UNIT 4

X`
LAW

14/10/2024 SPSPS: REGFLIB Atty. Marites U. Ygrubay

(R.A. No. 8293)
INTELLECTUAL PROPERTY RIGHTS:
Consists of: .

1. Copyright and related rights

2. Trademarks and Service Marks
3. Patents
4. Geographic Indications
5. Layout Designs of Integrated Circuits
6. Protection of Undisclosed Information; and
7. Industrial Designs
Law on Patents
 What is a Patent?
• Patent is a grant issued by the government to
an inventor, designer or maker, or his assignee,
the right to exclude others from making, using
or selling his invention, design or utility model
within the country for a specific period of time,
in exchange of disclosure of his invention.
 What is a Utility Model?
- it is a protection option, which is designed to protect
innovations that are not sufficiently inventive to meet the
inventive threshold required for standard patents
application.
- It may be any useful machine, implement, tools, product,
composition, process, improvement or part of the same, that
is of practical utility, novelty, and industrial applicability.
- It is entitled to seven (7) years of protection from the date of
filing, with no possibility of renewal.
 What is an Industrial Design?
- it is any composition of lines or colors or any three-
dimensional form, whether or not associated with lines or
colors; provided such composition or form gives a special
appearance to and can serve as pattern for an industrial
product or handicraft.
- It shall be valid for five (5) years form the filing date of the
application.
- It may be renewed for not more than two (2) consecutive
periods of five (5) years each, by paying the renewal fee.
Three-fold Purpose of Patent:
1. To foster and reward invention;
2. To promote disclosure of inventions to stimulate
further innovations and to permit the public to
practice the invention once the patent expires; and
3. The stringent requirements for patent protection seek
to ensure that ideas in the public domain remain
there for the free use of the public.
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.

• Subjects of Patent - It may be, or may relate to:

✓a product, or
✓process, or
✓an improvement of any of the foregoing.
Statutory Classes of Patentable Inventions:

a) A product, such as a machine, a device, an article of

manufacture, a composition of matter, a microorganism.

b) A process, such as a method of use, a method of

manufacturing, a non-biological process, a
microbiological process;

c) Computer-related inventions; and

d) An improvement of any of the foregoing.

Kinds of Patents & its Requisites:
1. INVENTION PATENT
(a) Novelty, (b) Inventive Step (c) Industrial applicability

2. DESIGN PATENT
(a) Novelty, (b) Ornamentality

3. UTILITY MODEL
(a) Novelty, (b) Industrial applicability
Elements of a Patents:

1. NOVELTY
2. INVENTIVE STEP
3. INDUSTRIAL APPLICABILITY
 Novelty
• Invention must possess elements of novelty, originality
and precedence, and new to the world.
• An invention shall not be considered NEW if it forms part
of a prior art.
Prior Art: .

a) Everything which has been available to the public

anywhere in the world, before the filing date or the
priority date of the application claiming the invention.
b) Those already covered by an earlier application.
 Inventive Step
• An invention involves an inventive step if, having regard
to prior art, it is not obvious to a person skilled in the art
at the time of the filing date or priority date of the
application claiming the invention.
A Person Skilled in the Art:
-presumed to be an ordinary practitioner aware of what was common general
knowledge in the art at the relevant date. Presumed to have knowledge of all
references that are sufficiently related to one another and to the pertinent art and to
have knowledge of all arts reasonably pertinent t the particular problem with which
the inventor was involved.
 Industrially Applicable
• An invention that can be produced and
used in any industry.
• It has to have some practical application
for it to be really useful.
(Not just confined to theories and principles.)
Non-Patentable Inventions:
1. Discoveries;
2. Scientific theories;
3. Mathematical methods;
4. Schemes, rules and methods of performing mental acts, playing
games or doing business and programs for computers;
5. Methods for treatment of human or animal body;
6. Plant varieties and or animal breeds;
7. Aesthetic creations;
8. Contrary to public order or morality.
However, these may be subject of copyright.
PATENTABLE OR NOT?
PATENTABLE OR NOT?
PATENTABLE OR NOT?
PATENTABLE OR NOT?
Drugs and Medicines:

In case of drugs and medicines, the mere discovery of a

new form or new property of a known substance which
does not result in the enhancement of the known
efficacy of that substance, or the mere discovery of any
new property or new use for a known substance, of the
mere use of a known process unless such known
process results in a new product that employs at
least one new reactant.
 BASIC PRINCIPLES:
1. Territoriality
Patents are valid only in the country or region in which it has been
granted.

2. First-to-File Rule
Applicant who files first will get the patent.

3. Disclosure
The applicant shall disclose the invention in a manner sufficiently
clear and complete.
4. Conditional
Patents are granted only upon compliance with the criteria of
patentability.
Rules Governing Patent Ownership:
1. The right to a patent belongs to the inventor, his heirs, or assigns. When two (2)
or more persons have jointly made an invention, the right to a patent shall
belong to them jointly.

2. First-to-file rule If two (2) or more persons have made the invention
separately and independently of each other, the right to the patent shall belong
to the person who filed an application for such invention or where two or more
applications are filed for the same invention, to the applicant who has the
earliest filing date or, the earliest priority date.

3. Commissioned Work The person who commissions the work shall own the
patent, unless otherwise provided in the contract.

4. Employee In case of invention made in the course of employment, the patent

shall belong to the employee if the inventive activity is not part of his regular
duties even if he used the time and facilities of the employer.
 Rules Governing Patent Ownership:
INVENTOR RIGHT TO A PATENT
2 or more persons have jointly made an The right to a patent shall belong to them jointly.
invention
2 or more persons have made the invention The right to the patent shall belong to the person who filed an
separately and independently of each other. application.
2 or more persons have file for the same The applicant who has the earliest filing date or, the earliest
invention. priority date.
Inventions created pursuant to a commission. The person who commissions the work shall own the patent,
unless otherwise provided in the contract.

The employee made the invention in the course The employee, if the inventive activity is not a part of his
of his employment, regular duties even if he uses the time, facilities and materials
of the employer.
The employer, if the invention is the result of the performance
of his regularly-assigned duties, unless there is an agreement,
express or implied, to the contrary.
Rules in Patent Application:

1. Filing date requirements

2.Payment of fees
3.Formal examination
4.Search of Prior Art
Rules in Patent Application:
5. 1st Publication:
a. within 18 months from filing date
b. After publication, any interested party may inspect the
application documents
c. Publication may be prohibited or restricted if it would be
prejudicial to the national security and interests
d. After publication, applicant acquires right of a patentee – ie
to exclude anyone from using the invention
e. But no action can be filed until the grant of the patent
(prescription: 4 years from commission)
6. Substantive Examination (within 6 months from first publication)
7. Publication of Patent
Contents of Application:
1. A request for the grant of a patent
2. A description of the invention
3. Drawings necessary for the understanding of the
invention.
4. One or more claims (define the matter for which
protection is sought; clear and concise); and
5. An abstract (concise summary of the disclosure of the
invention as contained in the description, claims, and
drawings in preferably not more than 150 words)
Unity of Invention
One application = one invention (group of
inventions forming a single general inventive
concept)

Divisional Application
- May be allowed if there is more than one invention,
either voluntarily or within 4 months from
recommendation of the Director.
Case:
• Mr. X, an auditor working in an auditing firm, during
the slack season, had so much free time. While he
was in the office, using the firm’s laptop and other
resources, he was able to develop a cure for cancer.
Q: Who owns the patent to the cure?
A: Mr. X. Even if he used the resources of the firm, the
fact remains that developing a cure for cancer is not
part of his regular duties as an auditor.
Grounds for Cancellation of Patent
Application:

1. The invention is not new or patentable;

2. Non-disclosure of the invention in a manner
sufficiently clear and complete for it to be
carried out by any person skilled in the art;
3. The invention is contrary to public order or
morality.
Effectivity of Patent
A patent shall take effect on the date of the publication
of the grant of the patent in the IPO Gazette.

Term of Patent
The term of the patent shall be 20 years from the filing
date of the application.
Patent Rights:
1. Product – to restrain, prohibit, and prevent any
unauthorized person or entity from making, using,
offering for sale, selling or importing that product;
2. 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;
and
3. Right to conclude licensing contracts for the same.
Patent Infringement:

➢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 the patented process
without the authorization of the patentee.
Manner of Infringement:
1. Literally
There is literal infringement if an accused device falls
directly within the scope of properly interpreted claims.
2. By equivalents
There is infringement by equivalents if two devices do the
same work in substantially the same way and accomplish
substantially the same result even though they differ in
name, form or shape.
(Doctrine of Equivalents: The principle or mode of operation
must be the same or substantially the same.)
Burden of Proof in Patent Infringement
• The burden of proof falls on the defendant.
• Infringement is presumed.

Liabilities for Patent Infringement

• Damages;
• Imprisonment: 6 months – 3 years and/or
Fine: P100,000 – P300,000, at the discretion of the court.

Prescription of Patent Infringement

Three (3) years from the commission of the crime.
ADDITIONAL SLIDES
USE OF INVENTION BY
GOVERNMENT
- A government agency or third person authorized by
the Government, may exploit the invention even
without agreement of the patent owner where:
1. 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
2. A judicial or administrative body has determined
that the manner of exploitation, by the owner of the
patent or his licensee is anti-competitive.
USE OF INVENTION BY
GOVERNMENT
- A government agency or third person authorized by
the Government, may exploit the invention even
without agreement of the patent owner where:
1. 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
2. A judicial or administrative body has determined
that the manner of exploitation, by the owner of the
patent or his licensee is anti-competitive.
VOLUNTARY LICENSING &
TECHNOLOGY TRANSFER AGREEMENTS
➢ Technology Transfer Agreements
- Refers to contracts or agreements involving the:
a) transfer of systematic knowledge for the manufacture
of a product;
b) the application of a process; or
c) rendering of a service including:
i. management contracts; and
ii. the transfer, assignment or licensing of all forms of
intellectual property rights,
including licensing of computer software except computer software
developed for mass market.
- It is in the nature of a Voluntary License Contract
VOLUNTARY LICENSING
- Mandatory provisions:
1. Jurisdiction of disputes – Philippines;
2. Venue of disputes – principal place of business of patentee;
3. Continuous access to improvements in techniques and processes
4. If it includes Arbitration, Venue – Philippines or other neutral
countries, and the following laws are applicable:
a) the procedure of arbitration of the Arbitration Law of the
Philippines;
b) the Arbitration Rules of the UN Commission on International Trade
Law; or
c) the Rules of Conciliation and Arbitration of the International
Chamber of Commerce (ICC)
5. Taxes – borne by the licensor
VOLUNTARY LICENSING
Prohibited provisions: Those adverse to competition and trade:
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;
2. Those pursuant to which the licensor reserves the right to fix the sale
or resale prices of the products manufactured on the basis of the
license;
3. Those that contain restrictions regarding the volume and structure of
production;
4. Those that prohibit the use of competitive technologies in a non-
exclusive technology transfer agreement;
VOLUNTARY LICENSING
5. Those that establish a full or partial purchase option in favor of
the licensor;
6. Those that obligate the licensee to transfer for free to the licensor
the inventions or improvements that may be obtained through the
use of the licensed technology;
7. Those that require payment of royalties to the owners of patents
for patents which are not used;
8. Those that prohibit the licensee to export the licensed product
unless justified for the protection of the legitimate interest of the
licensor such as exports to countries where exclusive licenses to
manufacture and/or distribute the licensed product(s) have
already been granted;
VOLUNTARY LICENSING
9. Those which restrict the use of the technology
supplied after the expiration of the technology
transfer arrangement, except in cases of early
termination of the technology transfer arrangement
due to reason(s) attributable to the licensee;
10. Those which require payments for patents and other
industrial property rights after their expiration, termination
arrangement;
11. Those which require that the technology recipient shall not
contest the validity of any of the patents of the technology
supplier;
VOLUNTARY LICENSING
12. Those which restrict the research and development
activities of the licensee designed to absorb and adapt
the transferred technology to local conditions or to initiate
research and development programs in connection with
new products, processes or equipment;
13. Those which prevent the licensee from adapting the
imported technology to local conditions, or introducing
innovation to it, as long as it does not impair the quality
standards prescribed by the licensor;
COMPULSORY LICENSING
- The issuance of a license by the Director General of the IPO to exploit a
patented invention without the permission of the patent holder, either by
manufacture or through parallel importation.
Grounds:
1. National emergency/circumstances of extreme urgency.
2. Public interest so requires;
3. The use of patent is anti-competitive;
4. Public non-commercial use without satisfactory reasons;
5. Invention is not being worked in the Philippines on a commercial scale
without satisfactory reasons;
6. Demand for patented drugs and medicine is not being met to an
adequate extent and/or reasonable terms, as determined by DOH.
COMPULSORY LICENSING

➢ Issued in whose favor: Granted to any person who

has shown his capability to exploit the invention.
➢ Time when compulsory license cannot be applied:
- before the expiration of a period of:
1. four (4) years from the date of filing of the
application; or
2. three years from the date of the patent
whichever period expires last.
COMPULSORY LICENSING
GR: To obtain license, the petitioner must have made efforts to obtain
authorization from the patent owner on reasonable commercial
terms and conditions but such efforts have not been successful within
a reasonable period of time.
XPNs:
1. Where the petition for compulsory license seeks to remedy a practice
determined after judicial or administrative process to be anti-competitive;
2. In situations of national emergency or other circumstances of extreme urgency;
3. In cases of public non-commercial use; and
4. In cases where the demand for the patented drugs and medicines in the
Philippines is not being met to an adequate extent and on reasonable terms, as
determined by the Secretary of the DOH.
THANK YOU!