Patent General Principles: Court of Appeals, G.R. No. 113388, September 5, 1997)
Patent General Principles: Court of Appeals, G.R. No. 113388, September 5, 1997)
Patent General Principles: Court of Appeals, G.R. No. 113388, September 5, 1997)
GENERAL PRINCIPLES
The primary purpose of the patent system is not the reward of the
individual but the advancement of the arts and sciences. The function
of a patent is to add to the sum of useful knowledge and one of the
purposes of the patent system is to encourage dissemination of
information concerning discoveries and inventions (Manzano vs.
Court of Appeals, G.R. No. 113388, September 5, 1997).
Coverage of patents
The term of a patent shall be twenty (20) years from the filing date of
the application. (IPC, Sec. 54)
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. (IPC, Sec. 28)
1
Q: May patent rights be assigned or transferred?
PATENTABLE INVENTIONS
Patentable inventions
Any technical solution of a problem in any field of human activity
which is:
a. new;
b. involves an inventive step;
c. and is industrially applicable.
2
3. Industrially Applicable – An invention that can be produced and
used in any industry (IPC, Sec. 27).
1. NOVELTY
Prior Art
Only prior art made available to the public before the filing date or
priority date is considered in assessing inventive step (Revised IRR
for RA 8293, Rule 206).
PUBLIC DISCLOSURE
GR: When a work has already been made available to the public, it
shall be non-patentable for absence of novelty.
1. The inventor;
2. A patent office and the information was contained:
3
DOCTRINE OF PREJUDICIAL DISCLOSURE
a. The inventor;
2. INVENTIVE STEP
Test of Non-Obviousness
If any person possessing ordinary skill in the art was able to draw the
inferences and he constructs that the supposed inventor drew from
prior art, then the latter did not really invent it.
4
the normal means and capacity for routine work and experimentation”
(Revised IRR for R.A. No. 8293, Rule 207).
3. INDUSTRIAL APPLICABILITY
An invention that can be produced and used in any industry meets the
industrial application requirement of patent registrability. This means
an invention is not merely theoretical, but also has a practical
purpose. If the invention is a product, it should be able to produce a
product and if the invention is a process, it should be able to lay out a
process (WIPO, IP Handbook 2nd Edition, Chapter 2: “Fields of
Intellectual Property Protection” Publication No. 489 (E), p. 18.)
UTILITY MODEL
5
NON-PATENTABLE INVENTIONS
Non-patentable inventions
A: NO. The law provides that any invention that is contrary to public
order or morality may not be extended patent protection. The bogus
coin detector appears to be a device used to cheat in gambling.
Therefore, it may not be patented.
OWNERSHIP OF A PATENT
6
RIGHT TO A PATENT
FIRST-TO-FILE RULE
2. Where two or more applications are filed for the same invention,
to the applicant that has the earliest filing date (IPC, Sec. 29).
RIGHT OF PRIORITY
Priority date
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(IPC, Sec. 31).
7
there is an application for patent for the same invention that was filed
in another country (Salao, 2012).
CASES:
2005 Bar Exam
Cesar works in a car manufacturing company owned by Joab.
Cesar is quite innovative and loves to tinker with things. With the
materials and parts of the car, he was able to invent a gas-saving
device that will enable cars to consume less gas. Francis, a co-worker,
saw how Cesar created the device and likewise, came up with a
similar gadget, also using scrap materials and spare parts of the
company. Thereafter, Francis filed an application for registration of
his device with the Bureau of Patents. Eighteen months later, Cesar
filed his application for the registration of his device with the Bureau
of Patents.
a) Is the gas-saving device patentable?
b) Assuming that it is patentable, who is entitled to the patent?
What, if any, is the remedy of the losing party?
8
c) Supposing Joab got wind of the inventions of his employees and
also laid claim to the patents, asserting that Cesar and Francis
were using his company time and materials in making the
devices, will his claim prevail over those of his employees?
Explain.
Suggested Answers:
a) It is patentable because it is new, it involves an inventive step,
and is industrially applicable.
b) Francis is entitled to the patent because he has earlier filing
date. The remedy of Cesar is to file a petition for cancellation of
the patent of Francis on the ground that he is the true and
actual inventor and ask for substitution of patentee.
c) Joab’s claim will not prevail over those of his employees even if
they used his materials and company time in making the gas-
saving device. The invention of the gas-saving device is not part
of their regular duties as employees.
Suggested Answer:
X
9
If the applicant is not a resident of the Philippines, then he must
appoint a resident agent or representative in the Philippines.
Can anyone claim priority in a Philippine patent application?
Affirmative.
A patent application 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 citizens of
the Philippines, shall be considered as filed as the date of filing
the foreign application provided, that:
1. The local application expressly claims priority;
2. The Philippine application is filed within twelve (12)
months from the date when the earliest application was
filed; and
3. A certified copy of the foreign application together with
an English Translation is filed within six (6) months
from the date of filing in the Philippines.
Procedure Outline:
1. Filing of the application
2. Accordance of the filing date
3. Formality examination
4. Classifications and Search
5. Publication of the application
6. Substantive examination
7. Grant of the patent
8. Publication upon grant
9. Issuance of the certificate
10
The filing fees may be paid at the time of filing or within one (1)
month from the filing date.
1. Small Entities:
a) P 1,800.00 – filing fee
b) P 150.00 – fee for each claim in excess of five (5)
c) P 15.00 – fee for each paper sheet in excess of thirty
(30)
2. Big Entities:
a) P 3,600.00 – filing fee
b) P 150.00 – fee for each claim in excess of five (5)
c) P 15.00 – fee for each paper sheet in excess of thirty
(30)
1. A big entity is any natural or juridical person other than a
small entity.
2. Any natural or juridical person is presumed to be a big entity
unless such natural person or the duly authorized
representative of such juridical person to the contrary
submits a written statement.
11
The application for Philippine patent must be presented in
either the Filipino or English language.
Prohibited Matter
The application shall not contain:
1. A statement or other matter contrary to public order or
morality.
2. A statement disparaging the products or processes of any
particular person other than the applicant, or the merits
or validity of applications or patents of any such person.
Mere comparison with the prior art shall not be
considered disparaging.
3. Any statement or other matter obviously irrelevant or
unnecessary under the circumstances.
12
Is it possible for an invention that has been previously
disclosed to the public to be patented?
Yes. Under the IP Code of the Philippines (Sec. 25), the
disclosure of information contained in the patent application
during the twelve (12) months preceding the filing date r the
priority date of such patent application shall not prejudice the
applicant on the ground of lack of novelty, if such disclosure was
made by:
1. The inventor;
2. A patent office and the information was contained in the
following:
- In another application filed by the inventor and
should not have been disclosed by the office, or
- In an application filed without the knowledge or
consent of the inventor by a third party which
obtained the information directly or indirectly from
the inventor.
3. A third party who obtained the information directly or
indirectly from the inventor.
Formality Examination
After the patent application has been accorded a filing date and
the required fees have been paid on time, the applicant shall
comply with the formal requirements of the law and such other
requirements of the implementing rules and regulations within
the prescribed period.
Such other requirements may relate to the following:
a) Contents of the request for grant of a Philippine patent
b) Priority documents if with claim of convention priority
c) Proof of authority, if the applicant is not the inventor
d) Deed of assignment
e) Payment of all fees
f) Signatures of the applicants
g) Identification of the inventor
h) Formal drawings
If the drawings were filed after the filing date of the application,
the application shall be granted a new filing date which is the
date on which the drawings were filed.
If no drawings were filed, or if they are not filed in due time, any
reference to them in the application shall be deemed deleted.
Classification and Search
An application that has complied with the formal requirements
shall be classified and a search conducted to determine the
prior art. The requirement of novelty is determined at this point.
The International Patent Classification is used to classify the
application.
13
The Intellectual Property Search Report is drawn up on the
basis of the claims, description, and the drawings, if there is
any.
a) The search report shall mention those documents
available at the Office at the time of drawing up the
report, which may be taken into consideration in assessing
novelty and inventive step of invention.
b) The search report shall distinguish between cited
documents published before the date of priority claimed,
between such date of priority and the date of filing, and on
or after the date of filing.
c) The search report shall contain the classification of the
subject matter of the application in accordance with the
International Patent Classification.
d) The search report may include documents cited in a
search established in the corresponding foreign
application.
14
until after the grant of the patent and not beyond four (4) years
from the commission of the acts complained of.
Grant of Patent
The Grant of Patent is the ultimate objective of a patent
application, which is granted only if the application meets the
requirements of both the law and the implementing rules and
regulations, including timely payment of fees.
A patent shall take effect on the date of the publication of the
grant of the patent in the IPO Gazette.
Does the applicant have any remedy if the examiner rejects the
patent application?
Yes. If the examiner rejects the patent application then the
decision may be appealed to the Director of the Bureau of
Patents.
Thereafter, if the Director of the Bureau of Patents affirms he
decision of the examiner, that decision may be appealed to the
Director General of the Intellectual Property Office. The
decision of the Director General to reject the application may
then be appealed to the Court of Appeals, and ultimately to the
Supreme Court of the Philippines.
An application is prosecuted ex parte by the applicant; the
proceedings are like a lawsuit in which there is a plaintiff but no
15
defendant, and the court acting as the adverse party. The
Bureau, represented by the examiner, is not supposed to look
after the interests of an applicant. The examiners are charged
with the protection of the interests of the public, and hence
must be vigilant to see that no patent issues for subject matter
which is not patentable, and is already disclosed in prior
inventions.
Amendment of Application
An application may amend the patent application during the
examination provided that such amendment will not include new
matter outside the scope of the disclosure contained in the
application as filed.
After final rejection or action, amendments may be made
cancelling claims or complying with ay requirements of form
which has been made, and amendments presenting rejected
claims in better form for consideration on appeal may be
admitted; but any proceedings relative thereto shall not operate
to relieve the application from is condition as subject to appeal
or to save it from being considered withdrawn.
Publication of Grant of Patent
The grant of the patent together with other related information
shall be published in the IPO Gazette within the time prescribed
by the Regulations.
Any interested parties may inspect the complete descriptions,
claims, and drawings of the patent on file with the Office.
Issuance of the Certificate or Letters Patent
The patent shall be issued in the name of the Republic of the
Philippines under the seal of the Intellectual Property Office and
shall be signed by the Director.
The patent shall be registered together with the description,
claims, and drawings, if any, in the books and records of the
Office.
TERM OF PATENT
Twenty (20) years from the filing date of the application.
ANNUAL FEES
PAYMENT OF ANNUAL FEE
16
Payable on the expiration of 4 years from date the application is
published and subsequent payment on anniversary of such date.
SURRENDER OF PATENT
WHO MAY SURRENDER PATENT?
The owner of the patent with the consent of persons
having grants or licenses, other right, title or interest to
the patent or invention covered thereby.
OPPOSITION TO THE SURRENDER
A person may give notice of his opposition and the Bureau
shall notify the proprietor of the patent.
ACCEPTANCE
If the Office is satisfied that the patent may be properly
surrendered, it shall accept the offer. The acceptance is
published in the IPO Gazette.
EFFECT OF SURRENDER
The patent shall cease to have effect and no action
for infringement and no right of compensation shall
accrue for the use of the patented invention from
that day notice of acceptance is published.
CORRECTION OF MISTAKES
MISTAKE OF THE MISTAKE IN THE
OFFICE APPLICATION
By the Director himself Upon request of any
interested person
The Director have the The Director is authorized
power
Without fee With payment of prescribed
fee
Any mistake through fault Mistake is formal or clerical
of the Office nature
CHANGES IN PATENT
The owner have the right to make changes in the patent to:
17
c. Correct mistakes other than those obvious mistakes or to
correct clerical errors, made in good faith, provided that
where the change would result in the broadening of the
extent of protection conferred to the patent, no request may
be made after the expiration of 2 years from the grant of a
patent and the change shall not affect the rights of any third
party which has relied on the patent, as published.
CANCELLATION OF PATENT
GROUNDS:
WHERE TO FILE?
a. BLA – if in violation of IPC (administrative)
b. RTC – otherwise
NOTICE OF HEARING
The Director shall serve notice of the filing of the petition and
the date of hearing upon the patentee and all persons having
grants, licenses, other right, title, or interest to the patent or
invention covered thereby. The notice is published in the IPO
Gazette.
18
REMEDIES OF PERSONS DEPRIVED OF PATENT OWNERSHIP
PERSON DECLARED BY COURT AS HAVING RIGHT TO
THE PATENT
Within 3 months after the final court order or decision has
become final, a person other than the applicant who was
declared as having the right to patent may:
a. Prosecute the application as his own application in place
of the applicant;
b. File a new patent application in respect of the same
invention;
c. Request that the application be refused;
d. Seek the cancellation of the patent, if one has already
been issued.
19
FACTS:
Pfizer is the registered owner of Patent No. 211116 registered
on July 16, 1987 and valid until July 16, 2004. Patent No. 21116
covers ampicillin sodium/sulbactam sodium (Sulbactam
Ampicilin). Pfizer discovered on January and February 2003 that
Pharmawealth submitted bids to several hospitals to supply
Sulbactam Ampicilin without its consent. It demanded that the
hospitals cease and desist from accepting bids for the supply of
Sulbactam Ampicilin or awarding the same to other companies
and demanded Pharmawealth to withdraw its bids to supply
Sulbactam Ampicilin. Pharmawealth continued to infringe the
Patent. The case reached the Court of Appeals until April 11,
2005.
ISSUE:
Whether Pfizer still holds monopoly over the substance by virtue
of its Patent.
RULING:
No. section 37 of RA 165 which was the governing law at the
time of issuance of Pfizer’s Patent, provides:
20
a. The making, using, offering for sale, selling, or importing a
patented product or a product obtained directly or indirectly from
a patented process, or
b. The use of a patented process without the authorization of the
patentee constitutes patent infringement
21
b. 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;
c. Where the act consists of making or using exclusively for the
purpose of experiments that relate to the subject matter of the
patented invention;
d. 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;
e. 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.
HELD:
Yes. the law makes a criminal of any person who imports an
unregistered drug regardless of the purpose, even if the
medicine can spell life or death for someone in the Philippines.
It does not accommodate the situation where the drug is out of
stock in the Philippines, beyond the reach of a patient who
urgently depends on it. It does not allow husbands, wives,
children, siblings, parents to import the drug in behalf of their
loved ones too physically ill to travel and avail of the meager
personal use exemption allotted by the law. It discriminates, at
the expense of health, against poor Filipinos without means to
travel abroad to purchase less expensive medicines in favor of
their wealthier brethren able to do so. Less urgently perhaps,
but still within the range of constitutionally protected behavior,
it deprives Filipinos to choose a less expensive regime for their
health care by denying them a plausible and safe means of
purchasing medicines at a cheaper cost.
22
Even worse is the fact that the law is not content with simply
banning, at civil costs, the importation of unregistered drugs. It
equates the importers of such drugs, many of whom motivated
to do so out of altruism or basic human love, with the
malevolent who would alter or counterfeit pharmaceutical drugs
for reasons of profit at the expense of public safety. Note that
the SLCD is a special law, and the traditional treatment of penal
provisions of special laws is that of malum prohibitum or
punishable regardless of motive or criminal intent. For a law
that is intended to help save lives, the SLCD has revealed itself
as a heartless, soulless legislative piece.
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, but this 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 use or
preparations for use have been made. (Sec. 73)
Bar Question:
Q: X invented a device which, through the use of noise, can
recharge a cellphone battery. He applied for and was
granted a patent on his device, effective within the
Philippines. As it turns out, a year before the grant of X's
patent, Y, also an inventor, invented a similar device
which he used in his cellphone business in Manila. But X
files an injunctive suit against Y to stop him from using the
device on the ground of patent infringement. Will the suit
prosper? (2011 Bar)
(A) No, since the correct remedy for X is a civil action for
damages.
(B) No, since Y is a prior user in good faith.
(C) Yes, since X is the first to register his device for
patent registration.
(D) Yes, since Y unwittingly used X’s patented invention.
USE BY GOVERNMENT
A Government agency or third person authorized by the
Government may exploit the invention even without
agreement of the patent owner where:
a. The public interest, in particular, national security,
nutrition, health or the development of other sectors, as
23
determined by the appropriate agency of the government,
so requires; or
b. A judicial or administrative body has determined that
the manner of exploitation, by the owner of the patent or
his licensee, is anticompetitive; or
c. In the case of drugs and medicines, there is a
national emergency or other circumstance of extreme
urgency requiring the use of the invention; or
d. In the case of drugs and medicines, there is a public
non-commercial use of the patent by the patentee, without
satisfactory reason; or
e. In the case of drugs and medicines, the demand for the
patented article in the Philippines is not being met to an
adequate extent and on reasonable terms, as
determined by the Secretary of the Department of
Health.
24
injunction or such other provisional remedies that will
prevent its immediate execution.
DOCTRINE OF EQUIVALENTS
It provides that an infringement also occurs when a device
appropriates a prior invention by incorporating its innovative
concept and, despite some modification and change,
performs substantially the same function in substantially
the same way to achieve substantially the same result.
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. (Smithkline Beckman Corporation
v. CA, G.R. No. 126627, August 14, 2003)
Meaning of “equivalent device”
It is such as a mechanic of ordinary skill in construction
of similar machinery, having the forms, specifications and
machine before him, could substitute in the place of the
mechanism described without the exercise of the inventive
faculty.
Facts:
Smith Kline Beckman Corporation is a US corporation licensed
to do business in the Philippines. In 1981, a patent was issued to
it for its invention entitled “Methods and Compositions for
Producing Biphasic Parasiticide Activity Using Methyl 5
Propylthio-2-Benzimidazole Carbamate.” The invention is a
means to fight off gastrointestinal parasites from various
animals such as swine, sheep, cattle, goats, horses, and even pet
animals.
Tryco Pharma is a domestic corporation engaged in the same
business as Smith Kline.
Smith Kline sued Tryco Pharma for infringement of patent and
unfair competition because the latter was selling a veterinary
25
product called Impregon which contains a drug called
Albendazole which fights off gastro-intestinal roundworms,
lungworms, tapeworms and fluke infestation in carabaos, cattle
and goats.
Smith Kline is claiming that Albendazole is covered in their
patent because it is substantially the same as methyl 5
propylthio-2-benzimidazole carbamate covered by its patent
since both of them are meant to combat worm or parasite
infestation in animals. And that Albendazole is actually patented
under Smith Kline in the US.
Tryco Pharma averred that nowhere in Smith Kline’s
patent does it mention that Albendazole is present but even if it
were, the same is “unpatentable”.
Smith Kline thus invoked the doctrine of equivalents, which
implies that the two substances substantially do the same
function in substantially the same way to achieve the same
results, thereby making them truly identical for in spite of the
fact that the word Albendazole does not appear in Tryco
Paharma’s letters of patent, it has ably shown by evidence its
sameness with methyl 5 propylthio-2-benzimidazole carbamate.
HELD:
1) NO. There is no patent infringement.
The compound Albendazole was not claimed in the patent of the
petitioner. Nowhere in the patent is the word Albendazole
found. When the language of its claims is clear and distinct, the
patentee is bound thereby and may not claim anything beyond
them. And so are the courts bound which may not add to or
detract from the claims matters not expressed or necessarily
implied, nor may they enlarge the patent beyond the scope of
that which the inventor claimed and the patent office allowed,
even if the patentee may have been entitled to something more
than the words it had chosen would include.
Further, there was a separate patent for Albendazole given by
the US which implies that Albendazole is indeed separate and
distinct from the patented compound here.
2) NO. The doctrine of equivalents is not applicable in this case.
26
compounds have the effect of neutralizing parasites in
animals, identity of result does not amount to infringement of
patent unless Albendazole operates in substantially the same
way or by substantially the same means as the patented
compound, 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.
PROHIBITED CLAUSES
one of the restrictions that law imposed is to prohibit certain
stipulations in the licensing contract.
The following provisions are prohibited since they are deemed
prima facie to have an adverse effect on competition and trade:
1. those which impose upon the licensee the obligation to
acquire from a specific source capital goods, intermediate
27
products, raw materials, and other technologies, or of
permanently employing personnel indicated by the licensor;
2. those pursuant to which the licensor reserves the right to fix
the sale or resale prices of the products manufactured on the
basis of the license;
3. those that contain restrictions regarding the volume and
structure of production;
4. those that prohibit the use of competitive technologies in a
non- exclusive technology transfer arrangement;
5. those that establish a full or partial purchase option in favor
of the licensor;
6. those that obligate the licensee to transfer for free to the
licensor the inventions or improvements that may be
obtained through the use of the licensed technology;
7. those that require payment of royalties to the owners of
patents for patents which are not used;
8. those that prohibit the licensee to export the licensed
product unless justified for the protection of the legitimate
interest of the licensor such as exports to countries where
exclusive licenses to manufacture and/or distribute the
licensed product(s) have already been granted;
9. those which restrict the use of the technology supplied after
the expiration of the technology transfer arrangement,
except in cases of early termination of the technology
transfer arrangement due to reasons attributable to the
licensee;
10. those which require payments for patents and other
industrial property rights after their expiration, termination
arrangement;
11. those which require that the technology recipient shall not
contest the validity of any of the patents of the technology
supplier;
12. those which restrict the research and development
activities of the licensee designed to absorb and adapt the
transferred technology to local conditions or to indicate
research and development programs in connection with new
products, processes or equipment;
13. those which prevent the licensee from adapting the
imported technology to local conditions, or introducing
innovation to it, as long as it does not impair the quality
standards prescribed by the licensor;
14. those which exempt the licensor for liability for non-
fulfilment of his responsibilities under the technology
transfer arrangement and/or liability arising from third party
suits brought about by the use of the licensed product or the
licensed technology; and
15. other clauses with equivalent effects.(SEC 87)
GR: these provisions are prohibited because they are deemed adverse
to trade and competition.
XPN: in cases under Section 91, this provision on prohibited clauses
may be dispensed with.
28
Sec 91. Exceptional cases- in exceptional or meritorious cases
where substantial benefits will accrue to the economy, such as
high technology content, increase in foreign exchange earnings,
employment generation, regional dispersal of industries and/or
substitution with or use of local raw materials, or in the case of
Board of investment, registered companies with pioneer status,
exemption from any of the above requirements may be allowed
by the DITTB after evaluation thereof on a case by case basis.
MANDATORY PROVISIONS
the law prescribes that the following provisions shall be
included in voluntary license contracts:
29
1. Those that contain restrictions regarding the volume and
structure of production;
2. Those that prohibit the use of competitive technologies in a non-
exclusive technology transfer arrangement;
3. Those that establish a full or partial purchase option in favor of
the licensor;
JURISDICTION
The Director of Legal Affairs has original jurisdiction over
petitions for compulsory licensing of patents. (Sec. 10.1)
Republic Act No. 9502 otherwise known as “Universally
Accessible Cheaper and Quality Medicines Act of 2008” however
amended Section 93 providing that it is the Director General
of the Intellectual Property Office who may grant a license
to exploit patented invention under the following grounds:
a. National emergency or other circumstances of extreme
urgency;
b. 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; or
c. Where a judicial or administrative body has determined
that the manner of exploitation by the owner of the paten
or his licensee is anti-competitive; or
d. In case of public non-commercial use of the patent by the
patentee, without satisfactory reason;
e. 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
30
the importation of the patented article shall constitute
working or using the patent; and
f. 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 the Department
of Health. (Rep. Act No. 8293, Sec. 93 as amended by Rep.
Act No. 9502 otherwise known as the “Universally
Accessible Cheaper and Quality Medicines Act of 2008.”)
The license will only be granted after the petitioner has made
efforts to obtain authorization from the patent owner on
31
reasonable commercial terms and conditions but such efforts
have not been successful within a reasonable period of time.
32
4. Use of the subject matter of the license shall be devoted
predominantly for te supply of the Philippine market
provided that this limitation shall not apply where the
grant of the licensee is based on the ground that the
patentee’s manner of exploiting the patent is determined
by judicial or administrative process, to be anti-
competitive;
5. The license may be terminated upon proper showing that
circumstances which led to its grant have ceased to exist
and are unlikely to recur provided that adequate
protection shall be afforded to the legitimate interest of
the licensee; and
6. The patentee shall be paid adequate remuneration taking
into account the economic value of the grant or
authorization, except that in cases where the license was
granted to remedy a practice which was determined after
judicial or administrative process, to be anti-competitive
the need to correct the anti-competitive practice may be
taken into account in fixing the amount of remuneration.
Answer:
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b) The Director of Legal Affairs of the Intellectual Property
Office. (BAR 2012)
ASSIGNMENT OF RIGHTS
Assignment of Patents
Form of Assignment
a. in writing
b. acknowledged before a notary public or other officer authorized
to administer oath or perform notarial acts
c. and certified under the hand and official seal of the notary or
such other officer(Sec. 105).
Recording
Upon recording, the Office shall retain the duplicate, return the
original or the authenticated copy to the party who filed the
same and notice of the recording shall be published in the IPO
Gazette.
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Such instruments shall be void as against any subsequent
purchaser or mortgagee for valuable consideration and without
notice, unless, it is so recorded in the Office, within three (3)
months from the date of said instrument, or prior to the
subsequent purchase or mortgage (Sec. 106).
UTILITY MODELS
Utility Models
Definitions:
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A utility model is a technical solution to a problem in any field of
human activity which is new and industrially applicable. It may
be, or may relate to, a product, or process, or an improvement
of any of the aforesaid. Essentially, a utility model refers to an
invention in the mechanical field. This is the reason why its
object is sometimes described as a device or useful object”
(Ching v. Salinas, G.R. No. 161295, June 29, 2005).
Patentable
Utility Models
Inventions
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A utility model The term of a patent
registration shall expire, shall be twenty (20)
As to expiration without any possibility years from the filing
of the of renewal, at the end of date of the application.
registration the seventh year after (Section 54)
the date of the filing of
the application.
As to grounds
for cancellation
of registration The utility model Any interested person
registration shall be may, upon payment of
cancelled in the the required fee,
following grounds: petition to cancel the
patent or any claim
(a) That the claimed thereof, or parts of the
invention does not claim, on any of the
qualify for following grounds:
registration as a
utility model and (a) That what is
does not meet the claimed as the
requirement of invention is not
registrability, in new or
particular having Patentable;
regard to Section
109.1 and Section (b) That the patent
22. 23. 24 and 27; does not disclose
the invention in a
manner
sufficiently clear
(b)That the and complete for
description and it to be carried
the claims do not out by any
comply with the person skilled in
prescribed the art; or
requirements;
(c) That the patent is
contrary to public
order or morality.
(c) That any drawing
which is necessary
for the
understanding of
the invention has
not been
furnished;
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(d)That the owner of
the utility model
registration is not
the inventor or
successor in title.
An applicant may not file two (2) applications for the same subject,
one for utility model registration and the other for the grant of a
patent whether simultaneously or consecutively(Sec. 111).
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INDUSTRIAL DESIGN
This is covered by RA No. 9150. Under this law, the following are its
subject matter:
1. Industrial design
2. Integrated circuit
3. Lay-out design
A. Industrial Design
1. It must be new
2. It must be ornamental
B. Integrated Circuit
1. It must be an original lay-out design of integrated circuit.
C. Lay-out Designs
1. It must consists of a combination of elements
2. And interconnections that are common place.
3. The combination, taken as a whole, is original.
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CONTENTS OF THE APPLICATION FOR REGISTRATION
EXAMINATION OF APPLICATION
- There should be an examination whether the industrial design
or layout-design complies with requirements provided by law.
TERM OF REGISTRATION
1. Industrial design
- Five years from the filing date of application. This can be
renewed for two consecutive period of 5 years.
2. Layout- Design
- 10 years, without renewal from the date of
commencement of the protection accorded to the layout
design.
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3. The subject matter extends beyond the content of the
application as originally filed.
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