Law-on-Intellectual-Property.pdf

LAW ON INTELLECTUAL PROPERTY REPUBLIC ACT NO. 8293, INTELLECTUAL PROPERTY CODE LAWS SPECIFICALLY REPEALED BY THE INTELLECTUAL PROPERTY CODE 1. Patent Law (R.A. No. 165) 2. Trademark Law (R.A. No. 166) 3. Copyright Law (P.D. No. 49) 4. Articles 188 and 189 of the RPC Note: This has been amen...

LAW ON INTELLECTUAL PROPERTY REPUBLIC ACT NO. 8293, INTELLECTUAL PROPERTY CODE LAWS SPECIFICALLY REPEALED BY THE INTELLECTUAL PROPERTY CODE 1. Patent Law (R.A. No. 165) 2. Trademark Law (R.A. No. 166) 3. Copyright Law (P.D. No. 49) 4. Articles 188 and 189 of the RPC Note: This has been amended by R.A. No. 10732 (An Act Amending Certain Provisions of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines) dated 28 February 2013. INTELLECTUAL PROPERTY It refers to creations of the mind: inventions, literary and artistic works, symbols, names, images, and designs used in commerce. INTELLECTUAL PROPERTY RIGHTS UNDER THE CIVIL CODE Ownership is acquired by occupation and by intellectual creation (Art. 712) By intellectual creation, the following persons acquire ownership: The author with regard to his literary, dramatic, historical, legal, philosophical, scientific, or other work. The composer, as to his musical composition The painter, sculptor, or the artist, with respect to the product of his art, or The scientist or technologist or any other person with regard to his discovery or invention INTELLECTUAL PROPERTY RIGHTS 1. Copyright and Related or neighboring rights 2. Protection of undisclosed information 3. Industrial designs 4. Trademark and Service Marks 5. Patents 6. Layout designs 7. Geographic indications TRADEMARK / SERVICE MARK It 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 (IPC, Sec. 121.1) GEOGRAPHIC INDICATION It identifies a good as originating in the territory of a Trade-Related Aspects of Intellectual Property Rights (TRIPS) member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin (TRIPS Agreement, Art. 22) COPYRIGHT It is confined to literary and artistic works which are original creations in the literary or artistic domain protected from the moment of their creation (Ching vs. Salinas Sr., G.R. No. 161295, June 29, 2005). UNDISCLOSED INFORMATION Undisclosed Information refers to information which: 1. Is a secret in the sense that it is not, as a body or in the precise configuration and assembly of components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; 2. Has commercial value because it is a secret; and 3. Has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret (TRIPS Agreement, Art. 9) PATENTABLE INVENTION It refers to any technical solution of a problem in any field of human activity which is new, involves an inventive step, and is industrially applicable (IPC, Sec. 21) INTEGRATED CIRCUIT It is a product, in its final form, or an intermediate form, in which the elements, at least one of which is an active element, and some of all of the interconnections are integrally formed in and/or on a piece of material, and which is intended to perform an electric function (IPC, Sec. 112.2) INDUSTRIAL DESIGN It refers to any composition of lines or colors or any three-dimensional (3D) form, whether or not associated with lines or colors. Provided, that such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft (IPC, Sec. 112) LAY-OUT DESIGN (TOPOGRAPHY) It refers to the three-dimensional (3D) disposition, however expressed, of the elements, at least one of which is an active element, and some or all of the interconnections of an integrated circuit, or such a 3D disposition prepared for an integrated circuit intended for manufacture (IPC Sec. 112.3) JURISDICTION OVER DISPUTES: ORIGINAL JURISDICTION 1. Director General – over disputes relating to the terms of a license involving the author’s right to public performance or other communication of his work (IPC, Sec. 7.1(c)) 2. Bureau of Legal Affairs – (a) opposition to the application for registration of marks; (b) cancellation of trademarks; (c) cancellation of patent, utility models, and industrial designs; (d) petitions for compulsory licensing of patents; and, (e) administrative complaints for violation of laws involving IPR where the total damages claimed are not less than P200,000 (IPC, Sec. 10) 3. Documentation, Information and Technology Transfer Bureau – over disputes involving technology transfer agreements, settlement of disputes involving technology transfer payments (IPC, as amended, Sec. 11.8) JURISDICTION OVER DISPUTES: ORIGINAL JURISDICTION 4. Regular Courts – Actions under the IPC without prejudice to Subsection 7.1.(c) (IPC, Sec. 225) 5. Bureau of Copyright – over disputes relating to the terms of a license involving the author’s right to public performance or other communication of his work (IPC, as amended, Sec. 9(a)) JURISDICTION OVER DISPUTES: APPELLATE JURISDICTION 1. Director General – over all decisions rendered by the: (a) Bureau of Copyright and Other Related Rights; (b) Director or Legal Affairs; (c) Director of Patents; (d) Director of Trademarks; and, (e) Director of the Documentation, Information and Technology Transfer (IPC, as amended, Sec. 7.1.(b)). 2. Court of Appeals – over the decisions of the Director General in the exercise of his appellate jurisdiction over the decisions of the: (a) Director or Legal Affairs; (b) Director of Patents; and, (c) Director of Trademarks (IPC, as amended, Sec. 7.1.(b)). 3. Secretary of Trade and Industry – (a) over the decisions of the Director General in the exercise of his appellate jurisdiction over the Director of the Documentation, Information and Technology Transfer (IPC, as amended, Sec. 7.1.(b)); (b) over the decisions of the Director General in the exercise of his original jurisdiction relating to terms of license involving the author’s right to public performance or other communication of his work (IPC, as amended, Sec. 7.1.(c)) LAW ON PATENTS PATENT It is the right granted to an inventor by the State, or by the regional office acting for several States, which allows the inventor to exclude anyone else from commercially exploiting his invention for a limited period THREE-FOLD PURPOSE 1. The 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. It seeks to ensure that ideas in the public domain remain there for the free use of the public (Pearl & Dean (Phil.), Inc. v. Shoemart, G.R. No. 148222, August 15, 2003) TERM OF PATENT The term of a patent is 20 years from the filing date of the application (IPC, Sec. 54). PATENTABILITY Requisites of Patentability: 1. Any technical solution of a problem in any field of human activity (IPC, Sec. 21) 2. Inventive Step: An invention involves inventive step if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention (IPC, Sec. 26.1) 3. Novelty: An invention shall be considered new if it does not form part of a prior art (IPC, Sec. 23) 4. Industrial applicability: an invention that can be produced and used in any industry (IPC, Sec. 27), and 5. Patentable Subject Matter: An invention that does not fall within the prohibitions of a Non-Patentable Invention under Sec. 22 of the IPC A PERSON SKILLED IN THE ART He is a person presumed to be an ordinary practitioner aware of what was common general knowledge in the art, at the relevant date. He is presumed to have knowledge of all references that are sufficiently related to one another and to the pertinent art and to have knowledge of all arts reasonably pertinent to the particular problems with which the inventor was involved. He is also presumed to have had at his disposal the normal means and capacity for routine work and experimentation (Rules and Regulations on Inventions, Rule 207) UTILITY MODEL It is a technical solution to a problem in any field of human activity which is new and industrially applicable; it may relate to, a product, or process, or an improvement of any of the aforesaid. Essentially, it refers to an invention on the medical field. It is sometimes described as a device or useful object (Ching v. Salinas, G.R. No. 161295, June 29, 2005) Note: If the application relates to a utility model, inventive step is not necessary. If the application relates to an industrial design, novelty and industrial applicability are not necessary. UTILITY MODEL VS. INDUSTRIAL DESIGN Utility Model Industrial Design Any new model of implements or tools of any Any composition of lines or colors or any three- industrial product even if not possessed of the dimensional form whether or not associated with quality of invention but which is of “practical lines or colors provided that such composition or utility” (Del Rosario v. CA, G.R. No. 115106, form gives a special appearance to and can serve March 15, 1996). as pattern for an industrial product or handicraft (IPC, Sec. 112.1) PATENT, UTILITY MODEL, AND INDUSTRIAL DESIGN Patent Utility Model Industrial Design As to conversion If not inventive, may be May be converted into a patent May be registered as copyright converted to a utility model application if it complies with all work application the requisites As to term (from the filing date of the application) 20 years 7 years 5 years PATENTABLE INVENTIONS They may be, or may relate to: 1. A product, such as a machine, a device, an article of manufacture, a composition of matter, a microorganism; 2. A process, such as a method of use, a method of manufacturing, a non-biological process, a microbiological process; 3. Computer-related inventions; and 4. An improvement of any of the foregoing NON-PATENTABLE INVENTIONS 1. Discoveries, scientific theories, and mathematical methods, a law of nature, a scientific truth, or knowledge as such 2. Abstract ideas or theories, fundamental concepts apart from the means or processes for carrying the concept to produce a technical effect 3. Schemes, rules and methods of performing mental acts and playing games 4. Method of doing business, such as a method or system for transacting business without the technical means for carrying out the method or system 5. Method for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. The non patentability shall not apply to products and compositions for use in any of these methods NON-PATENTABLE INVENTIONS 6. Anything which is contrary to public order, health, welfare, or morality, or process for cloning or modifying the germ line genetic identity of humans or animals or uses of the human embryo 7. Aesthetic creations 8. Programs for computers 9. Plant varieties or animal breeds or essentially biological process for the production of plants and animals. This provision shall not apply to microorganisms and non-biological and microbiological processes. NON-PATENTABLE INVENTIONS In the case of drugs and medicines, there is no patentable invention in the following instances: 1. The mere discovery of a new form or new property of a known substance which does not result in the enhancement of a known efficacy of that substance 2. The mere discovery of any new property or new use for a known substance, and 3. The mere use of a known process, unless such known process results in a new product that employs at least one new reactant PRIOR ART Prior art consists of: 1. That which has been made available to the public anywhere in the world, before the filing date or the priority date of the application claiming the invention 2. The whole contents of an application for a patent, utility model, or industrial design registration, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application Note: Under item 2, the application that has validly claimed the filing date of an earlier application under a Right of Priority shall be prior art with effect as of the filing date of such earlier application. Also, the applicant or the inventor identified in both applications must not be one and the same EXCEPTION: NON-PREJUDICIAL DISCLOSURE The disclosure of information contained in the application during the 12 months preceding the filing date or the priority date of application shall not prejudice the applicant on the ground of lack of novelty, if such disclosure was made by: 1. The inventor, including any person, who, at the filing date of application, had the right to the patent; 2. Patent office and the information was contained: (a) in another application filed by the inventor and should not have been disclosed by the office; or (b) in an application filed without the knowledge or consent of the inventor by a third party which obtained the information directly or indirectly from the inventor 3. A third party which obtained the information directly or indirectly from the inventor RIGHT TO PATENT TO WHOM DOES THE RIGHT TO PATENT BELONG The right to a patent belongs to the inventor, his heirs or assigns. When two or more persons have jointly made an invention, the right to a patent shall belong to them jointly (IPC, Sec. 28) FIRST TO FILE RULE If two 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 (IPC, Sec. 29). WHO ARE ENTITLED TO A PATENT Status Persons Entitled to Patent Two or more persons invent, separately and He who first files independently Two or more applications filed for the same Applicant who has the earliest filing date or invention earliest filing date or earliest priority date Inventions created pursuant to a commission Person who commissioned the work, unless agreed otherwise Employee makes the invention in the course of Employee: If the invention is not part of his employment regular duties even if he uses the time, facilities and materials of the employer Employer: If the invention is the result of the performance of his regularly assigned duties unless agreed otherwise PATENT APPLICATION Outline of Patent Application: 1. Filing of the Application Form with the Bureau of Patents of the IPO 2. Examination of the Application 3. Publication of Patent Application 4. Amendment of Application 5. Grant of Patent 6. Publication Upon Grant of Patent CANCELLATION OF PATENTS FORMALITIES 1. Petition – (a) in writing; (b) verified; (c) specify grounds upon which it is based; (d) include a statement of facts; (e) attach copies of printed publications, or of patents of other countries, together with their translations in English (IPC, Sec. 62) 2. Notice (IPC, Sec. 63) and 3. Hearing (IPC, Sec. 63). CANCELLATION OF PATENTS EFFECT OF CANCELLATION OF PATENT OR CLAIM Termination of rights conferred by the patent or any specified claim or claims cancelled (IPC, Sec. 66) CANCELLATION OF PATENTS GROUNDS 1. Patent is contrary to public order or morality (IPC, Sec. 61.1(a)) 2. Patent does not disclose the invention in a clear manner (IPC, Sec. 61.1 (b)); and 3. What is claimed as the invention is not new or patentable (IPC, Sec. 61.1 (c)) RIGHTS CONFERRED BY PATENT 1. To restrain, prohibit, and prevent: (a) where the subject matter of a patent is a product: any unauthorized person or entity from making, using, offering for sale, selling or importing that product; and, (b) where the subject matter of a patent is a process: 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 (IPC, Sec. 71.1) 2. To assign or transfer by succession the patent (IPC, Sec. 71.2) 3. To conclude licensing contracts (IPC, Sec. 71.2) LIMITATIONS OF PATENT RIGHTS GENERAL LIMITATIONS The owner of a patent has no right to prevent third parties from performing, without his authorization, the acts referred to in Sec. 71 hereof, in the following circumstances: 1. Using of a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent (IPC, Sec. 72.1) 2. Act of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention (IPC, Sec. 72.3) 3. In case of drugs and medicines, where the act includes testing, using, making or selling the invention, including any data related thereto, solely for the purposes reasonably related to the development and submission of information and issuance of approvals by government regulatory agencies required under any Philippine or foreign law (IPC, as amended, Sec. 72.4) 4. When the act is done privately and on a non-commercial scale or purpose: provided, that it does not significantly prejudice the economic interest of the owner of the patent (IPC, Sec. 72.2) 5. In preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription (IPC, Sec. 72.4), and 6. Use of patented product if it occurs in vehicles in transit in the country, provided that such invention is used exclusively for the needs of the ship, vessel aircraft, or land vehicle and not used for the manufacturing of things to be sold in the Philippines (IPC, Sec. 72.5) LIMITATIONS OF PATENT RIGHTS USE BY PRIOR USER Any prior user, who in good faith was using the invention in his enterprise or business, or has undertaken serious preparations to use the same before the filing date or priority date of the application, shall have the right to continue the use thereof but his right may only be transferred or assigned further with his enterprise or business (IPC, Sec. 73.1) LIMITATIONS OF PATENT RIGHTS USE BY GOVERNMENT The government or a third person authorized by it may use the patent without authority of the owner if: a. Public interest so requires (IPC, Sec. 74.1) b. The manner of exploitation by the owner of the patent is anti-competitive (IPC, Sec. 74.1(b)) c. In case of drugs and medicines, there is a national emergency or other circumstance of extreme urgency requiring the use of the invention (IPC , as amended, Sec. 74.1(c)) d. In case of drugs and medicines, there is a public non-commercial use of the patent by the patentee, without satisfactory reason (IPC, as amended, Sec. 74.1(d)) e. In case of drugs and medicines, the demand for the patented article in the Philippines is not being met to an adequate extent and under reasonable terms (IPC, as amended, Sec. 74.1(e)) LIMITATIONS OF PATENT RIGHTS USE BY GOVERNMENT Unless otherwise provided in the IPC, the use by Government shall be subject to the following: 1. In the above situations (c), (d), and (e), the right holder shall be notified as soon as practicable; 2. The scope and duration of such use shall be limited to the purpose for which it was authorized; 3. Use shall be non-exclusive; 4. The right holder shall be paid adequate remuneration in the circumstances of each case; and 5. The existence of national emergency or other circumstances of extreme urgency in situation number 3 shall be subject to the determination by the President of the Philippines (IPC, as amended, Sec. 74.2) TRANSMISSION OF RIGHTS 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 (IPC, Sec. 103.2) RECORDING REQUIREMENT Such instruments shall be void as against any subsequent purchaser or mortgagee for valuable consideration and without notice unless, it is so recorded in the Office, within 3 months from the date of said instrument, or prior to the subsequent purchase or mortgage. Even if not recorded, the instruments are binding upon the parties (IPC, Sec. 106.2) ASSIGNMENT OF INVENTION An assignment may be of the entire right, title or interest in and to the patent and the invention covered thereby, or of an undivided share of the entire patent and invention, in which event the parties become joint owners thereof. An assignment may be limited to a specified territory (IPC, Sec. 104) FORM OF ASSIGNMENT 1. In writing; 2. Notarized; and, 3. Certified under the hand and official seal of the notary or such other officer (IPC, Sec. 105) RIGHTS OF JOINT OWNERS If two (2) or more persons jointly own a patent and the invention covered thereby, either by the issuance of the patent in their joint favor or by reason of the assignment of an undivided share in the patent and invention or by reason of the succession in title to such share, each of the joint owners shall be entitled to personally make, use, sell, or import the invention for his own profit. Provided, however, that neither of the joint owners shall be entitled to grant licenses or to assign his right, title or interest or part thereof without the consent of the other owner or owners, or without proportionally dividing the proceeds with such other owner or owners (IPC, Sec. 107).