BENGZON

NEGRE
UNTALAN
Intellectual Property Attorneys

PATENT LAW

FERDINAND M. NEGRE 1 June 2019

A set of small blocks made “of light wood, preferably
cork” automatically release and “fall into the sleeper's
face” when the alarm goes off.
Computer-related Inventions
The first ever kidney delivered by drone was a
flying success (University of Maryland)
Computer-related
Inventions

Ride-sharing App
Computer-related
Inventions

Locking & Unlocking a

Mobile Device Using Facial
Recognition
BASIC PATENT PRINCIPLES

1. TERRITORIALITY - patents are only valid in the

country or region in which they have been granted
2. FIRST-TO-FILE –applicant who files first will
get the patent
3. DISCLOSURE –applicant shall disclose the invention
in a manner sufficiently clear and complete
- Quid pro quo principle – protection in exchange
for disclosure
4. CONDITIONAL – patents are granted only upon
compliance with the criteria of patentability
5. LIMITED RIGHTS…
LIMITATIONS OF A PATENT

Territory

Scope
- Claims
- Exceptions and Limitations

Time
- Expired
- Lapsed
What is a patent?

INVENTION = PATENT?

INVENTION ≠ PATENT
INVENTION

Section 21. 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. It may be, or may
relate to, a product, or process, or an
improvement of any of the foregoing.
INVENTION

ANY TECHNICAL SOLUTION TO A PROBLEM

IN ANY FIELD OF HUMAN ACTIVITY. (Sec. 21,
IPC)
INVENTION

ANY TECHNICAL SOLUTION TO A PROBLEM

IN ANY FIELD OF HUMAN ACTIVITY. (Sec. 21,
IPC)
INVENTION

ANY TECHNICAL SOLUTION TO A PROBLEM

IN ANY FIELD OF HUMAN ACTIVITY. (Sec. 21,
IPC)
INVENTION

ANY TECHNICAL SOLUTION TO A PROBLEM

IN ANY FIELD OF HUMAN ACTIVITY. (Sec. 21,
IPC)

PROBLEM-SOLUTION APPROACH
INVENTION

It may be, or may relate to, a product, or

process, or an improvement of any of the
foregoing.
 INVENTION

1. A product, such as a machine, a device, an

article of manufacture, a composition of matter
(food, medicine, disinfectant, etc.), a
microorganism;
2. A process, such as a method of use, a method of
manufacturing, a non-biological process, a
microbiological process;
3. Computer-related inventions;
and
4. An improvement of any of the foregoing.
NON-PATENTABLE INVENTIONS (Sec. 22)

1. Discoveries
2. Scientific theories
3. Mathematical methods
4. Schemes, rules and methods of
-performing mental acts
-playing games
-doing business
-programs for computers
5. Methods for treatment of the human or
animal body by surgery or therapy &
diagnostic methods practised on the
human & animal body
NON-PATENTABLE INVENTIONS

6. Plant varieties or animal

breeds or essentially biological
processes for the production of
plants and animals
7. Aesthetic creations
8. Contrary to public order or
morality
Patentable Subject-Matter?
Plant variety?
Section 21 of the R.A. 8293 requires
that an invention be:

NEW (NOVEL)
[Requirement #1]
Why the need to examine for novelty?

A light bulb as it An application

has been known filed yesterday
and used

Is it logical to grant a patent for something

which is already known?
 TEST OF NOVELTY

An invention shall not be considered

new if it forms part of a prior art.

(Sec. 23, R.A.8293)

NOVELTY

Prior Art :
1. Everything which is made available to the
public anywhere in the world, before the
filing date or the priority date of the
application. It may refer to:
- patents & registered utility models and
industrial designs
- printed publications (printed and
published)
- prior knowledge
- prior use and sale
PRIOR ART - Everything made available to the public
by means of:

PRIOR
ART
NOVELTY

Prior Art :
2. The whole contents of an application for a
patent, utility model or industrial design
registration,
- published in accordance with the IP Code
- filed or effective in the Philippines
- with filing or priority date earlier than the
application
NOVELTY ANALYSIS

How much information from prior art is sufficient?

“The defense of lack of novelty (i.e. 'anticipation') can

only be established by a single prior art reference
which discloses each and every element of the
claimed invention.
Structural Rubber Products Co. v. Park Rubber
Co.,749 F.2d 707,715-16, 223 U.S.P.Q. (BNA) 1264
(Fed. Cir. 1984).
Inventor’s OWN DISCLOSURE

Rule: If you publish your inventions in a journal,

demonstrate, sell or discuss your invention in
public before you file a patent application, you
cannot get a patent

BUT…
 GRACE PERIOD

Non-Prejudicial Disclosure
If you have already disclosed or published your
inventions in a journal, demonstrate, sell or discuss
your invention in public, you can still file a patent
application within 12 months (1 year) from the date
of disclosure or publication. (Sec. 25)
INVENTIVE STEP (Requirement #2)

An invention involves an inventive step if, having

regard to prior art, it is NOT OBVIOUS to a person
skilled in the art at the time of the filing date or
priority date of the application claiming the
invention. (Sec. 26, IP Code)

INVENTIVE STEP = NON-OBVIOUSNESS

 TEST OF 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.
(Sec. 26, R.A.8293)
Can we combine prior art references
in determining inventive step?
Graham v. John Deere, 383 U.S. 1 (1966)
Graham v. John Deere Prior Art: ‘811 Patent

Upper Plate

Shank
Hinge
Plate
Graham v. John Deere
Claimed Invention ‘798
(Modified ‘811 Patent)

Upper Plate

Shank
Hinge
Plate
Graham v. John Deere
Is it obvious to move the hinge plate from position A
under the shank to position 1 above the shank?

C
3

B 1
A
The Graham Test

• Scope and content of the prior art

• Difference between the prior art and the claims at
issue
• Level of ordinary skill in the pertinent art

Secondary considerations
• Commercial success
• Long felt need
• Failure of others
PERSON SKILLED IN THE ART

1. Ordinary practitioner (fictional person)

a. Has access and understanding of all the prior art

b. Aware of common general knowledge in the specific
art
c. Observes developments in the related technical field
2. Could be a team
3. Need not have inventive ability
 Section 21 of R.A. 8293
Requires that an invention be:
✓NOVEL

✓INVENTIVE
 EXAMPLE: GOLF BALL CASE
1. Problem: Abrasion Resistance
2. Solution to the Problem: Applying rigid polyurethane
material to the surface of the golf ball
3. Inventive Step?
- No. Rigid polyurethane is known to be highly abrasion
resistant
- Applying the substance to solve the abrasion problems in
golf balls would be an obvious matter to a person skilled in the
art
4. Might be Inventive, IF
- There is an improved and unexpected result by
significantly increasing the flight of the ball (strong evidence of
the presence of invention)
 EXAMPLE 2

Problem: Gripping problems

with regard to handles of sports
rackets [such as tennis rackets]
greatly affect the performance
of a player.

Solution: A gripping contour is

provided on the handle of the
racket to allow a firm grip
thereon.
NOVELTY ISSUE:

Prior Art A INVENTION

Teaches a tennis Tennis Racket with
racket Gripping Contour
INVENTIVE STEP
ISSUE:

Prior Art A Prior Art B

Teaches a tennis Teaches a gripping
racket contour on the
handle of a sports
racket
 INDUSTRIAL APPLICABILITY
(Requirement #3)

An invention that can be produced and

used in any industry shall be industrially
applicable.
(Sec. 27 R.A. 8293)
IS DENGVAXIA PATENTABLE?
Recap: PATENTABLE INVENTION

ANY TECHNICAL SOLUTION TO A PROBLEM

IN ANY FIELD OF HUMAN ACTIVITY
WHICH IS NEW, INVOLVES AN INVENTIVE
STEP AND IS INDUSTRIALLY APPLICABLE
SHALL BE PATENTABLE. Sec. 21.

Provided that the invention does not fall under

Sec. 22 on non-patentable subject matter.
Ownership of Patents

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.
Ownership of Patents

First-to-File Rule (Sec. 29, IP Code)

* If 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 (a patent application) an application
for each invention; OR

* where 2 or more application are filed for the

same invention, to the applicant who has the
EARLIEST filing date, or the earliest priority
date.
 Ownership of Patents

SECTION 30. Inventions Created Pursuant to a

Commission. - 30.1. The person who commissions the work
shall own the patent, unless otherwise provided in the
contract.
30.2. 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.
(b) The employer, if the invention is the result of the
performance of his regularly-assigned duties, unless there
is an agreement, express or implied, to the contrary.
 Ownership of Patents

SECTION 30. Inventions Created Pursuant to a

Commission. - 30.1. The person who commissions the work
shall own the patent, unless otherwise provided in the
contract.
30.2. 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.
(b) The employer, if the invention is the result of the
performance of his regularly-assigned duties, unless there
is an agreement, express or implied, to the contrary.
PARTS OF A LETTERS PATENT

• Abstract

• Description

- Title, Background, Summary, Detailed

Description

• Claims

• Drawings (if applicable)

DISCLOSURES and CLAIMS

• SECTION 35. Disclosure and Description of the

Invention. - 35.1. Disclosure. - The application shall
disclose the invention in a manner sufficiently clear
and complete for it to be carried out by a person
skilled in the art.

• SECTION 36. The Claims. - 36.1. The application

shall contain one (1) or more claims which shall
define the matter for which protection is sought.
Each claim shall be clear and concise, and shall be
supported by the description.
CLAIMS
Mandatory Publication

SECTION 44. Publication of Patent

Application. - 44.1. The patent application shall be
published in the IPO Gazette together with a search
document established by or on behalf of the Office
citing any documents that reflect prior art, after the
expiration of eighteen (18) months from the filing date
or priority date.

44.2. After publication of a patent application, any

interested party may inspect the application
documents filed with the Office.
Term of Patent

SECTION 54. Term of Patent. - The term of a patent

shall be twenty (20) years from the filing date of the
application.
Grounds for Cancellation

SECTION 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.
True and Actual Inventor

Section 68. Remedies of the True and Actual Inventor.

- 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.
Extent of Protection

SECTION 75. Extent of Protection and

Interpretation of Claims. - 75.1. The extent of
protection conferred by the patent shall be
determined by the claims, which are to be
interpreted in the light of the description and
drawings.

75.2. …
PROPER CLAIMS CONSTRUCTION
Extent of protection afforded by a patent is determined
by its claims.

“When the language of its claims is clear and distinct,

the patentee is bound thereby and may not claim
anything beyond them. And so are the courts bound
which may not add to or detract from the claims matters
not expressed or necessarily implied, nor may they
enlarge the patent beyond the scope of that which the
inventor claimed and the patent office allowed, even if
the patentee may have been entitled to something more
than the words it had chosen would include.” (Smith
Kline Beckman vs. CA, G.R. No. 126627 [2003])
PUBLIC DOMAIN

CLAIMS
LIMITATIONS 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:
72.1. Using a patented product which has been put on the
market in the Philippines by the owner of the product, or
with his express consent, …;
72.2. Where the act is done privately and on a non-
commercial scale or for a non-commercial purpose:
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;
 More LIMITATIONS…

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:….
72.4. In the case of drugs and medicines, where the act…
solely for purposes reasonably related to the development
and submission of information and issuance of approvals
by government regulatory agencies…
 And More LIMITATIONS…
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:….
72.5. Where the act consists of the preparation for
individual cases, in a pharmacy or by a medical
professional, of a medicine…;
72.6. Where the invention is used in any ship, vessel,
aircraft, or land vehicle of any other country entering the
territory…
Other LIMITATIONS: PRIOR USER

Section 73. Prior User. - 73.1. Notwithstanding Section

72 hereof, any prior user, who, in good faith was using
the invention or has undertaken serious preparations to
use the invention in his enterprise or business, before
the filing date or priority date of the application on
which a patent is granted, shall have the right to
continue the use thereof as envisaged in such
preparations within the territory where the patent
produces its effect.
73.2. The right of the prior user may only be transferred
or assigned together with his enterprise or business, or
with that part of his enterprise or business in which the
use or preparations for use have been made.
Other LIMITATIONS: Use by Government

Section 74. Use of Invention by Government. - 74.1. 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.
 Other Limitations: Compulsory Licensing

Section 93. Grounds for Compulsory Licensing. - The Director

of Legal Affairs may grant a license to exploit a patented
invention, even without the agreement of the patent owner, in
favor of any person who has shown his capability to exploit the
invention, under any of the following circumstances:

93.1. National emergency or other circumstances of extreme

urgency;
93.2. Where the public interest, in particular, national security,
nutrition, health or the development of other vital sectors of
the national economy as determined by the appropriate agency
of the Government, so requires; or
93.3. Where 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
Other Limitations: Compulsory Licensing

Section 93. Grounds for Compulsory Licensing. –

…
93.4. In case of public non-commercial use of the patent
by the patentee, without satisfactory reason;

93.5. If the patented invention is not being worked in

the Philippines on a commercial scale, although capable
of being worked, without satisfactory reason: Provided,
That the importation of the patented article shall
constitute working or using the patent.
PATENT RIGHTS AND INFRINGEMENT
Patent owners have the following rights:
1. In case of a patent on a product, exclusive right to
RESTRAIN, PROHIBIT and PREVENT any unauthorized
person from MAKING, USING, OFFERING FOR SALE,
SELLING or IMPORTING the product. [M-U-O-S-I]

2. In case of a patent on a process, exclusive right to

RESTRAIN, PROHIBIT and PREVENT any unauthorized
person 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.

3. Right to ASSIGN, or TRANSFER BY SUCCESSION the

patent, and to CONCLUDE LICENSING CONTRACTS for
the patent. (Sec. 71)
PATENT RIGHTS AND INFRINGEMENT

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 a patented process without the authorization
of the patentee. (Sec. 76)
Extent of Protection

SECTION 75. Extent of Protection and Interpretation

of Claims. - 75.1. The extent of protection conferred by
the patent shall be determined by the claims, which
are to be interpreted in the light of the description and
drawings.

75.2. For the purpose of determining the extent of

protection conferred by the patent, due account shall
be taken of elements which are equivalent to the
elements expressed in the claims, so that a claim shall
be considered to cover not only all the elements as
expressed therein, but also equivalents.
PATENT RIGHTS AND INFRINGEMENT

A patent maybe infringed either:

1.Literally, or

2.By equivalents
PUBLIC DOMAIN

CLAIMS
 Patent Infringement
• Types:
• Literal infringement
• Literal infringement exists if an accused device
falls directly within the scope of properly
interpreted claims.
Example:
Patent Claim Accused Product
A biodegradable A biodegradable
composition comprising: composition comprising:
1. A resin; and 1. A mixture of resin and
an elastomeric material;
2. A soy protein. 2. A soy protein
Patent Infringement
• Infringement by Equivalents
• Functions-Means-Results test:
If two devices do the same work in substantially
the same way and accomplish substantially the
same result, they are the same, even though they
differ in name, form or shape. (Smith Kline
Beckman vs. CA, G.R. No. 126627 [2003])

Patent Claim Accused Product

A biodegradable A biodegradable
composition comprising: composition comprising:
1. A resin; and 1. A resin; and
2. A corn starch. 2. A potato starch.
Patent Infringement

Section 78. Process Patents; Burden of Proof . - If the

subject matter of a patent is a process for obtaining a
product, any identical product shall be presumed to
have been obtained through the use of the patented
process if the product is new or there is substantial
likelihood that the identical product was made by the
process and the owner of the patent has been unable
despite reasonable efforts, to determine the process
actually used. In ordering the defendant to prove that
the process to obtain the identical product is different
from the patented process, the court shall adopt
measures to protect, as far as practicable, his
manufacturing and business secrets.
Patent Infringement

• As an incident to an infringement case pending

before it, courts have jurisdiction to pass upon
patentability of an invention.

“SECTION 81. Defenses in Action for Infringement. -

In an action for infringement, the defendant, in
addition to other defenses available to him, may show
the invalidity of the patent, or any claim thereof, on
any of the grounds on which a petition of cancellation
can be brought under Section 61 hereof.”
 Patent Infringement
Section 84. 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.
VOLUNTARY LICENSING

Article XII, Constitution

SECTION 19. The State shall regulate or prohibit

monopolies when the public interest so requires. No
combinations in restraint of trade or unfair
competition shall be allowed.
VOLUNTARY LICENSING

Section 85. Voluntary License Contract. - To encourage

the transfer and dissemination of technology, prevent
or control practices and conditions that may in
particular cases constitute an abuse of intellectual
property rights having an adverse effect on
competition and trade, all technology transfer
arrangements shall comply with the provisions of this
Chapter.
VOLUNTARY LICENSING

4.2. The term "technology transfer arrangements"

refers to contracts or agreements involving the
transfer of systematic knowledge for the manufacture
of a product, the application of a process, or rendering
of a service including management contracts; and the
transfer, assignment or licensing of all forms of
intellectual property rights, including licensing of
computer software except computer software
developed for mass market.
 VOLUNTARY LICENSING

Section 87. Prohibited Clauses. - Except in cases under

Section 91, the following provisions shall be deemed
prima facie to have an adverse effect on competition and
trade:
87.1. Those which impose upon the licensee the
obligation to acquire from a specific source capital goods,
intermediate products, raw materials, and other
technologies, or of permanently employing personnel
indicated by the licensor;
87.2. Those pursuant to which the licensor reserves the
right to fix the sale or resale prices of the products
manufactured on the basis of the license;
87.3. Those that contain restrictions regarding the
volume and structure of production;
 VOLUNTARY LICENSING

87.4. Those that prohibit the use of competitive

technologies in a non-exclusive technology transfer
agreement;
87.5. Those that establish a full or partial purchase
option in favor of the licensor;
87.6. Those that obligate the licensee to transfer for free
to the licensor the inventions or improvements that may
be obtained through the use of the licensed technology;
87.7. Those that require payment of royalties to the
owners of patents for patents which are not used;
 VOLUNTARY LICENSING

87.8. Those that prohibit the licensee to export the licensed

product unless justified for the protection of the legitimate
interest of the licensor such as exports to countries where
exclusive licenses to manufacture and/or distribute the licensed
product(s) have already been granted;
87.9. Those which restrict the use of the technology supplied
after the expiration of the technology transfer arrangement,
except in cases of early termination of the technology transfer
arrangement due to reason(s) attributable to the licensee;
87.10. Those which require payments for patents and other
industrial property rights after their expiration;
87.11. Those which require that the technology recipient shall
not contest the validity of any of the patents of the technology
supplier;
 VOLUNTARY LICENSING
87.12. Those which restrict the research and development
activities of the licensee designed to absorb and adapt the
transferred technology to local conditions or to initiate
research and development programs in connection with new
products, processes or equipment;
87.13. Those which prevent the licensee from adapting the
imported technology to local conditions, or introducing
innovation to it, as long as it does not impair the quality
standards prescribed by the licensor;
87.14. Those which exempt the licensor for liability for non-
fulfilment of his responsibilities under the technology
transfer arrangement and/or liability arising from third
party suits brought about by the use of the licensed product
or the licensed technology; and
87.15. Other clauses with equivalent effects.
 VOLUNTARY LICENSING

Section 88. Mandatory Provisions. - The following

provisions shall be included in voluntary license contracts:
88.1. That the laws of the Philippines shall govern the
interpretation of the same and in the event of litigation,
the venue shall be the proper court in the place where the
licensee has its principal office;
88.2. Continued access to improvements in techniques and
processes related to the technology shall be made available
during the period of the technology transfer arrangement;
 VOLUNTARY LICENSING

88.3. In the event the technology transfer arrangement

shall provide for arbitration, the Procedure of Arbitration
of the Arbitration Law of the Philippines or the Arbitration
Rules of the United Nations Commission on International
Trade Law (UNCITRAL) or the Rules of Conciliation and
Arbitration of the International Chamber of Commerce
(ICC) shall apply and the venue of arbitration shall be the
Philippines or any neutral country; and
88.4. The Philippine taxes on all payments relating to the
technology transfer arrangement shall be borne by the
licensor.
 VOLUNTARY LICENSING

Section 91. Exceptional Cases. - In exceptional or

meritorious cases where substantial benefits will
accrue to the economy, such as high technology
content, increase in foreign exchange earnings,
employment generation, regional dispersal of
industries and/or substitution with or use of local raw
materials, or in the case of Board of Investments,
registered companies with pioneer status, exemption
from any of the above requirements may be allowed by
the Documentation, Information and Technology
Transfer Bureau after evaluation thereof on a case by
case basis.
 VOLUNTARY LICENSING

Section 92. Non-Registration with the Documentation,

Information and Technology Transfer Bureau. -
Technology transfer arrangements that conform with
the provisions of Sections 86 and 87 need not be
registered with the Documentation, Information and
Technology Transfer Bureau. Non-conformance with
any of the provisions of Sections 87 and 88, however,
shall automatically render the technology transfer
arrangement unenforceable, unless said technology
transfer arrangement is approved and registered with
the Documentation, Information and Technology
Transfer Bureau under the provisions of Section 91 on
exceptional cases.
UTILITY MODELS or UM

REQUIREMENTS FOR UM REGISTRATION:

1.New (Novelty)

2.Inventive Step

3.Industrial Applicability

Also called PETTY PATENT or SMALL PATENT

UTILITY MODELS

• Mere registration; no substantive

examination required of prior art

• Term: 7 years without extension or renewal

• Same rights as in patent invention

INDUSTRIAL DESIGNS

What is an INDUSTRIAL DESIGN?

Section 112. Definition of Industrial Design. -

An industrial design is 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.
INDUSTRIAL DESIGNS

REQUIREMENTS FOR INDUSTRIAL DESIGN

Section 113. Substantive Conditions for Protection. -

113.1. Only industrial designs that are new or
original shall benefit from protection under this Act.
113.2. Industrial designs dictated essentially by
technical or functional considerations to obtain a
technical result or those that are contrary to public
order, health or morals shall not be protected.
 Purpose of Industrial Design

– Make your product appealing to consumers

– Create a «niche» market
– Customize products in order to target different
customers (e.g. Swatch)
– Develop the brand (e.g. Apple ’s « Think Different »
strategy)
Two-dimensional Designs
Three-Dimensional Designs
 Industrial Design Protection

• Industrial designs are compositions of lines or colors

or any three-dimensional forms which give a special
appearance to a product
• They protect the ornamental or aesthetic aspect of a
product
• Exclusive rights: Right to prevent others from
applying (making, selling or importing) the protected
design to commercial products for a period of 5 years
plus 2 renewals = 15 years
• Requirement of registration; no substantive
examination
 DISTINCTIONS
UTILITY INDUSTRIAL
PATENTS
MODELS DESIGN

Novelty Novelty
REGISTRATION Inventive step
Novelty
REQUIREMENT Industrial Industrial
Applicability Applicability

SUBSTANTIVE
Required Not Required Not Required
EXAMINATION

TERM OF
20 7 5+5+5
PROTECTION
E.I. DUPONT V. IPO, G.R. NO. 174379 [31 August 2016]

• On July 10, 1987, E.I. Dupont filed a Patent

Applicant for medicine for hypertension (Losartan)
• On December 19, 2000, Dupont’s new counsel sent
IPO a request that action be taken on its Patent
Application
• The IPO responded stating that it already took
action and mailed notice on July 19, 1988, or 13
years earlier and the Application was deemed
abandoned for Applicant’s failure to respond. [only 4
months to revive]
• On May 29, 2002, Dupont replied stating that its
then counsel died in 1996
 E.I. DUPONT V. IPO, G.R. NO. 174379

• IPO denied revival; on appeal, CA reversed on

ground that lawyer’s death was sufficient
justification.

• Therapharma then moved to intervene, arguing that

the CA decision directly affected its “vested rights to
sell its own product.”
 E.I. DUPONT V. IPO, G.R. NO. 174379

• CA allowed Therapharma to intervene, stating that

it had an interest as a competitor in the revival of
Dupont’s Patent Application.

• Upon reconsideration, the CA ruled that the public

interest would be prejudiced by the revival of
Dupont‘s application.
• Losartan was used to treat hypertension, "a
chronic ailment afflicting an estimated 12.6
million Filipinos," and noted that the presence of
competition lowered the price for losartan
products.
 E.I. DUPONT V. IPO, G.R. NO. 174379

SC:
“A patent is granted to provide rights and
protection to the inventor after an invention is
disclosed to the public. It also seeks to restrain and
prevent unauthorized persons from unjustly profiting
from a protected invention. However, ideas not
covered by a patent are free for the public to use and
exploit. Thus, there are procedural rules on the
application and grant of patents established to protect
against any infringement. To balance the public
interests involved, failure to comply with strict
procedural rules will result in the failure to obtain a
patent.”
 E.I. DUPONT V. IPO, G.R. NO. 174379

SC:

“Dupont was inexcusably negligent in the prosecution

of its patent application; there was a correlative duty
on its part to be diligent in keeping itself updated on
the progress of its Patent Application. Its failure to be
informed of the abandonment of its Patent Application
was caused by its own lack of prudence.”
 E.I. DUPONT V. IPO, G.R. NO. 174379

• SC: “The patent law has a three-fold purpose: (1)

patent law seeks to foster and reward invention; (2) it
promotes disclosures of inventions to stimulate further
innovation and to permit the public to practice the
invention once the patent expires; (3) the stringent
requirements for patent protection seek to ensure that
ideas in the public domain remain there for the free
use of the public.
• “A patent is a monopoly granted only for specific
purposes and objectives. Thus, its procedures must be
complied with to attain its social objective.”
 Phil PharmaWealth vs. Pfizer
635 SCRA 140 (2010)
Facts:
• Pfizer filed a Complaint for patent infringement against
Phil Pharmawealth with Bureau of Legal Affairs of the
Intellectual Property Office (BLA)
• Pharmawealth submitted bids for the supply of
Sulbactam Ampicillin in several hospitals without
consent of Pfizer, who had patent rights over the
substance
• BLA issued PI but denied an Extension;
• Pfizer filed Special Civil Action for Certiorari with CA
• Meantime, Pfizer filed another complaint with RTC of
Makati for patent infringement involving another patent
but covering the same Sulbactam Ampicillin
 Phil PharmaWealth vs. Pfizer
635 SCRA 140 (2010)
• Issue #1:
• Can an injunctive relief be issued based on an
action of patent infringement when the patent
allegedly infringed has already lapsed?
• No.
• The “exclusive right to monopolize the subject
matter of the patent exists only within the term of
the patent.”
• “It is clear from the above-quoted provision of law
that the exclusive right of a patentee to make, use
and sell a patented product, article or process
exists only during the term of the patent.”
 Phil Pharmawealth, Inc. vs. Pfizer, Inc
635 SCRA 140 (2010)
Does the filing of separate patent infringement actions
before the IPO and the RTC for different patents constitute
forum shopping?

• Yes. “It is clear from the foregoing that the ultimate

objective which respondents seek to achieve in their
separate complaints filed with the RTC and the IPO, is to
ask for damages for the alleged violation of their right to
exclusively sell Sulbactam Ampicillin products and to
permanently prevent or prohibit petitioner from selling
said products to any entity. Owing to the substantial
identity of parties, reliefs and issues in the IPO and RTC
cases, a decision in one case will necessarily amount to res
judicata in the other action.
 ROMA DRUG vs. RTC Guagua, et al.,
G.R. No. 149907, 16 April 2009

➢raiding team seized several imported medicines,

including Augmentin tablets, Orbenin capsules,
Amoxil and Ampiclox
➢seized medicines were manufactured by
SmithKline but imported directly from abroad and
not purchased through the local SmithKline, the
authorized Philippine distributor of these
products
➢NBI filed a criminal complaint against Rodriguez for of R.A.
No. 8203 (Special Law on Counterfeit Drugs)
➢“Counterfeit” – includes an “unregistered imported drug
product”
o"Unregistered imported drug product” shall refer to
unregistered imported drug product without a registered
counterpart brand in the Philippines. If the unregistered
imported drug product has a registered counterpart brand
in the Philippines, their product shall be considered
counterfeit. (IRR)
o“registered” – contemplates registration with FDA
SC: SLCD's classification of "unregistered imported
drugs" as "counterfeit drugs” in conflict with Rep. Act
No. 9502 which grants private third persons the
unqualified right to import or otherwise use such
drugs.
Anyway…or by the way:

R.A. 9711, passed into law 3 months after the Roma

decision, penalizes among others the importation of
unregistered drugs.

Also…

May constitute patent infringement (exclusive right to

import)
Impressions v. Lexmark, 581 U.S. 1523 (2017)
Impressions v. Lexmark, 581 U.S. 1523 (2017)

Facts:
Lexmark International, Inc. designs, manufactures,
and sells toner cartridges to consumers in the United
States and abroad. It owns a number of patents that
cover components of those cartridges and the manner
in which they are used.
Impressions v. Lexmark, 581 U.S. 1523 (2017)

When Lexmark sells toner cartridges, it gives

consumers two options:
1. Buy a toner cartridge at full price, with no
restrictions.
2. Buy a cartridge at a discount through Lexmark’s
“Return Program.” In exchange for the lower price,
customers must sign a contract agreeing to use the
cartridge only once and to refrain from transferring the
cartridge to anyone but Lexmark.
Impressions v. Lexmark, 581 U.S. 1523 (2017)

Like Impressions, companies known as

remanufacturers acquire empty Lexmark toner
cartridges—including Return Program cartridges—
from purchasers in the United States, refill them with
toner, and then resell them.
They do the same with Lexmark cartridges that they
acquire from purchasers overseas and import into the
United States.
Impressions v. Lexmark, 581 U.S. 1523 (2017)

Issues:

I. Is Impressions guilty of patent infringement in the

Return Program cartridges that it remanufactured
and sold in the United States.
II. Is Impressions guilty of patent infringement in the
imported cartridges that it remanufactured and sold
in the U.S.?
Impressions v. Lexmark, 581 U.S. 1523 (2017)

I. Lexmark exhausted its patent rights in the Return

Program cartridges that it sold in the United States. A
patentee’s decision to sell a product exhausts all of its
patent rights in that item, regardless of any
contractual restrictions the patentee purports to
impose. As a result, even if the restrictions in
Lexmark’s contracts with its customers were clear and
enforceable under contract law, they do not entitle
Lexmark to retain patent rights in an item that it has
elected to sell.
Impressions v. Lexmark, 581 U.S. 1523 (2017)

II. Lexmark also sold toner cartridges abroad, which

Impression Products acquired from purchasers and
imported into the United States. Lexmark cannot sue
Impression Products for infringement with respect to
these cartridges. An authorized sale outside the
United States, just as one within the United States,
exhausts all rights under the Patent Act.
Impressions v. Lexmark, 581 U.S. 1523 (2017)

Question: Will the ruling be good law in the

Philippines?

Partially, perhaps. YES as to Return Program but NO

to the Exhaustion issue.
IP Code provides: Section 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 making, using, offering for sale,
selling or importing that product;
Impressions v. Lexmark, 581 U.S. 1523 (2017)

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. 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;

x x x
BENGZON

END OF SESSION 2
NEGRE
UNTALAN
Intellectual Property Attorneys

THANK YOU !☺

FERDINAND M. NEGRE