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Intellectual Property Law Reviewer
Intellectual Property Law Reviewer
Intellectual Property Law Reviewer
INTELLECTUAL PROPERY
-those property rights which results from the physical manifestation of an original thought.
(Ballantine’s Law Dictionary)
B. Appellate Jurisdiction
1) Director General
-over all decisions rendered by the ff:
· Dir. of Legal Affairs
· Dir. of Patents
· Dir. of Trademarks
· Dir. of the Documentation, Information and Technology Transfer
2) Court of Appeals
-over decisions of the Director General in the exercise of his appellate jurisdiction over the decisions of
the:
· Dir. of Legal Affairs
· Dir. of Patents
· Dir. of Trademarks
LAW ON PATENTS
PATENT – an exclusive right acquired over an invention, to sell, use, and make the same whether for
commerce or industry.
PATENTABLE INVENTIONS
-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. The patentable invention may be, or may
relate to, a product, or process, or an improvement of any of the foregoing. (Sec. 21)
Requirements:
1) Technical solution of a problem in any field of human activity
2) Novelty – that which does not form part of a prior art consists of:
a) that which has been made available to the public anywhere in the world before the filing date or the
priority date of the application
b) that which forms part of an application whether for patent, utility or industrial design, effective in the
Philippines, provided that:
i. the inventors or applicants are not the same
ii. the contents of the application are published in accordance with the requirements of patent
application rules.
iii. the filing date of the prior art is earlier.
3) Inventiveness/Inventive Step
-an invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled
in the art of the time of the filing date or priority date of the application claiming the invention. (Sec. 26)
4) Industrial Applicability
-an invention that can be produced and used in any industry. (Sec. 27)
NON-PATENTABLE INVENTIONS
The following shall be excluded from patent protection:
a) Discoveries, Scientific Theories and Mathematical Methods;
b) Schemes, rules and methods of performing mental acts, playing games or doing business, and
programs for computer;
c) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods
practiced on the human or animal body;
d) Plant varieties or animal breeds of essentially biological process for the production of plants or
animals;
e) Aesthetic creations;
f) Anything which is contrary to public order or morality (Sec. 22)
RIGHT TO A PATENT
The right to a patent belongs:
a) to the inventor, his heirs, or assigns
b) when 2 or more persons have made the invention separately and independently – to them jointly
c) if two (2) or more persons have made the invention separately and independently of each other – to
the person who filed an application for such invention (FIRST TO FILE RULE)
d) where 2 or more applications are filed for the same invention – to the applicant who has the earliest
filing date or the earliest priority date (FIRST TO FILE RULE) (Sec. 29)
e) in case of inventions created pursuant to a commission – to the person who commissions the work
UNLESS agreed otherwise.
f) in case an employee made the invention in the course of his employment, the patent shall belong to:
· the employee – if invention not part of his regular duties even if he uses the time, facilities and
materials of the employer; OR
· the employer – if the invention is the result of the performance of his regularly assigned duties unless
agreed otherwise.
v must contain relevant information as to the identity of the person (no anonymous person)
v if the applicant is not the inventor; he must show proof of authority to seek application for registration
UNITY OF INVENTION
-every application for patent registration must contain an application over a simple invention or several
inventions but must form part of a single general inventive concept
UTILITY MODELS
-models of implement or tools of any industrial product even if not possessed of the quality of invention
but which is of “practical utility”
INDUSTRIAL DESIGN
-any composition of lines or colors or any three-dimensional form, whether or not associated with lines
or colors provided that such composition or form gives a special appearance to and can serve as pattern
for an industrial product or handicraft.
CANCELLATION OF PATENTS
Who may file?
· any person
· IPO motu proprio
Grounds:
a) That the patent is invalid (Sec. 81);
b) That what is claimed as the invention is not new or patentable;
c) 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
d) That the patent is contrary to public order or morality. (Sec. 61)
e) failure to make payments of annual fees or dues
Where to file?
· BLA – if in violation of IPC (administrative)
· RTC – otherwise
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. (Sec. 76)
B) File criminal case within 3 years from date of commission of the crime for repetition of infringement
(Sec. 84)
LAW ON TRADEMARKS
TRADEMARK – anything which is adopted and used to identify the source of origin of goods, and which is
capable of distinguishing them from goods emanating from a competitor
SERVICE MARK – distinguishes the services of an enterprise from the service of other enterprises. It
performs for services what a trademark does for goods.
COLLECTIVE MARK - any visible sign designated as such in the application for registration and capable of
distinguishing the origin or any other common characteristic, including the quality of goods and services
of different enterprises which use the sign under the control of the registered owner of the collective
mark (Sec. 121.2)
TRADE NAMES – the person (whether natural or juridical) who does business and produces the goods or
the services is designated by a trade name.
-Under the law, there is no need to register trade names in order to secure protection for them.
TRADE DRESS – involves the total image of a product, including such features as size, shape, color or
color combinations, texture, and/or graphics.
RIGHTS CONFERRED
-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. (Sec. 147)
DURATION
-the certificate of registration of a trademark shall be ten (10) years from the filing date of application
provided the registrant shall file a declaration of actual use within a year from the 5th anniversary of
registration date (Sec. 145)
-renewable for another 10 yrs. (Sec. 146)
v NO filing date shall be accorded until the required fee is paid (Sec. 127.2)
Where to file?
· BLA
Grounds:
a) Mark becomes generic for goods for which it is registered;
b) Abandonment of the mark;
c) Registration obtained fraudulently or contrary to provisions of RA 8293;
d) Mark used by, or with permission, or, registrant;
e) Failure to use the mark within the Philippines for 3 uninterrupted years or longer.
EFFECTS OF NON-USE
· may be excused if caused by circumstances arising independently of the will of the trademark owner,
such as military coup, or political changes that impede commerce
· Registration is an administrative act declaratory of a pre-existing right that does not, of itself, perfect a
trademark, for what does is actual use
· Non-use is a ground for removing a mark from the register
DOCTRINE OF SECONDARY MEANING
-While a generic, indicative or descriptive mark will, as a general rule, be denied registration, there is a
circumstance that will allow it to be registered. Under the doctrine of secondary meaning, when a mark
has become distinctive of the applicant’s gods in commerce and, in the mind of the public, indicates a
single source of consumers, it may be registered.
UNFAIR COMPETITION
-any person who shall employ deception or any other means contrary to good faith by which he shall
pass off the goods manufactured by him or in which he deals, or his business, or services for those of the
one having established such goodwill, or who shall commit any acts calculated to produce said result,
shall be guilty of unfair competition.
How Committed
a) Making one’s goods appear as the goods of another;
b) Use of artifice or device to induce the false belief that one’s goods are those of another;
c) False statements in the course of trade; or
d) Any act contrary to good faith calculated to discredit another’s goods
LAW ON COPYRIGHT
COPYRIGHT – system of legal protection an author enjoys in the form of expression of ideas
BASIC PRINCIPLES
· Works are protected by the sole fact of their creation, irrespective of their mode or form of expression,
as well as their content, quality or purpose (Sec. 172.2)
· Protection extends only to the expression of the idea, not to the idea itself or to any procedure,
system, method or operation, concept or principle, discovery or mere data.
CREATION OF A WORK
A copyright work is created when the two(2) requirements are met:
1) Originality – does not mean novelty or ingenuity, neither uniqueness nor creativity. It simply means
that the work “owes its origin to the author”
2) Expression – there must be “fixation” To be “fixed”, a work must be embodied in a medium
sufficiently:
· permanent; or
· stable
to permit it to be perceived, reproduced, or otherwise communicated for a period of more than
transitory duration.
-if it is not required that the medium be visible as long as there is a possibility of retrieval, then there is
fixation
-it is fixation that defines the time from when copyright subsists. Before fixation, there can be no
infringement.
RIGHTS OF AN AUTHOR
(Author – a natural person who has created the work.)
OWNERSHIP OF COPYRIGHT
1. Single creator – copyright belongs to the author of the work, his heirs or assigns.
2. Joint creation – copyright belongs to the co-authors jointly as co-owners. But if the work consists of
identifiable parts, the author of each part owns the part that he has created.
3. Employee’s creation – copyright belongs to the employee if the creation is not part of his regular
duties even if he uses the time, facilities and materials of the employer; otherwise it belongs to the
employer
4. Commissioned work – the work belongs to the person commissioning but the copyright remains with
the creator unless there is a written stipulation to the contrary.
5. Cinematographic works – the producer has copyright for purposes of exhibition; for all other
purposes, the producer, the author of the scenario, the composer, the film director, the author of the
work are the creators.
6. Anonymous and pseudonymous works – the publishers shall be deemed the representative of the
author unless:
a. the contrary appears
b. the pseudonyms or adopted name leaves no doubt as to the author’s identity or
c. if the author discloses his identity (Sec. 179).
7. Collective works – the contributor is deemed to have waived his right unless he expressly reserves it.
(Sec. 196)
Collective work – a work created by two or more persons at the initiative and under the direction of
another with the understanding that it will be disclosed by the latter under his own name and that the
contributions of natural persons will not be identified. (Sec. 171.2)
8. In case of transfers, the transferee shall own one or more or all the economic rights transferred
provided:
a. the assignment, if inter vivos, be in writing (Sec. 180.2)
b. the assignment be filed with the National Library upon payment of the prescribed fee. (Sec. 182)
DURATION OF COPYRIGHT
· Literary artistic works and derivative works of a SINGLE CREATOR - lifetime of the creator and for 50
years after his death
· Joint creation – lifetime of last surviving co-creator and for 50 years after his death.
· Anonymous or a work under a pseudonym not identifiable with the true name of the creator – 50 years
after the date of their first publication.
v Except where, before the expiration of said period, the author's identity is revealed or is no longer in
doubt, the rule for single and joint creation shall apply
· Photographic works – 50 years from the publication of the work, or from making the same term is
given to audiovisual works produced by photography or analogous processes.
· Work of Applied Art – 25 years from the date of making
· Newspaper Article – lifetime of the author and 50 years after his death
v A pure news report will no longer find protection under he new law, BUT a column or published
comment will
· The work of performers not incorporated in RECORDING, PRODUCTS OF SOUND IMAGE RECORDINGS,
and BROADCASTS, are protected for periods of 50 years, 50 years, and 20 years, respectively, counted
from the end of the year of performance, recording, or broadcasts, respectively.
The term of protection shall be counted from the first day of January of the year following the death or
of last publication (Sec. 214)
LIMITATIONS TO THE RIGHTS ON COPYRIGHT
1) Private performance, private and personal use – applicable only “when a work has been lawfully
made accessible to the public.”
Personal Use
-making a single reproduction, adaptation, arrangement or other transformation of another’s work
exclusively for one’s own individual use in such cases as personal research, learning or amusement
Private Use
-making a reproduction, adaptation or other transformation of it, in a single person as in the case of
“personal use” but also for a common purpose by a specific circle of persons only.
3) Duration of Right:
Patent – 20 years from filing or priority date
Trademark – 10 yearsCopyright – Generally up to 50 years after the death of the author