Intellectual Property

Question 1

What is a patentable invention?

Answer 1

any technical solution of a problem in any field of human activity which new, involves an inventive step and is industrially applicable.

Question 2

What are the non-patentable inventions?

Answer 2

1. Discoveries, scientific theories and mathematical methods, new use for a known substance, alternative for/composition of substance with no enhancement of efficacy.
2. Plant varieties/animal breeds
3. Mental acts, playing games. Doing business, computer programs
4. Aesthetic creations
5. Methods in treating human or animal body
6. Anything contrary to public order or morality

Question 3

What are the requirements for registrability of invention patent?

Answer 3

1. Novel
2. Involves inventive step
3. Industrially applicable

Question 4

What are the rules on filing and ownership?

Answer 4

1. First to file rule – earliest filing/priority date gets the patent
2. Joint filing of patent – joint ownership
3. Commissioned inventions – patent belongs to the person who commissions, unless otherwise stated
4. Invention in the course of employment:
   a. ) If within regular duties – employer owns, unless otherwise stated
   b. ) If not within regular duties – employee owns even though he used company resources

Question 5

What is the filing date that should be considered if you filed a patent in another country and filed in the Philippines for the same invention?

Answer 5

• Right of priority should apply, meaning the foreign filing date shall be the filing date in the Philippines if there is reciprocity.

Question 5

What is the filing date that should be considered if you filed a patent in another country and filed in the Philippines for the same invention?

Answer 5

• Right of priority should apply, meaning the foreign filing date shall be the filing date in the Philippines if there is reciprocity.

Question 6

What are the requisites in the right of priority?

Answer 6

a. ) Priority must be expressed.
b. ) Filed within 12 months from the earliest filing in another country.
c. ) Certificate of filing in the other country must be submitted within 6 months from application.

Question 7

What are the filing date requirements when completed?

Answer 7

• The filing date of a patent application shall be the date of receipt by the Office of at least the following elements:
  a. ) Indication that you are seeking a Philippine patent
  b. ) Identification of the inventor
  c. ) Description of the invention (1 or more claims)

Question 8

What is the term for patent?

Answer 8

• 20 years from filing date

Question 9

What are the remedies of the true and actual inventor?

Answer 9

• If there is litigation between the inventors and he won the case:
  a. ) He may replace/be substituted to the patentee; or
  b. ) Cancel the patent at his option with damages.

Question 10

What are prior users and what are their rights?

Answer 10

• Users or those who have seriously prepared to use the product/process prior to the filing date shall not be affected by the patent and have the right to continue using it.

Question 11

What can a patentee do when his rights have been infringed?

Answer 11

• He may bring a civil action for damages and expenses of the suit.
• The court may award by way of damages a sum equivalent to a reasonable royalty if damages cannot be ascertained.
• The infringing goods, materials and implements may be disposed or destroyed without compensation. Accomplices shall be solidarily liable with the infringer.

Question 11

Can the government use inventions without consent or through compulsory licensing?

Question 12

What are the requisites for registration of utility models?

Answer 12

• New and industrial application only.

Question 13

What is the term of registration of utility models?

Answer 13

• End of the 7th year after filing date.

Question 14

What are the marks that cannot be registered?

Answer 14

a. ) Immoral, deceptive, scandalous matter, falsely suggest connection with persons living or dead, national symbols.
b. ) Flag, coat of arms, insignia of the Philippines
c. ) Name, portrait, signature of a living persons, unless consented (same with dead president).
d. ) Identical with other registered mark belonging to another person with respect to same goods/services or closely related goods or service or likely to deceive or cause confusion.
e. ) Identical or confusingly similar with well-known international mark that are registered for unrelated goods if connection could be drawn between them and such use would damage the interest of the latter.
f. ) Identical or confusingly similar with well-known international mark with identical/similar goods or services whether or not registered.
g. ) Generic signs
h. ) Mislead public as to nature, quality, characteristics, or geo of origin of goods.
i. ) Color alone

Question 15

What are the requisites for the filing of declaration?

Answer 15

• Need to file declaration of actual use 3 years from the filing date.
• Need to file declaration of actual use within 1 year from the 5th anniversary from the registration date, otherwise, removed.

Question 16

What is the right of priority in law on trademarks, service marks and tradenames and its duration?

Answer 16

• Same with patents, duration is 10 years. Can be renewed for 10 years at expiration and payment of prescribed fee.