in favor of any person who has shown his capability to exploit the invention. – The Director of Legal Affairs may grant a license to exploit a patented invention. Compulsory Licensing Sec. There are 2 kinds:  Voluntary – parties are allowed to enter into such as long as they follow the mandatory provisions and not put therein prohibited provisions. Assignment and transmission of rights Sec. 93. 105. 106. 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. This is usually one for emergency situations.  Compulsory – government compels. although capable of being worked.2. hereafter referred to as the "second patent. – 106. and certified under the hand and official seal of the notary or such other officer. so requires. 93. and 34-B.  Ex. a compulsory license may be granted to the owner of the second patent to the extent necessary for the working of his invention. RA 165a) Sec. 93. National emergency or other circumstances of extreme urgency. under certain situations. The invention claimed in the second patent involves an important technical advance of considerable economic significance in relation to the first patent. Grounds for Compulsory Licensing.5.If the invention 16 protected by a patent. title or interest in and to the patent and the invention covered thereby. 104.1. in particular. . subject to the following conditions: 97.1. The duration of the licenses would depend on the emergency situation. 34. the patent holder to give licenses." within the country cannot be worked without infringing another patent. If public welfare requires it. The original documents together with a signed duplicate thereof shall be filed. however.The assignment must be in writing. an . Compulsory License Based on Interdependence of Patents.

Such instruments shall be void as against any subsequent purchaser or mortgagee for valuable consideration and without notice. require inventive step. Industrial designs are strictly focused on the aesthetics of the thing. Upon recording. 106. (CEC) Term of protection    5 years Protection of industrial designs may be renewed twice for an additional 5 years for each renewal. within three (3) months from the date of said instrument. and Sec. 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. Layout designs or industrial designs pertain to something which is ornamental. Utility Model (petty patents) PATENT The invention which has novel. or prior to the subsequent purchase or mortgage. in which the elements. In other words. and of some or all of the interconnections of an integrated circuit. Longer time [2 to 5 To obtain Utility model 17 . Patent protection is Utility model protection is actively used less actively used. (Sec. but they still make our lives easier. 112. The cost to obtain and The cost to obtain and maintain the patent is maintain the utility model expensive. it does not require an inventive step. protected. the Office shall retain the duplicate.2. RA 165a) Registration of Utility Models Sec. Elements of an industrial design 1. It requires substantive It does not require examination of patent substantive examination application to validate procedure. once the design already deals with a technical function. or an intermediate form. or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture. (CEC) All new invention or All marginal improvement substantial improvement invention can be invention can be protected. but less or absent in inventive step can be protected. Utility models must have a technical function in the mechanical field. In other words. in its final form. an industrial design is all about the appearance of the product. The term of protection is The term of protection is 20 years from the date of between 7 and 10 years filing. from the date of filing. unless. it requires obtain a patent. 53. examination Lay-out designs (topographies) of integrated circuits (As amended by RA 9150. it is so recorded in the Office. is cheaper. of the elements.1 (a) An invention qualifies for registration as a utility model if it is new and industrially applicable. Conversion of patent in Conversion of utility to utility model is always model in to a patent is possible. 109. It is not necessarily really groundbreaking.  For aesthetic purposes or appearance  It makes the product more attractive.2 Integrated Circuit means a product. the total term of protection for industrial designs is 15 years. possible under certain circumstances. Formal and substantial Formal examination only. shall apply except the reference to inventive step as a condition of protection.INTELLECTUAL PROPERTY – CEC authenticated copy thereof in duplicate may be filed. it will be considered as a utility model. In other words. "Patentable Inventions". UTILITY MODEL The invention which has mainly novelty. August 2001) Sec. (CEC) Patent v. (b) Section 21. however expressed. inventive step and industrial application can be protected. at least one of which is an active element and some or all of the interconnections are integrally formed in and/or on a piece of material. 112.3 Layout-Design is synonymous with 'Topography' and means the three-dimensional disposition. years] is required to protection. at least one of which is an active element. and which is intended to perform an electronic function. which are more into the function of the invention. It must be new 2. It must be original As compared to utility models. as it does not patentability. only less time in the range of 6 months to 1 year.

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