It shall protect and secure the exclusive rights of scientists, inventors,

INTELLECTUAL artists and other gifted citizens to their intellectual property and
creations, particularly when beneficial to the people, for such periods
as provided in this Act.
PROPERTY The use of intellectual property bears a social function.
Exclusive for Lakas Atenista Members only.
“Thou shall not steal” - To this end, the State shall promote the diffusion of
Exodus 20:15 knowledge and information for the promotion of national
development and progress and the common good.

INTRODUCTION TO IP Code It is also the policy of the State

- to streamline administrative procedures of registering
November 16, 2017
patents, trademarks and copyright,
The law that we are going to discuss is Intellectual Property Code, RA - to liberalize the registration on the transfer of technology,
8293, enacted Jan 1 of 1998. - and to enhance the enforcement of intellectual property
rights in the Philippines. (n)
RA 8293 is not the original law in IP. It is actually a codification of
various IP laws. Let’s go to a very very important provision. This provision you will find
 Ra 165 Patent law in a different intellectual property-related treaties.
 RA 166 Trademark Law
Before we go to Sec 3, let us to treaties acceded to by the Philippines.
 PD 49 Decree on IP
This is taken from website of Intellectual Property Office (IPO)
 Articles 188 and 189 RPC
WIPO is the World IPO, located in Geneva Switzerland.
When RA 8293 was enacted, it combined all of these previous laws
and actually repealed them.
1. Protocol Relating to the Madrid Agreement Concerning the
This law was enacted to give effect to the agreement of trade-related
International Registration of Marks (2012)
aspect agreement of IP which is what you call as TRIPS agreement
2. WIPO Copyright Treaty (2002)
which is a cross-reference in IP. It is always best to refer to the TRIPS
3. WIPO Performances and Phonograms Treaty (2002)
agreement.
4. Patent Cooperation Treaty (2001)
5. Rome Convention for the Protection of Performers,
What do you mean by RA 8293 repealing these previous laws? Does it
Producers of Phonograms and Broadcasting Organizations
mean the previous laws can no longer be applied?
(1984)
A: No. Everything (not only jurisdiction) is determined by the law in
6. Budapest Treaty on the International Recognition of the
force at the time of filing of complaint. If filed before Jan 1, 1998,
Deposit of Microorganisms for the Purposes of Patent
then wala na. RA 8293 is not applicable because it does not have
Procedure (Entered 1981)
retroactive effect. By express provision, there is no retroactive effect.
7. Convention Establishing the World Intellectual Property
Organization (1980)
It says here, the IP Code repealing Trademark Law, it only takes effect
8. Paris Convention for the Protection of Industrial Property
only on Jan 1, 1998 without provision on retroactive application.
Rights (1965) – important treaty  amended by 1979 treaty
9. Berne Convention for the Protection of Literary and Artistic
In cases, there are times when previous laws were still applicable
Works (1951)
even when the case was already in 2013.
10. Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement) (1994) very very
The IP Law is prospective in application.
important
This law has been amended by the major amendments:
1. RA 9502 June 6 2008- This is the Cheaper Medicines Act
We also have the NICE classification. (neice ha, hindi nice, because
a. Primarily focuses on medical patents
NICE is a city in France)
2. RA 10372 July 2 2012- This law amended certain portions of
the IP Code. Mostly under Copyright.
This list of classification is important because of Section 3.
Let’s start.
Section 3. International Conventions and Reciprocity. –
Any person
What is the law? RA 8293 as amended. That is the name of the IP
- who is a national
Code.
- or who is domiciled
- or has a real and effective industrial establishment
So let’s go to the definition of intellectual creation.
- Product of mental labor.
in a country
o We took up modes of acquiring ownership under
- which is a party to any convention, treaty or agreement
Book 3 of Civil Code. And we have original mode
- relating to intellectual property rights or the repression of
which has two ways: 1. Occupation 2. Intellectual
unfair competition,
Creation You create something, and you are
- to which the Philippines is also a party, or extends
the owner of your creation.
reciprocal rights to nationals of the Philippines by law
- So product of mental labor embodied in writing or some
other material form.
shall be entitled to benefits
- to the extent necessary to give effect to any provision of
Sec 2: Policies of the State on IP rights
such convention, treaty or reciprocal law,
- in addition to the rights to which any owner of an
Section 2. Declaration of State Policy. –
intellectual property right is otherwise entitled by this Act.
The State recognizes that an effective intellectual and industrial
property system is vital
So if Mr X has a business in a country which also adheres to those
- to the development of domestic and creative activity,
treaties or if that particular country or extends reciprocal rights to
- facilitates transfer of technology,
nationals of Philippines by law, then Mr. X is entitled to such benefits
- attracts foreign investments, and ensures market access for
to the extent necessary to give effect to any provision of such
our products.
convention, treaty or reciprocal law.

~ 1 ~
INTELLECTUAL PROPERTY LAW 2017-2018
Meaning, that treaty can be invoked by Mr. X if he files a case here in Section 5. Functions of the Intellectual Property Office (IPO). - 5.1. To
Ph. administer and implement the State policies declared in this Act,
there is hereby created the Intellectual Property Office (IPO) which
In addition to the rights to which any owner of an intellectual shall have the following functions:
property right is otherwise entitled by this Act.
a) Examine applications for grant of letters patent for inventions and
Meaning, Mr. X can invoke IPC. register utility models and industrial designs;

So this particular section was asked in the bar a few years ago. The b) Examine applications for the registration of marks, geographic
question was: What is the scope of IP rights? indication, integrated circuits;

If you don’t know section 3, you would get lost. So that is the answer c) Register technology transfer arrangements and settle disputes
to that question. involving technology transfer payments covered by the provisions of
Part II, Chapter IX on Voluntary Licensing and develop and implement
So these are treaties that we would refer to from time to time. Paris, strategies to promote and facilitate technology transfer;
TRIPS, and NICE Classification. If you have time, you can read the
WIPO rules. You can go to WIPO website and look at the rules. d) Promote the use of patent information as a tool for technology
development;
Now, let’s go to Sec. 4.
e) Publish regularly in its own publication the patents, marks, utility
IP is the subject, but what we are referring to here are IP rights. models and industrial designs, issued and approved, and the
technology transfer arrangements registered;
Section 4. Definitions. - 4.1. The term "intellectual property rights"
consists of: f) Administratively adjudicate contested proceedings affecting
intellectual property rights; and
a) Copyright and Related Rights;
g) Coordinate with other government agencies and the private sector
b) Trademarks and Service Marks; efforts to formulate and implement plans and policies to strengthen
the protection of intellectual property rights in the country.
c) Geographic Indications;
Now we are going to discuss IPO. IPO, according to 4.1, replaced the
d) Industrial Designs; Bureau of Patents Trademarks and Technology Transfer. (BPTT)

e) Patents; Ang haba. You just read that.

f) Layout-Designs (Topographies) of Integrated Circuits; and Now, let’s go to Sec 6, the organizational structure of IPO.

g) Protection of Undisclosed Information (n, TRIPS). Section 6. The Organizational Structure of the IPO. - 6.1. The Office
shall be headed by a Director General who shall be assisted by two
If I write a song, the song is my IP because I created the song. (2) Deputies Director General.
Copyright is my IP right, meaning I am the only who has the right to
copyright, to copy the song. Director General for you. DG for me. MagDG kayo if lawyer na kayo.

Trademarks and Service Marks: I can create a logo, a name for my So the DG is the head of office and he or she is (the DG is a woman)
product. I applied for a trademark. That is the IP right. assisted by 2 DDGs.

And then we have other rights here. Patents etc. IPO is under the DTI.

If you noticed, there are only three in bold letters. If we discuss Under the DG and DDGs, we have the directors of different bureaus.
everything, hindi tayo matatapos this sem. But these three are If you see director, it does not talk about DG and DDG. They talk
required by the bar. The rest are used by practicing lawyers. For about 7 bureaus.
purposes of the bar and the law school, we will just focus on these
three IP rights. 6.2. The Office shall be divided into six (6) Bureaus, each of which
shall be headed by a Director and assisted by an Assistant Director.
However, we must also look at this, this thing called TTA under Sec These Bureaus are:
4.2
a) The Bureau of Patents;
What is a TTA?
b) The Bureau of Trademarks;
4.2. The term "technology transfer arrangements" refers to contracts
or agreements c) The Bureau of Legal Affairs;
- involving the transfer of systematic knowledge
 for the manufacture of a product, d) The Documentation, Information and Technology Transfer Bureau;
- the application of a process, or rendering of a service
including management contracts; e) The Management Information System and EDP Bureau; and
and the transfer, assignment or licensing of all forms of intellectual
property rights, f) The Administrative, Financial and Personnel Services Bureau.
- including licensing of computer software
- except computer software developed for mass market. g) Bureau of Copyright and Other Related Rights

If Mr. X created a robot, then he gets a patent for his invention. He

wants it to be mass produced, then he can enter into TPA. He can Before in RA 8293, there was no Bureau of Copyright and Other
transfer systematic knowledge for the manufacture of product he Related Rights. It was only included by RA 10372 in 2012. We will
invented. discuss that later as to why it was added.

Now, can you look at Sec 5? What does Sec 5 say? Long? What is its 6.3. The Director General, Deputies Director General, Directors and
title? Assistant Directors shall be appointed by the President, and the other
officers and employees of the Office by the Secretary of Trade and
~ 2 ~
INTELLECTUAL PROPERTY LAW 2017-2018
Industry, conformably with and under the Civil Service Law. (n) unexpired term of the predecessor.

Okay so each bureau has its own director and assistant director. DG, 7.4. The Office of the Director General. - The Office of the Director
DDG, Director, and Assistant Directors are all presidential appointees. General shall consist of the Director General and the Deputies
Director General, their immediate staff and such Offices and Services
Below Assistant Directors are appointed by Sec of DTI. These are that the Director General will set up to support directly the Office of
career officials. the Director General. (n)

So, presumably from DDG to the Assistant Director, they can be Jurisdiction is also under Section 7.
removed. If not, 5 years ang term.
According to Section 7
The function of DG is in Section 7.
b) Exercise exclusive appellate jurisdiction over all decisions rendered
Section 7. The Director General and Deputies Director General. – by the Director of Legal Affairs, the Director of Patents, the Director
of Trademarks, and the Director of the Documentation, Information
7.1. Functions. - The Director General shall exercise the following and Technology Transfer Bureau. The decisions of the Director
powers and functions: General in the exercise of his appellate jurisdiction in respect of the
decisions of the Director of Patents, and the Director of Trademarks
a) Manage and direct all functions and activities of the Office, shall be appealable to the Court of Appeals in accordance with the
including the promulgation of rules and regulations to implement the Rules of Court; and those in respect of the decisions of the Director
objectives, policies, plans, programs and projects of the Office: of Documentation, Information and Technology Transfer Bureau shall
Provided, That in the exercise of the authority to propose policies and be appealable to the Secretary of Trade and Industry; and
standards in relation to the following: (1) the effective, efficient, and
economical operations of the Office requiring statutory enactment; IPO is an administrative body. So there are cases that are filed in IPO
(2) coordination with other agencies of government in relation to the because it has a quasi-judicial arm which is the Bureau of Legal
enforcement of intellectual property rights; (3) the recognition of Affairs.
attorneys, agents, or other persons representing applicants or other
parties before the Office; and (4) the establishment of fees for the Who is the one who decides? DLA.
filing and processing of an application for a patent, utility model or
industrial design or mark or a collective mark, geographic indication 1. If you are inventor and you want to apply patent, then you
and other marks of ownership, and for all other services performed go to Bureau of Patent.
and materials furnished by the Office, the Director General shall be 2. Later after all process is complete, the examiner of Bureau
subject to the supervision of the Secretary of Trade and Industry; of Patent will either grant or deny your application.
3. Kung denied, what is the next step? Punta siya sa director
b) Exercise exclusive appellate jurisdiction over all decisions rendered of Patents. So on and so forth. Tradmark. Copyright. Ganun
by the Director of Legal Affairs, the Director of Patents, the Director din.
of Trademarks, and the Director of the Documentation, Information 4. Now, once nagdecide na yung Director of Patent,
and Technology Transfer Bureau. The decisions of the Director Trademark… their decisions are appealable to Director
General in the exercise of his appellate jurisdiction in respect of the General.
decisions of the Director of Patents, and the Director of Trademarks 5. All decisions of those offices are appealable to Director
shall be appealable to the Court of Appeals in accordance with the General.
Rules of Court; and those in respect of the decisions of the Director DG’s decisions are appealed to CA.
of Documentation, Information and Technology Transfer Bureau shall 6. And for the CA to SC. That is the only time you can go to
be appealable to the Secretary of Trade and Industry; and court. Hindi ka na dadaan sa RTC.
7. What about DITT? Yung Technology Transfer Bureau?
c) Exercise original jurisdiction to resolve disputes relating to the Decision of DITT again is appealable to DG. From DG, one
terms of a license involving the author's right to public performance does not go to CA but to Secretary of Trade and Industry.
or other communication of his work. The decisions of the Director
General in these cases shall be appealable to the Secretary of Trade
and Industry. (already transferred to Bureau of Copyright and Other c) Exercise original jurisdiction to resolve disputes relating to the
Related Rights) terms of a license involving the author's right to public performance
or other communication of his work. The decisions of the Director
7.2. Qualifications. - The Director General and the Deputies Director General in these cases shall be appealable to the Secretary of Trade
General must be and Industry.
- natural born citizens of the Philippines,
- at least thirty-five (35) years of age on the day of their (already transferred to Bureau of Copyright and Other Related Rights)
appointment,
- holders of a college degree,
- and of proven competence, integrity, probity and This subject is both remedial and substantive. This is actually more
independence: procedural. It may be toxic on your part, but that is how it is.

Provided, That the Director General and at least one (1) Deputy Appeal: is a remedy to review decision because of an error of
Director General shall be members of the Philippine Bar who have judgment
engaged in the practice of law for at least ten (10) years:
Let’s look at the case of Phil Pharma v Pfizer
Provided further, That in the selection of the Director General and
the Deputies Director General, consideration shall be given to such Phil Pharma v Pfizer
qualifications as would result, as far as practicable, in the balanced
representation in the Directorate General of the various fields of Phil Pharma offered to some hospitals that it would supply that
intellectual property. particular drug, Sulbactan was being sold by Pfizer under brand name
Unasyn.
7.3. Term of Office. - The Director General and the Deputies Director
General shall be Pfizer, which is a multi-national drug company, has an exclusive
- appointed by the President for a term of five (5) years distributor which is __ Pharma.
- and shall be eligible for reappointment only once:
 Provided, That the first Director General shall Here comes Phil Pharma, a Ph corporation, submitted bids to
have a first term of seven (7) years. hospitals to supply Sulbactan, the generic name of drug which is a
 Appointment to any vacancy shall be only for the patented drug. Patented drug, meaning kanila lang yan.
~ 3 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 Director of Bereaus President
Pfizer wanted to stop Phil Pharma from offering that generic Assistant Directors President
Sulbactan to the hospitals. Meron silang exclusive distributor eh. Other Officers and employees Sec of DTI

It went to Bureau of Legal Affairs and asked for writ of preliminary DG:
injunction to stop Phil Pharma from offering to hospitals. It was
granted by BLA. A. Office:
a. DG
Gaano katagal ang writ? 90 days lang. b. 2 DDG
c. Immediate staff
Humingi ng extension si Pfizer. Phil Pharma might offer naman na kasi d. Offices and services setup by DG
that drug that was patented. B. Functions
a. Manage and direct
The extension was denied by Bureau of Legal Affairs. Went to CA i. Functions and activities of IPO
under Rule 65, special civil action for certiorari. b. Exclusive appellate juris: PLDT
i. PLT: PLT Director DG CA
Phil Pharma: under sec 7 decisions of Director of BLA must be ii. D: D Director DG Sec of DTI
appealed to the Director General. Why are you going to the CA. C. Qualifications
a. NB
Issue: Whether or not the remedy taken by Pfizer by filing special civil b. At least 35 (day of appointment)
action before CA is correct. c. Holders of college degree)
d. Proven CIPI
SC: Yes. It was merely interlocutory order. It was not a final decision. e. Member of bar (10 years experience) DG, 1
Interlocutory order: It does not dispose of the merits of the case. DDG
D. Term:
The allegation of Phil Pharma is wrong because that order denying a. 5 years
motion for extension of PI is not a final order. Only final judgments or i. 1st DG 7 years
orders can be appealed. b. 1 reappointment
c. Appointment to any vacancy: only for unexpired
portion of term of predecessor
A final order: one that disposes of a case or a certain aspect thereof.
Example: P files a forcible entry case against B with RTC. Lack of
jurisdiction dib a kasi dapat MTC yan. B files a motion to dismiss on
the ground of lack of jurisdiction over subject matter. Example lang
yan. Different Bureaus

Dinismiss ng RTC. What kind of order yan? That is a final order Section 8. The Bureau of Patents. - The Bureau of Patents shall have
because the court has nothing else to do. Dinismiss na niya ang kaso the following functions:
eh.
8.1. Search and examination of patent applications and the grant of
So what is the remedy of B? He can appeal that order of RTC patents;
dismissing the case because it is a final order.
8.2. Registration of utility models, industrial designs, and integrated
What is an interlocutory order? P filed FE case against B with RTC. circuits; and
Motion to dismiss by B saying RTC has no jurisdiction. RTC denied the
motion. So anong ibig sabihin nun? Continue the case. That order 8.3. Conduct studies and researches in the field of patents in order to
denying the motion is an interlocutory order because the court still assist the Director General in formulating policies on the
has something to do. So that kind of order cannot be appealed. administration and examination of patents. (n)
CANNOT BE APPEALED. If you have to question that, then you go by
certiorari invoking GADLEJ. This is where you apply for a patent. If you have an invention, a
gadget, go to Bureau of Patents.
That is exactly what happened here.
And after certain examination and process, this is the body that will
Section 7 only applies to judgments and final orders of directors, not grant or deny the patent.
to interlocutory orders.
Section 9. The Bureau of Trademarks. - The Bureau of Trademarks
Go back to Rules of Court because they are suppletory when it comes shall have the following functions:
to these laws.
9.1. Search and examination of the applications for the registration of
According to SC: What is being questioned before the CA is not a marks, geographic indications and other marks of ownership and the
decision, but an interlocutory order of the BLA-IPO denying issuance of the certificates of registration; and
respondents' motion to extend the life of the preliminary injunction
issued in their favor. 9.2. Conduct studies and researches in the field of trademarks in
order to assist the Director General in formulating policies on the
RA 8293 is silent with respect to any remedy available to litigants who administration and examination of trademarks. (n)
intend to question an interlocutory order issued by the BLA-IPO.
Bureau of Trademark. Ganun din. Ex: You have business and you want
So apply Rules of Court. its name registered. You go to Bureau of Trademark.

If not an appeal, then do not apply Sec 7. It also does R and D, research and development.

Section 9A. The Bureau of Copyright and Other Related Rights. –

SUMMARY the Bureau of Copyright and Other Related
Rights shall have the following functions:
IPO:
Heads Appointed by 9A.1. Exercise original jurisdiction to resolve disputes relating to
DG President the terms of a license involving the author’s right to public
2 DDG President performance or other communication of his work;
~ 4 ~
INTELLECTUAL PROPERTY LAW 2017-2018
9A.2. Accept, review and decide on applications for the (2) An assurance to refrain from engaging in unlawful and unfair acts
accreditation of collective management and practices subject of the formal investigation;
organizations or similar entities;
(3) An assurance to recall, replace, repair, or refund the money value
9A.3. Conduct studies and researches in the field of defective goods distributed in commerce; and
of copyright and related rights; and
(4) An assurance to reimburse the complainant the expenses and
9A.4. Provide other copyright and related rights costs incurred in prosecuting the case in the Bureau of Legal Affairs.
service and charge reasonable fees therefor.
The Director of Legal Affairs may also require the respondent to
So if you are an author, from this point onwards, you have to know submit periodic compliance reports and file a bond to guarantee
the difference between patent, copyright, and trademark. compliance of his undertaking;

Example. You are an author. You, as creator of the book, are (iii) The condemnation or seizure of products which are subject of the
protected from the moment of creation. You do not just own the offense. The goods seized hereunder shall be disposed of in such
book, but also the copyright, the right to copy, to disseminate, to manner as may be deemed appropriate by the Director of Legal
communicate it to the public. Affairs, such as by sale, donation to distressed local governments or
to charitable or relief institutions, exportation, recycling into other
That is the reason why there was no Bureau of Copyright. Unlike ang goods, or any combination thereof, under such guidelines as he may
patent, kung hindi mo iyan ipapatent, maraming mangongopya niyan. provide;
And you are not protected.
(iv) The forfeiture of paraphernalia and all real and personal
Same sa trademark. You have a name of your internet café properties which have been used in the commission of the offense;
trademark, then anybody can use that.
(v) The imposition of administrative fines in such amount as deemed
Pero sa copyright, iba. Because the creator is protected from the reasonable by the Director of Legal Affairs, which shall in no case be
moment of creation. Dati walang Bureau of Copyright. How do you less than Five thousand pesos (P5,000) nor more than One hundred
prove that you are protected? Na ikaw ang author? Ang hirap. That is fifty thousand pesos (P150,000). In addition, an additional fine of not
why IPO received lots of requests. Di niyo kailangan iregister. Pero more than One thousand pesos (P1,000) shall be imposed for each
gusto naming iregister. day of continuing violation;

If you look at IPO website, there is procedure on how to register, but (vi) The cancellation of any permit, license, authority, or registration
that falls under 4. which may have been granted by the Office, or the suspension of the
validity thereof for such period of time as the Director of Legal Affairs
9A.4. Provide other copyright and related rights may deem reasonable which shall not exceed one (1) year;
service and charge reasonable fees therefor.
(vii) The withholding of any permit, license, authority, or registration
So it is not the primary function, unlike two bureaus, search and which is being secured by the respondent from the Office;
examination etc. Dito, it is only one of the functions because it was
requested that there be registration. (viii) The assessment of damages;

Section 10 (ix) Censure; and

Section 10. The Bureau of Legal Affairs. - The Bureau of Legal Affairs
shall have the following functions: (x) Other analogous penalties or sanctions. (Secs. 6, 7, 8, and 9,
Executive Order No. 913 [1983]a)
10.1. Hear and decide opposition to the application for registration of
marks; cancellation of trademarks; 10.3. The Director General may by Regulations establish the
 subject to the provisions of Section 64, procedure to govern the implementation of this Section. (n)
8. cancellation of patents, utility models, and industrial
designs; Bureau of Legal Affairs: quasi-judicial body in IPO.
9. and petitions for compulsory licensing of patents; (DG na ito
under the amended law)
Now, the next is the Bureau of DITT
10.2. (a) Exercise original jurisdiction in administrative complaints for Section 11. The Documentation, Information and Technology
violations of laws involving intellectual property rights: Provided, That Transfer Bureau. - The Documentation, Information and Technology
its jurisdiction is limited to complaints where the total damages Transfer Bureau shall have the following functions:
claimed are not less than Two hundred thousand pesos (P200,000):
Provided further, That availment of the provisional remedies may be 11.1. Support the search and examination activities of the Office
granted in accordance with the Rules of Court. The Director of Legal through the following activities:
Affairs shall have the power to hold and punish for contempt all
those who disregard orders or writs issued in the course of the (a) Maintain and upkeep classification systems whether they be
proceedings. (n) national or international such as the International Patent
Classification (IPC) system;
(b) After formal investigation, the Director for Legal Affairs may
impose one (1) or more of the following administrative penalties: (b) Provide advisory services for the determination of search
patterns;
(i) The issuance of a cease and desist order which shall specify the
acts that the respondent shall cease and desist from and shall require (c) Maintain search files and search rooms and reference libraries;
him to submit a compliance report within a reasonable time which and
shall be fixed in the order;
(d) Adapt and package industrial property information.
(ii) The acceptance of a voluntary assurance of compliance or
discontinuance as may be imposed. Such voluntary assurance may 11.2. Establish networks or intermediaries or regional
include one or more of the following: representatives;

(1) An assurance to comply with the provisions of the intellectual 11.3. Educate the public and build awareness on intellectual property
property law violated; through the conduct of seminars and lectures, and other similar

~ 5 ~
INTELLECTUAL PROPERTY LAW 2017-2018
activities;
Section 17. Publication of Laws and Regulations. - The Director
11.4. Establish working relations with research and development General shall cause to be printed and make available for distribution,
institutions as well as with local and international intellectual pamphlet copies of this Act, other pertinent laws, executive orders
property professional groups and the like; and information circulars relating to matters within the jurisdiction of
the Office. (Sec. 5, R.A. No. 165a)
11.5. Perform state-of-the-art searches;
So there is a job of the DG to ensure that laws, rules, and regulations
11.6. Promote the use of patent information as an effective tool to pertaining to IP will be printed or disseminated to the public. What is
facilitate the development of technology in the country; being used now is ipophil. You can access there all laws, rules,
treaties etc. related to IP.
11.7. Provide technical, advisory, and other services relating to the
licensing and promotion of technology, and carry out an efficient and Section 18. The IPO Gazette. - All matters required to be published
effective program for technology transfer; and under this Act shall be published in the Office's own publication to be
known as the IPO Gazette. (n)
11.8. Register technology transfer arrangements, and settle disputes
involving technology transfer payments. (n) Aside from ipophil website, we have the IPO gazette. All matters will
have to be published in Gazette. If SC has Official Gazette, then IPO
We don’t want to go through them one by one. Just go through has IPO Gazette.
them.
Hindi ko pa nakikita yan. But I always access the website. It is better.
Section 12. The Management Information Services and EDP Bureau. - The Gazette is for publication lang. So for every publication is limited
The Management Information Services and EDP Bureau shall: to that particular time, but the website is accessible to everything in
one go.
12.1. Conduct automation planning, research and development,
testing of systems, contracts with firms, contracting, purchase and Section 19
maintenance of equipment, design and maintenance of systems, user
consultation, and the like; and Section 19. Disqualification of Officers and Employees of the Office. -
All officers and employees of the Office shall not apply or act as an
12.2. Provide management information support and service to the attorney or patent agent of an application for a grant of patent, for
Office. (n) the registration of a utility model, industrial design or mark nor
acquire, except by hereditary succession, any patent or utility model,
Section 13. The Administrative, Financial and Human Resource design registration, or mark or any right, title or interest therein
Development Service Bureau. - 13.1. The Administrative Service shall: during their employment and for one (1) year thereafter. (Sec. 77, R.A.
No. 165a)
(a) Provide services relative to procurement and allocation of supplies
and equipment, transportation, messengerial work, cashiering, So if the employee of IPO is an inventor, can he apply for patent for
payment of salaries and other Office's obligations, office that? Yes, but only after one year after his termination of
maintenance, proper safety and security, and other utility services; employment. So may one-year period na he cannot.
and comply with government regulatory requirements in the areas of
performance appraisal, compensation and benefits, employment If that particular employee is a lawyer, he cannot act as an atty or
records and reports; patent agent of an application for grant of patent etc.

(b) Receive all applications filed with the Office and collect fees Can employee of IPO acquire any patent, utility model, etc.? No.
therefor, and Except by hereditary succession. By operation of law yan.

(c) Publish patent applications and grants, trademark applications, Mr. X is patent owner of this particular gadget where he has a
and registration of marks, industrial designs, utility models, registered patent. Feeling niya mamamatay na siya. Kung ang anak
geographic indication, and lay-out-designs of integrated circuits niya is employee of IPO, sbaihin niya “idonate ko ang patent ko. Para
registrations. di ka na magbayad ng malaking estate tax.” Pwede ba ‘yan? No.
Because that employee cannot acquire.
13.2. The Patent and Trademark Administration Services shall
perform the following functions among others: But if he says na “may patent ako sa office niyo. If I die, automatic
mapupunta yan sa’yo” Can that be done? Yes. Hereditary succession.
(a) Maintain registers of assignments, mergings, licenses, and No choice.
bibliographic on patents and trademarks;
Just like foreigner. Hindi maka-own ng lands sa Ph, except if heir siya
(b) Collect maintenance fees, issue certified copies of documents in ng Pilipino.
its custody and perform similar other activities; and

(c) Hold in custody all the applications filed with the office, and all Just a few points:
patent grants, certificate of registrations issued by the office, and the
like. Before the amendment made by RA 10372, it was the director
general who had original jurisdiction to resolve disputes pertaining to
13.3. The Financial Service shall formulate and manage a financial terms of license. Involving rights
program to ensure availability and proper utilization of funds; provide
for an effective monitoring system of the financial operations of the Exercise original jurisdiction to resolve disputes relating to the terms
Office; and of a license involving the author's right to public performance or other
communication of his work.
13.4. The Human Resource Development Service shall design and
implement human resource development plans and programs for the Because of creation of Bureau of Copyright, that function was
personnel of the Office; provide for present and future manpower transferred to it.
needs of the organization; maintain high morale and favorable
employee attitudes towards the organization through the continuing
design and implementation of employee development programs. (n)

Let’s go to Section 17.

~ 6 ~
INTELLECTUAL PROPERTY LAW 2017-2018
PATENT What is the most controversial patent case? Yung sa apple and
Samsung. Na ginagaya kuno ng Samsung ang technology ng apple.
Just put it in your head that when we talk about patents we are But may hangganan yan. After a while, yang touch-touch halos lahat
talking about inventions, a creation of the mind. When we took up na meron. It now belonged to the public domain.
Property nakalagay dun discovery. I mentioned to you na discovery is
not an intellectual creation. You just discover. You do not create it. Section 21 tells us what can be patented and the requisites of
Like a new element. It is not something created by the mind. Like a patentability.
comet. You discover a comet. You cannot have that comet named
after you because you did not create it. On the other hand, Section 22 tells what is not patentable.

Here we are talking of creations. Creation in relation to patent is B. What is not patentable
invention.
Section 22. Non-Patentable Inventions. - The following shall be
excluded from patent protection:
So what is a patent?
22.1. Discoveries, scientific theories and mathematical methods;
It is not the product. It is the IPR, the intellectual property right. It is a 10. Syempre. E= mc2, the mean, hyperbola…that cannot be
grant made by govt to an inventor, conveying and securing to him the patented
exclusive right to make use of his invention for a given period. 11. See amended portion and discussion below.

So when something is patented, nobody can copy that. If you copy a 22.2. Schemes, rules and methods of performing mental acts, playing
patented product, then you can be liable for infringement. games or doing business, and programs for computers;

22.3. Methods for treatment of the human or animal body by surgery

What are the purposes of patent law? or therapy and diagnostic methods practiced on the human or animal
body. This provision shall not apply to products and composition for
In the case of Pearl vs Shoemart, the patent law has a three-fold use in any of these methods;
purpose: - If there is a new style of surgery, mga laser, that cannot be
1. patent law seeks to foster and reward invention patented.
a. syempre you invent something that is useful to
society, then it is right na the inventor is 22.4. Plant varieties or animal breeds or essentially biological process
rewarded. for the production of plants or animals. This provision shall not apply
2. second, it promotes disclosures of inventions to stimulate to micro-organisms and non-biological and microbiological processes.
further innovation and to permit the public to practice the - Yang breed ng dogs ngayon. Yang American Bully. That is a
invention once the patent expires; new breed. Pwede mo bang kopyahin yan? Pwede. No
a. Patents are not forever. You have a patent for an prohibition.
invention, may hangganan yan. Because, patent
laws protect the inventor but would also like that Provisions under this subsection shall not preclude Congress to
technology to be shared. So that others can also consider the enactment of a law providing sui generis protection of
make use of it. Kaya limited ang time ng patent. plant varieties and animal breeds and a system of community
Bigyan ka lang ng time to make money out of intellectual rights protection:
your invention. After that it will belong to the
public domain. Anybody can now produce that 22.5. Aesthetic creations; and
product. - Aesthetic creation, something that you just admire, like a
3. third, the stringent requirements for patent protection painting or picture. Yan pwede ipatent. Iba yan. Copyright
seek to ensure that ideas in the public domain remain there yan.
for the free use of the public.
22.6. Anything which is contrary to public order or morality. (Sec. 8,
“The ultimate goal of a patent system is to bring new designs and R.A. No. 165a)
technologies into the public domain through disclosure.” - Of the six items, what normally comes out in the bar is this
- We will go to that later. one.

The highlighted portion is added by RA 9502, the Cheaper Medicines

Act. This is why I told you 9502 mostly amends the Law on Patents.
So what then can be patented? Can any invention be patented?
The purpose of 9502 is obviously to make medicines cheaper. You
Say you invent a box. Can that be patented? Not everything can be know very well that these big companies like Pfizer, patented yang
patented because section 21 says mga medicines nila. They are the only ones who can manufacture.
These medicines are patented, so mahal. That is why we have the
A. What can be patented and the requisites of patentability. generic Pharmacy. Same generic drug na walang brand ng big drug
company, mas mura siya. That is the purpose of Cheaper Medicines
Section 21. Patentable Inventions. - Any technical solution of a Act—to loosen up the law on Patents. So that medicines may be
problem in any field of human activity which is new, involves an made more accessible to the public.
inventive step and is industrially applicable shall be Patentable. It may
be, or may relate to, a product, or process, or an improvement of any "22.1.
of the foregoing. (Sec. 7, R.A. No. 165a) Discoveries, scientific theories and mathematical methods,
and in the case of drugs and medicines,
- the mere discovery of a new form or new property of a
Those are the three requisites for a product to be patentable. known substance which does not result in the enhancement
1. New of the known efficacy of that substance,
2. Involves inventive step - or the mere discovery of any new property or new use for a
3. Industrially applicable known substance,
- or the mere use of a known process unless such known
Now what can you patent? You can patent a product, a robot, a process results in a new product that employs at least one
gadget or a process. It does not have to be a tangible product. It can new reactant.
be an improvement of a product or process.

~ 7 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 - the mere discovery of a new form or new property of a
known substance which does not result in the enhancement You look at the requisites of patentability. First, it must be new. New
of the known efficacy of that substance, means novel. But here it was defined in negative terms.

So if you have a substance here called ABC and a new form is A. NOVELTY
discovered na ABCD, but what is the effect of ABC? Na pag ininom Section 23. Novelty. . - An invention shall not be considered new if it
mo kunwari your hair would turn dark. Yung ABCD, ganun din ang forms part of a prior art. (Sec. 9, R.A. No. 165a)
effect. Walang pagbabago. Can you patent ABCD? No. Because it is
merely a new property of a known substance, of ABC. It does not So this is a very technical term, prior art. This term has not come out
have that kind of enhancement of the known efficacy. in the bar. If it comes out, then it is very easy to answer.

- or the mere discovery of any new property or new use for a Prior art
known substance, Section 24. Prior Art. - Prior art shall consist of:

An example of this is Glutathione which is something that is used to 24.1. Everything which has been made available to the public
cure liver diseases. Yan talaga ang purpose niya. It was discovered na anywhere in the world, before the filing date or the priority date of
may side effect siyang pampaputi. Yang gluta for whitening cannot be the application claiming the invention; and
patented. It is merely a mere discovery of any property.
24.2. The whole contents of an application for a patent, utility model,
So this something that will make drugs cheaper kasi kung ipapatent or industrial design registration, published in accordance with this
mo lahat, magmamahal nang magmamahal. Act, filed or effective in the Philippines, with a filing or priority date
that is earlier than the filing or priority date of the application:
- or the mere use of a known process unless such known Provided, That the application which has validly claimed the filing
process results in a new product that employs at least one date of an earlier application under Section 31 of this Act, shall be
new reactant. prior art with effect as of the filing date of such earlier application:
Provided further, That the applicant or the inventor identified in both
Just take note of that. applications are not one and the same. (Sec. 9, R.A. No. 165a)

Those are added by Cheaper Medicines Act. So what is the primary function of Bureau of Patent?
Search and examination.
22.6
So if Mr. X applies for patent for his invention, the examiner will
Bar Question (1989): X invented a bogus coin search all over the world if there is something that is similar to that. If
detector which can be used exclusively on there is, then it is already prior art. Kung wala, then it is new. Kasi
self‐operating gambling devices otherwise known as the baka new yan ditto, pero baka dun sa Egypt ginagamit sa time ng
one-armed bandit. pharaoh. That is the longest process in applying for patent.

Can X apply a patent for the bogus coin detector? So new if it does not form part of prior art.

Suggested answer: No, X cannot because it is against public

policy. The operation of the self‐operating gambling device B. INVENTIVE STEP
is a criminal offense in our country. The invention, if
patented, would be one against public policy. Aside from being new, it is not enough that it is new. It must have
inventive step. Not part of prior art, not obvious to a person skilled in
That was before 8293. The term in RA 8293 is contrary to public the art at the time of filing date.
order or morality
Section 26. Inventive Step. - An invention involves an inventive step if,
Bar Question (1988): X invented a method of improving the having regard to prior art, it is not obvious to a person skilled in the
tenderness of meat by injecting an enzyme solution to a art at the time of the filing date or priority date of the application
live animal before it is slaughtered. Is the invention patenta claiming the invention. (n)
ble?
This one? (thermos) if you buy something like this sa store? Do you
Suggested answer: Yes, it is a process need instructions to use this?
invented directed to improving a commercial product.
Ito? (Laptop) Hindi rin di ba? You know how to use it. But if what you
This is under RA 166 Patent Law. It says here, in general, an buy sa store kailangan mo pa talaga basahin ang instruction, like ano
invention possessing the following requisites may be patented: to? Then that involves inventive step.
novelty, originality precedence, and industrial applicability.
Of course if you give this to someone in marilog without kuryente, of
Now, we only have three, novelty, inventive step, and industrial course di nila yan alam. Pero what we are talking here of is people
applicability. who are already skilled in the art.

Anything obvious to those already skilled in the art. Sila yung

REQUISITES OF PATENTABILITY mapapa-ask “what is this?” “how do we use this?”

Let’s go to the requisites of patentability.

Denicola test
2006 Bar.
Suppose Albert Einstein is alive today and filed before IPO for his The Bar Exam likes asking far out questions. Nagstart siya sa bar exam
theory of relativity. Can it be patented? ni sir Montejo, 1992 bar. They asked ano yung writ of amparo.

No. Because it is a scientific theory. A few years ago, in IP, the Denicola test was asked. I was also
shocked. I have been teaching IP for years. My students came to me
2010 Bar “Ma’ammm, ano tong Denicola test?” So I had to research.
Doctor X discovered a special method of diagnosing Alzheimer’s after
long experimentation and field testing. He comes to you as advice as Denicola test: The Denicola Test in intellectual property law states
to how his discoveries protected. that if design elements of an article reflect a merger of aesthetic and
We will see what you mean by patentability. functional considerations, the artistic aspects of the work cannot be
~ 8 ~
INTELLECTUAL PROPERTY LAW 2017-2018
conceptually separable from the utilitarian aspects; thus, the article
cannot be copyrighted. Section 30. Inventions Created Pursuant to a Commission.

Graham factor: 30.1. The person who commissions the work shall own the patent,
So here we have the Graham factor. It has something to do with unless otherwise provided in the contract.
inventive step. The factors the court will look at in obviousness and
non-obviousness was outlined in Graham v John Deere, 1966. Meaning, Mr Y. invent ka nga ng robot that can fly. Ganun. So Mr. Y
invents that. Who shall own the patent? It says the person who
What are the Graham factors? Obviousness should be determined commissions the work, unless otherwise provided in the contract.
by:
1. Scope and content of prior art So as a general rule, the one who commissioned. By express provision
2. Level of ordinary skill in the art yan ng Section 30.
3. Different claim in the invention and the prior art - Exception: kapag may contract.
4. Objective evidence of non-obviousness
i. Commercial success So what about employment?
ii. Long felt but unsolved needs, and
iii. Failure of others Ito yung mga drug companies na may research and development.
Walang ibang ginagawa researchers nila for cure for this and that,
So we are done with inventive step. mga medicines. So under Section 30.2, who shall own the patent?

30.2. In case the employee made the invention in the course of his
C. INDUSTRIAL APPLICABILITY employment contract, the patent shall belong to:

The third requisite of patentability is industrial applicability. (a) The employee, if the inventive activity is not a part of his
regular duties even if the employee uses the time, facilities
Section 27. Industrial Applicability. - An invention that can be and materials of the employer.
produced and used in any industry shall be industrially applicable. (n)  Let’s say Pfizer. We have all inventors there.
Invent sila ng drug. Bigla ang isa doon nag-invent
If you look at this, it is n, then it is a new provision. Well new lahat ito. ng say vacuum cleaner that is of something else.
 Despite the employee using the time, facilities,
So, meaning for a product to be patented, it must be useful. Kanang and materials of Pfizer, sa employee
magamit mo for something of human activity. If you just look at it and (b) The employer, if the invention is the result of the
admire it and feel good about it, that is aesthetic creation. That is not performance of his regularly-assigned duties, unless there
patentable. Patentable products are useful. is an agreement, express or implied, to the contrary. (n)

So verily, according to Salao, an invention will be useless if confined

on theories and principles. It must have practical application for it to Earliest filing date or Earliest priority date.
be useful.
Earlier we looked at this issue, earliest filing date or earliest priority
So those are the three requisites of patentability. date.

If there are two inventors and two of them applied for patent who
would be granted the patent?
WHO HAS THE RIGHT TO A PATENT? 1. Earliest filing date-- The one who applied first.
2. Right of priority—Section 31.
Now let’s go to this question. Section 28. Who has the right to
patent? Section 31. Right of Priority. . - An application for patent
- Filed by any person
Section 28. Right to a Patent. - The right to a patent belongs to the - who has previously applied for the same invention
inventor, his heirs, or assigns. - in another country which by treaty, convention, or law
- Not anyone can apply for patent for a particular product. For affords similar privileges to Filipino citizens,
you to be issued a patent, you must be the inventor. Malay - shall be considered as filed as of the date of filing the foreign
mo ninakaw lang pala ni Mr. X ang product. He must be the application:
inventor, his heirs, or his assigns. Otherwise, kahit lahat ng
requisites nandyan, the patent won’t be granted. Provided, That: (a) the local application expressly claims priority; (b) it
is filed within twelve (12) months from the date the earliest foreign
When two (2) or more persons have jointly made an invention, the application was filed; and (c) a certified copy of the foreign
right to a patent shall belong to them jointly. (Sec. 10, R.A. No. 165a) application together with an English translation is filed within six (6)
- So co-ownership if both of them invented the product. months from the date of filing in the Philippines. (Sec. 15, R.A. No.
165a)
Section 29. First to File Rule. - If two (2) or more persons have made
the invention separately and independently of each other, the right Let’s say Mr. X invented a car that runs on VCO and he applied for
to the patent shall belong to the person who filed an application for patent in PH in June 30, 2017. Yun pala itong si Mr. Y who is in
such invention, or where two or more applications are filed for the Thailand nag-invent din ng car that runs on VCO. He applied for
same invention, to the applicant who has the earliest filing date or, patent in his own country on January 30, 2017.
the earliest priority date. (3rd sentence, Sec. 10, R.A. No. 165a.)
Pumunta si Mr. Y dito. All requirements of Sec 3 are met. He wants to
Is it possible that Mr. X who lives in Davao City and Mr. Y who lives in register. Pwede ba ‘yan? Yes. He applies for patent here in
Batanes, invent something similar? Yes. Pwede. Lalo na yang mga September 30, 2017. So nauna si Mr. X apply dito.
cars naga-run on something, sabihin mo na lang VCO.
Section 31 says: An application for patent filed by any person who has
So merong two inventions and two inventors. So it says here that the previously applied for the same invention in another country which by
right to patent shall belong to the applicant who has the earliest filing treaty, convention, or law affords similar privileges to Filipino citizens,
date or, the earliest priority date. Unahan na lang. shall be considered as filed as of the date of filing the foreign
application.
What is earliest priority date? That is what we will look at later.
When did Mr. Y apply? January 30, 2017. Nauna siya. He can get that
Let’s go first to inventions created pursuant to a commission. date.
~ 9 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 What case can be filed against applicant?
Provided, That:
- (a) the local application expressly claims priority; A: A case for opposition to the application for registration of patent
o When he applies for patent on September 30, he
must expressly claim his priority based on his Where: Bureau of Legal Affairs
application in Thailand.
- (b) it is filed within twelve (12) months from the date the Can anybody oppose?
earliest foreign application was filed; and (c) a certified copy
of the foreign application together with an English A: No. Not just anybody for any reason. There are grounds for
translation is filed within six (6) months from the date of opposition. Here ha. Anybody can file provided that the grounds are
filing in the Philippines. (Sec. 15, R.A. No. 165a) present:
o So Mr Y has the earliest priority date, the date of 1. Invention is not patentable under Sec 21 (not new, does
filing of foreign application for the same not have inventive step or not industrially patentable) and
invention. 22 (schemes, discoveries, and all others)
2. Applicant is not the inventor or his heirs or assigns under
Note: Not required he already has patent in another copy. It is only Sec 28
required that he files application within period given. a. Because who is entitled to the patent? The
inventor or his heirs or assignee.

November 23, 2017

Mirpuri v CA: FORMALITIES

Reapplication of trademark of cancelled trademark. Barbizon We now have pending application. Mr. X wants to apply for patent.
corporation, a foreign corporation, opposed. Sec 32 says that it should be in Fil or English and shall contain the
following formalities.
Invoked Article 6bis of Paris Convention
Section 32. The Application. - 32.1. The patent application shall be in
WON: It can be invoked by foreign corporation vs Ph applicant Filipino or English and shall contain the following:

6bis Paris Convention: governing well-known marks (a) A request for the grant of a patent;
Member countries or signatories must undertake to refuse or cancel
registration which is liable to create confusion of a well-known mark. (b) A description of the invention;

SC: 6bis is self-executing. No need for legislation. The only (c) Drawings necessary for the understanding of the invention;
requirement is the registered tradmark be well-known (in PH it is
Director of Patents) (d) One or more claims; and

Case instituted in 1981. Ph acceded in 1965. US in 1887. So both can (e) An abstract.
invoke.
32.2. No patent may be granted unless the application identifies the
Atty. S: If you apply RA 8293, what will you apply? You invoke Sec 3. inventor.
Any citizen, domiciliary or entity doing business in the country…
- The inventor must be identified because it is his invention,
his property because it is an original mode of acquiring
Emerald Garments v CA ownership.

HD Lee: foreign corp, filed cancellation of certificate of registration of If the applicant is not the inventor, the Office may require him to
trademark v Emerald Garment which operated since May 1 1975. submit said authority. (Sec. 13, R.A. No. 165a)
Ground: Stylistic Mr. Lee Trademark brand was too confusing, too - EX: heir or assignee of inventor, then IPO can require. Of
similar with Lee. course heir or assignee has a right because owner has right
to dispose of his property and the assignee has all the rights
HD Lee invokes Sec 37 RA 166 and Article 8 of Paris Convention assigned or given to him.
If given the right to apply for patent, then that is enough.
ISSUE: WON foreign company can invoke them

SC: Yes. Can foreigner apply for patent? Yes. Sec 3. He must have those
qualifications. If he is not here because tedious, Sec 33.
Why can HD Lee invoke? Sec 37 of RA 166 is the progenitor of Sec 3
of RA 8293 (8293 was enacted in 1998) But this provision regarding Section 33. Appointment of Agent or Representative. - An applicant
foreign corporations being able to invoke treaties is also contained in who is not a resident of the Philippines must appoint and maintain a
the old Trademark Law (Sec 37 of RA 166) resident agent or representative in the Philippines upon whom notice
or process for judicial or administrative procedure relating to the
There are two dates: filing date: significant if only one person is filing application for patent or the patent may be served. (Sec. 11, R.A. No.
the patent. 165a)

If there are two people filing for the same patent invention, then the Just read Sec 34.
person who has the earliest filing date will be prioritized.
Section 34. The Request. - The request shall contain a petition for the
Do not forget that under Sec 31 noh? The applicant must expressly grant of the patent, the name and other data of the applicant, the
claim priority based on his foreign application and the period is only 12 inventor and the agent and the title of the invention. (n)
months. The application in the Ph must be made within 12 months
from the date of foreign application. It is not requirement that Section 35. Disclosure and Description of the Invention. - 35.1.
applicant has patent in another country. What is only required is you Disclosure. - The application shall disclose the invention in a manner
file an application for patent for his invention and submit a certified sufficiently clear and complete for it to be carried out by a person
copy within six months from the date of filing. skilled in the art. Where the application concerns a microbiological
process or the product thereof and involves the use of a micro-
organism which cannot be sufficiently disclosed in the application in
~ 10 ~
INTELLECTUAL PROPERTY LAW 2017-2018
such a way as to enable the invention to be carried out by a person months. 8 months.
skilled in the art, and such material is not available to the public, the  Provided further, That each
application shall be supplemented by a deposit of such material with divisional application shall
an international depository institution. not go beyond the disclosure
in the initial application.
35.2. Description. - The Regulations shall prescribe the contents of
the description and the order of presentation. (Sec. 14, R.A. No.
165a) What if Director did not order the application be severed?

Disclosure is important. Disclose your invention. Hindi secret-secret 38.3. The fact that a patent has been granted on an application that
para ma-search yan. did not comply with the requirement of unity of invention shall not
be a ground to cancel the patent. (Sec. 17, R.A. No. 165a)
Section 36. The Claims. - 36.1. The application shall contain one (1) or
more claims which shall define the matter for which protection is Patent is granted for four inventions in one application. Nobody
sought. questioned. The Director did not mind. It’s okay. Like CrimPro, the
accused may be convicted for as many so long information is not
- By claim, you are asking for this or that protection you want quashed.
it that way or that. You enumerate.
Section 39. Information Concerning Corresponding Foreign
Each claim shall be clear and concise, and shall be supported by the Application for Patents. - The applicant shall, at the request of the
description. Director, furnish him with
- the date and number of any application for a patent filed by
36.2. The Regulations shall prescribe the manner of the presentation him abroad, hereafter referred to as the "foreign
of claims. (n) application," relating to the same or essentially the same
invention as that claimed in the application filed with the
That is what you call a claim. Office and other documents relating to the foreign
application. (n)
Aside from that you have to give an abstract. Meaning you describe
your invention. This is related to earliest priority date

Section 37. The Abstract. - The abstract shall consist of a concise What is the filing date? Is that the date you go to BOP? No. The filing
summary of the disclosure of the invention as contained in the date under Sec 40 is the date of receipt.
description, claims and drawings in preferably not more than one
hundred fifty (150) words. It must be drafted in a way which allows CHAPTER V
the clear understanding of the technical problem, the gist of the PROCEDURE FOR GRANT OF PATENT
solution of that problem through the invention, and the principal use Section 40. Filing Date Requirements. - 40.1. The filing date of a
or uses of the invention. The abstract shall merely serve for technical patent application shall be the date of receipt by the Office of at least
information. (n) the following elements:

So those are the formalities for application. (a) An express or implicit indication that a Philippine patent is sought;

(b) Information identifying the applicant; and

UNITY OF INVENTION
(c) Description of the invention and one (1) or more claims in Filipino
Section 38. Unity of Invention. - 38.1. The application shall relate to or English.
- one invention only
- or to a group of inventions forming a single general inventive 40.2. If any of these elements is not submitted within the period set
concept. by the Regulations, the application shall be considered withdrawn. (n)

The application for patent is like a criminal information. It must not That is the filing date as required under Sec 40.
be duplicituous, otherwise it might be quashed. Ganun din dito.
Application must relate to one invention only or to a group of Section 41. According a Filing Date. - The Office shall examine
inventions forming a single general inventive concept. whether the patent application satisfies the requirements for the
grant of date of filing as provided in Section 40 hereof. If the date of
What if duplicitious: filing cannot be accorded, the applicant shall be given an opportunity
to correct the deficiencies in accordance with the implementing
38.2. If several independent inventions which do not form a single Regulations. If the application does not contain all the elements
general inventive concept are claimed in one application, indicated in Section 40, the filing date should be that date when all
- the Director of Patents may require that the application be the elements are received. If the deficiencies are not remedied within
restricted to a single invention. the prescribed time limit, the application shall be considered
withdrawn. (n)
Either he removes others not related or have several applications.
Maraming invention? Apply ka.
Formality Examination
A later application filed for an invention divided out shall be
considered as having been filed on the same day as the first Section 42. Formality Examination. - 42.1. After the patent
application: application has been accorded a filing date and the required fees
- He will be able to maintain his filing date even if ordered to have been paid on time in accordance with the Regulations, the
be severed his duplicitous application. What is the applicant shall comply with the formal requirements specified by
condition? Section 32 and the Regulations within the prescribed period,
- Provided, That the later application is filed otherwise the application shall be considered withdrawn.
o within four (4) months after the requirement to
divide becomes final 42.2. The Regulations shall determine the procedure for the re-
1. Director of Patent shall order division and he must examination and revival of an application as well as the appeal to the
divide in such time. Director of Patents from any final action by the examiner. (Sec. 16,
o or within such additional time, not exceeding four R.A. No. 165a)
(4) months, as may be granted:
1. Haba just to sever your application. 4 months plus 4
~ 11 ~
INTELLECTUAL PROPERTY LAW 2017-2018
Examiner will examine all formalities required. The rules and consent of the applicant.” So that is supposed to be… what do you
regulations provided if the formality examination reveals that the call that term? Anyway. That cannot be examined.
drawings were filed after filing date of application, BOP shall send
notice to applicant that the drawings shall be deemed deleted unless
the applicant requests within two months that the application be
granted a new filing date which is the date when the drawings were Rights Conferred by a Patent Application After Publication.
filed.
Now itong si applicant his application has been published. People
Take note ha. It is not required under 40.1 but the formal drawings have been going to examine his documents, paper, drawings. What
are required before the filing date. This is under Rules and Regulation will stop those people from copying, manufacturing, and making
on Inventions Rule 603. It is not here in 40.1, but Sec 42 says money of his invention?
drawings are required.
It is so easy. Sec 46 says:
If the formality examination reveals that the drawings were not filed,
the BOP shall require the applicant to file them within two months Section 46. Rights Conferred by a Patent Application After
and inform the applicant that the application will be granted a new Publication. - The applicant shall have all the rights of a patentee
filing date which is the date when the drawings were filed. under Section 76
- against any person who,
Filing date can be moved if drawings are not filed at the time of filing - without his authorization,
date. Or if not filed in due time, any reference to them shall be - exercised any of the rights conferred under Section 71 of
deemed deleted. this Act in relation to the invention claimed in the published
patent application, as if a patent had been granted for that
invention:
Search
Say Mr X invented machine and applied for patent so he can be
Section 43. Classification and Search. - An application that has protected and nobody can copy his invention.
complied with the formal requirements shall be classified and a
search conducted to determine the prior art. (n) Q: Is he precluded from selling?
A: No. Pwede niyang gawin yan. That is why there are certain
If formalities were complied with, then BOP shall conduct search to products na may “PH patent pending” or “US patent pending”.
determine prior art. This is done not only to prior art in PH but the Pending lang ang application. Kanya yan. Pwede niya ibenta.
entire world; anything that has been released, anywhere in the world
similar to invention for which patent has been applied. Pending patent application tapos gikopya, then infringement na. Kaya
Sec 76: sinasabi diyan at nandyan na ang acts of infringement.
This will take some time. The search. At this point, the patent
examiner must determine novelty. The international patent So Mr X is protected even if application is still pending. So if you are
classification would have to be used. inventor and already selling, you put serial number of your
application on your product.
Now, a very important step in application is publication of application
to inform the entire world that Mr X is applying for this invention. However, say kinopya ni Mr. Y, so may cause of action si Mr X na for
infringement. Cause of action lang. No right of action. He can only file
infringement pag na-accept na ang application niya.
Publication - Catch: IT MUST BE WITHIN FOUR YEARS FROM
COMMISSION OF LAST ACT.
Section 44. Publication of Patent Application. - 44.1. The patent
application shall be published in the IPO Gazette together with a Say 2017, pending ang application. Eh kalian naissue ang patent?
search document established by or on behalf of the Office citing any 2027. Ten years. Na-expire na.
documents that reflect prior art, after the expiration of eighteen ( 18)
months from the filing date or priority date. I do not understand Sec 2 na fast track daw, protect inventors, pero
look here. From this alone, it takes a long time for patent to be
Can you imagine how long it takes? 4 months, tapos 18months for granted, tapos pag pending ang tagal. Kaya ang daming inventors
searching. Idk why it takes so long. After 18 mon, publish. Then… here in the university that they want to be protected but they know
the procedure. Hay naku. It is actually the IPO person na lang who
makes money. Sila-sila na lang ang naga-manufacture. “Wala kaming
Inspection after Publication bilib diyan” Yan na sinasabi. Pag na-grant ang patent, nandun na pala
sa public.
44.2. After publication of a patent application, any interested party
may inspect the application documents filed with the Office. If you are applicant you can file it here, IPSO, satellite office, pero it
will be sent in Manila lahat ng docs there. How can applicants know
Pwede silipin doon. Ano tong drawing na ‘to? what is going on? That is the reality.

44.3. The Director General subject to the approval of the Secretary of Provided, That the said person had:
Trade and Industry, may prohibit or restrict the publication of an
application, if in his opinion, to do so would be prejudicial to the 46.1. Actual knowledge that the invention that he was using was the
national security and interests of the Republic of the Philippines. (n) subject matter of a published application; or

Like bomb or nuclear weapon. Syempre that can’t be published 46.2. Received written notice that the invention that he was using
because anybody can see the drawings. was the subject matter of a published application being identified in
the said notice by its serial number: Provided, That the action may
Section 45. Confidentiality Before Publication. - A patent application, not be filed until after the grant of a patent on the published
which has not yet been published, and all related documents, shall application and within four (4) years from the commission of the acts
not be made available for inspection without the consent of the complained of. (n)
applicant. (n)

After publication, open na yan. Pero before that under Sec 45: “A
patent application, which has not yet been published, and all related More Observation and Substantive Examination
documents, shall not be made available for inspection without the
Section 47. Observation by Third Parties. - Following the publication
~ 12 ~
INTELLECTUAL PROPERTY LAW 2017-2018
of the patent application, any person may present observations in - everything we discussed must be met and he must pay fees.
writing concerning the patentability of the invention.
the Office shall grant the patent: Provided, That all the fees are paid
- Aside from opposition case, pwede observation. on time.

Such observations shall be communicated to the applicant who may 50.2. If the required fees for grant and printing are not paid in due
comment on them. The Office shall acknowledge and put such time, the application shall be deemed to be withdrawn.
observations and comment in the file of the application to which it
relates. (n) - If not paid on time, the application shall be deemed
withdrawn. Ang daming deemed withdrawn, sec 48, 50, etc.

- So it is really subject to a lot of scrutiny to get protection. When does patent take effect?
You have to go through a lot.
50.3. A patent shall take effect on the date of the publication of the
Now, this is very important. Section 48.1. This is something that a lot grant of the patent in the IPO Gazette. (Sec. 18, R.A. No. 165a)
of applicants forget and ignore.
- This is another very unfair provision. Not upon grant of
Section 48. Request for Substantive Examination. – patent but publication.

48.1. The application shall be deemed withdrawn unless within six (6)
months from the date of publication under Section 41, Appeal in the event of refusal by Examiner
- a written request to determine whether a patent application
meets the requirements of Sections 21 to 27 and Sections Section 51. Refusal of the Application. - 51.1. The final order of
32 to 39 and the fees have been paid on time. refusal of the examiner to grant the patent shall be appealable to the
Director in accordance with this Act.
This written request is VERY VERY important. There is a case for this:
E.I Dupont v DG. - Application of X was denied. He can appeal to Director of
Patents. Denial is made by patent examiner. Whatever
E.I Dupont v Director General: decision must be appealed to Director of Patents.

Applied for patent: Dupont. Dupont was at first represented by Atty. Two kinds of publication:
Mabini. It was filed in 1987. Dupont was not able to file during 1. Publication of application
allowable period. So deemed abandoned. 2. and publication of grant of patent

2000: new counsel of Dupont. Filed petition for revival, but it was 51.2. The Regulations shall provide for the procedure by which an
ruled that it was already years after. Mabini did not inform Dupont of appeal from the order of refusal from the Director shall be
abandonment, its notice of abandonment, and after that Mabini died. undertaken. (n)

They were not allowed to revive the application. Section 52. Publication Upon Grant of Patent. - 52.1. The grant of the
patent together with other related information shall be published in
ISSUE: Whether revival is to be allowed. the IPO Gazette within the time prescribed by the Regulations.

SC: No. 52.2. Any interested party may inspect the complete description,
Here patent application of Dupont was refused because if we apply claims, and drawings of the patent on file with the Office. (Sec. 18,
our IPC 48.1: R.A. No. 165a)

The application shall be deemed withdrawn unless within six (6) Again the answer is why expose the invention? Dapat protected na.
months from the date of publication under Section 41, Pwede siguro during application to find out if prior art, pero if after
- a written request to determine whether a patent publication of grant of patent?
application meets the requirements of Sections 21 to 27
and Sections 32 to 39 and the fees have been paid on Section 53. Contents of Patent. - The patent shall be issued in the
time. name of the Republic of the Philippines under the seal of the Office
and shall be signed by the Director of Patents, and registered
That is the importance of this provision. This is a very new case, a together with the description, claims, and drawings, if any, in books
2016 case. and records of the Office. (Secs. 19 and 20, R.A. No. 165a)

Note: do not cut and paste reports and digests. NA BV SI MA’AM

HUHU “If you cut and paste lang, you think you will pass the bar?”

48.2. Withdrawal of the request for examination shall be irrevocable

and shall not authorize the refund of any fee. (n)

Can applicant amend application?

Section 49. Amendment of Application. - An applicant may amend the

patent application during examination: Provided, That such
amendment shall not include new matter outside the scope of the
disclosure contained in the application as filed. (n)

Now, finally. Sec 50.

When shall a patent be granted? If the application meets the

requirements of RA 8293…

Section 50. Grant of Patent. - 50.1. If the application meets the

requirements of RA 8293,

~ 13 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 published in the IPO Gazette and the lapse shall be recorded in the
Register of the Office.

55.3. A grace period of six (6) months shall be granted for the
payment of the annual fee, upon payment of the prescribed
surcharge for delayed payment. (Sec. 22, R.A. No. 165a)

Section 56. Surrender of Patent. - 56.1. The owner of the patent, with
the consent of all persons having grants or licenses or other right,
title or interest in and to the patent and the invention covered
thereby, which have been recorded in the Office, may surrender his
patent or any claim or claims forming part thereof to the Office for
cancellation.

56.2. A person may give notice to the Office of his opposition to the
surrender of a patent under this section, and if he does so, the
Bureau shall notify the proprietor of the patent and determine the
question.

56.3. If the Office is satisfied that the patent may properly be

surrendered, he may accept the offer and, as from the day when
notice of his acceptance is published in the IPO Gazette, the patent
shall cease to have effect, but no action for infringement shall lie and
no right compensation shall accrue for any use of the patented
invention before that day for the services of the government. (Sec.
24, R.A. No. 165a)
Term of Patent
Section 57. Correction of Mistakes of the Office. - The Director shall
have the power to correct, without fee, any mistake in a patent
Section 54. Term of Patent. - The term of a patent shall be twenty
incurred through the fault of the Office when clearly disclosed in the
(20) years from the filing date of the application. (Sec. 21, R.A. No.
records thereof, to make the patent conform to the records. (Sec. 25,
165a)
R.A. No. 165)

Section 58. Correction of Mistake in the Application. - On request of

- This one is very unfair.
any interested person and payment of the prescribed fee, the
- We are very lucky here. Sa US, 7 years lang kasi inventions
Director is authorized to correct any mistake in a patent of a formal
should be shared. Lalo na ang drugs. They keep formula to
and clerical nature, not incurred through the fault of the Office. (Sec.
themselves. Kaya mahal masyado.
26, R.A. No. 165a)
- This for the benefit of the public.

Say patent has been issued to Mr. X. Mr Y, pakealamero talaga si Mr. Section 59. Changes in Patents. - 59.1. The owner of a patent shall
Y. He wants the patent to be cancelled. Yes. He can file a cancellation have the right to request the Bureau to make the changes in the
case. patent in order to:

Where? Bureau of Legal affairs. (a) Limit the extent of the protection conferred by it;

Grounds: (b) Correct obvious mistakes or to correct clerical errors; and

1. Not new or patentable (3 reqs under sec 21)
2. Patent does not disclose the invention in a manner (c) Correct mistakes or errors, other than those referred to in letter
sufficiently clear and complete to be carried out by (b), made in good faith: Provided, That where the change would
person skilled in the art. result in a broadening of the extent of protection conferred by the
 You are selling product, but patent, no request may be made after the expiration of two (2) years
walang manual, walang from the grant of a patent and the change shall not affect the rights
of any third party which has relied on the patent, as published.
instruction.
3. Contrary to public order or morality
59.2. No change in the patent shall be permitted under this section,
Mr. Y proved that it is not patentable. So BLA cancels and there shall where the change would result in the disclosure contained in the
be publication for that cancellation. patent going beyond the disclosure contained in the application filed.

Mr. X can appeal from BLA’s decision to Director General, unless 59.3. If, and to the extent to which the Office changes the patent
according to this section, it shall publish the same. (n)
restrained.
- Even while appearing sa DG, maippublish na.
Section 60. Form and Publication of Amendment. - An amendment or
Skipped to Section 67 correction of a patent shall be accomplished by a certificate of such
amendment or correction, authenticated by the seal of the Office and
Section 55. Annual Fees. - 55.1. To maintain the patent application or signed by the Director, which certificate shall be attached to the
patent, an annual fee shall be paid upon the expiration of four (4) patent. Notice of such amendment or correction shall be published in
years from the date the application was published pursuant to the IPO Gazette and copies of the patent kept or furnished by the
Section 44 hereof, and on each subsequent anniversary of such date. Office shall include a copy of the certificate of amendment or
Payment may be made within three (3) months before the due date. correction. (Sec. 27, R.A. No. 165)
The obligation to pay the annual fees shall terminate should the
application be withdrawn, refused, or cancelled.
CHAPTER VI
55.2. If the annual fee is not paid, the patent application shall be CANCELLATION OF PATENTS AND SUBSTITUTION OF PATENTEE
deemed withdrawn or the patent considered as lapsed from the day
following the expiration of the period within which the annual fees Section 61. Cancellation of Patents. - 61.1. Any interested person
were due. A notice that the application is deemed withdrawn or the may, upon payment of the required fee, petition to cancel the patent
lapse of a patent for non-payment of any annual fee shall be or any claim thereof, or parts of the claim, on any of the following
grounds:
~ 14 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 Section 29. First to File Rule. - If two (2) or more persons have made
(a) That what is claimed as the invention is not new or Patentable; the invention separately and independently of each other, the right
to the patent shall belong to the person who filed an application for
(b) That the patent does not disclose the invention in a manner such invention, or where two or more applications are filed for the
sufficiently clear and complete for it to be carried out by any person same invention, to the applicant who has the earliest filing date or,
skilled in the art; or the earliest priority date. (3rd sentence, Sec. 10, R.A. No. 165a.)

(c) That the patent is contrary to public order or morality. Say we have Mr. X who filed application for patent on June 10, 2010.

61.2. Where the grounds for cancellation relate to some of the claims Mr. Y files on September 10, 2010. Mr Y claims that he has foreign
or parts of the claim, cancellation may be effected to such extent application. Nagsubmit siya ng foreign application na feeling ni Mr X
only. (Secs. 28 and 29, R.A. No. 165a) na peke. Pero di alam na fake.

Section 62. Requirement of the Petition. - The petition for So Mr Y has earlier priority date because he filed an application on
cancellation shall be in writing, verified by the petitioner or by any May 10. Siya yung nag-grantan ng patent. Mr. Y was granted patent.
person in his behalf who knows the facts, specify the grounds upon Mr. X found out na fake talaga.
which it is based, include a statement of the facts to be relied upon,
and filed with the Office. Copies of printed publications or of patents So Mr. X says “I have the right to patent. I was the first to file.”
of other countries, and other supporting documents mentioned in
the petition shall be attached thereto, together with the translation He must go to special commercial court and prove that papers of Mr.
thereof in English, if not in the English language. (Sec. 30, R.A. No. Y are fake. Court must give an order that Mr. X has the right to patent
165) because he was the first to file.

Section 63. Notice of Hearing. - Upon filing of a petition for Under Sec 67, Mr. X, once he has that final order from the court (so
cancellation, the Director of Legal Affairs shall forthwith serve notice he has to undergo court proceedings, he must pay filing fees o ano pa
of the filing thereof upon the patentee and all persons having grants sa korte) he can prosecute application as his own application in the
or licenses, or any other right, title or interest in and to the patent place of applicant.
and the invention covered thereby, as appears of record in the Office,
and of notice of the date of hearing thereon on such persons and the The situation here, the first remedy, pending pa ang application ni
petitioner. Notice of the filing of the petition shall be published in the Mr. Y. Mr. X goes to court and nakakuha siya ng final order. So he can
IPO Gazette. (Sec. 31, R.A. No. 165a) take the place of Mr. Y because he already has court order. He goes
to Bureau of Patent.
Section 64. Committee of Three. - In cases involving highly technical
issues, on motion of any party, the Director of Legal Affairs may order What if hindi niya feel ang application ni Mr. Y? He can file a new
that the petition be heard and decided by a committee composed of patent application with Bureau of Patent again. He must show the
the Director of Legal Affairs as chairman and two (2) members who court order. Or he can go to BLA request that the application be
have the experience or expertise in the field of technology to which refused.
the patent sought to be cancelled relates. The decision of the
committee shall be appealable to the Director General. (n) Dun sa opposition case niya, he has proof from the court.
Or he can go to BLA and seek cancellation if one has already been
Section 65. Cancellation of the Patent. - 65.1. If the Committee finds issued.
that a case for cancellation has been proved, it shall order the patent
or any specified claim or claims thereof cancelled. When can he avail? Within 3 mos after decision of Special
Commercial Court has been final.
65.2. If the Committee finds that, taking into consideration the
amendment made by the patentee during the cancellation Sec 67 and Sec 29 are related.
proceedings, the patent and the invention to which it relates meet
the requirement of this Act, it may decide to maintain the patent as Section 67. Patent Application by Persons Not Having the Right to a
amended: Provided, That the fee for printing of a new patent is paid Patent. . - 67.1. If a person referred to in Section 29 other than the
within the time limit prescribed in the Regulations. applicant, is declared by final court order or decision as having the
right to the patent, such person may, within three (3) months after
65.3. If the fee for the printing of a new patent is not paid in due the decision has become final:
time, the patent should be revoked.
(a) Prosecute the application as his own application in place of the
65.4. If the patent is amended under Subsection 65.2 hereof, the applicant; (BP)
Bureau shall, at the same time as it publishes the mention of the
cancellation decision, publish the abstract, representative claims and (b) File a new patent application in respect of the same invention;
drawings indicating clearly what the amendments consist of. (n) (BP)

Section 66. Effect of Cancellation of Patent or Claim. - The rights (c) Request that the application be refused; or (BLA)
conferred by the patent or any specified claim or claims cancelled
shall terminate. Notice of the cancellation shall be published in the (d) Seek cancellation of the patent, if one has already been issued.
IPO Gazette. Unless restrained by the Director General, the decision (BLA)
or order to cancel by Director of Legal Affairs shall be immediately
executory even pending appeal. (Sec. 32, R.A. No. 165a) 67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis
to a new application filed under Subsection 67. 1(b). (n)

Now, Section 68 is another remedy belonging to true and actual

CHAPTER VII inventor. Somebody else applied for patent belonging to X. Mr. Y nag-
REMEDIES OF A PERSON WITH A RIGHT TO A PATENT apply. He can again to go to Special Commercial Court.

Say a patent has been issued to Mr. X. Yun pala he has no right to Section 68. Remedies of the True and Actual Inventor. - If a person,
patent. Kasi nag-apply siya claiming he is an assignee of real inventor who was deprived of the patent without his consent or through fraud
pero ang kanyang authority pineke niya pero it looked real, so he is declared by final court order or decision to be the true and actual
applied for patent. Tapos he was granted a patent. inventor,
- The court should declare.
According to Section 67 if a person referred to in Section 29…
What is his remedy under Section 68?
~ 15 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 so put on the said market;
the court shall order for his substitution as patentee, or at the option
of the true inventor, cancel the patent, and award actual and other - Syempre. You use a product in the market, bilhin mo. Patent
damages in his favor if warranted by the circumstances. (Sec. 33, R.A. owner cannot prevent the usage of the product pag nasa
No. 165a) market na. Gamitin mo pag nandun na sa market. Di mo
- The Court, doon mismo sa kaso: the court shall order for his mapigilan yan
substitution as patentee (palitan pangalan ni Mr. Y to Mr X), - RA 9502 amendment:
or at the option of the true inventor, cancel the patent (or o This word: IMPORTING. 71.1a
cancel), and award actual and other damages in his favor if  It is the patentee that has the exclusive
warranted by the circumstances. right to import his patented product.
- So Court can do everything for true and actual inventor. Di o However, this amendment with regard to drugs
na kailangan pumunta sa BLA, BP, pag true and actual and medicine, the limitation on patent will apply
inventor. with regard to drugs and medicines:
 the limitation on patent rights shall
apply after a drug or medicine has been
Section 69. Publication of the Court Order. - The court shall furnish introduced in the Philippines or
the Office a copy of the order or decision referred to in Sections 67 anywhere else in the world by the
and 68, which shall be published in the IPO Gazette within three (3) patent owner, or by any party
months from the date such order or decision became final and authorized to use the invention
executory, and shall be recorded in the register of the Office. (n)  Secondly, that the right to import the
drugs and medicines contemplated in
When can you file an action in court? The actions under Sec 67 and this section shall be available to any
68? government agency or any private third
party;
Section 70. Time to File Action in Court. - The actions indicated in o Pag drugs and medicines, anybody can use pag
Sections 67 and 68 shall be filed within one (1) year from the date of nasa market na. Second, that the right to import
publication made in accordance with Sections 44 and 51, respectively.
(n) SEC. 7. Section 72 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines, is hereby amended to
So there is prescriptive period in filing: within 1 year from date of read as follows:
publication of application.
"SEC. 72. Limitations of Patent Rights. - The owner of a patent has no
right to prevent third parties from performing, without his
authorization, the acts referred to in Section 71 hereof in the
following circumstances:
CHAPTER VIII
RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS "72.1. Using a patented product which has been put on the market in
Remember patentee or inventor is the inventor. By applying for the Philippines by the owner of the product, or with his express
patent, he gets rights under Sec 71. consent, insofar as such use is performed after that product has been
so put on the said market: Provided, That, with regard to drugs and
medicines, the limitation on patent rights shall apply after a drug or
Section 71. Rights Conferred by Patent. – medicine has been introduced in the Philippines or anywhere else in
the world by the patent owner, or by any party authorized to use the
71.1. A patent shall confer on its owner the following exclusive rights: invention: Provided, further, That the right to import the drugs and
medicines contemplated in this section shall be available to any
(a) Where the subject matter of a patent is a product (meaning government agency or any private third party;
invention),
a. to restrain, prohibit and prevent any "72.2. Where the act is done privately and on a non-commercial scale
unauthorized person or entity from making, or for a non-commercial purpose: Provided, That it does not
using, offering for sale, selling or importing that significantly prejudice the economic interests of the owner of the
product; patent;
(b) Where the subject matter of a patent is a process,
o to restrain, prevent or prohibit any unauthorized "72.3. Where the act consists of making or using exclusively for
person or entity from using the process, and from experimental use of the invention for scientific purposes or
manufacturing, dealing in, using, selling or educational purposes and such other activities directly related to
offering for sale, or importing any product such scientific or educational experimental use;
obtained directly or indirectly from such process.
"72.4. In the case of drugs and medicines, where the act includes
71.2. Patent owners shall also have the testing, using, making or selling the invention including any data
- right to assign, or transfer by succession the patent, and to related thereto, solely for purposes reasonably related to the
conclude licensing contracts for the same. (Sec. 37, R.A. No. development and submission of information and issuance of
165a) approvals by government regulatory agencies required under any law
of the Philippines or of another country that regulates the
Syempre if you want to sell or mass produce your product and you manufacture, construction, use or sale of any product: Provided,
don’t have facilities then you can give another entity a license to That, in order to protect the data submitted by the original patent
manufacture. holder from unfair commercial use provided in Article 39.3 of the
Agreement on Trade-Related Aspects of Intellectual Property Rights
However, despite Sec 71 which gives patent owner those rights, (TRIPS Agreement), the Intellectual Property Office, in consultation
Section 72 talks about limitations of rights of patent owner. with the appropriate government agencies, shall issue the
appropriate rules and regulations necessary therein not later than
Section 72. Limitations of Patent Rights. - The owner of a patent has one hundred twenty (120) days after the enactment of this law;
no right to prevent third parties from performing, without his
authorization, the acts referred to in Section 71 hereof in the "72.5. Where the act consists of the preparation for individual cases,
following circumstances: in a pharmacy or by a medical professional, of a medicine in
accordance with a medical shall apply after a drug or medicine has
72.1. Using a patented product which has been put on the market in been introduced in the Philippines or anywhere else in the world by
the Philippines by the owner of the product, or with his express the patent owner, or by any party authorized to use the invention:
consent, insofar as such use is performed after that product has been Provided, further, That the right to import the drugs and medicines

~ 16 ~
INTELLECTUAL PROPERTY LAW 2017-2018
contemplated in this section shall be available to any government prior user, who, in good faith
agency or any private third party; - was using the invention
- or has undertaken serious preparations to use the
"74.3. All cases arising from the implementation of this provision shall invention in his enterprise or business,
be cognizable by courts with appropriate jurisdiction provided by law. before the filing date or priority date of the application on which a
patent is granted,
"No court, except the Supreme Court of the Philippines, shall issue shall have the right to continue the use thereof as envisaged in such
any temporary restraining order or preliminary injunction or such preparations within the territory where the patent produces its
other provisional remedies that will prevent its immediate execution. effect.

"74.4. The Intellectual Property Office (IPO), in consultation with the 73.2. The right of the prior user may only be transferred or assigned
appropriate government agencies, shall issue the appropriate together with his enterprise or business, or with that part of his
implementing rules and regulations for the use or exploitation of enterprise or business in which the use or preparations for use have
patented inventions as contemplated in this section within one been made. (Sec. 40, R.A. No. 165a)
hundred twenty (120) days after the effectivity of this law."
Section 74. Use of Invention by Government. - 74.1. A Government
agency or third person authorized by the Government may exploit
Roma Drug v RTC the invention even without agreement of the patent owner where:

SmithKline is multi-national drug company. It sells lots of drugs that o Kung gusto niya itago ang invention niya for
are branded. It has exclusive distributor, SmithKline PH. All drugs ebola, then government agency or any third
must be bought through that exclusive distributor. person authorized may exploit that invention

Itong mga drug stores, they discovered na they can buy drugs from (a) The public interest, in particular, national security,
London SmithKline. London SmithKline was not prohibited from nutrition, health or the development of other sectors, as
selling, cheaper pa. So drugstores bought from there. Niraid ang determined by the appropriate agency of the government,
drugstores. so requires; or

Drugs were classified as counterfeit (bc of selling of unregistered (b) A judicial or administrative body has determined that the
imported drug) against Roma Rodriguez and Roma Drugs because manner of exploitation, by the owner of the patent or his
they did not go through Smith Kline. licensee is anti-competitive.

Rodriguez: Special Law on Counterfeit Drug is unconstitutional - What is anti-competitive? RESEARCH!

ISSUE: Whether selling of imported drug is limitation of right? NO. 74.2. The use by the Government, or third person authorized by the
Is it a violation of right of SmithKline? No. Government shall be subject, mutatis mutandis, to the conditions set
forth in Sections 95 to 97 and 100 to 102. (Sec. 41, R.A. No. 165a)
SC: Moot and academic by the passing of RA 9502 which amends sec
72 of IPC. Section 75. Extent of Protection and Interpretation of Claims. - 75.1.
The extent of protection conferred by the patent shall be determined
RA 9502 expressly provides that right to import drugs and medicines by the claims, which are to be interpreted in the light of the
shall be available to any government agency or any private party like description and drawings.
the drug store owners.
75.2. For the purpose of determining the extent of protection
What other limitations? conferred by the patent, due account shall be taken of elements
which are equivalent to the elements expressed in the claims, so that
72.2. Where the act is done privately and on a non-commercial scale a claim shall be considered to cover not only all the elements as
or for a non-commercial purpose: Provided, That it does not expressed therein, but also equivalents. (n)
significantly prejudice the economic interests of the owner of the
patent;

72.3. Where the act consists of making or using exclusively for the What is infringement? What are the acts of infringement?
purpose of experiments that relate to the subject matter of the
patented invention; Section 76. Civil Action for Infringement. - 76.1.
1. The making, using, offering for sale, selling, or importing a
72.4. Where the act consists of the preparation for individual cases, patented product or a product obtained directly or
in a pharmacy or by a medical professional, of a medicine in indirectly from a patented process,
accordance with a medical prescription or acts concerning the 2. or the use of a patented process without the authorization
medicine so prepared; of the patentee constitutes patent infringement.

72.5. Where the invention is used in any ship, vessel, aircraft, or land Who can file? Only the registered holder of patent against the
vehicle of any other country entering the territory of the Philippines infringer who violates section 76.
temporarily or accidentally: Provided, That such invention is used
exclusively for the needs of the ship, vessel, aircraft, or land vehicle - If you are inventor and somebody copies it, can you file an
and not used for the manufacturing of anything to be sold within the action for infringement? No. You have to be a registered
Philippines. (Secs. 38 and 39, R.A. No. 165a) patentee. There must be approval of application for patent.

Where do you file an infringement case: Special Commercial Court

which is an RTC.
PRIOR USER
Prescriptive period: 4 years from commission of the act.
This is related to somebody who also invented the same product.
That is why it is very difficult to get a patent because of prior art. What can be recovered from the infringer:
What is this prior art of a patented product, X has patent. Y in his 1. Court can order the infringer to stop the infringer from
little barrio similar to X’s patented product, can Mr. X stop Mr. Y? No. selling or manufacturing
Because any prior user who in good faith… 2. The registered patentee can ask for:
a. Damages sustained (actual pecuniary loss)
Section 73. Prior User. - 73.1. Notwithstanding Section 72 hereof, any
~ 17 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 i. If patentee lost money because
infringer was selling it in a cheap price, Issue: Whether there is infringement. No.
then he may ask for damages for loss of
income. SC: Doctrine of Equivalents is inapplicable. It provides that:
b. attorney’s fees infringement takes place when a device appropriates a prior
i. because plaintiff was compelled to invention by incorporating its innovative concepts, and although with
court action some modification and change, performs substantially the same
c. Other expenses of litigation (sec 76) function in substantially the same way to achieve the same result.

Incapable of pecuniary estimation? If damages na, depende na. Innovative concept is incorporated by another device. The other
Anyway. As for payment of DF, you have to include them. device has substantial similarity with respect to function, means,
results of the first device.
What else?
Function-means-result test was applied. In this case, SmithKline failed
1. RTC can issue writ of injunction for protection of his rights to prove how similar is Methyl 5’s way of neutralizing parasites with
(76.2) Albendazole.
a. Writ of injunction is a provisional remedy. While
the case is pending, the infringer continues to sell Identity=/= infringement. There must be substantial similarity as to
the patented product, the patentee can ask the function, means, and result.
court to stop or prevent the infringer from doing
what he is doing. Skipped to Section 77
2. Award by way of damages a sum equivalent to reasonable
royalty (temperate damages) 76.2. Any patentee, or anyone possessing any right, title or interest in
a. If damages are: and to the patented invention, whose rights have been infringed,
i. Inadequate may bring a civil action before a court of competent jurisdiction, to
ii. Cannot be readily ascertained with recover from the infringer such damages sustained thereby, plus
reasonable certainty (76.3) attorney's fees and other expenses of litigation, and to secure an
b. Why is this provision important? This has been injunction for the protection of his rights.
asked in the bar.
- The court may, according to the circumstances of the case, 76.3. If the damages are inadequate or cannot be readily ascertained
award damages in a sum above the amount found as actual with reasonable certainty, the court may award by way of damages a
damages sustained: (on top of damages) sum equivalent to reasonable royalty.
- Provided, That the award does not exceed three (3) times
the amount of such actual damages. (76.4) 76.4. The court may, according to the circumstances of the case,
- The court may, in its discretion, order that the infringing award damages in a sum above the amount found as actual damages
goods, materials and implements predominantly used in the sustained: Provided, That the award does not exceed three (3) times
infringement be disposed of outside the channels of the amount of such actual damages.
commerce or destroyed, without compensation. (76.5)
very important! 76.5. The court may, in its discretion, order that the infringing goods,
materials and implements predominantly used in the infringement be
Bar exam 1991: Ferdie is patent owner of certain invention. Found disposed of outside the channels of commerce or destroyed, without
out it was being infringed by Johan. compensation.

A. What are remedies? 76.6. Anyone who actively induces the infringement of a patent or
o That is Sec 76. provides the infringer with a component of a patented product or of
o Infringement a product produced because of a patented process knowing it to be
B. If you were the lawyer of Johan what defenses can you especially adopted for infringing the patented invention and not
assert? suitable for substantial non-infringing use shall be liable as a
o Sec 61. Grounds for cancellation (patent is contributory infringer and shall be jointly and severally liable with the
invalid, not new or patentable, does not disclose infringer. (Sec. 42, R.A. No. 165a)
etc. contrary to public order or morality)

Substantial Identity Q: Can a foreign national bring infringement of patent?

When a person infringes on another person’s patent, normally he A: Infringement of patent is found in IPC. Look at Paris Convention.
manufactures a similar gadget or product. Ang patented product Article 2 of Paris Convention. National Treatment for Nationals of
mahal yan. He has to go the eye of the needle to have it patented. Countries of the Union
The infringer sells sa cheap price. Does it have to be the same as the
patented product? The answer is no. Article 2
National Treatment for Nationals of Countries of the Union
The test of infringement for patent is substantial identity. It is not
necessary for the two products to be exactly the same. Substantial (1) Nationals of any country of the Union shall, as regards
identity between two devices. the protection of industrial property, enjoy in all the other
countries of the Union the advantages that their respective
How do you determine substantial identity? We have the doctrine of laws now grant, or may hereafter grant, to nationals; all
equivalents. without prejudice to the rights specially provided for by this
Convention. Consequently, they shall have the same
There is substantial identity when they perform substantially the protection as the latter (the nationals), and the same legal
same function in substantially way to obtain the same result, even if remedy against any infringement of their rights, provided
they form a different shape. that the conditions and formalities imposed upon nationals
are complied with.
SmithKline v CA and Tryco
o Whatever conditions are imposed by IPC such will
SmithKline invented Methyl 5 used to fight gastro-intestinal bacteria. also be imposed on foreigner
Tryco manufactures and sells Impregon which has Albendazole which
was also used to fight gastro-intestinal bacteria. (2) However, no requirement as to domicile or
establishment in the country where protection is claimed
SmithKline: Infringement! may be imposed upon nationals of countries of the Union
Tryco: No. Methyl 5 and Albendazole are two different compounds. for the enjoyment of any industrial property rights.

~ 18 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 patented product or process, are placed the words "Philippine
o That particular foreigner does not have to be Patent" with the number of the patent. (Sec. 44, R.A. No. 165a)
domiciled here to file an infringement case. He
does not have to have an establishment here. He
just needs to be registered. Q: What are the defenses in an action for infringement?

(3) The provisions of the laws of each of the countries of Section 81. Defenses in Action for Infringement. - In an action for
the Union relating to judicial and administrative procedure infringement, the defendant, in addition to other defenses available
and to jurisdiction, and to the designation of an address for to him, may show the invalidity of the patent, or any claim thereof,
service or the appointment of an agent, which may be on any of the grounds on which a petition of cancellation can be
required by the laws on industrial property are expressly brought under Section 61 hereof. (Sec. 45, R.A. No. 165)
reserved.
- In addition to other defenses He can say that he is not the
So the answer is yes. Foreign nationals can file IP cases here in PH infringer. It was somebody else.
and Section 77 also affirms that provided he meets Section 3:
Since you are taking Procedure, you must have that mindset where
Section 77. Infringement Action by a Foreign National. - Any foreign an action must be filed.
national or juridical entity who meets the requirements of Section 3
and not engaged in business in the Philippines, to which a patent has Section 82. Patent Found Invalid May be Cancelled. - In an action for
been granted or assigned under this Act, may bring an action for infringement,
infringement of patent, whether or not it is licensed to do business in - if the court shall find the patent or any claim to be invalid, it
the Philippines under existing law. (Sec. 41-A, R.A. No. 165a) shall cancel the same,
- and the Director of Legal Affairs upon receipt of the final
judgment of cancellation by the court,
When can infringement action be filed by foreign national? o shall record that fact in the register of the Office
o and shall publish a notice to that effect in the IPO
1. He meets requirements of Sec 3 Gazette. (Sec. 46, R.A. No. 165a)
a. National
b. Domiciliary Where do you file cancellation? BLA.
c. Could have business establishment
2. If not engaged in business in RP In Section 82, the situation is patentee files infringement case against
a. Corporation Law: foreign corporation infringer in Special Commercial Court.
Doing Not registered Cannot sue
business in PH Galing galing magdefend ni infringer. Bc court ruled na invalid ang
Doing Registered Can sue patent.
business in PH
NOT doing Not registered Can sue According to Sec 82, the court shall cancel the patent. It will find the
business in PH patent invalid. Even if jurisdiction to cancel belongs to BLA (we also
know doctrine of primary jurisdiction go first to admin bodies) but
3. Granted or assigned a patent under RA 8293 an infringement case is filed and court rules that patent is invalid,
o Infringement cases can only be filed by entity or then the court has now power to cancel.
person who has a registered patent here in PH.
o You cannot bring your patent from abroad and And the Director of Legal Affairs upon receipt of the final judgment of
say you are registered. No. Hindi infringement cancellation by the court, shall record that fact in the register of the
mafile mo. Pwede iba like cancellation. Pero not Office and shall publish a notice to that effect in the IPO Gazette.
infringement because it is reserved to patentees
in Ph. Maguan v CA

may bring an action for infringement of patent, whether or not it is Rosaria Maguan: Luchan’s poweder puffs are substantially identical
licensed to do business in the Philippines under existing law. to my powder puffs!
Luchan filed in TPO (BLA now)
Section 78. Process Patents; Burden of Proof . - If the subject matter Maguan: CFI complaint for damages and damages for infringing the
of a patent is a process for obtaining a product, any identical product letters of patent and writ of preli injnction
shall be presumed to have been obtained through the use of the - Granted preli injunction
patented process if the product is new or there is substantial - Luchan: There is still a pending case!
likelihood that the identical product was made by the process and
the owner of the patent has been unable despite reasonable efforts, Infringement and cancellation can proceed together.
to determine the process actually used. In ordering the defendant to CFI can try infringement and cancellation. RTC now can cancel.
prove that the process to obtain the identical product is different
from the patented process, the court shall adopt measures to By express provision of article 82, RTC or Special Commercial Court
protect, as far as practicable, his manufacturing and business secrets. has the power to cancel a patent.
(n)

Q: Prescriptive period for filing a case for infringement: Q: Effect of cancellation of patent (like here, what happens to the
A: other pending case [cancellation case in BLA])
- Moot and Academic because BLA is now required to record
Section 79. Limitation of Action for Damages. - No damages can be and publish notice that the patent was cancelled.
recovered for acts of infringement committed more than four (4) - So the decision of court in an infringement case can override
years before the institution of the action for infringement. (Sec. 43, any cancellation case that is going on in BLA.
R.A. No. 165)
Regarding that powder puff, the court did not cancel. But if you were
RTC, you would have to cancel. It has the same function, means,
Section 80. Damages, Requirement of Notice. - Damages cannot be effect. Same lang yan dati pa kay Cleopatra. Definitely not new.
recovered for acts of infringement committed before the infringer o If you noticed, it was never called an invention in
had known, or had reasonable grounds to know of the patent. It is this case. It was a utility model. Later we will go
presumed that the infringer had known of the patent if on the to utility model.
patented product, or on the container or package in which the article Skipped 83.
is supplied to the public, or on the advertising material relating to the
~ 19 ~
INTELLECTUAL PROPERTY LAW 2017-2018
Section 83. Assessor in Infringement Action. - 83.1. Two (2) or more product. Syempre you have to make money while your patent is
assessors may be appointed by the court. The assessors shall be existing. Once it expires, that’s it.
possessed of the necessary scientific and technical knowledge
required by the subject matter in litigation. Either party may He can enter into TTA for the manufacture of the product.
challenge the fitness of any assessor proposed for appointment.
TTA is also the transfer, assignment or licensing of all forms of
83.2. Each assessor shall receive a compensation in an amount to be intellectual property rights. It is not only the transfer of systematic
fixed by the court and advanced by the complaining party, which shall knowledge, but another entity is given the license under the patent.
be awarded as part of his costs should he prevail in the action. (Sec.
47, R.A. No. 165a) This is what we call Voluntary Licensing. The patentee voluntarily
authorizes another by means of a license to exploit the patent.

Criminal Action for Infringement

What is the purpose?
Normally, the first infringement case filed for infringement is a civil
case. However, if infringer repeats the act of infringement after Section 85. Voluntary License Contract. -
finality of judgment against him (stop what you are doing. civil case Purpose:
lang yan injunction ba o damages) inulit. Di natuto. Then the 1. To encourage the transfer and dissemination of technology,
patentee can now file a criminal case. 2. prevent or control practices and conditions that may in
particular cases constitute an abuse of intellectual property
Civil case rights having an adverse effect on competition and trade
Crime: Repeated Infringement
Prescriptive period: 3 years from the commission of crime, 3 years all technology transfer arrangements shall comply with the provisions
from repeated infringement. of this Chapter. (n)

Section 84. Criminal Action for Repetition of Infringement. - If Now, definitely since a voluntary licensing contract or TTA contract
infringement is repeated by the infringer or by anyone in connivance between patentee or licensee or assignee or whoever, there are
with him after finality of the judgment of the court against the times when conflict will arise between the two parties.
infringer, the offenders shall, without prejudice to the institution of a
civil action for damages, be criminally liable therefor and, upon So if there is a dispute especially on royalty because the patentee
conviction, shall suffer imprisonment for the period of not less than expects royalty.
six (6) months but not more than three (3) years and/or a fine of not
less than One hundred thousand pesos (P100,000) but not more than
Three hundred thousand pesos (P300,000), at the discretion of the So who has jurisdiction? Director of DITT.
court. The criminal action herein provided shall prescribe in three (3)
years from date of the commission of the crime. (Sec. 48, R.A. No.
165a) Section 86. Jurisdiction to Settle Disputes on Royalties. - The Director
of the Documentation, Information and Technology Transfer Bureau
shall exercise quasi-judicial jurisdiction in the settlement of disputes
Godinez between parties to a technology transfer arrangement arising from
technology transfer payments, including the fixing of appropriate
Passed doctrine of equivalence. There is infringement in this case. amount or rate of royalty. (n)

Sonic Steel v Chua DDITT Bureau: quasi-judicial jurisdiction in the settlement of disputes
between parties to a technology transfer arrangement arising from
That is actually a defense in infringement case; that the patent has technology transfer payments, including the fixing of appropriate
already expired. amount or rate of royalty.

Here, Atty. Chua did not reveal to the court that the patent of Steel Take note that this is a new provision not found in RA 165.
Corp had expired. After seizure, Steel Corp filed with DOJ a case of
Unfair Competition under Section 160. It did not file an infringement
case because the patent had already expired. There was no renewal PROHIBITED CLAUSES
of patent. A patent has certain lifespan after which it will belong to
the public domain; thus anyone can manufacture that patented Section 87. Prohibited Clauses. - Except in cases under Section 91, the
product. following provisions shall be deemed prima facie to have an adverse
effect on competition and trade:
You have to be able to compare patent with other topics we will
discuss. This will be part of the first exam. 87.1. Those which impose upon the licensee the obligation to acquire
from a specific source capital goods, intermediate products, raw
materials, and other technologies, or of permanently employing
personnel indicated by the licensor;
VOLUNTARY LICENSING
87.2. Those pursuant to which the licensor reserves the right to fix
Going back to Section 4.2 on TTA, what is TTA? the sale or resale prices of the products manufactured on the basis of
the license;
4.2. The term "technology transfer arrangements" refers to contracts
or agreements 87.3. Those that contain restrictions regarding the volume and
- involving the transfer of systematic knowledge structure of production;
 for the manufacture of a product, - 100 lang imanufacture mo ha?
- the application of a process, or rendering of a service
including management contracts; 87.4. Those that prohibit the use of competitive technologies in a
and the transfer, assignment or licensing of all forms of intellectual non-exclusive technology transfer agreement;
property rights,
- including licensing of computer software 87.5. Those that establish a full or partial purchase option in favor of
except computer software developed for mass market. the licensor;
- favourable to licensor. Bakit niya bibilhin lahat niyang
If Mr. X is patentee, he is an inventor of a product, he was issued a product?
patent but he does not have the capacity to mass produce the
~ 20 ~
INTELLECTUAL PROPERTY LAW 2017-2018
87.6. Those that obligate the licensee to transfer for free to the 1. granting further licenses to third person nor
licensor the inventions or improvements that may be obtained a. Unless exclusive TTA
through the use of the licensed technology; 2. from exploiting the subject matter of the technology
- manufacture ka ng 100 for free transfer arrangement himself. (Sec. 33-B, R.A. 165a)

87.7. Those that require payment of royalties to the owners of Unless the licensor or any person has an exlusive TTA he can enter
patents for patents which are not used; into other TTAs and he can never be prevented unless he takes the
right to do so in the TTA. So he can still sell, manufacture or distribute
87.8. Those that prohibit the licensee to export the licensed product despite the existence of TTA.
unless justified for the protection of the legitimate interest of the
licensor such as exports to countries where exclusive licenses to If I am the patentee I will of course not remove that right to exploit
manufacture and/or distribute the licensed product(s) have already that patented product.
been granted;
- most of prohibited acts are favourable sa licensee.
Q: What are the rights of licensee?
87.9. Those which restrict the use of the technology supplied after
the expiration of the technology transfer arrangement, except in A:
cases of early termination of the technology transfer arrangement Section 90. Rights of Licensee. - The licensee shall be entitled to
due to reason(s) attributable to the licensee; exploit the subject matter of the technology transfer arrangement
during the whole term of the technology transfer arrangement. (Sec.
87.10. Those which require payments for patents and other industrial 33-C (1), R.A. 165a)
property rights after their expiration, termination arrangement;
TTA does not have to be co-terminus with patent. It depends upon
87.11. Those which require that the technology recipient shall not the parties, but it cannot go beyond the existence of patent. No need
contest the validity of any of the patents of the technology supplier; for TTA if patent expires.

87.12. Those which restrict the research and development activities Section 91. Exceptional Cases. - In exceptional or meritorious cases
of the licensee designed to absorb and adapt the transferred where substantial benefits will accrue to the economy, such as high
technology to local conditions or to initiate research and technology content, increase in foreign exchange earnings,
development programs in connection with new products, processes employment generation, regional dispersal of industries and/or
or equipment; substitution with or use of local raw materials, or in the case of Board
of Investments, registered companies with pioneer status, exemption
87.13. Those which prevent the licensee from adapting the imported from any of the above requirements may be allowed by the
technology to local conditions, or introducing innovation to it, as long Documentation, Information and Technology Transfer Bureau after
as it does not impair the quality standards prescribed by the licensor; evaluation thereof on a case by case basis. (n)

87.14. Those which exempt the licensor for liability for non-fulfilment Section 92. Non-Registration with the Documentation, Information
of his responsibilities under the technology transfer arrangement and Technology Transfer Bureau. - Technology transfer arrangements
and/or liability arising from third party suits brought about by the use that conform with the provisions of Sections 86 and 87 need not be
of the licensed product or the licensed technology; and registered with the Documentation, Information and Technology
Transfer Bureau. Non-conformance with any of the provisions of
87.15. Other clauses with equivalent effects. (Sec. 33-C (2), R.A 165a) Sections 87 and 88, however, shall automatically render the
- Thus, enumeration is not exclusive. technology transfer arrangement unenforceable, unless said
technology transfer arrangement is approved and registered with the
Documentation, Information and Technology Transfer Bureau under
Q: What shall be included in Voluntary License Contracts? the provisions of Section 91 on exceptional cases. (n)

Section 88. Mandatory Provisions. - The following provisions shall be It is not always required that TTA be registered with DITT.
included in voluntary license contracts:

88.1. That the laws of the Philippines shall govern the interpretation
of the same and in the event of litigation, the venue shall be the COMPULSORY LICENSING
proper court in the place where the licensee has its principal office;
What is compulsory licensing? This provision, Sec 93, has been
88.2. Continued access to improvements in techniques and processes amended. Under RA 9502 or Cheaper Medicines Act, the office that
related to the technology shall be made available during the period of may grant compulsory license is DG of IPO.
the technology transfer arrangement;
Compulsory licensing is the grant without the agreement of the
88.3. In the event the technology transfer arrangement shall provide patent owner. To whom may it be granted? To any person any person
for arbitration, the Procedure of Arbitration of the Arbitration Law of who has shown his capability to exploit the invention, under any of
the Philippines or the Arbitration Rules of the United Nations the following circumstances:
Commission on International Trade Law (UNCITRAL) or the Rules of - capacity to manufacture
Conciliation and Arbitration of the International Chamber of - to distribute
Commerce (ICC) shall apply and the venue of arbitration shall be the - and other acts a patentee can do
Philippines or any neutral country; and
- Only if TTA provides for arbitration. First requirement must be that: He must show his capability to exploit,
- If none, they can just go to DDITT Bureau. to manufacture or maybe to import the patented drug.

88.4. The Philippine taxes on all payments relating to the technology If you see SmithKline cases. These drug companies are very
transfer arrangement shall be borne by the licensor. (n) protective of their drugs. They have exclusive distributors here. All
SmithKline products are acquired from SmithKline PH. It is also
possible to import. You already know that you don’t need compulsory
Q: So what are the rights of licensor? license if you want patented drugs from other sources. Capacity to
manufacture, to distribute, and also other acts that patentee can do.
A:
Section 89. Rights of Licensor. - In the absence of any provision to the Sec 93 as Amended by RA 9502:
contrary in the technology transfer arrangement, the grant of a
license shall not prevent the licensor from: "SEC. 93. Grounds for Compulsory Licensing. - The Director General of
~ 21 ~
INTELLECTUAL PROPERTY LAW 2017-2018
the Intellectual Property Office may grant a license to exploit a Now RA 9502 inserted Section 93-A. Kung merong compulsory
patented invention, even without the agreement of the patent license, there is special compulsory license. This is based on TRIPS
owner, in favor of any person who has shown his capability to exploit agreement.
the invention, under any of the following circumstances:
- capacity to manufacture What is this special compulsory license? What is the procedure?
- to distribute
- and other acts a patentee can do We have an applicant. He applies for special compulsory for
importation of patented drugs and medicines. DG of IPO upon the
However, capacity to exploit is not enough, there must be any of these written recommendation of the Secretary of the Department of
circumstances: Health, shall grant a special compulsory license for the importation of
patented drugs and medicines.
"93.1. National emergency or other circumstances of extreme
urgency; Importation is now allowed. We have this provision on special
- This is significant if there is an epidemic. Bird flu anything compulsory license for importation which is an additional special
that is contagious or situation is of extreme urgency. alternative procedure to ensure access to quality affordable
medicines and primarily for domestic consumption.
"93.2. Where the public interest, in particular, national security,
nutrition, health or the development of other vital sectors of the So yung pinaglumaang Roma Drug, pang small time lang. Pang drug
national economy as determined by the appropriate agency of the store lang.
Government, so requires; or
- This has to be determined by appropriate agency. If health Itong special compulsory license, this is meant for large scale
issue then DOH. For security, DND. importation.

"93.3. Where a judicial or administrative body has determined that "SEC. 93-A. Procedures on Issuance of a Special Compulsory License
the manner of exploitation by the owner of the patent or his licensee under the TRIPS Agreement. - 93-A.1. The Director General of the
is anti-competitive; or Intellectual Property Office, upon the written recommendation of the
- Anti-competitive: Reduces or discourages the market. Secretary of the Department of Health, shall, upon filing of a petition,
- It has to be determined by administrative or judicial body. grant a special compulsory license for the importation of patented
drugs and medicines. The special compulsory license for the
"93.4. In case of public non-commercial use of the patent by the importation contemplated under this provision shall be an additional
patentee, without satisfactory reason; special alternative procedure to ensure access to quality affordable
- If you have an invention and you went out of your way to medicines and shall be primarily for domestic consumption: Provided,
have it patented, it means it is new and it must have an That adequate remuneration shall be paid to the patent owner either
inventive step and others. So you should actually share that by the exporting or importing country.
to public. - Itong special compulsory license this is meant for large
- Basis of issuance of compulsory license. scale to bring down cost of medicine for domestic
consumption. For special compulsory license, the patent
"93.5. If the patented invention is not being worked in the Philippines owner must be paid remuneration.
on a commercial scale, although capable of being worked, without - Who will pay? Exporting country or importing country.
satisfactory reason: Provided, That the importation of the patented Depende sa agreement.
article shall constitute working or using the patent; (Secs. 34, 34-A, - Roma Drug: SmithKline is US Based. Drugs will be imported
34-B, R.A. No. 165a) and from England. If there is special compulsory license sa Ph,
- Nagmanufacture nga pero 10 pieces lang. That is not then England will pay to patent owner, to Smith Kline.
enough. It must be on a commercial scale.
- Smith Kline v CA: 2001: contention that Section 34 of the The special compulsory license shall also contain a provision directing
Patent Law contravenes the Paris Convention (because the the grantee the license to exercise reasonable measures to prevent
former provides for grounds for the grant of a compulsory the re-exportation of the products imported under this provision.
license in addition to those found in the latter)incorrect. - So if you import patented drugs and medicines under
o “authority to grant compulsory license to a local special compulsory license you have to make sure that they
is not contrary to Paris convention which under are not to be exported. Kasi licensed to distribute. What if
Article 5, Section A(2) of the Paris Convention these drugstores exports to Cambodia, Laos or Myanmar
allows: para kumita? That should not be done. The compulsory
o Each country of the union shall have the right to licensee should take steps to prevent this because the
take legislative measures providing for the grant purpose is for the domestic market.
of compulsory licenses to prevent the abuses
which might result from the exercise of the "The grant of a special compulsory license under this provision shall
exclusive rights conferred by the patent, for be an exception to Sections 100.4 and 100.6 of Republic Act No. 8293
example, failure to work. and shall be immediately executory.
o It is thus clear that Section A(2) of Article 5 [of - Once issued, the licensee can go ahead and import drugs.
the Paris Convention] unequivocally and explicitly
respects the right of member countries to adopt "No court, except the Supreme Court of the Philippines, shall issue
legislative measures to provide for the grant of any temporary restraining order or preliminary injunction or such
compulsory licenses to prevent abuses which other provisional remedies that will prevent the grant of the special
might result from the exercise of the exclusive compulsory license.
rights conferred by the patent. - If ikaw patentee, may nag issue ng Special Compulsory
o The grant of compulsory license will not result in License, oh no nag issue ang DG. Ikaw ang SmithKline.
deprivation of property without just Nobody is getting from Smith Kline Ph na kasi iniimport na
compensation. ang mga drugs.
- Compulsory licensing is actually allowed. This provision is - Where do you go? The only court that will issue TRO or
actually based on Paris Convention. Preliminary Injunction is SC to stop compulsory license.

"93.6. Where the demand for patented drugs and medicines is not
being met to an adequate extent and on reasonable terms, as SECOND KIND ON SPECIAL COMPULSORY LICENSE:
determined by the Secretary of the Department of Health."
This is for manufacture and export of patented medicine and drugs.
1. The entity must have manufacturing capacity.
SPECIAL COMPULSORY LICENSE 2. It must be able to export it.

~ 22 ~
INTELLECTUAL PROPERTY LAW 2017-2018
"93-A.2. A compulsory license shall also be available for the "(a) Where the petition for compulsory license seeks to remedy a
manufacture and export of drugs and medicines to any country having practice determined after judicial or administrative process to be
insufficient or no manufacturing capacity in the pharmaceutical sector anti-competitive;
to address public health problems:
"(b) In situations of national emergency or other circumstances of
- This is not something imported or exported. The entity must extreme urgency;
have manufacturing capacity and export it.
"(c) In cases of public non-commercial use; and
Provided, That,
1. a compulsory license has been granted by such country or "(d) In cases where the demand for the patented drugs and
2. such country has, by notification or otherwise, allowed medicines in the Philippines is not being met to an adequate extent
importation into its jurisdiction of the patented drugs and and on reasonable terms, as determined by the Secretary of the
medicines from the Philippines in compliance with the Department of Health.
TRIPS Agreement.
"95.3. In situations of national emergency or other circumstances of
- Cheaper Medicines Act is not just concerned of the needs of extreme urgency, the right holder shall be notified as soon as
Filipinos. It is also concerned of the needs of other countries reasonably practicable.
incapable of manufacturing drugs.
"95.4. In the case of public non-commercial use, where the
"93-A.3. The right to grant a special compulsory license under this government or contractor, without making a patent search, knows or
section shall not limit or prejudice the rights, obligations and has demonstrable grounds to know that a valid patent is or will be
flexibilities provided under the TRIPS Agreement and under Philippine used by or for the government, the right holder shall be informed
laws, particularly Section 72.1 and Section 74 of the Intellectual promptly. (n)
Property Code, as amended under this Act. It is also without
prejudice to the extent to which drugs and medicines produced "95.5. Where the demand for the patented drugs and medicines in
under a compulsory license can be exported as allowed in the TRIPS the Philippines is not being met to an adequate extent and on
Agreement and applicable laws." reasonable terms, as determined by the Secretary of the Department
of Health, the right holder shall be informed promptly."
- TRIPS agreement is always mentioned. It must not
contravene TRIPS Agreement. Just read 96, 97
Section 96. Compulsory Licensing of Patents Involving Semi-
Let’s go back to IPC. Conductor Technology. - In the case of compulsory licensing of
patents involving semi-conductor technology, the license may only be
"SEC. 94. Period for Filing a Petition for a Compulsory License. – granted in case of public non-commercial use or to remedy a practice
94.1. A compulsory license may not be applied for on the ground determined after judicial or administrative process to be anti-
stated in Subsection 93.5 (if the patented invention is not being competitive. (n)
worked in the Philippines on a commercial scale, although capable of
being worked, without satisfactory reason) Section 97. Compulsory License Based on Interdependence of
- before the expiration of a period of four (4) years from the Patents. - If the invention protected by a patent, hereafter referred to
date of filing of the application as the "second patent," within the country cannot be worked without
 You have to give patentee four years from the infringing another patent, hereafter referred to as the "first patent,"
date of filing of application. What application? for granted on a prior application or benefiting from an earlier priority, a
patent. Remember he may already manufacture compulsory license may be granted to the owner of the second
even if his application has not yet been granted. patent to the extent necessary for the working of his invention,
Time is of the essence. Go ahead and subject to the following conditions:
manufacture.
- or three (3) years from the date of the patent 97.1. The invention claimed in the second patent involves an
- whichever period expires last. important technical advance of considerable economic significance in
 Syempre. It is always three years from date of relation to the first patent;
patent. Matagal maissue ang patent. There must
be a breathing period before you can acquire a 97.2. The owner of the first patent shall be entitled to a cross-license
compulsory license on the ground that the on reasonable terms to use the invention claimed in the second
patented invention is not being worked in the patent;
Philippines on a commercial scale.
97.3. The use authorized in respect of the first patent shall be non-
assignable except with the assignment of the second patent; and
"94.2. A compulsory license which is applied for on any of the
grounds stated in Subsections 93.2, 93.3, 93.4, and 93.6 and Section 97.4. The terms and conditions of Sections 95, 96 and 98 to 100 of
97 may be applied for at any time after the grant of the patent. (Sec. this Act. (Sec. 34-C, R.A. No. 165a)
34(1), R. A. No. 165)"

"SEC. 95. Requirement to Obtain a License on Reasonable Skipped 98-99.2

Commercial Terms. - 95.1. The license will only be granted after the Section 98. Form and Contents of Petition. - The petition for
petitioner has made efforts to obtain authorization from the patent compulsory licensing must be in writing, verified by the petitioner
owner on reasonable commercial terms and conditions but such and accompanied by payment of the required filing fee. It shall
efforts have not been successful within a reasonable period of time. contain the name and address of the petitioner as well as those of
the respondents, the number and date of issue of the patent in
connection with which compulsory license is sought, the name of the
- Do not immediately go to DG. Di pwede dumiretso. patentee, the title of the invention, the statutory grounds upon
Applicant should first approach patent owner. Pwede ba which compulsory license is sought, the ultimate facts constituting
voluntary license? Offer ka ng kwarta. Offer ka ng royalty. the petitioner's cause of action, and the relief prayed for. (Sec. 34-D,
- If may refusal, go to DG and apply for compulsory license, R.A. No. 165)
but 95.2:
Section 99. Notice of Hearing. - 99.1. Upon filing of a petition, the
"95.2. The requirement under Subsection 95.1 shall not apply in any Director of Legal Affairs shall forthwith serve notice of the filing
of the following cases: thereof upon the patent owner and all persons having grants or
- So approaching is not required when: licenses, or any other right, title or interest in and to the patent and
invention covered thereby as appears of record in the Office, and of
~ 23 ~
INTELLECTUAL PROPERTY LAW 2017-2018
notice of the date of hearing thereon, on such persons and Cimetidine: antihistamine and treatment of ulcer
petitioner. The resident agent or representative appointed in Danlex filed before Bureau of Patents Trademarks and Technology
accordance with Section 33 hereof, shall be bound to accept service Transfer that it may be granted a compulsory license for the use and
of notice of the filing of the petition within the meaning of this manufacture of Cimetidine.
Section. Smith Kline: already registered Cimetidine in 1978!

99.2. In every case, the notice shall be published by the said Office in Bureau of Patents and Trademark: granted application
a newspaper of general circulation, once a week for three (3) CA affirmed
consecutive weeks and once in the IPO Gazette at applicant's
expense. (Sec. 34-E, R.A. No. 165) Smith Kline:
1. can adequately supply the drug. No need to grant because
supply was sufficient.
2. Paris Convention provides that original licensee failed to
TERMS AND CONDITIONS OF COMPULSORY LICENSE work on the patent. Invalid and contrary to paris
convention.
Section 100. Terms and Conditions of Compulsory License. - The basic 3. Granted of compulsory licensing allows them to distribute
terms and conditions including the rate of royalties of a compulsory but it does not give credit to maker.
license shall be fixed by the Director of Legal Affairs subject to the
following conditions: Lord nastress si atty. Sua because gamit nang gamit si reporter ng
Petitoner and Respondent na terms, and Lord kadaghan issues. Lord.
100.1. The scope and duration of such license shall be limited to the GUIDE US. KALMA LANG, MA’AM. PLEASE. HUUUYYYYYY.
purpose for which it was authorized;
- If it is for national emergency then it should be for that. Under Sec 34 of RA 165:
If the patented invention or article relares to food or medicine or
100.2. The license shall be non-exclusive; manufactured substances which can be used…
- Anyone can apply and be granted. Grant to Mr. X does not
mean only Mr. X can have that. By the grant of compulsory license, Danlex as licensee explicitly
acknowledges that Smith Kline is source of peteted product.
100.3. The license shall be non-assignable, except with that part of Disadvantage is far outweighed by the benefits resulting from the
the enterprise or business with which the invention is being grant of compulsory license.
exploited;
- Anyone who has the capacity can apply. The license shall be Sec 34 165 AND SEC 93 RA 8293
non-assignable. It’s either he exploits the patent himself or - More grounds than 165
he gives it up. - Not anymore with Bureau of Patents
- Atty. Sua: This case was decided in 2001. The application
100.4. Use of the subject matter of the license shall be devoted was made in 1989. That was before 8293. Supreme Court in
predominantly for the supply of the Philippine market: /just read: form of Justice Kapunan had no choice but to apply RA 165.
Provided, That this limitation shall not apply where the grant of the o Let me ask you. If SC applied RA 8293, do you
license is based on the ground that the patentee's manner of think it would grant the compulsory license? No.
exploiting the patent is determined by judicial or administrative More stringent ang Sec 93. Kailangan ma meet
process, to be anti-competitive./ ang grounds.
o Paris Convention protects IP rights.
100.5. The license may be terminated upon proper showing that  If that easy to get compulsory license
circumstances which led to its grant have ceased to exist and are then why would you have to apply for
unlikely to recur: Provided, That adequate protection shall be patent?
afforded to the legitimate interest of the licensee; and - IP did not become popular right away. IP got protection
that it deserved. RA 165 and 166 kulang-kulang until rules
100.6. The patentee shall be paid adequate remuneration taking into and treaties evolved. Paris Convention was amended many
account the economic value of the grant or authorization, except that many times because it was impossible for framers to
in cases where the license was granted to remedy a practice which include everything possible for protection of IP rights. Just
was determined after judicial or administrative process, to be anti- make sure that you understand why we ask this case to be
competitive, the need to correct the anti-competitive practice may be presented so you can see the difference.
taken into account in fixing the amount of remuneration. (Sec. 35-B, - This is just to let you know in advance that we have LOTS of
R.A. No. 165a) cases in Trademark that you cannot just report based on old
- This is the most important. law. You have to compare and contrast if RA 8293 is applied.

Amendment, Cancellation, Surrender of Compulsory License

December 14, 2017
Who can ask to amend? Maybe patentee. Just like patent compulsory
Discussion as to coverage of the exam: The subject has four main license can be cancelled.
topics
1. Patent Who asks? Definitely patentee. Grounds for grant is not likely to exist.
2. Trademark
3. Copyright Section 101. Amendment, Cancellation, Surrender of Compulsory
4. Rules License. - 101.1. Upon the request of the patentee or the licensee,
the Director of Legal Affairs may amend the decision granting the
Longest on Provisions is Patent, but when it comes to cases, compulsory license, upon proper showing of new facts or
Trademark. circumstances justifying such amendment.

So how to divide? 101.2. Upon the request of the patentee, the said Director may
cancel the compulsory license:
1st exam: Patents only on January 27.
Final exam: March 17 tentative date (a) If the ground for the grant of the compulsory license no
longer exists and is unlikely to recur;

- Especially if national emergency.

Smith Kline v CA and Caltez: RA 165
(b) If the licensee has neither begun to supply the domestic

~ 24 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 market nor made serious preparation therefor; of his undivided share. He can dispose his right. Licensee
- Hanggang license lang siya but he does not do anything becomes joint co-owner with other patentees.
about it.
NOTE: An assignment may be limited to a specified territory. (Sec. 51,
(c) If the licensee has not complied with the prescribed terms of R.A. No. 165)
the license; - Kung hanggang davao ka lang ba or Mindanao.

105 and 106 are skipped.

Aside from cancellation, say si licensee nalugi, can he surrender? Yes.
He can, but with a written declaration. Section 105. Form of Assignment. - The assignment must be in
101.3. The licensee may surrender the license by a written writing, acknowledged before a notary public or other officer
declaration submitted to the Office. authorized to administer oath or perform notarial acts, and certified
under the hand and official seal of the notary or such other officer.
101.4. The said Director shall cause the amendment, surrender, or (Sec. 52, R.A. No. 165)
cancellation in the Register, notify the patentee, and/or the licensee,
and cause notice thereof to be published in the IPO Gazette. (Sec. 35- Section 106. Recording. - 106.1. The Office shall record assignments,
D, R.A. No. 165a) licenses and other instruments relating to the transmission of any
right, title or interest in and to inventions, and patents or application
for patents or inventions to which they relate, which are presented in
So whether amended, surrendered or cancelled, it must be published due form to the Office for registration, in books and records kept for
in the IPO Gazette. the purpose. The original documents together with a signed duplicate
thereof shall be filed, and the contents thereof should be kept
Now, Section 102 exempts licensee from liability from infringement. confidential. If the original is not available, an authenticated copy
thereof in duplicate may be filed. Upon recording, the Office shall
Section 102. Licensee's Exemption from Liability. - Any person who retain the duplicate, return the original or the authenticated copy to
works a patented product, substance and/or process under a license the party who filed the same and notice of the recording shall be
granted under this Chapter, shall be free from any liability for published in the IPO Gazette.
infringement: Provided however, That in the case of voluntary
licensing, no collusion with the licensor is proven. This is without 106.2. Such instruments shall be void as against any subsequent
prejudice to the right of the rightful owner of the patent to recover purchaser or mortgagee for valuable consideration and without
from the licensor whatever he may have received as royalties under notice, unless, it is so recorded in the Office, within three (3) months
the license. (Sec. 35-E, R.A. No. 165a) from the date of said instrument, or prior to the subsequent
purchase or mortgage. (Sec. 53, R.A. No. 165a)
ROYALTY:

Okay, so under the old law there was an amount for royalty, but 8293 What are the rights of joint owners?
does not provide for royalty. Law does not provide for royalty kasi
agreement by parties yan. There is no such thing as unconscionable Section 107. Rights of Joint Owners. - If two (2) or more persons
royalty. Di mag-aagree parties niyan. Any kind of agreement must - jointly own a patent and the invention covered thereby,
have both party. - either by the
o issuance of the patent in their joint favor or by
Although compulsory licensing is one sided, but patentee can ask o reason of the assignment of an undivided share in the patent
how much it wants royalty. and invention
o or by reason of the succession in title to such share,
each of the joint owners shall be entitled to personally
CHAPTER XI - make, use, sell, or import the invention for his own profit:
ASSIGNMENT AND TRANSMISSION OF RIGHTS
Provided, however, That neither of the joint owners shall be entitled
This is very easy. I don’t know why they have topics that repeat itself. to grant licenses or to assign his right, title or interest or part thereof
without the consent of the other owner or owners, or without
Section 103. Transmission of Rights. - 103.1. Patents or applications proportionally dividing the proceeds with such other owner or
for patents and invention to which they relate, shall be protected in owners. (Sec. 54, R.A. No. 165)
the same way as the rights of other property under the Civil Code.
- Meaning, if you have patent, you have all rights of an You already know this under your 486 that each co-owner has the
owner which are rights to enjoy, dispose, and recover. right to use the property co-owned. If there are 5 co-owners it
- Kahit application pa. Subject to rights of owner. doesn’t mean that co-owner can only use 1/5th of the property. Each
- Hence, because the right to dispose is available… of them can use. They all have right to use sell etc. for his own profit,
but neither joint owners shall be entitled to grant licenses because
103.2. Inventions and any right, title or interest in and to patents and that is an act of alteration without consent of other owners.
inventions covered thereby, may be assigned or transmitted by
inheritance or bequest or may be the subject of a license contract. Grant of license: each of them can enjoy, but right to dispose must be
(Sec. 50, R.A. No. 165a) agreed upon. Unanimous ang consent of other co-owners.
- Now, who can apply for patent? Normally inventor or
assignee of inventor. But once granted, inventor has right You want to assign sa share? Get the unanimous consent of other co-
to dispose once. owners and proportionately divide proceeds.
- So you may have a patentee not related to the inventor in
any way but since it was assigned to him then he can have
a right to a patent.
UTILTY MODEL

What can a patent holder assign? In the case of Maguan and the tractor case, Godinez: Powder puff
and tractor were not inventions. They were utility models.
Section 104. Assignment of Inventions. - An assignment may be of the
- entire right, title or interest in and to the patent and the Invention Utility Model
invention covered thereby, Requisites: Requisites:
- or of an undivided share of the entire patent and invention, 1. new 1. new
in which event the parties become joint owners thereof. 2. industrially applicable 2. industrially applicable
o Co-patentees ABCD. A, under Article 493 has the right to dispose 3. inventive step
~ 25 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 (Inventive step is not required)
New, novel yan. Tapos 109.3. A utility model registration shall expire, without any possibility
industrially applicable pero of renewal, at the end of the seventh year after the date of the filing
walang inventive step. So utility of the application.
model.
109.4. In proceedings under Sections 61 to 64, the utility model
Under old law, patent pa rin. registration shall be canceled on the following grounds:
Pero dito mas precise. Utility
model na ‘yan. (a) That the claimed invention does not
Lifetime of patent: 20 years from Only has 7 years, but application qualify for registration as a utility model
date of application process may take the same time. and does not meet the requirements of registrability, in particular
The longest period is still on the having regard to Subsection 109.1 and Sections 22, 23, 24 and 27;
determination of novelty.
(b) That the description and the claims do not comply with the
No renewal 109.3 prescribed requirements;

109.3. A utility model (c) That any drawing which is necessary for the understanding of the
registration shall expire, without invention has not been furnished;
any possibility of renewal, at the
end of the seventh year after the (d) That the owner of the utility model registration is not the inventor
date of the filing of the or his successor in title. (Secs. 55, 56, and 57, R.A. No. 165a)
application. Can you convert? Yes.

So parang useless, nag apply ka Section 110. Conversion of Patent Applications or Applications for
pa lang expired na. Utility Model Registration. - 110.1. At any time before the grant or
Grounds for cancellation: refusal of a patent, an applicant for a patent may, upon payment of
109.4. In proceedings under the prescribed fee, convert his application into an application for
Sections 61 to 64, the utility registration of a utility model, which shall be accorded the filing date
model registration shall be of the initial application. An application may be converted only once.
canceled on the following
grounds: 110.2. At any time before the grant or refusal of a utility model
o (a) That the claimed registration, an applicant for a utility model registration may, upon
invention does not qualify payment of the prescribed fee, convert his application into a patent
for registration as a utility application, which shall be accorded the filing date of the initial
model and does not meet application. (Sec. 58, R.A. No. 165a)
the requirements of
registrability, in particular
having regard to Subsection
109.1 and Sections 22, 23, From patent to utility model, any time before grant or refusal of
24 and 27; patent. If narefuse ang patent, change ka to Utility Model? No. It has
o (b) That the description and to be before.
the claims do not comply
with the prescribed If nagrant ang patent bakit mo pa palitan to utility model?
requirements;
o (c) That any drawing which UM to patent? Yes; again, before grant or refusal upon payment of
is necessary for the prescribed fee.
understanding of the
invention has not been If you convert from one to another, what is your filing date? It will be
furnished; the date of filing date of initial application. You do not lose your filing
o (d) That the owner of the date.
utility model registration is
not the inventor or his How many times can you convert? You can only convert once. You
successor in title. (Secs. 55, have to be very sure.
56, and 57, R.A. No. 165a)
Section 111. Prohibition against Filing of Parallel Applications. - An
applicant may not file two (2) applications for the same subject, one
CHAPTER XII for utility model registration and the other for the grant of a patent
REGISTRATION OF UTILITY MODELS whether simultaneously or consecutively. (Sec. 59, R.A. No. 165a)

108 and 109 are skipped. Can you file two applications? Paniguardo. You file an application for
Section 108. Applicability of Provisions Relating to Patents. - 108.1. UM and patent? No whether simultaneously or consecutively. In
Subject to Section 109, the provisions governing patents shall apply, other words, pag nadeny na ang application mo for patent di ka na
mutatis mutandis, to the registration of utility models. pwede magconvert and vice versa.

108.2. Where the right to a patent conflicts with the right to a utility
model registration in the case referred to in Section 29, the said
provision shall apply as if the word "patent" were replaced by the IPO PROCEDURE FOR APPLICATION UTILITY MODEL AND INDUSTRIAL
words "patent or utility model registration". (Sec. 55, R.A. No. 165a) DESIGN REGISTRATION PROCEDURE.

Section 109. Special Provisions Relating to Utility Models. - 109.1. (a)

An invention qualifies for registration as a utility model if it is new and
industrially applicable.

(b) Section 21, "Patentable Inventions", shall apply except the

reference to inventive step as a condition of protection.

109.2. Sections 43 to 49 shall not apply in the case of applications for

registration of a utility model.
~ 26 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 If a person is grantee of patent, he has exclusive right to
manufacture, he is protected by law.

Lastly, Janita Corp failed to prove that product was not novel.

If you notice under RA 165, it is very easy for UM. Powder puff and
tractor and now we have karaoke. Under the new law it is not that
simple. More strict about novelty right now.

Smith Kline v CA 1997

Cimetidine. Doctors filed for compulsory licensing for authorization

to manufacture its own brand for marketing. Petition was based on
Sec 34 RA 165, compulsory licensing of patent was after the
expiration of two years from grant.

Smith Kline:
- RA 165 does not comply Paris Convention because grounds
and period are different.
Whether RA 165 complies with Paries Convention. YES.

Article 5 Sec A: “for example” it does not preclude union members

to make grounds fit for compulsory license. So they can adopt
legislative measures.

Sec 34 of RA 165: The application is based on another ground not

failure to work. Grounds under 165 and 8293 are different.
FOR PATENT: Patent Application Flow Chart
Prescriptive period in new law 8293: our country conforms with
Paris Convention, from two years it was adjusted to four years.

Yes. Under RA 8293, failure to work is a ground na not only an

example. Hindi na example lang.

The right of IP right owner to his own invention. Put it this say. It is
not easy to test, you have to have big plan. This drug company should
at least be given ROI. There is a limit naman sa patent. Unlike
trademark na forever.

So you have seen two cases where IPO was very very lax in granting.

Manzano v CA

Manzano filed cancellation of letter of patent of LPG gas burner

registered under Madolaria. Not inventive, new, or useful. Been on
sale for more than 1 year before Madolaria filed application.

Manzano: affidavit alleging existence of prior art

- She had her own model of burner.

Director of Patents denied petition. Evidence did not show that

biurner was identical or substantially identical with UM of Madolaria.

Whether Letter of Patents should be cancelled bc not inventive. No.

Cases not discussed were recited in class: Sec 7 RA 165: invention of a new and useful machine shall be
patentable element of novelty is essential requisite.
Del Rosario v CA
When Mandolaria was issued a patent, it created a presumption in
Del Rosario was patentee of audio equipment and improved sing- her favour. Thus, the burden shifted to Manzano to present evidence
along system or karaoke. Miyata Karaoke was being produced by that the UM was not new. Here she failed to discharge that burden.
Janito Corporation. So DR filed complaint for patent infringement.
As you can see the requirement of novelty before was if it was
CA: Karaoke system was universal product, so not novel. No patent publicly known or used in this country or described in a printed
infringement. publication within the country.

ISSUE: Whether there is patent infringement. YES. But under RA 8293: Novelty: not part of prior art something that
has not been:
RA 165 Sec 55: recognizes two kinds of patent.
Section 24. Prior Art. - Prior art shall consist of:
Invented product here is patent for utility model because it did not
have inventive step. It was a practical model, so utility model. 24.1. Everything which has been made available to the
public anywhere in the world, before the filing date or the
Given that product by Janito has substantial similar features invented priority date of the application claiming the invention; and
by DR. So it qualifies as an act of infringement.

~ 27 ~
INTELLECTUAL PROPERTY LAW 2017-2018
Not limited to PH anymore. Gas burner, Powder puff, tractor. Not manufacture."
that strict. Difficult to search dati. There is a system na now as to
prior art. Layout is three-dimensional.

If you have application, that is already considered prior art.

Conditions for protection:

Creser v CA "SEC. 113. Substantive Conditions/or Protection. - 113.1. Only

industrial designs that are new or ornamental shall benefit from
Floro found: protection under this Act.
Creser has been submitting samples of its patented aerial fuze
(detonates explosives) to AFP and Creser has been plann9ing to id anf "113.2. Industrial designs dictated essentially by technical or
manufacture it. functional considerations to obtain a technical result or those that
Creser: filed injunction against Creser Intl. are contrary to public order, health or morals shall not be protected.
- Not something you use, just something you admire. No
Whether action for infringement may prosper functional consideration.

Sec 42 RA 165 only patentee possessing may file for civil action for "113.3. Only layout -designs of integrated circuits that are original
infringement. shall benefit from protection under this Act. A layout-design shall be
considered original if it is the result of its creator's own intellectual
Similarly worded under 8293 effort and is not commonplace among creators of layout-designs and
manufacturers of integrated circuits at the time of its creation.
Anyone possessing any right, title, or interest - Novelty: result of result of its creator's own intellectual
1. Patentees effort and is not commonplace among creators of layout-
2. Successors in interest designs and manufacturers of integrated circuits at the
3. Assignees or grantees time of its creation.
- Original: your own creation, not being used by other layout
Creser is not any of such. designers.

You cannot file action for infringement unless you are such. You must "113.4. A layout-design consisting of a combination of elements and
have patent first. Without patent, no infringement. No protection. interconnections that are commonplace shall be protected only if the
combination, taken as a whole, is original."
Kenneth Roy Savage v Taypin - Similar to derivative work. Copyright yan. We will discuss
Unfair competition pa to. Let’s go back to this pag unfair competition yan under copyright.

If you want to apply for registration, then that is under file for
Registration Request in Intellectual Property Satellite Office.

January 4, 2018 "SEC.114. Contents of the Application. - 114.1. Every application for
registration of an industrial design or layout-design shall contain:
INDUSTRIAL DESIGN
"(a) A request for registration of the industrial design or layout-
RA 9150 amended Section 112 design;

Not that complicated. Does not take that long. Registrant is also "(b) Information identifying the applicant;
protected. S&R gift boxes, you never know if it is protected.
"(c) An indication of the kind of article of manufacture or handicraft
In IPOPhil website, it is difficult to disseminate fact of registration. to which the industrial design or layout-design shall be applied;
Expired ones are posted on website, but honestly just wasted effort if
you go through process. "(d) A representation of the article of manufacture or handicraft by
way of drawings, photographs or adequate graphic representation of
"SEC. 112. Definition of Terms:" the industrial design or of the layout-design as applied to the article
of manufacture or handicraft which clearly and fully discloses those
"1. An Industrial Design is any composition of lines or colors or any features for which protection is claimed; and
three-dimensional form, whether or not associated with lines or
colors: Provided, That such composition or form gives a special "(e) The name and address of the creator, or where the applicant is
appearance to and can serve as pattern for an industrial product or not the creator, a statement indicating the origin of the right to the
handicraft; industrial design or layout-design registration.

Requirement that it be 3-dimensional form: length, width, breadth. "114.2. The application may be accompanied by a specimen of the
Mga cakes. Di ba? Anything that is new that is not part of prior art. article embodying the industrial design or layout-design and shall be
subject to the payment of the prescribed fee."
Integrated Circuit:
Back to IPC:
2. Integrated Circuit means a product, in its final form, or an
intermediate form, in which the elements, at least one of which is an Section 115. Several Industrial Designs in One Application. - Two (2)
active element and some or all of the interconnections are integrally or more industrial designs may be the subject of the same
formed in and/or on a piece of material, and which is intended to application: Provided, That they relate to the same sub-class of the
perform an electronic function; and International Classification or to the same set or composition of
articles. (n)

Layout Design:

3. Layout-Design is synonymous With 'Topography' and means the FILING DATE

three-dimensional disposition, however expressed, of the elements,
at least one of which is an active element, and of some or all of the "SEC.116. Examination. - 116.1. The Office shall accord as the filing
interconnections of an integrated circuit, or such a three-dimensional date the date of receipt of the application containing
disposition prepared for an integrated circuit intended for 1. indications allowing the identity of the applicant to be
~ 28 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 established renewals of registration.
2. and a representation of the article embodying the industrial
design or the layout -design or a pictorial representation
thereof.
LAYOUT DESIGN:
"116.2. If the application does not meet these requirements, the
filing date should be that date when all the elements specified in Sec. " 118.5. Registration of a layout-design shall be valid for a period
114 are filed or the mistakes corrected. Otherwise, if the often (10) years, without renewal, and such validity to be counted
requirements are not complied within the prescribed period, the from the date of commencement of the protection accorded to the
application shall be considered withdrawn. layout-design. The protection of a layout-design under this Act shall
commence:
"116.3. After the application has been accorded a filing date and the
required fees paid on time, the applicant shall comply with the "a) on the date of the first commercial exploitation, anywhere in the
requirements of Sec. 114 within the prescribed period, otherwise the world, of the layout-design by or with the consent of the right holder:
application shall be considered withdrawn. Provided, That an application for registration is filed with the
- To follow pa rin ang 114. The application will be considered Intellectual Property Office within two (2) years from such date of
withdrawn if hindi. first commercial exploitation; or

"116.4. The Office shall examine whether the industrial design or "b) on the filing date accorded to the application for the registration
layout-design complies with requirements of of the layout-design if the layout-design has not been previously
1. Sec. 112 (Definitions) and exploited commercially anywhere in the world."
2. Sec. 113 (Substantive Conditions for Protection)."
"SEC. 119. Application of Other Sections and Chapters. - 119.1. The
"SEC. 117, Registration. - 117.1. Where the Office finds that the following provisions relating to patents shall apply mutatis mutandis
conditions referred to in Sec. 113 are fulfilled, it shall order that to an industrial design registration.
registration be effected in the industrial design or layout-design
register and cause the issuance of an industrial design or layout- "SECTION21 - Novelty;
design certificate of registration; otherwise, it shall refuse the
application. "SECTION 24 - Prior art: Provided, That the disclosure is contained in
printed documents or in any tangible form;
- Just comply 112, 113, 114, and you will get your certificate
of registration. "SECTION 25 - Non-prejudicial Disclosure;

" 117.2. The form and contents of an industrial design or layout- "SECTION 28 - Right to a Patent;
design certificate shall be established by the Registrations: Provided,
That the name and address of the creator shall be mentioned in "SECTION 29 - First to File Rule;
every case.
"SECTION 30 - Inventions Created Pursuant to a Commission;
" 117.3. Registration shall be published in the form and within the
period fixed by the Regulations. "SECTION 31 - Right of Priority: Provided, That the application for
- Publication. Patents: Publication, publication of patent industrial design shall be filed within six (6) months from the earliest
- Here we only have one. Registration’s publication filing date of the corresponding foreign application;

" 117.4. The Office shall record in the register any change in the "SECTION 33 - Appointment of Agent or Representative;
identity of the proprietor of the industrial design or layout design or
his representative, if proof thereof is furnished to it. A fee shall be "SECTION 51 - Refusal of the Application;
paid, with the request to record the change in the identity of the
proprietor, if the fee is not paid, the request shall be deemed not to "SECTION 56 to 60 - Surrender, Correction of and Changes in Patent;
have been filed. In such case, the former proprietor and the former
representative shall remain subject to the rights and obligations as CHAPTER VII - Remedies of a Person with a Right to Patent;
provided in this Act.
- Change of identity of proprietor CHAPTER VIII - Rights of Patentees and Infringement of Patents; and
- Just read that
"CHAPTER XI - Assignment and Transmission of Rights
" 117.5. Anyone may inspect the Register and the files of registered
industrial designs or layout-designs including files of cancellation "119.2. If the essential elements of an industrial design which is the
proceedings." subject of an application have been obtained from the creation of
- Just like patent you can inspect another person without his consent, protection under this Chapter
cannot be invoked against the injured party.

LAYOUT DESIGN:
TERM OF INDUSTRIAL DESIGN
"119.3. The following provisions relating to patents shall apply
"SEC. 118. The Term of Industrial Design or Layout-Design mutatis mutandis to a layout -design of integrated circuits
Registration. - 118.1. The registration of an industrial design shall be registration:
for a period of five (5) years from the filing date of the application.
"SECTION 28 - Right to a Patent;
" 118.2. The registration of an industrial design may be renewed for
not more than two (2) consecutive periods of five (5) years each, by "SECTION 29 - First to File Rule;
paying the renewal fee.
"SECTION 30 - Inventions Created Pursuant to a Commission;
"118.3. The renewal fee shall be paid within twelve (12) months
preceding the expiration of the period of registration. However, a "SECTION 33 - Appointment of Agent or Representative;
grace period of six (6) months shall be granted for payment of the
fees after such expiration, upon payment of a surcharge. "SECTION 56 - Surrender of Patent;

"118.4. The Regulations shall fix the amount of renewal fee, the "SECTION 57 - Correction of Mistakes of the Office;
surcharge and other requirements regarding the recording of
~ 29 ~
INTELLECTUAL PROPERTY LAW 2017-2018
"SECTION 58 - Correction of Mistakes in the Application; the consent of the right holder;

"SECTION 59 - Changes in Patents; "(4) In respect of an integrated circuit where the person performing
or ordering such an act did not know and had no reasonable ground
"SECTION 60 - Form and Publication of Amendment; to know when acquiring the integrated circuit or the article
incorporating such an integrated circuit, that it incorporated an
"CHAPTER VII - Remedies of a Person with a Right to Patent; unlawfully reproduced layout-design: Provided, however, That after
the time that such person has received sufficient notice that the
"CHAPTER VIII - Rights of Patentees and Infringement of Patents: layout-design was unlawfully reproduced, that person may perform
Provided, That the layout-design rights and limitation of layout- any of the said acts only with respect to the stock on hand or ordered
design rights provided hereunder shall govern: before such time and shall be liable to pay to the right holder a sum
equivalent to at least 5% of net sales or such other reasonable royalty
"CHAPTER X - Compulsory Licensing; as would be payable under a freely negotiated license in respect of
such layout-design; or
"CHAPTER XI - Assignment and Transmission of Rights
Cancellation of Design Resignation

RIGHTS "SEC. 120. Cancellation of Design Registration. - 120.1. At any time

during the term of the industrial design registration, any person upon
"119.4. Rights Conferred to the Owner of a Layout-Design payment of the required fee, may petition the Director of Legal
Registration. - The owner of a layout-design registration shall enjoy Affairs to cancel the industrial design on any of the following
the following rights: grounds:

"(1) to reproduce, whether by incorporation in an integrated circuit "(a) If the subject matter of the industrial design is not registerable
or otherwise, the registered layout-design in its entirety or any part within the terms of Sections 112 and 113;
thereof, except the act of reproducing any part that does not comply
with the requirement of originality; and "(b) If the subject matter is not new; or "(c) If the subject matter of
the industrial design extends beyond the content of the applic.'1tion
"(2) to sell or otherwise distribute for commercial purposes the as originally filed.
registered layout design, an article or an integrated circuit in which
the registered layout-design is incorporated. "120.2. Where the grounds for cancellation relate to a part of the
industrial design, cancellation may be effected to such extent only.
The restriction may be effected in the form of an alteration of the
effected features of the design.
LIMITATIONS:

119.5. Limitations of Layout Rights. - The owner of a layout design Grounds for Cancellation
has no right to prevent third parties from reproducing, selling or
otherwise distributing for commercial purposes the registered layout- "120.3. Grounds for Cancellation of Layout-Design of Integrated
design in the following circumstances: Circuits.- Any interested person may petition that the registration of a
layout-design be cancelled on the ground that:
"(1) Reproduction of the registered layout-design for private
purposes or for the sole purpose of evaluation, analysis, research or "(i) the layout-design is not protectable under this Act;
teaching;
"(ii) the right holder is not entitled to protection under this Act; or
"(2) Where the act is performed in respect of a layout-design created
on the basis of such analysis or evaluation and which is itself original "(iii) where the application for registration of the layout-design, was
in the meaning as provided herein; not filed within two (2) years from its first commercial exploitation
anywhere in the world.
"(3) Where the act is performed in respect of a registered lay-out-
design, or in respect of an integrated circuit in which such a layout- "Where the grounds for cancellation are established with respect
design is incorporated, that has been put on the market by or with only to a part of the layout-design, only the corresponding part of the
the consent of the right holder; registration shall be cancelled.

"(4) In respect of an integrated circuit where the person performing "Any cancelled layout-design registration or part thereof, shall be
or ordering such an act did not know and had no reasonable ground regarded as null and void from the beginning and may be expunged
to know when acquiring the integrated circuit or the article from the records of the Intellectual Property Office. Reference to all
incorporating such an integrated circuit, that it incorporated an cancelled layout-design registration shall be published in the IPO
unlawfully reproduced layout-design: Provided, however, That after Gazette."
the time that such person has received sufficient notice that the
layout-design was unlawfully reproduced, that person may perform
any of the said acts only with respect to the stock on hand or ordered
before such time and shall be liable to pay to the right holder a sum
equivalent to at least 5% of net sales or such other reasonable royalty
as would be payable under a freely negotiated license in respect of LAYOUT DESIGN: REPORT
such layout-design; or
V Copyright Functionality
"(5) Where the act is performed in respect of an identical layout-
design which is original and has been created independently by a V Patent No novelty
third party."

IC have long been invented.

INTEGRATED CIRCUIT:
3. Layout-Design is synonymous With 'Topography' and means the
"(3) Where the act is performed in respect of a registered lay-out-
three-dimensional disposition, however expressed, of the elements,
design, or in respect of an integrated circuit in which such a layout-
at least one of which is an active element, and of some or all of the
design is incorporated, that has been put on the market by or with
~ 30 ~
INTELLECTUAL PROPERTY LAW 2017-2018
interconnections of an integrated circuit, or such a three-dimensional
disposition prepared for an integrated circuit intended for
manufacture."

3d map pf the surface of IC composed of:

1. Elements (at least one should be working) and

2. 2. Interconnections among them

Protected by: TRIPS agreement

Conditions:

"113.3. Only layout -designs of integrated circuits that are original

shall benefit from protection under this Act. A layout-design shall be
considered original if it is the result of its creator's own intellectual
effort and is not commonplace among creators of layout-designs and
manufacturers of integrated circuits at the time of its creation.
- Novelty: result of result of its creator's own intellectual
effort and is not commonplace among creators of layout-
designs and manufacturers of integrated circuits at the
time of its creation.
- Original: your own creation, not being used by other layout
designers.

"113.4. A layout-design consisting of a combination of elements and

interconnections that are commonplace shall be protected only if the
combination, taken as a whole, is original."
Similar to derivative work. Copyright yan. We will discuss yan under
copyright.

" 118.5. Registration of a layout-design shall be valid for a period

often (10) years, without renewal, and such validity to be counted
from the date of commencement of the protection accorded to the
layout-design. The protection of a layout-design under this Act shall
commence:

"a) on the date of the first commercial exploitation, anywhere in the

world, of the layout-design by or with the consent of the right holder:
Provided, That an application for registration is filed with the
Intellectual Property Office within two (2) years from such date of
first commercial exploitation; or

"b) on the filing date accorded to the application for the registration
of the layout-design if the layout-design has not been previously
exploited commercially anywhere in the world."

~ 31 ~
INTELLECTUAL PROPERTY LAW 2017-2018
TRADEMARK
Ideally, because these are registered trademarks, they should not be
copied, but if you look at your cases, McDonalds vs McJoy.
PART III
THE LAW ON TRADEMARKS, SERVICE MARKS AND TRADE NAMES
BQ What is the objective of the law in protecting trademark?
Next IP right is Trademark. From patents where we talked of
inventions, utility models, industrial design, we will now go to To give registered owners the full benefit accruing to them from the
Trademark. goodwill earned by them from the use of said registered trademark.
- You earn goodwill from that. If every person can copy that
Section 121. Definitions. - As used in Part III, the following terms have letter M sa burgers, wala na.
the following meanings:
A trademark is incorporeal property right entitled to be protected
121.1. "Trademark" means any visible sign capable of distinguishing against any illegal use of any person not its owner.
the goods (trademark) or services (service mark) of an enterprise and
shall include a stamped or marked container of goods; (Sec. 38, R.A.
No. 166a)
What cannot be registered?
Everywhere you go may trademark.
Go to Bureau of Trademark if you want to register. You cannot
121.2. "Collective mark" means any visible sign designated as such in register anything under the sun.
the application for registration and capable of distinguishing the
origin or any other common characteristic, including the quality of Section 123. Registrability. - 123.1. A mark cannot be registered if it:
goods or services of different enterprises which use the sign under
the control of the registered owner of the collective mark; (Sec. 40, (a) Consists of immoral, deceptive or scandalous matter, or matter
R.A. No. 166a) which may disparage or falsely suggest a connection with persons,
living or dead, institutions, beliefs, or national symbols, or bring them
Take note of that we will go that later. into contempt or disrepute;

But how about service mark? Service mark and trademark are (b) Consists of the flag or coat of arms or other insignia of the
actually the same, but… Philippines or any of its political subdivisions, or of any foreign nation,
or any simulation thereof;
Service mark Trademark
Services of an enterprise Goods of enterprise Say Sari-Sari Store gusto niya lagyan ng dot na colored red, pwede ba
So if it is a service provider, like a Trademark, on the other hand ‘yan? Pwede. Pero pwede ba niyang maregister? Hindi. From the
security agency, then you file a means any visible sign capable of onset, distinguish between using and registering. You can use, but
service mark. distinguishing the goods you cannot register. Make sure you know the distinction between the
(trademark) or services (service two.
mark) of an enterprise.
c) Consists of a name, portrait or signature:
121.3. "Trade name" means the name or designation identifying or 1. identifying a particular living individual except by his
distinguishing an enterprise; (Sec. 38, R.A. No. 166a) written consent,

2. or the name, signature, or portrait of a deceased

So what is Proctor and Gamble? Trade name. It is a name of company President of the Philippines, during the life of his widow, if
any, except by written consent of the widow;
that manufactures.
- Colgate: trademark, that is a sign capable of distinguishing
a good
- Palmolive: trademark THE MOST IMPORTANT PROVISIONS IN TRADEMARK: D E F.
More important than infringement.
San Miguel Corporation: trade name
Beer na Beer: trademark (d) Is identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in respect of:
So you have to know the difference of trade name and trade mark.
(i) The same goods or services, or
121.4. "Bureau" means the Bureau of Trademarks;
(ii) Closely related goods or services, or
121.5. "Director" means the Director of Trademarks;
- You have to look at NICE classification.
121.6. "Regulations" means the Rules of Practice in Trademarks and
Service Marks formulated by the Director of Trademarks and (iii) If it nearly resembles such a mark as to be likely to deceive or
approved by the Director General; and cause confusion;

121.7. "Examiner" means the trademark examiner. (Sec. 38, R.A. No. Identical or nearly resembles. Say there is a trademark (star sign) and
166a) it is registered for electric fans. Registered under the name of X. So
say Y wants to register exactly the same mark, identical, for ELECTRIC
FANS, di yan pwede. That is identical.
How do you acquire?
What is this nearly resembles?
Section 122. How Marks are Acquired. - The rights in a mark shall be Say there is trademark, but not exactly the same. Y registers it for
acquired through registration made validly in accordance with the electric fans, di pwede. Y registers for nail polish, pwede.
provisions of this law. (Sec. 2-A, R A. No. 166a)
(e) Is identical with, or confusingly similar to, or constitutes a
Atty. Suarez shows trademarks. When you see ® that means it is translation of a mark which is considered by the competent authority
registered. (class: oooohhh) of the Philippines to be well-known internationally and in the
Philippines,
Nike: the check and name, the font used and it is a bit italicized, and
- whether or not it is registered here, as being already the
although no ®, that is still a registered trademark.
~ 32 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 mark of a person other than the applicant for registration, known
- and used for identical or similar goods or services:

Provided, That in determining whether a mark is well-known, account

shall be taken of the knowledge of the relevant sector of the public, What else aside from D, E, AND F?
rather than of the public at large, including knowledge in the
Philippines which has been obtained as a result of the promotion of (g) Is likely to mislead the public, particularly as to the nature, quality,
the mark; characteristics or geographical origin of the goods or services;
- Can you use Wellington Shirts? Bahala ka, pero you cannot
register. It will mislead the public that the shirt comes from
Here, do NOT think of WON it is NOT registered. Wellington, New Zeland.

There is internationally well-known mark. Harvard. That Veritas seal.

Bobbi Brown. Bobbi and there is a way of writing it. Z wants to Heng and Dee v Chua
register Babee Brawng for makeup. Bobby Brown is not registered
here. Can Z register Babee Brawng? No. Bc it is identical with, or Heng and Dee are in the business of manufacturing clothes. They
confusingly similar to, or constitutes a translation of a mark which is registered Wellington for their products. They registered earlier than
considered by the competent authority of the Philippines to be well- Chua who also wanted to register “Wellington”.
known internationally and in the Philippines.
In relation to registration, the issue is whether Wellington can be
But if he wants to register it with slippers, pwede. registered. No.

What do you mean to be well-known internationally and in the “Wellington” is both geographical name (capital of New Zealand) and
Philippines… surname of a person. Thus, it cannot be registered.

- If you go to Marilog, they don’t know that. But they are not SC: Being geographical and surname, they cannot be registered as
the relevant sector. Here in class, the women know. But trade name.
that is not the only factor. That is not enough. - Geographical names are ordinarily regarded as common
- It must be determined by competent authority. property. As a general rule, they cannot be subject to
trademark or trade name.
account shall be taken of the knowledge of the relevant sector of the - Surname: Many persons can have the surname of
public, rather than of the public at large, including knowledge in the Wellington.
Philippines which has been obtained as a result of the promotion of
the mark;
(h) Consists exclusively of signs that are generic for the goods or
- A competent authority must determine whether mark is services that they seek to identify;
internationally well-known - Generic. Apple. It does not identify a fruit but something
else. If you use something generic, what is that case?
Verbena?
(f) Is identical with, or confusingly similar to, or constitutes a
translation of a mark considered well-known in accordance with the
preceding paragraph, which is registered in the Philippines with
respect to goods or services which are not similar to those with respect East Pacific Merchandising v. Dir. Of Patents
to which registration is applied for: Provided,
1947: Pua applied for registration of composite trademark consisting
That use of the mark in relation to those goods or services would of Verbena (and representation of Spanish lady (picture of Spanish
indicate a connection between those goods or services, and the owner lady was common back then)
of the registered mark: - He alleged that he has been using it since 1947 for his
merchandise for face powder.
Provided further, That the interests of the owner of the registered - He assigned his rights to East Pacific Merchandising.
mark are likely to be damaged by such use; - East’s application was approved.

F talks of internationally known marks registered here. Mcdonald’s is Pellicer opposed.

registered here. If gawa ka ng welding machine with M na trademark, - He had “Lupel Verbena” for fumes registered already.
di yan pwede. Kahit anong good or services man yan, YOU CANNOT - He contended: Picture of lady is common trade. Verbena is
register that mark. genus name of flower. It cannot be exclusively
appropriated or registered.
Provided that use of the mark in relation to those goods or services
would indicate a connection between those goods or services, and the Director of Patents: denied registration.
interest of the owner of the registered mark will likely to be damaged. - Verbena was generally descriptive of products and the
representation of Spanish lady was common in trade.

Whether Verbena is registerable. NO.

YOU HAVE TO MASTER D, E, AND F. Memorize! Memorize!
Verbena is descriptive of whole genus of garden plants with fragrant
SUMMARY flowers. The use of it in connection of cosmetic products evokes the
idea that the products are perfumed with extract of verbena flowers.

Local Not internationally you can use Mang Thus, generic. They cannot register.
well-known Inasal for slippers,
yes. You can Generic must be in connection with productgeneric for the goods or
register. services that they seek to identify;
Pag internationally not registered identical and similar
well-known goods This case involves fumes, it is related to cosmetics. If thermos, there
Pag different, is a problem in registering.
pwede.
Pero pag at registered registration is not
internationally well- allowed. (i) Consists exclusively of signs or of indications that have become
~ 33 ~
INTELLECTUAL PROPERTY LAW 2017-2018
customary or usual to designate the goods or services in everyday (b) The name and address of the applicant;
language or in bona fide and established trade practice;
- Signs or indications (c) The name of a State of which the applicant is a national or where
he has domicile; and the name of a State in which the applicant has a
(j) Consists exclusively of signs or of indications that may serve in real and effective industrial or commercial establishment, if any;
trade to designate the kind, quality, quantity, intended purpose, value,
geographical origin, time or production of the goods or rendering of (d) Where the applicant is a juridical entity, the law under which it is
the services, or other characteristics of the goods or services; organized and existing;
- Just a repetition.
(e) The appointment of an agent or representative, if the applicant is
(k) Consists of shapes that may be necessitated by technical factors or not domiciled in the Philippines;
by the nature of the goods themselves or factors that affect their
intrinsic value; (f) Where the applicant claims the priority of an earlier application, an
- shapes relating to goods. indication of:

(l) Consists of color alone, unless defined by a given form; or i) The name of the State with whose national office the earlier
- There are so many brands na may color. Blue Taxi. Idk if application was filed or if filed with an office other than a national
that is registered. But you cannot register Pink. office, the name of that office,

(m) Is contrary to public order or morality. ii) The date on which the earlier application was filed, and
- People having sex.
iii) Where available, the application number of the earlier application;

(g) Where the applicant claims color as a distinctive feature of the

mark, a statement to that effect as well as the name or names of the
January 18, 2018 color or colors claimed and an indication, in respect of each color, of
the principal parts of the mark which are in that color;
Doctrine of Secondary meaning:
1. word or phrase originally incapable of exclusive (h) Where the mark is a three-dimensional mark, a statement to that
appropriation effect;
a. with reference to an article on the market,
because it is geographical or otherwise (i) One or more reproductions of the mark, as prescribed in the
descriptive, Regulations;
2. may nevertheless be used exclusively by one producer with
reference to his article (j) A transliteration or translation of the mark or of some parts of the
a. so long as in that trade and to that branch of the mark, as prescribed in the Regulations;
purchasing public, the word or phrase has come
to mean that the article was his product. (k) The names of the goods or services for which the registration is
sought, grouped according to the classes of the Nice Classification,
Requisites to entitle use to have mark or name registered under together with the number of the class of the said Classification to
doctrine: which each group of goods or services belongs; and
1. Geographical or otherwise descriptive
2. Used for so long and so exclusively. (l) A signature by, or other self-identification of, the applicant or his
representative.

123.2. As regards signs or devices mentioned in paragraphs (j), (k), 124.2. The applicant or the registrant shall file a declaration of actual
and (l), nothing shall prevent the registration of any such sign or use of the mark with evidence to that effect, as prescribed by the
device which has become distinctive in relation to the goods for which Regulations within three (3) years from the filing date of the
registration is requested as a result of the use that have been made of application. Otherwise, the application shall be refused or the mark
it in commerce in the Philippines. shall be removed from the Register by the Director.

The Office may accept as prima facie evidence that the mark has Under RA 166, the requirement for trademark is prior use. We have
become distinctive, as used in connection with the applicant's goods cases for that. Prior use.
or services in commerce, proof of substantially exclusive and
continuous use thereof by the applicant in commerce in the But this requirement has already been removed. The requirement is
Philippines for five (5) years before the date on which the claim of you use your trademark for the goods to which it is attached. Use it
distinctiveness is made. and you have to prove usage within three (3) years from the filing
date of the application.
- Under the provision, if there is exclusive proof of
substantial use for five years commerce in the Philippines Can you use trademark even if not registered? Of course. But you
for five (5) years even if the sign cannot be registered cannot stop other people from copying because it is not registered.
under JKL, the BOT cannot refuse. You can use it before applying and during application. But you HAVE
to use it after your application. Otherwise it will be removed.
123.3. The nature of the goods to which the mark is applied will not
constitute an obstacle to registration. (Sec. 4, R.A. No. 166a) 124.3. One (1) application may relate to several goods and/or
services, whether they belong to one (1) class or to several classes of
We know that immoral words cannot be registered, but if you the Nice Classification.
register something decent, pero ang good mo pala ay violator, would
that be an obstacle to registration? No. Walang pakealam ang BOT 124.4. If during the examination of the application, the Office finds
niyan. Huwag lang drugs. factual basis to reasonably doubt the veracity of any indication or
element in the application, it may require the applicant to submit
sufficient evidence to remove the doubt. (Sec. 5, R.A. No. 166a)
Section 124. Requirements of Application. - 124.1. The application for
the registration of the mark shall be in Filipino or in English and shall You have a trademark X. Can you attach it to cars, then to slippers,
contain the following: then to paints, then to makeup? Iba-iba. Pwede.
You can put all goods there. But that is very risky. Just make sure you
(a) A request for registration; know the goods you are going to attach in your trademark. They do
not have to be in the same category as that in the Nice Classification.
~ 34 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 (a) A hand-written signature; or
Section 125. Representation; Address for Service. - If the applicant is
not domiciled or has no real and effective commercial establishment (b) The use of other forms of signature, such as a printed or stamped
in the Philippines, he shall designate by a written document filed in signature, or the use of a seal instead of a hand-written signature:
the Office, the name and address of a Philippine resident who may be Provided, That where a seal is used, it should be accompanied by an
served notices or process in proceedings affecting the mark. Such indication in letters of the name of the signatory.
notices or services may be served upon the person so designated by
leaving a copy thereof at the address specified in the last designation 130.2. The Office shall accept communications to it by telecopier, or
filed. If the person so designated cannot be found at the address by electronic means subject to the conditions or requirements that
given in the last designation, such notice or process may be served will be prescribed by the Regulations. When communications are
upon the Director. (Sec. 3, R.A. No. 166a) made by telefacsimile, the reproduction of the signature, or the
reproduction of the seal together with, where required, the
Section 126. Disclaimers. - The Office may allow or require the indication in letters of the name of the natural person whose seal is
applicant to disclaim an unregistrable component of an otherwise used, appears. The original communications must be received by the
registrable mark but such disclaimer shall not prejudice or affect the Office within thirty (30) days from date of receipt of the telefacsimile.
applicant's or owner's rights then existing or thereafter arising in the
disclaimed matter, nor such shall disclaimer prejudice or affect the Can you file from telefax? Yes. You just have to scan the signed
applicant's or owner's right on another application of later date if the document. But that does not mean you are not going to send the
disclaimed matter became distinctive of the applicant's or owner's original.
goods, business or services. (Sec. 13, R.A. No. 166a)
If you do that in your application, you get your filing date.
What is a disclaimer? When you apply for registration, you have a
claim for this trademark for this particular of goods. What if there is a 130.3. No attestation, notarization, authentication, legalization or
part of your drawing na hindi registerable? You just disclaim that. It other certification of any signature or other means of self-
should not affect your rights. Very interesting. Nor shall it affect your identification referred to in the preceding paragraphs, will be
rights to another application. required, except, where the signature concerns the surrender of a
registration. (n)
What if the disclaimed matter is against public morality? It cannot
registered under 123 but you use it just the same. Then after five You don’t have to notarize your registration, except, where the
years it has become distinctive na of your goods and services. You signature concerns the surrender of a registration.
can file na under Doctrine of Secondary Meaning.
Section 131. Priority Right. - 131.1. An application for registration of a
Section 127. Filing Date. - 127.1. Requirements. - The filing date of an mark filed in the Philippines by a person referred to in Section 3, and
application shall be the date on which the Office received the who previously duly filed an application for registration of the same
following indications and elements in English or Filipino: mark in one of those countries, shall be considered as filed as of the
day the application was first filed in the foreign country.
(a) An express or implicit indication that the registration of a mark is
sought; There is a difference between Patents and Trademark. This refers to
priority date.
(b) The identity of the applicant;
For patent, you have to have a pending application in another
(c) Indications sufficient to contact the applicant or his country. It does not have to be a patent registered. Pending
representative, if any; application is enough and then you submit all that proof.

(d) A reproduction of the mark whose registration is sought; and For trademark,

(e) The list of the goods or services for which the registration is 131.2. No registration of a mark in the Philippines by a person
sought. described in this section shall be granted until such mark has been
registered in the country of origin of the applicant.
That is the minimum in order to get your filing date.
So for patent, pending application you get an earlier priority date.
127.2. No filing date shall be accorded until the required fee is paid.
(n) But if you want to apply for Trademark in Philippines and somebody
filed before you or maybe nobody used that before you, you will not
have that registered here, unless you have another registered in
Section 128. Single Registration for Goods and/or Services. - Where another country.
goods and/or services belonging to several classes of the Nice
Classification have been included in one (1) application, such an So kailangan mo ng registered mark.
application shall result in one registration. (n)
It’s not necessary na you get a priority date, you already have a
Yes. If you have one mark and you attach different goods and registered mark. But to get a registered trademark of a mark that was
categories from NICE classification, that is still considered one already applied for in another country, you must get your registration
registration. there to be able to get your registration here.

Section 129. Division of Application. - Any application referring to So what for? Because if you have application in another country, they
several goods or services, hereafter referred to as the "initial will look for your registration pa there.
application," may be divided by the applicant into two (2) or more
applications, hereafter referred to as the "divisional applications," by 131.3. Nothing in this section shall entitle the owner of a registration
distributing among the latter the goods or services referred to in the granted under this section to sue for acts committed prior to the date
initial application. The divisional applications shall preserve the filing on which his mark was registered in this country: Provided, That,
date of the initial application or the benefit of the right of priority. (n) notwithstanding the foregoing, the owner of a well-known mark as
defined in Section 123.1(e) of this Act, that is not registered in the
What if attached to your trademark 500 goods? You can do so and Philippines, may, against an identical or confusingly similar mark,
you will retain your original filing date. oppose its registration, or petition the cancellation of its registration
or sue for unfair competition, without prejudice to availing himself of
Section 130. Signature and Other Means of Self-Identification. - other remedies provided for under the law.
130.1. Where a signature is required, the Office shall accept:

~ 35 ~
INTELLECTUAL PROPERTY LAW 2017-2018
For patents, once you have your publication published, you can
already sue for acts committed. There is already a cause of action The applicant shall have a period of four (4) months in which to reply
after publication but you can only file it after frant of patent. or amend his application, which shall then be re-examined. The
Regulations shall determine the procedure for the re-examination or
For trademark, you can only sue after registration is granted. So if revival of an application as well as the appeal to the Director of
you use your trademark and exposes it to the whole world and Trademarks from any final action by the Examiner.
somebody copies it, you cannot sue.
Like in civil case, you can amend so you can comply with
What about a well-known mark? requirements of registration. Who denies? Trademark examiner. You
are not happy? Appeal with Director of Trademarks.
Atty. Suarez reads a news clipping she has. It’s about this guy
registering well-known brands before they even come here to PH. 133.4. An abandoned application may be revived as a pending
application within three (3) months from the date of abandonment,
Forever 21. That is a well-known mark. Say it was not yet registered upon good cause shown and the payment of the required fee.
here. Say it was from Chong’s Forever21. Tapos dumating ang F21.
What can it do? It can oppose registration, petition for cancellation or 133.5. The final decision of refusal of the Director of Trademarks shall
unfair competition even if it was not registered here. be appealable to the Director General in accordance with the
procedure fixed by the Regulations. (Sec. 7, R.A. No. 166a)
So that is an exception.
You already know that. Examiner Director of Trademarks DG
To sue for infringement you must be registered here. If you are not
registered here, can you sue for infringement? No. You can only Section 134. Opposition. - Any person who believes that he would be
oppose, petition for cancellation or sue for unfair competition. The damaged by the registration of a mark may, upon payment of the
requirement there is registration. required fee and within thirty (30) days after the publication referred
to in Subsection 133.2, file with the Office an opposition to the
Atty. Suarez reads another news clipping about Cesar Gaupo. He application.
wanted to have his name registered, but there was already five
existing applications using the name of Gaupo. - Esp if mark is your face or name, then you can file within
thirty (30) days after the publication
Same man who applied who applied for Gaupo’s name applied for 27 - So file it in BLA
more applications. Among them are PEOPLE ARE PEOPLE, Sanu,
Raffi’s, Muji, etc. Such opposition shall be:
- in writing
131.4 was skipped. - and verified by the oppositor or by any person on his behalf
who knows the facts,
131.4. In like manner and subject to the same conditions and - and shall specify the grounds on which it is based and
requirements, the right provided in this section may be based upon a include a statement of the facts relied upon.
subsequent regularly filed application in the same foreign country:
Provided, That any foreign application filed prior to such subsequent Copies of certificates of registration of marks registered in other
application has been withdrawn, abandoned, or otherwise disposed countries or other supporting documents mentioned in the
of, without having been laid open to public inspection and without opposition shall be filed therewith, together with the translation in
leaving any rights outstanding, and has not served, nor thereafter English, if not in the English language. For good cause shown and
shall serve, as a basis for claiming a right of priority. (Sec. 37, R.A. No. upon payment of the required surcharge, the time for filing an
166a) opposition may be extended by the Director of Legal Affairs, who
shall notify the applicant of such extension. The Regulations shall fix
Section 132. Application Number and Filing Date. - 132.1. The Office the maximum period of time within which to file the opposition. (Sec.
shall examine whether the application satisfies the requirements for 8, R.A. No. 165a)
the grant of a filing date as provided in Section 127 and Regulations
relating thereto. If the application does not satisfy the filing So that is opposition. If you file it, that is the process.
requirements, the Office shall notify the applicant who shall within a
period fixed by the Regulations complete or correct the application as Section 135. Notice and Hearing. - Upon the filing of an opposition,
required, otherwise, the application shall be considered withdrawn. the Office shall serve notice of the filing on the applicant, and of the
date of the hearing thereof upon the applicant and the oppositor and
132.2 Once an application meets the filing requirements of Section all other persons having any right, title or interest in the mark
127, it shall be numbered in the sequential order, and the applicant covered by the application, as appear of record in the Office. (Sec. 9,
shall be informed of the application number and the filing date of the R.A. No. 165)
application will be deemed to have been abandoned. (n)
This is the procedure for opposition. Section 135. Notice and hearing
Once the requirements are submitted, the next step is examination. shall take place after opposition is filed.
Is that mark registerable or not?
Section 136. Issuance and Publication of Certificate. - When the
Section 133. Examination and Publication. - 133.1. Once the period for filing the opposition has expired, or when the Director of
application meets the filing requirements of Section 127, the Office Legal Affairs shall have denied the opposition, the Office upon
shall examine whether the application meets the requirements of payment of the required fee, shall issue the certificate of registration.
Section 124 and the mark as defined in Section 121 is registrable Upon issuance of a certificate of registration, notice thereof making
under Section 123. reference to the publication of the application shall be published in
the IPO Gazette. (Sec. 10, R.A. No. 165)
133.2. Where the Office finds that the conditions referred to in
Subsection 133.1 are fulfilled, it shall upon payment of the prescribed Section 137. Registration of Mark and Issuance of a Certificate to the
fee, forthwith cause the application, as filed, to be published in the Owner or his Assignee. - 137.1. The Office shall maintain a Register in
prescribed manner. which shall be registered marks, numbered in the order of their
registration, and all transactions in respect of each mark, required to
After examining the mark and conditions are fulfilled, then that is the be recorded by virtue of this law.
time you pay the fee.
137.2. The registration of a mark shall include a reproduction of the
133.3. If after the examination, the applicant is not entitled to mark and shall mention: its number; the name and address of the
registration for any reason, the Office shall advise the applicant registered owner and, if the registered owner's address is outside the
thereof and the reasons therefor.
~ 36 ~
INTELLECTUAL PROPERTY LAW 2017-2018
country, his address for service within the country; the dates of 139.1. The Office shall publish, in the form and within the period
application and registration; if priority is claimed, an indication of this fixed by the Regulations, the marks registered, in the order of their
fact, and the number, date and country of the application, basis of registration, reproducing all the particulars referred to in Subsection
the priority claims; the list of goods or services in respect of which 137.2.
registration has been granted, with the indication of the
corresponding class or classes; and such other data as the 139.2. Marks registered at the Office may be inspected free of charge
Regulations may prescribe from time to time. and any person may obtain copies thereof at his own expense. This
provision shall also be applicable to transactions recorded in respect
So the certificate issued has a lot of information. Everything that has of any registered mark. (n)
to do with trademark, goods, class of goods, etc.
Section 140. Cancellation upon Application by Registrant;
137.3. A certificate of registration of a mark may be issued to the Amendment or Disclaimer of Registration. - Upon application of the
assignee of the applicant: Provided, That the assignment is recorded registrant, the Office may permit any registration to be surrendered
in the Office. In case of a change of ownership, the Office shall at the for cancellation, and upon cancellation the appropriate entry shall be
written request signed by the owner, or his representative, or by the made in the records of the Office. Upon application of the registrant
new owner, or his representative and upon a proper showing and the and payment of the prescribed fee, the Office for good cause may
payment of the prescribed fee, issue to such assignee a new permit any registration to be amended or to be disclaimed in part:
certificate of registration of the said mark in the name of such Provided, That the amendment or disclaimer does not alter
assignee, and for the unexpired part of the original period. materially the character of the mark. Appropriate entry shall be made
in the records of the Office upon the certificate of registration or, if
So of course trademark is an intellectual creation owned by creator. said certificate is lost or destroyed, upon a certified copy thereof
Owner has the right to dispose, one of which is to assign trademark (Sec. 14, R.A. No. 166)
so long as assignment is also registered with IPO.
So this is a cancellation made by the owner, registered owner of the
137.4. The Office shall record any change of address, or address for mark. He can also have his mark cancelled.
service, which shall be notified to it by the registered owner.
He just goes there, what office? It does not say. Office means IPO,
137.5. In the absence of any provision to the contrary in this Act, maybe that should be BLA or BOT. We’ll see later.
communications to be made to the registered owner by virtue of this
Act shall be sent to him at his last recorded address and, at the same, And then aside from cancellation, he can make a disclaimer or
at his last recorded address for service. (Sec. 19, R.A. No. 166a) amendment. This does not mean that his mark will be cancelled.
Amend lang a portion of that.
Section 138. Certificates of Registration. - A certificate of registration
of a mark shall be prima facie evidence of Section 141. Sealed and Certified Copies as Evidence. - Copies of any
1. the validity of the registration, records, books, papers, or drawings belonging to the Office relating
2. the registrant's ownership of the mark, to marks, and copies of registrations, when authenticated by the seal
3. and of the registrant's exclusive right to use the same in of the Office and certified by the Director of the Administrative,
connection with the goods or services and those that are Financial and Human Resource Development Service Bureau or in his
related thereto specified in the certificate. (Sec. 20, R.A. name by an employee of the Office duly authorized by said Director,
No. 165) shall be evidence in all cases wherein the originals would be
evidence; and any person who applies and pays the prescribed fee
Once you have that certificate, there shall be prima facie evidence of shall secure such copies. (n)
ownership. But you’ll see in cases, prima facie lang yan. It can be
debunked by proof to the contrary. What is the significance? Evidence. Best-evidence rule. Best evidence
is the original. A photocopy is not acceptable.

Say lawyer presents photocopy of document. Opposing party can

object to admission of photocopy because of violation of best
evidence rule.

GR: Only the original document

What do you mean original? can it be a photocopy? Yes. When you

print out, you sign it after you photocopy. All of those are originals so
long as the signature is original.

But if you sign and photocopy wala na yan.

Copies of any record belonging to IPO relating to marks etc belong to

the IPO.
- He cannot get original. You need to present this particular
document tapos the original of which is in IPO, di mo
pwede hiramin yan.
- You have to have your copy. Have it authenticated. Seal by
Director of Human Something Bureau. It shall be evidence
in all cases wherein the originals would be evidence.
o Kunwari lawyer ka na. You present authenticated
and certified photocopy from IPO. Sabihin na
opposition kesyo “Best Evidence Rule”, you can
argue back na this is an exception to the best
evidence rule so long as authenticated and
certified photocopy.

Section 142. Correction of Mistakes Made by the Office. - Whenever

a material mistake in a registration incurred through the fault of the
Office is clearly disclosed by the records of the Office, a certificate
stating the fact and nature of such mistake shall be issued without
Section 139. Publication of Registered Marks; Inspection of Register. - charge, recorded and a printed copy thereof shall be attached to
~ 37 ~
INTELLECTUAL PROPERTY LAW 2017-2018
each printed copy of the registration. Such corrected registration But certificate of registration, once issued shall remain in force for 10
shall thereafter have the same effect as the original certificate; or in years.
the discretion of the Director of the Administrative, Financial and
Human Resource Development Service Bureau a new certificate of From issuance, 10 years.
registration may be issued without charge. All certificates of
correction heretofore issued in accordance with the Regulations and What requirement? File declaration of actual use.
the registration to which they are attached shall have the same force
and effect as if such certificates and their issuance had been What is one reason or another, owner cannot use? Show valid
authorized by this Act. (n) reasons based on the existence of obstacles. The valid reasons if he
cannot file declaration of actual, he must file within one (1) year from
This always happens. Have you ever gone to civil registrar kasi mali the fifth anniversary of the date of the registration of the mark.
ang spelling? Ako I had to have my birth certificate corrected as to
the spelling of my name. So on the 6th year.

Kasalanan ng government employee, who will suffer? Holder of birth If you don’t do so, it shall be removed from Register.
certificate. Mabuti ngayon may administrative. But if you are
changing your family name and gender, iba. Section 146. Renewal. - 146.1. A certificate of registration may be
renewed for periods of ten (10) years at its expiration upon payment
(Atty. Suarez narrates of her story re: pro bono case she had about of the prescribed fee and upon filing of a request. The request shall
her client wanting to get married, but the gender appearing in his contain the following indications:
birth certificate was ‘female’)
(a) An indication that renewal is sought;
Dito simpler under 142. You just go to office and disclose the error
and they will rectify. (b) The name and address of the registrant or his successor-in-
interest, hereafter referred to as the "right holder";
Administrative, Financial and Human Resource Development Service
Bureau is very important. They make those certifications. (c) The registration number of the registration concerned;

What about mistakes made by applicant? (d) The filing date of the application which resulted in the registration
concerned to be renewed;
Section 143. Correction of Mistakes Made by Applicant. - Whenever a
mistake is made in a registration and such mistake occurred in good (e) Where the right holder has a representative, the name and
faith through the fault of the applicant, the Office may issue a address of that representative;
certificate upon the payment of the prescribed fee: Provided, That
the correction does not involve any change in the registration that (f) The names of the recorded goods or services for which the
requires republication of the mark. (n) renewal is requested or the names of the recorded goods or services
for which the renewal is not requested, grouped according to the
So even if mistake by applicant, still not that difficult. You can still go classes of the Nice Classification to which that group of goods or
to IPO. services belongs and presented in the order of the classes of the said
Classification; and
Section 144. Classification of Goods and Services. - 144.1. Each
registration, and any publication of the Office which concerns an (g) A signature by the right holder or his representative.
application or registration effected by the Office shall indicate the
goods or services by their names, grouped according to the classes of So unlike patent--that cannot be renewed--trademark registration
the Nice Classification, and each group shall be preceded by the can be renewed. It can have protection forever so long as you keep
number of the class of that Classification to which that group of renewing every 10 years.
goods or services belongs, presented in the order of the classes of
the said Classification. 146.2. Such request shall be in Filipino or English and may be made at
any time within six (6) months before the expiration of the period for
That is for the public to know to which good is trademark attached. which the registration was issued or renewed, or it may be made
within six (6) months after such expiration on payment of the
144.2. Goods or services may not be considered as being similar or additional fee herein prescribed.
dissimilar to each other on the ground that, in any registration or
publication by the Office, they appear in different classes of the Nice There times when IPO can refuse renewal.
Classification. (Sec. 6, R.A. No. 166a)
146.3. If the Office refuses to renew the registration, it shall notify
NICE classification is only for registration purposes. It is not the basis the registrant of his refusal and the reasons therefor.
to determine WON goods are similar. If there is opposition case or
infringement case o ano. 146.4. An applicant for renewal not domiciled in the Philippines shall
be subject to and comply with the requirements of this Act. (Sec. 15,
The goods can be under the same classification pero they are not R.A. No. 166a)
similar. Or they are under different classification, pero they are
similar.
So now on to 147.
Who will determine similarity? The court, not NICE classification.
What are your rights? 9502 Cheaper Medicines Act:
Section 145. Duration. - A certificate of registration shall remain in
force for ten (10) years: Provided, That the registrant shall file a "SEC. 147. Rights Conferred. - 147.1. Except in cases of importation of
declaration of actual use and evidence to that effect, or shall show drugs and medicines allowed under Section 72.1 of this Act and of
valid reasons based on the existence of obstacles to such use, as off-patent drugs and medicines, the owner of a registered mark shall
prescribed by the Regulations, within one (1) year from the fifth have the exclusive right to prevent all third parties not having the
anniversary of the date of the registration of the mark. Otherwise, owner's consent from using in the course of trade identical or similar
the mark shall be removed from the Register by the Office. (Sec. 12, signs or containers for goods or services which are identical or similar
R.A. No. 166a) to those in respect of which the trademark is registered where such
use would result in a likelihood of confusion.
After publication, after 3 years, applicant must show that trademark
is being used—actual use. That is 3 years after filing. In case of the use of an identical sign for identical goods or services, a
likelihood of confusion shall be presumed.
~ 38 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 in Subsection 123.1(e) which is registered in the Philippines, shall
"There shall be no infringement of trademarks or tradenames of extend to goods and services which are not similar to those in respect
imported or sold patented drugs and medicines allowed under Section of which the mark is registered: Provided, That use of that mark in
72.1 of this Act, as well as imported or sold off-patent drugs and relation to those goods or services would indicate a connection
medicines: Provided, That, said drugs and medicines bear the between those goods or services and the owner of the registered
registered marks that have not been tampered, unlawfully modified, mark: Provided further, That the interests of the owner of the
or infringed upon, under Section 155 of this Code. registered mark are likely to be damaged by such use. (n)

So 99.99% of the time, patented drugs also have trademark, the Section 148. Use of Indications by Third Parties for Purposes Other
name of the drugs. Like the drugs we discussed with SmithKline. than those for which the Mark is Used. - Registration of the mark
shall not confer on the registered owner the right to preclude third
So anyway. A. They already know na under Cheaper Medicines Act, parties from using bona fide their names, addresses, pseudonyms, a
there is no infringement of patent if one imports. If drug, geographical name, or exact indications concerning the kind, quality,
importation is now allowed. Like what we’ve seen sa case of Roma quantity, destination, value, place of origin, or time of production or
Drug. of supply, of their goods or services: Provided, That such use is
confined to the purposes of mere identification or information and
So it’s the same for trademarks. If there is a trademark, like A. What cannot mislead the public as to the source of the goods or services.
are the owners of registered marks? (n)

- the owner of a registered mark shall have the exclusive Registered trademark owner has the exclusive right to use. Others
right to prevent all third parties not having the owner's who use for similar goods or services shall be liable for infringement.
consent from using in the course of trade identical or
similar signs or containers for goods or services which are However, 148 says that if you are registered owner, like the
identical or similar to those in respect of which the registered owner of the name of Cesar Gaupo, can he prevent Gaupo
trademark is registered where such use would result in a from using his own name? No. Provided that such use is confined to
likelihood of confusion. the purposes of mere identification or information and cannot
mislead the public as to the source of the goods or services.
The act of importation. If you import A, you also import the
trademarked drug A. And you are selling it. Can application and registration be assigned? Yes.

Can you be violating Sec 147? The prohibition as to patents and Section 149. Assignment and Transfer of Application and Registration.
prohibition under 147? No. It’s because of Cheaper Medicines Act. - 149.1. An application for registration of a mark, or its registration,
Other than medicines and drugs, all of these acts under sec 147 are may be assigned or transferred with or without the transfer of the
considered exclusive sa registered owner of trademark. business using the mark. (n)

When you apply, there are just that have a mark. Some na aside from Company A has makeup products. Itong XYZ, can company A assign
mark, yang packaging. Like yang Big Mac. Yang red packaging. That is XYZ? Company A can keep its makeup and assign original makeup to
also included in the protection. XYZ. Company A has the right to dispose.

Burgers, yung may balot. Yang design niyan. But 149.2:

Even toothpaste. Shampoo. Even packaging is protected. 149.2. Such assignment or transfer shall, however, be null and void if
it is liable to mislead the public, particularly as regards the nature,
It says here: source, manufacturing process, characteristics, or suitability for their
purpose, of the goods or services to which the mark is applied.
identical or similar signs or containers for goods or services which
are identical or similar to those in respect of which the So what are the formalities?
trademark is registered where such use would result in a
likelihood of confusion. 149.3. The assignment of the application for registration of a mark, or
of its registration, shall be in writing and require the signatures of the
So there are cases where there are different ways of circumventing contracting parties. Transfers by mergers or other forms of
this Sec 147. We will see them. succession may be made by any document supporting such transfer.

Note: 149.4. Assignments and transfers of registrations of marks shall be

1. 147 only grants to trademark owner protection for mark in recorded at the Office on payment of the prescribed fee; assignment
relation to similar goods or services. and transfers of applications for registration shall, on payment of the
2. Pag iba, no protection. same fee, be provisionally recorded, and the mark, when registered,
3. But under 147.2 if mark is internationally well-known + shall be in the name of the assignee or transferee.
registered here, we already know this. This is related to Sec
123 where owner has the exclusive right to use. 149.5. Assignments and transfers shall have no effect against third
4. Ito not just to useto use the trademark and to prevent parties until they are recorded at the Office. (Sec. 31, R.A. No. 166a)
others from using trademark from any kind of goods and
services.
No effect if no recording.
o That’s why mcdo can prevent others from using
similar container, bc it is internationally well-
Section 150. License Contracts. - 150.1. Any license contract
known.
concerning the registration of a mark, or an application therefor, shall
provide for effective control by the licensor of the quality of the
Section 147. Rights Conferred. - 147.1. The owner of a registered
goods or services of the licensee in connection with which the mark is
mark shall have the exclusive right to prevent all third parties not
used. If the license contract does not provide for such quality control,
having the owner's consent from using in the course of trade
or if such quality control is not effectively carried out, the license
identical or similar signs or containers for goods or services which are
contract shall not be valid.
identical or similar to those in respect of which the trademark is
registered where such use would result in a likelihood of confusion. In
case of the use of an identical sign for identical goods or services, a
likelihood of confusion shall be presumed.
Because trademark will identify the goods and services. If company A
gives its license. “You can manufacture my goods and use my
147.2. The exclusive right of the owner of a well-known mark defined
trademark.” That can be entered into.
~ 39 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 exercise jurisdiction to determine whether the registration of said
There must be an agreement as to quality sa effective control by the mark may be cancelled in accordance with this Act. The filing of a suit
licensor of the quality. Otherwise, masisira ang pangalan niya if ang to enforce the registered mark with the proper court or agency shall
manufactured products ay low-quality goods. exclude any other court or agency from assuming jurisdiction over a
subsequently filed petition to cancel the same mark. On the other
If wala yan or it did not carry out such, then license contract shall not hand, the earlier filing of petition to cancel the mark with the Bureau
be valid. of Legal Affairs shall not constitute a prejudicial question that must
be resolved before an action to enforce the rights to same registered
150.2. A license contract shall be submitted to the Office which shall mark may be decided. (Sec. 17, R.A. No. 166a)
keep its contents confidential but shall record it and publish a
reference thereto. A license contract shall have no effect against Section 152. Non-use of a Mark When Excused. - 152.1. Non-use of a
third parties until such recording is effected. The Regulations shall fix mark may be excused if caused by circumstances arising
the procedure for the recording of the license contract. (n) independently of the will of the trademark owner. Lack of funds shall
not excuse non-use of a mark.
Section 151. Cancellation. - 151.1. A petition to cancel a registration
of a mark under this Act may be filed with the Bureau of Legal Affairs Actual use is a requirement to continue registration. 151.2 tells us
by any person who believes that he is or will be damaged by the when non-use of mark is excused.
registration of a mark under this Act as follows:
If caused by circumstances arising independently of the will of the
(a) Within five (5) years from the date of the registration of the mark trademark owner. Lack of funds shall not excuse non-use of a mark.
under this Act.
152.2. The use of the mark in a form different from the form in which
(b) At any time, it is registered, which does not alter its distinctive character, shall not
be ground for cancellation or removal of the mark and shall not
- if the registered mark becomes the generic name for the diminish the protection granted to the mark.
goods or services, or a portion thereof,
- for which it is registered, or has been abandoned, or its May konting difference, color or shape, shall not be ground for
registration was obtained fraudulently or contrary to the cancellation or removal of the mark and shall not diminish the
provisions of this Act, protection granted to the mark. It shall be considered as “use” pa rin.
- or if the registered mark is being used by, or with the
permission of, the registrant so as to misrepresent the 152.3. The use of a mark in connection with one or more of the
source of the goods or services on or in connection with goods or services belonging to the class in respect of which the mark
which the mark is used is registered shall prevent its cancellation or removal in respect of all
other goods or services of the same class.
If the registered mark becomes the generic name for less than all of
the goods or services for which it is registered: So as already mentioned, if you want to register trademark for 500
- a petition to cancel the registration for only those goods or goods, you have to use that. Otherwise, matatanggal sa registration
services may be filed. certificate.
- A registered mark shall not be deemed to be the generic
name of goods or services solely because such mark is also Pero it belongs to one class tapos dalawa lang ginamitan mo, yung
used as a name of or to identify a unique product or 498? Macacancel ba? So long as you used one or two, covered na so
service. long as they belong to the same services or goods or class in NICE
- The primary significance of the registered mark to the classification.
relevant public rather than purchaser motivation shall be
the test for determining whether the registered mark has 152.4. The use of a mark by a company related with the registrant or
become the generic name of goods or services on or in applicant shall inure to the latter's benefit, and such use shall not
connection with which it has been used. (That is also affect the validity of such mark or of its registration: Provided, That
related to doctrine of secondary meaning.) such mark is not used in such manner as to deceive the public. If use
of a mark by a person is controlled by the registrant or applicant with
(c) At any time: respect to the nature and quality of the goods or services, such use
- if the registered owner of the mark without legitimate shall inure to the benefit of the registrant or applicant. (n)
reason fails to use the mark within the Philippines,
- or to cause it to be used in the Philippines by virtue of a Not just the registrant who can use the goods if being used by
license during an uninterrupted period of three (3) years or company related to registrant or person or entity controlled by
longer. registrant. That is usage.

Cancellation. Where do you file? BLA. Section 153. Requirements of Petition; Notice and Hearing. - Insofar
as applicable, the petition for cancellation shall be in the same form
Who can file? Any person who will be damaged by the registration of as that provided in Section 134 hereof, and notice and hearing shall
the mark. be as provided in Section 135 hereof.

Prescriptive period: Within five (5) years from the date of the Section 154. Cancellation of Registration. - If the Bureau of Legal
registration of the mark Affairs finds that a case for cancellation has been made out, it shall
order the cancellation of the registration. When the order or
But that five-year period is only for grounds under sec 123. judgment becomes final, any right conferred by such registration
upon the registrant or any person in interest of record shall
There are grounds which do not have that 5-year prescriptive period. terminate. Notice of cancellation shall be published in the IPO
Gazette. (Sec. 19, R.A. No. 166a)
Without prescriptive period: any time
1. Registered mark becomes generic name
2. Abandoned
3. Obtained fraudulently
February 2, 2017
4. Mark is being used so as to misrepresent
5. Failure to use during an uninterrupted period of three (3)
What is trademark infringement?
years or longer.
• The use by others of a reproduction or colorable imitation of
151.2. Notwithstanding the foregoing provisions, the court or the
a registered trademark, tradename or service mark
administrative agency vested with jurisdiction to hear and adjudicate
• Without the consent of the registrant
any action to enforce the rights to a registered mark shall likewise
~ 40 ~
INTELLECTUAL PROPERTY LAW 2017-2018
• With the purpose of causing to mislead or misleading the pertain to the same type of goods – predominantly red in color, with the
public that such goods or services are those of the registrant fungicide with 80% Mancozeb as an same phrase "BROAD SPECTRUM
active ingredient and used for the FUNGICIDE" written underneath.
same group of fruits, crops,
What are protected from infringement?
vegetables, and ornamental plants,
Only registered trademarks. If you have a trademark that using the same dosage and manner
you have been using for a long time and you are known in that of application.
particular sector or community where you are using it as its owner or
creator but you don’t register it, you can’t sue for infringement. Note: Duplication is not necessary nor is it necessary that the
infringing label should imitate
Section 155. Remedies; Infringement. - Any person who shall, without
the consent of the owner of the registered mark: Bar Question: Does the owner of a trademark have a right
of property to prevent others from manufacturing,
155.1. Use in commerce any reproduction, counterfeit, copy, or producing, or selling the same article to which it is
colorable imitation of a registered mark or the same container or a attached?
dominant feature thereof in connection with the sale, offering for
sale, distribution, advertising of any goods or services including other Suggested answer: No, the right of a trademark owner is to
preparatory steps necessary to carry out the sale of any goods or prevent the use by others of his registered mark on similar
services on or in connection with which such use is likely to cause goods manufactured, produced or sold by others.
confusion, or to cause mistake, or to deceive; or
Is fraud essential in infringement? No. The mere use of a similar mark
155.2. Reproduce, counterfeit, copy or colorably imitate likely to mislead the public is sufficient to constite infringement.
- a registered mark
- or a dominant feature thereof
WHAT INFRINGER CAN BE LIABLE FOR TO OWNER OF REGISTERED
and apply such reproduction, counterfeit, copy or colorable imitation MARK
to Section 156. Actions, and Damages and Injunction for Infringement. –
- labels, signs, prints, packages, wrappers, receptacles or
advertisements 156.1. The owner of a registered mark may recover damages from
any person who infringes his rights, and the measure of the damages
intended to be used in commerce upon or in connection with the suffered shall be either the reasonable profit which the complaining
sale, offering for sale, distribution, or advertising of goods or services party would have made, had the defendant not infringed his rights, or
on or in connection with which such use is likely to cause confusion, the profit which the defendant actually made out of the
or to cause mistake, or to deceive, shall be liable in a civil action for infringement, or in the event such measure of damages cannot be
infringement by the registrant for the remedies hereinafter set forth: readily ascertained with reasonable certainty, then the court may
award as damages a reasonable percentage based upon the amount
Provided, That the infringement takes place at the moment any of of gross sales of the defendant or the value of the services in
the acts stated in Subsection 155.1 or this subsection are committed connection with which the mark or trade name was used in the
regardless of whether there is actual sale of goods or services using infringement of the rights of the complaining party. (Sec. 23, first
the infringing material. (Sec. 22, R.A. No 166a) par., R.A. No. 166a)

156.2. On application of the complainant, the court may impound

What is test for infringement of trademark or tradename? during the pendency of the action, sales invoices and other
A: Colorable imitation
documents evidencing sales. (n)
1. close or ingenious imitation as to be calculated to deceive
ordinary purchaser
2. resemblance of the infringing mark to the original as to 156.3. In cases where actual intent to mislead the public or to
deceive an ordinary purchaser, giving such attention as a defraud the complainant is shown, in the discretion of the court, the
purchaser usually gives, and to cause him to purchase the damages may be doubled. (Sec. 23, first par., R.A. No. 166)
one supposing it to be the other
156.4. The complainant, upon proper showing, may also be granted
There are tests to determine WON colorable imitation injunction. (Sec. 23, second par., R.A. No. 166a)
exists.
1. Holistic Test ‐ Mandates that the entirety of the marks in question
must be considered in determining confusing similarity Section 157. Power of Court to Order Infringing Material Destroyed. -
- So you look at everything as a whole including the packaging. 157.1 In any action arising under this Act, in which a violation of any
2. Dominancy Test ‐ Infringement takes place: right of the owner of the registered mark is established, the court
 if the competing trademark contains may order that goods found to be infringing be, without
the main or essential features of another, and compensation of any sort, disposed of outside the channels of
 confusion and deception is likely to result. commerce in such a manner as to avoid any harm caused to the right
holder, or destroyed; and all labels, signs, prints, packages, wrappers,
Berris v Afiada Oct 13, 2010
receptacles and advertisements in the possession of the defendant,
Dominancy Test Holistic or Totality test
focuses on the similarity of the discerning eye of the observer must
bearing the registered mark or trade name or any reproduction,
prevalent or dominant features of focus not only on the predominant counterfeit, copy or colorable imitation thereof, all plates, molds,
the competing trademarks that words but also on the other features matrices and other means of making the same, shall be delivered up
might cause confusion, mistake, and appearing on both labels so that the and destroyed.
deception in the mind of the observer may draw conclusion on
purchasing public. whether one is confusingly similar to 157.2. In regard to counterfeit goods, the simple removal of the
the other trademark affixed shall not be sufficient other than in exceptional
Duplication or imitation is not consideration of the entirety of the cases which shall be determined by the Regulations, to permit the
necessary; neither is it required that marks as applied to the products,
release of the goods into the channels of commerce. (Sec. 24, R.A.
the mark sought to be registered including the labels and packaging, in
suggests an effort to imitate. determining confusing similarity. No. 166a)
On Berris’ package, the "D-10" is
written with a bigger font than the
"80 WP." Admittedly, the "D-10" is Section 158. Damages; Requirement of Notice. - In any suit for
the dominant feature of the mark. infringement, the owner of the registered mark shall not be entitled
it cannot be gainsaid that taking into consideration the to recover profits or damages unless the acts have been committed
Abyadang’s "NS D-10 PLUS" is packaging, for both use the same type with knowledge that such imitation is likely to cause confusion, or to
similar to Berris’ "D-10 80 WP," that of material (foil type) and have
cause mistake, or to deceive. Such knowledge is presumed if the
confusion or mistake is more likely identical color schemes (red, green,
to occur. Undeniably, both marks and white); and the marks are both registrant gives notice that his mark is registered by displaying with
the mark the words '"Registered Mark" or the letter R within a circle
~ 41 ~
INTELLECTUAL PROPERTY LAW 2017-2018
or if the defendant had otherwise actual notice of the registration. certify.
(Sec. 21, R.A. No. 166a)
Section 162. Action for False or Fraudulent Declaration. - Any person
Section 159. Limitations to Actions for Infringement. - who shall procure registration in the Office of a mark by a false or
Notwithstanding any other provision of this Act, the remedies given fraudulent declaration or representation, whether oral or in writing,
to the owner of a right infringed under this Act shall be limited as or by any false means, shall be liable in a civil action by any person
follows: injured thereby for any damages sustained in consequence thereof
(Sec. 26, R.A. No. 166)
159.1. Notwithstanding the provisions of Section 155 hereof, a
registered mark shall have no effect against any person who, Section 163. Jurisdiction of Court. - All actions under Sections 150,
 in good faith, 155, 164, and 166 to 169 shall be brought before the proper courts
 before the filing date or the priority date, with appropriate jurisdiction under existing laws. (Sec. 27, R.A. No.
 was using the mark for the purposes of his business or 166)
enterprise:
Proper court now is Special Commercial Court.
Provided, That his right may only be transferred or assigned together
with his enterprise or business or with that part of his enterprise or Section 164. Notice of Filing Suit Given to the Director. - It shall be
business in which the mark is used. the duty of the clerks of such courts within one (1) month after the
filing of any action, suit, or proceeding involving a mark registered
159.2. Where an infringer who is engaged solely in the business of under the provisions of this Act, to notify the Director in writing
printing the mark or other infringing materials for others is an setting forth: the names and addresses of the litigants and
innocent infringer, the owner of the right infringed shall be entitled as designating the number of the registration or registrations and within
against such infringer only to an injunction against future printing. one (1) month after the judgment is entered or an appeal is taken,
the clerk of court shall give notice thereof to the Office, and the latter
159.3. Where the infringement complained of is contained in or is shall endorse the same upon the filewrapper of the said registration
part of paid advertisement in or registrations and incorporate the same as a part of the contents of
 a newspaper, said filewrapper. (n)
 magazine,
 or other similar periodical or in an electronic Requirements particularly to Director of Trademarks.
communication,
Let’s go to Tradenames
the remedies of the owner of the right infringed as against the
publisher or distributor of such newspaper, magazine, or other When can a name or designation not be used as trade name?
similar periodical or electronic communication shall be limited to an Section 165. Trade Names or Business Names. - 165.1.
injunction against the presentation of such advertising matter in
future issues of such newspapers, magazines, or other similar A name or designation may not be used as a trade name
periodicals or in future transmissions of such electronic - if by its nature or the use to which such name or
communications. The limitations of this subparagraph shall apply only designation may be put, it is contrary to public order or
to innocent infringers: Provided, That such injunctive relief shall not morals
be available to the owner of the right infringed with respect to an - and if, in particular, it is liable to deceive trade circles or the
issue of a newspaper, magazine, or other similar periodical or an public as to the nature of the enterprise identified by that
electronic communication containing infringing matter where name.
restraining the dissemination of such infringing matter in any
particular issue of such periodical or in an electronic communication TAKE NOTE OF 165.2.(a) Notwithstanding any laws or regulations
would delay the delivery of such issue or transmission of such providing for any obligation to register trade names, such names shall
electronic communication is customarily conducted in accordance be protected, even prior to or without registration, against any
with the sound business practice, and not due to any method or unlawful act committed by third parties.
device adopted to evade this section or to prevent or delay the o SEC: corporation
issuance of an injunction or restraining order with respect to such o DTI: Single proprietorship
infringing matter. (n) o Tradenames need not be registered in BT. Not required to
be registered in IPO. Despite non-registration before IPO,
they are protected. Thus, tradename owner can sue for
159.4 as amended by RA 9502 infringement.

ACTS DEEMED UNLAWFUL:

Section 160. Right of Foreign Corporation to Sue in Trademark or
Service Mark Enforcement Action. – (b) In particular,
 Any foreign national or juridical person o any subsequent use of the trade name by a third party,
 who meets the requirements of Section 3 of this Act and whether as a trade name or a mark or collective mark,
does not engage in business in the Philippines o or any such use of a similar trade name or mark, likely to
 may bring a civil or administrative action hereunder for mislead the public, shall be deemed unlawful.
opposition, cancellation, infringement, unfair competition,
or false designation of origin and false description, 165.3. The remedies provided for in Sections 153 to 156 and Sections
 whether or not it is licensed to do business in the 166 and 167 shall apply mutatis mutandis.
Philippines under existing laws. (Sec. 21-A, R.A. No. 166a)
165.4. Any change in the ownership of a trade name shall be made
Section 161. Authority to Determine Right to Registration. - In any with the transfer of the enterprise or part thereof identified by that
action involving a registered mark, the court may name. The provisions of Subsections 149.2 to 149.4 shall apply
 determine the right to registration, (BT dapat pero court is mutatis mutandis.
given power) Tradename: Kasama ang business kasama ang name.
 order the cancellation of a registration, in whole or in part,
 and otherwise rectify the register with respect to the
registration of any party to the action in the exercise of Section 166. Goods Bearing Infringing Marks or Trade Names. –
this.
Judgment and orders shall be certified by the court to the Director, No article of imported merchandise which shall
who shall make appropriate entry upon the records of the Bureau,  copy or simulate the name of any domestic product, or
and shall be controlled thereby. (Sec. 25, R.A. No. 166a) manufacturer, or dealer,
- So once court cancels, it shall send to Director who will  or which shall copy or simulate a mark registered in
~ 42 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 accordance with the provisions of this Act,
 or shall bear a mark or trade name calculated to induce the Simply stated: employment of deception or any other means contrary
public to believe that the article is manufactured to gf by which one shall pass off the goods manufactured by him or in
- in the Philippines, which he deals, or his business, or services for the purpose of the one
- or that it is manufactured in any foreign country having established good will.
- or locality other than the country or locality
where it is in fact manufactured,
shall be admitted to entry at any customhouse of the Philippines. Good will:

 To be allowed to enter PH, there must be indication as to Who is protected against unfair competition?
where it was made.
 Pag walang “Made In” made in Philippines
Section 168. Unfair Competition, Rights, Regulation and Remedies. -
In order to aid the officers of the customs service in enforcing this 168.1.
prohibition, any person who is entitled to the benefits of this Act,  A person who has identified in the mind of the public
may require that his name and residence, and the name of the  the goods he manufactures or deals in, his business or
locality in which his goods are manufactured, a copy of the certificate services from those of others,
of registration of his mark or trade name, to be recorded in books  whether or not a registered mark is employed, has a
which shall be kept for this purpose in the Bureau of Customs, under property right in the goodwill of the said goods, business or
such regulations as the Collector of Customs with the approval of the services so identified, which will be protected in the same
Secretary of Finance shall prescribe, and may furnish to the said manner as other property rights.
Bureau facsimiles of his name, the name of the locality in which his
goods are manufactured, or his registered mark or trade name, and
thereupon the Collector of Customs shall cause one (1) or more Who can be punished for Unfair Competition in general?
copies of the same to be transmitted to each collector or to other
proper officer of the Bureau of Customs. (Sec. 35, R.A. No. 166) 168.2. Any person who shall employ deception or any other means
contrary to good faith by which he shall pass off the goods
manufactured by him or in which he deals, or his business, or services
for those of the one having established such goodwill, or who shall
COLLECTIVE MARKS commit any acts calculated to produce said result, shall be guilty of
unfair competition, and shall be subject to an action therefor.

This topic was not included dati, but it is a favourite sa bar. 168.3. In particular, and without in any way limiting the scope of
protection against unfair competition, the following shall be deemed
Section 167. Collective Marks. - 167.1. Subject to Subsections 167.2 guilty of unfair competition:
and 167.3, Sections 122 to 164 and 166 shall apply to collective
marks, except that references therein to "mark" shall be read as (a) Any person, who is selling his goods and gives them the general
"collective mark". appearance of goods of another manufacturer or dealer, either as to
the goods themselves or in the wrapping of the packages in which
they are contained, or the devices or words thereon, or in any other
So what is a collective mark? You can find the definition of that in the feature of their appearance, which would be likely to influence
beginning. purchasers to believe that the goods offered are those of a
manufacturer or dealer, other than the actual manufacturer or
167.2.(a) An application for registration of a collective mark shall dealer, or who otherwise clothes the goods with such appearance as
designate the mark as a collective mark and shall be accompanied by shall deceive the public and defraud another of his legitimate trade,
a copy of the agreement, if any, governing the use of the collective or any subsequent vendor of such goods or any agent of any vendor
mark. engaged in selling such goods with a like purpose;

(b) The registered owner of a collective mark shall notify the Director (b) Any person who by any artifice, or device, or who employs any
of any changes made in respect of the agreement referred to in other means calculated to induce the false belief that such person is
paragraph (a). offering the services of another who has identified such services in
the mind of the public; or
Kunwari nagdrop si A. Nag-inform. So “A is no longer allowed to use
the trademark” (c) Any person who shall make any false statement in the course of
trade or who shall commit any other act contrary to good faith of a
nature calculated to discredit the goods, business or services of
another.
167.3. In addition to the grounds provided in Section 149 (void
assignment or transfer) the Court shall cancel the registration of a
collective mark if the person requesting the cancellation proves that Any person committing any of the following acts are deemed guilty of
 only the registered owner uses the mark, unfair competition:
 or that he uses or permits its use in contravention of the
agreements referred to in Subsection 166.2 1. Making one’s goods appear as goods of another
 or that he uses or permits its use in a manner liable to 2. Use of artifice or device to induce the false belief that one’s
deceive trade circles or the public as to the origin or any goods are those of another
other common characteristics of the goods or services 3. False statement in the court of trade (any act contrary to gf
concerned. calculated to discredit another)

Can that mark be subject to TTA? NO. In the PH, you cannot compare your brand to another compared to
167.4. The registration of a collective mark, or an application therefor US where you can compare blatantly. Here, it will be considered as
shall not be the subject of a license contract. (Sec. 40, R.A. No. 166a) discrediting goods.

168.4. The remedies provided by Sections 156, 157 and 161 shall
UNFAIR COMPETITION
apply mutatis mutandis. (Sec. 29, R.A. No. 166a)
What is unfair competition?

~ 43 ~
INTELLECTUAL PROPERTY LAW 2017-2018
Actions for damages, injunction, etc. Not infringement. COA is
actually unfair competition. H: Exclusive right to distribute watch.
K: from same manufacturer, he sold them later on.
What is test of unfair competition? H: Criminal action for infringement and Unfair Competition
Whether certain goods have been clothed with an appearance likely
to deceive the ordinary purchaser exercising ordinary care. Whether K is guilty of unfair comp and infringement? Yes.

Is fraud essential? Tradename Meridian was already exclusively owned by Hermanos.

Yes. You must prove fraudulent intent to pass off one’s goods as that
of another Tradename: not necessary attached to goods of owner
Trademark:
Jurisdiction?
Special Commercial Court Trademark Tradename
TRADEMARK: It is trademark that You have goods. Sometimes you
Remedies? is attached to the goods. don’t see the name. Unilever,
Same for infringement of trademark and tradenames that is a tradename. Idk what the
products of unilever. You know
na manufacturer siya ng soap,
FALSE DESIGNATION shampoo… It is not attached to
goods.
Section 169. False Designations of Origin; False Description or
Representation. –
169.1. Any person who, on or in connection with any
 goods or services,
 or any container for goods, Ang v Teodoro
uses in commerce any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin, false or Ana AngAng Tibay: cannot be registered as trademark, goods are
misleading description of fact, or false or misleading representation not similar
of fact, which: SC: can be registered as tradename.
- Never used adjectively to define or describe
(a) Is likely to cause confusion, or to cause mistake, or to deceive as object.
to the affiliation, connection, or association of such person with - Fanciful or coined phrase which may properly and
another person, or as to the origin, sponsorship, or approval of his or legally appropriated as trademark or tradename
her goods, services, or commercial activities by another person; or
Unnecessary to apply doctrine of secondary meaning (word or phrase
(b) In commercial advertising or promotion, misrepresents the originally capable of exclusive appropriation
nature, characteristics, qualities, or geographic origin of his or her or
another person's goods, services, or commercial activities, shall be
liable to a civil action for damages and injunction provided in Sections
156 and 157 of this Act by any person who believes that he or she is
or is likely to be damaged by such act. Lim Hoa v Director of Patents

169.2. Any goods marked or labelled in contravention of the

provisions of this Section shall not be imported into the Philippines or
admitted entry at any customhouse of the Philippines.
Whether Wellington can be registered? No. Geographical. Thus, no
The owner, importer, or consignee of goods refused entry at any infringement of trademark.
customhouse under this section may have any recourse under the
customs revenue laws or may have the remedy given by this Act in
cases involving goods refused entry or seized. (Sec. 30, R.A. No. 166a)
---

February 15, 2018

Section 170. Penalties. - Independent of the civil and administrative
sanctions imposed by law, a criminal penalty of imprisonment from
Arce and Sons v Selecta Biscuits
two (2) years to five (5) years and a fine ranging from Fifty thousand
pesos (P50,000) to Two hundred thousand pesos(P200,000), shall be
Arce: “Selecta” has been used since 1933 + mark has been used for a
imposed on any person who is found guilty of committing any of the
long time and they had established goodwill + warned selecta Biscuits
acts mentioned in Section 155, Section 168 and Subsection 169.1.
to not use “Selecta”
(Arts. 188 and 189, Revised Penal Code)
Selecta Biscuits: Chinese word + English word trans of Mapili
You can directly file a criminal case. No need to file civil case unlike
patent.
Is there infringement? No infringement.

Selecta has acquired secondary meaning. “Selecta” is descriptive, so

INFRINGEMENT OF TRADEMARK V UNFAIR COMPET
incapable of registration. But it has acquired secondary meaning, so it
is now capable of registration.
Unauthorized use of registered trademark COA Passing of one’s
goods
Once adopted or coined in connection with one’s business, it may
acquire a secondary meaning as to be exclusively associated with its
products and business.
CASES:
Q: Bakit unfair competition ang finile? What is infringement all
US v Kyburz
about?
A: The word “Selecta” has acquired secondary meaning.
Kyburz: doing the same business as Manila Jewelry store
Hermanos: also engaged in sale of watches.
Q: Why was unfair competition filed? What is the essence of
Meridian was placed at the center of watch.
infringement?
~ 44 ~
INTELLECTUAL PROPERTY LAW 2017-2018
A: Infringement only applies in registered trademark. Wala yan dito Here, diamond design failed to acquire secondary meaning.
because Selecta is a descriptive term. It is incapable of registration.
But because it has acquired secondary meaning, pwede na siya Trademark Valentines does not result in reasonable confusion. Ong
maregister. Su has registered prior to Victoria’s Milling. Thus, it cannot be said it
imitated VM. Moreover, designs are different.
Chua Che
Here we have two registered trademarks. VM is more popular than
Chua Che applied for registration of trademark “X-7” for soap. He Valentine. One must comply with provision with law. What cannot be
believes that he is lawful owner of trademark and that he has been in registered? If confusingly similar. But here, there was no confusing
use for commerce in PH not less than 2 months before the similarity.
application was filed, and that no corporation or partnership has the
right to use such trademark. Mead Johnson v NVJ Van Dorp

Sy Tuo opposed bc X-7 is his trademark for line of perfume, lipstick, Mead Johnson registered Alacta, powdered skimmed milk.
and nail polish. NVJ: applied for trademark “Alaska”, dairy products

Mead Johnson opposed bc the general form and sound of the words
Likely confusion intended for use in the home and usually have suggest likelihood of confusion (three vowels are the same, same
common purchasers. positions)

It is no longer necessary that they possess descriptive properties. It is NVJ: Not enough that words are to be taken account. Two marks
enough that it would tend to deceive common purchasers despite must be differentiated in their entirety.
the goods falling in different categories.
SC: Used Holistic test.
Thus, it cannot be registered bc identical to a registered trademark or
similar goods. The spelling and appearance are not the only determinant factors.

Q: If you were to apply RA 8293, what would be the applicable While there are similarities, there are glaring dissimilarities. In Alacta,
provision? it comes with only size. Alaska has two sizes. They have different
colors and how they were worded. As to goods covered, they have
The problem with you is you are not focusing on the issue. The issue different classes.
is registration; what cannot be registered. Chua Che wants to register
X-7. It cannot be cannot be registered bc identical to a registered
trademark or similar goods. That is 123d. That is the ground for In other words the likelihood of deception wherein buyer would be
refusal. deceived to buy when he is to buy Alaska. That is most impossible.
They are different. Alacta is medicinal, and Alaska is for home use.
You have to note what provision is applicable.
This is an application of Article 123d. Whether there was confusing
When you present, you have to present the table. Para Makita natin similarity so as to confuse buyers.
ang kaibahan.
You have to look at the entirety. This is what the Supreme Court says
La Chemise v Fernandez “Holistic Test”

La Chemise Lacoste is a well-known mark. Not registered in Ph but Sterling v Farbenfabriken

still protected pursuant to Paris Convention for the Protection of
Industrial Property to which both PH and France are parties. Farben registered “Bayer” trademark and assigned with Sterling.
Farben now wants to have it registered not just for pharmaceutical
If you were to apply RA 8293: Sec 3 and 123(e) products but also for insecticides.

Proline v CA and Sehwani Could Farben register the trademark “Bayer” for its insecticides
considering Sterling has already registered the same for medicines.
There already was registered Spalding mark Sehwani:
manufactured balls marked Spalding SC: Yes.

Criminal action for Unfair Competition S was exonerated as his Two products were entirely different. The good will created by
demurrer to evidence was granted. Sterling was originally by Farben. Thus, they could not invoke it.

S filed civil action for damages to retaliate. Moreover, the registration was for pharmaceutical products only. But
now, if we look at the new law, Section 123f, F could not register it.
Whether S is guilty of unfair competition It cannot be used bc Fabern is the real owner of the mark. Thus, GR:
123f will not apply.
Test really is whether goods would deceive the purchasers, the public
Q: Are you sure? Or you are just assuming?
CAB: pretended (passing the goods as that of another thing
affected good will) A: It was an old law. The requirement was actual use in the
Philippines was for two consecutive years following the registration
If you pretend that to be branded but it isn’t, that is already unfair of the mark. Why is it that despite such non-use, it was allowed to
competition. register Bayer for insecticides?

Victorias Milling v Ong Su SC: Supreme Court considered it as actual use when Fabern
registered Bayer and then it assigned with Sterling
Victorias Milling registered “Victorias”. Ong Su registered “Valentine”
VM wanted to cancel Ong Su’s mark. Atty. S: Trademark is a creation of use. Ayan oh. Meaning, the
requirement of actual use can be overlooked if one applying is the
No secondary meaning bc no evidence that diamond design of the real owner of the mark. Because originally Fabern owned that mark.
mark has been so used that purchasers recognize that mark as theirs. It only assigned certain products with Sterling registered in US. But it
Common geometric shapes are commonly not regarded as indicia of is stated in the case that registration in the US is not registration
origin of goods unless they have acquired a secondary meaning. here. Therefore, you apply Section 123f. Okay?
~ 45 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 in various parts of the country. This case must be differentiated from
Pero that will also will not apply because of proviso. Fabern is the real cases involving products bearing such familiar names as "colgate",
owner of the mark kasi. Thus, the general rule under Sec 123f will not "Singer". "Toyota", or "Sony" where the products are marketed
apply. widely in the Philippines. There is not product with the name
"Isetann" popularized with that brand name in the Philippines. Unless
You will see that clearly in the case of Shangri-la. one goes to the store called Isetann in Manila, he would never know
what the name means. Similarly, until a Filipino buyer steps inside a
Shangri-La v CA store called "Isetan" in Tokyo or Hongkong, that name would be
completely alien to him. The records show that among Filipinos, the
DGC registered Shangri-la logo with IPO and managed to get name cannot claim to be internationally well-known.
registration for Chinese restaurant. When registration for resto was
filed, Shangri-la hotel was still inexistent. The Paris Convention for the Protection of Industrial Property does
not automatically exclude all countries of the world which have
Shangri-La Hotels decided to put up hotel in PH. When Shangri-La signed it from using a tradename which happens to be used in one
found out that there is registration of Chinese restaurant, they filed country. To illustrate - If a taxicab or bus company in a town in the
for cancellation. United Kingdom or India happens to use the tradename "Rapid
Transportation", it does not necessarily follow that "Rapid" can no
Shangri-La filed application with BPTT. Shangri La constructed hotel longer be registered in Uganda, Fiji, or the Philippines.
and used that logo. Three years thereafter, DGC filed infringement
before RTC. Since not internationally well-known, it is not entitled to protection
because it is not registered in the PH. The conditions for protection
Whether infringement case can prosper. are:
1. a) the mark must be internationally known or well
Earlier filing shall not constitute as prejudicial question. known;
The certification of DGC is valid and subsisting while it is not 2. b) the subject of the right must be a trademark, not a
cancelled. patent or copyright or anything else;
3. c) the mark must be for use in the same or similar
SC: Conrad Company v CA: Infringement case can and should proceed kinds of goods; and
independently from cancellation case with Bureau. 4. d) the person claiming must be the owner of the mark
Person claiming is owner of the mark.
Questions are different.
Before BPTTT: Whether trademark can be cancelled Actual Use in Commerce Kabushi Kaishi has never promoted Isetan
Before RTC: Did Shangri-La infringe in PH, unknown to Fil

Mere origination or adoption is insufficient to give right to use.

In other words, infringement case can proceed at the same time with
cancellation case. If one case is terminated (In this case, RTC says it is
valid, then cancellation will be moot and academic).

In this case, DGC won. March 8, 2018

Shangri-La v DGC Asia Brewery

Whether prior use is a requirement in trademark registration. Yes. RA San Miguel v Asia Brewery (infringement of trademark and unfair
166 Sec 2. competition)
Asia’s bottle is confusingly similar with San Miguel’s bottle.
Whether DGCI can bring an action against Shangri-La. No.
No infringement. Infringement: test of dominancy
One who imitates has no right to bring an action for infringement Dominant features of each have no relation to each other.
because he would be coming to court with unclean hands.
Canon Kabushiki v CA
Here, DGCI could not file an action for infringement.
There is difference between chemicals and sandals. No infringement.
Under 8293: Prior use is no longer a pre-requisite for registration.
Actual use is the requirement now. This is an opposition case. Under Sec 123 d e or f

In the end here, the SC ordered cancellation of DGCI. Canon is a Japanese brand.
4 5 6
Why is it that it was proven that DGCI stole that mark from Shangri- Registered mark in Well-known Well-known
La? Ramon Sy gave himself away. He testified that he dreamt of that RP internationally mark internationally mark
mark.
Not registered here registered here
Bad faith is not a requirement for infringement, but it CAN BE a Identical or similar Identical or similar Goods or services
ground. goods or services goods or services not necessarily
identical or similar
IP is an original mode. You created it. You registered it as owner. If
you are not creator you have no right. That can even be cancelled.
Mc Donald’s v. L.C. Big Mak Burger
Kabushiki v IAC
Mcdonalds: colourable imitation of its registered Big Mac using
Kabushi Kaisha: petition for cancellation of Isetann Department Store. Dominancy test
Alleges it Isetann was riding on to the popularity of Kabushi Kaisha. LC Big Mak: no colourable imitation under Holistic Test

SC ruled in favour of Isetann Dept Store. Holistic Test:

1. Validity of P’s mark
It might be pertinent at this point to stress that what is involved in 2. P’s ownership of mark
this case is not so much a trademark as a tradename. Isetann 3. Use of mark or its colourable imitation as to cause
Department Store, Inc. is the name of a store and not of product sold confusing similarity
~ 46 ~
INTELLECTUAL PROPERTY LAW 2017-2018
 Levi Strauss as holder of Levi’s Trademark enjoys presumption of
CAB: Big Mac does not have logical relationship with sandwich. validity.
Mcdo was able to prove ownership + ownership based on registration
in US Cancellation, but an action for infringement jurisdiction of ordinary
courts.
Dominancy test:
Consider: The earlier filing of petition to cancel the mark with the Bureau of
1. Similarity of appearance Legal Affairs {formerly BPTTT] shall not constitute a prejudicial
2. Aural and visual impact question that must be resolved before an action to enforce the rights
to same registered mark may be decided.
CAB:
1. Big Mak sounds exactly the same as Big Mac. So better to take up IP if you have some background in procedure.
2. First word of Big Mak is exactlythe same as Big Mac.
3. Same with C and K. Still the same when you pronounce (ex: Here, it was counterclaim that was filed by Levis. Damages by Vogue.
C Caloocan can be Kalookan) Can counterclaim for infringement proceed with cancellation? Yes
because there is no litis pendentia. No identity of rights, relief sought,
parties.
Mcdonalds v MacJoy
Diaz v People and Levi’s

MacJoy applied for registration. It was selling palabok, halo-halo, Levi Strauss Ph is licensee of Levi’s. Surveillance from tailoring shop of
hotdog, etc. Diaz where jeans were found to be counterfeit.
Mcdonalds opposed application.
First, the products involved in the case at bar are, in the main, various
In determining similarity and likelihood of confusion, jurisprudence kinds of jeans. These are not your ordinary household items like
has developed two tests, the dominancy test and the holistic test. catsup, soy sauce or soap which are of minimal cost. Maong pants or
The dominancy test focuses on the similarity of the prevalent jeans are not inexpensive. Accordingly, the casual buyer is
features of the competing trademarks that might cause confusion or predisposed to be more cautious and discriminating in and would
deception In contrast, the holistic test requires the court to consider prefer to mull over his purchase. Confusion and deception, then, is
the entirety of the marks as applied to the products, including the less likely.
labels and packaging, in determining confusing similarity.17 Under
the latter test, a comparison of the words is not the only determinant Second, like his beer, the average Filipino consumer generally buys
factor. his jeans by brand. He does not ask the sales clerk for generic jeans
but for, say, a Levis, Guess, Wrangler or even an Armani. He is,
Causes confusion. therefore, more or less knowledgeable and familiar with his
preference and will not easily be distracted.
The question really is “Is that mark that sought to be registered
confusingly similar to the registered mark?” Finally, in line with the foregoing discussions, more credit should be
given to the "ordinary purchaser." Cast in this particular controversy,
Schewani v In n Out the ordinary purchaser is not the "completely unwary consumer" but
is the "ordinarily intelligent buyer" considering the type of product
In n Out filed complaint v S. involved.
Schewani was using double, double burgers.
I: filed for violation of its IP right Diaz used the trademark "LS JEANS TAILORING" for the jeans he
S: In N Out Lacks legal capacity bc it was not doing business in Ph produced and sold in his tailoring shops. His trademark was visually
and aurally different from the trademark "LEVI STRAUSS & CO"
Whether I has legal capacity appearing on the patch of original jeans under the trademark LEVI’S
Yes. Sec 160: is related to Sec 3. So long as foreign corporation 501. The word "LS" could not be confused as a derivative from "LEVI
complies with Sec 3, then it can sue here in Ph. US and Ph are STRAUSS" by virtue of the "LS" being connected to the word
signatories to Paris Convention, and In N Out is a popular mark in US, "TAILORING", thereby openly suggesting that the jeans bearing the
thus it can be protected. trademark "LS JEANS TAILORING" came or were bought from the
tailoring shops of Diaz, not from the malls or boutiques selling
Sec 8 of Paris Convention: No need to register in Ph to protect its original LEVI’S 501 jeans to the consuming public.
rights.
Use in any reproduction. Obviously ang customer may dala-dala ng
MA’AM: Wait. Excuse me. Take note that this is cancellation case. You Levi’s jeans. This is obviously counterfeiting.
only have to have that registered trademark here in Ph if you want to
file infringement. In cancellation you don’t have to have the grounds. But SC was able to find lusot.
But to oppose, you have to comply with Sec 123. If confusingly similar
bas a internationally well-known mark. Prosource v. Horphag

Whether Schewani’s trademark should not have been registered. Yes. Prosource: (Pcnogenol) We are registered with BFAD
It should not have been registered. Horphag: (pcynogenol) Swiss company Not registered with BFAD, but
registered with IPO
It was identical with a well-known international mark.
H v Prosource complaint for infringement
In N Out is well-known internationally. S used the mark for their
restaurant in their wrappers= there is misrepresentation of source of Infringement is not just visual but also oral.
goods.
Dominancy test is used
Levi Strauss v Vogue
Idem sonans: legal doc whereby person’s identity is presumed known
Levi: US-based, discovered that Vogue Clothing has trademark despite misspelling of his name. Presumption lies in similarity
confusingly similar with Levi. Vogue filed an action for damages. Levi between phonology or sounds of correct name and the name as
Strauss filed a counterclaim for infringement. written.

Is Levi Strauss precluded from counterclaim? No. CAB: Both are similar.
Ex: Kotex and Femetex, Yusea and U-C-a
~ 47 ~
INTELLECTUAL PROPERTY LAW 2017-2018
Even though similar, based on idem sonans, they are similar.
Mark: red Mark: red

Berris v Abyadang
Phrase: BROAD SPECTRUM Phrase: BROAD SPECTRUM
NS D-10 Plus v D-10 80 WP FUNGICIDE FUNGICIDE
Abyadang Berris Agricultural
Abyadang: NS D-10 Plus Berris: D-10 Thus, there is confusing similarity between the two.
Packaging: foil type Packaging: foil type
In effect, Abyadang cannot register “NS D-10 Plus”.
Color schemes: red, green, and Color schemes: red, green, and
white white
Mark: red Mark: red
Phrase: BROAD SPECTRUM Phrase: BROAD SPECTRUM
Ecole v Cointreau
FUNGICIDE FUNGICIDE
Usage: Fungicide Usage: Fungicide
June 1990: Cointreu application for trademark before BPTTT “Le
Conrdon Bleu and Device”
Ecole opposed bc it is the owner of “Le cordon blue, ecole de cuisine
Section 123.1(d) of R.A. No. 8293, a mark cannot be registered if it is
manille” which it has been using since 1948 + earned immense
identical with a registered mark belonging to a different proprietor
goodwill + confusing similarity
with an earlier filing or priority date, with respect to: (1) the same
goods or services; (2) closely related goods or services; or (3) near
BLA sustained Ecole’s opposition: must be in the commerce in PH
resemblance of such mark as to likely deceive or cause confusion.
One may be owner of mark due to actual use but may not have the
ISSUE:
right to register…
Whether Abyadang’s NS D-10 PLUS can be registered.
No. It cannot be registered.
Foreign marks not registered are still accorded protection against
infringement and or unfair competition under Paris Convention.
Whether Abyadang’s NS D-10 PLUS is confusingly similar with Berris
NS D-10 80 WP.
1895: C has been using such in France and registered it in various
There is confusing similarity.
foreign countries.
RULING
RA 8293 has already dispensed the requirement of prior actual use at
There is confusing similarity between Abyadang’s NS D-10 PLUS and
the time of registration.
Berris’ NS D-10 80 WP.
Dominancy Test Holistic or Totality test Obviously, she took up culinary in Paris where Cordon Bleu had their
school. She registered that in PH. Then owner of school registered
focuses on the similarity of must focus not only on the here. If you are registered trademark, you are protected, but if there
the prevalent or dominant predominant words but also on is a real owner, then court can have that one registered.
features of the competing the other features appearing on
trademarks that might cause both labels so that the observer Republic Gas v Petron and Shell
confusion, mistake, and may draw conclusion on
deception in the mind of the whether one is confusingly Largest bulk suppliers and producers of LPG.
purchasing public similar to the other Petron: “GASUL” Sole entity allowed ti allow refillers and distributors
entirety of the marks as applied to refill, use, sell, and distribute GASUL.
to the products, including the SHELL: Sole entity allowed ti allow refillers and distributors to refill,
labels and packaging, in use, sell, and distribute SHELL.
determining confusing Filed complaint with NBI.
similarity.
Regaspo LPG was engaged in refilling and sale of LPG cylinders of
Shell and Petron.
Dominancy
Whether there is infringement and whether Regaspo is liable. YES
Berri Abyadang
Sec 155 RA 8293
Mere unauthorized use of trademark without authority already
Berris’ mark "D-10 80 WP" Abyadang’s mark "NS D-10 trademark infringement
PLUS"

Dominant feature: Dominant feature: Buyers would be led to thinking that Regaspo’s LPGs are that of Shell
D-10 D-10 and Petron’s.

fungicide with 80% Mancozeb fungicide with 80% Mancozeb Containers are products of Petron and Shell.Attempting to pass off
using the same dosage using the same dosage the business of one person as business of another.- Imitative
and manner of application. and manner of application. device on the general appearance of goods misleads prospective
purchasers.
Holistic
Actually, LPG. Magtanong ang inorderan mo. “Ano man yang tangke
niyo?” “Shellane” Shellane talaga yan.
Berri Abyadang
What is going on is that may entity that sells all. What Regaspo is
guilty of, everybody’s doing it. Ginagamit ang containers from
D-10 WP NS D-10 Plus different companies and refill it sa iba. That is actually infringement
plus unfair competition.
Packaging: foil type Packaging: foil type
Birkenstock: Same with Shangri-La

Color schemes: red, green, Color schemes: red, green, Birkeknstock v PSEMC
and white and white
B filed trademark registration, but it was sus[pended due to existing

~ 48 ~
INTELLECTUAL PROPERTY LAW 2017-2018
registration of mark under PSEMC (Phil Shoe Expo Marketing Corp)
PSEMC failed to file required declaration of actual use; thus, mark Seri v Orlane
was cancelled.
Seri Somboonsakdikul: Lolane
Whether Birkenstock may register
Orlane: opposed.
PSEMC failed to file required DAU, so it was deemed to have
abandoned or withdrawn its right over the right. Issue:

Granting arguendo, they filed, B has proven it was lawful owner of Colorable imitation: similarity in form, content, words, sound,
mark. meaning, special arrangement.
To be an oenwer, SEC 2A does not require that there be actual use of
trademark in PH. One may be an owner of mark but may not have yet Dominancy test: dominant features
the right to register. Holistic test: entirety

After all, registration is not a mode of acquiring ownership. If Holistic will be used, Seri’s argument would be tenable.
But Court applied dominancy test.
Like Shang, foreign brands were able to register. B was able to prove
it was the registered owner of the mark. Visual aspect: Lolane was stylized word woith second letter L and
letter A are conjoined. Orlane’s mark is plain block upper case.
Shang Properties v St. Francis Development
Lolane: pronounced as leyn Orlane: pronounced as LAN
St. Francis is engaged in real estate. Filed complaint for unfair
competition before BLA vs Shang Corporation due to “St. Francis Coffee Patners v San Francisco Coffee
Tower” and “St. Francis Shangrila Place”
Coffee Partrners: Franchised San Francisco Coffee, wanted to open
Nasa St. Francis St. mga properties nay an. such coffee shop in Manila

St.Francis: “St. Francis” is used to idenytify prop proj in Ortigas Center San Francisco Coffee Roast: also had the same name of coffee shop
Shang: mark is geographically descriptive.
SFC filed complaint in BLA for infringement and or unfair competition
GR: Geographically descriptive mark is disqualified from registration.
Whether there can be infringement even if the name is not
Cannot be said to have acquired secondary meaning. registered.

Tradename need not be registered. But here the infringement was

Taiwan Collin v Kolin because of confusing similarity that it would deceive purchasers.

1996: Taiwan Kolin filed application for use of Kolin goods Dominancy and Holistic Test were used. Thus, Coffee Partners cannot
(appliances) register.

2006: Kolin electronics opposed. It has Kolin registration. Infringement cases should be filed in courts, not before BLA.

Taiwan: it should be accorded benefits of foreign-registered mark. It Coca-Cola Bottlers v Quintin Gomez
has already registered in China, Malaysia, and Vietnam.
Coca Cola applied for search warramt against Pepsi for hoarding Coke
Kolin: that is identical to ours. empty bottles.
Whether Taiwan is entitled to registration No. No relativity as goods
or services and trademark are different. Coca Cola: 8293 expands meaning of unfair competition includes
other acts contrary to gf of a nature calculated to discredit goods,
Products of Taiwan and Kolin Electronics are not closely related. business

T: home appliances, functions as TV sets and DVD players Whether the act of hoarding constitutes unfair competition
Kolin Elec: power supply and audio equipment accessories, functions
as power supply and audio equipment No. Passing off and fraud are essential components in unfair
competition. Moreover, the acts must be calculated to deceive an
Same classification under NICE classification. Class 9. But ordinary buyer.
subcategories are not the same. T: 2nd Kolin: 3rd
Here, it wasn’t.
There is also difference as to how they are portrayed. These
distinguishing features are different from each other. Test: Is the property covered by IPC? Hoarding is not an intellectual
property.
UFC v Fiesta Barrio
Test: whether it falls under the general unfair competition concept
Fiesta Barrio: registered Papa Boy and Device and definition under 168.1 and 2. Still, no.
UFC opposed application. FB’s mark is similar to “Papa Ketsarap”
Thus, warrant should be quashed.
SC: Papa Boy cannot be registered
This hoarding thing does not constitute as infringement. But is there
Applying the dominancy test, the dominant feature of both marks is theft?
“PAPA”. Fiesta Barrio’s PAPA was placed above others. UFC’s PAPA
mark has been used for decades bc it was from name of owner. Distilleria v La Tondena
Ordinary purchaser will not look further bc they will be found in the
same line. He would think that there is expansion of Papa Ketsarap to La Tondena: filed an action for replevin against D to recover claim of
Papa Boy which is used for Lechon. ownership 18, 157 empty white flint bottles which D was filling for its
use.
Unlike in Kolin, you cannot find them in the same place in the
department stores. Here, nasa isang isle lang. It will confuse buyers, D: already acquired rights of ownership
~ 49 ~
INTELLECTUAL PROPERTY LAW 2017-2018
Whether ownership is transferred Judge Taypin issued warrant against Savage. Wrought iron furniture
was the object of unfair competition involving design patent.
Yes. Sec 2 and 3 of RA 623 are applicable when there is transfer of
sale. No action can be made if there is already a transfer sale (Sec 5) Whether unfair competition involving design patent under RPC still
exists
Here, there is already transfer of rights.
No. Article 189 of RPC is already repealed by passing of IPC. No
Under Sec 5, nothing can be brought against D? Yes. mention of any crime of “unfair competition” involving design patent.
But can D use those bottles? Given all the attributes of ownership…
Criminal liability talaga yan. Pero does that mean wala nang remedy?
May be allowed to use the bottles given the fact that the condition Infringement. Unfair competition is in relation to Trademark, hindi
precedent of ownership. Patent. You have to be very careful.

As stated there, why is this case… If you remember the case of LPG Trademark: Holistic and Dominancy test used both in registration
cases, if you fill up containers, that is infringement and unfair cases and in infringement cases to determine whether there is
competition. colourable imitation
RA 166: ERequirement for application was prior use before
There are two kinds of registration
1. Containers 8293: Prior use is no longer required. What is required is actual use.
2. Under ownership of manufacturer like coke bottles, mga Thus, DAU. There is a period for doing that.
gasul
Yang mga Ginebra, Tanduay, when you buy the bottle you don’t have Unfair competition is related to trademarks, not to copyright or
to return the bottle. There is transfer of ownership. patent. If one has a trademark but is not registered and has
established good will, you cannot file for infringement but unfair
If you look at this provision (RA 623 sec 2 and 3) does not specify that competition and you have to establish deceit.
ownership should be transferred. It just says it is unlawful to use.
Like the one of Ginebra. There are so many cases in trademark but the principles are similar.
Remember ownership. Intellectual property is created by the mind. It
As to whether one can be liable for theft of bottles, no. definitely not. is a creation of the mind. Thus, owned by the creator lang.
Kanila nay un eh. Just bc one has a registered trademark =/= he is already the creator.
That can be rebutted pa.
But can they fill it up for their good? It is not clear.
As I mentioned to you, bar exams are so fond of asking of terms. Take
notes of the kinds pf confusion. Confusion of goods … and… See
Two and ACE?? McDo

Two and Ac Pearl and Dean v Shoemart

Lonzana Food: manufactures food seasoning.
Two and Ace filed for Replevin to recover xxx bottles allegedly owned (NOTE: IMPORTANT CASE: nagisa si reporter here)
by it but used by L for its seasonings.
P and D were into business of light boxes marketed under trademark
Did L violate RA 623 by using bottles of Tanduay? “Poster Ads” which was duly reg in BPTT. P and D negotiated for lease
SC: 2 and Ace cannot use Sec 5 to support claim of ownership. The of contract with SM.
transaction is regarded as a sale. So cannot recover na.
SM later on contracted other companies. P and D: SM installed light
Sec 6 grants exemption. If you use registered bottles, you can only boxes in its several stores.
use that for native indigenous products like patis, toyo… those who The light boxes are similar to what P and D manufactured.
do not have capital to buy brand new bottles.
Whether there was trademark infringement
Yang mga gin, ginebra, di yan pwede ibenta ng Gin. Palitan mo lang
ng sticker. Only for indigenous househould products. L is not liable for P amd D was able to secure trademark cert but the goods were
theft. But violation pa rin to use. Kasi same man. “stationeries” On the contrary it dealt with electricallyoperated
backlit advertising units

Solid Triangle v Sheriff of RTC Only those goods that can be specified in the certificate can one have
exclusive right over.
Judge of QC RTC issued warrant against Sanly Corp. EIIB agents seized
451 boxes of Mitsubishi photo paper. Information was filed against Whether there was unfair competition
Sanly.
“Poster ads” is general term that cannot be associated specifically to
Solid Triangle: imitation! P and D; thus it cannot be considered to use such term to be unfair
competition.
Sanly: the goods are not imitations.
Q: What is the essence of unfair competition?
Whether Sanly is guilty of unfair competition NO A: Passing off the product as another’s.

Sanly did not pass off the subject goods as that of originating from No passing off, no intent to defraud the general public.
Solid Triangle. It claimed it bought goods from Mitsubishi.
Sanly got from other sources. It was selling from other source. Really, Q: Who must you be to file unfair competition?
that is unfair competition, but not under our definition. A: Must have goodwill established. You must be known for that for
others to want to ride on to your popularity. You think SM would
Solid Triangle should sue Mitsubishi for breach of exclusive contract. want people to think na their light boxes are manufactured by P and
Sa HK man niya binili, baka yung HK distributor ang nagbenta. D? You must be somebody to accuse somebody of unfair
competition.
But definitely not unfair competition.
Whether there is copyright infringement No
Savage v Taypin
~ 50 ~
INTELLECTUAL PROPERTY LAW 2017-2018
What did they register? P and D alleged that they registered the
drawing of light boxes with National Library.

Q: Did SM copy? Hindi naman eh. Discuss about P and Dean trying to
make a shortcut with registration?

A: SC: Regarding copyright, SC said for some reason or another, light

box is sabihin mo na lang gadget. Dapat patent siya. For some reason,
it did not acquire patent rights. Since it had no patent, it cannot
prevent anyone from using such.

Irony here is if P and D secured patent, it would have held so for 17

years only. But if under National Library, it would have been
protected for 50 years. That would not have been the intention of the
law.

Patent, Trademark, Copyright are different from each other. That is

what P and D did. They registered light box as copyright.

~ 51 ~
INTELLECTUAL PROPERTY LAW 2017-2018