NOTES ON

INTELLECTUAL
PROPERTY (IP) LAW
MYLENE I. AMEROL - MACUMBAL
COMMERCIAL LAW REVIEW
WHAT IS INTELLECTUAL
PROPERTY?
refers to creations of the mind: inventions; literary and artistic
works; and symbols, names and images used in commerce.

Different from the property itself

Territorial

Broadly classified into Industrial Property (patents for

inventions, trademarks, industrial design, geographical
indications) and Copyright and Other Related Rights
(literary works, films, music, artistic works, and architectural
design)
 Why promote IP?
(1) the progress and well-being of humanity rest on its
capacity to create and invent new works in the areas of
technology and culture.

(2) the legal protection of new creations encourages the

commitment of additional resources for further
innovation.

(3) the promotion and protection of intellectual property

spurs economic growth, creates new jobs and industries,
and enhances the quality and enjoyment of life.
 …
The intellectual property system helps strike a
BALANCE between the interests of innovators
and
the public interest, providing an environment in
which creativity and invention can flourish, for
the benefit of all,
By providing a limited period of monopoly, in
exchange for disclosure of ideas.
 Three Main Types of IP
PATENT – any technical solution of a problem in any
field of human activity which is new, involves an
inventive step, and is industrially applicable.

TRADEMARK – any visible sign capable of

distinguishing the goods (trademark) or services
(service mark) of an enterprise and shall include a
stamped or marked container of the goods.

COPYRIGHT – literary and artistic works which are

original intellectual creations in the literary or artistic
domain protected from the moment of their creation.
 PEARL & DEAN CASE
P&D invented advertising light boxes. P&D filed a
copyright claim with the National Library. The
advertising light boxes were marketed under the
trademark Poster Ads.

Then, P&D entered into a contract with SM for the use of

the light boxes. SM reneged on the contract and made its
own light boxes instead, using the invention of P&D as a
pattern. Can P&D sue for copyright infringement? What
about patent infringement? What about trademark
infringement?
 POINTERS
• Intellectual property rights are different from the physical
property created through the intellectual property. (I own a
book, but the copyright of the book is retained by the author.)
• Copyright is subject to automatic protection from the moment
of creation (submission to national library is not required for
copyright protection). Trademark and patent needs to be
registered to be protected.
• Unfair competition does not cover every unfair act committed
in the course of business; covers only acts characterized by
deception in the passing off of goods as those of another. (Coca
Cola bottles hoarding case)
 PEARL & DEAN CASE
Trademark, copyright and patents are different intellectual property
rights that cannot be interchanged with one another. A trademark is
any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped
or marked container of goods. In relation thereto, a trade name
means the name or designation identifying or distinguishing an
enterprise. Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual creations
in the literary and artistic domain protected from the moment of
their creation. Patentable inventions, on the other hand, refer to any
technical solution of a problem in any field of human activity which
is new, involves an inventive step and is industrially applicable.
No copyright infringement.

P & D secured its copyright under the classification class O work. This
being so, petitioners copyright protection extended only to the technical
drawings and not to the light box itself because the latter was not at all in
the category of prints, pictorial illustrations, advertising copies, labels,
tags and box wraps.

No patent infringement.

No patent, no protection.

No trademark infringement.

Trademark registration extends only to those specified in the certificate.

 BAR QUESTIONS
A. Differentiate trademark, copyright and patent from each other.
(6%) (2015 BAR)

2018 BAR

A distinctive-tasting pastillas is well-known throughout the country as

having been developed within a close-knit women's group in
Barangay San Ysmael which is located along a very busy national
highway. Its popularity has encouraged the setting up of several shops
selling similar delicacies, with the most famous product being the
pastillas of "Barangay San Ysmael." Eventually, the pastillas of Aling
Voling under the brand name "Ysmaellas" began to attract national
distinction. Aling Voling therefore registered it as a copyright with the
National Library. Her neighbor, Aling Yasmin, realizing the
commercial value of the brand, started using the term "Ysmaellas" for
her pastillas but used different colors. Aling Ysmin registered the
brand name "Ysmaellas" with the Intellectual Property Office (IPO).
 BAR QUESTIONS
(a) Can Aling Voling successfully obtain court relief to prohibit Aling
Yasmin from using the brand name "Ysmaellas" in her products on the
basis of her (Aling Yoling's) copyright? What is the difference between
registration as a copyright and registration as a trade or brand name?
(2.5%)

(b) Can Aling Yasmin seek injunctive relief against Aling Voling from
using the brand name "Ysmaellas," the latter relying on the doctrine of
"prior use" as evidenced by her prior copyright registration? (2.5%)

(c) Can Aling Voling seek the cancellation of Aling Yasmin's trademark
registration of the brand name "Ysmaellas" on the ground of "Well
Known Brand" clearly evidenced by her (Aling Yoling's) prior copyright
registration, actual use of the brand, and several magazine articles?
(2.5%) (2018 BAR)
 BAR QUESTION
In intellectual property cases, fraudulent intent is not
an element of the cause of action except in cases
involving: (1%)

(A) trademark infringement

(B) copyright infringement

(C) patent infringement

(D) unfair competition (1%)(2014)

 PATENT
Defined as an exclusive right granted for an invention.

Why are patents necessary?

Patents provide incentives to individuals by recognizing their
creativity, offering the possibility of material reward for their
marketable inventions. These incentives (limited monopoly)
encourage innovation, which enhances the quality of life.

What role do patents play in everyday life?

Patentable inventions have pervaded every aspect of human life.
publicly disclose information on the inventions provide
inspiration for future generations of researchers and inventors.
 What inventions are
patentable?
any technical solution of a problem in a field of human activity
which is
NEW (if it does not form part of prior art)
PRIOR ART – Everything made available to the public anywhere in the
world, BEFORE filing date or priority date; AND
Whole contents of an application for a patent, utility model or industrial
design registration, published in accordance with IPC, filed or effective in
the Philippines with a filing or priority date earlier than filing or priority date
of application.
Non-prejudicial disclosure?
Priority date?
Involves an INVENTIVE STEP (test of non-obviousness)
INDUSTRIALLY APPLICABLE (can be produced and used in any
industry)
 BAR QUESTION
X Pharmaceuticals, Inc. has been manufacturing the antibiotic
ointment Marvelopis, which is covered by a patent expiring in the
year 2020. In January 2019, the company filed an application for
a new patent for Disilopis, which, although constituting the same
substance as Marvelopis, is no longer treated as an antibiotic but
is targeted and marketed for a new use, i.e., skin whitening.

(a) What are the three (3) requisites of patentability under the
Intellectual Property Code? (3%)

(b) Should X Pharmaceuticals, Inc.'s patent application

for Disilopis be granted? Explain. (2%)
 NON-PATENTABLE
INVENTIONS
Discoveries, scientific theories, mathematical methods

Schemes, rules and methods for performing mental acts

Methods for treatment of human or animal body by

surgery or therapy, BUT: products and composition for
use in these methods are patentable

Aesthetic creations

Anything contrary to public order or morality.

WHO HAS THE RIGHT TO
THE PATENT?
INVENTOR, his heirs, or assigns. – “No patent, no protection.” (Pearl
& Dean v. Shoemart)

Joint Inventors?

Commissioned Work?

Work by an Employee? – part of regular duties?

Different inventors?
“First to File” Rule.

Foreign inventors?
Rule of reciprocity
Period to file
 PROCEDURE
File a patent application.
Containing a description of the invention, drawings necessary
for the understanding of the invention, claims, and an abstract.
Filing date => date of receipt of the application containing all
data required
Unity of Invention

Publication and Search (18 months after filing date)

Action for Substitution as Patentee (within 1 year from
publication)
Examination
Grant of Patent
Action for cancellation of patent
Issue Fees and Annual Fees
 Rights of Patentees
TERM: 20 YEARS FROM FILING DATE.

To assign (must be in writing, notarized, recorded

with the IPO), or transfer by succession the patent,
and to conclude licensing contracts

Exclusive right to restrain, prohibit and prevent any

unauthorized person or entity from making, using, or
offering for sale, selling or importing that product
Limitation of Patent Rights
Use after sale

Private; non-commercial scale and purpose (non-prejudicial to

patentee’s economic interest)

Experiments

Preparation for individual cases, in a pharmacy or by a medical

professional, of a medicine in accordance with a prescription.

Prior user

Use of invention by the government

public interest, judicial/admin body declares that use is anti-
competitive
 Patent Infringement
Making, using, offering for sale, selling, or importing
patented product or obtained directly or indirectly from
patented process; or Use of patented process without
authorization of patentee.

TEST OF INFRINGEMENT:
Literal infringement – overall context of claim and specifications
Doctrine of equivalents – when 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.
“Function-means-and result test” (Smith Kline Beckman Corp v. CA)
 Remedies: Patent
Infringement
Civil Action
Actual damages x 3; Includes Contributory Infringer; 4
yrs.

Criminal Action – repetition of infringement; 3years

 BAR QUESTIONS
Yosha was able to put together a mechanical water pump in his garage
consisting of suction systems capable of drawing water from the earth using
less human effort than what was then required by existing models. The water
pump system provides for a new system which has the elements of novelty
and inventive steps. Yosha, while preparing to have his invention registered
with the IPO, had several models of his new system fabricated and sold in his
province.

(a) Is Yosha's invention no longer patentable by virtue of the fact that he had
sold several models to the public before the formal application for
registration of patent was filed with the IPO? (2.5%)

(b) If Yosha is able to properly register his patent with the IPO, can he
prevent anyone who has possession of the earlier models from using them?
(2.5%) (2018 BAR)
 COMPULSORY
LICENSING
License issued by the Director General of the IPO to
exploit a patented invention without the permission of the
patent holder, either by manufacture or through parallel
importation
 BAR QUESTION
Super Biology Corporation (Super Biology) invented and
patented a miracle medicine for the cure of AIDS. Being the sole
manufacturer, Super Biology sold the medicine at an exorbitant
price. Because of the sudden prevalence of AIDS cases in Metro
Manila and other urban areas, the Department of Health (DOH)
asked Super Biology for a license to produce and sell the AIDS
medicine to the public at a substantially lower price. Super
Biology, citing the huge costs and expenses incurred for research
and development, refused.

Assuming you are asked your opinion as the legal consultant of

the DOH, discuss how you will resolve the matter. (4%) (2017
BAR)
 TRADEMARKS
Any distinctive word, name, symbol, emblem, sign or
device, or any combination thereof, adopted and used by a
manufacturer or merchant on his goods to identify and
distinguish them from those manufactured, sold or dealt by
others.

PURPOSE:
Indicate origin or ownership of articles to which they ar
attached
Guarantee that those articles come up to certain standard of
quality; and
Advertise articles they symbolize.
 REGISTRATION OF TM
Operative act by which marks are acquired (prior use not
required).

Non-registrable marks:
Immoral, deceptive, scandalous marks
Falsely suggest a connection with persons, living or dead,
institutions, beliefs, national symbols
Name, portrait, or signature identifying a particular living
individual (except with written consent)
How marks are acquired?
Through REGISTRATION
Doctrine of prior use no longer applicable
Mang Inasal v. IFP Manufacturing
TAIWAN KOLIN V. KOLIN
ELECTRONICS
UFC Phils v. Barrio Fiesta
Mfg
 UNFAIR COMPETITION
• Employing deception or any other means contrary to
good faith by which a person passes off his goods or
business or services for those of one who has already
established goodwill thereto

VS TRADEMARK INFRINGEMENT:
• fraudulent intent
• prior registration
• w/n there was unauthorized use of trademark
 BAR QUESTION
MS Brewery Corporation (MS) is a manufacturer and distributor
of the popular beer "MS Lite." It faces stiff competition from BA
Brewery Corporation (BA) whose sales of its own beer product,
"BA Lighter," has soared to new heights. Meanwhile, sales of the
"MS Lite" decreased considerably. The distribution and marketing
personnel of MS later discovered that BA has stored thousands of
empty bottles of "MS Lite" manufactured by MS in one of its
warehouses. MS filed a suit for unfair competition against BA
before the Regional Trial Court (RTC). Finding a connection
between the dwindling sales of MS and the increased sales of BA,
the RTC ruled that BA resorted to acts of unfair competition to the
detriment of MS. Is the RTC correct? Explain. (5%) (2016)
 BAR QUESTIONS
X's "MINI-ME" burgers are bestsellers in the country. Its "MINI-
ME" logo, which bears the color blue, is a registered mark and
has been so since the year 2010. Y, a competitor of X, has her own
burger which she named "ME-TOO" and her logo thereon is
printed in bluish-green. When X sued Y for trademark
infringement, the trial court ruled in favor of the plaintiff by
applying the Holistic Test. The court held that Y infringed on X's
mark since the dissimilarities between the two marks are too
trifling and frivolous such that Y's "ME-TOO," when compared to
X's "MINI-ME," will likely cause confusion among consumers.

Is the application of the Holistic Test correct? (5%) (2016 BAR)

 BAR QUESTION
CHEN, Inc., a Taiwanese company, is a manufacturer of tires with the mark
Light Year. From 2009 to 2014, Clark Enterprises, a Philippine registered
corporation, imported tires from CHEN, Inc. under several sales contracts
and sold them here in the Philippines. In 2015, CHEN, Inc. filed a
trademark application with the Intellectual Property Office (IPO) for the
mark Light Year to be used for tires. The IPO issued CHEN, Inc. a
certificate of registration (COR) for said mark. Clark Enterprises sought the
cancellation of the COR and claimed it had a better right to register the
mark Light Year. CHEN, Inc. asserted that it was the owner of the mark and
Clark Enterprises was a mere distributor. Clark Enterprises argued that
there was no evidence on record that the tires it imported from CHEN, Inc.
bore the mark Light Year and Clark Enterprises was able to prove that it
was the first to use the mark here in the Philippines. Decide the case. (4%)
(2015 BAR)
 BAR QUESTION
Jinggy went to Kluwer University(KU) in Germany for his doctorate
degree (Ph.D.). He completed his degree with the highest honors in
the shortest time. When he came back, he decided to set-up his own
graduate school in his hometown in Zamboanga. After seeking free
legal advice from his high-flying lawyer-friends, he learned that the
Philippines follows the territoriality principle in trademark law, i.e.,
trademark rights are acquired through valid registration in
accordance with the law. Forth with, Jinggy named his school the
Kluwer Graduate School of Business of Mindanao and immediately
secured registration with the Bureau of Trademarks. KU did not like
the unauthorized use of its name by its top alumnus no less. KU
sought your help. What advice can you give KU? (4%) (2014 BAR)
 COPYRIGHT
• COPYRIGHT – life plus 50 years after death
• PRINCIPLE OF AUTOMATIC PROTECTION
• Derivative works ((dramatization or collections of original works)
are in themselves copyrightable
• Mere idea, procedures, method of operations are not copyrightable
• G.R. Author has right to reproduce, sell, display work, and
prohibit others from doing similar acts.
• Exceptions: Fair Use Doctrine (purpose and character of use,
nature of copyrighted work, amount and substantiality of the work
used, effect of the use on the potential market).
• Other uses that do not constitute infringement (performance free of
charge for a charitable institution, for educational purposes, etc.)
 COPYRIGHT
WHO OWNS THE COPYRIGHT?

One creator?

Joint creation?

Commissioned work?

Pseudonymous or Anonymous work?

Employee, in the course of employment?

 RIGHTS
ECONOMIC RIGHTS
First sale; first distribution;
Reproduction of work, or substantial portion
Dramatization, translation
Public performance
rental

MORAL RIGHTS
Non-alteration, attribution, object to distortion
 BAR QUESTIONS
1) True or false. (d) News reports are not copyrightable. (2%)
(2017 BAR)

2) Virtucio was a composer of llocano songs who has been quite

popular in the llocos Region. Pascuala is a professor of music in a
local university with special focus on indigenous music. When she
heard the musical works of Virtucio, she purchased a CD of his
works. She copied the CD and sent the second copy to her Music
instructions for the class to listen to the CD and analyze the works
of Virtucio.

Did Pascuala thereby infringe Virtucio's copyright? Explain your

answer. (4%)(2018 BAR)
 FAIR USE DOCTRINE
A privilege to use the copyrighted material in a reasonable
manner without the consent of the copyright owner or as
copying the theme or ideas rather than their expression.

FACTORS:
• purpose and character of use,
• nature of copyrighted work,
• amount and substantiality of the work used,
• effect of the use on the potential market
 BAR QUESTION
KLM Printers, Inc. operated a small outlet located at the ground floor of a
university building in Quezon City. It possessed soft copies of certain
textbooks on file, and would print "book-alikes" of these textbooks (or in other
words, reproduced the entire textbooks) upon order and for a fee. It would
even display samples of such "book-alikes" in its stall for sale to the public.

Upon learning of KLM Printers, Inc.'s activities, the authors of the textbooks
filed a suit against it for copyright infringement. In its defense, KLM Printers,
Inc. invoked the doctrine of fair use, contending that the "book-alikes" are
being used for educational purposes by those who avail of them.

(a) What is the doctrine of fair use? (2%)

(b) Is KLM Printers, Inc.'s invocation of the doctrine of fair use proper in
this case? Explain. (3%)