Intellectual Property Law Flashcards
What is the subject matter of the right of a patent, trademark, and copyright?
Patent—new, useful, and industrially applicable inventions
Trademark—goods manufactured or produced
Copyright—literary, scientific, or artistic work
Where is the right of a parent, trademark, or copyright to be registered?
Patent—IPO
Trademark—IPO
Copyright—National Library
When does the protection of a patent, trademark, or copyright begin?
Patent–Application
Trademark–Issuance of COR
Copyright–Lifetime of author + 50 years after death of author (generally)
Any technical solution of a problem in any field of human activity which is new, involves an inventive step, and is industrially applicable.
Patentable inventions
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
What non-patentable inventions are excluded from patent protection?
- Discoveries, scientific theories, and mathematical methods
- Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers
- Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body
- Plant varieties or animal breeds or essentially biological process for the production of plants or animals (does not apply to micro-organisms and non-biological and microbiological processes)
- aesthetic creations
- anything contrary to public order or morality
What are the elements of a patent?
- Novelty
- Inventive step
- Industrial applicability
What are the grounds for cancellation of a patent?
- Invention is not new (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
Generally, who has the right to a patent?
Inventor, his heirs, or assigns
Who has the right to a patent when two or more persons jointly made an invention?
The right of the patent shall belong to them jointly
Who has the right to a patent when two or more persons separately made the same invention?
Priority is given to the one who filed first
Date of filing a foreign application for the same invention
Priority date
The claim of priority for filing patents will be based on the earlier filing date abroad
Who owns the patent of commissioned inventions?
The person who commissions the work
Who owns the copyright? The author/artist or the one who commissioned the work?
The copyright belongs to the author/artist.
The work belongs to the one who commissioned the work.
Steve Jobs invented the Macbook. This inventive activity was not part of his regular duties but he used the time, facilities, and materials of his employer, Tim Cook.
Who owns the patent?
Steve Jobs
Steve Jobs was assigned by Tim Cook to invent a laptop as part of his regular duties. There is no agreement between the two. Steve Jobs invented the Macbook
Who owns the patent?
Tim Cook
What is the term of a patent?
20 years from the filing date of the application
A patent shall confer on its owner the following exclusive rights:
- If product—restrain, prohibit, and prevent any unauthorized person from making, using, offering for sale, selling or importing the product
- If process—restrain, prevent, or prohibit any unauthorized person or entity from using the process or from selling product obtained from process
- Right to assign or transfer by succession
- Right to conclude licensing contracts
A prior user, 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 of the patent.
Does he have the right to continue his use of the invention?
Yes.
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 the patented process without the authorization of the patentee
Patent Infringement
What are kinds of infringement?
- Literal infringement
Exactness rule— item that is being sold, made or used conforms exactly to the parent claim
Addition rule—makes, uses, or sells an item that has all the elements of the patent claim of another plus other elements - Doctrine of equivalents—with some modification or change, but substantially the same:
- Function
- Way/Mean/Principle or Mode of Operation
- Result
What doctrine provides that an infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept and, although with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result?
Doctrine of equivalents
(T/F) The doctrine of equivalents requires only the identity of the result to be substantially the same.
FALSE.
The doctrine of equivalents requires the satisfaction of the function-means-and result test, the patentee having the burden to show that all three components of such equivalency test are met
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
On what grounds is the Director General of the IPO allowed to do compulsory licensing?
- National emergency/circumstances of extreme urgency
- Public interest so requires
- The 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 without satisfactory reasons (importation counts as working/using)
- Demand for patented drug and medicine is not being met to an adequate extent or reasonable terms (as determined by the DOH)
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 other common characteristic.
Ex: Quality of goods or services of different enterprises which use the sign under the control of the registered owner.
Collective mark
Name or designation identifying or distinguishing an enterprise
Trade name
How are rights in a mark acquired?
The rights in a mark shall be acquired through registration
Marks which cannot be registered
- Consists of immoral, deceptive, or scandalous matter
- Consist of a flag or coat of arms or other insignia of the PH or of any foreign nation
- Consists of a name, portrait, or signature identifying a particular living individual (no written consent). Or name, signature, or portrait of a deceased President of the PH during the life of his widow (no written consent)
- Identical with a registered mark belonging to a different proprietor
- Identical with or confusingly similar to or constitutes a translation of a mark which is considered to be well-known internationally and in the PH (whether or not it is registered here)
- Identical with or confusingly similar to or constitutes a translation of a mark considered well-known which is registered in the PH
- Likely to mislead the public
- Consists exclusively of signs that are generic
- Consists exclusively of signs that have become customary or usual to designate the goods or services in everyday language
- Consists exclusively of signs that may serve in trade to designate the kind, quality, quantity, intended purpose, etc of the goods and services
- Consist of shapes that may be necessitated by technical factors
- Consist of color alone (unless defined by a given form)
- Contrary to public order or morality
What is the certificate of registration prima facie evidence of?
- Validity of the registration
- Registrant’s ownership of the mark
- Registrant’s exclusive right to use`
What is the duration of protection of rights to a trademark?
10 years from registration
Can trademarks be renewed?
Yes.
The rights to a trademark in a certificate of registration may be renewed for periods of 10 years at its expiration upon payment of the prescribed fee and upon filing a request at any time within 6 months before or after expiration (plus fee if after)
A declaration of actual use shall be filed:
- Within 3 years from filing date of application. Extendible for another 6 months.
- AND another DAU within 1 year from the 5th anniversary of the registration of the mark.
- AND within 1 year from the renewal of the trademark registration
What is the effect of non-compliance with the DAU?
The application will be deemed abandoned or the registration cancelled
What are the rights conferred to the owner of a registered mark?
The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner’s consent from using identical or similar stuff with respect to the trademark registered. Goods and services sold by these third parties must be identical or similar to those in respect of the trademark registered.
The likelihood of confusion is presumed.
What are the rights of an owner of a well-known mark?
Theory of Dilution.
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.
What are the requisites for an owner of a well-known mark to exercise his rights?
- Use of mark would indicate a connection between those goods and services and the owner of the registered mark
- The interests of the owner of the registered mark are likely to be damaged by such use
Does the owner have the right to stop the use by third parties of their names, addresses, pseudonyms, geographical names, and exact indications for the purpose of mere identification or information ?
NO. As long as it is confined to the purposes of mere identification or information and cannot mislead the public
What are the tests to determine infringement?
- Holistic or totality test—covers the entirety of the marks in question
- Dominancy tests—focus is on prevalent or dominant features. Not just the visual (wow) but also on the aural and connotative comparisons and overall impressions
Is this trademark infringement or unfair competition?
- Registration of mark is pre-requisite
- No fraudulent intent is required
- Likelihood of confusion
Trademark infringement
Is this trademark infringement or unfair competition?
- No registration necessary
- Fraudulent intent is necessary
- Sale is required
- Passing-off element
Unfair competition
Can there be trademark infringement without unfair competition?
Trademark infringement is a form of unfair competition
BUT YES.
There can be trademark infringement without unfair competition as when the infringer discloses on the labels containing the mark that he manufactures the goods. Thus, preventing the public from being deceived that the goods originated from the trademark owner.
Right of literary property as recognized and sanctioned by positive law. An intangible, incorporeal right granted by the statute to the author or originator of certain literary or artistic productions with the sole and exclusive privilege of multiplying copies of the same and publishing and selling them
Copyright
Literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation
Original works
Original works consist of:
- Books, pamphlets, articles and other writings
- Periodicals and newspapers
- Lectures, sermons, addresses dissertations prepared for oral delivery (written or not)
- Letters
- Dramatic or dramatico-musical compositions, choreographic works or entertainment in dumb shows
- Musical compositions with or without words
- Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art, models or designs for works of art.
- Original ornamental designs or models for articles of manufacture (whether or not registrable as an industrial design)
- Illustrations, maps, plans, sketches, charts, and three-dimensional works relative to geography, topography, architecture or science
- Drawings or plastic works of a scientific or technical character.
- Photographic works (including lantern slides)
- Audiovisual works and cinematographic works
- Pictorial illustrations and ads
- Computer programs (not patentable but copyrighted)
- Other literary, scholarly, scientific and artistic works
When does the protection of copyright commence?
From the moment of creation
Are derivative works protected as new works?
YES.
The following derivative works shall also be protected by copyright:
- Dramatizations, translations, adaptations, abridgments, arrangements an other alterations of literary or artistic works
- Collections which are original by reason of the selection or coordination or arrangement of their contents
No copyright protection shall extend to
- any idea
- procedure
- system method or operation
- concept
- principle
- discovery
- mere data
- news of the day
- any official text of legislative, administrative or legal nature
Ownership of Copyright
Who is the owner of original work?
Author
Ownership of Copyright
Who is the owner of works of a joint authorship?
Co-authors.
If used separately, author of each part can be identified.
Ownership of Copyright
Who is the owner of works during employment?
The employee—if not part of regular duties even if he uses resources of employer
The employer—if part of regular duties (unless agreement to otherwise)
Ownership of Copyright
Who is the owner of commissioned work?
The person who commissions the work shall have ownership of the WORK.
The creator shall have the COPYRIGHT (unless agreement to otherwise)
Ownership of Copyright
Who is the owner of audiovisual work?
The producer, etc.
Ownership of Copyright
Who is the owner of letters?
Writer
Ownership of Copyright
Who is the owner of anonymous and pseudonymous works?
Publisher.
Until author is revealed
The following acts shall not constitute infringement of copyright?
- use of a specialized format exclusively for the use of blind, visually and reading-impaired persons
- done privately and free of charge or for charitable or religious institution
- making of quotations from published work (with source and name of author)
- reproduction or communication to the public by mass media of articles (source is clearly indicated)
- literary, scientific, or artistic works as part of reports of current events
- inclusion by way of illustration for teaching purposes and is compatible with fair use
- recording for the use of schools, universities or education institutions (deleted within reasonable time, not made from audiovisual works (except for brief excerpts))
- ephemeral recordings
- work by or under direction or control of Government
- public performance, no admission fee, for charitable or educational purpose only ( not for profit)
- public display not made by means of a film, slide, tv image, or otherwise on screen
- judicial display for the giving of professional advice by a legal practicioner
Terms of protection
General
During life of the author and for 50 years after his death.
This will also apply to posthumous work
Terms of protection
Joint authorship
During life of last surviving author and for 50 years after his death
Terms of protection
Anonymous or pseudonymous work
50 years from the date work was first lawfully published.
Unless author is revealed, then general terms apply.
If not published, 50 years from making of the work
Terms of protection
Works of applied art
25 years from date of making
Terms of protection
Photographic works
50 years from publication
If unpublished, 50 years from making
Terms of protection
Audio-visual works
50 years from publication
If unpublished, 50 years from making
Terms of protection
Performers and producers for sound recordings
50 years from publication
If unpublished, 50 years from making of recording
Broadcasts
20 years from date of broadcast,
With extended term applicable only to old works with subsisting protection
When does a person infringe a right protected?
A person:
1. Directly commits the infringement
2. Benefits of the infringing activity of another person who commits infringement. IF the person benefiting has been given notice of the infringing activity and has the right and ability to control the activities of the other person
3. With knowledge of infringing activity, induces, cause or materially contributes to the infringing conduct of another
