Patent Law

Basic Patent Principles

• Territoriality – patents are valid only
in the country or region in which it
have been granted;
• First-to-File – applicant who files first
will get the patent;
Basic Patent Principles
• Disclosure – applicant shall disclose
the invention in a manner sufficiently
clear and complete;
• Conditional – patents are granted
only upon compliance with the
criteria of patentability.
What is a 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.
What are the Subjects of a Patent?
• Product;
• Process;
• Improvement of the foregoing.
Non-Patentable Inventions
• Discoveries;
• Scientific theories;
• Mathematical methods;
• Schemes, rules and methods of
performing mental acts and playing
games;
Non-Patentable Inventions
• Methods for treatment of human or
animal body;
• Plant varieties and or animal breeds;
• Aesthetic creations;
• Contrary to public order or morality.
Patentable?
Patentable?
Ownership of Patent

• The right to a patent belongs to

the inventor, his heirs, or assigns.
When two (2) or more persons
have jointly made an invention,
the right to a patent shall belong
to them jointly.
Ownership of Patent
• If two (2) or more persons have
made the invention separately and
independently of each other, the
right to the patent shall belong to the
person who filed an application for
such invention, or where two or more
applications are filed for the same
invention, to the applicant who has
the earliest filing date or, the earliest
priority date.
Ownership of Patent

• The person who commissions the

work shall own the patent, unless
otherwise provided in the contract.
Ownership of Patent

• In case of invention made in the

course of employment, the patent
shall belong to the employee if the
inventive activity is not part of his
regular duties even if he used the
time and facilities of the employer.
Mandatory Publication
• The patent application shall be
published after the expiration of 18
months from the filing date.
• After publication, any interested
party may inspect the application
documents filed.
Ownership of Patent

• A patent application, which has

not yet been published, and all
related documents, shall not be
made available for inspection
without the consent of the
applicant.
Ownership of Patent

• If the required fees for grant and

printing are not paid in due time,
the application shall be deemed
to be withdrawn.
Grounds for Cancellation of Patent Application
• The invention is not new or
patentable;
• Non-disclosure of the invention in a
manner sufficiently clear and
complete;
• The invention is contrary to public
order or morality;
Effectivity of Patent

• A patent shall take effect on the

date of the publication of the
grant of the patent in the IPO
Gazette.
Term of Patent

• The term of the patent shall be 20

years from the filing date of the
application.
Limitations of Patent Rights
• Use with the express consent of the
owner;
• Private and non-commercial use;
• Use in experiments;
• Submission of information to
regulatory agencies;
Limitations of Patent Rights
• Public interest;
• Use of patent is anti-competitive.
Patent Infringement
• The making, using, offering for sale,
selling or importing a patented
product or a product obtained
directly or indirectly from a patented
process, or the use of the patented
process without the authorization of
the patentee.
Manner of Infringement
• Literally;
• By equivalents;
Literal Infringement
• There is literal infringement if an
accused device falls directly within
the scope of properly interpreted
claims.
Infringement by Equivalents
• There is infringement by equivalents
if two devices do the same work in
substantially the same way and
accomplish substantially the same
result even though they differ in
name, form or shape.
Burden of Proof in Patent Infringement
• The burden of proof falls on the
defendant. Infringement is
presumed.
Liabilities for Patent Infringement
• Damages;
• Imprisonment of 6 months – 3 years
and/or fine of P100,000 – P300,000, at
the discretion of the court.
Prescription of Patent Infringement
• 3 years from the commission of the
crime.
• A distinctive-tasting pastillas is well-known throughout
the country as having been developed within a
close-knit women’s group in Barangay San Ysmael
which is located along a very busy national highway.
lts popularity has encouraged the setting up of
several shops selling similar delicacies, with the most
famous product being the pastillas of "Barangay San
Ysmael." Eventually, the pastillas of Aling Yoling under
the brand name "Ysmaellas" began to attract
national distinction . Aling Yoling therefore registered
it as a copyright with the National Library. Her
neighbor, Aling Yasmin, realizing the commercial
value of the brand, started using the term "Ysmaellas"
for her pastillas but used different colors. Aling Yasmin
registered the brand name "Ysmaellas" with the
Intellectual Property Office (IPO).
•Can "Ysmaellas“ be the subject of
trademark or copyright registration?
•What’s the difference between
trademark and copyright registration?
What is a Trademark?
•Is a “visible sign” capable of
distinguishing the goods or services
of an enterprise and shall include a
stamp or marked container of the
goods.
Registration of Marks

•The rights in a mark shall be

acquired through registration
made validly in accordance with
the provisions of this law.
Trademark Forms
• Words/Letters/Numerals
Trademark Forms
• Figures/Pictures
Trademark Forms
• Shapes/Colors
Trademark Forms
• Logo
Trademark Forms
• 3-Dimensional Object
Distinctiveness
•Apart from its commercial utility, the
benchmark of trademark
registrability is distinctiveness.
Great White Shark vs. Caralde (Nov. 21, 2012)
Great White Shark vs. Caralde (Nov. 21, 2012)

A generic figure, as that of a shark in

this case, if employed and designed in
a distinctive manner, can be a
registrable trademark device, subject
to the provisions of the IP Code.
Types of Marks
• Trademarks
• Service marks
• Collective marks
• Well-known marks
Collective Marks
Well-Known Marks (Paris Convention)
•Prohibits the use, of a trademark which
constitutes a reproduction, an imitation,
or a translation, liable to create
confusion, of a mark considered by the
competent authority of the country of
registration or use to be well known in
that country.
Fredco vs. Harvard (June 1, 2011)
Fredco vs. Harvard (June 1, 2011)
“There is no question …that "Harvard" is a well-known
name and mark not only in the United States but
also internationally, including the Philippines. The
mark "Harvard" is rated as one of the most famous
marks in the world. It has been registered in at least
50 countries. It has been used and promoted
extensively in numerous publications worldwide. It
has established a considerable goodwill worldwide
since the founding of Harvard University more than
350 years ago…”
Non-registrable Marks
• Immoral, deceptive, or scandalous
matters;
• False connection with persons;
• Contrary to public order;
• Flags/coat of arms of nations;
Non-registrable Marks
• Names, portraits, signature of living
person, except with the consent of
such person;
• Names, portraits, signature of a
deceased President of the
Philippines, except with the consent
of the living spouse;
Non-registrable Marks
• Generic terms;
• Descriptive terms;
• Colors by itself;
• Shapes dictated by technical factors.
Rights of an Owner of a Mark
• The owner of a registered mark shall
have the 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 services which
are identical or similar to those in
respect of which the trademark is
registered where such use would
result in a likelihood of confusion.
Term of Protection
• A certificate of registration shall
remain in force for ten (10) years.
Renewable for periods of 10 years
each (indefinite).
• Provided a declaration of use is filed
within 1 year from filing and from the
5th year of registration.
Sample Problem
•Same Corporation registered its mark
“Lena” for sports shoes and socks. It
did not use its mark for any of its
products during the first 6 years after
its registration.
•Will Same Corporation automatically
lose its registration?
•Can Same Corporation retain
protection over its mark?
Trademark Infringement
•Unauthorized use of a registered
trademark, or of a colorable imitation
of the same, for similar or related
goods in which such use is likely to
cause confusion or mistake, or to
deceive.
Colorable Imitation
Tests of Confusion
• Dominancy Test – prevalent features
of a product.
Tests of Confusion
• Holistic Test – marks compared in
their entirety.
Mang Inasal vs. Ma’am Inasal
Mang Inasal vs. OK Hotdog Inasal
Unfair Competition
•Unfair competition has been defined
as the passing off (or palming off) or
attempting to pass off upon the public
of the goods or business of one person
as the goods or business of another
with the end and probable effect of
deceiving the public.
Remedies
• Administrative Action (IPO)
• Civil Action (RTC-SCC)
• Criminal Action (RTC-SCC)
• 2 -5 years imprisonment
• P50,000 – P200,000 fine
Copyright Protection

• Literary and artistic works are

original intellectual creations in the
literary and artistic domain are
protected from the moment of their
creation.
Subject Matter of Copyright
Books, pamphlets, articles and other writings
Subject Matter of Copyright
Periodicals and newspapers
Subject Matter of Copyright
Lectures, sermons, dissertations
Subject Matter of Copyright
Letters
Subject Matter of Copyright
Dramatic or dramatico-musical compositions
Subject Matter of Copyright
Drawing, painting, architecture, sculpture
Subject Matter of Copyright
Musical compositions
Subject Matter of Copyright
Ornamental Designs
Subject Matter of Copyright
Illustrations, maps, plans, sketches
Subject Matter of Copyright
Drawings or plastic works of technical character
Subject Matter of Copyright
Photographic works
Subject Matter of Copyright
Audio-visual works
Subject Matter of Copyright
Pictorial illustrations and advertisements
Subject Matter of Copyright
Computer programs
Subject Matter of Copyright
Other literary and artistic works
Term of Protection

• The copyright in works shall be

protected during the life of the
author and for fifty (50) years after
his death.
Reckoning Point (50-Year Period)

• An author of a book died on

February 22, 2019.
• January 1, 2020.
Fair Use

• The fair use of a copyrighted work

for criticism, comment, news
reporting, teaching including
multiple copies for classroom use,
scholarship, research, and similar
purposes is not an infringement of
copyright.
Fair Use
• The private reproduction of a
published work in a single copy,
where the reproduction is made by
a natural person exclusively for
research and private study, shall be
permitted, without the authorization
of the owner of copyright in the
work.
Fair Use

• Any library or archive whose

activities are not for profit may,
without the authorization of the
author of copyright owner, make a
single copy of the work by
reprographic reproduction.
Fair Use

• It shall not be permissible to

produce a volume of a work
published in several volumes or to
produce missing tomes or pages of
magazines or similar works, unless
the volume, tome or part is out of
stock.
Economic Benefits from Copyright
• In every sale or lease of an original
work of painting or sculpture or of the
original manuscript of a writer or
composer, subsequent to the first
disposition thereof by the author, the
author or his heirs shall have an
inalienable right to participate in the
gross proceeds of the sale or lease to
the extent of five percent (5%).
• Professor MX3 lectures before CPA reviewees of WWE
Review Center on the field of Corporation Law. In
the course of his lectures, Prof. MX3 gives to the
reviewees hand-outs on the contents of his lectures.
The handouts contain the warning that they are for
the exclusive use of WWE bar reviewees and should
not be disseminated without Prof. MX3’s express
written consent. No copies of his handouts have
been registered and deposited with the National
Library and the Supreme Court library. One of the
WWE reviewees, Vin Gizi, uploads without Prof. MX3’s
consent his handouts to the website,
www.cheat.com, where they can be viewed and
downloaded by anyone who visits the website. What
crime or crimes, if any, did Vin Gizi commit?
•Vin Gizi is liable for Copyright
Infringement (and online piracy).
Copyright Infringement is committed by one who:
•Directly commits an infringement;
•Benefits from the infringing activity;
•Knowledge, inducement, or
contribution to the infringing
conduct of another.
Remedies for Copyright Infringement
•Injunction;
•Actual damages and legal costs;
•Impounding of documents/materials;
•Destruction of copies/devices;
•Criminal liability.
Criminal Liability
Imprisonment of between 1 to 3 years
and a fine of between 50,000 to 150,000
pesos for the first offense.
Imprisonment of 3 years and 1 day to six
years plus a fine of between 150,000 to
500,000 pesos for the second offense.
Imprisonment of 6 years and 1 day to 9
years plus a fine ranging from 500,000 to
1,500,000 pesos for the third and
subsequent offenses.
Thank You!