What are Intellectual properties?
Can foreign nationals benefit from our intellectual property
 Intellectual properties are intangible assets resulting
from the creative work of an individual or entity.
 Really refers to the creation of the mind.
 These are inventions, literary works, symbols, names,
logos etc. which are typically used in commerce or
business.
What are Intellectual property rights?
RA 8293 SECTION 2. Declaration of State Policy. - The State
recognizes that an effective intellectual and industrial property
system is vital to the development of domestic and creative activity,
facilitates transfer of technology, attracts foreign investments, and
ensures market access for our products. It shall protect and secure
the exclusive rights of scientists, inventors, artists and other gifted
citizens to their intellectual property and creations, particularly
when beneficial to the people, for such periods as provided in this
Act.
Art. 14, Section 13 (1987 Constitution)- The State shall protect
and secure the exclusive rights of scientists, inventors, artists, and
other gifted citizens to their intellectual property and creations,
particularly when beneficial to the people, for such period as may
be provided by law.
Art. 712 (Civil Code). Ownership is acquired by occupation and
by intellectual creation. Ownership and other real rights over
property are acquired and transmitted by  law, by donation, by
estate and intestate succession, and in consequence of certain
contracts, by tradition.
 This is an incorporeal property right as opposed to
tangible properties.
 Rights given by the government to persons over their
creation of the minds.
 Creators are given the exclusive use to his invention or
creations but only for a certain period of time.
 Ownership thereof is acquired through intellectual
creations of the mind and once you have acquired
ownership, you will have title over the property.
What is the primary source or legal basis for intellectual
property rights?
 Intellectual property code.
Why do we need to protect our intellectual property rights?
Sec. 2 , RA 8293- “Vital to the development of domestic and
creative activity, facilitates transfer of technology, attracts foreign
investments, and ensures market access for our products.”
What if there are no legal basis for intellectual property
rights in economic point of view?
 It would not lead to an advance development to our
economy.
Ex. A Filipino was able to create or invent something but it was
not patented or registered then another individual by chance saw
it or discovered it and brought such invention to another country
then used for their advantage. It will be detrimental on our part
because it is supposed to be for our economic advantage.
NOTE: We have these intellectual property rights because this is
for the incentive for our scientists, creators etc. without these
incentives then who would create new things.
rights as indicated in our intellectual property code?
Yes, under sec. 3, RA 8293 - International Conventions and
Reciprocity. - Any person who is a national or who is domiciled or
has a real and effective industrial establishment in a country which
is a party to any convention, treaty or agreement relating to
intellectual property rights or the repression of unfair competition,
to which the Philippines is also a party, or extends reciprocal rights
to nationals of the Philippines by law, shall be entitled to benefits
to the extent necessary to give effect to any provision of such
convention, treaty or reciprocal law, in addition to the rights to
which any owner of an intellectual property right is otherwise
entitled by this Act.
What if a foreign national who is not part of any treaty or
convention to which the Philippines is also a signatory can
there be any protection provided to such foreign national?
Yes, as provided under sec. 3 (Principle of Reciprocity)- a
foreign national by which its home country provides a benefit to a
Filipino by their local law that country does not need to be a party
to a convention or treaty as long as their own country provides it
by their local law. So, if their country provides benefits for Filipinos
not necessarily that that country is a member of a treaty then such
nationals of that country can also benefit from the provisions of
our intellectual property code.
“or extends reciprocal rights to nationals of the Philippines by law,
shall be entitled to benefits to the extent necessary to give effect to
any provision of such convention, treaty or reciprocal law, in
addition to the rights to which any owner of an intellectual
property right is otherwise entitled by this Act.”
Principle of Reverse Reciprocity-> provided under SECTION
231.
Reverse Reciprocity of Foreign Laws - Any condition,
restriction, limitation, diminution, requirement, penalty or any
similar burden imposed by the law of a foreign country on a
Philippine national seeking protection of intellectual property
rights in that country, shall reciprocally be enforceable upon
nationals of said country, within Philippine jurisdiction.
*If my country gives you a benefit, burden or limitation the same
goes to the other countries.
NOTE: Anyone claiming any right being a signatory to which the
Philippines is also a signatory need not allege such fact and
whatever case they may file here in the Philippines because that
is already judicial notice.
What do Intellectual property rights include? - Sec. 4
The term “intellectual property rights” consists of:
a) Copyright and Related Rights;
b) Trademarks and Service Marks;
c) Geographic Indications -> Indications which identify a good
as originating in the territory of a Member of the Agreement, or a
region or locality in that territory, where a given quality,
reputation or other characteristic of the good is essentially
attributable to its geographical origin.
Ex. Wine you can attribute it to Italy.

d) Industrial Designs- > sec. 112 - “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. It must be new or ornamental”
e) Patents;
f) Layout-Designs (Topographies) of Integrated Circuits ->
synonymous with 'Topography' and means the three-
dimensional disposition, however expressed, of the elements, at
least one of which is an active element, and of some or all of the
interconnections of an integrated circuit, or such a three-
dimensional disposition prepared for an integrated circuit
intended for manufacture.
g) Protection of Undisclosed Information -> protection of
information lawfully held from being disclosed to, acquired by, or
used by others without their consent in a manner contrary to
honest commercial practices so long as such information:
1. is secret in the sense that it is not, as a body or in the
precise configuration and assembly of its components,
generally known among or readily accessible to persons
within the circles that normally deal with the kind of
information in question;
2. has commercial value because it is secret; and
3. has been subject to reasonable steps under the
circumstances, by the person lawfully in control of the
information, to keep it secret.
Trade secrets are of a privileged nature. The protection of
industrial property encourages investments in new ideas and
inventions and stimulates creative efforts for the satisfaction of
human needs. It speeds up transfer of technology and
industrialization, and thereby bring about social and economic
progress. Verily, the protection of industrial secrets is
inextricably linked to the advancement of our economy and
fosters healthy competition in trade.
PEARL DEAN VS SHOEMART
G.R. No. 148222|August 15, 2003
FACTS: Pearl and Dean (Phil.), Inc. (PDI) is engaged
in the manufacture of advertising display units
simply referred to as light boxes. PDI was able to
secure a Certificate of Copyright Registration, the
advertising light boxes were marketed under the
trademark “Poster Ads”.
In 1985, PDI negotiated with defendant-appellant
Shoemart, Inc. (SMI) for the lease and installation of
the light boxes in certain SM Makati and SM Cubao.
PDI submitted for signature the contracts covering
both stores, but only the contract for SM Makati,
however, was returned signed. Eventually, SMI’s
informed PDI that it was rescinding the contract for
SM Makati due to non-performance of the terms
thereof.
Years later, PDI found out that exact copies of its light
boxes were installed at different SM stores. It was
further discovered that SMI’s sister company North
Edsa Marketing Inc. (NEMI), sells advertising space
in lighted display units located in SMI’s different
branches.
PDI sent a letter to both SMI and NEMI enjoining
them to cease using the subject light boxes, remove
the same from SMI’s establishments and to
discontinue the use of the trademark “Poster Ads,” as
well as the payment of compensatory damages.
Claiming that both SMI and NEMI failed to meet all its
demands, PDI filed this instant case for infringement
of trademark and copyright, unfair competition and
damages.
SMI maintained that it independently developed its
poster panels using commonly known techniques
and available technology, without notice of or
reference to PDI’s copyright. SMI noted that the
registration of the mark “Poster Ads” was only for
stationeries such as letterheads, envelopes, and the
like. Besides, according to SMI, the word “Poster Ads”
is a generic term which cannot be appropriated as a
trademark, and, as such, registration of such mark is
invalid. On this basis, SMI, aside from praying for the
dismissal of the case, also counterclaimed for moral,
actual and exemplary damages and for the
cancellation of PDI’s Certification of Copyright
Registration, and Certificate of Trademark
Registration.
The RTC of Makati City decided in favour of PDI,
finding SMI and NEMI jointly and severally liable for
infringement of copyright and infringement of
trademark
On appeal, however, the Court of Appeals reversed
the trial court.
ISSUES:
Whether the the light box depicted in such
engineering drawings ipso facto also protected by
such copyright.
Whether there was a patent infringement.
Whether the owner of a registered trademark legally
prevent others from using such trademark if it is a
mere abbreviation of a term descriptive of his goods,
services or business?
RULING: ON THE ISSUE OF COPYRIGHT
INFRINGEMENT – NONE because the light boxes does
not fit in the description in the law of those which are
subject to copy right because the court said that what
Pearl and Dean should have obtained was a patent
because it is not a literary or artistic work.
The Court of Appeals correctly held that the
copyright was limited to the drawings alone and not
to the light box itself.
Although petitioner’s copyright certificate was
entitled “Advertising Display Units” (which depicted
the box-type electrical devices), its claim of copyright
infringement cannot be sustained.
Copyright, in the strict sense of the term, is
purely a statutory right. Accordingly, it can cover
only the works falling within the statutory
enumeration or description.
Even as we find that P & D indeed owned a valid
copyright, the same could have referred only to the
technical drawings within the category of “pictorial
illustrations.” It could not have possibly stretched out
to include the underlying light box. The light box was
not a literary or artistic piece which could be
copyrighted under the copyright law.
Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original
intellectual creations in the literary and artistic
domain protected from the moment of their
creation. Patentable inventions, on the other hand,
refer to any technical solution of a problem in any
field of human activity which is new, involves an
inventive step and is industrially applicable.
ON THE ISSUE OF PATENT INFRINGEMENT
The petition is DENIED
What is the difference between Patents,
Trademarks and copyrights in this case?
The remedy or protection afforded in one cannot be
used to protect the other and the court cited the case
of Ko vs CA.

Petitioner never secured a patent for the light What is the purpose of Patents?
boxes. It therefore acquired no patent rights which
and could not legally prevent anyone from 1. Foster and reward inventions.
manufacturing or commercially using the 2. Incentives innovation
contraption. To be able to effectively and legally 3. Benefit the public for such inventions or
preclude others from copying and profiting from the innovations.
invention, a patent is a primordial requirement. No
patent, no protection. What is the difference between a Patent and a Patentable
invention?
ON THE ISSUE OF TRADEMARK INFRINGEMENT -
NONE, because poster ads are too general to be  Patentable invention – sec, 21. Any technical solution
registered in the name of one enterprise. Pearl and of a problem in any field of human activity which is new,
Dean does not engage in the business of selling poster involves an inventive step and is industrially applicable
ads instead sells those light boxes and not poster ads. shall be patentable. It may be, or may relate to, a
Pearl and Dean also does not have any trademark product, or process, or an improvement of any of the
registration. foregoing.
 The subject of that right.
On the issue of trademark infringement, the
petitioner’s president said “Poster Ads” was a INTELLECTUAL DEFINITION
contraction of “poster advertising.” P & D was able to PROPERTIES
secure a trademark certificate for it, but one where Any visible sign capable of
the goods specified were “stationeries such as distinguishing the goods
letterheads, envelopes, calling cards and (trademark) or services (service
newsletters.”Petitioner admitted it did not Trademark mark) of an enterprise and shall
commercially engage in or market these goods. On include a stamped or marked
the contrary, it dealt in electrically operated backlit container of goods.
advertising units which, however, were not at all
specified in the trademark certificate. DISCUSSION: Trademark is
everywhere, we have Mcdo,
Assuming arguendo that “Poster Ads” could validly Jollibee logos etc.
qualify as a trademark, the failure of P & D to secure The name or designation
a trademark registration for specific use on the light Tradename identifying or distinguishing an
boxes meant that there could not have been any enterprise.
trademark infringement since registration was an DISCUSSION: the names Mcdo
essential element thereof. and Jollibee can be registered as
trademarks as well.
ON THE ISSUE OF UNFAIR COMPETITION Literary and artistic works
which are original intellectual
There was no evidence that P & D’s use of “Poster creations in the literary and
Ads” was distinctive or well-known. As noted by the Copyright artistic domain protected from
Court of Appeals, petitioner’s expert witnesses the moment of their creation.
himself had testified that ” ‘Poster Ads’ was too DISCUSSION: this is only when
generic a name. So it was difficult to identify it with registration not needed because
any company, honestly speaking.”This crucial these are already protected the
admission that “Poster Ads” could not be associated moment of creation.
with P & D showed that, in the mind of the public, the Any technical solution of a
goods and services carrying the trademark “Poster problem in any field of human
Ads” could not be distinguished from the goods and Patentable activity which is new, involves
services of other entities. Inventions an inventive step and is
industrially applicable. (Kho v.
“Poster Ads” was generic and incapable of being used CA, G.R. No. 115758, Mar. 11,
as a trademark because it was used in the field of 2002).
poster advertising, the very business engaged in by
petitioner. “Secondary meaning” means that a word DISCUSSION: you have to
or phrase originally incapable of exclusive register this.
appropriation with reference to an article in the  Patent – right granted to the person who made such
market might nevertheless have been used for so
innovation or invention.
long and so exclusively by one producer with
reference to his article that, in the trade and to that  Term of patents are from 20 years from the date of
branch of the purchasing public, the word or phrase filing for the application of patent and not the grant
has come to mean that the article was his property. of registration.
Elements of Patentability:
1. Novelty (originality) – the invention is new. (sec. 23)
2. Inventive Step- the discovery must not be obvious to the
person skilled in the art (sec. 26)
3. Industrially Applicable – an invention that can be
produced and used in any industry meets the industrial
application requirement of patent registrability. This means an
invention is not merely theoretical, but also has a practical
purpose. If the invention is a product, it should be able to produce
a product and if the invention is a process, it should be able to lay
out a process
SECTION 23. Novelty. - An invention shall not be considered new if
it forms part of a prior art.
SECTION 26. Inventive Step. - 26.1. 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.
Prior Art
a. Everything which has been made available to the public
anywhere in the world, before the filing date or the priority date
of the application claiming the invention; and
b. The whole contents of an earlier published Philippine
application or application with
Person skilled in the art
A person skilled in the art is a person with ordinary skills in a
certain art or field, who is aware of what is a common general
knowledge in the field at the time of the application. “He is
presumed to have knowledge of all references that are
sufficiently related to one another and to the pertinent art and to
have knowledge of all arts reasonably pertinent to the particular
problems with which the inventor was involved. He is presumed
also to have had at his disposal the normal means and capacity
for routine work and experimentation” (Revised IRR for R.A. No.
8293, Rule 207).
NOTE: They need not be experts in the field as long as they are
well-informed in that particular filed then they can be considered
as an ordinary person skilled in the said art.
Test of Non-Obviousness
If any person possessing ordinary skill in the art was able to draw
the inferences and he constructs that the supposed inventor
drew from prior art, then the latter did not really invent it.
26.2. In the case of drugs and medicines, there is no inventive
step if the invention results from the mere discovery of a new
form or new property of a known substance which does not
result in the enhancement of the known efficacy of that
substance, or the mere discovery of any new property or new use
for a known substance, or the mere use of a process unless such
known process results in a new product that employs at least one
new reactant.
Ex. A vaccine for covid 19 is not an inventive step because ,it is
merely new in purpose and not entirely new in substance.
NOTE: The burden of proving want of novelty of an invention is
on the person who avers it and the burden is a heavy one
which is met only by clear and satisfactory proof which
overcomes every reasonable doubt (Manzano v. CA, G.R. No.
113388, Sept. 5, 1997).
VARGAS VS CHUA
G.R. No. L-36650 |January 27, 1933
FACTS: The defendants Petronila Chua, Coo Pao and
Coo Teng Hee, appeal from the judgment of the Court
of First Instance of Manila, which held in favor of
Vargas and against Chua - to henceforth abstain from
making, manufacturing, selling or offering for a sale
plows of the type of those manufactured by the
plaintiff, - Angel Vargas, the plaintiff herein, brought
this action to restrain the appellants (CHUA) and the
other defendant entity, Cham Samco & Sons, their
agents and mandatories, from continuing the
manufacture and sale of plows similar to his plow
described in his patent No. 1,507,530 issued by the
United States Patent Office on September 2, 1924;
and to compel all of said defendants, after rendering
an accounting of the profits obtained by them from
the sale of said plows from September 2, 1924, to pay
him damages equivalent to double the amount of
such profits.
That the plaintiff (VARGAS) is the registered owner
and possessor of United States Patent No. 1,507,530
on certain plow improvements, issued by the United
States Patent Office on September 2, 1924, a certified
copy of which was registered in the Bureau of
Commerce and industry of the Government of the
Philippine Islands on October 17, 1924.
A certified copy of said patent is attached to this
stipulation of facts as Exhibit A. the parties agree that
the defendant Coo Teng Hee, doing business under
the name of Coo Kun & Sons Hardware Co., has been
selling to his customers in his store on J. Ma. Basa
Street in Iloilo, plows of the kind, type and design
represented by Exhibits B, B1 and B-2, having bought
said plows from his codefendant, Petronila Chua,
who manufactures them in her factory on Iznart
Street, Iloilo. , the plaintiff herein, through his
attorneys Paredes, Buencamino & Yulo, sent by
registered mail to the herein defendant, Coo Kun &
Sons Hardware Co., at Iloilo, the original of the letter
Exhibit E, which was received by it on September 28,
1927, according to the receipt marked Exhibit E-1
attached hereto.
That the plows manufactured by the plaintiff in
accordance with his patent, Exhibit A, are commonly
known to the trade in Iloilo, as well as in other parts
of the Philippines, as "Arados Vargas", and that the
plaintiff is the sole manufacturer of said plows. A
sample of these plows is presented as Exhibit F.
HELD: the plow upon which the appellee's
contention is based, does not constitute an invention
and, consequently, the privilege invoked by him is
untenable and the patent acquired by him should be
declared ineffective.
The judgment appealed from is hereby reversed and
the appellants are absolved from the complaint, with
costs of this instance against the appellee. So
ordered.
ISSUE: Whether the plow, Exhibit F, constitutes a
real invention or an improvement for which a patent
may be obtained, or if, on the contrary, it is
substantially the same plow represented by Exhibit
3-Chua the patent for which was declared null and
void in the aforementioned case of Vargas vs. F. M.
Yaptico & Co., supra.
We have carefully examined all the plows presented
as exhibits as well as the designs of those covered by
the patent, and we are convinced that NO
SUBSTANTIAL DIFFERENCE EXISTS BETWEEN THE
PLOW, Exhibit F, and the plow, Exhibit 3-Chua which
was originally patented by the appellee, Vargas.
The only difference noted by us is the suppression of
the bolt and the three holes on the metal strap
attached to the handle bar.
These holes and bolt with its nut were suppressed in
Exhibit F in which the beam is movable as in the
original plow.
The members of this court, with the plows in view,
arrived at the conclusion that not only is there no
fundamental difference between the two plows but
no improvement whatever has been made on the
latest model, for the same working and movement of
the beam existed in the original model with the
advantage, perhaps, that its graduation could be
carried through with more certainty by the use of the
bolt which as has already been stated, was adjustable
and movable.
The appellee is not entitled to the protection he
seeks for the simple reason that his plow, Exhibit F,
does not constitute an invention in the legal sense,
and because, according to the evidence, the same
type of plows had been manufactured in this country
and had been in use in many parts of the Philippine
Archipelago, especially in the Province of Iloilo, long
before he obtained his last patent.
MANZANO VS CA
G.R. No. 113388 | September 5, 1997
FACTS: Petitioner Manzano filed with Philippine
Patent Office an action for the cancellation of Letters
Patent for a gas burner registered in the name of
private respondent Madolaria who subsequently
assigned the same to private respondent United
Foundry. Petitioner alleged that the utility model
covered by the letters patent was not inventive, new,
or useful, the specification did not comply with the
requirements of R.A. No. 165, that respondent was
not the original, true, and actual inventor nor did she
derive her rights from the same, and that respondent
was guilty of fraud or misrepresentation in applying
for the letters patent.
Petitioner also alleged that the utility model in
question had already been in use and on sale
(petitioner herself being a distributor/seller of the
said gas burners) in the Philippines for more than
one year before the respondent filed for the
application. Petitioner presented two undated
brochures of two different Gas companies (Manila
Gas Corp. & Esso Gasul) which allegedly depicts an
identical gas burner as the one covered in
respondent’s letters patent. Respondent presented
her husband as lone witness to testify that
respondent, thru complaints of customers, devised a
way to solve the defects in the gas burners, and
respondent’s innovation is now the subject of the
letters patent.
The Director of Patents denied the petition for
cancellation, which was affirmed by the CA, on the
ground that petitioner was not able to convincingly
establish that the patented utility model was not
novel. Petitioner failed to overcome her burden and
overturn the presumption of legality of the issuance
of letters patent and that respondent withheld
material facts with intent to deceive which, if
disclosed, would have resulted in the refusal by the
PPO to issue the letters patent. Hence, this appeal.
ISSUE: WON the CA erred in upholding the decision
of the Director of Patents.
RULING: NO. In issuing Letters Patent to respondent
Madolaria for an LPG Burner, the PPO found her
invention novel and patentable. The issuance of such
patent creates a presumption which yields only to
clear and cogent evidence that the patentee was the
original and first inventor. The burden of proving
want of novelty is on him who avers it and the
burden is a heavy one which is met only by clear and
satisfactory proof which overcomes every reasonable
doubt.
As found by the Director of Patents, the standard of
evidence sufficient to overcome the presumption of
legality of the issuance of letters patent to
respondent Madolaria was not legally met by
petitioner in her action for the cancellation of the
patent. The findings and conclusions of the Director
of Patent were reiterated and affirmed by the Court
of Appeals. The rule is settled that the findings of fact
of the Director of Patents, especially when affirmed
by the Court of Appeals, are conclusive on this Court
when supported by substantial evidence.
The validity of the patent issued by the PPO in favor
of private respondent and the question over the
inventiveness, novelty and usefulness of the
improved model of the LPG burner are matters
 which are better determined by the PPO. The
technical staff of the Philippine Patent Office
composed of experts in their field has by the issuance
of the patent in question accepted private
respondents model of gas burner as a discovery.
There is a presumption that the Office has correctly
determined the patentability of the model and such
action must not be interfered with in the absence of
competent evidence to the contrary
Are all disclosures a bar to the filing of a patent application?
No, the exception is under sec. 25. Non-Prejudicial Disclosure. -
25.1. The disclosure of information contained in the application
during the twelve (12) months preceding the filing date or the
priority date of the application shall not prejudice the applicant on
the ground of lack of novelty if such disclosure was made by:
1. disclosed by the inventor himself.
2. A patent officer and the information was contained (a) in
another publication filed by the inventor and should not have been
disclosed by the office, or (b) in an application filed, without the
knowledge or consent of the inventor, by a third party who
obtained the information directly or indirectly from the inventor;
or
3.A third party who obtained the information directly or indirectly
from the inventor. (IPC, Sec. 25)
AGUAS VS DE LEON
G.R. No. L-32160 | January 30, 1982
FACTS: On April 14, 1962, respondent Conrado de
Leon filed in the CFI of Rizal at Quezon City a
complaint for infringement of patent against
petitioner Domiciano Aguas and F.H. Aquino and
Sons alleging among others that being the original
first and sole inventor of certain new and useful
improvements in the process of making mosaic pre-
cast tiles, and thereafter lawfully acquired from the
Philippine Patent Office, Patent No. 658, the latter
infringed the same by making, using and selling tiles
embodying said patent invention. A writ of
Preliminary Injuction was subsequently issued.
Petitioner Aguas, in his answer, denied the
allegations and instead averred inter alia that
respondent De Leon is neither the original first nor
sole inventor of the improvements in the process of
making mosaic pre-cast tiles, the same having been
used by several tile-making factories both here and
abroad years before the alleged invention by De
Leon; hence, it is not patentable.
 The trial court and the Court of Appeals, upon appeal
rendered judgment in favor of respondent de Leon.
Thus, this petition.
ISSUE: Whether or not the alleged invention or
discovery of respondent is patentable.
HELD: Yes. x x x It should be noted that the private
respondent does not claim to be the discoverer or
inventor of the old process of tile-making. He only
claims to have introduced an improvement of said
process. In fact, Letters Patent No. 658 was issued by
the Philippine Patent Office to the private respondent
Conrado G. De Leon, to protect his rights as the
inventor of “ an alleged new and useful improvement
in the process of making pre-cast tiles.” Indeed,
section 7, Republic Act No. 165, as amended
provides: “ Any invention of a new and useful
machine, manufactured product or substance,
process, or an improvement of the foregoing, shall be
patentable.”
DISCUSSION: An inventive improvement can be entitled to a
patent. So, you do not need to be the inventor of the first
invention as long as you are able to upgrade or create an
inventive step so it can be subject to a patent
What are non-patentable inventions?
SECTION 22. Non-Patentable Inventions. - The following shall
be excluded from patent protection:
22.1. Discoveries, scientific theories and mathematical methods,
and in the case of drugs and medicines, the mere discovery of a new
form or new property of a known substance which does not result
in the enhancement of the known efficacy of that substance, or the
mere discovery of any new property or new use for a known
substance, or the mere use of a known process unless such known
process results in a new product that employs at least one new
reactant.
Ex. Mathematical methods (Pythagorean theorem)
22.2. Schemes, rules and methods of performing mental acts,
playing games or doing business, and programs for computers;
22.3. Methods for treatment of the human or animal body by
surgery or therapy and diagnostic methods practiced on the
human or animal body. This provision shall not apply to products
and composition for use in any of these methods;
22.4. Plant varieties or animal breeds or essentially biological
process for the production of plants or animals. This provision shall
not apply to micro-organisms and non-biological and
microbiological processes.
Provisions under this subsection shall not preclude Congress to
consider the enactment of a law providing sui generis protection of
plant varieties and animal breeds and a system of community
intellectual rights protection:
22.5. Aesthetic creations; and
Note: these are covered under copyright and not by patents.
22.6. Anything which is contrary to public order or morality.
Ex. Unlawful drugs
Who has a right to a patent?
Persons entitled to a patent
1. Inventor, his heirs, or assigns (IPC, Sec 28)
2. Joint invention – Jointly by the inventors (IPC, Sec. 28)
3. Two or more persons invented separately and
independently of each other - To the person who filed an
application
4. Two or more applications are filed – the applicant who has
the earliest filing date or, the earliest priority date. First to file
rule (IPC, Sec. 29).
FIRST-TO-FILE RULE (sec.29)
1. If two (2) or more persons have made the invention
separately and independently of each other, the right to
the patent shall belong to the person who filed an
application for such invention, or
2. Where two or more applications are filed for the same
invention, to the applicant which has the earliest filing
date.
What are inventions created pursuant to a commission?
 If someone commissions the work he owns the patent.
Unless, there is a stipulation in the contract that the
ownership of the patent will be the person who is
working on the patent.
GENERAL RULE: The person who commissioned the work shall
own the work but the copyright thereto shall remain with the
creator – In cases of work pursuant to commission, unless there
is a written stipulation to the contrary. (Sec. 178.4, IPC)
The employee will own the patented work if it is done not inline
with the regular duties of his work even if he uses the facilities of
the company.
It is owned by the employer if the employee is working on the
invention in relation to his duties unless otherwise stipulated.
What is right of priority?
SECTION 31. Right of Priority. - An application for patent filed
by any person who has previously applied for the same invention in
another country which by treaty, convention, or law affords similar
privileges to Filipino citizens, shall be considered as filed as of the
date of filing the foreign application: Provided, That:
(a) the local application expressly claims priority;
(b) it is filed within twelve (12) months from the date the earliest
foreign application was filed; and
(c) a certified copy of the foreign application together with an
English translation is filed within six (6) months from the date of
filing in the Philippines. (Sec. 15, R.A. No. 165a)
Supposed you filed a patent application in China, does it
mean a local application in the Philippines is also filed? No.
 There is no automatic filing of application. It does not
mean that when you filed an application abroad it
means you already filed here in the Philippines and it
also does not follow that when you filed abroad and
here in the Philippines that you will have that priority
date. It must particularly state in your application that
you are claiming priority based on the foreign
application that you have earlier filed within the 12
months.
 This right of priority follows the principle of reciprocity
under sec. 3. Under this priority system the inventor
may within 12 months of the application, disclosing an
invention and a member country of a Paris convention
can apply for the same invention in another country
with the same filing date as the prior foreign
application.
 This 12-month period is known as the priority period.
The subsequent filing of application within 12-month
priority period will enjoy the same filing date known as
the priority date.
 The withdrawal or abandonment, revocation or
rejection of first application will not affect the priority
status here in the Philippines in the subsequent
application. Why is this important? Because we have the
first to file rule.
What are the grounds for cancellation of patent?
1. The invention is Not new or patentable;
2. 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
3. Contrary to public order or morality.(Sec. 61.1, IPC)
4. Patent is found Invalid in an action for infringement
Can only parts of the patent be cancelled or should it be in
whole? Part only. (sec. 61.2)
61.2. Where the grounds for cancellation relate to some of the
claims or parts of the claim, cancellation may be effected to such
extent only.
In case of a petition for cancellation of patent, who has the
burden of proof?
 The one who filed (petitioner) because of the
presumption of validity once the patent has been issued
in favor of someone.
What is the remedy of a true inventor?
 He may only ask the court to substitute him as a
patentee or to cancel the patent and ask for damages
when the application of the false inventor is granted. He
may not the IPO of processing the false application.
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.
Why do we have this remedy?
Because there are inventors who were not able to register their
inventions and was not aware that his invention was already
patented.
NOTE: The burden of proof is with the plaintiff or the one who is
deprived of such right because there is presumption that the
patent holder is the original inventor of the machine. This is an
exception to the first to file rule.
What are the rights conferred by a patent?
1. Subject matter is a product – Right to restrain,
prohibit and prevent any unauthorized person or
entity from making, using, offering for sale, selling or
importing the product.
2. Subject matter is a process – Right to restrain
prohibit and prevent any unauthorized person or
entity from manufacturing, dealing in, using, offering for
sale, selling or importing any product obtained directly
or indirectly from such process (Sec. 71, IPC).
3. Right to assign the patent, to transfer by succession,
and to conclude licensing contracts. (Sec. 71.2, IPC)
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 from
making, using, offering for sale, selling or importing that product;
(b) Where the subject matter of a patent is a process, to restrain,
prevent or prohibit any unauthorized person or entity from using
the process, and from manufacturing, dealing in, using, selling or
offering for sale, or importing any product obtained directly or
indirectly from such process.
71.2. Patent owners shall also have the right to assign, or transfer
by succession the patent, and to conclude licensing contracts for
the same. (Sec. 37, R.A. No. 165a)
What are the exceptions to the rights conferred by a patent?
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:
Provided, That, with regard to drugs and medicines, the limitation
on patent rights shall apply after a drug or medicine has been
introduced in the Philippines or anywhere else in the world by the
patent owner, or by any party authorized to use the invention:
Provided, further, That the right to import the drugs and
medicines contemplated in this section shall be available to any
government agency or any private third party;
72.2. Where the act is done privately and on a non-commercial
scale or for a non-commercial purpose: Provided, That it does
not significantly prejudice the economic interests of the owner of
the patent;
72.3. Where the act consists of making or using exclusively for
experimental use of the invention for scientific purposes or
educational purposes and such other activities directly
related to such scientific or educational experimental use;
72.4. In the case of drugs and medicines, where the act
includes testing, using, making or selling the invention
including any data related thereto, solely for purposes
reasonably related to the development and submission of
information and issuance of approvals by government
regulatory agencies required under any law of the Philippines
or of another country that regulates the manufacture,
construction, use or sale of any product:
Provided, That, in order to protect the data submitted by the
original patent holder from unfair commercial use provided in
Article 39.3 of the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS Agreement), the Intellectual
Property Office, in consultation with the appropriate government
agencies, shall issue the appropriate rules and regulations
necessary therein not later than one hundred twenty (120) days
after the enactment of this law;
72.5. Where the act consists of the preparation for individual
cases, in a pharmacy or by a medical professional, of a
medicine in accordance with a medical prescription or acts
concerning the medicine so prepared; and
72.6. Where the invention is used in any ship, vessel, aircraft,
or land vehicle of any other country entering the territory of
the Philippines temporarily or accidentally:
Provided, That such invention is used exclusively for the needs of
the ship, vessel, aircraft, or land vehicle and not used for the
manufacturing of anything to be sold within the Philippines. 
Ex. I am a patent holder of a certain invention, supposed I
gave away my invention to A who has already sold it to
another person etc. and then later I decided to withdraw me
giving away my invention, who has the better right to my
invention? Has my right been limited already?
 Once a patent holder puts out in the market his
patented product his exclusive right to prevent anyone
from using it automatically limited his right. Remember
the right is separated from the object of the right.
 Once I sold the product or gave it away etc. then my
right is automatically limited. I cannot say that I
changed my mind or withdraw what I have already
entered into. Because what if the invention has already
been sold to a hundred people and for value it would be
unfair. Hence, you cannot claim that you have exclusive
right from using the invention because in the first place
it was already given away with your consent.
ROMA DRUG VS RTC
G.R. No. 149907 April 16, 2009
FACTS: The petitioner Roma Drug was among the 6
local drugstores in Pampanga raided by the joint NBI
and BFAD inspectors where various medicines were
found and seized on the strength of a search warrant
issued by the RTC of Pampanga and upon the request
of Glaxo Smithkline, a registered corporation and the
authorized Philippine distributor of the medicines
seized from said drugstores. The NBI proceeded in
filing a complaint against petitioner for violation of
Section 4 (in relation to Sections 3 and 5) of Republic
Act No. 8203, also known as the Special Law on
Counterfeit Drugs (SLCD), with the Office of the
Provincial Prosecutor in San Fernando, Pampanga.
The law prohibits the sale of counterfeit drugs, which
include an "unregistered imported drug product".
The term "unregistered" signifies lack of registration
with the Bureau of Patent, Trademark and
Technology Transfer of a trademark of a drug in the
name of a natural or juridical person. The seized
drugs are identical in content with their Philippine-
registered counterparts. No claim was made that the
drugs were adulterated in any way or mislabeled at
the least. Their classification as "counterfeit" is based
solely on the fact that they were imported from
abroad and not purchased from Philippine-registered
owner of the patent or trademark of the drugs.
Petitioner Roma Drug challenged the
constitutionality of the SLCD during the preliminary
investigation but the provincial prosecutors issued a
resolution recommending that Rodriguez, the owner
of Roma Drug, be charged with violation of Section 4
of the SLCD.
Thus, Roma Drug filed a Petition for Prohibition
before the Supreme Court questing the RTC-Guagua
Pampanga and the Provincial Prosecutor to desist
from further prosecuting Rodriguez, and that
Sections 3(b)(3), 4 and 5 of the SLCD be declared
unconstitutional.
The Court issued a temporary restraining order
enjoining the RTC from proceeding with the trial
against Rodriguez, and the BFAD, the NBI and Glaxo
Smithkline from prosecuting the petitioners.
Glaxo Smithkline and the Office of the Solicitor
General (OSG) have opposed the petition. On the
constitutional issue, Glaxo Smithkline asserts the rule
that the SLCD is presumed constitutional. The OSG
invokes the presumption of constitutionality of
statutes and asserts that there is no clear and
unequivocal breach of the Constitution presented by
the SLCD.
ISSUE: WON RA 9502 impliedly abrogates the
provisions of RA 8203 (SLCD) with which the
petitioner is criminally charged? Yes
HELD: (petition granted, writ of prohibition
issued, TRO made permanent)
It may be that Rep. Act No. 9502 (Universally
Accessible Cheaper and Quality Medicines Act of
2008) did not expressly repeal any provision of the
SLCD. However, it is clear that the SLCD's
classification of "unregistered imported drugs" as
"counterfeit drugs," and of corresponding criminal
penalties therefore are irreconcilably in the
imposition conflict with Rep. Act No. 9502 since the
latter indubitably grants private third persons the
unqualified right to import or otherwise use such
drugs. Where a statute of later date, such as Rep.
Act No. 9502, clearly reveals an intention on the
part of the legislature to abrogate a prior act on
the subject that intention must be given effect.
When a subsequent enactment covering a field of
operation co-terminus with a prior statute cannot by
any reasonable construction be given effect while the
prior law remains in operative existence because of
irreconcilable conflict between the two acts, the
latest legislative expression prevails and the prior
law yields to the extent of the conflict. Irreconcilable
inconsistency between two laws embracing the same
subject may exist when the later law nullifies the
reason or purpose of the earlier act, so that the latter
loses all meaning and function. Legis posteriors
priores contrarias abrogant.
For the reasons above-stated, the prosecution of
petitioner is no longer warranted and the quested
writ of prohibition should accordingly be issued.
What are the limitations of rights for drug medicines?
 It is allowed for a 3rd party to use such patented
invention if it is only for testing, making or development
purposes this will not violate the patent rights of an
owner.
What about the importation of the drugs?
 Third parties may import because in this case there was
already a prior introduction of the drug to its local
subsidiaries or companies.
Is it the ruling the same if it involves non-medical or drug
patented products? (sec. 72.1)
 With regard to non-medical or drug patented products
it must first be put out in the Philippines first before
your right is limited. As opposed to drugs and medicines
it can be anywhere it is not territorial.
What is a prior user?
 Person other than the applicant, who in good faith,
started using the invention in the Philippines, or
undertaken serious preparations to use the same,
before the filing date or priority date of the application
shall have the right to continue the use thereof, but this
right shall only be transferred or assigned further with
his enterprise or business. (Sec. 73, IPC)
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. 
Ex. A was already using an invention in good faith and he
subsequently filed a patent, B is not prevented to use such
invention .
What if an inventor created this invention for personal use
and then I gave to my relatives and then subsequently a
patent holder was granted of the same invention with the
same functions discovers this. Can I claim to be a prior user?
 No, the law provides that it must be undertaken in a
serious manner hence, if it is only for personal use then
prior user will not be applied.
 For developed countries, the reality is that it is not
possible to attempt to patent every piece technology
which may be patentable.
 It is only applicable for commercially used or serious
application of a patented invention.
What is the limitation of use by the 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; or
(c) In the case of drugs and medicines, there is a national
emergency or other circumstance of extreme urgency requiring the
use of the invention; or
(d) In the case of drugs and medicines, there is public non-
commercial use of the patent by the patentee, without satisfactory
reason; or
(e) In the case of drugs and medicines, the demand for the patented
article in the Philippines is not being met to an adequate extent
and on reasonable terms, as determined by the Secretary of the
Department of Health.
74.2. Unless otherwise provided herein, the use by the Government,
or third person authorized by the Government shall be subject,
where applicable, to the following provisions:
(a) In situations of national emergency or other circumstances of
extreme urgency as provided under Section 74.1(c), the right
holder shall be notified as soon as reasonably practicable;
(b) In the case of public non-commercial use of the patent by the
patentee, without satisfactory reason, as provided under Section
74.1 (d), the right holder shall be informed promptly: Provided,
That, the Government or third person authorized by the
Government, without making a patent search, knows or has
demonstrable ground to know that a valid patent is or will be used
by or for the Government;
(c) If the demand for the patented article in the Philippines is not
being met to an adequate extent and on reasonable terms as
provided under Section 74.1 (e), the right holder shall be informed
promptly;
(d) The scope and duration of such use shall be limited to the
purpose for which it was authorized;
(e) Such use shall be non-exclusive;
(f) The right holder shall be paid adequate remuneration in the
circumstances of each case, taking into account the economic value
of the authorization; and
(g) The existence of a national emergency or other circumstances
of extreme urgency, referred to under Section 74.1 (c), shall be
subject to the determination of the President of the Philippines for
the purpose of determining the need for such use or other
exploitation, which shall be immediately executory.
74.3. All cases arising from the implementation of this provision
shall be cognizable by courts with appropriate jurisdiction
provided by law.
No court, except the Supreme Court of the Philippines, shall issue
any temporary restraining order or preliminary injunction or such
other provisional remedies that will prevent its immediate
execution.
74.4. The Intellectual Property Office (IPO), in consultation with
the appropriate government agencies, shall issue the appropriate
implementing rules and regulations for the use or exploitation of
patented inventions as contemplated in this section within one
hundred twenty (120) days after the effectivity of this law.
Why do we have these provisions on the limitations of use by
the government?
 To prevent the government from exploiting the
invention without the consent of the patent holder.
Are these provisions unconstitutional?
 No, because it is pursuant to the police power of the
government particularly power of eminent domain and
because these are pursuant to some public interest.
What constitutes infringement of patent?
1. Making, using, offering for sale, selling or importing a
patented product or a product obtained directly or indirectly
from a patented process; or
2. Use of a patented process without authorization of the
owner of the patent (Sec. 76, IPC)
Who may bring an action for a patent infringement?
SECTION 76. Civil Action for Infringement. - 76.1. The making,
using, offering for sale, selling, or importing a patented product
or a product obtained directly or indirectly from a patented
process, or the use of a patented process without the
authorization of the patentee constitutes patent infringement:
Provided, That, this shall not apply to instances covered by
Sections 72.1 and 72.4 (Limitations of Patent Rights); Section 74
(Use of Invention by Government); Section 93.6 (Compulsory
Licensing); and Section 93-A (Procedures on Issuance of a Special
Compulsory License under the TRIPS Agreement) of this Code.
76.2. Any patentee, or anyone possessing any right, title or
interest in and to the patented invention, whose rights have been
CRESSER PRECISION SYSTEM VS FLORO
INTERNATIONAL
FACTS: Private respondent Floro is a domestic
corporation engaged in the manufacture, production,
distribution and sale of military armaments,
munitions, airmunitions and other similar materials.
On Jan. 23, 1990, private respondent Floro was
granted by the Bureau of Patents, Trademarks and
Technology Transfer a Letters Patent covering an
aerial fuze.
However, Floro’s President, Mr. Gregory Floro
discovered that petitioner Creser submitted samples
of its patented aerial fuze to the Armed Forces of the
Philippines (AFP) for testing and that petitioner is
claiming the aerial fuze as its own and planning to
bid and manufacture it commercially.
Petitioner Creser contends that it is the first, true and
actual inventor of an aerial fuze denominated as
which it developed as early as December 1981 under
the Self-Reliance Defense Posture Program (SRDP) of
the AFP; that sometime in 1986, petitioner began
supplying the AFP with the said aerial fuze; that
private respondent's aerial fuze is identical in every
respect to the petitioner's fuze; and that the only
difference between the two fuzes are miniscule and
merely cosmetic in nature.
Petitioner prayed that a temporary restraining order
and/or writ of preliminary injunction be issued
enjoining private respondent including any and all
persons acting on its behalf from manufacturing,
marketing and/or profiting therefrom, and/or from
performing any other act in connection therewith or
tending to prejudice and deprive it of any rights,
privileges and benefits to which it is duly entitled as
the first, true and actual inventor of the aerial fuze.
RTC issued a TRO and later on granted the
preliminary injunction filed by plaintiff against
private respondent. While CA reversed the RTC’s
decision and dismissed the complaint filed by
petitioner.
ISSUE: Whether Petitioner can file an action for
infringement not as a patentee but as an entity in
possession of a right, title or interest in and to the
patented invention?
RULING: NO. Section 42 of R.A. 165, otherwise
known as the Patent Law, explicitly provides:
Sec. 42. Civil action for infringement. — Any
patentee, or anyone possessing any right, title or
interest in and to the patented invention, whose
rights have been infringed, may bring a civil action
before the proper Court of First Instance (now
Regional Trial court), to recover from the infringer
damages sustained by reason of the infringement
and to secure an injunction for the protection of his
right. . . .
infringed, may bring a civil action before a court of competent
jurisdiction, to recover from the infringer such damages
sustained thereby, plus attorney’s fees and other expenses of
litigation, and to secure an injunction for the protection of his
rights.
There can be no infringement of a patent until a
patent has been issued, since whatever right one has
to  the invention covered by the patent arises alone
from the grant of patent. In short, a person or entity
who has not been granted letters patent over an
invention and has not acquired any light or title
thereto either as assignee or as licensee, has no cause
of action for infringement because the right to
maintain an infringement suit depends on the
existence of the patent.
Petitioner admits it has no patent over its aerial fuze.
Therefore, it has no legal basis or cause of action to
institute the petition for injunction and damages
arising from the alleged infringement by private
respondent. While petitioner claims to be the first
inventor of the aerial fuze, still it has no right of
property over the same upon which it can maintain a
suit unless it obtains a patent therefor.
In patent infringement cases what is the first thing that you
should look for?
 Look if there is a patent issued for such invention
because if there is no patent right there can be no patent
infringement.
What is the remedy if there is a patent already issued?
 Filing of a petition to cancel patent.
GODINES VS CA
G.R. No. 97343 September 13, 1993
Facts:Respondent SV-Agro Industries acquired a
letter patent issued to one Magdalena Villaruz which
covers a utility model for hand tractor or power tiller
by virtue of a deed of assignment executed by the
latter in its favor. Respondent after suffering a
decline in sales of the patented power tillers,
investigated and discovered that petitioner Godines
was manufacturing the same power tillers as they
have.
Petitioner maintains the defenses which he raised
before the trial and appellate courts, to wit: that he
was not engaged in the manufacture and sale of the
power tillers as he made them only upon the special
order of his customers who gave their own
specifications; hence, he could not be liable for
infringement of patent and unfair competition; and
that those made by him were different from those
being manufactured and sold by private respondent.
Respondent thus filed a complaint for patent
infringement and unfair competition against
petitioner Godines. The trial court held petitioner
liable for infringement. CA affirmed.
Issue:Whether or not petitioner’s products infringe
upon the patent of respondent SV-Agro.
Ruling: YES.
Tests have been established to determine
infringement. These are (a) literal infringement; and
(b) the doctrine of equivalents.
In using literal infringement as a test, “. . . resort must
be had, in the first instance, to the words of the claim.
If accused matter clearly falls within the claim,
infringement is made out and that is the end of it.” To
determine whether the particular item falls within
the literal meaning of the patent claims, the court
must juxtapose the claims of the patent and the
accused product within the overall context of the
claims and specifications, to determine whether
there is exact identity of all material elements.
It appears from the observation of the trial court that
these claims of the patent and the features of the
patented utility model were copied by petitioner: In
appearance and form, both the floating power tillers
of the defendant and the turtle power tiller of the
plaintiff are virtually the same. Viewed from any
perspective or angle, the power tiller of the defendant
is identical and similar to that of the turtle power
tiller of plaintiff in form, configuration, design and
appearance. The parts or components thereof are
virtually the same. In operation, the floating power
tiller of the defendant operates also in similar manner
as the turtle power tiller of plaintiff.
Petitioner’s argument that his power tillers were
different from private respondent’s is that of a
drowning man clutching at straws.
Recognizing that the logical fallback position of one
in the place of defendant is to aver that his product is
different from the patented one, courts have adopted
the doctrine of equivalents.
Thus, according to this doctrine, “(a)n infringement
also occurs when a device appropriates a prior
invention by incorporating its innovative concept
and, albeit with some modification and change,
performs substantially the same function in
substantially the same way to achieve substantially
the same result.” In this case, the trial court
observed: But a careful examination between the two
power tillers will show that they will operate on the
same fundamental principles.
We are compelled to arrive at no other conclusion
but that there was infringement.
Another ruling:
Ruling: Yes. The question of whether petitioner was
manufacturing and selling power tillers is a question
of fact better addressed to the lower courts. The fact
that petitioner herein manufactured and sold power
tillers without patentee's authority has been
established by the courts despite petitioner's claims
to the contrary.
Tests have been established to determine
infringement. These are (a) literal infringement; and
(b) the doctrine of equivalents. In using literal
infringement as a test, ". . . resort must be had, in the
first instance, to the words of the claim. If accused
matter clearly falls within the claim, infringement is
made out and that is the end of it." 
To determine whether the particular item falls
within the literal meaning of the patent claims, the
Court must juxtapose the claims of the patent and the
accused product within the overall context of the
claims and specifications, to determine whether
there is exact identity of all material elements.
Samples of the defendant's Goating power tiller have
been produced and inspected by the court and
compared with that of the turtle power tiller of the
plaintiff. In appearance and form, both the Goating
power tillers of the defendant and the turtle power
tiller of the plaintiff are virtually the same. Viewed
from any perspective or angle, the power tiller of the
defendant is identical and similar to that of the turtle
power tiller of plaintiff in form, configuration, design
and appearance. The parts or components thereof
are virtually the same.
In operation, the floating power tiller of the
defendant operates also in similar manner as the
turtle power tiller of plaintiff. This was admitted by
the defendant himself in court that they are
operating on the same principles.
Moreover, it also observed that petitioner also called
his power tiller as a floating power tiller. The patent
issued by the Patent Office referred to a "farm
implement but more particularly to a turtle hand
tractor having a vacuumatic housing float on which
the engine drive is held in place, the operating
handle, the harrow housing with its operating handle
and the paddy wheel protective covering." It appears
from the foregoing observation of the trial court that
these claims of the patent and the features of the
patented utility model were copied by petitioner. We
are compelled to arrive at no other conclusion but
that there was infringement.
Recognizing that the logical fallback position of one
in the place of defendant is to aver that his product is
different from the patented one, courts have adopted
the doctrine of equivalents which recognizes that
minor modifications in a patented invention are
sufficient to put the item beyond the scope of literal
infringement.
Thus, according to this doctrine, "(a)n infringement
also occurs when a device appropriates a prior
invention by incorporating its innovative concept
and, albeit with some modification and change,
performs substantially the same function in
substantially the same way to achieve substantially
the same result." The reason for the doctrine of
equivalents is that to permit the imitation of a
patented invention which does not copy any literal
detail would be to convert the protection of the
patent grant into a hollow and useless thing.
Such imitation would leave room for — indeed
encourage — the unscrupulous copyist to make
unimportant and insubstantial changes and
substitutions in the patent which, though adding
nothing, would be enough to take the copied matter
outside the claim, and hence outside the reach of the
law. A careful examination between the two power
tillers will show that they will operate on the same
fundamental principles.
SMITH KLINE BECKMAN VS CA
G. R. No. 126627. August 14, 2003]
FACTS: Smith Kline Beckman Corp. (US corporation)
filed as assignee, before the Philippine Patent Office
an application for patent over an invention entitled
Methods and Compositions for Producing Biphasic
Parasiticide Activity Using Methyl 5 Propylthio-2-
Benzimidazole Carbamate.Letters Patent for the
aforesaid invention was issued to petitioner for a
term of 17 years, which provides that the patented
invention consisted of a new com ound named
methyl 5 propylthio-2benzimidazole carbamate and
the methods or compositions utilizing the compound
as an active ingredient in fighting infections caused
by gastrointestinal parasites and lungworms in
animals such as swine, sheep, cattle, goats, horses,
and even pet animals.
Tryco Pharma Corp. is a domestic corporation that
manufactures, distributes and sells veterinary
products, including Impregon, a drug that has
Albendazole for its active ingredient and is claimed
to be effective against gastrointestinal roundworms,
lungworms, tapeworms and fluke infestation in
carabaos, cattle and goats.
Petitioner sued private respondent for infringement
of patent and unfair competition before the Caloocan
City RTC. It claimed that its patent covers or includes
the substance Albendazole such that private
respondent, by manufacturing, selling, using, and
causing to be sold and used the drug Impregon
without its authorization, committed infringement
and unfair competition under RPC and The
Trademark Law for advertising and selling as its own
the drug Impregon although the same contained
petitioner’s patented Albendazole.
Private respondent averred that petitioner’s letter
patent does not cover the substance Albendazole for
nowhere in it does that word appear.
RTC ruled for the Respondent. CA upheld trial court’s
ruling and held that respondent was not liable for
any infringement of the patent of petitioner in light
of the latter’s failure to show that Albendazole is the
same as the compound subject of its Letters Patent,
considered the U.S. patent as implying that
Albendazole is different from methyl 5 propylthio-2-
benzimidazole carbamate, and likewise found that
private respondent was not guilty of deceiving the
public by misrepresenting that Impregon is its
product.
ISSUE/S: Whether private respondent committed
patent infringement to the prejudice of petitioner.
RULING: NO. From a reading of the 9 claims of
Letters Patent No. 14561 in relation to the other
portions thereof, no mention is made of the
compound Albendazole. All that the claims disclose
are: the covered invention, that is, the compound
methyl 5 propylthio-2-benzimidazole carbamate; the
compounds being anthelmintic but nontoxic for
animals or its ability to destroy parasites without
harming the host animals; and the patented methods,
compositions or preparations involving the
compound to maximize its efficacy against certain
kinds of parasites infecting specified animals.
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. The mere absence of the word
Albendazole in Letters Patent No. 14561 is not
determinative of Albendazoles non-inclusion in the
claims of the patent. While Albendazole is admittedly
a chemical compound that exists by a name different
from that covered in petitioner’s letters patent, the
language of Letter Patent No. 14561 fails to yield
anything at all regarding Albendazole. And no
extrinsic evidence had been adduced to prove that
Albendazole inheres in petitioner’s patent in spite of
its omission therefrom or that the meaning of the
claims of the patent embraces the same.
While petitioner concedes that the mere literal
wordings of its patent cannot establish private
respondent’s infringement, it urges this Court to
apply the doctrine of equivalents. The doctrine of
equivalents provides that an infringement also takes
place when a device appropriates a prior invention
by incorporating its innovative concept and, although
with some modification and change, performs
substantially the same function in substantially the
same way to achieve substantially the same result.
A scrutiny of petitioner’s evidence fails to convince
this Court of the substantial sameness of petitioners
patented compound and Albendazole. While both
compounds have the effect of neutralizing parasites
in animals, identity of result does not amount to
infringement of patent unless Albendazole operates
in substantially the same way or by substantially the
same means as the patented compound, even though
it performs the same function and achieves the same
result. In other words, the principle or mode of
operation must be the same or substantially the
same.
The doctrine of equivalents thus requires satisfaction
 of the function-means-and-result test, the patentee
having the burden to show that all three components
of such equivalency test are met. As stated early on,
petitioners evidence fails to explain how Albendazole
is in every essential detail identical to methyl 5
propylthio-2-benzimidazole carbamate.
A patent here maybe infringed where the essential or
substantial features of a patented invention are taken or
appropriated by someone else. In order to infringe a patent,
it must perform the same function or procedure or
accomplish the same result by identical or substantial
identical means and the principal and mode of operation
must be substantially the same.
What are the 2 tests in determining patent infringement?
1. Literal infringement Test – Resort must be had, in the
first instance, to words of the claim. If the accused
matter clearly falls within the claim, infringement is
committed.
Minor modifications are sufficient to put the item beyond literal
infringement. (Godines v. CA, G.R. No. L‐97343, Sept. 13, 1993)
2. Doctrine of Equivalents – There is infringement where
a device appropriates a prior invention by incorporating
its innovative concept and, although with some
modification and change, performs substantially the
same function in substantially the same way to achieve
substantially the same result. (Ibid.)
 There must be comparison of the claims of the patent
from the accused product with the overall context of the
claims to determine whether or not there is an identity
in all the material elements.
 How do we apply this? When you file for a patent
registration you must disclose in your application all of
your claims of configuration, the parts, procedures or
everything for a 3rd party to be able to meet your
invention.
 For example: I applied for a patent and my claims for
the application is for a black, twist, open pen and then I
see someone he has an infringing product and I claim
that infringing product what do I do?
 Check the claims and if there is literal infringement. If
there is no literal infringement then look at the doctrine
of equivalents because it looks at between the accused
article, process or procedure and the literal meaning of
the claims.
 There is infringement when an invention appropriates a
prior invention by incorporation of its innovative set
although there are some modification or changes
through performance substantially the same function or
way to achieve substantially the same result this is also
called the function means and results test.
Can a foreing national bring an action for patent
infringement? YES.sec. 77 in relation to sec. 3
(requirements)
SECTION 77. Infringement Action by a Foreign National. - Any
foreign national or juridical entity who meets the requirements of
Section 3 and not engaged in business in the Philippines, to which a
patent has been granted or assigned under this Act, may bring an
action for infringement of patent, whether or not it is licensed to do
business in the Philippines under existing law.
SECTION 3. International Conventions and Reciprocity. - Any
person who is a national or who is domiciled or has a real and
effective industrial establishment in a country which is a party to
any convention, treaty or agreement relating to intellectual
property rights or the repression of unfair competition, to which
the Philippines is also a party, or extends reciprocal rights to
nationals of the Philippines by law, shall be entitled to benefits to
the extent necessary to give effect to any provision of such
convention, treaty or reciprocal law, in addition to the rights to
which any owner of an intellectual property right is otherwise
entitled by this Act.
Basically, when it comes to patent infringement ,foreigners and
with the rule on reciprocity you look at if the country where the
alleged infringer is from is a member country of the paris
convention or if their local law also extends the same benefit the
foreigner can file an action for infringement.
What are the rules on damages in an action or infringement?
1. No damages can be recovered for acts of infringement
committed more than four (4) years before the filing of the
action for infringement. (Sec. 79, IPC)
2. Damages cannot be recovered for acts of infringement
committed before the infringer had known, or had
reasonable grounds to know of the patent. It is presumed
that the infringer had known of the patent if on the patented
product, or on the container or package in which the article
is supplied to the public, or on the advertising material
relating to the patented product or process, are placed the
words “Philippine Patent” with the number of the patent.
(sec. 80)
When is the prescriptive period?
 The criminal action prescribes in three (3) years from
the commission
SCENARIO: B has invented a flying car and was able to
institute a patent. In creating the invention A has been
helping B out with the component that helps it fly and
eventually A and B got in bad terms so they parted ways and
then A found another person, C who almost has the same
invention as B but the car is not yet flying. A helped C out
and they were subsequently able to produce the same
invention for a lower pric,e is C liable for patent
infringement? YES. Sec 76.6

Anyone who actively induces the infringement of a patent or

provides the infringer with a component of a patented product or
of a product produced because of a patented process knowing it to
be especially adopted for infringing the patented invention and not
suitable for substantial non-infringing use shall be liable as a
contributory infringer and shall be jointly and severally liable with
the infringer.

In this case C is the infringer and A is the contributor to the

infringer. The flying car was invented without knowing that
C already have an insisting patent for the same product and
then C instituted an action for patent infringement against A
so he got scared and called-off and pulled-out the product
production is there liability for patent infringement? NO. Sec.
80

Damages cannot be recovered for acts of infringement committed

before the infringer had known, or had reasonable grounds to
know of the patent. It is presumed that the infringer had known of
the patent if on the patented product, or on the container or
package in which the article is supplied to the public, or on the
advertising material relating to the patented product or process,
are placed the words “Philippine Patent” with the number of the
patent.

What is repetition of 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.

Can you petition for a cancellation of a patent in an

infringement suit so in the same case?

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.

Grounds for cancellation of patents:

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

RECAP: Sec. 21 is very important, memorize inventive step,

industrial applicability, elements of patentability.

Next lesson : Licensing