PATENT LAW Example:

Purpose
Affords investors the right to exclude in order to Plan is a time machine; the idea cannot be
encourage creators to invest in making inventions. protected. The actual time machine, my vision is
something I just go to like a bathroom. There is no
Provide incentive by affording them exclusivity, the necessity for that but rather how it works, physics
right to own their work. encouraging to create more mechanism that makes sure to leave one time to
which ultimately benefits everyone. Enriches our another, forward or backward. Things like that that
lives, improves and provides solutions to our will be protected.
problem. No requirement that it should actually be a thing.
But it should be more than a vague idea. More than
Functions of Patent a principle of physics or gravity.
1. To protect investors;
2. Enable Skilled artisans to use and make Person having ordinary skill in the art (PHOSITA)
invention (written Disclosures); Will be able to use and make improvement in the
3. Provide blueprints for their inventions, how patented invention. More than an engineer or only
it works and mechanism for that. mechanic who can build the machine. There must
be a person having ordinary skill in the art.
Someone is to make use of those inventions to
improve or use it as basis for subsequent He is presumed to have normal means or capacity
invention. for routine work and experimentation.

Patent Protection is a double-edged Sword Example

Promise of exclusivity which provides monetary A computer machine, not a technician who is
incentives that lead to creation invention and Phosita, maybe a computer engineer.
discovery.
Rule 207 of Rules on IPL
However, the exclusivity impedes the flow of Presumed to be an ordinary practitioner aware of
information that might permit, indeed spur, what is common general knowledge in the art at the
invention. relevant date.

Exclusivity for 20 years no one is permitted to make It is what they are aware now, given the
use of the invention as is or either changing or technological inventions. They are ordinary
modifying a certain portion of it. Because of that practitioner, not necessarily that they are geniuses
exclusivity, there tends to be an impediment in the in the field.
spur of invention.
Patent Prosecution
That’s the disadvantage. Someone is going to take Administrative procedure of securing a patent
advantage of it at the expense of another person protection
improving or making the same invention but more
efficient.
Prosecution History
Common terms The exchange between the applicant and examiner
Invention produces an official documentary history of the
Inventor’s conception rather than a physical application process.
embodiment of an IDEA.
There will be exchanges, like report after
If it is just an idea it will not be protected by a submission because they determine that it is
patent and copyright. compliant in the procedural(formal) or substantive
requirement. Produces documentary history of the
There must be a concept for it, how it is going to application process.
take place. No requirement that it is just an idea,
should already made, as long as there is a concept Making/Identifying processes. Sabihin nila it
to it. No necessity that it should already be a cannot be patented kasi hindi novel.
developed.
Claims
Part of a patent which stated the exclusionary Section 29. First to File Rule. - If two (2) or more
rights to which the inventor believes he is entitled persons have made the invention separately and
to by virtue of the invention. REMEMBER! independently of each other, the right to the patent
shall belong to the person who filed an application
There is review of related literature where we can for such invention, or where two or more applications
make use of other inventions but we should identify are filed for the same invention, to the applicant who
them. Yung background information on that. has the earliest filing date or, the earliest priority
date. (3rd sentence, Sec. 10, R.A. No. 165a.)
There is also a requirement we should identify prior
art we are using as basis for our invention. What matters is it is filed first. In determining who
will be protected the earliest filing date or earliest
-All other previous inventions.
priority date will be considered.
-If it touches or so similar to that prior art, it will
not be considered as novel. Filling date is the filing of application with the
IPOPHIL and it is the date that all requirement have
Example: been submitted in the office.
1. Inventing a pencil for the first time. What will
If there is amendment it wouldn’t matter.
be the prior art I will be taking advantage of
is the process na may led sa kahoy.
Section 40. Filing Date Requirements. - 40.1. The
filing date of a patent application shall be the date of
Yung process nayun ay ginamit na sa prior receipt by the Office of at least the following
invention. So, my invention may be elements:
considered as not novel. ELEMENTS:
(a) An express or implicit indication that a
Para sabihin na novel, I can say na the Philippine patent is sought;
process of making a small thin rod for the
placement of the led is not something I am (b) Information identifying the applicant; and
claiming. All I am claiming is the inclusion of
the led inside the wooden rod as a writing (c) Description of the invention and one (1) or
device. more claims in Filipino or English.

2. First time na nainvnet ang katinko 40.2. If any of these elements is not submitted within
the period set by the Regulations, the application
I am the inventor, but there has been an shall be considered withdrawn. (n)
invention of methyl salicylate and menthol.
First to File Rule
If I am making the katinko, but includes When there are two or more persons who made the
camphor. That means I cannot claim methyl invention separately and independently of each
salicylate and menthol, but I can claim other, the one who filed the one who has earliest
inclusion of camphor in the formula for the filing date or earliest priority date has the right of
katinko. the patent.

If you do not claim it, any violation is not Section 31. Right of Priority. - An application for
considered as patent infringement. patent filed by any person who has previously
applied for the same invention in another country
which by treaty, convention, or law affords similar
Term of Patent privileges to Filipino citizens, shall be considered as
20 years from the filing date filed as of the date of filing the foreign application:
Same as trademark from the filing date.
Provided, That:
Patent prosecution is longer. (a) the local application expressly claims priority;
(b) it is filed within twelve (12) months from the date
From the filing date not from the issuance or the earliest foreign application was filed; and
approval of registration. (c) a certified copy of the foreign application together
Apply also section 29 with an English translation is filed within six (6)
months from the date of filing in the Philippines. (Sec.
15, R.A. No. 165a)

Who has a right to patent

• Inventor
• His heirs or assigns

Section 28. Right to a 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. (Sec. 10, R.A. No. 165a)
N.B. The presence of any of the 2nd column will be
There should be an identified person as the
considered as making the work not protected by
inventor. Or authority coming from the inventor
patent.
authorizing for the third person to file the
application.
1. Patentable Subject Matter-
Joint invention Section 21. Patentable Inventions. - Any
Right to a patent belongs to them jointly. technical solution of a problem in any field of
human activity which is new, involves an
Commissions
inventive step and is industrially applicable
GR: The person who commissioned the work is
shall be Patentable. It may be, or may relate
considered the inventor.
to, a product, or process, or an improvement
XPN:
of any of the foregoing. (Sec. 7, R.A. No. 165a)
1. Employee- if the inventive activity is not part
of his regular activities.
Example:
2. Employer- if the invention of result of the
Now what is the most pressing technical
performance of his regular duties.
human activity/ what can be a problem in
XPN to the 2nd XPN: the field of human activity? So, anything that
There is an agreement, express or implied to you do when you wake up and fall asleep.
the contrary. That can be the basis for patent. Tignan niyo
naman, its any technical solution of a
Example: problem in any field of human activity
If an employee invented a work by his Everything can be patented, except if it falls
regular assigned duties, it is the Employer who under the enumerations under the law. So,
owns it. Except if there is an agreement. Even if it para siyang negative list.
is with regular function, employee will still have a
right to the patent. WHAT MAY NOT BE PATENTED
Q: can there be an agreement between HINT: Monopolization of these through patent
EE_ER who created something outside her regular might tend to impede innovation more than it
duties? No. (based kay ma’am) would tend to promote it.
a. Discoveries, scientific theories and
REQUIREMENTS FOR PATENTABILITY mathematical methods-manifestation of nature,
(1) Patentable subject matter; must be free to all men.
(2) Novelty;
(3) Involves an inventive Step; Example: rule on gravity, waves.
(4) Industrially Applicable.
Laws of nature is not patentable because it is a
public good and it cannot be owned by a single
entity.

In order for a Laws of nature to be patentable

there must be human intervention. There must
be a process that has additional feature that
 provide practical assurance that the process is
more than attempting to monopolize the law of What may be patentable?
nature itself. Microorganisms & non-biological and
microbiological processes
Example: escape velocity – space Shuttle takes
advantage of escape velocity, how much speed. e. Aesthetic creations
It is now with human intervention, it can be ― Protected by copyright, industrial
protected by patent. design,
f. Anything which is contrary to public order or
Take advantage of rain cycle. morality
Weapons, guns, abortificent, poison
b. Schemes, Rules and Methods of performing
mental acts, playing games or doing business European Patents (NOT protected)
and programs for computers. ― Processes for cloning human beings
Programs for computers — protected by ― Processes for modifying the germ line
copyright unless the computer program genetic identity of human beings
has a hardware, that in order for the ― Uses of human embryos for
hardware to work, there should be a industrial or commercial purposes
program that enables it ― Processes for modifying the genetic
Example a method for memorizing or identity of animals which are likely to
computing cause them suffering without any
App - how to learn a foreign language substantial medical benefit to man
(rosetta stone) or animal, and also animals
Accounting procedure cannot be resulting from such processes
patented
2. Novelty —
NOT PATENTABLE ― Something that is NEW
― Claim that merely describes a ― Not necessarily original and distinctive
method of doing business does NOT ― NOT necessarily new to the inventor,
qualify as a process BUT new to the art, the science,
― Mere realization of methods and
steps Sec. 23 An invention shall not be considered
― You cannot patent how the human new if it forms part of a prior art.
mind conduct intellectual and
cognitive process A PRIOR ART is any evidence that an
― Its difficult to determine invention is already known.
infringement
― Absurdity of patenting how our Why is the requirement for novelty?
minds work Because it is thought that only NEW
inventions promotes the goal of progress in
c. Methods for treatment of the human or animal the useful art to which they pertain
body by surgery or therapy and diagnostic
methods practiced on the human or animal It does not mean that they exist physically,
body or commercially available, the fact that it is
― Taking of body temperature as a already known, it is already novel
method CANNOT be patented
― But the machines that are Example
necessarily used to conduct the A B
taking of body temperature CAN be C D
protected by patent
Its NOT considered prior art, it is considered
d. Plant varieties or animal breeds or essentially NOVEL IF in this world, NO ONE has
biological process for the production of plants or invented elements A, B, C, and D as part of
animals my invention
 Is the invention of A new, if it covers the same
BUT it can be considered as PRIOR ART, invention?
barring patentability, if for example element ◼ September 1, 2012 by X in the United
C belongs to someone else, not novel already States (X filed first)
◼ November 1, 2012 by A
How to claim novel? ◼ May 1, 2013 by X in the Philippines (2nd
Narrow the claim application of X)
Do not claim for C
Make a claim only to A, B and D ➢ There should be an application in the
Or add additional features Philippines within 12 months after the
application in the foreign country
PRIOR ART (Sec. 24.1) ➢ The priority date is September 1, 2012,
(1) Everything which has been made available thus afforded protection
to the public anywhere in the world, before ➢ November 1, and May 1 are NOT novel. It
the filing date or the priority date of the cannot be afforded patentability. There is
application claiming the invention something that existed prior to the
― The law does not distinguish on who made application
it public first, be it the inventor first who ➢ The rule is that anything that is available
disclosed the invention. to the world that is made in public,
― Making it known for some areas of the anything in the world is considered not
world, not necessarily entire world. As long novel
as it is available to those who are interested ➢ The invention of X is a prior art which
in the art makes the invention of A not novel. NO
― It would NOT matter as to the knowledge of NOVELTY
who the inventor is, BUT the knowledge
about the invention Remedy
⚫ Narrow the claims
(2) Whole contents of an application for a P, Identify which aspect of the invention of X
UM or ID reg. Filed or effective in the Phil. is not necessarily claimed by A, that is
with a filing or priority date that is earlier what you apply or claim for.
than the filing or priority date of the
application Even if a prior art is a kryptonite, there is
➢ Anything that is subject of an application, something that can defeat a kryptonite which
even if a utility model or industrial design is non- prejudicial disclosure.
filed or effective in the Philippines earlier
than the filing date or priority date of the NON-PREJUDICIAL DISCLOSURE
application, or even a subject of patent This disclosure, even if made which could have
application before even if it was denied amounted to prior art, they will not be
considered as disclosures that will render a
What if it became abandoned, or the term of work or invention not novel.
patentability already expired, would that still be
a bar for the protection of patent? If they fall under those enumerated under
YES. Because it is something that is made Section 25, they are still considered to be
available to the world, and subject of NOVEL
application that is granted, it is a prior art
already. Section 25
Disclosures made during the 12 months
Section 24.2 The inventor in the application is preceding the filing date or the priority date is
NOT the inventor in the prior art. NOT prior art, which makes the invention still
novel.
If it is my application which is denied or
abandoned, that is NOT considered prior art IF MADE BY
1) Inventor;
Example
 2) A patent office and the information was ▪ Japan Patent Office
contained in another application filed by o The claimed invention is obvious if the
the inventor and should not have been skilled in the art on the relevant date
disclosed by the office; would have been motivated or
prompted to realize the claimed
invention by substituting, combining,
3) A patent office and the information was or modifying one or more of those items
contained in an application filed without of prior art with a reasonable likelihood
the knowledge or consent of the inventor by of success.
a third party which obtained the
information directly or indirectly from the Ex: it is not considered involving an inventive
inventor; step if instead of having a lead pencil, I am
going to change it to another metal
4) Third party which obtained the information ▪ Sec. 26.1: Non-obvious, meaning, not
directly or indirectly from the inventor. hindsight
Q: why not?
Example: A: this is an acknowledgement that many
FILED: September 1, ground breaking inventions have come when
2019 artisans made creative use of teaching from
fields far removed from the pertinent art.
INVENTED: June 1, 2019
Put on sale on July 15, Novel, within 12 To be considered non-obvious, it’s big enough,
2019 months technical advancement and should not be
Trade show on August 1, trivial
2019
Pinoy shark tank August NOT novel, exceed ▪ its achievement is marked by more ingenuity
2018 12 months prior to and skill than were possessed by an ordinary
mechanic acquainted with the business.
the filing date
It should be more ingenious and is not readily
In the Philippines apparent from the perspective of an ordinary
WHEN invented DOES NOT matter, as long as it is mechanic, someone who is ordinarily skilled in
filed first. the art.
Ex:
3. Involves an inventive Step; ➢ No inventive step
- In order to determine whether something • Clay knob around a dovetail-based metal rod
involves an inventive step, take a look from the • Eraser attached to a pencil
perspective of a person skilled in the art.
Because to determine if it involves an inventive ➢ No inventive step
step or if it is obvious, it should be made not • PHOSITA can make a predictable variation
by a layman but someone skilled in the art.
• Someone who has common general ▪ Atlantic Works v. Brady (1883)- “to grant a
knowledge in the technical field single party a monopoly of every slight advance
• Is able to use ordinary technical means made except where the exercise of invention,
for Research & Development somewhat above ordinary mechanical or
engineering skill, is distinctly shown, is unjust
• Is able to exercise ordinary creativity,
in principle and injurious in its consequences”
such as selection of materials
• Is able to comprehend all the matter in
▪ Difference of patent and utility model -no
the state of art in the claimed invention.
inventive step requirement (Sec. 109.1 (a))
▪ This element is also referred to as the: non-
▪ RA 9502 AMENDMENTS- mere discovery of a
obviousness requirement.
new form or new property of a known substant
which does not result in the enhancement of
▪ Sec. 26.1- an invention involves an inventive
the known efficacy of that substance.
step if, having regard to prior art, it is not
obvious to a person skilled in the art at the
▪ Medicines: Lacking inventive step
time of the filling date or priority date of the
o Mere discovery of a new form or new
application claiming the invention.
property of a known substance
 o Mere discovery of a new property or new b. How they are connected to one another
use for a known substance 4. One or more claims
o Use of a known process - What are the basis for the invention?
- Is there a prior art that is the basis of the
4. Industrially Applicable invention?
▪ Sec. 27- an invention that can be produced
and used in any industry shall be industrially 5. An abstract
applicable. - An explanation of how it works.
▪ Industrially applicable and utility
requirement- it must be useful and must have ▪ Disclosure- application shall disclose the
identifiable benefit. invention in a manner sufficiently clear and
▪ Utility requirement- currently available benefit complete for it to be carried out by a person in
that is both specific and substantial. the art.
Q: why?
A: “a patent is not a hunting license. It is not a Like an instruction manual but more clear that
reward, but the compensation for a successful you can really see how it works just by
conclusion.” following the instructions.

▪ Test for sufficient and clear disclosure

- The test for enabling disclosure is whether the
person to whom it is addressed could, by
following the directions therein, put the
invention into practice.

▪ Stages:
I.
Filing of application >
Formality examination >
Classification and a search >
Publication of a patent application.

Filing of application and assigning of filing

date.

Formality examination - determination of the

contents as stated in the implementing rules
and regulations as well as the provisions of the
law if it has been complied with, if the inventor
is identified.

Classification and search- not yet the

substantive; if there is something that exist
like this in the world; if there is, then they will
not proceed.
PATENT APPLICATION After the conduct of classification and search,
▪ UNITY OF INVENTION (Sec. 38)- one invention they will conduct a publication of the patent
per application. application in the IPOPHIL gazette within 18
▪ Will be separated if it pertains to several months from filing date or priority date.
applications which do not form a single general
invention. The filing of a patent should be kept
▪ Same filing date others - allowed to be filed confidential. The contents of the patent
separately but filed within 4 months after the application should be kept confidential.
requirement to divide becomes final. Otherwise, it could become a prejudicial
▪ Application- it should be in writing. disclosure.
Contents: ▪ Even at this point
1. Request for grant of a patent - Applicant will have the rights of a patentee
2. Description of the invention against any person who exercised any of the
3. Drawings necessary for the understanding of rights conferred under Sec. 71.
the invention
a. It should be identified
 Patent pending - a right already upon ▪ A grace period of 6 months shall be granted for
publication. They can make use of that, the payment of annual fees.
and anyone who makes use of that can
be held liable for patent infringement. RIGHTS OF PATENTEES

Rights: “Patentees” are individuals whose application for

a. Prohibit patent has been approved.
b. Restraint
- Shall have the exclusive right:
c. Prevent
1. To restrain, prohibit, and prevent any
unauthorized person or entity from making,
Any unauthorized person or entity from
using, offering for sale, selling or importing
using, making, offering for sale, selling,
that product; (PRODUCT)
or importing that product.

Provided: N.B. So, this pertains to a product. Remember

▪ There is actual knowledge that the invention that inventions may either be a product or a
he was using was the subject matter of a process, and patent may be over a product and
published application;
a process.
▪ Written notice was given.
2. To restrain, prohibit, and prevent any
Q: is it correct to say that the patentee even unauthorized person or entity from using,
though there is no application that has yet manufacturing, using the product, dealing
been afforded, that an applicant will be treated in, selling or offering for sale, or importing;
the same way as the pantentee even if the (PROCESS)
patent has not yet been approved?
A: Yes. That is permitted under the law. N.B. So, this means that what will be used will
Because its going to frustrate any rights that be the process; What will be manufactured will
could be attained by the applicant if they are be a product using the process; Dealing in,
not going to be permitted to cause the
selling the product from the process; and
protection of their work just because there was
importing not the process, but importing the
a delay in the patent prosecution.
product from the process.
II. So, a protection of a process in effect protects
Publication of the Application >
the process as well as the product that is
Making of observation in writing by the public >
created from using that process.
Applicant makes request for substantive examination
> 3. To assign, transfer by succession the
Grant the patent > patent, and conclude licensing contract.
Publication of the grant of patent. (BOTH PRODUCT AND PROCESS)
The purpose of publication is to inform the
public in case someone will be infringed or For both product and process, the exclusive
prejudiced by the protection afforded to the right to assign, transfer by succession, it is a
work. property that can be inherited and to also enter
into a licensing contract, especially a voluntary
The request should be done by the applicant
one which is an agreement to either make use
within 6 months. This is not motu proprio.
of the invention or to make use of the process to
REMEMBER!
The grant of patent, all the benefits that are create a product from that process.
afforded to a patentee will retroact to the date
of the publication
INFRINGEMENT
The protection of 20 years does not begin from
the grant of patent but rather it begins from Damages can only be recovered for acts of
the filing of patent application. infringement committed within 4 years before the
institution of the action for infringement.
ANNUAL FEES
▪ Annual fees shall be paid upon the expiration The 4 years is quite important because it is a
of 4 years from the date of application prescriptive period for the filing of any suit. That it is
▪ Payment may be made within 3 months before only limited to 4 years. So, I’m going to sue someone
the due date for patent infringement, it should be acts committed
within 4 years from now.
 PRESUMPTION materials, the paint, everything about it is the
same. That is why it is said that the green invention
If the patent is over a process
reads on the pink invention because it is touching
o Any identical product shall be presumed to on, similar to the latter.
have been obtained through the use of the
patented process. So, because there is a prohibition on patent
infringement, what did people do? Well, they just
Why? Because there is no way that a tried to change certain elements of the infringing or
product can be so similar, except if it is used the copy in order to be ruled out as patent
or it was created by virtue of a process that infringement.
is subject of a patent protection.
So, for example, you can now say na “Ay, this is
not the same look. I have element D here. If there is
KINDS OF INFRINGEMENT element D in the green invention then it must mean
that it is no longer the same as the pink invention.
1. Literal That’s what happened.
2. Doctrine of Equivalents
Thus, the creation of the doctrine of equivalents.
Why are there 2 kinds? Well, it actually began with
literal infringement. DOCTRINE OF EQUIVALENTS

- When the infringement is not identical but the

LITERAL INFRINGEMENT product performs substantially the same function
in substantially the same way to achieve
- Where each and every limitation of the claimed substantially the same result.
invention is present in another’s product or
process.
- Every limitation set forth in a claim must be found N.B.
in an accused product, exactly. SS FWR
So, it means that the process should be identical in o This is my code for this doctrine.
all aspects, and the product shall be identical in all o If there is a Substantially the Same either
aspects. That every limitation set forth in a claim Function, Way or Result.
must be found in an accused product, and that it
should be exactly as is found in the plaintiff’s So, when the infringement is not identical
product. but the product performed substantially the
same function in substantially the same
Kunyare eto: way to achieve substantially the same
result, then it is now Doctrine of Equivalents,
it is patent infringement.

So, if it used to be before that there should

be identical works, identical products,
processes, identical products from those
processes in order for it to be considered as
patent infringement. Now, by virtue of the
doctrine of equivalents, even if they are not
entirely the same BUT if they perform
substantially the same function, it does the
same thing, and the result is substantially
The Green invention reads on the pink invention the same even though there is a little bit of
because this pink invention was actually the one change, that is still considered as patent
invented by patent. But take a look that every infringement under the Doctrine of
aspect, element of it were identical. The placement Equivalents.
is also identical. So, this was the original definition
of patent infringement, that it should be found
exactly as is using the same element. So, if this
were a time machine, how it works, what are the
- How did this doctrine came about? use of the same thing, will not be considered
as patent infringer because all of my rights
over the thing has been exhausted already,

WHY?
Because in patent, the mere use of the
product is considered as patent
o The cone-like figure is the usual shape of a infringement.
train. It is half canonical. By having this
shape, the train will move faster. 2. Done privately and on a non-commercial scale
o In order to avoid patent infringement, they or for non-commercial purpose.
made it into an octagon shape. o So, if it just for the use of one person or for
o The SC said that there is patent the family then it is not considered as patent
infringement by the Doctrine of Equivalents. infringement.

“Courts have recognized that to permit 3. Exclusively for experimental use of the
imitation of patented invention which does invention for scientific purposes or
not copy every literal detail would be to educational purpose.
convert the protection of the patent grant o For example, to determine the proof of
concept. So, alam niyo yung parang myth
into a hollow and useless thing.”
busters. How they would test something on
a smaller scale before they could say that
- Another reason for the inclusion of the doctrine: “Ah! This would work” or that the myth is
o It recognized that the patent copyist would busted. So, that act of making something in
make unimportant and insubstantial order to test if it would really work or its just
changes which would be enough to take the a myth. That is considered as experimental
copied matter outside of the claim. use. And if that is the purpose then it is not
considered as patent infringement.
- Factual issue in Doctrine of Equivalents
o Infringement also occurs when a device 4. Testing, using, making or selling the
appropriates a prior invention by invention including any data related thereto,
incorporating its innovative concept and, solely for the purpose reasonably related to
albeit with some modification and change, the development and submission of
performs substantially the same function information and issuance of approvals by
in substantially the same way to achieve government regulatory agencies required
substantially the same result. under any of the Philippines or another
country that regulates the manufacture,
construction, use or sale of any product.
NO INFRINGEMENT

1. Doctrine of Exhaustion
5. Consists of the preparation for individual
o Using patented product which has been
put on the market in the PH by the owner cases, in a pharmacy or by a medical
of the product, or with his express consent, professional, of a medicine in accordance with
insofar as such use is performed after the a medical prescription or acts concerning the
product has been put on the said market. medicine so prepared.

This is similar to the doctrine of first sale in 6. Invention is used in any ship, vessel, aircraft,
or land vehicle of any other country, entering
copyright.
the territory of the PH temporarily or
accidentally.
o The first authorized sale of the patented
item is said to “exhaust” the patentee’s 7. Use by PRIOR USER
right to exclude others.
o Take note that the decision of the SC in the
So, this will prevent a patentee from suing case of ZUNECA is only pertaining to
downstream buyers and users for trademark. But I wonder since the concept
infringement once the patentee has sold a is quite similar, if it would be applicable to
patented item. the use by the prior user.

Let’s say that I invented something. It was

already put up in the market. You, making
 o “PRIOR USER”, under the patent law, is a ANG TANONG
person in good faith who uses the invention
or took serious preparations to use the P’s invention is protected by a US patent only. P filed
invention before the filing date or priority a case of patent infringement against D. Will P be
date of the application. successful?

So, there is only patent protection in the US. Meaning it

Why is this considered as a defense? Why
is not protected in the PH. What did we say about
is a prior user not made liable for patent
patent protection? That it is territorial.
infringement?
▪ Because we are a country of first-to- The issue here is, what is the principle of territoriality.
file rule, which means that a work is
not protected unless there is filing. ANSWER:
That is the effect of the filing
requirement. NO, because there is no patent protection in the PH. The
patent protection is limited only to the territorial
8. Use by Government without agreement of the boundaries of the US and cannot extend in the PH no
patent owner matter how famous the invention, inventor or great the
a. National security, nutrition, health or the country is.
development of the sectors;
b. A judicial or administrative body has N.B.
determined the manner of exploitation by For the protection of intellectual property, doing
the owner of the patent or his license is business in the PH is unnecessary. Doing business
anti-competitive. without a license is also not necessary.

By the mere fact that it is for the protection of

Take note that it should be exclusively used for intellectual property rights, they can and will have the
the needs of the ship, vessel, aircraft or land- capacity to sue.
based vehicle, and it’s not used for the
manufacturing of anything to be sold within the BUT will they win? That is a different question. In this
PH. It is only for the National government or case, NO. An inventor whose work is not protected in
even any component of the government. the PH cannot be successful in a patent infringement
suit.

TERRITORIALITY PRINCIPLE
P’s invention is protected by US patent only. D files a
(Another defense)
patent application in the PH with the same claims as
- Not registered in the country, no patent
those found in the patent of P. Will D’s invention be
protection.
granted patent protection?

DEFENSES OF AN ACCUSED So, the issue is what are the requisites of a valid
patent? Take note of the 4 requisites.
1. Claim does not read on the accused
product; 1. Patentability of the subject matter;
2. Novelty;
This means that you argue that whatever that 3. Involving an inventive step;
4. Industrial application or its utility.
is claimed by the plaintiff/ private complainant
in a criminal case is not the same as what is
Actually, the answer here revolves around novelty.
being claimed by the accused in his own
Why? Because the question is that is the invention of P
patent/ invention, or not of those being claimed
in the US sufficient to be considered as a prior art
by the plaintiff.
which can be the basis for the finding of novelty? YES.
Will this be granted patent protection? NO, because it
One who does not claim or own the invention
is not novel. WHY? Because there exists an invention
cannot make another who copied it liable for
outside of the PH that is the same as that of D.
patent infringement. It’s not yours to begin with.
Remember that under our PH law, everything available
2. The accused infringer has a license to in the world will be considered as a prior art.
practice the invention;
3. The asserted patent claim is invalid.
Since the invention of P is a prior art, the patent Claims
application of D cannot be granted because it is not These are those covered by the right to exclude, (no
novel. one else can make use of it)

Neither will it involve an inventive step because it has

If it is a case for copyright, a literal infringement-
the same claim. If it is essentially the same, there is no anything found in a claim is found in a copyist work.
inventive step.
Doctrine of equivalence-false outside what is being
You might be wondering, pero ma’am you said a while claimed for each limitation but there is close
ago that there can be no protection because the US is substituted that being used.
the only country that afforded patent protection to P’s Sometimes for properly accuse -there must be a
invention and not the PH. comparison of the claims.

Well, yes, but the territoriality principle is only How to draft a claim:
applicable in patent infringement suit. It is not Clear and definitively state how the parts interact with
applicable for the purpose of determining whether the one another to achieve the intended result.
work should be granted protection. Whether a work is Avoid of zones of uncertainty-if there is doubt how one
novel. relates to another that might be a basis for a denial.
It does not explain the invention well.
Why not?

Because with or without patent protection, the fact that Patent application is not just not just a basis to afford
it exists, that there is something like that in the world, exclusivity, it should serve as step-by-step process to
it means it is no longer novel. PHOSITA how to make use that invention.

So, even if P’s invention is not registered with the US Surrender of Patent
Patent Office, that alone will be the sufficient basis to By the owner of the Patent, with the consent of all
deny this patent application. WHY? Because its not persons having grants or license or other right, title or
novel. There something similar like that, that exists interest in and to the patent and the intention covered
outside of the PH.
thereby.
For the purpose of determining whether a work is new
or novel, there is no necessity, not a requirement under The inventor is waiving all right of exclusivity over the
24.1 that it is protected by patent. Even if it is not patent. Right Associated with the product and
protected by patent, the fact that it exists, by its mere processes covered by it.
presence, that alone will be sufficient basis to say that
“no, this is not novel, not new, and most likely, it will Made by the owner- may or may not be the inventor.
not involve an inventive step, therefore, should not be With the consent of all other persons who has rights
granted patent protection. over it. With grants, licensees.

Changes in patents
a. Limitation of extent of patent
Patent Reading
b. Correct obvious mistakes
How to read a patent that has been granted already.
c. Correct Mistakes made in good faith
There is a test in order to be a patent examiner
because it is highly technical skill.
Cancellation of patents and substitution of
patentee
Example:
Inter process proceeding.
Granted by- US
Done by a petition for cancellation by Interested
Application number- x x x
Person
Application date - 1994
Invention- Fork with timer. It can help in diet
Grounds:
because it will only lift your fork after an interval of
a. Not new or patentable
time.
b. Does not disclose the invention in a manner
Abstract-short explanation of what the invention is.
sufficiently clear and complete for it to be
Claims part: what is being claimed as part of the
carried out by PHOSITA
protection. -although there is already a fork that
c. The patent is contrary to public order or
existed prior this invention, it involves inventive step
morality
with a timer.
Count down timer, fork with timer.
It identifies what is being claimed.
Procedure
1. Filing of a petition Purpose
2. Notice of Hearing Encourage the transfer and dissemination of
3. Committee of Three may be organized to hear technology, prevent or control practices and
and receive evidence conditions that may constitute abuse of IP rights

During this, there can be an Amendment because of The legislation on voluntary licensing is the
a mistake done in good faith. recognition that sometimes the inventor may not
necessarily be the best position to exploit their
Jurisdiction: Bureau of Legal Affairs. invention

After Declaration to be the true inventor Example

Exist when there are claims of patent by another Any invention created by an employee of SLU is owned
person without his consent or through fraud. May be by SLU . SLU has no means, time and manpower to
filed within 3 months from the decision. devote for exploiting this invention, so it will enter
into licenses for someone else to create the invention,
Decision make use of the process, and produce goods for
Pertains to a declaration by final court order that it is commercialization. In exchange, it will get a license
in fact the substitute who is the true inventor of an fee or a royalty for the use of the invention or a share
invention and not the patentee as appearing in the in the income
patent.
This is also a remedy for startup companies, such that
How does that work? it is there asset.
Let’s say that there are 2 individuals, Mara and Clara.
There was an invention, Clara was the one who filed Requirement
for the patent saying that she is the inventor. The 1) In writing
product was granted but Mara who became aware of 2) Register licence with Documentation,
the invention, now file a case in court for declaratory information and technology transfer bureau of the
relief foe her to be considered as the true inventor of intellectual property office of the Philippines
the product. The court granted the declaratory relief
and declared Mara as the true inventor. Mara now has COMPULSORY LICENSE
the following options for her to either to claim or * unique to patent law
identified as the true inventor A permission or authority granted by the Bureau of
⚫ Prosecute the application as his own application Legal Affairs of the IPO Phil for the purpose of allowing
in place of the applicant — if there is yet NO another person who is not or the patent applicant or
patent application that was approved the patentee to exploit the invention
⚫ File a new patent application — withdraw the one
that was in the name of Clara, and file in the ◼ The Director of Legal Affairs may grant a license
name of Mara to exploit a patented invention in favor of any
⚫ Request that pending application be denied person who has shown his capability to exploit
⚫ Seek cancellation of the patent the invention

Why is there a necessity to go through all this? ◼ With or without the agreement of the patent
Because it is not within the jurisdiction of the owner
intellectual property office to determine who is the
true inventor, that is beyond their expertise, their CIRCUMSTANCES (that there could be or granted
expertise is only within whether the patent be granted compulsory license)
1. National emergency or extreme urgency
LICENSING 2. Public interest: national security, nutrition,
health or development of other vital sector
VOLUNTARY LICENSE CONTRACT 3. Existence of anti-competitive practices by
it is in compliance with the law on obligations and inventor — there is a tendency in pharmaceutical
contracts companies or oil companies, that they will kept to
3 requisites themselves to monopolize the product to increase
1. Consent their profit
2. Consideration 4. Non-commercial use without satisfactory reason
3. Object
5. Patented invention is NOT being worked in the • Joint owners must give their consent to
Philippines on a commercial scale, although the transfer or assignment of the entire
capable of being worked, without satisfactory patent right.
reason It cannot be like an ownership
over a land that when there is a
Period to file transfer and the property is co-
owned that the transfer is
CIRCUMSTANCES:
1. National emergency or extreme urgency limited to the ideal share. There
2. Public interest: national security, nutrition, is no such thing as division.
health or the development of other vital sector
FORM
3. Existence anti-competitive practices by
inventor ▪ Must be in a public instrument
4. Non-commercial use without satisfactory Acknowledged document not
reason subscribed and sworn
5. Patented invention is not being worked in the
Philippines on a commercial scale, although PATENT COOPERATION TREATY
capable of being worked, without satisfactory Essentially, it is an international
reason. application of a patent.
not an international application-
Q: Does this mean that the government is forcing because of the nature of
another entity to part with its property? exclusivity, you really have to file
A: Yes. To a certain extent it is considered not as for patent application and
eminent domain but police power. protection in each country that
an inventor might be seeking
protection from because they
PERIOD TO FILE:
▪ 4 years from date of filing of the application or will engage business there.
▪ 3 years from the date of the patent which There are 2 things that may be
considered:
period expires last.
1. Within 12 months from
initial registration in order to
take advantage of the priority
right
2. If no longer applicable, there
must be patent application
that is made in another
country.
Example: overview of the PCT system
1. If there is an invention, there will be an
international application which is now filed in
the receiving offices.
1. File a petition with the bureau of legal affairs. 2. For the PH, the receiving office is IPOPHIL.
2. Notice of hearing will be issued What they will do instead is forward it to the
3. Hearing for the purpose of receiving evidence international authorities or transmit the
whether an inventor can be compelled to application to the international bureau who
license its invention either a product or a will then be the ones who will conduct the
process. search, prepare written opinion and transmit
❖ This cannot be done from the point of reports to the patent scope, which is a means
invention. of publication.
3. Once it is publish and there is no objection,
ASSIGNMENT AND TRANSFER then it will be communicated or referred to the
❖ Patent law are considered as properties and designated offices.
therefore can be assigned and transferred to 4. If it is granted, then it will be afforded patent
third persons protection.
▪ Sec. 103.2
• May be assigned or transmitted by ❖ The suggestion by the international bureau is
inheritance or bequest or may be the that the receiving offices should already make
subject of a license contract. sure that it is compliant.
Can be by last will and Q: is it possible that the PH will protect an
testament or maybe the subject invention but this will be denied by the
of a license contract international bureau?
 A: Yes. Because it would depend on the PATENT APPLICATION MAY BE CONVERTED TO
country that is chosen for patent protection. UTILITY REGISTRATION AND VICE VERSA
So there may be certain requirements.
Q: is there a requirement that there should a - Cannot be permitted to make 2 applications at
patent protection here (in the invention step) the same subject, either simultaneously or
first? consecutively.
A: no. but it is highly encouraged.
Take note that the counting of the 7 years,
There are actually two ways which you can unlike in patent law which is filing, it is AFTER
seek patent protection in another country. the filing of the application. So, that is the time
1. It is done directly- you go there or hire that the 7 years is counted. And because there
another person who will take care or is no requirement of involving an inventive step,
facilitate the patent protection. it is perceived to be a shorter utility model
2. Patent cooperation system prosecution as compared to patent prosecution.

So, if it is already determined that the first

search after the filing of the patent application
that it might not be granted because it fails to
comply with an involvement of an inventive step
or the non-obvious requirement, then the law
permits a conversion of the patent application to
utility model or even vice versa wherein it is a
utility model that can be converted to a patent
application.

What cannot be done is parang yung forum

shopping that an inventor will be seeking at the
same time patent protection and utility model
registration.
So, that cannot be done. It is either patent to
utility model or utility model to patent.

INDUSTRIAL DESIGN

UTILITY MODELS AND INDUSTRIAL DESIGN An industrial design is the ornamental or aesthetic
Utility Model aspect of an article. The design may consist of three-
1. New dimensional features, such as the shape of an article,
2. Industrially applicable or two-dimensional features, such as patterns, lines
or color.
Any modifications or improvements of a product or
process may be protected already by a utility model Used in: wide variety of products of industry and
and not by a patent as long as long as it’s just handcrafts such as technical and medical
improvements. instruments, watches, jewelry, houseware, electrical
appliances, vehicles, architectural structures, textile
WHY? Because there is no requirement that it designs, leisure goods and other luxury items.
should involve an inventive step. So, even if it is
obvious as long as it is new, it is novel, it can be So, in order for an industrial design to be protected,
protected but only by a utility model. under most national laws, it must appeal to the eye.
This means that it must primarily be of an aesthetic
nature and does not protect any technical features of
NO POSSIBILITY OF RENEWAL the article to which it is applied. If the focus is primarily
- Valid until the end of the 7th year after the date on the technical and not really the aesthetic nature of
of filing of the application. the thing, although there is utilitarian function to it, its
best protected by an industrial design. (Nagkamali po
As compared to patent protection, which is 20 ata si ma’am banda dito? )
years.
REQUIREMENT: DIRECTOR OF COPYRIGHT

1. New or ornamental; Has the jurisdiction over:

2. Not for technical or functional consideration to
obtain a technical result; - Disputes as to licensing;
3. Contrary to public order, health or moral. - Accredit collective management organization.

TERM OF PROTECTION DIRECTOR OF LEGAL AFFAIRS

- 5 years from the filing date of application. Has the jurisdiction to:
- Renewable TWICE for 5 years each.
- Hear and decide opposition to registration of
marks, cancellation of trademark, cancellation
So, a total of 15 years for industrial design and it is of patents.
from the filing date of the application.

WHO HAS JURISDICTION OVER

OPPOSITION TO REGISTRATION OF
JURISDICATION IN IPL PATENTS?

- Since this is still part of the search

and examination of patents, it will be
the Director of Bureau of Patents.
- Kailan itong opposition? Once there
has been publication in the IPO E-
Gazette, there will be hearing or
waiting to determine if anyone is
opposing it.

There is also such a thing as:

Any decisions that the DIRECTORS make, whether or
not to cancel a trademark or to deny or grant a patent VIOLATION OF INTELLECTUAL PROPERTY
protection despite opposition shall be appealable to the RIGHTS WHICH ARE ADMINISTRATIVE
DIRECTOR GENERAL. Limited to complaints where the total damages
In case there is a disagreement with the decision of the claimed are not more than Php200,000.
DG, this would be appealed to the Court of Appeals. - So, what we discussed previously, which is the
Under what rule? Rule 43 because this is a quasi- cancellation of patents, all of those are inter
judicial body exercising quasi-judicial powers. partes proceedings which is within the
jurisdiction of the Director of Legal Affairs.
- There is also another one that is within the
DIRECTOR OF PATENTS jurisdiction of the DLA, and this is referred to as
Administrative Patent Infringement.
Has the jurisdiction over: o Amount involved is less than
Php200,000.
- Search and examination of patent application; o If it is less than P200k then jurisdiction
- Registration of Utility Model and Industrial is not with the RTC acting as a Special
Design (UM, ID) Commercial Court.

It does not fall on them to hear any disagreements

about patent protection. That is not under the
jurisdiction of director of patents.

DIRECTOR OF TRADEMARK

Has the jurisdiction over:

- Search and examination of trademark

registration.
- For matters decided by the Director of
Documentation, Information and Technology
Transfer, like a denial of the registration of the
license, this will be appealed to the Director
General.
- But, this time it’s the Sec. of Trade and Industry
who will hear the reconsideration or appeal
from the decision of the Director General.
- And because this is decided by the Secretary of
TI then it will be forwarded, an appeal should
be made to the Office of the President and after
that to the CA, under Rule 43 again.

Thank you and Goodbye.

Be well everyone.