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Patents (Philippine Law)
Patents (Philippine Law)
Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one
another. A trademark is 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. In relation thereto, a trade name means the
name or designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the
moment of their creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any
field of human activity which is new, involves an inventive step and is industrially applicable.” (Kho vs. CA, G.R. No.
115758, [2002])
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PATENT
Section 23. An invention shall not be considered new if it forms part of a prior art.
NOVELTY ANALYSIS
How much information from prior art is sufficient?
“The defense of lack of novelty (i.e. 'anticipation') can only be established by a single prior art reference which
discloses each and every element of the claimed invention.
Grace Period
Non-Prejudicial Disclosure
If you have already disclosed or published your inventions in a journal, demonstrate, sell or discuss your invention in
public, you can still file a patent application within 12 months (1 year) from the date of disclosure or publication. (Sec.
25)
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26.2. In the case of drugs and medicines, there is no inventive step if the invention results from the mere discovery of
a new form or new property of a known substance which does not result in the enhancement of the known efficacy of
that substance, or the mere discovery of any new property or new use for a known substance, or the mere use of a
known process unless such known process results in a new product that employs at least one new reactant.
Secondary considerations
• Commercial success
• Long felt need
• Failure of others
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22.1. Discoveries, scientific theories and mathematical methods, and in the case of drugs and medicines, the mere
discovery of a new form or new property of a known substance which does not result in the enhancement of the
known efficacy of that substance, or the mere discovery of any new property or new use for a known substance, or the
mere use of a known process unless such known process results in a new product that employs at least one new
reactant.
For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers,
mixtures of isomers, complexes,combinations, and other derivatives of a known substance shall be considered to be
the same substance, unless they differ significantly in properties with regard to efficacy;
2. Ownership of a patent
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DISCLOSURES and CLAIMS
SECTION 35. Disclosure and Description of the Invention. - 35.1. Disclosure. - The application shall disclose the
invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
SECTION 36. The Claims. - 36.1. The application shall contain one (1) or more claims which shall define the matter
for which protection is sought. Each claim shall be clear and concise, and shall be supported by the description.
Mandatory Publication
SECTION 44. Publication of Patent
Application. - 44.1. The patent application shall be published in the IPO Gazette together with a search document
established by or on behalf of the Office citing any documents that reflect prior art, after the expiration of eighteen (18)
months from the filing date or priority date.
44.2. After publication of a patent application, any interested party may inspect the application documents filed with
the Office.
Term of Patent
SECTION 54. Term of Patent. - The term of a patent shall be twenty (20) years from the filing date of the application.
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(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.
71.2.Patent owners shall also have the right to assign, or transfer by succession the patent, and to conclude licensing
contracts for the same. (Sec. 37, R.A. No. 165a)
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(b) A judicial or administrative body has determined that the manner of exploitation, by the owner of the patent
or his licensee is anticompetitive.
(c) In the case of drugs and medicines, there is a national emergency or other circumstance of extreme
urgency requiring the use of the invention; or
(d) In the case of drugs and medicines, there is public noncommercial use of the patent by the patentee,
without satisfactory reason; or
(e) In the case of drugs and medicines, the demand for the patented article in the Philippines is not being met
to an adequate extent and on reasonable terms, as determined by the Secretary of the Department of Health.
74.2. Unless otherwise provided herein, the use by the Government, or third person authorized by the Government
shall be subject, where applicable, to the following provisions:
(a) In situations of national emergency or other circumstances of extreme urgency as provided under Section
74.1(c), the right holder shall be notified as soon as reasonably practicable;
(b) In the case of public non-commercial use of the patent by the patentee, without satisfactory reason, as
provided under Section 74.1 (d), the right holder shall be informed promptly: Provided, That, the Government
or third person authorized by the Government, without making a patent search, knows or has demonstrable
ground to know that a valid patent is or will be used by or for the Government;
(c) If the demand for the patented article in the Philippines is not being met to an adequate extent and on
reasonable terms as provided under Section 74.1 (e), the right holder shall be informed promptly;
(d) The scope and duration of such use shall be limited to the purpose for which it was authorized;
(e) Such use shall be non-exclusive;
(f) The right holder shall be paid adequate remuneration in the circumstances of each case, taking into
account the economic value of the authorization; and
(g) The existence of a national emergency or other circumstances of extreme urgency, referred to under
Section 74.1 or other exploitation, which shall be immediately executory.
74.3. All cases arising from the implementation of this provision shall be cognizable by courts with appropriate
jurisdiction provided by law. No court, except the Supreme Court of the Philippines, shall issue any temporary
restraining order or preliminary injunction or such other provisional remedies that will prevent its immediate execution.
74.4. The Intellectual Property Office (IPO), in consultation with the appropriate government agencies, shall issue the
appropriate implementing rules and regulations for the use or exploitation of patented inventions as contemplated in
this section within one hundred twenty (120) days after the effectivity of this law.
7. Patent infringement
SECTION 76. Civil Action for Infringement
76.1. 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. Provided, That, this shall not apply to instances covered by Sections 72.1 and 72.4
(Limitations of Patent Rights); Section 74 (Use of Invention by Government); Section 93.6 (Compulsory Licensing);
and Section 93-A
(Procedures on Issuance of a Special Compulsory License under the TRIPS Agreement) of this Code.
76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented invention, whose rights
have been infringed, may bring a civil action before a court of competent jurisdiction, to recover from the infringer such
damages sustained thereby, plus attorney's fees and other expenses of litigation, and to secure an injunction for the
protection of his rights.
76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty, the court may award
by way of damages a sum equivalent to reasonable royalty.
76.4. The court may, according to the circumstances of the case, award damages in a sum above the amount found
as actual damages sustained: Provided, That the award does not exceed three (3) times the amount of such actual
damages.
76.5. The court may, in its discretion, order that the infringing goods, materials and implements predominantly used in
the infringement be disposed of outside the channels of commerce or destroyed, without compensation.
76.6. 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. (Sec. 42, R.A. No. 165a)
Extent of Protection
SECTION 75. Extent of Protection and Interpretation of Claims. - 75.1. The extent of protection conferred by the
patent shall be determined by the claims, which are to be interpreted in the light of the description and drawings.
75.2. For the purpose of determining the extent of protection conferred by the patent, due account shall be taken of
elements which are equivalent to the elements expressed in the claims, so that a claim shall be considered to cover
not only all the elements as expressed therein, but also equivalents.
Doctrine of Equivalents 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
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same function in substantially the same way to achieve substantially the same result. This doctrine requires the
satisfaction of the function-means-result test.
Literal infringement
Literal infringement exists if an accused device falls directly within the scope of properly interpreted claims.
Infringement by Equivalents
Functions-Means-Results test:
If two devices do the same work in substantially the same way and accomplish substantially the same result, they are
the same, even though they differ in name, form or shape. WWR (Smith Kline Beckman vs. CA, G.R. No. 126627
[2003])
Section 78. Process Patents; Burden of Proof . - 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. In ordering the defendant to
prove that the process to obtain the identical product is different from the patented process, the court shall adopt
measures to protect, as far as practicable, his manufacturing and business secrets.
SECTION 81. Defenses in Action for Infringement. - In an action for infringement, the defendant, in addition to other
defenses available to him, may show the invalidity of the patent, or any claim thereof, on any of the grounds on which
a petition of cancellation can be brought under Section 61 hereof.”
SECTION 84. Criminal Action for Repetition of Infringement . — If infringement is repeated by the infringer or by
anyone in connivance with him after finality of the judgment of the court against the infringer, the offenders shall,
without prejudice to the institution of a civil action for damages, be criminally liable therefor and, upon conviction, shall
suffer 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), at
the discretion of the court. The criminal action herein provided shall prescribe in three (3) years from date of the
commission of the crime. (Sec. 48, R.A. No. 165a)
“Dupont was inexcusably negligent in the prosecution of its patent application; there was a correlative duty on its part
to be diligent in keeping itself updated on the progress of its Patent Application. Its failure to be informed of the
abandonment of its Patent Application was caused by its own lack of prudence.”
“The patent law has a three-fold purpose: (1) patent law seeks to foster and reward invention; (2) it promotes
disclosures of inventions to stimulate further innovation and to permit the public to practice the invention once the
patent expires; (3) the stringent requirements for patent protection seek to ensure that ideas in the public domain
remain there for the free use of the public.
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“A patent is a monopoly granted only for specific purposes and objectives. Thus, its procedures must be complied with
to attain its social objective.”
• Issue #1:
• Can an injunctive relief be issued based on an action of patent infringement when the patent allegedly infringed has
already lapsed?
• No. The “exclusive right to monopolize the subject matter of the patent exists only within the term of the patent.”
• “It is clear from the above-quoted provision of law that the exclusive right of a patentee to make, use and sell a
patented product, article or process exists only during the term of the patent.”
Does the filing of separate patent infringement actions before the IPO and the RTC for different patents constitute
forum shopping?
Yes. “It is clear from the foregoing that the ultimate objective which respondents seek to achieve in their separate
complaints filed with the RTC and the IPO, is to ask for damages for the alleged violation of their right to exclusively
sell Sulbactam Ampicillin products and to permanently prevent or prohibit petitioner from selling said products to any
entity. Owing to the substantial identity of parties, reliefs and issues in the IPO and RTC cases, a decision in one case
will necessarily amount to res judicata in the other action.
ROMA DRUG vs. RTC Guagua, et al., G.R. No. 149907, 16 April 2009
-raiding team seized several imported medicines, including Augmentin tablets, Orbenin capsules, Amoxil and
Ampiclox
-seized medicines were manufactured by SmithKline but imported directly from abroad and not purchased through the
local SmithKline, the authorized Philippine distributor of these products
-NBI filed a criminal complaint against Rodriguez for of R.A. No. 8203 (Special Law on Counterfeit Drugs)
-“Counterfeit” – includes an “unregistered imported drug product”
o"Unregistered imported drug product” shall refer to unregistered imported drug product without a registered
counterpart brand in the Philippines. If the unregistered imported drug product has a registered counterpart
brand in the Philippines, their product shall be considered counterfeit. (IRR)
o“registered” – contemplates registration with FDA
SC: SLCD's classification of "unregistered imported drugs" as "counterfeit drugs” in conflict with Rep. Act No. 9502
which grants private third persons the unqualified right to import or otherwise use such drugs.
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