Intellectual Property Law

Outlined Base on Bar Syllabus 2023

Cases under it
Prepared by: Raymund Larga Lumantao

Intellectual Property Code (R.A. No. 8293 )

1. Patents

Patentable Inventions-
Case title: ANGELITA MANZANO, petitioner,vs.COURT OF APPEALS, and MELECIA
MADOLARIA, as Assignor to NEW UNITED FOUNDRY MANUFACTURING CORPORATION,
respondents.
Case number: G.R. No. 113388 September 5, 1997

Issue: Whether or not lying on imaginary differences which in actuality did not exist between the
model of private respondent covered by Letters Patent No. UM-4609 and the previously known
model of Esso Standard Eastern, Inc., and Manila Gas Corporation, making such imaginary
differences grounded entirely on speculation, surmises and conjectures;

Ruling:
The Court ruled in the negative.

The Court ratiocinated the element of novelty is an essential requisite of the patentability of an
invention or discovery. If a device or process has been known or used by others prior to its
invention or discovery by the applicant, an application for a patent therefor should be denied;
and if the application has been granted, the court, in a judicial proceeding in which the validity of
the patent is drawn in question, will hold it void and ineffective.2 It has been repeatedly held that
an invention must possess the essential elements of novelty, originality and precedence, and for
the patentee to be entitled to the protection the invention must be new to the world.3

In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an "LPG Burner" on 22 July
1981, the Philippine Patent Office 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.4 Hence, a utility model shall not be considered "new" if
before the application for a patent it has been publicly known or publicly used in this country or
has been described in a printed publication or publications circulated within the country, or if it is
substantially similar to any other utility model so known, used or described within the country.

Non-Patentable Inventions

Case Title: E.I DUPONT DE NEMOURS AND CO., (assignee of inventors Carino, Duncia and Wong),
Petitioner vs.DIRECTOR EMMA C. FRANCISCO (in ger capacity as DIRECTOR GENERAL OF THE
INTELLECTUAL PROPERTY OFFICE), DIRECTOR EPIFANIO M. VELASCO (in his capacity as the
DIRECTOR OF THE BUREAU OF PATENTS, and THERAPHARMA, INC., Respondents
Case number: G.R. No. 174379 August 31, 2016
Issue: Whether or not the invention has already become part of public domain

Ruling:
The Court ruled in the negative.

The Court ratiocinated that the right of priority given to a patent applicant is only relevant when
there are two or more conflicting patent applications on the same invention. Because a right of
priority does not automatically grant letters patent to an applicant, possession of a right of
priority does not confer any property rights on the applicant in the absence of an actual patent.

Petitioner argues that its patent application was filed on July 10, 1987, within 12 months from
the prior filing of a U.S. patent application on July 11, 1986.158 It argues that it is protected from
becoming part of the public domain because of convention priority under the Paris Convention
for the Protection of Industrial Property and Section 9 of Republic Act No. 165. 159

Respondent Therapharma, Inc., on the other hand, argues that a mere patent application does
not vest any right in the applicant before the issuance of the patent.160 It argues that the
"priority date" argued by petitioner is only relevant in determining who has a better right to the
patent among the other applicants who subsequently apply for the same invention. 161

Under Section 31 of the Intellectual Property Code, a right of priority is given to any patent
applicant who has previously applied for a patent in a country that grants the same privilege to
Filipinos. Section 31 states:

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.
A patent applicant with the right of priority is given preference in the grant of a patent when there
are two or more applicants for the same invention. Section 29 of the Intellectual Property Code
provides:
SECTION 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.

Ownership of a Patent
Case title: ANGELITA MANZANO, petitioner,vs.COURT OF APPEALS, and MELECIA
MADOLARIA, as Assignor to NEW UNITED FOUNDRY MANUFACTURING CORPORATION,
respondents.
Case number: G.R. No. 113388 September 5, 1997

Issue: Whether or not lying on imaginary differences which in actuality did not exist between the
model of private respondent covered by Letters Patent No. UM-4609 and the previously known
model of Esso Standard Eastern, Inc., and Manila Gas Corporation, making such imaginary
differences grounded entirely on speculation, surmises and conjectures;

Ruling:
The Court ruled in the negative.
The Court ratiocinated the element of novelty is an essential requisite of the patentability of an
invention or discovery. If a device or process has been known or used by others prior to its
invention or discovery by the applicant, an application for a patent therefor should be denied;
and if the application has been granted, the court, in a judicial proceeding in which the validity of
the patent is drawn in question, will hold it void and ineffective.2 It has been repeatedly held that
an invention must possess the essential elements of novelty, originality and precedence, and for
the patentee to be entitled to the protection the invention must be new to the world.3

In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an "LPG Burner" on 22 July
1981, the Philippine Patent Office 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.4 Hence, a utility model shall not be considered "new" if
before the application for a patent it has been publicly known or publicly used in this country or
has been described in a printed publication or publications circulated within the country, or if it is
substantially similar to any other utility model so known, used or described within the country.

Grounds for Cancellation of a Patent

Case title: SPOUSES CRISPIN GALANG and CARlOAD GALANG, Petitioners,vs.

SPOUSES CONRADO S. REYES AND FE DE KASTRO REYES (As substituted by their legal
heir: Hermenigildo K. Reyes), Respondents.
Case number: G.R. No. 184746 August 8, 2012
Issue:

Remedy of the True and Actual Inventor

Case name: CRESER PRECISION SYSTEMS, INC., Petitioner, v. COURT OF APPEALS AND
FLORO INTERNATIONAL CORP., Respondents.
case title: G.R. No. 118708. February 2, 1998

Issue: Whether or not the motion for reconsideration filed by defendandt is tenable

Ruling:
The Court finds no sufficient cause to reconsider its order dated December 29, 1993. During the
hearing for the issuance of the preliminary injunction, the plaintiff has amply proven its
entitlement to the relief prayed for. It is undisputed that the plaintiff has developed its aerial fuze
way back in 1981 while the defendant began manufacturing the same only in 1987. Thus, it is
only logical to conclude that it was the plaintiffs aerial fuze that was copied or imitated which
gives the plaintiff the right to have the defendant enjoined from manufacturing, marketing and/or
selling aerial fuzes identical to those of the plaintiff, and from profiting therefrom and/or
performing any other act in connection therewith until further orders from this Court. With
regards to the defendants assertion that an action for infringement may only be brought by
anyone possessing right, title or interest to the patented invention, (Section 42, RA 165)
qualified by Section 10, RA 165 to include only the first true and actual inventor, his heirs, legal
representatives to assignees, this court finds the foregoing to be untenable. Sec. 10 merely
enumerates the persons who may have an invention patented which does not necessarily limit
to these persons the right to institute an action for infringement. Defendant further contends that
the order in issue is disruptive of the status quo. On the contrary, the order issued by the Court
in effect maintained the status quo. The last actual , peaceable uncontested status existing prior
to this controversy was the plaintiff manufacturing and selling its own aerial fuzes PDR 77 CB4
which was ordered stopped through the defendants letter. With issuance of the order, the
operations of the plaintiff continue. Lastly, this court believes that the defendant will not suffer
irreparable injury by virtue of said order. The defendants claim is primarily hinged on its patent
(Letters Patent No. UM-6983) the validity of which is being questioned in this case.

Rights Conferred by a Patent

Case Title: Smith Kline Beckman Corp. vs. Court of Appeals,

Case number: G. R. No.126627, 14 Aug 2003

Issue: Whether or not private respondent committed patent infringement to the prejudice of
petitioner

Ruling:
The Court ruled in the negative.
The burden of proof to substantiate a charge for patent infringement rests on the plaintiff. In the
case at bar, petitioner's evidence consists primarily of its letters Patent No. 14561, and the
testimony of Dr. Orinion, its general manager in the Philippines for its Animal Health Products
Division, by which it sought to show that its patent for the compound methyl 5 propylthio-2-
benzimidazole carbamate also covers the substance Albendazole.

Limitations of Patent Rights

Case title: Pearl & Dean (Philippines), Inc. vs. Shoemart, Inc.,
Case number: G.R. No. 148222

Issue: Whether the the light box depicted in such engineering drawings ipso facto also protected
by such copyright.

Ruling:
The Court ruled in the negative.
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

Patent Infringement

Case title: PHIL PHARMAWEALTH, INC., Petitioner,vs.PFIZER, INC. and PFIZER (PHIL.)
INC., Respondents.

Case number: G.R. No. 167715 November 17, 2010

Issue: Can an injunctive relief be issued based on an action of patent infringement when the
patent allegedly infringed has already lapsed?

Ruling:
No. The Court ruled that one a paten has already lapsed, an injunctive relief is no longer
available.
Legal basis: Section 37 of Republic Act No. (RA) 165,17 which was the governing law at the
time of the issuance of respondents' patent, provides:

Section 37. Rights of patentees. A patentee shall have the exclusive right to make, use and sell
the patented machine, article or product, and to use the patented process for the purpose of
industry or commerce, throughout the territory of the Philippines for the term of the patent; and
such making, using, or selling by any person without the authorization of the patentee
constitutes infringement of the patent.18

It is clear from the above-quoted provision of law that the exclusive right of a patentee to make,
use and sell a patented product, article or process exists only during the term of the patent. In
the instant case, Philippine Letters Patent No. 21116, which was the basis of respondents in
filing their complaint with the BLA-IPO, was issued on July 16, 1987. This fact was admitted by
respondents themselves in their complaint. They also admitted that the validity of the said
patent is until July 16, 2004, which is in conformity with Section 21 of RA 165, providing that the
term of a patent shall be seventeen (17) years from the date of issuance thereof. Section 4,
Rule 129 of the Rules of Court provides that an admission, verbal or written, made by a party in
the course of the proceedings in the same case, does not require proof and that the admission
may be contradicted only by showing that it was made through palpable mistake or that no such
admission was made. In the present case, there is no dispute as to respondents' admission that
the term of their patent expired on July 16, 2004. Neither is there evidence to show that their
admission was made through palpable mistake. Hence, contrary to the pronouncement of the
CA, there is no longer any need to present evidence on the issue of expiration of respondents'
patent.
.

Licensing

Case Title: Prince vs. United Laboratories, Inc

Case number: GR No. 82542

Issue: Whether or not in finding that the respondent possesses the legally required capability to
make use of the petitioner’s patented compound in the manufacture of a useful product;

Ruling:
The petition is for review is denied for lack of merit.

The terms and conditions of the compulsory license were fixed by the Director of Patents after a
hearing and careful consideration of the evidence of the parties and in default of an agreement
between them as to the terms of the... license. This he is authorized to do under Section 36 of
Republic Act No. 165 which provides:

The Court of Appeals found that the 2.5% royalty fixed by the Director of Patents "is just and
reasonable." We quote its observations hereunder:
Thus, said provision grants to the Director of Patents the use of his sound discretion in fixing the
percentage for the royalty rate and We find that the Director of Patents committed no abuse of
this discretion. Also, there is always a presumption of regularity in the... performance of one's
official duties.

"Moreover, what UNILAB has with the compulsory license is the bare right to use the patented
chemical compound in the manufacture of a special product, without any technical assistance
from herein respondent-appellant. Besides, the special product to be manufactured... by
UNILAB will only be used, distributed, and disposed locally. Therefore, the royalty rate of 2.5%
is just and reasonable." (pp. 10-11, CA Decision, pp. 44-45, Rollo)

Furthermore, as pointed out in the respondent's comment on the petition, identical terms and
conditions had been prescribed for the grant of compulsory license in a good number of patent
cases

The Director's finding that UNILAB has the capability to use the patented compound in the
manufacture of an anti-ulcer pharmaceutical preparation is a factual finding which is supported
by substantial evidence, hence, the Court of Appeals did not commit a reversible error in...
affirming it

NILAB has been engaged in the business of manufacturing drugs and pharmaceutical products
for the past thirty (30) years, that it is the leading drug manufacturer in the country, that it has
the... necessary equipment and technological expertise for the development of solid dosage
forms or for tablet, capsule, and liquid preparations, and that it maintains standards and
procedures to ensure the quality of its products. Even if it were true, as alleged by the patentee

(although it is denied by UNILAB), that its capability to use the patented compound was only
acquired after the petition for compulsory licensing had been filed, the important thing is that
such capability was proven to exist during the hearing of the petition.

The patented invention in this case relates to medicine and is necessary for public health as it
can be used as component in the manufacture of anti-ulcer medicine. The Director of Patents
did not err in granting a compulsory license over the entire patented invention for there... is no
law requiring that the license be limited to a specific embodiment of the invention, or, to a
particular claim. The invention in this case relates to new aminoalkyl derivatives which have
histamine H2 blocking activity, having the general formula (I) and physiologically... acceptable
salts, N-oxides and hydrates thereof. The compound ranitidine hydrochloride named in Claim 45
is also covered by General Claim I and several other sub-generic claims. Therefore, a license
for Claim 45 alone would not be fully comprehensive. In any event, since the... petitioner will be
paid royalties on the sales of any products the licensee may manufacture using any or all of the
patented compounds, the petitioner cannot complain of a deprivation of property rights without
just compensation.

Assignment and Transmission of Rights

Case title: - Feliciano vs. The Director of Patent,

Case number: G.R. No. L-4572, 22 May 1953

Issue: Whether or not the the motion to intervene by which he claims assignment of the
invention is proper

Ruling:
The Court denied the motion.

Assignments of patents and inventions covered thereby may be recorded in books and records
kept for the purpose in the Patent Office is presented in due form;3 but the appellant does not
ask for the registration of the alleged agreement between him and the inventors, because as it
is not in due form it cannot be recorded, but prays that the Director of Patents compel applicant-
inventor Maximo B. Tapinio to sign the contract executed and signed by the other applicant-
inventor Dolorito M. Feliciano on 14 March 1950 (Appendix I) and both applicant-inventors to
acknowledge it and another document which by all indication refers to the minutes of a meeting
of the organizers of the Manufacturing Corporation held on 30 March 1950, before a notary
public, and then to have both documents recorded in the Patent Office and in the office of the
Registrar of Deeds. Under the provisions of the Patent Law (Republic Act No. 165), the Director
of Patent has no power and authority to compel the applicant-inventors to do what the appellant
is asking them to perform. What the appellant asked the Director Patents to do for him is
essentially a judicial function which would require the determination or finding by a court of
competent jurisdiction as to whether there was a meeting of the minds of the contracting parties
before it could compel the applicant-inventors to perform what the appellant prays the court to
order them to do. Aside from want of authority and power, the Director of Patent lacks the
means to make such determination and finding which would be necessary before he could act
on the appellant's motion.

2. Trademarks

Marks vs. Collective Marks vs. Trade Names

Case name: Phillip Morris v. Fortune Tobacco
Case number: G.R. No. 158589 June 27, 2006

Issue:
(1) whether or not petitioners, as Philippine registrants of trademarks, are entitled to enforce
trademark rights in this country; and
(2) whether or not respondent has committed trademark infringement against petitioners by its
use of the mark "MARK" for its cigarettes, hence liable for damages.
Ruling:
The Court ruled in the negative.
The Court ratiocinated that a A "trademark" is any distinctive word, name, symbol, emblem,
sign, or device, or any combination thereof adopted and used by a manufacturer or merchant on
his goods to identify and distinguish them from those manufactured, sold, or dealt in by
others.11 Inarguably, a trademark deserves protection. For, as Mr. Justice Frankfurter observed
in Mishawaka Mfg. Co. v. Kresge Co.:12

The protection of trademarks is the law’s recognition of the psychological function of symbols. If
it is true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark
is a merchandising short-cut which induces a purchaser to select what he wants, or what he has
been led to believe what he wants. The owner of a mark exploits this human propensity by
making every effort to impregnate the atmosphere of the market with the drawing power of a
congenial symbol. Whatever the means employed, the aim is the same - to convey through the
mark, in the minds of potential customers, the desirability of the commodity upon which it
appears. Once this is attained, the trade-mark owner has something of value. If another
poaches upon the commercial magnetism of the symbol he has created, the owner can obtain
legal redress.

It is thus understandable for petitioners to invoke in this recourse their entitlement to enforce
trademark rights in this country, specifically, the right to sue for trademark infringement in
Philippine courts and be accorded protection against unauthorized use of their Philippine-
registered trademarks.

Acquisition of Ownership of Mark

Acquisition of Ownership of Trade Name

Non-Registrable Marks

Test to Determine Confusing Similarity Between Marks

• Dominancy Test

The dominancy test considers the dominant features in the

competing marks in determining whether they are confusingly
similar.

Well-Known Marks

Rights Conferred by Registration

Cancellation of Registration

Trademark Infringement

Unfair Competition

The ff. shall be guilty of unfair competition,and shall be subject to an

action therefor:

(i) Any person who shall employ deception or any other means
contrary to good faith, by which he shall pass off the goods
manufactured by him or in which he deals, or his business, or
services for those of the one having established such goodwill; or

(ii) Any person who shall commit any acts calculated to produce said
result.

3. Copyright
Copyright is the legal protection extended to the owner of the rights in an “original work”, which
refers to every literary, scientific and artistic production.Copyright refers to the right granted by a
statute to the proprietor of an intellectual production to its exclusive use and enjoyment to the
extent specified in the statute.

Basic Principles [Sec. 172.2, 175, and 181 only]

Copyrightable Works

Non-Copyrightable Works

Rights Conferred by a Copyright

Ownership of a Copyright

Limitations on Copyright

Doctrine of Fair Use

Copyright Infringement