PATENTS
effective in the Philippines, with a filing or priority date
What is a patent?
A statutory grant which confers to an inventor or his legal
successor, in return for the disclosure of the invention to
the public, the right for a limited period of time to exclude
others from making, using, selling or importing the
invention within the territory of the country that grants the
patent.
Three-fold purpose of Patent?
a) To foster and reward invention;
b) Promotes disclosures of invention and permit
public to use the same upon expiration;
c) Stringent requirements for patent protection to
ensure in the public domain remain there for free
use of the public.
PATENTABLE INVENTIONS
What are the 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. It may be, or may relate to, a
product, or process, or an improvement of any of the
foregoing. (Sec. 21)
What are the conditions for patentability?
NIA
1. Novelty An invention shall not be considered new if
it forms part of a prior art. (Sec. 23, IPC)
2. 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.
3. Industrially Applicable An invention that can be
produced and used in any industry, shall be industrially
applicable (Sec. 27, IPC).
Q: What is prior art?
1. 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
2. The whole contents of a published application, filed or
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 the IPC, there shall be a 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, IPC)
What is meant by made available to the public and what
are its effects?
To be made available to the public means at least one
member of the public has been able to access knowledge of
the invention without any restriction on passing that
knowledge on to others.
General Rule: When a work has already been made
available to the public, it shall be nonpatentable for
absence of novelty.
Exception: Nonprejudicial disclosure the disclosure of
information contained in the application during the 12
month period before the filing date or the priority date of
the application if such disclosure was made by:
1. The inventor;
2. A patent office and the information was contained:
a. In another application filed by the inventor and
should have not have been disclosed by the
office, or
b. 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, IPC)
Who has the burden of proving want of novelty of an
invention?
The burden of proving want of novelty is on him who avers
it and the burden is a heavy one which is met only by clear
and satisfactory proof which overcomes every reasonable
doubt. (Manzano v. CA, G.R. No. 113388. Sept. 5, 1997)
Q: What is inventive step?
General Rule: An invention involves an inventive step if,
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skilled in the art at the time of the filing date or priority date
of the application claiming the invention. (Sec. 26, IPC)
Exception: 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. (Sec. 26.2, as amended by
R.A. 9502)
What is the test of nonobviousness?
If any person possessing ordinary skill in the art was able to
draw the inferences and the constructs that the supposed
inventor drew from prior art, then the latter did not really
invent.
Who is considered a person of ordinary skill?
A person who is presumed to:
1. Be an ordinary practitioner aware of what was
common general knowledge in the art at the
relevant date.
2. Have knowledge of all references that are
sufficiently related to one another and to the
pertinent art and to have knowledge of all arts
reasonably pertinent to the particular problems
with which the inventor was involved.
3. Have had at his disposal the normal means and
capacity for routine work and experimentation.
(Rules and Regulations on Inventions, Rule 207)
Q: What are other forms of patentable inventions?
1. Industrial design Any composition of lines or
colors or any threedimensional 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, IPC)
Note: Generally speaking, an industrial design is the
ornamental or aesthetic aspect of a useful article. (Vicente
Amador, Intellectual Property Fundamentals, 2007)
2. Integrated circuit A product, in its final form, or an
intermediate form, in which the elements, at least
one of which is an active elements and some of all
of the interconnections are integrally formed in and
or on a piece of material, and in which is intended to
perform an electronic function.
3. 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 of the interconnections of an integrated
circuit, or such a threedimensional disposition
prepared for an integrated circuit intended for
manufacture. Registration is valid for 10 years
without renewal counted from date of
commencement of protection.
4. Utility model A name given to inventions in the
mechanical field
When does an invention qualify as a utility model?
If it is new and industrially applicable. A model of implement
or tools of any industrial product even if not possessed of
the quality of invention but which is of practical utility. (Sec.
109.1, IPC)
What is the term of a utility model?
7 years from date of filing of the application (Sec. 109.3,
IPC).
NON-PATENTABLE INVENTIONS SEC. 22
What are not patentable inventions?
DDS-APAC
1. Discoveries, scientific theories and
mathematical methods
2. In the case of Drugs and medicines, mere
discovery of a new form or new property of
a known substance which does not result in
the enhancement of the efficacy of that
substance
3. Schemes, rules and methods of performing
mental acts, playing games or doing
business, and programs for computers
4. Methods for treatment of the human or
Animal body
5. Plant varieties or animal breeds or
essentially biological process for the
production of plants or animals. This
provision shall not apply to microorganisms
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 and nonbiological and microbiological
processes
6. Aesthetic creations
7. Anything which is Contrary to public order or
morality. (Sec. 22, IPC as amended by R.A.
9502)
Q: Are computer programs patentable?
General Rule: Computer programs are not patentable but
are copyrightable.
Exception: They can be patentable if they are part of a
process (e.g. business process with a step involving the use
of a computer program).
OWNERSHIP OF A PATENT
Q: Who is entitled to a patent?
1. Inventor, his heirs, or assigns.
2. Joint invention Jointly by the inventors. (Sec. 28,
IPC)
3. 2 or more persons invented separately and
independently of each other To the person who
filed an application;
4. 2 or more applications are filed the applicant
who has the earliest filing date or, the earliest
priority date. First to file rule. (Sec. 29, IPC)
5. Inventions created pursuant to a commission
Person who commissions the work, unless
otherwise provided in the contract. (Sec. 30.1,
IPC)
6. Employee made the invention in the course of his
employment contract:
a. 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.
b. 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, IPC)
FIRST TO FILE RULE
What is the 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 which has the earliest filing date.
(Sec. 29, IPC)
Cheche invented a device that can convert rainwater into
automobile fuel. She asked Macon, a lawyer, to assist in
getting her invention patented. Macon suggested that
they form a corporation with other friends and have the
corporation apply for the patent, 80% of the shares of
stock thereof to be subscribed by Cheche and 5% by
Macon. The corporation was formed and the patent
application was filed. However, Cheche died 3 months
later of a heart attack. Franco, the estranged husband of
Cheche, contested the application of the corporation and
filed his own patent application as the sole surviving heir
of Cheche. Decide the issue with reasons.
The estranged husband of Cheche cannot successfully
contest the application. The right over inventions accrue
from the moment of creation and as a right it can lawfully
be assigned. Once the title thereto is vested in the
transferee, the latter has the right to apply for its
registration. The estranged husband of Cheche, if not
disqualified to inherit, merely would succeed to the interest
of Cheche. (1990 Bar Question)
Who may apply for a patent?
Any person who is a national or who is domiciled or has a
real and effective industrial establishment in a country
which 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 extends reciprocal rights to nationals of the Philippines
by law. (Sec. 3, IPC)
Inventions Created Pursuant to a Commission
Who shall own the patent worked on a commission?
General Rule: The person who commissions the work shall
own the patent
Exception: The contract provides otherwise.
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the course of his employment contract, to whom the
patent belong?
(a) 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.
(b) 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
description of the process is to apprise the public of what
the patentee claims as his invention, to inform the Courts
as to what they are called upon to construe, and to convey
to competing manufacturers and dealers information of
exactly what they are bound to avoid. To be entitled to the
filing date of the patent application, an invention disclosed
in a previously filed application must be described within
the instant application in such a manner as to enable one
skilled in the art to use the same for a legally adequate
utility. (Boothe v. Director of Patents, G.R. No. L24919, Jan.
28, 1980)

RIGHT OF PRIORITY
PATENT REGISTRATION PROCESS AND
What is priority date? REQUIREMENTS

An application for patent filed by any person who has What are the steps in the registration of a
previously applied for the same invention in another patent? FAFC-PSG-PI
country which by treaty, convention, or law affords similar
privileges to Filipino citizens, shall be considered as filed as The procedure for the grant of patent may be summarized
of the date of filing the foreign application. (Sec. 31, IPC) as follows:
1. Filing of the application
What are the conditions in availing of priority date? 2. Accordance of the filing date
3. Formality examination
1. The local application expressly claims priority; 4. Classification and Search
2. It is filed within 12 months from the date the 5. Publication of application
earliest foreign application was filed; and 6. Substantive examination
3. A certified copy of the foreign application 7. Grant of Patent
together with an English translation is filed 8. Publication upon grant
within 6 months from the date of filing in the 9. Issuance of certificate (Salao, Essentials of
Philippines. (Sec. 31, IPC) Intellectual Property Law: a Guidebook on
Republic Act No. 8293 and Related Laws.,
Leonard and Marvin applied for Letters Patent claiming 2008)
the right of priority granted to foreign applicants. Receipt
of petitioners application was acknowledged by What are the contents of Patent Application?
respondent Director on March 6, 1954. Their Application A patent application shall contain:
for Letters Patent in the US for the same invention 1. A request for the grant of patent;
indicated that the application in the US was filed on March 2. A description of the invention (Disclosure)
16, 1953. They were advised that the "Specification" they 3. Drawings necessary for the
had submitted was "incomplete" and that responsive understanding of the invention;
action should be filed with them four months from date of 4. One or more claims
mailing, which was August 5, 1959. On July 3, 1962, 5. An abstract (Sec. 32)
petitioners submitted two complete copies of the
Specification. Director of patents held that petitioners' How is disclosure made?
application may not be treated as filed. Is the director
correct? The application shall disclose the invention in a manner
sufficiently clear and complete for it to be carried out by a
Yes, it is imperative that the application be complete in person skilled in the art.
order that it may be accepted. It is essential to the validity
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of Letters Patent that the specifications be full, definite, and What is a claim?
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Defines the matter for which protection is sought. Each
claim shall be clear and concise, and shall be supported by
the description.
What is an abstract?
A concise summary of the disclosure of the invention as
contained in the description, claims and merely serves as
technical information.
What is unity of invention?
The application shall relate to one invention only or to a
group of inventions forming a single general inventive
concept. (Sec. 38.1) If several independent inventions
which do not form a single general inventive concept are
claimed in one application, the application must be
restricted to a single invention. (Sec. 38.2, IPC)
What is the concept of divisional applications?
Divisional applications come into play when two or more
inventions are claimed in a single application but are of
such a nature that a single patent may not be issued for
them. The applicant, is thus required to divide, that is, to
limit the claims to whichever invention he may elect,
whereas those inventions not elected may be made the
subject of separate applications which are called
divisional applications. (SmithKline Beckman Corp. v.
CA, GR No. 126627, Aug. 14,2003)
What are the rights conferred by a patent application after
the first publication?
A patent shall confer on its owner the following exclusive
rights:
(a) Where the subject matter of a patent is a product,
to restrain, prohibit and prevent any unauthorized
person or entity from making, using, offering for
sale, selling or importing that product;
(b) Where the subject matter of a patent is a process,
to restrain, prevent or prohibit any unauthorized
person or entity from using the process, and from
manufacturing, dealing in, using, selling or offering
for sale, or importing any product obtained directly
or indirectly from such process.
Note: That the action may not be filed until after the grant of
a patent on the published application and within four (4) years
from the commission of the acts complained of (Sec. 46, IPC).
When shall the patent take effect?
A patent shall take effect on the date of the publication of
the grant of the patent in the IPO Gazette. (Sec. 50.3, IPC)
What is the duration of a patent, utility model
and industrial design?
1. Patent 20 years from date of filing of application
without renewal. (Sec. 54, IPC)
2. Utility Model 7 years from the filing date of the
application without renewal. (Sec. 109.3, IPC)
3. Industrial Design 5 years from the filing date of the
application, renewable for not more than two (2)
consecutive periods of five (5) years each. (Sec.
118.2, IPC)
CANCELLATION OF A PATENT
What are the grounds for the cancellation of
patents? NDCI
1. The invention is Not new or patentable;
2. 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
3. Contrary to public order or morality.(Sec.
61.1, IPC)
4. Patent is found Invalid in an action for
infringement (Sec. 82, IPC)
Where is it filed?
1. Bureau of Legal Affairs if violation of IPC
(Administrative)
2. Regional Trial Courtt- other cases
What if the ground/s for cancellation relate to some of the
claims or parts of the claim only?
Cancellation may be effected to such extent only.
(Sec. 61.2, IPC)
What are the grounds for cancellation of a utility
model?
1. The invention does not qualify for registration as a
utility model
2. That the description and the claims do not comply
with the prescribed requirements
3. Any drawing which is necessary for the
understanding of the invention has not been
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 4. That the owner of the utility model registration is
not the inventor or his successor in title. (Sec. 109.4,
IPC)
What are the grounds for cancellation of an
industrial design?
1. The subject matter of the industrial design is not
registrable;
2. The subject matter is not new; or
3. The subject matter of the industrial design extends
beyond the content of the application as originally
filed (Sec. 120IPC).
REMEDY OF THE TRUE AND ACTUAL
OWNER
What are the remedies of persons not having the
right to a patent?
If a person other than the applicant is declared by final court
order or decision as having the right to a patent, he may
within 3 months after such decision has become final:
1. Prosecute the application as his own
2. File a new patent application
3. Request the application to be refused; or
4. Seek cancellation of the patent.
What is the remedy of a true inventor?
He may only ask the court to substitute him as a patentee
or to cancel the patent and ask for damages when the
application of the false inventor is granted. He may not the
IPO of processing the false application.
RIGHTS CONFERRED BY A PATENT
What are the rights conferred by a patent?
1. Subject matter is a product Right to restrain, prohibit
and prevent any unauthorized person or entity from
making, using, offering for sale, selling or importing the
product.
2. Subject matter is a process Right to restrain prohibit
and prevent any unauthorized person or entity from
manufacturing, dealing in, using, offering for sale,
selling or importing any product obtained directly or
indirectly from such process (Sec. 71, IPC).
3. Right to assign the patent, to transfer by succession,
and to conclude licensing contracts. (Sec. 71.2, IPC)
LIMITATIONS OF PATENT RIGHTS
What are the exceptions to the rights conferred
by a patent? M
1) In general
A. General Rule: If put on the market in the
Philippines by the owner of the product, or with
his express consent.
Exception: Drugs and medicines introduced in
the Philippines or anywhere else in the world by
the patent owner, or by any party authorized to
use the invention (Sec. 72.1, as amended by R.A.
9502)
B. Where the act is done privately and on a non
commercial scale or for a noncommercial
purpose. (Sec. 72.2, IPC)
C. Exclusively for experimental use of the invention
for scientific purposes or educational purposes
(experimental use provision). (Sec. 72.3, IPC)
D. Bolar Provision In the case of drugs and
medicines, where the act includes testing, using,
making or selling the invention including any data
related thereto, solely for purposes reasonably
related to the development and submission of
information and issuance of approvals by
government regulatory agencies required under
any law of the Philippines or of another country
that regulates the manufacture, construction, use
or sale of any product.(Sec. 72.4, IPC)
E. 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. (Sec. 72.5, IPC)
F. Where the invention is used in any ship, vessel,
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 entering the territory of the Philippines
temporarily or accidentally. (Sec. 72.5, IPC)
Prior User
2) Prior user Person other than the applicant, who in
good faith, started using the invention in the
Philippines, or undertaken serious preparations to use
the same, before the filing date or priority date of the
application shall have the right to continue the use
thereof, but this right shall only be transferred or
assigned further with his enterprise or business. (Sec.
73, IPC)
Use by the Government
3) Use by Government A government agency or third
person authorized by the government may exploit
invention even without agreement of a patent owner
where:
a. Public interest, as 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 owner of
patent is anticompetitive. (Sec. 74, IPC)
4) Reverse reciprocity of foreign law 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
Who is a parallel importer?
One which imports, distributes, and sells genuine products
in the market, independently of an exclusive distributorship
or agency agreement with the manufacturer.
Note: Such acts of underground sales and marketing of
genuine goods, undermines the property rights and goodwill of
the rightful exclusive distributor. Such goodwill is protected by
the law on unfair competition. (Solid Triangle v. Sheriff, G.R. No.
144309, Nov. 23, 2001)
What is the doctrine of exhaustion?
Also known as the doctrine of first sale, it provides that the
patent holder has control of the first sale of his invention.
He has the opportunity to receive the full consideration for
his invention from his sale. Hence, he exhausts his rights in
the future control of his invention.
It espouses that the patentee who has already sold his
invention and has received all the royalty and consideration
for the same will be deemed to have released the invention
from his monopoly. The invention thus becomes open to
the use of the purchaser without further restriction. (Adams
v. Burke, 84 U.S. 17, 1873)
How does the Doctrine Exhaustion of apply in Philippine
jurisdiction?
General Rule: Patent rights are Exhausted by first sale in the
Philippines (Domestic exhaustion).
Exception: Except however on drugs and medicines: first
sale in any jurisdiction exhausts (International exhaustion)
(R.A. 9502).
What are the different kinds of exhaustion?
1. International exhaustion allows any party to import
into the national territory a patented product from any
other country in which the product was placed on the
market by the patent holder or any authorized party.
2. Regional exhaustion allows the possibility of
importing into the national territory a patented
product originating from any other member state of a
regional trade agreement.
3. National exhaustion limits the circulation of products
covered by patent in one country to only those put on
the market by the patent owner or its authorized
agents in that same country. In this case, there can be
no parallel importation.
4. Modified exhaustion all respect identical to the
International exhaustion except for the allowance of
the restriction of the extent of exhaustion through
explicit contractual terms. (Carlos Correa,.
Internationalization of the Patent System and New
Technologies. International Law Journal, Vol. 20. No.3
, 2002)
PATENT INFRINGEMENT
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What constitutes infringement of patent?
1. Making, using, offering for sale, selling or importing
a patented product or a product obtained directly
or indirectly from a patented process; or
2. Use of a patented process without authorization of
the owner of the patent (Sec. 76, IPC)
Does the use of a patented process by a third person
constitute an infringement when the alleged infringer has
substituted, in lieu of some unessential part of the
patented process, a wellknown mechanical equivalent."
Yes, under the doctrine of mechanical equivalents, the
patentee is protected from colorable invasions of his patent
What are the purposes of filing a civil case in case of
under the guise of substitution of some part of his invention
infringement?
by some well known mechanical equivalent. It is an
infringement of the patent, if the substitute performs the
same function and was well known at the date of the patent
as a proper substitute for the omitted ingredient. (Gsell v.
YapJue, G.R. No. L4720, Jan. 19, 1909)
What is meant by 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.
What is the doctrine of file wrapper estoppel?
This doctrine balances the doctrine of equivalents. Patentee
is precluded from claiming as part of patented product that
which he had to excise or modify in order to avoid patent
office rejection, and he may omit any additions that he was
compelled to add by patent office regulations.
Who can file an action for infringement?
ACTION FOR INFRINGEMENT
What are the remedies of the owner of the patent against
infringers?
1. Civil action for infringement The owner may
bring a civil action with the appropriate Regional
Trial Court to recover from infringer the damages
sustained by the former, plus attorneys fees and
other litigation expenses, and to secure an
injunction for the protection of his rights.
2. Criminal action for infringement If the
infringement is repeated, the infringer shall be
Limitation of Action
criminally liable and upon conviction, shall suffer
imprisonment of not less than six (6) months but
not more than three (3) years and/or a fine not
less than P100,000.00 but not more than
P300,000.00
3. Administrative remedy Where the amount of
damages claimed is not less than P200,000.00, the
patentee may choose to file an administrative
action against the infringer with the Bureau of
Legal Affairs (BLA). The BLA can issue injunctions,
direct infringer to pay patentee damages, but
unlike regular courts, the BLA may not issue
search and seizure warrants or warrants of arrest.
1. To recover from the infringer such damages as the
court may award considering the circumstances
of the case provided it shall not exceed 3 times
the amount of the actual damages sustained plus
attorneys fees and other expenses of litigation;
2. To secure an injunction for the protection of his
rights;
3. To receive a reasonable royalty, if the damages
are inadequate or cannot be readily ascertained
with reasonable certainty;
4. To have the infringing goods, materials and
implements predominantly used in the
infringement disposed of outside the channels of
commerce, or destroyed without compensation;
5. To hold the contributory infringer jointly and
severally liable with the infringer.
1. The patentee or his successorsininterest may file
an action for infringement. (Creser Precision
Systems, Inc. v. CA, G.R. No. 118708, Feb. 2, 1998)
2. Any foreign national or juridical entity who meets
the requirements of Sec. 3 and not engaged in
business in the Philippines, to which a patent has
been granted or assigned, whether or not it is
licensed to do business in the Philippines. (Sec. 77,
IPC)
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What are the limitations to the civil/criminal action?
1. No damages can be recovered for acts of
infringement committed more than four (4)
years before the filing of the action for
infringement. (Sec. 79, IPC)
2. The criminal action prescribes in three (3) years
from the commission of the crime. (Sec. 84, IPC)
What does Notice Requirement mean?
Damages cannot be recovered for acts of
infringement committed before the infringer had known, or
had reasonable grounds to know of the patent. It is
presumed that the infringer had known of the patent if on
the patented product, or on the container or package in
which the article is supplied to the public, or on the
advertising material relating to the patented product or
process, are placed the words "Philippine Patent" with the
number of the patent.
Which Court has jurisdiction?
Samson vs. Cabanos,
June 28, 2005, GR 161693
FACTS: Petitioner MANOLO P. SAMSON was accused of
unfair competition for violation of Intellectual Property
Code of the Philippine for unlawfully selling CATERPILLAR
products which are closely identical to and colorable
imitations of the authentic Caterpillar.
Petitioner moved to quash the information on the
ground that the court has no jurisdiction over the offense
charged in the Information. He argued that IPC provides
that the penalty for violation of Section 168 thereof is
imprisonment from two (2) to five (5) years and a fine
ranging from fifty thousand pesos (P50,000.00) to two
hundred thousand pesos (P200,000.00), and under R.A. No.
7691, Metropolitan Trial Courts (MTC) exclusive original
jurisdiction over all offenses punishable with imprisonment
not exceeding six (6) years irrespective of the amount of the
fine. Motion wa denied.
ISSUE: Whether or not the respondent RTC has jurisdiction
HELD: Yes. Section 163 of of R.A. No. 8293, which took
effect on January 1, 1998, states that actions (including
criminal and civil) under Sections 150, 155, 164, 166, 167,
168 and 169 shall be brought before the proper courts with
appropriate jurisdiction under existing laws.
The existing law referred to in the foregoing provision is
Section 27 of R.A. No. 166 (The Trademark Law) which
provides that jurisdiction over cases for infringement of
registered marks, unfair competition, false designation of
origin and false description or representation, is lodged
with the Court of First Instance (now Regional Trial Court).
In the case at bar, R.A. No. 8293 and R.A. No. 166 are special
laws conferring jurisdiction over violations of intellectual
property rights to the Regional Trial Court. They should
therefore prevail over R.A. No. 7691, which is a general law.
Hence, jurisdiction over the instant criminal case for unfair
competition is properly lodged with the Regional Trial Court
even if the penalty therefor is imprisonment of less than 6
years, or from 2 to 5 years and a fine ranging
from P50,000.00 to P200,000.00.
In fact, to implement and ensure the speedy disposition of
cases involving violations of intellectual property rights
under R.A. No. 8293, the Court issued A.M. No. 02-1-11-SC
dated February 19, 2002 designating certain Regional Trial
Courts as Intellectual Property Courts. On June 17, 2003, the
Court further issued a Resolution consolidating jurisdiction
to hear and decide Intellectual Property Code and Securities
and Exchange Commission cases in specific Regional Trial
Courts designated as Special Commercial Courts.
TESTS IN PATENT INFRINGEMENT
What are the tests in patent infringement?
1. Literal infringement Test Resort must be had, in
the first instance, to words of the claim. If the
accused matter clearly falls within the claim,
infringement is committed.
Minor modifications are sufficient to put the item
beyond literal infringement. (Godines v. CA, G.R.
No. L97343, Sept. 13, 1993)
2. Doctrine of Equivalents There is infringement
where 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. (Ibid.)
3. Economic interest test when the process
discoverers economic interest are compromised,
i.e., when others can import the products that
result from the process, such an act is said to be
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DEFENSES IN ACTION FOR INFRINGEMENT
What are the defenses in an action for infringement?
1. Invalidity of the patent; (Sec. 81, IPC);
2. Any of the grounds for cancellation of patents:
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, IPC)
Contributory Patent Infringement
What is the doctrine of contributory infringement?
Aside from the infringer, anyone who actively induces the
infringement of a patent or provides the infringer with a
component of a patented product or of a product produced
because of a patented process knowing it to be especially
adapted for infringing the patented invention and not
suitable for substantial noninfringing use is liable jointly
and severally with the infringer as a contributory infringer.
It must be proven that the product can only be used for
infringement purposes. If it can be used for legitimate
purposes, the action shall not prosper.
TECHNOLOGY TRANSFER ARRANGEMENTS
What is the Technology Transfer Arrangements?
It refers to contracts or agreements involving the transfer
of systematic knowledge for the manufacture of a product,
the application of a process, or rendering of a service
including management contracts; and the transfer,
assignment or licensing of all forms of intellectual property
rights, including licensing of computer software except
computer software developed for mass market.
What are the modes of obtaining license to exploit patent
rights?
1. Voluntary licensing (Sec. 85, IPC) and
2. Compulsory licensing (Sec. 93, IPC)
What is voluntary licensing?
The grant by the patent owner to a third person of the right
to exploit a patented invention.
What are the rights of a licensor in voluntary licensing?
In the absence of any provision to the contrary in the
technology transfer arrangement, the grant of a license
shall not prevent the licensor from granting further licenses
to third person nor from exploiting the subject matter of the
technology transfer arrangement himself (Sec. 89, IPC).
What are the prohibited clauses?
General Rule: The following provisions shall be deemed
prima facie to have an adverse effect on competition and
trade: ORRC-PTRE-P
1. Those which impose upon the licensee the obligation
to acquire from a specific source capital goods,
intermediate 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
agreement.
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
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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
initiate 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
Exception: - 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 Investments, registered
companies with pioneer status, exemption from any of the
above requirements may be allowed by the
Documentation, Information and Technology Transfer
Bureau after evaluation thereof on a case by case basis.
What are the mandatory provisions in voluntary
Licensing?
The following provisions shall be included in voluntary
license contracts:
1. That the laws of the Philippines shall govern the
interpretation of the same and in the event of
litigation, the venue shall be the proper court in the
place where the licensee has its principal office;
2. Continued access to improvements in techniques
and processes related to the technology shall be
made available during the period of the technology
transfer arrangement;
3. In the event the technology transfer arrangement
shall provide for arbitration, the Procedure of
Arbitration of the Arbitration Law of the Philippines
or the Arbitration Rules of the United Nations
Commission on International Trade Law (UNCITRAL)
or the Rules of Conciliation and Arbitration of the
International Chamber of Commerce (ICC) shall
apply and the venue of arbitration shall be the
Philippines or any neutral country; and
4. The Philippine taxes on all payments relating to the
technology transfer arrangement shall be borne by
the licensor. (n)
COMPULSORY LICENSING
Who can grant a compulsory license?
1. The Director of Legal Affairs may grant a license to
exploit a patented invention, even without the
agreement of the patent owner, in favor of any person
who has shown his capability to exploit the invention
(Sec. 93, IPC).
2. R.A. 9502 (Universally Accessible Cheaper and Quality
Medicines Act of 2008) however amended Sec. 93 so
that it is the Director General of the IPO who may grant
a license to exploit patented invention under the
grounds enumerated therein.
Note: Clarification either by legislation of judicial interpretation
as to who has jurisdiction should be made to avoid confusion.
(Salao, Essential of Intellectual Property Law: a Guidebook on
Republic Act No. 8293 and Related Laws, 2008)
Grounds
What are the grounds for compulsory licensing and the
period for filing a petition?
1. National emergency
2. Where the public interest, at any time after the
grant of the patent
3. Where a judicial or administrative body has
determined that the manner of exploitation by
the owner of the patent or his licensee is anti
competitive at any time after the grant of the
patent
4. In case of public noncommercial use of the
patent by the patentee, without satisfactory
reason at any time after the grant of the patent
5. If the patented invention is not being worked in
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 reason after the expiration of 4 years from the
date of filing of the application or 3 years from the
date of the patent whichever is later. (Sec. 93 in
relation to Sec. 94)
6. 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 (Sec. 10,
R.A. 9502)
Grounds for cancellation of the compulsory license?
1. Ground for the grant of the compulsory
license no longer exists and is unlikely to
recur;
2. Licensee has neither begun to supply the
domestic market nor made serious
preparation therefore;
3. Licensee has not complied with the
prescribed terms of the license.
Cezar works in a car manufacturing company owned by
Joab. Cezar is quite innovative and loves to tinker with
things. With the materials and parts of the car, he was able
to invent a gassaving device that will enable cars to
consume less gas. Francis, a coworker, saw how Cezar
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, Cezar filed his application for the
registration of his device with the Bureau of Patents.
Is the gassaving device patentable? Explain.
Yes because it is new, it involves an inventive step and it is
industrially applicable.
Assuming that it is patentable, who is entitled to the
patent? What, if any, is the remedy of the losing party?
Francis is entitled to the patent, because he had the earlier
filing date. The remedy of Cezar is to file a petition in court
for the cancellation of the patent of Francis on the ground
that he is the true and actual inventor, and ask for his
substitution as patentee. (2005 Bar Question)
Supposing Albert Einstein were alive today and he filed
with the Intellectual Property Office (IPO) an application
for patent for his theory of relativity expressed in the
formula E=mc2. The IPO disapproved Einstein's
application on the ground that his theory of relativity is
not patentable. Is the IPO's action correct?
Yes, the IPOs action is correct. Section 22 of the Intellectual
Property Law expressly states that discoveries, scientific
theories and mathematical methods are among those
matters which are not patentable. (2006 Bar Question)
Requirement to Obtain a License
General Rule: The license will only be granted after the
petitioner has made efforts to obtain authorization from
the patent owner on reasonable commercial terms and
conditions but such efforts have not been successful within
a reasonable period of time.
Exceptions:
(a) Where the petition for compulsory license seeks
to remedy a practice determined after judicial
or administrative process to be anti-
competitive;
(b) In situations of national emergency or other
circumstances of extreme urgency;
(c) In cases of public non-commercial use.
Period to file a compulsory license?
1) After the expiration of a period of four (4) years
from the date of filing of the application or three
(3) years from the date of the patent whichever
period expires last.
a. If granted on the ground that the
patented invention is not being worked
in the Philippines on a commercial
scale, although capable of being
worked, without satisfactory reason.
2) At any time after the grant of the patent if patent
was granted on the following grounds:
a. National emergency
b. the public interest so requires
c. judicial or administrative body has
determined
d. public non-commercial use of the
patent by the patentee without
satisfactory reason.
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ASSIGNMENT AND TRANSMISSION OF
RIGHTS
What are the forms of assignment?
1. Total assignment of entire right, title or interest in
and to the patent and the invention covered
thereby.
2. Partial
a. Separate rights assignment of a specific right
(ex: right to sell)
Pro Indiviso assignment of an aliquot part which
results in coownership
How is the transfer of rights effected?
1. By inheritance or bequest
2. License contract
What is the effect of an assignment of a patent?
The assignment works as an estoppels by deed, preventing
the assignor from denying the novelty and utility of the
patented invention when sued the assignee for
infringement.
What should be the form of an assignment?
1. In writing
2. Acknowledged and certified before a notary
public or other officer authorized to perform
notarial acts
3. Recorded in the IPO
What is the effect if the assignment was not recorded in
the IPO?
A deed of assignment affecting title 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. Even without recordal, the instruments are
binding upon the parties.
May a licensee maintain a suit for infringement?
General Rule: Only the patentees, his heirs, assignee,
grantee or personal representatives may bring an action for
infringement.
Exception: If the licensing agreement provides that the
licensee may bring an action for infringement or if he was
authorized to do so by the patentee through a special
power of attorney.
UTILITY MODELS
What is Utility Model?
Utility model A name given to inventions in the
mechanical field
When does an invention qualify as a utility model?
If it is new and industrially applicable. A model of implement
or tools of any industrial product even if not possessed of
the quality of invention but which is of practical utility. (Sec.
109.1, IPC)
What is the term of a utility model?
7 years from date of filing of the application (Sec. 109.3,
IPC).
What are the grounds for cancellation of a utility model?
1. The invention does not qualify for
registration as a utility model
2. That the description and the claims do not
comply with the prescribed requirements
3. Any drawing which is necessary for the
understanding of the invention has not been
furnished
4. That the owner of the utility model
registration is not the inventor or his
successor in title. (Sec. 109.4, IPC)
INDUSTRIAL DESIGN
What is Industrial Design?
Industrial design Any composition of lines or colors or any
threedimensional 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, IPC)
Note: Generally speaking, an industrial design is the
ornamental or aesthetic aspect of a useful article. (Vicente
Amador, Intellectual Property Fundamentals, 2007)
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industrial design?
5 years from the filing date of the application, renewable
for not more than two (2) consecutive periods of five (5)
years each. (Sec. 118.2, IPC)
What are the grounds for cancellation of an industrial
design?
1. The subject matter of the industrial design is
not registrable;
2. The subject matter is not new; or
3. The subject matter of the industrial design
extends beyond the content of the
application as originally filed (Sec. 120IPC).
Pearl & Dean (Phil.), Inc. vs. Shoemart, Inc
G.R. No. 148222. August 15, 2003
(Patents/Copyright)
FACTS: Pearl and Dean (Phil.), Inc. is a corporation engaged
in the manufacture of advertising display units simply
referred to as light boxes. These units utilize specially
printed posters sandwiched between plastic sheets and
illuminated with back lights. Pearl and Dean was able to
secure a Certificate of Copyright Registration over these
illuminated display units. The advertising light boxes were
marketed under the trademark Poster Ads. From 1981
to about 1988, Pearl and Dean employed the services of
Metro Industrial Services to manufacture its advertising
displays.
Two years later, Metro Industrial Services, the company
formerly contracted by Pearl and Dean to fabricate its
display units, offered to construct light boxes for
Shoemarts chain of stores. SMI approved the proposal
and ten (10) light boxes were subsequently fabricated by
Metro Industrial for SMI. After, Pearl and Dean, received
reports that exact copies of its light boxes were installed at
SM malls.
In the light of its discoveries, Pearl and Dean sent a letter
to both SMI and NEMI enjoining them to cease using the
subject light boxes and to remove the same from SMIs
establishments. It also demanded the discontinued use of
the trademark Poster Ads, and the payment to Pearl and
Dean of compensatory damages in the amount of
P20million.
Upon receipt of the demand letter, SMI suspended the
leasing of light boxes and NEMI took down its
advertisements for Poster Ads from the lighted display
units in SMIs stores. Claiming that both SMI and NEMI
failed to meet all its demands, Pearl and Dean filed this
instant case for infringement of trademark and copyright,
unfair competition and damages.
ISSUES:
(1) Whether there was a copyright infringement
(2) Whether there was a patent infringement
(3) Whether there was a trademark infringement
(4) Whether there was unfair competition
(1) Copyright is a statutory right, subject to the terms and
conditions specified in the statute. Therefore, it can only
cover the works falling within the statutory enumeration or
description. Since the copyright was classified under class
"O" works, which includes "prints, pictorial illustrations,
advertising copies, labels, tags and box wraps," and does
not include the light box itself. A lightbox, even admitted by
the president of petitioner company, was neither a literary
nor an artistic work but an engineering or marketing
invention, thus not included under a copyright.
(2) Petitioner was not able to secure a patent for its
lightboxes, and cannot legally prevent anyone from
manufacturing or commercially using the same. Patent has
a three-fold purpose: a) to foster and reward invention; b)
promotes disclosures of invention and permit public to use
the same upon expiration; c) stringent requirements for
patent protection to ensure in the public domain remain
there for free use of the public. Since petitioner was not
able to go through such examination, it cannot exclude
others from manufacturing, or selling such lightboxes. No
patent, no protection.
(3) The certificate of registration issued by the Director of
Patents gives exclusive right to use its own symbol only to
the description specified in the certificate. It cannot prevent
others to use the same trademark with a different
description.
(4) "Poster Ads" is a general term that cannot be associated
specifically to Pearl and Dean, thus it cannot be considered
to use such term to be unfair competition against the
petitioner.
ROSARIO C. MAGUAN vs. CA and SUSANA LUCHAN
G.R. No. L-45101. November 28, 1986.
Novelty as requisite for patentability)
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FACTS: Petitioner is doing business under the firm name
and style of SWAN MANUFACTURING" while private
respondent is likewise doing business under the firm name
and style of "SUSANA LUCHAN POWDER PUFF
MANUFACTURING."
Petitioner is a patent holder of several powder puff. In a
letter, petitioner informed private respondent that the
powder puffs the latter is manufacturing and selling to
various enterprises particularly those in the cosmetics
industry, resemble Identical or substantially Identical
powder puffs of which the former is a patent holder under
Registration Certification.
Private respondent replied denying similarities and rather
assailed the validity of the patents involved and filed with
the Philippine Patent Office petitions for cancellation on the
following grounds:
(1) at the time of filing of application for the patents
involved, the utility models applied for were not new and
patentable under Sec. 55 of R.A. 165, as amended by R.A.
864; and
(2) the person to whom the patents were issued was not
the true and actual author of the utility models applied for,
and neither did she derive her rights from any true and
actual author of these utility models.for the following
reasons:
(a) since years prior to the filing of applications for the
patents involved, powder puffs of the kind applied
for were then already existing and publicly being
sold in the market; both in the Philippines and
abroad; and
(b) applicant's claims in her applications, of
"construction" or process of manufacturing the
utility models applied for, with respect to UM-423
and UM-450, were but a complicated and
impractical version of an old, simple one which has
been well known to the cosmetics industry since
years previous to her filing of applications, and
which belonged to no one except to the general
public; and with respect to UM1184; her claim in
her application of a unitary powder puff, was but an
limitation of a product well known to the cosmetics
industry since years previous to her firing of
application, and which belonged to no one except
to the general public; (Answer, Rollo, pp. 93-94).
ISSUE: Whether or not the patent of petitioner is valid.
HELD: No. Respondent CA was satisfied that there is a prima
facie showing of a fair question of invalidity of petitioner's
patents on the ground of lack of novelty.
It has been repeatedly held that an invention must possess
the essential elements of novelty , originality and
precedence and for the patentee to be entitled to
protection, the invention must be new to the world.
SEC. 9. Invention not considered new or patentable. An
invention shall not be considered new or capable of being
patented if it was known or used by others in the Philippines
before the invention thereof by the inventor named in an
application for patent for the invention; or if it was patented
or described in any printed publication in the Philippines or
any foreign country more than one year before the
application for a patent therefor; or if it had been in public
use or on sale in the Philippines for more than one year
before the application for a patent therefor; or if it is the
subject matter of a validity issued patent in the Philippines
granted on an application filed before the filing of the
application for patent therefor.
Thus it is generally held that in patent cases a preliminary
injunction will not issue for patent infringement unless the
validity of the patent is clear and beyond question. The
issuance of letters patent, standing alone, is not sufficient
to support such drastic relief. In cases of infringement of
patent no preliminary injunction will be granted unless the
patent is valid and infringed beyond question and the
record conclusively proves the defense is sham.
Domiciano Aguas Vs. Conrado G. De Leon And CA
G.R. No. L-32160. January 30, 1982
(Patentability)
On April 14, 1962, Conrado G. de Leon filed in the Court of
First Instance of Rizal at Quezon City a complaint for
infringement of patent against Domiciano A. Aguas and F.
H. Aquino and Sons alleging that he is the original first and
sole inventor of certain new and useful improvements in
the process of making mosaic pre-cast tiles. He lawfully filed
and prosecuted an application for Philippine patent, and
having complied in all respects with the statute and the
rules of the Philippine Patent Office, Patent No. 658 was
lawfully granted and issued to him. Defendant Domiciano A.
Aguas infringed Letters of Patent No. 658 by making, using
and selling tiles embodying said patent invention and that
defendant F. H. Aquino & Sons is guilty of infringement by
making and furnishing to the defendant Domiciano A. Aguas
the engravings, castings and devices designed and intended
of tiles embodying plaintiffs patented invention.
In defense, questioned the validity of the patent of the
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private respondent, Conrado G. de Leon, on the ground that
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discovery, or an improvement of the old system of making
tiles. The letters patent of de Leon was actually a patent for
the old and non-patentable process of making mosaic pre-
cast tiles. The improvement of respondent is not patentable
because it is not new, useful and inventive.The petitioner
also claims that changing the design from embossed to
engraved tiles is neither new nor inventive because the
Machuca Tile Factory and the Pomona Tile Manufacturing
Company have been manufacturing decorative wall tiles
that are embossed as well as engraved.
ISSUE: Whether or not the respondents patent for the
'process of making mosaic pre-cast tile' is invalid
HELD: NO. It should be noted that the private respondent
does not claim to be the discoverer or inventor of the old
process of tile-making. He only claims to have introduced an
improvement of said process. In fact, Letters Patent No. 658
was issued by the Philippine Patent Office to the private
respondent, Conrado G. de Leon, to protect his rights as the
inventor of "an alleged new and useful improvement in the
process of making mosaic pre-cast tiles." Indeed, Section 7,
Republic Act No. 165, as amended provides: "Any invention
of a new and useful machine, manufactured product or
substance, process, or an improvement of the foregoing,
shall be patentable.
The respondent's improvement is indeed inventive and goes
beyond the exercise of mechanical skill. He has introduced
a new kind of tile for a new purpose. He has improved the
old method of making tiles and precast articles which were
not satisfactory because of an intolerable number of
breakages, especially if deep engravings are made on the
tile. He has overcome the problem of producing decorative
tiles with deep engraving, but with sufficient durability.
Durability in spite of the thinness and lightness of the tile, is
assured, provided that a certain critical depth is maintained
in relation to the dimensions of the tile.
The Machuca tiles are different from that of the private
respondent. The designs are embossed and not engraved as
claimed by the petitioner. There may be depressions but
these depressions are too shallow to be considered
engraved. Besides, the Machuca tiles are heavy and
massive. There is no similarity between the Pomona Tiles
and de Leon's tiles. The Pomona tiles are made of ceramics.
The process involved in making cement tiles is different
from ceramic tiles. Cement tiles are made with the use of
water, while in ceramics fire is used. As regards the
allegation of the petitioner that the private respondent
copied some designs of Pomona, suffice it to say that what
is in issue here is the process involved in tile making and not
the design.
SMITH KLINE BECKMAN CORP vs.CA and TRYCO
PHARMA CORPORATION,
G.R. No. 126627. August 14, 2003
(Doctrine of equivalents must satisfy function-means-
and-result test)
FACTS: Smith Kline Beckman Corp is a corporation existing
under the laws of Pennsylvania, US. It filed an application
for patent over an invention entitled Methods and
Compositions for Producing Biphasic Parasiticide Activity
Using Methyl 5 Propylthio-2-Benzimidazole Carbamate. The
said application was approved. It claimed that its patent
covers the substance Albendazole. It claimed that private
respondent infringe its right over the said patent by selling,
using and causing to be sold and used the drug Impregon
without its authorization and that respondent committed
unfair competition under Art 189 for advertising and selling
as its own the drug Impregon although the same contained
its patented Albendazole.
In defense, respondet argued that the Letters Patent that
was issued to petitioners does not cover the substance
Albendazole. That even if the patent were to include
Albendazole, such substance is unpatentable and that the
BFD allowed it to manufacture and market Impregon with
Albendazole as its known ingredient. There is no proof that
it passed off in any way its veterinary products as those of
petitioner. The letters patent is null and void for the
issuance is void for having been filed beyond the one year
period from the filling of an application abroad for the same
invention covered thereby. Also the respondent claims that
petitioner is not the registered patent holder.
ISSUE:Whether respondent committed infringement
against petitioner.
RULING. No. While Albendazole is admittedly a
chemical compound that exists by a name different
from that covered in petitioners letters patent, the
language of Letter Patent No. 14561 fails to yield
anything at all regarding Albendazole. And no
extrinsic evidence had been adduced to prove that
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claims of the patent embraces the same. 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.
Pascual Godines Vs CA and Sv-Agro
G.R. No. 97343. September 13, 1993
(Doctrine of Equivalents)
FACTS: SVAgro Industries Enterprises, Inc., holder of patent
for a utility model for a hand tractor or power tiller, suffered
a decline of more than 50% in sales in its Molave,
Zamboanga del Sur branch. Upon investigation, it
discovered that power tillers similar to those patented by
private respondent were being manufactured and sold by
petitioner herein, Pascual Godines. Consequently, SVAgro
informed Pascual Godines about the existing patent and
demanded that the latter stop selling and manufacturing
similar power tillers. Upon petitioner's failure to comply
with the demand, SVAgro Industries filed before the RTC a
complaint for infringement of patent and unfair
competition.
Petitioner maintains the defense that 1) He is manufactures
the tillersby order and specifications of the customers 2)
Those made by him were different from those being
manufactured and sold by private respondent because of a
drowning man clutching at straws.
ISSUE: Whether or not there is an infringement
HELD: Yes. Tests have been established to determine
infringement. These are (a) literal infringement; and (b) the
doctrine of equivalents.
Doctrine of equivalents which recognizes that minor
modifications in a patented invention are sufficient to put
the item beyond the scope of literal
infringement. According to this doctrine, "an infringement
also occurs when a device appropriates a prior invention by
incorporating its innovative concept and, albeit with some
modification and change, performs substantially the same
function in substantially the same way to achieve
substantially the same result."
Careful examination between the two power tillers will
show that they will operate on the same fundamental
principles. And, according to establish jurisprudence, in
infringement of patent, similarities or differences are to be
determined, not by the names of things, but in the light of
what elements do, and substantial, rather than technical,
identity in the test. More specifically, it is necessary and
sufficient to constitute equivalency that the same function
can be performed in substantially the same way or manner,
or by the same or substantially the same, principle or mode
of operation; but where these tests are satisfied, mere
differences of form or name are immaterial.
To establish an infringement, it is not essential to show that
the defendant adopted the device or process in every
particular; Proof of an adoption of the substance of the
thing will be sufficient.
Smith Kline & French Lab Ltd., vs CA And Danlex Research
Laboratories, Inc
G.R. No. 121267. October 23, 2001
(Compulsory Licensing)
FACTS: Petitioner is the assignee of Letters Patent No.
12207 covering the pharmaceutical product Cimetidine,
which relates to derivatives of heterocyclicthio or lower
alkoxy or amino lower alkyl thiourea, ureas or guanadines.
Private respondent filed with the BPTTT a petition for
compulsory license to manufacture and produce its own
brand of medicines using Cimetidine. Private respondent
invoked Section 34 (1) (e) of Republic Act No. 165 (the
Patent Law) the law then governing patents, which states
that an application for the grant of a compulsory license
under a particular patent may be filed with the BPTTT at any
time after the lapse of two (2) years from the date of grant
of such patent, if the patented invention or article relates
to food or medicine, or manufactured substances which
can be used as food or medicine, or is necessary for public
health or public safety. The petition for compulsory license
stated that Cimetidine is useful as an antihistamine and in
the treatment of ulcers, and that private respondent is
capable of using the patented product in the manufacture
of a useful product.
Petitioner opposed the petition for compulsory
license. According to petitioner, the grant of a compulsory
license to private respondent is an invalid exercise of police
power since it was not shown that there is an overwhelming
public necessity for such grant, considering that petitioner
is able to provide an adequate supply of Cimetidine to
satisfy the needs of the Philippine market. Petitioner also
claims that the grant of a compulsory license to private
respondent unjustly deprives it of a reasonable return on its
investment. It argues further that the provisions of the
Patent Law on compulsory licensing contravene the
Convention of Paris for the Protection of Industrial Property
(Paris Convention), which allegedly permits the granting of
a compulsory license over a patented product only to
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prevent abuses which might result from the exercise of the
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of failure to work or insufficient working of the patented
product, within four years from the date of filing of the
patent application or three years from the date of grant of
the patent, whichever expires last. Petitioner opines that
the inclusion of grounds for the grant of a compulsory
license in Section 34 of the Patent Law other than those
provided under the Paris Convention constitutes a violation
of the Philippines obligation to adhere to the provisions of
said treaty.
It is also contended by petitioner that the grant of a
compulsory license to private respondent will allow the
latter to liberally manufacture and sell medicinal products
containing Cimetidine without even extending to petitioner
due recognition for pioneering the development and
worldwide acceptance of said invention, and will
unreasonably dilute petitioners right over the patent.
ISSUE: Whether or not the grant of compulsory license is
valid
RULING: Yes. The said grant is in accord with Section 34 of
the Patent Law which provides:
The grant of the compulsory license satisfies the
requirements of the foregoing provision. More than ten
years have passed since the patent for Cimetidine was
issued to petitioner and its predecessors-in-interest, and
the compulsory license applied for by private respondent is
for the use, manufacture and sale of a medicinal
product. Furthermore, both the appellate court and the
BPTTT found that private respondent had the capability to
work Cimetidine or to make use thereof in the manufacture
of a useful product.
Petitioners contention that Section 34 of the Patent
Law contravenes the Paris Convention because the former
provides for grounds for the grant of a compulsory license
in addition to those found in the latter, is likewise
incorrect. Article 5, Section A(2) of the Paris Convention
states:
Each country of the union shall have the right to take
legislative measures providing for the grant of compulsory
licenses to prevent the abuses which might result from the
exercise of the exclusive rights conferred by the patent, for
example, failure to work.
Neither does the Court agree with petitioner that the
grant of the compulsory license to private respondent was
erroneous because the same would lead the public to think
that the Cimetidine is the invention of private respondent
and not of petitioner. Such fears are unfounded since, as
the appellate court pointed out in the assailed decision, by
the grant of the compulsory license, private respondent as
licensee explicitly acknowledges that petitioner is the
source of the patented product Cimetidine. Even
assuming arguendo that such confusion may indeed occur,
the disadvantage is far outweighed by the benefits resulting
from the grant of the compulsory license, such as an
increased supply of pharmaceutical products
containing Cimetidine, and the consequent reduction in the
prices thereof.
Creser Precision Systems, Inc., vs. CA and Floro Inttl Corp.,
G.R. No. 118708. February 2, 1998
(Who may sue for infringement)
FACTS: It is Cresers contention that it can file, under
Section 42 of the Patent Law (R.A. 165), an action for
infringement not as a patentee but as an entity in
possession of a right, title or interest in and to the patented
invention. It advances the theory that while the absence of
a patent may prevent one from lawfully suing another for
infringement of said patent, such absence does not bar the
first true and actual inventor of the patented invention from
suing another who was granted a patent in a suit for
declaratory or injunctive relief recognized under American
patent laws. This remedy, petitioner points out, may be
likened to a civil action for infringement under Section 42 of
the Philippine Patent Law.
On the other hand, private respondent Floro International
submitted its memorandum alleging that petitioner has no
cause of action to file a complaint for infringement against
it since Creser has no patent for the aerial fuze which it
claims to have invented; that petitioner's available remedy
is to file a petition for cancellation of patent before the
Bureau of Patents; that private respondent as the patent
holder cannot be stripped of its property right over the
patented aerial fuze consisting of the exclusive right to
manufacture, use and sell the same and that it stands to
suffer irreparable damage and injury if it is enjoined from
the exercise of its property rights over its patent.
ISSUE: Whether Creser can file an action for infringement
being not as patentee
RULING: NO. Section 42 of R.A. 165, otherwise known as the
Patent Law, explicitly provides:
Sec. 42. Civil action for infringement. Any patentee, or
anyone possessing any right, title or interest in and to the
patented invention, whose rights have been infringed, may
bring a civil action before the proper Court of First Instance
(now Regional Trial court), to recover from the infringer
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damages sustained by reason of the infringement and to
secure an injunction for the protection of his right.
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 Under the aforequoted law, only the patentee or
his successors-in-interest may file an action for
infringement. The phrase "anyone possessing any right,
title or interest in and to the patented invention" upon
which petitioner maintains its present suit, refers only to
the patentee's successors-in-interest, assignees or grantees
since actions for infringement of patent may be brought in
the name of the person or persons interested, whether as
patentee, assignees, or as grantees, of the exclusive right.
Petitioner admits it has no patent over its aerial
fuze. Therefore, it has no legal basis or cause of action to
institute the petition for injunction and damages arising
from the alleged infringement by private respondent.
Angelita Manzano, vs CA and Melecia Madolaria, as
assignor to New United Foundry Mnfg Corp.
G.R. No. 113388. September 5, 1997
(Patentability)
FACTS: Petitioner Angelita Manzano filed with the
Philippine Patent Office on an action for the cancellation of
Letters Patent No. UM-4609 for a gas burner registered in
the name of respondent Melecia Madolaria who
subsequently assigned the letters patent to New United
Foundry and Manufacturing Corporation (UNITED
FOUNDRY, for brevity). Petitioner alleged that (a) the utility
model covered by the letters patent, in this case, an LPG gas
burner, was not inventive, new or useful; (b) the
specification of the letters patent did not comply with the
requirements of Sec. 14, RA No. 165, as amended; (c)
respondent Melecia Madolaria was not the original, true
and actual inventor nor did she derive her rights from the
original, true and actual inventor of the utility model
covered by the letters patent; and, (d) the letters patent
was secured by means of fraud or misrepresentation. In
support of her petition for cancellation petitioner further
alleged that (a) the utility model covered by the letters
patent of respondent had been known or used by others in
the Philippines for more than one (1) year before she filed
her application for letters patent on 9 December 1979; (b)
the products which were produced in accordance with the
utility model covered by the letters patent had been in
public use or on sale in the Philippines for more than one
(1) year before the application for patent therefor was filed.
Private respondent, through one witness, Rolando
Madolaria, who testified, among others, that he was the
General Supervisor of the UNITED FOUNDRY in the foundry,
machine and buffing section; that in his early years with the
company, UNITED FOUNDRY was engaged in the
manufacture of different kinds of gas stoves as well as
burners based on sketches and specifications furnished by
customers; that the company manufactured early models
of single-piece types of burners where the mouth and
throat were not detachable; that in the latter part of 1978
respondent Melecia Madolaria confided in him that
complaints were being brought to her attention concerning
the early models being manufactured; that he was then
instructed by private respondent to cast several
experimental models based on revised sketches and
specifications; that private respondent again made some
innovations; that after a few months, private respondent
discovered the solution to all the defects of the earlier
models and, based on her latest sketches and specifications,
he was able to cast several models incorporating the
additions to the innovations introduced in the
models. Various tests were conducted on the latest model
in the presence and under the supervision of Melecia
Madolaria and they obtained perfect results. Rolando
Madolaria testified that private respondent decided to file
her application for utility model patent in December 1979.
ISSUE: Whether to grant the application for cancellation of
the issued patent utility model to Melecia Madolaria for an
LPG Burner
RULING: NO. In issuing Letters Patent No. UM-4609 to
Melecia Madolaria for an LPG Burner on 22 July 1981, the
Philippine Patent Office found her invention novel and
patentable. The issuance of such patent creates a
presumption which yields only to clear and cogent evidence
that the patentee was the original and first inventor.
On 7 July 1986 the Director of Patents Cesar C. Sandiego
issued Decision No. 86-56 denying the petition for
cancellation and holding that the evidence of petitioner was
not able to establish convincingly that the patented utility
model of private respondent was anticipated. Not one of
the various pictorial representations of business clearly and
convincingly showed that the devices presented by
petitioner was identical or substantially identical with the
utility model of the respondent. The decision also stated
that even assuming that the brochures depicted clearly
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each and every element of the patented gas burner device
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although in truth they were not, they could not serve as
anticipatory bars for the reason that they were
undated. The dates when they were distributed to the
public were not indicated and, therefore, were useless prior
art references. The records and evidence also do not
support the petitioners contention that Letters Patent No.
UM-4609 was obtained by means of fraud and/or
misrepresentation. No evidence whatsoever was
presented by petitioner to show that the then applicant
Melecia Madolaria withheld with intent to deceive material
facts which, if disclosed, would have resulted in the refusal
by the Philippine Patent Office to issue the Letters Patent
under inquiry.
The rule is settled that the findings of fact of the
Director of Patents, especially when affirmed by the Court
of Appeals, are conclusive on this Court when supported by
substantial evidence. Petitioner has failed to show
compelling grounds for a reversal of the findings and
conclusions of the Patent Office and the Court of Appeals.
Smith Kline & French Laboratories, Ltd., vs CA, BPTTT and
Doctors Pharmaceuticals, Inc
G.R. No. 121867. July 24, 1997
(Compulsory Licensing)
FACTS: Smith Kline & French Laboratories, Ltd owns
Philippine Letters Patent No. 12207 issued by the BPTTT for
the patent of the drug Cimetidine.
It argued that Doctors Pharmaceuticals, Inc. had no cause
of action and lacked the capability to work the patented
product; the petition failed to specifically divulge how
Doctors Pharmaceuticals, Inc. would use or improve the
patented product; and that it was motivated by the
pecuniary gain attendant to the grant of a compulsory
license. It also maintained that it was capable of satisfying
the demand of the local market in the manufacture and
marketing of the medicines covered by the patented
product. Finally, It challenged the constitutionality of
Sections 34 and 35 of R.A. No. 165 for violating the due
process and equal protection clauses of the Constitution. It
also invoked Article 5 of the Paris Convention for the
Protection of Industrial Property,or Paris Convention, for
short, of which the Philippines became a party thereto only
in 1965.
Doctors Pharmaceuticals, Inc. is a domestic corporation
engaged in the business of manufacturing and distributing
pharmaceutical products. On 30 March 1987, it filed a
petition for compulsory licensing with the BPTTT for
authorization to manufacture its own brand of medicine
from the drug Cimetidine and to market the resulting
product in the Philippines. The petition was filed pursuant
to the provisions of Section 34 of Republic Act No. 165,
which provides for the compulsory licensing of a particular
patent after the expiration of two years from the grant of
the latter if the patented invention relates to, inter alia,
medicine or that which is necessary for public health or
public safety. It alleged that the grant of Philippine Letters
Patent No. 12207 was issued on 29 November 1978; that
the petition was filed beyond the two-year protective
period provided in Section 34 of R.A. No. 165; and that it
had the capability to work the patented product or make
use of it in its manufacture of medicine.
ISSUE: Whether or not the decision of bpttt decision
violates international law
HELD: No. It is thus clear that Section A(2) of Article 5 of
the Paris Convention unequivocally and explicitly respects
the right of member countries to adopt legislative
measures to provide for the grant of compulsory licenses
to prevent abuses which might result from the exercise of
the exclusive rights conferred by the patent. An example
provided of possible abuses is "failure to work;" however,
as such is merely supplied by way of an example, it is plain
that the treaty does not preclude the inclusion of other
forms or categories of abuses.
Section 34 of R.A. No. 165, even if the Act was enacted
prior to the Philippines adhesion to the Convention, fits
well within the aforequoted provisions of Article 5 of the
Paris Convention. In the explanatory note of Bill No. 1156
which eventually became R.A. No. 165, the legislative
intent in the grant of a compulsory license was not only to
afford others an opportunity to provide the public with the
quantity of the patented product, but also to prevent the
growth of monopolies. Certainly, the growth of monopolies
was among the abuses which Section A, Article 5 of the
Convention foresaw, and which our Congress likewise
wished to prevent in enacting R.A. No. 165.c
R.A. No. 165, as amended by Presidential Decree No. 1263,
promulgated on 14 December 1977, provides for a system
of compulsory licensing under a particular patent.
The case at bar refers more particularly to subparagraph (e)
of paragraph 1 of Section 34 -- the patented invention or
article relates to food or medicine or manufactured
products or substances which can be used as food or
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medicine, or is necessary for public health or public safety.
And it may not be doubted that the aforequoted provisions
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of R.A. No. 165, as amended, are not in derogation of, but
are consistent with, the recognized right of treaty
signatories under Article 5, Section A(2) of the Paris
Convention.
Parenthetically, it must be noted that paragraph (4) of
Section A, Article 5 of the Paris Convention setting time
limitations in the application for a compulsory license refers
only to an instance where the ground therefor is "failure to
work or insufficient working," and not to any ground or
circumstance as the treaty signatories may reasonably
determine.
Neither may petitioner validly invoke what it designates as
the GATT Treaty, Uruguay Round. This act is better known
as the Uruguay Final Act signed for the Philippines on 15
April 1994 by Trade and Industry Secretary Rizalino Navarro.
Forming integral parts thereof are the Agreement
Establishing the World Trade Organization, the Ministerial
Declarations and Decisions, and the Understanding on
Commitments in Financial Services. The Agreement
establishing the World Trade Organization includes various
agreements and associated legal instruments. It was only on
14 December 1994 that the Philippine Senate, in the
exercise of its power under Section 21 of Article VII of the
Constitution, adopted Senate Resolution No. 97 concurring
in the ratification by the President of the Agreement. The
President signed the instrument of ratification on 16
December 1994.But plainly; this treaty has no retroactive
effect. Accordingly, since the challenged BPTTT decision
was rendered on 14 February 1994, petitioner cannot avail
of the provisions of the GATT treaty
Roberto L. Del Rosario vs CA and Janito Corp.
G.R. No. 115106. March 15, 1996
(UTILITY MODEL)
FACTS: Del Rosario alleged that he was a patentee of an
audio equipment and improved audio equipment
commonly known as the sing-along system or karaoke
under Letters Patent issued by the Director of Patent. The
effectivity of both Letters Patents was for five (5) years and
was extended for another five (5) years starting 2 June 1988
and 14 November 1991, respectively. He described his sing-
along system as a handy multi-purpose compact machine
which incorporates an amplifier speaker, one or two tape
mechanisms, optional tuner or radio and microphone mixer
with features to enhance ones voice, such as the echo or
reverb to stimulate an opera hall or a studio sound, with the
whole system enclosed in one cabinet casing.
In 1990, he learned that private respondent, Janito
Corporation, was manufacturing a sing-along system
bearing the trademark miyata or miyata karaoke
substantially similar if not identical to the sing-along system
covered by the patents issued in his favor. Thus he sought
from the trial court the issuance of a writ of preliminary
injunction to enjoin private respondent, its officers and
everybody elsewhere acting on its behalf, from using,
selling and advertising the miyata or miyata karaoke brand.
Respondent Janito Corporation denied that there was any
violation of petitioners patent rights, and cited the
differences between its miyata equipment and petitioners
audio equipment.
Respondent also contended that there was no infringement
of the patents of petitioner by the fact alone that private
respondent had manufactured the miyata karaoke or audio
system, and that the karaoke system was a universal
product manufactured, advertised and marketed in most
countries of the world long before the patents were issued
to petitioner.
ISSUE: Whether or not there was an infringement
RULING: It is elementary that a patent may be infringed
where the essential or substantial features of the patented
invention are taken or appropriated, or the device, machine
or other subject matter alleged to infringe is substantially
identical with the patented invention. In order to infringe a
patent, a machine or device must perform the same
function, or accomplish the same result by identical or
substantially identical means and the principle or mode of
operation must be substantially the same.
It may be noted that respondent corporation failed to
present before the trial court a clear, competent and
reliable comparison between its own model and that of
petitioner, and disregarded completely petitioners Utility
Model No. 6237 which improved on his first patented
model. Notwithstanding the differences cited by
respondent corporation, it did not refute and disprove the
allegations of petitioner before the trial court that: (a) both
are used by a singer to sing and amplify his voice; (b) both
are used to sing with a minus-one or multiplex tapes, or that
both are used to play minus-one or standard cassette tapes
for singing or for listening to; (c) both are used to sing with
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a minus-one tape and multiplex tape and to record the
singing and the accompaniment; (d) both are used to sing
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with live accompaniment and to record the same; (e) both
are used to enhance the voice of the singer using echo
effect, treble, bass and other controls; (g) both are
equipped with cassette tape decks which are installed with
one being used for playback and the other, for recording the
singer and the accompaniment, and both may also be used
to record a speakers voice or instrumental playing, like the
guitar and other instruments; (h) both are encased in a box-
like cabinets; and, (i) both can be used with one or more
microphones.
Clearly, therefore, both petitioners and respondents
models involve substantially the same modes of operation
and produce substantially the same if not identical results
when used.
Gerardo Samson, Jr. vs Felipe Tarroza and Director of
Patents
G.R. No. L-20354. July 28, 1969
(Utility Model)
FACTS: Petitioner Gerardo Samson, Jr was, on May 22,
1958, awarded Utility Model Patent No. 27 for Dumping and
Detachable Wheelbarrow which, as noted in the decision,
"consists of a wheeled carriage base and an upper pivoted
and detachable carrying tray. The carriage base is
comprised of a wheel and two equal lengths of continuous
pipes bent to provide wheel forks at the front and at the
rear to support the back portion of the tray, with the ends
of the pipes being adopted as the carrying handles for the
wheelbarrow. The two pipes thus bent are joined together
by cross braces in the front and at the rear. The tray is
removably pivoted at its front end through hook catches at
its bottom corners, to the forward cross brace, and its rear
end rests solidly over the rear portion of the legs. To dump
the load the user pulls a dumping handle at the back end to
cause the tray to pivot upwardly about the front brace to a
position of about 45 degrees with the horizontal and with
its front end panel being supported by the wheel."
Respondent's Side Tilting-Dumping Wheelbarrow, on the
other hand, consists "of a wheeled carriage made of tubular
frames essentially as in petitioner's. Welded transversely to
the parallel frames are two brackets provided with holes
designed to complement similar holes on brackets provided
on the tray. The brackets on the tray are so placed that with
the provision of a bolt through the openings the tray may
be tilted approximately 170 degrees to the left or to the
right of the wheelbarrow with its axis running longitudinally
through the center of the bottom face of the tray."
ISSUE: Whether or not utility model should be granted to
respondent
RULING: Yes.There is an express recognition under the
Patent Law, as already noted, that any new model of
implements or tools or of any industrial product even if not
possessed of the quality of invention but which is of
"practical utility" is entitled to a "patent for a utility model."
From the above description of the side tilting-dumping
wheelbarrow, the product of respondent's ingenuity and
industry, it is quite apparent that it has a place in the market
and possesses what the statute refers to as "practical
utility." The requirement explicitly set forth in the statute
has thus been met. Respondent Tarroza is entitled to its
benefits. The grant to him of a patent for a utility model is
in accordance with law. There was no reason, therefore, for
its cancellation. So it was held by the Director of Patents.
That decision as already noted should stand.
Phil. Pharmawealth, Inc. vs. Pfizer, Inc.
G.R. No. 167715, November 17, 2010
PATENTS; Rights Arising Therefrom
FACTS: The instant case arose from a Complaint for patent
infringement filed against petitioner Phil Pharmawealth,
Inc. by respondent companies, Pfizer, Inc. and Pfizer (Phil.),
Inc., with the Bureau of Legal Affairs of the Intellectual
Property Office (BLA-IPO).
Respondents prayed for permanent injunction, damages
and the forfeiture and impounding of the alleged infringing
products. They also asked for the issuance of a temporary
restraining order and a preliminary injunction that would
prevent herein petitioner, its agents, representatives and
assigns, from importing, distributing, selling or offering the
Sulbactam Ampicillin for sale to any entity in the
Philippines.
BLA-IPO issued a preliminary injunction which was effective
for ninety days. Prior to the expiration of the ninety-day
period, respondents filed a Motion for Extension which,
however, was denied by the BLA-IPO.
Respondents then filed a special civil action
for certiorari with the CA praying for the issuance of a
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preliminary mandatory injunction for the reinstatement
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and extension of the writ of preliminary injunction issued by
the BLA-IPO.
While the case was pending before the CA, respondents
filed a Complaint RTC Makati City for infringement and
unfair competition with damages against herein petitioner.
In said case, respondents prayed for the issuance of a TRO
and preliminary injunction which the RTC later granted.
Meanwhile, petitioner filed a Motion to Dismiss the petition
filed with the CA on the ground of forum shopping,
contending that the case filed with the RTC has the same
objective as the petition filed with the CA.
Petitioner again filed a Motion to Dismiss the case for being
moot and academic, contending that respondents' patent
had already lapsed. In the same manner, petitioner also
moved for the reconsideration of the temporary restraining
order issued by the CA on the same basis that the patent
right sought to be protected has been extinguished due to
the lapse of the patent license and on the ground that the
CA has no jurisdiction to review the order of the BLA-IPO as
said jurisdiction is vested by law in the Office of the Director
General of the IPO.
ISSUES:
a) Can an injunctive relief be issued based on an action of
patent infringement when the patent allegedly infringed
has already lapsed?
b) Does CA has jurisdiction over the case?
RULING:
1. NO. Section 37 of Republic Act No. (RA) 165
provides that the exclusive right of a patentee to make, use
and sell a patented product, article or process exists only
during the term of the patent. In the instant case, Letters
Patent No. 21116, which was the basis of respondents in
filing their complaint with the BLA-IPO, was issued on July
16, 1987. This fact was admitted by respondents
themselves in their complaint. They also admitted that the
validity of the said patent is until July 16, 2004, which is in
conformity with Section 21 of RA 165, providing that the
term of a patent shall be seventeen (17) years from the date
of issuance thereof. Hence, there is no longer any need to
present evidence on the issue of expiration of respondents'
patent.
On the basis of the foregoing, the Court agrees with
petitioner that after July 16, 2004, respondents no longer
possess the exclusive right to make, use and sell the articles
or products covered by Philippine Letters Patent No. 21116.
2. Yes. It is true that under RA 8293, the Director
General of the IPO exercises exclusive appellate jurisdiction
over all decisions rendered by the Director of the BLA-IPO.
However, what is being questioned before the CA is not a
decision, but an interlocutory order of the BLA-IPO denying
respondents' motion to extend the life of the preliminary
injunction issued in their favor.
RA 8293 is silent with respect to any remedy available to
litigants who intend to question an interlocutory order
issued by the BLA-IPO.
Hence, in the present case, respondents correctly resorted
to the filing of a special civil action for certiorari with the CA
to question the assailed Orders of the BLA-IPO, as they
cannot appeal therefrom and they have no other plain,
speedy and adequate remedy in the ordinary course of law.
This is consistent with Sections 1and 4 Rule 65 of the Rules
of Court, as amended.
In the first place, respondents' act of filing their complaint
originally with the BLA-IPO is already in consonance with
the doctrine of primary jurisdiction.
However, the propriety of extending the life of the writ of
preliminary injunction issued by the BLA-IPO in the exercise
of its quasi-judicial power is no longer a matter that falls
within the jurisdiction of the said administrative agency,
particularly that of its Director General. The resolution of
this issue which was raised before the CA does not demand
the exercise by the IPO of sound administrative discretion
requiring special knowledge, experience and services in
determining technical and intricate matters of fact. It is
settled that one of the exceptions to the doctrine of primary
jurisdiction is where the question involved is purely legal
and will ultimately have to be decided by the courts of
justice. This is the case with respect to the issue raised in
the petition filed with the CA.
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LAW ON INTELECTUAL PROPERTY
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