Intellectual Property Law

Question 1

Copyright and related rights

Answer 1

Exists over original and derivative intellectual creations in the literary and artistic domain protected from the moment of their creation.

Question 2

Trademark and Service Marks

Answer 2

Any visible sign capable of distinguishing the goods (trademark) or services of an enterprise and shall include a stamped or marked container of goods.

Question 3

Patent

Answer 3

Technical solutions of a problem with any field of human activity which is new, involves an inventive step and is industrially applicable

Question 4

Are trade secrets protected under the IPC?

Answer 4

In the sense that they are protected as indisclosed information,

Question 5

Scope or object of Copyright vs Patents

Answer 5

Copyright - literary, artistic or scientific works which are original creations in the literary or artistic domain

• protected from date of creation

Patents - technical solutions in any filed of human activity which is new, involves an inventive step and is industrially applicable

Question 6

Term of protection of a patent

Answer 6

Valid for 20 years fom filing of application

Question 7

Utility Model

Answer 7

Model of implements or tools or product

Which is of practical utility by reason of its form, configuration or composition.

Question 8

What may be patented

Answer 8

SECTION 33 IPC

Any technical solution to a problem in any field of human activity which is:

New
Invovles an inventive step and
is industrially applicable

Question 9

Elements of novelty?

Answer 9

SECTION 24 IPC

An invention is not considered new if it is part of prior art, which consists of:

1. Everything which has been made available to the public anywhere in the world before the filing date or priority date of the invention
2. The whole contents of a published application for a patent, utility model or industrial design registration filed in the PH,

Question 10

Doctrine of non-prejudicial disclosure

Answer 10

SECTION 25

Disclosure of information contained in an application during the 12 months preceding the filing date or priority date oof the application shall not prejudice the applicant on the ground of lack of novelty if such disclosure was made by the inventor himself

Question 11

Discovery of S&M

Answer 11

Section 22

Discovery of scientific and mathematical methods and in the case of drugs and medicines the mere discovery of a new form of which does not result in the enhancement of the known efficacy of that substance or discovery of a new use of a known substance is not patentable

Question 12

Section 22 - non patentable inventions

Answer 12

Don’t Sell Many Strange Products At Midnight”
Don’t - Discoveries, Scientific theories, and Mathematical methods

Sell - Schemes, Rules, Business methods, and Computer programs

Many - Medical methods (Surgery, Therapy, and Diagnostics)

Strange - Specifically biological processes (Plants, Animals, and Biology Exceptions)

Products - Purely aesthetic creations

At Midnight - Against Morality (Anything against public order or morality)

Question 13

First to file rule

Patents

Answer 13

Section 29: First to File Rule
Independent Invention
If two or more people invent the same thing separately and independently, the patent goes to the person who files an application first.
Earliest Filing Date
If multiple applications are filed for the same invention, the patent goes to the applicant with the earliest filing date.
Priority Date
If multiple applications have the same filing date, the patent goes to the applicant with the earliest priority date.
Patent Right
The right to the patent belongs to the first filer or the one with the earliest priority date.

Question 14

Inventions created by employees

Answer 14

Section 30: Inventions Created Pursuant to a Commission
Commissioned Work

Details: The person who commissions the work owns the patent, unless the contract states otherwise (30.1).

Employee Inventions
Details: If an employee invents something during their employment, the patent ownership depends on the following (30.2):

Employee-Owned: The employee owns the patent if the invention is not part of their regular duties, even if they use the employer’s time, facilities, and materials (30.2(a)).

Employer-Owned: The employer owns the patent if the invention results from the employee’s regular duties, unless there’s a contrary agreement (30.2(b)).

Question 15

Right of Priority

Answer 15

Section 31: Right of Priority
Foreign Application Date: A patent application filed in the Philippines will be considered as filed on the same date as the foreign application if the invention was previously applied for in a country that offers similar privileges to Filipino citizens.
Priority Claim: The local patent application must explicitly claim the right of priority from the foreign application (31.a).
Twelve-Month Filing Period: The local application must be filed within twelve (12) months from the date the foreign application was filed (31.b).
Certified Copy Requirement: A certified copy of the foreign application, along with an English translation if necessary, must be submitted within six (6) months from the filing date in the Philippines (31.c).

Question 16

Grounds to cancel a patent

Answer 16

1. Patent is not new or patenable
2. Patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art
3. Patent is contrary to morality or public order

Question 17

Remedy of person declared by the court as having the right to a patent

Answer 17

Section 67. Patent Application by Persons Not Having the Right to a Patent. . - 67.1. If a person referred to in Section 29 other than the applicant, is declared by final court order or decision as having the right to the patent, such person may, within three (3) months after the decision has become final:

(a) Prosecute the application as his own application in place of the applicant;

(b) File a new patent application in respect of the same invention;

(c) Request that the application be refused; or

(d) Seek cancellation of the patent, if one has already been issued.

Question 18

Remedies of the true and actual inventor deprived of the patent

Answer 18

Section 68: Remedies of the True and Actual Inventor

True Inventor Declared by Court: If a person who was deprived of the patent without consent or through fraud is declared by final court order or decision to be the true and actual inventor, the court shall take action.

Substitution or Cancellation: The court shall either order the substitution of the true inventor as the patentee or, at the option of the true inventor, cancel the patent.

Damages Awarded: The court may also award actual and other damages in favor of the true inventor if warranted by the circumstances.

Question 19

Rights conferred by a patent

Answer 19

Section 71: Rights Conferred by Patent

Exclusive Rights for Products: Patent owners can stop others from making, using, selling, or importing their patented product without permission (71.1.a).

Exclusive Rights for Processes: Patent owners can stop others from using their patented process or selling products made using that process without permission (71.1.b).

Question 20

Limitations on Patent Rights

Mnemonic: “Please Put Every Medicine Tightly”

Answer 20

Section 72: Limitations of Patent Rights
Post-Market Use: A patented product can be used without authorization if it’s been put on the market in the Philippines by the owner or with their consent (72.1).
Private and Non-Commercial Use: Acts done privately or on a non-commercial scale, as long as they don’t significantly harm the patent owner’s economic interests (72.2).
Experimental Use: Making or using the patented invention for experimental purposes related to the subject matter of the patent (72.3).
Medical Preparation: Preparation of medicine by a pharmacy or medical professional for individual cases according to a prescription (72.4).
Temporary or Accidental Use: Use of the invention in foreign ships, vessels, aircraft, or land vehicles entering the Philippines temporarily or accidentally, provided it’s used only for the needs of the vehicle and not for manufacturing anything to be sold in the Philippines (72.5).

Question 21

What constitutes a civil action for patent infringement?

Answer 21

Performing any act in violation of the rights granted by law ti the owner or holder of the IP right.

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.

Question 22

Who may file an action for patent infringement?

Answer 22

Section 76.2: Remedies for Patent Infringement
Civil Action: A patentee or anyone with rights in the patented invention whose rights have been infringed can bring a civil action in court.

Damages and Fees: They can recover damages, attorney’s fees, and other litigation expenses from the infringer.

Injunction: They can also seek an injunction to protect their rights.

Only the patent holder can file an action. The inventor, who was not issued a patent, cannot file any action

Question 23

Literal Infringement test

Answer 23

Initial Resort to Words: The first step is to refer directly to the words of the claim. If the accused matter clearly falls within the claim, infringement is established.

End of Analysis: If the accused matter matches the claim, the infringement is confirmed without further analysis.

Comparison Context: The court must compare the claims of the patent with the accused product within the context of the claims and specifications.

Question 24

Doctrine of Equivalents

Answer 24

Doctrine of Equivalents

Appropriation of Prior Invention: When a device incorporates the innovative concept of a prior invention, even with some modifications and changes
.
Substantial Function: The device performs substantially the same function in substantially the same way as the prior invention.

Question 25

Remedies of patent owner in case of infringement

CRIDC

Answer 25

Civil Action (76.2): Patentees or anyone with rights in the patented invention can bring a civil action in court if their rights are infringed, seeking damages, attorney’s fees, and litigation expenses, and securing an injunction.

Reasonable Royalty (76.3): If damages are inadequate or hard to determine, the court may award a sum equivalent to a reasonable royalty.

Increased Damages (76.4): The court may award damages above the actual amount sustained, up to three times the actual damages, depending on the case circumstances.

Disposal of Infringing Goods (76.5): The court can order that infringing goods, materials, and implements predominantly used in the infringement be disposed of outside commerce or destroyed, without compensation.

Contributory Infringement (76.6): Anyone who induces patent infringement or provides components specifically for infringing a patented invention, knowing they are meant for infringement, is liable as a contributory infringer and jointly and severally liable with the infringer.

Question 26

Criminal Action in cases of patent infringement

Answer 26

The first act of patent infringement does not give rise to criminal liability. A person may only be held criminally liable if he repeats the act after finality of judgment.

Question 27

Prescriptive period for a patent infringement case

Answer 27

Section 79: Limitation of Action for Damages
Time Limit for Damages: No damages can be recovered for acts of infringement committed more than four (4) years before filing the action for infringement.

Section 80: Damages, Requirement of Notice
Notice Requirement for Damages: Damages cannot be recovered for acts of infringement committed before the infringer knew, or had reasonable grounds to know, of the patent.

Presumption of Knowledge: It is presumed that the infringer knew of the patent if the product, its container, packaging, or advertising materials display the words “Philippine Patent” along with the patent number.

Question 28

Defenses in a patent infringement suit?

INSIP

Answer 28

Invalid - Patent or any claim thereof is invalid.
New - Patent is not new or patentable.
Specification - Specification of invention does not comply with the law.
Inventor - Patent was issued not to the true and actual inventor or plaintiff did not derive his rights from the true and actual inventor.
Prescription - Prescription.

Question 29

Effect of issuance of a Patent by the Patent Office

Answer 29

Raises the presumption that the article is patentable. The validity of patentability is better determined by the patent office.

Question 30

Trademarks

Answer 30

Any word, name, symbol, emblem sign or any device used by a manufacturer or merchant to identify his goods and distinguish them from others

Question 31

When may a trade name not be used?

Answer 31

When it is contrary to public morals or order and if it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name

Question 32

Is registration with the IPO a prerequisite for infringement of a trade name?

Answer 32

No.

Question 33

How is a trademark acquired?

Answer 33

SECTION 122

Acquired through registration made validly in accordance with the provisions of law.

SECTION 124
Applicant shall file a declaration of actual use within 3 years from the filing date of the application. Failure to file the same is construed as an abandonment of any right or interest in the trademark.

the doctrine that the user in good faith defeats the filer in good faith has been abandoned

Question 34

How are trade names acquired

Answer 34

Through actual use.

Section 165.2(a): Protection of Trade Names
Protection Without Registration: Trade names are protected from unlawful acts by third parties, even if not registered.

Question 35

Unregistrable Marks

Answer 35

Mnemonic: “Inventive Symbols Make Commerce Right”
Inventive - Immoral or Deceptive (123.1.a)
Symbols - State Insignia (123.1.b)
Make - Man (Personal Names or Portraits) (123.1.c)
Commerce - Confusing Marks (123.1.d)
Right - Reputation (Well-Known Marks) (123.1.e, 123.1.f)
Mark - Misleading (123.1.g)
Generic - Generic Signs (123.1.h)
Customary - Customary Signs (123.1.i)
Descriptive - Descriptive Signs (123.1.j)
Shapes - Shape Factors (123.1.k)
Color - Color Alone (123.1.l)
Public - Public Order (123.1.m)`

Question 36

First-to-file rule in trademarks

Answer 36

Filing of the the application or registration of trademarks in good faith precludes registration of the same trademark for the same goods for services

Question 37

How may confusion arise?

Answer 37

Confusion of goods - Similar or colorable imitation of marks for competing products.

Confusion of services - products are non-competing but related enough to produce confusion

Question 38

Dominancy Test

Answer 38

Section 155

focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception.

If the competing trademark contains the main or essential features of another, and confusion and deception is likely to result, infringement takes place

Question 39

Idem Sonans

Answer 39

A mark with a different spelling but is similar in sound with a registered trademark when read may be ruled as being confusingly similar with the said registered mark.

Question 40

Scope of protection afforded to trademark owners?

Answer 40

Not limited to protection from infringers with identical goods. It also extends to protection from infringers with related goods and market areas that are the normal business expansion of the owner

Question 41

Doctrine of unrelated goods

Answer 41

Section 123 One who adopted, used and registered a trademark on his goods cannot prevent the adoption, use and registration of the same trademark by others on unrelated articles

Question 42

Well-known mark

Answer 42

A well-known mark is a mark which is considered by a competent authority of the PH to be well-known internationally and in the PH whether or not it is registered in the PH.

Question 43

Remedies of a well-known mark that is not registered in the Philippines

Answer 43

1. Oppose the application of the well-known mark which is confusingly similar
2. Petition for cancellation of the registration
3. Unfair competition if the goods are being passed off by another as the goods of the owner of the well-known mark

Question 44

Paris Convention viz protection of trademarks

Answer 44

Any foreign national or juridical person has the legal capacity to sue for the protection of its trademark although he is not doing business in the PH.

Question 45

Harvard as a well-known mark

Answer 45

Under the Paris Convention, Harvard is entitled to protection in the PH of its trade name “Harvard”. This is because it is internationally known as the leading educational institution.

Question 46

Registration of Generic Marks

Answer 46

Section 123. Registrability. - 123.1. A mark cannot be registered if it:

(h) Consists exclusively of signs that are generic for the goods or services that they seek to identify;

Question 47

Doctrine of Secondary Meaning

Answer 47

A word or phrase originally incapable of of exclusive appropriation with reference to an article in the market, because it is geographical or otherwise descriptive,

might nevertheless have been used so long and so exclusively by one producer with reference to his article that in the trade the phrase has come to mean that person’s article

Question 48

Rights conferred by registration of trademark

Answer 48

1. Exclusive right to prevent all third parties not having the owner’s consent from using the mark in trade or goods where it would result to confusion
2. This extends to market areas that are the normal potential of expansion of its business
3. Allowed to register, in its favor, a domain name containing its registered trademark as a dominant feature.

Question 49

Rights of a Patent Applicant

Answer 49

Section 46

Rights Conferred by a Patent Application After Publication:
The applicant shall have all the rights of a patentee under Section 76 against any person who, without his authorization, exercised any of the rights conferred under Section 71 of this Act in relation to the invention claimed in the published patent application, as if a patent had been granted for that invention.

Conditions for Exercising Rights:
The said person had:
46.1: Actual knowledge that the invention that he was using was the subject matter of a published application; or
46.2: Received written notice that the invention that he was using was the subject matter of a published application being identified in the said notice by its serial number.

Action Requirements:
Action may not be filed until after:
The grant of a patent on the published application.
Within four (4) years from the commission of the acts complained of.

Question 50

What are the limitations to a patent holder’s rights?

Answer 50

Section 72. Limitations of Patent Rights
Circumstances where patent rights are limited:
72.1: Use of a patented product put on the market in the Philippines by the owner or with their express consent.
72.2: Acts done privately and on a non-commercial scale or for a non-commercial purpose, provided they do not significantly prejudice the economic interests of the patent owner.
72.3: Acts for the purpose of experiments related to the subject matter of the patented invention.
72.4: Preparation of medicine for individual cases in a pharmacy or by a medical professional in accordance with a medical prescription.
72.5: Use of the invention in ships, vessels, aircraft, or land vehicles entering the Philippines temporarily or accidentally, provided the invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not for manufacturing anything to be sold within the Philippines.

Question 51

Elements of Unfair Competition

Answer 51

1. Confusingly Similarity in the general appearance of the goods
2. Intent to deceive the public and defraud a competitor.

Question 52

Section 168 - Unfair Competition

Answer 52

Section 168.3. Acts Constituting Unfair Competition

Acts Deemed Unfair Competition:
168.3 (a): Selling goods that imitate the appearance of another manufacturer’s or dealer’s goods, including packaging and devices, to deceive the public and defraud another of their legitimate trade.

168.3 (b): Using any artifice or device to induce the false belief that one’s services are those of another, who has identified such services in the public’s mind.

168.3 (c): Making false statements in trade or committing any act contrary to good faith, aimed at discrediting the goods, business, or services of another.

Question 53

Infringement of Trademark vs. Unfair Competition

Answer 53

1. IT - Unauthorized use of a trademark whereas

UC - passing off of one’s goods as those of another

2. IT - fraudulent intent is unnecessary

UC - Fraudulent intent is necessary

3. IT - prior registration of the trademark is necessart

UC- not necessary

4. IT - no IT if the registered trademark is used totally unrelated to the goods specified in the certificate of trademark

UC - may exist even if the two products are not related

Question 54

When is the starting point of protection in Copyrights?

Answer 54

Works are protected by the sole fact of their creation, irrespective of the modes or form of expression.

Question 55

What are considered original and literary artistic works?

BLEND MAJESTIC FLASH

Answer 55

SECTION 172

Books, pamphlets, articles, and other writings.
Letters.
Engravings, lithography, and other works of art.
Newspapers and periodicals.
Dramatic or dramatico-musical compositions; choreographic works.
Musical compositions, with or without words.
Audio-visual and cinematographic works.
Journals, scientific and technical drawings.
Entertainment in dumb shows.
Sketches, maps, plans, and charts.
Three-dimensional works.
Illustrations, pictorial works, and advertisements.
Computer programs.
Figures (models and designs for works of art).
Lantern slides and photographic works.
Addresses, lectures, and sermons.
Sculpture.
Handcrafted (original ornamental designs or applied art).

Question 56

Derivative Works

Answer 56

Section 173. Derivative Works
Overview:
Derivative works are protected by copyright.
Types of Derivative Works:
173.1 (a): Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary or artistic works.
173.1 (b): Collections of literary, scholarly, or artistic works, and compilations of data and other materials which are original due to the selection, coordination, or arrangement of their contents

Question 57

Works not subject to being copyrighted

Answer 57

Section 175. Unprotected Subject Matter
Overview:
No copyright protection extends to:
Ideas, procedures, systems, methods of operation, concepts, principles, discoveries, or mere data.
News of the day and other miscellaneous facts.
Official texts of a legislative, administrative, or legal nature, and any official translation thereof.

`
Section 176. Works of the Government
176.1: No copyright for government works, but prior approval is needed for profit exploitation.
Agencies can impose conditions, including payment of royalties.
No approval needed for:
Statutes, rules, and regulations.
Speeches, lectures, sermons, addresses, and dissertations rendered in public or official settings.
176.2: Authors of speeches, lectures, sermons, addresses, and dissertations have exclusive rights to compile their works.
176.3: The government can hold copyrights transferred by assignment, bequest, or otherwise, and publication by the government doesn’t annul or authorize use without consent.

Question 58

Doctrine of Fair Use

Answer 58

A privilege to use the copyrighted material in a reasonable manner without the consent of the copyright owner. May be used for:

1. Criticism and comment
2. News Reporting
3. Teaching and classroom use
4. Scholarship, research and similar purpsoes

Question 59

Factors to determine fair use

Answer 59

(a) The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;

(b) The nature of the copyrighted work;

(c) The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(d) The effect of the use upon the potential market for or value of the copyrighted work.

Question 60

Copyright infringement elements

Answer 60

a. Ownership of a validly copyrighted material by the complainant

b. Infringement of the copyright by the respondent

Question 61

Remedies of a copyright owner against the infringer?

Answer 61

Section 216. Remedies for Infringement
Liability for Infringement (216.1):
(a): Injunction to restrain infringement.
Court may order to prevent entry of infringing imported goods into commerce after customs clearance.
(b): Payment of actual damages, legal costs, and expenses incurred due to infringement.
Plaintiff proves sales; defendant proves costs.
Alternatively, court awards just damages (not a penalty).
(c): Delivery under oath for impounding during action.
Includes sales invoices, articles, packaging, and implements.
(d): Delivery under oath for destruction without compensation.
Infringing copies, plates, molds, or other means.
(e): Other terms and conditions deemed proper by court.
Payment of moral and exemplary damages.
Destruction of infringing copies even if acquitted in criminal case.
Court Powers (216.2):
Court can order the seizure and impounding of any article that may serve as evidence in court proceedings.

Question 62

Prescriptive Period for DAMAGES in copyright infringement

Answer 62

Section 226. Damages. - No damages may be recovered under this Act after four (4) years from the time the cause of action arose. (Sec. 58, P.D. No. 49)

Question 63

Trademark Infringement Elements

Answer 63

1. Trademark being infringed is registered with the IPO
2. Trademark is copied, reproduced or counterfeited
3. Infringing mark is used in connection with a sale or advertising of goods
4. Use of infringing mark is likely to cause confusion or mistake or deceive purchasers
5. Use is without consent of the trademark owner

Question 64

use defined

Answer 64

Genuine use - bona fide kind of use tending towards a commercial transaction in the ordinary course of trade.

It must show that the owner actually transacted or targeted the jurisidciton wherein “use” shall be had

Question 65

Copyright on news vs. news reports

Answer 65

Sec. 176
“Newsworthy” events are not copyrightable. Copyright protects the manner of expression of news reports.

Question 66

Economic Rights

Answer 66

Exclusive right to carry out, authorize or prevent:

1. Reproduction of the work or a substantial part thereof
2. Dramatization, translation, adaptation of the work
3. First public distribution of the work
4. Rental
5. Public display/performance of the work

Question 67

Moral Rights

Answer 67

Section 193. Scope of Moral Rights

Attribution:
Right to be credited as the author, with name prominently displayed on copies and during public use.
Alterations:
Right to modify or withhold the work from publication.
Integrity:
Right to object to changes or actions that harm the author’s honor or reputation.
Misattribution:
Right to prevent use of the author’s name on works not created by them or distorted versions of their work.