De la Salle University College of Law

AY 2018-2019

INTELLECTUAL PROPERTY LAW G02

Atty. Alex Ferdinand S. Fider, LLB., LLM

Introduction

1. What is Intellectual Property?

“... the finer manifestations of human achievement".
[Prof. William W. Cornish, Intellectual Property Law: Patents, Copyright, Trademarks and
Allied Rights (2007),]

2. What is Intellectual Property Law?

That branch of law which enables people to earn recognition or financial benefit from what
they invent or create (examples: patents, trademarks and copyrights).
By striking the right balance between the interests of innovators and the wider public
interest, the IP system aims to foster an environment in which creativity and innovation can
flourish.
[World Intellectual Property Organization (WIPO)]

3. Intellectual Property Creations: A demonstration of Man’s Original Solitude?

Man cannot be considered on equal footing with any other species of living being on earth.
Man alone can cultivate and transform it to his own needs with his “self-knowledge, self-
consciousness and self-determination.” [St. John Paul II Theology of the Body (31 October
1979)]

4. Intellectual Property Code-

SECTION 2. Declaration of State Policy
SECTION 4.1 Intellectual Property Rights

5. International Obligations (first instruments to emerge)-

a. Paris Convention for the Protection of Industrial Property (revised 1965 & 1980) – the
protection of industrial property has as its objects patents, utility models, industrial designs,
trademarks, service marks, trade names, and repression of unfair competition
b. Berne Convention for the Protection of Literary and Artistic Works (revised 1948) – the
expression “literary and artistic works” shall include every production in the literary,
scientific and artistic domain, whatever may be the mode or form of its expression, such as
books, pamphlets and other writings: lectures, addresses, sermons and other words of the
same nature; dramatic or musical works; etc.

6. Other treaty obligations –

a. Rome Convention (International Convention for the Protection of Performers, Producers
of Phonograms and Broadcasting Organizations)
b. Patent Cooperation Treaty
c. Madrid Protocol (Trademarks)

IP Law |Atty. Fider

 IP Law | Atty. Fider

Class 1

The Law on Copyright –

“Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory
grant, the rights are limited to what the statute confers. (Pearl & Dean v. Shoemart, 409
SCRA 231 [2003])

1. History

a. Berne Convention
Q: Identify counterpart provisions in the IP Code
Minimum standards Copyright arise from the moment of creation and no need for
registration (Art 5(2)); minimum term of copyright is author’s lifetime plus 50 years. (Art 7);
The ‘the protection of the rights of authors in their literary and artistic works’ (Art 1);
Moral Rights (Art 6bis)

b. Rome Convention on the Protection of Performers, Producers of Phonograms and

Broadcasting Organizations (1961)
Q: Distinguish subject matter from Berne Convention

c. TRIPS Agreement
Comply with the provisions of the Berne Convention (protect computer programs and
databases [Art 10], etc.

Q: Explain “copyright protects expression rather than ideas”

The art described in the book by illustrations of lines and figures which are reproduced in
practice in the application of the art makes no difference. Those illustrations are the mere
language employed by the author to convey his ideas more clearly. The art (or idea, as used
in the case) is not protected by copyright. (Baker v. Selden, 101 U.S. 99 (1879)

2. Copyright, Economic Right and Moral Right

Q: Explain and cite examples:

Copyright – right to control dissemination/ copy
Economic right – right to exploit and benefit from the work
Moral right – right to paternity and integrity

3. Works protected by Copyright

a. Original literary and artistic works (172 IP Code):

Literary –
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;

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(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not
reduced in writing or other material form;
(d) Letters;

Q: Define “author of the work”

(Habana v. Robles, 310 SCRA 511)

Musical-
(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in
dumb shows;
(f) Musical compositions, with or without words;

Q: ‘4 Minutes 33 Seconds’, by composer John Cage:

(https://www.youtube.com/watch?v=JTEFKFiXSx4)
An orchestra on stage does not play any of its instruments. The orchestra members silently
sit on the platform for four and a half minutes. Is this a musical work?

Artistic-
(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other
works of art; models or designs for works of art;
(h) Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design and other works of applied art;
(i) Illustrations, maps, plans, sketches, charts and three dimensional works relative to
geography, topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;

No copyright protection for works of applied art or industrial design which have aesthetic or
artistic features that cannot be identified separately from the utilitarian aspects of the
article. Functional components of useful articles, no matter how artistically designed, have
generally been denied copyright protection unless they are separable from the useful
article. (Ching v. Salinas, Sr. G.R. No. 161295, 462 SCRA 241)

Photographs, Films –
(k) Photographic works including works produced by a process analogous to photography;
lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a process
analogous to cinematography or any process for making audiovisual recordings;
(m) Pictorial illustrations and advertisements;

Others-
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works

b. Derivative works (including typographical arrangement of published editions of

literary, dramatic, or musical works) (Section 173 IP Code)

Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991),

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b.1 Protected by Copyright

b.2 List of Derivative Works protected by copyright
b.3 Typographical arrangement

4. Condition

a. Work (an Expression)

Copyright protects expressions rather than ideas and information (172 & 173 IP Code)

b. Original
Created by the author through his own skill, labor and judgment, without directly copying or
evasively imitating the work of another. (Sambar v Levis, 378 SCRA 364 [2002])

5. Unprotected subject matter (175 IP Code)

6. Government and copyright (176 IP Code)
7. Ownership of Copyright (178 IP Code): Author of the work

Q: What is collective work? Distinguish from joint authorship.

8. Economic Right (177 IP Code)

Primary Exclusive Economic Rights (Section 177)-

a. Reproduction (See 171.9)

b. Dramatization
c. Public Distribution
d. Rental (See 171.8)
e. Public Display
f. Public Performance (See 171.6)
g. Other communications to the public (See 171.3)

See Class 2

9. Moral Right (193-199 IP Code)

Paternity right -
193.1. 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;
193.4. 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.

Right to Integrity (of the work) -

193.2. To make any alterations of his work prior to, or to withhold it from publication;
193.3. 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;

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Q: Can Moral Right be waived?

Q; Term of Moral Rights

10. Related Rights: sound recordings, broadcasts –

“CHAPTER XII RIGHTS OF PERFORMERS, PRODUCERS OF SOUNDS RECORDINGS AND

BROADCASTING ORGANIZATIONS”

Q: Define: "Performers"; Rights under Chapter XII Law on Copyright, IP Code

Q: Define: "Producer of a sound recording" and "Sound recording"; Rights under Chapter XII
Law on Copyright, IP Code
Q: Define: "Broadcasting organization" and "Broadcasting" ; Rights under Chapter XII Law on
Copyright, IP Code

11. Data Privacy Act RA 10173

Q: Distinguish the protection of “Compilation of Data” in Section 173.1b IP Code and the
protection under RA 10173 with respect to the “processing of all types of personal
information.” (Section 4 Data Privacy Act)

Class 2

1. Economic Rights
Primary Exclusive Economic Rights (Section 177)

a. Reproduction (See 171.9)

b. Dramatization
c. Public Distribution
d. Rental (See 171.8)
e. Public Display
f. Public Performance (See 171.6)
g. Other communications to the public (See 171.3)

Similarity caused by copying –

Case: When is there a substantial reproduction of a book? It does not necessarily require
that the entire copyrighted work, or even a large portion of it, be copied. If so much is taken
that the value of the original work is substantially diminished, there is an infringement of
copyright and to an injurious extent, the work is appropriated (Habana v. Robles, 310 SCRA
511)

2. Commercialization of Copyright (Assignment, Licensing)-

Assignee/ Licensee Rights (Section 180)
Material Object (Section 181)
Recordation (Section 182)

3. Collecting Societies (Section 183)

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4. Limitations on Copyright-

a. Specific Limitations (Section 184)

b. Fair Use (Section 185)

- “criticism, news reporting, teaching and research”

- Decompilation
- factors – purpose, nature of work, portion used and effect upon the market

5. General Defense vs. Infringement -

Berne Convention (Articles 9[2] and 10)
TRIPS (Article 3)
Three Step Test? (Section 185 IP Code)

6. Special Rules-
Work of Architecture (Section 186 IP Code)
Published Work (Section 187 IP Code)
Libraries (Section 188 IP Code)
Computer Program/ Decompilation (Sections 189/ 185 IP Code)
Importation and Exportation of Infringing Materials

Cases:
ABS-CBN v. Philippine Multi-Media System, 576 SCRA 262
Filipino Society of Composers v. Benjamin Tan, 148 SCRA 461 (1987)
Philippine Education co. v. Sotto, 52 Phil. 580
NBI-Microsoft Corp. v. Judy Hwang, 460 SCRA 428

Class 3

1. Infringement of Copyright - Section 216 IP Code

Q: How is a copyrighted work infringed?

Primary Infringement

Microsoft Corporation vs Maxicorp, Inc., GR 140946 (13 September 2004)

Secondary Infringement
Filipino Society of Composers v. Benjamin Tan, 148 SCRA 461 (1987)

2. Affidavit Evidence - Section 218 IP Code

Q: Discuss Affidavit Evidence in the light of the following cases –

20th Century Fox v. CA, 164 SCRA 655 (1988)

Columbia Pictures, Inc. v. Court of Appeals, 237 SCRA 144 (1996)

3. Damages - Section 226 IP Code

Q: What is an Anton Piller Order?

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Read Anton Piller v. Manufacturing Processes CA 8 Dec 1975(UK Case)

4. Civil search: Rule on Search and Seizure in Civil Actions for Infringement of IPR (A.M.
No. 02-1-06-SC)
Coverage (Section 1 (A.M. No. 02-1-06-SC)
Grounds for the issuance (Section 6 A.M. No. 02-1-06-SC)
Commissioner – duties, functions and fees (Section 12 A.M. No. 02-1-06-SC)
Failure to file Complaint (Section 20 A.M. No. 02-1-06-SC)
Claims for Damages (Section 21 A.M. No. 02-1-06-SC)

5. Criminal Penalties- Section 217 IP Code

6. Electronic Commerce Act -Objective (Section 3 ECA); Sphere of Application (Section 4
ECA); Penalties (Section 33b ECA)

Cases
NBI-Microsoft Corp. v. Judy Hwang, 460 SCRA 428
People v. Ramos, 83 SCRA 1 (1978)
Serrano Laktaw v. Paglinawan, 44 Phil. 855
Habana v. Robles, 310 SCRA 511 (1999)
Joaquin v. Drilon, 302 SCRA 225 (1999)
Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)

US Cases:
MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005)
Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984)

Read the ruling only -

Viacom International, Inc. v. YouTube, Inc., No. 07 Civ. 2103,

Class 4

The Law on Trademarks-

To conform the existing Philippine intellectual property regime with the TRIPS Agreement,
the new IP Code was enacted in 1998. Certain changes were introduced in the trademark
law system to give substance to the country’s accession to the TRIPS Agreement

1. Definition (Section 121)

Mark – visible sign (Section 121.1)
Collective Mark – common characteristics (Section 121.2)

2. How marks are acquired? (Section 122)

3. Functions
a. Indicate Origin
b. Guarantee Quality
c. Advertising

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d. Investment

4. Registrability (Section 123)

Examination of the trademark application based on “absolute and relative grounds”:
Absolute: Does it meet the definition of a mark? Is it distinctive?
Relative: Is it identical or confusingly similar to another mark?

6. Well-Known Mark-

Sections 123.1 (e) and (f); Sec. 147.2;

Rule 102 Rules and Regulations on Trademarks, Service Marks, Trade Names
Fredco Manufacturing Corp. v. Pres. & Fellows of Harvard College, 650 SCRA 232 (2011)
246 Corporation v. Daway, 416 SCRA 315 (2003)
Ecole De Cuisine Manille v. Renaud Ceointreau GR No. 185830, 5 July 2013

Cases:

Mirpuri v. CA GR No. 114508, 318 SCRA 516 (1999): History of trademark protection/
function

Dermaline v. Myra, re Dermalin, were the competing marks used in closely related goods?
Birkenstock v. Phil. Shoe Expo Marketing Corp, Why were the registrations of petitioner
Birkenstock approved despite the earlier registration issued to respondent Phil Shoe Expo
for the same identical mark?

Ecole De Cuisine v. Renaud Cointreau: Is Le Cordon Bleu a well-known mark in the

Philippines?

Shang Oproperties v. St. Francis, re “St. Francis”, is the mark a geographic name hence not
capable of registration? What is the criteria for determining whether a mark describes
“geographic origin” of the goods/ services; hence not registrable?

Society Des Produits Nestle v. CA, What trademark function was illustrated in the case? Did
respondent infringe a valid mark? re Master, if neither a generic nor descriptive, what kind
of mark is it?
246 Corporation v. Daway re Roles and Rolex Music Lounge: Determining infringement is a
question of fact; Is there likelihood of confusion or damage to trademark owner? Note
criteria under 123.1(f)
Lyceum v. CA, re Lyceum, What trademark law doctrine was cited here?
La Chemise Lacoste v. Fernandez, 129 SCRA 373: What is the Supplemental Registration
under the old law? Filing of case by foreign nationals. Is the mark a well–known mark?

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Fredco Manufacturing Corp. v. Pres. & Fellows of Harvard College, 650 SCRA 232 (2011); Is
Harvard a famous mark?

Dermaline, Inc. v. Myra Pharmaceuticals, Inc. 628 SCRA 356 (2010)- What trademark law
principle was recognized here?

Class 5

1. Introduction to the System of Registration -

View: http://www.ipophil.gov.ph/services/trademark/application-process-flow-chart

2. Procedure -
Sections 127-132 IPC
Filing Date Sec.127 IPC
Priority Date Sec. 131.2 IPC
Certificate of Registration Sections 138 and 147; Sections 145 and 146 IPC
Nice Classification (reference)

3. Commercialization of Trade Marks Sections 149 and 150 IPC

4. Basis of Registration

5. Dilution

6. Opposition Sec. 134 IPC

7. Cancellation/ Revocation Sec. 151 IPC

Q: Distinguish Opposition from Cancellation cases.

8. Maintenance Sections 145 and 146 IPC; Declaration of Actual Use Sec. 124.2 IPC

9. Trade Names or Business Names Sec. 165 IPC

Dermaline, Inc. v. Myra Pharmaceuticals, Inc. 628 SCRA 356 (2010)

Class 6

Trademark Infringement:

1. Etepha v. Director of Patents, 16 SCRA 495

What test was used in the case? Identify a distinctive consumer practice when purchasing
medicines.

2. And Tibay v. Teodoro, 84 Phil 50

Why was it not necessary for the Court to discuss the concept of secondary meaning?

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3. Emerald Garment Manufacturing v. CA, 251 SCRA 600

Explain how the Court resolved the case in “two ways.”

4. Asia Brewery v. CA, 224 SCRA 437 (1993)

What is trade dress?

5. McDonald’s Corp. v. L.C. Big Mak, 437 SCRA 10 (2004)

Distinguish Generic, Descriptive and Fanciful/ Arbitrary marks.
Is there confusion of business in the case? Explain.
Explain now Respondents came to choose their mark.
Is it possible to have trademark infringement without unfair competition? Cite example.

6. McDonald’s Corp. v. Macjoy Fastfood Corp., 514 SCRA 95 (2007)

Explain now Respondents came to choose their mark. How did the Court react to this?

7. Prosource International, Inc. v. Horphag Research, 605 SCRA 523 (2009)

What test was used in the case?

8. Skechers USA v. Pacific Industrial Trading, GR No. 164321, 23 March 2011

What is the dominant feature of the mark? Is it registrable?

9. Del Monte Corporation v. CA, 181 SCRA 410

What test was used in the case? What is the finding of the Court: infringement or unfair
competition?

10. Fruit of the Loom v. CA, 133 SCRA 405 (1984)

What is the dominant feature of the competing marks? What test was used in the case?

11. Berris Agricultural Co., Inc. v. Norvy Abyadang, 633 SCRA 196 (2010)
How do you overcome prima facie presumptions brought about by the registration of a
mark? What test was used in the case?

12. Mighty Corporation v. E.J. Gallo Winery, 434 SCRA 473 (2007)
Explain the reasoning of the Court in concluding that Respondents never had exclusive right
to use the mark to the prejudice of petitioner.

13. Societe Des Produits Nestle v. Puregold GR # 217194 (6 Sept. 2017): What test was used
in the case?

14. Coffee Planters v. san Francisco Coffee GR# 169504 (2010) – read with caution

Unfair Competition Sec. 168 IPC

Distinguish Trademark Infringement from Unfair Competition (Del Monte v. CA, GR-L-78325
[1990])

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Class 7

1. Unfair Competition

a. Definition

Del Monte v. CA, GR-L-78325 [1990])

Alhambra Cigar v. Mojica, GR 8937, 21 March 1914
Levi Strauss v. Tony Lim, GR. 162311, 4 December 2008

Unfair Competition and the act of hoarding bottle containers Coca-Cola Bottlers, Phils. V.
Gomez, GR 154491 [14 November 2008])

b. Elements

McDonald’s Corp. v. L.C. Big Mak, 437 SCRA 10 (2004)

NBI-Microsoft Corporation vs. Judy Hwang, G.R. No. 147043, 460 SCRA 428 (2005)
In and Out Burger v. Sehwani, GR 179127, 575 SCRA 535 (2008)

c. Test

Why was there no finding of unfair competition on the part of Kunnan Enterprises in
Superior Enterprises v. Kunnan Enterprises, GR No. 169974 , 618 SCRA 531 (2010)

Alhambra cigar v. Mojica, GR 8937, 21 March 1914

d. Relief

Universal Rubber Products, Inc. v. CA GR No. L-30266, 130 SCRA 104 (1984)
McDonald’s Corp. v. L.C. Big Mak, 437 SCRA 10 (2004)

e. False Designation of Origin Sec. 169 IPC

Chester Uyco, et al. v. Vicente Lo, GR No. 202423, 18 January 2013

Willaware Products Corp. v. Jusicris Manufacturing Corp. GR No. 195549, 3 Sept. 2014
Forietrans Manufacturing Corp., et al. Vs. Devidoff ET. CIE SA & Japan Tobaccco, Inc, G.R.
No. 197482; March 6, 2017

2. Trade Names or Business Names Sec. 165 IPC

Dermaline, Inc. v. Myra Pharmaceuticals, Inc. 628 SCRA 356 (2010)
Roma Drug v. RTC 585 SCRA 140 (2009)

3. Bureau of Customs Recordal Sec. 166 IPC

Sec. 159.4, see IRR Universally Accessible and Cheaper and Quality Medicines Act of 2008
(RA 9502)

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Class 8

1. Trademark Application Form

2. Protocol Relating to the Madrid Agreement Concerning the International Registration of

Marks
http://www.ipophil.gov.ph/images/Trademark/madridprotocol/Madrid_Protocol.pdf

Q. Is there no conflict between the Madrid Protocol and the IP Code?

Intellectual Property Association of the Philippines v. Hon. Paquito Ochoa (GR 204605
[2016])

International Application and International Registration -Read Articles 2, 3, 3bis, and 4 of the
Madrid Protocol
Role of an Attorney – Section 125 IP Code
Role of the Intellectual Property Office of the Philippines
a. Office of Origin (for outbound registrations)
b. Designated Contracting Party (Inbound registrations)
Form MM2: See http://www.wipo.int/madrid/en/forms/

Class 9

The Law on Patent -

1. History of the Patent system

2. Justification of the Patent System
3. International Agreements

4. Patentable Inventions: Section 21 to 27 IP Code

(Invention; Technical character; Solution; Product; Process)

Pearl & Dean v. Shoemart 409 SCRA 231 (2003)

Ching v. Salinas GR 161295 (2005)

Classes of patentable invention:

a. A product, such as a machine, a device, an article of manufacture, a composition of
matter, a microorganism;
b. A process, such as a method of use, a method of manufacturing, a non-biological process,
a microbiological process;
c. Computer-related inventions; and
d. An improvement of any of the foregoing.

Rule 201 Revised IRR For Patents UM and ID

http://www.ipophil.gov.ph/images/Patents/IRRs/THE_REVISED_IRR_FOR_PATENTS_UTILITY
_MODELS_AND_INDUSTRIAL_DESIGNS_OFFICIAL_COPY.pdf

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Paragraph 1.1 Chapter IV-Patentability, Manual for Substantive Examination Procedure

Paragraph 2.1, Chapter IV-Patentability, Manual for Substantive Examination Procedure
Paragraph 1, Chapter III-Claims, Manual for Substantive Examination Procedure
http://www.ipophil.gov.ph/images/IPResources/ManualSubstantiveExam.pdf

5. Non-Patentable Inventions - Section 22 IP Code; Paragraphs 2.3, 2.4 and 3, Chapter IV-
Patentability, Manual for Substantive Examination Procedure

a. Discoveries, scientific theories and mathematical methods

b. In case of drugs and medicines, known derivatives of a known substance unless they
differ significantly in properties with regard to efficacy, etc.
c. Schemes rules and methods, for performing mental acts, playing games or doing business,
and programs for computers
d. Methods for treatment of the human or animal body
e. Plant varieties or animal breeds, essentially biological processes for plant or animal
production; does not apply to micro-organisms and non-biological or microbiological
processes
f. Aesthetic creations; and
g. Contrary to public order or morality

6. Patentability

a. Novelty
Section 24 IP Code
Rule 204. Prior Art
Paragraph 5.1 Chapter IV-Patentability, Manual for Substantive Examination Procedure
Manzano v. Court of Appeals 278 SCRA 688, 698
Vargas v. FM Yaptico, 40 Phil. 784 (1933)

b. Inventive Step
Sections 26.1 and 26.2 IP Code
Rule 206. Inventive Step
Article 27(1) TRIPS
Paragraph 9.4 Chapter IV-Patentability, Manual for Substantive Examination Procedure
Aguas v. De Leon, 111 SCRA 238 (1982)
Graham v. John Deere Co. of Kansas City, 383 US 1 (1966) – case summary

c. Industrial Applicability
Section 27 IP Code
Rule 208. Industrial Applicability
Paragraphs 4.1-4.5 Chapter IV-Patentability, Manual for Substantive Examination Procedure

7. Specific issues/ Additional cases:

a. Graham Factors - Graham v. John Deere Co. of Kansas City, 383 US 1 (1966)

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b. Law of nature/ Biological activity:

Discuss whether or not the micro-organism in this case is (an article of) manufacture. -
Diamond v. Chakrabarty 4476 US 303 309 (1980)

c. Treatment of Diseases:
Discuss whether in adding the words “apply it” to a known law of nature can make the
invention patentable - Mayo Collaborative Services v. Prometheus Laboratories Inc. 132 S.
Ct. 1289 (2012)

d. Abstract Ideas and Theories:

Is the process of using mathematical formula in this case a patentable subject matter?
Explain - Diamond v. Diehr 450 US 175 192 (1981)

e. Method of Doing Business:

Discuss whether the concept of hedging risk and the application of that concept to energy
markets are patentable processes. - Bilski v. Kappos 561 US 593 (2010)

7. Grant of a Patent

Applicant - Sections 28 IPC

Specification - Sections 32 to 39, IPC
Priority Date - Sections 31 IPC
Publication (before grant) - Sec 44 IPC
Rights conferred after publication -Sec. 46 IPC
Observation by third parties - Sec. 47 IPC
Substantive Examination - Sec. 48 IPC
Amendment of specification - Sec. 49 IPC
Publication after grant - Sec. 52 IPC
Term - Sec. 54 IPC
Assignment and transmission of rights – Secs. 104 and 107

What are the rules with respect to Inventions created pursuant to a Commission and
Inventions created in course of an employment contract? Sec. 30

Application Process Flow Chart: http://www.ipophil.gov.ph/services/patents/patent-

application-flow-chart

8. Patent after grant - Sections 55 and 71 IPC; Proprietary Rights

9. Cancellation of patent -Sec. 61 IPC

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Class 10

A. Questions:

1. What are the exclusive rights conferred by a patent? Sec. 71

2. What acts constitute infringement of a patent? Sec 76

3. Who may bring an action to recover damages? Sec 76.2

4. May a foreign national bring an action for infringement of patent, even if not licensed to
do business in the Philippines? Secs. 3 and 77

5. What is the rule if damages are inadequate or cannot be readily ascertained? Secs. 76.3
76.4

6. How do Courts dispose infringing goods? Sec. 76.5

7. What is a contributory infringer? Sec. 76.6

8. What is the significance of a notice that a letters patent has been issued? Sec. 78

9. Can you file a criminal action for infringement? Sec. 84

10. What is the prescriptive period in an action for patent infringement? Sec. 79

11. What are the defenses in an action for Infringement?

B. Infringement - Sec. 76 IPC

a. Literal Infringement –
Godines v. The Honorable Court of Appeals, G.R. No. 97343, 13 September 1993)

b. Doctrine of Equivalents –
Carlos Gsell v. Valeriano Veloso Yap-Jue, G.R. No. 4720, January 19, 1909
Godines v. The Honorable Court of Appeals, G.R. No. 97343, 13 September 1993
Smithkline Beckman Corporation vs. The Honorable Court of Appeals, G.R. No. 126627, 14
August 2003

C. Limitations on Patent Rights –

Sec. 72 IPC; Sec. 93, RA 9502 Chapter III, IRR Cheaper Medicines Act
Philippine Pharmawealth v. Pfizer 635 SCRA 140 (2010)
Roma Drug v. RTC 585 SCRA 140 (2009)

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Class 11

1. Technology Transfer Arrangement – Section 4.2 IPC

2. Voluntary Licensing - Sections 85, 91 and 92 IPC

a. Prohibited Clauses - Sec. 87 IPC
b. Mandatory Provisions - Sec. 88 IPC

Q: Is an exclusive licensing arrangement a Prohibited Act under the Philippine Fair

Competition Act?
Sections 2 and 3 and Chapter III, The Philippine Competition Act (RA 10667)

3. Compulsory Licensing

Q: Whether incidental matters such as issuance of an injunction should be brought before

the IPO Director General or the Court of Appeals –
Philippine Pharmawealth v. Pfizer 635 SCRA 140 (2010)

Q: Parallel Importation involves genuine goods –

Roma Drug v. RTC 585 SCRA 140 (2009)

Q: What is the ground for filing the petition for Compulsory License in this case? Compare
with the same ground as worded in the current law -
Parke Davis & Co. v. Doctor’s Pharmaceuticals, Inc. et, al., (GR No. L-22221, 31 August 1965)

Q: Whether Smith Kline was deprived of its property right with the grant of the Compulsory
License-
Smith Kline & French Lab Ltd. vs. Court of Appeals, et. al., (GR No. 121867, 24 July 1997)

Q: Whether the royalty rate under the Compulsory License is unreasonable-

Smith Kline & French Lab Ltd. vs. Court of Appeals, et. al.,(G.R. No. 121267, 23 October
2001)

4. Assignment and transmission of Rights Secs. 103-107

III. Utility Model - Sections 108 to 109 IPC

See: http://ipophil.gov.ph/services/utility-model/application-process-flow-chart
Jessie G. Ching v. William M. Salinas GR 161295 29 June 2005

IV. Industrial designs - Sections 112, 118 and 120 IPC

See: http://ipophil.gov.ph/services/design/application-process-flow-chart

Class 12

General Reference: IMPLEMENTING RULES AND REGULATIONS AND JOINT

ADMINISTRATIVE ORDERS (http://www.ipophil.gov.ph/laws-issuances-treaties/2016-06-10-
02-39-06)

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I. Adjudication and Alternative Dispute Resolution

Inter-Partes Cases (IPC)

See: Regulations on Inter Partes Proceeding Effective October 05, 1998, amended.

1. Definition: Bureau, Court, Director, Director General, "Hearing Officer" or "Adjudication

Officer Rule 1 Sec 1
2. What are the Inter partes cases? Rule 2 Sec 1
3. Who has original jurisdiction over Inter partes cases? Rule 2 Sec 3
4. Enumerate the prohibited pleadings. Rule 2 Sec 10
5. Grounds for the cancellation of patents, UM and ID. Rule 3 Sec 1 Rule 4 Sec 1 Rule 5 Sec
1
6. What rules govern in Petition for Compulsory License? Rule 6 Sec 1
7. What is an opposition to the registration of Trademark? Rule 7 Sec 1 and 2
8. When do you file a petition for the cancellation of trademark? Rule 8 Sec 2

In-N-Out Burger v. Sehwani, [GR No. 179127 (2008)]

II. Enforcement

A. Intellectual Property Violations (IPV) Cases

See: Rules & Regulations on Administrative Complaints for Violation of Laws Involving
Intellectual Property Rights, as amended

Section 2. Interpretation. — liberally construed

Birkenstock v. Philippine Shoe Expo (2013)

Original Jurisdiction. - Bureau shall have original jurisdiction in administrative actions for
violations of laws involving intellectual property rights where the total damages claimed are
not less than two hundred thousand pesos (P 200,000.00);

What is the Doctrine of Primary Jurisdiction?

Philippine Phramawealth v. Pfizer (2010)

What is a prejudicial question?

Samson v. Daway, GR 160054-55 21 July 2004

Section 3. Venue of Hearings. - IPO

RULE 4 PRELIMINARY ATTACHMENT

RULE 5 PRELIMINARY INJUNCTION

Rule 5 Section 4. – when may a Temporary Restraining Order (TRO) be granted?

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 IP Law | Atty. Fider

RULE 6 CONTEMPT
Section 1. Direct Contempt Punished Summarily - fine and/ or imprisonment
Section 2. Indirect Contempt to be Punished After Charge and Hearing. —

RULE 8 DEPOSITIONS AND DISCOVERIES

RULE 9 HEARING - successive and continuous daily hearing
RULE 10 EVIDENCE — Substantial evidence
RULE 12 ADMINISTRATIVE PENALTIES AND SANCTIONS - What are the penalties and
sanctions?

B. Visitorial Power of the IPO

See: Rules of Procedure on Intellectual Property Rights (IPR) Enforcement"

(OFFICE ORDER NO. _ Series of 20 13_SUBJECT: RULES AND REGULATIONS IN THE EXERCISE
OF ENFORCEMENT FUNCTIONS AND VISITORIAL POWER OF THE INTELLECTUAL PROPERTY
OFFICE , AND CREATING THEREBY AN INTELLECTUAL PROPERTY RIGHTS (IPR) ENFORCEMENT
OFFICE)

Define Administrative Action (Sec 4 Definition of Terms.)

C. SC Rules of Procedure for IPR cases

See: Rules of Procedure for Intellectual Property Rights Cases.‖(A.M. No. 10-3-10-SC.)

Rule 1 SECTION 1. Scope. – Rules 2 to 9 shall apply to all civil actions for violations of
intellectual property rights
CIVIL PROCEDURE: What are the Prohibited pleadings? SEC. 4.
CRIMINAL PROCEDURE: What are the Prohibited motions? Rule 11 Sect 5

Rule 18 EVIDENCE IN PATENT CASES

Burden of Proof? Rule 17 Sec 1
Request for Technical advice. Rule 17 Sec 4; compare with Assessor in Patent Infringement
Cases Section 83 IP Code

Rule 18 EVIDENCE IN TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION CASES

Rule 19 EVIDENCE IN COPYRIGHT CASES

SECTION 1. When copyright presumed to subsist. –
What is the affidavit evidence under Section 218 of the Intellectual Property Code?

Columbia Pictures v. CA 110318 (1996)

20th Century v. CA 76649-51 (1988)

SEC. 2. Effect of registration and deposit. – shall not carry with it the presumption of
ownership of the copyright by the registrant or depositor, nor shall it be considered a
condition sine qua non to a claim of copyright infringement

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 IP Law | Atty. Fider

D. Civil Search
See: Rule on Search & Seizure in Civil Actions for Infringement of IP Rights

SECTION 1. Coverage. - This Rule shall govern the provisional seizure and impounding of
documents and articles in pending and intended civil actions for the purpose of preventing
infringement and preserving relevant evidence in regard to alleged infringement under
Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines,
Article 50 of the Agreement on Trade Related Aspects of Intellectual Property Rights,
otherwise known as TRIPS and other related laws and international conve

SECTION 2. The writ of search and seizure

What is a Commissioner? Function? SECTION 12

Class 13

New Developments in Intellectual Property Law

A. Copyright law: Issues in the Digital Age

First sale doctrine of published works

Uploading and other postings: Effect on exclusive right
Revisit the Grokster case
Fashion protection
Orphan works
3D printing

B. Trademark Law: Domain Name and Other Issues

a. A domain name may also function as a trademark, specifically the designation of origin
and a symbol of goodwill. (see Rule 601, IRR on Trademarks, etc.)
Definitions:
Domain name
Uniform Domain Name Dispute Resolution Policy (UDRP)
Cybersquatting - Q: Even if registration is done in good faith, will doctrine on normal
expansion of business apply?
b. Other Issues:
i. Constitutional Issue: Right to Free Speech/ Expression
Hyperlinks and Deep linking
ii. Clandestine Use of Marks

C. Patent Law

Patent Trolls
Biotechnology Patents
Other cutting-edge issues in patent law

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