What is the "doctrine of equivalents"?

 Infringement by equivalents happens when a device (or process) 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.
 It is an equitable measure to protect patentees against deliberate efforts of infringers to
evade liability for infringement by making only insubstantial changes to a patented
invention. In other words, it extends protection beyond the specific and literal claims of
patents.
 The doctrine of equivalents arises in the context of an infringement action. If an accused
product or process does not literally infringe a patented invention, the accused product
or process may be found to infringe under the doctrine of equivalents. The essential
objective inquiry is: “Does the accused product or process contain elements identical or
equivalent to each claimed element of the patented invention?”

Most-favored-nation treatment

 Most-favoured-nation (MFN): treating other people equally Under the WTO

agreements, countries cannot normally discriminate between their trading partners.
Grant someone a special favour (such as a lower customs duty rate for one of their
products) and you have to do the same for all other WTO members.
 This principle is known as most-favoured-nation (MFN) treatment.
 In general, MFN means that every time a country lowers a trade barrier or opens up a
market, it has to do so for the same goods or services from all its trading partners —
whether rich or poor, weak or strong.

National treatment

 A principle in international law vital to many treaty regimes. It essentially means

treating foreigners and locals equally. Under national treatment, if a state grants a
particular right, benefit or privilege to its own citizens, it must also grant those
advantages to the citizens of other states while they are in that country. In the context
of international agreements, a state must provide equal treatment to those citizens of
other states that are participating in the agreement.[vague] Imported and locally produced
goods should be treated equally — at least after the foreign goods have entered the
market.

Utility models

 Is a “petty” patent for new and industrially applicable technical solution of a problem.
 Is a statutory monopoly granted for a limited time in exchange for an inventor providing
sufficient teaching of his or her invention to permit a person of ordinary skill in the
relevant art to perform the invention.
Differentiate Utility model from invention

 Requirement of patentability: (a) An invention qualifies for registration as a utility model

if it is new and industrially applicable; (b) Section 21, “Patentable Inventions”, shall
apply except the reference to inventive step as a condition of protection. (Sec. 109.1)
 Procedure from Section 43 (Classification and Search) to 49 (Amendment of Application)
does not apply in case applications for registration of utility model. (Sec. 109.2)
 A utility model registration shall expire, without any possibility of renewal, at the end of
the seventh year after the date of the filing of the application. (Sec.109.3)
 In proceedings under Section 61 (Cancellation of Patents) to 64 (Committee of Three),
the utility model registration shall be cancelled on the following grounds:

a) That the claimed invention does not qualify for registration as a utility model and
does not meet the requirements of registrability, in particular having regard to
Subsection 109.1 and Sections 22, 23, 24 and 27;
b) That the description and the claims do not comply with the prescribed
requirements;
c) That any drawing which is necessary for the understanding of the invention has
not been furnished;
d) That the owner of the utility model registration is not the inventor or his
successor in title. (Sec. 109.4)

Distinguish Dominancy test from Holistic test in determining the similarity and likelihood of
confusion.

 The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion or deception. It is applied when the
trademark sought to be registered contains the main, essential and dominant features
of the earlier registered trademark, and confusion or deception is likely to
result. Duplication or imitation is not even required; neither is it necessary that the label
of the applied mark for registration should suggest an effort to imitate. The important
issue is whether the use of the marks involved would likely cause confusion or mistake
in the mind of or deceive the ordinary purchaser, or one who is accustomed to buy, and
therefore to some extent familiar with, the goods in question. Given greater
consideration are the aural and visual impressions created by the marks in the public
mind, giving little weight to factors like prices, quality, sales outlets, and market
segments.
 Holistic Test entails a consideration of the entirety of the marks as applied to the
products, including labels and packaging, in determining confusing similarity. The
scrutinizing eye of the observer must focus not only on the predominant words but also
on the other features appearing in both labels so that a conclusion may be drawn as to
whether one is confusingly similar to the other.
What is Trademark Dilution?

 Trademark dilution is a trademark law concept giving the owner of a famous

trademark standing to forbid others from using that mark in a way that would lessen its
uniqueness. In most cases, trademark dilution involves an unauthorized use of another's
trademark on products that do not compete with, and have little connection with, those
of the trademark owner. For example, a famous trademark used by one company to refer
to hair care products might be diluted if another company began using a similar mark to
refer to breakfast cereals or spark plugs.[1] Dilution is a basis of trademark infringement
that only applies to famous marks. With non-famous marks, the owner of the mark must
show that the allegedly infringing use creates a likelihood of confusion as to the source of
the product or service being identified by the allegedly infringing use. With non-famous
marks, it is highly unlikely a likelihood of confusion will be found if the products or services
are in unrelated markets. However, with famous marks, any use by another person of the
mark has the potential for confusion, since a famous mark is so well known among the
consuming public that people will assume affiliation with the owner of the mark
regardless of the product or service being sold under the infringing use.

What are the two types of confusion in trademark infringement? Explain.

There are two types of confusion in trademark infringement:

1. Confusion of goods in which event the ordinarily prudent purchaser would be induced to
purchase one product in the belief that he was purchasing the other. In which case,
defendants goods are then bought as the plaintiffs, and the poorer quality of the former
reflects adversely on the plaintiffs reputation.
2. Confusion of business: Here though the goods of the parties are different, the defendants
product is such as might reasonably be assumed to originate with the plaintiff, and the
public would then be deceived either into that belief or into the belief that there is some
connection between the plaintiff and defendant which, in fact, does not exist.

What is a Patentable Invention? Explain elements.

 SEC. 21. 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, a process, or an improvement of
any of the foregoing.

Elements of Patentability:
1. Novelty – Is defined under Section 23 in relation to Section 24. Section 23 simply says
that an invention shall not be considered new if it forms part of a prior art.
Section 24 provides two classes of prior art:
 To the FIRST CLASSIFICATION belongs everything that is already available to
the public not only in the country but anywhere in the world. The requirement
 that the thing is already in the public domain must be present before the filing
date or the priority date of the application claiming the invention.
 The SECOND CLASSIFICATION includes those that are actually subject of
application for patent registration. Thus, the whole contents of an application
for patent, utility model, or industrial design registration that are published in
accordance with the law, filed or effective in the Philippines, with a filing or a
priority date that is earlier than the filing or priority date of the application
are considered prior art, subject to certain conditions.

2. Inventive Step – “Section 26. Inventive Step. – 26.1. 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. “
“26.2. In the case of drugs and medicines, there is no inventive step if the invention
results from the mere discovery of a new form or new property of a known substance
which does not result in the enhancement of the known efficacy of that substance,
or the mere discovery of any new property or new use for a known substance, or the
mere use of a known process unless such known process results in a new product that
employs at least one new reactant."
Inventive step thus connotes that the invention should not be obvious not to the
general public but to a “person skilled in the art” for it to be patented.

3. Industrial Applicability – “Section 27. Industrial Applicability. – An invention that can

be produced and used in any industry shall be industrially applicable.”
Verily, an invention will be useless if it will be forever confined in the sphere of
theories and principles. It has to have some practical application for it to be really
useful.

What is TRADEMARK?

 A distinctive mark of authenticity through which the merchandise of a particular producer

or manufacturer may be distinguished from that of others, and its sole function is to
designate the origin of the products which it is attached.
 Any word, name, symbol or device adopted and used by a manufacturer or merchant to
identify his goods and distinguish them from those manufactured and sold by others.

Define COPYRIGHT.

 A legal concept that gives a creator of an original work exclusive rights to it, usually for a
limited period of time. It literally “the right to copy,” but also gives the copyright holder
the right to be credited for the work, to determine who (if anyone) may adapt the work
to other forms, to determine who may perform the work, to benefit financially from the
work, and other related rights.
Right of Priority in Patent Law.

 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 filed as of the date of filing the foreign application;
Provided, that: (a) the local application expressly claims priority; (b) it is filed within 12
months from the date the earliest foreign application was filed; and (c) a certified copy
of the foreign application together with an English translation is filed within six months
from the date of filing in the Philippines. (SEC.31)

Thus, if in case there is an application filed in the Philippines and another filed in
another country, and the Philippine application was filed earlier than the other
application, it is still possible that the foreign application will be granted by virtue of his
Right of Priority as long as all the requisites are complied with.

Prior User in Patent Law

 Any 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.

To protect the patent owner, however, the prior user may only transfer or assign
this right if it is transferred or assigned together with his enterprise or business in which
the use or preparations for use have been made. (Sec. 73.2)

In other words, the prior user cannot assign the right to use the patented product
or process without giving up entirely his enterprise.

What is the extent of a “well-known” mark?

 The exclusive right of a well-known mark defined in Subsection 123.1(e) which is

registered in the Philippines, shall extend to goods and services which are not similar to
those in respect of which the mark is registered, provided that 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 provided further that the interests of the owner
of the registered mark are likely to be damaged by such use. (Sec. 147.2)