What is IP?

Intellectual Property
describes ideas, inventions,
technologies, artworks, music and
literature, that are intangible
when first created, but become
valuable in tangible form as
products

- Dr. Kamil Idris

 What is IP?

Intellectual property is the

creation or product of the
human mind.
 TANGIBLE VS. INTANGIBLE

Tangible property– discernible by

the senses

Intangible property – incapable of

being perceived by the senses

3
Civil Code of the Philippines:

Article 712. Ownership is acquired by occupation

and intellectual creation.

4
Intellectual property is a set of legal
rights that results from intellectual
activity in the industrial, literary, scientific
and artistic fields; they do not apply to
the physical object but instead to the
intellectual creation as such.

5
 Protected IP Rights

• Copyright and Related Rights

• Patents and Utility Models

• Industrial Designs
 Protected IP Rights

• Layout-Designs
(Topographies) of
Integrated Circuits

•Trademarks, Service
Marks, Collective Marks
 Protected IP Rights

• Geographical Indications

• Undisclosed Information
 What is copyright?

Copyright
is the legal protection
extended to the
owner of the rights
in an original work.

- WIPO
 Trade Mark

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 (Sec. 21.1)
Geographical Indications
identify a good as originating in territory,
region or locality, where given quality,
reputation or other characteristic of the good
is essentially attributable to its geographical
origin.
 Trade Secret

Secret formulation = ???

• Secret

• Has commercial value

• Reasonable steps to keep it

secret

Special recipe = ???

 Patents
The exclusive right to exclude others from exploiting the invention for 20
years from the filing date,i.e. to make, use, sell or import an invention.

A temporary monopoly granted to an inventor by the government in return

for disclosing an invention.
What is a Patent?

1. A Patent is grant issued by the Government through

the Intellectual Property Office of the Philippines (IP
Philippines).

2. It is an exclusive right granted for a product,

process or an improvement of a product or process
which is new, inventive and useful.

3. This exclusive right gives the inventor the right to

exclude others from making, selling or using the
product of his invention during the life of the patent.
In return the patent owner must share the full
description of his invention.
 Inventor vs Public
 The law attempts to strike an ideal balance between the two
interests: The patent system thus embodies a carefully crafted
bargain for encouraging the creation and disclosure of new
useful and non-obvious advances in technology and design, in
return for the exclusive right to practice the invention for a
number of years. The inventor may keep his invention secret
and reap its fruits indefinitely. In consideration of its disclosure
and the consequent benefit to the community, the patent is
granted. An exclusive enjoyment is guaranteed him for 17
years, but upon expiration of that period, the knowledge of the
invention inures to the people, who are thus enabled to
practice it and profit by its use. (Pearl & Dean, Phils. Vs. Shoemart,
Inc, et. Al. GR No. 148222, 409 SCRA 224, August 15, 2003)
Why are Patents necessary

 The patent law has a three-fold purpose;

first, patent law seeks to foster and reward invention;
second, it promotes disclosures of inventions to stimulate
further innovation and to permit the public to practice
the invention once the patent expires;
third, the stringent requirements for patent protection
seek to ensure that ideas in the public domain remain
there for the free use of the public
(Pearl & Dean, Phils. Vs. Shoemart, Inc, et. Al. GR No. 148222,
August 15, 2003)
“ Simplicity is often
the hallmark of
invention “
Examples of inventions
• door lock, by Linus Yale, 1844

• sewing machine, Isaac Singer, 1855

• telephone, Alexander Graham Bell, 1876

• electric light, Thomas Edison, 1880

19
Examples of inventions

• roll film camera, George Eastman, 1888

• shaving razor, King Gillette, 1904

• airplane, Wilbur and Orville Wright, 1906

20
The mobile phone was invented by Motorola in 1973.

The current mobile phone that we are using now may

contain hundreds of patents for the internal antenna, the
screen, the keypad, the battery, etc.

21
Method and apparatus for
Reforming air in an internal
Combustion engine

Phil. Pat. No. 1-2006-000551

• Developed as an electrolytic thirst quencher for
use by its football team
• Formula was patented and acquired value
• Trademark – GATORADE
• “Since 1973, Gatorade has brought more than $80
million to the university”, Joe Kays & Arline Phillips–
Han, Gatorade-An Idea That Launched An industry
• Patent expired after 17 years but the trademark
remained in force and continued to produce
income for the university
 Patentable Invention

• Invention is any technical solution to a problem

in any field of human activity which is
• New
• Involves an inventive step
• Industrially applicable

• Term of 20 years from filing date; without renewal

 STATUTORY CLASSES
Invention/Utility Model

1. A useful machine
2. A product
3. A Process
4. Improvement of any of the foregoing
5. Microorganism
6. Non-biological or microbiological
processes
 Examples of Patentable Inventions

• A useful machine
e.g. biogas digester
threshing machine
• A product
e.g. pharmaceutical product ( vaccine for bovine
coronavirus; chemical substance/composition

• A process or method
e.g. Method for Treating Hoof Infection

AN IMPROVEMENT
• Non-biological process
e.g. A method of treating a plant characterized by the
application of growth- stimulating substance or
radiation.
• Microbiological process
e.g. A process of isolating the bacteria from the
soil….
NON-PATENTABLE INVENTIONS
1. Discoveries
2. Scientific theories
3. Mathematical methods
4. Schemes, rules and methods of
-performing mental acts
-playing games
-doing business
-programs for computers
5. Methods for treatment of the human or animal body
by surgery or therapy & diagnostic methods practised
on the human & animal body
NON-PATENTABLE INVENTIONS
6. Plant varieties or animal breeds or essentially
biological processes for the production of plants and
animals
7. Aesthetic creations
8. Contrary to public order or morality
Requirements for Patent Protection

NOVELTY REQUIREMENT

• New or novel when it does not form

part of the prior art

Prior art means everything made

available to the public anywhere in
the world prior to the filing date or
priority date of an application.
PRIOR ART - Everything made available to the public by means of:

PRIOR
ART
 NON-PREJUDICIAL DISCLOSURE

Not Prejudicial to the filing of an Application:

1. Disclosure by the Inventor

(must be filed within one (1) year from the time of disclosure)
2. Patent Office
3. Third party from the inventor
Requirements for Patent Protection

INVOLVES AN INVENTIVE STEP

• An invention involves an inventive step if,

having regard to prior art, it is not obvious to
a person skilled in the art at the time of the
filing or priority date of an application.
 Person Skilled in the Art

1. Ordinary practitioner (fictional person)

2. Has access and understanding to all the prior art
3. Aware of common general knowledge in the specific art
4. Observes developments in the related technical field
5. Could be a team
6. No inventive ability
Requirements for Patent Protection

CAPABLE OF INDUSTRIAL APPLICATION

• An invention that can be produced

and used in any industry shall be
industrially applicable.
Invention Filing Requirements
•Accomplished Request for a grant of
Patent

•Specification or Description containing:

a) The title;
b) A brief statement of its nature
and purpose;
c) A brief explanation of the
drawings, if any;
Invention Filing Requirements
• Specification or Description:
d) Complete and detailed enabling
description;
e) Claim(s)
f) Abstract of the invention
• Drawings, if any
• Filing fee:

Small Entity Big Entity

(Asset: P 100M or less) (Asset: More than
P100M)
Invention P 1,818.00 max. of 5 P 3,636.00 max. of 5
claims claims
Claims in excess P 152.00/claim P 303.00/claim
Request for early
publication P 5,605.50
 1. PROCESS FLOW FOR A GRANT OF PATENT

APPLICANT IP PHILIPPINES PUBLIC

(First Party) (Second Party) (Third Party)

Filing Of:  Receives

 Request
 Description  Assigns Filing
 Fees upon filing or Date
within a 30-day  Conducts “FORMALITY
grace period “EXAMINATION"
Specification/Claim Format
Contents of the Request Form
Drawings
Appointment of Resident Agent
Other Formal Matters
2. PROCESS FLOW FOR A GRANT OF PATENT
APPLICANT IP PHILIPPINES PUBLIC

(First Party) (Second Party) (Third Party)

 Sends Examiner’s Action,

If necessary, two (2) months to
respond, two (2) extensions
Ex Parte Proceedings
 Application CLASSIFICATION

 Conducts Prior Art SEARCH

 PUBLICATION of Application
with Search Report after 18 months
from the filing date
 3. PROCESS FLOW FOR A GRANT OF PATENT

APPLICANT IP PHILIPPINES PUBLIC

(First Party) (Second Party) (Third Party)

 Request for SUBSTANTIVE  Conducts SUBSTANTIVE

EXAMINATION, if desired EXAMINATION

Industrial Applicability’
Novelty; and Inventiveness
Sufficiency of Disclosure,
Unity of Invention
Other Issues

 Sends Communication,
if necessary (Examiner’s
ACTION)
 4. PROCESS FLOW FOR A GRANT OF PATENT

APPLICANT IP PHILIPPINES PUBLIC

(First Party) (Second Party) (Third Party)

 Replies, if required
 FINAL REFUSAL
_______
_______
 APPEAL _______
 GRANT (Letters Patent) _______
_______

 Pays Maintenance Fee  PUBLICATION of GRANT

 Maintains Patent

 Surrender of Patent
 First-to-File Rule

The Right to a Patent shall belong to:

1. Person who filed an application
2. Applicant who has the earliest Filing Date
or Priority Date
 Right of Priority Date

Patent Application “A” was

“A” Must be filed in Japan on
or before February 7, 2016
filed on February 7, 2015 in
to avail of the effect of the
the PHILIPPINES
PRIOR SALE in Japan filing date in the PHILIPPINES
June 2015

“B” files same application “C” files same application “A” filed in the Japan
in Japan OCTOBER 2015 DECEMBER 2015
in Japan MARCH 2015
Cancellation of Patents

 GROUNDS:

 Invention not new or patentable

 Cannot be carried out by a person skilled in the art
 Contrary to public order or morality
Right to Patent
 INVENTOR
 Heirs
 Assigns
 Pursuant to a Commission
 Person who commissions work
 Employment
 Employee

 Employer if result of his regularly assigned duties

Assignment of Rights

 Written
 Notarized
 Recorded with IPO
 Published
Remedies of Persons Deprived of Patent

 Sec 29. First to file rule

 a. substitution
 b. file new application
 c. request refusal of application
 d. cancellation
 Sec 68. True and actual Inventor
 A. substitution or cancellation of patent
 B. damages
 (Action Must be filed w/in 1 yr from publication )
What rights does a patent owner have?
Rights of the patent owner:
- may decide who may or may not use the patented
invention for the period in which the invention is protected
- may give permission to, or license others to use the
invention on agreed terms
- may sell the right to the patent to others
- may prevent others from making, using, selling or importing
the product of his invention
Rights conferred by patent
Sec 71.
(a) Where the subject matter of a patent is a product, to
restrain, prohibit and prevent any unauthorized person or
entity from making, using, offering for sale, selling or
importing that product;
(b) Where the subject matter of a patent is a process, to
restrain, prevent or prohibit any unauthorized person or
entity from using the process, and from manufacturing,
dealing in, using, selling or offering for sale, or importing
any product obtained directly or indirectly from such
process.
Civil Action for Infringement
The making, using, offering for sale, selling, or importing a
patented product or a product obtained directly or indirectly
from a patented process, or the use of a patented process
without the authorization of the patentee constitutes patent
infringement.
Anyone who actively induces the infringement of a patent or
provides the infringer with a component of a patented
product or of a product produced because of a patented
process knowing it to be especially adopted for infringing
the patented invention and not suitable for substantial non-
infringing use shall be liable as a contributory infringer and
shall be jointly and severally liable with the infringer.
*Action prescribes in 4 years
Civil Action for Infringement
 Presumption in case of Process Patents: IN FAVOR OF
OWNER
 If the subject matter of a patent is a process for obtaining
a product, any identical product shall be presumed to
have been obtained through the use of the patented
process if the product is new or there is substantial
likelihood that the identical product was made by the
process and the owner of the patent has been unable
despite reasonable efforts, to determine the process
actually used.

 Sec. 77. Infringement Action by a Foreign National

(Melbarose Sasot v PP GR 143193 June 29, 2005)
Criminal Action for Repetition of
Infringement

 Penalty:
 imprisonment for the period of not less than six (6)
months but not more than three (3) years and/or a fine of
not less than One hundred thousand pesos (P100,000) but
not more than Three hundred thousand pesos (P300,000)

*Action prescribes in 3 years

Limitations of Patent Rights
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;
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;
Limitations of Patent Rights
72.3. Where the act consists of making or using exclusively
for the purpose of experiments that relate to the subject
matter of the patented invention;
72.4. 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;
72.5. 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.
Limitations of Patent Rights

Sec. 74. Use of Invention by Government

(or authorized third person)
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
Limitations of Patent Rights
Sec. 73. 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
Sec. 75. Extent of Protection and Interpretation of Claims
…due account shall be taken of elements which are equivalent to the
elements expressed in the claims, so that a claim shall be considered
cover not only all the elements as expressed therein, but also
equivalents
Doctrine of Equivalents
"(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.“
 (Pascual Godines Vs. The Honorable Court Of Appeals, Sv-agro
Enterprises, Inc., G.R. No. 97343. September 13, 1993)
Doctrine of File Wrapper Estoppel
“File wrapper” refers to the protection covering by
which the US Patent Office kept documents of
patent applications. Under the doctrine, a patentee
is precluded from claiming as part of the patented
product that which he had to excide or modify in
order to avoid patent office rejection, nor may he
omit any additions he was compelled to add by
patent office regulations.
Voluntary Licensing
 To encourage the transfer and dissemination of
technology, prevent or control practices and
conditions that may in particular cases constitute
an abuse of intellectual property rights having an
adverse effect on competition and trade
 Disputes under the jurisdiction of the Director of the
Documentation, Information and Technology Transfer
Bureau
Voluntary Licensing
Prohibited Clauses
 87.1Those which impose upon the licensee the obligation
to acquire from a specific source capital goods,
intermediate products, raw materials, and other
technologies, or of permanently employing personnel
indicated by the licensor;
 87.2. Those pursuant to which the licensor reserves the
right to fix the sale or resale prices of the products
manufactured on the basis of the license;
 87.3. Those that contain restrictions regarding the volume
and structure of production;
Voluntary Licensing
Prohibited Clauses
 87.4 Those that prohibit the use of competitive
technologies in a non-exclusive technology transfer
agreement;
 87.5. Those that establish a full or partial purchase option
in favor of the licensor;
 87.6. Those that obligate the licensee to transfer for free
to the licensor the inventions or improvements that may
be obtained through the use of the licensed technology;
 87.7. Those that require payment of royalties to the
owners of patents for patents which are not used;
Voluntary Licensing
Prohibited Clauses
 87.8 Those that prohibit the licensee to export the
licensed product unless justified for the protection of the
legitimate interest of the licensor such as exports to
countries where exclusive licenses to manufacture and/or
distribute the licensed product(s) have already been
granted;
 87.9. Those which restrict the use of the technology
supplied after the expiration of the technology transfer
arrangement, except in cases of early termination of the
technology transfer arrangement due to reason(s)
attributable to the licensee;
Voluntary Licensing
Prohibited Clauses
 87.10. Those which require payments for patents and other
industrial property rights after their expiration, termination
arrangement;
 87.11 Those which require that the technology recipient shall
not contest the validity of any of the patents of the technology
supplier;
 87.12. Those which restrict the research and development
activities of the licensee designed to absorb and adapt the
transferred technology to local conditions or to initiate
research and development programs in connection with new
products, processes or equipment;
Voluntary Licensing
Prohibited Clauses
 87.13 Those which prevent the licensee from adapting the
imported technology to local conditions, or introducing
innovation to it, as long as it does not impair the quality
standards prescribed by the licensor;
 87.14. Those which exempt the licensor for liability for
non-fulfillment of his responsibilities under the technology
transfer arrangement and/or liability arising from third
party suits brought about by the use of the licensed
product or the licensed technology; and
 87.15. Other clauses with equivalent effects.
Voluntary Licensing
Mandatory Provisions
 88.1. That the laws of the Philippines shall govern the
interpretation of the same and in the event of litigation,
the venue shall be the proper court in the place where
the licensee has its principal office;
 88.2. Continued access to improvements in techniques
and processes related to the technology shall be made
available during the period of the technology transfer
arrangement;
Voluntary Licensing
Mandatory Provisions
 88.3. In the event the technology transfer arrangement
shall provide for arbitration, the Procedure of Arbitration
of the Arbitration Law of the Philippines or the Arbitration
Rules of the United Nations Commission on International
Trade Law (UNCITRAL) or the Rules of Conciliation and
Arbitration of the International Chamber of Commerce
(ICC) shall apply and the venue of arbitration shall be the
Philippines or any neutral country; and
 88.4. The Philippine taxes on all payments relating to the
technology transfer arrangement shall be borne by the
licensor.
Voluntary Licensing
Sec. 91. Exceptional Cases. - In exceptional or meritorious
cases where substantial benefits will accrue to the economy,
such as high technology content, increase in foreign
exchange earnings, employment generation, regional
dispersal of industries and/or substitution with or use of
local raw materials, or in the case of Board of Investments,
registered companies with pioneer status, exemption from
any of the above requirements may be allowed by the
Documentation, Information and Technology Transfer Bureau
after evaluation thereof on a case by case basis.
Compulsory Licensing

 Jurisdiction – Director of Legal Affairs

 Requirement – Efforts to obtain a voluntary license first
Grounds for Compulsory Licensing
93.1. National emergency or other circumstances of extreme
urgency;
93.2. Where the public interest, in particular, national
security, nutrition, health or the development of other vital
sectors of the national economy as determined by the
appropriate agency of the Government, so requires; or
93.3. Where a judicial or administrative body has
determined that the manner of exploitation by the owner of
the patent or his licensee is anti-competitive; or
Grounds for Compulsory Licensing
93.4. In case of public non-commercial use of the patent by
the patentee, without satisfactory reason;
93.5. If the patented invention is not being worked in the
Philippines on a commercial scale, although capable of being
worked, without satisfactory reason: Provided, That the
importation of the patented article shall constitute working
or using the patent.
93.6 Where the demand for patented drugs and medicines is
not being met to an adequate extent on reasonable terms,
as determined by the Secretary of the Department of Heath.
(RA 9502 :Director General has jurisdiction to issue license for
importation of patented drugs)
Compulsory Licensing
Semi Conductors
Sec. 96. Compulsory Licensing of Patents Involving Semi-
Conductor Technology. - In the case of compulsory licensing
of patents involving semi-conductor technology, the license
may only be granted in case of public non-commercial use
or to remedy a practice determined after judicial or
administrative process to be anti-competitive.
Compulsory License Based on
Interdependence of Patents
If the invention protected by a patent, hereafter referred to as the
"second patent," within the country cannot be worked without infringing
another patent, hereafter referred to as the "first patent," granted on a
prior application or benefiting from an earlier priority, a compulsory
license may be granted to the owner of the second patent to the extent
necessary for the working of his invention, subject to the following
conditions:
 The invention claimed in the second patent involves an important
technical advance of considerable economic significance in relation to
the first patent;
 The owner of the first patent shall be entitled to a cross-license on
reasonable terms to use the invention claimed in the second patent;
 The use authorized in respect of the first patent shall be non-
assignable except with the assignment of the second patent
Terms and Conditions of Compulsory License
 Rate of royalties to be fixed by the Director of Legal Affairs
 100.1. Scope and duration of license
 100.2. License shall be non-exclusive
 100.3. License shall be non-assignable , except with that part of
the enterprise or business with which the invention is being
exploited;
 100.4. Use of the subject matter of the license shall be devoted
predominantly for the supply of the Philippine market unless the
grant of the license is based on the ground that the patentee’s
manner of exploiting the patent is determined by judicial or
administrative process, to be anti-competitive.
Terms and Conditions of Compulsory License
 100.5.Termination of license upon proper showing that
circumstances which led to its grant have ceased to
exist and are unlikely to recur
 100.6.Payment of adequate remuneration to the
patentee except that in cases where the license was
granted to remedy a practice which was determined
after judicial or administrative process, to be anti-
competitive, the need to correct the anti-competitive
practice may be taken into account in fixing the amount
of remuneration.
Grounds for Cancellation of Compulsory
License
 (a) If the ground for the grant of the compulsory
license no longer exists and is unlikely to recur;
 (b) If the licensee has neither begun to supply the
domestic market nor made serious preparation
therefor;
 (c) If the licensee has not complied with the
prescribed terms of the license;
 Utility Model

• “Innovation Patent”

• New

• Industrially applicable (Useful)

• Term of 7 years from filing date

without renewal
 UM Filing Requirements
• A fully accomplished request form

• Specification or Description containing:

a) The title;
b) A brief statement of its nature
and purpose;
c) A brief explanation of the
drawings, if any;
UM Filing Requirements
• Specification or Description:
d) Complete and detailed enabling
description;
e) Claim(s)
f) Abstract of the invention
• Drawings, if any.
• Filing fee:

Small Entity Big Entity

(Asset: P 100M or (Asset: More than
less) P100M)
Invention P 1,515.00 max. of 5 P 3,030.00 max. of 5
claims claims
Claims in excess P 102.00/claim P 202.00/claim
 Name: Nick Kent
Business: Boardsling
Industry: Surfing accessories
IP smart since: 2005
RIDING A WAVE TO SUCCESS

Examples of Utility Model

Rain Water Harvesting System
 EXAMPLE

Problem: Gripping problems

with regards to handles
of sports rackets such as
tennis rackets greatly
affects the performance
of the player.
Solution: A gripping contour is
provided on the handle
of the racket to allow a
firm grip thereon.
Gripping Contour

Proposed Invention
NOVELTY ISSUE:

Prior Art A
Teaches a tennis racket
Proposed invention appears to be novel
over Prior Art A
INVENTIVE STEP ISSUE:

Prior Art B
Prior Art A
Teaches a gripping contour on
Teaches a tennis racket the handle of a sports racket

Proposed invention lacks inventive step

over the combined features of Prior Arts A & B
EXAMPLE
GOLF BALL CASE
(Selection of known material based on its suitability for the intended use)
1. Problem
- Abrasion Resistance
2. Solution to the Problem
- Applying “rigid polyurethane” material to the surface
of the golf ball
3. No Inventive Step
- “Rigid polyurethane” is known to be highly abrasion resistant
- Applying the substance to solve the abrasion problems in
golf balls would be an obvious matter to a person skilled in
art
4. Might be Inventive, IF
- There is an improved and unexpected result by significantly
increasing the flight of the ball (strong evidence of the
presence of invention)
SISON OLAÑO, SERGIO T. ONG, MARILYN O.
GO, AND JAP FUK HAI, PETITIONERS, VS.
LIM ENG CO, RESPONDENT. THIRD DIVISION
G.R. No. 195835, March 14, 2016
 This is a petition for review on certiorari under Rule 45 of
the Rules of Court, assailing the Decision dated July 9,
2010 and Resolution dated February 24, 2011 of the Court
of Appeals (CA) in CA-G.R. SP No. 95471, which annulled
the Resolutions dated March 10, 2006 and May 25,
2006 of the Department of Justice (DOJ) in I.S. No. 2004-
925, finding no probable cause for copyright infringement
against Sison Olano, Sergio Ong, Marilyn Go and Jap Fuk
Hai (petitioners) and directing the withdrawal of the
criminal information filed against them.
SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO, AND JAP
FUK HAI, PETITIONERS, VS. LIM ENG CO
G.R. No. 195835, March 14, 2016

 Since the hatch doors cannot be considered as either

illustrations, maps, plans, sketches, charts and three-
dimensional works relative to geography, topography,
architecture or science, to be properly classified as a
copyrightable class "I" work, what was copyrighted were
their sketches/drawings only, and not the actual hatch
doors themselves. To constitute infringement, the usurper
must have copied or appropriated the original work of an
author or copyright proprietor, absent copying, there can
be no infringement of copyright
SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO,
AND JAP FUK HAI, PETITIONERS, VS. LIM ENG CO
 A hatch door, by its nature is an object of utility. It is
defined as a small door, small gate or an opening that
resembles a window equipped with an escape for use in
case of fire or emergency. It is thus by nature, functional
and utilitarian serving as egress access during emergency.
It is not primarily an artistic creation but rather an object
of utility designed to have aesthetic appeal. It is
intrinsically a useful article, which, as a whole, is not
eligible for copyright.

A "useful article" defined as an article "having an intrinsic

utilitarian function that is not merely to portray the
appearance of the article or to convey information" is
excluded from copyright eligibility
SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO,
AND JAP FUK HAI, PETITIONERS, VS. LIM ENG CO
 The only instance when a useful article may be the
subject of copyright protection is when it incorporates a
design element that is physically or conceptually
separable from the underlying product. This means that
the utilitarian article can function without the design
element. In such an instance, the design element is
eligible for copyright protection.

The design of a useful article shall be considered a

pictorial, graphic, or sculptural work only if, and only to
the extent that, such design incorporates pictorial,
graphic, or sculptural features that can be identified
separately from, and are capable of existing
independently of, the utilitarian aspects of the article.
SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO,
AND JAP FUK HAI, PETITIONERS, VS. LIM ENG CO
 A belt, being an object utility with the function of preventing
one's pants from falling down, is in itself not copyrightable.
However, an ornately designed belt buckle which is irrelevant
to or did not enhance the belt's function hence, conceptually
separable from the belt, is eligible for copyright. It is
copyrightable as a sculptural work with independent aesthetic
value, and not as an integral element of the belt's functionality.

A table lamp is not copyrightable because it is a functional

object intended for the purpose of providing illumination in a
room. The general shape of a table lamp is likewise not
copyrightable because it contributes to the lamp's ability to
illuminate the reaches of a room. But, a lamp base in the form
of a statue of male and female dancing figures made of semi
vitreous china is copyrightable as a work of art because it is
unrelated to the lamp's utilitarian function as a device used to
combat darkness.
SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO,
AND JAP FUK HAI, PETITIONERS, VS. LIM ENG CO
 In the present case, LEC's hatch doors bore no
design elements that are physically and
conceptually separable, independent and
distinguishable from the hatch door itself. The
allegedly distinct set of hinges and distinct jamb,
were related and necessary hence, not physically
or conceptually separable from the hatch door's
utilitarian function as an apparatus for emergency
egress. Without them, the hatch door will not
function.
SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO,
AND JAP FUK HAI, PETITIONERS, VS. LIM ENG CO

 Being articles of manufacture already in

existence, they cannot be deemed as original
creations.
 Industrial Design

• Composition of lines or colors

• Any three-dimensional form
• Special appearance or pattern
• Industrial product or handicraft
• New or original
• Ornamental or aesthetic value
• Term of 5 years renewable for two
consecutive terms of 5 years
Examples of Industrial Design
Examples of Industrial Design
Kenneth Cobonpue

Interior Crafts of the Island, Inc.

 Layout-Design of IC

• Original topography (picture of a surface) of

elements
• Three-dimensional disposition prepared for an
integrated circuit intended for manufacture
• One is an active element of an integrated circuit

• Term of protection is 10 years, not renewable

Layout-Design of IC
 Basic Differences between Patent, Utility Model and
Industrial Design

Categories Patent Utility Model Industrial Design

(Invention)
Subject Matter of Apparatus (Product) Apparatus Article of manufacture
Protection & Method (Process) (Product) & (Over-all aesthetic and
Method (Process) pleasing appearance of the
article of manufacture.)
Novelty YES YES YES
Inventive Step YES NO NO
Industrial Applicability YES YES YES
More than one (1) Only one (1)
Claim generic claim is generic claim is Omnibus type of claim
allowed and allowed. No limit
dependent claims on the number of
dependent claims.
Ornamental Features of
shape, configuration, NO NO YES
form, or a combination
thereof
Term of Protection Twenty (20) years Seven (7) years Five (5) years from the
from the date of from the date of date of filing with 2 five
filing with payment filing without year term renewals upon
of annuities renewal payment of fees
HAVE A NICE DAY