RFBT-10 Intellectual Property Laws PDF

lOMoARcPSD|10284680 RFBT-10 (Intellectual Property Laws) BS Accountancy (Urdaneta City University) Scan to open on Studocu Studocu is not sponsored or endorsed by any college or university Downloaded by zana kim (leo...

lOMoARcPSD|10284680 RFBT-10 (Intellectual Property Laws) BS Accountancy (Urdaneta City University) Scan to open on Studocu Studocu is not sponsored or endorsed by any college or university Downloaded by zana kim ([email protected])  lOMoARcPSD|10284680 ReSA - THE REVIEW SCHOOL OF ACCOUNTANCY CPA Review Batch 41  May 2021 CPA Licensure Examination  Week No. 19 REGULATORY FRAMEWORK for BUSINESS TRANSACTIONS Atty. J. Domingo  Atty. N. Soriano RFBT-10: INTELLECTUAL PROPERTY LAWS  Effectivity: January 1, 1998  Intellectual property: 1. Copyright and related rights 2. Trademark and service marks 3. Patents 4. Geographical indications 5. Layout designs (topographies) of integrated circuits 6. Protection of undisclosed information 7. Industrial designs: any composition of lines or colors any three-dimensional 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  Technology transfer arrangements: contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, rendering of a service including management contracts; and the transfer, assignment of licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market Copyright Patent Trademark New, useful Subject Literary, and Goods matter of the scientific or industrially manufactured right artistic work applicable or produced inventions Where right National is to be IPO IPO Library registered 20 years Generally 50 10 years from from the Duration of years after issuance of filing date of right death of the certificate of the author registration application  International Conventions and Reciprocity (Section 3 of RA8293): Any person who is national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty, or agreement relating intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty, or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled under the law. PATENTS  Patentable Inventions: any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable; may be or may relate to, a product, a process, or an improvement of any of the foregoing  Requisites: 1. A technical solution of a problem in any field of human activity 2. It must be a novel invention 3. Industrially applicable (can be produced and used in any industry)  Classes of patentable inventions: 1. Useful machine 2. Product 3. Process 4. Improvement of (1), (2) or (3) 5. Micro-organism 6. Non-biological and microbiological process Page 1 of 15 0915-2303213  www.resacpareview.com Downloaded by zana kim ([email protected])  lOMoARcPSD|10284680 ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10 Week No. 19: INTELLECTUAL PROPERTY LAWS  Non-patentable inventions: 1. Discoveries, scientific theories and mathematical method 2. Schemes, rules and methods of performing mental acts, playing games or doing business and programs for computers 3. Methods for treatment of the human body or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body 4. Plant varieties or animal breeds of essentially biological process for the production of plants or animals 5. Aesthetic creations 6. Anything which is contrary to public order or morality 7. In the case of drugs and medicines: a. 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 b. Mere discovery of any new property or new use for a known substance c. Mere use of a known process unless such known process results in a new product that employs at least one new reactant  Novelty (Section 23 of RA8293): An invention shall not be considered new if it forms part of a prior art.  Prior Art: 1. Everything 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; and 2. The whole contents of an application for a patent, utility model, or industrial design registration, published in accordance with law, filed or effective in the Philippines, which a filing or priority date that is earlier than the filing or priority date of the application  Non-prejudicial Disclosure: The disclosure of information contained in the application during the 12 months preceding the filing date or the priority date of the application shall not prejudice the applicant on the ground of novelty if such disclosure was made by: 1. The inventor; 2. A 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; or 3. The third party which obtained the information directly or indirectly from the inventor.  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  Right to a patent: belongs to the inventor, his heirs or assigns; when 2 or more persons have jointly made an invention, said right shall belong to them jointly  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 first filed an application for such invention.  Inventions created pursuant to a commission: 1. The person who commissions the work shall own the patent, unless otherwise provided in the contract. 2. In case the employee made the invention in the course of his employment contract, the patent shall belong to: a. The employee, if the inventive activity is not part of his regular duties even if the employee uses the time, facilities and materials of the employer b. The employer, if the invention is a 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 in another country which by treaty, convention or law affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing the foreign application: provided that: 1. A local application expressly claims priority 2. It is filed within 12 months from the date the earliest foreign application was filed 3. A certified copy of the foreign application together with an English translation is filed within 6 months from the date of filing in the Philippines  Priority Date: the date of filing of the foreign application for the same invention  Contents of Patent Application (in Filipino or English): 1. A request for the grant of a patent; 2. A description of the invention (sufficiently clear and complete for it to be carried out by a person skilled in the art); Page 2 of 15 Downloaded by zana kim ([email protected])  lOMoARcPSD|10284680 ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10 Week No. 19: INTELLECTUAL PROPERTY LAWS 3. Drawings necessary for the understanding of the invention; 4. One or more claims (define the matter for which protection is sought; clear and concise); and 5. An abstract (concise summary of the disclosure of the invention as contained in the description, claims, and drawings in preferably not more than 150 words) Note: Inventor must always be identified. Any authorized person may file an application for the inventor. Before publication, no application may inspected without the consent of the applicant.  Unity of Invention: An application shall relate to one invention only or to a group of inventions forming a single general inventive concept. Note: Violation is not a ground to cancel the patent.  Publication of Patent Application: 1. The application shall be published in the IPO Gazette together with a search document (determining a prior art) after the expiration of 18 months from the filing date or priority date. 2. After publication, any interested party may inspect the application documents. 3. The Director General, subject to the approval of DTI Secretary, may prohibit or restrict the publication of an application, if in his opinion, to do so would be prejudicial to the national security and interests of the Republic of the Philippines. 4. After publication, the applicant shall have all the rights of a patentee against any person who, without authorization, exercised any of the rights conferred under the law in relation to the invention claimed in the published application, as if a patent had been granted for that invention, provided that said person had: a. Actual knowledge that the invention that he was using was the subject matter of a published application; or b. Received written notice that the invention he was using was the subject matter of a published application being identified in the said notice by its serial number. (Note: No action may be filed however until the grant of a patent and only within 4 years from commission of the acts complained of.)  Substantive Examination: Within 6 months from date of publication, a written request for examination must be submitted and fees must be paid; otherwise, the application shall be deemed withdrawn. Any withdrawal of the request for examination shall be irrevocable and shall not authorize the refund of any fee.  Grant of Patent: 1. If the application meets the requirements, IPO shall grant the patent, provided all fees are paid on time. 2. If fees are not paid in due time, the application shall be deemed to be withdrawn. 3. Effectivity: on the date of the publication of the patent in the IPO Gazette. 4. In case of refusal, the final order shall be appealable to the Director.  Grounds for cancellation of a patent: 1. What is claimed as the invention is not new or patentable 2. 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 3. The patent is contrary to public order or morality  Committee of Three: composed of the Director of Legal Affairs as chairman and 2 members who have the experience or expertise in the field of technology to which the patent sought to be cancelled relates, in cases involving highly technical issues; decision shall be appealable to the Director General  Effect of Cancellation of Patent: 1. Notice of cancellation shall be published in the IPO Gazette. 2. Rights conferred shall terminate. 3. Unless restrained by the Director General, the decision shall be immediately executory even pending appeal.  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 order for his substitution as patentee, or at the option of the true inventor, cancel the patent and award actual and other damages in his favor if warranted by the circumstances. Note: This may be availed within one year from the date of publication  Rights conferred by a grant: A patent shall confer on its owner the following exclusive rights: 1. Where the subject matter of a patent is a product, to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product. 2. 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 Page 3 of 15 Downloaded by zana kim ([email protected])  lOMoARcPSD|10284680 ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10 Week No. 19: INTELLECTUAL PROPERTY LAWS Patent owners shall also have the right to assign, or transfer by succession the patent and to conclude licensing contracts for the same.  Limitation of patent rights: The owner of a patent has no right to prevent third parties from performing, without his authorization, the acts within his rights in the following circumstances: 1. Using a patented product which has been put on the market in the Philippines by the owner of the product, or with express consent, in so far as such use is performed after the product has been so put on the said market 2. Where the act is done privately and on a 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 3. Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention 4. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional in accordance with a medical prescription or acts concerning the medicine so prepared 5. 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, that such invention is used exclusively for the needs of the ship, vessel, aircraft or land vehicle and not used for the manufacturing of anything to be sold within the Philippines  Prior User: 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. 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.  Use by the Government: A government agency or third person authorized by the Government may exploit the invention even without agreement of the patent owner where: 1. The public interest, in particular, national security, nutrition, health or the development of other sectors, as determined by the appropriate agency of the government, so requires 2. A judicial or administrative body has determined that the manner of exploitation, by the owner of the patent or his licensee, is anti-competitive  Patent Infringement: 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  Literal Infringement: if one makes, uses or sells an item that contains all elements of the patent claim. This test is satisfied in either of the following: 1. Exactness rule: the item that is being sold, made or used conforms exactly to the patent claim of another 2. Addition rule: one makes, uses or sells an item that has all the elements of the patent claim of another plus other elements  Doctrine of Equivalents: 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.  Civil action: to recover from the infringer such damages (actual damages not exceeding 3 times of damages sustained) sustained thereby, plus attorney’s fees and other expenses of litigation, and to secure an injunction for the protection of his rights  Criminal action: imprisonment for a period not less than 6 months but not more than 3 years and/or a fine of not less than P100,000.00 but not more than P300,000.00.  Prescription: 3 years from the date of commission of the crime (repetition of infringement) Note: Under Section 79 of RA8293, no damages can be recovered for acts of infringement committed more than 4 years before the institution of the action for infringement.  Defenses in action for infringement: In addition to other defenses available to him, he may show the invalidity of the patent or any claim thereof on any of the grounds for cancellation of a patent.  Voluntary Licensing: To encourage the transfer and dissemination of technology, prevent or control practices and conditions that may in particular cases constitute an abuse of intellectual property rights having an adverse effect on competition and trade, all technology transfer arrangements shall comply with the provisions of the IP Code. Page 4 of 15 Downloaded by zana kim ([email protected])  lOMoARcPSD|10284680 ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10 Week No. 19: INTELLECTUAL PROPERTY LAWS  Mandatory provisions: 1. That the laws of the Philippines shall govern the interpretation of the same and in the event of litigation, the venue shall be the proper court in the place where the licensee has its principal office; 2. Continued access to improvements in techniques and processes related to the technology shall be made available during the period of the technology transfer arrangement; 3. In the event the technology transfer arrangement shall provide for arbitration, the Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation and Arbitration of the International Chamber of Commerce (ICC) shall apply and the venue of arbitration shall be the Philippines or any neutral country; and 4. The 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, either by manufacture or through parallel importation Grounds: 1. National emergency or other circumstances of extreme urgency 2. Where the public interest, in particular, national security nutrition, health or the development of other vital sectors of the national economy as determined by the appropriate agency of the Government, so requires 3. Where a judicial or administrative body has determined that the manner of exploitation by the owner of the patent or his licensee is anti-competitive 4. In case of public non-commercial use of the patent by the patentee, without satisfactory reason 5. If the patented invention is not being worked in the Philippines on a commercial scale, although capable of being worked, without satisfactory reason, provided, that the importation of the patented article shall constitute working or using the patent 6. Where the demand for patented drugs and medicines is not being met to an adequate extent and on reasonable terms, as determined by the Secretary of DOH  Assignment of inventions: 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. It must be in writing, acknowledged before a notary public or other officer authorized to administer oath or perform notarial acts, and certified under the hand and official seal of the notary or such other officer. TRADEMARKS  Mark: any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise  Requirements: 1. Visible sign 2. Capable of distinguishing the goods of an enterprise  Collective mark: any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark  Trade name: name or designation identifying or distinguishing an enterprise  How acquired: The rights in a mark shall be acquired through registration (from the filing date of application) with the IPO.  Non-registrable marks: 1. Immoral, deceptive or scandalous matter or matter which may disparage or falsely suggest a connection with persons living or dead, institutions, beliefs or national symbols or bring them into contempt or disrepute 2. Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof 3. Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow Page 5 of 15 Downloaded by zana kim ([email protected])  lOMoARcPSD|10284680 ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10 Week No. 19: INTELLECTUAL PROPERTY LAWS 4. Identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: a. The same goods or services b. Closely related goods or services c. If it nearly resembles such a mark as to be likely to deceive or cause confusion 5. Identical with, or confusingly similar to, or constitutes a translation if a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here 6. Identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for 7. Likely to mislead the public, particularly as to the nature, quality, characteristics, or geographical origin of the goods or services 8. Generic terms for goods or services 9. Descriptive marks 10. Customary sign in everyday language 11. Color by itself 12. Shapes 13. Contrary to public order or morality  Contents of Trademark Application: (in Filipino or English) 1. A request for registration 2. Name and address of the applicant 3. Name of a State of which the applicant is a national or where he has domicile, and the name of a State in which the applicant has a real and effective industrial or commercial establishment, if any 4. If applicant is a juridical entity, the law under which it is organized and existing 5. Appointment of an agent or representative, if the applicant is not domiciled in the Philippines 6. If applicant claims priority of an earlier application: a. The name of the State with whose national office the earlier application was filed, b. The date of which the earlier application was filed, and c. Application number of the earlier application, if available. 7. If applicant claims color as a distinctive feature of the mark, a statement to that effect as well as the name or names of the color or colors claimed and an indication, in respect of each color, of the principal parts of the mark which are in that color 8. If the mark is a three-dimensional mark, a statement to that effect 9. One or more reproductions of the mark 10. A transliteration or translation of the mark or of some parts of the mark 11. The names of the goods or services for which the registration is sought 12. A signature by, or other self-identification of, the applicant or his representative Note: One application may relate to several goods and/or services, whether they belong to one class or to several classes of the Nice Classification.  Prior Use: not required before registration, however, there must be actual use after registration  Declaration of Actual Use: must be filed within 3 years from the filing date of application; otherwise, application shall be refused or the mark shall be removed from the Register; after certificate of registration is issued, declaration must be filed within one year from the 5 th anniversary of the date of registration  Division of Application: Any application referring to several goods or services (initial application) may be divided by the applicant into 2 or more applications (divisional applications), by distributing among the latter the goods or services referred to in the initial application. Note: The divisional applications shall preserve the filing date of the initial application or the benefit of the right of priority.  Issuance and Publication of Certificate: When the period for filing opposition has expired, or when the Director of Legal Affairs shall have denied the opposition, the IPO upon payment of the required fee, shall issue the certificate of registration. Upon issuance of said certificate, notice thereof making reference to the publication of the application shall be published in the IPO Gazette.  Certificate of Registration: prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, and of the registrant’s exclusive right use the same in connection with the goods or services and those that are related thereto specified in the certificate; may be renewed for periods of 10 years upon payment of prescribed fee and filing of request Page 6 of 15 Downloaded by zana kim ([email protected])  lOMoARcPSD|10284680 ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10 Week No. 19: INTELLECTUAL PROPERTY LAWS  Tests: 1. Dominancy Test: focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception, and thus infringement; question: whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or deceive purchasers 2. Holistic Test: requires that the entirety of the marks in question be considered in resolving confusing similarity  Well-known Mark: which is determined by competent authority (competent courts or Bureau of Legal Affairs of IPO) to be well-known internationally and in the Philippines, whether or not it is registered in the Philippines, as being already owned by someone taking into account the knowledge of the relevant sector in the Philippines which has been obtained as a result of the promotion of the mark  Rights conferred by registration: 1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. 2. The exclusive right of the owner of a well-known mark which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: provided, that the use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: provided further, that the interests of the owner of the registered mark are likely to be damaged by such use.  Use by third parties: Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names, addresses, pseudonyms, a geographical name or exact indications concerning the kind, quality, quantity, destination, value, place of origin or time of production or of supply, of their goods or services: provided, that such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the 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 he is or will be damaged by the registration may file with the Bureau of Legal Affairs: 1. Within 5 years from the date of registration; 2. At any time, a. if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or b. has been abandoned, or c. its registration was obtained fraudulently or contrary to law, or d. if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of goods or services on or in connection with which the mark is used, or e. if the registered owner of the mark without any legitimate reason fails to use the mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of 3 years or longer  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 its distinctive character, it is not a ground for cancellation  Trademark Infringement: Any person who shall, without the consent of the owner of the registered mark: 1. Use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark or the same container of a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive 2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive Page 7 of 15 Downloaded by zana kim ([email protected])  lOMoARcPSD|10284680 ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10 Week No. 19: INTELLECTUAL PROPERTY LAWS  Remedies: 1. Damages: reasonable profit (doubled if there is actual intent to mislead or defraud) 2. Impoundment of sales invoices and other documents evidencing sales 3. Injunction 4. Destruction of infringing material 5. Criminal action  Requirement of notice: In any suit for infringement, the owner of the registered mark shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is likely to cause confusion, or to cause mistake, or to deceive. Such knowledge is presumed if the registrant gives notice that his mark is registered by displaying with the mark the words