Patents - usually refers to an exclusive right granted to anyone who invents any new, useful, and non-obvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof, and claims that right in a formal patent application (Wikipedia)

Patentable Inventions– refer to any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable. (Sec. 21, IP Code)

Trademarks – 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. (Kho v. CA, 2002)

Trade Name – the name or designation identifying or distinguishing an enterprise (Sec 121.3)

confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation

Domestic Laws Republic Act No. 165, Patent Law (1947) Republic Act No. 166, Trademark Law (1947) Republic Act No. 8293, Intellectual Property

Code (1998)

International Conventions Paris Convention (1965, 1980)

o Principle of National Treatment and Priority Agreement on Trade-Related Aspects of

Intellectual Property Rights (TRIPS, 1994) Patent Cooperation Treaty (PCT, 1970)

Any condition, restriction, limitation, diminution, requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine national seeking protection of intellectual property rights in that country, shall reciprocally be enforceable upon nationals of said country, within Philippine jurisdiction. (Sec. 231)

What are patentable?1. Inventions

Elements :1. Provides a technical solution of a problem

in any field of human activity (Sec. 21);2. Novelty (Sec. 23)3. Involves an inventive step (Sec. 26);4. Industrially applicable (Sec. 27);

2. Utility Model (Sec. 109.1)3. Industrial Design (112.1)4. Lay-out Designs (Topographies) of Integrated

Circuits

Non-Patentable Inventions (Sec. 22)1. Discoveries, scientific theories and

mathematical methods ( Sec 22.1)

2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers ( Sec 22.2)

3. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body ( Sec 22.3)

4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals.

(Sec 22.4)

5. Aesthetic creations (Sec 22.5)

6. Anything which is contrary to public order or morality

(Sec 22.6)

FIRST TO FILE RULE If two (2) or more persons have made

the invention separately and independently of each other, the right to the patent shall belong to the person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest priority date. (Sec. 29)

RIGHT OF PRIORITYAn 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 (Sec. 31)

Rights Conferred by Patent (Sec. 71)1. Products - to restrain, prohibit and prevent any

unauthorized person or entity from making, using, offering for sale, selling or importing that product

2. 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. Right to assign, or transfer by succession the patent, and to conclude licensing contracts for the same.

Patent Infringement (Sec. 76)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.

Tests of Infringement1. Literal Infringement Test2. Doctrine of Equivalents

Remedies against Patent Infringement ( Sec. 76)

1. Civil Action for Damages (Sec. 76.1, 76.2, 76.3, 76.4)

2. Destruction or disposal of infringing goods, etc (Sec. 76.5)

3. Injunction (Sec. 76.2)4. Criminal Action for repeated infringement

(Sec.84)

How are marks acquired?The rights in a mark shall be acquired

through registration made validly in accordance with the provisions of this law. (Sec 122)

The IP Code does not anymore provide for prior use as a condition for ownership of a mark. However, the applicant or the registrant must file a declaration of actual use of the mark within 3 yrs from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the Register (Sec. 124.2).

Non-registrable Marks (Sec. 123)A mark cannot be registered if it : x x x(d)Is identical with a registered mark belonging

to a different proprietor or a mark with an earlier filing or priority date, in respect of:1. The same goods or services, or2. Closely related goods or services, or3. If it nearly resembles such a mark as to be likely

to deceive or cause confusion

(e) 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 x x x

(f) 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;

(g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;

(h)signs that are generic for the goods or services that they seek to identify;

(i) signs or of indications that have become customary or usual to designate the goods or services in everyday language or in established trade practice;x x x x

(m) Is contrary to public order or morality.

Some well known trademarks:

Tests to determine confusing similarity between marks:

1. Colorable Imitation – resemblance to original

2. Holistic Test – consider mark as a whole3. Dominancy Test – considers dominant

features in competing marks

Rights conferred by Registration (Sec. 147)

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 x x x where such use would result in a likelihood of confusion.

Trademark Infringement (Sec. 155)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, etc. x x x

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 x x x

Remedies for Infringement1. Action for damages;2. Injunction;3. Impounding of sales invoices and other

documents;4. Double damages in case of actual intent to

defraud or to mislead (Sec. 156);5. Court order for the disposal or destruction of

the infringing goods (Sec. 157);6. Criminal action;7. Administrative sanctions;

FACTS:Philips Export B.V. (PEBV), a foreign corporation incorporated in Netherlands but not engaged in business in the Philippines, was the registered owner of the trademarks PHILIPS and PHILIPS SHIELD EMBLEM as early as 1956 before the Philippine Patents Office. It was engaged in electrical products. Twenty-six (26) years later, it filed a complaint before the SEC for the cancellation of the word “PHILIPS” in the corporate name of Standard Philips Corp (SPS). The SEC hearing officer dismissed the case on the ground that the two names were not identical.

HELD:A corporation’s right to use its corporate and trade name is a property right, a right in rem, which it may assert and protect against the world in the same manner as it may protect its tangible property, real or personal, against trespass or conversion (Western Equipment v. Reyes). It is regarded to a certain extent, as a property right and one which cannot be impaired or defeated by subsequent appropriation by another corporation in the same field (Red Line Trans. V. Rural Trans.).

HELD:Standard Philips’ corporate name within the

prohibition under the Sec. 18 of the Corporation Code, i.e.,

1. that the complainant corporation acquired a prior right over the use of such corporate name; and

2. the proposed name is either: (a) identical, or (b) deceptively similar of confusingly similar to that of any existing corporation or to any other name already protected by law, or (c) patently deceptive, confusing or contrary to existing law.

FACTS: H.D. Lee Co., Inc., a foreign

corporation incorporated in Delaware, filed a petition before the BPTT for the cancellation of registration of the trademark “STYLISTIC MR. LEE” in the name of Emerald Garment Mfg. Corp. H.D. Lee contended that said trademark “so closely resembled its own trademark ‘Mr. Lee’ used in its goods.” The petition was granted. Hence, this petition was filed.

Mr. Stylistic LeeActual use: 1975Registration: 1980

Mr. LeeAlleged Use: 1960Registration: 1969-

1973

HELD:Emerald’s trademark is the whole “STYLISTIC MR. LEE.” Although on its label the words “LEE” was prominent, the trademark should be considered as a whole and not piecemeal. Furthermore, H.D. Lee failed to prove prior actual commercial use of its “LEE” trademark in the Philippines before filing its application for registration with the BPTT and hence, has not acquired ownership over said mark.

HELD:

Following universal acquiescence and comity, our municipal law on trademarks regarding the requirement of actual use in the Philippines must subordinate an international agreement inasmuch as the apparent clash is being decided by a municipal tribunal. Under the doctrine of incorporation, rules of international law are given a standing equal, not superior, to national legislative enactments.

HELD:The Court did not give credence to respondent’s

claim that its “LEE” mark first reached the Philippines in 1960s through local sales by the Post Exchanges of the U.S. Military Bases. The BPTT only relied on the registration certificates alleging such. On the other hand, petitioner has sufficiently shown that it has been in the business of selling jeans and other garments adopting its “STYLISTIC MR. LEE” trademark since 1975 as evidence by appropriate sales invoices to various stores and retailers.

Trademark Law

required prior actual commercial use (2 months) as a condition for ownership of a mark.

SC applied Holistic Test

IP code of 1998

law does not require prior use as a condition for ownership of a mark – only a declaration of actual use.

Dominancy Test preferred now by Philippine Supreme Court (McDonald’s Corp. v. L.C. Big Mak Burger)

Copyrightable Works1. Literary and Artistic Works (Sec. 172)

(examples: books, pamphlets, periodicals, dramatic and musical compositions, paintings, photographs, sculpture, advertisements etc.)

2. Derivative Works (Sec. 173)(examples: Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary or artistic works)

Non-Copyrightable Works:1. Unprotected Subject Matter (Sec. 175)

( examples: idea, procedure, system, method or operation, concept, principle, pleadings, original decisions of courts and tribunals)

2. Works of the Government (Sec. 176.1)(requires prior approval of government or agency if to be used for profit)

Criteria for Copyright Protection 1. If the work is an independent creation

of the author;2. It must not be copied; and3. It must involve some intellectual effort

(Ching Kian Chuan v. CA [2001])

Rights Conferred by Copyright1. Economic Right (Sec. 177)2. Moral Rights ( Sec. 193)3. Droit de Suite (Sec 200)

Infringementconsists in the doing by any person, without the consent of the owner of the copyright, of anything the sole right to do which is conferred by statute on the owner of the copyright. The copying must produce an “injurious effect”. (Habana, et al. v. Robles, 1999)

Remedies for Infringement1. Civil (injunction, damages, impounding, etc.)2. Criminal (imprisonment and fine)