Professor: Atty. Gabriel T.

Robeniol

Transcribers:
Marc Roby de Chavez (MARX)

Christa Taguiam (CHRISTA)

 Intellectual Property Law Review Notes by MARX and CHRISTA

IPL1 become distinctive, as used in connection with the applicant’s

goods or services in commerce, proof of substantially exclusive
and continuous use thereof by the applicant in commerce in the
What is a Trademark? Philippines for five (5) years before the date on which the claim of
TRADEMARK means any visible sign capable of distinctiveness is made.
distinguishing goods of an enterprise and shall
include a stamped or marked container goods What are the functions of trademark?
• Economic Function - serve as an essential means of
Sec. 121.1 "Mark" means any visible sign capable of distinguishing
the goods (trademark) or services (service mark) of an enterprise
distinguishing the products of one manufacturer or
and shall include a stamped or marked container of goods dealers from those of the others
• Source-indicating Function – to indicate the source
What is the difference between a trademark and service or origin of the goods on which it is used
mark? • Guarantee Function – to guarantee that the product
SERVICE MARK means any visible sign capable of to which it is affixed comes up to a certain standard
distinguishing services of an enterprise of quality
• Advertisement Function – through advertisement in
What is a Trade Name? the broadcast and print media, the owner of the
Sec. 121.3. "Trade name" means the name or designation trademark is able to establish a nexus between its
identifying or distinguishing an enterprise trademarked products and the public in regions
where the owner does not itself manufacture or sell
In the definition of trademark, there is an emphasis on the its own products.
word “visible” meaning perception or sense of sight
What mode of acquiring ownership over trademark, copyright
Can we register the progression of sounds in order to and patent?
distinguish the product that of Selecta ice cream as a Intellectual creation
trademark?
No Can a trademark be conveyed without conveying the
business?
Can we register odor or smell as a trademark? Sec. 149. Assignment and Transfer of Application and Registration. -
No 149.1. An application for registration of a mark, or its registration,
may be assigned or transferred with or without the transfer of the
business using the mark. (n)
Can we register texture as a trademark?
No 149.2. Such assignment or transfer shall, however, be null and
void if it is liable to mislead the public, particularly as regards the
Can we register taste as a trademark? nature, source, manufacturing process, characteristics, or
suitability for their purpose, of the goods or services to which the
No
mark is applied.

Why all of these are not registrable as trademark? 149.3. The assignment of the application for registration of a
Because it is not a visible sign, one which is perceive mark, or of its registration, shall be in writing and require the
signatures of the contracting parties. Transfers by mergers or
by the sense of sight
other forms of succession may be made by any document
supporting such transfer.
Is a tradename per se which is not part of the trademark
registrable as a trademark? 149.4. Assignments and transfers of registration of marks shall be
recorded at the Office on payment of the prescribed fee;
Not registrable, because a tradename is not a visible
assignment and transfers of applications for registration shall, on
sign or mark payment of the same fee, be provisionally recorded, and the
mark, when registered, shall be in the name of the assignee or
Is color red by itself registrable as a trademark? transferee.
Sec. 123.1. A mark cannot be registered if it:
(l) Consists of color alone, unless defined by a given 149.5. Assignments and transfers shall have no effect against third
form parties until they are recorded at the Office.

Sec. 123.2. As regards signs or devices mentioned in paragraphs What is a composite mark?
(j), (k), and (l), nothing shall prevent the registration of any such Marks, shapes or symbols, part of it is simulated
sign or device which has become distinctive in relation to the
goods for which registration is requested as a result of the use
that have been made of it in commerce in the Philippines. The
Office may accept as prima facie evidence that the mark has

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What is a generic mark? Those which requires imagination, thought or

A term is generic when the same is the actual name perception to reach a conclusion as to the nature of
of the product the goods or services

Is it registrable? What is an Immoral and scandalous Mark?

Sec. 123.1. A mark cannot be registered if it: Sec. 123.1. A mark cannot be registered if it:
(a) Consists of immoral, deceptive or scandalous
(h) Consists exclusively of signs that are generic for the matter, or matter which may disparage or falsely
goods or services that they seek to identify; suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them
into contempt or disrepute;
Example: Sago Tires, disclaim the word tires
(m) Is contrary to public order or morality.
When a generic term is made part of an otherwise registrable
mark, it must be disclaimed before the composite mark may Scandalous – shocking to the sense of propriety,
be registered. The basic purpose of disclaimers is to make of offensive to the conscience or moral feelings or
record that a significant element of a composite mark is not calling out for condemnation
being exclusively appropriated by itself apart from the
composite. What are geographical indications?
Geographical indications are indications which
After filing the application for trademark registration, the IPO identify a good as originating in the territory of a
will communicate with the applicant and tell him what are Member, or a region or locality in that territory,
the objectionable features of his trademark application. Most where a given quality, reputation or other
often than not, he will be required to disclaim the right to characteristic of the goods is essentially attributable
exclusively use generic terms which form part of his to its geographical origin.
trademark.
Can you name mango products as Cebu city mangoes? Is it
What is a descriptive mark? registrable?
Sec. 123.1. A mark cannot be registered if it: No, but if used with other registrable marks it may
(j) Consists exclusively of signs or of indications that
be allowed
may serve in trade to designate the kind, quality,
quantity, intended purpose, value, geographical origin,
time or production of the goods or rendering of the In case of Baguio oil, it was registered because it acquired
services, or other characteristics of the goods or secondary meaning even prior to its registration
services;

What is the doctrine of secondary meaning?

What is an Arbitrary or Fanciful mark? A word or phrase originally incapable of exclusive
Arbitrary mark is a word or picture that is in the appropriation with reference to an article of the
common linguistic use but which, when used in market, because geographically or otherwise
connection with certain goods or services, neither deceptive, might nevertheless have been used so
suggests nor describes any quality or characteristic long and so exclusively by one producer with
of those particular goods or services reference to his article that, in that trade and to that
branch of the purchasing public, the word or phrase
Is it registrable? has come to mean that the article was his product.
Yes, a fanciful and arbitrary word is not only the
safest but also the strongest mark, since every General Rule: geographical indications or descriptive marks
infringer is suspected of attempting to capitalize as trademarks
upon the reputation and goodwill of its owner
Exception: when it acquired secondary meaning because of
What is a suggestive mark? prolonged use
A word, picture or other symbol that suggests, but
does not directly describe, something about the What is a disparaging mark?
goods or services in connection with which it is used Sec. 123.1. A mark cannot be registered if it:
as a mark. (a) Consists of immoral, deceptive or scandalous
matter, or matter which may disparage or falsely
suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them
into contempt or disrepute;

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Is it an absolute rule that whoever first file the application for

Any mark that consists of or comprises matter registration is absolutely entitled to the registration of the
which, with regard to persons, institutions, beliefs or mark against another?
national symbols, does any of the following: Not absolute
• Disparages them
• Falsely suggests a connection with them Sec. 123.1. A mark cannot be registered if it:
(d) Is identical with a registered mark belonging to a
• Brings them into contempt different proprietor or a mark with an earlier filing or
• Brings them into disrepute priority date, in respect of:
(i) The same goods or services, or
Is Belo or Calayan clinic registrable? (ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as
Yes to be likely to deceive or cause
confusion;
Name, signature or portrait What is the exception?
A name, signature or portrait may be registered if it Sec. 236. Preservation of Existing Rights. - Nothing herein shall
is the applicant’s name signature or portrait. adversely affect the rights on the enforcement of rights in
patents, utility models, industrial designs, marks and works,
acquired in good faith prior to the effective date of this Act.
Sec. 123.1. A mark cannot be registered if it:
(c) Consists of a name, portrait or signature identifying
a particular living individual except by his written What is a confusingly similar trademark?
consent, or the name, signature, or portrait of a Sec. 123.1. A mark cannot be registered if it:
deceased President of the Philippines, during the life of (e) Is identical with, or confusingly similar to, or
his widow, if any, except by written consent of the constitutes a translation of a mark which is considered
widow; by the competent authority of the Philippines to be
well-known internationally and in the Philippines,
The consent must be written consent to the whether or not it is registered here, as being already
the mark of a person other than the applicant for
registration of the identifying matter as a trademark. registration, and used for identical or similar goods or
Both consent to use and consent to registered is services: Provided, That in determining whether a
required mark is well-known, account shall be taken of the
knowledge of the relevant sector of the public, rather
than of the public at large, including knowledge in the
Are National or international symbols can be part of a Philippines which has been obtained as a result of the
trademark? promotion of the mark;
Sec 123.1. A mark cannot be registered if it:
(a) Consists of immoral, deceptive or scandalous (f) Is identical with, or confusingly similar to, or
matter, or matter which may disparage or falsely constitutes a translation of a mark considered well-
suggest a connection with persons, living or dead, known in accordance with the preceding paragraph,
institutions, beliefs, or national symbols, or bring them which is registered in the Philippines with respect to
into contempt or disrepute; goods or services which are not similar to those with
respect to which registration is applied for: Provided,
Why not registrable? That use of the mark in relation to those goods or
services would indicate a connection between those
Because of its meaning, appearance and/or sound, goods or services, and the owner of the registered
immediately suggests or refers to the country for mark: Provided further, That the interests of the owner
which it stands of the registered mark are likely to be damaged by
such use;
Prior to the effectivity of the Intellectual property code, the
Philippines used to adhere the “first to use” system, meaning, In order to determine whether there is confusingly similarity,
whoever who is the first to use the trademark is entitled to we have to apply the test of dominancy, meaning we have to
registration. But with the effectivity of the IPC, we now look at the Dominant feature of the mark.
changed our basis of registration from “first to use” to “first
to file” system. Most favored nation treatment

First-to-file system - whoever first to file an application Right to a national treaty

enjoys preference to have his application examined ahead of
any identical or similar marks Well known

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IPL2 indicate a connection between those goods or services

and the owner of the registered mark: Provided,
further, That the interests of the owner of the
When is ownership over a trademark acquired? registered mark are likely to be damaged by such use.
Upon creation (mode of acquiring ownership)
Can I use Toyota for motor vehicles?
A piece of paper, blank bond paper, drawn with a mark to be No
used as a trademark. There are 2 kinds of property involved,
one is the piece of paper and the other is the intangible Can I use Toyota for automobile tires?
trademark. In so far as the piece of paper with the drawing No, because the trademark is related to the goods
concerned, I owned it. But how about the trademark, the where such trademark is used and it may create
design itself? confusion upon the consumers

Well-known brands, should it be registered in the intellectual Is use actually necessary for the ownership of the mark?
property of the Philippines for them to acquire protection in No
the Philippines?
No What then is the importance of the actual use for trademark
registration?
Let’s say, I have my initial GTR, I applied for trademark The IP code requirements for a trademark
registration in Singapore. It is not a well-known brand. Then I application do not include any use in commerce of
stepped back in the Philippines, do I own a trademark as far the trademark at the time of filing of the application.
as in the Philippines concerned? However, the applicant shall file a declaration of
Yes actual use of the mark and evidence to that effect,
as prescribed by the Regulations, within 3 years from
Creation confers ownership over a trademark the date of the filing of the application otherwise the
application shall be refused or the mark shall be
What right does the applicant acquires upon application for removed from the Register by the director of patents
registration?
Right of Priority – a trademark owner who is first to Sec. 124.2. The applicant or the registrant shall file a declaration
file an application for the registration of a mark of actual use of the mark with evidence to that effect, as
prescribed by the Regulations within three (3) years from the
acquires the limited right to have his application
filing date of the application. Otherwise, the application shall be
examined ahead of any identical or similar mark. refused or the mark shall be removed from the Register by the
Director.
The filing of the application and the fact of registration
confirms that ownership Is prior use of trademark necessary?
Depends - secondary meaning
Registration creates or confers a prima facie evidence of
ownership over the mark. Is the 3-year period is the period to submit proof of use or
where should the applicant use such trademark?
What right does the applicant acquires upon registration of To submit proof of use
the mark? Upon issuance the certificate of registration?
Sec. 147. Rights Conferred. - In registered marks, the registered owner is supposed to
147.1. The owner of a registered mark shall have the
submit proof of actual use of the mark.
exclusive right to prevent all third parties not having
the owner’s consent from using in the course of trade
identical or similar signs or containers for goods or Declaration of Actual Use
services which are identical or similar to those in Sec. 124.2. The applicant or the registrant shall file a declaration
respect of which the trademark is registered where of actual use of the mark with evidence to that effect, as
such use would result in a likelihood of confusion. In prescribed by the Regulations within three (3) years from the
case of the use, of an identical sign for identical goods filing date of the application. Otherwise, the application shall be
or services, a likelihood of confusion shall be refused or the mark shall be removed from the Register by the
presumed. Director.

147.2. The exclusive right of the owner of a well- Sec. 145. Duration. - A certificate of registration shall remain in
known mark defined in Subsection 123.1(e) which is force for ten (10) years: Provided, That the registrant shall file a
registered in the Philippines, shall extend to goods and declaration of actual use and evidence to that effect, or shall
services which are not similar to those in respect of show valid reasons based on the existence of obstacles to such
which the mark is registered: Provided, That use of use, as prescribed by the Regulations, within one (1) year from
that mark in relation to those goods or services would the fifth anniversary of the date of the registration of the mark.
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Otherwise, the mark shall be removed from the Register by the

Office.
If the mark is unregistered the protection covers only not
similar goods or services of the copier. The owner of the well-
Declaration of actual use is required by law that it should be known mark only enjoys protection to related products but
in an affidavit form not to totally unrelated products (limited protection)
There should be documentary proof that must be attached to Sec. 144. Classification of Goods and Services. -
the declaration of actual use which could be in the form of 144.1. Each registration, and any publication of the Office which
leaflets, brochures and etc. concerns an application or registration effected by the Office shall
indicate the goods or services by their names, grouped according
to the classes of the Nice Classification, and each group shall be
Failure to use within the prescribed period may result to preceded by the number of the class of that Classification to
rejection of the trademark application or cancellation or which that group of goods or services belongs, presented in the
revocation of the registration order of the classes of the said Classification.

144.2. Goods or services may not be considered as being similar

Criteria for well-known brands or dissimilar to each other on the ground that, in any registration
a) The duration, extent and geographical area of any or publication by the Office, they appear in different classes of the
use of the mark, in particular, the duration, extent Nice Classification.
and geographical area of any promotion of the mark,
including advertising or publicity and the Principle of Multiple filing
presentation, at fairs or exhibitions, of the goods
and/or services to which the mark applies How to file trademark application
b) The market share, in the Philippines and in other A. Filing of application
countries, of the goods and/or services to which the Who has the right to file a trademark
mark applies application? Under whose name the
c) The degree of the inherent or acquired distinction of trademark application be?
the mark the application must be done in
d) The quality-image or reputation acquired by the and under the name of the owner
mark
e) The extent to which the mark has been registered in Can a lawyer file an application in behalf of
the world his client?
f) The exclusivity of use attained by the mark in the Yes, provided there is a special
world power of attorney
g) The commercial value attributed to the mark in the
Sec. 125. Representation; Address for
world
Service. - If the applicant is not domiciled or
h) The record of successful protection of the rights in has no real and effective commercial
the mark establishment in the Philippines, he shall
i) The outcome of litigations dealing with the issue of designate by a written document filed in
the office, the name and address of a
whether the mark is a well-known mark.
Philippine resident who may be served
j) The presence of absence of identical or similar marks notices or process in proceedings affecting
validly registered for or used on identical or similar the mark. Such notices or services may be
goods or services and owned by persons other than served upon the person so designated by
leaving a copy thereof at the address
the person claiming that his mark is a well-known
specified in the last designation filed. If the
mark person so designated cannot be found at
the address given in the last designation,
The relevant sector of the market that will determine such notice or process may be served upon
the Director
whether or not a mark is well-known

Should a well-known mark be registered in the intellectual Can a franchisee file an application for the
property office in the Philippines in order to acquire protection franchiser?
under Philippine law?
It may or it may not be registered Always pay filing fees

If the mark is registered the protection covers similar good or Where do we file trademark application?
services of the copier (full protection) Intellectual Property Office
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adversarial. The applicant and oppositor

What agency is the registry of trademarks in will be in a hearing before the IPO officer to
the Philippines? determine whether to whom is entitled to
Intellectual Property Office the registration of the mark.

B. Examination If the application is denied, the opposition

At this stage, the examiners look up to the granted, that is the end registration
registrability of the trademark
If the application is granted, then final stage
3 things that may happen in examination
Denial of the application or D. Issuance of certificate of registration
Submit further documents Sec. 136. Issuance and Publication of Certificate. -
When the period for filing the opposition has expired,
Given due course
or when the Director of Legal Affairs shall have denied
the opposition, the Office upon payment of the
If denied, then that is the end. Refile it required fee, shall issue the certificate of registration.
again Upon issuance of a certificate of registration, notice
thereof making reference to the publication of the
application shall be published in the IPO Gazette.
In this stage, the proceedings is ex parte,
meaning, not adversarial, no adverse party The date of the certificate of registration is
important for the filing the DAU, why?
C. Publication When is the filing of DAU after registration?
After examination and it was given due Sec. 145. Duration.- A certificate of
course, then it is published in the official registration shall remain in force for ten
gazette of the IPO (10) years: Provided, That the registrant
shall file a declaration of actual use and
evidence to that effect, or shall show valid
The date of the release of the copy of the reasons based on the existence of obstacles
official gazette is very important for to such use, as prescribed by the
purposes of filing the oppositions. Regulations, within one (1) year from the
fifth anniversary of the date of the
registration of the mark. Otherwise, the
Anyone who wants to oppose the mark shall be removed from the Register by
trademark application can do so, within 30 the Office.
days from the release of the official gazette
or an extended period of not more than 120 IPL3
days
Protection of trademarks
Sec. 134. Opposition. - Any person who believes that
he would be damaged by the registration of a mark
There are 2 ways which trademark may be protected
may, upon payment of the required fee and within
thirty (30) days after the publication referred to in depending on the stage of the registration process. If it is in
Subsection 133.2, file with the Office an opposition to the application stage, then the way to protect the trademark
the application. Such opposition shall be in writing and is to file an opposition to the application
verified by the oppositor or by any person on his
behalf who knows the facts, and shall specify the
grounds on which it is based and include a statement Who may file an opposition case?
of the facts relied upon. Copies of certificates of Sec. 134. Opposition. - Any person who believes that he would be
registration of marks registered in other countries or damaged by the registration of a mark may, upon payment of the
other supporting documents mentioned in the required fee and within thirty (30) days after the publication
opposition shall be filed therewith, together with the referred to in Subsection 133.2, file with the Office an opposition
translation in English, if not in the English language. For to the application. Such opposition shall be in writing and verified
good cause shown and upon payment of the required by the oppositor or by any person on his behalf who knows the
surcharge, the time for filing an opposition may be facts, and shall specify the grounds on which it is based and
extended by the Director of Legal Affairs, who shall include a statement of the facts relied upon. Copies of certificates
notify the applicant of such extension. The Regulations of registration of marks registered in other countries or other
shall fix the maximum period of time within which to supporting documents mentioned in the opposition shall be filed
file the opposition. therewith, together with the translation in English, if not in the
English language. For good cause shown and upon payment of the
required surcharge, the time for filing an opposition may be
After the publication and there is extended by the Director of Legal Affairs, who shall notify the
opposition, then the case becomes

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applicant of such extension. The Regulations shall fix the to misrepresent the source of the goods or
maximum period of time within which to file the opposition. services on or in connection with which the
mark is used. If the registered mark
becomes the generic name for less than all
Period of filing the opposition
of the goods or services for which it is
within thirty (30) days from the receipt of the IPO registered, a petition to cancel the
gazette which can be extended for another 30 day registration for only those goods or services
provided for good cause shown and upon payment may be filed. A registered mark shall not be
deemed to be the generic name of goods or
of required surcharge
services solely because such mark is also
used as a name of or to identify a unique
Procedure for filing an opposition product or service. The primary significance
• file an initiatory pleading, a verified opposition of the registered mark to the relevant
public rather than purchaser motivation
• jurisdiction to hear and decide inter partes cases shall be the test for determining whether
regarding opposition of trademark registration is the registered mark has become the generic
within the Intellectual property office particularly name of goods or services on or in
the bureu of legal affairs connection with which it has been used.
(c) At any time, if the registered owner of the
• after opposition, a verified answer is filed, then the mark without legitimate reason fails to use
reply and rejoinder the mark within the Philippines, or to cause
• preliminary conference which is similar to pre-trial it to be used in the Philippines by virtue of a
license during an uninterrupted period of
three (3) years or longer.
usually position papers are filed and submitted for
decision
What initiatory pleading?
A petition for cancellation, file it with the bureau of
The IPO is not only the quasi-judicial agency that
legal affairs of IPO. The RTC has concurrent
jurisdiction. So, whoever takes the jurisdiction first
Anyone who feels aggrieved from the decision of officer is the
excludes the rest
IPO may file a motion for reconsideration
What is the measure of damages in case of unfair competition
Anyone who feels aggrieved from the resolution of the MR
or if there is infringement?
can appeal to the director general of IPO
Can a person file a petition for cancellation if he did not
Anyone who feels aggrieved from the decision of the director
oppose the application?
general may appeal to the Court of appeals via petition for
Yes, but it differs if it is an inter partes case in one
review under rule 43
hand and infringement or unfair competition in the
other.
The decision of the IPO is immediately executory. So there is
a need for a temporary restraining order or an injunction
In terms of jurisdiction, inter partes case is filed in IPO, while
infringement or unfair competition, file it in the RTC.
If the trademark has already been registered, what is the
remedy?
What is the nature of the proceedings?
Petition for cancellation of the trademark
Inter partes cases are administrative in character
while unfair competition and infringement are
Period for filing a petition for cancellation?
judicial in character
Sec. 151. Cancellation. -
151.1. A petition to cancel a registration of a mark
under this Act may be filed with the Bureau of Legal Infringement and unfair competition can be filed as
Affairs by any person who believes that he is or will be a civil case or criminal case
damaged by the registration of a mark under this Act
as follows:
(a) Within five (5) years from the date of the What is the proof required for inter partes cases?
registration of the mark under this Act. Substantial evidence
(b) At any time, if the registered mark becomes
the generic name for the goods or services,
What is the proof required for infringement or unfair
or a portion thereof, for which it is
registered, or has been abandoned, or its competition?
registration was obtained fraudulently or Civil case: preponderance of evidence
contrary to the provisions of this Act, or if Criminal case: proof beyond reasonable doubt
the registered mark is being used by, or
with the permission of, the registrant so as
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What are the remedies available in an inter partes case? Confusion as to goods – in which event the ordinarily
Infringement and unfair competition? prudent purchaser would be induced to purchase one
product in the belief that he was purchasing the other
What is the mode of appeal for an inter partes case?
Infringement and unfair competition? Confusion as to business – though the goods of the parties
Rule 43, petition for review are different, the infringer’s product is such as might
reasonably be assumed to originate with the plaintiff, and the
In case of infringement or unfair competition, the public would then be deceived either into that belief or into
mode of appeal is ordinary appeal under rule 41 the belief that there is some connection between the plaintiff
and defendant which, in fact, does not exist.
Holistic vs Dominancy
Spoof Unlimited, is there an infringement?
IPL4 None, because it does not create confusion

What is infringement? Porsche car and vox wagen

Sec. 155. Remedies; Infringement. - Any person who shall, without
the consent of the owner of the registered mark:
What is unfair competition?
155.1. Use in commerce any reproduction, counterfeit,
Sec. 168. Unfair Competition, Rights, Regulation and Remedies. -
copy, or colorable imitation of a registered mark or the
168.1. A person who has identified in the mind of the
same container or a dominant feature thereof in
public the goods he manufactures or deals in, his
connection with the sale, offering for sale, distribution,
business or services from those of others, whether or
advertising of any goods or services including other
not a registered mark is employed, has a property right
preparatory steps necessary to carry out the sale of
in the goodwill of the said goods, business or services
any goods or services on or in connection with which
so identified, which will be protected in the same
such use is likely to cause confusion, or to cause
manner as other property rights.
mistake, or to deceive; or
168.2. Any person who shall employ deception or any
155.2. Reproduce, counterfeit, copy or colorably
other means contrary to good faith by which he shall
imitate a registered mark or a dominant feature
pass off the goods manufactured by him or in which he
thereof and apply such reproduction, counterfeit, copy
deals, or his business, or services for those of the one
or colorable imitation to labels, signs, prints, packages,
having established such goodwill, or who shall commit
wrappers, receptacles or advertisements intended to
any acts calculated to produce said result, shall be
be used in commerce upon or in connection with the
guilty of unfair competition, and shall be subject to an
sale, offering for sale, distribution, or advertising of
action therefor.
goods or services on or in connection with which such
use is likely to cause confusion, or to cause mistake, or
168.3. In particular, and without in any way limiting
to deceive, shall be liable in a civil action for
the scope of protection against unfair competition, the
infringement by the registrant for the remedies
following shall be deemed guilty of unfair competition:
hereinafter set forth: Provided, That the infringement
(a) Any person, who is selling his goods and
takes place at the moment any of the acts stated in
gives them the general appearance of
Subsection
goods of another manufacturer or dealer,
either as to the goods themselves or in the
155.1 or this subsection are committed regardless of
wrapping of the packages in which they are
whether there is actual sale of goods or services using
contained, or the devices or words thereon,
the infringing material.
or in any other feature of their appearance,
which would be likely to influence
Elements of infringement purchasers to believe that the goods
• Validity of plaintiff’s mark offered are those of a manufacturer or
dealer, other than the actual manufacturer
• Plaintiff’s ownership of the mark or dealer, or who otherwise clothes the
• The use of the mark or its colorable imitation by the goods with such appearance as shall
alleged infringer results in “likelihood of confusion” deceive the public and defraud another of
his legitimate trade, or any subsequent
vendor of such goods or any agent of any
Why is infringement prohibited? vendor engaged in selling such goods with a
Because it causes confusion, the registered owner is like purpose;
injured (b) Any person who by any artifice, or device,
or who employs any other means calculated
to induce the false belief that such person is
What kind of confusion constitutes trademark infringement? offering the services of another who has
• Confusion as to goods identified such services in the mind of the
• Confusion as to origin public; or
(c) Any person who shall make any false
statement in the course of trade or who
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shall commit any other act contrary to good complaining party (confusing similarity in the
faith of a nature calculated to discredit the
general appearance of the goods)
goods, business or services of another.
168.4. The remedies provided by Sections 156, 157 and • That the person complained of should have
161 shall apply mutatis mutandis. clothed the goods with such appearance for the
purpose of deceiving the public and defrauding
What is the focus of infringement? the complaining party of his legitimate trade
The infringement committed against the trademark (intent to deceive the public and defraud a
competitor)
What is the focus of unfair competition?
The competition that is deceptive What is the difference between infringement and unfair
competition?
Is it a necessary requirement that in order to have trademark In infringement, there is a requirement that the
infringement that the trademark be registered? trademark is registered except in case of well-known
General Rule: registration sis a requirement for mark, on the other hand, any act which makes
there to be a trademark infringement confusion or any deception in the mind of the public
Exception: into believing that one product is sourced or
o Well-known marks originated from another person that constitute
o Those who have been using it long before unfair competition. There can be unfair competition
the registration or the priority date (sec. 3-B even without using a trademark
class)
Can there be an unfair competition and infringement at the
How about the requirement for use, should the registered same time?
owner of the trademark first use the trademark before Yes
anyone can commit infringement?
No, as long as the trademark is validly registered and Yellow pages, newspaper and magazine advertisements, were
so long as abandonment had not yet vest in by the advertiser uses the trademark of another, but the
reason of the non-use of the mark then there can advertiser’s business is different from the trademark owner’s
still be infringement of the mark business, is there an infringement committed by the publisher
of the yellow pages, newspaper or magazine? What is the
What is the dominancy test? remedy?
The courts give greater weight to the similarity of Injunction
the appearance of the product arising from the
adoption of the dominant features of the registered Sec. 159. Limitations to Actions for Infringement. -
mark, disregarding minor differences Notwithstanding any other provision of this Act, the remedies
given to the owner of a right infringed under this Act shall be
limited as follows:
It focuses on the similarity of the prevalent features 159.3. Where the infringement complained of is
of the competing trademarks that might cause contained in or is part of paid advertisement in a
confusion newspaper, magazine, or other similar periodical or in
an electronic communication, the remedies of the
owner of the right infringed as against the publisher or
What is the holistic test? distributor of such newspaper, magazine, or other
The courts are required to consider the entirety of similar periodical or electronic communication shall be
the marks as applied to the products, including the limited to an injunction against the presentation of
such advertising matter in future issues of such
labels and packaging, in determining confusing newspapers, magazines, or other similar periodicals or
similarity in future transmissions of such electronic
communications. The limitations of this subparagraph
What are the elements of unfair competition? shall apply only to innocent infringers: Provided, That
such injunctive relief shall not be available to the
• That the person complained of shall have given owner of the right infringed with respect to an issue of
to his goods the general appearance of the a newspaper, magazine, or other similar periodical or
goods of the complaining party, either in the an electronic communication containing infringing
matter where restraining the dissemination of such
wrapping of the packages in which they are
infringing matter in any particular issue of such
contained, or the devices or words thereon or in periodical or in an electronic communication would
any other feature of their appearance which delay the delivery of such issue or transmission of such
would be likely to influence purchasers to electronic communication is customarily conducted in
accordance with the sound business practice, and not
believe that the goods offered are those of the
due to any method or device adopted to evade this
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section or to prevent or delay the issuance of an In the issuance of a writ or search and seizure order in civil
injunction or restraining order with respect to such
case, is it indispensable that there must be a civil case
infringing matter.
pending?
IPL5 No, it is not necessary that there be an actual case of
infringement or unfair competition before a person
If there are already infringement and unfair competition, can ask for a search and seizure
what will be the remedies available for the aggrieved party?
If there is no pending case yet, what will be the initiatory
• Search warrant in a criminal case
pleading for a search and seizure order?
• Search and seizure order in civil cases for unfair
A verified petition
competition and infringement
• Application for TRO and injunction
If there is a pending a case in court for infringement or unfair
• damages
competition, what will be the initiatory pleading for a search
and seizure order?
What is a search warrant?
motion
Section 1. Search warrant defined. — A search warrant is an order
in writing issued in the name of the People of the Philippines,
signed by a judge and directed to a peace officer, commanding Damages, how do we quantify damages?
him to search for personal property described therein and bring it • Reasonable profit which the complaining party
before the court.
would have made, had the defendant not infringed
his said rights
What are the requirements of a valid search warrant?
• The profit which the defendant actually made out of
The requisites for the issuance of a search warrant
the infringement
are:
• Reasonable percentage based upon the amount of
(1) probable cause is present;
gross sales of the defendant of the value of the
(2) such probable cause must be determined
services in connection with which the mark or trade
personally by the judge;
name was issued in the infringement of the rights of
(3) the judge must examine, in writing and
the complaining party
under oath or affirmation, the complainant
and the witnesses he or she may produce;
What is the better choice?
(4) the applicant and the witnesses testify on
Depends on the availability of evidence and the
the facts personally known to them; and
circumstance of the case
(5) the warrant specifically describes the place
to be searched and the things to be seized. nd
Let’s say you will claim damages based on the 2 option, how
will you compel your opponent to testify in court?
What is probable cause?
By Subpoena ad testificandum or modes of discovery
probable cause means such facts and circumstances
which would lead a reasonable discreet and prudent
how will you compel your opponent to produce documentary
man to believe that an offense has been committed
evidence in court?
and that the objects sought in connection with the
By subpoena duces tecum or modes of discovery
offense are in the place sought to be searched.
What kind of witness is your opponent if he was summoned
Life time of a search warrant?
Section 10. Validity of search warrant. — A search warrant shall by a subpoena ad testificandum?
be valid for ten (10) days from its date. Thereafter it shall be void. Adverse witness

When should it be implemented? Temporary restraining order and a writ preliminary injunction
Section 9. Time of making search. — The warrant must direct that
it be served in the day time, unless the affidavit asserts that the How many days is a TRO good for?
property is on the person or in the place ordered to be searched,
in which case a direction may be inserted that it be served at any 20 days from issuance
time of the day or night.
If issued by CA – 60 days
Search and seizure order in a civil case, what are the
requirements? If issued by SC – it is as good as a writ of preliminary
Read A.M 02-1-06 or the book injunction

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What is the requirement for the validity for the assignment of How does the IP code ensure the flow down of technology to
a trademark? the Philippines?
For the validity of a trademark assignment, the good The IP code requires the registration of any contract that may
will must be assigned. involve technology transfer arrangement.

What happened to the trademark assignment if the goodwill What was the recording have to do with assuring the flow
was not included? down of technology?
The trademark assignment is invalid IP code reduces the contract between the Philippine
counter-part and foreign counter-part, and if there
In the case of a trademark licensing, what is the requirement? are provisions in that contract which prohibits or
Sec. 150. License Contracts. - prevents the flow down of technology, the IP code
150.1. Any license contract concerning the registration
will not record such contract.
of a mark, or an application therefor, shall provide for
effective control by the licensor of the quality of the
goods or services of the licensee in connection with If it is not recorded, it is not valid
which the mark is used. If the license contract does not
provide for such quality control, or if such quality
Franchising - An arrangement whereby one person (the
control is not effectively carried out, the license
contract shall not be valid. franchisor), who has developed a system for conducting a
particular business, allows another person (the franchisee) to
Should the trademark assignment be recorded? If it is not use that system in accordance with the prescription of the
recorded what is the effect? franchisor, in exchange for a consideration
Sec. 149. Assignment and Transfer of Application and
Registration. - Merchandising – the licensing of publicly recognizable
149.4. Assignments and transfers of registration of
intellectual property for use on or in association with specific
marks shall be recorded at the Office on payment of
the prescribed fee; assignment and transfers of products or services to foster sales
applications for registration shall, on payment of the
same fee, be provisionally recorded, and the mark, Difference between franchising and merchandising?
when registered, shall be in the name of the assignee
or transferee.
Example of a merchandising contract is a dealer ship
149.5. Assignments and transfers shall have no effect agreement or reseller agreement
against third parties until they are recorded at the
Office.
LAW ON COPYRIGHT
Valid between parties, even if not recorded
What is copyright?
What is a technology transfer arrangement?
The term "technology transfer arrangements" When does copy right exist?
refers to contracts or agreements involving the
transfer of systematic knowledge for the What is copyrightable?
manufacture of a product, the application of a Expression of an idea
process, or rendering of a service including
management contracts; and the transfer, Are newspapers, news items, UST law review copyrightable?
assignment or licensing of all forms of intellectual You cannot appropriate for yourself the news, but
property rights, including licensing of computer the contents of the news report can be copyrighted.
software except computer software developed for In other words, the wordings or the contents of the
mass market. news cannot be copied but the news itself cannot be
exclusively appropriated
It simply means that the technical-know-how,
technology, capability, science, art or medicine in Original works
foreign country should go down to the Philippines.
So if there is a contract between a foreign counter- Derivative works
part and a Philippine counter-part involving
technology that is not yet know to Filipinos, the IP
code makes sure that the technology goes down to
the Philippine

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IPL6 • The employer, if the work is the result of the

performance of his regularly-assigned duties unless
Who has the right to a copyright? Who is the owner? As a there is an agreement, express or implied, to the
general rule, what are derivative rules? What are the contrary.
exemptions to the general rule?
A copyright belongs to the author Is there any instance where a corporation can become an
author of a copyrightable work even if there is no employer-
And when we say author, what is our concept of an author? employee relationship?
He is a natural person who has created the work. When the employer enters into a commission work.
(which is copyrightable). He is the creator.
Any other instance where a corporation can become an owner
In movies, who is the author? as a juridical person?
Director or ?! Remember PHILSCAP

In music? Feria co-authored a book in civil procedure with Noche. What

The composer. is a joint authorship?
The co-authors shall be the original owners of the
Screenplays? copyright and in the absence of agreement; their
Screen writers. right shall be governed by the rules on co-
ownership.
The authors of the books. The lyrics in musical composition,
the author is the composer. In books, the author. So the An example of joint authorship is the book of Feria-Noche. As
concept of an author is the creator of the work. to ownership of jointly authored work, what is the rule? To
whom does the right to the copyrightable jointly authored
As a general rule, it is the creator or the author who is the work belong?
owner of the work. All the contributors own, unless they stipulate
otherwise.
What is the exception?
Which law govern?
In painting, the author is the painter. In sculptures, the author The rules on co-ownership.
is the sculptor. Can a corporation, for instance, be an author?
UST as a corporation, can it be an author of a sculpture? The exception is if there is a stipulation to the contrary,
Can a corporation be copyrightable? meaning, they can be governed by rules other than co-
Yes. ownership.

How? Did you watch the movie Music and Lyrics? Another
While by definition, only natural persons can be composed the music, another composed the lyrics. To whom
authors, it can also refer to real person or corporate does it belong? Does the rule on co-ownership apply? You
employer of a person who creates copyrightable mentioned the exception – “unless stipulated otherwise by the
work within the scope of the employment. parties.” If the parts of the work can be separated that it can
be identified as to which part belongs to whom, in that movie,
So the term author can refer either to the who owns the music and the musical corporation? So in that
• real person who creates the copyrightable work or case, will the rule on co-ownership apply?
• real person or corporate employer of a person who The exception to the rule on co-ownership.
creates copyrightable work within the scope of the
employment. Going back to joint-ownership, what is the life of the co-
ownership?
In respect of work created by an author during and in the It’s during the lifetime of the co-authors and 50
course of his employment, the copyright belong to: years counted from the death of the last surviving
• The employee, if the creation of the object of co-author.
copyright is not part of his regular duties even if the
employee uses the time, facilities and materials of A co-author cannot use the work exclusively without
the employer, the consent of the other/s.

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What is the test of copyrightable matter? As to whether or Jay is an employee of UST. He prepared a book. He prepared a
not a joint authorship exist? course outline in the subject IPL. Who owns the copyright in
• the de minimis test the course outline? Is there an exception? In the book, who
• the copyrightable matter. owns it?
It depends. If Jay was required to make the book in
In joint authorship, accordance with his position as teacher in the
The authors must supply more than mere direction school, it belongs to the school. But if not, then Jay
or ideas, owns it.

It advances creativity in science and art by allowing If Jay’s work was made in pursuance to a duty to the
for the uninhibited exchange of ideas, school, who owns the work?
The employer.
The test also enables the parties to predict whether
their contributions to a work will entitle them to The exception?
protection as joint author, If what was created was not made part of
his work as a teacher.
Allows contributors to avoid post-contribution
disputes concerning authorship and to protect Katrina’s portrait, to whom does the copyright belong?
themselves, A commissioned work.

When it strikes an appropriate balance in the What are the rights of the independent contractor? What
domains of both copyright and contract law. belongs to Katrina and what belongs to the painter?
As a general rule, the copyright belongs to the
Example, mr. Edison prepared the book and ms. Katya author of the work.
prepared the illustration of the cover of the book, is there
joint-authorship? None An exception where the copyright automatically
pertains to the hirer of the author, not to the author
Why? himself, is if the work is the result of the
Apply the test of copyrightable matter to determine performance of his regularly-assigned duties, unless
the existence of joint authorship. The ideas of mr. there is an agreement, express or implied, to the
Edison is copyrightable. Which portions of that book contrary.
is a copyrightable matter, is it the text? Cover?
It is the content. Let’s analyze this situation. Example is: Gen is an architect of
EUO architectural firm. Ms. Katya requested for a very ornate
Is there joint-authorship in there? architecture of a house. Mr. Gen drew the house. To whom
None does the copyright belong?
The architectural firm because there was an
Exception to the general rule where the author is the owner agreement that the works of the employee belong to
of the copyright. the firm, that it will be attributable to the firm. It
In the case of an employee and an employer preparing a was made in the course of Gen’s employment. Katya
copyrightable work, when they make a copyrightable owns the house. She does not own the architectural
material, to whom does the copyright belong? plan. Gen presumably performed his work as an
As a rule, it is the employee because he is the one employee of EOU Firm. He was contracted by the
who made it, regardless of the fact that the firm. The Firm owns it. Unless, there is a stipulation
employee made it during office hours or even using to the contrary. This is applying the rules.
the materials belonging to the employer.
How about if another person liked Katrina’s house and
When does the employer own it? or the exception? wanted the exact style for himself?
When it is made in accordance with the official They can’t just copy. If the copyright belongs to the
duties of the employee in his employment and when firm, then the firm’s consent must be asked first. If
there is a stipulation that it belongs to the employer, the copyright was already given to Katrina, then
then the copyright belongs to the employer. Katrina’s consent is necessary.

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McDonald’s example. Marx wanted a franchise of McDonald Pseudonymous?

in Dapitan. Can Marx paint the interiors of his franchise with One who uses a name other than his real name.
that of the interiors of other franchises? Whose consent will
he ask first? Does he still need to ask for consent? Think of the What is the period of protection?
analogy in the commission for the painter. Who owns the The copyright shall be protected for 50 years from
work, who owns the concept? the date on which the work was first lawfully
The consent of the firm which created the concept published, provided that the identity of the author
of the interiors for all McDonald store must be asked was later revealed or is no longer in doubt. If it is not
first. published before, it shall be protected for 50 years
counted from the making of the work.
Kanino ba yung design?
Sa architect. Economic rights, moral rights, neighboring rights.

Can you use the design of the architect without the consent of What are economic rights? This is the exclusive right to carry
the Firm? out, authorize or prevent the following acts:
Yes, if there is a stipulation to that effect. Notice if • right of reproduction
McDonalds on the other hand already bought the • author’s right of derivation
concept of the interiors. Then it is McDonald’s • right of public distribution
consent which must be asked. • right of public performance
• right of public display
in this case, who owns the copyright?
The architect. He owns the architectural plans, What are economic rights as distinguished from moral rights?
unless there is a stipulation to the contrary.
A restaurant employed the services of a band, or a radio, r a
Audiovisual works. What do you understand by audiovisual CD. If CD, consent of owner of copyright is needed. If radio,
works? no more.
Movies, Paintings, Photographs, Sculptures.
So with the case philscap v. tan. May a band play a music
What is the rule? Who owns their copyright? without the consent of the composer amount to
The sculptor. The painter. infringement? Gela bought a cd, the copyright of which
belongs to Marx. She subsequently sold it to Dico. Did she
Letter. Who owns the copyright of the letter? Who owns the commit infringement?
letter? The contents of the letter? No, she already bought the cd. She became the
The owner of the letter is the recipient. The content owner, so she can dispose it anyway she wants. A
is owned by the writer. copyright’s owner is limited only to the first
legitimate release of his work.
We said that in the general rule, the author is the owner of
the work. We mentioned the exception, on the employer- What if the cd was bought from an illegitimate source. Like it
employee relationship. Can it be assigned? was a stolen good. Is there infringement? A violation of
Yes. Marx’s right?
What is the effect if the assignment of the copyright is made yes
verbally? Is it binding? Is it invalid?
Recording of the assignment of copyright to the What is the first public distribution doctrine?
national library. A copyright owner’s distribution right is exhausted
by the first authorized sale of the original or copies
Should it be recorded first before it becomes valid? What does of the work. The right to distribute is not violated.
the recording do in an assignment of copyright? Is it needed
for the validity of the assignment? If it was stolen, is there an infringement? What was stolen is
It is important for the purpose of informing the the CD not the copyright so there is no infringement? Do you
public. waive your right to self incrimination and admit that you stole
it? Is there a violation of Marx’s right? What is the first sale
What is an anonymous work? doctrine?
One where the author or composer is unknown, First sale doctrine – the owner of particular copy is
except by the publisher. entitled, without authority of the copy right owner,
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to sell or otherwise dispose of possession of that Limitations:

copy • temporal - there is a duration or period for the
protection.
Once you bought it, you have the right to dispose it any other • geographic – owner of the copyright is protected by
way. the law of the country against acts restricted by
copyright which are done in that country. For
But what if you stole it? protection in other country, he must refer to the law
If you stole it, it is a violation of the right to of the other country.
distribution of Marx. • Permitted use – copyright may, in circumstances
allowed by law, be done without the authorization
Public performance. Cd played in your car, is there public of the copyright owner. ”fair use.”
performance? • Private recitation or performance of work
None
When you come to practice in IPL, you might be the counsel
you play an MP3, do you violate? of the alleged infringer. The most common defense is the
No, this is private performance, not public FAIR USE.
performance as contemplated by law.
What is the doctrine of Fair Use?
Is the airing of news in ABS 30 minutes earlier than GMA This is generally to permit a secondary use that
violative? serves the copyright objective of stimulating
It depends. Nobody owns the news because it is to productive thought and public instruction without
be distributed to the public at large. The public has a excessively diminishing the incentives for creativity.
right to know of these news.
This has a very extensive meaning. It depends on how you
What is infringed is when the other station airs the understand it and how you argue.
same news and same person, uses the same format
or style. But if they differ in that way they are If I photocopy the book of Atty. Amador and give it for free, is
delvered, their sequencing, how it was delivered, this fair use?
then there is no infringement. So this doctrine is not limited to free use.

Neighboring rights. 3 kinds. Why is Fair Use considered an exception to the right of the
• right of performing artists in their performances author? What is the rationale behind this?
• right of producers of phonograms in their The right of the public is greater than the right of the
phonograms owner. The right and interest of the author is usually
• rights of the broadcasting organizations in their radio subordinated in a maximum financial return to the
and television programs. greater public interest in the development of art,
science and industry.
In the case of a movie, the owner of the copyright as a
general rule is the producer. But the producer himself needs Copyright law has two-fold purpose.
the help of others like the actors and actresses, directors, etc. • One is to encourage creation, by protecting the
The actors, directors are producer’s neighboring rights. In rights of the author, that he will be insured. If he is
case of recording companies. What are the neighboring rights not protected, it might prevent an author from
here? making an original.
• Another is to encourage building up a derivative
IPL7 work to encourage new things.

Copyright is not an absolute right. There is no absolute An example is the inventor of a wheel whoever he might be.
protection unlike the protection in property where you can A car cannot be invented if a wheel was not used, or a
do anything so long as you will not violate the rights of karitela. Do you get my point? This is a means to ensure
another. In the case of copyright, there is a limitation on the progress of the nation. It encourages creation and derivative
term of protection. work to develop an original work. From this comes the
doctrine of fair use. If you absolutely prevent a second person
to derive benefits or to use existing works, then you stagnate

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creation. You prevent inventions. That’s why fair use is of a book and is relevant to your work, then you still
allowed as exceptions. comply with criteria no. 3. But if you copy 5 pages of
the book but only 2 pages are relevant, then you
What are the factors to determine as to whether or not Fair don’t satisfy factor no. 3. It is not the length of
Use may be used as an exception? portion copied or pages but the substantiality or
• The purpose and character of the use including relevance of the copied portion that is relevant to
whether such use is of commercial nature or is for your work.
non-profit educational purposes
• the nature of the copyrighted work Quotations. When do they qualify for fair use?
• the amount and the substantiality of the portion When it is from published work, if they are
used in relation to the copyrighted work as a whole compatible with fair use and only to the extent
• the effect of the use upon the potential market for justified.
or value of the copyrighted work.
Public performance?
The purpose and character of the use including whether such When done in a place where no admission is
use is of commercial nature or is for non-profit educational charged, by a club or institution for charitable or
purposes. What is the applicability of fair use here? educational purpose whose aim is not for profit, but
“whether the new work merely supersedes the subject to other limitations as may be provided by
objects of the original creation or instead adds law.
something anew, with further purpose of different
character, altering the first with new expression, Private performance. Suppose the dvd for My Amnesia Girl
meaning or message. It asks whether it is was already available. You buy the dvd, you watch it in your
transformative. It is transformative if it promotes room with friends. Is that fair use?
science and or arts.” Yes, because the dvd has already been released in
public, and that there is no motive of profit in
the nature of the copyrighted work. when the content of the watching it, and that there was no fee asked for
copyrighted material is a product of a person’s imagination. when you and your friends watched it.
Can this be copied?
This factor generally refers to the type of material What if it was a dvd copy, is it fair use?
used and whether distribution would serve the No. the video was not yet legally released.
public interest. Distribution may be in the public
interest when the information is difficult to obtain. If You subscribed to a paper view for a Pacquiao fight. Is that
a work is difficult to obtain or is unavailable through fair use?
normal channels, there may be more justification for Yes.
its reproduction than in the ordinary case.
Reproduction of news items, political items, articles
the amount and the substantiality of the portion used in for religious topics. For teaching purposes.
relation to the copyrighted work as a whole
this factor is to inquire whether the quantity and How can a teacher avail of the doctrine of fair use?
value of the materials used were reasonable in When a teacher uses a material for illustration
relation to the purpose of the copying, noting that purposes only. Or when a teacher flashes a painting
the extent of permissible copying varies with the or a trademark for purposes of teaching his/her
purpose and character of the use. subject. Or when teacher quotes verses or topics in a
book. So atty. Robeniol is not violating the law on
However, copying even a small portion of a copyright. =)
copyrighted work may exceed the boundaries of fair
use if the material taken is the “heart of the work.” If you xerox a portion of a book, for tonight’s topic, that is fair
use. If you Xerox the whole book, then definitely that is no
Is it the length of what you copy? What if you copy something longer fair use. It is already infringement.
that is not relevant to your work? Can you still claim fair use? If you copy 1 chapter, is it fair use? 2 chapters?
No. as long as the material that is being copied is the
heart of the first work, then you can’t claim fair use. If you copy to the extent that you reduce the marketability of
This is exceeding the boundaries of fair use. It is not the book, it is no longer fair use.
the amount but the substance. If you copied 5 pages
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If you record a discussion, say dean Ortega’s. Is it fair use? It

is for private purpose. You know the song of the APO Hiking Society na Lumang
Tugtugin? Where they place in the lyrics certain lines of
Lawyers attend lectures of known lecturers. They record it kundiman songs or folk dance music. Is that fair use or
and transcribe it and sell it for price. It is no longer fair use. It infringement . they placed leron leron sinta and atin cu pung
is already for commercial purposes. It is not fair use. sing sing. Is that fair use?
YES.
Ephemeral recording.
It is an aural or audiovisual fixation of a performance Why?
or a broadcast made for temporary period by a Because they did not copy the whole song. Their
broadcasting organization by means of its own purpose was not to sing these folk songs as is, but to
facilities and for use of its own broadcasts. explain that these songs are easy to sing and
memorize.
Why is it considered as fair use? When? Cite an example of an
ephemeral recording as part of fair use. Do you remember our discussion that there is no copyright
over an idea? It is copyrightable when it is already expressed.
Public display of an original work. Cite an example of fair use Like when you now write it, when you compose it, the sound
by reason of public display of original work. Don’t go far. Here arrangement. So that is creation.
in UST. The exhibits in main building. If you bother to look.
The display of books. its part of fair use. Registration.
Submit to the national library and to the supreme
Use in judicial proceedings as part of fair use. It is essential court library, within 3 weeks, be registered and
that lawyers and judicial officers are given the privilege to use deposited with it, by personal delivery or by
copyrighted works without any liability. This reliance on registered mail 2 copies or reproductions of the
precedents make it necessary to deny copyright protection work in such form as the directors of said libraries
statutes, rules and regulations and dissertations pronounced, may prescribe. A certificate of deposit shall be issued
read and rendered in courts of justice and before for which the prescribed fee shall be collected and
administrative agencies. the copyright owner shall be exempt from making
additional deposit of the works with the National
You go to a restaurant playing a cd of your favorite artist, say Library and the Supreme Court Library.
Justin Bieber. Is that fair use? What if it is news on radio, is it
fair use or will you have to compensate the broadcaster? It is Remember also the timeline. Even in a span of 10 days, you
fair use. Read philscap v. tan. It did not refer to cd, but to a can register your copyright application or registration. But not
combo. How about the live broadcast of news in radio? Is so in the case of trade mark. It can take months, or years. It is
that fair use? more difficult to secure patent. So if you want immediate
protection for your client’s product, you register immediately.
Your teacher in IPL uses materials for purposes of teaching What is deposit when it comes to copyright. Owner will
you the subject matter in trademark law. Is this fair use? deliver 2 copies personally or by registered mail.
Yes. Why? It is used for educational purposes and for
mere illustration. Violated only confidentiality of How about notification? Is there a need? There is a symbol
client. =) placed or the words that it is copyrighted, or the year. Most
of the time, it is the year, not the month. It is not counted on
what if your favorite columnist, boy abunda, made an article the day or the month. In case of reckoning the 50 year span,
about Si Agimat at si Enteng, is that fair use? it is per year. That’s why copyright registration always
Yes. mentions the year, not the month. Not the day. Not the
anniversary.
How about if you made a memorandum, and you cite a case,
you site a code. That is an example of fair use in judicial Commencement of copyright protection. Copyright
proceedings. How do you cite cases in SCRA? You indicate in protection has 4 stages. Copyright protection commence
your work. Example: you show this – 123 SCRA 456. from the time of creation.

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However the enforcement of such protection should come Enforcement of right.

after registration. If it is not registered, does it mean that it is • Injunction
not protected? Is registration indispensable for the • damages,
attachment for the protection of a right? • seizure of commercial documents,
No • criminal action to impose the penalty of
imprisonment,
What will be the job of lawyers if there is no registration? • seizure of the infringing articles,
What is the benefit you derive in registration? • fine against the infringer.
There is the presumption. There is prima facie
evidence of ownership over such materials and the What is infringement of a copyright? In the point of view of
validity of the copyright. the copyright law?
It is copying. There should be a similarity from the
How is the deposit made in copyright? original work with the other work.
Delivering 2 copies in the national library or the
Supreme Court Library. But honestly, clients have But what is the test that there is similarity or copying to a
qualms of depositing because it might be copied certain extent that one can conclude that the second work is
even if it is submitted to these agencies. These are copied from the original work?
legitimate fears. ‘the test of similarity.’

So what for is this deposit? If the ordinary observer test is applied, meaning that the
For purposes of completing the requirement and for originality between the original one and of the new one or
purpose of having a record in the National Library or the succeeding one is not determined by the judge or the
in the Supreme Court Library at the expense of the justice for that matter. Does the judge depend on the point of
possibility of having the copyrighted work copied. view of the lawyer, or of the author, or of the infringer?
Especially in the case of softwares. Rather it is the point of view of the ordinary
observer. It is what is taken into account. If from the
The usual notification for copyright is a drawing of a circle point of view of the ordinary observer that there is
with small “c” inside with the words COPYRIGHT and then the enough similarity that the one is copied from the
year. If a book has been delivered in the library, will I be other, then the test of similarity has been passed.
compelled to write there that it is already copyrighted? If I And therefore infringement can be concluded.
don’t, will it affect the protection of my copyrighted work?
No. So we have, so far, discussed the remedies in so far as
copyright is concerned. But these remedies are available to
What is the purpose of the notification? the party who has been infringed. More often than not, it is
To inform that the work is copyrighted and to warn the alleged infringer who needs more lawyer than the party
possible infringers from trying to infringe the who claims that his work has been infringed or the copyright
copyright. To omit bad faith. owner. More often than not, when you practice law, you
might see yourself on the side of the alleged infringer.
Protection. How long is the general protection of copyright?
General rule is 50 years. So what are the possible defenses of the alleged infringer?
• Fair Use as we have said earlier is the most common
Joint author work? defenses.
During their lifetimes and 50 years after the death of • Second, you can claim abandonment. Meaning, the
last surviving joint owners. owner of the copyright has already disposed of his
right to the copyright. He does not need it anymore.
What if the portions are identifiable? • Or, you can raise this, but difficult to prove, that it is
an independent creation.
Anonymous and pseudonymous works?
That it just so happen that there are some similarities, but
Applied arts? these are not intentional so it is really a product of an
independent intellectual creation. As again, the test of
Photographic work? similarity is on the point of view of the ordinary observer.
And not from the point of view of the judge or the infringers.
Audiovisual work?

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IPL8 What is an Industrial design?

The ornamental or aesthetic aspect of a useful
LAW ON PATENTS article

What is a patent? Beautified product for as long as there is an

A set of exclusive rights granted by a State to an aesthetic or utility value to the improvement
inventor or his assignee for a fixed period of time in
exchange for a disclosure of an invention Quill, a feather from a rooster, deep it in an ink and use it for
writing, it is an invention, utility model or industrial design?
A document, issued, upon application, by a Neither of the 3 because it exist in nature. There is
government office, which describes an invention and no inventive process
creates a legal situation in which the patented
invention can normally only be exploited There is no ball point pen existing yet during the early 1900,
(manufacture, used, sold, imported) with Mr Catabona created the first ball point pen. The pen with an
authorization of the owner of the patent ink container inside and in the end a ball distributing the ink
on the paper, is it an invention, utility model or industrial
A statutory monopoly which protects against design?
unlicensed use of the patented device or process Invention
even by one who discovers it properly through
independent research NASA created a ball point pen, with an engine to push the ink
in the paper to be used in the outer space, is it an invention,
What are the 3 items that can be covered by a patent under utility model or industrial design? (anti-gravity pen)
the IP code? It is still a ball point pen, only there is a change or
• Invention improvement in that ball point pen. It is a Utility
• Utility Model Model
• Industrial Design
The common ball point pen is cylindrical in shape, what if Mr
What are the criteria for the patentability for an invention? Flores creates a pen that is contoured in the middle,
What are the requirements for an invention patent? rubberized for easy handling, is it an invention, utility model
• Novelty or industrial design? (Contoured pen)
• Inventive step Industrial design, there must be utility in the
• Industrial application aesthetics

What is an invention? Ms. Bautista creates a ball point pen that is shaped like a quill
Creation of an object which does not exist in nature for no other purpose except to look differently, is it an
invention, utility model or industrial design? (Quill Pen)
What is the difference between an invention and patent? Neither of the three
Patent – the means of protecting
Invention – item to be protected Common shampoo containers to inverted shampoo
containers are industrial design
What is a Utility Model?
A utility model is a technical solution to a problem in The system of registration of patent is first to file system
any field of human activity which is new and
industrially applicable. It may be, or may relate to, a First to file system:
product, or process, or any improvement of any of Sec. 29. First to File Rule. - If two (2) or more persons have made
the invention separately and independently of each other, the
the aforesaid. Essentially, utility model refers to an right to the patent shall belong to the person who filed an
invention in the mechanical field. This is the reason application for such invention, or where two or more applications
why its object is sometimes described as a device or are filed for the same invention, to the applicant who has the
useful object. earliest filing date or, the earliest priority date.

If there is an improvement to an invention for as The first to file is given priority and he is presumed
long there is a mechanical, chemical or electrical to be the inventor of the product
change

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What is the exception to the first to file system?

• fraud
• right prior to the effectivity of the IP code What is the difference between a product patent and a
process patent?
When is an invention commenced to exist? Product patent is the right to make, use, sell and
When it leaves the realm of speculation and going to import the product
the realm of reality
Process patent is the right to restrain, prevent or
Constructive invention: prohibit any unauthorized person or entity from
using the process, and from manufacturing, dealing
Novelty – there is no prior art in, using, selling or offering for sale, or importing any
product obtained directly or indirectly from such
What is the concept of prior art in order to satisfy the process.
requirement of Novelty?
Sec. 23. Novelty. - An invention shall not be considered new if it What is improvement patent?
forms part of a prior art. Let’s say Ms. Borja has created an invention and had
Sec. 24. Prior Art. - Prior art shall consist of:
it registered. She was able to secure a letters of
24.1. Everything which has been made available to the patent. Then Ms. Moya thought that she can
public anywhere in the world, before the filing date or improve that product. Ms. Moya can register an
the priority date of the application claiming the improvement patent to that product provided that
invention; and
she secure a permission from Ms. Borja to improve
24.2. The whole contents of an application for a the product
patent, utility model, or industrial design registration,
published in accordance with this Act, filed or effective Non patentable inventions are inventions that could have
in the Philippines, with a filing or priority date that is
earlier than the filing or priority date of the
been patentable except that by law they are declared not to
application: Provided, That the application which has be patentable
validly claimed the filing date of an earlier application
under Section 31 of this Act, shall be prior art with Sec. 21. Patentable Inventions. - Any technical solution of a problem in any
effect as of the filing date of such earlier application: field of human activity which is new, involves an inventive step and is
Provided further, That the applicant or the inventor industrially applicable shall be patentable. It may be, or may relate to, a
identified in both applications are not one and the product, or process, or an improvement of any of the foregoing.
same.
Sec. 22. Non-Patentable Inventions. - The following shall be excluded from
Inventive Step patent protection:
Sec. 26. Inventive Step. - An invention involves an inventive step if, 22.1. Discoveries, scientific theories and mathematical methods;
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 22.2. Schemes, rules and methods of performing mental acts,
application claiming the invention. playing games or doing business, and programs for computers;

22.3 Methods for treatment of the human or animal body by

In the 1980’s, there is a ball pen with a clock at the end of it, surgery or therapy and diagnostic methods practiced on the
does that satisfy the requirement of an inventive step? human or animal body. This provision shall not apply to products
No and composition for use in any of these methods;

22.4. Plant varieties or animal breeds or essentially biological

What is meant by non obviousness? process for the production of plants or animals. This provision
Something that does not automatically to ones mind shall not apply to micro-organisms and non-biological and
or it is unexpected or a solution which does not lie microbiological processes.
on the way Provisions under this subsection shall not preclude Congress to
consider the enactment of a law providing sui generis protection
A jacket that whoever wears it will feel very comfortable of plant varieties and animal breeds and a system of community
because it will follow the contour of the wearer’s body. It will intellectual rights protection:
also follow the ideal temperature of the jacket. And it change 22.5. Aesthetic creations; and
texture depending on the wearer’s desire, is that an invention
utility model or industrial design? 22.6. Anything which is contrary to public order or morality.

If an object is useless or does not have a practical utility, it is

not registrable

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Unpatented Invention – those inventions that could have offering for sale, selling or importing for these purposes at
been patented but slept on his rights and he did not file a least the product obtained directly by that process
registration for a patent
Patent laws – promote progress is the science and the art by
What rights or rights, if any, does that inventor have? offering a right of exclusion for a limited period as an
The right over his machine or gadget he created incentive to inventors to risk the often enormous costs in
terms of time, research and development
Independence of patents – the grant of a patent for
invention on one country for a given invention does not To insure adequate and full disclosure so that at the
oblige any other member country to grant a patent for end knowledge of the invention inures to the people who are
invention for the same invention. A patent for invention thus enabled without restriction to practice it and profit by its
cannot be refused, invalidated or otherwise terminated in use
any member country on the ground that a patent for
invention for the same invention has been refused or Patents as Monopoly – affected with public interest and is an
invalidated, or that it is no longer maintained or has been exception to the general rule against monopolis to the right
terminated, in any other country. to access to a free and open worked

General Requirements: IPL9

• National treatment – each member of the WTO
must treat the nationals of every other member What are the requirements for patent application?
favorably as its own with respect to intellectual • A request for the grant of a patent
property • A description of the invention
• Most favored-nation treatment – it requires not • Drawings necessary for the understanding of the
only that each member give other members’ invention
nationals the same treatment as its own, but that • One or more claims
each member not prefer any other member’s • An abstract
national, or those of any nonmember country, over
the nationals of any members. It thus precludes What is the difference between the applicant and the ____?
against members’ nationals in bilateral or smaller
multilateral compacts with members and Who should file an application?
nonmembers Usually the application is filed for and in behalf of
the inventor by the law firm
Exhaustion or first sale doctrine – this doctrine permits no
such thing; the relaxation of rights that it authorize applies What is the proof of authority of the resident agent for filing
only to the particular physical item sold with authorization, an application for the inventor?
allowing it to be used and further distributed without Special Power of Attorney
reference to its intellectual property pedigree
When is a description or disclosure of the invention sufficient
Public order exception – to exclude from its territory for purposes of a patent application?
commercial exploitation which is necessary to protect public • When the description is adequate to identify what
ordre public or morality, including to protect human, animal, the applicant has invented
or plant life or to avoid serious prejudice to environment • When the disclosure enable one skilled in the art to
make and use the invention as claimed without
4 points of minimum rights of exclusion undue experimentation
• Trilogy of make-use-sell
• Expressed in terms of the right to exclude others In other words “to copy the invention”
• Patent must confer exclusive rights at least with
respect to products made directly by the patented Why does the law requires that the invention be described
process with sufficient particularity that one skilled in the same art to
• Subject to exhaustion at each member’s discretion make, use, copy or imitate the invention?
In order to give the public the benefit of the
Exclusive rights - the rights to prevent others, without invention after the patent shall expire
authorization, from using the process and from using,

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Balancing of interest between the inventor and the the time he filed the application, then he satisfies the
public to promote technology and science sufficiency of the requirement of disclosure or description.

The inventor is given a period during which he can If experimentation is required in order to imitate the
be the exclusive owner, maker, user, seller or invention, will the description or disclosure satisfy the
exporter of the invention. But in order to ensure sufficiency requirement?
improvement of the invention or in order to ensure Yes, for as long as the experimentation is not
the propagation of science and technology, the state substantial
requires disclosure so that after period of exclusivity,
any person who might want to improve the Not every experimentation will bar the application
invention or one who take off from where the for insufficiency of the disclosure, it is UNDUE
invention left off can continue the inventive process EXPERIMENTATION that will bar the application
and progress of science and technology.
Drawing requirement – it can be very simple or complex. Do
So that is why the disclosure must be such that not hesitate to ask for expert help.
anyone who practices in the field or on the art which
involved in the invention should be able to create
the invention himself just by reading the description What is a claim?
or the disclosure. Matter sought to be perfected for the invention

The sufficiency of the description or disclosure, from whose How many claims can be perfected in a single invention?
point of view will it be determined? One or more claims
From the point of view of that person skilled in that
art Why do we have to specify claims in the application?
Only those claims specified in the application will be
Another test of determining the sufficiency of the description covered by the protection
or disclosure is called BEST MODE ANALYSIS
In drugs or pharmaceuticals, claims are very important.
“Best” - there are 2 or more modes of copying of imitating
the invention In a small blue pill which is primarily a cardio vascular
medicine but it was found out that it has market as men’s
What is the best mode analysis? medicine. Hence, claim can cited as a cardio vascular
2 aspects: medicine and men’s medicine. Failure to include any of those
Subjective: involves whether the inventor knew of a claims, the applicant cannot prevent anyone from using the
best mode of practicing his invention at the time he same product or claim that is not indicated in the application.
filed his application
Claims interpretation or construction, why is there a need to
Objective: focuses on whether such contemplated interpret the claims in the application?
best mode was adequately disclosed Because the claims would cover the entire extent of
the protection being sought
This mode determines the good faith or bad faith of the
applicant. The claims are simply verbal expressions of what is
being protected through the patent application
Example: there 3 modes of processing chemical, mechanical
and electrical. Let’s say the inventor knew that the best mode In the interpretation of claims, what is the first rule?
is the chemical process, the second best is the mechanical Extrinsic – confine first with the 4 corners of the
process and the worst mode is the electrical process. If the claim
inventor discloses the 3rd mode or 2nd mode, then the In case of doubt or ambiguity and there is a need to
disclosure is not sufficient. interpret then we go outside the claims, we look for
extrinsic evidence. It may be in the form of
nd
However, if the inventor only knew 2 modes, the 2 and the specification or prosecution history
rd
3 mode and he is not aware yet of the chemical process and
he only discloses the second mode to which in his mind he
honestly believes that the second mode is the best mode at

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In construing claims, the court looks to the: What is the rule if there are 2 or more components in the
• Claims invention that are separate and independent from the original
• Specification invention?
• Prosecution history estoppel If several independent inventions which do not form
a single general inventive concept
What is prosecution history estoppel?
It precludes a patentee from obtaining in an What is the rule if there are 2 or more components in the
infringement suit protection for subject matter invention that are indispensably connected with the original
which it relinquished during prosecution in order to invention?
obtain allowance of the claims.
Procedure:
What is an abstract? • Filing of the application
Consist of a concise summary of the disclosure of the • According a filing date
invention as contained in the description, claims and • Classification and search
drawings in preferably not more than 150 words • Publication
• Observation by third parties
Pioneer patent vs Improved patent? • Amendment of application
Pioneer patent – • Grant of patent
Improved patent –
What is the doctrine of double patenting? what is the rule? Procedure for grant of invention patent:
The inventor is not allowed from effectively • Filing of the application
extending the term of exclusivity by the subsequent
patenting of variations that are not patentably Is there a difference between the date of application
distinct from the first patented invention and the filing date accorded to the application?
Once the applicant files an application, the
What is the Unity of invention? IPO will conduct a formal evaluation.
Requires that the application shall to one invention
only or to a group of inventions forming a single To determine the sufficiency of the form of
general inventive concept the application or to determine if the
application is formally complete, the IPO
General rule: the applicant should file only one application will conduct an evaluation. Once the IPO
for every single intended invention determined that the application is formally
complete meaning that the requirements
Exception: if there are several components forming part a are there, then it will sign a filing date. The
single general inventive concept date when you were able to complete the
formal requirements
Example: motor vehicle
File for a single application for the transmission So the date of application is the date when
File for a single application for the engine it self the applicant went to the IPO office
File for a single application for the chassis
Or you can file one single application for the entire The filing date is once the IPO was satisfied
automobile that all formal requirements are there then
they will accord, designate or fix and
Let’s say a ball point pen uses a special ink which has a micro declare the filing date of the application.
battery that pushes the ink to the ball point pen. The
applicant may apply for a utility model for the ball point pen What is the importance of according the filing date?
or for an invention patent for the engine that pushes the ink What are the rights acquired by the inventor upon
towards the ball point pen. It all depends on what the the filing date?
applicant will right in his claim. He can claim a utility model o To determine when is the priority right
for the ball point pen or an invention patent for the engine starts
o Term of protection is counted from the
filing date accorded by the IPO

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What is priority right? It is the publication that makes the application

Sec. 31. Right of Priority. - An application for patent known to the whole world. The publication in the
filed by any person who has previously applied for the
IPO official gazette.
same invention in another country which by treaty,
convention, or law affords similar privileges to Filipino
citizens, shall be considered as filed as of the date of Sec. 45. Confidentiality Before Publication. - A patent application,
filing the foreign application: Provided, That: (a) the which has not yet been published, and all related documents,
local application expressly claims priority; (b) it is filed shall not be made available for inspection without the consent of
within twelve (12) months from the date the earliest the applicant.
foreign application was filed; and (c) a certified copy of
the foreign application together with an English What rights does the inventor acquire at the time of the
translation is filed within six (6) months from the date
publication?
of filing in the Philippines.
Sec. 46. Rights Conferred by a Patent Application After
Publication. - The applicant shall have all the rights of a patentee
What is the effect of an earlier foreign application in under Section 76 against any person who, without his
a member state? authorization, exercised any of the rights conferred under Section
71 of this Act in relation to the invention claimed in the published
The right that is assigned from the filing of
patent application, as if a patent had been granted for that
the application is the acquisition of the invention: Provided, That the said person had:
priority right. The inventor acquires a 46.1. Actual knowledge that the invention that he was
priority over all those who have not yet using was the subject matter of a published
application; or
filed their applications for a similar
invention. Also, the inventor acquires 46.2. Received written notice that the invention that
priority right if there is an earlier application he was using was the subject matter of a published
to foreign state for the same invention application being identified in the said notice by its
serial number: Provided, That the action may not be
provided that there is earlier application
filed until after the grant of a patent on the published
____ from the time the Philippine application and within four (4) years from the
application is filed, the Philippine commission of the acts complained of.
application yields to have the priority right
as of the date of the earlier application. The application will be published, then everybody will know
that a person filed an application was filed for an invention,
Classification and search then everybody can go to the IPO office to inspect the
documents particularly the description and disclosure.
What is being classified?
Prior Art Upon publication, the inventor acquires all the rights of an
inventor as if a patent has been issued but not against
What is being searched? everybody. The applicant, upon publication, acquires the
Prior art right of a patent owner as against anybody who may have
read the publication and who may, following the publication,
What is prior art? imitate the product. The rights are limited only to those who
Sec. 24 read the publication and copy was mentioned in the
publication but not against everybody.
Why is there a need to conduct a classification and searched
for prior art? What is the purpose of publication?
If there is any possible prior art in the same field, Any party who may read the publication may file a
that will be included in the publication comment or observation

Where is the publication be made? Sec. 47. Observation by Third Parties. - Following the publication
of the patent application, any person may present observations in
IPO gazette
writing concerning the patentability of the invention. Such
observations shall be communicated to the applicant who may
In that publication any possible prior art will be included in comment on them. The Office shall acknowledge and put such
order to apprise the public that there is a prior art so that observations and comment in the file of the application to which
it relates.
anyone who wants to file a comment or objections can do so.

Confidentiality:
All matters before publication is confidential

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Next step: What is the concept of constructive creation of an invention?

Substantive examination What is the exception to the rule that there should be an
actual invention?
Sec. 48. Request for Substantive Examination. - Constructive reduction to practice – the patent
48.1. The application shall be deemed withdrawn
statues do not require actual reduction to practice if
unless within six (6) months from the date of
publication under Section 41, a written request to a complete allowable application for a patent on the
determine whether a patent application meets the invention is filed.
requirements of Sections 21 to 27 and Sections 32 to
39 and the fees have been paid on time.
Who is entitled to a patent for a joint invention?
Sec. 28. Right to a Patent. - The right to a patent belongs to the
48.2. Withdrawal of the request for examination shall
inventor, his heirs, or assigns. When two (2) or more persons have
be irrevocable and shall not authorize the refund of
jointly made an invention, the right to a patent shall belong to
any fee.
them jointly.

Next Step: When does an invention become joint?

Amendment – the inventor may amend the drawing, To be considered a joint inventor, one need not
claim, disclosure or name. The only prohibition is alone conceive of the entire invention, for this would
that the inventor cannot add his claim. The claim obviate the concept of joint inventorship. However,
may be reduced but adding a claim is not allowed. a joint inventor must contribute in some significant
manner to the conception of the invention. As such,
SEC. 49. Amendment of Application. - An applicant may amend
the patent application during examination: Provided, That such each inventor must contribute to the joint arrival at
amendment shall not include new matter outside the scope of the a definite and permanent idea of the invention as it
disclosure contained in the application as filed. will be used in practice

Next Step: Who own the invention or who is entitled to a patent for a
Grant of patent commission invention?
Sec. 30. Inventions Created Pursuant to a Commission. -
What are the rights acquired upon grant of the patent? 30.1. The person who commissions the work shall own
Sec. 71. Rights Conferred by Patent. - the patent, unless otherwise provided in the contract.
71.1. A patent shall confer on its owner the following
exclusive rights: What is the rule when it comes to an invention arising from
(a) Where the subject matter of a patent is a
employment?
product, to restrain, prohibit and prevent
30.2. In case the employee made the invention in the
any unauthorized person or entity from
course of his employment contract, the patent shall
making, using, offering for sale, selling or
belong to:
importing that product;
(a) The employee, if the inventive activity is
(b) Where the subject matter of a patent is a
not a part of his regular duties even if the
process, to restrain, prevent or prohibit any
employee uses the time, facilities and
unauthorized person or entity from using
materials of the employer.
the process, and from manufacturing,
(b) The employer, if the invention is the
dealing in, using, selling or offering for sale,
result of the performance of his regularly-
or importing any product obtained directly
assigned duties, unless there is an
or indirectly from such process.
agreement, express or implied, to the
71.2. Patent owners shall also have the right to assign,
contrary.
or transfer by succession the patent, and to conclude
licensing contracts for the same.
The employee created something outside the scope of his
What is the term of patent? employment. As a rule, the invention belongs to the employee
Sec. 54. Term of Patent. - The term of a patent shall be twenty and any stipulation to the contrary will be null and void. What
(20) years from the filing date of the application
if the employee wanted to give it to the employer?
Assign the invention or transfer the rights of the
Acquisition of patent rights, when does the right to an invention
invention accrue?
When the speculative concept goes beyond the IPL10
board of speculation and enters in the realm of
reality. When the invention is actually made, when Sec. 72. Limitations of Patent Rights. - The owner of a patent has no right to
there is a tangible object constituting the invention. prevent third parties from performing, without his authorization, the acts
referred to in Section 71 hereof in the following circumstances:
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

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consent, insofar as such use is performed after that product has Utility Model
been so put on the said market;

72.2. Where the act is done privately and on a non-commercial Bar of Soap
scale or for a non-commercial purpose: Provided, That it does not
significantly prejudice the economic interests of the owner of the
SAFE GUARD OLAY
patent; PERLA

72.3. Where the act consists of making or using exclusively for the
purpose of experiments that relate to the subject matter of the
For better grip
patented invention;
Is the design registrable?
72.4. Where the act consists of the preparation for individual
cases, in a pharmacy or by a medical professional, of a medicine in Yes, the shape of soap is not inherent, functionality
accordance with a medical prescription or acts concerning the is not dictated by shape
medicine so prepared;
Can you prevent people from using round wheels? Can it be
72.5. Where the invention is used in any ship, vessel, aircraft, or
land vehicle of any other country entering the territory of the registered?
Philippines temporarily or accidentally: Provided, That such No, it is an inherent design to the function of the
invention is used exclusively for the needs of the ship, vessel, wheel
aircraft, or land vehicle and not used for the manufacturing of
anything to be sold within the Philippines.
Design for function cannot be registered
Experiments with mice, using the formula of the patentee
does not constitute infringement Design helps function but not inherent in function is
registrable
Use of drugs, in its improved version, to cats and dogs does Transcriber’s note: Kindly read limitations of patent rights and registration of utility model. This
not constitute infringement record is incomplete

2 men – non infringement

100 men – non infringement IPL11

Experimentation – the number of men is not important or Assignment of Rights

relevant as long as it is in experimentation stage – no
infringement What are the rights of a patent owner?
Right to:
Compulsory Licensing – not transferable o Use
If the licensee is not qualified, the compulsory o Make
license terminates o Sell
o Import
Compulsory license is cancelled in the Bureau of
Sec. 71. Rights Conferred by Patent. -
legal affairs and a new one is granted to another
71.1. A patent shall confer on its owner the following exclusive
licensee rights:
(a) Where the subject matter of a patent is a product, to
Literal Infringement – the infringing product/invention is the restrain, prohibit and prevent any unauthorized person
or entity from making, using, offering for sale, selling
same one mentioned in the claim of the patentee
or importing that product;
(b) Where the subject matter of a patent is a process, to
Example: restrain, prevent or prohibit any unauthorized person
Light bulb vs Fluorescent Light – uses different or entity from using the process, and from
manufacturing, dealing in, using, selling or offering for
system of producing light – no infringement
sale, or importing any product obtained directly or
indirectly from such process.
Light bulb vs LED (diodes) – uses different system –
no infringement 71.2. Patent owners shall also have the right to assign, or transfer
by succession the patent, and to conclude licensing contracts for
the same.

An assignment of a patent may either be total or partial

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What is the difference between total assignment and partial

assignment? If the assignment is not notarized, the assignment is
Total – assignment of the entire patent; the title is invalid
transferred
Partial – some but not all of the rights. There are 2 Should the assignment be registered in the IP Office?
kinds of partial patent: Sec. 106. Recording. -
106.1. The Office shall record assignments, licenses
o Separate rights
and other instruments relating to the transmission of
o Pro-indiviso any right, title or interest in and to inventions, and
patents or application for patents or inventions to
What is the distinction between Partial assignment of which they relate, which are presented in due form to
the Office for registration, in books and records kept
separate rights and Pro-indiviso rights?
for the purpose. The original documents together with
Separate rights – assigning right to sell only or to use a signed duplicate thereof shall be filed, and the
only contents thereof should be kept confidential. If the
Pro-indiviso – undivided share original is not available, an authenticated copy thereof
in duplicate may be filed. Upon recording, the Office
shall retain the duplicate, return the original or the
Ms. Roman owns a patent, as such, she owns all individual authenticated copy to the party who filed the same
rights to that patent. She assigns the right to sell the products and notice of the recording shall be published in the
manufactured on the basis of that patent to Mr. Ong. Is that IPO Gazette.
106.2. Such instruments shall be void as against any
an assignment of separate right or a pro-indiviso assignment?
subsequent purchaser or mortgagee for valuable
Separate right consideration and without notice, unless, it is so
recorded in the Office, within three (3) months from
Let’s say Ms. Roman sold ¼ of the aliquot portion of the the date of said instrument, or prior to the subsequent
purchase or mortgage.
patent, what kind of assignment is that?
Pro-indiviso
What is the effect if the assignment is not registered?
In pro-indiviso assignment, no specific rights go with a person rd
Valid between parties but void against 3 persons
alone but persons are co-owners of the patent depending of who do not have notice
the agreement
What is the difference between Assignment of patent and
If a person own a patent to an invention and it was assign to licensing of patent rights?
Ms. Pascua, the right to sell the items created based on that
• Assignment – there is transfer of title
patent, can miss Pascua re-assign that right to a third party
• Licensing – there is no transfer of title
without the assignor’s consent? (sub-assignment)
No
Can an assignee file a case for infringement in his own name?
Yes
What if Ms. Pascua assigned to Ms. Lee by way of partial pro-
indiviso assignment the ½ of the patent such that Ms. Lee co-
Can a licensee file a case for infringement in his own name?
owned the patent, can Ms. Pascua prevent Ms. Lee from using
No
the patent under that scenario?
No
As a general rule, who has the right to file an infringement
case of a patent?
Can Ms. Lee, as co-owner, assign the exclusive right to sell the
Owner of the patent
items in favor of a third person without the consent of the
other co-owner?
Who else can file a case for infringement in his own name?
No, a co-owner cannot dispose or sell the patent in
• Assignee
such a way that prejudice the right of the other co-
• Heirs of the patentee – the heirs acquire the right to
owner to exercise such right
the patent by virtue of succession
What document should be executed in the assignment of a
Whoever owns the patent will be the one who will be
patent? How can a person assign a patent?
Sec. 105. Form of Assignment. - The assignment must be in prejudiced by an infringement and therefore he is the party
writing, acknowledged before a notary public or other officer who can file the action for infringement in his own name
authorized to administer oath or perform notarial acts, and
certified under the hand and official seal of the notary or such
other officer.

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Is there a possibility that a licensee can file an action for 87.6. Those that obligate the licensee to transfer for
free to the licensor the inventions or improvements
infringement not necessarily in his own name?
that may be obtained through the use of the licensed
Yes, if he has a special power of attorney technology;

The licensing agreement may contain a provision requiring 87.7. Those that require payment of royalties to the
owners of patents for patents which are not used;
the licensee to immediately inform the licensor if there is
anybody who committed an infringement of the patent. 87.8. Those that prohibit the licensee to export the
licensed product unless justified for the protection of
The same licensing agreement may authorize the licensee to the legitimate interest of the licensor such as exports
to countries where exclusive licenses to manufacture
file a case, not in his name, but in the name of the licensor.
and/or distribute the licensed product(s) have already
been granted;
Technology transfer arrangement
87.9. Those which restrict the use of the technology
supplied after the expiration of the technology transfer
What are the mandatory provision?
arrangement, except in cases of early termination of
Sec. 88. Mandatory Provisions. - The following provisions shall be
the technology transfer arrangement due to reason(s)
included in voluntary license contracts:
attributable to the licensee;
88.1. That the laws of the Philippines shall govern the
interpretation of the same and in the event of
87.10. Those which require payments for patents and
litigation, the venue shall be the proper court in the
other industrial property rights after their expiration,
place where the licensee has its principal office;
termination arrangement;
88.2. Continued access to improvements in techniques
87.11. Those which require that the technology
and processes related to the technology shall be made
recipient shall not contest the validity of any of the
available during the period of the technology transfer
patents of the technology supplier;
arrangement;
87.12. Those which restrict the research and
88.3. In the event the technology transfer arrangement
development activities of the licensee designed to
shall provide for arbitration, the Procedure of
absorb and adapt the transferred technology to local
Arbitration of the Arbitration Law of the Philippines or
conditions or to initiate research and development
the Arbitration Rules of the United Nations
programs in connection with new products, processes
Commission on International Trade Law (UNCITRAL) or
or equipment;
the Rules of Conciliation and Arbitration of the
International Chamber of Commerce (ICC) shall apply
87.13. Those which prevent the licensee from adapting
and the venue of arbitration shall be the Philippines or
the imported technology to local conditions, or
any neutral country; and
introducing innovation to it, as long as it does not
impair the quality standards prescribed by the licensor;
88.4. The Philippine taxes on all payments relating to
the technology transfer arrangement shall be borne by
87.14. Those which exempt the licensor for liability for
the licensor.
non-fulfillment of his responsibilities under the
technology transfer arrangement and/or liability
Prohibited Provisions arising from third party suits brought about by the use
Sec. 87. Prohibited Clauses. - Except in cases under Section 91, the of the licensed product or the licensed technology; and
following provisions shall be deemed prima facie to have an
adverse on competition and trade: 87.15. Other clauses with equivalent effects.
87.1. Those which impose upon the licensee the
obligation to acquire from a specific source capital
Compulsory Licensing
goods, intermediate products, raw materials, and
other technologies, or of permanently employing
personnel indicated by the licensor; Compulsory Licensing vs Voluntary Licensing

87.2. Those pursuant to which the licensor reserves

Grounds for Voluntary Licensing
the right to fix the sale or resale prices of the products
Sec. 93. Grounds for Compulsory Licensing. - The Director of Legal
manufactured on the basis of the license;
Affairs may grant a license to exploit a patented invention, even
without the agreement of the patent owner, in favor of any
87.3. Those that contain restrictions regarding the
person who has shown his capability to exploit the invention,
volume and structure of production;
under any of the following circumstances:
87.4 Those that prohibit the use of competitive
93.1. National emergency or other circumstances of
technologies in a non-exclusive technology transfer
extreme urgency;
agreement;
93.2. Where the public interest, in particular, national
87.5. Those that establish a full or partial purchase
security, nutrition, health or the development of other
option in favor of the licensor;
vital sectors of the national economy as determined by

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the appropriate agency of the Government, so That adequate protection shall be afforded to the
requires; or legitimate interest of the licensee; and

93.3. Where a judicial or administrative body has 100.6. The patentee shall be paid adequate
determined that the manner of exploitation by the remuneration taking into account the economic value
owner of the patent or his licensee is anti-competitive; of the grant or authorization, except that in cases
or where the license was granted to remedy a practice
which was determined after judicial or administrative
93.4. In case of public non-commercial use of the process, to be anti-competitive, the need to correct
patent by the patentee, without satisfactory reason; the anti-competitive practice may be taken into
account in fixing the amount of remuneration.
93.5. If the patented invention is not being worked in
the Philippines on a commercial scale, although
Does the grant of compulsory license amount to deprivation
capable of being worked, without satisfactory reason:
Provided, That the importation of the patented article of property without due process?
shall constitute working or using the patent. No, public interest is involve

Ms. Mariano owns a patent, but she is not practicing the art What does the patent owner receive in losing his property
and not marketing the products. Ms. Ong would to secure a rights because of the compulsory licensing?
compulsory license. How should Ms. Ong acquire compulsory Royalties
license?
Ask first for a voluntary license Infringement of a patent
95.1. The license will only be granted after the 76.1. The making, using, offering for sale, selling, or importing a
petitioner has made efforts to obtain authorization patented product or a product obtained directly or indirectly from
from the patent owner on reasonable commercial a patented process, or the use of a patented process without the
terms and conditions but such efforts have not been authorization of the patentee constitutes patent infringement.
successful within a reasonable period of time.
Causes of action
Application for compulsory license • Civil action
• Criminal action
How do we revoke a compulsory license?
File an application to cancel compulsory license Remedies for Civil action
Damages
What if Ms. Ong realized that she cannot produce the Injunction
products of the patent, how will she terminate her Destruction of infringing products
compulsory license?
Surrender the license What are the measure of damages?
• Actual damages
Terms and condition of a compulsory license • Account of profits
Sec. 100. Terms and Conditions of Compulsory License. - The basic
terms and conditions including the rate of royalties of a
compulsory license shall be fixed by the Director of Legal Affairs Extent of actual damages?
subject to the following conditions: 76.4. The court may, according to the circumstances of the case,
100.1. The scope and duration of such license shall be award damages in a sum above the amount found as actual
limited to the purpose for which it was authorized; damages sustained: Provided, That the award does not exceed
three (3) times the amount of such actual damages.
100.2. The license shall be non-exclusive;
Injunction, 2 kinds
100.3. The license shall be non-assignable, except with
that part of the enterprise or business with which the • Preliminary – interlocutory – the maintenance of a
invention is being exploited; position that will most easily enable justice to be
done when the final determination is made
100.4. Use of the subject matter of the license shall be
devoted predominantly for the supply of the Philippine
• Final
market: Provided, That this limitation shall not apply
where the grant of the license is based on the ground Contributory infringement – where a person does not do the
that the patentee’s manner of exploiting the patent is infringing act per se but rather encourages, or incites or
determined by judicial or administrative process, to be
anti-competitive.
abets, another person or persons to commit the infringing act

100.5. The license may be terminated upon proper Extent of liability – both are principally liable, solidary liability
showing that circumstances which led to its grant have
ceased to exist and are unlikely to recur: Provided,

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