Registration Flowcharts

I. Intellectual Property in General

A. Intellectual property Rights B. Differences between copyrights,

trademarks and patent

C. Technology transfer arrangements D. International Conventions and Reciprocity

A. Intellectual Property Rights

Intellectual Property State Policies

1. To protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act.

2. To promote the diffusion of knowledge and information for the promotion of national development and progress and the common good.

3. To streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines. [Sec. 2, RA 8293]

Intellectual Property Rights under the Intellectual Property Code

1. Copyright;

2. Related Rights of copyright;

3. Trademarks and Service Marks;

4. Geographic Indications;

5. Industrial Designs;

6. Patents;

7. Layout-Designs (Topographies) of Integrated Circuits; [Sec. 4, RA 8293]

8. Protection of Undisclosed Information [TRIPS Agreement].

B. Differences between

copyrights, trademarks and patent

Patentable Inventions: refer to any technical solution of a problem in any field of human activity, which is new, involves an inventive step and is industrially applicable. It may be, or refer to, any product, process, or an improvement of any of the foregoing. [Sec. 21, RA 8293] It is vested from the issuance of letters of patent.

Trademark: any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. [Kho v. CA, et al. (2002)] It is vested from registration.

Trade Name: the name or designation identifying or distinguishing an enterprise [Sec. 121.3, RA 8293]

Copyright: right granted by statute to the author or originator of literary, scholarly, scientific, or artistic productions, including computer programs. A copyright gives him the legal right to determine how the work is used and to obtain economic benefits from the work. For example, the owner of a copyright for a book or a piece of software has the exclusive rights to use, copy, distribute, and sell copies of the work, including later editions or versions of the work. If another person improperly uses material covered by a copyright, the copyright owner can obtain legal relief. [Rule 2, Copyright Safeguards and Regulations]

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. [Kho v. CA, et al. (2002)]

It is vested from the moment of creation.

Other forms of Intellectual Property

Geographic Indication

One which identifies a good as originating in the territory of a TRIPS member, or a region or locality in that territory where a given quality, reputation or other characteristic of a good is essentially attributable to its geographical origin [Art. 22, TRIPS Agreement]

Industrial Design

Any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors: Provided, that such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft. [Sec.

112.1, RA 8293]

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Layout Design (Topography) of an Integrated Circuit

Layout Design (Topography): The three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture.

[Sec. 112.3, RA 8293]

Integrated Circuit: a product, in its final form, or an intermediate form, in which the elements, at least one of which is an active element and some or all of the interconnections are integrally formed and/or on a piece of material, and which is intended to perform an electronic function. [Sec. 112.2, RA 8293]

Undisclosed Information Information which:

1. Is a secret in a sense that it is not, as a body or in the precise configuration and assembly of components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;

2. Has a commercial value because it is secret;

and

3. Has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret [Art. 39, TRIPS]

C. Technology Transfer Arrangement

Refers to contracts or agreements involving:

1. the transfer of systematic knowledge for the manufacture of a product

2. the application of a process, or rendering of a service including management contracts;

3. the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market. [Sec. 4.2, RA 8293]

D. International Conventions and Reciprocity

Reciprocity Rule

Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which:

1. is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or 2. extends reciprocal rights to nationals of the

Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to

which any owner of an intellectual property right is otherwise entitled by this Act. [Sec. 3, RA 8293]

Reverse Reciprocity of Foreign Laws

Any condition, restriction, limitation, diminution, requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine national seeking protection of intellectual property rights in that country, shall reciprocally be enforceable upon nationals of said country, within Philippine jurisdiction. [Sec. 231, RA 8293]

Philip Morris v. Fortune Tobacco (2006). True, the Philippines’ adherence to the Paris Convention effectively obligates the country to honor and enforce its provisions as regards the protection of industrial property of foreign nationals in this country. However, any protection accorded has to be made subject to the limitations of Philippine laws. Hence, despite Article 2 of the Paris Convention which substantially provides that (1) nationals of member-countries shall have in this country rights specially provided by the Convention as are consistent with Philippine laws, and enjoy the privileges that Philippine laws now grant or may hereafter grant to its nationals, and (2) while no domicile requirement in the country where protection is claimed shall be required of persons entitled to the benefits of the Union for the enjoyment of any industrial property rights, foreign nationals must still observe and comply with the conditions imposed by Philippine law on its nationals.

Principles under the TRIPS Agreement:

1. National Treatment: It is a principle which states that each member of the WTO must treat the nationals of every other member as favorably as its own with respect to intellectual property, i.e. no discrimination may be made against foreign nationals of members.[Art. 3, TRIPS]

2. Most-favored Nation Treatment: It requires that each member give other members‘

nationals the same treatment as its own, but that each member should not prefer any other member‘s nationals or those of any non0member country, over the nationals of any member.[Art.4,TRIPS]

3. Exhaustion of First Sale Doctrine: The term generally refers to doctrine that extinguish certain exclusive rights of the holder of intellectual property with respect to a particular physical item embodying the intellectual property after the item has first been sold under the holder‘s authority. The TRIPS Agreement explicitly disclaims in Article 6 an intent to impose any particular requirements regarding the issue of the exhaustion of intellectual property rights, thus, members of the WTO are free to implement exhaustion of intellectual

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property rights as they please. [Art.6 subject to Arts. 3 and 4, TRIPS]

II. Patents

A. Patentable Inventions B. Non-patentable Inventions C. Ownership of a Patent D. Cancellation of a Patent

E. Remedy of the True and Actual Inventor F. Rights conferred by a Patent

G. Limitations on Rights of Patentees H. Patent Infringement

I. Licensing

J. Assignment and Transmission of Rights

A. Patentable Inventions

A patentable invention is 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, or process, or an improvement of any of the foregoing. [Sec. 21, RA 8293]

1. Invention Patent

Standards:

a. Novelty - An invention shall not be considered new if it forms part of a prior art. [Sec. 23, RA 8293]

Prior art shall consist of:

i. Everything which has been made available to the public anywhere in the world, before the filing date or the priority date of the application claiming the invention; [Sec. 24.1, RA 8293]

ii. The whole contents of an application for a patent, utility model, or industrial design registration, published in accordance with this Act, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application:

Provided, That the application which has validly claimed the filing date of an earlier application under Section 31 of this Act, shall be prior art with effect as of the filing date of such earlier application: Provided further, That the applicant or the inventor identified in both applications are not one and the same. [Sec. 24.2, RA 8293]

Non-Prejudicial Disclosures: This is an exception to the General Rule on Prior Art under Sec. 24. It provides that the disclosure of the information contained

in the application during the 12 months preceding the filing date or the priority date of the 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 contained (1) in another application filed by the inventor and should not have been disclosed by the office, or (2) 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 which obtained the

information directly or indirectly from the inventor [Sec. 25, RA 8293]

b. Inventive Step - 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. [Sec. 26.1, RA 8293, as amended by RA 9502]

Cheaper Medicines Act: In 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 enhancement of the known efficacy of that substance, or the mere discovery of any new property or new use of 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 reactant. [Sec.

26.2, RA 8293 as amended by RA 9502]

c. Industrial Applicability - An invention that can be produced and used in any industry shall be industrially applicable.

[Sec. 27, RA 8293]

2. Utility Model

It is any technical solution of a problem in any field of human activity which is new and industrially applicable. Unlike an invention patent, a utility model need not be inventive. The law merely requires that it be novel and industrially applicable.

[Sec. 109.1, RA 8293]

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, RA 8293]

Statutory Classes of Utility Models A Utility Model may be, or may relate to:

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a. A useful machine;

b. An implement or tool;

c. A product or composition;

d. A method or process; or

e. An improvement of any of the foregoing.

[Rule 201, Rules and Regulations on Utility Models and Industrial Designs as amended]

Grounds for Cancellation of Utility Models a. That the claimed invention does not qualify

for registration as a utility model and does not meet the requirements of registrability;

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, RA 8293]

3. Industrial Design

An industrial design is any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors: Provided that such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft. [Sec. 112.1, RA 8293 as amended by RA 9150]

4. Lay-out Designs (Topographies) of Integrated Circuits

Integrated Circuit means a product, in its final form, or an intermediate form, in which the elements, at least one of which is an active element and some or all of the interconnections are integrally formed in and/or on a piece of material, and which is intended to perform an electronic function. [Sec. 112.2, RA 8293 as amended by RA 9150]

Layout-Design is synonymous with 'Topography' and means the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture. [Sec.

112.3, RA 8293 as amended by RA 9150]

B. Non-patentable Inventions

The following shall be excluded from patent protection:

1. Discoveries, scientific theories and mathematical methods, and in the case of drugs and medicines, 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.

Salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy; [Sec. 22.1, RA 8293 as amended by RA 9502]

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

22.2, RA 8293]

3. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. This provision shall not apply to products and composition for use in any of these methods; [Sec. 22.3, RA 8293]

4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes; [Sec. 22.4, RA 8293]

5. Aesthetic creations; [Sec. 22.5, RA 8293]

6. Anything which is contrary to public order or morality. [Sec. 22.6, RA 8293]

Cheaper Medicines Act: In addition to discoveries, scientific theories and mathematical methods, the IP Code now includes, in case of drugs and medicines:

1. 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

2. the mere discovery of any new property or new use of a known substance

3. the mere use of a known process unless such known process results in a new product that employs at least one reactant [Sec.

26.2, RA 8293 as amended by RA 9502]

C. Ownership of a Patent

1. Right to a Patent

General Rule: The right to 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. [Sec.28, RA 8293]

Exception: Inventions created pursuant to a commission (Work for Hire Doctrine)

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i. The employer has the right to the patent if the invention is the result of the performance of the employee‘s regularly assigned duties [Sec. 30.2, RA 8293]

ii. In case of inventions created pursuant to a commission, the person who commissions the work shall own the patent [Sec. 30.1, RA 8293]

2. First-to-file Rule

If two (2) or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest priority date. [Sec. 29, RA 8293]

3. Inventions created pursuant to a Commission

Commission: Person who commissions the work shall own the patent, unless otherwise provided in the contract [Sec. 30.1, RA 8293]

Employment Contract: Patent belongs to the employee if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer. [Sec.

30.2(a), RA 8293]

Patent belongs to the employer if the invention is the result of the performance of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary. [Sec. 30.2(b), RA 8293]

4. Right of priority

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: Provided, That: (a) the local application expressly claims priority; (b) it is filed within twelve (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 (6) months from the date of filing in the Philippines. [Sec. 31, RA 8293]

D. Cancellation of a Patent

1. Grounds for Cancellation of Patent

Any interested person may, upon payment of the required fee, petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds:

a. That what is claimed as the invention is not new or patentable;

b. That the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art; or

c. That the patent is contrary to public order or morality. [Sec. 61.1, RA 8293]

Where the grounds for cancellation relate to some of the claims or parts of the claim, cancellation may be effected to such extent only. [Sec. 61.2, RA 8293]

2.

Requirement of the Petition

The petition for cancellation shall be in writing, verified by the petitioner or by any person in his behalf who knows the facts, specify the grounds upon which it is based, include a statement of the facts to be relied upon, and filed with the Office.

Copies of printed publications or of patents of other countries, and other supporting documents mentioned in the petition shall be attached thereto, together with the translation thereof in English, if not in English language. [Sec. 62, RA 8293]

3.

Notice of Hearing

Upon filing of a petition for cancellation, the Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the patentee and all persons having grants or licenses, or any other right, title or interest in and to the patent and the invention covered thereby, as appears of record in the Office, and of notice of the date of hearing thereon on such persons and the petitioner. Notice of the filing of the petition shall be published in the IPO Gazette. [Sec. 63, RA 8293]

4.

Effect of Cancellation of Patent or Claim.

The rights conferred by the patent or any specified claim or claims cancelled shall terminate. Notice of the cancellation shall be published in the IPO

The rights conferred by the patent or any specified claim or claims cancelled shall terminate. Notice of the cancellation shall be published in the IPO

In document MERCANTILE LAW (Page 159-193)