PATENT INFRINGEMENT

Infringement - refers to an unauthorized use of a copyrighted or patented invention.

Copyrighted- (of a literary, artistic, or musical work) protected by copyright.

Copyright refers to the legal right of the owner of intellectual property. In simpler

terms, copyright is the right to copy. This means that the original creators of products and
anyone they give authorization to are the only ones with the exclusive right to reproduce the
work.

A patent is the granting of a property right by a sovereign authority to an inventor. This

grant provides the inventor exclusive rights to the patented process, design,
or invention for a designated period in exchange for a comprehensive disclosure of
the invention. They are a form of incorporeal right.

Sec. 71.1 and 76.1

SECTION 71. Rights Conferred by Patent. - 71.1. A patent shall confer on its owner the
following exclusive rights:

(a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent
any unauthorized person or entity from making, using, offering for sale, selling or
importing that product;

(b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any
unauthorized person or entity from using the process, and from manufacturing, dealing
in, using, selling or offering for sale, or importing any product obtained directly or
indirectly from such process.

76.1. The making, using, offering for sale, selling, or importing :

 a patented product or
 a product obtained directly or indirectly from a patented process, or
 the use of a patented process

without the authorization of the patentee constitutes patent infringement:

Provided, That, this shall not apply to instances covered by :

 Sections 72.1 and 72.4 (Limitations of Patent Rights); Section 74 (Use of

Invention by Government); Section 93.6 (Compulsory Licensing); and Section
 93-A (Procedures on Issuance of a Special Compulsory License under the
TRIPS Agreement) of this Code.

1. Limitations of patent rights

72.1. Using a patented product which has been put on the market in the Philippines by
the owner of the product, or with his express 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 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 invention: Provided, further, That the right
to import the drugs and medicines contemplated in this section shall be available to any
government agency or any private third party;

72.4. In the case of drugs and medicines, where the act includes testing, using, making
or selling the invention including any data related thereto, solely for purposes
reasonably related to the development and submission of information and issuance of
approvals by government regulatory agencies required under any law of the Philippines
or of another country that regulates the manufacture, construction, use or sale of any
product: Provided, That, in order to protect the data submitted by the original patent
holder from unfair commercial use provided in Article 39.3 of the Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS Agreement), the Intellectual
Property Office, in consultation with the appropriate government agencies, shall issue
the appropriate rules and regulations necessary therein not later than one hundred
twenty (120) days after the enactment of this law;

2. Use of invention by the government

SECTION 74. Use of Invention by Government. –

74.1. A Government agency or third person authorized by the Government may exploit
the invention even without agreement of the patent owner where:

(a) The public interest, in particular, national security, nutrition, health or the
development of other sectors, as determined by the appropriate agency of the
government, so requires; or

(b) A judicial or administrative body has determined that the manner of exploitation, by
the owner of the patent or his licensee is anti-competitive; or

(c) In the case of drugs and medicines, there is a national emergency or other
circumstance of extreme urgency requiring the use of the invention; or
(d) In the case of drugs and medicines, there is public non-commercial use of the patent
by the patentee, without satisfactory reason; or

(e) In the case of drugs and medicines, the demand for the patented article in the
Philippines is not being met to an adequate extent and on reasonable terms, as
determined by the Secretary of the Department of Health.

Creser Precision System vs. CA, GRno. 118798

ISSUE: Whether Petitioner can file an action for infringement not as a patentee but as an entity in
possession of a right, title or interest in and to the patented invention?

RULING:

NO. Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly provides:

Sec. 42. Civil action for infringement. — Any patentee, or anyone possessing any right, title or interest
in and to the patented invention, whose rights have been infringed,

may bring a civil action before the proper Court of First Instance (now Regional Trial court), to recover
from the infringer damages sustained by reason of the infringement and to secure an injunction for
the protection of his right. . . .

There can be no infringement of a patent until a patent has been issued, since whatever right one has
to  the invention covered by the patent arises alone from the grant of patent.

In short, a person or entity who has not been granted letters patent over an invention and has not
acquired any right or title thereto either as assignee or as licensee, has no cause of action for
infringement because the right to maintain an infringement suit depends on the existence of the patent.

Petitioner admits it has no patent over its aerial fuze. Therefore, it has no legal basis or cause of action
to institute the petition for injunction and damages arising from the alleged infringement by private
respondent. While petitioner claims to be the first inventor of the aerial fuze, still it has no right of
property over the same upon which it can maintain a suit unless it obtains a patent therefor.

Pearl and Dean, Inc. Vs Shoemart, Inc. GR. No. 148222

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged
with one another.

A trademark is any visible sign capable of distinguishing the goods or services of an enterprise and shall
include a stamped or marked container of goods.

The scope of a copyright is confined to literary and artistic works which are original intellectual creations
in the literary and artistic domain. Patentable inventions refer to any technical solution of a problem in
any field of human activity which is new, involves an inventive step and is industrially applicable.

Del Rosario vs. CA, GR no. 115106

A preliminary injunction may be granted at any time after the commencement of the action and
before judgment when it is established that the defendant is doing, threatens, or is about to do, or
is procuring or suffering to be done, some act probably in violation of the... plaintiff's rights.
Thus, there are only two requisites to be satisfied if an injunction is to issue, namely, the
existence of the right to be protected, and that the facts against which the injunction is to be
directed are violative of said right.
For the writ to issue the interest of petitioner in the controversy or the right he seeks to be
protected must be a present right, a legal right which must be shown to be clear and positive.
Under Sec. 55 of The Patent Law a utility model shall not be considered "new" if before the
application for a patent it has been publicly known or publicly used in this country or has been
described in a printed publication or publications circulated within the country, or if it... is
substantially similar to any other utility model so known, used or described within the country.
under Sec. 37 of The Patent law, petitioner as a patentee shall have the exclusive right to... make,
use and sell the patented machine, article or product for the purpose of industry or commerce,
throughout the territory of the Philippines for the term of the patent, and such making, using or
selling by any person without authorization of the patentee constitutes... infringement of his
patent.

Godines vs. CA No. 97343

Thus, according to this doctrine of equivalence , “

(a)n infringement also occurs when a device appropriates a prior invention by

incorporating its innovative concept and,

albeit with some modification and change, performs substantially the same function in
substantially the same way to achieve substantially the same result.”

In this case, the trial court observed: But a careful examination between the two power
tillers will show that they will operate on the same fundamental principles.
An infringement occurs when:

1. appropriates a prior invention by incorporating its innovative concept, (albeit) even

though with some modification and change,

2. performs substantially the same function in substantially the same way, and

Achieves substantially the same result.

Smithkline Beckman Corporation vs. CA. GR No. 12662

When the language of the claim is clear and distinct, the patentee is bound thereby and may not claim
anything beyond them.

The language of the Letter of Patents issued to the petitioner failed to yield anything that it includes
Albendazole.

The doctrine of equivalents does not apply in the case at bar

because it requires that for infringement to take place,

 the device should appropriate a prior invention by incorporating its innovative concept and
although there are some modifications and change they perform substantially the same
results.

The petitioner’s evidence failed to adduce that substantial sameness on both the chemicals they used.
While both compounds produce the same effects of neutralizing parasites in animals, the identity of
result does not amount to infringement.

The petitioner has the burden to show that it satisfies the function-means-and-result-test required by
the doctrine of equivalents. Nothing has been substantiated on how Albendazole can weed the
parasites out from animals which is similar to the manner used by the petitioner in using their own
patented chemical compound.

AA. Contributory Patent infringement -Sec. 76.6

76.6. Anyone who:

 actively induces the infringement of a patent or

  provides the infringer with:
o a component of a patented product or
o of a product produced because of a patented process

knowing it to be:

 especially adopted for infringing the patented invention

 and not suitable for substantial non-infringing use

shall be liable as a contributory infringer and shall be jointly and severally liable
with the infringer. (Sec. 42, R.A. No. 165a)