Intellectual Property Flashcards
What is the subject matter of a patent?
New, useful and industrially applicable inventions
Where should a patent be registered?
IPO
When does protection of a patent start?
Upon application
What is the duration of a right to patent?
20 years
What is the subject matter of a trademark?
Goods manufactured or produced
Where should the right to a trademark be registered?
IPO
What is the duration of right to trademark?
10 years
When does protection of a trademark start?
Upon issuance of CoR
What is the subject matter of the right to copyright?
Literary, scientific, or artistic work
Where should a right to copyright be registered?
National Library
What is the duration of the copyright?
Lifetime of the author + generally 50 years after the death of the author
When does protection of the copyright begin?
Upon creation
A grant issued by the government to an inventor, designer or maker, the right to exclude others from making, using, or selling his invention, design or utility model within the country for a specific term, in exchange of his patentable disclosure
Patent
Any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing.
Patentable Inventions
What are non-patentable inventions? (6)
- Discoveries, scientific theories and mathematical method
- Schemes, rules and methods of performing mental acts, playing games games or doing business and programs for computers
- Methods for treatment of the human or animal body
- Plant varieties or animal breeds or essentially biological process for the production of plants or animals
- Aesthetic creations
- Anything which is contrary to public order or morality
What are the elements of a patent?
- Novelty
- Inventive step
- Industrial applicability
An invention shall not be considered new if it forms part of prior art
Novelty
What are the grounds for cancellation of patent?
- No novelty
- The patent did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art
- Contrary to public order or morality
The non-prejudicial disclosure applies when disclosure was made by
- The inventor
- The patent office and should not have been disclosed
- A third party who obtained the information directly or indirectly
An invention that can be produced and used in any industry
Industrially applicable
An invention involves an ____ if, having regard to prior art, it is not obvious to a person skilled in the art at the time of filing date
Inventive Step
Who has the right to a patent?
The inventor, his heirs, or assigns
Who has the right to a patent if two or more persons made the invention?
The right shall belong to them jointly
If two or more persons separately made the same invention, priority is given to the one who filed first
First to file rule
What are the patent right?
- Prohibit any unauthorized person from making, using, offering for sale, selling or importing that product
- Prohibit any unauthorized person from using the process, and from manufacturing or selling any product obtained from that process
- The right to assign or transfer by succession the patent
- Right to conclude licensing contract for the same
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
Patent infringement
A type of infringement with some modification and change, but substantially the same function, way or mode of operation, result
Doctrine of Equivalents
Issuance of a license by the Director General of the IPO to exploit a patented invention without the permission of the patent holder, either by manufacture or through parallel importation
Compulsory Licensing
Grounds for compulsory licensing? (6)
- National emergency/circumstance of extreme urgency
- Public interest so requires
- Use of patent is anti-competitive
- Public non-commercial use without satisfactory reasons
- Invention is not being worked in the PH on a commercial scale
- Demand for patented drugs or medicine is not being met
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
Mark
Any visible sign designated as such in the application for registration and capable of distinguishing the origin or any common characteristic, including the quality of goods or services of different enterprise which use the sign under the control of the registered owner of the collective mark
Collective mark
The name or designation identifying or distinguishing an enterprise
Trade name
Close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchases, giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other
Colorable Imitation
What are marks that cannot be registered? (13)
- Consists of immoral, deceptive or scandalous manner which may disparage or falsely suggest connections
- Consists of the flag, coat of arms or other insignia of the Philippines
- Consists of a name, portrait, or signature of living person (no consent)
- Identical to a registered mark
- Identical with or confusingly similar or constitutes a translation of a mark well known internationally and in the Philippines (similar goods)
- Identical with or confusingly similar or constitutes a translation of a mark registered in the Philippines (not similar)
- Likely to mislead the public
- Consists exclusively of signs that are generic
- Consists exclusively of signs that are customary or usual
- Consists exclusively of signs that may serve in trade to designate the kind, quality, quantity, or other characteristics
- Consists of shapes that may be necessitated by technical factors
- Consists of color alone
- Contrary to public order or morality
How are rights in a mark acquired?
Through registration
Renewal of trademark?
May be renewed for periods of 10 years at its expirations upon payment of prescribed fee and filing of request WITHIN 6 MONTHS before or after expiration (additional fee if after)
A word or phrase originally incapable of exclusive appropriation which has been used so long and so exclusively by one producer that the word or phrase has come to mean that the article was his produce
Doctrine of Secondary Meeting
A certificate of registration of a mark shall be prima facie evidence of?
- Validity of registration
- Registrant’s ownership of the mark
- Registrant’s exclusive right to use
Effect of noncompliance to DAU?
Application deemed abandoned or registration cancelled
Requisites of the theory of dilution?
- Use of that mark would indicate a connection
- Interest of the owner of the registered mark are likely to be damaged
Requirements on declaration of actual use?
- WITHIN 3 years from filing date of application (extendible for another 6 months)
- WITHIN 1 year from 5th year anniversary of the registration of the mark
- WITHIN 1 year FROM the renewal of the trademark registration
What are the rights conferred to the trademark owner?
Exclusive right to prevent all third parties (no consent) from using in the course of trade identical or similar signs for goods or services which are identical or similar where such use would result in a likelihood of confusion.
The exclusive right of the owner of a well-known mark which is registered in the PH shall extend to goods and services which are not similar to those in respect of which the mark is registered.
Theory of Dilution
What are the tests to determine infringement?
- Holistic or totality test
- Dominancy test
Considers the entirety of the marks in question
Holistic or totality test
The reproduction, counterfeit, copy or colorably imitate a registered mark in a manner that is intended to be used in commerce and likely to cause confusion, the accused shall be liable to?
A civil action for infringement by the registrant regardless of whether there is actual sale of goods or services using the infringing material
(1) Registration of the mark is a pre-requisite
(2) No fraudulent intent is required
(3) Likelihood of confusion
Trademark infringement
(1) No registration necessary
(2) Fraudulent intent is necessary
(3) Sale is required
(4) Passing-off element
Unfair Competition
Focuses on the prevalent or dominant features - not only visual but also aural and connotative comparisons and overall impressions
Dominancy Test
Broader than trademark infringement and includes passing off goods with or without trademark infringement
Unfair competition
When can there be trademark infringement without unfair competition?
When the infringer discloses on the labels that he manufactures the goods thus preventing the public from being deceived that the goods originate from the trademark owner
The right of literary property as recognized and sanctioned by positive law. An intangible, incorporeal right granted by statute to the author or originator of certain literary or artistic productions, whereby he is invested, for a specific period, with the sole and exclusive privilege of multiplying copies of the same and publishing and selling them
Copyright
In the Philippines, the owner of a work subject of a copyright is granted?
Exclusive economic and moral rights
Natural person who has created the work
Author
Work which has been created by two or more natural persons at the initiative and under the direction of another with the understanding that it will be disclosed by the latter under his own name and that contributing natural persons will not be identified
Collective work
Any communication to the public (broadcasting, rebroadcasting, retransmitting) that members of the public may access these works from a place and time individually chosen by them
Communication to the public
Transfer of possession of the original or a copy of a work or sound recording for a limited period, for non-profit purposes, by an institution the services of which are available to the public, such as public library or archive
Public lending
Works, which, with the consent of the authors, are made available to the public in such a way that the members of the public may access these works from a place and time individually chosen by them
Published works
Literary and artistic works which are original intellectual creations which are protected from the moment of their creation
Original works
(1) Dramatizations, translations, adaptations, and other alterations of literary or artistic works
(2) Collections and compilations of data which are original by reason of selection or coordination or arrangement of their contents
Derivative Works
Derivative works shall be protected as?
New works – shall not affect the force of any subsisting copyright
When does protection of the copyright commence?
From the moment of creation (irrespective of mode or form of expression, content, quality, or purpose)
Who is the the owner of an original work?
Author
Making one or more copies of a work or a sound recording
Reproduction
Who owns works of joint authorship if it consists of parts that can be used separately and the author of each part can be identified?
The author of each part shall be the original owner of the copyright of the part he has created
What are works not protected under copyright?
- Any idea
- Procedure
- System method or operation
- Concept
- Principle
- Discovery
- Mere data
- News of the day and other miscellaneous facts having the character of mere items of press information
- Any official text of legislative, administrative or legal nature
Who is the owner in works of joint ownership?
Co-authors shall be the original owners and rights shall be governed by the rules of co ownership
(subject to any agreement between co-authors)
Who is the owner of works during employment? (not part of regular duties)
The employee (even if he uses the time, facilities, and materials of the employer)
Who is the owner of works during employment? (result of his regular duties)
Employer unless there is an agreement, express or implied, to the contrary
Who owns audiovisual work?
The producer/author/composer/director
Who owns commissioned work?
The person who commissioned the work owns the work but the copyright shall remain with the creator, unless there is a WRITTEN stipulation to the contrary
Exception to the general rule of the ownership of the producer of the audiovisual work?
(1) Right to collect performance fees for musical compositions incorporated into the work remains with the composer
Who owns anonymous and pseudonymous works?
Publishers shall be deemed to represent the authors (unless contrary appears)
ie: adopted name leaves no doubts as to the identity of author, author discloses his identity
Who owns the letters?
Writer
Terms of protection of anonymous or pseudonymous works?
Fifty years from date of first lawful publication
What is the general term of protection of a copyright?
During the life of the author and fifty years after his death (shall also apply to posthumous work)
Terms of protection for joint authorship?
During the life of the last surviving author and for 50 years after his death
Exemption to the general rule on the terms of protection of anonymous or pseudonymous works?
When identity of the author is revealed before expiration of general period, the general terms of protection shall apply
Terms of protection in cases where the anonymous or pseudonymous works were not published before?
Protected for 50 years from the MAKING of the work
Terms of protection for works of applied art?
25 years from the date of MAKING
Terms of protection for photographic works?
50 years from publication OR from the making if unpublished
Terms of protection for audio-visual works
50 years from publication or date of making if unpublished
Terms of protection for sound recordings?
If performances not incorporated in recordings, 50 years from the end of the year which performance took place
If incorporated, 50 years from the end of the year which recording place
Terms of protection for broadcasts?
20 years from the date the broadcast took place
Extended term applicable only to old works with subsisting protection under the prior law
