PATENT:

Question:
Can an injunctive relief be issued based on an action of patent infringement when the patent allegedly infringed has
already lapsed?
Answer:
No. The provision of R.A. 165, from which the Pfizers patent was based, clearly states that "[the] patentee shall have
the exclusive right to make, use and sell the patented machine, article or product, and to use the patented process for
the purpose of industry or commerce, throughout the territory of the Philippines for the term of the patent; and such
making, using, or selling by any person without the authorization of the patentee constitutes infringement of the
patent."
Clearly, the patentees exclusive rights exist only during the term of the patent. Since the patent was registered on 16
July 1987, it expired, in accordance with the provisions of R.A. 165, after 17 years, or 16 July 2004. Thus, after 16
July 2004, Pfizer no longer possessed the exclusive right to make, use, and sell the products covered by their patent.
The CA was wrong in issuing a temporary restraining order after the cut-off date.
Citation:Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc. G.R. No. 167715, 17 November 2010

Question:
What is the doctrine of equivalents in Patent Infringement?
Answer:

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.

In the case of SmithKline vs. Bell Yet again, a scrutiny of petitioners evidence fails to convince
this Court of the substantial sameness of petitioners patented compound and Albendazole.
While both 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.1[20] In other words, the principle or mode of operation
must be the same or substantially the same.2[21]
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
1

Case Citation: Smith Kline Beckman Corporation vs. CA and Tryco Pharma Corporation. G. R.
No. 126627. August 14, 2003

COPYRIGHT CASES
3. Question:
In a case that involves the offense of unfair competition, is the presentation of master tapes of
the copyrighted films always necessary to meet the requirement of probable cause and
that, in the absence thereof, there can be no finding of probable cause for the issuance
of a search warrant?
Answer:
No. the necessity for the presentation of the master tapes of the copyrighted films for the validity
of search warrants should at most be understood to merely serve as a guidepost in determining
the existence of probable cause in copyright infringement cases where there is doubt as to the
true nexus between the master tape and the pirated copies. An objective and careful reading of
the decision in said case could lead to no other conclusion than that said directive was hardly
intended to be a sweeping and inflexible requirement in all or similar copyright
infringement cases. Judicial dicta should always be construed within the factual matrix of their
parturition, otherwise a careless interpretation thereof could unfairly fault the writer with the vice
of overstatement and the reader with the fallacy of undue generalization.
It is obvious that 20th Century Fox Film Corporation should not be applied to the present case
since this involves the offense of unfair competition and not copyright infringement. More
importantly, as pronounced by the Court in Columbia Pictures, Inc., the judges exercise of
discretion should not be unduly restricted by adding a requirement that is not sanctioned by law.
Citation: People of the Philippines vs. Christopher Choi GR No. 152950, August 3, 2006

4. PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs. FELICIDAD C.

ROBLES and GOODWILL TRADING CO., INC.

G.R. No. 131522, July 19, 1999
Question: What is fair use?
Answer:

RULING: In CJ Davides dissenting opinion, fair use has been defined asa privilege to use the copyrighted
material in a reasonable mannerwithout the consent of the copyright owner or as copying the theme orideas rather
than their expression. No question of fair or unfair usearises however, if no copying is proved to begin with. This is
inconsonance with the principle that there can be no infringement if therewas no copying. It is only where some
form of copying has been shownthat it becomes necessary to determine whether it has been carried toan unfair,
that is, illegal, extent.

5. The difference between trademark, patent and copyright?

Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall include a stamped or
marked container of goods.12 In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise.13 Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual creations in the literary and artistic
domain protected from the moment of their creation.14 Patentable inventions, on the other hand,
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.15
Petitioner has no right to support her claim for the exclusive use of the subject trade name and its
container. The name and container of a beauty cream product are proper subjects of a trademark
inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively
use the same in the sale of the beauty cream product, the user must sufficiently prove that she
registered or used it before anybody else did. The petitioner's copyright and patent registration of
the name and container would not guarantee her the right to the exclusive use of the same for the
reason that they are not appropriate subjects of the said intellectual rights. Consequently, a
preliminary injunction order cannot be issued for the reason that the petitioner has not proven
that she has a clear right over the said name and container to the exclusion of others, not having
proven that she has registered a trademark thereto or used the same before anyone did.

Case: G.R. No. 115758

March 19, 2002

ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS
LABORATORY, petitioner,
vs.
HON. COURT OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING and
COMPANY, and ANG TIAM CHAY, respondents.
DE LEON, JR., J.

6. [G.R. No. 140946. September 13, 2004]

MICROSOFT CORPORATION and LOTUS DEVELOPMENT CORPORATION, petitioners,
vs. MAXICORP, INC., respondent.
MICROSOFT CORPORATION v. MAXICORP INC.FACTS:Samiano, agent NBI, conducted a surveillance
against Maxicorp Inc. Heobserved that Microsoft Software (Windows Operating Systems) werebeing produced
and packaged within the premises of Maxicorp.Samiano, together with a civilian witness then bought a computer
unitfrom Maxicorp. The unit was pre-installed with a pirated copy of Windows. For their purchase, they were
issued a receipt, however, thereceipt was in the name of a certain Joel Diaz. Subsequently, Samianoapplied for a
search warrant before the RTC. He brought the computerunit they bought as evidence as well as the receipt. The
RTC judge,convinced that there is a probable cause for a case of copyrightinfringement and unfair competition
committed by Maxicorp, issued thecorresponding warrant. Maxicorp assailed the legality of the warrantbefore the
Court of Appeals. The Court of Appeals ruled in favor of Maxicorp.ISSUE: Did Maxicorp commit copyright
infringement?RULING: YES. From what they have witnessed, there is reason tobelieve that Maxicorp engaged in
copyright infringement and unfaircompetition to the prejudice of Microsoft. Both NBI Agent Samiano andcivilian
witness Sacriz were clear and insistent that the counterfeitsoftware were not only displayed and sold within
Maxicorps premises,they were also produced, packaged and in some cases, installed there
7. Explain the Must Carry Rule as a limitation to copyright
The Must-Carry Rule favors both broadcasting organizations and the
public. It prevents cable television companies from excluding broadcasting
organization especially in those places not reached by signal. Also, the rule
prevents cable television companies from depriving viewers in far-flung areas the
enjoyment of programs available to city viewers. In fact, this Office finds the rule
more burdensome on the part of the cable television companies. The latter carries
the television signals and shoulders the costs without any recourse of charging.
On the other hand, the signals that are carried by cable television companies are
dispersed and scattered by the television stations and anybody with a television
set is free to pick them up.

ABS-CBN BROADCASTING

G.R. Nos. 175769-70

CORPORATION,
Petitioner,

Present:
Ynares-Santiago, J. (Chairperson),

- versus -

Austria-Martinez,
Chico-Nazario,

Nachura, and
Leonardo-De Castro,* JJ.
PHILIPPINE MULTI-MEDIA SYSTEM,
INC., CESAR G. REYES, FRANCIS
CHUA (ANG BIAO), MANUEL F.
ABELLADA, RAUL B. DE MESA, Promulgated:
AND ALOYSIUS M. COLAYCO,
Respondents.

January 19, 2009

8.
Question: If an infringer could not be held liable for copyright over its technical drawings of
the said light boxes, should they be liable instead for infringement of patent?

Answer: No. there can be no infringement of a patent until a patent has been issued, since
whatever right one has to the invention covered by the patent arises alone from the grant of
patent. x x x (A)n inventor has no common law right to a monopoly of his invention. He has the
right to make use of and vend his invention, but if he voluntarily discloses it, such as by offering
it for sale, the world is free to copy and use it with impunity. A patent, however, gives the
inventor the right to exclude all others. As a patentee, he has the exclusive right of making,
selling or using the invention.13On the assumption that petitioners advertising units were
patentable inventions, petitioner revealed them fully to the public by submitting the engineering
drawings thereof to the National Library.
To be able to effectively and legally preclude others from copying and profiting from the
invention, a patent is a primordial requirement. No patent, no protection. The ultimate goal of a
patent system is to bring new designs and technologies into the public domain through
disclosure.14 Ideas, once disclosed to the public without the protection of a valid patent, are
subject to appropriation without significant restrain.
Case: [G.R. No. 148222. August 15, 2003]
PEARL & DEAN (PHIL.), INCORPORATED, petitioner, vs. SHOEMART, INCORPORATED,
and NORTH EDSA MARKETING, INCORPORATED, respond
*