Review Guide Ip I
Review Guide Ip I
CODE
PART I
GUIDE QUESTIONS
I.1. Differentiate trademark, copyright and patent from each other.
I.2. What is the doctrine of equivalents? Distinguish it from literal infringement.
I.3. Distinguish “First to File Rule” from “Right of Priority”.
I.4. Leonardo invented a device which, through the use of sanitized gel, can recharge a
cellphone battery. He applied and was granted a patent effective within the Philippines.
A year before, however, Brad had invented a similar device which he has been using at
his stall in Greenhills. Leonardo files a civil action for patent infringement against
Brad with prayer for preliminary injunction. Will the suit prosper? Why or why not?
I.5. The Pinoy Pharmaceutical Corporation (PPC) invented and patented a new
medicine for the cure of COVID-19 called Pinoy Ito Gamot or PIG-C19. PPC started
selling PIC-C19 at an exorbitant price that only a few could afford it. Because of the
emergency situation, the Department of Health (DOH) asked PPC for a license to
produce and sell PIC-C19 to the public at a substantially lower price. PPC citing
allegedly huge costs and expenses refused. As the legal consultant of the DOH, what
will you offer as remedy?
GUIDE QUESTIONS
I.6. Dr. Medico discovered a new method of treating COVID-19 involving a
special method of diagnosing the disease, treating it with new medicine that
resulted from long experiments, clinical trials and field testing, and novel
measurable mind exercises. Can he apply for a patent for his new method of
diagnosis, new medicine and new method of treatment?
I.7. Dr. Medico applied for a patent for his new medicine but it was taking too
long that he instead filed an application for and obtained a copyright of “Staying
Alive” the name of his new medicine for COVID-19. What protection, if any,
does he have relative to his new medicine?
1.8. Matthew works as an auditor at the All Clean, Inc. (ACI). During office
hours, usually while waiting for his colleagues to arrive for their audit committee
meeting, he formulated a device that would enable the user to detect if there are
particular virus droplets or traces on any surface or object. After some time spent
both at the office and at home, he finally came up with such device that his lawyer
told him is patentable. Who has the right over the patent?
COVERAGE
• Differences between
• Patents
• Trademarks
• Copyright
Kho v. Court of Appeals, G.R. No. 115758, [March 19, 2002], 429 PHIL 140-154
TRADEMARK, COPYRIGHT AND PATENT
“Petitioner has no right to support her claim for the exclusive use of the subject
trade name and its container. The name and container of a beauty cream
product are proper subjects of a trademark inasmuch as the same fall squarely
within its definition. In order to be entitled to exclusively use the same in the sale
of the beauty cream product, the user must sufficiently prove that she registered
or used it before anybody else did. The petitioner's copyright and patent
registration of the name and container would not guarantee her the right to the
exclusive use of the same for the reason that they are not appropriate subjects of
the said intellectual rights. Consequently, a preliminary injunction order cannot
be issued for the reason that the petitioner has not proven that she has a clear
right over the said name and container to the exclusion of others, not having
proven that she has registered a trademark thereto or used the same before
anyone did.”
Kho v. Court of Appeals, G.R. No. 115758, [March 19, 2002], 429 PHIL 140-154
TRADEMARK, COPYRIGHT AND PATENT
“That the works of the petitioner may be the proper subject of a patent
does not entitle him to the issuance of a search warrant for violation of
copyright laws. In Kho v. Court of Appeals and
Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated, the Court
ruled that ‘these copyright and patent rights are completely distinct and
separate from one another, and the protection afforded by one cannot be
used interchangeably to cover items or works that exclusively pertain to
the others’.”
Ching v. Salinas Sr., G.R. No. 161295, [June 29, 2005], 500 PHIL 628-651
TRADEMARK, COPYRIGHT AND PATENT
Being plain automotive spare parts that must conform to the original structural design of the
components they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are
not ornamental. They lack the decorative quality or value that must characterize authentic
works of applied art. They are not even artistic creations with incidental utilitarian functions or
works incorporated in a useful article. In actuality, the personal properties described in the
search warrants are mechanical works, the principal function of which is utility sans any
aesthetic embellishment.
Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included
in the catch-all phrase “other literary, scholarly, scientific and artistic works” in Section 172.1(a)
of R.A. No. 8293. Applying the principle of ejusdem generis which states that “where a statute
describes things of a particular class or kind accompanied by words of a generic character, the
generic word will usually be limited to things of a similar nature with those particularly
enumerated, unless there be something in the context of the state which would repel such
inference,”[46] the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not copyrightable,
being not of the same kind and nature as the works enumerated in Section 172 of R.A. No. 8293
JESSIE G. CHING V WILLIAM SALINAS, ET AL GR 161295 JUN 29, 2005
TRADEMARK, COPYRIGHT AND PATENT
In Summerville General Merchandising Co., v CA, the SC clarified that in the issuance of a
search warrant involving the alleged violation of applicant’s intellectual property rights,
specifically unauthorized use of the design and Royal plastic case/container of Crown brand
playing cards, the seizure of hundreds of “Crown” playing cards was not warranted because:
We then said that assuming that the Crown playing cards could be considered subject of the
offense, a sample or two are more than enough to retain should there have been a need to
examine them along with the plastic container/case; and that there was no need to hold the
hundreds of articles seized. We said so in the context that since what was in dispute was the
design of the Royal plastic cases/containers of playing cards and not the playing card per se, a
small number of Crown brand playing cards would suffice to examine them with the Royal
plastic cases/containers. And the return of the playing cards would better serve the purposes of
justice and expediency.
Summerville General Merchandising Co., v CA, G.R. No. 158767, June 26, 2007, 525 SCRA 602,
cited in Century Chinese Medicine Co., et al v People et al, GR 188526, Nov 11, 2013
TRADEMARK, COPYRIGHT AND PATENT
“The patent law has a three-fold purpose: ‘first, patent law seeks to foster and reward invention;
second, it promotes disclosures of inventions to stimulate further innovation and to permit the
public to practice the invention once the patent expires; third, the stringent requirements for patent
protection seek to ensure that ideas in the public domain remain there for the free use of the
public.’ It is only after an exhaustive examination by the patent office that a patent is issued. Such
an in-depth investigation is required because ‘in rewarding a useful invention, the rights and
welfare of the community must be fairly dealt with and effectively guarded. To that end, the
prerequisites to obtaining a patent are strictly observed and when a patent is issued, the
limitations on its exercise are equally strictly enforced. To begin with, a genuine invention or
discovery must be demonstrated lest in the constant demand for new appliances, the heavy hand of
tribute be laid on each slight technological advance in art.’ There is no such scrutiny in the case of
copyrights nor any notice published before its grant to the effect that a person is claiming the
creation of a work. The law confers the copyright from the moment of creation and the copyright
certificate is issued upon registration with the National Library of a sworn ex parte claim of
creation. Therefore, not having gone through the arduous examination for patents, the petitioner
cannot exclude others from the manufacture, sale or commercial use of the light boxes on the sole
basis of its copyright certificate over the technical drawings.”
Pearl & Dean (Phil.) v. Shoemart, G.R. No. 148222, [August 15, 2003], 456 PHIL 474-497
PATENTABLE INVENTIONS
Juan v. Juan, G.R. No. 221732, [August 23, 2017], 817 PHIL 192-208
NON-PATENTABLE INVENTIONS
SEC. 22. Non-Patentable Inventions. - The following shall be excluded from patent
protection:
22.1. Discoveries, scientific theories and mathematical methods;
22.2. Schemes, rules and methods of performing mental acts, playing games or doing
business and programs for computers
22.3. Methods for treatment of the human or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body. This provision shall not apply to
products and composition for use in any of these methods;
22.4. Plant varieties or animal breeds or essentially biological process for the production of
plants or animal; This provision shall not apply to micro-organisms and non-biological and
microbiological processes.
Provisions under this subsection shall not preclude Congress to consider the enactment of a
law providing sui generis protection of plant varieties and animal breeds and a system of
community intellectual rights protection;
22.5. Aesthetic creations; and
22.6. Anything which is contrary to public order or morality.
NOT PATENTABLE
”It has been repeatedly held that an invention must possess the essential elements of novelty,
originality and precedence and for the patentee to be entitled to protection, the invention must be
new to the world. Accordingly, a single instance of public use of the invention by a patentee for
more than two years (now for more than one year only under Sec. 9 of the Patent Law) before the
date of his application for his patent, will be fatal to the validity of the patent when issued. (Frank,
et al. v. Kosuyama; Vargas v. F.M. Yaptico & Co. and Vargas v. Chua, et al., supra).
“The law provides:
‘SEC. 9. Invention not considered new or patentable. — An invention shall not be considered new
or capable of being patented if it was known or used by others in the Philippines before the
invention thereof by the inventor named in an application for patent for the invention; or if it was
patented or described in any printed publication in the Philippines or any foreign country more
than one year before the application for a patent therefor; or if it had been in public use or on sale
in the Philippines for more than one year before the application for a patent therefor; or if it is the
subject matter of a validity issued patent in the Philippines granted on an application filed before
the filing of the application for patent therefor.’”
Maguan v. Court of Appeals, G.R. No. L-45101, [November 28, 1986], 230 PHIL 204-215
NOT PATENTABLE
“As hereinbefore stated, the defendant relies on three special defenses. One such
defense, on which the judgment of the lower court is principally grounded, and to
which appellant devotes the major portion of his vigorous argument, concerns the
element of novelty, invention, or discovery, that gives existence to
the right to a patent. On this point the trial court reached the conclusion that ‘the
patented plow of the plaintiff, Exhibit D, is not different from the native plow,
Exhibit 2, except in the material, in the form, in the weight and the grade of the
result, the said differences giving it neither a new function nor a new result distinct
from the function and the result obtained from the native plow; consequently, its
production does not presuppose the exercise of the inventive faculty but merely of
mechanical skill, which does not give a right to a patent of an invention under the
provisions of the Patent Law.’ In thus finding, the court may have been right, since
the Vargas plow does not appear to be such a ‘combination’ as contains a novel
assemblage of parts exhibiting invention”. Vargas v. F. M. Yaptico & Co. (Ltd.),
G.R. No. 14101, [September 24, 1919], 40 PHIL 195-203
RIGHT TO A PATENT
30.2. In case the employee made the invention in the course of his employment
contract, the patent shall belong to:
• The employee, if the inventive activity is not a part of his regular duties even if the
employee uses the time, facilities and materials of the employer;
• The employer, if the invention is the result of the performance of his regularly assigned
duties, unless there is an agreement, express or implied, to the contrary
RIGHT OF PRIORITY
An application for patent filed by any person who has previously applied for the same
invention, or law affords similar privileges to Filipino citizens, shall be considered
filed as of date of filing the foreign application provided that the:
• Local application was filed within 12 months from the date the earliest foreign
application was filed; and
• Certified true copy of foreign application with English translation is filed within
6 months from the date of filing in the Philippines.
RIGHT OF PRIORITY
J. LEONEN
“A patent applicant with the right of priority is given preference in the grant of a patent when there are two or more
applicants for the same invention. Section 29 of the Intellectual Property Code provides:
SECTION 29. First to File Rule. — If two (2) or more persons have made the invention separately and independently of
each other, the right to the patent shall belong to the person who filed an application for such invention, or where two
or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest
priority date.
Since both the United States and the Philippines are signatories to the Paris Convention for the Protection of Industrial
Property, an applicant who has filed a patent application in the United States may have a right of priority over the
same invention in a patent application in the Philippines. However, this right of priority does not immediately entitle a
patent applicant the grant of a patent. A right of priority is not equivalent to a patent. Otherwise, a patent holder of
any member-state of the Paris Convention need not apply for patents in other countries where it wishes to exercise its
patent.
It was, therefore, inaccurate for petitioner to argue that its prior patent application in the United States removed the
invention from the public domain in the Philippines. This argument is only relevant if respondent Therapharma, Inc.
had a conflicting patent application with the Intellectual Property Office. A right of priority has no bearing in a case for
revival of an abandoned patent application.”
(E.I. Dupont De Nemours and Co. v. Francisco, G.R. No. 174379, [August 31, 2016], 794 PHIL 97-148)
GROUNDS FOR CANCELLATION OF A PATENT
SEC. 61. Cancellation of Patents.- 61.1. Any interested person may, upon
payment of the required fee, petition to cancel the patent or any claim thereof, or
parts of the claim, on any of the following grounds:
• That the patent does not disclose the invention in a manner sufficiently clear and complete
for it to be carried out by any person skilled in the art; or
61.2. Where the grounds for cancellation relate to some of the claims or parts of it,
cancellation may be effected to such extent only.
PROCEDURE FOR CANCELLATION
• File petition
• Hearing with notice to specific persons and publication
• May be heard and decided by Committee of three in cases involving highly
technical issues upon motion
• Appealable to Director-General
• If proved, patent or any specified claim or claims cancelled
• If patentee amended during cancellation proceedings, Committee may decide to maintain
the patent as amended
• If patent amended, Bureau shall publish mention of cancellation decision, publish the
abstract, representative claims and drawings indicating that the amendments consist of
• No fee for printing of new patent, revoked
• If cancelled, rights terminated
• Notice of cancellation published in IPO Gazette
• Immediately executory pending appeal unless restrained by Director General
REMEDIES OF THE TRUE AND ACTUAL INVENTOR
SEC.68 Remedies of the True and Actual Inventor. - If a person, who was
deprived of the patent without his consent or through fraud is declared by
final court order or decision to be the true and actual inventor, the court shall
(a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent
unauthorized person or entity from making, using, offering for sale, selling or importing
that product;
(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.
RIGHTS CONFERRED BY A PATENT
J. LEONEN
E.I. Dupont De Nemours and Co. v. Francisco, G.R. No. 174379, [August
31, 2016], 794 PHIL 97-148
RIGHTS CONFERRED BY A PATENT
J. LEONEN
The grant of a patent is to provide protection to any inventor from any patent infringement. Once an
invention is disclosed to the public, only the patent holder has the exclusive right to manufacture,
utilize, and market the invention. In Creser Precision Systems v. Court of Appeals:
Under American jurisprudence, an inventor has no common-law right to a monopoly of his
invention. He has the right to make, use and vend his own invention, but if he voluntarily discloses
it, such as by offering it for sale, the world is free to copy and use it with impunity. A patent,
however, gives the inventor the right to exclude all others. As a patentee, he has the exclusive right
of making, using or selling the invention.
Under the Intellectual Property Code, a patent holder has the right to ‘to restrain, prohibit and
prevent’ any unauthorized person or entity from manufacturing, selling, or importing any product
derived from the patent. However, after a patent is granted and published in the Intellectual
Property Office Gazette, any interested third party ‘may inspect the complete description, claims,
and drawings of the patent.’
E.I. Dupont De Nemours and Co. v. Francisco, G.R. No. 174379, [August 31, 2016], 794 PHIL 97-148
RIGHTS CONFERRED BY A PATENT
J. LEONEN
The grant of a patent provides protection to the patent holder from the
indiscriminate use of the invention. However, its mandatory publication also
has the correlative effect of bringing new ideas into the public consciousness.
After the publication of the patent, any person may examine the invention and
develop it into something further than what the original patent holder may
have envisioned. After the lapse of 20 years, the invention becomes part of the
public domain and is free for the public to use.
E.I. Dupont De Nemours and Co. v. Francisco, G.R. No. 174379, [August 31,
2016], 794 PHIL 97-148
RIGHTS CONFERRED BY A PATENT
Pearl & Dean (Phil.) v. Shoemart, G.R. No. 148222, [August 15, 2003], 456 PHIL 474-497
LIMITATIONS OF PATENT RIGHTS
SEC. 72. Limitations of Patent Rights. – The owner of a patent has no right to prevent
third parties from performing, without his authorization, the acts referred to in Section 71
hereof (Rights Conferred by a Patent) in the following circumstances:
• Using a patented product which has been put on the Philippine market by the owner
of the product, or with his express consent, insofar as such use is performed after
the product has been so put on the said market. Provided that:
• With regard to drugs and medicines, the limitation on patent rights shall apply after a drug or
medicine has been introduced in the Philippines or anywhere else in the world by the patent
owner or by any party authorized to use the invention.; provided, further, that
• The right to import the drugs and medicines contemplated in this section shall be available to
any government agency or any private third party.
LIMITATIONS OF PATENT RIGHTS
• Where the act is done privately and on non-commercial scale or for a non-commercial purpose provided that it
does not significantly prejudice the economic interests of the owner of the patent.
• Where the act consists of making or using exclusively for experimental use of the invesntion for scientific
purposes or educational purposes and such other activities directly related to such scientific or educational
experimental use.
• In case of drugs or medicines, where the act includes testing, using, making or selling the invention including
any data related thereto, solely for purposes reasonably related to the development and submission of
information and issuance of approval by government regulatory agencies required under any law of the
Philippines or of another country that regulates the manufacture, construction , use or sale of any product;
provided that in order to protect the data submitted by the original patent holder from unfair commercial use
provided in Art 39.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS
Agreements), the Intellectual Property Office, in consultation with the appropriate government agencies, shall
issue the appropriate rules and regulations necessary thereon not later than 20 days after the enactment the law;
• Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a
medicine in accordance with a medical prescription or acts concerning the medicine so prepared; and
• Where the invention is used in any ship, vessel, aircraft or land vehicle of any other country entering the
territory of the Philippines temporarily or accidentally provided such invention is used exclusively for the needs
of the ship, vessel, aircraft, or land vehicle and not used for the manufacturing of anything sold within the
Philippines.
LIMITATIONS OF PATENT RIGHTS
SEC. 73 Prior User. –
73.1. Notwithstanding Section 72 hereof, any prior user, who, 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 on which a patent is granted, shall have the right to continue
the use thereof as envisaged in such preparations within the territory where
the patent produces its effect.
73.2. The right of the prior user may only be transferred or assigned together
with his enterprise or business, or with that part of his enterprise or business
in which the use or preparations for use have been made.
LIMITATIONS OF PATENT RIGHTS
SEC. 74. Use of Invention by Government. –
74.1 A government agency or third person authorized by the Government may exploit
the invention even without agreement of the patent owner where:
(a) The public interest, in particular, national security, nutrition, heath or the
development of other sector, as determined by the appropriate agency of the
government, so requires; or
(b) A judicial or administrative body has determined that the manner of exploitation, by
the owner of the patent or his licensee, is anti-competitive.
(c) In the case of drugs and medicines, there is a national emergency or other
circumstance of extreme urgency requiring the use of the inestion or
(d) In the case of drugs and medicines, there is public non-commercial use of the patent
by the patentee, without satisfactory reason; or
(e) In the case of the 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 Health.
LIMITATIONS OF PATENT RIGHTS
74.2. Unless otherwise provided herein, the use by the Government, or third
person authorized by Government shall be subject, where applicable, to the
following provisions:
(a) In situations of national emergency or other circumstances of extreme
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 Sec 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;
LIMITATIONS OF PATENT RIGHTS
( c) if the demand for the patented article in the Philippins is not being met to
an adequate extent and on reasonable terms as provided under Sec 74.1 ( e),
the right holder shall be informed promptly
( d) The scope and duration of such use shall be liited 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 circumstnaces of extreme
emergency referred in Sec 74.1 ( c) shall be subject to the determination of
the President of the Philippines for the purpose of determining the need for
such use or other exploitation which shall be immediately executory.
PATENT INFRINGEMENT
DEFINITION
• making, using, offering for sale, selling, importing a
patented product or product obtained directly or indirectly
from a patented process, or the use of a patented process
without the authorization of the patentee
Patentee or anyone possessing right, title or interest into patented invention, whose
rights are infringed may bring a civil action:
• To recover damages sustained, attorney’s fees and expenses of litigation
• if damages are inadequate or cannot be readily ascertained with reasonable
certainty, sum equivalent to reasonable royalty
• Court may according to circumstances award damages in a sum above the
amount found as actual damages sustained provided that the award does not
exceed 3 times the amount of actual damages
• No damages if acts of infringement committed more than 4 years before
institution of action
• No damages where acts committed before the infringer had known or had
reasonable grounds to know of the patent. He is presumed to have known where
the container or package or material advertising, indicate the words “Philippine
Patent” with number of the patent
CIVIL ACTION FOR PATENT INFRINGEMENT
• To secure an injunction for the protection of his rights
• Court may order in its discretion that the infringing goods, materials and implements
predominantly used in the infringement be disposed outside the channels of
commerce or destroyed without compensation.
• 76.6. Anyone who actively induces 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. 77. Infringement Action by a Foreign National. – Any foreign national or juridical entity
who meets the requirements of Section3 and not engaged in business in the Philippies, to
which a patent has been granted or assigned under this Act, may bring an action for
infringement of patent, whether or not it is licensed to do business in the Philippines under
existing law.
CRIMINAL ACTION FOR PATENT INFRINGEMENT
SE. 84. Criminal Action for Repetition of Infringement
• Offenders shall, without prejudice to the institution of a civil action for damages
• Be criminally liable and upon conviction shall suffer, at the discretion of the
court:
• Imprisonment from 6 months to 3 years and/or
• Fine from P100,000 to P300,000
(Maguan v. Court of Appeals, G.R. No. L-45101, [November 28, 1986], 230 PHIL 204-215)
WHO CAN FILE AN ACTION FOR PATENT INFRINGEMENT
“Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly provides . .
. that only the patentee or his successors-in-interest may file an action for
infringement. The phrase "anyone possessing any right, title or interest in and to
the patented invention" upon which petitioner maintains its present suit, refers
only to the patentee's successors-in-interest, assignees or grantees since actions
for infringement of patent may be brought in the same of the person or persons
interested, whether as patentee, assignees, or as grantees, of the exclusive right.
Moreover, there can be no infringement of a patent until a patent has been issued,
since whatever right one has to the invention covered by the patent arises alone
from the grant of patent. In short, a person or entity who has not been granted
letters patent over an invention and has not acquired any right or title thereto
either as assignee or as licensee, has no cause of action for infringement because
the right to maintain an infringement suit depends on the existence of the patent.”
(Creser Precision Systems, Inc. v. Court of Appeals, G.R. No. 118708, [February
2, 1998], 349 PHIL 687-697)
WHO CAN FILE AN ACTION FOR PATENT INFRINGEMENT
“The remedy of declaratory judgment or injunctive suit on patent invalidity relied upon by
petitioner cannot be likened to the civil action for infringement under Section 42 of the Patent
Law. The reason for this is that the said remedy is available only to the patent holder or his
successors-in-interest. Thus, anyone who has no patent over an invention but claims to have a
right or interest thereto can not file an action for declaratory judgment or injunctive suit which
is not recognized in this jurisdiction. Said person, however, is not left without any remedy. He
can, under Section 28 of the aforementioned law, file a petition
for cancellation of the patent within three (3) years from the publication of said patent with the
Director of Patents and raise as ground therefor that the person to whom the patent was issued
is not the true and actual inventor. Hence, petitioner's remedy is not to file an action for
injunction or infringement but to file a petition for cancellation of private respondent's patent.
Petitioner however failed to do so. As such, it can not now assail or impugn the validity of the
private respondent's letters patent by claiming that it is the true and actual inventor of
the aerial fuze.”
(Creser Precision Systems, Inc. v. Court of Appeals, G.R. No. 118708, [February 2, 1998], 349
PHIL 687-697)
CANCELLATION OF PATENT v PATENT INFRINGEMENT
“Petitioner-appellant contends that the Director of Patents erred in not accepting as final
and conclusive the findings of fact of the Court of Appeals, namely, that the petitioner was
the prior user of the design in question, and that designs in Letters Patent Nos. 6 and 7 are
not new and original. The director of Patents held that these findings are not ‘clear’,
‘satisfactory’ and ‘free from doubt.’
“The pivotal issue that arises is whether or not the Director of Patents is bound in the
cancellation proceedings by the findings arrived at by the Court of Appeals in the criminal
case against petitioner. The answer is in the negative. In the cancellation proceedings the
question refers to the validity of the design patents issued to respondent Jose Ong Lian Bio,
while in the criminal case the inquiry is whether Co San unfairly competed against the
luggage of said respondent protected by design patent No. 7. The first is within the
cognizance of the Patent Office (Section 28, Republic Act No. 160, as amended); the second
under the jurisdiction of the court of first instance (Article 189, Revised Penal Code, as
amended by Republic Act 172). The acquittal of the petitioner by the Court of Appeals was
not based on the cancellation of a patent, but on the opinion that the accused (petitioner)
had not deceived or defrauded the complainant (respondent).”
(Co San v. Director of Patents, G.R. No. L-10563, [February 23, 1961], 111 PHIL 116-119)
PATENT INFRINGEMENT v UNFAIR COMPETITION
“There is evidently no mention of any crime of "unfair competition" involving design
patents in the controlling provisions on Unfair Competition. It is therefore unclear
whether the crime exists at all, for the enactment of RA 8293 did not result in the
reenactment of Art. 189 of the Revised Penal Code. In the face of this ambiguity, we must
strictly construe the statute against the State and liberally in favor of the accused, for
penal statutes cannot be enlarged or extended by intendment, implication or any
equitable consideration. Respondents invoke jurisprudence to support their contention
that unfair competition exists in this case. However, we are prevented from applying these
principles, along with the new provisions on Unfair Competition found in the IPR Code,
to the alleged acts of the petitioners, for such acts constitute patent infringement as
defined by the same Code —
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 authorization of the patentee
constitutes patent infringement. ”
(Savage v. Taypin, G.R. No. 134217, [May 11, 2000], 387 PHIL 718-729)
VOLUNTARY LICENSING
(Smith Kline & French Laboratories, Ltd. v. Court of Appeals, G.R. No. 121267, [October 23,
2001], 420 PHIL 10-24)
COMPULSORY LICENSING
“Anent the perceived inadequacy of the royalty awarded to petitioner, the Court of
Appeals correctly held that the rate of 2.5% of net wholesale price fixed by the Director
of the BPTTT is in accord with the Patent Law. In the absence of any agreement between
the parties with respect to a compulsory license, the Director of the BPTTT may fix the
terms thereof, including the rate of the royalty payable to the licensor. The law explicitly
provides that the rate of royalty shall not exceed five percent (5%) of the net wholesale
price. The Court agrees with the appellate court's ruling that the rate of royalty payments
fixed by the Director of the BPTTT is reasonable. The appellate court, citing Price
vs. United Laboratories, ruled as such, considering that the compulsory license awarded
to private respondent consists only of the bare right to use the patented invention in the
manufacture of another product, without any technical assistance from the licensor.
Furthermore, this Court had earlier noted in the Price case that identical royalty rates
have been prescribed by the Director of the BPTTT in numerous patent cases.”
(Smith Kline & French Laboratories, Ltd. v. Court of Appeals, G.R. No. 121267,
[October 23, 2001], 420 PHIL 10-24)
ASSIGNMENT AND TRANSMISSION OF RIGHTS
SEC. 103. Transmission of Rights. – 103.1. Patents or applications for patents and
invention to which they relate, shall be protected in the same way as the rights of
other property under the Civil Code
103.2. Inventions and any right, title or interest in and to patents and inventions
covered thereby, may be assigned or transmitted by inheritance or bequest or may
be the subject of a license contract.