I.

DISCUSS THE FOLLOWING:

1. WHAT ARE THE ELEMENTS OF PATENTABLE INVENTIONS?

The elements of patentable inventions are novelty, inventive step, and industrial applicability.

Novelty is synonymous with originality. Thus, an invention shall not be considered new if it forms part
of a prior art. Inventive step is the concept of non-obviousness. It means that it should not be obvious to a
person skilled in the art at the time of the filing date or priority date of the application. An invention is
industrially applicable if it can be produced and used in any industry.

2. WHAT IS THE PRINCIPLE OF RECIPROCITY AS APPLIED IN IP PROTECTION?

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. (Section 3, RA 8293)

3. IS IT POSSIBLE FOR A SINGLE ITEM OF COMMERCE ENJOYS SIMULTANEOUS PROTECTION

UNDER THE PH LAWS ON TRADEMARK, PATENT, AND COPYRIGHT? ILLUSTRATE IF
NECESSARY.

No. The three legal rights are complete distinct and separate from one another, and the protection
afforded by one cannot be use interchangeable to cover items or works that exclusively pertain to the other.

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged
with one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or services
(service mark) of an enterprise and shall include a stamped or marked container of goods. In relation thereto, a
trade name means the name or designation identifying or distinguishing an enterprise. 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. (Elidad Kho vs. CA, Pearl and Dean Inc. vs. Shoemart)

4. DISTINGUISH FIRST TO FILE RULE FROM FIRST TO INVENT RULE IN PATENT APPLICATION.
FIRST TO FILE RULE FIRST TO INVENT RULE
If two (2) or more persons have made the invention Inventor has no common-law right to a monopoly of
separately and independently of each other, the right his invention. He has the right to make, use and vend
to the patent shall belong to the person who filed an his own invention, but if he voluntarily discloses it,
application for such invention, or where two or more such as by offering it for sale, the world is free to
applications are filed for the same invention, to the copy and use it with impunity. (Creser Precision
applicant who has the earliest filing date or, the Systems vs. CA, GR 118708)
earliest priority date. It gives the inventor the right to
exclude all others. As a patentee, he has the exclusive
right of making, using or selling the invention.

5. DISCUSS THE RULES ON THE OWNERSIP OF PATENT RIGHTS. ILLUSTRATE IF NECESSARY.

The following are the rules on ownership:

 a. 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.
b. If two (2) or more persons have made the invention separately and independently of each other, the right
to the patent shall belong to the person who filed an application for such invention, or where two or
more applications are filed for the same invention, to the applicant who has the earliest filing date or, the
earliest priority date.
c. The person who commissions the work shall own the patent, unless otherwise provided in the contract.
d. In case the employee made the invention in the course of his employment contract, the patent shall
belong to:
(i) 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.
(ii) 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.

6. DISTINGUISH NON PREJUDICIAL DISCLOSURE IN PATENT AND UTILITY MODEL

PATENT UTILITY MODEL

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:
(a) The inventor;
(b) A patent office and the information
was contained (a) in another
application 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 which
obtained the information directly or
indirectly from the inventor; or
(c) A third party which obtained the
information directly or indirectly
from the inventor.
The disclosure of information contained in the utility model
application during the twelve (12) months preceding the filing
date or priority date of the application shall not prejudice the
applicant on the ground of lack of novelty if such disclosure
was made by:
(a) The maker or any person who, at the time of the date of
filing, has the right to the registration;
(b) A foreign patent office, the Bureau, or the Office, and such
information was contained in:
(i) another application filed by the maker and should have
not been disclosed by the Office; or
(ii) an application filed without the knowledge or consent
of the maker or the designer by a third party which
obtained the information directly or indirectly from the
maker or designer; or
(c) A third party which obtained the information directly or
indirectly from the maker, provided further that all foreign
patent offices that publish pending patent applications, as
well as the WIPO which publishes patent applications filed
through the PCT are excluded therefrom.

II. IDENTIFICATION:

1. HEARS AND DECIDES CANCELLATION OF PATENTS, UTILITY MODELS, AND INDUSTRIAL

DESIGN
- Bureau of Legal Affairs (Sec. 10.1, RA 8293)

2. EXERCISES EXCLUSIVE APPELLATE JURISDICTION OVER DECISIONS RENDERED BY THE

DIRECTOR OF PATENT
- Director General (Sec. 7.1.b, RA 8293)
3. HAS APPELLATE JURISDICTION OVER DECISIONS RENDERED BY THE DIRECTOR GENERAL
OF THE IPO.
- Court of Appeals (Sec. 7.1.b, RA 8293)

4. APPLICATION FOR PATENT SHOULD RELATE TO ONE INVENTION ONLY OR TO A GROUP OF

INVENTIONS FORMING A SINGLE GENERAL INVENTIVE CONCEPT
- Unity of Invention (Sec. 38.1, RA 8293)

5. HE HAS THE AUTHORITY TO GRANT COMPULSORY LICENSING OVER INVENTIONS.

- Director of Legal Affairs (Sec. 93, RA 8293) *RA8293 effective 1998;
- Director General (Sec. 10, RA 9502) * RA 9502 effective 2008
****per discussion, Bureau of Legal Affairs has jurisdiction over compulsory licensing

Briefly discuss the following:

1. What are the elements of patentable inventions?

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. (Sec. 7, R.A. No. 165a)

SEC. 23. Novelty. - An invention shall not be considered new if it forms part of a prior art. (Sec. 9, R.A.
No. 165a)

SEC. 24. Prior Art. - Prior art shall consist of:

24.1. 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

24.2. The whole contents of an application for a patent, utility model, or industrial design registration,
published in accordance with this Act, filed or effective in the Philippines, with a filing or priority date
that is earlier than the filing or priority date of the application: Provided, That the application which has
validly claimed the filing date of an earlier application under Section 31 of this Act, shall be prior art
with effect as of the filing date of such earlier application: Provided further, That the applicant or the
inventor identified in both applications are not one and the same. (Sec. 9, R.A. No. 165a)

SEC. 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.
(n)

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 known process unless such known process results in a
new product that employs at least one new reactant.
 SEC. 27. Industrial Applicability. - An invention that can be produced and used in any industry shall be
industrially applicable. (n)

2. What is the Principle of Reciprocity as applied in intellectual property protection?

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. (n)

3. Is It possible for a single item of commerce enjoys simultaneous protection under the Philippines laws on
trademark, patent, and copyright? Illustrate if necessary.

4. Distinguish First-to-File Rule from First-to-Invent Rule in patent application.

SEC. 28. Right to a Patent. - The right to a patent belongs to the inventor, his heirs, or assigns. When
two (2) or more persons have jointly made an invention, the right to a patent shall belong to them
jointly. (Sec. 10, R.A. No. 165a)

SEC. 29. First to File Rule. - If two (2) or more persons have made the invention separately and
independently of each other, the right to the patent shall belong to the person who filed an application
for such invention, or where two or more applications are filed for the same invention, to the applicant
who has the earliest filing date or, the earliest priority date. (3rd sentence, Sec. 10, R.A. No. 165a.)

5. Discuss the rules on the ownership of patent rights. Illustrate, if necessary.

RIGHT TO A PATENT

SEC. 28. Right to a Patent. - The right to a patent belongs to the inventor, his heirs, or assigns. When
two (2) or more persons have jointly made an invention, the right to a patent shall belong to them
jointly. (Sec. 10, R.A. No. 165a)

SEC. 29. First to File Rule. - If two (2) or more persons have made the invention separately and
independently of each other, the right to the patent shall belong to the person who filed an application
for such invention, or where two or more applications are filed for the same invention, to the applicant
who has the earliest filing date or, the earliest priority date. (3rd sentence, Sec. 10, R.A. No. 165a.)

SEC. 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. (n)

SEC. 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)

ASSIGNMENT AND TRANSMISSION OF RIGHTS

SEC. 103. Transmission of Rights. –

103.1. Patents or applications for patents and invention to which they relate, shall be protected in the
same way as the rights of other property under the Civil Code.

103.2. Inventions and any right, title or interest in and to patents and inventions covered thereby, may be
assigned or transmitted by inheritance or bequest or may be the subject of a license contract. (Sec. 50,
R.A. No. 165a)

SEC. 104. Assignment of Inventions. - An assignment may be of the entire right, title or interest in and
to the patent and the invention covered thereby, or of an undivided share of the entire patent and
invention, in which event the parties become joint owners thereof. An assignment may be limited to a
specified territory. (Sec. 51, R.A. No. 165)

6. Distinguish non-prejudicial disclosure in patent and utility model.

Patent

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:

(a) The inventor;

(b) A patent office and the information was contained (a) in another application 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 which obtained the information directly or indirectly from the
inventor; or
(c) A third party which obtained the information directly or indirectly from the inventor.

25.2. For the purposes of Subsection 25.1, "inventor" also means any person who, at the filing date of
application, had the right to the patent. (n)

Essay:
1. Pedro developed and invented a chemical process in the field of chemical science. As of filing date, there
is no known and definite use of his product. Pedro is merely anticipating its useful application in the future.
Will the patent application be granted?

No, the patent application will not be granted.

Under Section 21 of RA 8293 as amended. Patentable Inventions are Any technical solution of a
problem in any field of human activity which is new, involves an inventive step and is industrially
applicable.

In this case, the product developed by Pedro has no known and definite use as of the filing date. If a
developed and invented product is not industrially applicable, it lacks one of the requisites of patentable
inventions. Therefore, the patent application will not be granted. Further, under RA 8293, when filing a
patent application, it must clearly and concisely define the matter for which patent protection is sought
to in the “claim” part of the patent application.

2. Pedro invented a certain device which converts/purifies rainwater into a distilled water. He started
producing his invention on commercial scale without securing any patent protection from the IPO. An
Ingenious Juan bought the invention of Pedro, dismantled and studied It, and not long thereafter had been
manufacturing the same device. Juan secured a patent registration over the said device. As the legal
counsel for Pedro, dismantled and studied it, and not long thereafter had been manufacturing the same
device. Juan secured a patent registration over the said device.

If I were the legal counsel of Pedro, I will advise him to file a petition for cancellation of the patent that was
issued in favor of Juan.

One of the grounds for the filing of petition for cancellation of patent is that the patented invention is not
new and it is filed by the interested party. An invention is not considered new if constitutes a prior art as
when the invention has been made available to the public not only in the Philippines but anywhere in the
world prior to the filing date or priority date of a patent application.

In the case, the patent issued in favor of Juan is not new as it has been made available to the public in the
Philippines because it was even produced in commercial scale. Further, Pedro is interested in the case as it
was actually him who actually came up with the invention.

Hence, Pedro may file a petition for the cancellation of the patent in favor of Juan.

3. Pedro is a grantee of patent certificate over a power tiller and the said patent right was assigned in favor
of ABC Corporation. ABC Corporation then manufactured and sold the mentioned power tillers with the
power certificate imprinted on them. Few years from production, ABC Corporation suffered a significant
decline in sales. Upon investigation, ABC Corporation discovered that the power tillers similar to those
patented In the name of Pedro were being produced and sold by Juan. ABC Corporation then filed an
action for patent infringement against Juan. Will the action prosper?

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. (Godines v
CA G.R. No. 97343 September 13, 1993)

4. Pedro was granted by the Bureau of Patents of a patent certificate covering an aerial fuze. Pedro
discovered that Juan submitted samples of his aerial fuze to the AFP for testing. Juan was claiming that
the said aerial fuze was his own and planning to bid and manufacture the same commercially without
authorization from Pedro. To protect his rights, Pedro sent a letter to Juan reminding the latter of his
existing patent and his rights thereunder, warning Juan of a possible court action should it proceed with
the scheduled testing by the military.

 In response thereto, Juan filed a complaint for Injunction and damages against Pedro before the RTC. As
the trial court Judge, how will you decide on the matter?

As the trial court judge, I will not grant the injunction and damages.

Juan 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 Pedro. While Juan 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. Under American jurisprudence, an inventor has no
common-law right to a monopoly of his invention. He has the right to make, use and vend his own
invention, but if he voluntarily discloses it, such as by offering it for sale, the world is free to copy and
use it with impunity. A patent, however, gives the inventor the right to exclude all others. As a patentee,
he has the exclusive right of making, using or selling the invention.
Further, the remedy of declaratory judgment or injunctive suit on patent invalidity relied upon by Juan
cannot be likened to the civil action for infringement under Section 42 of the Patent Law. The reason for
this is that the said remedy is available only to the patent holder or his successors-in-interest. Thus,
anyone who has no patent over an invention but claims to have a right or interest thereto cannot file an
action for declaratory judgment or injunctive suit which is not recognized in this jurisdiction. Said
person, however, is not left without any remedy. He can, under Section 28 of the aforementioned law,
file a petition for cancellation of the patent within three (3) years from the publication of said patent with
the Director of Patents and raise as ground therefor that the person to whom the patent was issued is not
the true and actual inventor. Hence, petitioner's remedy is not to file an action for injunction or
infringement but to file a petition for cancellation of private respondent's patent. Petitioner however
failed to do so. As such, it cannot now assail or impugn the validity of the private respondent's letters
patent by claiming that it is the true and actual inventor of the aerial fuze.
 Thus, as correctly ruled by the respondent Court of Appeals in its assailed decision: "since the petitioner
(private respondent herein) is the patentee of the disputed invention embraced by letters of patent UM
No. 6938 issued to it on January 23, 1990 by the Bureau of Patents, it has in its favor not only the
presumption of validity of its patent, but that of a legal and factual first and true inventor of the
invention."

In the case of Aguas vs. De Leon, 16 we stated that:

The validity of the patent issued by the Philippine Patent Office in favor of the private respondent and
the question over the investments, novelty and usefulness of the improved process therein specified and
described are matters which are better determined by the Philippines Patent Office. The technical Staff
of the Philippines Patent Office, composed of experts in their field, have, by the issuance of the patent in
question, accepted the thinness of the private respondent's new tiles as a discovery. There is a
presumption that the Philippine Patent Office has correctly determined the patentability of the
improvement by the private respondent of the process in question. (G.R. No. 118708. February 2,
1998CRESER PRECISION SYSTEMS, INC., v. COURT OF APPEALS AND FLORO
INTERNATIONAL CORP.)

5. Pedro is a patent owner of a certain Invention. He discovered that his invention Is being Infringed by Juan.
In the action for patent infringement, Juan claimed the following defenses: a) he has no intent to infringe
or has acted in good faith; b) the action was not really an invention which is patentable; and 3) there was
no exact duplication of the patentee's existing patent as there was Improvements introduced.

a. What are the remedies available to Pedro against Juan?

The remedies of Pedro are the following:

1. Pedro may demand from Juan to stop from performing acts that may infringe the patent
issued in favor of Pedro.
2. Civil action for infringement. This is available to any patentee or anyone possessing any
right, title or interest in and to the patented invention, whose rights have been infringed. In this
action, he may seek to recover from the infringer such damages sustained thereby including
attorney’s fees and that he may secure an injunction for the protection of his right so that the
infringer may be prevented from the production of the invention patented.
3. Criminal Action for infringement. When the infringer is found to be liable for the civil
action for infringement, the person prejudiced in the infringement may now file a criminal action for
infringement. Criminal action for civil infringement may not be instituted without having first
obtain a judgment against the infringer in a civil action.

b. If you are the lawyer for the infringement suit, what defenses that your client can assert?
If I were the lawyer for the defense, my client may assert or claim the following:
1. That the invention is not new or patentable;
2. 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;
3. The patent is contrary to public order or morality;
4. That the patent is invalid;
5. That a patent has been issued in favor of my client Juan, with an earlier filing or priority
date.

c. Were the defenses raised by Juan tenable?

1. As to the claim that he has no intention to commit the act or that he acted in good faith, this defense
cannot be considered as the nature of the violation of the Intellectual Property Code is one of mala
 prohibita. Hence, infringement being a crime mala prohibita, good faith nor lack of intention is not a
proper defense.
2. As to the defense that the invention is not patentable, this is tenable as one sued in an infringement
case may raise that the invention lacks the elements of novelty, being an inventive step and industrially
applicable.
3. As to the third defense that there was an improvement, this is tenable as patent protection afforded to
Pedro extends only to the making, using, sale, selling or importing of a patented invention and not to the
improvement of the same.

6. Pedro applied for a patent on his invention that is related in the field of engineering. Upon application
with the Bureau of Patent, the patent examiner declined his application on the ground that the said
invention lacked the element of inventive step. Upon appeal to the Director of Patents, Engr. Pedro objected
to the examiner's appreciation of the testimony of Engr. Juan, a university professor in the field of
engineering, instead of the testimonies of three (3) non-engineer witnesses who all declared and claimed
the uniqueness and originality of the invention. Engr. Pedro contended that his invention, though
expectedly obvious to an engineer like him, is not at all obvious to non-engineers whom he plans to market
and sell his invention. Decide.

The contention of Engr. Pedro is untenable.

SEC. 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. (n)

Rule 206. Inventive Step. –

(a) An invention involves an inventive step if, having regard to the 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).
(b) Only prior art made available to the public before the filing date or priority date
shall be considered in assessing inventive step. (Revised Implementing Rules and Regulations for Patents,
Utility Models, and Industrial Designs)

Rule 207. Person Having Ordinary Skills in the Art. – The person having ordinary
skills in the art is presumed to be an ordinary practitioner aware of what is common general knowledge in
the art at the relevant date. 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 Implementing Rules and
Regulations for Patents, Utility Models, and Industrial Designs)

7. Pedro owns and operates a drugstore. Upon a verified complaint, a raiding team composed of NBI
operatives and FDA inspectors raided Pedro's establishment and confiscated certain drugs and medicines
classified as "counterfeit drugs". Under the law, unregistered imported drugs are classified as counterfeit
drugs. Upon further investigation, it was revealed that the confiscated drugs were imported directly from
abroad, and not from the patent owner of the drugs here in the Philippines. Is Pedro liable for patent
Infringement for Importing the said drugs?

No, Pedro is not liable for patent Infringment.

SEC. 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;

8. The double burner gas stove of Pedro which has been granted an industrial design registration is being
challenged by Juan who claimed that the some should be cancelled on the ground that it Is not new,
original, and ornamental as required by law, being substantially the same as the gas stove of Juan. Upon
examination, the outside appearance of the two (2) gas stoves are substantially the same, except for the
sides and rear panels which can hardly be seen at first glance.

 Will the action of Juan be favorably acted upon?

No, the action of Juan may not be favorably acted upon.

In order to be registrable, an industrial design must be any new or original creation relating to the
ornamental features of shape, configuration, form, or combination thereof, of an article of manufacture,
whether or not associated with lines, patterns or colors, which imparts an aesthetic and pleasing
appearance to the article. The design which is embodied in any composition of lines, patterns or colors
must be inseparable from the article and cannot exist alone merely as a scheme of surface ornamentation.

In this case, the design of the gas stove of Pedro and Juan are substantially the same on the outside
appearance except for the sides and rear panels which can hardly be seen at first glance. Such that the
industrial design is not considered new because the difference in the designs are only minor in respects
that it can be mistaken as such the same design by an ordinary observer.

However, the law also provides that If two or more persons have made the same design separately and
independently of each other, the right to the design registration shall belong to the person who filed an
application for such design, or where two or more applications are filed for the same design to the
applicant who has the earliest filing date or the earliest priority date.

Pedro, being the first to file an application for such design has the right to prevent third parties from
making, selling or importing articles bearing or embodying a design which is a copy, or substantially a
copy, of the protected design, when such acts are undertaken for commercial purpose.
INDUSTRIAL DESIGNS

Rule 300. 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 should give a special appearance to and can serve as pattern for an industrial
product or handicraft that are new or original.

Rule 301. Requisites for registrability of industrial design. In order to be registrable, an industrial design
must be any new or original creation relating to the ornamental features of shape, configuration, form, or
combination thereof, of an article of manufacture, whether or not associated with lines, patterns or colors,
which imparts an aesthetic and pleasing appearance to the article. The design which is embodied in any
composition of lines, patterns or colors must be inseparable from the article and cannot exist alone merely
as a scheme of surface ornamentation.

An article of manufacture is defined as anything which belong to the useful or practical art or any part
including thereof which can be made and sold separately.

Industrial designs that are dictated essentially by technical or functional considerations to obtain a
technical result or those that are contrary to public order, health or morals, are not registrable.

Rule 301.1. Requisites for registrability explained. The object of the statute is to encourage the
decorative arts and a design, which merely pleases the eye, is a proper subject matter for a design
registration. That is to say, a registrable design must not only be new or original, but ornamental as
well. Ornamentation implies beauty, the giving of a pleasing appearance to an object or article.
Registrable design must therefore show a variance which enhances the aesthetic beauty and attractive
appearance of the article and which significantly differs from known design features or combination of
known design features.

Rule 302. Degree of novelty required. The standard of novelty established by Sections 23 (Novelty) and
25 (Non-prejudicial disclosure) of the IP Code applies to industrial designs: provided that the period of
twelve (12) months specified in Section 25 shall be six (6) months in the case of designs.

An industrial design shall not be considered new if it differs from prior designs only in minor respects
that it can be mistaken as such prior designs by an ordinary observer.

Rule 303. Filing date of industrial design application. The Bureau shall accord as the filing date of an
application for industrial design registration the date on which the Bureau received the following
elements :

(a) Indications allowing the identity of the applicant to be established; and

(b) A representation of the article embodying the industrial design or a pictorial representation thereof.

If these requirements are not received by the Bureau upon the filing of the application, it shall
nevertheless accept the application and accord as the filing date the date on which all the formal
requirements for registration are filed or the mistakes are corrected in accordance with these Regulations.
 Rule 304. First to file rule. If two or more persons have made the same design separately and
independently of each other, the right to the design registration shall belong to the person who filed an
application for such design, or where two or more applications are filed for the same design to the
applicant who has the earliest filing date or the earliest priority date.

Pointer for Midterm Exam

1. Patentability
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. (Sec. 7, R.A. No. 165a)

SEC. 23. Novelty. - An invention shall not be considered new if it forms part of a prior art. (Sec. 9, R.A.
No. 165a)

SEC. 24. Prior Art. - Prior art shall consist of:

24.1. 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

24.2. The whole contents of an application for a patent, utility model, or industrial design registration,
published in accordance with this Act, filed or effective in the Philippines, with a filing or priority date
that is earlier than the filing or priority date of the application: Provided, That the application which has
validly claimed the filing date of an earlier application under Section 31 of this Act, shall be prior art
with effect as of the filing date of such earlier application: Provided further, That the applicant or the
inventor identified in both applications are not one and the same. (Sec. 9, R.A. No. 165a)

SEC. 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.
(n)

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 known process unless such known process results in a
new product that employs at least one new reactant.

SEC. 27. Industrial Applicability. - An invention that can be produced and used in any industry shall be
industrially applicable. (n)

2. Patent infringement problems

SEC. 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. (Secs. 38 and 39, R.A. No. 165a)

SEC. 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. (Sec. 40, R.A. No. 165a)

SEC. 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 a 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.

3. Definitions

EDMERSON = THE ORIGINAL CURVILICIOUS

ANNIE = YAKULTSOJULICIOUS
KREZEL = SOJULICIOUS WITH SONGS
JOHANNES = JOHANNELICIOUS
MARK = BONGBONGLICIOUS
FRITZIE = MS. KALINGALICOUS/ FRITZILICIOUS
IRIS = ARTEKLICIOUS
CRISEL = BUSYAKOLICIOUS
SHEKINAH = Ae…. Tea…. Owe.… Key.… LICIOUS.
JOHANNA = GLEESONLICIOUS
GLEESON = JOHANNALICIOUS
CHANTAL = VLOGGERLICIOUS
RESTON = PAPALICIOUS

4. Non patentable inventions

SEC. 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.

For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size,
isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known substance
shall be considered to be the same substance, unless they differ significantly in properties with regard to
efficacy;
(As amended by Republic Act No.9502 or the Universally Accessible Cheaper and Quality Medicines
Act of 2008)

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

22.6. Anything which is contrary to public order or morality. (Sec. 8,

R.A. No. 165a)

5. 2 tests of patent infringement

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. (Godines v
CA G.R. No. 97343 September 13, 1993)

6. Period of protection
SEC. 54. Term of Patent. - The term of a patent shall be twenty (20) years from the filing date of the
application.

SEC. 55. Annual Fees. - 55.1. To maintain the patent application or patent, an annual fee shall be paid
upon the expiration of four (4) years from the date the application was published pursuant to Section 44
hereof, and on each subsequent anniversary of such date. Payment may be made within three (3) months
before the due date. The obligation to pay the annual fees shall terminate should the application be
withdrawn, refused, or cancelled.

55.2. If the annual fee is not paid, the patent application shall be deemed withdrawn or the patent
considered as lapsed from the day following the expiration of the period within which the annual fees
were due. A notice that the application is deemed withdrawn or the lapse of apatent for non-payment of
any annual fee shall be published in the IPO Gazette and the lapse shall be recorded in the Register of
the Office.
 55.3. A grace period of six (6) months shall be granted for the payment of the annual fee, upon
payment of the prescribed surcharge for delayed payment. (Sec. 22, R.A. No. 165a)

SEC. 109. Special Provisions Relating to Utility Models. - 109.1 (a) An invention qualifies for
registration as a utility model if it is new and industrially applicable. b) Section 21, "Patentable
Inventions", shall apply except the reference to inventive step as a condition of protection.

109.2. Sections 43 to 49 shall not apply in the case of applications for registration of a utility model.

109.3. A utility model registration shall expire, without any possibility of renewal, at the end of the
seventh year after the date of the filing of the application.

SEC. 118. The Term of Industrial Design or Layout-Design Registration. - 118.1. The registration of an
industrial design shall be for a period of five (5) years from the filing date of the application.

118.2. The registration of an industrial design may be renewed for not more than two (2) consecutive
periods of five (5) years each, by paying the renewal fee.

118.3. The renewal fee shall be paid within twelve (12) months preceding the expiration of the period of
registration. However, a grace period of six (6) months shall be granted for payment of the fees after
such expiration, upon payment of a surcharge.

118.4. The Regulations shall fix the amount of renewal fee, the surcharge and other requirements
regarding the recording of renewals of registration.

118.5. Registration of a layout-design shall be valid for a period of ten

(10) years, without renewal, and such validity to be counted from the date of commencement of the
protection accorded to the layout-design. The protection of a layout-design under this Act shall
commence:
a) on the date of the first commercial exploitation, anywhere in the world, of the layout-design by
or with the consent of the right holder: Provided, That an application for registration is filed with the
Intellectual Property Office within two (2) years from such date of first commercial exploitation; or
b) on the filing date accorded to the application for the registration of the layout-design if the
layout-design has not been previously exploited commercially anywhere in the world.

7. Ownership of patent [who owns the patent; inventor, joint, and other qualifications]
RIGHT TO A PATENT
SEC. 28. Right to a Patent. - The right to a patent belongs to the inventor, his heirs, or assigns. When
two (2) or more persons have jointly made an invention, the right to a patent shall belong to them
jointly. (Sec. 10, R.A. No. 165a)

SEC. 29. First to File Rule. - If two (2) or more persons have made the invention separately and
independently of each other, the right to the patent shall belong to the person who filed an application
for such invention, or where two or more applications are filed for the same invention, to the applicant
who has the earliest filing date or, the earliest priority date. (3rd sentence, Sec. 10, R.A. No. 165a.)

SEC. 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. (n)

SEC. 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)

8. Remedies in case of patent infringement [5 remedies]

REMEDIES OF A PERSON WITH A RIGHT TO A PATENT

SEC. 67. Patent Application by Persons Not Having the Right to a Patent. - 67.1. If a person referred to
in Section 29 other than the applicant, is declared by final court order or decision as having the right to
the patent, such person may, within three (3) months after the decision has become final:
(a) Prosecute the application as his own application in place of the applicant;
(b) File a new patent application in respect of the same invention;
(c) Request that the application be refused; or
(d) Seek cancellation of the patent, if one has already been issued.

67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis to a new application filed under
Subsection 67.1(b). (n)

SEC. 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. (Sec. 33,
R.A. No. 165a)

SEC . 69. Publication of the Court Order. - The court shall furnish the Office a copy of the order or
decision referred to in Sections 67 and 68, which shall be published in the IPO Gazette within three (3)
months from the date such order or decision became final and executory, and shall be recorded in the
register of the Office. (n)

SEC. 70. Time to File Action in Court. - The actions indicated in Sections 67 and 68 shall be filed
within one (1) year from the date of publication made in accordance with Sections 44 and 51,
respectively. (n)