RFBT-14 Intellectual Property Law PDF

ReSA - THE REVIEW SCHOOL OF ACCOUNTANCY CPA Review Batch 45  May 2023 CPA Licensure Examination RFBT-14 REGULATORY FRAMEWORK for BUSINESS TRANSACTIONS...

ReSA - THE REVIEW SCHOOL OF ACCOUNTANCY CPA Review Batch 45  May 2023 CPA Licensure Examination RFBT-14 REGULATORY FRAMEWORK for BUSINESS TRANSACTIONS J. DOMINGO  N. SORIANO INTELLECTUAL PROPERTY LAW INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES [RA No. 8293, as amended by RA No. 10372] Patent Trademark Copyright New, useful and industrially Goods manufactured or Literary, scientific or artistic Subject matter of the right applicable inventions produced work Where right is to be registered IPO IPO National Library Protection starts Application Issuance of CoR Creation Lifetime of the author + Duration of right 20 years 10 years Generally 50 years after death of the author PATENT PATENT: is a grant issued by the government to an inventor, designer or maker, the right to exclude others from making, using or selling his invention, design or utility model within the country for a specific term, in exchange of his patentable disclosure. KINDS OF PATENTS; Requisites: 1. Invention Patent: Novelty, Inventive Step, Industrial Applicability; 2. Design Patent: Novelty and Ornamentality; 3. Utility Model: Novelty and Industrial Applicability. INVENTION PATENT: 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 shall be patentable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing. Non-patentable Inventions: The following shall be excluded from patent protection: 1. Discoveries, scientific theories and mathematical methods; 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 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; 4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes. This does 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: 5. Aesthetic creations; and 6. Anything which is contrary to public order or morality. ELEMENTS OF A PATENT: 1. Novelty: An invention shall not be considered new if it forms part of a prior art. Prior Art: a. 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; b. Those already covered by an earlier application. Non-prejudicial disclosure: The disclosure of information contained in the application during the twelve (12) months preceding the filing date or the priority date of the application shall not prejudice the applicant on the ground of lack of novelty if such disclosure was made by: a. The inventor; b. 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 c. A third party which obtained the information directly or indirectly from the inventor 2. Inventive Step: - An invention involves an 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. 3. Industrial Applicability: An invention that can be produced and used in any industry shall be industrially applicable. Application Process: 1. Filing date requirements 2. Payment of fees 3. Formal examination 4. Search of Prior Art 5. 1st publication Page 1 of 13 0915-2303213  www.resacpareview.com ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY INTELLECTUAL PROPERTY LAW RFBT-14 a. within 18 months from filing date b. After publication, any interested party may inspect documents c. Publication may be prohibited or restricted if it would be prejudicial to the national security and interests d. After publication, applicant acquires rights of a patentee – i.e., to exclude anyone from using the invention (if they have actual knowledge or written notice) e. But no action can be filed until the grant of the patent (prescription 4 years from commission) 6. Substantive Examination (which must be done within 6 months from first publication) 7. Publication of Patent Contents of Application: 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); 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) Unity of Invention – one application = one invention (group of inventions forming a single general inventive concept) Divisional Application - may be allowed if there is more than one invention, either voluntarily or within 4 months from recommendation of the Director. Grounds for Cancellation of Patent: 1. Invention is not new (no novelty) 2. The patent did 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. Contrary to public order or morality RIGHT TO A PATENT: The right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or more persons have jointly made an invention, the right to a patent shall belong to them jointly. First to File Rule: if two or more persons separately made the same invention, priority is given to one who filed first. Right of Priority/Priority Claim: Application made locally when an earlier application is filed abroad. Process: 1. A CLAIM of priority based on an earlier filing date abroad. 2. A local application is filed within 12 months from priority date (application date of foreign application for patent) 3. Certified copy of priority application and English translation thereof within 6 months from filing date. Priority date: date of filing of FOREIGN application for the same invention. Actual Inventor; Remedies: 1. Application still pending – file an action in court to prove that he is the actual inventor within 1 year from first publication. Once declared that he is the true inventor: a. Request that the application be refused b. File a new application but filing date will retroact to original filing date 2. Patent already granted – within 1 year from publication of the patent, he can either: a. Be substituted as patentee; or b. Seek cancellation of patent. COMMISSIONED INVENTIONS: The person who commissions the work shall own the patent, unless otherwise provided in the contract. Note that this rule is different with regards a copyright, where the copyright belongs to the author/artist and the work to the one who commissioned the work. In case the employee made the invention in the course of his employment contract, the patent shall belong to: 1. 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. 2. 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. TERM OF PATENT: The term of a patent shall be twenty (20) years from the filing date of the application. PATENT RIGHTS: 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. 3. The right to assign, or transfer by succession the patent, and 4. Right 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, acts mentioned above 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 his express consent, insofar as such use is performed after that 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; Page 2 of 13 0915-2303213  www.resacpareview.com ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY INTELLECTUAL PROPERTY LAW RFBT-14 4. 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; 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: Notwithstanding the exclusivity of rights mentioned above, 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. (Section 73) USE OF INVENTION BY 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; or 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. 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 constitutes patent infringement. Kinds of Infringement: 1. LITERAL INFRINGEMENT a. Exactness Rule – the item that is being sold, made or used conforms exactly to the patent claim of another. b. Addition Rule - one makes, uses or sells an item that has all the elements of the patent claim of another plus other elements. 2. DOCTRINE OF EQUIVALENTS: with some modification and change, but SUBSTANTIALLY THE SAME: a. Function b. Way/Means/Principle or Mode of Operation c. Result The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept and, although with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result. Identity of result does not amount to infringement of patent unless the invention being questioned operates in substantially the same way or by substantially the same means as the patented one, even though it performs the same function and achieves the same result. In other words, the principle or mode of operation must be the same or substantially the same. The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the burden to show that all three components of such equivalency test are met. REMEDIES OF PATENTEE: 1. Civil action to recover damages plus attorney’s fees and other expenses of litigation or reasonable royalty. 2. Injunction for the protection of rights. 3. The court may, in its discretion, order that the infringing goods, materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed, without compensation. 4. Criminal Action for Repetition of Infringement: if infringement is repeated by the infringer or by anyone in connivance with him after finality of the judgment of the court against the infringer, the offenders shall, without prejudice to the institution of a civil action for damages, be criminally liable therefor and, upon conviction, shall suffer imprisonment for the period of not less than six (6) months but not more than three (3) years and/or a fine of not less than One hundred thousand pesos (P100,000) but not more than Three hundred thousand pesos (P300,000), at the discretion of the court. The criminal action herein provided shall prescribe in three (3) years from date of the commission of the crime. NOTICE TO INFRINGER: Damages cannot be recovered for acts of infringement committed before the infringer had known, or had reasonable grounds to know of the patent. It is presumed that the infringer had known of the patent if on the patented product, or on the container or package in which the article is supplied to the public, or on the advertising material relating to the patented product or process, are placed the words "Philippine Patent" with the number of the patent. VOLUNTARY LICENSING: Mandatory Provisions: 1. Jurisdiction of disputes – Philippines; Venue – principal place of business of patentee 2. Continuous access to improvements in techniques and processes 3. If it includes Arbitration – venue: PH or other neutral countries, and the following laws are applicable: a. the Procedure of Arbitration of the Arbitration Law of the Philippines or b. the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL) or c. the Rules of Conciliation and Arbitration of the International Chamber of Commerce (ICC) 4. Taxes – 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/circumstances of extreme urgency 2. Public interest so requires 3. The use of the patent is anti-competitive 4. Public non-commercial use without satisfactory reasons 5. Invention is not being worked in the PH on a commercial scale without satisfactory reasons (importation counts as working or using) 6. Demand for patented drugs and medicine is not being met to an adequate extent and or reasonable terms, as determined by DOH. Page 3 of 13 0915-2303213  www.resacpareview.com ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY INTELLECTUAL PROPERTY LAW RFBT-14 TRADEMARKS “Mark” means 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 "Collective mark" means 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” means the name or designation identifying or distinguishing an enterprise HOW RIGHTS ARE ACQUIRED: The rights in a mark shall be acquired through registration. MARKS WHICH CANNOT BE REGISTERED: 1. Consists of 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; 4. Is 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, or b. Closely related goods or services, or c. If it nearly resembles such a mark as to be likely to deceive or cause confusion; COLORABLE IMITATION: denotes such a “close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser, giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other. (Etepha, AG vs. Director of Patents) 5. Is identical with, or confusingly similar to, or constitutes a translation of 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, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark; 6. Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, 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: Provided, That use of the 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; 7. Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services; 8. Consists exclusively of signs that are generic for the goods or services that they seek to identify; 9. Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice; 10. Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services; 11. Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value; 12. Consists of color alone, unless defined by a given form; or 13. Is contrary to public order or morality. KINDS OF TERMS: 1. Generic terms are those which constitute "the common descriptive name of an article or substance," or comprise the "genus of which the particular product is a species," or are "commonly used as the name or description of a kind of goods," or "imply reference to every member of a genus and the exclusion of individuating characters," or "refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a particular product," and are not legally protectable. 2. Descriptive terms, as understood in its normal and natural sense, it "forthwith conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and does not know what it is," or "if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods," or if it clearly denotes what goods or services are provided in such a way that the consumer does not have to exercise powers of perception or imagination, and therefore invalid as a trademark. 3. Suggestive terms are those which, in the phraseology of one court, require "imagination, thought and perception to reach a conclusion as to the nature of the goods." Such terms, "which subtly connote something about the product," are eligible for protection in the absence of secondary meaning. While suggestive marks are capable of shedding "some light" upon certain characteristics of the goods or services in dispute, they nevertheless involve "an element of incongruity," "figurativeness," or " imaginative effort on the part of the observer." DOCTRINE OF SECONDARY MEETING: "Under the doctrine of secondary meaning, a word or phrase originally incapable of exclusive appropriation with reference to an article in the market, because geographical or otherwise descriptive might nevertheless have been used so long and so exclusively by one producer with reference to this article that, in that trade and to that group of the purchasing public, the word or phrase has come to mean that the article was his produce. (Ana Ang vs. Toribio Teodoro, 74 Phil. 56) CERTIFICATES OF REGISTRATION: A certificate of registration of a mark shall be prima facie evidence of: 1. The validity of the registration, 2. The registrant’s ownership of the mark, and 3. The registrant’s exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. Page 4 of 13 0915-2303213  www.resacpareview.com ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY INTELLECTUAL PROPERTY LAW RFBT-14 PRIORITY CLAIM: is a local application of a trademark when an earlier application (“priority application”) is filed abroad. 1. Filed within 6 months from filing of priority application 2. Certified copy of priority application within 3 months from filing date 3. Failure to file is treated as a waiver of priority claim. DURATION OF PROTECTION AND RIGHTS: The rights to a trademark shall be 10 years from registration. Renewal: the rights to a trademark in a certificate of registration may be renewed for periods of 10 years at its expiration upon payment of the prescribed fee and upon filing a request at any time within 6 months before expiration or within 6 months after such exploration upon payment of an additional fee. Declaration of Actual Use: A declaration of actual use shall be filed: 1. Within 3 years from filing date of application; Extendible for another 6 months; Otherwise, it shall be deemed an abandonment of the application. 2. AND another DAU within 1 year from the 5th anniversary of the registration of the mark; Otherwise, the mark shall be removed from the Register by the Office. 3. AND within 1 year rom date of renewal of the trademark registration. Effect of non-compliance: Otherwise, the application will be deemed abandoned or the registration cancelled. RIGHTS CONFERRED: 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. In case of the use, of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. Rights of an owner of a well-known mark: (Theord of Dilution) 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: Requisites: 1. That 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; and 2. That the interests of the owner of the registered mark are likely to be damaged by such use. Not included in the rights: 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 AND TRANSFER: Assignments and transfers of registration of marks shall be recorded at the Office on payment of the prescribed fee; assignment and transfers of applications for registration shall, on payment of the same fee, be provisionally recorded, and the mark, when registered, shall be in the name of the assignee or transferee. Assignments and transfers shall have no effect against third parties until they are recorded at the Office CANCELLATION OF REGISTRATION: a petition to cancel a registration of a mark under this act may be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark. PERIOD: GENERAL RULE: Within five (5) years from the date of the registration of the mark under this Act. EXCEPTIONS: 1. At any time, if the registered owner of the mark without 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 three (3) years or longer. 2. At any time, if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. 3. In any action to enforce the rights to a registered mark – Notwithstanding the foregoing provisions, the court or the administrative agency vested with jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall likewise exercise jurisdiction to determine whether the registration of said mark may be cancelled in accordance with this Act. (Section 151.2) 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 or 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; or 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, shall be liable in a civil action for infringement by the registrant, regardless of whether there is actual sale of goods or services using the infringing material. TESTS TO DETERMINE INFRINGEMENT: 1. HOLISTIC OR TOTALITY TEST: considers the entirety of the marks in question. 2. DOMINANCY TEST: focus is on prevalent or dominant features. Confusing similarity is to be determined not only on the visual but also on the aural and connotative comparisons and overall impressions between the two trademarks. Page 5 of 13 0915-2303213  www.resacpareview.com ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY INTELLECTUAL PROPERTY LAW RFBT-14 REMEDIES FOR TRADEMARK OWNER 1. Recover damages which shall be based on the reasonable profit which the complaining party would have made, had the defendant not infringed his rights, or the profit which the defendant actually made out of the infringement, or in the event such measure of damages cannot be readily ascertained with reasonable certainty, then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party. In cases where actual intent to mislead the public or to defraud the complainant is shown, in the discretion of the court, the damages may be doubled. 2. Seek injunction. 3. Seek the destruction of infringing materials without compensation of any sort or disposed outside of commerce in such a manner as to avoid any harm caused to the right holder. PRIOR USER IN GOOD FAITH: A registered mark shall have no effect against any person who, in good faith, before the filing date or the priority date, was using the mark for the purposes of his business or enterprise: Provided, That his right may only be transferred or assigned together with his enterprise or business or with that part of his enterprise or business in which the mark is used. UNFAIR COMPETITION: the following shall be deemed guilty of unfair competition: 1. Any person, who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose; 2. Any person who by any artifice, or device, or who employs any other means calculated to induce the false belief that such person is offering the services of another who has identified such services in the mind of the public; or 3. Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods, business or services of another. Penalty: Imprisonment: 2 to 5 years; Fine: 50,000 to 200,000 TRADEMARK INFRINGEMENT VS. UNFAIR COMPETITION: TRADEMARK INFRINGEMENT UNFAIR COMPETITION Registration of the mark is a pre-requisite No registration necessary No fraudulent intent is required Fraudulent intent is necessary Likelihood of confusion Sale is required Passing-off element Unfair competition is broader than trademark infringement and includes passing off goods with or without trademark infringement. Trademark infringement is a form of unfair competition. There can be trademark infringement without unfair competition as when the infringer discloses on the labels containing the mark that he manufactures the goods, thus preventing the public from being deceived that the goods originate from the trademark owner. COPYRIGHT Copyright is the right of literary property as recognized and sanctioned by positive law. An intangible, incorporeal right granted by statute to the author or originator of certain literary or artistic productions, whereby he is invested, for a specific period, with the sole and exclusive privilege of multiplying copies of the same and publishing and selling them. (Black’s Law Dictionary) In the Philippines, the owner of a work subject of a copyright is granted exclusive economic and moral rights. "Author" is the natural person who has created the work; A "collective work" is a work which has been created by two (2) or more natural persons at the initiative and under the direction of another with the understanding that it will be disclosed by the latter under his own name and that contributing natural persons will not be identified. "Communication to the public" or "communicate to the public" means any communication to the public, including broadcasting, rebroadcasting, retransmitting by cable, broadcasting and retransmitting by satellite, and includes the making of a work available to the public by wire or wireless means in such a way that members of the public may access these works from a place and time individually chosen by them. "Public lending" is the transfer of possession of the original or a copy of a work or sound recording for a limited period, for non-profit purposes, by an institution the services of which are available to the public, such as public library or archive. “Published works" means works, which, with the consent of the authors, are made available to the public by wire or wireless means in such a way that members of the public may access these works from a place and time individually chosen by them: Provided, That availability of such copies has been such, as to satisfy the reasonable requirements of the public, having regard to the nature of the work. ORIGINAL WORKS: Literary and artistic works, hereinafter referred to as "works", are original intellectual creations in the literary and artistic domain protected from the moment of their creation and shall include in particular: 1. Books, pamphlets, articles and other writings; 2. Periodicals and newspapers; 3. Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or other material form; 4. Letters; 5. Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows; Page 6 of 13 0915-2303213  www.resacpareview.com ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY INTELLECTUAL PROPERTY LAW RFBT-14 6. Musical compositions, with or without words; 7. Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models or designs for works of art; 8. Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art; 9. Illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science; 10. Drawings or plastic works of a scientific or technical character; 11. Photographic works including works produced by a process analogous to photography; lantern slides; 12. Audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings; 13. Pictorial illustrations and advertisements; 14. Computer programs; and 15. Other literary, scholarly, scientific and artistic works. PROTECTION COMMENCES: from the moment of creation, irrespective of the mode or form expression, as well as the content, quality or purpose. DERIVATIVE WORKS: The following are derivative works which shall also be protected by copyright: 1. Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary or artistic works; and 2. Collections of literary, scholarly or artistic works, and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents. The above shall be protected as a new works: Provided however, that such new work shall not affect the force of any subsisting copyright upon the original works employed or any part thereof, or be construed to imply any right to such use of the original works, or to secure or extend copyright in such original works. RIGHT OF PUBLISHER: In addition to the right to publish granted by the author, his heirs or assigns, the publisher shall have a copy right consisting merely of the right of reproduction of the typographical arrangement of the published edition of the work. “Reproduction" is the making of one (1) or more copies of a work or a sound recording in any manner or form. WORKS NOT PROTECTED: no protection shall extend to: 1. Any idea 2. Procedure 3. System method or operation, 4. Concept 5. Principle 6. Discovery or 7. Mere data as such, even if they are expressed, explained, illustrated or embodied in a work 8. News of the day and other miscellaneous facts having the character of mere items of press information; or 9. Any official text of a legislative, administrative or legal nature, as well as any official translation thereof WORKS OF THE GOVERNMENT A “work of the Government of the Philippines" is a work created by an officer or employee of the Philippine Government or any of its subdivisions and instrumentalities, including government-owned or controlled corporations as part of his regularly prescribed official duties. No copyright shall subsist in any work of the Government of the Philippines. However, prior approval of the government agency or office wherein the work is created shall be necessary for exploitation of such work for profit. Such agency or office may, among other things, impose as a condition the payment of royalties. No prior approval or conditions shall be required for the use of any purpose of: 1. Statutes 2. Rules and regulations, and 3. Speeches, lectures, sermons, addresses, and dissertations, pronounced, read or rendered in courts of justice, before administrative agencies, in deliberative assemblies and in meetings of public character. The Author of speeches, lectures, sermons, addresses, and dissertations mentioned in the preceding paragraphs shall have the exclusive right of making a collection of his works. However, the Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest or otherwise; nor shall publication or republication by the government in a public document of any work in which copy right is subsisting be taken to cause any abridgment or annulment of the copyright or to authorize any use or appropriation of such work without the consent of the copyright owners. ECONOMIC RIGHTS OF AN AUTHOR: shall consist of the exclusive right to carry out, authorize or prevent the following acts: 1. Reproduction of the work or substantial portion of the work; 2. Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work; 3. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership; 4. Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental; (n) 5. Public display of the original or a copy of the work; 6. Public performance of the work; and 7. Other communication to the public of the work Page 7 of 13 0915-2303213  www.resacpareview.com ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY INTELLECTUAL PROPERTY LAW RFBT-14 OWNERSHIP OF COPYRIGHT shall be governed by the following rules: Work Owner Original Author Works of Joint The co-authors shall be the original owners of the copyright and in the absence of agreement, their authorship rights shall be governed by the rules on co-ownership. If, however, a work of joint authorship consists of parts that can be used separately and the author of each part can be identified, the author of each part shall be the original owner of the copyright in the part that he has created. Works during The employee, if the creation of the object of copyright is not a part of his regular duties even if the employment employee uses the time, facilities and materials of the employer. The employer, if the work is the result of the performance of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary Commissioned The person who so commissioned the work shall have ownership of work, but the copyright thereto shall work remain with the creator, unless there is a written stipulation to the contrary. Audiovisual work The producer, the author of the scenario, the composer of the music, the film director, and the author of the work so adapted. However, subject to contrary or other stipulations among the creators, the producers shall exercise the copyright to an extent required for the exhibition of the work in any manner, except for the right to collect performing license fees for the performance of musical compositions, with or without words, which are incorporated into the work. Letters Writer Anonymous and Publishers shall be deemed to represent the authors of articles and other writings published without the Pseudonymous names of the authors or under pseudonyms, unless the contrary appears, or the pseudonyms or adopted Works name leaves no doubts as to the author’s identity, or if the author of the anonymous works discloses his identity. TRANSFER AND ASSIGNMENT OF COPYRIGHT The copyright may be assigned in whole or in part inter vivos only if there is a written indication of such intention. The submission of a literary, photographic or artistic work to a newspaper, magazine or periodical for publication shall constitute only a license to make a single publication unless a greater right is expressly granted. Rights of Assignee: Within the scope of the assignment or license, the assignee or licensee is entitled to all the rights and remedies which the assignor or licensor had with respect to the copyright. Right of owner to accounting: The copyright owner has the right to regular statement of accounts from the assignee or the licensee with regard to assigned or licensed work. Co-owned work: If two (2) or more persons jointly own a copyright or any part thereof, neither of the owners shall be entitled to grant licenses without the prior written consent of the other owner or owners. Copyright and the Material Object: The copyright is distinct from the property in the material object subject to it. Consequently the transfer assignment or licensing of the copyright shall not itself constitute a transfer of the material object. Nor shall a transfer or assignment of the sole copy or of one or several copies of the work imply transfer assignment or licensing of the copyright. Filing of Assignment of License: An assignment or exclusive license may be filed in duplicate with the National Library upon payment of the prescribed fee for registration in books and records kept for the purpose. Upon recording, a copy of the instrument shall be, returned to the sender with a notation of the fact of record. Notice of the record shall be published in the IPO Gazette. Designation of Society: The owners of copyright and related rights or their heirs may designate a society of artists, writer, composers, and other right-holders to collectively manage their economic or moral rights on their behalf. For the said societies to enforce the rights on their members, they shall be first secure the necessary accreditation from the Intellectual Property Office. LIMITATIONS ON COPYRIGHT: The following acts shall not constitute infringement of copyright: 1. The reproduction or distribution of published articles or materials in a specialized format exclusively for the use of the blind, visually and reading-impaired persons: Provided, that such copies and distribution shall be made on a non- profit basis and shall indicate the copyright owner and the date of the original publication. 2. The recitation or performance of a work, once it has been lawfully made accessible to the public, if done privately and free of charge or if made strictly for a charitable or religious institution or society; 3. The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose, including quotations from newspaper articles and periodicals in the form of press summaries: Provided, That the source and the name of the author, if appearing on the work, are mentioned; 4. The reproduction or communication to the public by mass media of articles on current political, social, economic, scientific or religious topic, lectures, addresses and other works of the same nature, which are delivered in public if such use is for information purposes and has not been expressly reserved: Provided, That the source is clearly indicated; 5. The reproduction and communication to the public of literary, scientific or artistic works as part of reports of current events by means of photography, cinematography or broadcasting to the extent necessary for the purpose; 6. The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use: Provided, That the source and of the name of the author, if appearing in the work, are mentioned; 7. The recording made in schools, universities, or educational institutions of a work included in a broadcast for the use of such schools, universities or educational institutions: Provided, That such recording must be deleted within a reasonable period after they were first broadcast: Provided, further, That such recording may not be made from audiovisual works which are part of the general cinema repertoire of feature films except for brief excerpts of the work; Page 8 of 13 0915-2303213  www.resacpareview.com ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY INTELLECTUAL PROPERTY LAW RFBT-14 8. The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast; 9. The use made of a work by or under the direction or control of the Government, by the National Library or by educational, scientific or professional institutions where such use is in the public interest and is compatible with fair use; 10. The public performance or the communication to the public of a work, in a place where no admission fee is charged in respect of such public performance or communication, by a club or institution for charitable or educational purpose only, whose aim is not profit making, subject to such other limitations as may be provided in the Regulations; 11. Public display of the original or a copy of the work not made by means of a film, slide, television image or otherwise on screen or by means of any other device or process: Provided, That either the work has been published, or, that original or the copy displayed has been sold, given away or otherwise transferred to another person by the author or his successor in title; and 12. Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner. The above shall be interpreted in such a way as to allow the work to be used in a manner which does not conflict with the normal exploitation of the work and does not unreasonably prejudice the right holder's legitimate interest. FAIR USE OF A COPYRIGHT WORK: The fair use of a copyrighted work for criticism, comment, news reporting, teaching including limited number of copies for the classroom use, scholarship, researched, and similar purposes is not an infringement of copyright. In determining whether the use made of a work in any particular case is fair use, the factors to be considered shall include: 1. The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit education purposes; 2. The nature of the copyrighted work; 3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and 4. The effect of the use upon the potential market for or value of the copyrighted work. The fact that a work is unpublished shall not by itself bar a finding of fair use if such finding is made upon consideration of all the above factors. Work of Architecture: Copyright in a work of architecture shall include the right to control the erection of any building which reproduces the whole or a substantial part of the work either in its original form or in any form recognizably derived from the original; Provided, That the copyright in any such work shall not include the right to control the reconstruction or rehabilitation in the same style as the original of a building to which the copyright relates. Reproduction of Published Work: 1. Reproduction of a single copy: The private reproduction of a published work in a single copy shall be permitted, without the authorization of the owner of copyright in the work. where: a. The reproduction is made by a natural person b. Exclusively for research and private study EXCEPT: The permission granted shall not extend to the reproduction of: a. A work of architecture in form of building or other construction; b. An entire book, or a substantial past thereof, or of a musical work in which graphics form by reprographic means; c. A compilation of data and other materials; d. Any work in cases where reproduction would unreasonably conflict with a normal exploitation of the work or would otherwise unreasonably prejudice the legitimate interests of the author; e. A computer program*; *Exception: the reproduction in one (1) back-up copy or adaptation by the lawful owner of that computer program: Provided, That the copy or adaptation is necessary for: i. The use of the computer program in conjunction with a computer for the purpose, and to the extent, for which the computer program has been obtained; and ii. Archival purposes, and, for the replacement of the lawfully owned copy of the computer program in the event that the lawfully obtained copy of the computer program is lost, destroyed or rendered unusable 2. Reproduction by Libraries: any library or archive whose activities are not for profit may, without the authorization of the author of copyright owner, make a single copy of the work by reprographic reproduction: a. Where the work by reason of its fragile character or rarity cannot be lent to user in its original form; b. Where the works are isolated articles contained in composite works or brief portions of other published works and the reproduction is necessary to supply them; when this is considered expedient, to person requesting their loan for purposes of research or study instead of lending the volumes or booklets which contain them; and c. Where the making of such limited copies is in order to preserve and, if necessary in the event that is lost, destroyed or rendered unusable, replace a copy, or to replace, in the permanent collection of another similar library or achieve, a copy which has been lost, destroyed or rendered unusable and copies are not available with the publisher. It shall not be permissible to produce a volume of a work published in several volumes or to produce missing tomes or pages of magazines or similar works, unless the volume, tome or part is out of stock; Provided, That every library which, by law, is entitled to receive copies of a printed work, shall be entitled, when special reasons so require, to reproduce a copy of a published work which is considered necessary for the collection of the library but which is out of stock. MORAL RIGHTS: The author of a work shall, independently of the economic rights or the grant of an assignment or license with respect to such right, have the right: 1. To require that the authorship of the works be attributed to him, in particular, the right that his name, as far as practicable, be indicated in a prominent way on the copies, and in connection with the public use of his work; 2. To make any alterations of his work prior to, or to withhold it from publication; 3. To object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be prejudicial to his honor or reputation; and 4. To restrain the use of his name with respect to any work not of his own creation or in a distorted version of his work. Page 9 of 13 0915-2303213  www.resacpareview.com ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY INTELLECTUAL PROPERTY LAW RFBT-14 Waiver of Moral Rights: An author may waive his rights mentioned above by a written instrument, but no such waiver shall be valid where its effects is to permit another: 1. To use the name of the author, or the title of his work, or otherwise to make use of his reputation with respect to any version or adaptation of his work which, because of alterations therein, would substantially tend to injure the literary or artistic reputation of another author; or 2. To use the name of the author with respect to a work he did not create. Contribution to a collective work: When an author contributes to a collective work, his right to have his contribution attributed to him is deemed waived unless he expressly reserves it. Term of Moral Rights: The moral rights of the author shall last during the lifetime of the author and for fifty (50) years after his death and shall not be assignable or subject to license except the right of attribution (no. 1) which shall be in perpetuity. The person or persons to be charged with the posthumous enforcement of these rights shall be named in writing to be filed with the National Library. In default of such person or persons, such enforcement shall devolve upon either the author's heirs, and in default of the heirs, the Director of the National Library. Rights to Proceeds in Subsequent Transfers: In every sale or lease of an original work of painting or sculpture or of the original manuscript of a writer or composer, subsequent to the first disposition thereof by the author, the author or his heirs shall have an inalienable right to participate in the gross proceeds of the sale or lease to the extent of five percent (5%). This right shall exist during the lifetime of the author and for fifty (50) years after his death. The above shall not apply to prints, etchings, engravings, works of applied art, or works of similar kind wherein the author primarily derives gain from the proceeds of reproductions. TERMS OF PROTECTION: General During the life of the author and for fifty years after his death. This will likewise apply to posthumous work. Joint Authorship The economic rights shall be protected during the life of the last surviving author and for fifty (50) years after his death. Anonymous or Pseudonymous works Fifty (50) years from the date on which the work was first lawfully published: Provided, That where, before the expiration of the said period, the author's identity is revealed or is no longer in doubt, the general terms of protection shall apply, as the case may be: Provided, further, That such works if not published before shall be protected for fifty (50) years counted from the making of the work. Works of applied art The protection shall be for a period of twenty-five (25) years from the date of making. Photographic works The protection shall be for fifty (50) years from publication of the work and, if unpublished, fifty (50) years from the making. Audio-visual works including those Fifty (50) years from date of publication and, if unpublished, from the date of produced by process analogous to making. photography or any process for making audio-visual recordings Performers and producers of sound For performances not incorporated in recordings, fifty (50) years from the end of recordings the year in which the performance took place; and For sound or image and sound recordings and for performances incorporated therein, fifty (50) years from the end of the year in which the recording took place. In case of broadcasts Twenty (20) years from the date the broadcast took place. The extended term shall be applied only to old works with subsisting protection under the prior law. CALCULATION OF TERM: The term of protection subsequent to the death of the author shall run from the date of his death or of publication, but such terms shall always be deemed to begin on the first day of January of the year following the event which gave rise to them. COPYRIGHT INFRINGEMENT: A person infringes a right protected when one: 1. Directly commits an infringement; 2. Benefits of the infringing activity of another person who commits an infringement if the person benefiting has been giving notice of the infringing activity and has the right and ability to control the activities of the other person; 3. With knowledge of infringing activity induces, cause or materially contributes to the infringing conduct of another. 1. It refers to a work which has been created by 2 or more natural persons at the initiative and under the direction of another with the understanding that it will be disclosed by the latter under his own name and that contributing natural persons will not be identified. A. Collective work C. Work of applied art B. Joint work D. Joint product 2. It refers to an artistic creation with utilitarian functions or incorporated in a useful article, whether made by hand or produced on an industrial scale. A. Work of applied art C. Collective work B. Joint work D. Joint product 3. When do rights over copyrights conferred? A. From the moment of creation C. Upon registration with IPO B. Upon publication D. Upon registration with National Library Page 10 of 13 0915-2303213  www.resacpareview.com ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY INTELLECTUAL PROPERTY LAW RFBT-14 4. In case of joint creation, who owns the copyright? A. Co-authors C. State B. Main author D. The heirs and assigns 5. In case of commissioned work, who owns the copyright? A. Creator, unless there is a contrary agreement B. Creator, notwithstanding a contrary agreement C. Person commissioning the work D. Employer 6. For purposes of exhibition, who owns the copyright over an audio-visual work? A. Producer C. Author B. Composer D. Director 7. In case of pseudonymous and anonymous works and the author is indisputably unknown, who shall be presumed to be the representative of the author? A. Publisher C. Heirs and assigns B. Distributor D. Employer 8. In case of employee’s work during the course of employment and it results from the regular functions or duties, who owns the copyright? A. Employer C. Publisher B. Employee D. Heirs and assigns 9. In case of employee’s work during the course of employment and it does not result from the regular functions or duties, who owns the copyright? A. Employee C. Publisher B. Employer D. Heirs and assigns 10. The duration of copyright for joint creation is during the life of the last surviving author and for 50 years after the death of the __ surviving author. A. Last C. Second B. First D. Heirs of the last 11. The duration of copyright for an anonymous or a pseudonymous work is until the end of 50 years following the date of its first: A. Publication C. Registration B. Creation D. Distribution 12. The 50-year duration of copyright for anonymous or pseudonymous works commences from: A. January 1 following the date of C. January 1 following the date of publication registration B. January 1 following the date of D. The moment of creation distribution 13. The duration of copyright for published photographic works is: A. 50 years from the publication of the work C. 50 years from the creation of the work B. 25 years from the publication of the work D. 25 years from the creation of the work 14. How many times can a periodical or newspaper publisher publish a material sent by a writer, a photographer, or an artist? A. Only once C. Thrice B. Twice D. Unlimited 15. When a material is sent by a writer or an artist to a periodical or newspaper publisher, who owns the copyright over the material? A. Still the writer or the artist C. The publisher B. The writer/artist and the publisher, D. No more copyright due to publication jointly 16. Recordings made in schools, universities, or educational institutions of a work included in a broadcast for the use of such institutions do not constitute copyright infringement if said recordings are deleted within: A. A reasonable period C. 15 days from date of recording B. 5 days from date of recording D. 30 days from date of recording 17. How many back-up copy/ies of a computer program can be made without committing copyright infringement? A. 1 B. 2 C. 3 C. 5 Page 11 of 13 0915-2303213  www.resacpareview.com ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY INTELLECTUAL PROPERTY LAW RFBT-14 18. It refers to use of a copyrighted work for criticism, comment, news reporting, teaching including multiple copies for classroom use, scholarship, research, and similar purposes which is not an infringement of copyright. A. Fair Use C. Use in Good Faith B. Good Use D. Justified Use 19. The importation of a copy of a work by an individual for his personal purposes shall be permitted without the authorization of the author of, or other owner of copyright if the copies form part of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale, provided that such copies do not exceed __ copies. A. 3 B. 4 C. 5 C. 6 20. It is committed when there is piracy or substantial reproduction. A. Copyright Infringement C. Patent Infringement B. Trademark Infringement D. Unfair Competition 21. What are the remedies available in case there is copyright infringement? A. Injunction, action for damages, and criminal case B. Injunction only C. Action for damages only D. Criminal case only 22. An action for damages in case of copyright infringement must be filed within __ years. A. 4 B. 3 C. 2 C. 1 23. The basic requirements of a trademark are: A. Visibility and distinctiveness C. Originality and distinctiveness B. Visibility and originality D. Visibility, distinctiveness and originality 24. How are rights in a mark required? A. Registration with IPO C. Prior use B. Actual use D. Reservation with IPO 25. The registrant shall file a declaration of actual use of the mark with evidence to that effect within __ years from the filing date of the application otherwise it may be cancelled. A. 3 B. 4 C. 5 C. 6 26. The certificate of registration of a mark shall be __ evidence of the validity of the registration, the registrant’s ownership of the mark, and the registrant’s exclusive right to use the same. A. Prima facie C. Conclusive B. Disputable D. Iota of 27. First Statement: A registrant’s right over a mark may be questioned by a person who has a better right including persons with internationally known marks. Second Statement: Registration of a mark is not important to keep the goodwill that identifies in the mind of the public the goods he manufactures or deals in. A. Both statements are true. C. Only second statement is true. B. Only first statement is true. D. None of the statements is true. 28. It provides that a generic or descriptive mark may later acquire the characteristic of distinctiveness and can later be registered if it acquires a meaning which is different from its ordinary connotation. A. Doctrine of Secondary Meaning C. Doctrine of Tertiary Meaning B. Doctrine of Primary Meaning D. Doctrine of Second Meaning 29. How many renewals can be made on a trademark registration? A. Indefinite C. 10 of 5 years each B. 10 of 10 years each D. 5 of 10 years each 30. It is when an otherwise prudent purchaser is induced to purchase one product in the belief that he is purchasing another, in which case the defendant’s goods are then bought as the plaintiff’s and its poor quality reflects badly on the plaintiff’s reputation. A. Confusion of goods C. Merger of goods B. Confusion of business D. Merger of business 31. It focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception, and thus infringement. A. Dominancy Test C. All Events Test B. Holistic Test D. Comparative Test Page 12 of 13 0915-2303213  www.resacpareview.com ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY INTELLECTUAL PROPERTY LAW RFBT-14 32. These refer to contested cases filed before the IPO. A. Inter Partes Cases C. Multi-party Cases B. Related Cases D. Multiple Cases 33. It provides that a mark cannot be registered if it is 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, provided that use of the 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. A. Theory of Dilution C. Theory of Similarity B. Theory of Confusion D. Theory of Connection 34. It refers to 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. A. Inventive step C. Novelty B. Industrial applicability D. Originality 35. Who is presumed to be an ordinary practitioner aware of what was common general knowledge in the art at the relevant date? A. Person skilled in the art C. Consultant B. Expert D. Researcher 36. 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: A. First filed an application for such invention B. First started with the invention C. First finished the invention D. Has the greatest use for the public 37. It refers to importation of drugs and medicines by a government agency or by any private third party. A. Parallel importation C. Technical smuggling B. Illegal smuggling D. Complex importation 38. There is infringement of patent under this test if one makes, uses, or sells an item that contains all the elements of the patent claim. A. Literal Infringement C. Exactness Rule B. Doctrine of Equivalents D. Addition Rule 39. First Statement: Compulsory license should be granted to any person who has shown his capability to exploit the invention. Second Statement: The compulsory license will only be granted after the petitioner has made efforts to obtain authorization from the patent owner on reasonable commercial terms and conditions but such efforts have not been successful within a reasonable period of time. A. Both statements are true. C. Only the second statement is true. B. Only the first statement is true. D. None of the statements is true. 40. This concept comes into play when two or more inventions are claimed in a single application but are of such a nature that a single patent may not be issued for them. A. Concept of divisional applications C. Concept of complex applications B. Concept of multiple applications D. Concept of complicated applications NOTE: Letter “A” is the answer to all items (1 to 40). Page 13 of 13 0915-2303213  www.resacpareview.com