Intellectual Property and Patent Law

Intellectual Property Laws

Effectivity and Scope

• Effective January 1, 1998
• Covers copyright and related rights, trademark and service marks, patents, geographical indications, layout designs of integrated circuits, and protection of undisclosed information

Types of Intellectual Property Rights

• Patent: a technical solution to a problem in any field of human activity
  • Requires: novelty, inventive step, and industrial applicability
  • Classes: useful machine, product, process, improvement, micro-organism, and non-biological and microbiological process
  • Non-patentable: discoveries, scientific theories, and methods of performing mental acts
• Trademark: a sign or symbol used to identify goods or services
• Copyright: literary, artistic, or scientific works

Patentability

• Novelty: an invention shall not be considered new if it forms part of prior art
• Prior art: everything made available to the public before the filing date or priority date of the application
• Inventive step: not obvious to a person skilled in the art
• Industrial applicability: can be produced and used in any industry

Patent Application

• Contents: request for patent, description of the invention, drawings, claims, and abstract
• Unity of invention: an application shall relate to one invention only
• Publication: after 18 months from the filing date or priority date, and after publication, any interested party may inspect the application documents

Patent Rights

• Exclusivity: to restrain, prohibit, and prevent any unauthorized person or entity from making, using, offering for sale, selling, or importing the patented product or process
• Rights conferred: to assign, transfer, or conclude licensing contracts

Limitations of Patent Rights

• Private and non-commercial use
• Experimental use
• Use for the purpose of experiments
• Use in a pharmacy or by a medical professional
• Use in a ship, vessel, aircraft, or land vehicle of another country

Patent Infringement

• Literal infringement: exactness rule or addition rule
• Doctrine of equivalents: appropriation of a prior invention with modifications
• Civil action: recover damages, attorney's fees, and other expenses, and secure an injunction
• Criminal action: imprisonment and/or fine

Defenses and Prescription

• Defenses: invalidity of the patent or any claim thereof
• Prescription: 3 years from the date of commission of the crime (repetition of infringement)

Voluntary Licensing

• To encourage the transfer and dissemination of technology and prevent practices that may constitute an abuse of intellectual property rights### Intellectual Property Laws

Mandatory Provisions

• The laws of the Philippines shall govern the interpretation of technology transfer arrangements
• Continued access to improvements in techniques and processes shall be made available during the period of the technology transfer arrangement
• Arbitration shall be conducted according to the Procedure of Arbitration of the Arbitration Law of the Philippines, UNCITRAL, or ICC Rules, with the venue in the Philippines or a neutral country
• Philippine taxes on all payments relating to the technology transfer arrangement shall be borne by the licensor

Compulsory Licensing

• Issuance of a license by the Director General of the IPO to exploit a patented invention without the permission of the patent holder
• Grounds for compulsory licensing:
  • National emergency or extreme urgency
  • Public interest, particularly in national security, nutrition, health, or vital sectors of the economy
  • Anti-competitive manner of exploitation by the patent owner or licensee
  • Public non-commercial use of the patent without satisfactory reason
  • Non-working of the patented invention in the Philippines on a commercial scale without satisfactory reason
  • Inadequate supply of patented drugs and medicines on reasonable terms

Assignment of Inventions

• An assignment may be of the entire right, title, or interest in and to the patent and invention
• An assignment may be limited to a specified territory
• Requirements for assignment:
  • In writing
  • Acknowledged before a notary public or authorized officer
  • Certified under the hand and official seal of the notary or officer

Trademarks

Definition and Requirements

• A mark is any visible sign capable of distinguishing the goods or services of an enterprise
• Requirements for a mark:
  • Visible sign
  • Capable of distinguishing the goods or services of an enterprise

Collective Marks

• A collective mark is a visible sign designated to distinguish the origin or common characteristics of goods or services of different enterprises

Trade Names

• A trade name is a name or designation identifying or distinguishing an enterprise

Acquisition of Rights

• Rights in a mark are acquired through registration with the IPO from the filing date of application

Non-Registrable Marks

• Marks that are immoral, deceptive, or scandalous, or that may disparage or falsely suggest a connection with persons or institutions
• Marks that consist of the flag or coat of arms of the Philippines or any foreign nation
• Marks that consist of a name, portrait, or signature of a living individual without written consent
• Marks that are identical or confusingly similar to a registered mark belonging to a different proprietor

Prior Use and Declaration of Actual Use

• Prior use is not required before registration
• Declaration of actual use must be filed within 3 years from the filing date of application, or within 1 year from the 5th anniversary of the date of registration

Division of Application and Issuance of Certificate

• Any application referring to several goods or services may be divided into 2 or more applications
• The divisional applications shall preserve the filing date of the initial application or the benefit of the right of priority
• When the period for filing opposition has expired, the IPO shall issue the certificate of registration, which shall be published in the IPO Gazette

Certificate of Registration

• The certificate of registration is prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and the registrant's exclusive right to use the mark
• The certificate of registration may be renewed for periods of 10 years upon payment of the prescribed fee and filing of the request

Tests for Confusion or Deception

• Dominancy Test: focuses on the similarity of the prevalent features of the competing trademarks
• Holistic Test: requires consideration of the entirety of the marks in question

Well-Known Marks

• A well-known mark is a mark that is determined by competent authority to be well-known internationally and in the Philippines, whether or not it is registered in the Philippines

Rights Conferred by Registration

• The owner of a registered mark has the exclusive right to prevent all third parties from using identical or similar signs or containers for goods or services that are identical or similar to those in respect of which the mark is registered

Use by Third Parties

• Registration of a mark does not confer on the registered owner the right to preclude third parties from using bona fide their names, addresses, or exact indications concerning the kind, quality, or place of origin of their goods or services

Assignment of Application and Registration

• Allowed with or without the transfer of the business using the mark
• No effect against third parties until recorded at the IPO

Cancellation of Registration

• Any person who believes that they are or will be damaged by the registration may file with the Bureau of Legal Affairs:
  • Within 5 years from the date of registration
  • At any time, if the registered mark becomes the generic name for the goods or services, or if the registration was obtained fraudulently or contrary to law

Non-Use

• May be excused if caused by circumstances arising independently of the will of the trademark owner
• Lack of funds shall not excuse non-use

Misuse

• If it does not alter the distinctive character of the mark, it is not a ground for cancellation

Trademark Infringement

• Any person who, without the consent of the owner of the registered mark, uses in commerce any reproduction, counterfeit, copy, or colorable imitation of the mark, or applies such to labels, signs, or advertisements, is liable for trademark infringement

Remedies

• Damages: reasonable profit (doubled if there is actual intent to mislead or defraud)
• Impoundment of sales invoices and other documents evidencing sales
• Injunction
• Destruction of infringing material
• Criminal action

Test your knowledge of different types of intellectual property, patentable inventions, and trademark registration. Learn about the essential criteria for an invention to be patentable and the duration of trademark registration.