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INTELLECTUAL PROPERTY LAW REVIEWERPATENTS1 INVENTIONAny technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable shall be patentable. It may be, or may relate to, a product, or process, or an improvement of any of the fore...

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INTELLECTUAL PROPERTY LAW REVIEWER

b. The employer, if the inventive activity is the result of the performance of his regularlyassigned duties, unless there is an agreement, express or implied, to the contrary (IPC, Sec. 30).

PATENTS 1.PATENTABLE INVENTION

Q: As between the inventor and the person who commissioned the inventor to create a new work, who owns the patent?

Any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable shall be patentable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing.

A: The person who commissions the work shall own the patent, unless otherwise provided in the contract. (IPC, Sec. 30)

NON-PATENTABLE INVENTION

RIGHT OF PRIORITY

Non-Patentable Inventions. - The following shall be excluded from patent protection: 22.1. Discoveries, scientific theories and mathematical methods; 22.2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers; 22.3 Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. This provision shall not apply to products and composition for use in any of these methods; 22.4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes. Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis protection of plant varieties and animal breeds and a system of community intellectual rights protection: 22.5. Aesthetic creations; and 22.6. Anything which is contrary to public order or morality.

2. OWNERSHIP OF PATENT (SECTION 71) Persons entitled to a patent Inventor, his heirs, or assigns (IPC, Sec 28); Joint invention – Jointly by the inventors (IPC, Sec. 28); Two or more persons invented separately and independently of each other – To the person who filed an application; FIRST-TO-FILE RULE 1. If two (2) or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the person who filed an application for such invention, or 2. Where two or more applications are filed for the same invention, to the applicant which has the earliest filing date (IPC, Sec. 29).

Priority date An application for patent filed by any person who has previously applied for the 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 filing the foreign application(IPC, Sec. 31). Filing Date is accorded only when all the requirements provided under Section 40 are present. Priority Date comes into play when there is an application for patent for the same invention that was filed in another country (Salao, 2012). Conditions in availing of priority date 1.The local application expressly claims priority; 2. It is filed within 12 months from the date the earliest foreign application was filed; and 3. A certified copy of the foreign application together with an English translation is filed within 6 months from the date of filing in the Philippines. (Sec. 31, IPC) 3. GROUNDS FOR CANCELLATION OF PATENT (Sec. 61) Cancellation of Patents. 61.1. Any interested person may, upon payment of the required fee, petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds: (a) That what is claimed as the invention is not new or patentable; (b) That the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art; or (c) That the patent is contrary to public order or morality.

INVENTIONS CREATED PURSUANT TO A COMMISSION Pursuant to a commission: The person who commissions the work shall own the patent, unless otherwise provided in the contract. Pursuant to employment: In case the employee made the invention in the course of his employment contract, the patent shall belong to: a. The employee, if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer;

61.2. Where the grounds for cancellation relate to some of the claims or parts of the claim, cancellation may be effected to such extent only.

Grounds for cancellation of a utility model 1. The invention does not qualify for registration as a utility model; 2. That the description and the claims do not comply with the prescribed requirements; 3. Any drawing which is necessary for the understanding of the invention has not been furnished; 4. That the owner of the utility model registration is not the inventor or his successor in title (IPC, Sec. 109.4). Grounds for cancellation of an industrial design 1. The subject matter of the industrial design is not registrable; 2.

The subject matter is not new; or

3. The subject matter of the industrial design extends beyond the content of the application as originally filed (IPC, Sec. 120). Grounds for Cancellation of Layout-Design of Integrated Circuits 1. The layout-design is not protectable; 2.

The right holder is not entitled to protection:

3. Where the application for registration of the layout-design, was not filed within two (2) years from its first commercial exploitation anywhere in the world. Where the grounds for cancellation are established with respect only to a part of the layoutdesign, only the corresponding part of the registration shall be cancelled (IPC, Sec. 120.3, as amended by RA 9150)

4. REMEDIES OF THE TRUE AND ACTUAL INVENTOR (SEC. 68) If a person, who was deprived of the patent without his consent or through fraud is declared by final court order or decision to be the true and actual inventor, the court shall order for his substitution as patentee, or at the option of the true inventor, cancel the patent, and award actual and other damages in his favor if warranted by the circumstances. Remedies of persons with a right to a patent If a person other than the applicant is declared by final court order or decision as having the right to a patent, he may within 3 months after such decision has become final: 1. Prosecute the application as his own 2. File a new patent application 3. Request the application to be refused; or 4.Seek cancellation of the patent (IPC, Sec. 67.1). 5. RIGHTS CONFERRED BY PATENT Sec. 71. Rights Conferred by Patent. 71.1. A patent shall confer on its owner the following exclusive rights: (a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product; (b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any unauthorized person or entity from using the process, and from manufacturing, dealing in, using,

selling or offering for sale, or importing any product obtained directly or indirectly from such process. 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

6. LIMITATION OF PATENT RIGHTS (Section 72) Limitations of Patent Rights. — The owner of a patent has no right to prevent third parties from performing, without his authorization, the acts referred to in Section 71 hereof in the following circumstances: 72.1. (DOCTRINE OF NATIONAL EXHAUSTION) Using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar as such use is performed after that product has been so put on the said market; 72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose: Provided, That it does not significantly prejudice the economic interests of the owner of the patent; 72.3. Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention; 72.4. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared; 72.5. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other country entering the territory of the Philippines temporarily or accidentally: Provided, That such invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not used for the manufacturing of anything to be sold within the Philippines. (Secs. 38 and 39, R.A. No. 165a) Prior user Person other than the applicant, who in good faith, started using the invention in the Philippines, or undertaken serious preparations to use the same, before the filing date or priority date of the application shall have the right to continue the use thereof, but this right shall only be transferred or assigned further with his enterprise or business (IPC, Sec. 73). Use by Government A Government agency or third person authorized by the Government may exploit the invention even without agreement of the patent owner where: a. The public interest, in particular, national security, nutrition, health or the development of other sectors, as determined by the appropriate agency of the government, so requires; or b. A judicial or administrative body has determined that the manner of exploitation, by the owner of the patent or his licensee, is anti- competitive; or c. In the case of drugs and medicines, there is a national emergency or other circumstance of extreme urgency requiring the use of the invention; or d. In the case of drugs and medicines, there is a public non-commercial use of the patent by the patentee, without satisfactory reason; or e. In the case of drugs and medicines, the demand for the patented article in the Philippines is not being met to an adequate extent and on reasonable terms, as determined by

the Secretary of the Department of Health.

jurisdiction, to recover from the infringer such damages sustained thereby, plus attorney's fees and other expenses of litigation, and to secure an injunction for the protection of his rights.

7. PATENT INFRINGEMENT

76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty, the court may award by way of damages a sum equivalent to reasonable royalty.

-The making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorization of the patentee constitutes patent infringement

76.4. The court may, according to the circumstances of the case, award damages in a sum above the amount found as actual damages sustained: Provided, That the award does not exceed three (3) times the amount of such actual damages.

Civil Infringement The making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorization of the patentee constitutes patent infringement. Exemptions: a. Parallel importation for patented drugs and medicines; Parallel importer is one who imports, distributes, and sells genuine products in the market, independently of an exclusive distributorship or agency agreement with the manufacturer; b. In the case of drugs and medicines, where the act includes testing, using, making or selling the invention including any data related thereto, solely for purposes reasonably related to the development and submission of information and issuance of approvals by government regulatory agencies required under any law of the Philippines or of another country that regulates the manufacture, construction, use or sale of any product; c. Use of Invention by Government; d. Compulsory licensing; and e. Procedures on Issuance of a Special Compulsory License under the TRIPS Agreement for patented drugs and medicines. Contributory Infringement Anyone who actively induces the infringement of a patent or provides the infringer with a component of a patented product or of a product produced because of a patented process knowing it to be especially adopted for infringing the patented invention and not suitable for substantial non- infringing use shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer. (Sec. 76.6, IPC) Criminal Infringement If infringement is repeated by the infringer or by anyone in connivance with him after finality of the judgment of the court against the infringer, the offenders shall, without prejudice to the institution of a civil action for damages, be criminally liable. (IPC, Sec. 84) The criminal liability will arise only if the infringement is repeated, even if after the finality of judgment of the court in the civil action against the infringer or anyone in connivance with him,

76.5. The court may, in its discretion, order that the infringing goods, materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed, without compensation. 76.6. Anyone who actively induces the infringement of a patent or provides the infringer with a component of a patented product or of a product produced because of a patented process knowing it to be especially adopted for infringing the patented invention and not suitable for substantial non-infringing use shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer. (Sec. 42, R.A. No. 165a)

CRIMINAL ACTION FOR INFRINGEMENT Criminal Action for Repetition of Infringement. — If infringement is repeated by the infringer or by anyone in connivance with him after finality of the judgment of the court against the infringer, the offenders shall, without prejudice to the institution of a civil action for damages, be criminally liable therefor and, upon conviction, shall suffer imprisonment for the period of not less than six (6) months but not more than three (3) years and/or a fine of not less than One hundred thousand pesos (P100,000) but not more than Three hundred thousand pesos (P300,000), at the discretion of the court. The criminal action herein provided shall prescribe in three (3) years from date of the commission of the crime. (Section 84)

NOTICE TO INFRINGER Damages cannot be recovered for acts of infringement committed before the infringer had known, or had reasonable grounds to know of the patent. It is presumed that the infringer had known of the patent if on the patented product, or on the container or package in which the article is supplied to the public, or on the advertising material relating to the patented product or process, are placed the words "Philippine Patent" with the number of the patent. (Section 80) B.

TRADEMARKS

CIVIL ACTION FOR INFRINGEMENT

1. MARKS VS COLLECTIVE MARKS VS TRADE NAMES

SECTION 76. CIVIL ACTION FOR INFRINGEMENT.

- "Mark" means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods;

76.1. The making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorization of the patentee constitutes patent infringement. 76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented invention, whose rights have been infringed, may bring a civil action before a court of competent

-"Collective mark" means any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristics, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark;

-‘Trade name" means the name or designation identifying or distinguishing an enterprise, also known or referred to as business identifier. 2. ACQUISITION OF OWNERSHIP The right to register a trademark should be based on ownership. When the applicant is not the owner of the trademark being applied for, he has no right to apply for the registration of the same. Under the Trademark Law, only the owner of the trademark, trade name or service mark used to distinguish his goods, business or service from the goods, business or service of others is entitled to register the same. An exclusive distributor does not acquire any proprietary interest in the principal's trademark and cannot register it in his own name unless it is has been validly assigned to him (Superior Commercial Enterprises, Inc. v. Kunnan Enterprises, G.R. No. 169974, April 20, 2010). The rights in a mark shall be acquired through registration made validly in accordance with the provisions of the IP Code (IPC, Sec. 122). Registration does not confer upon the registrant an absolute right to the registered mark. The certificate of registration is merely a prima facie proof that the registrant is the owner of the registered mark or trade name. Evidence of prior and continuous use of the mark or trade name by another can overcome the presumptive ownership of the registrant and may very well entitle the former to be declared owner in an appropriate case. CONCEPT OF ACTUAL USE Your trademark registration shall be in force for (10) years, and may be renewed indefinitely for periods of ten (10) years. However, to maintain your trademark registration, the IP Code requires you to file a declaration and evidence of actual use, otherwise, the protection granted to your mark will lapse. Thus, by law, you must submit a Declaration of Actual Use and proof of use (e.g., labels, brochures, and other evidence that you are using the mark) within the following periods: •

three (3) years from the date of filing your application; and

•

one (1) year from the 5th anniversary of the date of registration of your mark.

The filing of Declarations of Actual use is also needed upon renewal and mid-renewal. Actual use of the mark in commerce is very important because if you are not using the mark in your business, your mark will be removed from the trademarks register. To prove use of the mark, you need to submit the declarations of use within the prescribed period. EFFECT OF REGISTRATION HOW CAN YOU PROTECT YOUR MARK? In the Philippines, a trademark can be protected through registration. Registration gives the trademark owner the exclusive right to use the mark and to prevent others from using the same or similar marks on identical or related goods and services. The right to a trademark is granted to the one who first files a trademark application with the IP Philippines. Before applying for trademark registration, it would help if you conduct a search in the trademarks database to determine if there are identical or similar marks that would prevent

the registration of your mark. This is to prevent future conflicts with marks that are already registered or with earlier filing dates. The trademark protection granted by IP Philippines protects your mark only in the Philippines. If you want your mark protected outside the country, you will need to file applications in the countries where you want your mark registered. 3. NON- REGISTRABLE MARKS (Sec. 123.)

123.1. A mark cannot be registered if it: (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; (b) Consists of the flag or c...