INTELLECTUAL PROPERTY - DIMAAMPAO REVIEWER NOTES

A. Patents o When 2+ jointly made invention,

- Three-fold purpose right belongs jointly.
(1) Foster and reward invention; - FIRST TO FILE RULE
(2) Promote disclosure of inventions to stimulate further innovation; and a) if 2+ persons have made an invention separately & independently of each
(3) Ensure that ideas in public domain remain for free public use. other, right to patent shall belong to person who filed application for such; or
a. Patentable vs. non-patentable inventions b) if 2+ applications filed for same invention, right belongs to applicant w/ earliest
- any technical solution of a problem in any The ff. are non-patentable: filing/priority date.
field of human activity that is: (a) new; (b) inv. (a) discoveries, scientific theories, & mathematical - DOCTRINE OF RIGHT OF PRIORITY
an inventive step; & (c) industrially applicable. methods;
- Term: 20 years from filing date of application. - on drugs & medicines: only innovations re-
o A patent filed by any person who has previously applied for the same invention
WHEN DO INVENTIONS INVOLVE AN INVENTIVE STEP? sulting in a new product employing at least in another country which by treaty, convention, or law affords similar
If, having regard to prior art, it is not obvious to a one (1) new reactant is PATENTABLE. privileges to Filipino citizens, shall be considered as filed as of the date of filing
person skilled in the art at the time of the filing/ (b) schemes, rules, methods of performing mental of the foreign application, provided that:
priority date of application claiming the invention. acts, playing games, or doing business, & pro- a) Local application expressly claims priority;
NON-PREJUDICIAL DISCLOSURE DOCTRINE: the dis- grams for computers;
closure of information contained in the application (c) methods for treatment of human/animal body
b) Filing within 12 months fr. date earliest foreign application was filed; and
during the twelve (12) months preceding the filing/ by surgery/therapy & diagnostic methods prac- c) A certified copy of the foreign application, together with an English
priority date of the application SHALL NOT prejudice ticed on human/animal body; translation, is filed within 6 months fr. date of filing in the Philippines.
the applicant on the ground of lack of novelty if such (d) plant varieties/animal breeds/essentially biolo- c. Grounds for cancellation of a patent
disclosure was made by: gical production processes of plants/ animals; 1.) Invalid patent;
a) The inventor; - EX: organisms, non-biological & microbiolo-
b) A patent office & the information was contained: gical processes.
2.) Patent not new or patentable;
1. In another application filed by inventor, and (e) aesthetic creations; and 3.) Patent does not disclose the invention in a manner sufficiently clear and complete
should not have been disclosed by office; or (f) anything contrary to public order or morality. for it to be carried out by any person skilled in the art; and
2. In application filed, w/o knowledge/consent
PREJUDICIAL DISCLOSURE DOCTRINE: right of patent 4.) Patent was issued to one who was not the true and actual inventor.
of inventor, by a 3rd party who obtained info d. Patent infringement
arises from application date; ideas, once disclosed to
directly/indirectly from the inventor; or
c) A third party who obtained the information
the public w/o the protection of a valid patent, are - (1) the making, using, offering for sale, selling, or importing of a patented product or
subject to appropriation without significant restraint. a product obtained directly/indirectly fr. a patented process; or (2) the use of a paten-
directly/indirectly from the inventor.
- Presumption of Patentability – arises once a patent issued by IPO. ted process without the authorization of the patentee.
- Presumption of Existence – notice or knowledge of existence of patent presumed o TESTS
when patented product, or container or package thereof, or advertising material rel. 1.) LITERAL INFRINGEMENT – W/N there is exact identity of material elements; and
to the patented product or process, contained the words “Phil. Patent” w/ patent #. 2.) DOCTRINE OF EQUIVALENTS – W/N a device appropriates a prior invention by incorpo-
b. Ownership of a patent rating its innovative concept and, although with some modification and change,
- Who has the right to a patent? - Assignment of Patent Rights performs substantially the same FUNCTION in substantially the same WAY to achieve
o INVENTOR, HIS HEIRS, OR ASSIGNS 1. Must be in writing; and substantially the same RESULT.
2. Must be duly notarized. § also known as function-means-result test
 INTELLECTUAL PROPERTY - DIMAAMPAO REVIEWER NOTES
o REMEDIES
1.) Action in court for substitution as patentee, or cancellation of patent; and
2.) Suit for patent infringement + injunction for protection of rights + damages.
B. Trademarks
- Three-fold purpose
(1) Indicate origin/ownership of articles to which attached;
(2) Guarantee those articles come up to a certain standard of quality; and
(3) Advertise articles symbolized,
a. Marks vs. collective marks vs. trade names
- TRADEMARK – any visible sign capable of distinguishing goods (TRADEMARK) or ser-
vices (SERVICE MARK) of an enterprise; shall inc. stamped/marked container of goods.
o may inc. any word, name, symbol, emblem, sign or device or any combination
thereof adopted and used by a manufacturer or merchant to identify his goods
and distinguish them fr. those manufactured/sold/dealt in by others.
- TRADE NAME – name or designation identifying or distinguishing an enterprise, in
reference to its business and goodwill.
o may inc. individual names & surnames, firm names, devices or words used to
identify business/vocations/occupations; the names/titles lawfully adopted &
used by natural/juridical persons, unions, and any manufacturing, industrial,
commercial, agricultural or other organizations engaged in trade/commerce.
b. Acquisition of ownership
i. Concept of actual use
- registrants required to file DECLARATION OF ACTUAL USE and evidence to that effect,
or show valid reasons based on the existence of obstacles to such use, within one (1)
year from the fifth anniversary of the date of registration of the mark;
o failure to comply shall warrant removal of mark fr. Register by IPO,
ii. Effect of registration
- the rights in a mark shall be acquired through registration with the IPO.
o Operative Act: Filing date of application
- Term: 10 years, subj. to indefinite renewals of up to 10 years each.
c. Well-known marks
- Section 131.3, IPC: the owner of a well-known mark in the PH, that is identical w/, or
confusingly similar to, or constitutes a translation of a mark, although not registered,
may oppose the application of a mark of foreign origin, or petition the cancellation of
its registration or sue for unfair competition;
- Section 123.1(e), IPC: marks considered by the competent authority of the Philippines
to be well-known internationally and in the Philippines, whether or not it is registered
here, cannot be registered by another in the Philippines.
- Theory of Trademark Dilution
o The lessening of the capacity of a famous mark to identify and distinguish
goods or services, regardless of the presence or absence of:
a. competition bet. owner of famous mark & other parties; and
b. likelihood of confusion/mistake/deception.
- Criteria to Det. W/N MARK Well-Known
a. Duration, extent, geographical area of any use of the mark;
b. Market shares of goods and/or service to w/c mark applies;
c. Degree of inherent/acquired distinction;
d. Quality-image/reputation;
e. Extent to w/c mark registered;
f. Exclusivity of registration;
g. Extent to w/c mark has been used;
h. Commercial value attributed;
i. Outcome of litigations dealing w/ issue of w/n mark well-known;
j. Record of successful protection of rights; and
k. Presence/absence of identical/similar marks validly reg’d for or
used on identical/similar goods/services and owned by persons
other than one claiming his mark well-known.
d. Rights conferred by registration
- The owner of a registered mark shall have the exclusive right to:
(a) Use mark for one’s own goods or services; and
(b) Prevent 3rd parties fr. using, w/o his consent, signs or containers which are identical or
similar to the registered trademark, likely resulting in confusion.
- Presumption of Likelihood of Confusion – shall arise whenever there is use of an
identical sign for identical goods or services.
e. Cancellation of registration
- The following marks cannot be registered:
 INTELLECTUAL PROPERTY - DIMAAMPAO REVIEWER NOTES
(a) Consists of immoral/deceptive/scandalous matter, or disparages/falsely suggests connec-
tion w/ persons living/dead, institutions, beliefs, or nat’l symbols, or brings them into con-
tempt/disrepute;
(b) PH/foreign flag/coat of arms/other insignia of any of its political subdivisions, or any
simulation thereof;
(c) Name, portrait, or signature identifying a particular living individual, except by his written
consent, or the name, signature, or portrait of a deceased President of the Philippines,
during the life of his widow, if any except by the written consent of the widow;
(d) Mark identical with a registered mark, or a mark with an earlier filing or priority date, in
respect of:
i. Same goods/services;
ii. Closely related goods/services; or
iii. If it nearly resembles such a mark as to likely deceive or cause confusion.
(e) Identical with, or confusingly similar to a mark w/c is well-known internationally and in
PH, W/N registered here, and used for identical or similar goods or services;
o Consider knowledge of the relevant sector of the public, not public at large.
(f) Identical with, or confusingly similar to a mark considered well-known in accordance w/
the preceding paragraph, w/c is registered in the PH. w/ respect to goods or services w/c
are not similar to those w/ respect to w/c registration is applied for;
o Use of mark indicates connection bet. goods/services & owner of reg’d mark–
most likely damaging interests of the latter.
(g) Likely to mislead public, in re: nature, quality, characteristics, or geographical origin of
goods or services;
(h) Generic signs;
(i) Customary signs/those used in everyday language;
(j) Characteristics of goods, i.e. kind, quality, quantity, etc.;
(k) Shapes
(l) Color by itself; or
(m) Contrary to public order or morality.
f. Trademark infringement
- takes place whenever any person shall, without the consent of the owner of the
registered mark:
a.) Use in commerce/sell/offer for sale/distribute/advertise any reproduction/counter-
feit/copy/colorable imitation of a registered mark or the same container or A
DOMINANT FEATURE thereof, which is likely to cause confusion/mistake/deception;
b.) Reproduce/counterfeit/copy/colorably imitate a registered mark or A DOMINANT
FEATURE thereof & apply the same to labels/signs/prints/packages/wrappers/recep-
tacles/advertisements intended to be used in commerce upon or in connection w/ the
sale/offering for sale/distribution/advertising of goods/services on or in connection
w/ w/c such use is likely to cause confusion/mistake.
- Elements:
a.) Trademark registration with the Intellectual Property Office;
o registration is not an element in TRADE NAME INFRINGEMENT.
§ Trade names shall be protected, even prior to or w/o IPO registration.
b.) Reproduction, counterfeiting, copying, or colorable imitation by infringer;
c.) Use in connection with the sale, offering for sale, or advertising of any goods; OR
application to labels, signs, prints, packages, wrappers, receptacles, or advertisement
intended to be used upon or in connection with such goods/business/services;
d.) Likelihood to cause confusion/mistake/deception to purchasers/others as to goods/
services themselves or as to source/origin of such or identity of the business; AND
e.) WITHOUT THE CONSENT of the trademark owner or his assignee.
distinguish CONFUSION OF GOODS from CONFUSION OF BUSINESS
- ordinarily prudent purcha- - though the goods of the parties are different, the
ser would be induced to infringer’s product is such as might reasonably be assumed
purchase one product in the to originate with the trademark owner, and the public
belief that he was purcha- would then be deceived either into that belief or the belief
sing the other. that there is some connection that does not exist.
- Tests to Determine Likelihood of Confusion/Colorable Imitation
o Test of Dominancy
§ Focus: similarity of main/prevalent/essential features
§ Question: W/N use of marks likely to cause confusion or deceive
purchasers.
o Holistic Test
§ Focus: predominant words + other features appearing on the labels
§ Question: W/N there is confusing similarity
 INTELLECTUAL PROPERTY - DIMAAMPAO REVIEWER NOTES

Trademark Infringement versus Unfair Competition C. Copyrights

Unauthorized use of a trademark ACT COVERED Passing off one’s goods as another’s
NOT Essential FRAUDULENT INTENT Essential
Required PRIOR REGISTRATION Not required
- Doctrinal Tests of Relatedness:
1.) Business (and its location) to w/c goods belong;
2.) Class of product to w/c goods belong;
3.) Product’s quality/quantity/size;
4.) Nature & cost of articles;
5.) Descriptive properties, physical attributes, or essential characteristics w/ ref to form,
composition, texture, or quality;
6.) Purpose of the goods;
7.) W/N article bought for immediate consumption;
8.) Field of manufacture;
9.) Conditions under w/c article usually purchased; and
10.) Channels of trade through w/c goods flow, how they are distributed, marketed,
displayed, & sold.
g. Unfair competition
- the passing off (or palming off) or attempting to pass off upon the public of the
goods or business of one person as the goods or business of another with the end
and probable effect of deceiving the public.
o Passing/Palming Off – where defendant, by imitative devices on the general
appearance of goods, misleads prospective purchasers into buying his mer-
chandise under the impression that they are buying that of his competitors.
o Ordinary Buyer – one accustomed to buy, thus, to some extent familiar with,
the goods in question.
- Elements:
a.) Confusing similarity in the general appearance of the goods; and
b.) Intent to deceive the public and defraud a competitor.
- Tests:
o W/N the acts of the defendant have the intent of deceiving
o W/N acts of defendant calculated to deceive ordinary buyer making his pur-
chases under ordinary conditions of part. trade to w/c controversy relates.
- the right to literary and artistic works, which are original intellectual creations in the
literary and artistic domain protected from the moment of their creation.
o registration IS NOT REQUIRED for copyright protection.
- Term: during the lifetime of the author + 50 years after his or her death.
a. Copyrightable works
1.) Literary & artistic works (those protected by the sole fact of their creation, irres-
pective of mode, form, content, quality, and purpose);
a. Books, pamphlets, articles, etc.;
b. Periodicals & newspapers;
c. Lectures, sermons, addresses, dissertations prepared for oral delivery;
d. Letters;
e. Dramatic/dramatico-musical compositions, choreographic works, entertain-
ment in shows;
f. Musical compositions;
g. Works of drawing/painting/architecture/sculpture/engraving/lithography or
other works of art, models or designs for works of art;
h. OG ornamental designs/modes for arts. of manufacture, & other works of
applied art;
i. Illustrations, maps, plans, sketches, charts, and 3-D works rel. to geography,
topography, architecture, or science;
j. Drawings or plastic works of a scientific or technical character;
k. Photographic works;
l. Audiovisual works & cinematographic works & works produced by a process
analogous to cinematography/making audio-visual recordings;
m. Pictorial illustrations & advertisements;
n. Computer programs; and
o. Other literary, scholar, scientific, and artistic works.
2.) Derivative works (those protected as new works, w/c shall not affect the force of any
subsisting copyright upon the OG works employed or any part thereof, or be
construed to imply any right to such use of the OG works, or to secure/extend
copyright in such OG works);
 INTELLECTUAL PROPERTY - DIMAAMPAO REVIEWER NOTES

a. Dramatizations, translations, adaptations, abridgements, arrangements, other d. Ownership of a copyright

alterations of literary/artistic works; and 1.) In case of original literary and artistic works – AUTHOR;
b. Collections of literary/scholarly/artistic works, & compilations of data & other 2.) In case of works of joint authorship – CO-AUTHORS, as co-owners;
mat’ls OG by reason of selection/coordination/arrangement of contents. a. in case of work consisting of pars that can be used separately, and the author
b. Non-copyrightable works of each can be identified, AUTHOR OF EACH PART, respectively.
1.) Any idea, procedure, system, method, or operation, concept, principle, discovery, or 3.) In case of work created in the course of his employment – EMPLOYEE or EMPLOYER;
mere data, which is expressed, explained, illustrated or embodied in a work; a. EMPLOYEE, if creation of object not part of regular duties; or
2.) News of the day & other misc. facts w/c are mere items of press information; b. EMPLOYER, if work result of performance of employee’s regularly-assigned
3.) Any official text of a legislative, administrative, or legal nature; duties, unless express or implied agreement states otherwise.
4.) Any work of the Gov’t of the Phils.; 4.) In case of work commissioned by a person other than employer – CREATOR;
5.) Statutes, rules, regulations; and a. however, ownership shall belong to PERSON WHO COMMISSIONED the work,
6.) Speeches, lectures, sermons, addresses, and dissertations, pronounced, read or unless there is written stipulation to the contrary.
rendered in courts of justice, before administrative agencies, in deliberative 5.) In case of audiovisual work – PRODUCER, AUTHOR, COMPOSER, DIRECTOR and
assemblies, and in meetings of public character. AUTHOR OF WORK adapted;
c. Rights conferred by copyright 6.) In case of letters – WRITER;
- Economic rights – consist of exclusive right to carry out/authorize/prevent ff. acts: 7.) In case of anonymous and pseudonymous works – AUTHOR.
1.) Reproduction of the work/substantial portion thereof; e. Limitations on copyright
2.) Dramatization, translation, adaptation, abridgement, arrangement, etc. of work; - The ff. acts shall NOT constitute infringement of copyright:
3.) First public distribution of the OG and each copy of the work by sale or other forms 1.) Recitation/performance of work, once lawfully made accessible to public, if done pri-
of transfer of ownership; vately & free of charge, or if made strictly for charitable/religious institution/society;
4.) Rental of OG/copy of audiovisual or cinematographic work, a work embodied in a 2.) Making of quotations fr. a pub’d work, provided source & name of author mentioned;
sound recording, a computer program, a compilation of data, and other materials or 3.) Reproduction/communication to public by mass media of articles on current poltical/
a musical work in graphic form, irrespective of the ownership of the OG or copy w/c social/economic/scientific/religious topic/lectures/addresses & other works of same
is relevant to the subject of the rental; nature, when delivered in public for information purposes, provided source indicated;
5.) Public display of original/copy of the work; 4.) Reproduction/communication to public of literary/scientific/artistic works as part of
6.) Public performance of the work; and reports of current events by means of photography/cinematography/broadcasting;
7.) Other communication to the public. 5.) Inclusion of a work in a publication, broadcast, or other communication to the public,
- Moral rights (waivable through written instrument; for as long as no prejudice results) sound recording, or film, if such inclusion is made by way of illustration for teaching
1.) Right to paternity and attribution; purposes and is compatible with fair use: provided source mentioned;
a. to require that the authorship of the works be attributed to him 6.) Recording made in schools/universities/educational institutions of work inc. in broad-
2.) Right to alteration and/or withhold publication; casts for use of such institutions, provided such shall be deleted some time after first
3.) Right to integrity; and broadcast & not be made fr. audiovisual works part of general cinema repertoire of
4.) Right to non-attribution. feature films, except brief excerpts of work;
 INTELLECTUAL PROPERTY - DIMAAMPAO REVIEWER NOTES

7.) Making of ephemeral recordings by a broadcasting organization by means of its own

facilities and for use in its own broadcast;
8.) Use made of work by/under direction/control of Gov’t/by Nat’l Library/by educa-
tional/scientific/professional institutions where such is in public interest + in line w/
fair use;
9.) Public performance/communication to public of a work, in a place where no admis-
sion fee is charged in respect of such public performance/communication, by a club /
institution for charitable or educational purpose only, whose aim is not profit-making;
10.) Public display of OG/copy of work not made by means of a film/slide/TV image,
etc. on screen or by means of any other device/process, provided either has been pub-
lished or OG/copy displayed has been sold/given away/transferred to another; AND
11.) Any use made of a work for the purpose of any judicial proceedings or for the
giving of professional advice by a legal practitioner.
f. Doctrine of fair use
- The fair use of a copyrighted work for criticism, comment, news reporting, teaching,
including multiple copies for classroom use, scholarship, research, and similar
purposes is NOT an infringement of copyright.
- Factors:
a.) Purpose and character of use;
b.) Nature of copyrighted work;
c.) Amt. & substantiality of the portion used in re: copyrighted work as whole; and
d.) Effect of use upon potential market for/value of copyrighted work.
g. Copyright infringement
- consists in the doing of any person, without the consent of the owner of the copyright,
of anything the sole right to do is conferred by statute on the owner of the copyright;
- a trespass on the private domain owned & occupied by the owner of the copyright.
- Test: W/N injurious effect was produced. (intent to injure is immaterial)
- Remedies in case of copyright infringement:
a.) Injunction to restrain infringement;
b.) Action for damages and loss of profit;
c.) Issuance of court order to seize, impound, and destroy all infringing copies or
devices; and
d.) Criminal liability.